UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`Koito Manufacturing Co., Ltd.
`Petitioner
`
`v.
`
`Adaptive Headlamp Technologies, Inc.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034
`
`PATENT OWNER’S RESPSONE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`  
`
`
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`
`V.
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................... iv
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`BACKGROUND AND SCOPE OF THE ‘034 PATENT .............................. 4
`III. CLAIM INTERPRETATION ......................................................................... 6
`IV. PRIOR ART REFERENCES .......................................................................... 7
`A. KATO ......................................................................................................... 7
`B.
`TAKAHASHI ........................................................................................... 10
`C. UGUCHI ................................................................................................... 12
`PETITIONER’S FIRST ASSERTED GROUND ......................................... 12
`A. Kato is non-analogous prior art which may not be relied upon to
`support a finding of obviousness. ....................................................................... 15
`1.
`Kato is addressed to a different field of endeavor than the ‘034
`Patent. ............................................................................................................ 16
`2.
`Kato is not reasonably pertinent to the problem addressed by
`the ‘034 Patent. .............................................................................................. 20
`There is no motivation to combine Kato with the threshold of
`B.
`Takahashi ............................................................................................................ 24
`1.
`Consideration of Kato in its entirety belies Petitioner’s
`proffered motivation to modify Kato with the threshold of Takahashi. ........ 25
`2.
`Kato teaches against modification to implement a threshold as
`taught by Takahashi. ...................................................................................... 28
`Claim 7 is patentable over the combination of Kato and Takahashi
`C.
`since the modified device does not meet all limitations of Independent
`Claim 7. ............................................................................................................... 31
`VI. PETITIONER’S EIGHTH ASSERTED GROUND ..................................... 35
`A. Kato is non-analogous prior art which may not be relied upon to
`support a finding of obviousness. ....................................................................... 37
`B.
`There is no motivation to combine Kato with the threshold of
`Uguchi ................................................................................................................. 38
`
` 
` 
`
` 
`
`Page ii 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`1.
`Consideration of Kato and Uguchi in their entireties belies
`Petitioner’s proffered motivation to modify Kato with the threshold of
`Uguchi. ........................................................................................................... 38
`2.
`Kato teaches against modification to implement a threshold as
`taught by Uguchi. ........................................................................................... 40
`VII. PETITIONER’S ASSERTED GROUNDS 2-7, 9 AND 10 .......................... 43
`VIII. CONCLUSION .............................................................................................. 44
`CERTIFICATE OF SERVICE ................................................................................ 45 
`
`
`
`
`
`
`
`
` 
` 
`
` 
`
`Page iii 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`
`TABLE OF AUTHORITIES
`
`CASES
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ..................................................................... 31
`
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) ..................................................................... 32
`
`
`Ex parte Levengood,
`28 USPQ2d 1300 (B.P.A.I. 1993) …………………………………..... 24, 37
`
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ........................................................................................... 15
`
`
`Hartness Int'l, Inc. v. Simplimatic Eng'g Co.,
`819 F.2d 1100, 1108 (Fed. Cir. 1987) …………………………………12, 35
`
`
`In re Abele,
`684 F.2d 902, 910 (CCPA 1982) ………………………………………12, 35
`
`
`In re Antle,
`444 F.2d 1168 (CCPA 1971) ………………………………………………19
`
` 
`In re Bigio,
`381 F.3d 1320, 1325 (Fed. Cir. 2004)…………………………… 3, 15, 16, 20
`
`
`In re Clay, 966 F.2d 656
`(Fed. Cir. 1992) ……………………………………………………… 15, 20
`
`
`In re Deminski,
`796 F.2d 436 (Fed. Cir. 1986) …………………………………….….……16
`
`In re Ellis,
`476 F.2d 1370 (CCPA 1973) …………………………………….……...…17
`
`
`In re Fine,
`
` 
` 
`
` 
`
`Page iv 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`837 F.2d 1071, 1076 (Fed. Cir. 1988) …………………………………12, 35
`
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ………………………………………… 3, 29
`
`
`In re Icon Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) …………………………………………... 20
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) …………………………………………..... 24
`
`
`In re Royka
`490 F.2d 981 (CCPA 1974) ........................................................................... 31
`
`
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) ……………………………...…….………16
`
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ………………………………………………. 29
`
`
`In re Wood,
`599 F.2d 1032 (CCPA 1979) ………………………...…………….………16
`
`
`Jones v. Hardy,
`727 F.2d 1524 (Fed. Cir. 1984) …………………………………………... 32
`
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)................................................................................. 24, 37
`
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) …………………………………………... 32
`
`
`Stevenson v. Int'l Trade Comm.,
`612 F.2d 546 (CCPA 1979)……….………………………...…………….………17
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983).………………………...…………….… 24, 32, 38
`
` 
` 
`
` 
`
`Page v 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`
`
`
`STATUTES and OTHER
`
`35 U.S.C. § 102 ........................................................................................................ 31
`
`35 U.S.C §103 ................................................................................................. 1, 15,31
`
`37 C.F.R. § 42.104 ..................................................................................................... 1
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`M.P.E.P. § 2131 ....................................................................................................... 31
`
`M.P.E.P. § 2141 ………………………………………………………………. 3, 15
`
`M.P.E.P. § 2143 ....................................................................................... 3, 24, 29, 37
`
`
` 
` 
`
` 
`
`Page vi 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`I.
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, Adaptive
`
`Headlamp Technologies, Inc. (hereinafter “AHT” or “Patent Owner”) hereby
`
`provides a Response to the Petition for Inter Partes Review, filed on October 23,
`
`2015, and the challenges therein. Inter partes review of claims 3-26, 28-32, and 35
`
`in the Reexamination Certificate of U.S. Patent No. 7,241,034 C1 (Ex. 1001; “the
`
`‘034 Patent”) of AHT is instituted by the Board’s May 5, 2016 Decision (Paper 11)
`
`in response to Koito Manufacturing Co., Ltd.’s (hereinafter “Koito” or “Petitioner”)
`
`Petition. Inter partes review of claims 33 and 34 of the ‘034 Patent was not
`
`instituted.
`
`Petitioner asserts 10 grounds for invalidation of various claims of the ‘034
`
`Patent, with each alleging obviousness under 35 U.S.C. § 103(a) in view, primarily,
`
`of Japanese Patent Application Publication H10-324191 to Kato (hereinafter “Kato”;
`
`Ex. 1007) as modified by either U.K. Published Patent Application GB-2-309-774
`
`A to Takahashi (hereinafter “Takahashi”; Ex. 1008) or Japanese Patent Application
`
`Publication H01-223042 to Uguchi (hereinafter “Uguchi”; Ex. 1012), among other
`
` 
` 
`
` 
`
`Page 1 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`references1. Each asserted ground for invalidating one or more claims of the ‘034
`
`Patent are summarized in the table, below.
`
`Ground
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`9
`
`10
`
`Claims
`7-9, 13-18, 20-21,
`23-24, 28-29, 31-
`32
`10
`
`11, 19
`
`12
`
`22
`
`25, 26
`
`30
`
`3, 6
`4
`
`5
`
`Basis
`Obviousness
`
`References
`Kato in view of Takahashi
`
`
`Obviousness
`
`Obviousness
`
`Obviousness
`
`Obviousness
`
`Obviousness
`
`Obviousness
`
`Obviousness
`Obviousness
`
`Obviousness
`
`Kato in view of Takahashi and
`Mori
`
`Kato in view of Takahashi and
`Uguchi
`Kato in view of Takahashi and
`Ichikawa
`Kato in view of Takahashi and
`Panter
`Kato in view of Takahashi and
`Suzuki
`Kato in view of Takahashi and
`Okuchi
`Kato in view of Uguchi
`Kato in view of Uguchi and
`Ishikawa
`Kato in view of Uguchi and
`Takahashi
`Asserted Grounds for Invalidation of Claims of ‘034 Patent
`
`As discussed herein as well as in the declaration of Mr. Joe Katona, attached
`
`hereto as AHT’s Ex. 2002. Petitioner’s asserted grounds for invalidation of the
`
`                                                            
`1 Petitioner has not asserted any grounds for invalidation of claims of the ‘034 Patent
`
`under 35 U.S.C. § 102, thereby effectively admitting that Kato, itself, does not
`
`anticipate and cannot invalidate any claim of the ‘034 Patent.
`
` 
` 
`
` 
`
`Page 2 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`claims of the ‘034 Patent are deficient and must be rejected. First, Petitioner’s
`
`primary reference, Kato, comprises non-analogous art with respect to the claimed
`
`invention of the ‘034 Patent. Invalidation of any claim of the ‘034 Patent as obvious
`
`in light of Kato is, therefore, improper. M.P.E.P. § 2141.01(a); In re Bigio, 381 F.3d
`
`1320, 1325 (Fed. Cir. 2004). Second, Petitioner has failed to establish a prima facie
`
`case of obviousness with regard to any claim of the ‘034 Patent since Petitioner has
`
`provided nothing more than mere conclusory statements as motivation for the
`
`combinations proffered, rather than providing some objective reason for combining
`
`Kato with Takahashi, Uguchi, or any other cited prior art reference. There exists no
`
`motivation to modify Kato with the teachings of Takahashi or Uguchi, as proffered
`
`by Petitioner, since doing so would yield a modified device unsuitable for
`
`performing the intended purpose of Kato. Since modifications rendering the prior
`
`art unsatisfactory for its intended purpose may not be relied upon to support a finding
`
`of obviousness, Petitioner’s asserted grounds for invalidating the claims of the ‘034
`
`Patent must be rejected. M.P.E.P. § 2143.01; In re Gordon, 733 F.2d 900 (Fed. Cir.
`
`1984). Lastly, the modified device produced via combining Kato with certain
`
`features of Takahashi would not meet all of the limitations of the AHT device as
`
`claimed in Claims 3 or 7, respectively, of the ‘034 Patent. For at least these reasons,
`
`Petitioner’s asserted grounds for invalidation of the claims of the ‘034 Patent must
`
`be rejected.
`
` 
` 
`
` 
`
`Page 3 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`II. BACKGROUND AND SCOPE OF THE ‘034 PATENT
`
`The two 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. Dana Holding Corporation is an American
`
`manufacturer of automotive parts and supplier of a wide range of technologies for
`
`original-equipment and aftermarket products. The ‘034 Patent issued on July 10,
`
`2007 and was later assigned to AHT, a company unrelated to Dana Holding
`
`Corporation created to protect the patent rights of the ‘034 Patent. The ‘034 Patent
`
`claims priority to three provisional applications, Appl. No. 60/335,409 filed on
`
`October 31, 2001, 60/356,703 filed on February 13, 2002, and 60/369,447 filed on
`
`April 2, 2002, but was conceived and actually reduced to practice prior to that time.
`
`Ex. 1001, Title Page; Ex. 1002, Title Page.
`
`AHT has submitted the declaration, Mr. Joe Katona, who is an expert in the
`
`field of automotive design and development. See Ex. 2002. Mr. Katona has
`
`explained how a person of ordinary skill in the art (“POSITA”) would view the scope
`
`of the ‘034 Patent and the prior art the time of the invention with respect to each
`
`ground of rejection. A POSITA 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
`
` 
` 
`
` 
`
`Page 4 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`components used within the automotive industry; and, relevant work experience
`
`with product development and design in the automotive industry. Ex. 2002 at ¶30.
`
`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. Ex. 2002 at ¶30.
`
`The ‘034 Patent discloses and claims automatic directional control systems
`
`for a vehicle headlight which address several deficiencies in headlight control
`
`systems. Ex. 2002 at ¶33. 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. Ex. 2002 at ¶33. The ‘034 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. Ex. 2002 at ¶34.
`
`The claimed control systems 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. Ex. 2002 at ¶35. Additionally, conditions such as road speed, suspension
`
`height, rate of change of road speed, rate of change of pitch of the vehicle, and/or
`
` 
` 
`
` 
`
`Page 5 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`rate of change of suspension height of the vehicle may be sensed. Ex. 2002 at ¶35.
`
`Notably, neither banking of the vehicle nor the rate of change of banking angle of
`
`the vehicle are disclosed or claimed as a condition which may be sensed. Ex. 2002
`
`at ¶36, 44.
`
`The claimed systems comprise a controller responsive to the sensed
`
`conditions of the vehicle to generate an output signal for adjusting the beam direction
`
`of a headlight. Ex. 2002 at ¶37. As claimed, 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. Ex. 2002
`
`at ¶37 (emphasis added). Importantly, the predetermined minimum threshold value,
`
`as claimed, must comprise a minimum magnitude or rate change of a sensed
`
`condition of the vehicle, rather than comprising a minimum time or distance value.
`
`Ex. 2002 at ¶37 (emphasis added).
`
`III. CLAIM INTERPRETATION
`
`The standard for claim construction applied in this proceeding is that a claim
`
`is given its “broadest reasonable construction in light of the specification of the
`
`Patent in which it appears,” which is different from the standards applied in the
`
`related litigation. The broadest reasonable interpretation of 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 in light of the inclusion and
`
` 
` 
`
` 
`
`Page 6 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`exclusion of certain discussion throughout the specification of the ‘034 Patent, as
`
`noted throughout this Response. Ex. 2002 at ¶38.
`
`IV. PRIOR ART REFERENCES
`
`Petitioner relies upon three references, primarily, in its asserted grounds for
`
`invalidation of the claims of the ‘034 Patent. Namely, Petitioner cites to the
`
`combination of Kato in view of Takahashi, either standing alone or in concert with
`
`an additional reference, in each of Petitioner’s asserted Grounds 1-7. Petitioner cites
`
`to the combination of Kato in view of Uguchi, either standing alone or in concert
`
`with an additional reference, in each of Petitioner’s asserted Grounds 8-10. Petition
`
`at 6. The scope and content of each of these three references is described, in turn, in
`
`the following sections.
`
`A. KATO
`
`Kato is a Japanese Patent application entitled “Headlight Optical Axis Control
`
`Device for a Motorcycle.”2 Ex. 1007 at 1 (emphasis added). Kato addresses the
`
`problem of instability of the beam irradiation range of the headlight of a motorcycle
`
`                                                            
`2 When addressing Kato herein, Patent owner is referring to the certified translation
`
`provided by the Petitioner in Ex. 1007. Patent Owner reserves the right the challenge
`
`the accuracy of this translation later in this proceeding.
`
` 
` 
`
` 
`
`Page 7 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`caused by changes in the pitch angle, bank angle, and steering angle of the
`
`motorcycle during operation. Ex. 2002 at ¶38; Ex. 1007 at Abstract.
`
`Kato is inapplicable to four-wheel vehicles as 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.” Ex. 2002 at ¶38; Ex. 1007 at 4 ([0004]). Further, Kato notes the
`
`Problem to be Solved by the Invention is that the bank angle of a motorcycle during
`
`cornering causes the beam irradiation angle of the headlight to flatten and that “there
`
`is no solution effect on flattening of the irradiation range of the headlight.” Ex. 1007
`
`at 4 ([0005]).
`
`“With a motorcycle, when the vehicle body is tiled in the direction of the bank
`
`angle, the beam irradiation range of the headlight flattens.” Ex. 1007 at 4 ([0005]).
`
`“[B]ecause the device that swings the headlight to the right and left according to the
`
`steering and banking angles swings the headlight in a direction of the steering angle,
`
`i.e., the headlight is just simply swung to the right when turning right and swung to
`
`the left when turning left, there is no solution effect on flattening of the irradiation
`
`range of the headlight.” Id. Therefore, the beam irradiation range of the headlight
`
`sways without being fixed when the headlight is vertically moved according to
`
`changes in the pitch angle while driving a motorcycle.” Ex. 1007 at 4 ([0004]).
`
` 
` 
`
` 
`
`Page 8 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`Kato states it solves the problem of “stably ensur[ing] a beam irradiation range
`
`of a headlight when pitch, bank, steering angles or the like change while driving a
`
`motor cycle” by using sensors to “find a pitch [, bank, or steering] angle direction
`
`correction amount” to “correct[] the angle of the optical axis.” Ex. 1007 at 4-5
`
`([0007]-[0013]). In other words, Kato aims to determine the excess amount of pitch,
`
`bank, or steering angle that has occurred while driving the motorcycle and correct
`
`the angle of the optical axis by turning the headlight back toward the center position.
`
`Ex. 2002 at ¶39. 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. 2002 at ¶39; Ex. 1007 at 5 ([0008], [0010]).
`
`Petitioner recognizes and effectively admits that Kato does not teach the
`
`limitation “predetermined minimum threshold amount limitation” of independent
`
`Claims 3 and 7 of the ‘034 Patent, and turns to Takahashi and Uguchi to attempt
`
`read on to this limitation. However, Petitioner fails to recognize the full extent of
`
`the discrepancies between Kato and the ‘034 Patent. In particular, the aim of Kato
`
`is quite the opposite of that of the ‘034 Patent, which seeks to cause the headlights
`
`to swivel in the direction of the turn and pitch of a four-wheel vehicle to provide
`
`illumination of the road surface in the path of movement of the vehicle rather than
`
`providing for a reverse angle correction movement. Ex. 2002 at ¶40. The solutions
`
`are also quite contrasting, as the ‘034 Patent avoids minimal variations of movement
`
` 
` 
`
` 
`
`Page 9 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`of the headlight by preventing the actuators from moving the headlamp when one or
`
`more of the sensed conditions are below a predetermined minimum threshold
`
`amount, whereas Kato causes the headlight to turn back by a correction amount when
`
`a maximum optimal angle is exceeded.
`
`B. TAKAHASHI
`
`Takahashi discloses an automatic leveling device which rotates a headlight
`
`vertically to adjust for inclination of the vehicle. Ex. 2002 at ¶41; Ex. 1008 at 9. The
`
`adjustment is made so that the illumination direction of the headlight “is always in a
`
`predetermined direction,” in other words, the headlight is adjusted so that it is always
`
`in a vertically centered position. Ex. 2002 at ¶41; Ex. 1008 at 9, 12. Takahashi
`
`only discloses a single sensor for change in the road gradient and a single actuator
`
`for adjusting the headlamp in a vertically in a first direction, but does not mention
`
`moving the headlight in a second direction as specified in the ‘034 Patent – i.e.,
`
`horizontal rotation of a headlight. Ex. 2002 at ¶41. 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. Ex. 2002 at ¶41.
`
`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
`
` 
` 
`
` 
`
`Page 10 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`a reference value and that excessive state continues for a time or distance exceeding
`
`a reference value. Ex. 2002 at ¶42; Ex. 1008 at 17. The first condition involving
`
`stationary adjustments of the headlight is not relevant to the claims of the ‘034
`
`Patent. Ex. 2002 at ¶42. The second condition does not entail adjusting the headlight
`
`toward the direction of the incline or steering angle due to a change in the magnitude
`
`of a signal representative of a sensed pitch or steering angle of the vehicle as required
`
`by the claims of the ‘034 Patent. Ex. 2002 at ¶42. Rather, the second condition
`
`entails that a certain number of variations in the road gradient must occur over a
`
`period of time or distance before the headlight can be adjusted back to the
`
`predetermined centered position. Ex. 2002 at ¶41; 1008 at 15 (lns. 16-34). Thus,
`
`Takahashi discloses a markedly different approach than that of the ‘034 Patent,
`
`relying on the number and duration of changes of the signal instead of the magnitude
`
`of the signal in determining when to rotate the headlight vertically. Ex. 2002 at ¶60-
`
`61.
`
` 
` 
`
` 
`
`Page 11 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`C. UGUCHI
`
`Uguchi is directed to a device for changing the irradiation of a fog lamp in
`
`conjunction with a steering operation.3 Ex. 1012 at 1. Ex. 2002 at ¶43. Uguchi
`
`discloses that the motor of the fog lamp is operated to adjust the illumination of the
`
`fog lamp horizontally as a result of a change in speed (velocity) of the steering angle.
`
`Ex. 2002 at ¶43; Ex. 1012 at 3-4. However, Uguchi only discloses a single sensor
`
`for change of steering angle velocity and a single actuator for adjusting the fog lamp
`
`horizontally as a result in the change of steering angle velocity, and does not mention
`
`sensing pitch or moving the headlight vertically in a second direction as specified in
`
`the ‘034 Patent. Ex. 2002 at ¶43.
`
`V.
`
`PETITIONER’S FIRST ASSERTED GROUND
`
`Petitioner challenges the validity of Claims 7-9, 13-18, 20-21, 23-24, 28-29,
`
`and 31-32 of the ‘034 Patent, alleging that these claims are unpatentable as obvious
`
`in light of Kato and Takahashi. Of these, Claim 7 is the lone independent claim from
`
`which each of the other challenged claims depend from and further narrow. Since
`
`any claim depending from a nonobvious independent claim is necessarily
`
`                                                            
`3When addressing Uguchi herein, Patent owner is referring to the certified
`
`translation provided by the Petitioner in Ex. 1012. Patent Owner reserves the right
`
`the challenge the accuracy of this translation later in this proceeding.
`
` 
` 
`
` 
`
`Page 12 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`nonobvious, the arguments presented herein focus on the patentability of Claim 7
`
`over the prior art combination asserted in Petitioner’s first asserted ground. In re
`
`Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988); Hartness Int'l, Inc. v. Simplimatic Eng'g
`
`Co., 819 F.2d 1100, 1108 (Fed. Cir. 1987); In re Abele, 684 F.2d 902, 910 (CCPA
`
`1982). It follows that each of the challenged dependent claims which depend from
`
`Claim 7 are also patentable if Claim 7 is found to be nonobvious over Kato in view
`
`of Takahashi.
`
`Independent Claims 7 is presented 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;
`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
`
` 
` 
`
` 
`
`Page 13 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`said two or more actuators each being adapted to be connected to
`the vehicle headlight to effect movement thereof in accordance with
`said at least one output signal;
`wherein said two or more sensors include a first sensor and a
`second sensor; and
`wherein said first sensor is adapted to generate a signal that is
`representative of a condition including the steering angle of the
`vehicle and said second sensor is adapted to generate a signal that is
`representative of a condition including the pitch of the vehicle.
`Ex. 1002, Claim 7 (emphasis added).
`
`
`Petitioner asserts that all of the limitations of Independent Claim 7, except the
`
`threshold limitation, are disclosed in Kato, while Takahashi discloses the threshold
`
`limitation. Petition at 24-26, 32-34. Petitioner concludes that it would have been
`
`obvious to a PHOSITA to modify Kato in view of Takahashi as claimed in
`
`Independent Claim 7 because: (1) Takahashi is allegedly directed to the same field
`
`of endeavor as Kato; and, (2) since modifying Kato with 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.” Pet. at 34 (quoting Takahashi at 9).
`
`Petitioner’s proffered prior art combination of the motorcycle headlight
`
`control of Kato with the threshold of Takahashi is improper and may not be relied
`
` 
` 
`
` 
`
`Page 14 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`upon to support a finding that Claim 7 of the ‘034 Patent is obvious. First, the prior
`
`art combination is improper since it comprises non-analogous prior art. Second,
`
`even if each of Kato and Takahashi were analogous to the claimed invention of
`
`Claim 7 of the ‘034 Patent, Petitioner fails to consider important differences between
`
`the prior art and the ‘034 Patent which undermine any asserted motivation to
`
`combine Kato with Takahashi as suggested by Petitioner. For at least these reasons,
`
`Petitioner fails to establish a prima facie case of obviousness of Claim 7 as asserted
`
`in Petitioner’s First Ground.
`
`Additionally, Patent Owner respectfully asserts that Claim 7 is not obvious
`
`over the combination of Kato and Takahashi since: (1) the modified device does not
`
`meet all limitations of Independent Claim 7; and, (2) since modification of Kato with
`
`the threshold of Takahashi would frustrate an intended purpose of Kato.
`
`Independent Claim 7, and dependent Claims 8-9, 13-18, 20-21, 23-24, 28-29, and
`
`31-32 should, therefore, be deemed patentable over the prior art combination of Kato
`
`and Takahashi.
`
`A. Kato is non-analogous prior art which may not be relied upon to support
`a finding of obviousness.
`The analysis for determining obviousness under 35 U.S.C. 103 includes
`
`examination of several factual inquiries, including: determining the scope and
`
`content of the prior art; identifying the differences between the claimed invention
`
`and the prior art; ascertaining the level of ordinary skill in the pertinent art; and,
`
` 
` 
`
` 
`
`Page 15 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`consideration of any other relevant secondary considerations. Graham v. John
`
`Deere Co., 383 U.S. 1 (1966); M.P.E.P. § 2141. For obviousness, the scope and
`
`content of the prior art is limited to only that which is analogous to the claimed
`
`invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“In order for a
`
`reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the
`
`reference must be analogous art to the claimed invention”); In re Clay, 966 F.2d 656,
`
`658 (Fed. Cir. 1992). A reference is analogous to the claimed invention if: (1) the
`
`reference and the claimed invention are within the same field of endeavor; or (2) the
`
`reference is reasonably pertinent to the problem addressed by the claimed invention.
`
`Id. at 1325; In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood,
`
`599 F.2d 1032, 1036 (CCPA 1979). Here, Kato is non-analogous to the claimed
`
`invention of the ‘034 Patent since Kato is not within the same field of endeavor of
`
`the ‘034 Patent and since Kato is not reasonably pertinent to the problem addressed
`
`by the ‘034 Patent.
`
`1. Kato is addressed to a different field of endeavor than the ‘034 Patent.
`
`As noted above, prior art must be analogous to the claimed invention to
`
`support a finding of obviousness. The appropriate field of endeavor is determined
`
`by reference to explanations of the invention's subject matter as found in the
`
`embodiments, function, and structure of the claimed invention. See Wood, 599 F.2d
`
`at 1036 (confining the field of endeavor to the scope explicitly specified in the
`
` 
` 
`
` 
`
`Page 16 
`
`

`
`Case No. IPR2016‐00079 
`Patent No. 7,241,034 
`background of the invention); see also Deminski, 796 F.2d at 442. Adequate support,
`
`therefore, for the scope of the field of endeavor may be derived from the
`
`specification, claims, and the structure and function of the invention. Bigio, 381
`
`F.3d at 1326. Additionally, “it is necessary to consider 'the reality of the
`
`circumstances' - in other words, common sense - in deciding in which fields a person
`
`of ordinary skill would reasonably be expected to