`
`Paper No. 6
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SMR AUTOMOTIVE SYSTEMS USA, INC.,
`Petitioner,
`
`v.
`
`MAGNA MIRRORS OF AMERICA, INC.,
`Patent Owner.
`
`
`Case IPR2018-00533
`Patent No. 8,783,882
`
`
`PATENT OWNER MAGNA MIRRORS OF AMERICA, INC.’S
`PRELIMINARY RESPONSE
`
`
`
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`Case IPR2018-00533
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ..................................................................................................... 1
`BACKGROUND ....................................................................................................... 2
`I.
`Magna .................................................................................................... 2
`II.
`The ‘882 Patent ..................................................................................... 3
`PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD THAT
`THE CHALLENGED CLAIMS ARE ANTICIPATED OR OBVIOUS. ...... 7
`I.
`Legal Standards ..................................................................................... 7
`II.
`The Board Should Deny Institution On Ground 1. ............................... 8
`A. Ground 1 Should Be Denied Because Lynam ‘026 Is Not
`Prior Art, As The PTO Repeatedly Found. ................................. 8
`1.
`The Prosecution History of the ‘882 Patent. .................... 9
`2.
`SMR Fails To Show Why The Board Should
`Reconsider The PTO’s Conclusion That The ‘882
`Patent Properly Claims Priority To The ‘872
`Provisional. ..................................................................... 14
`a.
`The ‘666 application incorporates by
`reference the ‘451 and ‘712 patents in their
`entirety. ................................................................. 15
`The Written Description Of The ‘666
`Application Supports The Claims Of The
`‘882 Patent. ........................................................... 18
`The ‘882 Patent Priority Claim Is Not Defective. .......... 21
`SMR Fails To Show Why The Board Should
`Reconsider The PTO’s Conclusion That Lynam
`‘026 Is Not Prior Art. ...................................................... 23
`
`3.
`4.
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`b.
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`i
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`Case IPR2018-00533
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`B.
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`B.
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`C.
`
`D.
`
`Ground 1 Should Also Be Denied Because It Raises
`Inventorship Questions That Are Better Addressed In
`District Court. ............................................................................ 27
`III. The Board Should Deny Institution On Ground 2 Because SMR
`Has Not Shown That The Prior Art Discloses All Claim
`Limitations Or A Sufficient Motivation To Combine. ....................... 29
`A.
`The Petition Improperly Incorporates By Reference The
`Sasian Declaration. ................................................................... 30
`Henion ‘013 Discloses A Trailer Towing Mirror, Not A
`Blind Spot Mirror. ..................................................................... 32
`SMR Cannot Rely On The Adjustable Auxiliary
`Embodiment of Henion ‘013 To Meet Claims 18 and 20
`Because It Does Not Include The Claimed “Backing
`Plate.” ........................................................................................ 35
`1.
`Claim Construction ......................................................... 36
`2.
`Henion ‘013 and/or Yamabe Do Not Disclose
`Limitation 18[j] or Claim 20. ......................................... 40
`SMR’s Obviousness Arguments Rely On Impermissible
`Hindsight And The Unsupported Opinions Of Its
`Unqualified “Expert.” ............................................................... 41
`1.
`SMR’s Expert Is Not A POSA. ...................................... 42
`2.
`SMR Fails To Show That Specific Degrees Of
`Overlap Are Obvious. ..................................................... 45
`SMR Fails To Show That Claim 20 Is Obvious. ............ 46
`SMR Fails To Show That A Field Of View Of
`Between 25 Degrees And 50 Degrees Is Obvious. ........ 48
`CONCLUSION ........................................................................................................ 50
`CERTIFICATE OF COMPLIANCE ....................................................................... 51
`
`
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`3.
`4.
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`Case IPR2018-00533
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allergan, Inc. v. Apotex Inc.,
`754 F.3d 952 (Fed Cir. 2014) ............................................................................. 24
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00358, Paper 9 (PTAB July 2, 2015) .................................................. 32
`Ariad Pharm., Inc. v. Eli Lily & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) .......................................................... 18
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 17
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ....................................... 31, 32
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00777, Paper 7 (PTAB Aug. 22, 2017) ................................................. 8
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) .............................................................. 15, 16, 17
`Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
`IPR2015-00616, Paper 9 (PTAB Aug. 17, 2015) ........................................... 8, 30
`Hospira, Inc. v. Genentech, Inc.,
`IPR2017-00739, Paper 16 (PTAB July 27, 2017) ................................................ 8
`Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd.,
`838 F.3d 1236 (Fed. Cir. 2016) .......................................................................... 17
`Johns Manville Corp v. Knauf Insulation Inc.,
`IPR 2015-1633 .................................................................................................... 46
`In re Katz,
`687 F.2d 450 (C.C.P.A. 1982) ............................................................................ 24
`Medtronic CoreValve, LLC v. Edwards Lifesciences Corp.,
`741 F.3d 1359 (Fed. Cir. 2014) .................................................................... 22, 23
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`Case IPR2018-00533
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`Modine Mfg. Co. v. ITC,
`75 F.3d 1545 (Fed. Cir. 1996), abrogated by Festo Corp. v.
`Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed.
`Cir. 2000) (en banc) ............................................................................................ 19
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 37
`SCHOTT Gemtron Corp. v. SSW Holding Co.,
`IPR2014-00367, Paper No. 62 (PTAB May 26, 2015) ...................................... 44
`Sewall v. Walters,
`21 F.3d 411 (Fed. Cir. 1994) .............................................................................. 28
`In re Smith Int’l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017) .......................................................................... 36
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 36
`Telemac Cellular Corp. v. Topp Telecom, Inc.,
`247 F.3d 1316 (Fed. Cir. 2001) .......................................................................... 18
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) ......................................... 9, 29
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .................................................................... 32, 35
`Zenon Envtl., Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .......................................................................... 17
`Statutes
`35 U.S.C. § 102(a) ............................................................................................passim
`35 U.S.C. § 102(b) ................................................................................................... 23
`35 U.S.C. § 102(e) ............................................................................................passim
`35 U.S.C. § 256(b) ................................................................................................... 28
`35 U.S.C. § 314(a) ..................................................................................................... 7
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`Case IPR2018-00533
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`35 U.S.C. § 325(d) ........................................................................................... 2, 8, 27
`Other Authorities
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108(c) ................................................................................................. 7
`MPEP 2132.01 ......................................................................................................... 24
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`Case IPR2018-00533
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`INTRODUCTION
`In accordance with 37 C.F.R. Section 42.107, patent owner Magna Mirrors
`
`of America, Inc. (“Magna”) submits this preliminary response to the Petition filed
`
`by SMR Automotive Systems USA, Inc. (“SMR”) requesting inter partes review
`
`of claims 1-40 of U.S. Patent No. 8,783,882 (“the ‘882 patent”). Magna requests
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`that the Board deny the inter partes review as to all grounds, none of which have
`
`merit.
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`SMR’s first proposed ground is anticipation and obviousness based on U.S.
`
`Pat. Pub. No. 2002/0072026 (“Lynam ‘026”), the published application of Dr.
`
`Lynam’s prior U.S. Pat. No. 6,717,712 (“the ‘712 patent”), which is incorporated
`
`by reference into the ‘882 patent. But Lynam ‘026 was considered in depth during
`
`the prosecution of the ‘882 patent and seven other patents in the ‘882 patent
`
`family. For example, the PTO removed Lynam ‘026 as prior art during
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`prosecution of related U.S. Pat. No. 7,934,843 (“the ‘843 patent”) after concluding
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`that the ‘843 patent is entitled to its claimed priority date and that “Niall Lynam
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`conceived or invented the subject matter disclosed in the patent application
`
`publication.” Ex. 1009, 23. The PTO reached the same conclusion regarding
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`Lynam ‘026 in each of the eight prosecutions where it was considered, including
`
`during prosecution of the ‘882 patent. The Board should therefore deny institution
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`of the Lynam ‘026 ground both because that application is not prior art to the ‘882
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`patent and also, pursuant to 35 U.S.C. § 325(d), because the question of whether it
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`is prior art has been extensively considered by the PTO.
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`SMR’s remaining ground relies on WO 01/44013 to Henion (“Henion
`
`‘013”). Henion ‘013 is directed to an entirely different application, namely, a
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`trailer towing mirror, in contrast to the inventions claimed in the ‘882 patent,
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`which are directed to exterior rearview mirror systems for improved viewing of the
`
`blind spot. SMR’s attempts to address some of Henion ‘013’s deficiencies through
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`obviousness arguments fail to set forth a sufficient reason, other than hindsight,
`
`why a person of ordinary skill would have combined the references to arrive at the
`
`claimed inventions of the ‘882 patent. Institution should therefore be denied on
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`this ground as well.
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`BACKGROUND
`
`I. Magna
`Patent Owner Magna was founded in 1905 to become Donnelly Corporation
`
`in the 1980s. Donnelly Corporation was acquired by Magna International in 2002
`
`and became known as Magna Donnelly Corporation. In 2008, it changed its name
`
`to Magna Mirrors of America, Inc. Magna is a leading supplier of mirror and
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`electronic vision systems for the automotive industry. Magna supplies products
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`that practice the ‘882 patent to automobile original equipment manufacturers
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`2
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`(“OEMs”) such as Ford, Hyundai, and Kia. These products, as well as infringing
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`products sold by SMR, have enjoyed widespread commercial success.
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`Dr. Lynam, the inventor of the ‘882 patent, was a longtime Donnelly
`
`employee and is currently Magna’s Chief Technical Officer. He is a named
`
`inventor on hundreds of issued U.S. Patents.
`
`II. The ‘882 Patent
`The ‘882 patent’s claims generally relate to a mirror system with a main flat
`
`(plano) mirror element and a separate, non-plano auxiliary mirror element on a
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`single backing plate. This mirror system is designed to solve the problem of the
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`blind spot that a conventional, flat exterior side view mirror has in a side lane
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`adjacent to the driver. The blind spot means that a driver may not see a passing
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`vehicle in an adjacent side lane, and may therefore attempt to merge into the lane
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`when the lane is not clear of traffic. Prior to the invention of the ‘882 patent, the
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`blind spot problem had existed for decades. While many proposed solutions
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`existed in the art, no blind spot solution had achieved significant commercial
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`success or widespread adoption prior to the ‘882 patent invention date. See, e.g.,
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`U.S. Pat. No. 5,579,133, Ex. 2003, at 1:23-33 (noting that blind spot problem “has
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`existed in the art practically since the advent of the enclosed automobile” and
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`“[n]umerous attempts to solve this problem have been made”).
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`3
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`An exemplary depiction of the side View of a mirror subassembly (the mirror
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`elements and the backing plate) from the ‘882 patent is shown below:
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`Case IPR2018-00533
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`‘\
`
`/ ' 155'
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`.65:
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`HG. l4
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`162'
`u
`‘~// //(/ //////////(4411////////14
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`xxxxxxxxxxxxxxxxxxxl
`|
`m
`
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`Auxiliary non-plano mirror e
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`lement
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`An exemplary photograph of one of Magna’s complete mirror assemblies for
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`the Ford Mustang that practices the ‘882 patent can be seen here:
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`
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`The auxiliary non—plano mirror element is supported on the single backing
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`plate at an angle relative to the main mirror element. More specifically, among
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`numerous other requirements, the ‘882 patent claims require that the auxiliary
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`mirror element be angled with respect to the main mirror element, and have a field
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`of view that overlaps with the field of view of the main mirror element. See Ex.
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`1001, Claims 1, 15, 18. Claim 18 is set forth below (emphases added):
`
`18. An exterior sideview mirror assembly suitable for use
`on a vehicle, said exterior sideview mirror assembly
`comprising:
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`[a] a mirror housing;
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`[b] a mirror backing plate element;
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`[c] wherein said mirror backing plate element is movable
`within said mirror housing by an electrically-operable
`actuator;
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`[d] a main plano mirror element fixedly disposed at a
`first portion of said mirror backing plate element;
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`[e] said main plano mirror element having a first primary
`field of view rearward of a vehicle equipped with said
`exterior sideview mirror assembly;
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`[f] an auxiliary non-plano curved mirror element fixedly
`disposed at a second portion of said mirror backing plate
`element;
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`[g] wherein said main plano mirror element has a fixed
`reflectance and wherein said auxiliary non-plano curved
`mirror element has a fixed reflectance;
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`[h] wherein said main plano mirror element and said
`auxiliary non-plano curved mirror element are adjacently
`disposed at said mirror backing plate element in a side-
`by-side relationship and are not superimposed with one
`mirror element on top of the other mirror element;
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`[i] said auxiliary non-plano curved mirror element having
`a second auxiliary field of view rearward of the equipped
`vehicle;
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`[j] wherein said first primary field of view of said main
`plano mirror element overlaps said second auxiliary field
`of view of said auxiliary non-plano curved mirror
`element by between about 2 degrees and about 20
`degrees.
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`[k] wherein said auxiliary non-plano curved mirror
`element that is at said second portion of said mirror
`backing plate element is angled relative to said main
`plano mirror element that is at said first portion of said
`mirror backing plate element;
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`[l] wherein said mirror backing plate element mounts to
`said actuator such that movement of said mirror backing
`plate element by said actuator simultaneously and
`similarly moves said main plano mirror element and said
`auxiliary non-plano curved mirror element;
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`[m] wherein said mirror backing plate element comprises
`a polymeric molding;
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`[n] wherein said main plano mirror element comprises a
`generally flat glass substrate having a surface coated with
`a metallic reflector coating;
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`[o] wherein the overall rearward field of view of said
`main plano mirror element combined with said auxiliary
`non-plano curved mirror element is at least about 25
`degrees relative to the side of the equipped vehicle; and
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`[p] wherein the overall rearward field of view of said
`main plano mirror element combined with said auxiliary
`non-plano curved mirror element is less than about 50
`degrees relative to the side of the equipped vehicle.
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`Certain dependent claims provide further specificity regarding the field of
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`view and angling of the auxiliary and primary mirror elements. Other dependent
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`claims include limitations setting out more specific angling requirements and a
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`limitation specifying the composition of the mirror glass.
`
`PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD THAT
`THE CHALLENGED CLAIMS ARE ANTICIPATED OR OBVIOUS.
`Legal Standards
`For each claim challenged in its petition for inter partes review, SMR bears
`
`I.
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`the burden of showing that there is a “reasonable likelihood” that it will prevail in
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`its challenge. 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). As the Board
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`has explained, the petitioner has “the burden of proof to establish that it is entitled
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`to the requested relief.” Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
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`IPR2015-00616, Paper 9 at 7 (PTAB Aug. 17, 2015) (citing 37 C.F.R. § 42.20(c)).
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`As explained further below, the Board may also deny institution of inter partes
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`review for discretionary reasons, including because “the same or substantially the
`
`same prior art or arguments previously were presented to the Office.” 35 U.S.C. §
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`325(d).
`
`II. The Board Should Deny Institution On Ground 1.
`A. Ground 1 Should Be Denied Because Lynam ‘026 Is Not Prior
`Art, As The PTO Repeatedly Found.
`As demonstrated below, the PTO considered the issues raised in Ground 1
`
`(including whether the ‘882 patent is entitled to its claimed priority date and
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`whether Lynam ‘026 qualifies as prior art), repeatedly during the prosecution of
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`the ‘882 patent and its family. In these circumstances, the Board can and should
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`exercise its discretion to deny institution under 35 U.S.C. § 325(d). See Cultec,
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`Inc. v. Stormtech LLC, IPR2017-00777, Paper 7 at 13 (PTAB Aug. 22, 2017)
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`(informative) (denying institution under Section 325(d) because “the same or
`
`substantially the same prior art or arguments as are presented in the Petition
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`previously were presented to the Office”); Hospira, Inc. v. Genentech, Inc.,
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`IPR2017-00739, Paper 16 at 17–19 (PTAB July 27, 2017) (informative) (denying
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`institution under Section 325(d) because the petitioner’s priority challenge was
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`already considered by the PTO). Instituting inter partes review on Ground 1
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`“would not be an efficient use of Board resources.” Unified Patents Inc. v.
`
`Berman, IPR2016-01571, Paper 10 at 12 (PTAB Dec. 14, 2016) (informative)
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`(denying institution on certain claims because “the Petition relies on the same or
`
`substantially the same prior art and arguments presented previously to the Office”).
`
`1.
`The Prosecution History of the ‘882 Patent.
`Dr. Lynam conceived of the inventions that were later claimed in the ‘882
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`patent sometime in 1999 and 2000. He filed a patent application disclosing his
`
`claimed inventions on January 6, 2000, which issued as U.S. Patent No. 6,522,451
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`on February 18, 2003. Dr. Lynam is the sole named inventor of the ‘451 patent.
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`On December 20, 2000, he filed a continuation-in-part of the ‘451 patent, which
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`issued on April 6, 2004 as U.S. Pat. No. 6,717,712 (“the ‘712 patent”). The
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`application that issued as the ‘712 patent was published on June 13, 2002, as the
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`Lynam ‘026 reference—the reference SMR relies upon in its request. The ‘712
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`patent names two additional Donnelly employees as co-inventors, John O. Lindahl
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`and Hahns Yoachim Fuchs, due to their contribution of elements (namely, a “frame
`
`element assembly”) disclosed and claimed in the ‘712 patent that are not relevant
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`to the claims of the ‘882 patent. The ‘712 patent also disclosed further details
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`invented by Dr. Lynam regarding the angling and fields of view of the mirror
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`elements.
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`Dr. Lynam filed provisional patent application no. 60/471,872 (“the ‘872
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`provisional”), to which the ‘882 patent claims priority, on May 20, 2003. The ‘872
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`provisional disclosed an inventive composition for a mirror, including a “molded
`
`substrate [which] may have an anti-abrasion film or layer, such as an ultrathin
`
`glass film[.]” ‘872 provisional, Ex. 2010, 2:4-10. The ‘872 provisional also
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`disclosed a mirror assembly using the novel mirror composition. E.g., Ex. 2010,
`
`2:13-18. In addition, the ‘872 provisional incorporated by reference a number of
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`other Magna Donnelly patents and patent applications disclosing mirrors and
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`features that the novel mirror composition could be used with, including the ‘451
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`patent and the ‘712 patent (id., 5:2-6) and interior electrochromic mirror
`
`assemblies (id., 9:28-10:15).
`
`Dr. Lynam filed U.S. Patent Application No. 12/851,045 (“the ‘045
`
`application”), which later issued as U.S. Pat No. 7,934,843 (“the ‘843 patent”), on
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`August 5, 2010.1 Because the claims in the ‘045 application included the two-
`
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`1 Contrary to SMR’s assertion, the filing of the ‘045 application was not an attempt
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`“[t]o revive prosecution of the ‘712 patent’s abandoned family.” Petition, 11. The
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`‘045 application included discussion of the novel thin glass substrate first
`
`described in the ‘872 provisional and included claim limitations directed to that
`
`substrate, as well as discussion of the two-element blind spot mirror assembly
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`element blind spot mirror assembly described in the ‘451 and ‘712 patents, along
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`with the thin glass limitations from the ‘872 provisional, the ‘045 application
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`copied material from the ‘451 and ‘712 patents that had previously been
`
`incorporated by reference directly into the specification of the ‘045 application.
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`For example, the ‘045 application added figures 9-23, which had previously been
`
`included through the incorporation by reference of the ‘451 and ‘712 patents.
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`During the prosecution of the ‘045 application, the PTO initially rejected the
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`pending claims on the alleged basis that they were not entitled to claim priority to
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`the ‘872 provisional. Ex. 1009, 139-40. Specifically, the PTO rejected all claims
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`other than claims 24-26 as anticipated by Lynam ‘026, the same as SMR’s first
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`invalidity ground. Id., 141-51. It also rejected claims 24-26 as obvious over a
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`combination of Lynam ‘026 and the publication of one of the applications that the
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`disclosed in the ‘451 patent that is incorporated by reference in the ‘872
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`provisional. See Ex. 1019, ¶¶ 3-17, 44-45, 89-107 (discussing thin glass and
`
`related features), ¶¶ 45-88 (discussing plano-auxiliary mirror assembly and related
`
`features). The ‘045 application could not have been filed as a continuation of the
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`‘451 and ‘712 patent family because those patents do not disclose the thin glass
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`substrate.
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`‘843 patent claims priority to, U.S. Pat. Appl. Pub. 2004/0264011 (“Lynam ‘011”).
`
`Id., 152-55.
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`Dr. Lynam responded by explaining why the priority claim to the ‘872
`
`provisional was proper, due to the incorporation by reference of the ‘451 and ‘712
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`patents in the ‘843 patent and the applications to which the ‘843 patent claims
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`priority. Id., 46-48. Additionally, Dr. Lynam submitted a declaration to explain
`
`why Lynam ‘026 did not qualify as prior art. Id., 53-56.
`
`In response, the PTO allowed the application that issued as the ‘843 patent.
`
`The Reasons for Allowance explained that the “Applicant has overcome the prior
`
`art rejection and questions regarding priority by filing a 37 CFR 1.131 affidavit
`
`which proved sufficient to overcome the Lynam et al reference. The 37 CFR 1.131
`
`affidavit proves that Niall Lynam conceived or invented the subject matter
`
`disclosed in the patent application publication.” Id., 23 (emphasis added). In other
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`words, Lynam ‘026 was found not to be prior art because it was not the work of
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`another.
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`Dr. Lynam went on to prosecute a number of additional patent applications
`
`claiming priority to the ‘843 patent and to the ‘872 provisional. Rejections over
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`Lynam ‘026 were issued in seven of these prosecutions, including in the
`
`prosecution of the ‘882 patent, as set forth in the table below. Each time (before
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`Case IPR2018-00533
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`two different examiners)2, Dr. Lynam overcame the rejections in the same manner
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`as during the prosecution of the ‘843 patent.
`
`U.S.
`Patent
`No.
`
`Rejection
`Over Lynam
`‘026
`
`Response by Dr.
`Lynam
`Explaining
`Incorporation
`by Reference
`
`8,128,243 10/31/2011
`(Ex. 2004, 4-
`11)
`8,128,244 11/16/2011
`(Ex. 2005, 3-
`20)
`8,147,077 1/5/2012
`(Ex. 2006, 3-
`19)
`8,267,534 5/17/2012
`(Ex. 2007, 4-7)
`
`8,550,642 4/23/2013
`(Ex. 2008, 5-7)
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`11/3/2011
`(Ex. 2004, 15-
`18)
`11/22/2011
`(Ex. 2005, 23-
`25)
`1/6/2012
`(Ex. 2006, 22-
`24)
`5/21/2012
`(Ex. 2007, 22-
`24)
`7/17/2013
`
`Affidavit by
`Dr. Lynam
`explaining
`Lynam ‘026
`is not Prior
`Art
`11/3/2011
`(Ex. 2004, 19-
`21)
`11/22/2011
`(Ex. 2005, 26-
`29)
`1/6/2012
`(Ex. 2006, 25-
`28)
`5/21/2012
`(Ex. 2007, 27-
`28)
`7/17/2013
`
`Notice of
`Allowance
`Agreeing
`with Dr.
`Lynam
`
`1/20/2012
`(Ex. 2004, 27)
`
`1/24/2012
`(Ex. 2005, 35)
`
`2/17/2012
`(Ex. 2006, 34)
`
`8/6/2012
`(Ex. 2007, 34)
`
`9/5/2013
`(Ex. 2008, 35)
`
`
`2 The ‘882 patent was prosecuted before a different examiner than the ‘843 patent
`
`and the other patents listed below. Compare Ex. 1001, cover with Ex. 1008, cover.
`
`13
`
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`

`
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`
`
`Case IPR2018-00533
`
`U.S.
`Patent
`No.
`
`Rejection
`Over Lynam
`‘026
`
`8,591,047 8/16/2013
`(Ex. 2009, 3-
`12)
`8,783,882 12/17/2013
`(Ex. 1006, 135,
`137-50)
`
`Response by Dr.
`Lynam
`Explaining
`Incorporation
`by Reference
`
`(Ex. 2008, 21-
`23)
`8/21/2013
`(Ex. 2009, 26-
`28)
`3/17/2014
`(Ex. 1006, 179-
`80)
`
`Affidavit by
`Dr. Lynam
`explaining
`Lynam ‘026
`is not Prior
`Art
`(Ex. 2008, 26-
`28)
`8/21/2013
`(Ex. 2009, 30-
`32)
`3/17/2014
`(Ex. 1006,
`184-86)
`
`Notice of
`Allowance
`Agreeing
`with Dr.
`Lynam
`
`9/27/2013
`(Ex. 2009, 39)
`
`6/10/2014
`(Ex. 1006,
`349-51)
`
`Accordingly, Lynam ‘026 is not prior art to the ‘882 patent and the question
`
`has been considered eight times, by two different examiners.
`
`2.
`
`SMR Fails To Show Why The Board Should Reconsider
`The PTO’s Conclusion That The ‘882 Patent Properly
`Claims Priority To The ‘872 Provisional.
`SMR focuses its priority argument on whether the application preceding the
`
`‘843 patent, the ‘666 application (Ex. 1014, which became the ‘154 patent),
`
`provides a written description of the claims of the ‘882 patent, asserting that the
`
`‘666 application does not incorporate by reference the relevant teachings of the
`
`‘451 and ‘712 patents (Petition, 20-24), and that even if it did, the written
`
`14
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`

`
`
`
`
`Case IPR2018-00533
`
`description would not support the ‘882 patent claims (Petition, 25-34). As the PTO
`
`previously determined when Dr. Lynam prosecuted the ‘882 patent family, SMR’s
`
`arguments are incorrect.
`
`a.
`
`The ‘666 application incorporates by reference the
`‘451 and ‘712 patents in their entirety.
`The standard for whether material is incorporated by reference “is whether
`
`one reasonably skilled in the art would understand the application as describing
`
`with sufficient particularity the material to be incorporated,” which “is a question
`
`of law.” Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011). In this regard, an
`
`application may incorporate a reference in its entirety, and this incorporation can
`
`then be used to provide written description support. Id. at 1335, 1338 (concluding
`
`that “the entire ‘579 application disclosure was incorporated by the broad and
`
`unequivocal language: ‘The disclosures of the two applications are hereby
`
`incorporate[d] by reference’” and that therefore “the portions of the ‘579
`
`application that Harari argues provide the written description support for its claims
`
`are part of the optimized erase and write implementations” at issue).
`
`The ‘666 application includes the same type of “broad and unequivocal
`
`language” that was found to incorporate the entirety of a reference in Harari: “The
`
`reflective element 12 may provide a field of view similar to the plano-auxiliary
`
`reflective element assembly disclosed in U.S. Pat. Nos. 6,522,451 and 6,717,712,
`
`which are hereby incorporated herein by reference.” Ex. 1014, ¶ 28 (emphasis
`
`15
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`

`
`
`
`
`Case IPR2018-00533
`
`added). SMR asserts that this statement incorporates by reference only the field of
`
`view disclosed in the ‘451 and ‘712 patents (Petition, 21-22), but that argument is
`
`grammatically incorrect. The verb used in the incorporation by reference
`
`statement is “are,” which is used for a plural subject. This indicates that the
`
`subject of the incorporation by reference statement is the plural “U.S. Pat. Nos.
`
`6,522,451 and 6,717,712,” not the singular “a field of view” as SMR contends.
`
`The sentence is properly broken down into two parts: 1) a statement that reflective
`
`element 12 may provide a field of view similar to the plano-auxiliary reflective
`
`element assembly disclosed in the ‘451 and the ‘712 patents, and 2) a statement
`
`that the ‘451 and ‘712 patents are incorporated by reference.
`
`SMR points to language in the ‘666 application where a reference is said to
`
`be incorporated “in its entirety,” arguing that the lack of such a statement indicates
`
`that something less than the entirety of the ‘451 and ‘712 patents are incorporated
`
`in the statement at issue. Petition at 22. However, the Federal Circuit has agreed
`
`that “there is no need to use such words as ‘in its entirety’ to indicate that the entire
`
`reference is incorporated.” Harari, 656 F.3d at 1335. Indeed, as in Harari, the
`
`‘666 application reveals that when Dr. Lynam intended to incorporate only specific
`
`portions of a reference, he said so explicitly. Compare Ex. 1014, ¶ 44 (“[T]he
`
`mirror assembly may include one or more displays of the types described in
`
`[certain references], which are all hereby incorporated herein by reference, without
`
`16
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`

`
`
`
`
`Case IPR2018-00533
`
`affecting the scope of the present invention.”) (emphases added) with Harari, 656
`
`F.3d at 1335-36 (“We contrast the incorporation used here, ‘the disclosures,’ with
`
`the incorporation language used later in the same specification, ‘relevant portions
`
`of the disclosures.’ When the drafter intended to incorporate only a portion it did
`
`so expressly.”). Because here, as in Harari, Dr. Lynam broadly and unequivocally
`
`stated in the ‘666 application that the ‘451 and ‘712 patents “are hereby
`
`incorporated,” his broad language should be respected. Ex. 1014, ¶ 28.
`
`SMR fails to cite a single case where a broad and unequivocal statement that
`
`a reference is incorporated was found not to incorporate a reference in its entirety.
`
`See Petition, 23 (citing Zenon, Husky, and Callaway Golf). In Zenon Envtl., Inc. v.
`
`U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007), the incorporation by reference
`
`statement was expressly limited to specific subject matter. Id. at 1379
`
`(incorporation by reference stated only that “details relating to the construction and
`
`deployment of a most preferred skein are found in” the references and that “the
`
`relevant disclosures of each [reference] are included by reference”) (emphasis
`
`added). In Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d
`
`1236, 1248 (Fed. Cir. 2016), the court declined to reach the issue of whether a
`
`reference was incorporated in its entirety. And in Callaway Golf Co. v. Acushnet
`
`Co., 576 F.3d 1331 (Fed. Cir. 2009), the issue of whether a reference was
`
`incorporated in its entirety