UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`SL CORPORATION,
`Petitioner
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00193
`Patent 7,241,034
`
`PATENT OWNER ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE
`
`
`
` 
`
`
`
` 
`
`

`
` 
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... iv
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND OF THE INVENTION ....................................................... 2
`
`III. CHALLENGED INDEPENDENT CLAIMS 1 AND 3 .................................. 3
`
`IV. GROUNDS OF CHALLENGE ....................................................................... 5
`
`V.
`
`THE BOARD SHOULD DECLINE TO INSTITUTE UNDER 35 U.S.C. §
`325(d) ............................................................................................................... 7
`
`VI. CLAIM CONSTRUCTION ............................................................................ 9
`
`VII. PETITIONER HAS NOT SHOWN THAT KATO OR FUKUWA
`ANTICIPATE CLAIMS 3 AND 7 ................................................................ 10
`
`
`
`a.
`
`b.
`
`Kato ..................................................................................................... 11
`
`Fukuwa ................................................................................................ 13
`
`
`VIII. EACH OF PETITIONER’S OBVIOUSNESS COMBINATIONS ARE
`IMPROPER AND SHOULD BE REJECTED ............................................. 14
`
`a.
`
`b.
`
`c.
`
`
`
`
`
`
`
`Petitioner’s Burden to Show Obviousness .......................................... 15
`
`Takahashi ............................................................................................. 17
`
`Petitioner Has Not Shown That the Combinations of Kato or
`Fukuwa in view of Takahashi Render Independent Claims 3
`and 7 Obvious ...................................................................................... 19
`
`i.
`
`ii.
`
`Kato, Fukuwa, and Takahashi Fail to Teach or Suggest All of
`the Limitations of Claims 3 and 7 ............................................. 19
`
`There is No Motivation to Combine Kato or Fukuwa with
`Takahashi .................................................................................. 21
`ii
`
`
`
`
`
`
`
` 
`
`

`
` 
`
`VIII. OTHER REFERENCES CITED BY PETITIONER .................................. ..23
`
`IX.
`
`CONCLUSION ............................................................................................ ..25
`
`
`VIII. OTHER REFERENCES CITED BY PETITIONER .................................... 23
`
`IX. CONCLUSION .............................................................................................. 25
`
`SIGNATURE BLOCK ............................................................................................ 25
`
`SIGNATURE BLOCK .......................................................................................... ..25
`
`CERTIFICATE OF SERVICE ................................................................................ 26
`
`CERTIFICATE OF SERVICE .............................................................................. ..26
`
`
`
`
`
`
`
`
`
` 
`
`iii
`
`iii
`
`

`
` 
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 
`555 F.3d 984 (Fed. Cir. 2009) ...................................................................... 15 
`
` 
`CFMT, Inc. v. Yieldup Intern. Corp., 
`349 F.3d 1333 (Fed. Cir. 2003) .................................................................... 19 
`
` 
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys., 
`725 F.3d 1341 (Fed. Cir. 2013) ................................................................... 15 
`
` 
`Dystar Textilfarben GmbH v. C.H. Patrick Co., 
`464 F.3d 1356 (Fed. Cir. 2006) .................................................................... 21 
`
` 
`Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 
`655 F.3d 1291 (Fed. Cir. 2011) .................................................................... 17 
`
` 
`Graham v. John Deere Co., 
`383 U.S. 1 (1966) ................................................................................... 15, 17 
`
` 
`Hewlett-Packard Co. v. MCM Portfolio, LLC, 
`IPR2013-00217, Paper 10 (Institution Decision) (Sept. 10, 2013) .............. 22 
`
`
`In re Dembiczak,
`175 F.3d 994 (Fed. Cir. 1999) ....................................................................... 23 
`
` 
`In re Fritch, 
`972 F.2d 1260 (Fed. Cir. 1992) .............................................................. 15, 23 
`
` 
`In re Royka
`490 F.2d 981 (CCPA 1974) ........................................................................... 19
` 
`KSR Int'l Co. v. Teleflex Inc., 
`550 U.S. 398 (2007) ............................................................................... 15, 16 
`
` 
`
`iv
`
`

`
` 
`
` 
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 15 
` 
`Oakley, Inc. v. Sunglass Hut Int’l, 
`316 F.3d 1331 (Fed. Cir. 2003) .................................................................... 22 
`
` 
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., 
`IPR2014-00312, Paper 14 (PTAB, July 8, 2014) ........................................... 8 
`
` 
`
`STATUTES and OTHER
`
`35 U.S.C. § 102 ........................................................................................................ 10
`
`35 U.S.C. §103 ......................................................................................................... 16
`
`35 U.S.C. § 314 .................................................................................................... 1, 25
`
`35 U.S.C. § 325 ...................................................................................................... 7, 8
`
`37 C.F.R. § 42.104 ................................................................................................... 24
`
`37 C.F.R. § 42.65 ..................................................................................................... 22
`
`MPEP § 2143 ..................................................................................................... 16, 17
`
`
` 
`
`v
`
`

`
` 
`
`I.
`
`INTRODUCTION
`
`Petitioner SL Corporation (“SL Corp.” or “Petitioner”) filed a petition for
`
`inter partes review (the “Petition”) of U.S. Patent No. 7,241,034 (“the ‘034 Patent”)
`
`against Patent Owner Adaptive Headlamp Technologies, Inc. (“Patent Owner” or
`
`“AHT”). The Petition should be denied because it fails to meet the threshold
`
`requirement of showing that there is a “reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the petition.” 35
`
`U.S.C. § 314(a).
`
`The Petition includes ten grounds for invalidity. Grounds 1 and 4 are based
`
`on anticipation by Japanese Patent Application Publication H10-324191 (“Kato”) or
`
`Japanese Patent Application No. 10-364667 (“Fukuwa”). The remaining grounds
`
`are all based on obviousness, each combining Kato or Fukuwa as the primary
`
`reference with one or two secondary prior art references. Kato and Fukuwa do not
`
`teach or suggest all of the limitations of independent claims 3 and 7, and cannot
`
`invalidate the claims of the ‘034 Patent without being combined with additional prior
`
`art references. But as set forth in detail herein, Petitioner has not shown that any
`
`combination of Kato or Fukuwa with these other references teaches or suggests each
`
`of the limitations of the independent claims of the ‘034 Patent or that a Person
`
`Having Ordinary Skill in the Art (“PHOSITA”) at the time of the invention of the
`
`‘034 Patent would have combined Kato or Fukuwa with these other references. For
`
` 
`
`1
`
`

`
` 
`
`at least these reasons, the Petitioner cannot prevail in its quest to invalidate the ‘034
`
`Patent before this tribunal, and the Petition should therefore be denied.1
`
`II. BACKGROUND OF THE INVENTION
`
`The two named inventors of the ‘034 Patent worked as engineers at Dana
`
`Corporation at the time of the invention. Dana Corporation is an American
`
`automotive manufacturer and supplier of a wide range of technologies for original-
`
`equipment and aftermarket products. The ‘034 Patent claims priority to three
`
`provisional applications, Appl. No. 60/335,409 filed on October 31, 2001,
`
`60/356,703 filed on February 13, 2002, and 60/369,447 filed on April 2, 2002, but
`
`was conceived and actually reduced to practice prior to that time. Ex. 1001, Title
`
`Page. The ‘034 Patent was issued on July 10, 2007. Id. The ‘034 Patent was later
`
`assigned to Adaptive Headlamp Technologies, Inc. (“Patent Owner”), a company
`
`unrelated to Dana Corporation but which was created to protect the patent rights of
`
`the ‘034 Patent.
`
`                                                            
`1 Patent Owner’s present response is limited to the arguments set forth herein. Patent
`
`Owner does not waive the right to make additional arguments if the Petition is
`
`granted and the Inter Partes Review of the ‘034 Patent is instituted, and Patent
`
`Owner hereby expressly reserves the right to do so.
`
` 
`
`2
`
`

`
` 
`
`The ‘034 Patent is entitled “Automatic Directional Control System for
`
`Vehicle Headlights.” The direction control system of the ‘034 Patent is operative to
`
`adjust the headlight in at least two directions – i.e., horizontal (left/right) and vertical
`
`(up/down). The system utilizes at least two sensors that sense the operating
`
`conditions of the vehicle, including at least steering angle and pitch, but which also
`
`may include road speed, suspension height, rate of change of road speed, rate of
`
`change of pitch, and rate of change of suspension height of the vehicle. A controller
`
`receives the signals from the at least two sensors and sends an output signal to at
`
`least one of two actuators to adjust the headlight horizontally or vertically only when
`
`at least one of the signals is above a predetermined minimum value. This prevents
`
`the actuators from being operated continuously or unduly frequently, and minimizes
`
`or eliminates hunting of the actuators for relatively small magnitudes of movement,
`
`such as relatively small bumps in the road.
`
`III. CHALLENGED INDEPENDENT CLAIMS 3 AND 7
`
`Petitioner challenges the validity of each of the claims of the claims ‘034 patent.2
`
`Independent claims 3 and 7 are presented below:
`
`                                                            
`2 Patent Owner is not asserting all the claims of the ‘034 Patent against Petitioner in
`
`the underlying litigations against any of the Defendants. The asserted claims at issue
`
` 
`
`3
`
`

`
` 
`
`3. An automatic directional control system for a vehicle headlight,
`comprising:
`two or more sensors that are each adapted to generate a signal that
`is representative of at least one of a plurality of sensed conditions of a
`vehicle such that two or more sensor signals are generated, said sensed
`conditions including at least a steering angle and a pitch of the vehicle;
`a controller that is responsive to said two or more sensor signals
`for generating at least one output signal only when at least one of said two
`or more sensor signals changes by more than a predetermined minimum
`threshold amount to prevent at least one first one of two or more actuators
`from being operated continuously or unduly frequently in response to
`relatively small variations in at least one of the sensed conditions; and
`said two or more actuators each being adapted to be connected to
`the headlight to effect movement thereof in accordance with said at least
`one output signal;
`wherein 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.
`
`7. An automatic directional control system for a vehicle headlight,
`comprising:
`two or more sensors that are each adapted to generate a signal that
`is representative of at least one of a plurality of sensed conditions of a
`
`                                                            
`in the litigation against Hyundai Motor of America, a customer supplied by SL
`
`Corp., are claims 3, 5, 7, 14-16, 31-32, and 36.
`
` 
`
`4
`
`

`
` 
`
`vehicle such that two or more sensor signals are generated, said sensed
`conditions including at least a steering angle and a pitch of the vehicle;
`a controller that is responsive to said two or more sensor signals
`for generating at least one output signal only when at least one of said two
`or more sensor signals changes by more than a predetermined minimum
`threshold amount to prevent at least one of two or more actuators from
`being operated continuously or unduly frequently in response to relatively
`small variations in at least one of the sensed conditions; and
`said two or more actuators each being adapted to be connected to
`the vehicle headlight to effect movement thereof in accordance with said
`at least one output signal;
`wherein said two or more sensors include a first sensor and a
`second sensor; and
`wherein said first sensor is adapted to generate a signal that is
`representative of a condition including the steering angle of the vehicle and
`said second sensor is adapted to generate a signal that is representative of
`a condition including the pitch of the vehicle.
`
`Ex. 1001, Claims 3, 7 (emphasis added).
`
`IV. GROUNDS OF CHALLENGE
`
`Each of Petitioner’s grounds of challenge rely on Kato and Fukuwa for the
`
`large majority of the claim limitations, and then utilize various secondary references
`
`to show disclosure of the limitations of the ‘034 Patent not purportedly present in
`
`Kato or Fukuwa. Petitioner’s specific challenges include:
`
` 
`
`5
`
`

`
` 
`
`
`
` 
`
`Ground
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`8
`9
`
`Claims
`7-9, 13-18, 20-21,
`28-33
`3-6 and 10-12
`
`Basis
`Anticipation
`
`Obviousness
`
`19-20, 25-27
`
`Obviousness
`
`7, 9, 13-17, 21-
`25, 28-33
`3-6, 10-12
`
`Anticipation
`
`Obviousness
`
`18-20, 25-27
`
`Obviousness
`
`36-39
`36-39
`3-39
`
`Obviousness
`Obviousness
`Obviousness
`
`10
`
`3-39
`
`Obviousness
`
`References
`
`Kato
`
`Kato in view of Izawa and/or
`in view of Patent Owner’s
`Admissions Regarding the
`Prior Art
`Kato in view of Patent Owner’s
`Admissions Regarding the
`Prior Art
`Fukuwa
`
`Fukuwa in view of Izawa
`and/or Patent Owner’s
`Admissions Regarding the
`Prior Art
`Fukuwa in view of Patent
`Owner’s Admissions
`Regarding the Prior Art
`Kato in view of Hayami
`Fukuwa in view of Hayami
`Kato in view of Izawa and
`Takahachi and/or in view of
`Patent Owner’s Admissions
`Regarding the Prior Art
`Kato in view of Izawa and
`Takahachi and/or in view of
`Patent Owner’s Admissions
`Regarding the Prior Art
`
`6
`
`

`
` 
`
`Throughout this Preliminary Response, for ease of understanding, Patent
`
`Owner will refer to these prior art references by the name indicated above, rather
`
`than by exhibit number. 3
`
`V. THE BOARD SHOULD DECLINE TO INSTITUTE UNDER 35
`U.S.C. § 325(d)
`
`This proceeding, IPR2016-00196, involves the same patent (i.e., the ’034 Patent)
`
`and similar prior art that is involved in three currently pending but as of yet
`
`uninitiated proceedings:
`
`Proceeding
`IPR2016-00079
`
`Patent
`’034 Patent
`
`Claims Challenged
`3-39
`
`IPR2016-00196
`
`’034 Patent
`
`3, 5, 7, 14-16, 31-32, 36
`
`IPR2016-00501
`
`’034 Patent
`
`3, 5, 7, 14-16, 31-32, 36
`
`The prior art and obviousness arguments in this proceeding are the same or
`
`substantially similar to those raised in the three other proceedings, the original
`
`prosecution, and the previous reexaminations. Each prior art reference involves
`
`                                                            
`3 Patent Owner reserves its right to present further argument and evidence
`
`
`
`related to these prior art references and the content of the Petition and supporting
`
`Exhibits later in this proceeding, consistent with the Board’s Rules and practice. No
`
`waiver is intended by any argument withheld by Patent Owner at this stage of the
`
`proceeding.
`
` 
`
`7
`
`

`
` 
`
`various systems for movement of a headlight either in the horizontal or vertical
`
`direction, but the prior art here similarly fails to teach or suggest each and every
`
`feature of the reexamined independent claims 3 and 7 of the ‘034 Patent, and the
`
`modifications and combinations for obviousness are suggested using improper
`
`hindsight without providing a sufficient motivation to do so.
`
`Petitioner has not explained why the grounds set forth in this Petition are
`
`better than any of the prior art involved in these other three proceedings, the original
`
`prosecution, or the previous reexaminations, or why the grounds based on Kato,
`
`Fukuwa, and Takahashi are not understood reasonably as being based on
`
`“substantially the same prior art or arguments” that were presented in these other
`
`three proceedings, the original prosecution, or the previous reexamination. 35 U.S.C.
`
`§ 325(d); see Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-
`
`00312, Paper 14 at 12-13 (PTAB, July 8, 2014) (rejecting the petition because the
`
`same prior art and substantially the same arguments were presented to the Office
`
`during prosecution); U.S. Endodontics, LLC v. Gold Standard Instruments, LLC,
`
`IPR2015-01476, Paper 13 at 9 (PTAB, October 26, 2015) (rejecting the petition
`
`because the same prior art and substantially the same arguments were presented to
`
`the Office during other co-pending Inter Partes Review proceedings).
`
`In particular, Takahashi was thoroughly considered during prosecution of the
`
`‘034 Patent. Specifically, Takahashi was asserted by the petitioner in the previous
`
` 
`
`8
`
`

`
` 
`
`inter partes reexamination and was discussed at length during the reexamination.
`
`See Ex. 1005 at 29-31, 36-38, 45-46, 54-55, 62-64, 68-70, 75-78, 83-86, 90-92, 96-
`
`9, 1025-1034, 1051-1064, 1082-1097, 1102-1103, 1107-1111. Thus, Takahashi was
`
`properly and fully considered and the reexamined claims of the ‘034 Patent were
`
`rightfully allowed over Takahashi and various obvious combinations involving
`
`Takahashi. Therefore, Petitioner’s obviousness challenges involving Takahashi are
`
`cumulative and the Board should not disturb the Examiner’s correct conclusion.
`
`Accordingly, the Board should deny this Petition in its entirety as cumulative
`
`and redundant.
`
`VI. CLAIM CONSTRUCTION
`
`Patent Owner, like Petitioner, notes that the standard for claim construction
`
`applied in this proceeding is that a claim is given its “broadest reasonable
`
`construction in light of the speciation of the Patent in which it appear,” which is
`
`different from the standards applied in the related litigation. At the present time,
`
`Patent Owner’s submits that the ordinary and customary meaning applies to all the
`
`terms of challenged claim, but reserves the right to present proposed claim
`
`constructions and supporting evidence to the Board in its Response, should one be
`
`necessary. Patent Owner does, however, dispute Petitioner’s characterization of the
`
`“predetermined minimum threshold amount” as being “any preset signal value that
`
`must be exceeded before an action [operating the actuators] is taken.” This is simply
`
` 
`
`9
`
`

`
` 
`
`too broad of a definition. Rather, the predetermined minimum threshold limitation
`
`of claims 3 and 7 must be specifically tied to relatively small variations of the sensed
`
`conditions. The claim language, on its face, requires that the predetermined
`
`minimum threshold amount must be an amount of change in the sense condition that
`
`is sufficient to prevent at least one of two or more actuators from being operated
`
`continuously or unduly frequently in response to relatively small variations in at least
`
`one of the sensed conditions. This is understanding is supported by the specification
`
`at col. 9, lns. 18-56; col. 13, lns. 6-22.
`
`VII. PETITIONER HAS NOT SHOWN THAT KATO OR FUKUWA
`ANTICIPATE CLAIMS 3 AND 7
`
`Kato and Fukuwa4 do not anticipate claims 3 and 7 of the ‘034 patent under
`
`35 U.S.C. § 102, as each reference does not disclose or suggest at least the following
`
`limitation: “a controller that is responsive to said two or more sensor signals for
`
`generating at least one output signal only when at least one of said two or more
`
`sensor signals changes by more than a predetermined minimum threshold amount
`
`to prevent at least one of two or more actuators from being operated continuously or
`
`                                                            
`
`4 When addressing Kato and Fukuwa herein, Patent Owner is referring to the
`
`certified translations provided in Exs. 1024 and 1025. Patent Owner reserves the
`
`right the challenge the accuracy of these translations later in this proceeding.
`
` 
`
`10
`
`

`
` 
`
`unduly frequently in response to relatively small variations in at least one of the
`
`sensed conditions.” This limitation is referred to herein as the “predetermined
`
`minimum threshold amount” limitation.
`
`a. Kato
`
`Kato is a Japanese Patent application entitled “Headlight Optical Axis Control
`
`Device for a Motorcycle.” Ex. 1024 at 1 (emphasis added). As recognized within
`
`Kato, “the pitch angle of a motorcycle more likely changes due to acceleration or
`
`deceleration of speed and unevenness of the road surface compared to a four-wheel
`
`vehicle.” Ex. 1024 at 4 ([0004]). Therefore, the beam irradiation range of the
`
`headlight sways without being fixed when the headlight is vertically moved
`
`according to changes in the pitch angle while driving a motorcycle.” Id.
`
`Moreover, “[w]ith a motorcycle, when the vehicle body is tiled in the direction
`
`of the bank angle, the beam irradiation range of the headlight flattens.” Ex. 1024 at
`
`4 ([0005]). “[B]ecause the device that swings the headlight to the right and left
`
`according to the steering and banking angles swings the headlight in a direction of
`
`the steering angle, i.e., the headlight is just simply swung to the right when turning
`
`right and swung to the left when turning left, there is no solution effect on flattening
`
`of the irradiation range of the headlight.” Id.
`
`Kato states it solves the problem of “stably ensur[ing] a beam irradiation range
`
`of a headlight when pitch, bank, steering angles or the like change while driving a
`
` 
`
`11
`
`

`
` 
`
`motor cycle” by using sensors to “find a pitch [, bank, or steering] angle direction
`
`correction amount” to “correct[] the angle of the optical axis.” Ex. 1024 at 4-5
`
`([0007]-[0013]). In other words, Kato aims to determine the excess amount of pitch,
`
`bank, or steering angle that has occurred while driving the motorcycle and correct
`
`the angle of the optical axis by turning the headlight back toward the center position.
`
`This overturn correction type movement abates the effects of larger than optimal
`
`movements of the headlamp to prevent flattening of the elliptical irradiation cone of
`
`the headlight. Ex. 1024 at 5 ([0008], [0010]).
`
`Petitioner attempts to argue that the step motors used to correct the angle of
`
`the optical axis of the headlight inherently discloses the “predetermined threshold
`
`amount limitation” because such step motors can move only in specific quantized
`
`steps, such as in 5° increments. This argument fails because it focuses on the
`
`actuators (i.e., the step motors) only operating in increments rather than the
`
`controller being operated to only send a signal to the actuators if the signal from one
`
`of the sensors has changed by a predetermined threshold amount as the claims
`
`require.
`
`Because Petitioner recognizes the shortcomings of this inherency argument,
`
`Petitioner turns to secondary reference Takahachi to attempt read on to this
`
`“predetermined minimum threshold amount” limitation, effectively admitting that
`
`Kato does not teach the limitation of independent claims 3 and 7 of the ‘034 patent.
`
` 
`
`12
`
`

`
` 
`
`However, Petitioner fails to recognize the full extent of the discrepancies between
`
`Kato and the ‘034 Patent. In particular, the aim of Kato is quite the opposite of that
`
`of the ‘034 Patent, which seeks to cause the headlights to swivel in the direction of
`
`the turn and pitch of a four-wheel vehicle to provide illumination of the road surface
`
`in the path of movement of the vehicle rather than providing for a reverse angle
`
`correction movement. The solutions are also quite contrasting, as the ‘034 Patent
`
`avoids minimal variations of movement of the headlight by preventing the actuators
`
`from moving the headlamp when one or more of the sensed conditions are below a
`
`predetermined minimum threshold amount, whereas Kato causes the headlight to
`
`turn back by a correction amount when a maximum optimal angle is exceeded.
`
`b. Fukuwa
`
`Fukuwa discloses a vehicle lamp control device with auto leveling control to
`
`vertically adjust the optical axis of a headlight to reduce glare against on coming
`
`vehicles and cornering light distribution control designed to horizontally adjust the
`
`optical axis to the right and left when going around a curve. Ex. 1025 at 4 ([0007],
`
`[0015]). This time, Petitioner attempts to argue that the conversion of an analog
`
`input to a digital output inherently discloses the “predetermined threshold amount
`
`limitation” because a new digital code is not generated until a certain number of bits
`
`is reached. This argument fails because it focuses on conversion of a signal rather
`
`than the controller being operated to only send a signal to the actuators if the signal
`
` 
`
`13
`
`

`
` 
`
`from one of the sensors has changed by a predetermined threshold amount as the
`
`claims require. These are entirely different concepts.
`
`Because Petitioner recognizes the shortcomings of this inherency argument,
`
`Petitioner turns to the secondary reference Takahachi to attempt read on to this
`
`“predetermined minimum threshold amount” limitation, effectively admitting that
`
`Fukuwa does not teach the limitation of independent claims 3 and 7 of the ‘034
`
`patent. However, as discussed further below, Petitioner has not provided a sufficient
`
`motivation to combine the teachings of Fukuwa and Takahashi to render obvious
`
`claims 3 and 7 of the ‘034 patent.
`
`VIII. EACH OF PETITIONER’S OBVIOUSNESS COMBINATIONS
`ARE IMPROPER AND SHOULD BE REJECTED
`
`Petitioner has failed to show that cited obvious combinations teach or suggest
`
`each and every limitation of independent claims 3 and 7. And further, due to the
`
`differences in the specific teachings of Kato and Fukuwa and the secondary
`
`reference Takahashi, Petitioner has not shown that a PHOSITA aiming to solve the
`
`problems disclosed in the ‘034 Patent would have been motivated to combine Kato
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`or Fukuwa with Takahashi. As such, all of Petitioner’s challenges and the entirety
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`of the obviousness combinations set forth therein are improper, and the Petition
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`should therefore be denied outright.
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`14
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`a. Petitioner’s Burden to Show Obviousness
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`To prove invalidity based on obviousness during an IPR, Petitioner must
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`establish by a preponderance of the evidence that a skilled artisan in the field of
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`microscopy would have both been motivated to combine the primary references
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`Kato or Fukuwa with the secondary reference Takahashi, and would have a
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`reasonable expectation of success in doing so. Kinetic Concepts, Inc. v. Smith &
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`Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). Obviousness is a question of
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`law to be determined based on underlying factual considerations. Ball Aerosol &
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`Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 991 (Fed. Cir. 2009).
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`Obviousness “cannot be based on the hindsight combination of components
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`selectively culled from the prior art to fit the parameters of the patented invention.”
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`Cheese Sys. v. Tetra Pak Cheese & Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir.
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`2013). Conscious of this warning, “a fact finder should be aware, of course, of the
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`distortion caused by hindsight bias and must be cautious of arguments reliant upon
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`ex post reasoning.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); Graham
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`v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into
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`the prior art the teachings of the invention in issue” and instructing courts to “‘guard
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`against slipping into use of hindsight’”); see also In re Fritch, 972 F.2d 1260, 1266
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`(Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction
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`manual or ‘template’ to piece together the teachings of the prior art so that the
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`15
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`claimed invention is rendered obvious.”). If a challenger desires to invalidate a
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`patent, even if each element of a claimed invention in that patent can be found in the
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`prior art by piecing together various references, it is not sufficient to find the patented
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`invention obvious. Prior art can only be combined if there is, in fact, a reason for a
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`PHOSITA to have done so at the time of the invention, and specifically cannot be
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`pieced together in the face of explicit statements discouraging it.
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`An obviousness assertion must be supported by “some articulated reasoning
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`with some rational underpinning to support the legal conclusion of obviousness.”
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`KSR Int’l Co., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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`2006)). Indeed, MPEP § 2143 states that “the key to supporting any rejection under
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`35 U.S.C. §103 is the clear articulation of the reason(s) why the claimed invention
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`would have been obvious” and sets forth the seven “Exemplary Rationales” to
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`support a conclusion of obviousness. When relying on rationale G (“Some teaching,
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`suggestion, or motivation . . . to modify the prior art reference or to combine prior
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`art reference teachings . . .”), as the Petition does, the following are required in order
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`to support a conclusion of obviousness under that rationale:
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`(1) A finding that there was some teaching, suggestion, or
`motivation, either in the references themselves or in the
`knowledge generally available to one of ordinary skill in
`the art, to modify the reference or to combine reference
`teachings;
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`(2) A finding that there was reasonable expectation of
`success; and
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`16
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` 
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`(3) Whatever additional findings based on the Graham
`factual inquiries may be necessary, in view of the facts of
`the case under consideration, to explain a conclusion of
`obviousness.
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`MPEP § 2143(G). Even though the “Teaching, Suggestion, Motivation” test was
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`rejected as the sole means for determining a motivation to combine, a Petitioner still
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`“must rely on a known motivation to combine existing prior art to achieve what the
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`invention was designed [to achieve]” in order to establish obviousness. Genetics
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`Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1318 (Fed. Cir.
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`2011). Petitioner simply has failed to do so.
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`b. Takahashi
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`Takahashi discloses an automatic leveling device which rotates a headlight
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`vertically to adjust for inclination of the vehicle. Ex. 1019 at 9. The adjustment is
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`made so that the illumination direction of the headlight “is always in a predetermined
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`direction,” in other words, the headlight is adjusted so that it is always in a vertically
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`centered position. Ex. 1019 at 9, 12. 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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`vertically in a first direction, but does not mention moving the headlight in a second
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`direction as specified in the ‘034 Patent – i.e., horizontal rotation of a headlight. Nor
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`does Takahashi mention moving the headlamp to illuminate the road surface in the
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`path of the vehicle as a result of changes in the steering angle of the vehicle as
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` 
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`17
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` 
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`specified in the ‘034 Patent, but rather moves the headlights back to a centered
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`position.
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`Takahashi discloses that the control means adjusts the inclination only when
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`one of two conditions are met: 1) the vehicle is stationary and the vehicle is at an
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`incline, or 2) the vehicle is moving, the amount of variations in the gradient exceeds
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`a reference value and that excessive state continues for a time or distance exceeding
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`a reference value. Ex. 1019 at 17. The first condition involving stationary
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`adjustments of the headlight is not relevant to the claims of the ‘034 Patent. The
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`second condition does not entail adjusting the headlight toward the direction of the
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`incline or steering angle due to a change in the magnitude of a signal repres