SMR Automotive Systems USA Inc v. Magna Mirrors Of America Inc

1. Case Identification

• Patent #: 7,934,843
• Filed: January 14, 2018
• Petitioner(s): SMR Automotive Systems USA, Inc.
• Patent Owner(s): Magna Mirrors of America, Inc.
• Challenged Claims: 1-39

2. Patent Overview

• Title: Exterior Sideview Mirror System
• Brief Description: The ’843 patent relates to an exterior automobile sideview mirror system that includes two separate reflective elements on a single backing plate. The system comprises a main "plano" (flat) mirror for a standard rearward view and a separate, curved auxiliary mirror to provide a wide-angle view of the driver's blind spot.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-23 and 27-39 by the ’026 Publication

• Prior Art Relied Upon: ’026 publication (Application # 2002/0072026).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’026 publication, which corresponds to the abandoned ’712 patent family, disclosed every element of the challenged claims. The publication taught an exterior sideview mirror with both a planar reflective element and a separate curved auxiliary element mounted "side-by-side" on a common, electrically-actuated backing plate. Petitioner contended that the ’026 publication disclosed all specific limitations of the independent and dependent claims, including the polymeric substrate, the demarcation element between the mirrors, the specific curvatures, and the fields of view. The argument relied heavily on a detailed, element-by-element comparison to the challenged claims.
  • Key Aspects: A central predicate for this ground is Petitioner's assertion that the ’843 patent is not entitled to its claimed priority date, which would make the ’026 publication prior art under 35 U.S.C. §102(a), (b), and (e). Petitioner argued that the parent ’666 application lacked written description support for the two-mirror system, breaking the priority chain.

Ground 2: Obviousness of Claims 1 and 24-26 over the ’026 Publication in view of the ’011 Publication

• Prior Art Relied Upon: ’026 publication (Application # 2002/0072026) and ’011 publication (Application # 2004/0264011).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the ’026 publication taught all elements of claim 1 except for the optional feature of a reflective element comprising a polymeric substrate with a thin-glass layer (recited in element 1[q] and claims 24-26). The ’011 publication, which issued from the ’843 patent’s own grandparent application, was argued to supply this missing element by teaching the formation of a reflective element from a polymeric substrate with a flexible, ultrathin glass material on its surface.
  • Motivation to Combine: A POSITA would combine these references to create a mirror assembly with the known benefits of both. The two-element mirror from the ’026 publication provided an enhanced field of view, and the thin-glass-on-polymer substrate from the ’011 publication offered a desirable combination of being lightweight yet resistant to abrasion.
  • Expectation of Success: A POSITA would have had a high expectation of success, as it involved substituting one known type of mirror substrate for another to gain a predictable improvement in durability and weight.

Ground 3: Obviousness of Claims 1, 15, and 34 over Henion in view of Platzer and Catlin

• Prior Art Relied Upon: Henion (WO 2001/44013), Platzer (WO 2001/81956), and Catlin (Patent 5,721,646).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued this combination taught every element of the challenged claims. Henion was asserted to provide the basic structure: an automotive sideview mirror with a flat primary mirror and a curved auxiliary mirror mounted adjacently on a common backing plate. Catlin was cited to supply the limitation of the backing plate being an "injection molded polymeric substrate," a common and cost-effective manufacturing technique. Platzer was used to teach positioning the auxiliary mirror at the outboard portion of the assembly and to disclose a field of view extending 1 to 24 feet behind the vehicle, as required by dependent claims.
  • Motivation to Combine: A POSITA would combine these references as they all address the same problem of improving rearward and sideward fields of view for automotive mirrors. A POSITA would have been motivated to use Catlin's injection molding technique to manufacture Henion’s mirror for cost and efficiency. Furthermore, a POSITA would modify Henion’s design by incorporating Platzer’s outboard auxiliary mirror placement to provide a smoother and less confusing visual transition for the driver when monitoring the blind spot.
  • Expectation of Success: Combining these known elements for their intended purposes would predictably result in the claimed mirror system.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 33 based on the combination of Henion, Platzer, Catlin, and Kondo (Patent 5,793,542), with Kondo providing a specific teaching of the ratio of widths between the planar and auxiliary mirrors.

4. Key Claim Construction Positions

• "side-by-side": Petitioner argued that for the purposes of the IPR, it adopted the Patent Owner's litigation-based interpretation of this term. This construction was understood to be broad, encompassing not just mirrors placed along a single shared edge but also arrangements where a smaller auxiliary mirror is positioned in the corner of a larger primary mirror. This broad construction was critical to Petitioner's argument that the prior art configurations met this claim limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Lack of Priority and Written Description Support: The petition's central technical-legal argument, underpinning all grounds, was that the ’843 patent was not entitled to the priority date of its parent applications. Petitioner contended that the parent ’666 application unambiguously described its invention as a single-element, multi-radius mirror. While the ’666 application mentioned the two-element mirror patents (’451 and ’712), it did so only to compare its field-of-view performance and did not incorporate their substance by reference. Petitioner argued that by copying the entire specification for a two-element mirror from the abandoned ’712 patent family into the application for the ’843 patent, the Patent Owner improperly attempted to revive an abandoned prosecution and broke the priority chain, rendering the ’026 publication and other references prior art.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-39 of the ’843 patent as unpatentable.