UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIALS AND APPEAL BOARD
`
`SL CORPORATION
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,241,034
`Case IPR No.: Unassigned
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,241,034 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.1-80, 42.100 et seq.
`
`
`
`BEFORE THE PATENT TRIALS AND APPEAL BOARD
`
`SL CORPORATION
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,241,034
`Case IPR No.: Unassigned
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,241,034 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.1-80, 42.100 et seq.
`
`
`
`LIST OF EXHIBITS
`
`Exhibit 1001
`
`U.S. Patent No. 7,241,034 (“the ‘034 Patent”), entitled
`“Automatic Directional Control System for Vehicle
`Headlights,” issued on July 10, 2007 to James E. Smith, et. al.
`
`Exhibit 1002
`
`Declaration of Harvey Weinberg
`
`Exhibit 1003
`
`March 23, 2012 Amendment D and Request for
`Reconsideration
`
`Exhibit 1004
`
`December 18, 2012 Action Closing Prosecution
`
`Exhibit 1005
`
`U.S. Patent 6,305,823 to Toda et al (“Toda”)
`
`Exhibit 1006
`
`U.S. Patent 6,193,398 to Okuchi et al (“Okuchi”)
`
`Exhibit 1007
`
`U.S. Patent 5,909,949 to Gotoh (“Gotoh”)
`
`Exhibit 1008
`
`December 23, 2003 Office Action
`
`Exhibit 1009
`
`March 25, 2004 Amendment
`
`Exhibit 1010
`
`October 31, 2002 Utility Patent Application
`
`Exhibit 1011
`
`June 15, 2004 Final Rejection
`
`Exhibit 1012
`
`April 14, 2005 Non-Final Rejection
`
`Exhibit 1013
`
`October 05, 2005 Final Rejection
`
`Exhibit 1014
`
`October 06, 2006 Non-Final Rejection
`
`Exhibit 1015
`
`January 10, 2007 Patentee’s Amendment
`
`Exhibit 1016
`
`January 31, 2007 Interview Summary
`
`Exhibit 1017
`
`Exhibit 1018
`
`July 09, 2010 Substitute Request for Ex Parte Reexamination
`of U.S. Patent No. 7,241,034
`
`May 16, 2011 Request for Inter Partes Reexamination of U.S.
`Patent No. 7,241,034
`
`Exhibit 1019
`
`GB Patent Application 2,309,774 to Takahashi (“Takahashi”)
`
`i
`
`
`
`Exhibit 1020
`
`June 23, 2011 Decision Granting Reexamination
`
`Exhibit 1021
`
`February 23, 2012 Decision Merging Proceedings
`
`Exhibit 1022
`
`GB Patent Application 2,309,773 to Uchida (“Uchida”)
`
`Exhibit 1023
`
`American Heritage Dictionary definition of “controller”
`
`Exhibit 1024
`
`Japanese Patent Application No. 09-151649 to Kato (“Kato”)
`
`Exhibit 1025
`
`Japanese Patent Application No. 10-364667 to Fukuwa et al.
`(“Fukuwa”)
`
`Exhibit 1026
`
`US Patent 6,229,263 to Izawa (“Izawa”)
`
`Exhibit 1027
`
`US Patent 6,293,686 to Hayami et al. (“Hayami”)
`
`ii
`
`
`
`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`NOTICE OF LEAD AND BACKUP COUNSEL ..........................................3
`
`III. NOTICE OF EACH REAL PARTY-IN-INTEREST.....................................3
`
`IV. NOTICE OF RELATED MATTERS .............................................................3
`
`V.
`
`VI.
`
`NOTICE OF SERVICE INFORMATION FOR PETITIONER.....................4
`
`SERVICE ON THE PATENT OWNER.........................................................4
`
`VII. GROUNDS FOR STANDING........................................................................5
`
`VIII. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW...............5
`
`IX.
`
`SUMMARY OF THE ‘034 PATENT.............................................................5
`
`A.
`
`B.
`
`C.
`
`Overview of the ‘034 Patent..................................................................5
`
`Summary of the Prosecution History ....................................................6
`
`Summary of the Reexamination............................................................7
`
`X.
`
`CONSTRUCTION OF THE CLAIMS ...........................................................9
`
`A.
`
`B.
`
`Applicable legal standards ....................................................................9
`
`Proposed constructions........................................................................10
`
`XI.
`
`PRIOR ART REFERENCES RELIED ON BY PETITIONER ...................13
`
`XII. STATEMENT OF PRECISE RELIEF REQUESTED .................................14
`
`XIII. STATEMENT OF NON-REDUNDANCY ..................................................15
`
`XIV. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY ..................................................................................15
`
`A.
`
`Ground 1: Claims 7-9, 13-18, 21-24, and 28-33 are anticipated by
`Kato. ....................................................................................................16
`
`iii
`
`
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Ground 2: Claims 3-6 and 10-12 are obvious over Kato in view of
`Izawa, and/or in view of Patent Owner’s admissions regarding the
`prior. ....................................................................................................25
`
`Ground 3: Claims 19-20 and 25-27 are obvious over Kato in view of
`Patent Owner’s admissions regarding the prior art.............................30
`
`Ground 4: Claims 7-9, 13-17, 21-24, and 28-33 are anticipated by
`Fukuwa ................................................................................................33
`
`Ground 5: Claims 3-6 and 10-12 are obvious over Fukuwa in view of
`Izawa, and/or in view of Patent Owner’s admissions regarding the
`prior art................................................................................................42
`
`Ground 6: Claims 18-20 and 25-27 are obvious over Fukuwa in view
`of Patent Owner’s admissions regarding the prior art.........................47
`
`Ground 7: Claims 36-39 are obvious over Kato in view of Hayami.
`Ground 8: Claims 36-39 are obvious over Fukuwa in view of Hayami.
`.............................................................................................................51
`
`Ground 9: Claims 3-39 are obvious over Kato in view of Izawa and
`Takahashi, and/or in view of Patent Owner’s admissions regarding the
`prior art. Ground 10: Claims 3-39 are obvious over Fukuwa in view of
`Izawa and Takahashi, and/or in view of Patent Owner’s admissions
`regarding the prior art..........................................................................53
`
`XV. CONCLUSION..............................................................................................60
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 7,241,034 is directed to a headlight control system that
`
`enables the headlights to move up and down and/or left and right in response to,
`
`for example, changes in the orientation of the vehicle. There is nothing novel
`
`about the idea of directionally controlled headlights. Ex. 1001 at 1:57-58 (“it is
`
`known to provide a directional control system for vehicle headlights”). Headlights
`
`that move in response to changes in vehicle steering and/or pitch have been around
`
`since the 1930s. Ex. 1002 (Declaration of Harvey Weinberg) (“Weinberg”) ¶ 17.
`
`Nor is there anything novel about the specific components that are identified in the
`
`claims to comprise the system: sensors for identifying changes in steering and
`
`pitch, actuators for moving the headlights, and a controller that responds to the
`
`sensors and sends signals to the actuators. Ex. 1001 at 3:61-62 (“condition sensors
`
`15 and 16 are conventional in the art…”), at 3:28-29 (“actuators 12 and 13 are
`
`conventional in the art…”) and at 3:53-55 (“headlight directional controller 14 can
`
`be embodied as any control system, such as a microprocessor or programmable
`
`electronic controller…”). All of these components have been known in the art for
`
`years. Weinberg ¶¶ 17-18.
`
`The purported novelty of the reexamined claims of the ‘034 patent lies in the
`
`fact that the claims require two sensors and two actuators. This is evident from the
`
`following comments the Patent Owner made during reexamination:
`
`1
`
`
`
`Applicant respectfully asserts that the references as relied on by the
`Examiner fail to teach “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, said sensed conditions including at
`least steering angle and pitch of the vehicle” (emphasis added) as
`claimed by Applicant. Further, applicant respectfully asserts that the
`references as relied on by the Examiner fail to teach “two of more
`actuators each being adapted to be connected to the headlight to
`effect movement thereof in accordance with said at least one output
`signal” (emphasis added), as claimed by Applicant.
`
`Ex. 1003 (Applicant’s Remarks) at 10-11 (emphasis in original). The Examiner
`
`allowed the reexamined claims to issue based largely on this argument. Ex. 1004
`
`(Action Closing Prosecution) at 12-13 (identifying the absence of prior art
`
`disclosing two sensor and two actuators in the “Statement of Reasons for
`
`Patentability and/or Confirmation”).
`
`When the Examiner determined that the prior art of record did not disclose
`
`the use of two sensors and two actuators, the primary prior art references relied
`
`upon in this petition, Japanese Patent Application No. 09-151649 (“Kato”) and
`
`Japanese Patent Application No. 10-364667 (“Fukuwa”), were not of record. Kato
`
`and Fukuwa both disclose the use of multiple sensors (including sensors to detect
`
`changes in pitch and steering position) and multiple actuators to adjust headlight
`
`2
`
`
`
`position. When these references are considered, it is clear the reexamined ‘034
`
`patent should never have issued.
`
`II.
`
`NOTICE OF LEAD AND BACKUP COUNSEL
`Lead Counsel: David Cotta (Reg. No. 52,771); Tel.: 617-348-1861; Fax:
`
`617-542-2241; Address: Mintz Levin Cohn Ferris Glovsky and Popeo PC, One
`
`Financial Center, Boston, MA 02111.
`
`Backup Counsel: Peter Cuomo (Reg. No. 58,481); Tel.: 617-348-1854;
`
`Fax: 617-542-2241; Address: Mintz Levin Cohn Ferris Glovsky and Popeo PC,
`
`One Financial Center, Boston, MA 02111; Kongsik Kim (Reg. No. 63,867); Tel.:
`
`617-348-3087; Fax: 617-542-2241; Address: Mintz Levin Cohn Ferris Glovsky
`
`and Popeo PC, One Financial Center, Boston, MA 02111.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`III. NOTICE OF EACH REAL PARTY-IN-INTEREST
`The real parties-in-interest for this petition to institute inter partes review are
`
`SL Corp., Hyundai Motor Company, and Hyundai Motor America.
`
`IV. NOTICE OF RELATED MATTERS
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that U.S. Patent No.
`
`7,241,034 is the subject of the following judicial proceedings: Adaptive Headlamp
`
`Technologies, Inc. v. Hyundai Motor America, 1:15-cv-00563-GMS (D. Del);
`
`Adaptive Headlamp Technologies Inc. v. Mercedes-Benz USA LLC, 1:15-cv-
`
`3
`
`
`
`00075-GMS (D. Del); Adaptive Headlamp Technologies Inc. v. FCA, US LLC, et
`
`al 1:15-cv-00073-GMS (D. Del); Adaptive Headlamp Technologies Inc. v Nissan
`
`North America Inc., 1:15-cv-00074-GMS (D. Del); Adaptive Headlamp
`
`Technologies Inc. v. BMW of North America LLC, 1:14-cv-00962-GMS (D. Del);
`
`Adaptive Headlamp Technologies, Inc. v. General Motors LLC, 1-15-cv-00781 (D.
`
`Del); Adaptive Headlamp Technologies, Inc. v. Volvo Cars of North America, LLC,
`
`1-15-cv-00780 (D. Del); Adaptive Headlamp Technologies, Inc. v. Toyota Motor
`
`Sales, U.S.A., Inc., 1-15-cv-00779 (D. Del); Adaptive Headlamp Technologies, Inc.
`
`v. Mazda Motor of North America, Inc., 1-15-cv-00782 (D. Del). U.S. Patent No.
`
`7,241,034 is also the subject of the following Patent Trial and Appeal Board
`
`proceeding: Petition for Inter Partes Review by Koito Manufacturing Co., Ltd.,
`
`IPR2016-00079 (Petition filed Oct 23, 2014).
`
`V.
`
`NOTICE OF SERVICE INFORMATION FOR PETITIONER
`
`Please address all correspondence to Lead Counsel at the address shown
`
`above. Petitioner also consents to electronic service by email at:
`
`dcotta@mintz.com; pjcuomo@mintz.com; and kkim@mintz.com.
`
`VI.
`
`SERVICE ON THE PATENT OWNER
`
`Pursuant to 37 C.F.R. § 105(a), service of this Petition has been made
`
`simultaneously with this filing to the current correspondence address for the ‘034
`
`4
`
`
`
`patent and to the address of Patent Owner’s litigation counsel as shown in the
`
`Certificate of Service.
`
`VII. GROUNDS FOR STANDING
`
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the patent claims on the grounds
`
`identified in this Petition.
`
`VIII. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`A petition for inter partes review must demonstrate “a reasonable likelihood
`
`that the Petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). This Petition meets that threshold.
`
`All of the elements of reexamined claims 3-39 of the U.S. Patent No. 7,241,034 are
`
`taught and/or disclosed in the prior art as explained below, and reasons to combine
`
`the prior art teachings and/or disclosures, where necessary, are established for each
`
`proposed ground under 35 U.S.C. § 103(a).
`
`IX.
`
`SUMMARY OF THE ‘034 PATENT
`
`A.
`
`Overview of the ‘034 Patent
`
`The ‘034 patent is directed to a headlight control system that enables the
`
`headlights to move up and down and/or left and right in response to, for example,
`
`changes in the orientation of the vehicle. The system includes two or more sensors
`
`that detect information about the condition of the vehicle (e.g., steering angle,
`
`5
`
`
`
`vehicle speed, and pitch), two or more actuators that move the headlights, and a
`
`controller that responds to signals from the sensors and sends signals to the
`
`actuators. The controller sends signals to the actuators only when the signals from
`
`the sensors exceed a predetermined minimum threshold.
`
`The reexamined ‘034 patent includes 37 claims of which claims 3 and 7 are
`
`the only independent claims. Claim 7 is the broadest claim. The remaining claims
`
`of the ‘034 patent further define this basic system by including limitations
`
`regarding the number and type of sensors (claims 3-6, 8-13, and 31-32), the
`
`number and type of actuators (claims 14-20), the inclusion of feedback sensors to
`
`determine the position of the actuators (claims 25-27), the type of controller and
`
`how it is programmed (claims 23-24, 28-30, and 33-35), and other features that do
`
`not lend patentability to the claimed system (claims 21-22, and 36-39).
`
`B.
`
`Summary of the Prosecution History
`
`The ‘034 Patent was filed on October 31, 2002 as Application No.
`
`10/285,312, with one independent claim and twelve additional dependent claims.
`
`Ex. 1010 (claims as filed). The original application claimed priority from three
`
`provisional patent applications, the earlier of which was filed on October 31, 2001.
`
`Ex. 1001 (‘034 Patent). In an initial office action on December 23, 2003, the
`
`Examiner rejected all of the pending claims as being anticipated by one or more of
`
`U.S. Patent 6,305,823 to Toda et al (“Toda”) (Ex. 1005), U.S. Patent 6,193,398 to
`
`6
`
`
`
`Okuchi et al (“Okuchi”) (Ex. 1006), and U.S. Patent 5,909,949 to Gotoh (“Gotoh”)
`
`(Ex. 1007). Ex. 1008 at 2-4. In response, the patentee amended claim 1 to cover a
`
`sensor signal for generating an output signal “only when said sensor signal changes
`
`by more than a predetermined amount,” cancelled claim 6, and rewrote claim 7 as
`
`an independent claim. Ex. 1009 (Mar. 25, 2004 amendment).
`
`In four subsequent office actions, the Examiner continued to reject all
`
`pending claims as being anticipated by the same references. Ex. 1011-1014. The
`
`patentee finally overcame the § 102 rejections by cancelling and amending various
`
`claims and persuading the Examiner that the prior art did not disclose a controller
`
`that generated an output signal “only when the sensor signal changes by more than
`
`a predetermined amount.” Ex. 1015 (Patentee’s Jan. 10, 2007 amendment); Ex.
`
`1016 (Jan. 31, 2007 Interview Summary). The ‘034 patent issued on July 10,
`
`2007. Ex. 1001 (‘034 patent).
`
`Summary of the Reexamination
`C.
`In 2010, the Patent Owner filed a request for Ex Parte Reexamination of
`
`claims 1 and 3 of the ‘034 patent which was granted. Ex. 1017. In 2011,
`
`Volkswagen Group of America, Inc. filed a request for Inter Partes Reexamination
`
`7
`
`
`
`of all the claims of the ‘034 patent. Ex. 1018.1 The Examiner granted
`
`reexamination, finding that GB Patent 2,309,774 to Takahashi (Ex. 1019) raised a
`
`substantial new question because it appeared to disclose a controller that generates
`
`“an output signal only when the sensor signal changes by more than a
`
`predetermined minimum threshold amount.” Ex. 1020 (decision granting
`
`reexamination).2 The two reexamination proceedings were merged in 2012. Ex.
`
`1021.
`
`Patent Owner did not challenge the Examiner’s finding that Takahashi (and
`
`Uchida) disclosed the “predetermined minimum threshold” limitation. Instead, the
`
`Patent Owner tried to overcome Takahashi by amending the claims to require “two
`
`or more sensors” and “two or more actuators.” The Patent Owner also added
`
`thirty-six new claims, all of which included these new limitations. Ex. 1003 (Apr.
`
`27, 2012 Applicant Amendment / Arguments). The Patent Owner then argued:
`
`Applicant respectfully asserts that the references as relied on by the
`Examiner fail to teach “two or more sensors that are each adapted to
`generate a signal that is representative of at least one of a plurality of
`
`1 Despite the fact that this was an inter partes proceeding, Volkswagen did not take
`
`any further action in the reexamination beyond filing its original request.
`
`2 The Examiner also found that the “predetermined minimum threshold” limitation
`
`appeared to be disclosed in GB Patent 2,309,773 to Uchida (“Uchida”) (Ex. 1022).
`
`8
`
`
`
`sensed conditions of a vehicle, said sensed conditions including at
`least steering angle and pitch of the vehicle” (emphasis added) as
`claimed by Applicant. Further, applicant respectfully asserts that the
`references as relied on by the Examiner fail to teach “two of more
`actuators each being adapted to be connected to the headlight to
`effect movement thereof in accordance with said at least one output
`signal” (emphasis added), as claimed by Applicant.
`
`Ex. 1003 (Applicant’s Remarks) at 10-11 (emphasis in original). The Examiner
`
`allowed the reexamined claims to issue based largely on this argument. Ex. 1004
`
`(Action Closing Prosecution) at 12-13 (identifying the absence of prior art
`
`disclosing two sensor and two actuators in the “Statement of Reasons for
`
`Patentability and/or Confirmation”).
`
`X.
`
`CONSTRUCTION OF THE CLAIMS
`
`Applicable legal standards
`A.
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification of the patent in which it appears.” See 37 C.F.R. §
`
`42.100(b); see also, Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766
`
`(Aug. 14, 2012). For terms not specifically construed below, Petitioner interprets
`
`them in accord with their plain and ordinary meaning under the broadest
`
`reasonable construction in light of the patent specification. 7 C.F.R. § 42.100(b).
`
`Because the legal standard for claim construction differs from the one applied in
`
`U.S. District Court litigation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
`
`9
`
`
`
`1364, 1369 (Fed. Cir. 2004), Petitioner reserves the right to advocate a different
`
`construction in any subsequent litigation for any term found in the ‘034 patent.
`
`B.
`
`Proposed constructions
`“predetermined minimum threshold amount” (all claims)
`
`1.
`
`Proposed construction: a preset signal value that must be exceeded before
`
`an action [operating the actuators] is taken.
`
`The term “predetermined minimum threshold amount” appears in
`
`independent claims 3 and 7, as well as all of the dependent claims. During
`
`prosecution, the patentee stated that:
`
`[T]he Examiner is incorrect in stating that the “actuator would change
`the headlight according to the output signal generated by the sensor.”
`On the contrary, the claims define a system that specifically prevents
`this from occurring unless a threshold condition (namely, the sensor
`signal changing by more than a predetermined amount) is met.
`
`Ex. 1015 (Jan, 10, 2007 Applicant Arguments/Remarks Made in an Amendment)
`
`at 2-3. While the patentee explained that the sensor signal would need to change
`
`by more than a predetermined amount to cause the actuator to change, the patentee
`
`did not limit the claims by any specific threshold value or by how the threshold
`
`value was set.
`
`The description of the “predetermined minimum threshold value” in the
`
`specification is similarly broad. The specification provides a general description of
`
`10
`
`
`
`the “predetermined minimum threshold value” and a rudimentary flowchart for
`
`processing using a predetermined value, see e.g., Ex. 1001 at 13:43-66; and Fig. 7,
`
`but does not limit the threshold to a specific value or to how the value is set.
`
`Applying the broadest reasonable interpretation in light of the specification, the
`
`threshold value should thus be construed as a preset signal value that must be
`
`exceeded before an action [operating the actuators] is taken.
`
`2.
`
`“controller”
`
`Proposed construction: any control system for selectively operating the
`
`actuators.
`
`The construction of this term comes from the plain and ordinary meaning in
`
`light of its use in the patent specification. A “controller” is defined in the
`
`dictionary as “a regulating mechanism, as in a vehicle or electric device.” Ex.
`
`1023 (American Heritage Dictionary). The patentee described the term even more
`
`broadly, stating that:
`
`The headlight directional controller 14 can be embodied as any
`control system, such as a microprocessor or programmable electronic
`controller,
`that
`is responsive to one or more sensed operating
`conditions of the vehicle for selectively operating the up/down
`actuator 12 and the left/right actuator 13.
`
`Ex. 1001 at 3:53-58 (emphasis added).
`
`11
`
`
`
`The broadest reasonable interpretation of the term “controller” in view of the
`
`specification includes any control system used for selectively operating the
`
`actuators.
`
`3.
`
`“configured to store a predetermined reference position”
`
`Proposed construction: capable of storing a predetermined reference
`
`position.
`
`Claim 30 requires that the memory of the controller be “configured to store a
`
`predetermined reference position.” The term “configured to” does not appear in
`
`the specification. The broadest reasonable interpretation of this term as it is used
`
`in the claims is “capable of.” See e.g., Ex parte Joseph C. Schneider, Appeal
`
`2009-012779, 2012 Pat. App. LEXIS 1176 at (BPAI Mar. 20, 2012) (“The system
`
`includes a controller ‘configured to’” … [t]he Examiner correctly interprets the
`
`term ‘configured to’ as recited in claim 1 as being sufficiently broad to encompass
`
`any controller capable of …”) (emphasis added). Thus, the term “configured to
`
`store a predetermined reference position” should be construed to mean “capable of
`
`storing a predetermined reference position.”3
`
`3 The phrase “store a predetermined reference position” is functional. The Federal
`
`Circuit has noted that claims reciting functional claim language in this context does
`
`not add a patentable element. In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir.
`
`12
`
`
`
`XI. PRIOR ART REFERENCES RELIED ON BY PETITIONER
`
`Petitioner relies upon the following prior art:
`
`1) Japanese Patent Application No. 09-151649 (“Kato”) (Ex. 1024”);
`
`2) Japanese Patent Application No. 10-364667 (“Fukuwa”) (Ex. 1025”);
`
`3) GB Patent 2,309,774 to Takahashi (“Takahashi”) (Ex. 1019);
`
`4) Admissions by the Patent Owner regarding the content of the prior art
`
`from the specification of the ‘034 Patent;
`
`5) US Patent 6,229,263 to Izawa (“Izawa”) (Ex. 1026);
`
`6) US Patent 6, 293,686 to Hayami et al. (“Hayami”) (Ex. 1027).
`
`1997) (upholding the Board’s affirmance of a 102(b) rejection where a device
`
`disclosed in a prior art reference was capable of performing a purportedly function
`
`used to distinguish the patentee’s apparatus); see also Superior Industries v.
`
`Masaba, 553 Fed. Appx. 986,991 (Fed. Cir. Jan. 16, 2014) (Rader concurring)
`
`(“[I]t is usually improper to construe non-functional claim terms in system claims
`
`in a way that makes infringement or validity turn on their function.”) (citing
`
`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (Fed. Cir. 2009)).
`
`13
`
`
`
`XII. STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner respectfully requests that reexamined claims 3-39 of the ‘034
`
`patent (Ex. 1001) be canceled based on the following grounds of unpatentability,
`
`explained in greater detail below.
`
`Ground 1 Claims 7-9, 13-18, 21-24, and 28-33 are anticipated by Kato.
`
`Ground 2 Claims 3-6 and 10-12 are obvious over Kato in view of Izawa, and/or
`
`in view of Patent Owner’s admissions regarding the prior.
`
`Ground 3 Claims 19-20 and 25-27 are obvious over Kato in view of Patent
`
`Owner’s admissions regarding the prior art.
`
`Ground 4 Claims 7-9, 13-17, 21-24, and 28-33 are anticipated by Fukuwa.
`
`Ground 5 Claims 3-6 and 10-12 are obvious over Fukuwa in view of Izawa,
`
`and/or in view of Patent Owner’s admissions regarding the prior art.
`
`Ground 6 Claims 18-20 and 25-27 are obvious over Fukuwa in view of Patent
`
`Owner’s admissions regarding the prior art.
`
`Ground 7 Claims 36-39 are obvious over Kato in view of Hayami.
`
`Ground 8 Claims 36-39 are obvious over Fukuwa in view of Hayami.
`
`Ground 9 Claims 3-39 are obvious over Kato in view of Izawa and Takahashi,
`
`and/or in view of Patent Owner’s admissions regarding the prior art.
`
`Ground 10 Claims 3-39 are obvious over Fukuwa in view of Izawa and Takahashi,
`
`and/or in view of Patent Owner’s admissions regarding the prior art.
`
`14
`
`
`
`XIII. STATEMENT OF NON-REDUNDANCY
`
`All of the proposed grounds in this petition rely on either Kato or Fukuwa as
`
`a primary reference. These grounds are meaningfully distinct because Kato and
`
`Fukuwa are meaningfully distinct. Most significantly, while Kato and Fukuwa
`
`both include disclosures that inherently anticipate the “predetermined minimum
`
`threshold” limitation, the basis for finding this limitation present is different in
`
`each reference. In Kato, the inherent disclosure is based on the programming
`
`necessary to control a step motor; in Fukuwa it is based on the incorporation of an
`
`analog to digital converter. In addition, there are differences in Kato and Fukuwa’s
`
`disclosures with respect to, inter alia, the type of actuators/motors used to adjust
`
`the headlight orientation and the type of sensors disclosed.
`
`XIV. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
`
`The ‘034 patent was allowed during reexamination primarily because none
`
`of the prior art of record disclosed a headlight control system with “two or more
`
`sensors” representative of the steering angle of the vehicle and the pitch of the
`
`vehicle, and “two or more actuators.” As discussed below, Kato and Fukuwa both
`
`disclose these limitations and anticipate or render obvious all of the other
`
`limitations of the below challenged claims.
`
`15
`
`
`
`A.
`
`Ground 1: Claims 7-9, 13-18, 21-24, and 28-33 are anticipated by
`Kato.
`
`1.
`
`Claims directed to a basic headlight control system (claims 7-
`9, 13-16, 21, and 31-32)
`
`Kato discloses an automatic directional control system for a vehicle
`
`headlight including all of the elements recited in Claims 7-9, 13-16, 21, and 31-32.
`
`Specifically, Kato teaches an optical axis control device designed to ensure that the
`
`“range of illumination of a front lamp” remains stable during travel “even if a pitch
`
`angle, a bank angle, a steering angle, and so on vary.” Kato ¶¶ 5-6.
`
`In the embodiment of Figure 1 (reproduced below), the optical axis control
`
`device includes pitch angle sensors (potentiometers 121 and 122), a steering angle
`
`sensor 16, step motors 22x, 22y, and 22z, and a controller 24 that “finds a pitch
`
`angle direction correction amount Dpy, … and a steering angle direction correction
`
`amount Dsz … and corrects the angle of the optical axis via the step motors 22x,
`
`22y, and 22z.” Id. ¶ 16.
`
`16
`
`
`
`“The steering angel sensor 16 is a rotary potentiometer that detects a steering
`
`angle θs, i.e., an angle of manipulation of the handlebar.” Kato ¶ 17, Figs. 1 & 2.
`
`The pitch sensor is made up of two “rectilinear potentiometers” which “detect
`
`stroke length” at the front and rear wheels. Id. ¶¶ 16-17; Weinberg ¶¶ 35, 39, 40-
`
`41. As is evident from Figure 1of Kato (above), the pitch and steering sensors are
`
`physically separate from one another. Kato also discloses sensors that detect
`
`changes in the suspension. Specifically, Kato teaches the use of two
`
`“potentiometers 121 and 122” that “detect stroke length” of the vehicle’s
`
`suspension. Kato ¶ 17.
`
`The controller 24 disclosed in Kato calculates the correction angle needed to
`
`adjust the headlight and sends the output signal to the actuators to move the
`
`headlight. Kato ¶¶ 13, 16; Weinberg ¶ 36. The actuators move the lamp up and
`
`down relative to a horizontal axis, and left and right relative to a vertical axis.
`
`Weinberg ¶¶ 36, 38, 44, 47-49. Referencing Figure 4 (reproduced below), Kato
`
`explains: “[T]he step motor 22x rotates the optical axis of the front lamp 20 in the
`
`bank angle direction Db around an X-axis. The step motor 22y rotates the optical
`
`axis of the front lamp 20 in the pitch angle direction Dp around a Y-axis. And the
`
`step motor 22z rotates the optical axis of the front lamp 20 in the steering angle
`
`direction Ds around a Z-axis.” Kato ¶ 19.
`
`17
`
`
`
`While Kato does not expressly state that its controller only sends a signal
`
`when the input from the sensors exceeds a predetermined threshold value, this
`
`feature is inherent in Kato’s disclosure that the controller drives step motors. Step
`
`motors 22X, 22y, and 22z “turn forward and backward by a predetermined angle in
`
`accordance with a pulse output by the controller 24.” Kato ¶17. A controller that
`
`acts on a step motor must account for the fact that the motor can move only in
`
`specific quantized steps. Put another way, a step motor that rotates in 5 degree
`
`increments would be able to rotate 5, 10 and 15 degrees, but would be incapable of
`
`rotating to points between those increments. Weinberg ¶ 37. Step motors move
`
`when they receive a pulse. In order for the system disclosed in Kato to work, the
`
`controller 24 must send a pulse to the step motor only when the amount of
`
`movement specified by the sensors “meets or exceeds the rotation provided by a
`
`single angular step of the step motor.” Id. The purpose of making the adjustments
`
`only in predetermined increments, rather than continuously, is well known in the
`
`art: “to ensure that the overall system remains stable and does not change
`
`unnecessarily; to conserve energy or power; and to minimize wear.” Id. ¶ 79.
`
`18
`
`
`
`Claims 7-9, 13-16, 21,and 31-32 are thus invalid as anticipated by Kato. Provided
`
`below is a claim chart showing where each of the elements of these claims can be
`
`found in Kato.
`
`U.S. Patent No. 7,241,034
`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 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
`
`Prior Art Disclosures Relied Upon
`Kato at Claim 4, ¶ 4; see Weinberg ¶
`32.
`
`Kato at Claim 4; Fig. 1 & 2; see
`Weinberg ¶¶ 33-35.
`
`Kato at Claim 4; ¶¶ 13, 16-17, Fig. 1,
`2, & 5; see Weinberg ¶¶ 34-35.
`Kato ¶¶ 13, 16-17, 19, 37; see
`Weinberg ¶¶ 36-37 (discussing
`inherency of predetermined threshold).
`
`Kato ¶¶ 7-9, 16-17; see Weinberg ¶
`38.
`
`Kato at Claim 4; see Weinberg ¶ 39.
`
`Kato at Claim 4, ¶ 13, 16; see
`Weinberg ¶ 40.
`
`19
`
`
`
`U.S. Patent No. 7,241,034
`adapted to generate a signal that is
`representative of a condition including the
`pitch of the vehicle.
`8. The automatic directional control
`system defined in claim 7, wherein said
`first sensor is physically separate from
`said second sensor.
`9. The automatic directional control
`system defined in claim 7, further
`comprising one or more additional
`sensors for sensing one or more of a rate
`of change of road speed of the vehicle, a
`rate of change of the steering angle of the
`vehicle, a rate of change of the pitch of
`the vehicle, a suspension height of the
`vehicle, or a rate of change of suspension
`heig
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