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.: IPR2016-00193
`
`REPLY DECLARATION OF HARVEY WEINBERG
`
`SL Corporation v. Adaptive Headlamp Technologies, Inc.
`
`SL Corp. Exhibit 1035
`Case IPR2016-00193
`
`
`
`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.: IPR2016-00193
`
`REPLY DECLARATION OF HARVEY WEINBERG
`
`SL Corporation v. Adaptive Headlamp Technologies, Inc.
`
`SL Corp. Exhibit 1035
`Case IPR2016-00193
`
`
`
`Table of Contents
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`II. MATERIALS CONSIDERED........................................................................2
`
`III.
`
`PERSON OF ORDINARY SKILL IN THE ART ..........................................3
`
`THE ‘034 PATENT IS NOT LIMITED TO ONLY FOUR-WHEEL
`IV.
`VEHICLES ................................................................................................................5
`
`KATO AND TAKAHASHI ARE ANALOGOUS ART IN THE SAME
`V.
`FIELD OF INVENTION AS THE ‘034 PATENT .................................................12
`
`VI. MOTIVATION TO COMBINE KATO WITH TAKAHASHI’S
`THRESHOLD IMPLEMENTATION.....................................................................17
`
`VII. TAKAHASHI DISCLOSES THE THRESHOLD LIMITATION OF
`CLAIM 7..................................................................................................................25
`
`i
`
`
`
`I, Harvey Weinberg, being of legal age, hereby declare, affirm, and state the
`
`following:
`
`I.
`1.
`
`INTRODUCTION
`
`I have been retained on behalf of Petitioner, SL Corporation (“SL Corp.”), to
`
`offer analysis and opinions generally regarding the validity, novelty, prior art,
`
`obviousness considerations, and understanding of a person of ordinary skill in the
`
`art (“POSITA”) in the industry as it relates to U.S. Patent No. 7,241,034 (“‘034
`
`patent”). In connection with this analysis, I prepared a declaration that was
`
`submitted as Exhibit 1002 to the Petition for Inter Partes Review of the ‘034
`
`patent, Paper 2. Attached to that declaration is a true and correct copy of my
`
`Curriculum Vitae describing my background and experience. Ex.1002, Appendix
`
`A. My background, qualifications, and experience is described in detail in that
`
`declaration, which I incorporate by reference here. Ex.1002 at ¶¶3-4.
`
`2.
`
`I have reviewed Patent Owner’s Response to SL Corp.’s Petition for Inter
`
`Partes Review in this matter, Paper 16, dated July 22, 2016, and the accompanying
`
`Declaration of Joseph Katona, Katona (“Katona”). I have prepared this declaration
`
`of my analysis and opinions in response to certain arguments and opinions
`
`presented by Patent Owner and Mr. Katona.
`
`3.
`
`I have personal knowledge of the facts and opinions set forth in this
`
`declaration, and, if called upon to do so, I would testify competently thereto. All of
`
`1
`
`
`
`the opinions and conclusions found in this declaration are my own. I am being
`
`compensated at a rate of $200 per hour for my services. This compensation is in no
`
`way based on the content of my opinions or the outcome of this matter.
`
`II. MATERIALS CONSIDERED
`4.
`
`In developing my opinions below relating to the ‘034 patent, I have
`
`considered the materials cited herein, the materials listed in my initial declaration
`
`at Ex.1002 ¶¶6-12, and the materials listed below:
`
`(1) Declaration of Joseph Katona (Patent Owner Ex.2002) (“Katona”);
`
`(2)
`
`Suzuki SV650S Brochure (Pet. Ex.1029);
`
`(3) Dana Corporation Supplies Cooling Module For Harley-Davidsons
`
`First High-Volume Liquid-Cooled Motorcycle, DANA, Apr. 6, 2016,
`
`http://dana.mediaroom.com/index.php?s=26450&item=68975 (Pet.
`
`Ex.1030);
`
`(4)
`
`Image of Suzuki Motorcycle, http://media.autobase.co.nz/
`
`VehicleImages/Full/2/6/8/2687956_1.jpg (last visited Nov. 11, 2016)
`
`(Pet. Ex.1031);
`
`(5) Honda GOLD WING GL1800 Owner’s Manual (Pet. Ex.1032);
`
`(6)
`
`Suzuki TL1000S Brochure (Pet. Ex.1033);
`
`(7) Katona Deposition, November 15, 2016 (Pet. Ex.1034) (“Katona
`
`Dep.”);
`
`2
`
`
`
`(8)
`
`September 25, 2003 Information Disclosure Statement (Pet. Ex.1036);
`
`(9) US Patent 3,939,339 (Pet. Ex.1037);
`
`(10) US Patent 4,024,388 (Pet. Ex.1038);
`
`(11) US Patent 4,833,573 (Pet. Ex.1039);
`
`(12) US Patent 4,868,720 (Pet. Ex.1040);
`
`(13) US Patent 4,870,545 (Pet. Ex.1041);
`
`(14) US Patent 5,158,352 (Pet. Ex.1042);
`
`(15) US Patent 5,426,571 (Pet. Ex.1043);
`
`(16) The Definition of Vehicle, DICTIONARY.COM, http://www.dictionary
`
`.com/browse/vehicle (last visited Nov. 4, 2016) (Pet. Ex.1044);
`
`(17) ROBERT BOSCH GMBH, AUTOMOTIVE HANDBOOK 716-17 (Horst Bauer
`
`et al. eds., 5th ed. 2000) (Pet. Ex.1045); and
`
`(18) Koito Manufacturing Co., Ltd., 2002 Annual Report (Mar. 31, 2002)
`
`(Pet. Ex.1046).
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`5.
`
`Mr. Katona explains that a person of ordinary skill in the art (“POSITA”)
`
`“would 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 the automotive industry.” Katona ¶28. That part of Mr.
`
`3
`
`
`
`Katona’s definition of POSITA is acceptable and it is not significantly different my
`
`own. Ex.1002 at ¶15.
`
`6.
`
`Mr. Katona’s definition elaborates about specific work experience he
`
`believes a POSITA should have. He notes that a POSITA “would have a working
`
`understanding of control systems and associated components used within the
`
`automotive industry and would have relevant work experience with product
`
`development and design in the automotive industry… [and a POSITA] would have
`
`knowledge of vehicle attributes and operating conditions necessary to determine
`
`the necessary headlamp directional control responses, and how to effectuate those
`
`responses.” Katona ¶28. These additional qualifications suggested by Mr. Katona
`
`result in a proposed definition that is more stringent than my own.
`
`7.
`
`A POSITA as described by Mr. Katona would be in an even better position
`
`to understand the benefits of applying Takahashi’s threshold limitation to the
`
`system of Kato, and would certainly have the skillset and experience to make the
`
`combination in an efficient and predicable manner. For example, a POSITA that
`
`has “a working understanding of control systems” would certainly understand the
`
`principles of hysteresis (i.e., a lag in the response of a body reacting to changes in
`
`forces), its benefits, and how to apply them.
`
`4
`
`
`
`IV. THE ‘034 PATENT IS NOT LIMITED TO ONLY FOUR-WHEEL
`VEHICLES
`
`8.
`
`Mr. Katona opines that “the broadest reasonable interpretation of the term
`
`‘vehicle,’ excludes motorcycles and other two wheeled vehicles.” Katona ¶41.
`
`9.
`
`I disagree. I understand from counsel that claims are given their broadest
`
`reasonable interpretation in light of the specification as they would have been
`
`interpreted by a POSITA. I further understand that even under the broadest
`
`reasonable interpretation, claim terms must be given their plain and ordinary
`
`meaning to one of ordinary skill in the art, unless the patentee has explicitly
`
`assigned a special definition.
`
`10.
`
`The ’034 patent claims merely recite the terms “vehicle” and “vehicle
`
`headlight,” and are completely silent regarding the number of wheels, if any, such
`
`a vehicle must have. See e.g., ‘034 patent at Claim 7. Mr. Katona does not dispute
`
`this fact. See Ex.1034 (“Katona Dep.”) at 29:24-30:11 (confirming the words
`
`“motorcycle.” “automobile,” and “car” do not appear in the ‘034 patent). Mr.
`
`Katona concedes that “motorcycles” are one of several “types of vehicles.” Katona
`
`Dep. at 24:24-25:2. I see no basis in the claim language itself to exclude two-
`
`wheeled vehicles from the scope of the claimed vehicles.
`
`11. A POSITA would have understood the ‘034 patent specification to teach that
`
`the term “vehicle” encompasses all types of vehicles, including motorcycles. The
`
`‘034 patent broadly describes “vehicles” as encompassing “[v]irtually all land
`
`5
`
`
`
`vehicles, and many other types of vehicles (such as boats and airplanes, for
`
`example).” ‘034 patent at 1:20-21; see also Katona Dep. at 27:45, 28:4-6 (agreeing
`
`“that [the ‘034 patent] applies to virtually all land vehicles and many other types of
`
`vehicles” and that motorcycles are a land vehicle.). The ‘034 patent states that the
`
`“illustrated headlight 11 is … intended to be representative of any device that can
`
`be supported on any type of vehicle for the purpose of illuminating any area, … .”
`
`‘034 patent at 2:66-3:3(emphasis added). I am not aware of any limitations based
`
`on specific vehicle types such as “motorcycle” or “automobile” nor are these
`
`words ever mentioned in ‘034 patent specification. Instead, the ’034 patent broadly
`
`identifies applicable vehicles. ‘034 patent at 1:20-23(“[v]irtually all land vehicles
`
`… are provided with one or more headlights.” )(emphasis added).
`
`12. As virtually no four-wheeled automobiles at the time of the invention had
`
`only a single headlight, the ‘034 patent must be referring to motorcycles by
`
`including vehicles with one headlight. See Katona Dep. at 27:8-25. Mr. Katona
`
`confirms that it is reasonable to conclude that the patent specification is referring to
`
`motorcycles by including vehicles with one headlight. Katona Dep. at 28:1-3;
`
`28:16-19. Further, the ’034 patent’s described “field of invention” refers generally
`
`“to headlights that are provided on vehicles,” and “to an automatic directional
`
`control system for such vehicle headlights” ‘034 patent at 1:15-19.
`
`6
`
`
`
`13.
`
`I understand from counsel that an Information Disclosure Statement
`
`(“IDS”) is a document that a patent applicant submits during prosecution to make
`
`the examiner aware of prior art that is relevant to the proposed invention. I have
`
`been informed that the ‘034 patentee submitted an IDS during prosecution
`
`(Ex.1036) that listed the following prior art references related to motorcycle
`
`headlights:
`
` US Patent 3,939,339. Ex.1037 (Title: “Lightning system for a motorcycle.”).
`
` US Patent 4,024,388. Ex.1038 (Title: “Cornering light system for two-
`
`wheeled vehicles.”).
`
` US Patent 4,833,573. Ex.1039 (“The present invention relates to a headlight
`
`for use in a vehicle such as a motor cycle.”).
`
` US Patent 4,868,720. Ex.1040 (“Our invention relates generally to vehicular
`
`headlamps and more specifically to those suitable for use on motorcycles.”).
`
` US Patent 4,870,545. Ex.1041 (Title: “Headlight control apparatus for
`
`motorcycles.”).
`
` US Patent 5,158,352. Ex.1042 (“The present invention relates to a headlamp,
`
`and more particularly to a so called cornering headlamp which is formed so as
`
`to correct a light distribution characteristic which is caused by an inclination
`
`of a motorcycle.”)
`
` US Patent 5,426,57. Ex.1043 (Title: “Motorcycle headlight aiming device.”).
`
`7
`
`
`
`14.
`
`In my opinion, the applicant’s IDS submission would have indicated to a
`
`POSITA that the applicant understood motorcycles and other two-wheeled vehicles
`
`to be within the scope of the ‘034 patent claims.
`
`15.
`
`In light of the claims, patent specification and patent applicants actions
`
`during prosecution, Mr. Katona’s claim that he “[does] not believe it would be
`
`reasonable for one skilled in the art to interpret the phrase ‘vehicle’ within the ‘034
`
`specification to include motorcycles” is not persuasive. Katona ¶41. Mr. Katona’s
`
`discussion of three-wheeled vehicles is exemplary of his inconsistent and
`
`irreconcilable position. While Mr. Katona concedes that a motorcycle with a
`
`sidecar having three wheels and a Can-Am three-wheeled vehicle are not included
`
`within the scope of the ‘034 patent, three-wheeled automobile would be included
`
`within the scope of the ‘034 patent. Katona Dep. at 31:14-32:3.
`
`16.
`
`In addition to understanding that the ‘034 patent does not limit the definition
`
`of vehicle on its face as described above, a POSITA would have known that
`
`“vehicle” has a dictionary definition of “any means in or by which someone travels
`
`or something is carried or conveyed.” Ex.1044. Likewise, the Bosch Automotive
`
`Handbook, which would have been familiar to a POSITA working the automotive
`
`industry at the time of the patent, categorizes motorcycles as “power-driven
`
`cycles,” which are a type of “power-driven vehicles,” which are a type of “road
`
`vehicles.” Ex.1045. A POSITA would have known that all motorcycles in the USA
`
`8
`
`
`
`that travel on public roads require license plates issued by state departments of
`
`motor vehicles. Further, a POSITA would have taken note of the fact that the
`
`patent assignee at time of issue, Dana Corporation (“Dana”), manufactured
`
`motorcycle parts and subsystems (i.e., cooling modules for Harley Davidson
`
`motorcycles) and thus would have been aware of the general nature of Dana’s
`
`business, which was not limited to automobiles. Ex.1030; Katona Dep. at 42:11-
`
`14.
`
`17. Mr. Katona opines that “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.” Katona ¶46. Mr. Katona attempts to distinguish the ‘034
`
`patent by explaining that it “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.” Katona ¶48. Mr. Katona also
`
`says that Kato is “directed at preventing flattening of the irradiation range of the
`
`headlight of a motorcycle during cornering.” Katona ¶51.
`
`18.
`
`I disagree. As discussed above, nothing in the ‘034 patent suggests that it is
`
`inapplicable to motorcycles. Further, vehicles such as cars and trucks also have
`
`9
`
`
`
`variations in bank angle that may necessitate a correction in headlight aim. For
`
`example, when a car turns hard left or hard right, it is normal for the wheels
`
`outside of the turn to dive while the inside wheels become unweighted. In extreme
`
`examples, inside wheels can lift off the road. While the car “leans” left or right
`
`while turning the inside headlight aims upwards, while the outside headlight aims
`
`downwards. It may be advantageous to adjust the aim of the car headlights
`
`appropriately to maintain adequate illumination on the road and avoid dazzling
`
`oncoming traffic. While the specific headlight aim characteristics vary between
`
`two and four wheeled vehicles, the benefits of headlight aim adjustment are the
`
`same.
`
`19. Kato discusses measuring and responding to the very operating conditions
`
`that are identified in the ‘034 patent. For example Claim 7 recites “said sensed
`
`conditions including at least a steering angle and a pitch of the vehicle.” ‘034
`
`patent at Claim 7. Likewise, Kato discloses the use of a “pitch angle sensor that
`
`detects pitch angle” and “a steering angle sensor that detects steering angle.” Kato
`
`at ¶13. While Kato goes beyond these exemplary sensed conditions to include
`
`additional sensed conditions, such as bank angle, that part of the Kato disclosure
`
`does not render Kato inapplicable to cars and trucks.
`
`20.
`
`The ‘034 patent does not provide an exhaustive list of “operating conditions”
`
`to which the controller can respond. Instead, the ‘034 patent lists examples of
`
`10
`
`
`
`operating conditions following an open-ended explanation that “[o]ne or more
`
`operating condition sensors may be provided that are representative of an operating
`
`condition of the vehicle.” ‘034 patent at 2:8-13(“such as road speed, steering angle,
`
`pitch, suspension height, range of change of road speed, rate of change of steering
`
`angle, rate of change of pitch, and rate of change of suspension height of the
`
`vehicle.”)(emphasis added). Using the term “such as” indicates that the listed
`
`operating conditions are examples, and other operating conditions such as banking
`
`angle are not excluded. ,As Mr. Katona concedes, the same suspension height
`
`sensors disclosed in the ‘034 patent can also be used to sense the bank angle or roll
`
`of a vehicle. Katona Dep. at 18:10-24.
`
`21.
`
`Finally, as discussed below, Mr. Katona’s distinction based on whether the
`
`headlight is fixed to the body or fixed the handlebar is also inaccurate. See infra
`
`¶27.
`
`22. Mr. Katona is correct that, as disclosed 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.” Katona ¶52; Kato at ¶4. However, a POSITA
`
`would have known that the pitch angle of a car also changes due to acceleration,
`
`deceleration, and bumps in the road. Mr. Katona concedes the same. Katona Dep.
`
`at 21:3-5, 21:11-21, 22:2-4. While Kato notes that the change in pitch angle may
`
`not be as severe in cars as in motorcycles, especially compared to Mr. Katona’s
`
`11
`
`
`
`extreme example of performing motorcycles stunts such as a “wheelie,” the
`
`problems associated with variations in pitch are nevertheless applicable to cars.
`
`V.
`
`KATO AND TAKAHASHI ARE ANALOGOUS ART IN THE SAME
`FIELD OF INVENTION AS THE ‘034 PATENT
`23. Mr. Katona opines that “[t]he 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 to provide illumination of the road surface in the
`
`path of movement of the vehicle rather than providing for a reverse angle
`
`correction movement.” Katona ¶38.
`
`24.
`
`First, as discussed above, I disagree that the ‘034 patent is somehow limited
`
`to only four-wheel vehicles. Second, contrary to Mr. Katona’s assertion, the ‘034
`
`patent does discuss providing a reverse angle correction in some situations. ‘034
`
`patent at 12:8-13.
`
`25.
`
`Third, the ‘034 patent claims do not contain any limitation concerning the
`
`direction of correction or movement of the actuators. Rather, the independent claim
`
`at issue broadly recites “two or more actuators being connected to the vehicle
`
`headlight to effect movement thereof.” ‘034 patent at Claim 7(emphasis added).
`
`The specification of the ‘034 patent confirms that the direction of correction or
`
`movement is not limited. “The adjustment control algorithm can be, generally
`
`speaking, any desired relationship that relates one or more operating conditions of
`
`the vehicle to one or more angular orientations of the headlight 11. A variety of
`
`12
`
`
`
`such relationships are known in the art, and this invention is not intended to be
`
`limited to any particular relationship.” ‘034 patent at 6:47-53(emphasis added).
`
`“The particular adjustment control algorithm that is selected may … vary from
`
`vehicle to vehicle in accordance with a variety of factors, including relative size
`
`and performance characterizes of the vehicles or any other desired conditions.”
`
`‘034 patent at 6:57-61. Thus, the ‘034 patent contemplated being utilized by a wide
`
`variety of vehicles. Additionally, the ’034 patent explains that the “invention may
`
`be practiced with any headlight that is adjustable in any single direction or multiple
`
`directions of movement, whether up/down, left/right, or any other direction.” ‘034
`
`patent at 3:22-25(emphasis added).
`
`26. Mr. Katona opines that a POSITA “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.” Katona ¶43.
`
`27. Mr. Katona explains that his reasoning is based on the fact that “the
`
`headlight of a motorcycle is typically mounted to the handle bars of the motorcycle
`
`and configured to turn with the handlebars during cornering.” Katona ¶43. This is
`
`incorrect because many motorcycles made at the time of the patent had fairing
`
`mounted headlights that were not connected to the handlebars or front-fork. For
`
`13
`
`
`
`example, the Honda Goldwing GL1800 motorcycle which was popular at the time
`
`of the patent has a headlight mounted to the fairing. Ex.1032; Katona Dep. at
`
`46:15-20, 47:9-12. Suzuki, the assignee of the Kato patent, made several
`
`motorcycles with headlights mounted to the fairing. For example, the Suzuki
`
`SV650S and TL1000S have fairing mounted headlights. Ex.1029; Ex.1033; Katona
`
`Dep. at 34:20-35:3, 38:17-23 (“The brochure says that it’s attached to a fairing.”).
`
`Additionally, the photo below of a 1997 Suzuki RF900R demonstrates that the
`
`headlight is not mounted to the handlebar, as evident by the turned front-wheel and
`
`handlebar having no effect on the headlight.
`
`Figure 1 - 1997 Suzuki RF900R
`
`14
`
`
`
`Ex.1031; see also Katona Dep. at 45:20-24. At the time of the ‘034 patent, most
`
`motorcycles with integrated fairings included headlights mounted on the fairing,
`
`which were mounted to the frame or body of the motorcycle. Accord, Katona Dep.
`
`at 39:4-7, 48:12-14.
`
`28. Kato described motorcycles where the headlight is mounted to the body.
`
`“This front lamp optical axis control device is applied to a motorcycle in which the
`
`front lamp is affixed to the vehicle body.” Kato at ¶12(emphasis added). Kato also
`
`described an embodiment where the headlight was mounted to the handlebars, and
`
`another embodiment where the headlight was mounted to the body. Kato at ¶¶32-
`
`33. “In the present embodiment, the front lamp 20 is affixed to the handlebar.”
`
`Kato at ¶32. “If the front lamp 20 is not affixed to the handlebar (if it is affixed to
`
`the vehicle body).” Kato at ¶33. Additionally, Mr. Katona concedes that this
`
`alternative embodiment in Kato taught having a headlight mounted to the
`
`motorcycle body. Katona Dep. at 37:16-19.
`
`29. Mr. Katona opines 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.” Mr. Katona explains that
`
`“the rotatable mounting structure of motorcycle headlights, with the headlight
`
`affixed to the movable handlebar of the motorcycle, differs greatly from the fixed
`
`15
`
`
`
`mounting structure implemented with cars, trucks, and the like.” Katona ¶44. Mr.
`
`Katona goes on to explain that “these structural differences render the problem
`
`addressed by the ‘034 patent non-existent in the motorcycle context.”
`
`30.
`
`I disagree. As explained above, Kato described the fixed mounting structure
`
`that Mr. Katona alleges differentiate it from the ‘034 patent. Further, Kato is in the
`
`same field of endeavor as the ‘034 patent. Kato explains that it is directed to “a
`
`front lamp optical axis control device.” Kato at ¶¶1, 7, 11, 16. Likewise, the ‘034
`
`patent is directed to “an automatic directional control system for … vehicle
`
`headlights.” ‘034 patent at 1:17-19.
`
`31. Mr. Katona opines that “Kato is not ‘reasonably pertinent’ to the problem
`
`addressed in the ’034 patent.” Katona ¶45. Mr. Katona continues to opine that “[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.” Katona ¶45.
`
`Mr. Katona’s distinction is based on the premise that “the ‘034 patent is addressed
`
`to problems encountered only by vehicles comprising headlight assemblies which
`
`are fixedly mounted relative to the body of the vehicle; not motorcycles.” Katona
`
`¶45.
`
`32.
`
`I disagree. The ‘034 patent identifies the following problem:
`
`“Although [traditional] fixed aiming angle headlight systems have and continue to
`
`function adequately, they cannot alter the directional aiming angles of the
`
`16
`
`
`
`headlights to account for changes in the operating conditions of the vehicle.” ‘034
`
`patent at 1:39-43. As explained above, Kato described vehicles where headlights
`
`are fixed to the body of the vehicle. Further, Kato provided a headlight axis control
`
`device that adjusted the aim of a headlight “if a pitch angle, a bank angle, a
`
`steering angle, and so on vary.” Kato at ¶6. Therefore, Kato discussed a solution to
`
`the exact problem identified in the ‘034 patent.
`
`33.
`
`Furthermore, as the ’034 patent’s assignee, Dana Corporation, was also a
`
`manufacturer of motorcycle parts and systems at the time of the patent (see e.g.,
`
`Ex.1030), a POSITA would have had no reason to exclude motorcycle-related art
`
`when attempting to solve headlight aim problems.
`
`VI. MOTIVATION TO COMBINE KATO WITH TAKAHASHI’S
`THRESHOLD IMPLEMENTATION
`34. Mr. Katona opines that “Takahashi is applicable to a different field of
`
`endeavor than Kato.” Mr. Katona notes that “[t]he Figures and description of the
`
`invention of Takahashi indicate … that Takahashi is applicable in the context of
`
`cars, trucks, rather than in the context of motorcycles.” Katona ¶50. Mr. Katona
`
`relies on Takahashi’s discussion concerning number of occupants and vehicle load,
`
`in addition to exemplary figures, to justify his distinction. Katona ¶50.
`
`35.
`
`I disagree. In my opinion, Takahashi is directed to the same field of
`
`endeavor as Kato. Both Kato and Takahashi are directed to vehicle headlight
`
`direction control. And both Kato and Takahashi aim to improve the performance of
`
`17
`
`
`
`dynamic headlight aiming systems such that adequate illumination is maintained
`
`regardless of vehicle conditions. Varying the weight and position of that weight on
`
`a motorcycle causes headlight beam maladjustments similar to that of an
`
`automobile. Indeed, all of the conditions referred to in Takahashi’s claims (e.g.,
`
`“when the road gradient varies suddenly”) also affect motorcycles. Takahashi at
`
`7:15-16. A POSITA would have understood that the inventions taught by
`
`Takahashi apply to automobiles and motorcycles. Takahashi also uses the term
`
`“vehicle” in a general and non-limiting way. Takahashi at 20:1-3(“vehicle lamp
`
`illumination direction control device for changing the illumination direction of a
`
`vehicle lamp”).
`
`36. As with Kato, the Takahashi patent assignee, Koito Manufacturing Company
`
`Ltd., worked in both the car and motorcycle lighting spaces, and a POSITA
`
`reviewing Takahashi would have been aware that Takahashi would have been
`
`equally applicable to problems with motorcycle or automobile lighting. Ex.1046 at
`
`10 (“In fiscal 2002, THAI KOITO reported net sales of ¥4,154 million, an increase
`
`of 15.0% year on year. This mainly reflected … new orders from Honda
`
`Automobile (Thailand) Co., Ltd. for lighting equipment for
`
`motorcycles.”)(emphasis added).
`
`37.
`
`The vehicle conditions and physical postures described in Takahashi are
`
`equally applicable to two-and four-wheeled vehicles. Like the ‘034 patent,
`
`18
`
`
`
`Takahashi disclosed a “vehicle” in general terms. For example, the effect that
`
`changing number of occupants can have on a vehicle is an issue that applies to both
`
`cars and motorcycles. See e.g., Takahashi at 1:14-17(discussing number of
`
`occupants and position of occupants).
`
`38.
`
`Likewise, the effect that a load has on a vehicle is an issue that applies to
`
`both cars and motorcycles. See e.g., Takahashi at 1:17-18(discussing “the loaded
`
`conditions of loads on board the vehicle”). Mr. Katona confirmed that the pitch of
`
`both motorcycles and cars are affected by load and placement of load. Katona Dep.
`
`at 19:2-9. Takahashi even provided an example of correcting the aim of a headlight
`
`“when a load is applied to the rear portion of the vehicle” and causes the headlight
`
`beam to be displaced upwardly. Takahashi at 1:25-2:2. This sort of effect would
`
`occur on any vehicle, including the vehicles described by Kato.
`
`39. As discussed above, the ‘034 patent does not provide an exhaustive list of
`
`“operating conditions” to which the controller can respond. The ‘034 patent
`
`provides an open-ended list of exemplary operating conditions. ‘034 patent at 2:8-
`
`13(“such as road speed, steering angle, pitch, suspension height, range of change
`
`of road speed, rate of change of steering angle, rate of change of pitch, and rate of
`
`change of suspension height of the vehicle.”)(emphasis added).
`
`40.
`
`The ‘034 patent disclosure provides an open-description of operating
`
`conditions by stating that “any other operating condition or conditions of the
`
`19
`
`
`
`vehicle may be sensed and provided to the headlight directional controller 14.”
`
`‘034 patent at 7:7-9. Thus, the ‘034 patent does not exclude conditions such as a
`
`“banking angle” from the operating conditions that may be sensed.
`
`41. Mr. Katona opines that “the device of Kato would be rendered, undesirably,
`
`less responsive to changing conditions experienced by the motorcycle during
`
`operation if implemented with the threshold of Takehashi [sic] and would,
`
`therefore, be less safe due to occurrences of decreased visibility caused by delays
`
`in beampath correction.” Katona ¶53.
`
`42.
`
`I disagree. It would have been advantageous for a POSITA to have
`
`combined Kato with Takahashi. Both references described problems associated
`
`with headlight aim when road or vehicle conditions change, but Takahashi
`
`improved Kato by adding hysteresis. For example, Takahashi described how to
`
`“correct the illumination direction of the lamp 6” when “the road gradient varies
`
`suddenly.” Takahashi at 7:14-17. This teaching is directly related to Kato’s goal of
`
`providing a “front lamp axis control device” that is responsive to changes in pitch
`
`angle, steering angle, bank angle, and other conditions, in a “stable manner.” Kato
`
`at ¶6. Specifically, Kato identified that such conditions change due to
`
`“acceleration, deceleration, or bumps in the road.” Kato at ¶37. Takahashi would
`
`further Kato’s goal of “stable” correction by implementing hysteresis. Thus, a
`
`20
`
`
`
`POSITA would have considered the solutions provided by Takahashi to be relevant
`
`to any implementation of Kato.
`
`43.
`
`In control systems, a POSITA would have implemented hysteresis to ensure
`
`the overall system is stable, to not activate components unnecessarily, to conserve
`
`energy or power, and to minimize wear. For example, an actuator that must turn
`
`back and forth constantly would wear out quickly, use more power than necessary,
`
`and could cause instabilities. While it may be possible to use a more durable
`
`actuator, this would add significant cost. An alternative solution commonly used in
`
`the art would be to design the control system to suppress the actuator’s minor
`
`movements. In control systems, this is known as “hysteresis.” These same benefits
`
`would have motivated a POSITA to implement the Takahashi threshold limitation
`
`in Kato.
`
`44. While Kato described its implementation on a motorcycle, and Takahashi
`
`described its implementation on a car, neither references nor their respective
`
`solutions are specifically limited to either type of vehicle. Rather, like the ‘034
`
`patent, a POSITA would have understood them to apply broadly to all vehicles that
`
`share those types of problems.
`
`45. Mr. Katona explains that Kato include[s] the advantageous feature of
`
`immediate correction of the beam irradiation range of the headlight in response to
`
`change in the bank angle or pitch angle of the motorcycle body, whereby any
`
`21
`
`
`
`suppression of correction would be undesirable, as described herein,” according to
`
`his understanding of Kato. Katona ¶54. Mr. Katona opines that “[i]mplementation
`
`of a threshold, as taught by Takahashi, would prevent this immediate correction.”
`
`Id. at ¶54. According to Mr. Katona, if Kato were combined with Takahashi, the
`
`resulting device would “(1) ignore inclinations of the motorcycle body of
`
`magnitudes less than the reference amount; and, (2) delay headlight direction
`
`correction for inclinations of the motorcycle of any magnitude, even those well
`
`above the reference amount.” Id. at ¶55.
`
`46.
`
`I disagree. As an initial matter, a POSITA would not have implemented
`
`Takahashi’s threshold in Kato in a way that would achieve foolish results, thus
`
`defying common sense. Rather, a POSITA would have known to restrict the
`
`correction delay such that it matches the mechanical response of the motorcycle
`
`(which is governed by the weight of the motorcycle and its suspension design).
`
`This would have been a common-sense and routine practice for someone, as noted
`
`by Mr. Katona, with “a working understanding of control systems.” Katona ¶28.
`
`47.
`
`Further, contrary to Mr. Katona’s understanding, the object of Kato was not
`
`the “immediate correction” of headlight aim. Kato stated that the object of the
`
`invention was “to provide a front lamp optical axis control device in which a range
`
`illumination of a front lamp can be ensured in a stable manner during travel of a
`
`motorcycle even if a pitch angle, a bank angle, a steering a
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