I.
`II.
`III.
`IV.
`
`DECLARATION OF JOE KATONA
`IN SUPPORT OF PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`IPR2016-00079
`U.S. Patent No. 7,241,034
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 2
`SUMMARY OF OPINIONS .............................................................................................. 4
`QUALIFICATIONS ........................................................................................................... 7
`APPLICABLE LEGAL STANDARDS ............................................................................. 7
`A.
`Claim Interpretation .................................................................................................8
`B.
`Burden of Proof........................................................................................................8
`C.
`Obviousness .............................................................................................................8
`ONE OF ORDINARY SKILL IN THE ART ................................................................... 12
`V.
`THE ‘034 PATENT .......................................................................................................... 13
`VI.
`PRIOR ART REFERENCES ............................................................................................ 15
`VII.
`VIII. CLAIM INTERPRETATION ........................................................................................... 18
`CLAIM 7 OF THE ’034 PATENT IS NOT OBVIOUS OVER KATO AND
`IX.
`TAKAHASHI ................................................................................................................... 18
`CLAIM 3 OF THE ’034 PATENT IS NOT OBVIOUS OVER KATO AND UGUCHI 27
`CONCLUSION ................................................................................................................. 30
`
`X.
`XI.
`
`
`
`
`
`
`II.
`III.
`IV.
`
`DECLARATION OF JOE KATONA
`IN SUPPORT OF PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`IPR2016-00079
`U.S. Patent No. 7,241,034
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 2
`SUMMARY OF OPINIONS .............................................................................................. 4
`QUALIFICATIONS ........................................................................................................... 7
`APPLICABLE LEGAL STANDARDS ............................................................................. 7
`A.
`Claim Interpretation .................................................................................................8
`B.
`Burden of Proof........................................................................................................8
`C.
`Obviousness .............................................................................................................8
`ONE OF ORDINARY SKILL IN THE ART ................................................................... 12
`V.
`THE ‘034 PATENT .......................................................................................................... 13
`VI.
`PRIOR ART REFERENCES ............................................................................................ 15
`VII.
`VIII. CLAIM INTERPRETATION ........................................................................................... 18
`CLAIM 7 OF THE ’034 PATENT IS NOT OBVIOUS OVER KATO AND
`IX.
`TAKAHASHI ................................................................................................................... 18
`CLAIM 3 OF THE ’034 PATENT IS NOT OBVIOUS OVER KATO AND UGUCHI 27
`CONCLUSION ................................................................................................................. 30
`
`X.
`XI.
`
`
`
`
`
`
`
`I.
`
`1.
`
`INTRODUCTION
`
`I, Joseph Katona, have been retained by the law firm of Friedman, Suder &
`
`Cooke, P.C. (“FSC”), on behalf of its client Adaptive Headlamp Technologies, Inc.
`
`(“AHT”), in connection with inter partes review no. IPR2016-00079 of U.S. Patent
`
`No. 7,241,034 C1 (which I will refer to in this declaration as “the ‘034 Patent”). I
`
`understand that the ‘034 Patent is owned by AHT and that AHT has sued several
`
`automobile manufacturers for infringement of the ‘034 Patent, including Nissan
`
`North America Inc. (“Nissan”). I understand that Koito Manufacturing Co., Ltd.
`
`(“Koito”), a manufacturing partner of Nissan, filed the petition for inter partes
`
`review of the ‘034 Patent.
`
`2.
`
`I am being compensated at my standard hourly rate for my work on this
`
`matter, including providing this declaration. My compensation is not dependent on
`
`the outcome of this inter partes review and in no way affects the substance of my
`
`testimony in this declaration. I have no financial interest in ‘034 Patent, AHT, any
`
`entity affiliated with the foregoing entities, or in the outcome of this inter partes
`
`review or any of the lawsuits involving the ‘034 Patent.
`
`3.
`
`I have reviewed and am familiar with the ‘034 Patent (Ex. 1001), its
`
`Reexamination Certificate (Ex. 1002), its prosecution history (Ex. 1003), the
`
`prosecution history for Ex Parte Reexamination Proceedings 90/011,011 (Ex.
`
`Page 2 of 31
`
`
`
`
`1004), and the prosecution history for Merged Reexamination Proceedings
`
`90/011,011 and 95/001,621 (Ex. 1005).
`
`4.
`
`I have reviewed and am familiar with the Petition for Inter Partes Review
`
`filed by Koito on October 23, 2015 (which I will refer to in this declaration as the
`
`“Petition”), the Board’s Institution Decision in this case dated May 5, 2016 (Paper
`
`11) (which I will refer to in this declaration as the “Institution Decision”), and at
`
`least the following documents referenced in the Petition:
`
` Certified translation of Japan Patent Application Publication H10-
`
`324191 (Ex. 1007) U.S. Patent 4,562,596 (Ex. 1006) (“Kato”)
`
` UK Patent Application Publication GB 2 309 774 A (Ex. 1008)
`
`(“Takahashi”)
`
` Certified translation of Japan Patent Application Publication H01-
`
`223042 (Ex. 1012) (“Uguchi”)
`
` Declaration of Mr. Ralph V. Wilhelm (Ex. 1019) (“Wilhelm Decl.”)
`
`5.
`
`In addition, I have reviewed and am familiar with any other documents I
`
`specifically cite in this declaration.
`
`Page 3 of 31
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`
`
`
`II.
`
`6.
`
`SUMMARY OF OPINIONS
`
`Based on my review and analysis of the materials in this matter, as well as
`
`my experience and education, in my opinion Kato does not disclose all of the
`
`limitations of independent Claim 7 of the ‘034 Patent. In particular, Kato fails to
`
`disclose “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” limitation of Claim 7. Kato does not contemplate a controller
`
`generating at least one output signal only when a predetermined minimum
`
`threshold value is exceeded.
`
`7.
`
`Based on my review and analysis of the materials in this matter, as well as
`
`my experience and education, in my opinion Kato does not disclose all of the
`
`limitations of independent Claim 3 of the ‘034 Patent. In particular, Kato fails to
`
`disclose “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
`
`Page 4 of 31
`
`
`
`
`sensed conditions” limitation of Claim 3. Kato does not contemplate a controller
`
`generating at least one output signal only when a predetermined minimum
`
`threshold value is exceeded. Additionally, Kato does not disclose “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.”
`
`8.
`
`Based on my review and analysis of the materials in this matter, as well as
`
`my experience and education, it is also my opinion that it would not have been
`
`obvious to combine Kato with the teachings of Takahashi to arrive at Claim 7 of
`
`the ‘034 Patent. In particular, I do not believe that one of ordinary skill in the art at
`
`the time when the ‘034 Patent was filed and without knowledge of the teachings of
`
`the ‘034 Patent would have had any reason to combine the teachings of Kato with
`
`the teachings of Takahashi. First, Kato and Takahashi are unrelated to one another
`
`in that Kato is addressed to headlight control in motorcycles, only, while
`
`Takahashi focuses on headlight control within four-wheel vehicles. A person of
`
`ordinary skill in the art could not be reasonably expected to look to a motorcycle
`
`reference for a solution to headlight direction control in four wheel vehicles since
`
`the particular problem encountered by four wheel vehicles does not exist in the
`
`motorcycle context. Additionally, modifying Kato with the teachings of Takahashi
`
`would appear to frustrate, rather than further, the intended purposes of Kato
`
`Page 5 of 31
`
`
`
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`through prevention of immediate correction of headlight direction in response to
`
`any change in body position of a motorcycle.
`
`9.
`
`Based on my review and analysis of the materials in this matter, as well as
`
`my experience and education, it is also my opinion that it would not have been
`
`obvious to combine Kato with the teachings of Uguchi to arrive at Claim 3 of the
`
`‘034 Patent. In particular, I do not believe that one of ordinary skill in the art at the
`
`time when the ‘034 Patent was filed and without knowledge of the teachings of the
`
`‘034 Patent would have had any reason to combine the teachings of Kato with the
`
`teachings of Uguchi. First, Kato and Uguchi are unrelated to one another in that
`
`Kato is addressed to headlight control in motorcycles, only, while Takahashi
`
`focuses on fog lighte directional control within four-wheel vehicles. A person of
`
`ordinary skill in the art could not be reasonably expected to look to a motorcycle
`
`reference for a solution to fog light or headlight direction control in four wheel
`
`vehicles since the particular problem encountered by four wheel vehicles does not
`
`exist in the motorcycle context. Additionally, modifying Kato with the teachings
`
`of Uguchi would appear to frustrate, rather than further, the intended purposes of
`
`Kato through prevention of immediate correction of headlight direction in response
`
`to any change in body position of a motorcycle.
`
`Page 6 of 31
`
`
`
`
`III. QUALIFICATIONS
`
`10. Submitted herewith is my curriculum vitae (“CV”), which is incorporated by
`
`reference.
`
`11.
`
`I received a Bachelor Degree in Electrical Engineering from General Motors
`
`Institute, and a Master of Science Degree in Industrial Administration from Purdue
`
`University. I have 40 years of experience in the automotive field, including 37
`
`years at General Motors, and 5 years of consulting in the field. My work at General
`
`Motors, included Director of Structural Development Laboratories, Director of
`
`Materials and Fastening Engineering, and Director of Vehicle Architecture.
`
`12.
`
`I received General Motors’ Safety Achievement Award for the development
`
`and implementation of the “Self-Aligning Steering Wheel”, such device was
`
`credited by Chief Council of General Motors with “…saving countless lives…”.
`
`IV. APPLICABLE LEGAL STANDARDS
`
`13.
`
`I will not offer opinions on principles of law as I am not an attorney.
`
`Nonetheless, I have been informed by counsel for AHT of the following principles
`
`concerning patentability, and I have used these principles as a framework in
`
`arriving at my opinions stated in this declaration.
`
`Page 7 of 31
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`
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`A. Claim Interpretation
`
`14.
`
`I understand that a patentability analysis is performed in two steps. First, the
`
`patent claims are interpreted to ascertain their scope. Second, the interpreted
`
`claims are compared to the prior art references.
`
`15.
`
`I understand that during an inter partes review the Patent & Trademark
`
`Office (PTO) gives patent claims their broadest reasonable interpretation in light of
`
`the specification. I also understand that this interpretation is from the vantage of
`
`one of ordinary skill in the art at the time of the patent’s effective filing date.
`
`B.
`
`Burden of Proof
`
`16.
`
`I understand that the claims in an issued patent are not presumed to be valid
`
`during an inter partes review, and that the Koito has the burden to show that a
`
`patent claim is not patentable by the preponderance of the evidence.
`
`C. Obviousness
`
`17.
`
`I understand that for a patented invention to be obvious under section 103 of
`
`the patent law, the challenger must identify prior art references that alone or in
`
`combination would have rendered the claimed invention obvious to one of ordinary
`
`skill in the art at the time of the invention.
`
`Page 8 of 31
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`18. For a claim to be found obvious, every claim limitation must be found
`
`present in the combination of the prior art references before the obviousness
`
`analysis proceeds.
`
`19.
`
`I understand that the factors that should be assessed in the obviousness
`
`analysis include at least: (1) the scope and content of the prior art; (2) the
`
`differences between the prior art and the claim at issue; (3) the level of ordinary
`
`skill in the art; and (4) objective evidence as indicia of nonobviousness.
`
`20.
`
`I further understand that the obviousness inquiry must guard against slipping
`
`into use of hindsight and resist the temptation to read into the prior art the
`
`teachings of the invention at issue. Isolated elements from the prior art should not
`
`be picked and chosen and then combined using the invention as a blueprint if such
`
`a combination would not have been obvious at the time of the invention.
`
`21.
`
`It is my understanding that a reason must be shown that would have
`
`prompted a person of ordinary skill in the art to combine known elements in the
`
`fashion claimed by the patents at issue. Combinations on obviousness grounds
`
`cannot be sustained by mere conclusory statements; instead, there must be some
`
`articulated teaching, suggestion, or motivation with some rational underpinning to
`
`support the legal conclusion of obviousness.
`
`Page 9 of 31
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`22.
`
`I understand that prior references as a whole need to be considered,
`
`including aspects that teach away from a claimed invention which may rebut
`
`showing of obviousness.
`
`23.
`
`I also understand that if a combination of two or more prior art references
`
`are used to render a claimed invention obvious, there must be a reasonable
`
`expectation of success in making or practicing the claimed invention based on such
`
`combination. The combination cannot modify a prior art reference such that it
`
`would render the reference unsatisfactory for its intended purpose or change the
`
`principle of operation of the reference.
`
`24.
`
`I understand that it is impermissible to use the patent as a template (and
`
`reason) for combining prior art references as that would be applying hindsight.
`
`The ordinary skilled artisan would have to be motivated to combine references to
`
`create the combination of features required by the patent independent of the patent.
`
`25.
`
`In addition, I understand the obviousness analysis cannot discount at the
`
`time of invention, the inventor’s insights, and willingness to confront and
`
`overcome obstacles, and even serendipity where the pathway to the invention
`
`seems to follow the logical steps to produce these patented properties.
`
`26.
`
`I understand that in making a determination on obviousness, one must also
`
`consider secondary considerations or objective evidence that may indicate
`
`Page 10 of 31
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`
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`nonobviousness. I understand that these secondary considerations help illuminate
`
`the subjective determination involved in the hypothesis used to draw the legal
`
`conclusion of obviousness based upon the first three obviousness inquiries.
`
`27.
`
`It is my understanding that objective considerations focuses attention on
`
`economic and motivational issues rather than technical issues, and is therefore
`
`more judicially cognizable in assessing patent validity than are the highly technical
`
`facts often present in patent litigation. I also understand that objective
`
`considerations may be the most pertinent, probative, and revealing evidence
`
`available to the decision maker in reaching a conclusion about obviousness. Under
`
`certain circumstances,
`
`the evidence of secondary considerations may be
`
`particularly strong and entitled to such weight that it may be decisive.
`
`28.
`
`I understand that examples of secondary considerations that must be
`
`considered as part of an obviousness inquiry include:
`
`(1) The invention’s commercial success - Were products covered by the
`claim commercially successful due to the merits of the claimed
`invention rather than due to advertising, promotion, salesmanship, or
`features of the product other than those found in the claim?
`
`
`(2) Long felt but unresolved needs - Was there long felt need for a
`solution to the problem facing the inventors, which was satisfied by
`the claimed invention?
`
`
`(3) The failure of others - Did others try, but fail, to solve the problem
`solved by the claimed invention?
`
`
`(4)
`Page 11 of 31
`
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`Skepticism by experts - Did experts and those skilled in the art
`
`
`
`express skepticism that a particular solution would solve the problem
`with which the art was faced?
`
`Praise by others - Did others in the field praise the claimed invention?
`
`
`(5)
`
`(6) Unexpected results - Did the claimed invention achieve unexpectedly
`superior results over the closest prior art?
`
`
`(7) Recognition of a problem – Was the problem or the source of the
`problem solved by the claimed invention known in the art?
`
`
`(8) Copying of the invention - Did others copy the claimed invention?
`
`(9) Commercial acquiescence and licensing - Did others accept licenses
`under the patent because of the merits of the claimed invention,
`attempt to design around the invention, or simply refraining from
`action?
`
`
`V. ONE OF ORDINARY SKILL IN THE ART
`
`29.
`
`I have considered what was reasonably known by one of ordinary skill in the
`
`art as of the effective filing date of the ‘034 Patent, which I understand to be
`
`October 31, 2001.
`
`30.
`
`In this case, a person of ordinary skill in the art (“POSITA”) would have at
`
`least a bachelor’s degree in electrical engineering, computer science, physics, or
`
`other related field of study and at least two years of relevant work experience in the
`
`automotive industry. A POSITA would have a working understanding of control
`
`systems and associated components used within the automotive industry and would
`
`have relevant work experience with product development and design in the
`
`Page 12 of 31
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`
`
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`automotive industry. A POSITA would have knowledge of vehicle attributes and
`
`operating conditions necessary to determine the necessary headlamp directional
`
`control responses, and how to effectuate those responses. I meet all of these have
`
`an understanding of vehicle systems dynamics and control for developing the
`
`operational architecture of such a system.
`
`VI. THE ‘034 PATENT
`
`31.
`
`I understand that the named inventors of the ‘034 Patent, entitled
`
`“Automatic Directional Control System for Vehicle Headlights,” were engineers
`
`working at Dana Holding Corporation at the time of the invention. I understand
`
`Dana Holding Corporation to be an American manufacturer of automotive parts
`
`and supplier of a wide range of technologies for original-equipment and
`
`aftermarket products.
`
`32.
`
`I understand the ‘034 Patent issued on July 10, 2007 and was later assigned
`
`to AHT, a company unrelated to Dana Holding Corporation created to protect and
`
`enforce the patent rights of the ‘034 Patent. I understand 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. On
`
`Page 13 of 31
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`
`
`
`October 31, 2002, the patent application resulting in the ‘034 Patent was filed with
`
`the U.S. Patent and Trademark Office.
`
`33. The ‘034 Patent discloses and claims automatic directional control systems
`
`for a vehicle headlight which address several deficiencies in headlight control
`
`systems. In particular, the ‘034 Patent discloses headlight control systems which
`
`operate to adjust the beam direction of a vehicle headlight in response to two or
`
`more sensed conditions of the vehicle.
`
`34. The ‘034 Patent describes certain deficiencies in fixedly positioned
`
`headlights, such as: (1) inability to adjust beam direction upward or downward in
`
`response to the speed of the vehicle to more brightly illuminate either farther off or
`
`closer portions of the roadway; and, (2) inability to adjust beam direction to the left
`
`or right corresponding to the direction of cornering as the vehicle turns a corner,
`
`illuminating areas somewhat lateral to the vehicle.
`
`35. The control systems of the ‘034 Patent utilize at least two sensors, each of
`
`which senses at least one condition of the vehicle, including at least the steering
`
`angle and vehicle pitch. Additionally, conditions such as road speed, suspension
`
`height, rate of change of road speed, rate of change of pitch of the vehicle, and/or
`
`rate of change of suspension height of the vehicle may be sensed.
`
`Page 14 of 31
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`
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`36. Based on the disclosure in the specification, I understand that the control
`
`systems of the ‘034 Patent do not sense and are not responsive to the banking, or
`
`roll, of the vehicle or the rate of change of banking angle, or roll angle, of the
`
`vehicle are disclosed or claimed as a condition which may be sensed.
`
`37. The control systems to further comprise a controller responsive to the sensed
`
`conditions of the vehicle to generate an output signal for adjusting the beam
`
`direction of a headlight. The controller only generates the output signal upon at
`
`least one of the sensor signals representing a condition of the vehicle changing by
`
`more than a predetermined minimum threshold is exceeded. I understand the
`
`predetermined minimum threshold value as comprising a minimum magnitude or
`
`rate change of a sensed condition of the vehicle, rather than comprising a minimum
`
`time or distance value.
`
`VII. PRIOR ART REFERENCES
`
`38. Kato addresses the problem of instability of the beam irradiation range of the
`
`headlight of a motorcycle caused by changes in the pitch angle, bank angle, and
`
`steering angle of the motorcycle during operation. Kato distinguishes headlight
`
`control parameters within the motorcycle setting from that of four-wheel vehicles,
`
`stating that “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.” Kato at 4 ([0004]). Kato focuses on prevention of
`Page 15 of 31
`
`
`
`
`swaying and flattening of the beam path during operation of a motorcycle. These
`
`effects are caused by leaning of the motorcycle into turns during cornering. Kato
`
`at 4 ([0005]).
`
`39. 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]).
`
`40. The aim of Kato is 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.
`
`41. Takahashi discloses an automatic leveling device which rotates a headlight
`
`vertically to adjust for inclination of the vehicle. 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. 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
`
`Page 16 of 31
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`
`
`
`‘034 Patent – i.e., horizontal rotation of a headlight. Nor 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.
`
`42. 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. 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.
`
`Takahashi discloses a different approach than that of the ‘034 Patent to headlight
`
`control, 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.
`
`43. Uguchi is directed to a device for changing the irradiation of a fog lamp in
`
`conjunction with a steering operation. 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. 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
`
`Page 17 of 31
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`
`
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`velocity. Uguchi does not mention sensing pitch or moving the headlight vertically
`
`in a second direction as specified in the ‘034 Patent.
`
`VIII. CLAIM INTERPRETATION
`
`44.
`
`I do not believe it would be reasonable for one skilled in the art to interpret
`
`the phrase “vehicle” within the ‘034 specification to include motorcycles. I
`
`therefore believe that the broadest reasonable interpretation of “vehicle”, which the
`
`Board should also apply in this inter partes review, excludes motorcycles and other
`
`two wheeled vehicles for reasons stated throughout this declaration relating to both
`
`the content included and not included within the specification of the ‘034 Patent as
`
`well as well as to knowledge of a POSITA pertaining to relevant operating
`
`conditions associated to motorcycles as compared to cars, trucks, and other four
`
`wheeled vehicles.
`
`IX. CLAIM 7 OF THE ’034 PATENT IS NOT OBVIOUS OVER KATO
`AND TAKAHASHI
`
`45.
`
`I understand that Koito has asserted that all of the limitations of Independent
`
`Claim 7, except the threshold limitation, are disclosed in Kato while Takahashi
`
`allegedly discloses the threshold limitation. Koito concludes that it would have
`
`been obvious to a person of ordinary skill in the art to modify Kato in view of
`
`Takahashi as claimed in Independent Claim 7 since: (1) Takahashi is allegedly
`
`directed to the same field of endeavor as Kato; and, (2) since modifying Kato with
`
`Page 18 of 31
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`
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`the threshold limitation of Takahashi would advantageously “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 wrong
`
`operation of the lamp 6 caused by external disturbances.” I disagree.
`
`46.
`
`It is my opinion that one of ordinary skill in the art would not expect that a
`
`headlight control system implemented within a motorcycle would be useful to
`
`solve headlight control problems within the context of cars, trucks, and the like
`
`since motorcycles do not typically encounter the problem of the beam path of their
`
`headlight not being directed in the direction of travel of the motorcycle. This is
`
`because the headlight of a motorcycle is typically mounted to the handle bars of
`
`the motorcycle and configured to turn with the handlebars during cornering.
`
`47.
`
`It is my opinion that Kato is directed to different field of endeavor than ‘034
`
`Patent since the headlight assemblies of a motorcycle comprise a different structure
`
`from that of cars, trucks, and other similar land vehicles, particularly in regard to
`
`the manner in which the headlight is mounted. Specifically, the rotatable mounting
`
`structure of motorcycle headlights, with the headlight affixed to the movable
`
`handlebar of the motorcycle, differs greatly from the fixed mounting structure
`
`implemented with cars, trucks, and the like. The rotatable mounting of motorcycle
`
`headlights eliminates the particular problem faced by other land vehicles which is
`
`addressed by the ‘034 Patent that of the beam path of the headlight not being
`
`Page 19 of 31
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`
`
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`oriented in the direction of vehicle travel during cornering. In my opinion, these
`
`structural differences render the problem addressed by the ‘034 Patent non-existent
`
`in the motorcycle context.
`
`48.
`
`In my opinion, Kato is not “reasonably pertinent” to the problem addressed
`
`in the ‘034 Patent. A person of ordinary skill in the art would not look to
`
`motorcycle related art for a solution to the beam direction problem addressed by
`
`the ‘034 Patent. The ‘034 Patent indicates that the invention is not directed at
`
`motorcycle applications because it addresses a problem encountered by vehicles
`
`having headlights which are fixed relative to the body of the vehicle. In particular,
`
`I note the following excerpt from the ‘034 Patent:
`
`In the past, these headlights have been mounted on the vehicle in
`fixed positions relative thereto such that the beams of light are
`projected therefrom at predetermined directional aiming angles
`relative to the vehicle. Although such fixed aiming angle headlight
`systems have and continue to function adequately, they cannot alter
`the directional aiming angles of the headlights to account for
`changes in the operating conditions of the vehicle. ‘034 Patent at
`1:36-43 (emphasis added).
`
`
`This problem is inapplicable to vehicles in which the headlight assemblies are
`
`mounted to movable steering components, such as the handlebar assembly of a
`
`motorcycle, since the beams projecting from the headlight of a motorcycle is not
`
`fixed relative to the body of the vehicle. Further, the ‘034 Patent describes the
`
`ability to “adjust the aiming angle of the headlights either toward the left or toward
`
`Page 20 of 31
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`
`
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`the right (depending on the direction of the turn) such that an area that is somewhat
`
`lateral to the front of the vehicle is more brightly illuminated” as being a desirable
`
`improvement at Col. 1, Lines 51-56. Here, again, I do not understand the problem
`
`addressed as one that exists in motorcycles since they have headlight assemblies
`
`which are mounted to movable steering components which already accommodate
`
`the desirable feature described. In my opinion, the ‘034 Patent is addressed to
`
`problems encountered only by vehicles comprising headlight assemblies which are
`
`fixedly mounted relative to the body of the vehicle; not motorcycles.
`
`49. Unlike the ‘034 Patent, Kato is designed to be responsive to certain
`
`operating conditions which are paramount in the motorcycle setting but are
`
`virtually inapplicable to cars, trucks, and other similar vehicles, primarily the bank
`
`angle. The bank angle is the angle at which the vehicle is inclined about its
`
`longitudinal axis with respect to a horizontal reference plane, especially during
`
`cornering. Bank angle is an important and dynamic operating condition for
`
`vehicles that “lean” into turns, like motorcycles, for example. In motorcycle
`
`applications, the bank angle of the bike body greatly affects the beam path and
`
`beam shape of the headlight. Conversely, in cars, trucks, and the like, bank angle
`
`(commonly referred to as “vehicle roll”) is an unimportant operating condition
`
`which changes by insubstantial amounts during cornering. It has far less effect on
`
`headlamp dynamic deflections than those that are associated with motorcycles.
`
`Page 21 of 31
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`
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`Further, a dynamic beam aiming system for a car or truck could be made to be
`
`quite effective without any consideration bank angle (vehicle roll) whatsoever.
`
`50. Since the ‘034 Patent addresses problems apart from those experienced by
`
`motorcycles, bank angle is not among the operating conditions to which the
`
`headlight directional control device of the ‘034 Patent is responsive. The operating
`
`conditions listed throughout the specification and claims of the ‘034 Patent,
`
`including within the Summary of the Invention section, do not include the bank
`
`angle or vehicle roll or any equivalent thereof. See, e.g., ‘034 Patent at 2:7-13;
`
`6:65–7:7; and, Claims 3-39.
`
`51. The ‘034 Patent does not describe the systems and methods responsive to
`
`changes in the bank angle of a vehicle since the type of vehicle which “leans” into
`
`turns, namely motorcycles, are generally not implemented with headlight
`
`assemblies fixedly mounted relative to the body of the vehicle and do not
`
`encounter the problem addressed by the ‘034 Patent.
`
`52.
`
`In my opinion, no objective motivation exists to combine Kato with the
`
`teachings of Takahashi and none is provided in the Koito Petition. Koito’s
`
`proffered motivation fails to
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