Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 24
`Entered: March 15, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KOITO MANUFACTURING CO., LTD, and
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-000791
`Patent 7,241,034 C1
`_______________
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`RAMA G. ELLURU and SCOTT C. MOORE, Administrative Patent
`Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Case IPR2016-01368 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`Paper 24
`Entered: March 15, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KOITO MANUFACTURING CO., LTD, and
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-000791
`Patent 7,241,034 C1
`_______________
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`RAMA G. ELLURU and SCOTT C. MOORE, Administrative Patent
`Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Case IPR2016-01368 has been joined with this proceeding.
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`
`INTRODUCTION
`I.
`Koito Manufacturing Co., Ltd. (“Petitioner”) filed a Petition (Paper 2;
`“Pet.”) to institute an inter partes review of claims 3–26 and 28–35 of U.S.
`Patent No. 7,241,034 C1 (Ex. 1001; “the ’034 patent”). Adaptive Headlamp
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response (Paper
`10; “Prelim. Resp.”). The Board instituted a trial as to claims 3–26, 28–32,
`and 35 of the ’034 patent. Paper 11 (“Dec. on Inst.”).
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.”) to the Petition. Paper 16. Petitioner filed a Reply (“Reply”) to
`the Patent Owner Response. Paper 18. Petitioner relies on the Declaration
`of Ralph V. Wilhelm, Ph.D. (Ex. 1019) in support of its Petition, and the
`Reply Declaration of Ralph V. Wilhelm, Ph.D. (Ex. 1037) in support of its
`Reply. Patent Owner relies on the Declaration of Joe Katona (Ex. 2002) in
`support of its Response.
`An oral hearing was held on January 11, 2017. The record contains a
`transcript of this hearing. Paper 23 (“Tr.”).
`We have jurisdiction over this dispute under 35 U.S.C. § 6. This Final
`Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73. Petitioner has shown by a preponderance of the evidence that
`claims 3–26, 28–32, and 35 are unpatentable under 35 U.S.C. § 103(a).
`
`BACKGROUND
`II.
`Related Proceedings
`A.
`The ’034 patent was subject to an ex parte reexamination (Control No.
`90/011,011) and an inter partes reexamination (Control No. 95/001,621)
`filed by Volkswagen Group of America, Inc. Pet. 1. These reexamination
`
` 2
`
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`proceedings were merged and resulted in issuance of an inter partes
`reexamination certificate. Id.; Ex. 1002.
`The ’034 patent also was the subject of prior litigation in the U.S.
`District Court for the Eastern District of Texas. Pet. 1–2. Neither Petitioner
`nor its subsidiaries were parties to this prior case, which was dismissed
`without prejudice on May 18, 2010. See id. The ’034 patent is asserted by
`Patent Owner in several pending litigations in the U.S. District Court for the
`District of Delaware. Pet. 2; Paper 6, 2–3. Petitioner is not a party to any of
`these Delaware litigations. See id.
`
`The ’034 Patent
`B.
`The ’034 patent discloses a structure and method for operating a
`directional control system for vehicle headlights. Ex. 1001, Abstract.
`Figure 1 of the ’034 patent is reproduced below.
`
`
`
` 3
`
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`Figure 1 is a block diagram of automatic directional control system 10 for a
`vehicle headlight. Id. at 2:28–30, 63–65. Headlight 11 is mounted on a
`vehicle in a manner that permits the direction of projected light to be
`adjusted by actuators 12 and 13. Id. at 3:10–13, 26–28. Condition sensors
`15 and 16 sense operating conditions of the vehicle, and generate electrical
`signals that are responsive to the sensed operating conditions. Id. at 3:61–
`64. Headlight directional controller 14 receives the electrical signals
`generated by condition sensors 15 and 16, and responds by selectively
`operating actuators 12 and 13 to adjust the position of headlight 11. Id. at
`3:49–58. The disclosed automatic directional control system also includes
`feedback sensors 18 and 19, which generate signals representative of the
`actual up/down and left/right position of headlight 11, and supply these
`signals to controller 14. Id. at 4:8–24. These feedback signals can be used
`to calibrate the disclosed system. Id. at 6:10–17.
`
`Challenged Claims
`C.
`Challenged claims 3 and 7 are independent claims, and the remaining
`challenged claims depend, directly or indirectly, from either claim 3 or claim
`7. Claim 7 is illustrative of the challenged claims, and is reproduced below.
`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 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;
`
` 4
`
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`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.
`References Relied Upon
`D.
`Petitioner relies on the following references:
`References
`Japan Patent Application Publication H10-324191
`(pub. Dec. 8, 1998) (“Kato”)
`UK Published Patent Application GB 2 309 774 A
`(pub. Aug. 6, 1997) (“Takahashi”)
`Japan Patent Application Publication H7-164960
`(pub. June 27, 1995) (“Mori”)
`Japan Patent Application Publication H01-223042
`(pub. Sept. 6, 1989) (“Uguchi”)
`Ishikawa et al, “Auto-Levelling Projector Headlamp
`System with Rotatable Light Shield,” SAE Technical
`Paper Series No. 930726, Mar.1993 (“Ishikawa”)
`
`1008
`
`1013
`
` 5
`
`
`
`
`Exhibit No.
`1006, 1007
`
`1009, 1010
`
`1011, 1012
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`References
`U.S. Patent No. 5,751,832 (iss. May 12, 1998)
`(“Panter”)
`Japan Patent Application Publication H6-335228
`(pub. Dec. 2, 1994) (“Suzuki”)
`U.S. Patent No. 6,193,398 B1 (iss. Feb. 27, 2001)
`(“Okuchi”)
`
`Pet. 4–5; Dec. on Inst. 39.
`
`E. Grounds of Unpatentability
`We instituted trial on the following grounds:
`
`Exhibit No.
`1014
`
`1015, 1016
`
`1017
`
`Statutory Basis
`
`References
`
`35 U.S.C. § 103(a) Kato and Takahashi
`
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Mori
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Uguchi
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Ishikawa
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Panter
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Suzuki
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Okuchi
`
` 6
`
`
`
`
`1
`
`Ground Challenged
`Claim(s)
`7–9, 13–18,
`20, 21, 23,
`24, 28, 29,
`31, 32, and
`35
`10
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`11 and 19
`
`12
`
`22
`
`25 and 26
`
`30
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`Ground Challenged
`Claim(s)
`3 and 6
`4
`
`8
`9
`
`10
`
`5
`
`Dec. on Inst. 39.
`
`Statutory Basis
`
`References
`
`35 U.S.C. § 103(a) Kato and Uguchi
`35 U.S.C. § 103(a) Kato, Uguchi, and
`Ishikawa
`35 U.S.C. § 103(a) Kato, Uguchi, and
`Takahashi
`
`III. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`Petitioner asserts that a person of ordinary skill in the art “would be a
`person with at least a bachelor’s degree in electrical engineering, computer
`science, or physics with at least two years of related post-graduate or
`industry work experience.” Pet. 21. Petitioner further asserts that such a
`person “would have had a working understanding of microprocessor-driven
`controls for automotive systems including knowledge of automotive closed
`loop computer control, sensors and actuators, and would have been
`comfortable with elementary decision-making in the area of automotive
`systems development and design for new vehicles.” Id. at 21–22.
`Patent Owner asserts that a person of ordinary skill would have at
`least the following qualifications:
`a bachelor’s degree in electrical engineering, computer science,
`physics, or other related field of study; at least two years of
`relevant work experience in the automotive industry; a working
`understanding of control systems and associated components
`used within the automotive industry; and, relevant work
`experience with product development and design in the
`automotive industry.
`
` 7
`
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`PO Resp. 4–5.
`
`The parties’ formulations as to the level of ordinary skill in the art are
`similar to one another, and neither party identifies with specificity an error in
`the opposing party’s formulation. The parties also agree that none of the
`disputes in this case turn on differences between the parties’ respective
`formulations. Tr. 33:1–6, 67:20–68:1. On the record presented we hold that
`the cited prior art is representative of the level of ordinary skill in the art.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of
`ordinary skill in the art may be evidenced by the cited references
`themselves). Specifically, the references are consistent with the parties’
`formulations and demonstrate the level of skill in the art. Our
`determinations regarding the patentability of the challenged claims would
`remain the same under either party’s proposed formulation.
`
`Claim Construction
`B.
`We interpret claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (concluding the broadest reasonable construction “regulation
`represents a reasonable exercise of the rulemaking authority that Congress
`delegated to the Patent Office”). There is a presumption that claim terms are
`given their ordinary and customary meaning, as would be understood by a
`person of ordinary skill in the art in the context of the specification. See In
`re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
`applicant may rebut that presumption by providing a definition of the term in
`the specification with reasonable clarity, deliberateness, and precision. In re
`
` 8
`
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). An applicant also may
`narrow the meaning of a claim term by disclaiming or disavowing claim
`scope; however, such a “disclaimer or disavowal of claim scope must be
`clear and unmistakable, requiring ‘words or expressions of manifest
`exclusion or restriction’ in the intrinsic record.” Unwired Planet, LLC v.
`Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Teleflex, Inc. v.
`Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). In the absence
`of such a definition or disclaimer, limitations are not to be read from the
`specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`Cir. 1993).
`Our Decision on Institution did not expressly construe any claim
`terms. Dec. on Inst. 7. Patent Owner, however, now asserts that “the term
`‘vehicle,’ as used consistently throughout the ’034 patent and as understood
`by one of ordinary skill in the art, does not encompass motorcycles.” PO
`Resp. 6. Patent Owner argues that such a construction is appropriate “in
`light of the inclusion and exclusion of certain discussion throughout the
`specification of the ’034 patent.” Id. at 6–7. For the reasons below, we
`construe the term “vehicle,” as used in the ’034 patent, to include
`motorcycles.
`The specification of the ’034 patent uses the term “vehicle” in a broad
`sense. For example, the Background of the Invention section of the ’034
`patent uses the term “vehicle” to encompass “land vehicles, and many other
`types of vehicles (such as boats and airplanes, for example).” Ex. 1001,
`1:20–21. The specification also makes clear that the claims are not limited
`to the specific vehicle types described in the Detailed Description of the
`Preferred Embodiment. See, e.g., id. at 2:60–3:3 (“The illustrated headlight
`
` 9
`
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`11 is, of itself, conventional in the art and is intended to be representative of
`any device that can be supported on any type of vehicle for the purpose of
`illuminating any area.”) (emphasis added).
`Patent Owner does not dispute that the term “vehicle,” in ordinary
`usage, could encompass motorcycles. Tr. 41:12–23. Patent Owner further
`concedes that the ’034 patent does not contain an express lexicographic
`definition of the term “vehicle,” (Tr. 41:24–43:8), and instead argues that
`“the disclosure of the patent in the claims and the problem to be solved”
`make clear that the term “vehicle” excludes motorcycles (id. at 42:19–43:5).
`Patent Owner, however, does not sufficiently identify the portions of the
`specification that allegedly support its claim construction argument. See PO
`Resp. 6–7 (indicating that Patent Owner’s claim construction argument is
`based on “certain discussion throughout the specification of the ’034 patent,
`as noted throughout this Response”). Patent Owner cites to Paragraph 38 of
`the Katona Declaration (see PO Resp. 7), but this declaration testimony
`relates to the Kato reference and does not identify any portion of the ’034
`patent that supports Patent Owner’s argument (see Ex. 2002 ¶ 38; Ex. 1007
`¶¶ 4–5). Moreover, we find that the “Claim Interpretation” section of the
`Katona Declaration is conclusory in nature because it does not identify any
`specific portion of the ’034 patent specification that supports Patent Owner’s
`argument. See Ex. 1002 ¶ 44.
`For the foregoing reasons, and based on the current record and our
`review of the specification of the ’034 patent, we are not persuaded that the
`intrinsic record contains a lexicographic definition or a disclaimer that
`would exclude motorcycles from the scope of the term “vehicle.” To the
`contrary, the specification makes clear that the term ”vehicle” is a broad
`
`10
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`term that is intended to encompass any type of vehicle. Accordingly, we
`determine that the term “vehicle,” as used in the specification and claims of
`the ’034 patent, encompasses motorcycles.
`The parties have not asked us to construe any other claim terms, and
`we decline to adopt other or further claim constructions because doing so is
`not necessary in order to resolve the parties’ disputes. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms
`need only be construed ‘to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))); see also Tr. 24:1–12, 60:20–62:2 (both parties agree that
`the Board need not construe any additional claim terms in the ’403 Patent).
`
`C.
`
`Asserted Grounds of Unpatentability
`
`1.
`
`Overview
`Petitioner argues that all of the challenged claims are unpatentable
`under 35 U.S.C. § 103. Pet. 4. A claim is unpatentable under 35 U.S.C.
`§ 103 if the differences between the claimed subject matter and the prior art
`are “such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to
`which such subject matter pertains.” 35 U.S.C. § 103(a). The question of
`obviousness under 35 U.S.C. § 103 is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). The Supreme Court has held that “[t]he combination of familiar
`
`
`11
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`elements according to known methods is likely to be obvious when it does
`no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 550 U.S.
`398, 416 (2007). The Supreme Court also has held that “if a technique has
`been used to improve one device, and a person of ordinary skill in the art
`would recognize that it would improve similar devices in the same way,
`using the technique is obvious unless its actual application is beyond his or
`her skill.” Id. at 417.
`
`2.
`
`Objective Indicia of Nonobviousness
`The parties have not identified any objective evidence of
`nonobviousness that allegedly bears on the patentability of the challenged
`claims.
`
`3.
`
`Ground 1: Alleged Obviousness of Claims 7–9, 13–18, 20, 21, 23, 24,
`28, 29, 31, 32, and 35 over Kato and Takahashi
`
`Of the challenged claims in this ground, only claim 7 is independent.
`The remaining claims in this ground depend, either directly or indirectly,
`from claim 7.
`
`Kato
`a.
`Kato is directed to a headlight optical axis control device for a
`motorcycle. Ex. 1007, Abstract. Kato’s device may incorporate a pitch
`angle sensor, an actuator that pivots an optical axis of the headlight in the
`pitch angle direction, and a control unit that causes the actuator to adjust the
`pitch angle of the headlight based on the pitch angle detected by the pitch
`angle sensor. Id. ¶ 7.
`
`
`12
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`Figure 1 of Kato is reproduced below.
`
`
`Figure 1 is a functional block diagram illustrating one embodiment of a
`headlight optical axis control device. Ex. 1007 ¶ 15. The device includes
`potentiometers 121 and 122 to detect pitch angle, angular velocity sensor 14
`to detect bank angle, sensor 16 to detect the steering angle, and speed sensor
`18 to detect the vehicle speed. Id. ¶ 16. The device also includes controller
`24, which determines a pitch angle correction amount, a bank angle direction
`correction amount, and a steering angle direction correction amount based
`on input from potentiometers 121 and 122, and sensors 14, 16, and 18. Id.
`Controller 24 then controls step motors 22x, 22y, and 22z to correct the
`angle of the optical axis of the headlight. Id.
`
`Takahashi
`b.
`Takahashi is directed to a vehicle lamp illumination direction control
`device that detects the posture of a vehicle, and adjusts the illumination of a
`vehicle lamp. Ex. 1008, 1:3–7.
`
`
`13
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`Figure 1 of Takahashi is reproduced below.
`
`
`Figure 1 depicts the basic structure of an embodiment of Takahashi’s
`illumination direction control device. Ex. 1008, 5:24–29. Vehicle posture
`detection device 2 detects, for example, the vertical inclination of the
`vehicle. Id. at 5:30–34. Vehicle running condition detection device 3
`detects, for example, whether the vehicle is moving or stopped. Id. at 6:16–
`25. Control device 4 receives signals from detection devices 2 and 3, and
`transmits a control signal to drive 5 in order to correct the illumination
`direction of lamp 6. Id. at 6:26–32.
`
`Analysis
`c.
`Independent Claim 7
`Petitioner alleges that Kato discloses all the limitations of claim 7,
`except for a controller that generates an output signal only when at least one
`of two or more sensor signals changes by more than a “predetermined
`minimum threshold amount” (the “predetermined threshold amount
`limitation”). Specifically, claim 7 recites a controller
`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
`
`14
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`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
`
`Pet. 25. Petitioner alleges that Takahashi discloses the “predetermined
`minimum threshold” limitation. Id.
`Patent Owner, in its Response to the Petition, argues that the cited
`references “do not disclose or suggest” the predetermined minimum
`threshold limitation of claim 7. PO Resp. 32. Patent Owner, however, does
`not dispute with specificity Petitioner’s assertion that Kato discloses a
`headlight control device that satisfies all other limitations recited in claim 7.
`See id. at ii, 12–35. We find Petitioner’s evidence regarding the
`non-disputed limitations of claim 7 to be persuasive and adopt Petitioner’s
`reasoning. See Pet. 24–32; Ex. 1019 ¶¶ 51–55, p. 22–24. The disputed
`predetermined minimum threshold limitation of claim 7, and Patent Owner’s
`other arguments regarding the patentability of claim 7, are addressed below.
`The parties dispute whether the following portion of Takahashi
`discloses the predetermined minimum threshold limitation of claim 1:
`Also, in order to prevent the illumination direction of the lamp
`6 from being corrected inadvertently when a sudden change in
`the posture of the vehicle occurs temporarily or due to the
`wrong operation of the lamp 6 caused by external disturbances,
`for example, when the vehicle makes a sudden start or a sudden
`stop, preferably, a threshold value with respect to time may be
`set in detection of the road gradient and, only when the amount
`of variations in the detect signal of the vehicle posture detection
`device 2 exceeds a given reference value and such excessive
`state continues for a time equal to or more than the threshold
`value, the illumination direction of the lamp 6 may be
`corrected; or, a threshold value with respect to the running
`distance of the vehicle may be set and, only when the amount of
`
`
`15
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`variations in the detect signal of the vehicle posture detection
`device 2 exceeds a given reference value and such excessive
`state continues for a distance equal to or more than the
`threshold value, the illumination direction of the lamp 6 may be
`corrected.
`See Pet. 32–33 (quoting Ex. 1008, 9:16–34); PO Resp. 33 (quoting Ex. 1008,
`9:16–28). Petitioner alleges that Takahashi’s “given reference value”
`corresponds to the “predetermined minimum threshold amount” recited in
`claim 7. Pet. 33.
`Patent Owner argues in response that Takahashi’s headlight controller
`is “simultaneously responsive to two threshold requirements working in
`common,” and that “only one of the two tiered thresholds of Takahashi is
`rooted in a measured operating condition of the vehicle while the second is
`time based.” PO Resp. 34. According to Patent Owner, this two-tiered
`“thresholding scheme cannot read on the threshold limitation of Claim 7.”
`Id. Petitioner concedes that Takahashi employs two separate thresholds, but
`argues that the predetermined minimum threshold limitation “does not
`preclude there being an additional threshold (e.g., of time) that also must be
`met before the ‘at least one output signal’ is generated.” Reply 19. We are
`persuaded by Petitioner’s argument.
`
`The “predetermined minimum threshold” limitation of claim 7 recites
`a controller “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
`
`
`16
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`Claim 7 (emphasis added). This limitation requires (i) a predetermined
`minimum threshold that is applied to “at least one of said two or more sensor
`signals,” and (ii) that no “output signal” be generated by the controller
`unless this predetermined minimum threshold is met. Takahashi’s controller
`generates an output signal to correct the illumination direction of lamp 6
`only when both “the amount of variations in the detect signal of the vehicle
`posture detection device 2 exceeds a given reference value” (i.e., a
`predetermined minimum threshold is exceeded), and “such excessive state
`continues for a time equal to or more than the threshold value” (i.e., a second
`time threshold is also exceeded). Ex. 1008, 9:23–27. The fact that
`Takahashi’s controller employs this second time-based threshold does not
`mean Takahashi’s controller falls outside the scope of the predetermined
`minimum threshold limitation because, notwithstanding the existence of this
`second time-based threshold, Takahashi’s controller only generates an
`output signal when “at least one of said two or more sensor signals” (i.e., the
`amount of variations in the detect signal of Takahashi’s vehicle posture
`detection device 2) exceeds a “predetermined minimum threshold” (i.e.,
`Takahashi’s given reference value). Accordingly, on this record, we find
`that Takahashi’s controller satisfies the predetermined minimum threshold
`limitation of claim 7.
`Petitioner asserts that a person of ordinary skill would have found it
`obvious to combine Takahashi’s reference (i.e., threshold) values with
`Kato’s headlight optical axis control device. See Pet. 34–35. As Petitioner
`points out (id. at 34), Takahashi teaches that the use of such reference values
`is desirable because it “prevent[s] the illumination direction of [the
`
`
`17
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`headlight] from being corrected inadvertently when a sudden change of the
`posture of the vehicle occurs temporarily . . . .” Ex. 1008, 9:16–34.
`Patent Owner argues in response that Kato is not analogous art
`because the term “vehicle,” as used the ’034 patent, does not encompass
`motorcycles. PO Resp. 15–24. In particular, Patent Owner argues that
`Kato’s “optical axis control device for motorcycle” (see Ex. 1007, 1) is
`addressed to a different field of endeavor than the “automatic directional
`control system for vehicle headlights” (Ex. 1001, 1:1–2) of the ’034 patent,
`because the term “vehicle” in the ’034 patent excludes motorcycles. PO
`Resp. 20. Patent Owner also argues that Kato is not reasonably pertinent to
`the problem addressed by the ’034 patent. Id. at 20–24. We disagree.
`Patent Owner’s first argument, that Kato and the ’034 patent are
`directed to different fields of endeavor, depends on its argument that the
`term “vehicle,” as used in the ’034 patent, excludes motorcycles. As
`discussed above, we reject this argument. In view of our determination that
`the ’034 patent’s use of the term “vehicle” does not exclude motorcycles, we
`are persuaded by Petitioner’s arguments (see Reply 7–8; Ex. 1037 ¶ 23) and
`find that Kato is directed to the same field of endeavor as the ’034 patent,
`i.e., automatic directional control systems for vehicle headlights. Compare
`Ex. 1001, 1:57–67, with Ex. 1007 ¶ 1.
`Even if the ’034 patent’s controller and Kato’s motorcycle controller
`were directed to different fields of endeavor, Kato’s controller would still be
`reasonably pertinent to the problem addressed by the ’034 patent. In
`particular, we find that Patent Owner is incorrect in its assertion that “[n]o
`crossover applicability exists [] between control devices for a motorcycle
`headlight and those of four-wheeled vehicles.” PO Resp. at 19. For
`
`18
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`example, Kato’s controller adjusts a headlight’s optical axis based upon
`changes to pitch angle or steering angle of a motorcycle. Ex. 1007 ¶ 11; see
`Ex. 1037 ¶ 33. The controller of the ’034 patent adjusts the aiming angle of
`vehicle headlights to account for operating conditions such as “steering
`angle” and “pitch.” Ex. 1001, 2:3–20. In view of the fact that the ’034
`patent and Kato both disclose controllers that automatically adjust headlights
`of motorized vehicles according to steering angle and pitch, we are
`persuaded by Petitioner’s arguments (see Reply 8–13; Ex. 1037 ¶¶ 24–29)
`that Kato would “logically have commended itself” to the attention of an
`inventor considering the problem addressed by the ’034 patent, even if the
`problem addressed by the ’034 patent only related to four wheeled vehicles.
`See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir.
`2007). On this record, we find that Kato qualifies as analogous art.
`Patent Owner also argues that a person of ordinary skill in the art
`would not have had reason to combine Kato with the threshold of Takahashi.
`PO Resp. 24–31. In particular, Patent Owner argues that Takahashi “is
`applicable in the context of cars, trucks, rather than in the context of
`motorcycles” (id. at 25–26), and that a headlight controller for a motorcycle
`(such as Kato’s controller) would operate differently because, for example,
`motorcycles lean when they turn, and because “smaller, more agile
`motorcycles experience greater magnitude changes in pitch, steering or bank
`angles during operation than four-wheeled vehicles.” Id. at 26–27. Patent
`Owner also argues that language in Kato suggesting that the headlight angle
`be corrected immediately teaches away from a combination with Takahashi.
`Id. at 28–29. Patent Owner additionally argues that the proposed
`combination would render Kato’s system unsuitable for performing its
`
`19
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`intended purpose (i.e., the “immediate” correction of headlight direction).
`Id. at 30–31. We are not persuaded by these arguments.
`Takahashi’s thresholds operate to “prevent the illumination of the
`lamp [] from being corrected inadvertently when a sudden change in the
`posture of the vehicle occurs temporarily or due to the wrong operation of
`the lamp [] caused by external disturbances.” Ex. 1007 ¶ 6. We are not
`persuaded that Takahashi’s thresholds could not be used to prevent the
`direction of Kato’s motorcycle headlight from being corrected inadvertently
`in the event of a temporary change in vehicle posture or external
`disturbance. Mr. Katona, Patent Owner’s expert, identifies several
`differences between motorcycles and four-wheeled vehicles, but does not
`persuasively and credibly explain why these differences would have
`prevented the use of such thresholds to prevent Kato’s headlight from being
`adjusted inadvertently in the event of a sudden and transient disturbance.
`See Ex. 1002 ¶¶ 54–56. We find credible the testimony of Petitioner’s
`expert, Dr. Wilhelm, that a skilled artisan would have realized that
`Takahashi’s thresholds could be used to prevent a motorcycle headlight
`controller from making undesirable adjustments to the headlight. Ex. 1019
`¶¶ 61–62; Ex. 1037 ¶¶ 34–36.
`We also are not persuaded by Patent Owner’s argument that Kato
`teaches away from the use of Takahashi’s thresholds, or that such thresholds
`would render Kato’s system unsuitable for its intended purpose. Kato’s
`stated “Object of the Invention” is “to provide a headlight optical axis
`control device that can stably ensure a beam irradiation range of a headlight
`even when pitch, bank, steering angle or the like change while driving a
`motorcycle.” Ex. 1007 ¶ 6. Kato does disclose an embodiment that is able
`
`20
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 C1
`
`
`to correct direction of a headlamp “immediately” (id. ¶ 8), but we do not
`find that the portions of Kato cited by Patent Owner “criticize, discredit, or
`otherwise discourage investigation” into the use of a threshold of the type
`taught by Takahashi. Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 738
`(Fed. Cir. 2013); see PO Resp. 28–29, Ex. 2002 ¶¶ 57–58. We also do not
`find that such thresholds would render Kato’s system unsuitable for its
`intended purpose. See PO Resp. 30–31; Ex. 2002 ¶¶ 57–58. Rather, we
`agree with Petitioner that a skilled artisan would have realized that
`Takahashi’s threshold values could have been set to minimize time delays
`while still realizing the advanta
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
