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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MERCEDES-BENZ USA, LLC
`
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`
`Listed Patent Owner.
`
`____________
`
`U.S. Patent No. 7,241,034
`
`"Automatic Directional Control System for Vehicle Headlights"
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`Inter Partes Review No. 2016-00501
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`
`
`
`

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`
`
`TABLE OF CONTENTS
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`I. INTRODUCTION .............................................................................................. 1
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`II. BACKGROUND ................................................................................................ 1
`
`III. OVERVIEW OF THE '034 PATENT ............................................................. 3
`
`A.
`
`B.
`
`C.
`
`The '034 Patent Specification ............................................................. 3
`
`Prosecution History of the '034 Patent .............................................. 5
`
`Ex Parte and Inter Partes Reexaminations of the '034 Patent ......... 6
`
`IV. CLAIM CONSTRUCTION .............................................................................. 9
`
`V. STATEMENT OF RELIEF REQUESTED FOR EACH
`CHALLENGED CLAIM ...................................................................................... 10
`
`A.
`
`Identification of Challenge (37 C.F.R. §§ 42.104(b)) ..................... 10
`
`B. Grounds of Challenge (37 C.F.R. § 42.204(b)(2)) ........................... 11
`
`VI. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ................................................................................................. 12
`
`A. Overview of the Cited Prior Art ...................................................... 12
`
`1.
`
`2.
`
`3.
`
`Josic – U.S. Patent No. 5,798,911 ........................................... 12
`
`Bilz – U.S. Patent No. 6,480,806 ............................................. 15
`
`Gotoh – U.S. Patent No. 5,931,572 ......................................... 16
`
`4. Mouzas – U.S. Patent No. 5,428,512 ...................................... 16
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`5.
`
`Liao – U.S. Patent No. 5,580,148 ............................................ 16
`
`B. Overview of Petitioner's Counts ...................................................... 17
`
`C. Count 1 – Josic Anticipates Claims 7, 14-16, and 32 ..................... 19
`
`D. Count 2 – Josic Combined with Bilz Renders Claims 7, 14-
`16, 31, and 32 Obvious ...................................................................... 25
`
`
`
`
`i
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`

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`
`
`1.
`
`2.
`
`3.
`
`One of Ordinary Skill in the Art Would have Been
`Motivated to Combine Josic with Bilz .................................. 25
`
`Josic Combined with Bilz Renders Claim 7 and 14-16
`Obvious .................................................................................... 27
`
`Josic Combined with Bilz Renders Claims 31 and 32
`Obvious .................................................................................... 30
`
`E. Count 3 – Josic in View of Mouzas Renders Claim 36
`Obvious ............................................................................................... 31
`
`1.
`
`One of ordinary skill in the art would have been
`motivated to combine Josic with Mouzas ............................. 31
`
`2.
`
`Josic in view of Mouzas renders Claim 36 Obvious ............ 33
`
`F.
`
`Count 4 – Josic in View of Bilz and in Further View of
`Mouzas Renders Claim 36 Obvious ................................................. 34
`
`G. Count 5 – Josic in View of Gotoh Renders Claim 3 Obvious........ 34
`
`1.
`
`One of Ordinary Skill in the Art Would Have Been
`Motivated to Combine Josic with Gotoh .............................. 34
`
`2.
`
`Josic Combined with Gotoh Renders Claim 3 Obvious ...... 36
`
`H. Count 6 – Josic in view of Bilz and in Further View of
`Gotoh Renders Claims 3 and 5 Obvious ......................................... 39
`
`1. Motivation to Combine Josic with Gotoh and Bilz .............. 39
`
`2.
`
`3.
`
`Josic in View of Bilz and in Further View of Gotoh
`renders Claim 3 Obvious ........................................................ 39
`
`Josic in View of Bilz and in Further View of Gotoh
`Renders Claim 5 Obvious ....................................................... 41
`
`I.
`
`Count 7 – Liao in View of Bilz Renders Claims 7, 14-16, 31,
`and 32 obvious ................................................................................... 42
`
`1.
`
`One of Ordinary Skill in the Art Would Have been
`Motivated to Combine Liao with Bilz ................................... 42
`
`ii
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`

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`
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`2.
`
`3.
`
`Liao in View of Bilz Renders Claims 7, and 14-16
`Obvious .................................................................................... 43
`
`Liao in View of Bilz Renders Claims 31 and 32
`Obvious .................................................................................... 48
`
`J.
`
`Count 8 – Liao in View of Bilz and in Further View of
`Mouzas Renders Claim 36 Obvious ................................................. 50
`
`1.
`
`2.
`
`One of Ordinary Skill in the Art would have been
`Motivated to Combine Liao, Bilz, and Mouzas .................... 50
`
`Liao in view of Bilz and in Further View of Mouzas
`Renders Claim 36 Obvious ..................................................... 51
`
`K. Count 9 – Liao in view of Bilz and in Further View of Gotoh
`Renders Claims 3 and 5 Obvious ..................................................... 52
`
`1.
`
`2.
`
`3.
`
`One of Ordinary Skill in the Art would have been
`Motivated to Combine Liao with Gotoh and Bilz ................ 52
`
`Liao in View of Gotoh and in Further View of Bilz
`Renders Claim 3 Obvious ....................................................... 53
`
`Liao in View of Gotoh and in Further View of Bilz
`Renders Claim 5 Obvious ....................................................... 56
`
`VII.
`
`MANDATORY NOTICES ............................................................... 56
`
`A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ............................... 57
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2)) ......................................... 57
`
`1.
`
`2.
`
`3.
`
`Related Patent Office Proceedings ........................................ 57
`
`Related Litigation .................................................................... 57
`
`Related Applications ............................................................... 58
`
`C.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) and
`Service Information (37 C.F.R. § 42.8(b)(3)-(4)) ............................ 58
`
`D.
`
`Payment of Fees (37 C.F.R. § 42.15(a)) ........................................... 59
`
`
`
`
`iii
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`

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`
`
`VIII.
`REQUIREMENTS FOR INTER PARTES REVIEW (37
`REQUIREMENTS FOR INTER PARTES REVIEW (37
`VIII.
`C.F.R §§ 42.101, 42.104, and 42.108) ................................................................... 59
`C.F.R §§ 42.101, 42.104, and 42.108) ................................................................. ..59
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a); 37 C.F.R. §§
`A.
`Grounds for Standing (37 C.F.R. § 42.104(a); 37 C.F.R. §§
`42.101(a)-(c)) ...................................................................................... 59
`42.101(a)-(c)) .................................................................................... ..59
`
`IX. CONCLUSION................................................................................................. 59
`IX. CONCLUSION ............................................................................................... ..59
`
`iv
`iv
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`

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`
`
`EXHIBITS
`
`
`No.
`
`EXHIBIT
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
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`Ex. 1004
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`Ex. 1005
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
`
`Ex. 1012
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`Ex. 1013
`
`Ex. 1014
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`Ex. 1015
`
`U.S. Patent No. 7,241,034 ("the '034 patent")
`
`Declaration of Scott Andrews ("Andrews")
`
`U.S. Patent No. 982,803 ("Dunning")
`
`U.S. Patent No. 1,524,443 ("McVey")
`
`U.S. Patent No. 1,595,879 ("Schjotz")
`
`U.S. Patent No. 3,316,397 ("Yssel")
`
`U.S. Patent No. 3,617,731 ("Fleury")
`
`U.S. Patent No. 4,733,333 ("Shibata")
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`U.S. Patent Application No. 10/285,312 ("'312 application")
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`Patent File History for U.S. Patent No. 7,241,034
`
`Ex Parte Reexamination File History for U.S. Patent No.
`7,241,034
`
`Inter Partes Reexamination File History for U.S. Patent No.
`7,241,034
`
`U.S. Patent No. 5,798,911 ("Josic")
`
`U.S. Patent No. 5,580,148 ("Liao")
`
`U.S. Patent No. 6,480,806 ("Bilz")
`
`
`
`v
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`

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`
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`
`
`Ex. 1016
`Ex. 1016
`
`U.S. Patent No. 5,931,572 ("Gotoh")
`U.S. Patent No. 5,931,572 ("Gotoh")
`
`U.S. Patent No. 5,428,512 ("Mouzas")
`
`U.S. Patent No. 5,428,512 ("Mouzas")
`
`Ex. 1017
`Ex. 1017
`
`vi
`Vi
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`

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`
`
`I.
`
`INTRODUCTION
`
`Petitioner Mercedes-Benz USA, LLC ("Mercedes") respectfully requests
`
`inter partes review of claims 3, 5, 7, 14-16, 31-32, and 36 ("the Challenged
`
`Claims") of U.S. Patent No. 7,241,034 ("the '034 patent") (Ex. 1001), pursuant to
`
`35 U.S.C. § 311 and 37 C.F.R. § 42.100. As set forth below, Patent Owner
`
`Adaptive Headlamp Technologies, Inc. ("Adaptive") has sued Mercedes for
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`infringing the '034 patent in the District of Delaware, and currently asserts that
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`Mercedes infringes the Challenged Claims. This Petition seeks review of those
`
`claims.
`
`This petition and the Declaration of Scott Andrews ("Andrews") (Ex. 1002),
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`submitted herewith, cite prior art to provide background on the relevant technology
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`and describe the state of the art at the time of the alleged invention.
`
`II. BACKGROUND
`
`The '034 patent generally relates to movable headlights mounted on
`
`vehicles. Headlights are a well-known and common technology, and are used on
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`virtually all types of vehicles. In early automobiles, headlights were mounted in a
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`fixed position. As technology progressed (and well prior to the filing of the '034
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`patent), vehicle headlight technology evolved to include automatic control
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`technology to alter headlight direction in response to changing operating
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`1
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`

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`
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`conditions – a fact expressly admitted in the '034 patent. ('034 patent at 1:57-61;
`
`see also Andrews ¶44-50.)
`
`Moveable headlight technology, in fact, is almost as old as the automobile
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`itself. In 1911, Dunning disclosed headlights for automobiles in which headlight
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`direction was controlled by mechanical links to the steering system. (See Ex. 1003,
`
`1:9-17.) McVey, a 1925 patent, discloses a similar system for adjusting the
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`headlight angle according to a mechanical connection with the steering wheel.
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`(Ex. 1004, 2:16-31.) In 1926, Schjotz disclosed a headlight assembly that moved
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`automatically in two axes – the housing automatically moved side-to-side, and
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`reflectors automatically directed light up-and-down. (Ex. 1005, see, e.g., Fig. 3;
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`1:8-25; 1:39-42; 1:53-63.)
`
`Other prior art references disclose more modern versions of this well-known
`
`technology. Yssel contains an extensive discussion of a headlight that
`
`automatically moves up and down relative to the road surface. (Ex. 1006, see, e.g.,
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`1:9-35; 2:53-59; 7:16-28.) Either the entire headlight assembly, or a part such as
`
`the reflector, may be moved. (See, e.g., id. at 2:61-65; 6:38-47). In 1971, Fleury
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`disclosed adjustable lighting equipment for a road vehicle, implemented by a
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`hydraulic system. (Ex. 1007.)
`
` Thus, by the time of the alleged inventions of the '034 patent, a person of
`
`ordinary skill in the art ("POSITA") would been well aware of prior art that
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`
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`2
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`

`
`
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`adjusted headlights in response to changing road conditions, and would have had a
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`deep understanding of the principles related to this technology. (Andrews ¶44-50.)
`
`While the '034 patent purports to provide an "improved structure" for automatic
`
`headlight directional control systems ('034 Patent at 1:65-67), no such improved
`
`structure can be found in the claims beyond that which was already well known.
`
`The Challenged Claims are no more than an amalgamation of an obvious
`
`combination of known adjustable headlight systems with known signal processing
`
`schemes, and are unpatentable under 35 U.S.C. §§ 102-103. (Andrews ¶44-50.)
`
`III. OVERVIEW OF THE '034 PATENT
`
`A. The '034 Patent Specification
`
`As noted above, the '034 patent purports to describe an "improved structure"
`
`for automatic headlight directional control systems. The patent, however, is
`
`unclear as to what is actually improved over the variety of pre-existing adjustable
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`headlight systems.
`
`Figure 1 of the '034 patent is a diagram of the headlight directional control
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`system in accordance with the purported invention. ('034 patent at 2:28-30; 2:36-
`
`66.) Many aspects of the invention depicted in Figure 1, however, are described as
`
`using "conventional" components. It uses a "conventional" headlight 11 that can
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`be moved in the up/down and left/right directions based on movements of
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`"conventional" actuators 12 and 13. ('034 patent at 2:63-67; 3:14-19; 3:26-37.) A
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`
`
`3
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`

`
`
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`headlight controller 14 receives signals from a pair of "conventional" condition
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`sensors 15 and 16. ('034 patent at 3:49-65.) Such "conventional" condition
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`sensors 15 and 16 generate electrical signals representative of vehicle operating
`
`conditions, such as road speed, steering angle, and pitch of the vehicle (which may
`
`be determined by sensing the front and rear suspension heights of the vehicle or by
`
`a pitch or level sensor). ('034 patent at 6:62-7:4.) Time derivatives of these
`
`operating conditions, i.e., rates of change, may also be sensed or calculated. ('034
`
`patent at 7:4-7.)
`
`The '034 patent describes that a "predetermined minimum threshold" may be
`
`used to prevent the actuators from being operated "continuously or unduly
`
`frequently" in response to "relatively small" variations in sensed operating
`
`conditions, such as "relatively small bumps in the road." ('034 patent at 9:18-27.)
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`The threshold serves to minimize or eliminate undesirable hunting of the actuators
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`for relatively small magnitudes of headlight movement. ('034 patent at 9:46-53.)
`
`Using a "threshold" in such a manner was well known in the prior art – indeed,
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`during the ex parte reexamination of the '034 patent, the patent owner expressly
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`conceded this point. As discussed below, the patent owner, not a third party,
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`initiated the ex parte reexam. In the request, the patent owner admitted that one of
`
`the prior art references, Shibata, disclosed the claimed "threshold" – specifically,
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`that Shibata's description of allowing "play" in the steering wheel to defeat
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`
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`4
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`

`
`
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`"chattering" in the actuators deflecting the headlamps was an express disclosure of
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`the claimed threshold limitation. (Infra III.C; Ex. 1008, Shibata at 11:35-52; 13:35-
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`48; 15:57-65.) There can thus be no dispute that the "threshold," like many of the
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`other "conventional" aspects of the Challenged Claims, was well known and was
`
`expressly disclosed in the prior art described below.
`
`B.
`
`Prosecution History of the '034 Patent
`
`The '034 patent issued from U.S. Patent Application No. 10/285,312, which
`
`was filed on October 31, 2002 ("'312 application") (Ex. 1009). The '312
`
`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). Challenged Claims 3 and 5 contain a "rate of
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`change" feature, the disclosure of which first appeared in the '703 provisional
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`application filed February 13, 2002.
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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
`
`Examiner interview, stated it was "agreed that claim 14 is allowable over the prior
`
`art of record because of the specific limitation of 'a predetermined minimum
`
`threshold amount to prevent the actuator from being operated continiously [sic] or
`
`duly [sic] in response to relatively small variations in the sensed operating speed.'"
`
`
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`5
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`

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`
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`(Ex. 1010 at 236-37.) Claim 14 then issued as claim 1 of the '034 patent, with
`
`claims 2-5 depending from it.
`
`C. Ex Parte and Inter Partes Reexaminations of the '034 Patent
`
`On March 8, 2010, Balther Technologies, LLC, then-owner of the '034
`
`patent, sued a number of defendants for infringement of the '034 patent. That suit
`
`was voluntarily dismissed without prejudice on May 18, 2010. Balther
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`subsequently filed an ex parte reexamination request on claims 1 and 3 of the '034
`
`patent in July 2010. In its request for reexamination, the patent owner expressly
`
`stated that the prior art disclosed many limitations of the then-pending claims that
`
`are similar to the claims that are the subject of this request, including the threshold
`
`limitation that was the stated basis for patentability of the original '034 patent.
`
`Specifically, the patent owner admitted that the Shibata prior art reference:
`
`teaches a "cornering lamp system for a vehicle which changes direction
`
`of the headlamps." . . . This teaching meets [the '034 patent's] claimed
`
`"automatic directional control system for a vehicle headlight." . . .
`
`Shibata further teaches that the directional control is automatic. . . . In
`
`addition, Shibata teaches . . . [the '034 patent's] claimed "sensor that is
`
`adapted to generate a signal that is representative of a condition of the
`
`vehicle, said sensed condition includes one or more of road speed,
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`steering angle, pitch, and suspension height of the vehicle." . . .
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`Additionally, Shibata teaches [the '034 patent's] claimed "controller
`
`that is responsive to said sensor signal for generating an output signal
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`only when said sensor signal changes by more than a predetermined
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`
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`6
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`
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`minimum threshold amount to prevent said actuator from being
`
`operated continuously or unduly frequently in response to relatively
`
`small variations in the sensed operating condition".
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`(Ex. 1011 at 37.) On May 16, 2011, Volkswagen Group of America, Inc. filed a
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`separate request for inter partes reexamination of the '034 patent (and based on the
`
`record did not actively participate thereafter). The request was granted, and the
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`inter partes and ex parte proceedings were subsequently merged. As ordered, the
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`patent owner thereafter presented a single set of claims – 41 in all – in the merged
`
`proceedings. (Ex. 1012 at 956-69.)
`
`The patent owner argued that the cited prior art references "fail to teach 'two
`
`or more sensors that are each adapted to generate a signal that is representative of
`
`at least one of a plurality of sensed conditions of a vehicle, said sensed conditions
`
`including at least steering angle and pitch of the vehicle,'" as claimed. (Id. at
`
`965-66 (emphasis in original).) The patent owner also argued that the prior art
`
`references "fail to teach 'two or more actuators each being adapted to be
`
`connected to the headlight to effect movement thereof in accordance with said at
`
`least one output signal,'" as claimed. (Id. at 966) (emphasis in original).
`
`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
`
`allowable. Without argument, the patent owner rewrote allowable claims 3 and 7
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`7
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`

`
`
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`into independent form, and amended the remaining claims to depend therefrom.
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`(Id. at 1119-30.)
`
`In an Action Closing Prosecution, the Examiner found claim 7 of the '034
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`patent patentable because the prior art failed to disclose the combination of a
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`steering angle sensor with a pitch sensor. (Id. at 1161-62 ) The claims dependent
`
`on claim 7 were deemed allowable for containing the limitations of claim 7. (Id.)
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`
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`The two primary references relied on in this Petition, Josic (Ex. 1013) and
`
`Liao (Ex. 1014), both disclose this critical missing limitation, and neither were
`
`considered by the PTO during prosecution. Josic, as well as Bilz (Ex. 1015)
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`further disclose the "threshold" limitation that was used to distinguish the invention
`
`from the prior art during prosecution. When these references are considered, it is
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`clear the reexamined '034 patent should never have issued.
`
`
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`The Examiner found the narrower independent claim 3 patentable because
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`the prior art did not disclose the "two or more sensors" limitation in combination
`
`with a sensor that generates a signal "representative of a rate of change of the
`
`steering angle." (Id. at 1161-62 (emphasis in original).) The claims dependent on
`
`claim 3 were deemed allowable for containing the limitations of claim 3. (Id.)
`
`
`
`Gotoh (Ex. 1016) discloses this combination of multiple sensors with a
`
`sensor that measures the rate of change of steering angle; this reference was not
`
`considered during the original prosecution or reexamination of the '034 patent.
`
`
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`8
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`
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`Thus, claim 3 and its dependent claims are similarly invalid. The primary
`
`references in this petition, Josic and Liao, each additionally disclose the above-
`
`referenced limitation of "two or more actuators."
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`IV. CLAIM CONSTRUCTION
`
`
`
`In an IPR, claim terms are given their broadest reasonable interpretation
`
`("BRI") (37 C.F.R. § 42.100(b)), in accordance with "their ordinary and customary
`
`meaning as would be understood by one of ordinary skill in the art in the context of
`
`the entire patent disclosure." Nuvasive v. Warsaw Orthopedic, Inc., IPR2013-
`
`00206, Paper No. 17 at 6 (P.T.A.B. Sept. 23, 2013).
`
`
`
`Here, a person of ordinary skill in the art ("POSITA") at the time of the
`
`alleged invention would have at least a bachelor's degree in mechanical or
`
`electrical engineering, computer science, physics, or an equivalent field and at least
`
`two years of related industry experience, and 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. (Andrews ¶42.)
`
`
`
`Petitioner submits that, for purposes of this inter partes review, no
`
`construction of any claim term is needed. Petitioner proposes that the claim terms
`
`take on their ordinary and customary meaning that the terms would have to one of
`
`ordinary skill in the art at the time of the invention. (Andrews ¶35.) This is
`
`entirely consistent with the patent specification, which expressly states that many
`
`
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`9
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`
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`of the claim terms are “conventional.” (‘034 Patent at 2:66-67; 3:27-30; 3:61-62;
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`4:11-12; 4:35-36; Andrews ¶35.) Petitioner further submits that the specification
`
`provides no express or implicit definition for any of the claim terms. (Andrews
`
`¶35.) Petitioner reserves the right to respond to, and/or to offer alternative
`
`constructions, to any proposed claim term constructions offered by Patent Owner.
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`V.
`
`STATEMENT OF RELIEF REQUESTED FOR EACH
`CHALLENGED CLAIM
`
`A.
`
`Identification of Challenge (37 C.F.R. §§ 42.104(b))
`
` Petitioner requests inter partes review of claims 3, 5, 7, 14-16, 31-32, and
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`36 of the '034 patent and requests that the Patent Trial and Appeal Board ("PTAB")
`
`cancel those claims as unpatentable. This Petition cites the following prior art
`
`references (citations to 35 USC refer to the pre-AIA version):
`
`Ex. 1013 – U.S. Patent No. 5,798,911 to Josic is prior art to the '034 patent
`
`under 35 U.S.C. § 102(b). Josic was not considered during prosecution of the '034
`
`patent and is not cumulative of any prior art considered by the examiner(s).
`
`Ex. 1015 – U.S. Patent No. 6,480,806 to Bilz is prior art to the '034 patent
`
`under 35 U.S.C. § 102(e). Bilz was not considered during prosecution of the '034
`
`patent and is not cumulative of any prior art considered by the examiner(s).'
`
`Ex. 1016 – U.S. Patent No. 5,931,572 to Gotoh is prior art to the '034 patent
`
`under 35 U.S.C. § 102(b). Gotoh was not considered during prosecution of the
`
`'034 patent and is not cumulative of any prior art considered by the examiner(s).
`
`
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`10
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`

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`
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`Ex. 1008 – U.S. Patent No. 4,733,333 to Shibata is prior art to the '034
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`patent under 35 U.S.C. § 102(b). Shibata is used below to show, in part, that one
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`of ordinary skill in the art would have been motivated to combine references in a
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`manner that renders the claims obvious.
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`Ex. 1017 – U.S. Patent No. 5,428,512 to Mouzas is prior art to the '034
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`patent under 35 U.S.C. § 102(b). Mouzas was included in the information
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`disclosure statement by the '034 patent applicant, but it was not otherwise
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`mentioned during prosecution of the '034 patent, nor was it considered during the
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`reexamination of the '034 patent, when the Challenged Claims were added. It is
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`not cumulative of any prior art considered by the examiner(s). Mouzas is used
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`below in combination with other references because it discloses the subject matter
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`of claim 36.
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`Ex. 1014 – U.S. Patent No. 5,580,148 to Liao is prior art to the '034 patent
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`under 35 U.S.C. § 102(b). Liao was not considered during prosecution of the '034
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`patent and is not cumulative of any prior art considered by the examiner(s).
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`B. Grounds of Challenge (37 C.F.R. § 42.204(b)(2))
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`Petitioner respectfully requests that inter partes review of claims 3, 5, 7, 14-
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`16, 31-32, and 36 of the '034 patent be instituted because this Petition establishes a
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`reasonable likelihood that the Petitioner will prevail with respect to at least one
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`claim. 35 U.S.C. § 314(a). Each reference listed above qualifies as prior art to the
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`'034 patent under 35 U.S.C. § 102(a), and/or (b) and/or (e). The grounds on which
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`this petition is based are:
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`Count # Ground for Challenge
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`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`Claims 7, 14-16, and 32 are anticipated by Josic
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`Claims 7, 14-16, 31, and 32 are obvious over Josic in view of Bilz
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`Claim 36 is obvious over Josic in view of Mouzas
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`Claim 36 is obvious over Josic in view of Bilz and in further view
`of Mouzas
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`Claim 3 is obvious over Josic in view of Gotoh
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`Claims 3 and 5 are obvious over Josic in view of Bilz and in further
`view of Gotoh
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`Claims 7, 14-16, 31, and 32 are obvious over Liao in view of Bilz
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`Claim 36 is obvious over Liao in view of Bilz and in further view
`of Mouzas
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`Claims 3 and 5 are obvious over Liao in view of Bilz and in further
`view of Gotoh
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`
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`A detailed explanation of Petitioner's invalidity bases is provided in Part VI
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`below. See 37 C.F.R. § 42.104(b)(4).
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`VI.
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`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
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`A. Overview of the Cited Prior Art
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`The following is a summary of the references cited in support of this request.
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`1.
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`Josic – U.S. Patent No. 5,798,911
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`Josic, entitled "Automatic Light System for Motor Vehicles of All Kinds and
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`a Method For Controlling a Light System," was filed on August 30, 1995 and
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`issued on August 25, 1998. (Josic at 1). Josic is prior art to the '034 patent under
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`35 U.S.C. §§ 102(a), (b), and (e), and was not previously considered by the PTO.
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`(See generally Andrews ¶¶51-54.)
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`Josic discloses a lighting-direction control unit that alters the direction of
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`vehicle headlights in the vertical (up/down) direction so as to maintain a minimum
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`light range that would illuminate at least the minimum stopping distance of the
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`vehicle. (Abstract; Andrews ¶¶51-54.) Josic further discloses altering the
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`direction of the vehicle headlights in the horizontal (left/right) direction according
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`to the angle of the steering wheel. (Id.)
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`As shown generally in Fig. 12 below, Josic uses a "multicomputer" (300,
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`highlighted in yellow) that receives data signals from various sensors, including,
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`for example, data "DI" from a steering wheel (highlighted in red below). In
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`response, the multicomputer controls the horizontal and vertical adjustment of the
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`vehicle's headlights using horizontal and vertical drives 360 (highlighted in blue
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`below). (See Josic at 9:50-10:59.)
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`13
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`This is also described in connection with Fig. 1, which depicts the
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`multicomputer 60 (highlighted in yellow) receiving signals from the "input means"
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`80, a vibration sensor 10, and an inclination sensor 20 (highlighted in blue). The
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`data from the "input means" may include information entered by the driver
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`including road condition data (dry, wet, snow, ice) and on the visibility conditions
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`(good, rain or mist, fog or heavy snowfall). (Id. at 7:50-54; Andrews ¶¶51-54.)
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`The multicomputer 60 receives speed data "Dv" from a speed sensor 40
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`(highlighted in blue), and also receives the steering angle from a steering angle
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`sensor 30 (highlighted in red). This is an example of the "two or more" sensors,
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`including a steering angle sensor and pitch sensor, found to be of critical
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`importance during the reexamination of the '034 patent. (Id. at 6:1-18.) In
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`response to this data, the microcomputer determines the correct horizontal and
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`14
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`vertical angles of the headlights and transmits a signal that moves them
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`appropriately (highlighted in green). (See Josic at 6:1-43.)
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`Based on these sensor signals, Josic's headlights are adjusted both horizontally and
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`vertically. (See, e.g., id. at 3:10-39.) And, although the patent owner affirmatively
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`stated during the ex parte reexamination that the "threshold" limitation was known
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`in the prior art, this is also shown in Josic. (See, e.g., id. at 4:19-22; see also
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`Andrews ¶¶49, 51-54.)
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`2.
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`Bilz – U.S. Patent No. 6,480,806
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`Bilz was filed on September 29, 2000 and is prior art to the '034 patent under
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`35 U.S.C. § 102(e). (See generally Andrews ¶¶55-58.) Bilz discloses an automatic
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`headlamp leveling system that modifies the level of the headlamps if the pitch
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`angle changes by more than a predetermined threshold. (Id.; Bilz at 3:65-4:1.)
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`Bilz uses a threshold to "avoid stressing the stepping motor," only activating "rapid
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`automatic control mode . . . when a considerable pitch angle change due to driving-
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`dynamics-related influences" is measured. (Id. at 1:51-54; Andrews ¶¶55-58.)
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`15
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`Bilz also discloses, like Josic, a pitch sensor, a controller, and a stepping motor to
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`control headlight orientation. (Andrews ¶¶55-58.)
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`3. Gotoh – U.S. Patent No. 5,931,572
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`Gotoh, entitled simply "Head Lamp Device for Vehicle," was published on
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`August 3, 1999, and is prior art under 35 U.S.C. §102(b) (Gotoh at 1.) Gotoh was
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`not previously considered by the PTO. Gotoh is directed to changing the lighting
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`direction in front of a vehicle. (Gotoh at Abstract.) Gotoh adjusts the headlights
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`based on a speed sensor, a steering angle sensor, and other information. (Gotoh at
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`Fig. 4.) Notably, Gotoh discloses adjusting the lighting direction based on the
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`steering angle or a steering speed. (Gotoh at 2:43-47; Andrews ¶60-61; 78-79; 81-
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`83.)
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`4. Mouzas – U.S. Patent No. 5,428,512
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`Mouzas, entitled "Sidelighting Arrangement and Method," was published on
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`June 27, 1995 and is prior art under 35 U.S.C. §102(b). (Mouzas at 1.) Mouzas
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`was included in the information disclosure statement by the '034 patent applicant
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`but was not the subject of a substantive rejection. Mouzas is directed to controlling
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`sidelight illumination of a motor vehicle during cornering. (Mouzas at Abstract;
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`see generally Andrews ¶59.)
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`5.
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`Liao – U.S. Patent No. 5,580,148
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`16
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`Liao, entitled "Automatically Slaved Motor Vehicle Light," was published
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`on December 3, 1996. (Liao at 1.) Liao is therefore prior art to the '034 patent
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`under 35 U.S.C. §102(b), and it was not previously considered by the PTO.
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`Liao discloses a lighting-direction control unit that alters the direction of
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`vehicle headlights in the vertical (up/down) direction so as to compensate when
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`traversing a decline or incline. (Id. at Abstract.) Liao further discloses altering the
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`direction of the vehicle headlights in the horizontal (left/right) direction according
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`to the steering angle. (Id.)
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`With reference to Figure 1 below, a microprocessor unit 40, which receives
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`signals from the level sensor and steering angle sensors 31 and 32, controls the
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`horizontal and vertical motors on the headlight (the azimuth angle and elevational
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`angle motors 52 and 51). (See generally Andrews ¶62-63.)
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`B. Overview of Petitioner's Counts
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`17
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`This Request includes nine counts, which are based on two primary
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`references – counts 1-6 are based on Josic and counts 7-9 are based on Liao.
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`Counts 1-6: Count 1 asserts that claims 7, 14-16 and 32 are antic