PTAB

IPR2018-00520

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

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Exterior Rearview Mirror Assembly
  • Brief Description: The ’534 patent discloses an exterior rearview mirror assembly for a motor vehicle. The assembly features two separate mirrors—a primary mirror and a curved "spotting" mirror—that are both fixedly secured to a single mirror support, which is movably secured within an outer mirror casing.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 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 parent application of an abandoned patent family, discloses every element of the challenged claims. It describes an exterior rearview mirror assembly with a planar primary mirror and a curved auxiliary (spotting) mirror mounted together on a single backing plate (the claimed "single mirror support"). The publication explicitly teaches the key features of independent claims 1, 7, and 13, including the movable support within a casing, the fixed attachment of both mirrors to the support, the different radii of curvature, and the overlapping fields of view. It also discloses the limitations of the dependent claims, such as the distinct support portions on the backing plate and the specified angles and positions of the spotting mirror.
    • Key Aspects: The validity of this ground hinges on Petitioner's assertion that the ’534 patent is not entitled to its claimed priority date, making the ’026 publication (published in 2002) valid prior art under 35 U.S.C. §102. Petitioner dedicated substantial argument to establishing that the ’534 patent’s effective filing date is no earlier than August 5, 2010.

Ground 2: Claims 13 and 20 are obvious over Henion in view of Platzer.

  • Prior Art Relied Upon: Henion (WO 2001/44013) and Platzer (WO 2001/81956).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Henion discloses the basic structure claimed: an exterior automotive mirror with a flat primary mirror and a curved auxiliary mirror mounted adjacently on a common backing plate within a housing. Henion teaches all structural elements but may not explicitly disclose the precise angular relationship required by claims 13 and 20. Platzer was introduced to supply this teaching, as it describes a similar dual-mirror system and provides detailed analysis on the optimal angles between the mirrors to eliminate a driver's blind spot. Specifically, Platzer teaches that a 10-degree rotation of the spotter mirror is needed for a typical geometry, rendering the "at least about three degrees" limitation of claim 20 obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Henion and Platzer as both references are in the same field of automotive mirrors and address the identical problem of improving driver field of view (FOV) by using a multi-mirror assembly. A POSITA seeking to optimize the performance of the mirror system in Henion would be motivated to consult a reference like Platzer, which provides an explicit technical rationale and geometric guidance for selecting the angle between the mirrors to enhance safety.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the teachings. Applying the specific angular orientation for a spotter mirror from Platzer to the structurally similar assembly in Henion would be a straightforward design choice to achieve the predictable and desired result of reducing the vehicle's blind spot.

4. Key Technical Contentions (Beyond Claim Construction)

  • Defective Priority Claim: A central contention of the petition was that the ’534 patent is not entitled to the benefit of any filing date earlier than August 5, 2010. Petitioner argued that the parent application in the priority chain (the ’666 application) provides no written description support for the claimed two-mirror invention. The ’666 application, according to Petitioner, unambiguously describes its invention as a single-element, multi-radius mirror. The two-mirror subject matter of the ’534 patent was allegedly copied from an abandoned, earlier patent family (the ’712 family) and improperly inserted into the application that led to the ’534 patent, breaking the priority chain.
  • Improper Incorporation by Reference: Supporting the defective priority claim, Petitioner argued that the ’666 application did not incorporate the ’451 and ’712 patents (which disclose the two-mirror assembly) in their entirety. The petition contended that the incorporation language in the ’666 application was narrowly targeted only to the "field of view" of the prior art mirrors for the purpose of performance comparison. It was not a broad incorporation of the entire two-mirror structure. Because the ’666 application’s own disclosure was directed to a different, single-mirror invention, it failed to provide written description support for the claims of the ’534 patent, thus invalidating the claim to an earlier filing date.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 8,267,534 as unpatentable.