throbber
DECLARATION OF JOE KATONA
`IN SUPPORT OF PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`IPR2016-00193
`U.S. Patent No. 7,241,034
`
`TABLE OF CONTENTS
`
`INTRODUCTION............................................................................................................. 2
`
`SUMMARY OF OPINIONS ............................................................................................ 4
`
`I.
`
`II.
`
`III. QUALIFICATIONS ......................................................................................................... 5
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`IV. APPLICABLE LEGAL STANDARDS .......................................................................... 6
`
`A.
`
`B.
`
`C.
`
`Claim Interpretation .................................................................................................6
`
`Burden of Proof........................................................................................................7
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`Obviousness .............................................................................................................7
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`V.
`
`ONE OF ORDINARY SKILL IN THE ART ............................................................... 11
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`VI.
`
`THE ‘034 PATENT......................................................................................................... 11
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`VII. PRIOR ART REFERENCES ........................................................................................ 14
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`VIII. CLAIM INTERPRETATION ....................................................................................... 16
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`IX. CLAIM 7 OF THE ’034 PATENT IS NOT OBVIOUS OVER KATO AND
`TAKAHASHI .................................................................................................................. 16
`
`X.
`
`CONCLUSION ................................................................................................................. 26
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`
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`I.
`
`1.
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`INTRODUCTION
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`I, Joseph Katona, have been retained by the law firm of Friedman, Suder &
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`Cooke, P.C. (“FSC”), on behalf of its client Adaptive Headlamp Technologies, Inc.
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`(“AHT”), in connection with inter partes review no. IPR2016-00193 of U.S. Patent
`
`No. 7,241,034 C1 (which I will refer to in this declaration as “the ‘034 Patent”). I
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`understand that the ‘034 Patent is owned by AHT and that AHT has sued several
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`automobile manufacturers for infringement of the ‘034 Patent, including Hyandia
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`Motor Company and Hyundai Motor America (“Hyndai”, collectively). I
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`understand that SL Corporation (“SL Corp.”), a manufacturing partner of Hyundai,
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`filed the petition for inter partes review of the ‘034 Patent.
`
`2.
`
`I am being compensated at my standard hourly rate for my work on this
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`matter, including providing this declaration. My compensation is not dependent on
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`the outcome of this inter partes review and in no way affects the substance of my
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`testimony in this declaration. I have no financial interest in ‘034 Patent, AHT, any
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`entity affiliated with the foregoing entities, or in the outcome of this inter partes
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`review or any of the lawsuits involving the ‘034 Patent.
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`3.
`
`I have reviewed and am familiar with the ‘034 Patent (Ex. 1001), its
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`prosecution history (comprising, collectively, Exs. 1003, 1004, and 1008-1016), the
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`prosecution history for Ex Parte and Merged Reexamination Proceedings
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`90/011,011 and 95/001,621 (comprising, collectively, Exs. 1017, 1018, 1020, and
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`1021).
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`4.
`
`I have reviewed and am familiar with the Petition for Inter Partes Review
`
`filed by SL Corp on November 13, 2015 (Paper 1) (which I will refer to in this
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`declaration as the “Petition”), the Board’s Institution Decision in this case dated June
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`7, 2016 (Paper 10) (which I will refer to in this declaration as the “Institution
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`Decision”), and at least the following documents referenced in the Petition:
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` Certified translation of Japan Patent Application Publication H10-
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`324191 (Ex. 1024) (“Kato”);
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` UK Patent Application Publication GB 2 309 774 A (Ex. 1019)
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`(“Takahashi”);
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` Certified translation of Japan Patent Application Publication 2000-
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`185593 (Ex. 1025) (“Fukuwa”);
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` U.S. Patent No. 6,229,263 B1 (Ex. 1026) (“Izawa”);
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` U.S. Patent No. 6,293,686 B1 (Ex. 1027) (“Hayami”); and,
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` Declaration of Mr. Harvey Weinberg (Ex. 1002) (“Weinberg Decl.”).
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`5.
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`In addition, I have reviewed and am familiar with any other documents I
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`specifically cite in this declaration.
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`II.
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`SUMMARY OF OPINIONS
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`6.
`
`Based on my review and analysis of the materials in this matter, as well as my
`
`experience and education, in my opinion Kato does not explicitly nor inherently
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`disclose all of the limitations of independent claim 7 of the ‘034 Patent. In particular,
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`Kato fails to disclose “a controller that is responsive to said two or more sensor
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`signals for generating at least one output signal only when at least one of said two
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`or more sensor signals changes by more than a predetermined minimum threshold
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`amount to prevent at least one of two or more actuators from being operated
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`continuously or unduly frequently in response to relatively small variations in at least
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`one of the sensed conditions” limitation of claim 7. Kato does not contemplate a
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`controller generating at least one output signal only when a predetermined minimum
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`threshold value is exceeded.
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`7.
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`Based on my review and analysis of the materials in this matter, as well as my
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`experience and education, it is also my opinion that it would not have been obvious
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`to combine Kato with the teachings of Takahashi to arrive at claim 7 of the ‘034
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`Patent. In particular, I do not believe that one of ordinary skill in the art at the time
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`when the ‘034 Patent was filed and without knowledge of the teachings of the ‘034
`
`Patent would have had any reason to combine the teachings of Kato with the
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`teachings of Takahashi. First, Kato and Takahashi are unrelated to one another in
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`that Kato is addressed to headlight control in motorcycles, only, while Takahashi
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`focuses on headlight control within four-wheel vehicles. A person of ordinary skill
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`in the art could not be reasonably expected to look to a motorcycle reference for a
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`solution to headlight direction control in four wheel vehicles since the particular
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`problem encountered by four wheel vehicles does not exist in the motorcycle
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`context. Additionally, modifying Kato with the teachings of Takahashi would
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`appear to frustrate, rather than further, the intended purposes of Kato through
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`prevention of immediate correction of headlight direction in response to any change
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`in body position of a motorcycle.
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`III. QUALIFICATIONS
`
`8.
`
`Submitted herewith as Patent Owner’s Exhibit 2003 is my curriculum vitae
`
`(“CV”), which is incorporated by reference.
`
`9.
`
`I received a Bachelor Degree in Electrical Engineering from General Motors
`
`Institute, and a Master of Science Degree in Industrial Administration from Purdue
`
`University. I have 40 years of experience in the automotive field, including 37 years
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`at General Motors, and 5 years of consulting in the field. Work at General Motors,
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`included Director of Structural Development Laboratories, Director of Materials and
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`Fastening Engineering, and Director of Vehicle Architecture.
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`10.
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`I received General Motors’ Safety Achievement Award for the development
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`and implementation of the “Self-Aligning Steering Wheel”, such device was
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`credited by Chief Council of General Motors with “…saving countless lives…”.
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`IV. APPLICABLE LEGAL STANDARDS
`
`11.
`
`I will not offer opinions on principles of law as I am not an attorney.
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`Nonetheless, I have been informed by counsel for AHT of the following principles
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`concerning patentability, and I have used these principles as a framework in arriving
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`at my opinions stated in this declaration.
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`A. Claim Interpretation
`
`12.
`
`I understand that a patentability analysis is performed in two steps. First, the
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`patent claims are interpreted to ascertain their scope. Second, the interpreted claims
`
`are compared to the prior art references.
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`13.
`
`I understand that during an inter partes review the Patent & Trademark Office
`
`(PTO) gives patent claims their broadest reasonable interpretation in light of the
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`specification. I also understand that this interpretation is from the vantage of one of
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`ordinary skill in the art at the time of the patent’s effective filing date.
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`B.
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`Burden of Proof
`
`14.
`
`I understand that the claims in an issued patent are not presumed to be valid
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`during an inter partes review, and that SL Corp. has the burden to show that a patent
`
`claim is not patentable by the preponderance of the evidence.
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`C. Obviousness
`
`15.
`
`I understand that for a patented invention to be obvious under section 103 of
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`the patent law, the challenger must identify prior art references that alone or in
`
`combination would have rendered the claimed invention obvious to one of ordinary
`
`skill in the art at the time of the invention.
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`16. For a claim to be found obvious, every claim limitation must be found present
`
`in the combination of the prior art references before the obviousness analysis
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`proceeds.
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`17.
`
`I understand that the factors that should be assessed in the obviousness
`
`analysis include at least: (1) the scope and content of the prior art; (2) the differences
`
`between the prior art and the claim at issue; (3) the level of ordinary skill in the art;
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`and (4) objective evidence as indicia of nonobviousness.
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`18.
`
`I further understand that the obviousness inquiry must guard against slipping
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`into use of hindsight and resist the temptation to read into the prior art the teachings
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`of the invention at issue. Isolated elements from the prior art should not be picked
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`and chosen and then combined using the invention as a blueprint if such a
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`combination would not have been obvious at the time of the invention.
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`19.
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`It is my understanding that a reason must be shown that would have prompted
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`a person of ordinary skill in the art to combine known elements in the fashion
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`claimed by the patents at issue. Combinations on obviousness grounds cannot be
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`sustained by mere conclusory statements; instead, there must be some articulated
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`teaching, suggestion, or motivation with some rational underpinning to support the
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`legal conclusion of obviousness.
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`20.
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`I understand that prior references as a whole need to be considered, including
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`aspects that teach away from a claimed invention which may rebut showing of
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`obviousness.
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`21.
`
`I also understand that if a combination of two or more prior art references are
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`used to render a claimed invention obvious, there must be a reasonable expectation
`
`of success in making or practicing the claimed invention based on such combination.
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`The combination cannot modify a prior art reference such that it would render the
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`reference unsatisfactory for its intended purpose or change the principle of operation
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`of the reference.
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`22.
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`I understand that it is impermissible to use the patent as a template (and
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`reason) for combining prior art references as that would be applying hindsight. The
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`ordinary skilled artisan would have to be motivated to combine references to create
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`the combination of features required by the patent independent of the patent.
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`23.
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`In addition, I understand the obviousness analysis cannot discount at the time
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`of invention, the inventor’s insights, and willingness to confront and overcome
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`obstacles, and even serendipity where the pathway to the invention seems to follow
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`the logical steps to produce these patented properties.
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`24.
`
`I understand that in making a determination on obviousness, one must also
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`consider secondary considerations or objective evidence that may indicate
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`nonobviousness. I understand that these secondary considerations help illuminate
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`the subjective determination involved in the hypothesis used to draw the legal
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`conclusion of obviousness based upon the first three obviousness inquiries.
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`25.
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`It is my understanding that objective consideration focuses attention on
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`economic and motivational issues rather than technical issues, and is therefore more
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`judicially cognizable in assessing patent validity than are the highly technical facts
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`often present in patent litigation. I also understand that objective considerations may
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`be the most pertinent, probative, and revealing evidence available to the decision
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`maker in reaching a conclusion about obviousness. Under certain circumstances,
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`the evidence of secondary considerations may be particularly strong and entitled to
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`such weight that it may be decisive.
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`26.
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`I understand that examples of secondary considerations that must be
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`considered as part of an obviousness inquiry include:
`
`(1) The invention’s commercial success - Were products covered by the
`claim commercially successful due to the merits of the claimed
`invention rather than due to advertising, promotion, salesmanship, or
`features of the product other than those found in the claim?
`
`
`(2) Long felt but unresolved needs - Was there long felt need for a
`solution to the problem facing the inventors, which was satisfied by
`the claimed invention?
`
`
`(3) The failure of others - Did others try, but fail, to solve the problem
`solved by the claimed invention?
`
`
`(4)
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`Skepticism by experts - Did experts and those skilled in the art
`express skepticism that a particular solution would solve the problem
`with which the art was faced?
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`Praise by others - Did others in the field praise the claimed invention?
`
`
`(5)
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`(6) Unexpected results - Did the claimed invention achieve unexpectedly
`superior results over the closest prior art?
`
`
`(7) Recognition of a problem – Was the problem or the source of the
`problem solved by the claimed invention known in the art?
`
`
`(8) Copying of the invention - Did others copy the claimed invention?
`
`(9) Commercial acquiescence and licensing - Did others accept licenses
`under the patent because of the merits of the claimed invention,
`attempt to design around the invention, or simply refraining from
`action?
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`
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`V. ONE OF ORDINARY SKILL IN THE ART
`
`27.
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`I have considered what was reasonably known by one of ordinary skill in the
`
`art as of the effective filing date of the ‘034 Patent, which I understand to be October
`
`31, 2001.
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`28.
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`In this case, a person having ordinary skill in the art (“PHOSITA”) would
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`have at least a bachelor’s degree in electrical engineering, computer science, physics,
`
`or other related field of study and at least two years of relevant work experience in
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`the automotive industry. A PHOSITA would have a working understanding of
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`control systems and associated components used within the automotive industry and
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`would have relevant work experience with product development and design in the
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`automotive industry. A PHOSITA would have knowledge of vehicle attributes and
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`operating conditions necessary to determine the necessary headlamp directional
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`control responses, and how to effectuate those responses. I meet all of these have
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`an understanding of vehicle systems dynamics and control for developing the
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`operational architecture of such a system.
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`VI. THE ‘034 PATENT
`
`29.
`
`I understand that the named inventors of the ‘034 Patent, entitled “Automatic
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`Directional Control System for Vehicle Headlights,” were engineers working at
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`Dana Holding Corporation at the time of the invention. I understand Dana Holding
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`Corporation to be an American manufacturer of automotive parts and supplier of a
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`wide range of technologies for original-equipment and aftermarket products.
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`30.
`
`I understand the ‘034 Patent issued on July 10, 2007 and was later assigned to
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`AHT, a company unrelated to Dana Holding Corporation created to protect and
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`enforce the patent rights of the ‘034 Patent. I understand the ‘034 Patent claims
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`priority to three provisional applications, Appl. No. 60/335,409 filed on October 31,
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`2001, 60/356,703 filed on February 13, 2002, and 60/369,447 filed on April 2, 2002,
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`but was conceived and actually reduced to practice prior to that time. On October
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`31, 2002, the patent application resulting in the ‘034 Patent was filed with the U.S.
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`Patent and Trademark Office.
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`31. The ‘034 Patent discloses and claims automatic directional control systems
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`for a vehicle headlight which address several deficiencies in headlight control
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`systems. In particular, the ‘034 Patent discloses headlight control systems which
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`operate to adjust the beam direction of a vehicle headlight in response to two or more
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`sensed conditions of the vehicle.
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`32. The ‘034 Patent describes certain deficiencies in fixedly positioned
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`headlights, such as: (1) inability to adjust beam direction upward or downward in
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`response to the speed or pitch of the vehicle to more brightly illuminate either farther
`
`off or closer portions of the roadway; and, (2) inability to adjust beam direction to
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`the left or right corresponding to the direction of cornering as the vehicle turns a
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`corner, illuminating areas somewhat lateral to the vehicle.
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`33. The control systems of the ‘034 Patent utilize at least two sensors, each of
`
`which senses at least one condition of the vehicle, including at least the steering
`
`angle and vehicle pitch. Additionally, conditions such as road speed, suspension
`
`height, rate of change of road speed, rate of change of pitch of the vehicle, and/or
`
`rate of change of suspension height of the vehicle may be sensed.
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`34. Based on the disclosure in the specification, I understand that the control
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`systems of the ‘034 Patent do not sense and are not responsive to the banking, or
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`roll, of the vehicle or the rate of change of banking angle, or roll angle, of the vehicle
`
`are disclosed or claimed as a condition which may be sensed.
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`35. The control systems to further comprise a controller responsive to the sensed
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`conditions of the vehicle to generate an output signal for adjusting the beam direction
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`of a headlight. The controller only generates the output signal upon at least one of
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`the sensor signals representing a condition of the vehicle changing by more than a
`
`predetermined minimum threshold is exceeded. I understand the predetermined
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`minimum threshold value as comprising a minimum magnitude or rate change of a
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`sensed condition of the vehicle, rather than comprising a minimum time or distance
`
`value. Further, I understand the predetermined minimum threshold as having the
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`practical effect of preventing the actuators from moving the headlamp when one or
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`more of the sensed conditions are below a predetermined minimum threshold
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`amount to avoid continuous and minimal variations of movement of the headlight.
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`VII. PRIOR ART REFERENCES
`
`36. Kato addresses the problem of instability of the beam irradiation range of the
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`headlight of a motorcycle caused by changes in the pitch angle, bank angle, and
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`steering angle of the motorcycle during operation. Kato distinguishes headlight
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`control parameters within the motorcycle setting from that of four-wheel vehicles,
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`stating that “the pitch angle of a motorcycle changes more readily than that of a car
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`due to acceleration, deceleration, or bumps in the road.” Kato at 2 ([0004]). Kato
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`focuses on prevention of swaying and flattening of the beam path during operation
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`of a motorcycle. These effects are caused by leaning of the motorcycle into turns
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`during cornering. Kato at 2 ([0005]).
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`37. 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
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`axis by turning the headlight back toward the center position. This overturn
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`correction type movement abates the effects of larger than optimal movements of
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`the headlamp to prevent flattening of the elliptical irradiation cone of the headlight.
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`Kato at 2-3 ([0008], [0010]).
`
`38. The aim of Kato is the opposite of that of the ‘034 Patent, which seeks to cause
`
`the headlights to swivel in the direction of the turn and pitch of a four-wheel vehicle
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`to provide illumination of the road surface in the path of movement of the vehicle
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`rather than providing for a reverse angle correction movement.
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`39. Takahashi discloses an automatic leveling device which rotates a headlight
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`vertically to adjust for inclination of the vehicle. The adjustment is made so that the
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`illumination direction of the headlight “can be always kept in the reference
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`direction.” Takahashi at 1-2. In other words, the headlight is adjusted so that it is
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`always in a vertically centered position. Takahashi 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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`specified in the ‘034 Patent, but rather maintains the headlights at a horizontally
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`centered position.
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`40. 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. The second condition entails that a certain number of variations
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`in the road gradient must occur over a period of time or distance before the headlight
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`can be adjusted back to the predetermined centered position. Takahashi at 9 (lns.
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`16-28). Takahashi discloses a different approach than that of the ‘034 Patent to
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`headlight control, relying on the number and duration of changes of the signal
`
`instead of the magnitude of the signal in determining when to rotate the headlight
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`vertically.
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`VIII. CLAIM INTERPRETATION
`
`41.
`
`I do not believe it would be reasonable for one skilled in the art to interpret
`
`the phrase “vehicle” within the ‘034 specification to include motorcycles. I therefore
`
`believe that the broadest reasonable interpretation of “vehicle”, which the Board
`
`should also apply in this inter partes review, excludes motorcycles and other two
`
`wheeled vehicles for reasons stated throughout this declaration relating to both the
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`content included and not included within the specification of the ‘034 Patent as well
`
`as well as to knowledge of a PHOSITA pertaining to relevant operating conditions
`
`associated to motorcycles as compared to cars, trucks, and other four wheeled
`
`vehicles.
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`IX. CLAIM 7 OF THE ’034 PATENT IS NOT OBVIOUS OVER KATO
`AND TAKAHASHI
`
`42.
`
`I understand that SL Corp. has asserted that all of the limitations of
`
`independent claim 7, except the threshold limitation, are disclosed in Kato while
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`Takahashi allegedly discloses the threshold limitation. SL Corp. concludes that it
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`would have been obvious to a person of ordinary skill in the art to modify Kato in
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`view of Takahashi as claimed in Independent claim 7 to “reduce cost, and improve
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`safety and visibility” due to the “undesirability of causing the actuators to move the
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`headlights every time there was a small bump in the road.” Petition at 56-57. I
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`disagree.
`
`43.
`
`In my opinion, a PHOSITA would not expect that a headlight control system
`
`implemented within a motorcycle would be useful to solve headlight control
`
`problems within the context of cars, trucks, and the like since motorcycles do not
`
`typically encounter the problem of the beam path of their headlight not being
`
`directed in the direction of travel of the motorcycle. This is because the headlight
`
`of a motorcycle is typically mounted to the handle bars of the motorcycle and
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`configured to turn with the handlebars during cornering.
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`44.
`
`It is my opinion that Kato is directed to different field of endeavor than ‘034
`
`Patent since the headlight assemblies of a motorcycle comprise a different structure
`
`from that of cars, trucks, and other similar land vehicles, particularly in regard to the
`
`manner in which the headlight is mounted. Specifically, the rotatable mounting
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`structure of motorcycle headlights, with the headlight affixed to the movable
`
`handlebar of the motorcycle, differs greatly from the fixed mounting structure
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`implemented with cars, trucks, and the like. The rotatable mounting of motorcycle
`
`headlights eliminates the particular problem faced by other land vehicles which is
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`addressed by the ‘034 Patent that of the beam path of the headlight not being oriented
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`in the direction of vehicle travel during cornering. In my opinion, these structural
`
`differences render the problem addressed by the ‘034 Patent non-existent in the
`
`motorcycle context.
`
`45.
`
`In my opinion, Kato is not “reasonably pertinent” to the problem addressed in
`
`the ‘034 Patent. A person of ordinary skill in the art would not look to motorcycle
`
`related art for a solution to the beam direction problem addressed by the ‘034 Patent.
`
`The ‘034 Patent indicates that the invention is not directed at motorcycle applications
`
`because it addresses a problem encountered by vehicles having headlights which are
`
`fixed relative to the body of the vehicle. In particular, I note the following excerpt
`
`from the ‘034 Patent:
`
`In the past, these headlights have been mounted on the vehicle in fixed
`positions relative thereto such that the beams of light are projected
`therefrom at predetermined directional aiming angles relative to the
`vehicle. Although such fixed aiming angle headlight systems have and
`continue to function adequately, they cannot alter the directional
`aiming angles of the headlights to account for changes in the operating
`conditions of the vehicle. ‘034 Patent at 1:36-43 (emphasis added).
`
`
`This problem is inapplicable to vehicles in which the headlight assemblies are
`
`mounted to movable steering components, such as the handlebar assembly of a
`
`motorcycle, since the beams projecting from the headlight of a motorcycle is not
`
`fixed relative to the body of the vehicle. Further, the ‘034 Patent describes the ability
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`to “adjust the aiming angle of the headlights either toward the left or toward the right
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`(depending on the direction of the turn) such that an area that is somewhat lateral to
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`the front of the vehicle is more brightly illuminated” as being a desirable
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`improvement at Col. 1, Lines 51-56. Here, again, I do not understand the problem
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`addressed as one that exists in motorcycles since they have headlight assemblies
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`which are mounted to movable steering components which already accommodate
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`the desirable feature described. In my opinion, the ‘034 Patent is addressed to
`
`problems encountered only by vehicles comprising headlight assemblies which are
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`fixedly mounted relative to the body of the vehicle; not motorcycles.
`
`46. Unlike the ‘034 Patent, Kato is designed to be responsive to certain operating
`
`conditions which are paramount in the motorcycle setting but are virtually
`
`inapplicable to cars, trucks, and other similar vehicles, primarily the bank angle. The
`
`bank angle is the angle at which the vehicle is inclined about its longitudinal axis
`
`with respect to a horizontal reference plane, especially during cornering. Bank angle
`
`is an important and dynamic operating condition for vehicles that “lean” into turns,
`
`like motorcycles, for example. In motorcycle applications, the bank angle of the
`
`bike body greatly affects the beam path and beam shape of the headlight.
`
`Conversely, in cars, trucks, and the like, bank angle (commonly referred to as
`
`“vehicle roll”) is an unimportant operating condition which changes by insubstantial
`
`amounts during cornering. It has far less effect on headlamp dynamic deflections
`
`than those that are associated with motorcycles. Further, a dynamic beam aiming
`
`IPR2016-00193
`AHT Exh. 2002
`
`

`
`system for a car or truck could be made to be quite effective without any
`
`consideration bank angle (vehicle roll) whatsoever.
`
`47. Since the ‘034 Patent addresses problems apart from those experienced by
`
`motorcycles, bank angle is not among the operating conditions to which the
`
`headlight directional control device of the ‘034 Patent is responsive. The operating
`
`conditions listed throughout the specification and claims of the ‘034 Patent,
`
`including within the Summary of the Invention section, do not include the bank angle
`
`or vehicle roll or any equivalent thereof. See, e.g., ‘034 Patent at 2:7-13; 6:65–7:7;
`
`and, Claims 3-39.
`
`48. The ‘034 Patent does not describe the systems and methods responsive to
`
`changes in the bank angle of a vehicle since the type of vehicle which “leans” into
`
`turns, namely motorcycles, are generally not implemented with headlight assemblies
`
`fixedly mounted relative to the body of the vehicle and do not encounter the problem
`
`addressed by the ‘034 Patent.
`
`49.
`
`In my opinion, no objective motivation exists to combine Kato with the
`
`teachings of Takahashi and none is provided in the SL Corp. Petition. SL Corp’s
`
`proffered motivation fails to consider Kato and Takahashi in their entireties and also
`
`does not account for Kato teaching away from implementation of a threshold as
`
`taught by Takahashi. In fact, modifying Kato with the teachings of Takahashi would
`
`render Kato unsuitable for performing an intended function of Kato.
`
`IPR2016-00193
`AHT Exh. 2002
`
`

`
`50. SL Corp.’s alleged motivation to combine ignores that Takahashi is applicable
`
`to a different field of endeavor than Kato, with each directed toward different types
`
`of vehicles which are subject to greater or lesser effects from varying conditions
`
`during operation. Takahashi is concerned with vertical adjustment of the headlights
`
`of a vehicle in response to changes in the posture of the vehicle. Takahashi at 1:3-
`
`7. The figures and description of the invention of Takahashi indicate to me that
`
`Takahashi is applicable in the context of cars, trucks, rather than in the context of
`
`motorcycles. See, e.g., Takahashi at Fig. 2 and 4:18-19 (described as “a schematic
`
`view of a vehicle” and showing a four-wheeled car); See, also, Takahashi at 1:14-24
`
`(vehicle posture affected by “number of [vehicle] occupants” and “loaded condition
`
`of loads on board the vehicle”).
`
`51.
`
`I understand Kato to be directed at preventing “flattening of the irradiation
`
`range of the headlight” of a motorcycle during cornering since “when the vehicle
`
`body is tilted in the direction of the bank angle.” In my opinion, motorcycles are
`
`subject to greater frequency and range of dynamic movement during operation than
`
`vehicles comprising four or more wheels. For example, the body position of a
`
`motorcycle leans into turns in a manner not typically possible for land vehicles
`
`having four or more points of contact with the ground. In fact, any leaning that may
`
`occur during cornering in a four-wheeled vehicle is in a direction away from the
`
`turn. Additionally, because motorcycles are typically implemented with a single
`
`IPR2016-00193
`AHT Exh. 2002
`
`

`
`headlight mounted at the centerline of the motorcycle’s body, resulting in a smaller
`
`illumination cone than exists in four-wheeled vehicles, motorcycles are particularly
`
`susceptible to the effects of flattening or elongation of the irradiation range of the
`
`headlight during cornering.
`
`52. As noted in Kato, “the pitch angle of a motorcycle changes more readily than
`
`that of a car due to acceleration, deceleration, or bumps in the road.” Kato at 2
`
`([0004]). By way of example, a “wheelie” is a maneuver easily performed on a
`
`motorcycle. Vehicle pitch on a motorcycle is far more sensitive to COG, weight
`

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