Magna Mirrors of America, Inc. v. Samvardhana Motherson Reflectec Group Holdings Limited et al
Filing
769
OPINION; Judgment to issue; signed by District Judge Jane M. Beckering (lep)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
MAGNA MIRRORS OF AMERICA, INC.,
Plaintiff,
Case No. 1:17-cv-77
v.
HON. JANE M. BECKERING
SAMVARDHANA MOTHERSON
REFLECTEC GROUP HOLDINGS
LIMITED, et al.,
Defendants.
____________________________/
OPINION
Plaintiff Magna Mirrors of America, Inc. (“Magna”) initiated this patent case against
Defendants SMR Automotive Systems USA, Inc. (“SMR USA”); SMR Automotive Mirrors UK
Limited (“SMR UK”); SMR Automotive Mirrors Stuttgart GmbH (“SMR Stuttgart”); and SMR
Automotive Vision Systems Mexico S.A. De C.V. (“SMR Mexico”) (collectively, “SMR”).
Magna alleged that blind spot mirror assemblies that SMR manufactured infringed claims in
Magna’s patents. However, a jury rendered a verdict in favor of SMR on December 15, 2022.
The remaining issue of inequitable conduct was tried to the Court on December 15, 2022, and the
parties subsequently filed proposed findings of fact and conclusions of law (ECF Nos. 756–757 &
761). In accordance with Federal Rule of Civil Procedure 52(a), this Opinion contains the Court’s
Findings of Fact and Conclusions of Law. 1 For the reasons delineated herein, the Court determines
that SMR has not carried its burden of proving inequitable conduct.
The Court has adopted, in most respects and without attribution, language proposed by one of the
parties. In all such instances, the Court adopts the party’s proposed finding of fact or conclusion
1
I.
INTRODUCTION
At issue is whether Magna engaged in inequitable conduct during the prosecution of three
of the five Asserted Patents, rendering unenforceable its claims of those patents and the claims of
the remaining two Asserted Patents. As the bases for its inequitable-conduct defense, SMR argues
that Niall Lynam, Ph.D., Magna’s Senior Vice President (SVP) and Chief Technical Officer
(CTO), (1) submitted false declarations to the Patent and Trademark Office (PTO) during
prosecution of three of the Asserted Patents, and (2) failed to identify the 2001 Dodge Ram Trailer
Towing Mirror during prosecution of the Asserted Patents as material, non-cumulative prior art.
As part of this Court’s pretrial process, the parties submitted a set of uncontroverted facts before
the bench trial (ECF No. 620 at PageID.24481–24485), and these facts form a substantial rendition
of the core relevant events in this case. Further, the Court observes that the parties’ remaining
proposed findings of fact are mostly duplicative of each other, resulting in the primary task before
the Court to draw reasonable inferences from these facts, as well as the legal import of the facts.
II.
FINDINGS OF FACT
A. Overview
1. Magna and SMR (and their predecessors) have been competitors in the North America exterior
mirror market since at least 2003. (Jury Trial Trs., ECF No. 699 at PageID.27116 (Cezary
Zawadzinski), ECF No. 705 at PageID.27596 & 27640 (Kevin Arst), and ECF No. 724 at
PageID.28005–28006 (Ronald Raymo).)
2. The Asserted Patents are the following five United States Patents selected for trial:
a. No. 7,934,843 (“the ƍ843 patent,” Plaintiff’s Trial Exhibit [PTX] 001), entitled
“Exterior Sideview Mirror System”;
of law as the Court’s own, based upon its review of the evidence and the law. To the extent that
any of the Court’s findings of fact may be considered conclusions of law or vice versa, they should
be considered as such.
2
b. No. 8,267,534 (“the ƍ534 patent,” PTX004), entitled “Exterior Rearview Mirror
Assembly”;
c. No. 8,591,047 (“the ƍ047 patent,” PTX006), entitled “Exterior Sideview Mirror
Assembly”;
d. No. 8,783,882 (“the ƍ882 patent,” PTX007), entitled “Extended Field of View Exterior
Mirror Element for Vehicle”; and
e. No. 9,694,750, entitled “Extended Field of View Exterior Mirror Element for Vehicle”
(“the ƍ750 patent,” PTX009).
3. The “Asserted Claims” are
a.
b.
c.
d.
e.
claim 15 of the ƍ843 patent,
claim 20 of the ƍ534 patent,
claim 27 of the ƍ047 patent,
claim 20 of ƍ882 patent, and
claim 8 of the ƍ750 patent. (Jury Trial Tr., ECF No. 686 at PageID.26352.)
4. Each Asserted Patent is directed to an exterior sideview mirror assembly containing a primary
mirror and an auxiliary or “spotter” mirror targeted at reducing a driver’s “blind spot.”
(PTX001 at Abstract; PTX004 at Abstract; PTX006 at Abstract; PTX007 at Abstract; PTX009
at Abstract; Jury Trial Tr., ECF No. 686 at PageID.26446 (Lynam).)
5. Dr. Lynam, Magna’s SVP and CTO, is the sole named inventor on each Asserted Patent.
(PTX001-002; PTX004-002; PTX006-002; PTX007-002; PTX009-002; Jury Trial Tr., ECF
No. 686 at PageID.26420 (Lynam); Bench Trial Tr., ECF No. 743 at PageID.29287 (Lynam).)
6. The Asserted Patents are related and share a common specification. (Jury Trial Tr., ECF No.
695 at PageID.26836 & 26839–26840 (Lynam); PTX001-002; PTX004-002; PTX006-002;
PTX007-002 to -003; PTX009-002 to -003.)
7. Each Asserted Patent is a continuation of U.S. Patent Application No. 12/851,045 (“the ƍ045
application”), which is the application that led to issuance of the first Asserted Patent, the ƍ843
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patent. (Jury Trial Tr., ECF No. at 695 at PageID.26838–26840 (Lynam); PTX001-002;
PTX004-002; PTX006-002; PTX007-002 to -003; PTX009-002 to -003.)
8. Each Asserted Patent is entitled to a priority date of May 20, 2003. (Uncontroverted Facts
¶ 12; Jury Trial Tr., ECF No. 695 at PageID.26840 (Lynam).)
B. The 2001 Dodge Ram Mirror
9. Magna and/or its affiliate manufactured and sold an exterior sideview automotive mirror
product or assembly with a primary reflective element and a separate auxiliary reflective
element intended to be installed on a vehicle for the 2001 Dodge Ram (the “2001 Dodge Ram
Mirror.” (Jury Trial Tr., ECF No. 731 at PageID.28284–28286 (Tuviah Schlesinger);
Defendants’ Physical Trial Exhibit [DPX] 2; Defendants’ Trial Exhibit [DX] 001.0034; DX465.0005.)
10. The exterior rearview mirror for the 2001 Dodge Ram included a primary flat mirror and “[a]
small blind spot mirror is integrated onto the main mirror surface.” (DX-001.0034; Jury Trial
Tr., ECF No. 731 at PageID.28280 (Schlesinger).)
11. Magna, its affiliate, and/or an Original Equipment Manufacturer (OEM) customer publicly
disclosed the 2001 Dodge Ram Mirror at least one year before May 20, 2003, i.e., the priority
date of the Asserted Patents.
(Jury Trial Tr., ECF No. 731 at PageID.28285–28286
(Schlesinger); DX-465.0013.)
12. Magna and/or its affiliate offered the 2001 Dodge Ram Mirror for sale in the United States at
least one year before May 20, 2003. (Jury Trial Tr., ECF No. 731 at PageID.28284–28286
(Schlesinger); DX-465.0009.)
13. Magna and/or its affiliate sold the 2001 Dodge Ram Mirror in the United States at least one
year before May 20, 2003. (DX-465.0005.)
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14. Last, Dr. Lynam testified that he knew about the 2001 Dodge Ram Mirror before filing the
applications that led to the issuance of each Asserted Patent. (Bench Trial Tr., ECF No. 743
at PageID.29266 & 29278.)
C.
2000–2007: The Two-Piece Mirror Family (The Lynam ƍ451, ƍ712 & ƍ294 Patents)
15. Dr. Lynam testified that in the summer of 1999, he began developing two-element blind spot
mirror assembly inventions designed to solve the problem of viewing objects in a driver’s blind
spot. (Jury Trial Tr., ECF No. 686 at PageID.26430–26434.)
16. Between January 2000 and 2004, Dr. Lynam filed patent applications directed to an exterior
sideview mirror assembly containing two separate pieces of glass: a primary mirror and a
spotter mirror (“the Two-Piece Mirror Family”).
(Bench Trial Tr., ECF No. 743 at
PageID.29246–29247 (Lynam).)
17. The Two-Piece Mirror Family is composed of the following three issued United States Patents:
a. No. 6,522,451 (“the ƍ451 patent,” DX-20),
b. No. 6,717,712 (“the ƍ712 patent,” DX-18), and
c. No. 7,167,294 (“the ƍ294 patent,” DX-19). (Bench Trial Tr., ECF No. 743 at
PageID.29246–29247 (Lynam).)
18. Magna has not alleged that SMR’s bridge spotter mirrors infringe any claim of the ƍ451, ƍ712,
or ƍ294 patents. (Jury Trial Tr., ECF No. 686 at PageID.26352, 26471–26473 & 26475
(Lynam).)
19. On January 6, 2000, Dr. Lynam (through his attorney) filed U.S. Patent Application No.
09/478,315 (“the ƍ315 application”) for blind spot mirror assemblies, which issued as U.S.
Patent No. 6,522,451 (“the ƍ451 patent”) on February 18, 2003. (Uncontroverted Facts ¶ 1;
PTX124-001.)
a. Dr. Lynam is the sole inventor listed on the ƍ451 patent. (Uncontroverted Facts ¶ 2.)
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b. The ƍ451 patent expired on February 18, 2015 because Magna did not pay the requisite
maintenance fees.
(Uncontroverted Facts ¶ 3; Jury Trial Tr., ECF No. 686 at
PageID.26473 (Lynam).)
c. Notably, the ƍ451 patent does not disclose a “Thin Glass Element,” which is defined
infra at ¶ 36(c). (Bench Trial Tr., ECF No. 743 at PageID.29222 (Schlesinger) & 29255
(Lynam).)
20. On December 20, 2000, Dr. Lynam (through his attorney) filed a continuation-in-part of the
ƍ451 patent, which issued on April 6, 2004 as U.S. Patent No. 6,717,712 (“the ƍ712 patent”).
(Uncontroverted Facts ¶ 4; PTX125-001.)
a. The ƍ712 patent names three inventors: Dr. Lynam, John O. Lindahl, and Hahns
Yoachim Fuchs. (Uncontroverted Facts ¶ 6.)
b. The application that led to the ƍ712 patent was published on June 13, 2002 as U.S.
Patent
Publication
No.
2002/0072026
(the
“Lynam
ƍ026
publication”).
(Uncontroverted Facts ¶ 5; PTX504-001.)
c. Dr. Lynam testified that the ƍ712 patent discloses further details regarding blind spot
mirror assemblies that he invented, including additional detail regarding “angling” and
overlapping fields of view. (Jury Trial Tr., ECF No. 686 at PageID.26442.)
d. However, the ƍ712 patent expired on April 6, 2016 because Magna did not pay the
requisite maintenance fees. (Uncontroverted Facts ¶ 7; Jury Trial Tr., ECF No. 686 at
PageID.26475–26476 (Lynam).).
21. On April 2, 2004, Dr. Lynam (through his attorney) filed a continuation of the ƍ712 patent,
which issued on January 23, 2007 as U.S. Patent No. 7,167,294 (“the ƍ294 patent”).
(Uncontroverted Facts ¶ 8; PTX126-001.)
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a. The ƍ294 patent also named Dr. Lynam, Lindahl, and Fuchs as the three inventors.
(Uncontroverted Facts ¶ 9.)
b. Dr. Lynam testified that Lindahl and Fuchs contributed the “frame element” to the
invention described in the ƍ712 and ƍ294 patents. (Jury Trial Tr., ECF No. 686 at
PageID.26442–26443; Bench Trial Tr., ECF No. 743 at PageID.29287.)
22. Magna did not file any further continuation, continuation-in-part, or divisional applications of
the ƍ294 patent. The Two-Piece Mirror Patent Family therefore closed after the ƍ294 patent
issued on January 23, 2007. (Bench Trial Tr., ECF No. 743 at PageID.29247 (Lynam).)
D. The One-Piece Mirror Family (The Lynam ƍ756 & ƍ154 Patents)
23. On May 20, 2003, Dr. Lynam (through his attorney) filed United States Provisional
Application No. 60/471,872 (“the ƍ872 provisional application”). (Uncontroverted Facts ¶ 10;
PTX502-001.)
a. The named inventor of the ƍ872 provisional application is Dr. Lynam. (Uncontroverted
Facts ¶ 13.)
b. The ƍ872 provisional application incorporates by reference the entirety of the ƍ451 and
ƍ712 patents, patents from the two-piece mirror family. (Uncontroverted Facts ¶ 14.)
c. Dr. Lynam testified that the ƍ872 provisional application discloses, among other things,
an inventive composition—“polymeric thin glass”—for a mirror, although Dr. Lynam
conceded that the words “thin glass” are not in the ƍ872 provisional application. (Bench
Trial Tr., ECF No. 743 at PageID.29281–29282.)
d. Each of the Asserted Patents claim priority to the ƍ872 provisional application.
(Uncontroverted Facts ¶ 11.)
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24. Each of the Asserted Patents are entitled to a priority date of May 20, 2003 based on the filing
date of the ƍ872 provisional application. (Uncontroverted Facts ¶ 12; Jury Trial Tr., ECF No.
695 at PageID.26840 (Lynam).)
25. On May 5, 2004, Dr. Lynam (through his attorney) filed Application No. 10/709,434 (“the
ƍ434 application”), which issued as U.S. Patent No. 7,420,756 (“the ƍ756 patent”) on September
2, 2008, and claims priority to the ƍ872 provisional application. (Uncontroverted Facts ¶ 16.)
26. On August 25, 2008, Dr. Lynam (through his attorney) filed Application No. 12/197,666 (“the
ƍ666 application”), which issued as U.S. Patent No. 7,842,154 (“the ƍ154 patent”) on November
30, 2010. (Uncontroverted Facts ¶ 17.)
a. The ƍ666 application is a division of the ƍ434 application. (Uncontroverted Facts ¶ 18.)
b. The sole named inventor on the ƍ154 patent is Dr. Lynam. (DX-197.0001.)
27. Magna has not alleged that SMR’s bridge spotter mirrors infringe any claim of the ƍ756 or
ƍ154 patents. (Jury Trial Tr., ECF No. 686 at PageID.26352.)
E.
2008: SMR’s Bridge Spotter Mirror Released (The Sinelli ƍ469 Patent)
28. On January 3, 2008, SMR filed United States Patent Application No. 11/968,989, which
published as United States Patent Publication No. 2009/0174959 (the “Sinelli publication”).
(Uncontroverted Facts ¶ 21.)
a. The Sinelli publication is directed to an exterior rearview automotive mirror that
includes a two-piece spotter mirror assembly. (Uncontroverted Facts ¶ 20.)
29. In late 2008, SMR released its two-piece bridge spotter mirror, which is the mirror accused of
infringement in this case. (Jury Trial Tr., ECF No. 705 at PageID.27404–27406 (Gary Sinelli),
& 27537 (Michael Nranian); DX-414.0001; DX-416.0001.)
8
30. SMR began supplying bridge spotters for the General Motors Lambda program in April 2009
(Jury Trial Trs., ECF No. 705 at PageID.27414-27416 (Sinelli); ECF No. 724 at
PageID.28053–28057 (Shannon Plewinski); PTX493-008; PTX493-010; PTX493-019; DX83.0001.)
31. SMR supplied bridge spotters for the Ford Econoline program no later than March 2009. (Jury
Trial Tr., ECF No. 705 at PageID.27406 (Sinelli) & 27537 (Nranian); PTX001; DX-37.0001.)
32. Around July 2009, Dr. Lynam became aware of the Sinelli publication. (Uncontroverted Facts
¶ 19.)
33. By June 2010, Dr. Lynam also became aware that SMR was supplying an outside mirror that
included a two-piece bridge spotter mirror assembly into the United States outside mirror
market. (Jury Trial Trs., ECF No. 695 at PageID.26843 (Lynam), & ECF No. 686 at
PageID.26470 (Lynam); Bench Trial Tr., ECF No. 743 at PageID.29245 (Lynam).)
34. As of June 2010, Magna had not yet began supplying “WideVue” mirrors, which is what
Magna called its side-view mirrors with two reflective elements. (Jury Trial Trs., ECF No.
686 at PageID.26443 (Lynam), ECF No. 695 at PageID.26906 (Michael Baur), ECF No. 705
at PageID.27535–27537 (Nranian), & ECF No. 705 at PageID.27658 (Arst); Bench Trial Tr.,
ECF No. 743 at PageID.29245 (Lynam).)
a. The flat mirror and curved spotter mirror in Magna’s WideVue product are held
together by a plastic formed backplate that Dr. Lynam invented. (Jury Trial Tr., ECF
No. 686 at PageID.26443 (Lynam).)
b. Magna first shipped a WideVue mirror in the second half of 2010 for the 2011 Ford
Fiesta program. (Jury Trial Trs., ECF No. 686 at PageID.26443 (Lynam); ECF No.
9
695 at PageID.26906 (Baur); ECF No. 705 at PageID.27535–27537 (Nranian) & 27658
(Arst).)
35. The Sinelli Publication issued as U.S. Patent No. 7,857,469 (“the Sinelli ƍ469 Patent”) on
December 28, 2010. (Uncontroverted Facts ¶ 22.)
a. The ƍ469 patent is directed to a two-piece spotter mirror assembly. (Uncontroverted
Facts ¶¶ 19 & 20; Jury Trial Tr., ECF No. 699 at PageID.27220 (Paul Henion);
PTX127-001 at Abstract; PTX127-002 at Fig. 1; PTX127-007, 4:19-37 (claim 1).)
b. The ƍ469 patent claims “[a]n exterior rearview mirror assembly for a motor vehicle”
that comprises “a primary mirror” and “a spotting mirror.” (PTX127-001 at Abstract;
PTX127-002 at Fig. 1; PTX127-007, 4:19-37 (claim 1).)
c. The ƍ469 patent was allowed over the Lynam ƍ451, ƍ712, and ƍ294 patents in Magna’s
Two-Piece Mirror Patent Family, which are cited on the face of the ƍ469 patent.
(PTX127-0001.)
d. The ƍ469 patent named SMR employees Gary J. Sinelli, Paul R. Henion, Douglas J.
Wilson, and Timothy Jayquas as inventors. (PTX127-0001.)
e. When prosecuting the ƍ469 patent, neither SMR’s engineers (including Henion and
Sinelli) nor their counsel cited the Dodge Ram Mirror or the United States version of
PCT International Publication No. WO 01/44013 (“Henion ƍ013”), which lists Henion
as one of the inventors and which also discloses a trailer towing mirror. Henion
testified that his view at the time was that the Dodge Ram Mirror was simply different
from the blind-zone mirror design they were claiming in their patent, in part because
the Dodge Ram Mirror is a trailer-towing mirror. (PTX127 (face); Jury Trial Tr., ECF
No. 699 at PageID.27167–27170 (Henion).).
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F. August 2010–May 2016: Prosecution of the Asserted Patents
(1) The ƍ843 Patent
36. On August 5, 2010, after becoming aware of SMR’s bridge spotter mirrors, Dr. Lynam
(through his attorney) filed U.S. Patent Application No. 12/851,045 (“the ƍ045 application”),
which later issued as the asserted U.S. Patent No. 7,934,843 (“the ƍ843 patent”). (PTX 001001).
a. The ƍ045 application is a continuation of the ƍ666 application. (Uncontroverted Facts
¶ 24.)
b. Dr. Lynam testified that the claims of the ƍ843 patent include the two-element blind
spot mirror assemblies described in the ƍ451 and ƍ712 patents and “incorporate[] by
reference” the “thin glass” limitations from the ƍ872 provisional. (Jury Trial Tr., ECF
No. 686 at PageID.26444; Bench Trial Tr., ECF No. 743 at PageID.29281–29282.)
c. Specifically, pending independent claims of the ƍ045 application recited “wherein at
least one of said plano reflective element and said auxiliary reflective element
comprises one of (a) a glass substrate having a surface coated with a metallic reflector
coating and (b) a polymeric substrate having a thin glass element applied to a surface
thereof and with an opposing surface thereof having a reflecting layer applied thereto”
(the “Thin Glass Element”) (PTX021 (emphasis added).)
37. Dr. Lynam acknowledged his “duty to disclose to the [Patent Office] all information which is
known by [him] to be material to patentability” during prosecution of the ƍ045 application.
(PTX021-012.)
38. On January 13, 2011, during prosecution of the ƍ045 application, the Examiner rejected the
pending claims, in pertinent part, as (1) not entitled to claim priority to the ƍ872 provisional
11
application (“Priority Rejection”); and (2) anticipated by the Lynam ƍ026 publication (“Lynam
ƍ026 Publication Rejection”). (Uncontroverted Facts ¶ 25.).
a. Specifically, the Examiner stated that Dr. Lynam had not shown entitlement to claim
priority to the ƍ872 provisional application because the ƍ872 provisional application
failed to provide adequate support for several features, including the “plano-auxiliary
reflective element assembly.” (PTX021-1080.)
39. On January 19, 2011, Dr. Lynam (through his attorney) responded to the Examiner’s Priority
Rejection by explaining that the priority claim to the ƍ872 provisional application was
appropriate due to the incorporation by reference of the ƍ451 and ƍ712 patents. (Uncontroverted
Facts ¶ 26.)
40. On January 19, 2011, Dr. Lynam (through his attorney) responded to the Examiner’s Lynam
ƍ026 Publication Rejection by submitting a sworn declaration pursuant to 37 C.F.R. § 1.131
(“the Rule 1.131 Declaration”). (Uncontroverted Facts ¶ 27.)
a. In relevant part, Dr. Lynam’s declaration stated that “[p]rior to June 13, 2002, the
inventor and Applicant conceived of the claimed invention of at least the independent
claims as filed in the present application.” 2 (PTX021-1130.).
b. Dr. Lynam’s declaration further stated that “[t]he invention of at least the independent
claims of the present application was reduced to practice sometime prior to June 13,
2002.” Id. at 1132.
The ƍ026 publication was issued on June 13, 2002; thus, Dr. Lynam was contending that the ƍ026
publication was not disqualifying prior art.
2
12
c. Dr. Lynam’s declaration set forth the limitations of the independent claims, including
the “metallic reflector coating” species, but made no reference to the “thin glass”
species. Id.
41. Dr. Lynam repeatedly testified at trial that he reduced to practice the “thin glass” species of
the independent claims of the ƍ045 patent application after June 13, 2002. (Bench Trial Tr.,
ECF No. 743 at PageID.29255 & PageID.29284.)
42. Dr. Lynam testified that he “never thought” his declaration was telling the PTO that he had
invented thin glass before June 13, 2002 (Bench Trial Tr., ECF No. 743 at PageID.29284.)
43. Both Dr. Lynam and SMR’s technical expert, Toviah Schlesinger, Ph.D., testified that the
Lynam ƍ026 publication did not disclose the optional “thin glass” species set forth in the ƍ045
patent application. (Bench Trial Tr., ECF No. 743 at PageID.29240–29241 (Schlesinger) &
PageID.29284 (Lynam).)
44. SMR’s expert on Patent Office procedures, James Carmichael, testified that Dr. Lynam’s
declaration could overcome the Examiner’s rejection by showing prior possession of “either
the whole invention or something falling within the claims, such as a species of a claimed
genus” that was disclosed by the Lynam ƍ026 publication identified by the Patent Examiner
(Bench Trial Tr., ECF No. 743 at PageID.29308 & 29314–29315.)
45. After receiving the response, the Examiner allowed the ƍ045 application to issue as the ƍ843
patent on March 22, 2011. (Uncontroverted Facts ¶ 28.)
a. The Examiner stated that Dr. Lynam had “overcome the prior art rejection and
questions regarding priority by filing a 37 CFR 1.131 affidavit,” which “proves that
Niall Lynam conceived or invented the subject matter disclosed in the patent
application publication.” (PTX021-1222.)
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(2) The ƍ534 Patent
46. On December 23, 2011, Dr. Lynam (through his attorney) filed U.S. Patent Application No.
13/336,018 (“the ƍ018 application”), which issued as U.S. Patent No. 8,267,534 (“the ƍ534
patent”) on September 18, 2012. (Uncontroverted Facts ¶ 29; PTX024-011; PTX 004.)
a. The sole named inventor on the ƍ018 application is Dr. Lynam. (Uncontroverted Facts
¶ 30.)
b. The ƍ018 application is a continuation of U.S. Patent Application No. 12/911,274,
which is a continuation of the ƍ045 application. (Uncontroverted Facts ¶ 31.)
c. Claim 1 the Lynam ƍ534 patent and claim 1 of the Sinelli ƍ469 Patent are word-for-word
identical. (Uncontroverted Facts ¶ 35.)
d. Pending independent claims of the ƍ018 application included the Thin Glass Element,
reciting “wherein at least one of said plano reflective element and said auxiliary
reflective element comprises one of (a) a generally flat glass substrate having a surface
coated with a metallic reflector coating and (b) a generally flat polymeric substrate
having a thin glass element applied to a surface thereof and with an opposing surface
thereof having a reflecting layer applied thereto.” (PTX024-083 to -088; PTX024-187
to -188.)
47. Dr. Lynam acknowledged his “duty to disclose to the [Patent Office] all information which is
known by [him] to be material to patentability” during prosecution of the ƍ018 application.
(PTX024-014.)
48. On May 17, 2012, the Examiner issued an office action rejecting all pending claims of the ƍ018
application as anticipated by the Lynam ƍ026 publication. (Uncontroverted Facts ¶ 32.)
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a. Specifically, the Examiner stated that “[t]he applied reference”—the Lynam ƍ026
publication—had a “common inventor” with the ƍ018 application and that the Lynam
ƍ026 publication “constitutes prior art under 35 U.S.C. 102(e).” (PTX024-148.)
b. The Examiner further stated that the rejections based on the Lynam ƍ026 publication
under Section 102(e) “might be overcome either by a showing under 37 CFR 1.132 that
any invention disclosed but not claimed in the reference was derived from the inventor
of this application and is thus not the invention ‘by another,’ or by an appropriate
showing under 37 CFR 1.131.” Id.
49. On May 21, 2012, Dr. Lynam (through his attorney) responded to the Examiner’s rejections
based on the Lynam ƍ026 publication by submitting another sworn declaration.
(Uncontroverted Facts ¶ 33.)
a. Dr. Lynam’s declaration stated that “the invention claimed in at least independent
claims 1, 19 and 28 was invented by the Applicant prior to the publication date of
Lynam ƍ026, namely, June 13, 2002.” (PTX 024-192 to -193.)
b. Dr. Lynam’s declaration submitted in prosecution of the ƍ018 application did not
reference the “thin glass” species.
50. On August 6, 2012, after receiving the response, the Examiner allowed the ƍ018 application to
issue as the ƍ534 patent. (Uncontroverted Facts ¶ 34.)
a. In the “Reasons for Allowance,” the Examiner stated that Dr. Lynam’s declaration
submitted “under 37 CFR 1.131 is sufficient to overcome the Lynam US 2002/0072026
… reference[].” (PTX024-285.)
15
(3) The ƍ047 Patent
51. On February 25, 2013, Dr. Lynam (through his attorney) filed U.S. Patent Application No.
13/776,091 (“the ƍ091 application”), which issued as U.S. Patent No. 8,591,047 (“the ƍ047
patent”) on November 26, 2013. (Uncontroverted Facts ¶ 36.)
a. The sole named inventor on the ƍ091 application is Dr. Lynam. (Uncontroverted Facts
¶ 37.)
b. The ƍ091 application is a continuation of U.S. Patent Application No. 13/590,854 (“the
ƍ854 application”). (Uncontroverted Facts ¶ 38.)
c. Like the ƍ045 and ƍ018 applications, the ƍ091 application also included the Thin Glass
Element among the pending independent claims. (PTX026-214.)
52. Dr. Lynam acknowledged his “duty to disclose to the [Patent Office] all information which is
known by [him] to be material to patentability” during prosecution of the ƍ091 application.
(PTX026-002.)
53. On August 16, 2013, the Examiner issued an office action rejecting certain pending claims of
the ƍ091 application as anticipated by the Lynam ƍ026 publication. (Uncontroverted Facts
¶ 39.)
a. As before, the Examiner stated that “[t]he applied reference”—the Lynam ƍ026
publication—had a “common inventor” with the ƍ018 application and that the Lynam
ƍ026 publication “constitutes prior art under 35 U.S.C. 102(e).” (PTX026-164.)
54. On August 21, 2013, Dr. Lynam (through his attorney) responded to the Examiner’s rejections
based on the Lynam ƍ026 publication by submitting a sworn declaration. (Uncontroverted
Facts ¶ 40.)
16
a. In relevant part, Dr. Lynam’s declaration stated that “[p]rior to June 13, 2002, the
inventor and Applicant conceived of the claimed invention of at least the independent
claims as filed in the present application.” (PTX026-213.)
b. Dr. Lynam’s declaration further stated that “[f]or example, and with reference to claim
1 of the present application, the inventor and Applicant conceived of an exterior
rearview mirror assembly,” including wherein the “main plano mirror element
comprises one of (a) a generally flat glass substrate having a surface coated with a
metallic reflector coating and (b) a generally flat polymeric substrate having a thin glass
element applied to a surface thereof and with an opposing surface thereof having a
reflecting layer applied thereto… .” (PTX026-213 to -214.)
55. On September 27, 2013, after receiving the response, the Examiner allowed the ƍ091
application to issue as the ƍ047 patent. (Uncontroverted Facts ¶ 41.)
a. The Examiner stated in the Notice of Allowance that Dr. Lynam’s declaration
submitted “under 37 CFR 1.131(a) is sufficient to overcome the Lynam et al US
2002/0072026 reference.” (PTX026-379.)
(4) The ƍ882 Patent
56. On October 15, 2013, Dr. Lynam (through his attorney) filed U.S. Patent Application No.
14/054,004 (“the ƍ004 application”), which was issued as U.S. Patent No. 8,783,882 (“the ƍ882
patent”) on July 22, 2014. (Uncontroverted Facts ¶ 42.)
a. The sole named inventor on the ƍ004 application is Dr. Lynam. (Uncontroverted Facts
¶ 43.)
b. The ƍ004 application is a continuation of U.S. Patent Application No. 13/776,247,
which is a continuation of the ƍ091 application. (Uncontroverted Facts ¶ 44.)
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57. Dr. Lynam acknowledged his “duty to disclose to the [Patent Office] all information which is
known by [him] to be material to patentability” during prosecution of the ƍ004 application.
(PTX027-230.)
58. On December 17, 2013, the Examiner issued an office action rejecting all pending claims and
finding (1) that the claims were not entitled to claim priority to the ƍ872 provisional application
and (2) that the claims therefore would have been obvious over the Lynam ƍ026 publication.
(PTX027-136 to -137.)
a. Specifically, the Examiner stated that the claims of the ƍ004 application were not
entitled to claim priority to the ƍ872 provisional because “[t]he disclosure of the priorfiled application, Application No. 12/197,666 (and its parent Application No.
10/709,434 and Provisional Application No. 60/471,872)” failed to “provide adequate
support or enablement in the manner provided by 35 U.S.C. 112(a).” (PTX027-136.)
b. In particular, the Examiner found that the priority applications did not provide support
for “a main plano mirror element fixedly disposed at a first portion of said mirror
backing plate element; . . . an auxiliary non-plano curved mirror element fixedly
disposed at a second portion of said mirror backing plate element; wherein said main
plano mirror element and said auxiliary non-plano curved mirror element are adjacently
disposed at said mirror backing plate element in a side-by-side relationship and are not
superimposed with one mirror element on top of the other mirror element; . . . wherein
said first primary field of view of said main plano mirror element overlaps said second
auxiliary field of view of said auxiliary non-plano curved mirror element.” (PTX027136 to -137.)
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59. On March 17, 2014, Dr. Lynam (through his attorney) responded to the Examiner’s rejections
based on the Lynam ƍ026 publication by submitting another sworn Rule 1.131 declaration.
(PTX027-185.)
a. In relevant part, Dr. Lynam’s declaration stated that “[p]rior to June 13, 2002, the
inventor and Applicant conceived of the claimed invention of at least the independent
claims as filed in the present application.” (PTX027-185.)
b. Dr. Lynam’s declaration further stated that “[f]or example, and with reference to claim
1 of the present application, the inventor and Applicant conceived of an exterior
rearview mirror assembly,” including wherein the “main plano mirror element
comprises a generally flat glass substrate having a surface coated with a metallic
reflector coating[.]” (PTX027-185 to -186.)
c. The declaration made no reference to the “thin glass” species. (PTX027-185 to -187.)
60. After receiving the response, on July 22, 2014, the Examiner allowed the ƍ004 application to
issue as the ƍ882 patent. (PTX007-001.)
a. Specifically, the Examiner stated that Dr. Lynam’s declaration submitted “under 37
CFR 1.131(a) is sufficient to overcome the Lynam et al. reference (US 2002/0072026
A1) and to demonstrate that Applicant is entitled to the benefit of the earlier filing date
of prior-filed Application No. 12/197,666 (and its parent application 10/709,434 and
Provisional Application No. 60/471,872).” (PTX027-350.)
(5) The ƍ750 Patent
61. Last, on May 16, 2016, Dr. Lynam (through his attorney) filed U.S. Patent Application No.
15/155,351 (“the ƍ351 application”), which issued as U.S. Patent No. 9,694,750 (“the ƍ750
patent”) on July 4, 2017. (Uncontroverted Facts ¶ 48.)
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a. The sole named inventor on the ƍ351 application is Dr. Lynam. (Uncontroverted Facts
¶ 49.)
b. The ƍ351 application is a continuation of U.S. Patent Application No. 14/556,339,
which is a continuation of U.S. Patent Application No. 14/336,370 (“the ƍ370
application”), which is itself a continuation of the ƍ004 application. (Uncontroverted
Facts ¶ 50.)
62. Dr. Lynam (through his attorney) acknowledged his “duty to disclose to the [Patent Office] all
information which is known by [him] to be material to patentability” during prosecution of the
ƍ351 application. (PTX029-002; PTX029-020; PTX029-097.)
63. On November 25, 2016, the Examiner issued an office action rejecting all pending claims of
the ƍ351 application; however, the Examiner did not make any rejections based on the Lynam
ƍ026 publication. (PTX029-123 to -155.)
64. On February 24, 2017, Dr. Lynam submitted (through his attorney) a response to overcome
the rejections. (PTX029-184 to -208.)
65. On May 12, 2017, the Examiner allowed the ƍ351 application to issue as the ƍ750 patent.
(PTX029-219.)
66. Dr. Lynam never disclosed the 2001 Dodge Ram Mirror to the Patent Office during prosecution
of any Asserted Patent. (Bench Trial Tr., ECF No. 743 at PageID.29266 (Lynam); ECF No.
731 at PageID.28288, 41:1-6 (Schlesinger); PTX021-104 to -115; PTX024-100 to -130;
PTX026-111 to -140; PTX027-116 to -132; PTX029-097 to -110.).
67. Dr. Lynam testified that “[i]t never entered [his] mind” to disclose the 2001 Dodge Ram Mirror
because it is “a trailer-towing mirror” that was not relevant to the “blind-zone problem” he was
trying to address, and Dr. Lynam further opined that the 2001 Dodge Ram Mirror “was
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materially different,” “wasn’t in the same field of endeavor,” and “was a different animal,”
“like a different planet.” (Jury Trial Tr., ECF No. 686 at PageID.26463–26465, 237:23-239:8
(Lynam); Bench Trial Tr., ECF No. 743 at PageID.29276 & 29296 (Lynam).)
III.
CONCLUSIONS OF LAW
A.
Legal Standard
“It is well settled that patent applicants are required to prosecute patent applications ‘with
candor, good faith, and honesty.’” Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326
F.3d 1226, 1233 (Fed. Cir. 2003) (citation omitted). “A breach of this duty, when coupled with an
intent to deceive or mislead the PTO constitutes inequitable conduct[.]” Id. Inequitable conduct
cannot be cured by reissue or reexamination; rather, if the accused infringer meets its burden, then
the district court must weigh the equities to determine whether the applicant’s conduct before the
PTO warrants rendering the entire patent unenforceable. Therasense, Inc. v. Becton, Dickinson &
Co., 649 F.3d 1276, 1287–88 (Fed. Cir. 2011) (en banc). Indeed, “the taint of a finding of
inequitable conduct can spread from a single patent to render unenforceable other related patents
and applications in the same technology family.” Id. at 1288 (describing the inequitable-conduct
charge as the “atomic bomb” of patent litigation).
In Therasense, the United States Court of Appeals for the Federal Circuit observed that
given the “far-reaching consequences” of the inequitable conduct doctrine, “charging inequitable
conduct ha[d] become a common litigation tactic[,]” which “[l]eft unfettered... ha[d] plagued not
only the courts but also the entire patent system.” Id. at 1289. The Federal Circuit sought to
address this problem by “tighten[ing] the standards” in order to “redirect” the doctrine. Id. at 1290.
To prove inequitable conduct after the Federal Circuit’s Therasense decision, a challenger “must
show by clear and convincing evidence that the patent applicant (1) misrepresented or omitted
21
information material to patentability, and (2) did so with specific intent to mislead or deceive the
PTO.” In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012) (citing
Therasense, 649 F.3d at 1287).
“[A]s a general matter, the materiality required to establish inequitable conduct is but-for
materiality.” Therasense, 649 F.3d at 1291. “[I]t must be shown that the PTO would not have
allowed the claim but for the nondisclosure or misrepresentation.” Rosuvastatin Calcium, 703
F.3d at 519 (citing Therasense, 659 F.3d at 1287); see also Ohio Willow Wood Co. v. Alps South,
LLC, 735 F.3d 1333, 1345 (Fed. Cir. 2013) (“Typically, an allegation of inequitable conduct before
the PTO requires proof that the patentee withheld or mispresented information that, in the absence
of the withholding or misrepresentation, would have prevented a patent claim from issuing.”).
This requires a court to “apply the preponderance of the evidence standard and give claims their
broadest reasonable construction.” Therasense, 649 F.3d at 1291–92 (citing Manual of Patent
Examining Procedure (MPEP) §§ 706, 2111 (8th ed., July 2010)).
To establish the requisite intent, intent to deceive the PTO must be “the single most
reasonable inference able to be drawn from the evidence.” Id. at 1290 (citation omitted). “Proving
that the applicant knew of a reference, should have known of its materiality, and decided not to
submit it to the [Patent Office] does not prove specific intent to deceive.” Id. “A finding that the
misrepresentation or omission amounts to gross negligence or negligence under a ‘should have
known’ standard does not satisfy this intent requirement.” Id.
B.
1.
Analysis
The Declarations
First, SMR proposes the conclusion that Dr. Lynam committed inequitable conduct
because he submitted false, if not “unmistakably false,” declarations during the prosecution of the
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ƍ843, ƍ534, and ƍ047 patents with the intent to deceive the PTO (ECF No. 761 at PageID.31059–
31061, ¶¶ 287–288, 292–294). Specifically, according to SMR, Dr. Lynam declared that he
conceived and reduced to practice “the invention of at least the independent claims” before June
13, 2002, yet he testified that he did not conceive or reduce to practice the Thin Glass Element
recited in the claims until after June 13, 2002 (id. at PageID.31059–31060, ¶¶ 289–290).
Alternatively, SMR argues that the false statements are material because they were used to
overcome the Examiner’s rejections (id. at PageID.31060, ¶ 292). Last, according to SMR, Dr.
Lynam had “strong illicit motivation to secure patents covering SMR’s bridge spotter mirror for
Magna’s commercial gain because SMR released its bridge spotter mirror before Magna was able
to introduce its WideVue mirror” (id. at PageID.31004, ¶ 6). SMR points out that Dr. Lynam acted
“unusually quickly” in pursuing patent claims within weeks of learning of SMR’s bridge spotter
mirror and responded in “an extraordinarily short time” in submitting his declarations in response
to the Examiner’s rejections (id. at PageID.31004–31005, ¶¶ 6–7).
According to Magna, Dr. Lyman’s Rule 1.131 declarations did not need to demonstrate
conception or reduction to practice of the “thin glass” species to overcome the Lynam ƍ026
publication anticipation rejections because the Lynam ƍ026 publication teaches only the “glass
substrate having a surface covered with a metallic reflector coating” species (the “metallic reflector
coating” species) of the independent claims of the Patents-in-Suit (ECF No. 756 at PageID.30012,
¶ 12). Magna proposes that the declarations are “most reasonably read to say that he conceived of
and reduced to practice the ‘metallic reflector coating’ species (rather than the ‘thin glass’ species)
of the claimed invention prior to June 13, 2002,” which is consistent with Dr. Lynam’s trial
testimony (id., ¶¶ 13 & 15). In support of its proposed conclusion, Magna points out that the
substance of the declarations either omit reference to the thin glass feature or state that Dr. Lynam
23
invented only “one of” the potential species of the claimed genus prior to June 13, 2002 (id. at
PageID.30013, ¶ 16). Magna also points out that the MPEP rule that antedating genus claims
against a prior art reference requires proving conception and reduction to practice of only one
species in that genus (id.).
37 C.F.R. § 1.131(a) provides that “[w]hen any claim of an application or a patent under
reexamination is rejected, the applicant or patent owner may submit an appropriate oath or
declaration to establish invention of the subject matter of the rejected claim prior to the effective
date of the reference or activity on which the rejection is based.” “[T]he materiality prong of
inequitable conduct is met when an applicant files a false affidavit and fails to cure the
misconduct.” Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339, 1344 (Fed. Cir. 2013). Indeed,
where the patentee files an “unmistakably false affidavit,” the patentee has engaged in an
affirmative act of egregious misconduct such that “materiality is presumed.” Ohio Willow Wood,
735 F.3d at 1345 (quoting Therasense, 649 F.3d at 1292).
Here, the “thin glass” feature appears in the Asserted Claim of the ƍ843 patent and in the
Asserted Claims of the ƍ534, ƍ047, and ƍ750 patents. PTX001 (ƍ843 patent at claim 1); PTX004
(ƍ534 patent at claim 13); PTX006 (ƍ047 patent at claim 1); PTX009 (ƍ750 patent at claim 1).
According to Dr. Lynam, this language means “you have two choices,” with “option A” being the
“metallic glass substrate” and “option B” being “this thin glass, polymeric substrate” (Bench Trial
Tr., ECF No. 743 at PageID.29283). According to Dr. Lynam, “to satisfy the claim in its totality,
you can have either A or B” (id.).
The Manual of Patent Examining Procedure instructs that “[t]he 37 CFR 1.131(a) affidavit
or declaration must establish possession of either the whole invention claimed or something falling
within the claim (such as a species of a claimed genus), in the sense that the claim as a whole reads
24
on it.” MPEP § 715.02 (How Much of the Claimed Invention Must Be Shown, Including the
General Rule as to Generic Claims) (9th ed., June 2020) (emphasis added). Dr. Lynam’s Rule
1.131 declarations submitted in support of the ƍ045, ƍ018, and ƍ091 applications do not indicate that
he conceived of or reduced to practice the full scope of the invention before June 13, 2002. See
PTX021-1130 to -1133; PTX024-196 to -197; PTX026-213 to -215. And the declaration he
submitted during the prosecution of the ƍ004 application made no reference to the “thin glass”
species at all. See also PTX027-185 to -187. Because Dr. Lynam’s Rule 1.131 declarations do
not take a position regarding whether he had conceived of the “thin glass” species of the
independent claims prior to June 13, 2002, the Court concludes that they cannot be considered
false, let alone “unmistakably false.”
Additionally, as this Court previously forecasted, a reasonable factfinder could conclude
from the total mix of information that Dr. Lynam’s statements were part of a concerted effort to
obtain a post-hoc advantage in the competitive market, or a reasonable factfinder could conclude
that Dr. Lynam was engaged in a zealous but permissible defense of his intellectual property by
explaining how the claims were not precluded by his own prior art. Magna Mirrors of Am., Inc.
v. SMR Auto. Mirrors UK Ltd., No. 1:17-cv-77, 2021 WL 5052100, at *7 (W.D. Mich. Mar. 18,
2021) (denying summary judgment on inequitable conduct).
“[W]hen there are multiple
reasonable inferences that may be drawn, intent to deceive cannot be found.” Therasense, 649
F.3d at 1290–91. “Whenever evidence proffered to show either materiality or intent is susceptible
of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor
of another equally reasonable inference.” Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528
F.3d 1365, 1376 (Fed. Cir. 2008).
25
In short, the Court concludes that SMR has not satisfied its burden of proving Dr. Lynam
committed inequitable conduct by submitting false declarations with an intent to deceive the PTO.
2.
The Prior Art
Second, SMR proposes the conclusion that the single most reasonable inference to be
drawn from the record evidence is that Dr. Lynam deliberately withheld the 2001 Dodge Ram
Mirror from the Patent Office during prosecution of the Asserted Patents with knowledge of its
materiality and with specific intent to deceive the Patent Office into issuing the Asserted Patents
(ECF No. 761 at PageID.31065, ¶ 308). According to SMR, the jury’s verdict that the Asserted
Claims are invalidated by the 2001 Dodge Ram Mirror establishes that the 2001 Dodge Ram
Mirror is “but for” material prior art to the Asserted Patent (id. at PageID.31065, ¶ 306).
According to Magna, the 2001 Dodge Ram Mirror does not disclose every limitation
(including the “field of view” and “angling” limitations) in the Asserted Claims and therefore does
not anticipate those claims and is not material prior art, such that the Asserted Patents would not
have issued “but for” its non-disclosure to the PTO during prosecution of the Asserted Patents
(ECF No. 756 at PageID.30016–30017, ¶¶ 28–34). Alternatively, Magna proposes that even if the
2001 Dodge Ram Mirror was material prior art to the Asserted Patents, Dr. Lynam’s testimony
evidences a plausible, good-faith explanation for its non-disclosure, to wit: Dr. Lynam testified
that the 2001 Dodge Ram Mirror did not come to his mind during the prosecution of the Asserted
Patents because it is a trailer towing mirror that is different from the field of technology of the
Asserted Patents (id. at PageID.30019, ¶¶ 35 & 36).
The jury in this case found that SMR proved, by clear and convincing evidence, that the
Asserted Claims of the Asserted Patents were invalid because they were “obvious” (Jury Verdict,
ECF No. 739 at PageID.29167). “[I]f a claim is properly invalidated in district court based on” an
26
undisclosed reference, “then that reference is necessarily material because a finding of invalidity
in a district court requires clear and convincing evidence, a higher evidentiary burden than that
used in prosecution at the [Patent Office].” Therasense, 439 F.3d at 1292; see also Aventis Pharma
S.A. v. Hospira, Inc., 675 F.3d 1324, 1334 (Fed. Cir. 2012) (affirming inequitable conduct finding
based on inventor’s failure to disclose two prior art references that were “necessarily material to
patentability” because they were found to have invalidated Asserted Claims as obvious).
However, even assuming arguendo that the materiality requirement is established,
“[k]nowledge of the reference and knowledge of materiality alone are insufficient after Therasense
to show an intent to deceive.” 1st Media, LLC v. Elec. Arts, Inc., 694 F.3d 1367, 1374–75 (Fed.
Cir. 2012). “[C]lear and convincing evidence must show that the applicant made a deliberate
decision to withhold a known material reference.” Id. (emphasis in original) (citation omitted).
“While deceptive intent can be inferred from indirect and circumstantial evidence, that ‘inference
must not only be based on sufficient evidence and be reasonable in light of that evidence, but it
must also be the single most reasonable inference able to be drawn from the evidence to meet the
clear and convincing standard.’” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1334
(Fed. Cir. 2011) (quoting Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed.
Cir. 2008)). “Intent to deceive cannot be inferred simply from the decision to withhold the
reference where the reasons given for the withholding are plausible.” Dayco Prods., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1367 (Fed. Cir. 2003).
The Court concludes that the evidence of intent in this record is mostly speculative and
does not rise to the level of meeting the “threshold level of intent to deceive by clear and
convincing evidence.” Star Sci., 537 F.3d at 1368 (citing Nordberg, Inc. v. Telsmith, Inc., 82 F.3d
394, 398 (Fed. Cir. 1996)). Hence, Magna need not offer any good faith explanation for failing to
27
identify the 2001 Dodge Ram Mirror to the Patent Office during prosecution of the Asserted
Patents. See id. (“The patentee need not offer any good faith explanation unless the accused
infringer first carried his burden to prove a threshold level of intent to deceive by clear and
convincing evidence.”). Nonetheless, the record contains Dr. Lynam’s testimony that he did not
identify the 2001 Dodge Ram Mirror during the prosecution of the Asserted Patents because it is
a trailer towing mirror. That explanation is not implausible on its face. Indeed, as Magna points
out (ECF No. 756 at PageID.30019–30020, ¶ 37), the reasonableness of this view is reinforced by
SMR’s own conduct, to wit: when prosecuting the Sinelli ƍ469 patent with an independent claim
identical to an unasserted claim in one of the Asserted Patents, SMR’s own engineers did not cite
the 2001 Dodge Ram Mirror, despite being aware of it (and having a sample of the mirror). Paul
Henion testified that his view at the time was that the Dodge Ram Mirror was simply different
from the blind-zone mirror design they were claiming in their patent, in part because the Dodge
Ram Mirror is a trailer-towing mirror (Jury Trial Tr., ECF No. 699 at PageID.27170). In short,
the Court concludes that deceptive intent is not the single most reasonable inference to be drawn
from the evidence.
Accordingly, for the foregoing reasons, the Court rules against SMR on its inequitable
conduct defense. Pursuant to Federal Rules of Civil Procedure 52(a)(1) and 58, a Judgment
consistent with this Opinion will issue.
/s/ Jane M. Beckering
JANE M. BECKERING
United States District Judge
Dated: February 9, 2023
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