UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KOITO MANUFACTURING CO., LTD.
`Petitioner
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`v.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
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`Case IPR2016-00079
`Patent 7,241,034
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`PETITIONER’S REQUEST FOR REHEARING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KOITO MANUFACTURING CO., LTD.
`Petitioner
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`v.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
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`Case IPR2016-00079
`Patent 7,241,034
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`PETITIONER’S REQUEST FOR REHEARING
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`Attorney Docket No.: 10973-0232IP1
`Control No: IPR2016-00079
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`INTRODUCTION
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`Petitioner requests rehearing, pursuant to 37 C.F.R. § 42.71(c)-(d), of
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`I.
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`the Board’s decision not to institute the IPR with respect to Claims 33 and
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`34 at pages 31-33 and 39 of its Institution Decision (Paper 11, May 5, 2016).
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`II. STANDARD FOR RECONSIDERATION
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`When rehearing a decision on petition, the Board will review the
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`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
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`(Fed. Cir. 2004). The party challenging the decision has the burden of
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`showing a decision should be modified, and the request for rehearing must
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`specifically identify all matters the party believes the Board misapprehended
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`or overlooked and the place where each matter was previously addressed in
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`its papers. 37 C.F.R. § 42.71(d).
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`III. SUMMARY OF THE GROUNDS
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`The grounds for rehearing and institution are that the Board abused its
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`discretion by:
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`Attorney Docket No.: 10973-0232IP1
`Control No: IPR2016-00079
`1. Misconstruing Claims 33-34 and prior art, including incorrectly
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`referring to “filtering out ‘frequencies lower than a suspension
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`rebound frequency of the vehicle’”;
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`2. Failing to give weight to the determination by the Central
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`Reexamination Unit (“CRU”) that the same limitations of Claims
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`33 and 34 were found in the same prior art reference (“Okuchi”)
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`relied upon by Petitioner, and the Patent Owner’s acquiescence
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`during the reexamination proceedings by not contesting the CRU’s
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`determinations regarding Claims 33 and 34;
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`3. Failing to give proper weight, in the context of the institution
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`standard, to the opinion of the only expert, Dr. Wilhelm, that
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`Claims 33 and 34 are obvious; and
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`4. Failing to give weight to the Patent Owner’s waiver of reliance on any
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`limitations of dependent Claims 33 and 34 in opposing institution.
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`IV. DETAILED DISCUSSION
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`1. Claim 33 requires “that the controller is programmed to be
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`responsive to changes in a suspension height of the vehicle that occur at a
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`frequency lower than a suspension rebound frequency of the vehicle.” Non-
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`institution with respect to Claims 33 and 34 apparently is based on the Board
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`not having been persuaded on the record that Okuchi teaches or suggests that
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`3
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`Attorney Docket No.: 10973-0232IP1
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`Control No: IPR2016-00079
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`limitation. Claim 34 recites the same language as claim 33, but adds
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`“thereby ignoring frequency changes in the suspension height of the vehicle
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`that are a result of bumps in the road.” That language explains the purpose of
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`the programming of the controller, as claimed in both claim 33 and 34,
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`which as pointed out in the Petition (pp. 48-51, including the claim charts),
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`is disclosed, or at least suggested, by the following statement in Okuchi:
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`Since it is generally expected that the pitch angle
`does not largely change, strong filtering is
`performed so as to remove high frequency
`components of a vibration at the time of driving
`and the change in the pitch angle due to
`unevenness of the road surface, thereby preventing
`the actuator from responding.”
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`(KOITO 1017 at 6:29-38) (emphasis added)
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`We note that the Board apparently misspoke or misunderstood Claims
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`33-34 and/or Okuchi when it said “Petitioner, however, has not identified
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`any teaching or suggestion in Okuchi of filtering out ‘frequencies lower than
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`a suspension rebound frequency of the vehicle.’” (Institution Decision, Paper
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`11, p. 32, lines 20-22). Contrary to the implication of the Board’s statement,
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`Claims 33 and 34 do not require filtering out any lower frequencies. Instead,
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`they require that the controller be “responsive” to the lower frequencies.
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`Likewise, Okuchi describes filtering out only the high frequency
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`components, thereby allowing the ECU and actuators to continue to be
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`4
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`Attorney Docket No.: 10973-0232IP1
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`Control No: IPR2016-00079
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`responsive to lower frequencies. Thus, Okuchi, like Claims 33-34, discloses
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`a controller responsive to the lower frequencies for the same purpose.
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`Although Okuchi does not appear expressly to use the phrase “a
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`suspension rebound frequency,” Okuchi does, as pointed out in the Petition
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`(pp. 48-51), describe the following:
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`* A controller (i.e., ECU 20) that receives signals from height
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`sensors 11F, 11R attached to front and rear suspensions of a vehicle
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`(KOITO 1017 at 4:58 – 5:8; FIG. 1). See Petition at p. 48, lines 15-17,
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`and claim charts at pp. 49-50.
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`* The controller supplies signals to the headlight actuators 35R,
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`35L (KOITO 1017 at 5:16-19 and 5:52-64). See Petition at p. 48, line
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`17 – p. 49, lines 2, and claim charts at pp. 49-50.
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`* Performing filtering so as to remove high frequency
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`components of a vibration at the time of driving and the change in the
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`pitch angle due to unevenness of the road surface, thereby preventing
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`the actuator from responding to the changes caused merely by
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`unevenness of the road surface (KOITO 1017 at 6:29-38). See
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`Petition, claim charts at pp. 49-50; see also p. 51, lines 8-11.
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`The clear implication of Okuchi is that, when the high frequency
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`components that are due to unevenness of the road surface are removed, the
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`5
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`Attorney Docket No.: 10973-0232IP1
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`Control No: IPR2016-00079
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`controller and actuators continue to be responsive to lower frequencies (e.g.,
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`frequencies below a suspension rebound frequency).
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`2. The Board appears to have overlooked the comments at page 50 of
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`the Petition, which call attention to the fact that the reexamination examiners
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`also found that Okuchi disclosed the limitations of Claims 33 and 34.
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`Specifically, in a communication dated June 29, 2012, the CRU found that
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`Okuchi disclosed the limitations of Claims 33 and 34. (KOITO 1005 at
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`1094-1095; cf. id. at 1083)
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`The Patent Owner did not disagree, and acquiesced in the CRU’s
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`findings with respect to the limitations of Claims 33 and 34, choosing to
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`amend the independent claims instead. (KOITO 1005 at 1119-1130) Cf.
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`Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1368 (Fed. Cir.
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`2004) (In construing claim language, the court stated “When we use the
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`prosecution history as source material, the prior art cited and the applicant's
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`acquiescence with regard to that prior art indicate the scope of the claims, or
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`in other words, what the claims do not cover.”)
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`The CRU’s findings that Okuchi disclosed the limitations of Claims
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`33 and 34, and the Patent Owner’s acquiescence in the rejections of those
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`claims, are evidence of a likelihood of success of the Petitioner, at least for
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`6
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`Attorney Docket No.: 10973-0232IP1
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`Control No: IPR2016-00079
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`the purposes of institution of IPR with respect to those same claims based on
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`the same Okuchi prior art reference.
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`3. Dr. Wilhelm’s expert Declaration (KOITO 1019) addressed the
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`limitations of claims 33 and 34 (see ¶¶95-99, including the claim charts) and
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`opined that those limitations were satisfied by Okuchi. Given the fact that
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`the CRU found that the limitations of Claims 33 and 34 were disclosed by
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`Okuchi, it should not be surprising the Petition and Dr. Wilhelm’s expert
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`Declaration did not devote much additional space to these limitations.
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`Further, although Dr. Wilhelm did not expressly discuss the claim language
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`of frequencies lower than “a suspension rebound frequency of the vehicle,”
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`his opinion that Okuchi discloses or suggests that limitation is implicit in Dr.
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`Wilhelm’s statement that the subject matter of claims 33 and 34 would have
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`been obvious to a person of ordinary skill in the art (KOITO 1019, ¶99) in
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`light of the points discussed in his claim charts and in ¶¶95, 97 and 99 of his
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`Declaration (Id. at pp. 49-52).
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`It would be inappropriate at the institution stage of the proceeding for
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`the judges of this Board to substitute their opinion for that of Dr. Wilhelm
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`(and that of the CRU examiners), in the absence of any contrary opinion of
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`record. As the IPR continues, the Patent Owner will have the opportunity to
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`Attorney Docket No.: 10973-0232IP1
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`Control No: IPR2016-00079
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`examine Dr. Wilhelm and offer its own expert testimony, and the Petitioner
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`will have an opportunity to respond.
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`4. The Patent Owner’s Preliminary Response to the Petition focused
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`solely on the limitations of the independent Claims 3 and 7. The Patent
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`Owner did not address the limitations in Claim 33 and 34, and did not
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`discuss the Okuchi reference (KOITO 1017) on which Petitioner relies. As a
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`result, the Patent Owner waived any objection it might have to institution of
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`IPR with respect to Claims 33 and 34.
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`While Petitioner has the ultimate burden of proof of unpatentability of
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`Claims 33 and 34, where—as here—the Patent Owner effectively has
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`waived objection to institution, IPR should proceed, and the ultimate issue of
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`patentability should be addressed in later proceedings.
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`8
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`V. CONCLUSION
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`Attorney Docket No.: 10973-0232IP1
`Control No: IPR2016-00079
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`Petitioner respectfully requests institution of IPR for Claims 33 and 34
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`Respectfully submitted,
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`/Samuel Borodach, Reg. No. 38,388/
`Samuel Borodach, Reg. No. 38,388
`(borodach@fr.com)
`3200 RBC Plaza, 60 South Sixth St.
`Minneapolis, MN 55402
`T: 617-542-5070
`F: 617-542-8906
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`Attorneys for Petitioner
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`of the ‘034 Patent.
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`Dated: May 17, 2016
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`(Case No. IPR2016-00079)
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`9
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`Attorney Docket No.: 10973-0232IP1
`Control No: IPR2016-00079
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the
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`undersigned certifies that on May 17, 2016, a complete and entire copy of
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`this Petitioner’s Request for Rehearing was served via electronic mail, as
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`agreed to by counsel, upon the following counsel of record for Patent
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`Owner:
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`Brett M. Pinkus
`David A. Skeels
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
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`E-mail: pinkus@fsclaw.com
`skeels@fsclaw.com
`hermesch@fsclaw.com
`putnam@fsclaw.com
`dunn@fsclaw.com
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`/Jessica K. Detko/
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`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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`30945027.doc
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