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`IPR2016-00079, Paper No. 23
`February 9, 2017
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`trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`KOITO MANUFACTURING CO., LTD.,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`____________
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`Case IPR2016-00079
`Patent 7,241,034 C1
`____________
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`Held: January 11, 2017
`____________
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`BEFORE: MICHAEL P. TIERNEY, Vice Chief Administrative
`Patent Judge, and RAMA G. ELLURU and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`January 11, 2017, commencing at 1:04 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2016-00079
`Patent 7,241,034 C1
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`MICHAEL AUTUORO, ESQUIRE
`SAMUEL BORODACH, ESQUIRE
`Fish & Richardson
`601 Lexington Avenue
`52nd Floor
`New York, New York 10022
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`BRETT M. PINKUS, ESQUIRE
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
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` 2
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`ON BEHALF OF PATENT OWNER:
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`Case IPR2016-00079
`Patent 7,241,034 C1
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`P R O C E E D I N G S
`- - - - -
`JUDGE TIERNEY: Welcome, everyone to the hearing
`in IPR2016-00079. We have the Petitioner and Patent Owner
`today. I just want to point out that Patent Owner had some
`difficulty with the plane or basically plane mechanical problems
`and it is my understanding and the Patent Owner will have to
`appear today via telephonic.
`So I want to confirm that Patent Owner -- we have
`counsel for Patent Owner on the line?
`MR. PINKUS: Yes, Your Honor, I'm here.
`JUDGE TIERNEY: And I believe it's Mr. Brett
`Pinkus?
`MR. PINKUS: That's correct.
`JUDGE TIERNEY: Thank you.
`MR. PINKUS: I apologize for the problems. I tried to
`get here last night or to D.C. last night and this morning. They
`had mechanical problems on both planes, so I just couldn't get
`there on time.
`JUDGE TIERNEY: Speaking on behalf of the Board,
`the panel, no apologies needed. We've all had problems with
`plane mechanical difficulties and arranging flights at this late
`hour. So what I'd like to say, though, is we will be going forward
`with the hearing with one hour each side.
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`Should either party have some difficulties with having
`the Patent Owner be telephonic, please bring it to our attention.
`We'll do everything we can to remedy any difficulties.
`And I do want to reach out to the Patent Owner's
`counsel and say we understand how these things arise. Should
`you need some help in some way, let us know. We'll try to be
`accommodating as we can.
`And, Petitioner, if you have any difficulty yourself with
`this arrangement, again, please let us know and we will try and
`work through this.
`MR. AUTUORO: Thank you, Your Honor.
`JUDGE TIERNEY: Any questions before we begin
`today? I'll start with Petitioner?
`MR. AUTUORO: No, Your Honor.
`JUDGE TIERNEY: And, Patent Owner, do you have
`any questions?
`MR. PINKUS: No, Your Honor.
`JUDGE TIERNEY: All right. So the way it's arranged
`is each side will have one hour. We'll begin with the Petitioner,
`followed by the Patent Owner. We'll have rebuttal by the
`Petitioner and we'll have a last moment, if the Patent Owner
`would like to make a summation at the end, a short summation,
`we'll allow for that in this case.
`So each side can -- Petitioner, that is, will begin and
`Petitioner will take the stand when they're prepared and ready and
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`let us know if you'd like to save some time for rebuttal, we would
`appreciate it.
`MR. AUTUORO: Thank you.
`Good afternoon, Your Honors. May it please the Court,
`I would like to reserve 10 minutes for rebuttal.
`JUDGE TIERNEY: And begin whenever you're ready.
`MR. AUTUORO: Okay. Thank you. I would like to
`begin now.
`My name is Michael Autuoro and I'm here from the law
`firm of Fish & Richardson, PC. With me is my colleague, Mr.
`Sam Borodach.
`And as the Board is aware, we are here this afternoon to
`discuss U.S. Patent Number 7,241,034, titled automatic
`directional control system for vehicle headlights.
`Most of the '034 patent's claimed components, signal
`sensors, controller actuators, the patent itself describes as
`conventional. The purported invention relates to a so-called
`threshold feature, which prevents undue movement of the
`actuators in the headlight in response to changes in signals that
`are relatively small, such as minor bumps in a road.
`Petitioner has relied on art that discloses using the
`threshold feature and for the very reasons as given in the '034
`patent for using that feature. Many of the Patent Owner's
`arguments by contrast rely on the assertion that a motorcycle is
`not a vehicle.
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`As explained in our Brief and the evidence of record,
`Patent Owner's arguments are without merit and each of the
`subject claims should be held invalid.
`And, Your Honors, today I've divided the slides here
`into two sets. And what I'd like to do is, first, talk about the
`status of where we are, what still remains as a dispute, what's no
`longer disputed. And then with respect to each of the four -- what
`we believe are four disputed or contested issues, go through
`those. And while I have that arranged sequentially, I'd be happy
`to jump around to answer any individual questions that Your
`Honors may have.
`So, first, there were 10 grounds of patentability raised.
`Patent Owner's Response concerned two of those grounds,
`Grounds 1 and 8, and Ground 1 as indicated in this table on slide
`2.
`
`I will try to do my best to identify the slide number that
`we're on for Mr. Pinkus' benefit as well as for the court reporter.
`On slide 2 we see Ground 1 that includes Independent
`Claim 7 as well as several of the dependent claims and the basis
`is obviousness on two references, a Kato reference in view of
`Takahashi and Ground 8, which concerns claims -- Independent
`Claim 3 and Dependent Claim 6. Again, it's an obviousness
`assertion based on the same primary reference in view of the
`Uguchi reference.
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`And so within those two grounds, Grounds 1 and 8,
`Patent Owner's arguments focus on Independent Claims 7 and 3.
`There are no separate arguments that have been raised with
`respect to any of the dependent claims. And, again, as I
`mentioned, no separate arguments concerning the other eight
`grounds that were -- that trial had been instituted on.
`So even within Grounds 1 and 8, it is apparent from the
`briefs, we believe this is the case, that there are certain issues that
`are not in dispute. And so with respect to Ground 1, and this is
`the purported Kato and Takahashi combination with respect to
`Claim 7, it's not disputed that Kato describes each of the
`limitations of Claim 7 with the exception of the so-called
`threshold limitation which we'll get into.
`I know there's a dispute as to whether Kato is
`analogous, but putting that aside, there is no other dispute as to
`whether each of the limitations are disclosed.
`JUDGE TIERNEY: Well, maybe just briefly, could
`you just give us a little bit of background? What is your
`interpretation of the word vehicle?
`MR. AUTUORO: Yeah. I mean, our interpretation of
`the word vehicle is that it should be incorporated in line with its
`broadest reasonable interpretation to include as the patent itself
`states virtually all land vehicles and certainly should not exclude
`a motorcycle.
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`JUDGE MOORE: And, counsel, where's the portion of
`the patent you were just referring to?
`MR. AUTUORO: Yes, Your Honor. I have several
`slides that include that and I'd like to just quickly go to those.
`One in particular on slide 8 is a reference at column 1, lines 20 to
`24, where the specification indicates that virtually all land
`vehicles, and many other types of vehicles such as boats and
`airplanes, for example, are provided with one or more headlights.
`And so not only does it say virtually all land vehicles, it indicates
`that these vehicles can have one headlight, which clearly would
`be the case for a motorcycle, or more than one headlight.
`Another example in the specification that, you know,
`supports that vehicles should include motorcycles far from
`supporting that they should be excluded is at column 2, line 66, to
`column 3, line 3, and the correspondent Figure 1 where the
`specification indicates that the invention relates to the headlight
`on any type of vehicle for the purpose of illuminating any area
`and so this is another example of the broad interpretation that
`should be afforded to headlights -- I mean, to vehicles.
`JUDGE ELLURU: Counsel, do you agree that there is
`some difference between a motorcycle and, for example, a car?
`MR. AUTUORO: I certainly agree that there are
`differences between a car and a --
`JUDGE ELLURU: But is there any testimony as to the
`specific differences from your side?
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`MR. AUTUORO: Well, in terms of the -- I mean, I
`think with respect to the applicable question here, which is
`whether it would be obvious to incorporate the Takahashi feature,
`this threshold feature into a motorcycle system, I think that the
`evidence of record supports that it would actually be even more
`advantageous, if anything, to include that sort of feature into a
`motorcycle, you know, as compared to a four-wheel vehicle.
`Because even, you know, as Patent Owner says, even
`accepting what they say is true, minor bumps in the road are
`exacerbated or the problems that are felt are exacerbated in
`motorcycles as compared to four-wheel vehicles, and so I think
`that that supports that, if anything, you would want to incorporate
`that type of feature in a motorcycle more so than even a
`four-wheel --
`JUDGE ELLURU: But isn't the question not only -- for
`example, if we are persuaded that the incorporation is proper, isn't
`it whether the motorcycle reads on the claims here?
`MR. AUTUORO: Excuse me?
`JUDGE ELLURU: Isn't the question as to whether the
`motorcycle reads on the claims or am I missing the issue?
`MR. AUTUORO: No, Your Honor, I -- thank you for
`the question. I don't think that there's any other -- there's no
`dispute other than whether or not the claim limitation vehicle
`includes motorcycles as to whether any other limitation is met by
`a motorcycle embodiment and I'm not familiar with any argument
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`that Patent Owner has raised that there is other reasons that the
`limitations are not met other than that the claim says vehicles and
`that doesn't include a motorcycle.
`JUDGE TIERNEY: Counsel, could you please just
`generally describe Dr. Wilhelm's testimony on this point and how
`it's consistent with the interpretation that motorcycles encompass
`the broadest reasonable construction of the claim term.
`MR. AUTUORO: I'm sorry, Your Honor?
`JUDGE TIERNEY: If you could summarize Dr.
`Wilhelm's testimony and why you believe it's consistent with
`your position that the broadest reasonable interpretation of the
`term vehicle encompasses motorcycles.
`MR. AUTUORO: Yes, Your Honor. I believe Dr.
`Wilhelm -- and these are all citations to not only our argument,
`but also Dr. Wilhelm's that there's -- that the terms of the patent
`should be afforded the plain and ordinary meaning and that all of
`these citations here, you know, which I believe are incorporated
`into Dr. Wilhelm's declaration as well, are supportive of the fact
`that vehicles should encompass motorcycles and should not rather
`exclude motorcycles from their scope.
`JUDGE MOORE: Counselor, on a related question, a
`couple of moments ago when you were discussing the rationale
`for combining Takahashi and Kato, I understood you to say that
`the rationale for including the threshold in a motorcycle
`controller, the type disclosed in Kato, would be even stronger
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`because motorcycles bounce around and the threshold would
`filter out those types of movements. Is that accurate?
`MR. AUTUORO: I believe, Your Honor, that what I'm
`relying on are the arguments that Patent Owner raised with
`respect to the functionality of a motorcycle as to how it differs
`from a vehicle, from a four-wheel vehicle.
`JUDGE MOORE: Yes.
`MR. AUTUORO: And I was attempting to point out,
`Your Honor, was that even accepting that as true, that would
`provide even more bases, the fact that there are, you know, more
`bumps in the road that a motorcycle hits, small bumps in the road,
`as to why you want to incorporate this threshold feature within a
`motorcycle as compared to a four-wheel vehicle.
`JUDGE MOORE: Okay. My apologies if I'm jumping
`ahead, but the question that immediately came to my mind is
`what about Uguchi? In that case we're talking about steering
`angle, and obviously a motorcycle operates differently than a
`vehicle, as Patent Owner has pointed out, the headlight swings
`back and forth when you turn the handle bars of the motorcycle.
`So rather than, you know, adjusting from side to side,
`you're adjusting up and down or making other types of
`adjustments in motorcycles. So would that argument that you just
`made carry over to the Uguchi/Kato combination?
`MR. AUTUORO: Yes, I believe so, Your Honor, and
`for at least the reason that, you know, as mentioned in the '034
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`patent and in some of the other references, I believe Takahashi,
`that what one of the issues here is that if you're constantly hunting
`back and forth with a headlight and moving the actuator and
`having it moving back and forth, you're actually running that
`actuator system unduly, you know, for a prolonged period of time
`in an undue amount.
`And so similarly in a Uguchi environment where there
`were minor variations in say, a steering angle, it would be just as
`advantageous to not constantly move an actuator system back and
`forth, back and forth, back and forth for, you know, minor
`changes. You would want to, you know, as described in Dr.
`Wilhelm's declaration incorporate a system that waited till the
`variation was large enough that you would actually want to go
`ahead and make a change with the --
`JUDGE MOORE: But, counsel, doesn't Uguchi -- it
`doesn't look at the magnitude of a variation; isn't that right? It
`looks at velocity, a change in the steering angle?
`MR. AUTUORO: Uguchi discloses that I believe one
`of the sensed conditions is velocity and it also talks about the
`magnitude of the steering angle change, but it also discloses -- it
`discloses sensing both features.
`JUDGE MOORE: Right, understood. But doesn't
`Uguchi sense velocity in order to reduce the time delay? In other
`words, isn't it -- is the threshold in Uguchi really filtering out
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`movement or is it just expediting movement in certain
`circumstances?
`MR. AUTUORO: I think --
`JUDGE MOORE: Let me rephrase that. Isn't the
`threshold -- is the threshold in Uguchi merely limiting the number
`of situations in which the actuators operate, or is the threshold in
`Uguchi causing the actuators to be operated more quickly in
`certain circumstances?
`MR. AUTUORO: Well, I think that the threshold in
`Uguchi serves to eliminate a dead zone, wherein when you're
`changing the angle of the steering wheel and it's within a certain
`zone, it's not changing the headlamp. So I think it does serve to --
`the teaching of Uguchi does serve to limit the movement of the
`headlamp, you know, in circumstances within that zone.
`JUDGE MOORE: Okay. And you're referring to
`Figure 6. Is that correct?
`MR. AUTUORO: Yes, Your Honor.
`JUDGE MOORE: I'm sorry, I couldn't hear you.
`MR. AUTUORO: Yes. Yes, Your Honor.
`JUDGE MOORE: I'm sorry, I can't hear you when
`you're away from the lectern. Thank you. You may continue.
`MR. AUTUORO: So, Your Honor, this -- you know,
`stepping back from it in terms of why the Kato reference is
`analogous to the '034 patent, you know, as set forth in our briefs,
`there are three independent reasons here and the first is that the
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`claims broadly recite a vehicle, which covers the motorcycles
`described by the Kato reference.
`Second independently is that Kato is from the same
`field of endeavor and third is that Kato is reasonably pertinent to
`the problem addressed by the '034 patent, and I won't go through
`this again, but this perhaps will focus us back on the claim here.
`When you look at actually Claim 7, it just recites an
`automatic directional control system for a vehicle headlight
`comprising sensors and a controller and actuators. And within
`the sensor limitation, it, again, says sense condition of a vehicle.
`There's no limitation in here that suggests that it is somehow
`limited to four-wheel vehicles, excludes motorcycles and the like.
`In fact, the specification does not use the phrase
`four-wheel vehicle ever. It's more inclusive. We've gone through
`this on slide 8 where it discusses virtually all land vehicles and
`slide 9, this passage that talks about on any type of vehicle for the
`purpose of illuminating any area.
`On slide 10, again, in another instance in the
`background, the specification says that the invention relates in
`general to headlights that are provided on vehicles for
`illuminating dark road surfaces or other areas in the path of
`movement. This is certainly inclusive of vehicles and within that
`motorcycles.
`Not only is the specification broad, but during
`prosecution, the applicants submitted abundant art that was
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`directed at motorcycles for purposes of allowing the Examiner to
`evaluate the patentability of the claim. And on slide 11 here, I
`just give four such examples of that. This is in our Brief.
`So in addition to the claim being broad enough to
`encompass a motorcycle system, you know, the patent and Kato
`also addressed the same field of endeavor and that's vehicle
`headlight direction control.
`And so here we've provided a side-by-side of the
`passage in the '034 that talks about that this invention relates to an
`automatic directional control system for such vehicle headlights,
`and that's at column 1, lines 15 to 19. And Kato similarly says
`the present invention relates to a headlight optical axis control
`device, and that's at Kato, paragraph 1.
`Dr. Wilhelm agrees based on that disclosure that says
`essentially the same thing that the two references are plainly from
`the same field of endeavor and that field of endeavor is vehicle
`headlight direction control.
`And then in addition from being in the same field of
`endeavor, there's another prong under which the Kato reference
`independently is analogous to the '034 patent and that is, you
`know, because it addressed the same problem, which is as
`described in both of these patents addressing -- I mean,
`accounting for changes in vehicle operating conditions.
`And so, you know, in the '034 patent we have
`highlighted here to account for changes in vehicle operating
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`conditions at column 1, lines 35 and 43, and the same thing in the
`Kato reference, even when the pitch angle, bank angle, steering
`angle, and the like are changed, and that's at the abstract of Kato.
`JUDGE MOORE: But, counselor, a question, moving
`back to the '034 patent, the '034 patent doesn't -- the problem it's
`trying to solve isn't really accounting for deficiencies in fixed
`headlight systems, is it? I mean, doesn't the '034 patent concede
`that automatic directional control systems are prior art?
`MR. AUTUORO: Well, I believe it does say that some
`automatic control systems are in the prior art, Your Honor, but it
`actually talks about -- well, I believe it does say, Your Honor, that
`in the '034 patent that the prior art included fixed systems and it
`says generally that the '034 patent is addressed to accounting for
`changes in operating conditions of the vehicle. It does go that
`broad.
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`JUDGE TIERNEY: Let the record show that counsel is
`pointing to slide 14 of their demonstratives, just because we do
`have someone attending remotely.
`MR. AUTUORO: Yes, I'm sorry, for not referring to
`the slide here.
`And then the patent goes into certain examples and it
`says, for example, when a vehicle, you know, may turn a corner
`or do X, Y and Z, that it would be optimal to change the direction
`of the headlamp, but those are simply examples. And, in fact, the
`patent goes on and on about how there can be any desired
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`relationship between the sensed condition and the orientation of
`the vehicle headlamp.
`It says that the sensed conditions are not limited to ones
`that are disclosed by using such phraseology, such as sensing
`pitch and steering angle. I think it explicitly says -- and we'll get
`to this on one of our slides that the sensed conditions can include
`additional examples and that what may be sensed can vary from
`vehicle to vehicle.
`JUDGE MOORE: I understand that, counsel. Let me --
`just going back to the issue, which is the problem that the '034
`patent is trying to solve, please take a look at column 1, lines 57
`through 67.
`These portions of the patent, you know, talk about the
`fact that automatic directional control systems for vehicle
`headlights were known. Then it says, such automatic directional
`control systems "have been found to be deficient for various
`reasons. Thus, it would be desirable to provide an improved
`structure for an automatic headlight directional control system
`that addresses such deficiencies." Isn't that the problem the '034
`patent is trying to solve?
`MR. AUTUORO: Well, Your Honor, it says that there
`are certain deficiencies, but it does not, you know, specifically
`identify here any of the deficiencies and, in fact, you know, I
`don't think that this is --
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`JUDGE MOORE: -- automatic directional control
`systems, not fixed headlight control -- not fixed headlights.
`There are deficiencies in automatic headlight control systems,
`isn't that right?
`MR. AUTUORO: I'm sorry, Your Honor, say that
`
`again.
`
`JUDGE MOORE: The deficiencies it's talking about
`are deficiencies in automatic headlight control systems, aren't
`they?
`
`MR. AUTUORO: Yes, Your Honor, that's what the
`claim says, an automatic directional control system. And, Your
`Honor, I was referring before to column 1 at line 36 where it talks
`about, you know, problems and it says, in the past these
`headlights have been mounted on the vehicle in fixed positions
`relative thereto such that the beams of light are projected there
`from a predetermined directional aiming angles relative to the
`vehicle.
`And certainly -- you know, it certainly describes in that
`paragraph, you know, problems concerning just having fixed
`headlights and adding generally this notion of having an
`adjustable headlamp.
`JUDGE MOORE: Thank you, counsel.
`JUDGE TIERNEY: But the next paragraph I think was
`what my colleague is trying to point out. It goes, to accomplish
`this -- it says basically they recognize the problems of the fixed
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`Case IPR2016-00079
`Patent 7,241,034 C1
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`structure and they say, to accomplish the disadvantages of the
`fixed structure, you would use your automatically altering
`directional aiming angles, etcetera.
`MR. AUTUORO: Right, and certainly, I'm sorry, Your
`Honor, but it does relate to an automatic directional headlight
`control system. So that's where the problems are addressed here.
`JUDGE MOORE: Okay. That's the point I was trying
`to clarify. Thank you.
`MR. AUTUORO: Thank you.
`Okay. And so Patent Owner has raised certain
`arguments with respect to why that a motorcycle would not be
`analogous art to the --
`JUDGE ELLURU: Counsel, I'm going to go back to
`my original question. So if we find -- do we need to find that
`broad construction for a land vehicle? Assume that we don't. Do
`we still have a way to get to where you would like for us to go?
`Assuming that a motorcycle is not a land vehicle, would, for
`example, a skilled artisan know to apply that to a car?
`MR. AUTUORO: Just to clarify, Your Honor, are you
`saying would a skilled artisan know to apply --
`JUDGE ELLURU: The teachings to a car.
`MR. AUTUORO: You know, I don't believe there's any
`reason why a skilled artisan wouldn't know to apply the --
`JUDGE ELLURU: And is there evidence in the record
`to support that? I'm sorry, I didn't clarify my question.
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`MR. AUTUORO: The Takahashi reference itself is a
`disclosure where the disclosed embodiment relates to
`incorporating a threshold feature on a four-wheel vehicle and so
`Takahashi itself is an indicator that you could apply such a
`threshold feature to a vehicle.
`And so the question is, you know, the Kato reference
`certainly in the embodiment describes that it relates to certain
`sensors on a motorcycle, but at heart Kato is a system that's a
`vehicle directional headlight control system that's mounted on a
`motorcycle. The Takahashi reference similarly discloses a
`vehicle headlight directional control system. They're both
`automatic systems.
`With respect to Takahashi, the reference includes an
`indicator that you might want to include this threshold feature so
`that you prevent undue movement of the headlamp in response to
`unevenness of the road it says explicitly, and so an ordinary
`skilled artisan seeing those two references would, of course, have
`reason to incorporate Takahashi's teaching in the Kato motorcycle
`if he or she so wanted or vice versa to incorporate, you know,
`sensing pitch and steering angle in the system of Takahashi. So I
`think that there would be no reason to limit such a system to
`motorcycles.
`JUDGE MOORE: We're not talking about motivation
`to combine here. We're talking about analogous art. And isn't the
`analogous art question determined by the similarities between the
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`challenged patent and the prior art references? Because you were
`just comparing two prior art references to one another.
`Analogous art depends on, you know, the '034 patent as
`compared to Kato.
`MR. AUTUORO: Certainly, Your Honor. I apologize,
`I thought that I answering Judge Elluru's question. But if we're
`talking about in terms of whether or not the Kato reference is
`analogous to the '034 patent, I mean, let me just -- I think we're
`right on the appropriate slide here in terms of the crossover
`applicability argument here.
`JUDGE TIERNEY: And you're pointing to which slide
`number?
`MR. AUTUORO: And, I'm sorry, Your Honor, I'm
`pointing to slide 15. And so, you know, I think that Patent
`Owner's argument here is based on a faulty premise and that
`faulty premise is that the '034 patent does not include motorcycles
`within its scope. And so if you acknowledge the fact that the '034
`patent is broad enough to include motorcycles and all other types
`of vehicles, of course, a reference that relates to motorcycles,
`which are a type of vehicle, is analogous to that '034 patent.
`JUDGE TIERNEY: Now step back for a second. Put
`yourself in the role of a judge who has to decide the case. We
`have the issue of claim construction which has come up. We also
`have the question of analogous art. If we say that we don't need
`-- if we don't reach the claim construction question -- let's say for
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`some reason we adopt Patent Owner's construction for simplicity
`or we agree with it, whatever it may be. So we construe the claim
`to exclude motorcycles. Can you succinctly state why you so
`believe the art to be analogous?
`MR. AUTUORO: Yes, Your Honor. Even if it were
`the case that the claim excluded motorcycles, the art would still
`be analogous because it was addressed to the same field of
`endeavor and because it addressed the same problem. And the
`problem -- well, the same field of endeavor is vehicle headlight
`direction control.
`I mean, I think that if the claim at issue were somehow
`read to be limited to exclude motorcycles, that wouldn't, you
`know, by itself narrow what the appropriate field of endeavor
`here was and so, you know, as evidenced by the fact that in an
`IDS, the applicants submitted motorcycle art to the Board -- I
`mean, to the Patent Office for consideration, and even the
`Examiner during considering patentability looked at and searched
`through U.S. classes that clearly encompass motorcycles within
`their scope.
`And then for an independent reason, we have the same
`problem that's addressed and that is in an automated headlight
`directional control system accounting for changes in sensed
`conditions in manipulating the directional control of headlamps.
`JUDGE TIERNEY: Now let's change the question
`somewhat. Let's assume here that we agree with you that
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`motorcycles are encompassed by the claim to the vehicle. To
`start again, let's assume that we agree with you that vehicle
`encompasses a motorcycle and we construe the claim in that way.
`What do we need to then do when we get to the analogous art
`question? Is it moot or do we still have to decide that issue?
`MR. AUTUORO: Well, I think that if vehicle
`encompasses motorcycle, then I think that establishes per se that
`with respect to these references that they're from the same field of
`endeavor. Because not only would the Kato reference in that
`instance, you know, as I mentioned before be from the same field
`of endeavor, the very reference would meet almost all of the
`limitations of the claims themselves and so I think that it would
`establish it without question.
`JUDGE TIERNEY: So that moots the question?
`MR. AUTUORO: I believe that it would still be a
`question under the field of endeavor prong of determining
`analogous art and I think that the
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