Magna Mirrors of America, Inc.

Patent Trials and Appeals Board

Oct 5, 2021

IPR2020-00777 (P.T.A.B. Oct. 5, 2021)

Trials@uspto.gov Paper 22
571-272-7822 Date: October 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MOTHERSON INNOVATIONS CO., LTD.,
Petitioner,
v.
MAGNA MIRRORS OF AMERICA, INC.,
Patent Owner.

IPR2020-00777
Patent 10,261,648 B2

Before SALLY C. MEDLEY, SHEILA F. McSHANE, and JESSICA C.
KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
On March 31, 2020, Motherson Innovations Co., Ltd. (“Petitioner”)
filed a Petition requesting an inter partes review of claims 1–13 and 15–36
of U.S. Patent No. 10,261,648 B2, which issued on April 16, 2019
(Ex. 1001, “the ’648 patent”). Paper 1 (“Pet.”). Magna Mirrors of America,
Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). Taking into account the arguments presented in these
papers, we determined the information presented in the Petition established
that there was a reasonable likelihood that Petitioner would prevail with
respect to at least one challenged claim, and we instituted this inter partes
review as to all challenged claims on October 7, 2020. Paper 7 (“Dec.”).
During the course of the trial, Patent Owner filed a Patent Owner
Response (Paper 11, “PO Resp.”); Petitioner filed a Reply to the Patent
Owner Response (Paper 13, “Pet. Reply ”); and Patent Owner filed a Sur-
reply (Paper 14, “PO Sur-reply”). An oral hearing was held on
July 13, 2021, and a transcript of the hearing is included in the record. Paper
20 (“Tr.”).
For the reasons discussed in detail below, we determine that Petitioner
has shown by a preponderance of the evidence that claims 1, 2, 5, 8–11, 15,
16, 26, and 34–36 of the ’648 patent are unpatentable, but has not shown by
a preponderance of the evidence that claims 3, 4, 6, 7, 12, 13, 17–25, and
27–33 of the ’648 patent are unpatentable.

II. BACKGROUND
A. The ’648 Patent (Ex. 1001)
The ’648 patent describes an exterior rearview mirror assembly for a
vehicle, e.g., a side mirror, mounted on the exterior of a vehicle. Ex. 1001,
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code (57), 58:49–52. Typically, exterior rearview mirror assemblies include
a mirror casing (or housing) which holds a mirror reflective element. Id. at
70:4–6. Further, the position of the mirror reflective element can be
adjusted so that the driver of the vehicle can see a particular “rearward field
of view” in the mirror reflective element. See id. at 61:57–59.
One “typical known exterior mirror construction” has the mirror
reflective element “disposed in or housed in a mirror casing 764 (and is
inboard of the open end of the mirror casing and not attached thereto) and is
adjustable relative to the mirror.” Ex. 1001, 70:4–11; see id. at Fig. 68B.
That is, the mirror reflective element itself is adjusted (or repositioned),
while the mirror casing is not repositioned. See id. In the ’648 patent, the
mirror assembly, instead, has its mirror reflective element “disposed at and
attached to or otherwise fixed relative to the mirror casing 744, such that,
during adjustment, the reflective element and mirror casing move in
tandem.” Id. at 70:17–23; see id. at 71:45–57. That is, the mirror casing and
the attached mirror reflective element are repositioned together to adjust the
rearward field of view in the mirror reflective element, rather than only
repositioning the mirror reflective element.
Figure 56 shows such a mirror assembly and is reproduced below.
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Figure 56 is an exploded perspective view of an exterior rearview mirror
assembly for “an exterior rearview mirror assembly that is configured for
mounting at a side region of a vehicle.” Ex. 1001, 5:6–8, 58:50–52. Starting
at the leftmost element, “exterior rearview mirror assembly 610 comprises a
reflective element 612,” e.g., a mirror. Id. at 58:56–64. Reflective element
612 “is attached at a rear attaching portion 614a of a mirror head housing
614.” Id. at 58:58–65. For example, reflective element 612 can be “adhered
or otherwise fixedly attached” to rear attaching portion 614a (of mirror head
housing 614). Id. at 58:65–67. Furthermore, “the front perimeter edge
regions of the reflective element [can be] curved or rounded or beveled to
provide a smooth or continuous transition between the generally planar front
surface of the reflective element and the side walls or surfaces of the mirror
housing.” Id. at 58:67–59:6; see id. at 34:57–36:22, Figs. 32–34, 37–39.
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Continuing clockwise in Figure 56, mirror head housing 614 and
affixed reflective element 612 are attached to a series of brackets and
rotating actuators. Specifically, “mirror head housing 614 is attached at an
inner bracket or mounting element 616” which is then “attached at a first
actuator 618.” Id. at 59:7–9. First actuator 618 can be driven rotationally,
and, accordingly, “imparts a rotation of bracket 616 and mirror head housing
614 about a first pivot axis 618a.” Id. at 59:9–12. Still following the
components clockwise, first actuator 618 “is attached to or mounted at an
outer bracket 620 that is mounted to or attached to a second actuator 622.”
Id. at 59:12–14. Second actuator 622 can also be driven rotationally and so,
“imparts of rotation of bracket 620 and first actuator 618 and bracket 616
and mirror head housing 614 about a second pivot axis 622a.” Id. at 59:12–
18. Finally, “second actuator 622 . . . is attached at or disposed at or in an
outer cover 624” and “outer cover 624 is disposed at or attached to or
mounted at the side portion of the vehicle (and pivotally or rotatably
mounted thereat, such as via the actuator 622) when the exterior mirror
assembly is normally mounted at the side of the vehicle.” Id. at 59:13–22.
With such an assembly and mounting design, the driver of a vehicle is
able to adjust his or her rearward and/or sideward field of view, which is
reflected in the assembly’s reflective element. Id. at 59:23–26; see id. at
67:55–67. Specifically, “the mirror head is adjustable about the first and
second axes (via selective actuation of one or both actuators) to adjust the
rearward field of view for the driver of the vehicle.” Id. at 59:23–26, 66:48–
52. The actuators rotate their respective brackets, thereby adjusting the
position of the mirror head attached to the brackets. Id. at 59:26–39. And,
because the mirror head and reflective element are attached, adjusting the
position of the mirror head via the actuators adjusts the position of the
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reflective element in tandem. Id. at 69:5–9, 70:21–23, 71:45–47
(“[A]ctuators adjust the mirror head and the reflective element in tandem
(and do not adjust the reflective element relative to the mirror casing).”).
Further, the actuators are relatively positioned to allow the mirror
head (and attached reflective element) to be rotated about multiple axes. See
id. at 59:26–47, 59:55–60:4. For example, “the pivot axes [of the actuators]
may be angled relative to one another at an angle of at least about 15 degrees
or at least about 30 degrees or more, such as an angle of up to about 90
degrees.” Id. at 59:42–46. Further, the multiple axes of rotation include
“pitch, yaw and roll axes or about a generally vertical axis and/or other axes
non-coaxial with the first or generally vertical axis or the like.” Id. at 68:19–
22; see id. at 68:47–50. And, “[b]ecause of the angled relationship of the
axes of rotation of the actuators and the angled interface or mounting
interface of the mirror head housing 614 and outer cover 624, the first and
second actuators may be operated together or cooperatively operated to
laterally adjust the rearward field of view.” Id. at 59:55–59. Alternatively,
in other embodiments, “the first and second actuators may be operated
separately or together or cooperatively operated to vertically and/or laterally
adjust the rearward field of view.” Id. at 66:63–67:10; see id. at 68:42–50.
Additionally, “the actuators 618, 622 may operate at different speeds to
provide the desired or selected lateral adjustment with limited vertical
adjustment (and/or to provide a desired or selected vertical adjustment with
limited lateral adjustment and/or to provide a desired or selected vertical and
lateral adjustment).” Id. at 60:12–17.
B. The Challenged Claims
Of the challenged claims, claims 1, 15, and 26 are independent.
Claim 1 is reproduced below.
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1. An exterior rearview mirror assembly configured for
mounting at an exterior portion of a vehicle, said exterior
rearview mirror assembly comprising:
a mirror head;
an exterior mirror reflective element fixedly attached at
said mirror head;
an attachment portion configured for attachment at an
exterior portion of a vehicle equipped with said exterior rearview
mirror assembly;
a multi-axis adjustment mechanism comprising at least
one electrically-operable actuator;
wherein said multi-axis adjustment mechanism is operable
to move said mirror head, with said exterior mirror reflective
element fixedly attached thereto, about multiple axes relative to
said attachment portion; and
wherein said exterior mirror reflective element moves in
tandem with movement of said mirror head relative to the
exterior portion of the body of the equipped vehicle at which said
exterior rearview mirror assembly is attached to adjust the
rearward field of view of a driver of the equipped vehicle who
views said exterior mirror reflective element when operating the
equipped vehicle.
Ex. 1001, 76:38–60.
C. Related Proceedings
Petitioner and Patent Owner state that there are no related proceedings
involving the ’648 patent. Pet. 74, Paper 4, 1.
D. References
Petitioner relies on the following references:
1. “Lupo” (GB 2,244,965 A; published Dec. 18, 1991) (Ex. 1003);
2. “McCabe” (US 7,255,451 B2; issued Aug. 14, 2007)
(Ex. 1004); and
3. “Tsuyama” (US 6,270,227 B1; issued Aug. 7, 2001) (Ex. 1005).
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E. Testimonial Evidence
Petitioner supports its challenge with a declaration from David R.
McLellan. (Ex. 1002, “McLellan Dec.”).
Patent Owner has submitted a declaration from Michael Nranian
(Ex. 2001, “Nranian Dec.”) and a First Supplemental Declaration from
Mr. Nranian (Ex. 2010, “Nranian Supp. Dec.”). Petitioner cross-examined
Mr. Nranian by deposition. Ex. 1020 (“Nranian Dep.”).
F. Grounds Asserted
Petitioner challenges the patentability of claims 1–13 and 15–36 of the
’648 patent on the following grounds:

Claim(s)
Challenged

35 U.S.C. §

Reference(s)/Basis
1, 3, 5–13, 15 103(a)1 Lupo
2, 16–17, 19–36 103(a) Lupo, McCabe
4 103(a) Lupo, Tsuyama
18 103(a) Lupo, McCabe, Tsuyama
1, 5, 8–9, 12, 15 103(a) Tsuyama
2, 16, 19–20, 24–
27, 31, 33, 36
103(a) Tsuyama, McCabe

III. ANALYSIS
A. Legal Principles
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
’648 patent has an effective filing date prior to the effective date of the
applicable AIA amendment, we refer to the pre-AIA versions of § 103.
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) when in the record,
objective evidence of nonobviousness.2 See Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
B. Level of Ordinary Skill in the Art
Petitioner asserts a person of ordinary skill in the art “would have
possessed at least a bachelor’s degree in mechanical engineering or
engineering technology with at least two years of experience in the
automotive industry (or equivalent degree or experience).” Pet. 3 (citing
Ex. 1002 ¶¶ 34–36). Petitioner also asserts that a “person could also have
qualified as a [person of ordinary skill in the art] with some combination of
(1) more formal education (such as a master’s degree) and less technical
experience, or (2) less formal education and more technical or professional
experience.” Id. (citing Ex. 1002 ¶¶ 34–36).
Patent Owner asserts, both before and after institution, that a person
having ordinary skill in the art “would hold a Master of Science degree in

2 Patent Owner does not present any objective evidence of nonobviousness
as to the challenged claims.
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any kind of engineering relevant to automotive component design (e.g.,
electrical engineering, mechanical engineering, or optical engineering), as
well as 2–3 years of experience in the automotive industry designing
components for automobiles.” Prelim. Resp. 7 (citing Ex. 2001 ¶¶ 35–41;
Ex. 2002); PO Resp. 1 (citing Ex. 2001 ¶¶ 35–41; Ex. 2002).
In our Decision on Institution, we adopted Patent Owner’s
formulation because it is consistent with the record, and we also agreed with
Petitioner that more formal education with less technical experience and vice
versa could suffice. Dec. 9. Neither party asks us to depart from that
formulation, and we continue to apply it here.

C. Claim Construction
In an inter partes review, we construe claim terms according to the
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under that standard,
we construe claims “in accordance with the ordinary and customary meaning
of such claim as understood by one of ordinary skill in the art and the
prosecution history pertaining to the patent.” Id. Furthermore, we expressly
construe the claims only to the extent necessary to resolve the parties’
dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that
are in controversy, and only to the extent necessary to resolve the
controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999))).
In our Decision on Institution, we discussed the following limitations:
(1) “an exterior mirror reflective element fixedly attached at said mirror
head”; (2) “yaw” and “roll”; and (3) “rearward field of view.” Dec. 10–15.
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Regarding the first limitation, we determined the limitation “is not limited to
attachment of the exterior mirror reflective element at a peripheral exterior
surface portion of said mirror head” as Patent Owner argued. Id. at 10, 14.
Regarding “yaw” and “roll,” we did not adopt either party’s proposed
construction. Id. at 14. We noted that the claims which use the terms “yaw”
and “roll” “recite a frame of reference for the yaw and roll adjustment: ‘yaw
and roll adjustment of said exterior mirror reflective element relative to the
exterior portion of the equipped vehicle at which said exterior rearview
mirror assembly is attached.’” Id. at 14–15. We further determined that
Petitioner’s proposed construction was overbroad, and that Patent Owner’s
proposed construction defined “yaw” and “roll” “from the frame of
reference of the vehicle as a whole.” Id. at 15. We invited the parties to
further discuss the construction of “yaw” and “roll” considering the recited
frame of reference. Id. Regarding “rearward field of view,” we adopted
Patent Owner’s proposed construction as a “view of rearwardly approaching
or following vehicles.” Id.3
In its trial briefing, Patent Owner proposes constructions for the
following claim limitations: (1) “exterior mirror reflective element fixedly
attached at said mirror head”; (2) “a bracket to which said exterior mirror
reflective element is fixedly attached”; (3) “wherein the outermost front
perimeter edge of said exterior mirror reflective element is rounded”; and (4)
“yaw” and “roll.” PO Resp. 1–37. In its Reply, Petitioner addresses the

3 In its Response, Patent Owner also proposed the same construction. PO
Resp. 24. As noted, in our Decision on Institution, we preliminarily agreed
with that construction (Dec. 15), and during trial, Petitioner did not dispute it
(Pet. Reply 4). We continue to adopt Patent Owner’s undisputed proposed
construction of this term.
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same limitations. Pet. Reply 1–17. For purposes of this decision, we
address all of these terms below.
1. “exterior mirror reflective element fixedly attached at
said mirror head”
In its Petition, Petitioner does not propose a construction for the
limitation “exterior mirror reflective element fixedly attached at said mirror
head,” but instead proposes that the limitation “fixedly attached” means
“securely fastened, either directly or indirectly, and not readily detachable.”
Pet. 5–6 (citing Ex. 1002 ¶¶ 48–49). Prior to institution, Patent Owner
argued that we should construe the term “an exterior mirror reflective
element fixedly attached at said mirror head” to mean that the mirror
reflective element is “fixedly attached to a peripheral exterior surface
portion of said mirror head.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 42–45, 75–
88) (emphasis omitted). In our Decision on Institution, we preliminarily
determined that this claim phrase is not limited in the way Patent Owner
contends, and we did not further construe it at that stage of the proceeding.
Dec. 10–14.
During trial, the issue as to this claim phrase largely remains the same.
In its Response, Patent Owner contends, as it did prior to institution, that the
“exterior mirror reflective element fixedly attached at said mirror head”
means “fixedly attached to a peripheral exterior surface portion of said
mirror head.” PO Resp. 1 (citing Ex. 2001 ¶¶ 42–45, 75–88). Patent Owner
contends that the embodiment depicted in Figure 58A of the Specification
informs the meaning of the claim language at issue. Id. at 1–2 (citing
Ex. 1001, Fig. 58A; Phillips, 415 F.3d at 1315–16). Patent Owner further
contends that all exterior mirror embodiments in the Specification support
the interpretation that “[t]he mirror reflective element is an element separate
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from the mirror head, and is attached to a particular peripheral exterior
surface portion of the mirror head, rather than recessed inward within the
mirror head.” Id. at 2–3 (citing Ex. 1001, Figs. 56, 56A, 68A; Ex. 2001
¶¶ 78–85). Patent Owner contends the ’648 patent describes how the
exterior mirror reflective assembly attached at the mirror head provides “a
smooth or continuous transition between the generally planar front surface
of the reflective element and the side walls or surfaces of the mirror
housing,” and that the Specification further distinguishes the configuration
of the ’648 patent from known exterior mirror constructions, as depicted in
Figure 68B, which dispose or house the mirror reflective element within the
mirror casing, “inboard of the open end of the mirror casing and not attached
thereto.” Id. at 3–4 (citing Ex. 1001, 58:56–59:6, 70:4–32, Fig. 68B;
Ex. 2001 ¶¶ 82–83). Patent Owner argues this “allows for space within the
mirror casing that previously was occupied by the mirror actuators of known
or conventional mirror assemblies.” Id. at 5 (citing Ex. 1001, 70:24–27;
Ex. 2001 ¶¶ 83–84); see also id. (contrasting the “known construction” as
depicted in Figure 68B with that of the present invention as depicted in
Figure 68A).
Addressing the Decision on Institution, Patent Owner disagrees that
the ’648 patent “‘does not make a distinction between’ attachment at the
peripheral exterior surface of the mirror head and ‘inward from that
surface.’” Id. at 6 (citing Dec. 13). Patent Owner contends the “’648
[patent] makes a clear distinction between (i) a ‘frameless reflective
element’ . . . and (ii) a mirror reflective element having a bezel . . . at the
perimeter region of the front surface of the reflective element” and that the
frameless reflective element of the ’648 patent provides the benefit of an
enhanced viewing area. Id. (citing Ex. 1001, 72:46–48, 60–67; Ex. 2010
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¶¶ 5–6; Ex. 2011, 18–19). Patent Owner also contends the recitation of
“attached at” as opposed to the prepositional “to” “indicat[es] a location in
particular place or position.” Id. at 7.
Patent Owner further disputes our determination in the Decision on
Institution that the “frameless” appearance is “an optional feature of the
invention.” Id. at 8 (citing Dec. 13). Patent Owner contends that because
the ’648 patent does not describe the exterior mirror reflective element
disposed within the housing of the mirror head, “the ‘frameless’ look is a
necessary benefit of the ‘present invention.’” Id. Thus, Patent Owner
contends that the claim language of the ’648 patent is not broader than the
disclosed embodiment that attaches the reflective element at the periphery of
the mirror head. Id. (citing SuperGuide Corp. v. DirecTV Enters., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004)). Patent Owner supports this contention by
explaining the Specification “describes the features of the ‘present
invention’ as a whole, [which] limits the scope of the invention.” Id. at 9
(quoting Verizon Services Corp. v. Vonage Holdings Corp., 503 F.3d 1295,
1308 (Fed. Cir. 2007)) (citing SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001); Schriber-
Schroth Co. v. Cleveland Trust Co., Chrysler Corp., 305 U.S. 47, 57
(1938)).
Patent Owner also contends the Board should narrowly construe this
limitation to require attachment of the mirror reflective element at the
periphery of the mirror head in order to preserve the validity of the actual
invention. Id. at 9–10 (citing Smith v. Snow, 294 U.S. 1, 14 (1935); Ruckus
Wireless, Inc. v. Innovative Wireless Solutions, 824 F.3d 999, 1004 (Fed.
Cir. 2016); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545,
1556 (Fed. Cir. 1996); Phillips, 415 F.3d at 1327). Patent Owner further
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contends the Board “should not have adopted the broader meaning that
impermissibly captures the very prior art that the ’648 invention sought to
overcome.” Id. at 10 (citing Ruckus Wireless, Inc., 824 F.3d at 1004).
In addition, Patent Owner argues that claim 2 of the ’648 patent
supports Patent Owner’s construction. Id. at 10–11. Specifically, Patent
Owner relies on Figure 68A in tandem with claim 2’s recitation that the
“outermost front perimeter edge of [the] exterior mirror reflective element is
rounded.” Id. at 10 (citing Ex. 1001, 76:61–64). Patent Owner contends
Figure 68A depicts the rounded front perimeter edge of the mirror reflective
element is exposed such that the edge is “contactable by a person,” and that
“no part of [the] mirror casing or shell [] overlap[s] onto or over the
outermost glass surface of [the] mirror reflective element.” Id. Thus, Patent
Owner argues that the outermost front perimeter edge of the reflective
element is rounded in claim 2 because it is exposed and contactable. See
id. at 11 (citing Ex. 2001 ¶ 88).
In its Reply, Petitioner asserts that Patent Owner’s proposed
construction attempts to improperly import a limitation from the
Specification into the claims. Pet. Reply 2 (citing PO Resp. 1). Petitioner
contends that the ’648 patent describes both embodiments where the exterior
reflective element is fixedly attached at a peripheral exterior surface of the
mirror head and embodiments where the reflective element is not attached to
an external periphery of the mirror head. Id. (citing Dec. 13). For example,
Petitioner argues that the disclosure of the ’648 patent supports “that the
mirror reflective element may be fixedly attached to either a surface or a
mounting portion of the mirror head.” Id. (citing Ex. 1001, 71:53–59).
Petitioner next points to the Specification’s disclosure relating to
interior mirrors and how “[o]ptionally, the mirror assembly may include a
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conventional bezel.” Id. (citing Ex. 1001, 33:64–66). Petitioner contends
this disclosure of an optional bezel also applies to the exterior rearview
mirror assembly of the present invention, since “aspects of the [interior]
mirror assemblies . . . may be incorporated in or associated with an exterior
rearview mirror assembly that is configured for mounting at a side region of
a vehicle.” Id. (citing Ex. 1001, 58:49–52). As an example, Petitioner
points to Figure 40 as depicting “a thin flat bezel or cover element [] may
partially overlap a perimeter region of the front surface of the mirror
substrate [] (such as a front substrate of an electro-optic or electrochromic
reflective element or such as a prismatic substrate of a prismatic reflective
element).” Id. at 2–3 (citing Ex. 1001, 36:23–28, Fig. 40).
Petitioner further contends that Mr. Nranian’s (Patent Owner’s expert)
deposition testimony “regarding claim construction [is] not credible and
should be disregarded.” Id. at 3. Specifically, Petitioner argues Mr. Nranian
used an improper approach of “look[ing] at the product specifically or the
prior art or whatever you’re saying reads on the claims” to discern what the
claim term means. Id. (citing Ex. 1020, 105:3–13; Wilson Sporting Goods
Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1330 (Fed. Cir. 2006)).
In its Sur-reply, Patent Owner argues Petitioner’s reliance on Figure
40 as depicting a bezel that contradicts Patent Owner’s proposed
construction is misplaced. PO Sur-reply 2. Specifically, Patent Owner
contends “[w]hether a bezel covers a portion of the mirror reflective element
is separate from how the reflective element is attached to the mirror head.”
Id. According to Patent Owner, the bezel is described as “a separate, stand-
alone piece that can be ‘attach[ed]’ to the ‘mirror casing’” and “is not
described as a portion of the mirror head.” Id. (citing Ex. 1001, 36:23–47).
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Patent Owner also contends that Petitioner’s arguments ignore the
“rounded edge” limitation that is added in claim 2. Id. at 3. Patent Owner
relies upon the doctrine of claim differentiation to assert that because claim
1 is silent regarding the outermost front perimeter edge of the exterior mirror
reflective element, claim 1 necessarily encompasses both rounded and non-
rounded edges and that “[o]ne of skill in the art would know that a non-
rounded exposed edge would be unsafe but for the use of a protective
element.” Id. (citing Ex. 2010 ¶¶ 21–22).
Patent Owner also addresses Petitioner’s arguments about the
credibility of Mr. Nranian’s testimony. Id. at 3–4. Patent Owner contends
that Petitioner mischaracterizes Mr. Nranian’s testimony. Id. (citing
Ex. 1020, 103:13–15, 103:22–23, 104:11–13, 105:3–13). Instead, Patent
Owner contends Mr. Nranian applied the correct legal standard and testified
that “you look at . . . the claim terms, the specification, the prosecution
history, and the extrinsic evidence in that order . . . to interpret what these
claim terms mean[].” Id. at 4 (quoting Ex. 1020, 101:22–102:18).
After having reviewed the claim language, the arguments, and the
evidence, we determine that “an exterior mirror reflective element fixedly
attached at said mirror head” does not require the mirror reflective element
to be fixedly attached to a peripheral exterior surface portion of the mirror
head as Patent Owner contends.
Turning first to the claim language, claim 1 provides further context
when describing the adjustment operation by reciting the “multi-axis
adjustment mechanism is operable to move the mirror head, with said
exterior mirror reflective element fixedly attached thereto . . . wherein said
exterior mirror reflective element moves in tandem with movement of said
mirror head.” Ex. 1001, 76:42–43, 76:49–54. Thus, independent claim 1
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recites a particular attachment between the mirror reflective element and the
mirror head (i.e., “an exterior mirror reflective element fixedly attached at
said mirror head”) and also recites those two structure move in tandem with
each other. Thus, the language of claim 1 recites a fixed attachment between
the mirror reflective element and the mirror head and further describes the
movement between those two elements as being “in tandem.” Notably,
nothing in the claim language recites the attachment of the mirror reflective
element at or to a peripheral exterior surface portion of the mirror head.
We do not agree with Patent Owner’s argument that Petitioner’s
construction effectively rewrites the claim to recite “fixedly attached to”
instead of “fixedly attached at.” PO Resp. 7. We agree with Patent Owner
that “the recitation of ‘attached at’ . . . ‘indicat[es] a location in particular
place or position.’” Id. The claims, however, recite generally “at a mirror
head” instead of a more particularized “at some particular surface of the
mirror head.” We also do not agree with Patent Owner’s contentions that
rely on dependent claim 2 because, as discussed in detail below, we do not
adopt Patent Owner’s proposed construction of the additional limitation of
claim 2.
We next consider the Specification’s description of the exterior
rearview mirror assembly and how the mirror reflective element is attached
to the assembly as a whole. Ex. 1001, 68:51–72:23; see also Tr. 61:3–20
(Patent Owner noting “the discussion [regarding the exterior mirror
reflective element fixedly attached at said mirror head] has to center on
Figures 68A and 68B”). In particular, “a mirror casing or shell [] (FIG.
68A) may be readily attached at the mirror attachment element or bracket or
to the mirror reflective element itself in order to provide the desired or
appropriate appearance or styling of the exterior rearview mirror at the side
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of the vehicle and to provide mechanical protection of the reflective element
and the like from environmental exposure.” Ex. 1001, 68:62–69:1. The
disclosure is not limiting as to the means and structure of attachment
between the mirror reflective element and the mirror casing. Id. at 69:1–4
(“The mirror casing or shell may be attached via any suitable means, such as
via snapping one or more casing portions at the rear of the mirror reflective
element and/or bracket.”). When the two are attached, however, “the mirror
casing or shell moves in tandem with the [] movement of the mirror
reflective element.” Id. at 69:5–9.
The Specification’s discussion contrasting “[a] typical known exterior
mirror construction” as shown in Fig. 68B with the construction of the
mirror of the present invention further emphasizes the “in tandem”
movement resulting from the mirror reflective element being attached at the
mirror head. Id. at 70:4–32. The known mirror construction has the mirror
reflective element “disposed in or housed in a mirror casing . . . and not
attached thereto[] and is adjustable relative to the mirror casing.” Id. at
70:4–8. “In contrast to such known constructions, the present invention
provides a mirror assembly that has the reflective element [] disposed at and
attached to or otherwise fixed relative to the mirror casing [], such that,
during adjustment, the reflective element and mirror casing move in tandem
about the fulcrum of the mounting device at or near the side of the vehicle.”
Id. at 70:17–23 (emphasis added). We do not view this description as
requiring attachment of the mirror reflective element to a peripheral exterior
surface portion of the mirror head. The Specification links the different
configurations to whether or not the mirror reflective element moves in
tandem with the mirror casing. In addition, the Specification notes that the
Figure 68A configuration “allows for space within the mirror casing that was
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previously occupied by the mirror actuators of known or conventional mirror
assemblies.” Id. at 70:23–27. Although Figure 68B depicts reflective
element 742 with an exposed edge, it is clear that the extra space in the
mirror casing results primarily from moving the actuator outside of the
mirror casing. The embodiment in Figure 68B demonstrates that claim 1
encompasses configurations in which the reflective element is attached at the
peripheral exterior surface of the mirror head, but it does not support
limiting the claim to only such configurations. Electro Med. Sys., S.A. v.
Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“[A]lthough
the specification[] may well indicate that certain embodiments are preferred,
particular embodiments appearing in a specification will not be read into the
claims when the claim language is broader than such embodiments.”).
We also do not agree with Patent Owner’s contention that we should
limit the claim language to a specific embodiment to preserve validity.
PO Resp. 9–10. Claims are interpreted in order to preserve validity when,
after applying all other available tools of claim construction, a claim is still
ambiguous. Phillips, 415 F.3d at 1327. As discussed above, the plain claim
language and the intrinsic evidence support the construction that the claim
term “an exterior mirror reflective element fixedly attached at said mirror
head” does not require that the reflective element be fixedly attached “to a
peripheral exterior surface portion” of the mirror head, as Patent Owner
contends.
For the foregoing reasons, we do not adopt Patent Owner’s proposed
construction of “exterior mirror reflective element fixedly attached at said
mirror head” as requiring attachment of the mirror reflective element to a
peripheral exterior surface portion of the mirror head, and we determine no
further construction of this limitation is necessary.
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2. “mirror head comprises a bracket to which said exterior
mirror reflective element is fixedly attached”
Claim 34 depends from claim 1 and further recites “said mirror head
comprises a bracket to which said exterior mirror reflective element is
fixedly attached.” Ex. 1001, 76:65–67. In the Petition, Petitioner did not
propose a construction for the entire limitation but instead proposed “fixedly
attached” means “securely fastened, either directly or indirectly, and not
readily detachable.” Pet. 5–6 (citing Ex. 1002 ¶¶ 48–49). In our Decision
on Institution, we did not reject Petitioner’s proposed construction of
“fixedly attached,” however, we expressed doubt regarding Petitioner’s
application of that construction to the additional limitation of claim 3. Dec.
21–23.
During trial, the issue as to this claim phrase largely remains the same.
In its Response, Patent Owner contends “Petitioner’s construction is
divorced from, and does not rely on, the intrinsic record.” PO Resp. 12. In
particular, Patent Owner contends that Petitioner supports its construction by
relying solely on “less reliable” extrinsic evidence. Id. (citing Pet. 5–6;
Phillips, 415 F.3d at 1317–18). Patent Owner points to a number of court
decisions it contends support the understanding that “a claimed attachment
only covers direct attachment, not indirect.” Id. at 12–13. Patent Owner
further contends these decisions support that terms like “fixedly attached”
“cannot be construed without reference to the term’s use in the specific

4 As Patent Owner does, we focus our analysis for purposes of claim
construction on the language of dependent claims 3 and 4. See PO Resp.
11–19. As Petitioner notes (Pet. Reply 7–8), a number of other challenged
claims also recite a “bracket.” We address those claims further in the
context of Petitioner’s unpatentability challenges below.
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context of the specific claim” and that “generic reference to extrinsic sources
may lead to an improper construction.” Id. at 13–14.
Patent Owner further argues that the intrinsic evidence supports its
proposed construction (a bracket that is directly attached to said exterior
mirror reflective element). Id. at 11, 14–19. According to Patent Owner,
“the claim language itself does not allow for an indirect attachment of the
mirror reflective element to the bracket.” Id. at 14. Based on the language
of claim 3 and claim 1 from which claim 3 depends, Patent Owner contends
“that the ‘bracket’ is a particular component of the ‘mirror head’ that
attaches the ‘mirror reflective element’ to the ‘mirror head’”; thus, “the
bracket cannot be merely some portion of the mirror head that does not serve
to directly attach the mirror reflective element to the mirror head, such that
the bracket is only indirectly attached to the mirror reflective element.” Id.
Because the claims recite the bracket as “the precise component of the
mirror head ‘to which said exterior mirror reflective element is fixedly
attached,’ the claims exclude the possibility of indirect attachment of the
mirror reflective element to the ‘bracket.’” Id. Patent Owner also points to
claim 4 because “[a]n attachment between two components by ‘use of an
adhesive’ can only mean a direct attachment of one to another.” Id. at 15.
Regarding Petitioner’s reliance on Figure 56, Patent Owner contends
“the ‘attachment portion 614a’ [] serves as the bracket that most closely
aligns with the ‘bracket’ as set forth in the claims.” Id. at 16 (citing Ex.
1001, Fig. 56, 58:58–67; Ex. 2001 ¶ 96). Patent Owner further contends that
Petitioner’s asserted bracket (“mounting element 616”) does not correspond
to the “bracket” recited in claim 3 because it “is attached at a first actuator
618” and the “mirror head housing 614,” not the mirror reflective element.
Id. at 16 (citing Ex. 1001, Fig. 56, 59:7–9; Ex. 2001 ¶ 96); see also id. at 17–
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18 (discussing how Figure 68 depicts the direct attachment between bracket
734 and mirror reflective element 742). Patent Owner further contends that
“nowhere in the specification are mirror reflective elements described as
attached to the bracket through any intermediate structure,” and that, in fact,
“[w]hat makes a bracket a bracket is that it is intermediate between [two
structures] and fixes [] one to the other.” Id. at 18. Referring back to claims
3 and 6, Patent Owner states “[t]he claims [] require that the bracket be the
intermediary structure directly fixing the ‘mirror reflective element’ to one
side, and the ‘support structure’ directly to the other side.” Id. at 19 (citing
Ex. 2001 ¶ 95).
Patent Owner also contends that the Specification’s description of
using an adhesive to attach the mirror reflective element to the mirror head
supports its proposed construction requiring direct attachment. Id. at 17.
Patent Owner contends the ’648 patent “uses the term ‘fixedly attached’
synonymously with the term ‘adhered.’” Id. (citing Ex. 1001, 29:66–30:1,
71:53–55, Fig. 26A).
In its Reply, Petitioner proposes a modified construction and contends
“[f]or two elements to be fixedly attached, as that term is used in the ’648
patent, they must be not readily detachable, and they must move in tandem
with one another.” Pet. Reply 4. Petitioner notes that the claims use the
modifier “fixedly” instead of “directly,” and contends “[t]he word ‘fixedly’
means that two elements are ‘placed so as to be firm and not readily
movable.’” Id. (citing Ex. 1002 ¶ 49 (citing Ex. 1013, 1; Ex. 1014, 1)). As
an example, Petitioner points to Mr. McLellan’s testimony that a “wheel of a
vehicle is fixedly attached to the axel by the wheel hub such that the axel
and the wheel are not readily detachable and move together,” and that “[t]he
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wheel is directly and fixedly attached to the wheel hub, which is directly and
fixedly attached to the axel.” Id. at 4–5 (citing Ex. 1002 ¶ 49).
To support this construction, Petitioner points to Figure 56 of the
challenged patent and contends that Patent Owner’s expert Mr. Nranian
agrees that “bracket 616 is inserted into and fastened to the mirror head
housing 614” and that reflective element 612 moves in tandem with the
bracket 616 and the mirror head 614. Id. at 5–6 (citing Ex. 1020, 76:13–
77:5). Thus, Petitioner contends Figure 56 depicts “(1) the reflective
element fixedly attached to the mirror head, (2) the mirror head comprising a
bracket, and (3) a bracket [i.e., bracket 616] that is fixedly attached to the
reflective element.” Id. at 6.
Petitioner also points to Mr. Nranian’s deposition testimony regarding
Figure 68 of the challenged patent to support the construction that “fixedly
attached” encompasses indirect attachment. Id. at 6–8 (citing Ex. 1020,
36:21–25). In particular, Petitioner describes the configuration in Figure 68
as depicting the supporting arm structure 740 connected to the mirror
reflective element 742 by the intermediary bracket 734. Id. at 6–7 (citing
Ex. 1001, Fig. 68). Petitioner further relies on Figure 68 to show the bracket
is not required to be directly attached to the mirror reflective element
because Figure 68 does not depict the claimed mirror head. Id. at 7–8 (citing
PO Resp. 17; Ex. 1020, 98:18–20).
Petitioner also contends that “Figure 68A [] does not support a ‘direct
attachment’ of the bracket to the reflective element because Figure 68A does
not use a bracket” or “show a mirror head.” Id. at 9 (citing Ex. 1001, 68:51–
69:9; Ex. 1020, 98:20–21). Even if Figure 68A were modified to include
those elements, as Mr. Nranian testifies would have been obvious, Petitioner
contends it “would still not satisfy the claim requirements of the ‘mirror
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casing attaches at said bracket,’ unless ‘attaches’ also includes indirect
attachment.” Id. at 10.
In its Sur-reply, Patent Owner responds that Petitioner’s new proposed
construction based upon extrinsic evidence “is not substantively different
than Petitioner’s initial construction, and is just as untenable.” PO Sur-
reply 6. Patent Owner argues that Petitioner’s proposed construction is
based upon “extrinsic evidence ‘divorced from the intrinsic evidence’ [as]
soundly rejected by Phillips.” Id. (citing Phillips, 415 F.3d at 1319–1324).
Patent Owner first points to the claim language and contends the language “a
bracket to which said exterior mirror reflective element is fixedly attached”
“makes clear the direct nature of the attachment and [is] inconsistent with an
indirect attachment.” Id.; see also id. at 6–7 (citing Dec. 22–23 (discussing
the language of claim 4 reciting attachment “by use of an adhesive” as
requiring a direct adhesive attachment)).
Patent Owner further contends the embodiments disclosed in the
Specification support Patent Owner’s construction. Id. at 7–10. Addressing
Petitioner’s reliance on element 616 in Figure 56 as a bracket, Patent Owner
notes that element 620 is also referred to as a bracket. Id. at 7 (citing
Ex. 1001, 59:12–18). Patent Owner contends that “Figure 56 plainly
includes structure that serves as a bracket attaching the reflective element
612 to the mirror head 614, and that structure is element 614a, which
attaches the two to each other.” Id. at 8. Further addressing element 616,
Patent Owner contends (1) “element 616 is not part of the mirror head, as the
claim requires,” but is instead a separate piece; and (2) “element 616 does
not connect the reflective element 612 to the mirror head housing 614.”
Id. at 8–9 (citing Ex. 1001, 76:65–68).
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Patent Owner contends that “Petitioner also incorrectly discounts
Figure 68” because Petitioner’s argument “wrongly assumes that every
figure must disclose every feature of a claim to be relevant to claim
construction.” Id. at 9. Patent Owner relies on Mr. Nranian’s testimony that
Figure 68 is a schematic “included to illustrate the relationship between
various internal elements, including how the bracket is attached to the
reflective element.” Id. (citing Ex. 1001, 68:51–64; Ex. 1020, 98:7–9).
Thus, “[o]ne of skill in the art would understand that the embodiment of
Figure 68 is not meant to be the finished, final product, but rather an
illustration of certain components ultimately included in such a product.”
Id. at 10 (citing Ex. 1020, 98:7–9).
Lastly, Patent Owner contends that the extrinsic evidence cited by
Petitioner “undermines Petitioner’s attempt to construe the claims to cover
‘indirect’ attachment.” Id. at 11–12 (citing Ex. 1011). Patent Owner
contends “Exhibit 1011 describes a ‘bracket’ as an ‘intermediate component
for fixing one part to another,’ [such that] ‘[w]hat makes a bracket a bracket
is that it is intermediate between the two and fixes the one to the other.’”
Id. at 11 (quoting Ex. 1011, 1).
After reviewing the claim language, the arguments, and the evidence,
we determine that “mirror head comprises a bracket to which said exterior
mirror reflective element is fixedly attached” is not so broad that it
encompasses any structures indirectly attached to the mirror reflective
element and that move in tandem therewith as Petitioner contends. Thus, we
reject Petitioner’s proposed construction (Pet. Reply 4).
Regarding the claim language of claim 3, we agree with Patent Owner
that the claimed bracket is part of the recited mirror head and is attached to
the mirror reflective element. PO Resp. 14–19. Claim 3 depends directly
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from independent claim 1 and further recites that the “mirror head comprises
a bracket to which said exterior mirror reflective element is fixedly
attached,” and claim 4 also depends from claim 1 and further recites that the
“mirror head comprises a bracket to which said exterior mirror reflective
element is fixedly attached by use of an adhesive.” Ex. 1001, 76:65–77:4.
In independent claim 1, the language clearly recites that the “exterior mirror
reflective element [is] fixedly attached at [the] mirror head.” Id. at 76:42–
43. When these claims are viewed together, they demonstrate that a person
of ordinary skill in the art would have understood that the recited “bracket”
acts to attach the mirror reflective element to the mirror head. This
understanding is underscored by the language of claim 4, which requires
using an adhesive to fixedly attach the mirror reflective element to the
bracket. Id. at 77:1–4.
Regarding the Specification, we are not persuaded by Petitioner’s
arguments that Figures 68 and 68A do not depict a mirror head, and thus
cannot inform the construction of the recited “bracket.” See Pet. Reply 6–
10. Figures 68 and 68A are described as schematic views of an exterior
rearview mirror system of the present invention. Ex. 1001, 5:25–63, 68:51–
69:9. Figure 68 depicts “the attachment element or bracket 736 is disposed
at the outer or distal end of the support arm or structure 740, and a mirror
reflective element 742 . . . may be attached to the attachment element or
bracket 736.” Id. at 68:51–56. While not depicted, the Specification states
“[o]ptionally, and desirably, a mirror casing or shell 744 (FIG. 68A) may be
readily attached at the mirror attachment element or bracket or to the mirror
reflective element itself.” Id. at 68:62–64. Thus, although Petitioner
contends “because [Figure] 68 doesn’t depict the mirror head, that
[attachment plate or bracket] 734 in [Figure] 68 can’t be the bracket” (Tr.
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15:16–21), the Specification instead supports an understanding that the
embodiment of Figure 68 can include a mirror casing “attached at the mirror
attachment element or bracket or to the mirror reflective element itself.” In
other words, Petitioner’s arguments that Figure 68A fails to support direct
attachment because it “does not use a bracket” (Pet. Reply 9–10) is not
persuasive because the Specification describes that Figure 68A is an optional
and desirable configuration of the embodiment in Figure 68, which also
describes a mirror casing being attached to an attachment bracket and a
mirror reflective element (Ex. 1001, 5:60–63, 68:25–63).
Petitioner’s reliance on Figure 56 is also misplaced. Pet. Reply 5–6.
Although bracket 616 “is inserted into and fastened to the mirror head
housing 614,” which has a rear attaching portion 614a that is attached to the
mirror reflective element 612, we determine that bracket 616 is not the
recited “bracket” of the mirror head attached to the mirror reflective
element. Instead, we agree with Patent Owner that “Figure 56 plainly
includes structure that serves as a bracket attaching the reflective element
612 to the mirror head 614, and that structure is element 614a, which
attaches the two to each other.” PO Sur-reply 8.
Further, the Specification supports that attachment plate 244 is
attached or adhered to a reflective element 214 via adhesive 242. Ex. 1001,
29:66–30:1, Fig. 26A. In this configuration, attachment plate 244, rather
than bracket 616, corresponds to the recited “bracket” based on the
Specification’s description of attachment plate or bracket 734 attached to
mirror reflective element 742; bracket 616 is a mounting element that
attaches mirror head 614 and actuator 618. Id. at Fig. 56, 59:7–12.
Thus, based on the complete trial record, we find the intrinsic
evidence supports our preliminary determination in the Decision on
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Institution that Petitioner’s proposed construction that “any bracket attached
to the mirror housing, and connecting the mirror housing to some other
component, would result in the bracket being indirectly fixedly attached to
the reflective element via the mirror housing” is “a bridge too far.” Dec. 22.
We determine that the intrinsic evidence supports the bracket connecting the
mirror head to the mirror reflective element. We have considered the
extrinsic evidence including Mr. McLellan’s testimony, as well as the
dictionary definitions on which Petitioner relies (see Pet. Reply 4–5 (citing
Ex. 1002 ¶ 49; Ex. 1012; Ex. 1013)), but we give that evidence little weight
based on the clarity of the intrinsic evidence discussed above.
3. “wherein the outermost front perimeter edge of said
exterior mirror reflective element is rounded”
Claim 25 depends from claim 1 and further recites “wherein said
mirror head comprises a mirror casing and wherein the outermost front
perimeter edge of said exterior mirror reflective element is rounded.”
Ex. 1001, 76:61–64. Patent Owner contends “wherein the outermost front
perimeter edge of said exterior mirror reflective element is rounded” means
“wherein the outermost front perimeter edge of said exterior mirror
reflective element is exposed and has at least a 2.5 mm minimum radius of
curvature.” PO Resp. 19. Patent Owner’s proposed construction is
premised on the perimeter edge being exposed. See id. at 20–21 (citing
Ex. 1001, 28:51–60, 33:51–64; Ex. 2001 ¶¶ 97–108, 204–216; Ex. 2010
¶¶ 16–23). As discussed above, we determine that claim 1 does not require
attachment of the mirror reflective element to a peripheral exterior surface
portion of the mirror head. As further discussed in detail below, we also

5 Our analysis here applies equally to dependent claims 16 and 33, which
also recite “rounded.” See PO Resp. 19–20.
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determine that the “rounded” limitation of claim 2 does not require that the
rounded edge of the mirror reflective element be exposed. Thus, we
determine we need not explicitly construe this limitation to require a specific
radius of curvature, but instead determine the term “rounded” has its plain
and ordinary meaning.
In support of its proposed construction, Patent Owner points to the
Specification’s disclosure of rounding “in order to obviate/avoid a sharp
edge at the front or outermost perimeter surface of the mirror reflective
element and mirror assembly that could potentially hurt/injure an occupant
of a vehicle equipped with the interior rearview mirror assembly during an
accident” and contends the Specification denotes an edge as rounded by
disclosing “the perimeter edge portion can have a full 2.8 mm radius of
curvature to meet the requirements of at least a 2.5 mm minimum radius of
curvature.” Id. at 21 (citing Ex. 1001, 9:38–42, 28:25–46; Ex. 2001 ¶¶ 98–
101). Thus, Patent Owner contends that one of ordinary skill in the art
would understand that for an exposed edge to be rounded enough to meet
minimum safety requirements, as discussed in several pieces of extrinsic
evidence, a radius of at least 2.5 mm is required. Id. at 21–23 (citing
Ex. 1004, 46:23–33; Ex. 2001 ¶¶ 99–107, 211; Ex. 2003, 12, 23; Ex. 2004,
9–10; Ex. 2010 ¶¶ 19–23; Ex. 2011, 8–9; Ex. 2015, 1). Patent Owner further
argues that the term “rounded” is a term of degree and to differentiate
between a sufficiently rounded edge and “one that is otherwise straight or
sharp, [it] is necessary to give effect to the plain meaning of the term and to
differentiate the outer boundary of the claim.” Id. (citing Halliburton
Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1254 (Fed. Cir. 2008)).
In its Reply, Petitioner notes that a “‘2.5 mm minimum radius of
curvature’ appears nowhere in the claims, and only once in the ’648 patent
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overall, where it is used to describe the interior rearview mirrors of Figures
4B and 5.” Pet. Reply 11 (citing Ex. 1001, 9:38–47). Notably, Petitioner
contends that the rounded description is used in connection with the exterior
rearview mirrors only in reference to Figures 56–56B. Id. at 11–12 (citing
Ex. 1001, 58:67–59:6). Petitioner concludes: “while the front perimeter
edge could be rounded to 2.5 mm, nothing in the ’648 patent requires the
additional limitation of the outermost front perimeter edge having ‘at least a
2.5 mm minimum radius of curvature.’” Id. at 12. As an alternative,
Petitioner contends because the disclosure of the front perimeter edge could
be “curved, or rounded, or beveled . . . a specific radius of curvature is either
unnecessary or unimportant.” Id.
In its Sur-reply, Patent Owner contends “rounded” “conveys that the
‘edge’ of the mirror reflective element has a minimum radius of curvature of
2.5 mm because in the ’648 patent the edge is exposed and that degree of
curvature is a necessary minimum safety threshold.” PO Sur-reply 14
(citing Ex. 2001 ¶ 98). Specifically, Patent Owner contends the
Specification relates the rounded edge of interior mirrors to that of exterior
mirrors, because “one of skill in the art knows that the minimum radius of
curvature threshold would necessarily apply to any exposed glass edge,
interior or exterior.” Id. (citing Ex. 1001, 58:49–52; Ex. 2001 ¶¶ 98–108).
We do not agree with Patent Owner’s proposed construction. We
agree with Petitioner that a “‘2.5 mm minimum radius of curvature’ appears
nowhere in the claims.” Pet. Reply 11. Similarly, neither claim 2 nor claim
1 from which claim 2 depends recites an “exposed” outermost front
perimeter edges of the mirror reflective element. See generally Ex. 1001,
76:38–82:16.
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Regarding the Specification, we agree with Patent Owner that the
Specification supports rounding, beveling, or slanting a front perimeter edge
of the mirror reflective element that may be exposed to, and contactable by,
persons “in order to obviate/avoid a sharp edge . . . that could potentially
hurt/injure” someone. Ex. 1001, 28:25–46. The majority of the
Specification’s disclosures describe rounding the edge in the context of an
interior rearview mirror assembly because such assembly “could potentially
hurt/injure an occupant of a vehicle . . . during an accident.” Id. at 28:41–
46 (emphasis added); PO Resp. 23 (citing Ex. 2010 ¶ 23); Tr. 23:20–24:5.
We acknowledge the Specification’s disclosure that “[o]ptionally, aspects of
the mirror assemblies discussed [in regard to interior rearview mirror
assemblies] may be incorporated in or associated with an exterior rearview
mirror assembly that is configured for mounting at a side region of a
vehicle.” Ex. 1001, 59:49–52. The Specification describes such curved or
rounded edges on an exterior mirror reflective assembly “to provide a
smooth or continuous transition between the generally planar front surface
of the reflective element and the side walls or surfaces of the mirror
housing.” Id. at 59:1–4. Such arrangement between the rounded mirror
reflective element and a finished mirror casing may also be used to enhance
the aesthetic appearance “immediately adjacent and to the rear of the curved
transition surface of the reflective element.” Id. at 28:47–29:9; see also
id. at 34:53–36:22 (discussing various bezel and/or reflective element
configurations that provide a curved or beveled periphery at the reflective
element and/or bezel of the mirror assemblies). We do not view these
disclosures, however, as limiting claim 2 to require a specific minimum
radius of curvature.
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We similarly find the Specification does not support Patent Owner’s
requirement that “the outermost front perimeter edge of [the] exterior mirror
reflective element [be] exposed.” PO Resp. 19. As discussed above, the
Specification describes the rounded edge of the mirror reflective element for
safety purposes when the front perimeter surfaces are exposed, and thus
contactable. See Ex. 1001, 28:25–46. However, the Specification
additionally describes a rounded edge of an exterior reflective element “to
provide a smooth or continuous transition between the generally planar front
surface of the reflective element and the side walls or surfaces of the mirror
housing,” which may be used to enhance the aesthetic appearance
“immediately adjacent and to the rear of the curved transition surface of the
reflective element.” Id. at 28:47–29:9, 58:49–52, 58:65–59:6. One
exemplary configuration of “the mirror assembly may include a plastic
molding that comprises a portion that (a) abuts a circumferential edge of the
[mirror reflective element] and (b) has an outer curved surface that extends
from generally adjacent to a first surface of the [mirror reflective element]
and that may lack a sharp edge.” Id. at 33:34–44. Such a configuration is
similar to the configurations of the mirror assembly comprising a bezel, as
depicted in Figures 32–34, 37–40, that may cover, or be flush and coplanar
with, a front perimeter surface of the mirror reflective element. Id. at 33:64–
67, 34:57–66, 36:20–22. Accordingly, we determine the Specification does
not support requiring the front perimeter edge of the mirror reflective
element to be exposed when that edge is “rounded.”
We also determine that the Specification’s discussion of a 2.5 mm
minimum radius of curvature and various safety requirements are in the
context of the front perimeter edge of the mirror reflective element being
exposed. See id. at 9:38–43, 17:44–54; see also Ex. 2003, 12 (discussing
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Federal Motor Vehicle Safety Standard (FMVSS) mounting adequacy tests
for outside mirror to “[d]etermine that all outside mirrors are free of sharp
points or edges that could contribute to pedestrian injury.”); Ex. 2004, 9–10,
38–41 (discussing Economic Commission for Europe (ECE) 324,
Regulation 46 as requiring a 2.5 mm minimum radius of curvature for
“reflecting surfaces [that] project[] beyond the protective housing.”).
Because we determine that claim 2 does not require an exposed front
perimeter edge of the mirror reflective element, we find that this evidence
does not compel requiring the specific radius of curvature for which Patent
Owner argues.
For the foregoing reasons, we do not adopt Patent Owner’s proposed
further limitation to require that the outermost front perimeter edge of the
mirror reflective element is exposed and has at least a 2.5 mm minimum
radius of curvature.
4. “yaw” and “roll”
Claims 9, 25, 31, and 36 of the ’648 patent recite the terms “yaw” and
“roll.” In the Petition, Petitioner proposed that “‘roll’ should be defined as
‘a rotation about a main axis,’ and ‘yaw’ should be defined as ‘a rotation
about a vertical axis perpendicular to the main axis.’” Pet. 6 (citing
Ex. 1002 ¶¶ 50–51). Prior to institution, Patent Owner argued that we
should construe “roll” to mean “a rotation about a vehicle’s longitudinal axis
(in the direction from the front of the vehicle to the back of the vehicle)” and
“yaw” to mean “a rotation about a vehicle’s vertical axis (in the direction
from the bottom of the car to the top of the car) perpendicular to a
longitudinal axis.” Prelim. Resp. 27 (citing Ex. 2001 ¶¶ 117–127). At
institution, we did not adopt either parties’ proposed construction. Dec. 14–
15. Instead, we noted that the “[t]he claims which use these terms [] recite a
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frame of reference for the yaw and roll adjustment: ‘yaw and roll adjustment
of said exterior mirror reflective element relative to the exterior portion of
the equipped vehicle at which said exterior rearview mirror assembly is
attached.’” Id. (citing Ex. 1001, 77:29–33 (claim 9)). We invited the parties
to address during trial whether “yaw” and “roll” with respect to the vehicle
as a whole is the same as “yaw” and “roll” with respect to “the exterior
portion of the equipped vehicle at which said exterior rearview mirror
assembly is attached,” as recited in the applicable claims. Id. at 15.6
During trial, the parties agreed that “roll” is about a longitudinal axis
and “yaw” is a rotation about an axis vertical to the longitudinal axis. Pet.
Reply 16; PO Resp. 29. According to Petitioner, the “disputed issue is
whether the longitudinal axis of the claim is the main axis of the vehicle or
the main axis of the mirror.” Pet. Reply 16. According to Petitioner,
“[b]ecause the claims are directed to an exterior rearview mirror assembly,
the roll axis is the longitudinal axis of mirror assembly, not the vehicle.” Id.
Patent Owner continues to argue a person of ordinary skill in the art
“would understand the pitch, yaw, and roll axes as a standard coordinate
system with a pre-established orientation relative to the vehicle.” PO Resp.
33. Patent Owner argues that the frame of reference in the claims at issue
(i.e., “relative to the exterior portion of the equipped vehicle at which said
exterior rearview mirror assembly is attached”) “suggests a shift of the
coordinate system from the center of the vehicle to the side of the vehicle.”
Id. at 34 (citing Ex. 2010 ¶ 9).

6 Our analysis here applies equally to claims 9, 25, 31, and 36 which all
similarly recite “yaw” and “roll” adjustment.
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We have no quarrel with Patent Owner’s argument that pitch, roll, and
yaw have a well-established meaning with respect to a vehicle itself; Patent
Owner supports that argument with persuasive evidence. See PO Resp. 29–
33; PO Sur-reply 16–17. But here we are not tasked with interpreting “yaw”
and “roll” in isolation, or in the context of a vehicle as a whole. Instead we
must interpret the phrase “yaw and roll adjustment of said exterior mirror
reflective element relative to the exterior portion of the equipped vehicle at
which said exterior rearview mirror assembly is attached” as claimed. In the
context of that claim phrase, we determine Patent Owner’s proposed
construction effectively reads out “relative to the exterior portion of the
equipped vehicle at which said exterior rearview mirror assembly is
attached.” In other words, under Patent Owner’s proposed construction, the
claim phrase would have the same meaning if rewritten as “yaw and roll
adjustment of said exterior mirror reflective element.” See Pet. Reply 14
(citing Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372
(Fed. Cir. 2005)). Characterizing the “relative to” clause as a shift from the
center to the side of the vehicle merely moves the coordinate plane to the
side of the vehicle with no practical effect. See id. at 13–14 (citing Ex.
1020, 58:5–10); Tr. 60:27–61:22. Here, the claim drafter chose to specify a
particular frame of reference, and we agree with Petitioner that in doing so
the claim drafter reoriented the coordinate plane for yaw and roll adjustment
of the mirror itself relative to the exterior portion of the vehicle, and thus the
coordinate planes of the vehicle itself do not apply. Such a construction
gives effect to the recited adjustment “relative to the exterior portion of the
equipped vehicle at which said exterior rearview mirror assembly is
attached” as something more than merely shifting the coordinate system
from the center of the car to the side of the car. Merck & Co., 395 F.3d at
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1372 (“A claim construction that gives meaning to all the terms of the claim
is preferred over one that does not do so.”); Power Mosfet Techs., L.L.C. v.
Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004) (“[I]nterpretations that
render some portion of the claim language superfluous are disfavored.”).
If anything, the Specification supports this view. For example,
Petitioner points us to the Specification’s description of Figure 68, which
notes “the arm may be pivoted up/down and forward/rearward . . . and the
arm may be rotated about its longitudinal axis to further adjust . . . the
reflective element relative to the side of the vehicle (thus providing
independent and/or cooperative pitch, yaw, and roll adjustment of the
reflective element relative to the side of the vehicle).” Ex. 1001, 68:43–50.
Although not determinative, we agree that this listing of the directions and
ranges of movement immediately followed by a listing of the axes of
rotation appears to be consistent with our understanding discussed above
(i.e., matching an up/down pivoting of the mirror to pitch, a
rearward/forward pivoting (i.e., folding in) of the mirror to yaw, and a
rotational adjustment to roll). See Tr. 28:5–24, 31:2–10.
We determine that to give effect to the entire phrase including rotation
with respect to the side of the vehicle at which the mirror assembly is
attached, the roll adjustment corresponds to a rotational movement about the
longitudinal axis of the mirror assembly and yaw corresponds to a rotational
movement about an axis vertical to the longitudinal axis of the mirror
assembly.
D. Asserted Obviousness over Lupo
1. Overview of Lupo (Ex. 1003)
Lupo describes “a lateral rear-view mirror for a vehicle, and
particularly to a mirror having mechanisms for adjusting its orientation
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which can be operated by electric motors.” Ex. 1003, 1:3–6. Figure 1 of
Lupo is reproduced below.

Figure 1 is a partially-sectioned plan view, from above, of Lupo’s rear-view
mirror. Ex. 1003, 3:16–18. The bottom of Figure 1 shows “a reflective
plate 4 fixed to the [rear-view mirror’s] body 3 in a frontal aperture 5.”
Id. at 4:6–9. Further, as shown on the right-hand portion of Figure 1, Lupo’s
rear-view mirror includes support 2 which “is adapted to be fixed to a side
portion of the motor-vehicle bodywork.” Id. at 4:4–6.
In Lupo, body 3 of the rear-view mirror “houses a drive assembly
6 . . . which can adjust the orientation of the body 3 . . . relative to the
support bracket 2.” Id. at 4:11–12. In particular, drive assembly 6 adjusts
orientation of mirror body 3 by “relative rotations about a first, substantially-
vertical axis A,” shown on the right-hand side of Figure 1 with a double-
ended, semi-circular arrow, “and a second substantially-horizontal axis B
parallel to the plane of the plate 4,” shown in the center of Figure 1, with a
double-ended, circular arrow. Id. at 4:11–16.
Adjusting the orientation of mirror body 3 via drive assembly 6 also
adjusts the orientation of reflective plate 4. Id. at 4:11–13. A portion of
drive assembly 6 connects to appendages 52; appendages 52 are connected
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to projections 53 within mirror body 3; and mirror body 3 is fixed to
reflective plate 4. Id. at 7:16–23; see id. at Fig. 2. As such, adjusting the
orientation of mirror body 3 by drive assembly 6 also adjusts the orientation
of reflective plate 4.
2. Analysis
Petitioner contends claims 1, 3, 5–13, and 15 are unpatentable as
obvious over Lupo. Pet. 11–33. We have reviewed the evidence and
arguments provided by the parties and are persuaded that Petitioner has
shown by a preponderance of the evidence that claims 1, 5, 8–11, and 15 are
unpatentable as obvious over Lupo, but Petitioner has not shown by a
preponderance of the evidence that claims 3, 6, 7, 12, and 13 are
unpatentable as obvious over Lupo.
a) Claim 1
Claim 1 recites, in the preamble, “an exterior rearview mirror
assembly configured for mounting at an exterior portion of a vehicle.”
Ex. 1001, 76:38–40. Petitioner contends the preamble is non-limiting and,
in any case, Lupo teaches this limitation by disclosing “an external rear-
view mirror for a motor vehicle” that includes support bracket 2 adapted to
be fixed to a side portion of the vehicle bodywork. Pet. 11–12 (citing
Ex. 1003, code (57), Fig. 1; Ex. 1002 ¶¶ 72–73). We agree with Petitioner
that Lupo teaches this limitation (Ex. 1003, code (57)), and Patent Owner
does not argue otherwise (see generally PO Resp.; PO Sur-reply).
Claim 1 further recites “a mirror head.” Ex. 1001, 76:41. Petitioner
contends Lupo’s hollow outer body 3 and projections 53 teach this
limitation. Pet. 12–13 (citing Ex. 1003, 4:4–9, 7:17–24, Fig. 1; Ex. 1002
¶¶ 74–75). We agree with Petitioner that Lupo teaches this limitation
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(Ex. 1003, 4:4–9, 7:17–24, Fig. 1), and Patent Owner does not argue
otherwise (see generally PO Resp.; PO Sur-reply).
Claim 1 recites “an exterior mirror reflective element fixedly attached
at said mirror head.” Ex. 1001, 76:42–43. Petitioner contends Lupo’s
reflective plate 4 teaches this limitation. Pet. 13 (citing Ex. 1003, 4:4–9, Fig.
1; Ex. 1002 ¶¶ 76–77).
Patent Owner contends Lupo’s reflective plate 4 does not teach this
limitation because it “is not ‘attached at’ the mirror head, but rather is
‘disposed in’ or ‘housed in’ the hollow body or mirror casing or mirror
head.” PO Resp. 38. Patent Owner’s argument in this regard is based on its
proposed construction of this limitation, which as discussed above, we do
not adopt.
As shown in Figure 1 of Lupo, reflective plate 4 (exterior mirror
reflective element) is fixedly attached to hollow outer body 3 (mirror head).
Ex. 1003, Fig. 1, 4:4–9; Ex. 1002 ¶¶ 76–77. We determine Petitioner has
shown Lupo teaches this limitation of claim 1.
Claim 1 also recites “an attachment portion configured for attachment
at an exterior portion of a vehicle equipped with said exterior rearview
mirror assembly.” Ex. 1001, 76:44–46. Petitioner contends Lupo’s support
bracket 2 teaches this limitation. Pet. 14 (citing Ex. 1003, 4:4–9, Fig. 1;
Ex. 1002 ¶¶ 78–79). We agree with Petitioner that Lupo teaches this
limitation (Ex. 1003, 4:4–9, Fig. 1), and Patent Owner does not argue
otherwise (see generally PO Resp.; PO Sur-reply).
Claim 1 further recites “a multi-axis adjustment mechanism
comprising at least one electrically-operable actuator.” Ex. 1001, 76:47–48.
Petitioner contends Lupo teaches “a multi-axis adjustment mechanism (drive
assembly 6) comprising at least one electrically-operable actuator (motors
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14, 55).” Pet. 15–16 (citing Ex. 1003, 4:11–16, 4:19–22, 4:25–5:2, 7:25–29,
Figs. 1–3; Ex. 1002 ¶¶ 80–83). We agree with Petitioner that Lupo teaches
this limitation (Ex. 1003, 4:11–16, 4:19–22, 4:25–5:2, 7:25–29, Figs. 1–3),
and Patent Owner does not argue otherwise (see generally PO Resp.; PO
Sur-reply).
Claim 1 also recites “wherein said multi-axis adjustment mechanism
is operable to move said mirror head, with said exterior mirror reflective
element fixedly attached thereto, about multiple axes relative to said
attachment portion.” Ex. 1001, 76:49–52. Petitioner contends Lupo teaches
this limitation. Pet. 17 (citing Ex. 1003, 4:11–16; Ex. 1002 ¶¶ 84–85).
Specifically, Petitioner contends “Lupo teaches that a multi-axis adjustment
mechanism (drive assembly 6) is operable to move said mirror head (body 3,
projections 53) with a mirror reflective element (reflective plate 4) fixedly
attached thereto, about multiple axes (axis A and axis B) relative to said
attachment portion (bracket 2).” Id. We agree with Petitioner that Lupo
teaches this limitation (Ex. 1003, 4:11–16), and Patent Owner does not argue
otherwise (see generally PO Resp.; PO Sur-reply).
Claim 1 also recites
wherein said exterior mirror reflective element moves in tandem
with movement of said mirror head relative to the exterior
portion of the body of the equipped vehicle at which said exterior
rearview mirror assembly is attached to adjust the rearward field
of view of a driver of the equipped vehicle who views said
exterior mirror reflective element when operating the equipped
vehicle.
Ex. 1001, 76:53–60. Petitioner contends that because Lupo’s reflective plate
4 is fixedly attached to body 3 by frontal aperture 5, reflective plate 4 moves
in tandem with body 3. Pet. 17–19 (citing Ex. 1003, 4:4–9). Petitioner
further contends it would have been obvious to a person of ordinary skill in
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the art that “operating the mirror assembly disclosed in Lupo as described
therein would result in adjusting the rearward field of view of the driver.”
Id. at 18–19 (citing Ex. 1001, 9:19–21; Ex. 1002 ¶¶ 86–92, 69–71, 40). We
agree with Petitioner that Lupo teaches this limitation (Ex. 1003, 4:4–9), and
Patent Owner does not argue otherwise (see generally PO Resp.; PO Sur-
reply).
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claim 1 is obvious over Lupo.
b) Claim 3
Claim 3 depends from claim 1 and recites “said mirror head comprises
a bracket to which said exterior mirror reflective element is fixedly
attached.” Ex. 1001, 76:65–67. Petitioner contends Lupo teaches this
limitation. Pet. 19–20. Figure 1 of Lupo, as annotated by Petitioner, is
reproduced below.

Pet. Reply 19 (reproducing Ex. 1003, Fig. 1 with annotations and coloring);
Pet. 20. Petitioner argues “Lupo teaches wherein said mirror head (outer
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body 3, projections 53) comprises a bracket (projections 53) to which said
exterior mirror reflective element (reflective plate 4) is fixedly attached.”
Pet. Reply 19. Petitioner explains that “reflective element 4 is indirectly, but
fixedly, attached to the projections 53.” Id.
Patent Owner contends that the “attachment” between the claimed
“mirror reflective element” and “bracket” must be direct, but Lupo’s
“projections 53 are not directly attached to the reflective plate 4,” as required
by the claims. PO Resp. 39. Instead, PO explains that “projections 53 are
intermediate to, and attached to, structure 51 and body 3.” Id.
We determine Petitioner has not shown Lupo teaches this limitation of
claim 3. As discussed above, we determine that the “bracket” recited in
claim 3 connects the mirror head to the mirror reflective element. Petitioner
maps Lupo’s projections 53 as the recited “bracket.” Pet. Reply 19. Lupo’s
Figure 1, reproduced above, shows that Lupo’s projections 53 are not fixedly
attached to reflective plate 4 (exterior mirror reflective element). Instead,
those projections fixedly attach Lupo’s outer body 3 to other components of
Lupo’s mirror assembly.
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that claim 3 is obvious over
Lupo.
c) Claim 5
Claim 5 depends from claim 1 and recites, in part, “wherein said
mirror head is disposed at one end of said support structure and wherein said
attachment portion is at a distal other end of said support structure.”
Ex. 1001, 77:11–13. Petitioner contends Lupo teaches this limitation.
Pet. 20–25. Figure 2 of Lupo, as annotated by Petitioner, is reproduced
below.
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Pet. 24 (reproducing Ex. 1003, Fig. 2 with annotations and coloring);
Pet. Reply 20. Petitioner argues Lupo teaches its “mirror head (body 3,
projections 53) is disposed at one end of said support structure (second
movable support 51) and wherein said attachment portion (bracket 2) is at a
distal other end of said support structure (disposed at the distal other end of
second movable support 51 through the first movable support 7, bush 27 and
pin 9).” Pet. 24–25 (citing Ex. 1002 ¶¶ 96–101).
We determine Petitioner has shown Lupo teaches this limitation of
claim 5. Pet. 24 (reproducing Ex. 1003, Fig. 2 with annotations and
coloring); Pet. Reply 20. Although Patent Owner argued prior to institution
that Lupo does not teach the additional limitation of claim 5 (Prelim. Resp.
34–37), Patent Owner did not make those same arguments during the trial
(see generally PO Resp.; PO Sur-reply). Accordingly, Patent Owner waived
those arguments. Paper 8, 8 (“Patent Owner is cautioned that any arguments
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not raised in the response may be deemed waived.”); see, e.g., In re
NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016); Consolidated
Trial Practice Guide 52 (Nov. 2019).
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claim 5 is obvious over Lupo.
d) Claims 6 and 7
Claim 6 further depends from claim 5 and recites “wherein said mirror
head comprises a bracket to which said exterior mirror reflective element is
fixedly attached, and wherein said one end of said support structure attaches
at said bracket.” Ex. 1001, 77:15–19. Claim 7 further depends from claim
6. Id. at 77:20–24. For the additional limitations of claim 6, Petitioner relies
on its contentions for claim 3. Pet. 25. As discussed above, we do not find
Petitioner’s contentions persuasive.
Accordingly, we determine Petitioner has not shown by a
preponderance of the evidence that claims 6 and 7 are obvious over Lupo.
e) Claim 8
Claim 8 further depends from claim 5 and additionally recites
“wherein said multi-axis adjustment mechanism comprises at least one pivot
element.” Ex. 1001, 77:25–27. Petitioner contends that Lupo’s drive
assembly 6 includes first bush 27 and second bush 50 which allow for
Lupo’s mirror assembly to pivot along the first axis A and second axis B
respectively. Pet. 26 (citing Ex. 1003, 5:26–29; 7:16–24, Fig. 2; Ex. 1002
¶¶ 110–112). We agree with Petitioner that Lupo teaches this limitation
(Ex. 1003, 5:26–29; 7:16–24, Fig. 2), and Patent Owner does not argue
otherwise (see generally PO Resp.; PO Sur-reply).
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claim 8 is obvious over Lupo.
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f) Claim 9
Claim 9 depends from claim 1 and recites “wherein said multi-axis
adjustment mechanism is operable for yaw and roll adjustment of said
exterior mirror reflective element relative to the exterior portion of the
equipped vehicle at which said exterior rearview mirror assembly is
attached.” Ex. 1001, 77:28–33. Petitioner contends Lupo teaches this
limitation. Pet. 26–27. Figure 2 of Lupo, as annotated by Petitioner, is
reproduced below.

Id. at 27 (reproducing Ex. 1003, Fig. 2 with annotations and coloring).
Petitioner contends:
Lupo teaches wherein said multi-axis adjustment mechanism
(drive assembly 6) is operable for yaw (about axis A) and roll
(about axis B) adjustment of said exterior mirror reflective
element relative (reflective plate 4) to the exterior portion of the
equipped vehicle at which said exterior rearview mirror
assembly is attached (attached by bracket 2).
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Id. (citing Ex. 1002 ¶¶ 113–118).
Patent Owner argues “Lupo only discloses two adjustment
mechanisms arranged for movement about pivot axes that are 90 degrees
apart;” specifically “adjustment about the ‘pitch’ axis and about the ‘yaw’
axis,” but not “roll adjustment.” PO Resp. 42. Patent Owner asserts that
“axis B in Lupo is really the ‘pitch’ axis, running perpendicular to the
direction of travel to the vehicle, and perpendicular to the ‘exterior portion’
of the side of the vehicle to which the mirror is attached.” Id. at 43. Patent
Owner’s arguments are based on a construction of “yaw,” which as
discussed in detail above, we do not adopt.
We determine Petitioner has shown Lupo teaches the limitations
recited in claim 9 (Ex. 1003, Fig. 2; Pet. 26–27; Ex. 1002 ¶¶ 113–118). For
the reasons discussed above, we determine Petitioner has shown by a
preponderance of the evidence that claim 9 is unpatentable as obvious over
Lupo.
g) Claim 10
Claim 10 depends from claim 1 and further recites “wherein said
multi-axis adjustment mechanism is operable to adjust said exterior mirror
reflective element about a first pivot axis and a second pivot axis, and
wherein said first and second pivot axes are angled non-orthogonally relative
to one another.” Ex. 1001, 77:34–39. Petitioner contends that Lupo teaches
its pivot axis is “substantially vertical” and its second pivot axis is
“substantially horizontal.” Pet. 27 (citing Ex. 1003, 2:25–3:8). Because
“substantially” indicates a reasonable deviation, Petitioner contends Lupo
teaches these axes can be angled non-orthogonally relative to one another
(i.e., at an angle other than 90 degrees). Id. at 27–28 (citing Ex. 1002
¶¶ 119–124).
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We determine Petitioner has shown Lupo teaches the additional
limitation of claim 10. Ex. 1003, 2:25–3:8. Although Patent Owner argued
prior to institution that Lupo does not teach its pivot axes are non-orthogonal
(Prelim. Resp. 43–45), Patent Owner did not make those same arguments
during the trial (see generally PO Resp.; PO Sur-reply). Accordingly, Patent
Owner waived those arguments. Paper 8, 8 (“Patent Owner is cautioned that
any arguments not raised in the response may be deemed waived.”); see,
e.g., In re NuVasive, 842 F.3d at 1380–81; Consolidated Trial Practice
Guide 52 (Nov. 2019).
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claim 10 is unpatentable as obvious
over Lupo.
h) Claim 11
Claim 11 further depends from claim 10 and recites “wherein said
first and second pivot axes are angled relative to one another at an angle that
is greater than 15 degrees and is less than 90 degrees.” Ex. 1001, 77:40–43.
Petitioner relies on the same disclosures in Lupo as it did for claim 10.
Pet. 28. We determine Petitioner has shown Lupo at least suggests the
additional limitation of claim 11 because a person of ordinary skill in the art
would understand “substantially horizontal” and “substantially vertical”
includes a relative angle of less than 90 degrees. Ex. 1003, 2:25–3:8;
Ex. 1002 ¶ 126. Patent Owner does not argue otherwise (see generally PO
Resp.; PO Sur-reply).
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claim 11 is unpatentable as obvious
over Lupo.
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i) Claim 12
Claim 12 depends from claim 1 and recites “wherein said first and
second electrically-operable actuators are cooperatively operable to adjust
said mirror head.” Ex. 1001, 77:47–49. Petitioner contends Lupo teaches
this limitation. Pet. 28–31. Specifically, Petitioner argues Lupo teaches “a
first electrically-operable actuator (motor 14) and a second electrically-
operable actuator (motor 15) and wherein said first and second electrically-
operable actuators are cooperatively operable (motor 14 adjusting the first
axis, motor 51 adjusting the second axis) to adjust said mirror head (body 3,
projections 53).” Id. at 30 (citing Ex. 1002 ¶¶ 128–132). Petitioner states
that a “user could operate push button 81 which tells the control unit 80 to
supply voltage to the first motor 14, which subsequently rotates the
reflective element 4 about the axis A,” and “a user could operate push button
82 which tells the control unit 80 to supply voltage to the second motor 55,
which subsequently rotates the reflective element 4 about the axis B.” Id. at
29–30 (citing Ex. 1003, 9:24–10:14, 11:5–12). At Institution, we agreed
with Patent Owner that “the ’648 specification suggests cooperative
operation includes operating at the same time,” and we stated that, at that
stage of the proceeding, we did not “view Lupo’s disclosure of separate
buttons as meaning its motors do not operate at the same (e.g., when an
operator pushes both buttons).” Dec. 25.
During trial, as to this limitation, the parties focused on whether Lupo
teaches its motors operate at the same time or whether such operation would
have been obvious.
Patent Owner contends that buttons 81 and 82 do not “work at the
same time” such that “the actuation and operation of motors 14 and 15
[operate] cooperatively—that is, at the same time to achieve a specific
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adjustment.” PO Resp. 45–46. Patent Owner additionally asserts that
“Petitioner’s original ground asserted that Lupo expressly discloses this
feature” but, in its Reply, “contends that such a feature would have been
obvious.” PO Sur-reply 21–22. Patent Owner further argues that
“Petitioner’s argument is unsupported.” Id. at 23. We agree with Patent
Owner.
In its Reply, Petitioner contends a person of ordinary skill in the art
“would understand that a user can press both buttons and operate both
motors simultaneously. Even if Lupo does not explicitly describe the motors
[as] simultaneously operable, this would be a simple, straightforward
application that would have been obvious and easy for a [person of ordinary
skill in the art] to implement.” Pet. Reply 22–23 (citing Ex. 1002 ¶¶ 128–
132). Although Petitioner cites Mr. McLellan’s testimony, we agree with
Patent Owner (PO Sur-reply 23) that the cited testimony does not address
simultaneous operation of the two motors in Lupo. See Ex. 1002 ¶¶ 128–
132. Instead these contentions in Petitioner’s Reply are unsupported
attorney argument, which we afford little to no weight. Icon Health &
Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). The
evidence of record supports that Lupo teaches two motors which can be
operated with two different buttons, but does not establish that a person of
ordinary skill in the art would have understood or found obvious that those
motors could be operated simultaneously by pushing both buttons.
We note that neither party asked in its briefing that we expressly
construe “cooperatively operable.” At the oral hearing, however, Petitioner
argued that the “cooperatively operable” includes separate, independent
operation, such that Lupo’s express disclosure of its two motors operating
when two separate buttons are pushed would satisfy this limitation. See Tr.
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32:26–36:7. In particular, at the oral hearing, Petitioner pointed to column
59, lines 57 to 62 of the ’648 patent which states: “[T]he first and second
actuators may be operated together or cooperatively operated to laterally
adjust the rearward field of view while maintaining a generally constant tip
angle (and without also vertically adjusting the rearward field of view of the
reflective element).” Tr. 33:1–3. According to Petitioner, “it seems clear
that operated together means operating at the same time, and therefore,
cooperatively operable would mean something different since it’s offered as
an alternative.” Id. at 33:8–11. Even if we consider Petitioner’s belated
claim construction argument, however, Petitioner doesn’t address other parts
of the Specification that suggest “cooperatively operable” does not include
separate operation. For example, the Specification in another passage states
that “the first and second actuators may be operated separately or together or
cooperatively operated” (Ex. 1001, 66:64–67), which applying Petitioner’s
same logic suggests that cooperatively operable is something different than
either operable separately or operable together.
Petitioner has the burden to show by the preponderance of the
evidence that claim 12 is unpatentable as obvious over Lupo. We determine
that the ’648 patent Specification suggests independent operation is not
encompassed by the additional limitation of claim 12 (Ex. 1001, 66:64–67),
and thus Petitioner’s reliance on Lupo’s disclosure of its two motors
operating separately with two buttons is insufficient. In addition, we
determine that if “cooperatively operable” encompasses simultaneous
operation of the two motors, Petitioner has not adequately shown that Lupo
teaches or renders obvious such simultaneous operation as discussed above.
Petitioner has not provided other evidence regarding Lupo’s operation, and
thus we do not need to further construe “cooperatively operable” to resolve
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the controversy before us. See Nidec Motor Corp., 868 F.3d at 1017 (“[W]e
need only construe terms ‘that are in controversy, and only to the extent
necessary to resolve the controversy.’” (quoting Vivid Techs., Inc., 200 F.3d
at 803)).
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that claim 12 is obvious over
Lupo.
j) Claim 13
Claim 13 depends from claim 12 and recites “wherein said first
electrically-operable actuator is operable at a speed different than a speed of
operation of said second electrically-operable actuator.” Ex. 1001, 77:55–
58. Because we determine Petitioner has not adequately shown claim 12
(from which claim 13 depends) is unpatentable, we also determine Petitioner
has not shown by a preponderance of the evidence that claim 13 is
unpatentable as obvious over Lupo.
k) Claim 15
Independent claim 15 recites similar limitations to claims 1 and 8. Ex.
1001, 78:37–67. Petitioner relies on its contentions addressing how Lupo
teaches the similar limitations of independent claim 1 and dependent claim
8. Pet. 32–33 (citing Ex. 1002 ¶¶ 137–141). Patent Owner does not present
arguments specific to claim 15, instead, arguing limitations of claims 1 and
15 together. See PO Resp. 37–38. For the same reasons discussed above,
we determine Petitioner has shown Lupo teaches the limitations recited in
claim 15. As such, we determine Petitioner has shown by a preponderance
of the evidence that claim 15 is unpatentable as obvious over Lupo.
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l) Conclusion
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claims 1, 5, 8–11, and 15 are
unpatentable as obvious over Lupo, but Petitioner has not shown by a
preponderance of the evidence that claims 3, 6, 7, 12, and 13 are
unpatentable as obvious over Lupo.
E. Asserted Obviousness over Lupo and McCabe
1. Overview of McCabe (Ex. 1004)
McCabe describes “automotive rearview mirror assemblies.”
Ex. 1004, 3:41–43, code (57). McCabe’s “reflective element assemblies
include a front substrate and a rear substrate,” with rear substrate having “a
reflective coating on its front surface (toward the front substrate when the
substrates are sandwiched together[)].” Id. at 3:56–67. McCabe also
describes that its “front substrate (either before or after the mating with the
rear substrate) may have its perimeter edges seamed or finished (such as
pencil seamed or rounded) so that there is a radius and not a sharp edge at
the outer perimeter of the reflective element assembly.” Id. at 46:29–33.
2. Analysis
Petitioner contends claims 2, 16, 17, and 19–36 are unpatentable as
obvious over Lupo and McCabe. Pet. 33–45. We have reviewed the
evidence and arguments provided by the parties and are persuaded that
Petitioner has demonstrated by a preponderance of the evidence that claims
2, 16, 26, and 34–36 are unpatentable as obvious over Lupo and McCabe,
but Petitioner has not demonstrated by a preponderance of the evidence that
claims 17, 19–25, and 27–33 are unpatentable as obvious over Lupo and
McCabe.
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a) Claim 2
Claim 2 depends from claim 1 and recites “wherein said mirror head
comprises a mirror casing and wherein the outermost front perimeter edge of
said exterior mirror reflective element is rounded.” Ex. 1001, 76:61–64.
Petitioner argues Lupo teaches a mirror casing (its hollow outer body 3) and
the combination of Lupo and McCabe teaches the recited rounded edge.7
Pet. 33–35. Specifically, Petitioner points to the statement in McCabe that
“the front substrate (either before or after the mating with the rear substrate)
may have its perimeter edges seamed or finished (such as pencil seamed or
rounded) so that there is a radius and not a sharp edge at the outer perimeter
of the reflective element assembly.” Id. at 34 (quoting Ex. 1004, 46:29–33
(emphasis added)). Petitioner contends it would have been obvious to
combine McCabe’s rounded edge with Lupo to have fewer sharp edges.
Id. at 34–35 (citing Ex. 1002 ¶¶ 143–148). Petitioner’s declarant testifies, “a
finished rounded outer perimeter edge would reduce the number of sharp
edges around the perimeter of the outermost surface, decreasing the risk of
injury to vehicle users and people who walk past the vehicle of cutting
themselves on the reflective element.” Ex. 1002 ¶ 145.
Patent Owner argues that “Lupo’s reflective element does not have an
exposed outermost front perimeter edge” and “McCabe does not disclose a
mirror reflective element having an exposed outermost front perimeter edge

7 Petitioner alternatively contends that if this limitation “means that the
reflective element has rounded corners (i.e., viewing the perimeter edge
from the front), Lupo teaches this limitation.” Pet. 33–34. Patent Owner
contends this misreads the limitation which requires a certain rounded edge,
not merely rounded corners. PO Resp. 48. We agree with Patent Owner,
and thus, we address in detail Petitioner’s contention that the combination of
Lupo and McCabe teaches this limitation.
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or any rounded edge with at least a minimum 2.5 mm radius of curvature.”
PO Resp. 47. Patent Owner argues that McCabe’s “seaming merely dresses
a cut edge to remove loosened glass particles and does not remove or
materially round the sharp cut edge, much less round to a minimum 2.5 mm
radius of curvature.” Id. These arguments are based on Patent Owner’s
proposed construction of the additional limitation of claim 2, which as
discussed in detail above, we do not adopt.
We determine Petitioner has shown that the combination of Lupo and
McCabe teaches the rounded edge recited in claim 2. Specifically, McCabe
states: “Optionally, the front substrate (either before or after the mating with
the rear substrate) may have its perimeter edges seamed or finished (such as
pencil seamed or rounded) so that there is a radius and not a sharp edge at
the outer perimeter of the reflective element assembly.” Ex. 1004, 46:29–33
(emphasis added).8
Patent Owner further argues “there is no motivation to combine
McCabe with Lupo” for two reasons. PO Resp. 52–54. “First, a POSA
would avoid modifying Lupo as Petitioner suggests because rounding the
outermost front perimeter glass edge as in ’648 would require an additional
costly manufacturing process.” Id. (citing Ex. 2001 ¶ 215). And, “[s]econd,
a POSA would consider rounding edges in the way claimed by ‘648 only if
those edges were going to be exposed, and the rounding is used for safety
purposes.” Id. (citing Ex. 2001 ¶¶ 214–215).

8 We further note that if Patent Owner is correct that “rounded” in the
context of the ’648 patent requires a 2.5 mm minimum radius of curvature,
then a person of ordinary skill in the art would have understood McCabe’s
disclosure of a rounded edge to have that same radius of curvature.
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We determine Petitioner has articulated sufficiently persuasive
reasoning with rational underpinning for combining the relied upon
teachings of Lupo and McCabe. In particular, we determine that a person of
ordinary skill in the art would have easily envisioned why avoiding sharp
edges would be beneficial, even when those edges are not exposed in the
finished assembly. See Pet. 34–35 (citing Ex. 1002 ¶¶ 143–148). We do not
agree that any disadvantages (e.g., cost) associated with making the
modification undercut Petitioner’s obviousness rationale. See Medichem,
S.A. v. Rolabo, S.L, 437 F.3d 1157, 1165 (Fed. Cir. 2006).
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claim 2 is unpatentable as obvious
over the combination of Lupo and McCabe.
b) Claims 16, 17, 19–36
Petitioner also provides further analysis detailing where it contends
each additional limitation of dependent claims 16, 17, 19–25, and 27–36 is
taught by the combination of Lupo and McCabe. Pet. 35–45. Aside from
similar limitations previously argued, as discussed above, Patent Owner does
not address Petitioner’s obviousness challenge to these claims. See
generally PO Resp.; PO Sur-reply.
Claim 16 depends from claim 15 and additionally recites
wherein said exterior mirror reflective element comprises an
electro-optic exterior mirror reflective element, and wherein said
electro-optic exterior mirror reflective element comprises a front
glass substrate and a rear substrate sandwiching an electro-optic
medium capable of electrically-variable light transmission, and
wherein said front glass substrate has an outer first side separated
from an inner second side by the plate thickness of said front
glass substrate, and wherein the perimeter circumferential edge
of said outer first side of said front glass substrate is rounded.
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Ex. 1001, 79:1–11. Petitioner contends McCabe teaches the additional
limitation of claim 16. Pet. 35–38. Specifically, Petitioner points out that
“McCabe explains that electro-optic and electrochromic cells have been
widely used in interior and exterior rearview mirrors for vehicles” and
further details such glass substrates. Id. at 35–36 (citing Ex. 1004, 1:40–52,
1:56–59, 39:59–40:12, 41:49–56, 46:29–33, Fig. 37). We agree that
McCabe teaches this limitation. Ex. 1004, 1:40–52, 1:56–59, 39:59–40:12,
41:49–56, 46:29–33.
Claim 17 depends from claim 16 and additionally recites “wherein
said electro-optic exterior mirror reflective element is fixedly attached to a
bracket by at least one of (i) mechanical attachment and (ii) adhesive
attachment using an adhesive.” Ex. 1001, 79:12–16. Petitioner contends
Lupo teaches the additional limitation of claim 17. Pet. 38. Referencing its
analysis of claim 3, Petitioner points out that “Lupo teaches that the
reflective plate 4 is attached to the projections 53 by the outer body 3, which
is a mechanical attachment.” Id. (citing id. at 19–20). Petitioner relies only
on Lupo to teach the recited “bracket.” Id. For the same reasons discussed
above in regards to claim 3, Petitioner has not shown Lupo teaches “electro-
optic exterior mirror reflective element is fixedly attached to a bracket.” As
such, Petitioner has not shown Lupo teaches all the limitations recited in
claim 17.
Claims 19–23 depend, directly or indirectly, from claim 17. Ex. 1001,
79:21–44. Because Petitioner has not shown Lupo teaches all the limitations
recited in claim 17, from which claims 19–23 depend, Petitioner has not
shown Lupo teaches all the limitations recited in claims 19–23.
For claim 24, Petitioner relies primarily on its contentions as to how
Lupo teaches similar limitations of dependent claim 12. Pet. 39. For the
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reasons discussed above regarding claim 12, we determine Petitioner has not
shown that Lupo teaches the additional limitation of claim 24. Petitioner
does not rely on McCabe as teaching the additional limitation of claim 24.
See id. Claim 25 depends from claim 24. Ex. 1001, 79:45–55. Because
Petitioner has not shown Lupo teaches the additional limitation recited in
claim 24, from which claim 25 depends, and Petitioner’s contentions as to
claim 25 do not address this deficiency (Pet. 39), Petitioner has not shown
the combination of Lupo and McCabe teaches all the limitations recited in
claim 25.
Claim 26 is independent and recites similar limitations to claim 1,
claim 5, claim 8, and claim 16. Ex. 1001, 79:62–80:38; Pet. 39–41.
Petitioner relies primarily on its contentions as to how Lupo teaches similar
limitations of those claims. Pet. 11–19, 20–26, 39–41. For the reasons
discussed above regarding claims 1, 5, 8, and 16, we determine Petitioner
has shown the combination of Lupo and McCabe teaches the limitations
recited in claim 26.
Claim 27 recites, in relevant part, a similar limitation to claim 12. Ex.
1001, 80:39–50. For the limitation of claim 27, Petitioner relies primarily
only on its contentions as to how Lupo teaches the similar limitation of
claim 12. Pet. 41. For the reasons discussed above regarding claims 12, we
do not find those contentions persuasive. Petitioner does not rely on
McCabe as teaching this portion of claim 27. We determine Petitioner has
not shown the combination of Lupo and McCabe teaches all of the
limitations of claim 27. Claim 28 depends from claim 27. Ex. 1001, 80:51–
54. Because Petitioner has not shown Lupo teaches the additional limitation
recited in claim 27, from which claim 28 depends, and Petitioner’s
contentions as to claim 28 do not address this deficiency (Pet. 41), Petitioner
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has not shown the combination of Lupo and McCabe teaches all the
limitations recited in claim 28.
Claim 29 depends from claim 26 and additionally recites, in part,
“wherein said mirror head comprises a bracket to which said electrochromic
exterior mirror reflective element is fixedly attached, and wherein said one
end of said support structure attaches at said bracket.” Ex. 1001, 80:55–59.
Petitioner relies primarily on its contentions as to how the combination of
Lupo and McCabe teaches similar limitations of dependent claims 6 and 16.
Pet. 42. For the same reasons discussed above in regards to claim 6,
Petitioner has not shown Lupo teaches the recited “bracket,” and Petitioner
does not contend McCabe remedies this deficiency (see id.). As such,
Petitioner has not shown the combination of Lupo and McCabe teaches all
the limitations recited in claim 29.
Claims 30 and 31 depend, directly or indirectly, from claim 29.
Ex. 1001, 80:60–81:3. Because Petitioner has not shown the combination of
Lupo and McCabe teaches all the limitations recited in claim 29, from which
claims 30 and 31 depend, and Petitioner’s contentions as to claims 30 and 31
do not address this deficiency (Pet. 42), Petitioner has not shown the
combination of Lupo and McCabe teaches all the limitations recited in
claims 30 and 31.
Claim 32 depends from claim 26 and additionally recites, in part,
“wherein said mirror head comprises a bracket at which said electrochromic
exterior mirror reflective element is fixedly attached.” Ex. 1001, 81:11–13.
Petitioner relies on its contentions as to how the combination of Lupo and
McCabe teaches similar limitations of dependent 16. Pet. 43. Similar to
other claims (e.g., claim 3) discussed above, Petitioner relies only on
projections 53 of Lupo to teach the recited bracket. Id. at 44. For the same
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reasons discussed above in regards to claim 3, Petitioner has not shown
Lupo teaches the recited “bracket.” As such, Petitioner has not shown the
combination of Lupo and McCabe teaches all the limitations recited in claim
32.
Claims 33 depends from claim 32. Ex. 1001, 81:16–18. Because
Petitioner has not shown the combination of Lupo and McCabe teaches all
the limitations recited in claim 32, Petitioner has not shown the combination
of Lupo and McCabe teaches all the limitations recited in claim 33.
Claim 34 depends from claim 26 and recites an additional limitation
similar to claim 10. Ex. 1001, 82:1–6. For its assertions as to claim 34,
Petitioner relies primarily on its contentions as to how Lupo teaches similar
limitations of dependent claim 10. Pet. 44. For the reasons discussed above
regarding claim 10, we find those contentions persuasive. We determine
Petitioner has shown the combination of Lupo and McCabe teaches the
limitations recited in claim 34.
Claim 35 depends from claim 34 and recites an additional limitation
similar to claim 11. Ex. 1001, 82:7–10. For its assertions as to claim 35,
Petitioner relies primarily on its contentions as to how Lupo teaches similar
limitations of dependent claim 11. Pet. 45. For the reasons discussed above
regarding claim 11, we find those contentions persuasive. We determine
Petitioner has shown the combination of Lupo and McCabe teaches the
limitations recited in claim 35.
Claim 36 depends from claim 34 and recites an additional limitation
similar to claim 9. Ex. 1001, 82:11–16. For its assertions as to claim 36,
Petitioner relies primarily on its contentions as to how Lupo teaches the
similar limitations of claim 9. Pet. 45. For the reasons discussed above
regarding claim 9, we find those contentions persuasive. We determine
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Petitioner has shown the combination of Lupo and McCabe teaches the
limitations recited in claim 36.
As discussed above, we find Petitioner has shown the combination of
Lupo and McCabe teaches the additional limitations of claims 16, 26, and
34–36. Petitioner contends it would have been obvious to combine Lupo’s
teachings with the electro-optic or electrochromic mirror element of McCabe
as a simple substitution that would have “yield[ed] the beneficial,
predictable results of providing an exterior, rearview mirror assembly with
an electro-optic mirror element that can adjust its opacity or be darkened.”
Pet. 36–37 (citing Ex. 1004, 3:4–15; Ex. 1002 ¶ 152). Petitioner applies this
rationale to claims 16, 26, and 34–36. Id. at 36–39, 44–45.
Prior to institution, Patent Owner disputed that a person of ordinary
skill in the art would have modified Lupo with McCabe’s electrochromic
reflective element. Prelim. Resp. 51–52. Patent Owner, however, did not
make those same arguments during the trial (see generally PO Resp.; PO
Sur-reply). Accordingly, Patent Owner waived those arguments. Paper 8, 8
(“Patent Owner is cautioned that any arguments not raised in the response
may be deemed waived.”); see, e.g., In re NuVasive, 842 F.3d at 1380–81;
Consolidated Trial Practice Guide 52 (Nov. 2019).
We find Petitioner’s reasoning for combining Lupo’s teachings with
the electro-optic or electrochromic mirror element of McCabe to be
persuasive and supported by rational underpinnings. Pet. 36–37 (citing Ex.
1004, 3:4–15; Ex. 1002 ¶ 152).
c) Conclusion
For the reasons discussed above, we determine Petitioner has shown
by a preponderance of the evidence that claims 2, 16, 17, and 19–36 are
unpatentable as obvious over Lupo and McCabe, but Petitioner has not
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shown by a preponderance of the evidence that claims 17, 19–25, and 27–33
are unpatentable as obvious over Lupo and McCabe.
F. Asserted Obviousness over Lupo and Tsuyama
Petitioner contends claim 4 is unpatentable as obvious over Lupo and
Tsuyama. Pet. 45–48. Claim 4 depends from claim 1 and further recites, in
part, “wherein said mirror head comprises a bracket to which said exterior
mirror reflective element is fixedly attached by use of an adhesive.”
Ex. 1001, 77:1–4. Petitioner relies only on Lupo’s projections 53 to teach
the recited “bracket.” Pet. 47. As discussed above in regards to claim 3,
Petitioner has not shown Lupo teaches “wherein said mirror head comprises
a bracket to which said exterior mirror reflective element is fixedly
attached.” As such, Petitioner has not shown the combination of Lupo and
Tsuyama teaches all the limitations recited in claim 4.
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that claim 4 is unpatentable as
obvious over the combination of Lupo and Tsuyama.
G. Asserted Obviousness Lupo, McCabe, and Tsuyama
Petitioner contends claim 18 is unpatentable as obvious over Lupo,
McCabe, and Tsuyama. Pet. 48. Claim 18 depends from claim 17. As
discussed above, Petitioner has not shown the combination of Lupo and
McCabe teaches all the limitations recited in claim 17. Petitioner does not
rely on Tsuyama to remedy this deficiency. As such, Petitioner has not
shown the combination of Lupo, McCabe, and Tsuyama teaches all the
limitations recited in claim 18.
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that claim 18 is obvious over the
combination of Lupo, McCabe, and Tsuyama.
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H. Asserted Obviousness over Tsuyama
1. Overview of Tsuyama (Ex. 1005)
Tsuyama describes “a remote-controlled mirror apparatus for
vehicles” in which the angle of a mirror body, i.e., a reflective surface, can
be adjusted to “secur[e] a wide field of view.” Ex. 1005, 2:54–60, code
(57); see id. at 5:44.
Figures 2–4 of Tsuyama are reproduced below.

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Figures 2–4 of Tsuyama show different views of using a remote controlled
mirror apparatus. Ex. 1005, 3:25–31. Stay 100 is attached at the top of the
rear of the vehicle body. Id. at 1:48–53.
Figure 5 of Tsuyama is reproduced below.

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Figure 5 shows a partially cutaway view of Tsuyama’s mirror apparatus.
Ex. 1005, 3:32–34. At the top of Figure 5, “[o]ne end of stay 1 is attached to
a vehicle body.” Id. at 4:37–39. And, “[m]ounted on the other end of the
stay 1 is a mirror body 2 via a mirror holder 3 and power unit 4,” where the
power unit “serve[s] as an angle adjusting mechanism, mounted to be
capable of adjusting the angle.” Id. at 4:39–43. Further, “mirror body 2 is
held by mirror holder 3 of the housing configuration.” Id. at 4:54–56. In
particular, mirror body 2 is “[f]astened by bonding (and/or other fastening
means)” between hooks 31 and ribs 32 in front opening 30 of mirror holder
3. Id. at 4:50–56.
As noted above, the angle, i.e., positioning, of the mirror body 2 can
be adjusted so that “the field in which objects can be viewed and perceived
can be changed, making it possible to view over a wider range.” Id. at 7:12–
18, 11:32–36. Mirror body 2 is adjusted, i.e., repositioned, through power
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unit 4. Specifically, mirror holder 3 that holds mirror body 2 is attached to
power unit 4; power unit 4 rotates about center axis O–O (as shown in
Figure 5); accordingly, the rotation of power unit 4 adjusts the position of
mirror holder 3, correspondingly adjusting the position of mirror body 2.
Id. at 7:5–12, 8:5–8. In particular, the movement of power unit 4 causes
“the angle of the mirror body 2 [to be] adjusted” so that the “viewing
direction can be changed to be left and right or back and forth.” Id. at
11:33–34.
Further, power unit 4 is rotated via first motor 41 and second motor
42. Id. at 11:14, 11:23. Figure 15 is reproduced below.

Figure 15 “is a schematic front view showing the layout of motors” (and
other associated components) of power unit 4. Id. at 3:58–60. Power unit 4
is configured such that actuation of first motor 41 repositions mirror holder
3, and thereby “tilts [mirror body 2] about the first oblique axis S1–S1.”
Id. at 11:18–22. Additionally, actuation of the second motor 42 can also
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reposition mirror holder 3, and thereby “tilts [mirror body 2] about the
second oblique axis S2–S2.” Id. at 11:27–31.
2. Analysis
Petitioner contends claims 1, 5, 8–9, 12, and 15 are unpatentable as
obvious over Tsuyama. Pet. 49–66.
We have reviewed the evidence and arguments provided by the parties
and are not persuaded that Petitioner has demonstrated by a preponderance
of the evidence that claims 1, 5, 8–9, 12, and 15 are unpatentable as obvious
over Tsuyama.
a) Claim 1
Claim 1 recites, in relevant part:
wherein said exterior mirror reflective element moves in
tandem with movement of said mirror head relative to the
exterior portion of the body or the equipped vehicle at which
said exterior rearview mirror assembly is attached to adjust the
rearward field of view of a driver of the equipped vehicle who
views said exterior mirror reflective element when operating the
equipped vehicle.
Ex. 1001, 76:53–60. Petitioner contends Tsuyama suggests this limitation.
Pet. 56–58 (citing Ex. 1005, 1:30–34, 1:54–60, 3:4–19, 4:47–56, 11:58–61,
Figs. 5–6; Ex. 1002 ¶¶ 88, 239–241). As to adjusting the rearward field of
view of a driver, Petitioner states “the mirror assembly could be used as
‘side mirrors . . . attached to the vehicle body via a cylindrical support arm
instead of the stay 100.’” Id. at 57 (quoting Ex. 1005, 1:30–34). According
to Petitioner, “[i]f the mirror assembly 100 were attached on the side of the
vehicle body as Tsuyama describes, then the field of view lines would
extend from the eye point to the side-view mirror and then be generally
directed towards the rear of the vehicle.” Id. at 57–58 (citing Ex. 1002
¶¶ 239–240). Petitioner further argues that “Tsuyama also explicitly states
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that” its mirror assembly “can be applied to vehicles other than one-box car
and recreational vehicle, and to mirror apparatuses other than the rear
under mirror.” Pet. Reply 29–30 (citing Ex. 1005, 12:4–10).
Patent Owner contends that Tsuyama describes a “rear under mirror”
that “is incapable of serving as a ‘rearview mirror’ providing a driver with a
‘rearward field of view.’” PO Resp. 56. Patent Owner further contends that
it would not have been obvious “to move the mirror assembly of Tsuyama to
the side of the vehicle and use it as an exterior rearview mirror.” Id. Patent
Owner supports that contention with three arguments. First, aside from “a
passage from the background of the invention,” “[n]owhere else in the patent
does Tsuyama state or imply that its ‘rear under’ mirror could be used as a
rearview mirror at the side of the vehicle.” Id. at 57. Second, “Tsuyama
discloses a specific type of mirror for a particular purpose” and that mirror is
“not designed for and would be incapable of serving as a rearview mirror,
much less an exterior rearview mirror.” Id. And, third, a person of ordinary
skill in the art would have “avoid[ed]” modifying Tsuyama “to move the
mirror assembly . . . to the side of the vehicle to serve as an exterior rearview
mirror assembly.” Id. at 58.
We determine Petitioner has not shown Tsuyama teaches or suggests
this limitation of claim 1. At institution, we preliminarily adopted Patent
Owner’s proposed construction of “rearward field of view” as a “view of
rearwardly approaching or following vehicles.” Dec. 15. During trial,
Petitioner does not dispute this construction (Pet. Reply 3), and we continue
to apply it here.
Based on that construction, the issue is whether Tsuyama teaches or at
least suggests that an “exterior rearview mirror assembly is attached to
adjust the rearward field of view of a driver of the equipped vehicle who
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views said exterior mirror reflective element when operating the equipped
vehicle.” In the Petition, Petitioner relied on Tsuyama’s mirror assembly
with the field of view shown in Figures 2–4 of Tsuyama. Pet. 57. That
mirror, however, does not adjust a view of rearwardly approaching or
following vehicles. See Ex. 1005, Fig. 2, 1:54–60, 4:26–29. Indeed,
Tsuyama refers to a preferred embodiment as detailed in Figures 5, 11, and
15 (for which Petitioner relies on most of the limitations of claim 1 (see Pet.
50–58)) as a “rear under mirror assembly.” Ex. 1005, 4:23–30. Thus, we
disagree with Petitioner’s contention that Tsuyama’s adjustment of the field
of view shown as dashed lines in Figure 2 teaches adjustment of a rearward
field of view. See Pet. 57–58 (citing Ex. 1002 ¶¶ 239–240).
Petitioner further contends “Tsuyama also states that the mirror
assembly could be used as “side mirrors . . . attached to the vehicle body via
a cylindrical support arm instead of the stay 100.” Id. at 58 (citing Ex. 1005,
1:30–34). At institution, we found that the cited statement in Tsuyama
describes an example of a remote-controlled mirror apparatus in
another publication being used as side mirrors. See Ex. 1005,
1:28–34 (‘An example of the remote-controlled mirror
apparatus for vehicles described above is disclosed in Japanese
Patent Application Laid-open No. H8-26031. The remote-
controlled mirror apparatus for vehicles disclosed in this
publication is used as side mirrors for heavy duty vehicles such
as truck and bus, and is attached to the vehicle body via a
cylindrical support arm instead of the stay 100.’).
Dec. 41. Thus, we preliminarily found that by not addressing the context of
this statement in Tsuyama, Petitioner had not adequately explained “why a
person of ordinary skill would have had reason to move Tsuyama’s mirror
assembly depicted in Figures 2–4 to the side of the vehicle to allow
adjustment of a rearward field of view.” Id.
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In its Petition, Petitioner also contends a person of ordinary skill in the
art “would understand that the primary (if not sole) purpose for a vehicle’s
exterior rearview mirror (e.g., as described in Tsuyama) is to adjust the
driver’s rearward field of view ‘who views said exterior mirror reflective
element when operating the equipped vehicle.’” Pet. 58 (citing Ex. 1002
¶ 88). As we noted in our Decision on Institution (Dec. 41), the cited
paragraph of Petitioner’s declarant’s testimony discusses obviousness in the
context of Lupo’s teachings (not Tsuyama), which is unhelpful because
Lupo clearly teaches an external rearview mirror. See Ex. 1002 ¶ 88; Ex.
1003, 2:12–15. Petitioner also contends: “To the extent another reference is
needed, Schnell can be combined with Tsuyama to teach this limitation, as
described in Ground 1(a).” Pet. 58 (citing Ex. 1002 ¶¶ 239–241). We also
do not find this contention persuasive because Petitioner’s passing mention
of the Schnell reference relies only on Petitioner’s analysis in the
obviousness ground over Lupo, which does not mention moving the location
of the mirror assembly. Id. at 18–19. The cited portion of Petitioner’s
declarant’s testimony is unsupported and also does not discuss moving the
location of Tsuyama’s rear under mirror. See Ex. 1002 ¶¶ 239–241 (“As
stated above with respect to Ground 1(a), the very purpose of exterior
rearview mirrors on vehicles is to adjust the rearward field of view of the
driver for safer operation of the vehicle. This would be apparent to a person
of ordinary skill in the art. Further evidence to support this can be found in
Schnell.”).
Considering the complete trial record, we find the preponderance of
the evidence does not support that a person of ordinary skill in the art would
have had a sufficient reason to move Tsuyama’s rear under mirror (as
depicted, for example, in Figure 5) to the side of the vehicle. In its Reply,
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Petitioner contends the example discussed in the Tsuyama’s background at
least suggests that the prior art embodiment depicted in Figures 2–4 can be
used as a side mirror. Pet. Reply 27–28 (citing Ex. 1005, 1:28–34).
Petitioner then argues that Tsuyama’s Figure 5 uses the same general
structure as the prior art, with the “primary difference” being that in Figure
5, the reflective element is attached to the mirror housing so they move in
tandem. Id. at 28–29. According to Petitioner, “[b]ecause a [person of
ordinary skill in the art] would understand that Figure 1 could be used as a
side mirror, a [person of ordinary skill in the art] would also understand that
the similarly structured mirror in Figure 5 could also be used as a side
mirror.” Id. at 29. As support for that contention, Petitioner points only to
Tsuyama’s disclosure that “[w]hile the embodiment described above is a
rear under mirror for automobile used in the vehicle C Such [sic] as one-box
car or recreational vehicle, the remote-controlled mirror apparatus for
vehicles of the present invention can be applied to vehicles other than one-
box car and recreational vehicle, and to mirror apparatuses other than the
rear under mirror.” Id. at 29–30 (citing Ex. 1005, 12:4–10).
Petitioner also points to Mr. McLellan’s testimony as explaining that a
person of ordinary skill in the art “would understand this disclosure of
Tsuyama to mean that the ‘mirror assembly could be used as a side mirror
that is attachable by a cylindrical support arm instead of the stay.’” Id. at 30
(citing Ex. 1002 ¶ 223). Petitioner also points generally to safety
requirements for selling cars in the United States. Id. (citing Ex. 2001 ¶ 13).
Thus, Petitioner contends “it would have been obvious for a [person of
ordinary skill in the art] to move the remote-controlled mirror of Tsuyama to
the side of the vehicle. Doing so would ‘adjust the rearward field of view of
the driver for safer operation of the vehicle.’” Id. (citing Ex. 1002 ¶ 239).
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We are not persuaded by Petitioner’s argument and evidence. At
most, this evidence shows that a person would have had a reason to have
side view mirrors generally on a vehicle and would have understood that the
prior art disclosure in Tsuyama (i.e., Figures 2–4) could have been used as
side view mirrors. Petitioner, however, does not persuasively address why a
person of ordinary skill in the art would have found it obvious to move the
mirror of Tsuyama’s Figure 5 to the side of the vehicle. Petitioner identifies
similarities between the major components in Figure 1 and Figure 5 (i.e., a
stay, a mirror housing or holder, and a mirror body). Pet. Reply 28–29
(citing Ex. 1005, Figs. 1, 5). But Petitioner’s contentions as to Tsuyama do
not concern only these major components. Specifically, in its obviousness
challenge to claim 1 over Tsuyama, Petitioner relies on Figures 11 and 15 of
Tsuyama for a number of internal components of Tsuyama’s mirror
assembly. See Pet. 53–55 (providing annotated Figures 11 and 15
identifying Tsuyama’s first advance-retract rod, second advance-retract rod,
first motor, second motor, and power unit housing). Petitioner and its
declarant are silent as to whether it would have been obvious to move a rear
under mirror with these specific components to the side of the vehicle. See
Pet. Reply 28–30; Ex. 1002 ¶ 239 (stating only that “the very purpose of
exterior rearview mirrors on vehicles is to adjust the rearward field of view
of the driver for safer operation of the vehicle” and not addressing any
reason to move Tsuyama’s Figure 5 mirror assembly). We also find the
generic statement in Tsuyama that its mirror assembly could be used for
“mirror apparatuses other than the rear under mirror” (Ex. 1005, 12:4–10)
insufficient to support the specific modification on which Petitioner relies.
Thus, we determine Petitioner has not shown Tsuyama teaches:
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wherein said exterior mirror reflective element moves in
tandem with movement of said mirror head relative to the
exterior portion of the body or the equipped vehicle at which
said exterior rearview mirror assembly is attached to adjust the
rearward field of view of a driver of the equipped vehicle who
views said exterior mirror reflective element when operating the
equipped vehicle,
as recited in claim 1, and Petitioner has not provided sufficient reasoning
why it would have been obvious to modify Tsuyama to move its rear under
mirror to the side of the vehicle.
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that claim 1 is unpatentable as
obvious over Tsuyama.
b) Claim 5, 8, 9, and 12
Claims 5, 8, 9, and 12 depend directly or indirectly from claim 1.
Petitioner’s contentions as to these dependent claims do not cure the
deficiency discussed above for claim 1. See Pet. 58–65. Because we
determine Petitioner has not shown by a preponderance of the evidence that
claim 1 is unpatentable as obvious over Tsuyama, we also determine that
Petitioner has not shown by a preponderance of the evidence that claims 5,
8, 9 and 12 are unpatentable as obvious over Tsuyama.
c) Claim 15
Independent claim 15 recites a similar limitation to the limitation of
claim 1 discussed in detail above, and Petitioner relies on its contentions as
to claim 1 for that limitation of claim 15. Pet. 66. Our analysis as to claim 1
applies equally to this limitation of claim 15. Accordingly, we determine
Petitioner has not shown by a preponderance of the evidence that claim 15 is
unpatentable as obvious over Tsuyama.
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d) Conclusion
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that claims 1, 5, 8, 9, 12, and 15
are unpatentable as obvious over Tsuyama.
I. Asserted Obviousness over Tsuyama and McCabe
Petitioner also contends claims 2, 16, 19, 20, 24–27, 31, 33, and 36
are unpatentable as obvious over Tsuyama and McCabe. Pet. 66–73. Claim
2 depends from claim 1, and claims 16, 19, 20, 24, and 25 depend directly or
indirectly from claim 15. Petitioner’s contentions, including Petitioner’s
reliance on McCabe, as to these dependent claims do not cure the deficiency
discussed above for claims 1 and 15. See id. at 66–71. Because we
determine Petitioner has not shown by a preponderance of the evidence that
claims 1 and 15 are unpatentable as obvious over Tsuyama, we also
determine that Petitioner has not shown by a preponderance of the evidence
that claims 2, 16, 19, 20, 24, and 25 are unpatentable as obvious over
Tsuyama and McCabe.
Independent claim 26 recites a similar limitation to the limitation of
claim 1 discussed in detail above, and Petitioner relies only on its
contentions as to claim 1 for that limitation of claim 26. Id. at 72–73. Our
analysis as to claim 1 applies equally to this limitation of claim 26.
Accordingly, we determine Petitioner has not shown by a preponderance of
the evidence that claim 26 is unpatentable as obvious over Tsuyama and
McCabe.
Claims 27, 31, 33, and 36 depend directly or indirectly from claim 26.
Petitioner’s contentions, including Petitioner’s reliance on McCabe, as to
these dependent claims do not cure the deficiency discussed above for claim
26. See id. at 73. Because we determine Petitioner has not shown by a
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preponderance of the evidence that claim 26 is unpatentable as obvious over
Tsuyama and McCabe, we also determine that Petitioner has not shown by a
preponderance of the evidence that claims 27, 31, 33, and 36 are
unpatentable as obvious over Tsuyama and McCabe.

IV. CONCLUSION9
For the foregoing reasons, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 2, 5, 8–11, 15, 16, 26, and
34–36 of the ’648 patent are unpatentable, but has not shown by a
preponderance of the evidence that claims 3, 4, 6, 7, 12, 13, 17–25, and 27–
33 of the ’648 patent are unpatentable, as summarized in the following table:

9 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 3, 5–
13, 15
103 Lupo 1, 5, 8–11, 15 3, 6, 7, 12, 13
2, 16, 17,
19–36
103 Lupo, McCabe 2, 16, 26, 34–36
17, 19–25,
27–33
4 103 Lupo, Tsuyama 4
18 103 Lupo, McCabe, Tsuyama
18
1, 5, 8, 9,
12, 15
103 Tsuyama 1, 5, 8, 9, 12, 15
2, 16, 103 Tsuyama, McCabe 2, 16, 19–20,
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V. ORDER
Accordingly, it is:
ORDERED that claims 1, 2, 5, 8–11, 15, 16, 26, and 34–36 of the
’648 patent are held to be unpatentable;
ORDERED that claims 3, 4, 6, 7, 12, 13, 17–25, and 27–33 of the
’648 patent have not been shown to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

19–20,
24–27,
31, 33,
36
24–27, 31, 33,
36
Overall
Outcome
1, 2, 5, 8–11,
15, 16, 26,
34–36
3, 4, 6, 7, 12,
13, 17–25,
27–33
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FOR PETITIONER:
Kenneth Luchesi
Joseph Sauer
David Cochran
Robert Breetz
JONES DAY
kluchesi@jonesday.com
jmsauer@jonesday.com
dcochran@jonesday.com
rbreetz@jonesday.com

FOR PATENT OWNER:
Dennis Abdelnour
Timothy Flory
David Thomas
HONIGMAN LLP
dabdelnour@honigman.com
tflory@honigman.com
dthomas@honigman.com