PTAB

IPR2018-00505

SMR Automotive Systems USA, Inc. v. Magna Mirrors of America, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Exterior Sideview Mirror System
  • Brief Description: The ’077 patent relates to an exterior sideview mirror system for an automobile. The system features a two-element assembly comprising a primary "plano" (flat) reflective element for a standard rearward view and a separate, curved auxiliary reflective element to provide a wide-angle view of the driver's blind spot, with both mounted on a single backing plate.

3. Grounds for Unpatentability

Ground 1: Anticipation over ’026 publication - Claims 1-17 and 20-27 are anticipated 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 patent family that Patent Owner allegedly copied into the ’077 patent's application, discloses every element of the challenged claims. Independent claim 1’s limitations, such as a plano-auxiliary assembly with separate flat and curved mirrors, an electrically-operated actuator, a single polymeric backing plate supporting both mirrors for simultaneous movement, and a visible demarcation element at the joint, are all explicitly described and illustrated in the ’026 publication. Petitioner asserted that Patent Owner effectively admitted the ’026 publication’s disclosure meets the claim requirements through representations made during prosecution.
    • Key Aspects: The validity of this ground hinges on Petitioner’s argument that the ’026 publication qualifies as prior art, a point detailed in Section 5 below.

Ground 2: Obviousness over ’026 and ’011 - Claims 17-19 are obvious 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: The ’026 publication was asserted to teach all elements of claim 17 except for an optional feature for the reflective element substrate. The ’011 publication was introduced to teach this missing feature: a polymeric substrate with a thin-glass element on one surface and a reflecting layer on the other, as recited in dependent claims 18 and 19. The ’011 publication describes forming such a reflective element by adhering a thin, flexible glass sheet to a polymeric substrate.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine the teachings because the references are from the analogous art of automotive mirrors. A POSITA would be motivated to use the lightweight, abrasion-resistant, and durable thin-glass substrate from the ’011 publication as the reflective element in the two-mirror assembly of the ’026 publication to improve the overall product.
    • Expectation of Success: Success was expected because it involved applying a known substrate technology from ’011 to the known mirror assembly of ’026, which would predictably result in a durable, lightweight mirror.

Ground 3: Obviousness over Henion, Platzer, and Catlin - Claims 17, 22, and 24-27 are obvious 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: Henion was argued to disclose the majority of the structural elements, including a side-view mirror with a flat primary mirror and a curved auxiliary mirror mounted adjacently on a common backing plate. Platzer was introduced to supply teachings on specific fields of view (e.g., a total field of view of at least 25 degrees) and the advantages of placing the auxiliary mirror at the outboard edge of the assembly. Catlin was added to teach the use of an "injection molded polymeric substrate" for the backing plate, a feature not specified in Henion.
    • Motivation to Combine: A POSITA would combine these references as they all address the same technical problem: improving the field of view for automotive side mirrors. Petitioner argued it would have been obvious to use the cost-effective injection-molded plastic backing plate from Catlin for the mirror assembly in Henion. Furthermore, a POSITA would incorporate Platzer’s teachings on mirror placement and field-of-view geometry to create a more effective and safer mirror system that provides a smooth visual transition into the blind spot area.
    • Expectation of Success: Combining these known elements from the same field of endeavor—a manufacturing process from Catlin, field-of-view optimization from Platzer, and a base mirror structure from Henion—was argued to be a predictable design choice with a high expectation of success.

4. Key Claim Construction Positions

  • "side-by-side": Petitioner noted that all challenged claims require the primary and auxiliary mirrors to be mounted "side-by-side" and not superimposed. For the purposes of the petition, Petitioner adopted the Patent Owner's broad litigation interpretation of this term, which includes an arrangement where a secondary mirror is placed in the corner of a primary mirror. Petitioner argued that the claims are unpatentable even under this broad construction.

5. Key Technical Contentions (Beyond Claim Construction)

  • Denial of Priority Date: A central contention of the petition was that the ’077 patent is not entitled to the benefit of the filing date of its earlier ancestor applications. Petitioner argued that the chain of priority was broken because the parent ’666 application, from which the ’077 patent claims benefit, lacks written description support for the claimed two-mirror invention.
    • The ’666 application was argued to unambiguously describe its invention as a single-element mirror with varying curvature, contrasting it with prior two-mirror systems.
    • Petitioner asserted that the ’666 application's incorporation by reference of the ’451 and ’712 patents (which disclose two-mirror systems) was explicitly limited to their "field of view" and did not incorporate the entire two-mirror structure.
    • Therefore, the ’077 patent's effective filing date is no earlier than August 5, 2010. This later date makes the ’026 publication (published in 2002) and other references prior art under §102.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-27 of the ’077 patent as unpatentable.