IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Reexam. Cert. No.:
`Reexam. Cert. Date:
`
`Title:
`
`Attorney Docket No.: 10973-0232IP1
`
`
`
`Smith et al.
`7,241,034 B2
`July 10, 2007
`10/285,312
`October 31, 2002
`7,241,034 C1
`June 14, 2013.
`
`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
`
`
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 3-26 AND 28-35
`OF UNITED STATES PATENT NO. 7,241,034 C1
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`
`
`
`

`
`Attorney Docket: 10973-0232IP1
`
`
`
`TABLE OF CONTENTS
`
`Page
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8 .................................. 1 
`A. 
`Related PTO Proceedings .................................................................... 1 
`B. 
`Litigation Involving the ‘034 Patent ................................................... 1 
`C. 
`Real Party-in-Interest .......................................................................... 3 
`D.  Designation of Counsel, Consent to Service, and
`Payment of Fees .................................................................................. 3 
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ........................ 4 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................... 4 
`Identification of Challenge Under 37 C.F.R. §
`B. 
`42.104(b) ............................................................................................. 4 
`III.  SUMMARY OF THE ‘034 PATENT ........................................................... 7 
`A. 
`The Alleged Invention of the ‘034 Patent ........................................... 7 
`B. 
`Background of the Art ......................................................................... 8 
`C. 
`Summary of the Prosecution Histories of the ‘034
`Patent & Reexamination Certificate .................................................. 11 
`1. 
`The Original Application & ‘034 Patent ................................. 11 
`2. 
`Reexamination ........................................................................ 13 
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ...................... 17 
`The Board should not decline institution on §112, ¶ 6
`grounds .............................................................................................. 18 
`Any noncompliance by the Patentees with §112, ¶6
`standards should not bar reaching a final decision on
`obviousness ....................................................................................... 19 
`IV.  GENERAL PRINCIPLES OF OBVIOUSNESS ........................................ 21 
`i
`
`D. 
`E. 
`
`II. 
`
`F. 
`
`
`
`

`
`V. 
`
`Attorney Docket: 10973-0232IP1
`
`2. 
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`CLAIMS 3-26, 28-35 ARE UNPATENTABLE OVER
`PRIOR ART ................................................................................................. 23 
`IPR Ground 1 - Claims 7, 8-9, 13-18, 20-21, 23-24,
`A. 
`28-29, 31-32 and 35 are unpatentable as obvious from
`Kato in view of Takahashi ................................................................ 24 
`All of the limitations of independent claim 7,
`1. 
`except the threshold limitation, and all
`limitations of its dependent claims 8, 14-18, 20-
`21, 23-24, 28 and 32 are disclosed in Kato ............................. 24 
`Claim Chart for Kato .............................................................. 26 
`Takahashi discloses the threshold limitation in
`claim 7 ..................................................................................... 32 
`Claims 7, 8, 14-18, 20-21, 23-24, 28 and 32 are
`unpatentable as obvious from Kato in view of
`Takahashi ................................................................................ 34 
`Takahashi also discloses the additional
`limitations in dependent claims 9, 13, 29, 31 and
`35 ............................................................................................. 35 
`Claims 9, 13, 29, 31 and 35 are unpatentable as
`obvious from Kato in view of Takahashi ................................ 37 
`IPR Ground 2 – Claim 10 is unpatentable as obvious
`from Kato in view of Takahashi and further in view of
`Mori ................................................................................................... 40 
`IPR Ground 3 – Claims 11 and 19 are unpatentable as
`obvious from Kato in view of Takahashi and further in
`view of Uguchi .................................................................................. 41 
`IPR Ground 4 – Claim 12 is unpatentable as obvious
`from Kato in view of Takahashi and further in view of
`Ishikawa ............................................................................................. 44 
`
`B. 
`
`C. 
`
`D. 
`
`
`
`ii
`
`

`
`Attorney Docket: 10973-0232IP1
`
`E. 
`
`F. 
`
`G. 
`
`H. 
`
`IPR Ground 5 – Claim 22 is unpatentable as obvious
`from Kato in view of Takahashi and further in view of
`Panter ................................................................................................. 45 
`IPR Ground 6 – Claims 25 and 26 are unpatentable as
`obvious from Kato in view of Takahashi and further in
`view of Suzuki ................................................................................... 47 
`IPR Ground 7 – Claims 30, 33 and 34 are unpatentable
`as obvious from Kato in view of Takahashi and further
`in view of Okuchi .............................................................................. 48 
`IPR Ground 8 – Claims 3 and 6 are unpatentable as
`obvious from Kato in view of Uguchi ............................................... 52 
`All of the limitations of independent claim 3 and
`1. 
`dependent claim 6 are disclosed in Kato, except
`the threshold and rate of change of steering
`angle limitations of claim 3, which are disclosed
`in Uguchi ................................................................................. 52 
`Uguchi discloses the threshold limitation and
`the rate of change of steering angle limitation in
`claim 3 ..................................................................................... 54 
`Independent claim 3 and dependent claim 6 are
`unpatentable as obvious from the combination
`of Kato and Uguchi ................................................................. 55 
`IPR Ground 9 – Claim 4 is unpatentable as obvious
`from Kato in view of Uguchi and further in view of
`Ishikawa ............................................................................................. 57 
`IPR Ground 10 – Claim 5 is unpatentable as obvious
`from Kato in view of Uguchi and further in view of
`Takahashi ........................................................................................... 58 
`VI.  CONCLUSION ............................................................................................ 59 
`
`2. 
`
`3. 
`
`I. 
`
`J. 
`
`
`
`iii
`
`

`
`Attorney Docket: 10973-0232IP1
`
`
`
`EXHIBIT LIST
`
`Exhibit No. Title of Document
`
`KOITO 1001 U.S. Patent No. 7,241,034
`
`KOITO 1002 Reexamination Certificate, U.S. Patent No. 7,241,034 C1
`
`KOITO 1003 File History for U.S. Serial No. 10/285,312
`
`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”)
`
`KOITO 1007 Certified Translation of Kato
`
`KOITO 1008 Takahashi, UK Published Patent Application GB 2 309 774 A
`(“Takahashi”)
`KOITO 1009 Mori et al., Japan Patent Application Publication H7-164960
`(“Mori”)
`KOITO 1010 Certified Translation of Mori
`
`KOITO 1011 Uguchi et al, Japan Patent Application Publication H01-223042
`(“Uguchi”)
`KOITO 1012 Certified Translation of Uguchi
`
`KOITO 1013 Ishikawa et al, “Auto-Levelling Projector Headlamp System with
`Rotatable Light Shield,” SAE Technical Paper Series No. 930726,
`March 1993 (“Ishikawa”)
`KOITO 1014 Panter, U.S. Patent No. 5,751,832 (“Panter”)
`
`KOITO 1015 Suzuki et al., Japan Patent Application Publication H6-335228
`(“Suzuki”)
`KOITO 1016 Certified Translation of Suzuki
`
`
`
`iv
`
`

`
`Attorney Docket: 10973-0232IP1
`
`Exhibit No. Title of Document
`
`KOITO 1017 Okuchi et al., U.S. Patent No. 6,193,398 (“Okuchi”)
`
`KOITO 1018 Okuchi et al., U.S. Patent Application No. 09/333,686 (“Okuchi
`Application”)
`KOITO 1019 Expert Declaration of Ralph V. Wilhelm
`
`KOITO 1020 Curriculum Vitae of Ralph V. Wilhelm
`
`KOITO 1021 Dunning, U.S. Patent No. 982,803 (“Dunning”)
`
`KOITO 1022 McVey et al., U.S. Patent No. 1,524,443 (“McVey”)
`
`KOITO 1023 Schjotz et al., U.S. Patent No. 1,595,879 (“Schjotz”)
`
`KOITO 1024 Yssel, U.S. Patent No. 3,316,397 (“Yssel”)
`
`KOITO 1025 Fleury et al., U.S. Patent No. 3,617,731 (“Fleury”)
`
`KOITO 1026 USPTO Assignment Records for U.S. Patent No. 7,241,034
`
`KOITO 1027 STN on the Web Session
`
`KOITO 1028 Hogrefe et al., U.S. Patent No. 6,227,691 (“Hogrefe”)
`
`v
`
`
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 1
`
`Koito Manufacturing Co., Ltd. (“Petitioner” or “Koito”) petitions for Inter
`
`Attorney Docket: 10973-0232IP1
`
`Partes Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims
`
`3-26 and 28-35 in the Reexamination Certificate of U.S. Patent No. 7,241,034 C1
`
`(“the ‘034 Patent”) (KOITO 1001 & 1002), and asserts that there is a reasonable
`
`likelihood that it will prevail with respect to at least one of the claims challenged in
`
`this petition (hereinafter “the Petition”).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`
`A. Related PTO Proceedings
`The ‘034 Patent claims the priority of the following provisional applications:
`
`No. 60/369,447, filed on April 2, 2002; No. 60/356,703, filed on Feb. 13, 2002;
`
`and No. 60/335, 409, filed on Oct. 31, 2001.
`
`The ‘034 Patent was subject to an ex parte reexamination, Control No.
`
`90/011,011, and an Inter Partes reexamination filed by Volkswagen Group of
`
`America, Inc., Control No. 95/001,621, which were consolidated. As a result, the
`
`‘034 patent was modified by Inter Partes Reexamination Certificate 7,241,034 C1,
`
`issued June 14, 2013. (KOITO 1002) All extant claims are in that certificate.
`
`Litigation Involving the ‘034 Patent
`
`B.
`Koito and its subsidiaries are not parties to any past or pending civil action
`
`relating to the ‘034 patent.
`
`The ‘034 patent was asserted against approximately 35 defendants in Balther
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 2
`
`Technologies, LLC v. American Honda Motor Co. Inc. et al, filed March 8, 2010 as
`
`Attorney Docket: 10973-0232IP1
`
`Civil Action No. 6-10-cv-00078 in the Eastern District of Texas. Following the
`
`filing of a Notice of Voluntary Dismissal by the Plaintiff, that case was dismissed
`
`without prejudice on May 18, 2010. Because that case was dismissed without
`
`prejudice, it cannot be relevant with respect to the 35 U.S.C. § 315(b) one year bar
`
`to filing an IPR. See, e.g., Atlanta Gas Light Co. v. Bennett Regulator Guards,
`
`Inc., IPR2015-00826, Paper 12 at 12-14 (Sept. 1, 2015) and cited decisions.
`
`Infringement of the ‘034 Patent is currently being asserted by Adaptive
`
`Headlamp Technologies, Inc., against the defendants in the civil actions in the
`
`District of Delaware listed below:
`
`Defendants
`BMW of North America, LLC
`FCA US LLC (“Chrysler”), Maserati North
`America, Inc. & Fiat Chrysler Automobiles N.V.
`General Motors LLC
`Hyundai Motor America
`Mazda Motor of North America, Inc.
`Mercedes-Benz USA LLC
`Nissan North America Inc.
`Toyota Motor Sales, U.S.A., Inc.
`Volvo Cars of North America, LLC
`
`Civil Action No.
`1-14-cv-00962
`1-15-cv-00073
`
`1-15-cv-00781
`1-15-cv-00563
`1-15-cv-00782
`1-15-cv-00075
`1-15-cv-00074
`1-15-cv-00779
`1-15-cv-00780
`
`Those cases cannot be relevant with respect to the 35 U.S.C. § 315(b) one year bar,
`
`because BMW is not in privity with or a customer of Koito and the cases against
`
`Koito customers or related companies were filed in 2015, less than one year ago.
`
`
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 3
`
`
`Attorney Docket: 10973-0232IP1
`
`C. Real Party-in-Interest
`Koito Manufacturing Co., Ltd. is the sole real party-in-interest (“RPI”) in
`
`this matter. 37 C.F.R. § 42.8(b)(1). No other company controls Koito, and no other
`
`company controls Koito’s actions in connection with this Petition. Koito is paying
`
`the entire cost of this Petition and this proceeding. All decisions regarding this IPR
`
`are being made solely by Koito and its counsel.
`
`D. Designation of Counsel, Consent to Service, and Payment of
`Fees
`
`Petitioner provides the following designation of counsel. 37 C.F.R. §
`
`42.8(b)(3):
`
`LEAD COUNSEL
`Samuel Borodach (Reg. No. 38,388)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 212-765-5070 F: 212-258-2291
`e-mail: borodach@fr.com
`
`Please address all correspondence to the lead counsel at the address provided
`
`BACK-UP COUNSEL
`Michael F. Autuoro (Reg. No. 73,983)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 212-765-5070 F: 212-258-2291
`e-mail: autuoro@fr.com
`
`above. Petitioner also consents to electronic service by email at: IPR10973-
`
`0232IP1@fr.com and PTABInbound@fr.com, per 37 C.F.R. § 42.8(b)(4).
`
`We authorize the U.S. Patent and Trademark Office (the “Office”) to charge
`
`Deposit Account No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for the
`
`Petition, and further authorize payment for any additional fees to be charged to this
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 4
`
`Deposit Account.
`
`Attorney Docket: 10973-0232IP1
`
`II. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Koito certifies that the ‘034 Patent is available for IPR and that Koito is not
`
`barred or estopped from requesting IPR.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`
`B.
`Koito requests IPR of claims 3-26, 28-35 of the ‘034 Patent (the
`
`“Challenged Claims”) based on the prior art and grounds set forth below, and
`
`requests that the Office finds each of these claims to be unpatentable.
`
`The prior art references relied upon are identified in the table below, along
`
`with their pertinent date of patenting, publication or filing, and whether they are
`
`mentioned in the original or reexamination file histories.
`
`
`
`Prior Art Reference
`
`1. Kato Japan Patent Application
`Publication H10-324191, “Headlight
`Optical Axis Control Device for
`Motorcycle” (“Kato”)
`2. Takahashi, UK Published Patent
`Application GB 2 309 774 A,
`“Controlling direction of vehicle
`headlights” (“Takahashi”)
`3. Mori, Japan Patent Application
`Publication H7-164960(“Mori”)
`4. Uguchi et al, Japan Patent Application
`Publication H01-223042 “Vehicle
`Headlight Control Device” (“Uguchi”)
`
`Prior Art Date &
`Exhibit Number
`
`Publ. Dec. 8, 1998
`(KOITO 1006 & 1007)
`
`In
`File
`Histories ?
`No
`
`Publ. Aug. 6, 1997
`(KOITO 1008)
`
`Cited in
`Reexam
`only
`
`Publ. June 27, 1995
`(KOITO 1009 & 1010)
`Publ. Sept. 6, 1989
`(KOITO 1011 & 1012)
`
`No
`
`No
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 5
`
`
`
`Prior Art Reference
`
`5.
`
`Ishikawa et al, “Auto-Levelling
`Projector Headlamp System with
`Rotatable Light Shield,” SAE
`Technical Paper Series No. 930726
`(“Ishikawa”)
`6. Panter, U.S. Patent No. 5,751,832
`(“Panter”)
`7. Suzuki, Japan Patent Application
`Publication H6-335228 (“Suzuki”)
`8. Okuchi, U.S. Patent No. 6,193,398 &
`its Application Serial No. 09/333,686,
`(“Okuchi”)
`
`Attorney Docket: 10973-0232IP1
`
`Prior Art Date &
`Exhibit Number
`
`Publ. 1993
`(KOITO 1013)
`
`In
`File
`Histories ?
`No
`
`Pat. May 12, 1998
`(KOITO 1014)
`Publ. Dec. 2, 1994
`(KOITO 1015 & 1016)
`Filed Jun 16, 1999
`Pat. Feb 27, 2001
`(KOITO 1017 & 1018)
`
`IDS only
`
`No
`
`IDS in
`original
`appln. &
`cited in
`Reexam
`
`All of these references except Okuchi were published or patented more than
`
`one year before the earliest priority date of the ‘034 Patent (October 31, 2001) and,
`
`therefore, are prior art under 35 U.S.C. §102(b).
`
`Okuchi qualifies as prior art under 35 U.S.C. §102(a) because of its
`
`publication date of February 27, 2001, before the ‘034 Patent’s earliest priority
`
`date, and under §102(e), because of Okuchi’s U.S. filing date of June 16, 1999. A
`
`copy of the Okuchi application, as filed, is submitted as KOITO 1017.
`
`Claims 3 and 7 of the ‘034 Patent are independent. Claims 4-6 depend from
`
`Claim 3 and Claims 8-35 depend from Claim 7.
`
`Each of the grounds and references relied upon is identified below. The
`
`principal reference for all of the grounds is Kato. We discuss Claim 7 and its
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 6
`
`dependent claims first because it is the broadest claim, and both that claim and
`
`Attorney Docket: 10973-0232IP1
`
`eighteen of its dependent claims are obvious from Kato in view of Takahashi.
`
`‘034 Patent Claims
`Ground
`Ground 1 7-9, 13-18, 20-21, 23-
`24, 28-29, 31-32 and
`35
`Ground 2 10
`
`Ground 3 11 and 19
`
`Ground 4 12
`
`Ground 5 22
`
`Ground 6 25 and 26
`
`Ground 7 30, 33 and 34
`
`Ground 8 3, 6
`
`Ground 9 4
`
`Ground 10 5
`
`
`
`Basis for Rejection
`Obvious under 35 USC §103(a) from Kato
`in view of Takahashi
`
`Obvious under 35 USC §103(a) from Kato
`in view of Takahashi and Mori
`Obvious under 35 USC §103(a) from Kato
`in view of Takahashi and Uguchi
`Obvious under 35 USC §103(a) from Kato
`in view of Takahashi and Ishikawa
`Obvious under 35 USC §103(a) from Kato
`in view of Takahashi and Panter
`Obvious under 35 USC §103(a) from Kato
`in view of Takahashi and Suzuki
`Obvious under 35 USC §103(a) from Kato
`in view of Takahashi and Okuchi
`Obvious under 35 USC §103(a) from Kato
`in view of Uguchi
`Obvious under 35 USC §103(a) from Kato
`in view of Uguchi and Ishikawa
`Obvious under 35 USC §103(a) from Kato
`in view of Uguchi and Takahashi
`
`An explanation of how each of the Challenged Claims is unpatentable as
`
`obvious under 35 U.S.C. §103(a) is set forth in Section V below. Identification of
`
`where each element is found in the cited prior art patents or publications, and the
`
`relevance of the prior art references, are provided primarily in detailed claim
`
`charts. Additional explanation and support for each ground of rejection is set forth
`
`in the Declaration of Koito’s expert, Ralph V. Wilhelm. (KOITO 1019.)
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 7
`
`III. SUMMARY OF THE ‘034 PATENT
`
`Attorney Docket: 10973-0232IP1
`
`A. The Alleged Invention of the ‘034 Patent
`We first discuss the alleged invention to give focus to the following sections.
`
`
`
`In pertinent part, the ‘034 patent disclosed directional control systems for
`
`adjusting aiming angles of vehicle headlight to account for vehicle operating
`
`conditions such as, steering angle, pitch and rate of change of steering angle, etc.
`
`The principal components of the claimed systems are sensors, a controller,
`
`headlights and actuators to aim the headlights. The controller is responsive to one
`
`or more sensor signals for generating an output signal. An actuator is connected to
`
`the headlight to aim it in accordance with the output signal. (KOITO 1001, 2:3-17.)
`
`As illustrated in FIG. 1, such systems include a headlight 11, one or more actuators
`
`12 (and 13, not shown) for moving the headlight, condition sensors 15 & 16, and a
`
`directional controller 14 responsive to sensors for producing one or more outputs
`
`to the actuators. (See KOITO 1001 2:63 – 4:6.) Most or all of the system
`
`components are described as “conventional.” (Id., 3:28-29; 3:33-35; 3:61-62; 4:11-
`
`12; 4:34-36; 14:14-16.)
`
`The independent claims 3 and 7 include three principal, functional
`
`limitations that were added to secure allowance in the original examination and the
`
`reexamination. (Throughout the prosecution and reexamination, the patent owners
`
`argued patentability of independent claims and did not provide any additional
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 8
`
`arguments or distinctions from the prior art for dependent claims.)
`
`Attorney Docket: 10973-0232IP1
`
` During prosecution of the original application, Claim 1 was
`
`substantially narrowed to require, inter alia, that the controller be
`
`responsive to at least one sensor signal only when it changes by more
`
`than a predetermined minimum threshold amount.
`
` Claim 1 was rejected and cancelled in the reexamination, primarily
`
`because Takahashi (KOITO 1008) disclosed the threshold
`
`requirement.
`
` Following reexamination, the independent claims, Nos. 3 and 7,
`
`include substantially all of the limitations of patent Claim 1.
`
` Reexam Claim 3 further requires that at least one of the sensors
`
`generates a sensor signal representative of a rate of change of the
`
`steering angle of the vehicle.
`
` Reexam Claim 7 does not include that limitation, but requires that one
`
`sensor be adapted to generate a signal representative of steering angle
`
`of the vehicle and another sensor be adapted to generate a signal
`
`representative of the pitch of the vehicle.
`
`Background of the Art
`
`B.
`The idea of moving a motor vehicle headlight assembly or part thereof so to
`
`
`
`direct the headlight beam is very old.
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 9
`
`The most basic form of an “automatically” steered vehicle headlight beam is
`
`Attorney Docket: 10973-0232IP1
`
`produced by a light source assembly attached to bicycle or motorcycle handlebars.
`
`In 1911, Dunning (KOITO 1021) disclosed headlights for automobiles in which
`
`the direction of headlights was controlled by mechanical links to the steering
`
`system. (See KOITO 1019, ¶ 36.) It was known at least as early as 1925 that the
`
`headlight beam could be directed by moving the entire headlight assembly or only
`
`some components. See Fig. 3 of McVey (KOITO 1022) in which the reflector 12
`
`and “lamp” (light source) 13 are moved by a mechanical connection to the steering
`
`system, but the casing 5 and front lens 14 are fixed to standards 3 and held in a
`
`“rigid position.” (1:66-73; 1:85 – 2:20; see also KOITO 1019, ¶ 36.)
`
`In 1926, Schjotz (KOITO 1023) disclosed an automobile headlight assembly
`
`combining automatic direction of the headlights from side to side (see, e.g., 1:56-
`
`63), with means for directing a reflector 32’ and lamp 34’ up and down. Schjotz’s
`
`example provides for manual adjustment of the up-down angle, by the knob 47 and
`
`linkage components identified by 39, 42, 43, 45 and 54 (see, e.g., Fig. 3; 1:39-42).
`
`Schjotz generally disclosed that the headlight control “may be entirely automatic”
`
`(1:22-25). (See also KOITO 1019 ¶ 37.)
`
`In 1941, the United States adopted regulations requiring sealed beam
`
`headlights in a fixed position on the vehicle body. That regulation and World War
`
`
`
`

`
`Petition for IPR of US 7,241,034
`Page 10
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`II deterred further development of headlights that were moveable or had moveable
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`Attorney Docket: 10973-0232IP1
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`components to direct the light beams. (KOITO 1019, ¶38.)
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`The 1967 patent of Yssel (KOITO 1024) contains an extensive discussion of
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`automatically moving the angle of vehicle headlights up and down to maintain an
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`angle of light beams relative to the road surface. (See, e.g., 1:9-35; 2:53-59; 7:16-
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`28.) Yssel disclosed that the actuating means may also incorporate hydraulic,
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`mechanical, electrical or pneumatic devices. (See, e.g., 1:36-39; 2:1-52.) Yssel
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`specifically disclosed use of rheostats at the front and rear regions of the vehicle,
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`which produce the electric current controlling the headlight tilting. (See, e.g., 2:45-
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`52.) Yssel also disclosed that either the entire headlight assembly, or a part such as
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`the reflector, may be pivotally mounted (see, e.g., 2:61-65; 6:38-47); and that
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`means may be provided for “preventing unintentional relative movement … due to
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`road surface irregularities”(6:30-32; see Fig. 6; see also 2:53-60; 5:52-56).
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`(KOITO 1019, ¶39.)
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`The 1971 Fleury patent, initially assigned to Citroen, disclosed adjustable
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`lighting equipment for a road vehicle, implemented by a hydraulic system.
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`(KOITO 1025.) Various Citroen models offered a hydraulically-driven adjustable
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`headlamp system; however, it reportedly had to be deactivated in vehicles sold in
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`the United States, due to the regulations prohibiting moveable headlights. (KOITO
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`1019, ¶40.)
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`

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`Petition for IPR of US 7,241,034
`Page 11
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`Later, when electronic controllers, such as microprocessors had become
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`Attorney Docket: 10973-0232IP1
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`available, patents and publications appeared in which an electronic controller, such
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`as a microprocessor, is used to control the direction of a headlight beam based on
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`sensed conditions. (KOITO 1019 ¶41.) By the time of the alleged inventions of the
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`‘034 patent, a person of ordinary skill in the art (“POSITA”) would have
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`understood that any physical conditions which can have an influence on the vehicle
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`condition can be determined by one or more sensor(s) and supplied to the control
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`unit in order to control the direction of a headlight beam. (Id.) The more recent
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`history is revealed in the discussion of the prior art relied on in this Petition.
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`C.
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`Summary of the Prosecution Histories of the ‘034 Patent &
`Reexamination Certificate
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`The prosecution histories of the independent claims of the original ‘034
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`patent and the reexamination certificate was briefly outlined in Section I.A, supra.
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`A detailed discussion follows.
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`1. The Original Application & ‘034 Patent
`The application for the ‘034 patent, No. 10/285,312, was filed on October
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`31, 2002. It claimed priority of provisional applications: No. 60/369,447, filed on
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`April 2, 2002; No. 60/356,703, filed on Feb. 13, 2002; and No. 60/335, 409, filed
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`on Oct. 31, 2001. (KOITO 1001, cover) The original application included
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`independent claim 1 and twelve dependent claims. (KOITO 1003, pp. 25-26)
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`Original application Claim 1 was highly generic and functional (KOITO
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`

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`Petition for IPR of US 7,241,034
`Page 12
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`1003, p. 25):
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`Attorney Docket: 10973-0232IP1
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`1. An automatic directional control system for a vehicle
`headlight comprising:
`a sensor that is adapted to generate a signal that is
`representative of a condition of the vehicle, said sensed condition
`includes one or more of road speed, steering angle, pitch, and
`suspension height of the vehicle;
`a controller that is responsive to said sensor signal for
`generating an output signal; and
`an actuator that is adapted to be connected to the headlight to
`effect movement thereof in accordance with said output signal.
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`In pertinent part, following a non-final rejection, the Applicant’s attorney held a
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`personal interview with the Examiner on January 31, 2007. The Examiner’s
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`Interview Summary states, inter alia (KOITO 1003, p. 237):
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`We discussed independent claims 1, 7, and 14 [which became patent
`claim 1]. We agreed that claim 14 is allowable over the prior art of
`record because of the specific limitation of "a predetermined
`minimum threshold amount to prevent the actuator from being
`operated continiously [sic.] or duly [sic.] in response to relatively
`small variations in the sensed operating speed."
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`The Applicant’s attorney described the interview and resulting amendments in the
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`Remarks section of the January 31, 2007 amendments as follows (KOITO 1003, p.
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`236):
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`

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`Attorney Docket: 10973-0232IP1
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`Petition for IPR of US 7,241,034
`Page 13
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`During that interview, independent Claims 1, 7, and 14 were
`discussed in light of the Toda et al, Gotoh, and Okuchi et al.
`references. As noted on the Examiner Interview Summary Record, it
`was agreed that Claim 14 was allowable over the prior art of record.
`Thus, independent Claims 1 and 7 have been cancelled, and Claims 2
`through 5 have been amended to depend from allowable Claim 14. ….
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`The Examiner's statement of reasons for allowance in the Notice of
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`Allowability merely stated: “applicant's amendment and accompanying remarks
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`has persuaded the examiner to place this application in condition for allowance.”
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`(KOITO 1003, p. 252.)
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`The ‘034 patent issued on July 10, 2007 with amended Claim 1 and
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`Claims 2-5 depending from it. (KOITO 1001.)
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`2. Reexamination
`As noted in section 1.B above, a civil action was filed on March 8, 2010
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`asserting infringement of the ‘034 against a number of defendants and then
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`voluntarily dismissed without prejudice on May 18, 2010. In July 2010 a request
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`for ex parte reexamination (Control No. 90/011,011) of the ‘034 patent was filed.
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`That reexamination initially involved only original claims 1 and 3 of the ‘034
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`patent. (KOITO 1004, p. 110.)
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`A second, inter partes request for reexamination, Control No. 95/001,621
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`

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`Petition for IPR of US 7,241,034
`Page 14
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`was filed by Volkswagen Group of America, Inc. (“VWGoA”) on May 16, 2011.
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`Attorney Docket: 10973-0232IP1
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`(KOITO 1005 at 4-652.) The patent owner’s response presented an amended,
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`independent Claim 1, amended dependent Claims 2-5 and new Claims 6-45. (Id. at
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`956-969.) VWGoA does not appear to have actively participated thereafter in the
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`reexamination proceedings).
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`The Board ordered consolidation of the two reexaminations and ordered that
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`the owner present a single set of claims. (KOITO 1005 at 941-955.) The owner
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`provided such a set by Amendment D2, filed April 27, 2012. (Id. at 979-992.) That
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`proposed claim set, which included amendments to Claims 1-5, and new Claims 6-
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`41, was an amended version of the claims it had presented in the ex parte case.
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`A 104-page Office Action was mailed June 29, 2012 in the consolidated
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`reexaminations. (KOITO 1005 at 1011-1115.) In pertinent part, it addressed 38
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`proposed grounds of rejection (“Issues”), rejected independent claim 1 and
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`dependent claims 2, 4-6, 8-10 and 12-37. Other, dependent claims were objected to
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`and indicated as allowable in independent form. (Id. at 1111.)
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`As far as this Petition is concerned, all of the rejected proposed claims were
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`rejected as anticipated by or obvious from Takahashi, either alone or in
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`combination with one or more of other references. In particular, Takahashi, which
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`had not been a reference in the examination of the original application, discloses
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`
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`

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`Petition for IPR of US 7,241,034
`Page 15
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`the “predetermined minimum threshold” limitation that the original examination
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`Attorney Docket: 10973-0232IP1
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`had found missing. (See quotations in Section V.A.3 below.)
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`The owner responded with Amendment E, dated July 26, 2012, thanking the
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`Examiner for indication of allowable subject matter and without any arguments
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`other than asserting the amendments were believed to place the claims in condition
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`for allowance. (KOITO 1005 at 1119-1130.) In particular, no arguments were
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`presented in this or any other amendment for allowance of the dependent claims, as
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`the owner relied only on the asserted distinctions in the independent claims.
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`A Table in the Remarks section summarized the amendments. (Id. at 1127-
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`1130.) In particular, independent claim 1 and dependent claim 2 were cancelled.
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`Claim 3 was rewritten in independent form, inserting the subject matter of
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`previously amended claim 1, and making other amendments as indicated in the
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`Table. Claims 4-6 were amended primarily to depend from Claim 3. Claim 7 was
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`rewritten in independent form, inserting the subject matter of previously amended
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`claims 1 and 6. Claims 8-41 were amended primarily to depend from Claim 7.
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`An Action Closing Prosecution, mailed December 18, 2012, acknowledged
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`that Claims 1 and 2 had been cancelled, stated that Claims 3-13, 15-35 and 38-41
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`are patentable, and rejected Claims 14, 36 and 37 under § 112, ¶ 2 as indefinite.
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`(Id. at 1148-1165.) The Examiner summarized the Reasons for Patentability as
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`follows (id. at 1161-1162 (emphasis in original)):
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`
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`

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`Petition for IPR of US 7,241,034
`Page 16
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`Attorney Docket: 10973-0232IP1
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`Independent claim 3 is patentable because of the fact that no
`single reference of record or combination of references teach "at least
`one of said two or more sensors generates at least one of said two or
`more sensor signals that is representative of a rate of change of the
`steering angle of the vehicle" in combination with a [sic.] "a
`controller" and "two or more actuators" as required in claim 3.
`Dependent claims 4-6 come freighted with the limitations of
`claim 3 from which they stem and are therefore patentable for the
`same reasons.
`Independent claim 7 is patentable because of the fact that no
`single reference of record