UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KOITO MANUFACTURING CO., LTD.
`Petitioner
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
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`Case IPR2016-00079
`Patent 7,241,034
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`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KOITO MANUFACTURING CO., LTD.
`Petitioner
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`V.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
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`Case IPR2016-00079
`Patent 7,241,034
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`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
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`I.
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`II.
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`Case 10973-0232IP1
`Attorney Docket No: IPR2016-00079
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`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................... 1
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`PATENT OWNER RAISES ISSUES OF CLAIM INTERPRETATION
`FOR THE FIRST TIME IN ITS RESPONSE ............................................ 4
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`III. PATENT OWNER’S ARGUMENTS THAT KATO IS NON-
`ANALOGOUS ART ARE WRONG ........................................................... 4
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`A. Neither the claim language nor the ‘034 Patent’s broad description of
`“vehicles” excludes motorcycles ........................................................... 4
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`B. Kato is analogous art with respect to the subject matter of the ’034
`Patent claims .......................................................................................... 7
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`IV. PATENT OWNER’S CONCLUSION THAT THERE IS
`INSUFFICIENT MOTIVATION TO COMBINE KATO AND
`TAKAHASHI IS INCORRECT ................................................................ 13
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`V.
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`PATENT OWNER’S ARGUMENT THAT THE COMBINATION OF
`KATO AND TAKAHASHI WOULD NOT SATISFY THE CLAIMED
`“THRESHOLD” LIMITATION IS WRONG .......................................... 18
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`VI. PATENT OWNER’S CONCLUSION THAT THERE IS
`INSUFFICIENT MOTIVATION TO COMBINE KATO AND
`UGUCHI IS INCORRECT ......................................................................... 21
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`VII. PATENT OWNER DOES NOT RAISE ANY SEPARATE ISSUES
`REGARDING THE CHALLENGED DEPENDENT CLAIMS ............ 25
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`VIII. CONCLUSION ............................................................................................ 26
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`LIST OF EXHIBITS
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`EXHIBIT
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`DESCRIPTION
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`KOITO-1001 U.S. Patent No. 7,241,034
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`KOITO-1002 Reexamination Certificate, U.S. Patent No. 7,241,034 C1
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`KOITO-1003 File History for U.S. Serial No. 10/285,312
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`KOITO-1004 File History for Ex Parte Reexamination Proceedings
`90/011,011
`KOITO-1005 File History for Merged Reexamination Proceedings
`90/011,011 & 95/001,621
`KOITO-1006 Kato, Japan Patent Application Publication H10-324191
`(“Kato”)
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`KOITO-1007 Certified Translation of Kato
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`KOITO-1008 Takahashi, UK Published Patent Application GB 2 309 774
`A (“Takahashi”)
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`KOITO-1009
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`Mori et al., Japan Patent Application Publication H7-
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`164960 (“Mori”)
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`KOITO-1010 Certified Translation of Mori
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`KOITO-1011 Uguchi et al, Japan Patent Application Publication H01-
`223042 (“Uguchi”)
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`KOITO-1012 Certified Translation of Uguchi
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`KOITO-1013
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`Attorney Docket No: IPR2016-00079
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`Ishikawa et al, “Auto-Levelling Projector Headlamp
`System with Rotatable Light Shield,” SAE Technical Paper
`Series No. 930726, March 1993 (“Ishikawa”)
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`KOITO-1014 Panter, U.S. Patent No. 5,751,832 (“Panter”)
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`KOITO-1015
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`Suzuki et al., Japan Patent Application Publication H6-
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`335228 (“Suzuki”)
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`KOITO-1016 Certified Translation of Suzuki
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`KOITO-1017 Okuchi et al., U.S. Patent No. 6,193,398 (“Okuchi”)
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`KOITO-1018 Okuchi et al., U.S. Patent Application No. 09/333,686
`(“Okuchi Application”)
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`KOITO-1019 Expert Declaration of Ralph V. Wilhelm
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`KOITO-1020 Curriculum Vitae of Ralph V. Wilhelm
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`KOITO-1021 Dunning, U.S. Patent No. 982,803 (“Dunning”)
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`KOITO-1022 McVey et al., U.S. Patent No. 1,524,443 (“McVey”)
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`KOITO-1023 Schjotz et al., U.S. Patent No. 1,595,879 (“Schjotz”)
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`KOITO-1024 Yssel, U.S. Patent No. 3,316,397 (“Yssel”)
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`KOITO-1025 Fleury et al., U.S. Patent No. 3,617,731 (“Fleury”)
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`KOITO-1026 USPTO Assignment Records for U.S. Patent No. 7,241,034
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`KOITO-1027 STN on the Web Session
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`KOITO-1028 Hogrefe et al., U.S. Patent No. 6,227,691 (“Hogrefe”)
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`KOITO-1029 Alphen, U.S. Patent No. 3,939,339 (“Alphen”)
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`KOITO-1030 Skoff, U.S. Patent No. 4,024,388 (“Skoff”)
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`KOITO-1031 Miyauchi et al., U.S. Patent No. 4,833,573 (“Miyauchi”)
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`KOITO-1032 Miyauchi et al., U.S. Patent No. 4,868,720 (“Miyauchi”)
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`KOITO-1033 Hatanaka et al., U.S. Patent No. 4,870,545 (“Hatanaka”)
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`KOITO-1034
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`Ikegami et al., U.S. Patent No. 5,158,352 (“Ikegami”)
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`KOITO-1035 Jones, U.S. Patent No. 5,426,571 (“Jones”)
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`KOITO-1036
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`United States Patent and Trademark Office, Patent
`Classification Definitions for class 362 (December 2004
`Edition)
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`KOITO-1037 Reply Expert Declaration of Ralph V. Wilhelm
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`TABLE OF AUTHORITIES
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`Page
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`CASES
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`Apple Inc. v. Samsung Elecs. Co., 816 F.3d 788, 803 n.8 (Fed. Cir. 2016) .............. 9
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`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) .................................................... 7
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`In re Deminski, 796 F.2d 436, 442 n.3 (Fed. Cir. 1986) ............................................ 9
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`Galderma Labs. V. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) .............. 17, 24
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`KSR v. Teleflex, Inc., 550 U.S. 398 (2007). ................................................. 13, 16, 21
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`Sony Computer Entertainment America v. APLIX IP Holdings Corp., Case
`IPR2015-00229 .......................................................................................................... 7
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`V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) ..... 6
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`Case 10973-0232IP1
`Attorney Docket No: IPR2016-00079
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`Koito Manufacturing Co., Ltd. (“Koito” or “Petitioner”) submits this Reply
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`to Adaptive Headlamp Technologies, Inc.’s (“Patent Owner”) Response to Koito’s
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`Petition for Inter Partes Review of U.S. Patent No. 7,241,034 (the “’034 Patent”).
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`I.
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`INTRODUCTION
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`Patent Owner’s Response only serves to reinforce that the challenged claims
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`of the ’034 Patent are unpatentable and should be cancelled.
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`The Response is directed to only two of ten Grounds raised in the Petition,
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`relating to independent claims 3 and 7 (Grounds 1 and 8). Patent Owner does not
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`separately refute the unpatentability of any dependent claim (Grounds 2-7, 9 and
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`10). Even as to the Grounds it does address, Patent Owner resorts to presenting
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`erroneous claim constructions, mischaracterizing prior art, and advancing flawed
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`“teaching away” arguments that simply do not withstand scrutiny.
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`Patent Owner argues for the first time in its Response that the scope of the
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`challenged claims is limited to four-wheeled vehicles, despite that (1) the claims
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`broadly recite “a vehicle,” (2) the ’034 Patent specification describes the alleged
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`invention as pertaining to “[v]irtually all land vehicles, and many other types of
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`vehicles (such as boats and airplanes, for example),” and (3) the applicant
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`submitted art concerning two-wheeled vehicles—motorcycles—to the Patent
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`Office during prosecution. Patent Owner’s strained “four-wheel” claim
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`construction argument plainly fails, and for at least the same reasons, so does its
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`1
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`related argument that the Kato reference, which describes an adjustable motorcycle
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`headlamp, is non-analogous.
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`Similarly without merit are Patent Owner’s arguments against the
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`combinability of Kato with Takahashi or Uguchi. Patent Owner ignores, among
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`other things, that a stated object of Kato is a “device that can stably ensure a beam
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`irradiation range,” and that modifying Kato to incorporate the relevant “threshold”
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`teachings of Takahashi and Uguchi would improve and enhance Kato’s stability.
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`Indeed, ample evidence that a person of ordinary skill would have been motivated
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`to combine these references to arrive at the subject matter of claims 3 and 7 is
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`provided in both the Petition (pp.34 & 55-56) and Dr. Wilhelm’s Declarations
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`(KOITO-1019, ¶¶60-62, 105-107; KOITO-1037, ¶¶35-41, 50-54).
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`Finally, despite Patent Owner’s assertion that the combination of Kato and
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`Takahashi would not satisfy the “threshold” limitation of claim 7,1,2 Patent Owner
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` 1
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` The “threshold limitation” of claim 7 refers to the following highlighted claim
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`language: “a controller that is responsive to said two or more sensor signals for
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`generating at least one output signal only when at least one of said two or more
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`sensor signals changes by more than a predetermined minimum threshold
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`amount to prevent at least one of two or more actuators from being operated
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`2
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`acknowledges that Takahashi teaches correcting a headlight’s illumination
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`direction only when both of the following thresholds are met: (i) variation of a
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`detect signal indicating the vehicle posture, or pitch, exceeds a first threshold, and
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`(ii) an additional time-based control threshold. (See AHT-2002, ¶58) That such a
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`combined system might also include an additional time-based threshold beyond
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`what is required by claim 7 is simply of no moment to the patentability of the
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`challenged ’034 Patent claims, all of which are open-ended “comprising” claims.
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`In sum, as set forth in more detail below, Patent Owner’s futile attempts to
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`avoid cancellation of the challenged ‘034 Patent claims are without merit and
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`should be rejected.
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`continuously or unduly frequently in response to relatively small variations in at
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`least one of the sensed conditions.”
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` 2
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` In its Response (bottom p.3), Patent Owner also mentions this argument in
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`connection with claim 3. However, the grounds for obviousness of claim 3
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`asserted by Petitioner in this IPR are based on a combination of Kato and Uguchi
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`(not Takahashi), and Patent Owner does not argue here or elsewhere in its
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`Response that the combination of Kato and Uguchi would not satisfy the threshold
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`limitation of claim 3.
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`3
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`II.
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`Case 10973-0232IP1
`Attorney Docket No: IPR2016-00079
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`PATENT OWNER RAISES ISSUES OF CLAIM INTERPRETATION
`FOR THE FIRST TIME IN ITS RESPONSE
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`In its Preliminary Response, Patent Owner submitted that “the ordinary and
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`customary meaning applies to all the terms of challenged claim [sic.]” (p.14). In
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`its Institution Decision, the Board stated it was interpreting the claims using the
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`broadest reasonable interpretation in light of the specification of the patent and that
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`no express constructions of claims were necessary at that time (pp.6-7).
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`Patent Owner now argues, for the first time, that the term “vehicle,” as used
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`in the ‘034 Patent claims, “does not encompass motorcycles” (p.6), and that the
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`“threshold” limitation of claim 7 means that the controller must be responsive only
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`to sensed conditions of the vehicle and may not also be responsive to other
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`conditions such as a time threshold (p.34).
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`Petitioner disagrees with Patent Owner’s plainly incorrect interpretations of
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`the claim language and addresses these and other issues in detail below.
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`III. PATENT OWNER’S ARGUMENTS THAT KATO IS NON-
`ANALOGOUS ART ARE WRONG
`A. Neither the claim language nor the ‘034 Patent’s broad
`description of “vehicles” excludes motorcycles
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`Patent Owner contends that Kato is non-analogous art because it addresses
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`the beam irradiation range of the headlight of a motorcycle, whereas, in Patent
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`Owner’s erroneous view, the term “vehicle” as used in the ‘034 Patent “does not
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`encompass motorcycles.” (Response, p.6) Patent Owner misinterprets the term
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`4
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`“vehicle” as used in the ‘034 Patent, and also incorrectly applies the test for
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`analogous art.
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`Neither the preamble of the ‘034 Patent claims (“An automatic directional
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`control system for a vehicle headlight”) nor other language in the claims of the
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`‘034 Patent limits the claimed subject matter to four-wheeled vehicles or excludes
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`motorcycles. Indeed, the terms “four-wheeled vehicle” and “motorcycle” are not
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`mentioned in the ‘034 Patent.
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`Patent Owner’s argument that “vehicle” as used in the ‘034 Patent “does not
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`encompass motorcycles” is contrary to the ‘034 Patent’s disclosure, which broadly
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`describes “vehicles” as encompassing “[v]irtually all land vehicles, and many other
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`types of vehicles (such as boats and airplanes, for example).” (KOITO-1001, 1:20-
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`21) Likewise, in describing FIG. 1, the ‘034 Patent states that the “illustrated
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`headlight 11 is . . . intended to be representative of any device that can be
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`supported on any type of vehicle for the purpose of illuminating any area, . . .” (Id.,
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`2:66-3:3) Such statements fly in the face of Patent Owner’s contention that
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`“vehicle” as used in the ‘034 Patent somehow excludes motorcycles.
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`Further, Patent Owner’s argument is contrary to the field of invention as
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`described by the ‘034 Patent itself, which does not limit the invention to particular
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`types of vehicles and does not exclude motorcycles (Id., 1:15-19):
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`This invention relates in general to headlights that are provided on
`vehicles for illuminating dark road surfaces or other areas in the path
`of movement. In particular, this invention relates to an automatic
`directional control system for such vehicle headlights.
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`Also indicative of the fact that “vehicles” includes motorcycles and other
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`two-wheeled vehicles is that during prosecution of the ‘034 Patent application, the
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`applicant submitted, in an Information Disclosure Statement (“IDS”) (KOITO-
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`1003, at 46-47), various prior art references relating to headlight control devices
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`for such vehicles. These prior art references are listed on the ‘034 Patent among
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`the References Cited (KOITO-1001, par. (56)). See, e.g., U.S. Patent Nos.
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`3,939,339 (KOITO-1029, title); 4,024,388 (KOITO-1030, title); 4,833,573
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`(KOITO-1031, 1:40-41); 4,868,720; (KOITO-1032, abstract); 4,870,545 (KOITO-
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`1033, title); 5,158,352 (KOITO-1034, 1:6-11); 5,426,571 (KOITO-1035, title).
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`See V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005)
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`(It was proper to consider, as intrinsic evidence for claim interpretation purposes, a
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`prior art reference that was cited in an IDS and listed on the face of the patent).
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`Accordingly, consistent with the broadest reasonable interpretation, the word
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`“vehicle,” as used in the ‘034 Patent claims, should be interpreted so as not to
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`exclude motorcycles.
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`B. Kato is analogous art with respect to the subject matter of the
`’034 Patent claims
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`Under a proper interpretation of the ‘034 Patent claims as not excluding two-
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`wheeled vehicles such as motorcycles, there can be no question that Kato is
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`analogous art with respect to the subject matter of the ’034 Patent claims.
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`Yet, even if “vehicle” in the ‘034 Patent claims were interpreted as limited
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`to four-wheeled vehicles, and not interpreted to include two-wheeled vehicles such
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`as motorcycles, Kato is still analogous art.
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`The test for determining whether a prior art reference constitutes analogous
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`art to the claimed invention is: (1) whether the prior art is from the same field of
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`endeavor, regardless of the problem addressed, or (2) if the reference is not within
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`the same field of endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved. Sony Computer
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`Entertainment America v. APLIX IP Holdings Corp., Case IPR2015-00229, Paper
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`36, *14 (PTAB 2016) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
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`In the present case, Patent Owner improperly conflates the two-prong
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`analogous art test by looking to problems allegedly addressed and solved by the
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`‘034 Patent in defining the field of endeavor (see, e.g., Response, bottom of p.8,
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`where Patent Owner repeatedly refers to the “problem” “addressed by the ‘034
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`Patent” and attempts, on that basis, to argue that Kato is from a different field of
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`endeavor because it relates to motorcycles).
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`The appropriate field of endeavor of the ‘034 Patent is vehicle headlight
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`direction control. (KOITO-1037, ¶23) Kato, which describes headlight control
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`devices for automatically adjusting a motorcycle headlight’s optical axis (KOITO-
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`1007, ¶¶0001, 0007, 0011, 0016), is thus from the same field of endeavor as the
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`‘034 Patent (KOITO-1037, ¶23) and is analogous art for this reason alone.
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`Even if Kato were not within the same field of endeavor, Kato still would
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`qualify as analogous art because it is reasonably pertinent to the following problem
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`addressed by the ‘034 Patent:
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`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.
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`(1:35-43) (emphasis added) Kato describes a vehicle headlight control system that
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`is operable to alter the directional aiming angle of the headlight to account for
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`changes in the operating conditions (e.g., pitch angle and steering angle) of the
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`vehicle. (KOITO-1037, ¶25)
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`Further, Patent Owner is plainly wrong when it states that “No crossover
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`applicability exists [ ] between control devices for a motorcycle headlight and
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`8
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`those of four-wheeled vehicles” (Response, p.19). The very fact that the ‘034
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`Patent’s description refers to vehicles of all types refutes that argument. See,
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`supra, section III.A. Further, the motorcycle art submitted by the applicant in an
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`IDS during prosecution of the ‘034 Patent (see supra, section II.A) indicates that
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`automatically adjustable vehicle headlight systems applicable to motorcycles are
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`relevant to the problem addressed by the ‘034 Patent. See Apple Inc. v. Samsung
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`Elecs. Co., 816 F.3d 788, 803 n.8 (Fed. Cir. 2016) (Although submission of an IDS
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`does not constitute an “admission” that the reference listed is material prior art,
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`“the nature of the prior art listed in an information disclosure statement can be
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`informative as to the field of endeavor.”).
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`The Fields of Classification Search listed on the ‘034 Patent also indicates
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`that automatically adjustable vehicle headlight systems applicable to motorcycles
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`are relevant to the problem addressed by the ‘034 Patent. See In re Deminski, 796
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`F.2d 436, 442 n.3 (Fed. Cir. 1986) (“The nearly identical classifications of the
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`application and references in the present case are the result of the close similarity
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`in structure and function of the invention and the prior art.”) The USPTO’s
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`Classification Definitions illustrates a drawing of a motorcycle as an example for
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`U.S. Class 362/466 (KOITO-1036, p.71), which is listed in the Fields of
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`Classification Search on the ‘034 Patent (KOITO-1001, front page, ¶58), and at
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`least some of the motorcycle art submitted by the applicant in an IDS was
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`identified by the Examiner as being classified in subclass 362/466 (see entries for
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`U.S. Patent Nos. 4,833,573; 4,868,720; 5,426,571 in KOITO-1003, at 65-66). This
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`indicates that art describing headlight control devices for motorcycles, such as
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`Kato, is in the same field of endeavor and is relevant to the problem addressed by
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`the ‘034 Patent.
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`Patent Owner, nevertheless, attempts to divert attention from the clear
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`relevance of Kato by arguing (pp.18, 21) that the “mounting structure of
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`motorcycle headlights, with the headlight affixed to the movable handlebar of the
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`motorcycle, differs greatly from the fixed mounting structure implemented with
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`cars, trucks, and the like,” because the “beams projecting from the headlight of a
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`motorcycle is [sic.] not fixed relative to the body of the vehicle” (emphasis added).
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`Patent Owner completely ignores that independent claims 3 and 7 of the ‘034
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`Patent say nothing about the headlight’s mounting structure. (KOITO-1037, ¶29)
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`Further, Patent Owner ignores that Kato itself describes the very type of mounting
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`structure Patent Owner argues is inapplicable to motorcycles. (KOITO-1037,
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`¶¶21-23) Specifically, after describing a motorcycle headlight control device that
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`includes sensors and a control unit to “correct[] the angle of the optical axis
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`through the actuator” (KOITO-1007, ¶[0011]), Kato states that the control device
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`“is applied to a motorcycle where the headlight is fixed to the vehicle body”
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`(¶[0012]). Likewise, after discussing an embodiment in which the headlight is
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`fixed to the steering wheel (KOITO-1007, ¶¶[0031]-[0032]), Kato expressly
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`describes an implementation in which the headlight “is not fixed to the steering
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`wheel (when fixed to the vehicle body)” (¶[0033]). Even if Patent Owner were
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`correct (which Petitioner does not concede) that the problem addressed by the ‘034
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`Patent is “inapplicable to vehicles in which the headlight assemblies are mounted
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`to movable steering components, such as the handlebar assembly of a motorcycle”
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`(Response, p.21) (emphasis added), Kato is still highly relevant because it
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`expressly describes the very type of mounting structure that Patent Owner alleges
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`is applicable only to four-wheeled vehicles. Accordingly, not only is Kato
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`“reasonably pertinent” to the particular problem addressed by the ‘034 Patent, it is
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`highly relevant. Under either prong of the test, Kato is analogous art.
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`Patent Owner also argues, incorrectly, that Kato is not analogous art
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`because, in addition to disclosing adjusting the headlight’s optical axis based on
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`changes to pitch angle or steering angle, it discloses making adjustments based on
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`bank angle. Patent Owner argues (pp.22-24) that while banking angle is relevant
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`to motorcycles, it is not relevant to other vehicles such as cars and trucks, and that
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`the ‘034 Patent does not mention banking angle as one of the “operating
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`conditions” to which the control device is responsive. Patent Owner’s position is
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`flawed for multiple reasons.
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`11
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`First, the ‘034 Patent does not purport to provide an exhaustive list of
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`“operating conditions” to which the control device can respond so as to adjust the
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`vehicle headlight. Instead, by using the phrase “such as” to introduce the list of
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`operating conditions (KOITO-1001, 2:10), the ‘034 Patent makes it clear that the
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`listed conditions are simply examples, and that other types of operating conditions,
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`such as banking angle, are not excluded. Indeed, the ‘034 Patent explains that “any
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`other operating condition or conditions of the vehicle may be sensed and provided
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`to the headlight directional controller 14” (Id., 6:65-7:9).
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`
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`Second, Patent Owner’s focus on Kato’s disclosure of banking angle, to the
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`exclusion of Kato’s other disclosures, is a “red herring.” Banking angle is only
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`one of several vehicle operating conditions expressly disclosed by Kato, any of
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`which can be used by the control unit to adjust the direction of the headlight (see,
`
`e.g., KOITO-1007, ¶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 the reference any less
`
`relevant.
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`12
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`
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`Patent Owner further argues (p.9) that “the aim of Kato is quite the opposite
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`of that of the ‘034 Patent, which seeks to cause the headlights to swivel in the
`
`direction of the turn and pitch [of the 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.” The ‘034 Patent claims, however, say nothing about
`
`such features. (KOITO-1037, ¶¶7-9) Thus, the supposed distinction identified by
`
`Patent Owner is irrelevant.
`
`
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`For all the foregoing reasons, and those discussed in the Petition and Dr.
`
`Wilhelm’s Declarations, Kato is analogous art with respect to all the ‘034 Patent
`
`claims for which IPR is instituted.
`
`IV. PATENT OWNER’S CONCLUSION THAT THERE IS
`INSUFFICIENT MOTIVATION TO COMBINE KATO AND
`TAKAHASHI IS INCORRECT
`As explained by the Supreme Court, “any need or problem known in the
`
`field of endeavor at the time of invention and addressed by the patent can provide a
`
`reason for combining the elements in the manner claimed.” KSR v. Teleflex, Inc.,
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`550 U.S. 398, 420 (2007)(emphasis added). Thus, “if a technique has been used to
`
`improve one device, and a person of ordinary skill in the art would recognize that it
`
`would improve similar devices in the same way, using the technique is obvious
`
`unless its actual application is beyond his or her skill.” Id., at 417.
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`13
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`
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`The Petition (p.34) and Dr. Wilhelm’s Declaration (KOITO-1019, ¶¶60-62)
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`specifically addressed the motivation to combine Kato and Takahashi and pointed
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`out, among other things, that the proposed modification to Kato would have been
`
`advantageous to “‘prevent the illumination direction of the lamp [ ] from being
`
`corrected inadvertently when a sudden change in the posture of the vehicle occurs
`
`temporarily or due to the wrong operation of the lamp [ ] caused by external
`
`disturbances, . . .’” Such a result would be fully consistent with Kato’s stated
`
`object of “stably ensur[ing] a beam irradiation range of a headlight even when
`
`pitch, bank, steering angle or the like change while driving a motorcycle”
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`(KOITO-1007, ¶[0006])(emphasis added). (KOITO-1037, ¶¶35-39)
`
`Nevertheless, Patent Owner proffers several arguments as to why, in its
`
`view, there would have been no motivation to combine Kato with Takahashi.
`
`Again, Patent Owner focuses on supposed differences between motorcycles and
`
`four-wheeled vehicles and argues that Takahashi’s disclosure is not relevant to
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`Kato’s motorcycle headlight control device (pp.24-28). Those differences, to the
`
`extent they exist, do not support the conclusion that Takahashi’s disclosure is not
`
`relevant to Kato’s motorcycle headlight control device. To the contrary, a person
`
`of ordinary skill (“POSITA”) would conclude that the supposed differences relied
`
`upon by Patent Owner provide, if anything, all the more reason to modify Kato in
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`view of Takahashi.
`
`14
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`
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`
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`For example, Kato discusses various problems that its disclosure addresses,
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`including changes in pitch angle caused by acceleration/ deceleration of the vehicle
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`or caused by unevenness of the road (KOITO-1007, ¶0004). Although Kato states
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`that, as a result of “acceleration or deceleration” or “unevenness of the road,” pitch
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`angle of a motorcycle “more likely” changes “compared to four-wheel vehicles”
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`(Id.), Kato does not state or suggest that such concerns are irrelevant to four-wheel
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`vehicles. Instead, this disclosure of Kato indicates that certain problems that can
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`occur with four-wheeled vehicles are exacerbated for motorcycles. (KOITO-1037,
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`¶35) This suggests that the problems addressed by Takahashi, including changes
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`in the illumination direction of a vehicle lamp caused “when the road gradient
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`varies suddenly” (KOITO-1008, 7:13-17), would be even more prevalent in
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`motorcycles than in four-wheeled vehicles. If anything, the disclosure of Kato
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`suggests that a lamp control device such as described by Takahashi, which corrects
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`the illumination direction of a vehicle lamp based on detection of the vehicle’s
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`posture or inclination “when the road gradient varies suddenly,” would be highly
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`relevant to Kato because variations and changes in the evenness of the road are
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`precisely one of the problems also addressed by Takahashi. (KOITO-1037, ¶35)
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`Further, although Takahashi’s FIG. 2 illustrates an example of an
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`automobile, there is nothing in Takahashi suggesting its disclosure is limited to
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`four-wheel vehicle headlights or that it cannot be used for motorcycle headlights.
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`15
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`That the system described by Kato also addresses another issue (i.e., flattening of
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`the irradiation range) (¶[0005]) does not detract from the relevance of Takahashi
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`with respect to the first problem identified by Kato (i.e., changes in pitch angle).
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`See KSR 550 U.S. at 420 (holding it was error to assume a POSITA “attempting to
`
`solve a problem will be led only to those elements of prior art designed to solve the
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`same problem.”) Indeed, as explained above, Takahashi’s disclosure is highly
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`relevant.
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`Patent Owner also argues (pp.28-31) that Kato teaches against modifying
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`Kato to implement a threshold as taught by Takahashi because such a modification
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`would be contrary to various features of Kato’s headlight control device. Patent
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`Owner improperly confuses the objects or goals of Kato’s disclosure with the
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`effects or results that can be achieved in particular implementations.
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`The stated “Object of the Invention” of Kato is “to provide a headlight
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`optical axis control device that can stably ensure a beam irradiation range of a
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`headlight even when pitch, bank, steering angle or the like change while driving a
`
`motorcycle.” (KOITO-1007, ¶[0006]) Kato’s stated “object” says nothing about
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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. Instead, such effects are discussed
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`in connection with particular embodiments that appear under headings other than
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`“Object of the Invention” (KOITO-1007, ¶¶[0001], [0008], [0039]).
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`16
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`Further, contrary to Patent Owner’s arguments, Kato does not teach away
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`from incorporating Takahashi’s threshold feature. A reference “teaches away”
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`when a person of ordinary skill, upon reading the reference, would be
`discouraged from following the path set out in the reference, or would
`be led in a direction divergent from the path that was taken by the
`applicant. A reference does not teach away, however, if it merely
`expresses a general preference for an alternative invention but does
`not criticize, discredit, or otherwise discourage investigation into the
`invention claimed.
`
`Galderma Labs. V. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Kato does
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`not criticize, discredit, or otherwise discourage investigation into use of a threshold
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`as taught by Takahashi. (KOITO-1037, ¶38) Nor does Kato even express a
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`preference for maintaining the irradiation range of the headlight beam “at all
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`times” or achieving “immediate” correction of the irradiation range. (Id.) Kato
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`simply states that such effects result from certain described embodiments. (Id.)
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`
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`Patent Owner argues that modifying Kato to incorporate Takahashi’s
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`threshold feature would result in a device that delays headlight direction correction
`
`for inclinations of the vehicle. However, as explained by Takahashi, the threshold
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`values “may be set as a variable which varies according to the speeds of the
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`vehicle” (KOITO-1008, p.10, ln.1-3), and as recognized by Patent Owner’s
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`designated expert, Mr. Katona, any such time delays “could be set for a minimum
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`17
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`amount of time” (AHT-2002, ¶58). By setting the time dela
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