Michigan Judge Rejects Inequitable Conduct Defense from SMR Automotive Systems

A Michigan District Court has ruled that SMR Automotive Systems failed to show that Magna Mirrors of America engaged in inequitable conduct during recent proceedings. The ruling follows a favorable jury verdict for SMR with respect to patent applications related to a driver’s side mirror designed to reduce blind spots.

Magna brought the original suit against SMR, alleging that the latter’s blind spot mirror assemblies “infringed claims” on Magna’s patents. However, in December 2022, a jury found that wasn’t the case. The ruling in favor of SMR left its defense of inequitable conduct to be decided by the court.

According to the court’s statement of facts, SMR argues that Magna senior vice president Niall Lynam submitted false accusations to the U.S. Patent and Trademark Office (PTO) during the prosecution of the patents. SMR says those alleged false accusations were made “with the intent to deceive the PTO” and to circumvent objections from an examiner’s review of the patent applications.

At the heart of the issue are Lynam’s declarations to the examiner that he invented the products for which patents were submitted prior to June 13, 2002. SMR argued that Lynam did not invent a “thin glass element” recited in those claims until after that date. Lynam and Magan, on the other hand, say that the declarations omit reference to the thin-glass feature.

“Because Dr. Lynam’s … 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,’” the judge wrote in the Court’s analysis.

SMR also says Lynam failed to disclose prior art for a 2001 Dodge Ram mirror it believes is relevant to the applications and underlying case. Since the jury invalidated the asserted claims within the patent applications in December 2022 using the mirror as justification, SMR argues that it constitutes “material prior art.”

Magna disagrees, saying that the Dodge mirror does not disclose all of the limitations included in its asserted claims. In the event the mirror is considered prior art, Magna argues that it provides a good explanation for its lack of disclosure. According to Magna, Lynam testified that the 2001 mirror did not enter his mind during the proceeding because it is a trailer towing mirror that is “different from the field of technology” of the asserted patents at issue.

The Court concluded that the evidence of intent was mostly speculative and did meet the ‘threshold level of intent to deceive by clear and convincing evidence.”

The Court also says Lynam’s claim that he did not think of the Dodge mirror during the proceedings due to its different technological nature is “not implausible on its face.” It then ruled against SMR on its inequitable conduct defense.

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