UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`Koito Manufacturing Co., Ltd.
`Petitioner
`
`v.
`
`Adaptive Headlamp Technologies, Inc.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034
`
`PATENT OWNER ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`Koito Manufacturing Co., Ltd.
`Petitioner
`
`v.
`
`Adaptive Headlamp Technologies, Inc.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034
`
`PATENT OWNER ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... iv
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND OF THE INVENTION ....................................................... 2
`
`III. CHALLENGED INDEPENDENT CLAIMS 1 AND 3 .................................. 3
`
`IV. SCOPE AND CONTENT OF THE PRIOR ART REFERENCES ................ 5
`
`a. Kato ............................................................................................................ 7
`
`b. Takahashi .................................................................................................... 9
`
`c. Uguchi ...................................................................................................... 11
`
`d. Other References Cited By Petitioner ...................................................... 11
`
`V.
`
`THE BOARD SHOULD DECLINE TO INSTITUTE UNDER 35 U.S.C. §
`325(d) ............................................................................................................. 12
`
`VI. CLAIM CONSTRUCTION .......................................................................... 13
`
`VII. EACH OF PETITIONER’S OBVIOUSNESS COMBINATIONS ARE
`IMPROPER AND SHOULD BE REJECTED ............................................. 14
`
`a.
`
`b.
`
`
`
`
`
`
`c.
`
`Petitioner’s Burden to Show Obviousness .......................................... 14
`
`Petitioner Has Not Shown That The Combination of Kato in view of
`Takahashi Renders Independent Claim 7 as Obvious ......................... 17
`
`i.
`
`Kato and Takahashi Fail to Teach or Suggest All of the
`Limitations of Claim 7 .............................................................. 17
`
`ii.
`
`There is No Motivation to Combine Kato with Takahashi ...... 20
`
`Petitioner Has Not Shown That The Combination of Kato in view of
`Uguchi Renders Independent Claim 3 as Obvious ............................. 22
`ii
`
`
`
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`
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`
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`VIII. CONCLUSION ............................................................................................ ..24
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`VIII. CONCLUSION .............................................................................................. 24
`
`SIGNATURE BLOCK ............................................................................................ 25
`
`SIGNATURE BLOCK .......................................................................................... ..25
`
`CERTIFICATE OF SERVICE ................................................................................ 25
`
`CERTIFICATE OF SERVICE .............................................................................. ..25
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`iii
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`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Atofina v. Great Lakes Chem. Corp.,
`441 F.3d 991 (Fed. Cir. 2006) ...................................................................... 23
`
`
`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
`555 F.3d 984 (Fed. Cir. 2009) ...................................................................... 15
`
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .................................................................... 17
`
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) ................................................................... 15
`
`
`Dystar Textilfarben GmbH v. C.H. Patrick Co.,
`464 F.3d 1356 (Fed. Cir. 2006) .................................................................... 20
`
`
`Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) .................................................................... 17
`
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ......................................................................................... 15
`
`
`Hewlett-Packard Co. v. MCM Portfolio, LLC,
`IPR2013-00217, Paper 10 (Institution Decision) (Sept. 10, 2013) .............. 21
`
`
`In re Dembiczak,
`175 F.3d 994 (Fed. Cir. 1999) ....................................................................... 22
`
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .............................................................. 15, 22
`
`
`In re Royka
`490 F.2d 981 (CCPA 1974) ........................................................................... 17
`
`
`
`iv
`
`
`
`
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................... 15, 16
`
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 15
`Oakley, Inc. v. Sunglass Hut Int’l,
`316 F.3d 1331 (Fed. Cir. 2003) .................................................................... 21
`
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00312, Paper 14 (PTAB, July 8, 2014) ......................................... 13
`
`
`
`STATUTES and OTHER
`
`35 U.S.C. § 102 .................................................................................................. 17, 22
`
`35 U.S.C §103 .............................................................................................. 16, 17, 23
`
`35 U.S.C. § 314 .................................................................................................... 1, 24
`
`35 U.S.C. § 325 .................................................................................................. 12, 13
`
`37 C.F.R. § 42.104 ................................................................................................... 12
`
`37 C.F.R. § 42.65 ..................................................................................................... 21
`
`MPEP § 2131 ..................................................................................................... 17, 22
`
`MPEP § 2143 ..................................................................................................... 16, 17
`
`
`
`
`v
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Koito Manufacturing Co., Ltd. (“Koito” or “Petitioner”) filed a
`
`petition for inter partes review (the “Petition”) of U.S. Patent No. 7,241,034 (“the
`
`‘034 Patent”) against Patent Owner Advanced Microscopy, Inc. (“Patent Owner” or
`
`“AMI”). The Petition should be denied because it fails to meet the threshold
`
`requirement of showing that there is a “reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the petition.” 35
`
`U.S.C. § 314(a).
`
`The Petition includes ten grounds for invalidity all based on obviousness, each
`
`combining Japanese Patent Application Publication H10-324191 (“Kato”) as the
`
`primary reference with one or two secondary prior art references. As Petitioner
`
`effectively admits, Kato cannot invalidate the claims of the ‘034 Patent without
`
`being combined with additional prior art references. But as set forth in detail herein,
`
`Petitioner has not shown that any combination of Kato with these other references
`
`teaches or suggests each of the limitations of the independent claims of the ‘034
`
`Patent or that a Person Having Ordinary Skill in the Art (“PHOSITA”) at the time
`
`of the invention of the ‘034 Patent would have combined Kato with these other
`
`references. For at least these reasons, the Petitioner cannot prevail in its quest to
`
`
`
`1
`
`
`
`
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`invalidate the ‘034 Patent before this tribunal, and the Petition should therefore be
`
`denied.1
`
`II. BACKGROUND OF THE INVENTION
`
`The two named inventors of the ‘034 Patent worked as engineers at Dana
`
`Corporation at the time of the invention. Dana Corporation is an American
`
`automotive manufacturer and supplier of a wide range of technologies for original-
`
`equipment and aftermarket products. The ‘034 Patent claims priority to three
`
`provisional applications, Appl. No. 60/335,409 filed on October 31, 2001,
`
`60/356,703 filed on February 13, 2002, and 60/369,447 filed on April 2, 2002, but
`
`was conceived and actually reduced to practice prior to that time. Ex. 1001, Title
`
`Page; Ex. 100. The ‘034 Patent was issued on July 10, 2007. Id. The ‘034 Patent
`
`was later assigned to Adaptive Headlamp Technologies, Inc. (“Patent Owner”), a
`
`company unrelated to Dana Corporation but which was created to protect the patent
`
`rights of the ‘034 Patent.
`
`
`1 Patent Owner’s present response is limited to the arguments set forth herein. Patent
`
`Owner does not waive the right to make additional arguments if the Petition is
`
`granted and the Inter Partes Review of the ‘034 Patent is instituted, and Patent
`
`Owner hereby expressly reserves the right to do so.
`
`
`
`2
`
`
`
`
`
`The ‘034 Patent is entitled “Automatic Directional Control System for
`
`Vehicle Headlights.” The direction control system of the ‘034 Patent is operative to
`
`adjust the headlight in at least two directions – i.e., horizontal (left/right) and vertical
`
`(up/down). The system utilizes at least two sensors that sense the operating
`
`conditions of the vehicle, including at least steering angle and pitch, but which also
`
`may include road speed, suspension height, rate of change of road speed, rate of
`
`change of pitch, and rate of change of suspension height of the vehicle. A controller
`
`receives the signals from the at least two sensors and sends an output signal to at
`
`least one of two actuators to adjust the headlight horizontally or vertically only when
`
`at least one of the signals is above a predetermined minimum value. This prevents
`
`the actuators from being operated continuously or unduly frequently, and minimizes
`
`or eliminates hunting of the actuators for relatively small magnitudes of movement,
`
`such as relatively small bumps in the road.
`
`III. CHALLENGED INDEPENDENT CLAIMS 1 AND 3
`
`Petitioner challenges the validity of each of the claims of the claims ‘034 patent.2
`
`Independent claims 3 and 7 are presented below:
`
`
`2 Patent Owner is not asserting all the claims of the ‘034 Patent against Petitioner in
`
`the underlying litigations against any of the Defendants. The asserted claims at issue
`
`
`
`3
`
`
`
`
`
`3. An automatic directional control system for a vehicle headlight,
`comprising:
`two or more sensors that are each adapted to generate a signal that
`is representative of at least one of a plurality of sensed conditions of a
`vehicle such that two or more sensor signals are generated, said sensed
`conditions including at least a steering angle and a pitch of the vehicle;
`a controller that is responsive to said two or more sensor signals
`for generating at least one output signal only when at least one of said two
`or more sensor signals changes by more than a predetermined minimum
`threshold amount to prevent at least one first one of two or more actuators
`from being operated continuously or unduly frequently in response to
`relatively small variations in at least one of the sensed conditions; and
`said two or more actuators each being adapted to be connected to
`the headlight to effect movement thereof in accordance with said at least
`one output signal;
`wherein at least one of said two or more sensors generates at least
`one of said two or more sensor signals that is representative of a rate of
`change of the steering angle of the vehicle.
`
`7. An automatic directional control system for a vehicle headlight,
`comprising:
`two or more sensors that are each adapted to generate a signal that
`is representative of at least one of a plurality of sensed conditions of a
`
`
`in the litigation against Nissan North America, Inc., a customer supplied by Koito,
`
`are claims 3, 5, 7, 14-16, 31-32, and 36.
`
`
`
`4
`
`
`
`
`
`vehicle such that two or more sensor signals are generated, said sensed
`conditions including at least a steering angle and a pitch of the vehicle;
`a controller that is responsive to said two or more sensor signals
`for generating at least one output signal only when at least one of said two
`or more sensor signals changes by more than a predetermined minimum
`threshold amount to prevent at least one of two or more actuators from
`being operated continuously or unduly frequently in response to relatively
`small variations in at least one of the sensed conditions; and
`said two or more actuators each being adapted to be connected to
`the vehicle headlight to effect movement thereof in accordance with said
`at least one output signal;
`wherein said two or more sensors include a first sensor and a
`second sensor; and
`wherein said first sensor is adapted to generate a signal that is
`representative of a condition including the steering angle of the vehicle and
`said second sensor is adapted to generate a signal that is representative of
`a condition including the pitch of the vehicle.
`
`Ex. 1001, Claims 3, 7 (emphasis added).
`
`IV. SCOPE AND CONTENT OF THE PRIOR ART REFERENCES
`
`Each of Petitioner’s grounds of challenge rely on Kato for the large majority
`
`of the claim limitations, and then utilizing either Takahashi or Uguchi to show
`
`disclosure of the limitations of the ‘034 Patent not purportedly present in Kato.
`
`Petitioner’s specific challenges include:
`
`
`
`5
`
`
`
`Ground
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`9
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`
`
`
`
`References
`Kato in view of Takahashi
`
`
`Kato in view of Takahashi and
`Mori
`
`Kato in view of Takahashi and
`Uguchi
`Kato in view of Takahashi and
`Ichikawa
`Kato in view of Takahashi and
`Panter
`Kato in view of Takahashi and
`Suzuki
`Kato in view of Takahashi and
`Okuchi
`Kato in view of Uguchi
`Kato in view of Uguchi and
`Ishikawa
`Kato in view of Uguchi and
`Takahashi
`
`Claims
`7-9, 13-18, 20-21,
`23-24, 28-29, 31-
`32
`10
`
`Basis
`Obviousness
`
`Obviousness
`
`11, 19
`
`12
`
`22
`
`25, 26
`
`Obviousness
`
`Obviousness
`
`Obviousness
`
`Obviousness
`
`30, 33, 34
`
`Obviousness
`
`3, 6
`4
`
`10
`
`5
`
`Obviousness
`Obviousness
`
`Obviousness
`
`Throughout this Preliminary Response, for ease of understanding, Patent
`
`Owner will refer to these prior art references by the name indicated above, rather
`
`
`
`6
`
`
`
`
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`than by exhibit number. These prior art references are described below at Section
`
`IV, in conjunction with the arguments presented in this Preliminary Response. 3
`
`a. Kato
`
`Kato is a Japanese Patent application entitled “Headlight Optical Axis Control
`
`Device for a Motorcycle.”4 Ex. 1007 at 1 (emphasis added). As recognized within
`
`Kato, “the pitch angle of a motorcycle more likely changes due to acceleration or
`
`deceleration of speed and unevenness of the road surface compared to a four-wheel
`
`vehicle.” Ex. 1007 at 4 ([0004]). Therefore, the beam irradiation range of the
`
`headlight sways without being fixed when the headlight is vertically moved
`
`according to changes in the pitch angle while driving a motorcycle.” Id.
`
`
`3 Patent Owner reserves its right to present further argument and evidence
`
`
`
`related to these prior art references and the content of the Petition and supporting
`
`Exhibits later in this proceeding, consistent with the Board’s Rules and practice. No
`
`waiver is intended by any argument withheld by Patent Owner at this stage of the
`
`proceeding.
`
`
`
`4 When addressing Kato herein, Patent owner is referring to the certified
`
`translation provided by the Petitioner in Ex. 1007. Patent Owner reserves the right
`
`the challenge the accuracy of this translation later in this proceeding.
`
`
`
`7
`
`
`
`
`
`Moreover, “[w]ith a motorcycle, when the vehicle body is tiled in the direction
`
`of the bank angle, the beam irradiation range of the headlight flattens.” Ex. 1007 at
`
`4 ([0005]). “[B]ecause the device that swings the headlight to the right and left
`
`according to the steering and banking angles swings the headlight in a direction of
`
`the steering angle, i.e., the headlight is just simply swung to the right when turning
`
`right and swung to the left when turning left, there is no solution effect on flattening
`
`of the irradiation range of the headlight.” Id.
`
`Kato states it solves the problem of “stably ensur[ing] a beam irradiation range
`
`of a headlight when pitch, bank, steering angles or the like change while driving a
`
`motor cycle” by using sensors to “find a pitch [, bank, or steering] angle direction
`
`correction amount” to “correct[] the angle of the optical axis.” Ex. 1007 at 4-5
`
`([0007]-[0013]). In other words, Kato aims to determine the excess amount of pitch,
`
`bank, or steering angle that has occurred while driving the motorcycle and correct
`
`the angle of the optical axis by turning the headlight back toward the center position.
`
`This overturn correction type movement abates the effects of larger than optimal
`
`movements of the headlamp to prevent flattening of the elliptical irradiation cone of
`
`the headlight. Ex. 1007 at 5 ([0008], [0010]).
`
`Petitioner recognizes and effectively admits that Kato does not teach the
`
`limitation “predetermined minimum threshold amount limitation” of independent
`
`claims 3 and 7 of the ‘034 patent, and turns to Takahashi and Uguchi to attempt read
`
`
`
`8
`
`
`
`
`
`on to this limitation. However, Petitioner fails to recognize the full extent of the
`
`discrepancies between Kato and the ‘034 Patent. In particular, the aim of Kato is
`
`quite the opposite of that of the ‘034 Patent, which seeks to cause the headlights to
`
`swivel in the direction of the turn and pitch of a four-wheel vehicle to provide
`
`illumination of the road surface in the path of movement of the vehicle rather than
`
`providing for a reverse angle correction movement. The solutions are also quite
`
`contrasting, as the ‘034 Patent avoids minimal variations of movement of the
`
`headlight by preventing the actuators from moving the headlamp when one or more
`
`of the sensed conditions are below a predetermined minimum threshold amount,
`
`whereas Kato causes the headlight to turn back by a correction amount when a
`
`maximum optimal angle is exceeded.
`
`b. Takahashi
`
`Takahashi discloses an automatic leveling device which rotates a headlight
`
`vertically to adjust for inclination of the vehicle. Ex. 1008 at 9. The adjustment is
`
`made so that the illumination direction of the headlight “is always in a predetermined
`
`direction,” in other words, the headlight is adjusted so that it is always in a vertically
`
`centered position. Ex. 1008 at 9, 12. Takahashi only discloses a single sensor for
`
`change in the road gradient and a single actuator for adjusting the headlamp in a
`
`vertically in a first direction, but does not mention moving the headlight in a second
`
`direction as specified in the ‘034 Patent – i.e., horizontal rotation of a headlight. Nor
`
`
`
`9
`
`
`
`
`
`does Takahashi mention moving the headlamp to illuminate the road surface in the
`
`path of the vehicle as a result of changes in the steering angle of the vehicle as
`
`specified in the ‘034 Patent, but rather moves the headlights back to a centered
`
`position.
`
`Takahashi discloses that the control means adjusts the inclination only when
`
`one of two conditions are met: 1) the vehicle is stationary and the vehicle is at an
`
`incline, or 2) the vehicle is moving, the amount of variations in the gradient exceeds
`
`a reference value and that excessive state continues for a time or distance exceeding
`
`a reference value. Ex. 1008 at 17. The first condition involving stationary
`
`adjustments of the headlight is not relevant to the claims of the ‘034 Patent. The
`
`second condition does not entail adjusting the headlight toward the direction of the
`
`incline or steering angle due to a change in the magnitude of a signal representative
`
`of a sensed pitch or steering angle of the vehicle as required by the claims of the
`
`‘034 Patent. Rather, the second condition entails that a certain number of variations
`
`in the road gradient must occur over a period of time or distance before the headlight
`
`can be adjusted back to the predetermined centered position. Ex. 1008 at 15, lns.
`
`16-34. Thus, Takahashi discloses a markedly different approach than that of the ‘034
`
`Patent, relying on the number and duration of changes of the signal instead of the
`
`magnitude of the signal in determining when to rotate the headlight vertically
`
`
`
`10
`
`
`
`
`
`c. Uguchi
`
`Uguchi is directed to a device for changing the irradiation of a fog lamp in
`
`conjunction with a steering operation.5 Ex. 1012 at 1. Uguchi discloses that the
`
`motor of the fog lamp is operated to adjust the illumination of the fog lamp
`
`horizontally as a result of a change in speed (velocity) of the steering angle. Ex.
`
`1012 at 3-4. However, Uguchi only discloses a single sensor for change of steering
`
`angle velocity and a single actuator for adjusting the fog lamp horizontally as a result
`
`in the change of steering angle velocity, and does not mention sensing pitch or
`
`moving the headlight vertically in a second direction as specified in the ‘034 Patent.
`
`d. Other References Cited by Petitioner
`
`The Petitioner’s remaining grounds of challenge for the dependent claims
`
`involve obvious combinations based on additional references. As the dependent
`
`claims are patentable based on the independent claims from which they depend,
`
`
`
`5 When addressing Uguchi herein, Patent owner is referring to the certified
`
`translation provided by the Petitioner in Ex. 1012. Patent Owner reserves the right
`
`the challenge the accuracy of this translation later in this proceeding.
`
`
`
`11
`
`
`
`
`
`Patent Owner does not address the other cited references at this time. 6
`
`The Petition also identifies additional references in it its list of Exhibits,
`
`including Exs. 1021-1025 and 1027-1028, but does not offer these references in any
`
`ground for challenging the claims of the ‘034 Patent. Under 37 C.F.R. §
`
`42.104(b)(4), the Petition must set forth “[h]ow the construed claim is unpatentable
`
`under the statutory grounds identified in paragraph (b)(2) of this section. The
`
`petition must specify where each element of the claim is found in the prior art patents
`
`or printed publications relied upon….” These references are not discussed in the
`
`Petition beyond attempting to provide background, and not in any specific
`
`obviousness combination or claim challenge. As such, 37 C.F.R. § 42.104(b)(5)
`
`provides that the Board may exclude or give no weight to these references since the
`
`Petition “has failed to state [the] relevance or to identify specific portions of the
`
`evidence that support the challenge[s].”
`
`V. THE BOARD SHOULD DECLINE TO INSTITUTE UNDER 35
`U.S.C. § 325(d)
`
`The Board has authority to reject this Petition if the Office has previously
`
`
`6 Patent Owner reserves its right to present further argument and evidence
`
`
`
`related to these additional prior art references and the content of the Petition later in
`
`this proceeding.
`
`
`
`12
`
`
`
`
`
`considered the same or substantially the same prior art or arguments. 35 U.S.C.
`
`§ 325(d); see Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-
`
`00312, Paper 14 at 12-13 (PTAB, July 8, 2014) (rejecting the petition because the
`
`same prior art and substantially the same arguments were presented to the Office
`
`during prosecution).
`
`Takahashi was thoroughly considered during prosecution of the ‘134 Patent.
`
`Specifically, Takahashi was asserted by the petitioner in the previous inter partes
`
`reexamination and was discussed at length during the reexamination. See Ex. 1005
`
`at 29-31, 36-38, 45-46, 54-55, 62-64, 68-70, 75-78, 83-86, 90-92, 96-9, 1025-1034,
`
`1051-1064, 1082-1097, 1102-1103, 1107-1111. Thus, Takahashi was properly and
`
`fully considered and the reexamined claims of the ‘134 Patent were rightfully
`
`allowed over Takahashi and various obvious combinations involving Takahashi.
`
`Therefore, Petitioner’s obviousness challenges involving Takahashi are cumulative
`
`and the Board should not disturb the Examiner’s correct conclusion.
`
`While Uguchi was not specifically previously considered, it is also cumulative
`
`of the arguments raised by the petitioner in the previous inter partes reexamination
`
`as it does not raise any new matter that has been yet to be considered by the USPTO.
`
`VI. CLAIM CONSTRUCTION
`
`Patent Owner, like Petitioner, notes that the standard for claim construction
`
`applied in this proceeding is that a claim is given its “broadest reasonable
`
`
`
`13
`
`
`
`
`
`construction in light of the speciation of the Patent in which it appear,” which is
`
`different from the standards applied in the related litigation. At the present time,
`
`Patent Owner’s submits that the ordinary and customary meaning applies to all the
`
`terms of challenged claim, but reserves the right to present proposed claim
`
`constructions and supporting evidence to the Board in its Response, should one be
`
`necessary.
`
`VII. EACH OF PETITIONER’S OBVIOUSNESS COMBINATIONS
`ARE IMPROPER AND SHOULD BE REJECTED
`
`Petitioner has failed to show that cited obvious combinations teach or suggest
`
`each and every limitation of independent claims 3 and 7. An further, due to the
`
`specific teachings of Kato and the secondary references Takahashi and Uguchi,
`
`Petitioner has not shown that a PHOSITA aiming to solve the problems disclosed in
`
`the ‘034 Patent would have combined Kato with either Takahashi (Petitioner’s
`
`Ground No. 1) or Uguchi (Petitioner’s Ground No. 8). As such, all of Petitioner’s
`
`challenges and the entirety of the obviousness combinations set forth therein are
`
`improper, and the Petition should therefore be denied outright.
`
`a. Petitioner’s Burden to Show Obviousness
`
`To prove invalidity based on obviousness during an IPR, Petitioner must
`
`establish by a preponderance of the evidence that a skilled artisan in the field of
`
`microscopy would have both been motivated to combine the prior art of Kato with
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`14
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`
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`the prior art of Takahashi or Uguchi, and would have a reasonable expectation of
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`success in doing so. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
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`1360 (Fed. Cir. 2012). Obviousness is a question of law to be determined based on
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`underlying factual considerations. Ball Aerosol & Specialty Container, Inc. v. Ltd.
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`Brands, Inc., 555 F.3d 984, 991 (Fed. Cir. 2009).
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`Obviousness “cannot be based on the hindsight combination of components
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`selectively culled from the prior art to fit the parameters of the patented invention.”
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`Cheese Sys. v. Tetra Pak Cheese & Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir.
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`2013). Conscious of this warning, “a fact finder should be aware, of course, of the
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`distortion caused by hindsight bias and must be cautious of arguments reliant upon
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`ex post reasoning.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); Graham
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`v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into
`
`the prior art the teachings of the invention in issue” and instructing courts to “‘guard
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`against slipping into use of hindsight’”); see also In re Fritch, 972 F.2d 1260, 1266
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`(Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction
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`manual or ‘template’ to piece together the teachings of the prior art so that the
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`claimed invention is rendered obvious.”). If a challenger desires to invalidate a
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`patent, even if each element of a claimed invention in that patent can be found in the
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`prior art by piecing together various references, it is not sufficient to find the patented
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`invention obvious. Prior art can only be combined if there is, in fact, a reason for a
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`15
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`PHOSITA to have done so at the time of the invention, and specifically cannot be
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`pieced together in the face of explicit statements discouraging it.
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`An obviousness assertion must be supported by “some articulated reasoning
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`with some rational underpinning to support the legal conclusion of obviousness.”
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`KSR, Int’l Co., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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`2006)). Indeed, MPEP § 2143 states that “the key to supporting any rejection under
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`35 U.S.C §103 is the clear articulation of the reason(s) why the claimed invention
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`would have been obvious” and sets forth the seven “Exemplary Rationales” to
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`support a conclusion of obviousness. When relying on rationale G (“Some teaching,
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`suggestion, or motivation . . . to modify the prior art reference or to combine prior
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`art reference teachings . . .”), as the Petition does, the following are required in order
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`to support a conclusion of obviousness under that rationale:
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`(1) A finding that there was some teaching, suggestion, or
`motivation, either in the references themselves or in the
`knowledge generally available to one of ordinary skill in
`the art, to modify the reference or to combine reference
`teachings;
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`(2) A finding that there was reasonable expectation of
`success; and
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`(3) Whatever additional findings based on the Graham
`factual inquiries may be necessary, in view of the facts of
`the case under consideration, to explain a conclusion of
`obviousness.
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`16
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`
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`MPEP § 2143(G). Even though the “Teaching, Suggestion, Motivation” test was
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`rejected as the sole means for determining a motivation to combine, a Petitioner still
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`“must rely on a known motivation to combine existing prior art to achieve what the
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`invention was designed [to achieve]” in order to establish obviousness. Genetics
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`Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1318 (Fed. Cir.
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`2011). Petitioner cannot do so given the teachings of the art, which pit the systems
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`disclosed in each in contrast with one another.
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`b. Petitioner Has Not Shown That The Combination of Kato in view
`of Takahashi Renders Independent Claim 7 as Obvious
`
`
`i. Kato and Takahashi Fail to Teach or Suggest All of the
`Limitations of Claim 7
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`Petitioner does not challenge independent claim 7 as being anticipated by
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`Kato under 35 U.S.C. § 102, thus recognizing that Kato does not teach each and
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`every limitation of the claim, either expressly or inherently described. See M.P.E.P.
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`§ 2131. Rather, Petitioner turns to obviousness under 35 U.S.C. § 103 to try to make
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`up for the deficiencies of Kato by combining with the teachings of Takahashi. See
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`In re Royka, 490 F.2d 981, 985 (CCPA 1974) (to establish prima facie obviousness
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`of a claimed invention, all the claim features must be taught or suggested by the prior
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`art); CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
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`However, Petitioner’s obviousness challenge to claim 7 fails because Kato
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`and Takahashi each do not disclose or suggest at least the following limitation: “a
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`17
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`controller that is responsive to said two or more sensor signals for generating at least
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`one output signal only when at least one of said two or more sensor signals changes
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`by more than a predetermined minimum threshold amount to prevent at least one
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`of two or more actuators from being operated continuously or unduly frequently in
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`response to relatively small variations in at least one of the sensed conditions.” This
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`limitation is referred to herein as the “predetermined minimum threshold amount”
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`limitation.
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`Petitioner admits that Kato has no disclosure or suggestion that reads on the
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`“predetermined minimum
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`threshold amount”
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`limitation, which Petitioner
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`recognizes. Petition at 25. As discussed above, Kato expresses with particularity
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`that that problems attributed to the maintaining headlight illumination range due to
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`changes in pitch, steering or bank angles are more pronounced in motorcycles than
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`four wheel vehicles, which typically use a single headlight mounted on the center of
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`the motorcycle’s body and have a more focused illumination cone. The headlight
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`controller in Kato turns the headlights backward in a reverse direction by a correction
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`amount after a maximum optimal angle for the illumination of the headlight is
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`exceeded. The decision point of the controller in Kato is whether a maximum angle
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`has been exceeded, at wh
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