UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00196
`Patent 7,241,034
`
`PATENT OWNER ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`BMW OF NORTH AMERICA, LLC,
`Petitioner
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00196
`Patent 7,241,034
`
`PATENT OWNER ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`Case IPR2016-00196
`Patent 7,241,034
`
`
`
`Petitioner BMW of North America, LLC (“BMW” or “Petitioner”) filed a
`
`petition for inter partes review (the “Petition”) of claims 3, 5, 7, 14-16, 31-32, and
`
`36 of U.S. Patent No. 7,241,034 (“the ‘034 Patent”). Patent Owner Advanced
`
`Microscopy, Inc. (“Patent Owner” or “AMI”) respectfully requests that the Petition
`
`be denied as redundant, so as to “secure a just, speedy, and inexpensive resolution
`
`of the proceedings.” 37 C.F.R. § 42.1.
`
`The Petition includes eights grounds for invalidity all based on obviousness
`
`under 35 U.S.C. § 103. The grounds are grouped into three categories based on
`
`one of three primary prior art references: U.S. Patent No. 6,229,263 to Izawa
`
`(“Izawa”), Japanese Patent Application No. JP2001-2777938 to Nishimura et al.
`
`(“Nishimura”), and U.S. Patent No. 5,562,336 to Gotou (“Gotou”). The secondary
`
`references include U.S. Patent No. 5,868,488 to Speak (“Speak”), U.S. Patent
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`Appl. Publ. No. 2001/0012206 (“Hayami”); Japanese Patent Application
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`Publication H01-223042 (“Uguchi”); U.S. Patent No. 6,671,640 (“Okuchi”); UK
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`Published Patent Application GB 2309774 (“Takahashi”).1
`
`
`1 The Petition also identifies additional references in it its list of Exhibits, including
`
`Exs. 1016-1019, but does not offer these references in any ground for challenging
`
`the claims of the ‘034 Patent or specify where each element of the claim is found
`
`in the prior art patents or printed publications relied upon. See 37 C.F.R. §
`
`2
`
`
`
`Case IPR2016-00196
`Patent 7,241,034
`
`
`
`This proceeding, IPR2016-00196, involves the same patent (i.e., the ’034
`
`Patent) and similar prior art that is involved in three currently pending but as of yet
`
`uninitiated proceedings:
`
`Proceeding
`IPR2016-00079
`
`Patent
`’034 Patent
`
`Claims Challenged
`3-39
`
`IPR2016-00193
`
`’034 Patent
`
`3-39
`
`IPR2016-00501
`
`’034 Patent
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`3, 5, 7, 14-16, 31-32, 36
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`The prior art and obviousness arguments in this proceeding are the same or
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`substantially similar to those raised in the three other proceedings, the original
`
`prosecution, and the previous reexaminations. Each prior art reference involves
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`various systems for movement of a headlight either in the horizontal or vertical
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`direction, but the prior art here similarly fails to teach or suggest each and every
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`feature of the reexamined independent claims 3 and 7 of the ‘034 Patent, and the
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`modifications and combinations for obviousness are suggested using improper
`
`hindsight without providing a sufficient motivation to do so.
`
`
`42.104(b)(4). As such, 37 C.F.R. § 42.104(b)(5) provides that the Board may
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`exclude or give no weight to these references since the Petition “has failed to state
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`[the] relevance or to identify specific portions of the evidence that support the
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`challenge[s].”
`
`3
`
`
`
`Case IPR2016-00196
`Patent 7,241,034
`
`
`
`Petitioner has not explain why the grounds set forth in this Petition are better
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`than any of the prior art involved in these other three proceedings, the original
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`prosecution, or the previous reexaminations, or why the grounds based on Izawa,
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`Nishimura, or Gotou are not understood reasonably as being based on
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`“substantially the same prior art or arguments” that were presented in these other
`
`three proceedings, the original prosecution, or the previous reexamination. 35
`
`U.S.C. § 325(d); see Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
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`IPR2014-00312, Paper 14 at 12-13 (PTAB, July 8, 2014) (rejecting the petition
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`because the same prior art and substantially the same arguments were presented to
`
`the Office during prosecution); U.S. Endodontics, LLC v. Gold Standard
`
`Instruments, LLC, IPR2015-01476, Paper 13 at 9 (PTAB, October 26, 2015)
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`(rejecting the petition because the same prior art and substantially the same
`
`arguments were presented to the Office during other co-pending Inter Partes
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`Review proceedings);. As such, the Board should deny this Petition as redundant.2
`
`
`2 Patent Owner’s present response is limited to the redundancy of the prior art
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`references and arguments as set forth in the Petition. Patent Owner does not waive
`
`the right to make additional arguments on the merits if the Petition is granted and
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`the Inter Partes Review of the ‘034 Patent is instituted, and Patent Owner hereby
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`expressly reserves the right to do so.
`
`4
`
`
`
`Respectfully submitted,
`
`By: / Brett M. Pinkus /
`Brett M. Pinkus
`Reg. No. 59,980
`FRIEDMAN, SUDER & COOKE
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`5
`
`Case IPR2016-00196
`Patent 7,241,034
`
`
`
`
`Dated: February 19, 2016
`
`
`
`
`
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`
`
`
`
`
`
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`
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`CERTIFICATE OF SERVICE
`
`Case IPR2016-00196
`Patent 7,241,034
`
`
`
`
`
`I hereby certify that on this the 19th day of February, 2016, a true and
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`correct copy of the foregoing PATENT OWNER ADAPTIVE HEADLAMP
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`TECHNOLOGIES, INC.’S PRELIMINARY RESPONSE was served via
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`electronic mail upon counsel of record for Petitioners, as agreed upon by counsel,
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`at the following addresses:
`
`Jeffrey D. Sanok (jsanok@crowell.com)
`
`Jonathan Lindsay (jlindsay@crowell.com)
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`Dated: February 19, 2016
`
`
`
`By: / Brett M. Pinkus/
`Brett M. Pinkus
`Registration No. 59,980
`
`6
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