PTAB

IPR2018-00931

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

Title: Exterior Sideview Mirror System
Brief Description: The ’243 patent relates to a vehicular exterior sideview mirror assembly. The claims recite an assembly comprising two separate mirror elements—a main flat (plano) mirror and an adjacent auxiliary curved (non-plano) mirror for viewing a blind spot—mounted on a single, electrically-actuated backing plate within a mirror housing.

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 owner’s earlier abandoned '712 patent, discloses every element of the challenged independent claims. This prior art teaches a sideview mirror assembly with a housing, a single backing plate, an actuator, a main plano mirror, and an adjacent auxiliary non-plano mirror with overlapping fields of view. The publication also discloses the claimed rigid polymeric molded backing plate, the specific mirror curvatures, and the material options for the mirror elements, including a glass substrate with a metallic reflector coating. Petitioner contended that the patent owner effectively admitted these teachings during the original prosecution when it improperly relied on this disclosure to support the claims.

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 teaches the base two-mirror assembly as recited in the independent claims. The '011 publication, which issued as the '756 patent, supplies the additional limitations required by dependent claims 7-9 and 18-20. Specifically, '011 taught forming a mirror element from a flat polymeric substrate having a thin, flexible glass layer applied to its surface to provide an anti-abrasion function.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings to improve the mirror assembly of '026. The '011 publication described a lightweight, durable, and abrasion-resistant mirror element, which provided a known solution to a known problem in the field of automotive mirrors.
- Expectation of Success: A POSITA would have had a reasonable expectation of success in applying the thin-glass-on-polymer substrate of '011 as the main plano mirror element in the '026 assembly, as both references relate to automotive mirror construction.

Prior Art Relied Upon: Henion (WO 2001/44013) and Catlin (Patent 5,721,646).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Henion discloses a side-view mirror assembly containing nearly all claimed structural elements, including a flat primary mirror and a curved auxiliary mirror mounted adjacently on a common backing plate. Henion also teaches the overlapping fields of view to cover a vehicle's blind spot. Petitioner contended that Henion lacks only an explicit disclosure of a polymeric molded backing plate. Catlin was cited to supply this missing element, as it explicitly teaches an automotive mirror support plate that is injection-molded from a resinous plastic.
- Motivation to Combine: A POSITA would combine Henion and Catlin because they are in the same technical field and address the same components. To mass-produce the mirror design disclosed in Henion, a POSITA would have been motivated to use the well-known, cheaper, and more efficient method of injection molding for the backing plate, as taught by Catlin.
- Expectation of Success: The combination involved applying a known manufacturing technique (Catlin's injection molding) to a known component (Henion's backing plate), leading to a high expectation of success.

Defective Priority Claim: A central argument of the petition was that Patent 8,128,243 is not entitled to its claimed priority date and should be afforded an effective filing date no earlier than August 5, 2010. Petitioner asserted that the claimed two-mirror invention was first disclosed in an abandoned patent family (the '712 patent family). The subject matter was later copied into the '045 application, the parent of the '243 patent. However, the '045 application's own parent (the '666 application) exclusively described a single-element mirror and did not properly incorporate the two-mirror disclosure by reference. This break in the priority chain renders the '026 publication (from the abandoned family) valid §102 prior art.
Insufficient Rule 131 Declaration: Petitioner argued that during prosecution, the patent owner overcame a rejection over the '026 publication by filing a legally and factually deficient Rule 131 declaration to "swear behind" the reference. Petitioner contended the declaration failed to show actual reduction to practice of the invention as a whole, did not address all claim limitations (such as the thin-glass feature), and improperly relied on the filing dates of unrelated applications as evidence of constructive reduction to practice.

Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the examiner committed legal error during prosecution. The petition asserted that the examiner failed to properly consider the priority issue and accepted a deficient Rule 131 declaration without sufficient analysis. By pointing out how the examiner erred in evaluating the asserted prior art and priority claims, and by presenting new arguments and evidence not before the examiner, Petitioner contended that the Becton, Dickinson factors weigh heavily in favor of institution.

Petitioner requests institution of an inter partes review and cancellation of claims 1-37 of Patent 8,128,243 as unpatentable.