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
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`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
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`UPDATED LIST OF EXHIBITS
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`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.
`
`November 6, 2015 Declaration of Harvey Weinberg
`(“Weinberg”)
`
`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
`
`i
`
`
`
`Exhibit 1019
`
`GB Patent Application 2,309,774 to Takahashi (“Takahashi”)
`
`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”)
`
`Exhibit 1028
`
`June 24, 2016 Declaration of Adam Samansky
`
`Exhibit 1029
`
`Suzuki SV650S Brochure
`
`Exhibit 1030
`
`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
`
`Exhibit 1031
`
`Image of Suzuki Motorcycle
`
`Exhibit 1032
`
`Honda GOLD WING GL1800 Owner’s Manual
`
`Exhibit 1033
`
`Suzuki TL1000S Brochure
`
`Exhibit 1034
`
`Exhibit 1035
`
`November 15, 2016 Deposition Transcript of Joseph Katona,
`(“Katona Dep.”)
`
`November 21, 2016 Reply Declaration of Harvey Weinberg
`(“Weinberg Reply”)
`
`Exhibit 1036
`
`September 25, 2003 Information Disclosure Statement
`
`Exhibit 1037
`
`US Patent 3,939,339
`
`ii
`
`
`
`Exhibit 1038
`
`US Patent 4,024,388
`
`Exhibit 1039
`
`US Patent 4,833,573
`
`Exhibit 1040
`
`US Patent 4,868,720
`
`Exhibit 1041
`
`US Patent 4,870,545
`
`Exhibit 1042
`
`US Patent 5,158,352
`
`Exhibit 1043
`
`US Patent 5,426,571
`
`Exhibit 1044
`
`Exhibit 1045
`
`Exhibit 1046
`
`The Definition of Vehicle, Dictionary.Com,
`http://www.dictionary.com/browse/vehicle (last visited Nov. 4,
`2016)
`
`Robert Bosch GmbH, Automotive Handbook 716-17 (Horst
`Bauer et al. eds., 5th ed. 2000)
`
`Koito Manufacturing Co., Ltd., 2002 Annual Report (Mar. 31,
`2002)
`
`iii
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`PATENT OWNER’S NARROWING CONSTRUCTION OF THE TERM
`“VEHICLE” IMPROPERLY EXCLUDESCERTAIN LAND
`VEHICLES ......................................................................................................4
`
`III. KATO IS ANALAGOUS ART IN THE SAME FIELD OF INVENTION
`AS THE ‘034 PATENT...................................................................................8
`
`A.
`
`B.
`
`Kato is pertinent to the problem addressed by the ‘034 patent and
`is in the same field of endeavor.............................................................9
`
`The solutions provided by Kato and the ‘034 patent are similar ........12
`
`IV.
`
`THERE WAS AMPLE MOTIVATION TO COMBINE KATO’S AXIS
`CONTROL WITH TAKAHASHI’S THRESHOLD....................................13
`
`A.
`
`B.
`
`A POSITA would be motivated to combine Kato with Takahashi.....14
`
`Kato does not teach away from Takahashi .........................................15
`
`C. Modifying Kato in view of Takahashi would have a predictable
`result ....................................................................................................16
`
`V.
`
`KATO AND TAKAHASHI DISCLOSED ALL THE ELEMENTS OF
`INDEPENDENT CLAIM 7...........................................................................21
`
`A.
`
`B.
`
`Takahashi disclosed the threshold limitation ......................................21
`
`Patent Owner does not contest that the remaining elements of
`Claim 7 are met by Kato .....................................................................24
`
`VI.
`
`PATENT OWNER DOES NOT ADDRESS DEPENDENT CLAIMS
`8-10, 12-21, 23, 24, AND 28-39....................................................................24
`
`VII. CONCLUSION..............................................................................................25
`
`iv
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Baxter Int’l, Inc. v. McGaw, Inc.,
`149 F.3d 1321 (Fed. Cir. 1998) ..........................................................................13
`
`Comaper Corp. v. Antec, Inc.,
`596 F.3d 1343 (Fed. Cir. 2010) ............................................................................9
`
`In re ICON Health & Fitness,
`496 F.3d 1374 (Fed. Cir. 2007) ......................................................................8, 17
`
`In re Van Geuns,
`988 F.2d 1181 (Fed. Cir. 1993) ............................................................................5
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ..........................................................................16
`
`Rohm & Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) ............................................................................8
`
`V-Formation, Inc. v. Benetton Grp. SpA,
`401 F.3d 1307 (Fed. Cir. 2005) ............................................................................6
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ............................................................................9
`
`Statutes
`
`35 U.S.C. §103...............................................................................................8, 25, 26
`
`Other Authorities
`
`37 C.F.R. §42.24(c)(1).............................................................................................27
`
`37 CFR §42.100(b) ....................................................................................................4
`
`v
`
`
`
`In accordance with the Notice of Stipulation to Adjust Schedule Due Dates
`
`1-7, Paper No. 17, SL Corp. (“SL Corp.” or “Petitioner”) submits this Reply to
`
`Adaptive Headlamp Technologies, Inc.’s (“AHT” or “Patent Owner”) Response to
`
`SL Corp.’s Petition for Inter Partes Review of U.S. Patent No. 7,241,034 (the
`
`“‘034 patent”) filed on September 8, 2016 as Paper No. 16 (“Response”).
`
`I.
`
`INTRODUCTION
`
`The challenged claims of the ‘034 patent are unpatentable and should be
`
`cancelled. Patent Owner’s Response is fundamentally premised on reading
`
`narrowing limitations into the claims in order to avoid clearly invalidating prior art.
`
`But nowhere in the intrinsic or extrinsic record does Patent Owner find support for
`
`such narrowing constructions, divorced from the plain and ordinary meaning of the
`
`terms involved.
`
`While the Board instituted the present inter partes review of the ‘034 patent
`
`on multiple grounds directed to multiple claims, Paper No. 10 at 36-37, Patent
`
`Owner’s Response addressed only the first ground instituted by the Board,
`
`specifically whether Claim 7 of the ‘034 patent is obvious over Kato and
`
`Takahashi. The crux of Patent Owner’s argument centers on an unsupported and
`
`impermissibly narrow claim construction and view of Kato and Takahashi’s
`
`teachings. Even Patent Owner’s expert contradicted many of Patent Owner’s
`
`arguments during his deposition of November 15, 2016. See November 15, 2016
`
`1
`
`
`
`Deposition Transcript of Joseph Katona (Ex.1034)(“Katona Dep.”) In sum, the
`
`Response attempts to rewrite the claims into something they never were and now
`
`cannot be.
`
`First, Patent Owner argues that the term “vehicle” as used in the claims
`
`should be construed to exclude two-wheeled vehicles such as motorcycles, and that
`
`the scope of the claims extends only to four-wheeled vehicles such as automobiles.
`
`Response at 7. The claim language broadly, however, recites “a vehicle” and the
`
`specification of the ‘034 patent demonstrates that the claim language applies to
`
`“[v]irtually all land vehicles, and many other types of vehicles (such as boats and
`
`airplanes, for example).” Further, prior art references cited during prosecution
`
`reinforce that the intended scope of the term “vehicle” includes motorcycles and
`
`other two-wheeled vehicles. Patent Owner’s proposed construction of “vehicle”
`
`should be rejected as it is entirely without support, contradicted by the ‘034 patent
`
`specification, and impermissibly narrow in light of the controlling broadest
`
`reasonable interpretation standard. Accordingly, Patent Owner’s arguments that
`
`Kato, which taught an automatic headlight aiming system based on sensor inputs,
`
`is non-analogous art because it relates to motorcycles should also be rejected.
`
`Second, Patent Owner contends that Kato and Takahashi should not be
`
`combined. Contrary to Patent Owner’s assertions, the stated objective of Kato is a
`
`“device that can stably ensure a beam irradiation range,” and modifying Kato to
`
`2
`
`
`
`incorporate the threshold limitation taught by Takahashi would predictably
`
`improve and enhance Kato. Further, there is ample evidence that a POSITA would
`
`have been motived to combine Kato and Takahashi as supported by Mr.
`
`Weinberg’s Declarations. See Paper 2 (“Petition”) at 53-59; Ex.1002 (Declaration
`
`of Harvey Weinberg)(“Weinberg”) ¶¶78-80; Ex.1028 (Reply Declaration of
`
`Harvey Weinberg)(“Weinberg Reply”) ¶¶34-46.
`
`Finally, Patent Owner’s argument that the “only when at least one of said
`
`two or more sensor signals changes by more than a predetermined minimum
`
`threshold” limitation (the “threshold limitation”) is not disclosed in or met by
`
`Takahashi is incorrect. Patent Owner concedes that Takahashi discloses “two
`
`threshold requirements working in tandem” where one threshold requirement can
`
`be a time-based control threshold, and Patent Owner’s own expert admits that the
`
`time-based threshold “could be set for a minimum amount of time.” Response at
`
`35. Despite this evidence, Patent Owner attempts to support its argument by
`
`ignoring important claim language, such as “comprising,” “one of,” and “at least”
`
`demonstrating unequivocally that the claim is open-ended as to the threshold
`
`limitation (among others). Thus, Patent Owner’s argument that Takahashi’s
`
`teachings go above and beyond the ‘034 patent is irrelevant to whether the
`
`threshold limitation of the challenged claims is found in Takahashi. That
`
`3
`
`
`
`Takahashi teaches more than is claimed shows that Takahashi teaches at least the
`
`requisite threshold limitation.
`
`In sum, as set forth more fully below, Patent Owner’s arguments are not
`
`persuasive and the challenged claims of the ‘034 patent should be cancelled.
`
`II.
`
`PATENT OWNER’S NARROWING CONSTRUCTION OF THE
`TERM “VEHICLE” IMPROPERLY EXCLUDES CERTAIN LAND
`VEHICLES
`
`Patent Owner raises an issue of how the term “vehicle” should be construed
`
`for the first time in its Response. In Patent Owner’s Preliminary Response, filed on
`
`March 9, 2016, Patent Owner argued that “the ordinary and customary meaning
`
`applies to all the terms of challenged claim.” Paper No. 9 at 9. But Patent Owner’s
`
`newly suggested construction of “vehicle” is far from ordinary and customary, and
`
`flies in the face of 37 CFR §42.100(b).
`
`Patent Owner contends that the term “vehicle” must be so narrowly
`
`interpreted as to exclude entire classes of land vehicles from its scope. According
`
`to Patent Owner, “vehicle” should “not encompass motorcycles.” Response at 7.
`
`This construction not only lacks support in the intrinsic record; it is directly
`
`contradicted by the ‘034 patent’s disclosure. A POSITA would not have
`
`understood “vehicle” to be so limited in the absence of any special definition or
`
`justification in the specification. Weinberg Reply ¶16.
`
`4
`
`
`
`None of the claims in the ‘034 Patent exclude motorcycles or provide for
`
`limits based on the number of wheels a vehicle has. Instead, the independent claim
`
`at issue relates only to “an automatic directional control system for a vehicle
`
`headlight.” ‘034 patent at Claim 7. But Patent Owner has brought forth no valid
`
`support for the proposition that “vehicle” should be narrowed based on the number
`
`of wheels. Patent Owner improperly attempts to read in a limitation. Response at
`
`21; See, e.g, In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)(“[L]imitations
`
`are not to be read into the claims from the specification.”). Further, to the extent
`
`that Patent Owner’s manufactured distinction based on where the headlights are
`
`mounted is relevant, it cannot exclude motorcycles because headlights mounted to
`
`the body of the motorcycle were common at the time of the alleged invention.
`
`Weinberg Reply ¶27.
`
`The terms “four-wheeled vehicle,” “two-wheeled vehicle,” “automobile,”
`
`and “motorcycle” do not appear anywhere in the ‘034 patent. See generally ‘034
`
`patent; see also Katona Dep. 29:24-30:11. Instead, the ‘034 patent broadly
`
`describes “vehicles” as including “[v]irtually all land vehicles, and many other
`
`types of vehicles (such as boats and airplanes, for example).” ‘034 patent at 1:20-
`
`21(emphasis added); see Katona Dep. 27:4-5(agreeing “that [the ‘034 patent]
`
`applies to virtually all land vehicles and many other types of vehicles.”). Mr.
`
`Katona conceded that a motorcycle is a land vehicle. Katona Dep. 28:4-6. With
`
`5
`
`
`
`regard to headlights, the ‘034 patent notes 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). Moreover, the ‘034 patent contemplates the use of vehicles
`
`with only one headlight. ‘034 patent at 1:20-23(“[v]irtually all land vehicles . . . are
`
`provided with one or more headlights.”). As virtually no four-wheeled automobiles
`
`at the time of the invention had only a single headlight and Patent Owner offers no
`
`evidence to the contrary, the ‘034 patent must be read to include motorcycles in
`
`this description. Weinberg Reply ¶12; accord Katona Dep. 27:8-25(conceding
`
`specification’s reference to vehicles with one headlight would reasonably include
`
`motorcycles); see also id. at 28:1-3, 28:16-19.
`
`The prior art references cited by the patentee in an Information Disclosure
`
`Statement (“IDS”) submitted during prosecution reinforce a claim scope that
`
`includes motorcycles (and two-wheeled vehicles). Ex.1036; see V-Formation, Inc.
`
`v. Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005)(“[P]rior art cited in a
`
`patent or cited in the prosecution history of the patent constitutes intrinsic
`
`evidence.”). These references are listed on the face of the ‘034 patent and include:
`
` 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.”).
`
`6
`
`
`
` 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 at 7-9 (“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 at 1:6-10 (“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.”).
`
`Finally, a POSITA at the time of the invention would have understood
`
`“vehicles,” as used in the ‘034 patent, to include motorcycles and automobiles
`
`based on that term’s ordinarily usage in the industry. Weinberg Reply ¶16. For
`
`example, the Bosch Automotive Handbook categorizes motorcycles as a “power-
`
`driven cycle,” which is a type of “power-driven vehicle” and a type of “road
`
`vehicle.” Id. at ¶16; Ex.1045. A POSITA would also have considered that the
`
`assignee of the ‘034 patent at the time of the alleged invention, Dana Corporation,
`
`manufactured motorcycle parts and subsystems (i.e., cooling modules for Harley
`
`7
`
`
`
`Davidson motorcycles) and thus would have been aware of the general nature of
`
`the business they were in. Weinberg Reply at ¶16; Ex.1030; Katona Dep. 42:11-14.
`
`In the face of the overwhelming intrinsic and extrinsic evidence indicating that
`
`“vehicle” should be construed to include motorcycles (among other vehicles),
`
`Patent Owner offers only attorney argument and the unsupported expert testimony.
`
`Response at 7; Ex.2002 (Declaration of Joseph Katona)(“Katona”) at ¶¶41, 44-48;
`
`see Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir.
`
`1997)(“Nothing in the rules or in our jurisprudence requires the fact finder to credit
`
`the unsupported assertions of an expert witness.”).
`
`III. KATO IS ANALAGOUS ART IN THE SAME FIELD OF
`INVENTION AS THE ‘034 PATENT
`
`Contending that Kato is non-analogous art to the ‘034 patent because it is
`
`purportedly addressed to a different field of endeavor and not reasonably pertinent
`
`to the problem addressed by the ‘034 patent, Patent Owner provides no valid
`
`rationale to exclude this reference in a §103 analysis. Response at 15-24. A
`
`POSITA considering an adjustable headlight for vehicles would naturally look to
`
`references employing lighting adjustment in any sort of vehicle. Weinberg Reply
`
`¶33; see In re ICON Health & Fitness, 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)
`
`(“A reference is reasonably pertinent if, even though it may be in a different field
`
`from that of the inventor's endeavor, it is one which, because of the matter with
`
`which it deals, logically would have commended itself to an inventor’s attention in
`
`8
`
`
`
`considering his problem.”) Art is analogous when it is “reasonably pertinent to the
`
`particular problem with which the inventor is involved.” Comaper Corp. v. Antec,
`
`Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010); Wyers v. Master Lock Co., 616 F.3d
`
`1231, 1238 (Fed. Cir. 2010) (explaining that the scope of analogous art should be
`
`construed broadly under KSR).” That is certainly the case with Kato.
`
`A.
`
`Kato is pertinent to the problem addressed by the ‘034 patent
`and is in the same field of endeavor
`
`Kato is at least “reasonably pertinent” because it directly addresses the
`
`particular problem the ‘034 patent purports to solve. The drawback of traditional
`
`headlights (according to the ‘034 patent) is that “they cannot alter the directional
`
`aiming angles of the headlights to account for changes in the operating conditions
`
`of the vehicle.” ‘034 patent at 1:39-43(emphasis added). Kato solves this problem,
`
`by disclosing a headlight axis control device that adjusts the aim of a headlight “if
`
`a pitch angle, a bank angle, a steering angle, and so on vary.” Weinberg Reply ¶32;
`
`Kato ¶6.
`
`Patent Owner’s contentions thus defy common sense. Patent Owner argues
`
`that the ‘034 patent “is not directed at motorcycle applications” because it
`
`discusses headlights which are fixed to the body of the vehicle, whereas
`
`motorcycle headlights such as those discussed in Kato are mounted to “movable
`
`steering components, such as the handlebar assembly.” Response at 21. This
`
`distinction is incorrect for a number of reasons. On its face, like the ‘034 patent,
`
`9
`
`
`
`Kato is directed to “a front lamp optical axis control device,” which is the same
`
`field of endeavor as the ‘034 patent. Weinberg Reply ¶30; Kato ¶¶1, 7, 11, 16.
`
`First, Kato describes both handlebar- and body-mounted headlights.
`
`Weinberg Reply ¶28. Kato discloses an embodiment where a “front lamp optical
`
`axis control device is applied to a motorcycle in which the front lamp is affixed to
`
`the vehicle body.” Kato ¶12(emphasis added). Kato also discloses an embodiment
`
`where “the front lamp 20 is affixed to the handlebar.” Kato ¶32. Kato clarifies that
`
`where “the front lamp 20 is not affixed to the handlebar … it is affixed to the
`
`vehicle body.” Kato ¶33(emphasis added). Additionally, Mr. Katona conceded that
`
`this embodiment in Kato taught a headlight mounted to the motorcycle body.
`
`Katona Dep. 37:16-19. Patent Owner’s argument that body-mounted headlights are
`
`only applicable to four-wheeled vehicles is simply wrong.
`
`Second, many motorcycles at the time of the patent employed body fairing-
`
`mounted headlights that were independent of the handlebars or front-fork.
`
`Weinberg Reply ¶27; Katona Dep. 39:4-7, 48:12-14. Indeed, most motorcycles
`
`with integrated fairings include body fairing-mounted headlights, which are in turn
`
`mounted to the frame or body of the motorcycle. Id. For example, at least the
`
`Honda Goldwing GL1800 motorcycle which was popular at the time of the patent
`
`had a headlight mounted to the fairing. Weinberg ¶27; Ex.1032; Katona Dep.
`
`46:15-20, 47:9-12. Suzuki, the assignee of the Kato patent, made several
`
`10
`
`
`
`motorcycles with body fairing-mounted, immovable headlights (e.g., the Suzuki
`
`SV650S and TL1000S). See Weinberg ¶27; Ex.1029; Ex.1033; Katona Dep. 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 shows that the headlight is mounted
`
`independent of the handlebar, as evident by the turned front-wheel and handlebar
`
`having no effect on the headlight. Weinberg Reply ¶27; Ex.1031; Katona Dep.
`
`45:20-24.
`
`11
`
`
`
`B.
`
`The solutions provided by Kato and the ‘034 patent are similar
`
`In its efforts to distinguish Kato, Patent Owner advances additional
`
`arguments that lack merit and are unsupported by the ‘034 patent claims. Patent
`
`Owner asserts that Kato is dissimilar because the ‘034 patent seeks to cause the
`
`headlight to “swivel in the direction of the turn of a four-wheel vehicle,” whereas
`
`Kato purportedly causes a “reverse angle correction movement.” Response at 10.
`
`Patent Owner conflates the directions of correction. Like Kato, the ‘034 patent
`
`describes a reverse angle correction to the up/down headlight movements. ‘034
`
`patent at 12:5-13. The left/right headlight movements taught by Kato swivel either
`
`in the direction of the turn or in a reverse angle correction, depending on where the
`
`headlight is mounted. Kato ¶¶31-33.
`
`More importantly, the ‘034 patent claims limit neither the direction of
`
`correction nor movement of the actuators. Weinberg Reply ¶25. Rather, Claim 7
`
`broadly recites “two or more actuators being connected to the vehicle headlight to
`
`effect movement thereof.” ‘034 patent at Claim 7(emphasis added). The ‘034 patent
`
`further 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).
`
`12
`
`
`
`The ‘034 patent specification provides a broad teaching and explains that
`
`“[t]he 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 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.” Id. at 6:57-
`
`61(emphasis added). Thus, the ‘034 patent contemplated being applied to a wide
`
`variety of vehicles, including those described by Kato, and is agnostic as to the
`
`specific direction in which the actuators move. Weinberg Reply ¶25.
`
`IV. THERE WAS AMPLE MOTIVATION TO COMBINE KATO’S AXIS
`CONTROL WITH TAKAHASHI’S THRESHOLD
`
`Taken in their entirety, Kato and Takahashi disclose solutions to the same
`
`problem and complement one another as a result. Cf. Response at 24-25. Contrary
`
`to Patent Owner’s insistence, neither reference, “teach[es] away.” Id. Even a
`
`finding that two disclosures are designed to resolve different problems is
`
`insufficient to demonstrate that one teaches away from another. Baxter Int’l, Inc. v.
`
`McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998)(quoting In re Gurley, 27 F.3d
`
`551, 553 (Fed. Cir. 1994))(noting that “a reference will teach away if it suggests
`
`13
`
`
`
`that the line of development flowing from the reference’s disclosure is unlikely to
`
`be productive of the result sought”). That is not the case here.
`
`A.
`
`A POSITA would be motivated to combine Kato with Takahashi
`
`Takahashi is directed to the same field of endeavor as Kato: vehicle
`
`headlight direction control. Weinberg Reply ¶35. Both Kato and Takahashi aim to
`
`improve dynamic headlight aiming systems to maintain adequate illumination
`
`regardless of vehicle conditions. Id.
`
`Takahashi explained that varying the weight and distribution of that weight
`
`on an automobile causes headlight beam maladjustment. This issue is similarly
`
`present in motorcycles, as are all of the conditions discussed in Takahashi (e.g.,
`
`“when the road gradient varies suddenly”). Weinberg Reply ¶35; Takahashi at
`
`7:15-16. For example, the number of occupants has an effect on both cars and
`
`motorcycles. See e.g., Takahashi at 1:14-17. Likewise, the effect a load has on a
`
`vehicle is an issue that applies to both cars and motorcycles. See e.g., Takahashi at
`
`1:17-18. Mr. Katona confirmed that the pitch of both motorcycles and cars are
`
`affected by the “load andand placement of load.” Katona Dep. 19:2-20:25. Indeed,
`
`Takahashi 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. A POSITA would have known that this
`
`14
`
`
`
`sort of effect would occur on the vehicles described by Kato as well. Weinberg
`
`Reply ¶38.
`
`Like the ‘034 patent, Takahashi disclosed a “vehicle” in general terms.
`
`Weinberg Reply ¶37. Further, as with Kato, the Takahashi patent assignee, Koito
`
`Manufacturing Company Ltd., was engaged in both the car and motorcycle lighting
`
`domains. A POSITA would have been aware that the solutions taught by
`
`Takahashi were equally applicable to problems associated with motorcycle or
`
`automobile lighting. Id. at ¶36.
`
`B.
`
`Kato does not teach away from Takahashi
`
`Patent Owner attempts to distinguish Kato from the teachings of Takahashi
`
`by asserting that Kato describes “the motorcycle body tilting in the direction of the
`
`bank angle.” Response at 26. However, Patent Owner’s emphasis on bank angles is
`
`a red herring. The fact that Kato discusses bank angles does not render it
`
`incompatible with Takahashi. Changes in the bank angle may affect the headlight
`
`aim on a four-wheel vehicle just as with a motorcycle. Weinberg Reply ¶18.
`
`The ‘034 patent does not provide an exhaustive list of “operating conditions”
`
`to which the controller can respond. The ‘034 patent, however, provides an open-
`
`ended list of operating conditions. Weinberg Reply ¶¶20, 39; ‘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
`
`15
`
`
`
`change of suspension height of the vehicle.”)(emphasis added). The ‘034 patent
`
`broadens this open-ended list of operating conditions by stating that “any other
`
`operating condition or conditions of the vehicle may be sensed and provided to the
`
`headlight directional controller 14.” ‘034 patent at 7:7-9(emphasis added). Further,
`
`Mr. Katona conceded that the suspension height sensors disclosed in the ‘034
`
`patent can also be used to sense the bank angle or roll of a vehicle. Katona Dep.
`
`18:10-24. Thus, the ‘034 patent does not exclude “banking angle” from the
`
`operating conditions that may be sensed. Weinberg Reply ¶¶20, 40.
`
`C. Modifying Kato in view of Takahashi would have a predictable
`result
`
`While Kato described its implementation on a motorcycle, and Takahashi
`
`described its implementation on a car, neither reference limited their respective
`
`solutions to those vehicle types. Rather, like the ‘034 patent, they apply broadly to
`
`all vehicles that share those same problems. Weinberg Reply ¶44.
`
`Patent Owner describes a POSITA as having “a working understanding of
`
`control systems and associated components used within the automotive industry;
`
`and, relevant work experience with product development and design in the
`
`automotive industry,” in addition to possessing “knowledge of vehicle attributes
`
`and operating conditions necessary to determine the necessary headlamp
`
`directional control responses, and how to effectuate those responses.” Response at
`
`5(emphasis added); see Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
`
`16
`
`
`
`1342, 1366 (Fed. Cir. 2012)(“it is generally easier to establish obviousness under a
`
`higher level of ordinary skill in the art.”) Yet Patent Owner at the same time argues
`
`that this impressive POSITA would have defied common sense and implemented
`
`Takahashi’s threshold limitation to “ignore certain changes in the inclination of a
`
`motorcycle body” and “delay headlight direction correction for inclinations of the
`
`motorcycle of any magnitude.” Response at 32. Even Patent Owner’s expert
`
`disagrees, explaining that a POSITA would know that Takahashi’s threshold
`
`amounts “could be set for a minimum amount of time.” Katona ¶55; Weinberg
`
`Reply ¶49; see In re ICON Health & Fitness, 496 F.3d 1374, 1382 (Fed. Cir.
`
`2007)(noting one should “not ignore the modifications that one skilled in the art
`
`would make to a device borrowed from the prior art. One skilled in the art would
`
`size the components from [the prior art] appropriately … therefore producing an
`
`embodiment meeting [the claims at issue].”).
`
`It would have been advantageous for a POSITA to have combined Kato with
`
`Takahashi. Weinberg Reply ¶50. Both Kato and Takahashi address problems
`
`associated with headlight aim when road or vehicle conditions change, but
`
`Takahashi would have improved Kato by adding hysteresis. Id. For example,
`
`Takahashi describes how to “correct the illumination direction of the lamp 6” when
`
`“the road gradient varies suddenly.” Takahashi at 7:14-17. Takahashi’s teaching on
`
`this point mirrors Kato’s goal of providing a “front lamp axis control device” that
`
`17
`
`
`
`is responsive to changes in pitch angle, steering angle, bank angle, and other
`
`conditions, in a “stable manner.” Kato ¶6. Specifically, Kato identified that such
`
`condition changes due to “acceleration, deceleration, or bumps in the road.” Id. at
`
`¶37. Far from teaching away, Takahashi would have furthered Kato’s goal of
`
`“stable” correction by implementing hysteresis. Weinberg Reply ¶42. Thus the
`
`solutions provided by Takahashi would be acutely relevant to a POSITA
`
`considering implementing Kato. Id.
`
`A POSITA would have understood how to properly implement the threshold
`
`limitation taught by Takahashi in the system described by Kato. Weinberg Reply
`
`¶46. 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). Id. This would be routine
`
`practice for a POSITA, as defined by Mr. Katona, with “a working understanding
`
`of control systems.” Response at 5.
`
`Contrary to Patent Owner’s assertion, the intended function of Kato is not
`
`“to provide for immediate correction of the headlight direction.” Response at
`
`32(emphasis added); Weinberg Reply ¶47. Kato stated that the object of the
`
`invention is “to provide a front lamp optical axis control device in which a range
`
`illumination of a front lamp can be ensured
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