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

1. Case Identification

• Patent #: 8,783,882
• Filed: January 25, 2018
• Petitioner(s): SMR Automotive Systems USA, Inc.
• Patent Owner(s): Magna Mirrors of America, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Extended Field of View Exterior Mirror Element For Vehicle
• Brief Description: The ’882 patent relates to a vehicle exterior sideview mirror assembly. The technology uses two separate mirror elements—a main flat (plano) mirror and an auxiliary curved (non-plano) mirror—mounted adjacently on a single backing plate to expand the driver's rearward field of view and reduce blind spots.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are anticipated by the ’026 publication under 35 U.S.C. §102

• Prior Art Relied Upon: ’026 publication (Application # 2002/0072026).
• Core Argument for this Ground: Petitioner asserted that the ’882 patent is not entitled to its claimed priority date, making the ’026 publication—which published in 2002—valid prior art. The invalidity of the priority claim stemmed from a broken chain of priority and a lack of written description support in the purported parent applications for the claimed two-mirror structure (as detailed in Section 5). Because the ’026 publication is effective prior art and discloses every limitation of the challenged claims, claims 1-20 are anticipated.
  • Prior Art Mapping: The ’026 publication, which corresponds to the patent owner’s earlier abandoned work, was argued to describe all claimed features. This includes an exterior mirror assembly with a polymeric backing plate, an actuator, and two mirror elements (a main plano mirror and a curved auxiliary mirror) mounted side-by-side. The publication allegedly discloses the specific overlapping fields of view, angular relationships, and other limitations found in the independent and dependent claims.

Ground 2: Claims 1, 2, 3, 18, and 20 are obvious over Henion in view of Platzer, Catlin, Silvestre, and Yamabe under 35 U.S.C. §103

• Prior Art Relied Upon: Henion (WO 2001/44013), Platzer (WO 2001/81956), Catlin (Patent 5,721,646), Silvestre (FR 2650982), and Yamabe (Patent 6,984,048).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Henion taught the foundational structure: an automotive sideview mirror with a flat primary mirror and a curved auxiliary mirror mounted adjacently on a common backing plate. The remaining references were alleged to supply the other claimed elements. Catlin taught injection molding of the backing plate from a resinous plastic. Platzer provided the claimed total field of view (FOV) of at least 25 degrees. Silvestre and Yamabe taught the specific angular tilt (0.75° to 5°) and overlapping FOV (2° to 20°) between the primary and auxiliary mirrors.
  • Motivation to Combine: A POSITA would combine these references because they all address the same problem of improving rearward FOV in automotive mirrors. A POSITA would have been motivated to incorporate Catlin’s known and efficient polymeric molding technique into Henion’s base design. Similarly, to optimize the FOV, a POSITA would look to references like Platzer, Silvestre, and Yamabe for established geometric configurations and angular ranges to predictably eliminate blind spots.
  • Expectation of Success: Combining these known elements from the same technical field would have yielded predictable results. Using polymeric molding for a backing plate or applying known angular configurations to a two-mirror system were standard design choices with foreseeable benefits in manufacturing and performance.

4. Key Claim Construction Positions

• The petition focused on the term “side-by-side” as recited in the claims. For the purposes of the IPR, Petitioner adopted the Patent Owner’s broad interpretation from related litigation, which includes an arrangement where a secondary mirror is placed in a corner of a primary mirror. Petitioner contended that even under this broad construction, or a narrower one where mirrors face each other along a single edge, the claims were unpatentable based on the asserted prior art.

5. Key Technical Contentions (Beyond Claim Construction)

• Defective Priority Claim: The petition’s primary technical contention was that the ’882 patent was not entitled to the benefit of any filing date earlier than August 5, 2010. This argument was central to establishing the ’026 publication as prior art for Ground 1. Key points included:
  • Lack of Written Description Support: The ’882 patent claimed priority through a chain of applications originating from the ’666 application. Petitioner argued the ’666 application exclusively described a single-element mirror with varying radii of curvature. While the ’666 application mentioned the '451 and '712 patents (which disclose a two-element mirror), it did so only to incorporate their "field of view" for comparison, not their two-mirror structure. Therefore, the priority chain lacked written description support for the claimed invention.
  • Improper Revival of Abandoned Application Family: Petitioner contended that the Patent Owner improperly revived the abandoned ’712 patent family (which disclosed the two-mirror design) by copying its entire specification into the ’045 application, an ancestor of the ’882 patent. This allegedly broke the continuous chain of co-pendency required under §120 and constituted an impermissible attempt to claim the benefit of a long-abandoned application.
  • Insufficient Antedating Declaration: During prosecution of the ’882 patent, the Patent Owner submitted a Rule 131 declaration to "swear behind" the ’026 publication. Petitioner argued this declaration was legally insufficient because it failed to show an actual reduction to practice or diligence, and improperly relied on the filing of unrelated patent applications as a constructive reduction to practice, contrary to established law.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-20 of Patent 8,783,882 as unpatentable.