Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper 26
`Entered: March 15, 2017
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`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 C1
`_______________
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`RAMA G. ELLURU and SCOTT C. MOORE, Administrative Patent
`Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`

`

`Case IPR2016-00193
`Patent 7,241,034 C1
`
`
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`I.
`
`INTRODUCTION
`
`SL Corporation (“Petitioner”) filed a Petition (Paper 2; “Pet.”) to
`
`institute an inter partes review of claims 3–39 of U.S. Patent No. 7,241,034
`
`C1 (Ex. 1001; “the ’034 patent”). Adaptive Headlamp Technologies, Inc.
`
`(“Patent Owner”) filed a Preliminary Response (Paper 9; “Prelim. Resp.”).
`
`The Board instituted a trial as to claims 7–10, 12–21, 23, 24, and 28–39 of
`
`the ’034 patent. Paper 10 (“Dec. on Inst.”).
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(“PO Resp.”) to the Petition. Paper 16. Petitioner filed a Reply (“Reply”) to
`
`the Patent Owner Response. Paper 20. Petitioner relies on the Declaration
`
`of Harvey Weinberg (Ex. 1002) in support of its Petition, and the Reply
`
`Declaration of Harvey Weinberg (Ex. 1035) in support of its Reply. Patent
`
`Owner relies on the Declaration of Joe Katona (Ex. 2002) in support of its
`
`Response.
`
`An oral hearing was held on February 23, 2017. The record contains
`
`a transcript of this hearing. Paper 25 (“Tr.”).
`
`We have jurisdiction over this dispute under 35 U.S.C. § 6. This Final
`
`Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73. Petitioner has shown by a preponderance of the evidence that
`
`claims 7–10, 12–21, 23, 24, and 28–39 are unpatentable under 35 U.S.C.
`
`§ 103(a).
`
`II.
`
`BACKGROUND
`
`A.
`
`Related Proceedings
`
`The ’034 patent was subject to an ex parte reexamination (Control No.
`
`90/011,011) and an inter partes reexamination (Control No. 95/001,621).
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`Case IPR2016-00193
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`See Pet. 1–2; Ex. 1001. These reexamination proceedings were merged and
`
`resulted in issuance of an inter partes reexamination certificate. See id.
`
`The ’034 patent is asserted by Patent Owner in several pending
`
`litigations in the U.S. District Court for the District of Delaware. Pet. 3–4;
`
`Paper 5. Petitioner is not a party to any of these Delaware litigations. See
`
`id. However, Petitioner identifies Hyundai Motor America and Hyundai
`
`Motor Company as being real parties in interest. Pet. 3. Hyundai Motor
`
`America is a named defendant in one of the Delaware litigations. Id.
`
`B.
`
`The ’034 Patent
`
`The ’034 patent discloses a structure and method for operating a
`
`directional control system for vehicle headlights. Ex. 1001, Abstract.
`
`Figure 1 of the ’034 patent is reproduced below.
`
`Figure 1 is a block diagram of automatic directional control system 10 for a
`
`vehicle headlight. Id. at 2:28–30, 63–65. Headlight 11 is mounted on a
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`vehicle in a manner that permits the direction of projected light to be
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`adjusted by actuators 12 and 13. Id. at 3:10–13, 26–28. Condition sensors
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`15 and 16 sense operating conditions of the vehicle, and generate electrical
`
`signals that are responsive to the sensed operating conditions. Id. at 3:61–
`
`64. Headlight directional controller 14 receives the electrical signals
`
`generated by condition sensors 15 and 16, and responds by selectively
`
`operating actuators 12 and 13 to adjust the position of headlight 11. Id. at
`
`3:49–58. The disclosed automatic directional control system also includes
`
`feedback sensors 18 and 19, which generate signals representative of the
`
`actual up/down and left/right position of headlight 11, and supply these
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`signals to controller 14. Id. at 4:8–24. These feedback signals can be used
`
`to calibrate the disclosed system. Id. at 6:10–17.
`
`C.
`
`Challenged Claim
`
`Challenged claim 7 is independent, and the remaining challenged
`
`claims depend, directly or indirectly, from claim 7. Claim 7 is reproduced
`
`below.
`
`7. An automatic directional control system for a vehicle
`headlight, comprising:
`
`two or more sensors that are each adapted to generate a
`signal that is representative of at least one of a plurality
`of sensed conditions of a vehicle such that two or more
`sensor signals are generated, said sensed conditions
`including at least a steering angle and a pitch of the
`vehicle;
`
`a controller that is responsive to said two or more sensor
`signals for generating at least one output signal only
`when at least one of said two or more sensor signals
`changes by more
`than a predetermined minimum
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`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.
`
`D.
`
`References Relied Upon
`
`Petitioner relies on the following references:
`
`References
`
`UK Published Patent Application GB 2 309 774 A
`(pub. Aug. 6, 1997) (“Takahashi”)
`
`Japan Patent Application Publication H10-324191
`(pub. Dec. 8, 1998) (“Kato”)
`
`Exhibit No.
`
`1019
`
`1024
`
`US Patent 6,229,263 B1 (iss. May 8, 2001) (“Izawa”)
`
`1026
`
`US Patent 6,293,686 B1 (iss. Sept. 25, 2001)
`(“Hayami”)
`
`Purported admissions by the Patent Owner in the ’034
`patent specification (“Patent Owner Admissions”)
`
`1027
`
`1001
`
`Pet. 13; Dec. on Inst. 36–37.
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` 5
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`Case IPR2016-00193
`Patent 7,241,034 C1
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`E. Grounds of Unpatentability
`
`We instituted trial on the following grounds:
`
`Ground1 Challenged
`Claim(s)
`
`Statutory Basis References
`
`1
`
`2
`
`3
`
`4
`
`5
`
`7–9, 13–18, 21, 23,
`24, and 28–33
`
`35 U.S.C.
`§ 103(a)
`
`Kato and Takahashi
`
`10 and 12
`
`19 and 20
`
`36–39
`
`34 and 35
`
`35 U.S.C.
`§ 103(a)
`
`35 U.S.C.
`§ 103(a)
`
`35 U.S.C.
`§ 103(a)
`
`35 U.S.C.
`§ 103(a)
`
`Kato, Takahashi, Izawa
`and/or Patent Owner
`Admissions
`
`Kato, Takahashi, and
`Patent Owner
`Admissions
`
`Kato, Takahashi, and
`Hayami,
`
`Kato and Takahashi
`
`Dec. on Inst. 36–37.
`
`III. ANALYSIS
`
`A.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art “would have
`
`had a minimum of an undergraduate degree in Mechanical or Electrical
`
`Engineering, Engineering Physics, or a comparable field, or equivalent
`
`industry experience. In addition, a POSITA would have had two or more
`
`years of professional automotive industry experience.” Ex. 1002 ¶ 15.
`
`
`1 We refer to the instituted grounds by these numbers in our analysis.
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`Patent Owner asserts that a person of ordinary skill would have at
`
`least the following qualifications:
`
`a bachelor’s degree in electrical engineering, computer science,
`physics, or other related field of study; at least two years of
`relevant work experience in the automotive industry; a working
`understanding of control systems and associated components
`used within the automotive industry; and, relevant work
`experience with product development and design in the
`automotive industry.
`
`PO Resp. 5.
`
`The parties’ formulations as to the level of ordinary skill in the art are
`
`similar to one another, and neither party identifies with specificity an error in
`
`the opposing party’s formulation. On the record presented we hold that the
`
`cited prior art is representative of the level of ordinary skill in the art. See
`
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of
`
`ordinary skill in the art may be evidenced by the cited references
`
`themselves). Specifically, the references are consistent with the parties’
`
`formulations and demonstrate the level of skill in the art. Our
`
`determinations regarding the patentability of the challenged claims would
`
`remain the same under either party’s proposed formulation.
`
`B.
`
`Claim Construction
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`
`§ 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`(2016) (concluding the broadest reasonable construction “regulation
`
`represents a reasonable exercise of the rulemaking authority that Congress
`
`delegated to the Patent Office”). There is a presumption that claim terms are
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`given their ordinary and customary meaning, as would be understood by a
`
`person of ordinary skill in the art in the context of the specification. See In
`
`re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
`
`applicant may rebut that presumption by providing a definition of the term in
`
`the specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). An applicant also may
`
`narrow the meaning of a claim term by disclaiming or disavowing claim
`
`scope; however, such a “disclaimer or disavowal of claim scope must be
`
`clear and unmistakable, requiring ‘words or expressions of manifest
`
`exclusion or restriction’ in the intrinsic record.” Unwired Planet, LLC v.
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`Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Teleflex, Inc. v.
`
`Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). In the absence
`
`of such a definition or disclaimer, limitations are not to be read from the
`
`specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`
`Cir. 1993).
`
`Our Decision on Institution did not expressly construe any claim
`
`terms. Dec. on Inst. 7. Patent Owner, however, now asserts that “the term
`
`‘vehicle,’ as used consistently throughout the ’034 patent and as understood
`
`by [one of ordinary skill in the art], does not encompass motorcycles.” PO
`
`Resp. 7. Patent Owner argues that such a construction is appropriate “in
`
`light of the inclusion and exclusion of certain discussion throughout the
`
`specification of the ’034 patent.” Id. For the reasons below, we construe the
`
`term “vehicle,” as used in the ’034 patent, to include motorcycles.
`
`The specification of the ’034 patent uses the term “vehicle” in a broad
`
`sense. For example, the Background of the Invention section of the ’034
`
`patent uses the term “vehicle” to encompass “land vehicles, and many other
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`types of vehicles (such as boats and airplanes, for example).” Ex. 1001,
`
`1:20–21. The specification also makes clear that the claims are not limited
`
`to the specific vehicle types described in the Detailed Description of the
`
`Preferred Embodiment. See, e.g., id. at 2:60–3:3 (“The illustrated headlight
`
`11 is, of itself, conventional in the art and is intended to be representative of
`
`any device that can be supported on any type of vehicle for the purpose of
`
`illuminating any area.”) (emphasis added). Petitioner has presented
`
`persuasive testimony and dictionary evidence that the ordinary and
`
`customary meaning of “vehicle” encompasses motorcycles. See Ex. 1035 ¶
`
`16; Ex. 1044; Ex. 1045. Patent Owner does not contend that the term
`
`“vehicle,” in ordinary usage, would exclude motorcycles. See PO Resp. 7.
`
`Patent Owner does not sufficiently identify the portions of the
`
`specification that allegedly support its claim construction argument. See PO
`
`Resp. 7 (indicating that Patent Owner’s claim construction argument is
`
`based on “certain discussion throughout the specification of the ’034 patent,
`
`as noted throughout this Response”). Patent Owner cites to Paragraphs 41
`
`and 44–48 of the Katona Declaration. See PO Resp. 7. However Paragraph
`
`41 is conclusory in nature because it does not identify any specific portion of
`
`the ’034 patent specification that supports Patent Owner’s argument. See
`
`Ex. 2002 ¶ 41. Paragraphs 44–48 attempt to contrast Kato’s motorcycle-
`
`related disclosure with portions of the ’034 patent specification that
`
`allegedly relate to vehicles with four wheels, but these paragraphs do not
`
`identify any lexicographic definitions of the term “vehicle,” or anything
`
`approaching a clear and unmistakable disclaimer or disavowal of claim
`
`scope. See id. ¶¶ 44–48. Moreover, even assuming, arguendo, that the ’034
`
`patent was limited to headlight assemblies “fixed relative to the body of the
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`vehicle,” as Mr. Katona suggests (see id. ¶ 45), it still would not follow that
`
`Kato’s motorcycles fall outside the scope of the ’034 patent specification
`
`and claims. Kato discloses that motorcycle headlights need not be mounted
`
`to a motorcycle’s handlebars, but may instead be “affixed to the vehicle
`
`body” of a motorcycle. See Ex. 1024 ¶¶ 12, 14.
`
`For the foregoing reasons, and based on the current record and our
`
`review of the specification of the ’034 patent, we are not persuaded that the
`
`intrinsic record contains a lexicographic definition or a disclaimer that
`
`would exclude motorcycles from the scope of the term “vehicle.” To the
`
`contrary, the specification makes clear that the term ”vehicle” is a broad
`
`term that is intended to encompass any type of vehicle. Accordingly, we
`
`determine that the term “vehicle,” as used in the specification and claims of
`
`the ’034 patent, encompasses motorcycles.
`
`The parties do not assert that we need to construe any additional terms
`
`in our final written decision. See PO Resp. 49; Reply 4–8. We decline to
`
`adopt other or further claim constructions because doing so is not necessary
`
`in order to resolve the parties’ disputes. See Wellman, Inc. v. Eastman
`
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only
`
`be construed ‘to the extent necessary to resolve the controversy.’” (quoting
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999))).
`
`1.
`
`Overview
`
`C.
`
`Asserted Grounds of Unpatentability
`
`All of the challenged claims are alleged to be unpatentable under
`
`35 U.S.C. § 103. Dec. on Inst. 36–37. A claim is unpatentable under 35
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`U.S.C. § 103 if the differences between the claimed subject matter and the
`
`prior art are “such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which such subject matter pertains.” 35 U.S.C. § 103(a). The
`
`question of obviousness under 35 U.S.C. § 103 is resolved on the basis of
`
`underlying factual determinations, including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
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`383 U.S. 1, 17–18 (1966). The Supreme Court has held that “[t]he
`
`combination of familiar elements according to known methods is likely to be
`
`obvious when it does no more than yield predictable results.” KSR Int’l v.
`
`Teleflex Inc., 550 U.S. 398, 416 (2007). The Supreme Court also has held
`
`that “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.
`
`2.
`
`Objective Indicia of Nonobviousness
`
`The parties have not identified any objective evidence of
`
`nonobviousness that allegedly bears on the patentability of the challenged
`
`claims.
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`3.
`Ground 1: Alleged Obviousness of Claims 7–9, 13–18, 21, 23, 24,
`and 28–33 over Kato and Takahashi
`
`a.
`
`Kato
`
`Kato is directed to a headlight optical axis control device for a
`
`motorcycle. Ex. 1024, Abstract. Kato’s device may incorporate a pitch
`
`angle sensor, an actuator that pivots an optical axis of the headlight in the
`
`pitch angle direction, and a control unit that causes the actuator to adjust the
`
`pitch angle of the headlight based on the pitch angle detected by the pitch
`
`angle sensor. Id. ¶ 7.
`
`Figure 1 of Kato is reproduced below.
`
`
`
`Figure 1 is a functional block diagram illustrating one embodiment of a
`
`headlight optical axis control device. Ex. 1024 ¶ 15. The device includes
`
`potentiometers 121 and 122 to detect pitch angle, angular velocity sensor 14
`
`to detect bank angle, sensor 16 to detect the steering angle, and speed sensor
`
`18 to detect the vehicle speed. Id. ¶ 16. The device also includes controller
`
`24, which determines a pitch angle correction amount, a bank angle direction
`
`correction amount, and a steering angle direction correction amount based
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`on input from potentiometers 121 and 122, and sensors 14, 16, and 18. Id.
`
`Controller 24 then controls step motors 22x, 22y, and 22z to correct the
`
`angle of the optical axis of the headlight. Id.
`
`b.
`
`Takahashi
`
`Takahashi is directed to a vehicle lamp illumination direction control
`
`device that detects the posture of a vehicle, and adjusts the illumination of a
`
`vehicle lamp. Ex. 1019, 1:3–7.
`
`Figure 1 of Takahashi is reproduced below.
`
`
`
`Figure 1 depicts the basic structure of an embodiment of Takahashi’s
`
`illumination direction control device. Ex. 1019, 5:24–29. Vehicle posture
`
`detection device 2 detects, for example, the vertical inclination of the
`
`vehicle. Id. at 5:30–34. Vehicle running condition detection device 3
`
`detects, for example, whether the vehicle is moving or stopped. Id. at 6:16–
`
`25. Control device 4 receives signals from detection devices 2 and 3, and
`
`transmits a control signal to drive 5 in order to correct the illumination
`
`direction of lamp 6. Id. at 6:26–32.
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`c.
`
`Analysis
`
`Independent Claim 7
`
`Petitioner alleges that Kato discloses all the limitations of claim 7,
`
`except for a controller that generates an output signal only when at least one
`
`of two or more sensor signals changes by more than a “predetermined
`
`minimum threshold amount” (the “predetermined threshold amount
`
`limitation”). Specifically, claim 7 recites a controller
`
`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
`
`Pet. 16–20, 53–54; Dec. on Inst. 15. Petitioner alleges that Takahashi
`
`discloses the “predetermined minimum threshold” limitation. Pet. 53–57.
`
`Patent Owner, in its Response to the Petition, argues that the cited
`
`references do not teach the predetermined minimum threshold limitation of
`
`claim 7. PO Resp. 33. Patent Owner, however, does not dispute with
`
`specificity Petitioner’s assertion that Kato discloses a headlight control
`
`device that satisfies all other limitations recited in claim 7. See id. at ii, 12–
`
`37. We find Petitioner’s evidence regarding the non-disputed limitations of
`
`claim 7 to be persuasive and adopt Petitioner’s reasoning. See Pet. 16–20;
`
`Ex. 1002 ¶¶ 31–36, 38–40. The disputed “predetermined minimum
`
`threshold” limitation of claim 7, and Patent Owner’s other arguments
`
`regarding the patentability of claim 7, are addressed below.
`
`The parties dispute whether the following portion of Takahashi
`
`discloses the predetermined minimum threshold limitation of claim 1:
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`Also, in order to prevent the illumination direction of the lamp
`6 from being corrected inadvertently when a sudden change in
`the posture of the vehicle occurs temporarily or due to the
`wrong operation of the lamp 6 caused by external disturbances,
`for example, when the vehicle makes a sudden start or a sudden
`stop, preferably, a threshold value with respect to time may be
`set in detection of the road gradient and, only when the amount
`of variations in the detect signal of the vehicle posture detection
`device 2 exceeds a given reference value and such excessive
`state continues for a time equal to or more than the threshold
`value, the illumination direction of the lamp 6 may be
`corrected; or, a threshold value with respect to the running
`distance of the vehicle may be set and, only when the amount of
`variations in the detect signal of the vehicle posture detection
`device 2 exceeds a given reference value and such excessive
`state continues for a distance equal to or more than the
`threshold value, the illumination direction of the lamp 6 may be
`corrected.
`
`See Pet. 55–56 (quoting Ex. 1019, 9:16–34); PO Resp. 34–35 (quoting Ex.
`
`1019, 9:16–28). Petitioner alleges that Takahashi’s “given reference value”
`
`corresponds to the “predetermined minimum threshold amount” recited in
`
`claim 7. Pet. 33. Patent Owner argues in response that Takahashi’s
`
`headlight controller is “simultaneously responsive to two threshold
`
`requirements working in tandem,” and that “only one of the two tiered
`
`thresholds of Takahashi is rooted in a measured operating condition of the
`
`vehicle while the second is time based.” PO Resp. 35. According to Patent
`
`Owner, this two-tiered “thresholding scheme cannot read on the threshold
`
`limitation of claim 7.” Id. Patent Owner also argues that Takahashi’s
`
`threshold is applied to the “number of variations” in a signal, rather than to
`
`the “magnitude of a sensed signal, as is required by claim 7.” Id. at 36.
`
`Petitioner concedes that Takahashi employs two separate thresholds, but
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`argues that claim 7, “which is open-ended as to how many sensor signals
`
`change by a predetermined minimum threshold, can be met by any number
`
`of threshold requirements.” Reply 21. Petitioner also asserts the distinction
`
`Patent Owner attempts to draw between the magnitude of a sensed signal,
`
`and the number of variations in a sensed signal, is a “distinction without a
`
`difference.” Id. at 22 (citing PO Resp. 12.) We agree with Petitioner.
`
`
`
`The “predetermined minimum threshold” limitation of claim 7 recites
`
`a controller “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
`
`Claim 7 (emphasis added). This limitation requires (i) a predetermined
`
`minimum threshold that is applied to “at least one of said two or more sensor
`
`signals,” and (ii) that no “output signal” be generated by the controller
`
`unless this predetermined minimum threshold is met. Takahashi’s controller
`
`generates an output signal to correct the illumination direction of lamp 6
`
`only when both “the amount of variations in the detect signal of the vehicle
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`posture detection device 2 exceeds a given reference value” (i.e., a
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`predetermined minimum threshold is exceeded), and “such excessive state
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`continues for a time equal to or more than the threshold value” (i.e., a second
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`time threshold is also exceeded). Ex. 1019, 9:23–27. The fact that
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`Takahashi’s controller employs a second time-based threshold does not
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`mean Takahashi’s controller falls outside the scope of the predetermined
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`minimum threshold limitation because, notwithstanding the existence of this
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`second time-based threshold, Takahashi’s controller only generates an
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`output signal when “at least one of said two or more sensor signals” (i.e.,
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`“the amount of variations in the detect signal of [Takahashi’s] vehicle
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`posture detection device”) exceeds a “predetermined minimum threshold”
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`(i.e., Takahashi’s given reference value).
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`We also disagree with Patent Owner’s assertion that Takahashi’s
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`reference value is applied to the number of variations in a sensed signal,
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`rather than the magnitude of variations. When read in isolation, the word
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`“amount” in Takahashi’s recitation “only when the amount of variations in
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`the detect signal of the vehicle posture detection device 2 exceeds a given
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`reference value” could arguably be read to refer to either a quantity or a
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`magnitude. However, other portions of Takahashi make clear that phrase
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`“amount” refers to the magnitude by which the detect signal has varied. For
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`example, Takahashi’s “Fig. 3 shows schematically the amount of variations
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`in the output level V when the vehicle runs first along an uphill slope and
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`thereafter runs along a road having a small gradient.” Ex. 1019, 7:29–32. In
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`Figure 3, the variable “V,” which is indicated on the y axis of a graph,
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`depicts a magnitude, rather than a quantity (i.e., it depicts a detect signal that
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`is high when the vehicle is moving uphill, and lower when the vehicle
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`moves to a road having a smaller gradient). See id. Fig. 3. Figures 4, 5, and
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`6 also support this reading of Takahashi. See id. 8:1–25, Figs. 4–6; see also
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`id. at 8:26–9:32 (“[W]hen the amount of variations with time of the detect
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`signal of the vehicle posture detect signal 2 is equal to or larger than a
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`reference value, it may be judged that the gradient of the road has varied,
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`and the illumination direction of the lamp 6 may be corrected.”)
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`Accordingly, on this record, we find that Takahashi’s controller satisfies the
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`predetermined minimum threshold limitation of claim 7.
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`Petitioner asserts that a person of ordinary skill would have had
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`reason to combine Takahashi’s reference (i.e., threshold) values with Kato’s
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`headlight optical axis control device because doing so would reduce cost and
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`improve safety and visibility. See Pet. 56; Ex. 1002 ¶¶ 80, 147 (citing Ex.
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`1019, 2:4–19, 18:18–22). As Petitioner points out (Pet. 55), Takahashi
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`teaches that the use of such reference values is desirable because it
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`“prevent[s] the illumination direction of [the headlight] from being corrected
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`inadvertently when a sudden change of the posture of the vehicle occurs
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`temporarily . . . .” Ex. 1019, 9:16–34. Takahashi also teaches that prior art
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`devices, in which “the lamp is driven with high frequency,” required
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`actuators that were “expensive and consume[d] a large amount of electric
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`power.” Id. at 2:4–19.
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`Patent Owner argues in response that Kato is not analogous art
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`because the term “vehicle,” as used the ’034 patent, does not encompass
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`motorcycles. See PO Resp. 17–24. In particular, Patent Owner argues that
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`Kato’s “optical axis control device for a motorcycle” (see Ex. 1024, 1) is
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`addressed to a different field of endeavor than the “automatic directional
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`control system for vehicle headlights” (Ex. 1001, 1:1–2) of the ’034 patent,
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`because the term “vehicle” in specification and claims of the ’034 patent
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`excludes motorcycles. PO Resp. 17–20. Patent Owner also argues that Kato
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`is not reasonably pertinent to the problem addressed by the ’034 patent. Id.
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`at 20–24. We disagree.
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`Patent Owner’s first argument, that Kato and the ’034 patent are
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`directed to different fields of endeavor, depends on its argument that the
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`term “vehicle,” as used in the ’034 patent, excludes motorcycles. As
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`discussed above, we reject this argument. In view of our determination that
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`the ’034 patent’s use of the term “vehicle” does not exclude motorcycles, we
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`are persuaded by Petitioner’s arguments (see Reply 8–12; Ex. 1035 ¶¶ 23–
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`30) and find that Kato is directed to the same field of endeavor as the ’034
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`patent, i.e., automatic directional control systems for vehicle headlights.
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`Compare Ex. 1001, 1:57–67, with Ex. 1024 ¶ 1.
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`Even if the ’034 patent’s controller and Kato’s motorcycle controller
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`were directed to different fields of endeavor, Kato’s controller would still be
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`reasonably pertinent to the problem addressed by the ’034 patent. In
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`particular, we find that Patent Owner is incorrect in its assertion that “[n]o
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`crossover applicability exists [] between control devices for a motorcycle
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`headlight and those of cars, trucks, and the like.” PO Resp. at 19. For
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`example, Kato’s controller adjusts a headlight’s optical axis based upon
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`changes to pitch angle or steering angle of a motorcycle. Ex. 1024 ¶ 11.
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`The controller of the ’034 patent adjusts the aiming angle of vehicle
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`headlights to account for operating conditions such as “steering angle” and
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`“pitch.” Ex. 1001, 2:3–20; see Ex. 1035 ¶¶ 17–21. In view of the fact that
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`the ’034 patent and Kato both disclose controllers that automatically adjust
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`headlights of motorized vehicles according to steering angle and pitch, we
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`are persuaded by Petitioner’s arguments (see Reply 8–12; Ex. 1035 ¶¶ 31–
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`32) that Kato would “logically have commended itself” to the attention of an
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`inventor considering the problem addressed by the ’034 patent, even if the
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`problem addressed by the ’034 patent did only relate to four wheeled
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`vehicles. See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80
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`(Fed. Cir. 2007). On this record, we find that Kato qualifies as analogous
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`art.
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`Patent Owner also argues that a person of ordinary skill in the art
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`would not have had reason to combine Kato with the threshold of Takahashi.
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`PO Resp. 24–31. In particular, Patent Owner argues that Takahashi “is
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`applicable in the context of cars, trucks, rather than in the context of
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`motorcycles” (id. at 25), and that a headlight controller for a motorcycle
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`(such as Kato’s controller) would operate differently because, for example,
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`motorcycles lean when they turn, and because “smaller, more agile
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`motorcycles experience greater magnitude changes in pitch, steering or bank
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`angles during operation than four-wheeled vehicles” (id. at 26–29). Patent
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`Owner also argues that language in Kato suggesting that the headlight angle
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`be corrected immediately teaches away from a combination with Takahashi.
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`Id. at 29–31. Patent Owner additionally argues that the proposed
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`combination would render Kato’s system unsuitable for performing its
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`intended purpose (i.e., the “immediate” correction of headlight direction).
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`Id. at 31–32. We are not persuaded by these arguments.
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`Takahashi’s thresholds operate to “prevent the illumination direction
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`of the lamp [] from being corrected inadvertently when a sudden change in
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`the posture of the vehicle occurs temporarily or due to the wrong operation
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`of the lamp [] caused by external disturbances.” Ex. 1019 9:16–20. We are
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`not persuaded that Takahashi’s thresholds could not be used to prevent the
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`direction of Kato’s motorcycle headlight from being corrected inadvertently
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`in the event of a temporary change in vehicle posture or external
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`disturbance. Mr. Katona, Patent Owner’s expert, identifies several
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`differences between motorcycles and four-wheeled vehicles, but does not
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`persuasively and credibly explain why these differences would have
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`prevented the use of such thresholds to prevent Kato’s headlight from being
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`adjusted inadvertently in the