UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BMW OF NORTH AMERICA, LLC,
`Petitioner
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`v.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner
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`Inter Partes Review No.: To Be Assigned
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`U.S. Patent No. 7,241,034 C1
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`___________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,241,034 UNDER
`35 U.S.C. § 311 AND 37 C.F.R. § 42.100
`
`

`
`INTRODUCTION ......................................................................................... 1
`I.
`II. OVERVIEW OF THE ’034 PATENT ......................................................... 3
`A.
`The ’034 Patent Specification ............................................................... 3
`B.
`Summary of the Prosecution History of the ’034 Patent ...................... 5
`C.
`Summary of the Ex Parte and Inter Partes Reexaminations of the
`’034 Patent ............................................................................................. 6
`III. CLAIM CONSTRUCTION .......................................................................... 8
`A.
`Relative Terms of Degree Used in Claims 3 and 7 ............................... 9
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................12
`A.
`Statutory Grounds of Challenge ..........................................................12
`B. Overview of the Cited Art ...................................................................13
`1. Izawa – U.S. Patent No. 6,229,263 ...............................................13
`2. Speak – U.S. Patent No. 5,868,488 ...............................................15
`3. Nishimura – JP2001-277938 .........................................................16
`4. Okuchi – U.S. Patent No. 6,671,640 .............................................18
`5. Gotou – U.S. Patent No. 5,562,336 ...............................................19
`V. DETAILED EXPLANATION OF THE CHALLENGE .........................20
`A. Ground 1 ..............................................................................................20
`1. Ground 1(a) – Claims 7, 14-16 and 31-32 Are Obvious Over
`Izawa in View of Speak ................................................................20
`2. Ground 1(b) – Claim 36 Is Obvious Over Izawa in View of Speak
`and Further in View of Hayami ....................................................29
`3. Ground 1(c) – Claims 3 and 5 Are Obvious Over Izawa in View of
`Speak and Further in View of Uguchi ..........................................31
`B. Ground 2 ..............................................................................................35
`1. Ground 2(a) – Claims 3, 5, 7, 14-16, 32 and 36 Are Obvious Over
`Nishimura in View of Okuchi .......................................................35
`2. Ground 2(b) – Claim 31 Is Obvious Over Nishimura in View of
`Okuchi and Further in View of Takahashi ...................................45
`C. Ground 3 ..............................................................................................47
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`
`
`i
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`1. Ground 3(a) – Claims 7, 14-16 and 31-32 Are Obvious Over
`1. Ground 3(a) — Claims 7, 14-16 and 31-32 Are Obvious Over
`Gotou in View of Izawa ................................................................47
`Gotou in View of Izawa .............................................................. ..47
`2. Ground 3(b) – Claim 36 Is Obvious Over Gotou in View of Izawa
`2. Ground 3(b) — Claim 36 Is Obvious Over Gotou in View of Izawa
`and Further in View of Hayami ....................................................54
`and Further in View of Hayarni .................................................. ..54
`3. Ground 3(c) – Claims 3 and 5 Are Obvious Over Gotou in View
`3. Ground 3(c) — Claims 3 and 5 Are Obvious Over Gotou in View
`of Izawa and Further in View of Uguchi ......................................56
`of Izawa and Further in View of Uguchi .................................... ..5 6
`VI. MANDATORY NOTICES .........................................................................58
`VI. MANDATORY NOTICES .........................................................................58
`A.
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................58
`A.
`Real Parties—in—Interest (37 C.F.R. § 42.8(b)(1)) .............................. ..58
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................58
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) .......................................... ..58
`C.
`Identification of Counsel (37 C.F.R. § 42.8(b)(3)) .............................59
`C.
`Identification of Counsel (37 C.F.R. § 42.8(b)(3)) ........................... ..59
`VII. GROUNDS FOR STANDING AND PROCEDURAL STATEMENT ..59
`VII. GROUNDS FOR STANDING AND PROCEDURAL STATEMENT ..59
`VIII. CONCLUSION ............................................................................................60
`VIII. CONCLUSION ............................................................................................60
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`
`
`ii
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`LIST OF EXHIBITS
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`Exhibit No. Description of Exhibit
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`Patents and Assignment Information
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`BMW 1001
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`U.S. Patent No. 7,241,034, including Reexamination Certificate
`issued as U.S. Patent No. 7,241,034 C1
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`BMW 1002 USPTO Assignments on the Web for U.S. Patent No. 7,241,034
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`Documents Relating to Prosecution of the ’034 Patent
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`BMW 1003 File History for U.S. Serial No. 10/285,312
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`BMW 1004 File History for Ex Parte Reexamination Proceedings 90/011,011
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`BMW 1005
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`File History for Merged Reexamination Proceedings 90/011,011 &
`95/001,621
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`Expert Declaration
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`BMW 1006
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`Declaration of Dr. John Martens in Support of Inter Partes Review
`of U.S. Patent No. 7,241,034 C1
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`BMW 1007 Curriculum Vitae of Dr. John Martens
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`Prior Art
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`BMW 1008 U.S. Patent No. 6,229,263 (“Izawa”)
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`BMW 1009 U.S. Patent No. 5,868,488 (“Speak”)
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`BMW 1010 Japanese Patent Application Publication H01-223042, September 6,
`1988 (“Uguchi”), with certified English translation
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`BMW 1011 U.S. Patent Application Publication 2001/0012206 (“Hayami”)
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`BMW 1012 Japanese Patent Application No. P2001-277938, October 10, 2001
`(“Nishimura”), with certified English translation
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`BMW 1013 U.S. Patent No. 6,671,640 (“Okuchi”)
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`iii
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`

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`BMW 1014 UK Published Patent Application GB 2 309 774 A (“Takahashi”)
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`BMW 1015 U.S. Patent No. 5,562,336 (“Gotou”)
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`BMW 1016 U.S. Patent No. 5,404,278 (“Shibata”)
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`BMW 1017 French Patent No. 995,205, with machine translation
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`BMW 1018
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`Green, Gavin, “Future Shock: Nothing as otherworldly radical had
`ever touched down on Planet Earth,” Aug. 10, 2006, available at
`http://www.motortrend.com/news/c12-0511-1960-citroen-ds/
`
`BMW 1019 U.S. Patent No. 6,547,425
`
`BMW 1020
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`Adaptive Headlamp Technologies, Inc.’s Disclosure of Asserted
`Claims, served in U.S. District Court for the District of Delaware in
`Case No. 1:14-cv-00962-GMS.
`
`iv
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`

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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioner BMW of
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`North America, LLC (“Petitioner”) respectfully requests inter partes review
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`(“IPR”) of claims 3, 5, 7, 14-16, 31-32 and 36 (“Challenged Claims”) in the Inter
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`Partes Reexamination Certificate of U.S. Patent No. 7,241,034 C1 (“the ’034
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`patent”) (BMW 1001)1. Pursuant to the United States Patent and Trademark
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`Office (“PTO”) assignment records, the ’034 patent is assigned to Adaptive
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`Headlamp Technologies, Inc. (“AHT”) (BMW 1002).2
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`I.
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`INTRODUCTION
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`Vehicle headlights (or headlamps) illuminate road surfaces and objects in
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`the direction of travel to improve visibility for drivers in lower light conditions.
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`Headlights were originally mounted on vehicles in fixed positions, with light
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`propagation paths directed along a correspondingly fixed forward direction.
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`However, by the time the ’034 patent was filed, vehicle headlamp technology had
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`long evolved to include automatic control technology that altered the directional
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`aiming of headlights to account for changes in operating conditions. (BMW 1001
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`1 Petitioner challenges all claims asserted against it in the district court litigation.
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`(BMW 1020).
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`2 The PTO assignment records also show an assignment dated the same date to an
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`entity named “Apaptive Headlamp Solutions Inc.” [sic].
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`at 1:57-61; BMW 1006 at ¶27). In fact, the ’034 patent itself acknowledges that a
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`“variety” of such systems were known in the prior art. (BMW 1001 at 1:61-62;
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`BMW 1006 at ¶27).
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`As one early example, in 1967, the French Citroën DS vehicle was equipped
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`with an elaborate dynamic headlamp positioning system that automatically
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`adjusted a headlamp’s horizontal and vertical position in response to inputs from
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`the vehicle’s steering and suspension systems.3 It has also been long known to use
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`an auxiliary side light that is automatically turned-on in response to the steering
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`angle to light the sides of a road.4
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`While the ’034 patent purports to provide an “improved structure” for
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`automatic headlight directional control systems (BMW 1001 at 1:65-67), no such
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`improved structure can be found in the claims beyond that which was already well
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`known. The Challenged Claims are no more than an amalgamation of an obvious
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`combination of known adjustable headlight systems with known signal processing
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`schemes, and are unpatentable under 35 U.S.C. § 103(a).5
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`3 (See BMW 1006 at ¶28; BMW 1018).
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`4 (See BMW 1006 at ¶¶29, 149-50; BMW 1016; BMW 1017).
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`5 See also IPR2016-00079, Paper No. 2 (IPR Petition of ’034 Patent) at 8-11
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`(describing historical development of automatically adjustable vehicle headlights).
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`2
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`

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`II. OVERVIEW OF THE ’034 PATENT
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`A. The ’034 Patent Specification
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`As noted above, the ’034 patent purports to describe an “improved structure”
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`for automatic headlight directional control systems. The patent, however, is
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`unclear as to what is actually improved over the variety of pre-existing adjustable
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`headlight systems. (BMW 1001 at 1:57 – 2:7).
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`Figure 1 of the ’034 patent, reproduced below, provides a block diagram of
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`the headlight directional control system in accordance with the purported
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`invention. (BMW 1001 at 2:28-30; 2:36-66; BMW 1006 at ¶37).
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`The system uses a “conventional” headlight 11 that can be moved in the up/down
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`and left/right directions based on movements of “conventional” actuators 12 and
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`3
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`

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`13. (BMW 1001 at 2:63-67; 3:14-19; 3:26-37). A headlight controller 14 receives
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`signals from a pair of “conventional” condition sensors 15 and 16. (BMW 1001 at
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`3:49-65). Such “conventional” condition sensors 15 and 16 generate electrical
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`signals representative of vehicle operating conditions, such as road speed, steering
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`angle, and pitch of the vehicle (which may be determined by sensing the front and
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`rear suspension heights of the vehicle or by a pitch or level sensor). (BMW 1001
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`at 6:62 – 7:4; BMW 1006 at ¶¶38-39). Time derivatives of these operating
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`conditions, i.e., rates of change, may also be sensed or calculated. (BMW 1001 at
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`7:4–7; BMW 1006 at ¶39).
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`Figures 5-7 of the ’034 patent describe algorithms used to implement
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`adjustment of the direction of the headlights. (BMW 1001 at 2:44-58; BMW 1006
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`at ¶¶40-44). In general, Figure 5’s algorithm involves: (1) reading values from the
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`two condition sensors; (2) determining an “adjustment factor”; (3) comparing the
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`adjustment factor values with the current headlight position; (4) determining
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`whether the magnitude of the adjustment value is greater than a threshold value;
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`and (5) if the adjustment factor is greater than the threshold, then energizing the
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`actuators to move the headlights. (BMW 1001 at Fig. 5; BMW 1006 at ¶41).
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`Instead of sensor values, Figure 7’s algorithm compares the rate of change of any
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`number of sensed conditions to a threshold value for moving the headlights.
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`(BMW 1001 at 7:4-7; Fig. 6-7; BMW 1006 at ¶¶40, 42-43).
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`4
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`

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`The ’034 patent describes that a “predetermined minimum threshold” may
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`be used to prevent the actuators from being operated “continuously or unduly
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`frequently” in response to “relatively small” variations in sensed operating
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`conditions, such as “relatively small bumps in the road.” (BMW 1001 at 9:18-27;
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`BMW 1006 at ¶41). The threshold serves as a filter or deadband that minimizes or
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`eliminates undesirable hunting of the actuators for relatively small magnitudes of
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`headlight movement. (BMW 1001 at 9:46-53; BMW 1006 at ¶42).
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`Finally, the ’034 patent states that the directional control system can
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`automatically, as opposed to manually, activate preexisting lights that illuminate
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`the sides of the roads during turning, based upon the sensed steering angle. (BMW
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`1001 at 12:27-39).
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`B.
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`Summary of the Prosecution History of the ’034 Patent
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`The ’034 patent issued from U.S. Patent Application No. 10/285,312, which
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`was filed on October 31, 2002 (“’312 application”) (BMW 1003). The ’312
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`application claims priority from U.S. Provisional Patent Application Nos.
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`60/369,447 (filed April 2, 2002), 60/356,703 (filed February 13, 2002), and
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`60/335,409 (filed October 31, 2001).6
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`6 Challenged Claims 3 and 5 contain a “rate of change” feature, the disclosure of
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`which first appeared in the ’703 provisional application filed February 13, 2002.
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`5
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`

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`After multiple prior art rejections and multiple sets of amendments, the
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`Examiner ultimately allowed pending claim 14. The applicant, recounting an
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`Examiner interview, stated it was “agreed that claim 14 is allowable over the prior
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`art of record because of the specific limitation of ‘a predetermined minimum
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`threshold amount to prevent the actuator from being operated continiously [sic] or
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`duly [sic] in response to relatively small variations in the sensed operating speed.’”
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`(BMW 1003 at 236-37). Claim 14 then issued as claim 1 of the ’034 patent.
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`C.
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`Summary of the Ex Parte and Inter Partes Reexaminations of the
`’034 Patent
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`On May 25, 2010, Balther Technologies, LLC, the then-current owner of the
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`’034 patent, filed an ex parte reexamination request on claims 1 and 3 of the ’034
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`patent. The request was granted and the claims rejected. (BMW 1004 at 117-30).
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`The patent owner responded by amending claims 1-5 and adding new claims 6-45.
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`(Id. at 150-60).
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`On May 16, 2011, Volkswagen Group of America, Inc. filed a request for
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`inter partes reexamination of the ’034 patent (and did not appear to actively
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`participate thereafter). The request was granted, and the inter partes and ex parte
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`proceedings were subsequently merged. As ordered, the patent owner thereafter
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`presented a single set of claims—41 in all—in the merged proceedings. (BMW
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`1005 at 956-69).
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`The patent owner argued that the cited prior art references “fail to teach ‘two
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`6
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`

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`or more sensors that are each adapted to generate a signal that is representative of
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`at least one of a plurality of sensed conditions of a vehicle, said sensed conditions
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`including at least steering angle and pitch of the vehicle,’” as claimed. (Id. at
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`965-66) (emphasis in original). The patent owner also argued that the prior art
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`references “fail to teach ‘two or more actuators each being adapted to be
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`connected to the headlight to effect movement thereof in accordance with said at
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`least one output signal,’” as claimed. (Id. at 966) (emphasis in original).
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`In an extensive Office Action addressing 38 proposed grounds of rejection,
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`independent claim 1 and dependent claims 2, 4-6, 8-10, and 12-37 were rejected.
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`Dependent claims 3, 7, 11, and 38-41 were objected to but otherwise deemed
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`allowable. Without argument, the patent owner rewrote allowable claims 3 and 7
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`into independent form, and amended the remaining claims to depend therefrom.
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`(Id. at 1119-30).
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`In an Action Closing Prosecution, the Examiner provided the following
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`statement of reasons for patentability:
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`Independent claim 3 is patentable because of the fact that no single
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`reference of record or combination of references teach “at least one of
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`said two or more sensors generates at least one of said two or more
`sensor signals that is representative of a rate of change of the
`steering angle of the vehicle” in combination with a [sic.] “a
`controller” and “two or more actuators” as required in claim 3.
`
`*
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`*
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`*
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`7
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`

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`Independent claim 7 is patentable because of the fact that no single
`reference of record or combination of references teach “wherein said
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`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 adapted to generate a signal that is representative
`of a condition including the pitch of the vehicle” in combination
`with “a controller” and “two or more actuators” as required in
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`claim 7.
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`(Id. at 1161-62) (emphasis in original). The dependent claims were deemed
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`allowable for containing the limitations of the independent claims from which they
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`depend. (Id.). The Inter Partes Reexamination Certificate issued on June 14,
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`2013. (BMW 1001).
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`III. CLAIM CONSTRUCTION
`
`In an IPR, claim terms are given their broadest reasonable interpretation
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`(“BRI”) (37 C.F.R. § 42.100(b)), in accordance with “their ordinary and customary
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`meaning as would be understood by one of ordinary skill in the art in the context of
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`the entire patent disclosure.” Nuvasive v. Warsaw Orthopedic, Inc., IPR2013-
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`00206, Paper No. 17 at 6 (P.T.A.B. Sept. 23, 2013); see also Phillips v. AWH
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`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The ordinary and
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`customary meaning applies unless the inventor has set forth a special meaning for a
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`term in the specification. Nuvasive, IPR2013-00206, Paper No. 17 at 6; see also In
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`re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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`8
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`

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`Here, a person of ordinary skill in the art (“POSITA”) at the time of the
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`alleged invention would have at least a bachelor’s degree in electrical engineering,
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`computer science, physics, or an equivalent field and at least two years of related
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`industry experience. The POSITA would have a working understanding of
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`microprocessor driven controls for automotive systems, including closed loop
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`controls using sensors and actuators. (BMW 1006 at ¶21).
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`Except as discussed below, the terms in the Challenged Claims should have
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`their plain meaning under BRI. A POSITA would understand the plain meaning of
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`the structural terms “sensor,” “controller,” “actuator,” and “headlight,” which are
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`all described as “conventional” components known in the art. (BMW 1006 at
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`¶23).7
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`A. Relative Terms of Degree Used in Claims 3 and 7
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`Both claims 3 and 7 require a “predetermined minimum threshold amount to
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`prevent at least one of two or more actuators from being operated continuously or
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`unduly frequently in response to relatively small variations in at least one of the
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`7 Petitioner’s positions regarding the scope of the claims should not be construed as
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`an assertion regarding the appropriate claim scope in other adjudicative forums,
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`where a different claim interpretation standard may apply.
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`9
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`sensed conditions.”8
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`Petitioner has attempted to understand and apply the limiting phrase
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`concerning the predetermined threshold amount that prevents the actuator from
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`operating “unduly frequently” in response to “relatively small” sensed condition
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`variations as recited in independent claims 3 and 7. Though a Petitioner may not
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`challenge a claim based on indefiniteness, the Board may nonetheless consider
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`indefiniteness under 35 U.S.C. § 112, ¶ 2 as a threshold matter in determining the
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`BRI of the claim language. See, e.g., Brainlab, AG v. Sarif Biomedical LLC,
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`IPR2014-00753, Paper No. 10 at 11 (P.T.A.B. Nov. 4, 2014).
`
`A limitation is indefinite if it fails to “inform those skilled in the art about
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`the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
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`Instrums., Inc., 134 S. Ct. 2120, 2129 (2014); see also Interval Licensing LLC v.
`
`AOL, Inc., 766 F.3d 1364, 1369 (Fed. Cir. 2014). When a word of degree or
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`subjective term is used, it must be determined whether the claims, when read in
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`light of the specification and prosecution history, “provide objective boundaries”
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`and “inform those skilled in the art about the scope of the invention with
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`reasonable certainty.” Interval Licensing LLC v, 766 F.3d at 1370-71; Biosig
`
`
`8 Claim 3 refers to “at least one first one of two or more actuators,” which appears
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`to be a typographical error not contained in claim 7.
`
`10
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`

`
`Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374 (Fed. Cir. 2015). “A term of
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`degree fails to provide sufficient notice of its scope if it depends on the
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`unpredictable vagaries of any one person’s opinion.” Interval Licensing, 766 F.3d
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`at 1370-71 (internal quotation and citation omitted).
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`Here, the claim phrase requires that the “predetermined minimum threshold”
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`be set at an amount that is based on two subjective terms of degree, which are
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`nested within one another: (1) it must be at a level sufficient to prevent “unduly
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`frequent[]” actuation, and (2) it must prevent a response to “relatively small”
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`variations in a sensed signal. The patent and prosecution history, however, do not
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`appear to provide any objective boundaries against which a potentially infringing
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`product can be compared. Interval Licensing, 766 F.3d at 1371.
`
`Rather, the ’034 patent specification explains that the controller prevents
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`operation of the actuators in response to “relatively small bumps in the road” or “a
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`bumpy road.” (BMW 1001 at 9:22-27; 9:40-42; 12:63-66). Those descriptions,
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`however, are also subjective. (BMW 1006 at ¶24). For example, there does not
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`appear to be an objective measure for evaluating the size of a bump or how to
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`determine whether a bump would qualify as “relatively small” for purposes of
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`setting a vehicle threshold to prevent “unduly frequent” actuator movement.
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`(BMW 1006 at ¶24, n.3).
`
`Similarly, the ’034 patent asserts that the threshold may prevent “undesirable
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`11
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`

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`‘hunting’ of the actuators.” (BMW 1001 at 9:50-53). “Undesirable” in the context
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`of an actuator, however, has no commonly understood meaning. (BMW 1006 at
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`¶42, n.5). And, the patent provides no explanation as to what “undesirable” means
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`or from what perspective the desirability should be judged. Rather, desirability of
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`movement may be interpreted differently including, for example, whether such
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`movement would be deemed undesirable to a driver of the vehicle, in terms of
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`component wear, or undesirable from the perspective of approaching traffic.
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`(BMW 1006 at ¶42, n.5). Yet, even if the perspective of judging desirability were
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`made clear, the determination would still be dependent on a subjective viewpoint.
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`Nonetheless, for purposes of applying the prior art, because the “minimum
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`threshold” must prevent continuous or “unduly frequent” operation, Petitioner
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`assumes that the predetermined minimum threshold amount refers to the amount of
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`change in sensed conditions below which the operation of the actuator is not
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`continuous or the frequency of operation of the actuator is reduced. (BMW 1006
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`at ¶24).
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A.
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`Statutory Grounds of Challenge
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`Petitioner challenges the Challenged Claims on the following grounds:
`
`12
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`

`
`Ground
`
`Basis for Rejection
`
`Ground 1(a)
`
`Ground 1(b)
`
`Ground 1(c)
`
`Ground 2(a)
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`Ground 2(b)
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`Ground 3(a)
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`Ground 3(b)
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`Ground 3(c)
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`Claims 7, 14-16, and 31-32 are obvious over Izawa in view
`of Speak under 35 U.S.C. §103(a)
`
`Claim 36 is obvious over Izawa in view of Speak and
`further in view of Hayami under 35 U.S.C. §103(a)
`
`Claims 3 and 5 are obvious over Izawa in view of Speak
`and further in view of Uguchi under 35 U.S.C. §103(a)
`
`Claims 3, 5, 7, 14-16, 32, and 36 are obvious over
`Nishimura in view of Okuchi under 35 U.S.C. §103(a)
`
`Claim 31 is obvious over Nishimura in view of Okuchi
`and Takahashi under 35 U.S.C. §103(a)
`
`Claims 7, 14-16, and 31-32 are obvious over Gotou in
`view of Izawa under 35 U.S.C. §103(a)
`
`Claim 36 is obvious over Gotou in view of Izawa and
`further in view of Hayami under 35 U.S.C. §103(a)
`
`Claims 3 and 5 are obvious over Gotou in view of Izawa
`and further in view of Uguchi under 35 U.S.C. §103(a)
`
`The reasons for unpatentability are detailed below.
`
`B. Overview of the Cited Art
`
`Numerous automatically adjustable headlight systems for automobiles were
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`known prior to the earliest date to which the ’034 patent is entitled to claim priority.
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`(BMW 1001 at 1:61-62). The use of different control schemes was obvious and a
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`matter of design choice, not an innovation.
`
`1.
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`Izawa – U.S. Patent No. 6,229,263
`
`Izawa, entitled “Lighting-Direction Control Unit for Vehicle Lamp,” was
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`13
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`filed on January 20, 2000 and issued on May 8, 2001. (BMW 1008). Izawa is
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`prior art to the ’034 patent under 35 U.S.C. §102(a), and was not previously
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`considered by the PTO.
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`Izawa discloses a lighting-direction control unit that alters the direction of
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`vehicle headlights in the vertical (up/down) direction. With reference to annotated
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`Figure 3 below, an ECU 8 (in green) receives a signal from a vehicle height sensor
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`9 (in red) for determining pitch and a signal from a steering sensor 11 (in blue) for
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`determining the steering angle of the steering wheel. (BMW 1008 at 5:47-49; 6:35-
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`40).
`
`Izawa teaches that actuators 12 and 12’ (in orange) control the rotation of
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`stepping motors 15 and 15’ connected to headlamps 13 and 13’ (in purple) in the
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`14
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`vertical direction in response to a control signal supplied from the ECU 8. (BMW
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`1008 at 6:5-12). Izawa teaches that the system may compare a sensed value with a
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`threshold value, so that any change in the lighting angle may be performed in a
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`stepped manner. (Id. at 4:22-51). Izawa further describes embodiments that use the
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`change rate over time of certain sensed conditions, such as acceleration and pitch
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`angle. (Id. at 3:4-30; 4:45-51).
`
`2.
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`Speak – U.S. Patent No. 5,868,488
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`Speak, entitled “Adjustable Headlights, Headlight Adjusting and Direction
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`Sensing Control System and Method of Adjusting Headlights,” was issued on
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`February 9, 1999. (BMW 1009). Speak is prior art to the ’034 patent under 35
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`U.S.C. §102(b). Speak was one of many references cited in an IDS during
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`prosecution of the ’034 patent, but it was not addressed or relied upon during
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`prosecution.
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`Speak discloses an automatic headlight adjusting and direction sensing
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`control system which incrementally adjusts the Y axis (left/right or horizontal) of
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`the adjustable headlights in accordance with the vehicle turning direction and
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`adjusts the X axis (up/down or vertical) in accordance with the hood orientation in
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`relation to the road topography. (BMW 1009 at 1:46-55). With reference to Figure
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`1, reproduced below, microprocessor 18 receives signals from sensor means 17 to
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`rotate control means 20 and 20’, which are each connected to adjustable headlight
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`15
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`structures 30 and 30’. (Id. at 3:40-51).
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`
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`Speak discloses that the sensor means 17 receives a signal corresponding to the
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`rotation of the steering wheel 12 and a signal corresponding to the hood orientation
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`with respect to the road topography. (Id. at 7:30-35; 7:50-57). Each headlight
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`rotating control means 20, 20’ includes two actuators – an X axis servomotor 21
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`and a Y axis servomotor 22. (Id. at 4:5-10; Fig. 2).
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`3.
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`Nishimura – JP2001-277938
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`Nishimura, entitled “Automatic Adjustment Device for the Optical Axis
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`Direction of Front Headlamps of a Vehicle,” was filed in Japan on March 31, 2000
`
`and published on October 10, 2001. (BMW 1012). Nishimura is prior art to the ’034
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`patent under 35 U.S.C. §102(a), and was not previously considered by the PTO.
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`16
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`

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`Nishimura discloses a headlight automatic adjustment device that adjusts the
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`direction of headlights based upon the feedback from multiple signals, including the
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`tilt (pitch) orientation of the vehicle and the steering angle of the steering wheel.
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`(BMW 1012 at [0006]). With reference to annotated Figure 6 below, Nishimura
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`describes that ECU 20 (in green) receives the sensor signals from the steering angle
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`sensor 62 (in blue) for detecting the steering angle of the steering wheel 61 and
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`receives a signal from the vehicle height sensor 11 (in red) for determining the
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`vehicle tilt orientation. (Id. at [0027]-[0028], [0032]).
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`The ECU 20 provides output signals to the actuators 35 and 36 (in orange),
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`17
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`which include step motors provided for moving the headlight in the front-back
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`(up/down or vertical9) direction and in the horizontal (left/right) rotation direction,
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`respectively. (BMW 1012 at [0032]-[0034]). Nishimura also discloses turning on an
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`auxiliary light that shines in the horizontal direction. (Id. at [0032]-[0034]).
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`4. Okuchi – U.S. Patent No. 6,671,640
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`Okuchi, entitled “Automatic Optical-Axis Adjusting Device for
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`Automatically Adjusting Directions of Optical Axes of Front Lights With Respect
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`to Steering Angle of Steering Wheel,” was filed on October 2, 2001. (BMW
`
`1013). Okuchi is prior art to the ’034 patent under 35 U.S.C. §102(e), and was not
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`previously considered by the PTO.
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`Okuchi describes a system that determines whether to adjust a vehicle’s
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`headlights based upon a rate of change of the steering angle. (BMW 1013 at 1:65-
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`2:3; 5:5-9-11). With reference to Figure 1 below, Okuchi describes an ECU 20 that
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`receives “various sensor signals” including output from a steering angle sensor 16.
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`(Id. at 2:56-58; Fig. 1).
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`9 Nishimura references a “front/back” movement of the headlight, which
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`corresponds to an “up/down” or “vertical” adjustment. (BMW 1012 at Fig. 4;
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`BMW 1006 at ¶99).
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`18
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`
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`Okuchi describes that output signals from the ECU 20 are input into actuators 12L,
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`12R, which can adjust the left/right direction of swivel lights 11L, 11R and/or of the
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`headlights 10L, 10R. (Id. at 3:59-64; 5:55-57). Okuchi further describes that the
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`target light angle will only be adjusted when the steering angle exceeds a threshold
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`amount outside of an “insensible region.” (Id. at 4:14-17; Fig. 4).
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`5. Gotou – U.S. Patent No. 5,562,336
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`Gotou, entitled “Head Lamp Device for Vehicle,” issued on October 8, 1996.
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`(BMW 1015). Gotou is prior art to the ’034 patent under 35 U.S.C. §102(b), and
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`was not previously considered by the PTO.
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`Gotou discloses a device for adjusting the light distribution of a vehicle
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`headlamp based on sensed vehicle and road conditions. With reference to annotated
`
`Figure 3 below, Gotou discloses an ECU 20 (in green) that receives signals from
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`multiple vehicle sensors, including a steering angle sensor 22 (in blue) and a gyro
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`19
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`sensor 33. (BMW 1015 at 4:33-62; Fig. 3). Gotou describes that the ECU processes
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`the obtained signals to determine the angles for the vehicle’s headlamps and signals
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`two actuators (in orange) to adjust the headlamps’ optical angles – a motor 8 for
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`horizontal head lamp oscillation and a motor 13 for vertical head lamp oscillation.
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`(Id. at 3:46-4:62; 5:20-26; Figs. 1, 2).
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`Gotou further discloses that the optical axis angles of the headlamps will only
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`be changed if the steering angle exceeds a threshold amount outside of a “non-
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`
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`sensitive range.” (Id. at 2:8-37; 6:52-62; Fig. 5B).
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`V. DETAILED EXPLANATION OF THE CHALLENGE
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`A. Ground 1
`
`1.
`
`Ground 1(a) – Claims 7, 14-16 and 31-32 Are Obvious Over
`Izawa in View of Speak
`
`Claim 7 recites “An automatic directional control system for a vehicle
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`20
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`headlight,” comprising elements [7a]-[7e], each discussed below. Izawa discloses
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`all of the limitations of claim elements [7a]-[7b] and [7d]-[7e].
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`[7a] “two or more sensors that are each adapted to generate a
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`signal that is representative of at least one of a plurality of
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`sensed conditions of a vehicle such that two or more sensor
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`signals are generated, said sensed conditions including at least
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`a st