Attorney Docket: 10973-0232IP1
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR 2016-00079
`
`Smith et al.
`7,241,034 B2
`July 10, 2007
`10/285,312
`October 31, 2002
`7,241,034 C1
`June 14, 2013.
`
`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Reexam. Cert. No.:
`Reexam. Cert. Date:
`
`Title:
`
`AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE
`HEADLIGHTS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`REPLY DECLARATION OF RALPH V. WILHELM, PH.D.
`
`
`
`
`
`1
`
`KOITO 1037
`Koito Manufacturing v. Adaptive Headlamp
`IPR2016-00079
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR 2016-00079
`
`Smith et al.
`7,241,034 B2
`July 10, 2007
`10/285,312
`October 31, 2002
`7,241,034 C1
`June 14, 2013.
`
`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Reexam. Cert. No.:
`Reexam. Cert. Date:
`
`Title:
`
`AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE
`HEADLIGHTS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`REPLY DECLARATION OF RALPH V. WILHELM, PH.D.
`
`
`
`
`
`1
`
`KOITO 1037
`Koito Manufacturing v. Adaptive Headlamp
`IPR2016-00079
`
`
`
`
`
`
`
`
`Attorney Docket: 10973-0232IP1
`
`1.
`
`I, Ralph V. Wilhelm, am President of Wilhelm Associates, LLC., an
`
`independent consulting firm that I founded in 2001 and that specializes in
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`automotive electronics, telematics, systems engineering, data communications
`
`between systems and devices, and product/market and business strategies.
`
`2.
`
`I have been engaged in the present matter to provide my independent
`
`analysis of the issues raised in the petition for inter partes review of U.S. Patent
`
`No. 7,241,034 (“the ’034 patent”). In connection with my analysis, I prepared a
`
`declaration that was submitted as Koito Exhibit 1019 to Petitioner Koito
`
`Manufacturing Co., Ltd.’s Petition for Inter Partes Review of the ’034 patent. My
`
`background, qualifications, and past testifying experience are described in detail in
`
`that declaration and in my curriculum vitae (AHT Exhibit 1020). Such
`
`descriptions are thus omitted here.
`
`3.
`
`I have since reviewed Patent Owner’s Response to Petition for Inter
`
`Partes Review, dated July 22, 2016, as well as the Declaration of Joe Katona (AHT
`
`Exhibit 2002) in Support of Patent Owner’s Response to Petition for Inter Partes
`
`Review. I have prepared this reply declaration of my comments and opinions in
`
`response to certain arguments and opinions presented by Patent Owner and Mr.
`
`Katona. As with my initial declaration, I received no compensation for this reply
`
`declaration beyond my normal hourly compensation ($500 per hour) based on my
`
`
`
`1
`
`
`2
`
`
`
`
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`time actually spent studying the matter and preparing this declaration, and my
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`Attorney Docket: 10973-0232IP1
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`compensation does not depend on the outcome of this inter partes review of the
`
`’034 patent.
`
`4. Mr. Katona opines 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 [sic] are disclosed
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`or claimed as a condition with may be sensed.” (AHT Exhibit 2002 at ¶36).
`
`Relatedly, he states elsewhere in his declaration that “bank angle is not among the
`
`operating conditions to which the headlight directional control device of the ‘034
`
`Patent is responsive.” (Id. at ¶50).
`
`5.
`
`I disagree. The ’034 patent does not, and does not purport to, provide
`
`an exhaustive list of “operating conditions” to which the control device can
`
`respond so as to adjust the vehicle headlight. At column 2, lines 8-13, for example,
`
`the ’034 patent (Koito Exhibit 1001) explains:
`
`One or more operating condition sensors may be provided that
`generate signals that are representative of an operating condition of
`the vehicle, such as road speed, steering angle, pitch, suspension
`height, rate of change of road speed, rate of change of steering angle,
`rate of change of pitch, and rate of change of suspension height of the
`vehicle.
`
`
`(Emphasis added). By using the phrase “such as” to introduce the list of operating
`
`conditions, the ’034 patent makes plain that the listed conditions are examples, and
`
`
`
`2
`
`
`3
`
`
`
`
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`that other types of operating conditions, such as banking angle, are not excluded.
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`Attorney Docket: 10973-0232IP1
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`6.
`
`The ’034 patent (Koito Exhibit 1001) reinforces the broad nature of
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`conditions which may be sensed at column 6, line 67 to column 7, line 9. There,
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`after again reciting a list of conditions as examples, the patent goes on to say that
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`“any other operating condition or conditions of the vehicle may be sensed and
`
`provided to the headlight directional controller 14.” (Emphasis added.) Thus,
`
`contrary to Mr. Katona’s opinion, the control systems of the ’034 patent plainly do
`
`not exclude “banking angle” or “rate of change of banking angle” from the
`
`operating conditions that may be sensed.
`
`7. Mr. Katona opines that “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.” (AHT Exhibit 2002 at ¶40).
`
`8.
`
`I disagree. None of the ’034 patent claims mentions or otherwise
`
`requires movement in “the direction of the turn and pitch of a four-wheel vehicle.”
`
`Instead, the ‘034 patent independent claims, for example, broadly recite “two or
`
`more actuators being connected to the vehicle headlight to effect movement
`
`thereof.” (See, e.g., claims 3, 7)(emphasis added). And with regard to the ’034
`
`patent specification, far from limiting the scope of the purported ’034 invention,
`
`
`
`3
`
`
`4
`
`
`
`
`
`the specification states that the algorithm used to adjust headlight orientation (1)
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`Attorney Docket: 10973-0232IP1
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`“can be any desired relationship that relates one or more operation conditions of
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`the vehicle to one or more angular orientations of the headlight,” (2) that the
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`“invention is not intended to be limited to any particular relationship,” and (3) that
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`the relationship “may, if desired, vary from vehicle to vehicle in accordance with a
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`variety of factors, including relative size and performance characteristics of the
`
`vehicle or any other desired condition.” (6:47-61). The ’034 patent further states
`
`that the “invention may be practiced with any headlight that is adjustable in any
`
`single direction or multiple directions of movement, whether up/down, left/right,
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`or any other direction,” (3:22-25). In sum, there is simply no valid basis in the
`
`’034 patent specification or claims for the purported swivel-direction distinction
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`identified by Mr. Katona.
`
`9.
`
`Moreover, both the ’034 patent and Kato disclose “pitch angle”
`
`corrections, which, contrary to Mr. Katona’s opinion, are indeed reverse-angle
`
`corrections. Kato discloses, for example, that “when the pitch angle is changed by
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`the inclination of the vehicle body, the beam irradiation range of the head light is
`
`immediately corrected by suppressing the vertical movement of the optical axis of
`
`the headlight.” (Kato Exhibit 1007 (Certified translation of Kato), ¶8)(emphasis
`
`added). Similarly, the ’034 patent describes that “pitch variations can alter the
`
`angle at which the beam of light projects from the headlight 11 in the up and down
`
`
`
`4
`
`
`5
`
`
`
`
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`direction relative to a horizontal reference position or plane” and that [t]he
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`Attorney Docket: 10973-0232IP1
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`automatic directional control system 10 can be responsive to such pitch variations
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`for operating the up/down actuator 12 to maintain the angle at which the beam of
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`light projects from the headlight 11 in the up and down direction relatively
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`constant to the horizontal reference position or plane.” (Koito Exhibit 1001 at
`
`12:3-13)(emphasis added). Thus, contrary to Mr. Katona’s opinions concerning
`
`the supposedly different “aims” of Kato and the ’034 patent, not only do the ’034
`
`patent and Kato reference both describe correcting for some of the same
`
`conditions—e.g., changes in pitch angle—the very corrections for those conditions
`
`can involve moving the headlamp in an angle opposite the path of movement of the
`
`vehicle.
`
`10. With respect to the Takahashi reference, Mr. Katona opines that:
`
`“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.”
`
`
`(AHT Exhibit 2002 at ¶42).
`
`
`
`5
`
`
`6
`
`
`
`
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`
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`Attorney Docket: 10973-0232IP1
`
`
`11.
`
`I disagree with the above description of Takahashi’s conditions for
`
`illumination adjustment, particularly Mr. Katona’s assessment 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,” and that Takahashi “rel[ies] 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.” Contrary to Mr. Katona’s
`
`statements at paragraph 22 of his declaration, Takahashi, just like the ’034 patent,
`
`describes (and relies) on the magnitude of the change in sensor signal in
`
`determining whether to correct illumination direction.
`
`12. More specifically, Takahashi describes that “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 may be
`
`corrected.” (Koito Exhibit 1008 at 9:16-28)(emphasis added).
`
`13. With respect to the meaning of “amount of variations,” Takahashi
`
`depicts (Figure 8) “a graphical representation in which, when the vehicle runs
`
`down along a downhill slope from a road having small gradient and runs along for
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`a short time along the road having small gradient and, after then, it stops, there are
`
`
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`6
`
`
`7
`
`
`
`
`
`shown the respective amounts of variations with time in the output level V of the
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`Attorney Docket: 10973-0232IP1
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`height sensor.” (Id. at 13:6-11)(emphasis added).
`
`
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`14.
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`In Fig. 8 (upper stage), “reference character Va represents a detect
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`level detected on the downhill slope and Vb represents a detect level detected on
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`the road having a small gradient.” (Exhibit 1008 at 13:15-18). Takahashi
`
`describes that, “[i]n this example, when the vehicle runs from a road having a
`
`small gradient into a downhill slope the amount of variations in the output level V
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`of the height sensor is equal to or more than a reference value and such high
`
`
`
`7
`
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`8
`
`
`
`
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`variation amount state continues for a time equal to a judging time Ts or longer.”
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`Attorney Docket: 10973-0232IP1
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`(Id. at 13:31-14:2). It further states that “when the amount of variations with time
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`of the detect signal of the vehicle posture detect signal 2 is equal to or larger than a
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`reference value … the lamp 6 may be corrected in accordance with the detect
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`signal of the vehicle posture detection device.” (Id. at 8:26-32). The “amount of
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`variations” thus represents the change in the output level V of the height sensor
`
`between Va and Vb—i.e., a magnitude of change in the height sensor signal.
`
`15. Mr. Katona concedes as much about the Takahashi disclosure later on
`
`in his declaration. At paragraph 58, he opines:
`
`“I understand Takahashi as teaching prevention of correction of the
`illumination direction of a headlight unless and until two separate
`thresholds are met. See Takahashi at 9:16-28. First, the variation of
`the detect signal indicating the vehicle posture (or pitch) must
`exceed a first reference amount. Then, the excessive state must
`continue for at least a predetermined threshold amount of time, even
`though the time delay could be set for a minimum amount of time.
`Regardless of the amount of time set, only once both of these
`thresholds are simultaneously satisfied will
`the controller of
`Takahashi act to correct the direction of the headlight.”
`
`(Emphasis added). I agree with the above statements by Mr. Katona regarding
`
`what Takahashi teaches.
`
`16. Mr. Katona opines that “the broadest reasonable interpretation of
`
`“vehicle,” excludes motorcycles and other two wheeled vehicles.” (AHT Exhibit
`
`2002 at ¶44).
`
`
`
`8
`
`
`9
`
`
`
`
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`17.
`
`
`I disagree. One having ordinary skill in the art, affording the broadest
`
`Attorney Docket: 10973-0232IP1
`
`reasonable interpretation to the claims consistent with the ’034 patent specification,
`
`would have interpreted the claim term “vehicles” to be inclusive—not exclusive—
`
`of two-wheeled vehicles, such as motorcycles. First, the ’034 patent claims
`
`themselves merely recite the terms “vehicle” and “vehicle headlight,” and are
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`completely silent regarding the number of wheels, if any, such a vehicle must have.
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`There is no basis in the claim language itself to exclude two-wheeled vehicles from
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`the scope of the claimed vehicles.
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`18. Second, the ’034 specification is highly consistent with an
`
`interpretation of “vehicle” that includes two-wheeled vehicles. Far from including
`
`statements limiting the scope of “vehicles” to two-wheeled vehicles, the ‘034
`
`patent broadly describes “vehicles” as encompassing “[v]irtually all land vehicles,
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`and many other types of vehicles (such as boats and airplanes, for example).”
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`(Koito Exhibit 1001 at 1:20-21). Elsewhere, in describing FIG. 1, the ‘034 patent
`
`states that the “illustrated headlight 11 is . . . intended to be representative of any
`
`device that can be supported on any type of vehicle for the purpose of illuminating
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`any area, . . .” (Id. at 2:66-3:3) And the ’034 patent’s described “field of
`
`invention” refers generally “to headlights that are provided on vehicles,” and “to an
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`automatic directional control system for such vehicle headlights” (Id. at 1:15-19).
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`By contrast, the terms “four-wheeled vehicle” and “motorcycle” are not mentioned
`
`
`
`9
`
`
`10
`
`
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`
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`anywhere in the ‘034 patent. Nothing in the stated “field of invention,” or
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`Attorney Docket: 10973-0232IP1
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`elsewhere in the ‘034 patent, would support excluding two-wheeled vehicles from
`
`the claims.
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`19.
`
`I also note that, during prosecution of the ‘034 patent application, the
`
`applicant submitted, in an Information Disclosure Statement (“IDS”) (Koito
`
`Exhibit 1003, at 46-47), various prior art references relating to headlight control
`
`devices for motorcycles. These prior art references are listed on the ‘034 patent
`
`among the References Cited (Koito Exhibit 1001, par. (56)). See, e.g., U.S. Patent
`
`Nos. 3,939,339 (Koito Exhibit 1029, title); 4,024,388 (Koito Exhibit 1030 at title);
`
`4,833,573 (Koito Exhibit 1031 at 1:40-41); 4,868,720; (Koito Exhibit 1032,
`
`abstract); 4,870,545 (Koito Exhibit 1033 at title); 5,158,352 (Koito Exhibit 1034 at
`
`1:6-11); 5,426,571 (Koito Exhibit 1035 at title). Applicant’s submission of
`
`“motorcycle” references are yet another reason that a person of ordinary skill in the
`
`art at the time of the invention would not have interpreted “vehicle” in the patent to
`
`exclude motorcycles. For at least the foregoing reasons, I disagree with Mr.
`
`Katona’s opinion that “vehicles” would be interpreted so as to exclude two-
`
`wheeled vehicles. In fact, if a person of ordinary skill in the art at the time of the
`
`purported ’034 invention were asked how many wheels a “vehicle” could have, in
`
`my opinion the consistent answer would be that a vehicle can have any number of
`
`wheels, including zero wheels (e.g., for a boat), two, three, four wheels or more,
`
`
`
`10
`
`
`11
`
`
`
`
`
`depending upon the vehicle use and purpose for transportation.
`
`Attorney Docket: 10973-0232IP1
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`20. Mr. Katona opines 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.” (AHT Exhibit 2002 at ¶46).
`
`21.
`
`I disagree. In fact, Mr. Katona ignores that Kato describes the very
`
`mounting structure he argues is inapplicable to motorcycles. Specifically, after
`
`describing a motorcycle headlight control device that includes sensors and a
`
`control unit to “correct[] the angle of the optical axis through the actuator” (Koito
`
`Exhibit 1007 at ¶[0011]), Kato states that the control device “is applied to a
`
`motorcycle where the headlight is fixed to the vehicle body” (¶[0012]). And after
`
`discussing an embodiment in which the headlight is fixed to the steering wheel
`
`(¶¶[0031]-[0032]), Kato describes an implementation in which the headlight “is not
`
`fixed to the steering wheel (when fixed to the vehicle body)” (¶[0033]). Kato thus
`
`describes the very type of mounting structure that Mr. Katona alleges is applicable
`
`only to four-wheeled vehicles.
`
`
`
`11
`
`
`12
`
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`
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`22.
`
`
`In similar fashion, Mr. Katona opines that “Kato is directed to
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`Attorney Docket: 10973-0232IP1
`
`different field of endeavor than ’034 Patent” since, in his view, “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.” (AHT Exhibit 2002 at ¶47).
`
`23.
`
`In making the above statements Mr. Katona is doubly wrong. First, as
`
`stated above, Kato describes the very type of fixed mounting structure that Mr.
`
`Katona alleges is applicable only to four-wheeled vehicles. (See paragraph 21).
`
`Second, the Kato reference, which describes headlight control devices for
`
`automatically adjusting a motorcycle headlight’s optical axis (¶0001, ¶0007,
`
`¶0011, ¶0016), is plainly from the same field of endeavor as the ’034 patent:
`
`vehicle headlight direction control. The appropriate field of endeavor of the ’034
`
`patent is vehicle headlight direction control.
`
`24. Mr. Katona opines that “Kato is not “reasonably pertinent” to the
`
`problem addressed in the ’034 Patent [because] 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.” (AHT Exhibit 2002 at ¶48). Once again,
`
`Mr. Katona states in this regard that 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.” (Id.)
`
`
`
`12
`
`
`13
`
`
`
`
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`25.
`
`
`I disagree. Kato is plainly pertinent to at least the following problem
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`Attorney Docket: 10973-0232IP1
`
`addressed by 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.
`
`(1:35-43) (emphasis added). Kato describes a vehicle headlight control system that
`
`is operable to alter the directional aiming angle of the headlight to account for
`
`changes in the operating conditions (e.g., pitch angle and steering angle) of the
`
`vehicle. In addition, with regard to Mr. Katona’s statement that fixedly mounted
`
`headlight assemblies are inapplicable to motorcycles, Mr. Katona ignores that Kato
`
`describes this very fixed mounting structure on a motorcycle, as noted in paragraph
`
`21 above.
`
`26. Mr. Katona opines that “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.” (AHT Exhibit 2002 at ¶49).
`
`27.
`
`I disagree. Mr. Katona focuses his analysis on “bank angle,” ignoring
`
`that “bank angle” is only one of several vehicle operating conditions disclosed by
`
`Kato (including, e.g., “pitch angle, bank angle, steering angle, and the like….”),
`
`
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`13
`
`
`14
`
`
`
`
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`any of which can be used by the control unit to adjust the direction of the headlight
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`Attorney Docket: 10973-0232IP1
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`(see, e.g., ¶[0011]). The other operating conditions—pitch and steering angle—are
`
`precisely the same conditions as recited in the ’034 patent claims (see, e.g., claim
`
`7, which recites “said sensed conditions including at least a steering angle and a
`
`pitch of the vehicle”; see also claim 3 (“a rate of change of the steering angle”) and
`
`4 (“a rate of change of the pitch”). That Kato also discloses additional features
`
`relating to bank angle does not render any less relevant its disclosure of precisely
`
`the same conditions as recited in the ’034 patent claims.
`
`28. Mr. Katona opines that “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.” (AHT
`
`Exhibit 2002 at ¶51).
`
`29.
`
`I disagree on multiple fronts. First, as described above, nothing in the
`
`’034 patent claims—which broadly recite “vehicles”— excludes motorcycles. (See
`
`paragraphs 17-19 above). Second, the ’034 patent broadly describes the conditions
`
`that can be sensed and nothing in the ’034 patent claims precludes “bank angle”
`
`from being sensed. (See paragraphs 5-6). Third, nothing in the ’034 patent claims
`
`mentions or requires a mounting structure that excludes a headlamp that can rotate
`
`
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`14
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`15
`
`
`
`
`
`with a steering wheel. Fourth, even if the claims were (improperly) limited to
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`Attorney Docket: 10973-0232IP1
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`fixedly mounted headlight assemblies, Mr. Katona ignores that motorcycles may
`
`have such assemblies, as expressly described for a motorcycle by the Kato
`
`reference itself. (See paragraph 21). Thus, even if it were true that the claims were
`
`so limited, that would not be a proper basis to exclude motorcycles from the scope
`
`of the ’034 patent claims. Finally, as noted above, each of “bank angle,” “pitch”
`
`and “steering angle” is a vehicle operating condition disclosed by Kato, any of
`
`which can be used by the Kato control unit to adjust the direction of the headlight
`
`(see, e.g., ¶[0011]). The fact that the ’034 patent expressly mentions two of these
`
`conditions—pitch and steering angle—as examples of sensed conditions, but does
`
`not expressly mention the third—bank angle—is not a valid basis to exclude
`
`motorcycles from the scope of the claims. This is particularly true in view of the
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`open-ended way the ’034 patent describes the conditions that can be sensed.
`
`30. Mr. Katona opines that “Takahashi is applicable to a different field of
`
`endeavor than Kato” and that “[t]he Figures and description of the invention of
`
`Takahashi indicate … that Takahashi is applicable in the context of cars, trucks,
`
`rather than in the context of motorcycles.” (AHT Exhibit 2002, ¶53, citing
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`Takahashi Fig. 2, 4:18-19 (describing a schematic view of a vehicle” showing a 4-
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`wheeled car) and 1:14-24 (referring to “number of [vehicle] occupants” and “loaded
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`condition of loads on board the vehicle”).
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`31.
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`I disagree. In my opinion, Takahashi is from the same field of
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`Attorney Docket: 10973-0232IP1
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`endeavor as Kato: vehicle headlight direction control. Although Takahashi’s FIG.
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`2 illustrates an example of an automobile, there is nothing in Takahashi suggesting
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`its disclosure is limited to four-wheel vehicle headlights or that it cannot be used
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`for motorcycle headlights. And with regard to Takahashi’s description of “a
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`number of [vehicle] occupants” and vehicle “loads,” not only are such descriptions
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`just examples of what may affect vehicle posture, they apply equally to
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`motorcycles and 4-wheeled vehicles, as load and number of occupants may vary in
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`both motorcycles and four-wheeled vehicles. These statements thus do not support
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`the proposition that Takahashi is applicable only in the context of four-wheeled
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`vehicles.
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`32. Mr. Katona opines that he “understand[s] Kato to be directed at
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`preventing ‘flattening of the irradiation range of the headlight’ of a motorcycle
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`during cornering since [sic] ‘when the vehicle body is tilted in the direction of
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`the bank angle.’” (AHT Exhibit 2002 at ¶54).
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`33.
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`I disagree. As noted above in paragraph 27, bank angle is just one of
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`several vehicle operating conditions disclosed by Kato, any of which can be used
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`by the control unit to adjust the direction of the headlight (see, e.g., ¶[0011]). The
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`other operating conditions—pitch and steering angle—are the same conditions as
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`recited in the ‘034 patent claims.
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`34. Mr. Katona acknowledges in paragraph 55 of his declaration that, as
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`Attorney Docket: 10973-0232IP1
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`noted in Kato, “the pitch angle of a motorcycle more likely changes due to
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`acceleration or deceleration of speed and unevenness of the road surface
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`compared to four-wheel vehicle.” But Mr. Katona further opines that “the device
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`of Kato would be rendered, undesirably, less responsive to changing conditions
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`experienced by the motorcycle during operation if implemented with the threshold
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`of Takahashi.” (Id. at ¶56).
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`35.
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`I disagree with Mr. Katona’s opinion regarding the undesirability of
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`combining Kato with Takahashi. Kato does not state or suggest that changes in
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`pitch angle due to acceleration/deceleration and road unevenness are irrelevant to
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`four-wheel vehicles. Instead, the disclosure from Kato relied upon by Mr. Katona
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`indicates that certain problems that can occur with four-wheeled vehicles are
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`exacerbated for motorcycles. This suggests that the problems addressed by
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`Takahashi, including changes in the illumination direction of a vehicle lamp
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`caused “when the road gradient varies suddenly” (7:13-17), would be even more
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`prevalent in motorcycles than in four-wheeled vehicles. If anything, the disclosure
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`of Kato suggests that a headlight control device such as described by Takahashi,
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`which corrects the illumination direction of a vehicle lamp based on detection of
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`the vehicle’s posture or inclination “when the road gradient varies suddenly,”
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`would be highly relevant to Kato because variations and changes in the evenness of
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`17
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`18
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`the road are precisely one of the problems addressed by Takahashi.
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`Attorney Docket: 10973-0232IP1
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`36.
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`In other words, although Kato describes a motorcycle and Takahashi
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`describes a four-wheel vehicle, the problem of inadvertent correction of the lamp
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`illumination direction is common to both types of vehicles: motorcycles and four-
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`wheel vehicles. The fact that inadvertent headlamp correction (which is addressed
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`by Takahashi) is a problem more prevalent in motorcycles would have provided a
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`person of ordinary skill in the art all the more reason to apply Takahashi’s
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`teachings to the motorcycle disclosed by Kato. Such a result would also be fully
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`consistent with Kato’s stated object of “stably ensur[ing] a beam irradiation range
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`of a headlight even when pitch, bank, steering angle or the like change while
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`driving a motorcycle.” (Koito Exhibit 1007, ¶[0006])(emphasis added).
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`37. Mr. Katona opines that he “understand[s] Kato to include the
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`advantageous feature of immediate correction of the beam irradiation range of the
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`headlight in response to change in the pitch angle of the motorcycle body.
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`Implementation of a threshold, as taught by Takahashi, would prevent this
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`immediate correction.” (Id. at ¶57)(citations omitted). Relatedly, Mr. Katona
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`opines that “implementing Kato with the threshold of Takahashi yields a device
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`that would: (1) ignore inclinations of the motorcycle body of magnitudes less than
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`the reference amount; and, (2) delay headlight direction correction for inclinations
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`of the motorcycle of any magnitude, even those well above the reference amount.”
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`(Id. at ¶58).
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`Attorney Docket: 10973-0232IP1
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`38.
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`I disagree with these opinions. The stated “Object of the Invention”
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`of Kato is “to provide a headlight optical axis control device that can stably ensure
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`a beam irradiation range of a headlight even when pitch, bank, steering angle or the
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`like change while driving a motorcycle.” (Koito Exhibit 1007 at ¶[0006]) Kato’s
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`stated “object” says nothing about, let alone expressing a preference for,
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`maintaining the irradiation range of the headlight beam “at all times” or achieving
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`“immediate” correction of the irradiation range. Such effects are only discussed in
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`connection with particular embodiments that appear under headings other than
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`“Object of the Invention” (Koito Exhibit 1007 at ¶¶[0001], [0008], [0039]). And
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`even in stating these effects, Kato does not criticize, discredit, or otherwise
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`discourage investigation into use of a threshold as taught by Takahashi. Kato
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`simply states that such effects result from certain described embodiments.
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`39. Similar to Kato’s goal of “stably ensur[ing] a beam irradiation range
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`of headlight,” Takahashi describes a goal of “prevent[ing] the illumination
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`direction … from being corrected inadvertently when a sudden change in the
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`posture of the vehicle occurs temporarily or due to the wrong operation of the lamp
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`6 caused by external disturbances.” (Koito Exhibit 1008 at 9:16-28)(emphasis
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`added). In addition, as explained by Takahashi, the threshold values “may be set
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`as a variable which varies according to the speeds of the vehicle” (10:1-3), and as
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`recognized by Mr. Katona, any such time delays “could be set for a minimum
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`Attorney Docket: 10973-0232IP1
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`amount of time” (AHT Exhibit 2002 at ¶58). By setting the time delays to a small
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`duration, one of ordinary skill in the art would have recognized that the
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`combination of Kato and Takahashi could achieve an improved device that
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`provides the advantages of Takahashi’s threshold feature with minimal impact on
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`other aspects of Kato’s device.
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`40.
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`In addition, the Patent Owner argues that Koito’s rationale for
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`combining the teachings of Kato and Takahashi is “conclusory” and based on
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`impermissible hindsight. (See, e.g., Response at p. 29).
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`41.
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`I disagree. As I have described in paragraphs 35 - 39 above and in my
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`first declaration (Koito Exhibit 1019) at paragraphs 60-69, the motivation to
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`incorporate the predetermined minimum threshold teaching of Takahashi into the
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`system of Kato would have been plain to one of ordinary skill in the art, at least
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`based on teachings in the Kato and Takahashi references themselves.
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`42. Mr. Katona opines that “Takahashi only discloses a single sensor for
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`change in the road gradient and a single actuator for adjusting the headlamp in a
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`[sic] vertically in a first direction, but does not mention moving the headlight in a
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`second direction as specified in the ‘034 Patent – i.e., horizontal rotation of a
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`headlight.” (AHT Exhibit 2002 at ¶41) Here, Mr. Katona ignores that the ’034
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`claims do not require that the recited predetermined minimum threshold be used to
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`limit movement of a headlight in a horizontal direction.
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`Attorney Docket: 10973-0232IP1
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`43. Mr. Katona opines that “the tiered threshold arrangement of
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`Takahashi does not meet the [’034 patent ‘threshold’] limitation since the
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`Takahashi devi
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