`571-272-7822
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`Paper 10
`Entered: March 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KOITO MANUFACTURING CO., LTD, and
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-000791
`Patent 7,241,034 C1
`_______________
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`RAMA G. ELLURU and SCOTT C. MOORE, Administrative Patent
`Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
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`1 Case IPR2016-01368 has been joined with this proceeding.
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`
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`Case IPR2016-00079
`Patent 7,241,034 C1
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`I.
`
`INTRODUCTION
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`Koito Manufacturing Co., Ltd. (“Petitioner”) filed a Petition (Paper 2;
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`“Pet.”) to institute an inter partes review of claims 3–26 and 28–35 of U.S.
`
`Patent No. 7,241,034 C1 (Ex. 1001; “the ’034 patent”). Adaptive Headlamp
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`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response (Paper
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`10; “Prelim. Resp.”). The Board instituted a trial as to claims 3–26, 28–32,
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`and 35 of the ’034 patent. Paper 11 (“Dec. on Inst.”).
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`After institution of trial, Patent Owner filed a Patent Owner Response
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`(“PO Resp.”) to the Petition. Paper 16. Petitioner filed a Reply (“Reply”) to
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`the Patent Owner Response. Paper 18. Petitioner relies on the Declaration
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`of Ralph V. Wilhelm, Ph.D. (Ex. 1019) in support of its Petition, and the
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`Reply Declaration of Ralph V. Wilhelm, Ph.D. (Ex. 1037) in support of its
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`Reply. Patent Owner relies on the Declaration of Joe Katona (Ex. 2002) in
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`support of its Response.
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`An oral hearing was held on January 11, 2017. The record contains a
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`transcript of this hearing. Paper 23 (“Tr.”).
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`We have jurisdiction over this dispute under 35 U.S.C. § 6. This Final
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`Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73. Petitioner has shown by a preponderance of the evidence that
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`claims 3–26, 28–32, and 35 are unpatentable under 35 U.S.C. § 103(a).
`
`II.
`
`BACKGROUND
`
`A.
`
`Related Proceedings
`
`The ’034 patent was subject to an ex parte reexamination (Control No.
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`90/011,011) and an inter partes reexamination (Control No. 95/001,621)
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`filed by Volkswagen Group of America, Inc. Pet. 1. These reexamination
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`proceedings were merged and resulted in issuance of an inter partes
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`reexamination certificate. Id.; Ex. 1002.
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`The ’034 patent also was the subject of prior litigation in the U.S.
`
`District Court for the Eastern District of Texas. Pet. 1–2. Neither Petitioner
`
`nor its subsidiaries were parties to this prior case, which was dismissed
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`without prejudice on May 18, 2010. See id. The ’034 patent is asserted by
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`Patent Owner in several pending litigations in the U.S. District Court for the
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`District of Delaware. Pet. 2; Paper 6, 2–3. Petitioner is not a party to any of
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`these Delaware litigations. See id.
`
`B.
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`The ’034 Patent
`
`The ’034 patent discloses a structure and method for operating a
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`directional control system for vehicle headlights. Ex. 1001, Abstract.
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`Figure 1 of the ’034 patent is reproduced below.
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`Figure 1 is a block diagram of automatic directional control system 10 for a
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`vehicle headlight. Id. at 2:28–30, 63–65. Headlight 11 is mounted on a
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`vehicle in a manner that permits the direction of projected light to be
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`adjusted by actuators 12 and 13. Id. at 3:10–13, 26–28. Condition sensors
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`15 and 16 sense operating conditions of the vehicle, and generate electrical
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`signals that are responsive to the sensed operating conditions. Id. at 3:61–
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`64. Headlight directional controller 14 receives the electrical signals
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`generated by condition sensors 15 and 16, and responds by selectively
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`operating actuators 12 and 13 to adjust the position of headlight 11. Id. at
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`3:49–58. The disclosed automatic directional control system also includes
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`feedback sensors 18 and 19, which generate signals representative of the
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`actual up/down and left/right position of headlight 11, and supply these
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`signals to controller 14. Id. at 4:8–24. These feedback signals can be used
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`to calibrate the disclosed system. Id. at 6:10–17.
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`C.
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`Challenged Claims
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`Challenged claims 3 and 7 are independent claims, and the remaining
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`challenged claims depend, directly or indirectly, from either claim 3 or claim
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`7. Claim 7 is illustrative of the challenged claims, and is reproduced below.
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`7. An automatic directional control system for a vehicle
`headlight, comprising:
`
`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 such that two or more
`sensor signals are generated, said sensed conditions
`including at least a steering angle and a pitch of the
`vehicle;
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`a controller that is responsive to said two or more sensor
`signals for generating at least one output signal only
`when at least one of said two or more sensor signals
`changes by more
`than a predetermined minimum
`threshold amount to prevent at least one of two or more
`actuators from being operated continuously or unduly
`frequently in response to relatively small variations in at
`least one of the sensed conditions; and
`
`said two or more actuators each being adapted to be
`connected to the vehicle headlight to effect movement
`thereof in accordance with said at least one output signal;
`
`wherein said two or more sensors include a first sensor and a
`second sensor; and
`
`wherein said 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.
`
`D.
`
`References Relied Upon
`
`Petitioner relies on the following references:
`
`References
`
`Japan Patent Application Publication H10-324191
`(pub. Dec. 8, 1998) (“Kato”)
`
`Exhibit No.
`
`1006, 1007
`
`UK Published Patent Application GB 2 309 774 A
`(pub. Aug. 6, 1997) (“Takahashi”)
`
`1008
`
`Japan Patent Application Publication H7-164960
`(pub. June 27, 1995) (“Mori”)
`
`Japan Patent Application Publication H01-223042
`(pub. Sept. 6, 1989) (“Uguchi”)
`
`1009, 1010
`
`1011, 1012
`
`Ishikawa et al, “Auto-Levelling Projector Headlamp
`System with Rotatable Light Shield,” SAE Technical
`Paper Series No. 930726, Mar.1993 (“Ishikawa”)
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`1013
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`References
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`U.S. Patent No. 5,751,832 (iss. May 12, 1998)
`(“Panter”)
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`Japan Patent Application Publication H6-335228
`(pub. Dec. 2, 1994) (“Suzuki”)
`
`Exhibit No.
`
`1014
`
`1015, 1016
`
`U.S. Patent No. 6,193,398 B1 (iss. Feb. 27, 2001)
`(“Okuchi”)
`
`1017
`
`Pet. 4–5; Dec. on Inst. 39.
`
`E. Grounds of Unpatentability
`
`We instituted trial on the following grounds:
`
`Ground Challenged
`Claim(s)
`
`Statutory Basis
`
`References
`
`1
`
`2
`
`3
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`4
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`5
`
`6
`
`7
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`7–9, 13–18,
`20, 21, 23,
`24, 28, 29,
`31, 32, and
`35
`
`10
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`35 U.S.C. § 103(a) Kato and Takahashi
`
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Mori
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`11 and 19
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`35 U.S.C. § 103(a) Kato, Takahashi, and
`Uguchi
`
`12
`
`22
`
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Ishikawa
`
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Panter
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`25 and 26
`
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Suzuki
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`30
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`35 U.S.C. § 103(a) Kato, Takahashi, and
`Okuchi
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` 6
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`Ground Challenged
`Claim(s)
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`Statutory Basis
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`References
`
`8
`
`9
`
`10
`
`3 and 6
`
`35 U.S.C. § 103(a) Kato and Uguchi
`
`4
`
`5
`
`35 U.S.C. § 103(a) Kato, Uguchi, and
`Ishikawa
`
`35 U.S.C. § 103(a) Kato, Uguchi, and
`Takahashi
`
`Dec. on Inst. 39.
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`III. ANALYSIS
`
`A.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art “would be a
`
`person with at least a bachelor’s degree in electrical engineering, computer
`
`science, or physics with at least two years of related post-graduate or
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`industry work experience.” Pet. 21. Petitioner further asserts that such a
`
`person “would have had a working understanding of microprocessor-driven
`
`controls for automotive systems including knowledge of automotive closed
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`loop computer control, sensors and actuators, and would have been
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`comfortable with elementary decision-making in the area of automotive
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`systems development and design for new vehicles.” Id. at 21–22.
`
`Patent Owner asserts that a person of ordinary skill would have at
`
`least the following qualifications:
`
`a bachelor’s degree in electrical engineering, computer science,
`physics, or other related field of study; at least two years of
`relevant work experience in the automotive industry; a working
`understanding of control systems and associated components
`used within the automotive industry; and, relevant work
`experience with product development and design in the
`automotive industry.
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`PO Resp. 4–5.
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`
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`The parties’ formulations as to the level of ordinary skill in the art are
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`similar to one another, and neither party identifies with specificity an error in
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`the opposing party’s formulation. The parties also agree that none of the
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`disputes in this case turn on differences between the parties’ respective
`
`formulations. Tr. 33:1–6, 67:20–68:1. On the record presented we hold that
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`the cited prior art is representative of the level of ordinary skill in the art.
`
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of
`
`ordinary skill in the art may be evidenced by the cited references
`
`themselves). Specifically, the references are consistent with the parties’
`
`formulations and demonstrate the level of skill in the art. Our
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`determinations regarding the patentability of the challenged claims would
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`remain the same under either party’s proposed formulation.
`
`B.
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`Claim Construction
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`
`§ 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
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`(2016) (concluding the broadest reasonable construction “regulation
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`represents a reasonable exercise of the rulemaking authority that Congress
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`delegated to the Patent Office”). There is a presumption that claim terms are
`
`given their ordinary and customary meaning, as would be understood by a
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`person of ordinary skill in the art in the context of the specification. See In
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`re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
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`applicant may rebut that presumption by providing a definition of the term in
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`the specification with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). An applicant also may
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`narrow the meaning of a claim term by disclaiming or disavowing claim
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`scope; however, such a “disclaimer or disavowal of claim scope must be
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`clear and unmistakable, requiring ‘words or expressions of manifest
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`exclusion or restriction’ in the intrinsic record.” Unwired Planet, LLC v.
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`Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Teleflex, Inc. v.
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`Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). In the absence
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`of such a definition or disclaimer, limitations are not to be read from the
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`specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
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`Cir. 1993).
`
`Our Decision on Institution did not expressly construe any claim
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`terms. Dec. on Inst. 7. Patent Owner, however, now asserts that “the term
`
`‘vehicle,’ as used consistently throughout the ’034 patent and as understood
`
`by one of ordinary skill in the art, does not encompass motorcycles.” PO
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`Resp. 6. Patent Owner argues that such a construction is appropriate “in
`
`light of the inclusion and exclusion of certain discussion throughout the
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`specification of the ’034 patent.” Id. at 6–7. For the reasons below, we
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`construe the term “vehicle,” as used in the ’034 patent, to include
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`motorcycles.
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`The specification of the ’034 patent uses the term “vehicle” in a broad
`
`sense. For example, the Background of the Invention section of the ’034
`
`patent uses the term “vehicle” to encompass “land vehicles, and many other
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`types of vehicles (such as boats and airplanes, for example).” Ex. 1001,
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`1:20–21. The specification also makes clear that the claims are not limited
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`to the specific vehicle types described in the Detailed Description of the
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`Preferred Embodiment. See, e.g., id. at 2:60–3:3 (“The illustrated headlight
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`11 is, of itself, conventional in the art and is intended to be representative of
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`any device that can be supported on any type of vehicle for the purpose of
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`illuminating any area.”) (emphasis added).
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`Patent Owner does not dispute that the term “vehicle,” in ordinary
`
`usage, could encompass motorcycles. Tr. 41:12–23. Patent Owner further
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`concedes that the ’034 patent does not contain an express lexicographic
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`definition of the term “vehicle,” (Tr. 41:24–43:8), and instead argues that
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`“the disclosure of the patent in the claims and the problem to be solved”
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`make clear that the term “vehicle” excludes motorcycles (id. at 42:19–43:5).
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`Patent Owner, however, does not sufficiently identify the portions of the
`
`specification that allegedly support its claim construction argument. See PO
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`Resp. 6–7 (indicating that Patent Owner’s claim construction argument is
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`based on “certain discussion throughout the specification of the ’034 patent,
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`as noted throughout this Response”). Patent Owner cites to Paragraph 38 of
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`the Katona Declaration (see PO Resp. 7), but this declaration testimony
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`relates to the Kato reference and does not identify any portion of the ’034
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`patent that supports Patent Owner’s argument (see Ex. 2002 ¶ 38; Ex. 1007
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`¶¶ 4–5). Moreover, we find that the “Claim Interpretation” section of the
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`Katona Declaration is conclusory in nature because it does not identify any
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`specific portion of the ’034 patent specification that supports Patent Owner’s
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`argument. See Ex. 1002 ¶ 44.
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`For the foregoing reasons, and based on the current record and our
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`review of the specification of the ’034 patent, we are not persuaded that the
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`intrinsic record contains a lexicographic definition or a disclaimer that
`
`would exclude motorcycles from the scope of the term “vehicle.” To the
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`contrary, the specification makes clear that the term ”vehicle” is a broad
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`term that is intended to encompass any type of vehicle. Accordingly, we
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`determine that the term “vehicle,” as used in the specification and claims of
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`the ’034 patent, encompasses motorcycles.
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`The parties have not asked us to construe any other claim terms, and
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`we decline to adopt other or further claim constructions because doing so is
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`not necessary in order to resolve the parties’ disputes. See Wellman, Inc. v.
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`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms
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`need only be construed ‘to the extent necessary to resolve the controversy.’”
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999))); see also Tr. 24:1–12, 60:20–62:2 (both parties agree that
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`the Board need not construe any additional claim terms in the ’403 Patent).
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`C.
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`Asserted Grounds of Unpatentability
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`1.
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`Overview
`
`Petitioner argues that all of the challenged claims are unpatentable
`
`under 35 U.S.C. § 103. Pet. 4. A claim is unpatentable under 35 U.S.C.
`
`§ 103 if the differences between the claimed subject matter and the prior art
`
`are “such that the subject matter as a whole would have been obvious at the
`
`time the invention was made to a person having ordinary skill in the art to
`
`which such subject matter pertains.” 35 U.S.C. § 103(a). The question of
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`obviousness under 35 U.S.C. § 103 is resolved on the basis of underlying
`
`factual determinations, including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art; (3)
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`the level of skill in the art; and (4) objective evidence of nonobviousness,
`
`i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
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`18 (1966). The Supreme Court has held that “[t]he combination of familiar
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`elements according to known methods is likely to be obvious when it does
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`no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 550 U.S.
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`398, 416 (2007). The Supreme Court also has held that “if a technique has
`
`been used to improve one device, and a person of ordinary skill in the art
`
`would recognize that it would improve similar devices in the same way,
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`using the technique is obvious unless its actual application is beyond his or
`
`her skill.” Id. at 417.
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`2.
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`Objective Indicia of Nonobviousness
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`The parties have not identified any objective evidence of
`
`nonobviousness that allegedly bears on the patentability of the challenged
`
`claims.
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`3.
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`Ground 1: Alleged Obviousness of Claims 7–9, 13–18, 20, 21, 23, 24,
`28, 29, 31, 32, and 35 over Kato and Takahashi
`
`Of the challenged claims in this ground, only claim 7 is independent.
`
`The remaining claims in this ground depend, either directly or indirectly,
`
`from claim 7.
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`a.
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`Kato
`
`Kato is directed to a headlight optical axis control device for a
`
`motorcycle. Ex. 1007, Abstract. Kato’s device may incorporate a pitch
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`angle sensor, an actuator that pivots an optical axis of the headlight in the
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`pitch angle direction, and a control unit that causes the actuator to adjust the
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`pitch angle of the headlight based on the pitch angle detected by the pitch
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`angle sensor. Id. ¶ 7.
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`Figure 1 of Kato is reproduced below.
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`
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`Figure 1 is a functional block diagram illustrating one embodiment of a
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`headlight optical axis control device. Ex. 1007 ¶ 15. The device includes
`
`potentiometers 121 and 122 to detect pitch angle, angular velocity sensor 14
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`to detect bank angle, sensor 16 to detect the steering angle, and speed sensor
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`18 to detect the vehicle speed. Id. ¶ 16. The device also includes controller
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`24, which determines a pitch angle correction amount, a bank angle direction
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`correction amount, and a steering angle direction correction amount based
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`on input from potentiometers 121 and 122, and sensors 14, 16, and 18. Id.
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`Controller 24 then controls step motors 22x, 22y, and 22z to correct the
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`angle of the optical axis of the headlight. Id.
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`b.
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`Takahashi
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`Takahashi is directed to a vehicle lamp illumination direction control
`
`device that detects the posture of a vehicle, and adjusts the illumination of a
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`vehicle lamp. Ex. 1008, 1:3–7.
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`Figure 1 of Takahashi is reproduced below.
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`
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`Figure 1 depicts the basic structure of an embodiment of Takahashi’s
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`illumination direction control device. Ex. 1008, 5:24–29. Vehicle posture
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`detection device 2 detects, for example, the vertical inclination of the
`
`vehicle. Id. at 5:30–34. Vehicle running condition detection device 3
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`detects, for example, whether the vehicle is moving or stopped. Id. at 6:16–
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`25. Control device 4 receives signals from detection devices 2 and 3, and
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`transmits a control signal to drive 5 in order to correct the illumination
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`direction of lamp 6. Id. at 6:26–32.
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`c.
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`Analysis
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`Independent Claim 7
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`Petitioner alleges that Kato discloses all the limitations of claim 7,
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`except for a controller that generates an output signal only when at least one
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`of two or more sensor signals changes by more than a “predetermined
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`minimum threshold amount” (the “predetermined threshold amount
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`limitation”). Specifically, claim 7 recites a controller
`
`generating at least one output signal only when at least one of
`said two or more sensor signals changes by more than a
`predetermined minimum threshold amount to prevent at least
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`one of two or more actuators from being operated continuously
`or unduly frequently in response to relatively small variations in
`at least one of the sensed conditions
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`Pet. 25. Petitioner alleges that Takahashi discloses the “predetermined
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`minimum threshold” limitation. Id.
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`Patent Owner, in its Response to the Petition, argues that the cited
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`references “do not disclose or suggest” the predetermined minimum
`
`threshold limitation of claim 7. PO Resp. 32. Patent Owner, however, does
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`not dispute with specificity Petitioner’s assertion that Kato discloses a
`
`headlight control device that satisfies all other limitations recited in claim 7.
`
`See id. at ii, 12–35. We find Petitioner’s evidence regarding the
`
`non-disputed limitations of claim 7 to be persuasive and adopt Petitioner’s
`
`reasoning. See Pet. 24–32; Ex. 1019 ¶¶ 51–55, p. 22–24. The disputed
`
`predetermined minimum threshold limitation of claim 7, and Patent Owner’s
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`other arguments regarding the patentability of claim 7, are addressed below.
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`The parties dispute whether the following portion of Takahashi
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`discloses the predetermined minimum threshold limitation of claim 1:
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`Also, in order to prevent the illumination direction of the lamp
`6 from being corrected inadvertently when a sudden change in
`the posture of the vehicle occurs temporarily or due to the
`wrong operation of the lamp 6 caused by external disturbances,
`for example, when the vehicle makes a sudden start or a sudden
`stop, preferably, a threshold value with respect to time may be
`set in detection of the road gradient and, only when the amount
`of variations in the detect signal of the vehicle posture detection
`device 2 exceeds a given reference value and such excessive
`state continues for a time equal to or more than the threshold
`value, the illumination direction of the lamp 6 may be
`corrected; or, a threshold value with respect to the running
`distance of the vehicle may be set and, only when the amount of
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`variations in the detect signal of the vehicle posture detection
`device 2 exceeds a given reference value and such excessive
`state continues for a distance equal to or more than the
`threshold value, the illumination direction of the lamp 6 may be
`corrected.
`
`See Pet. 32–33 (quoting Ex. 1008, 9:16–34); PO Resp. 33 (quoting Ex. 1008,
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`9:16–28). Petitioner alleges that Takahashi’s “given reference value”
`
`corresponds to the “predetermined minimum threshold amount” recited in
`
`claim 7. Pet. 33.
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`Patent Owner argues in response that Takahashi’s headlight controller
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`is “simultaneously responsive to two threshold requirements working in
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`common,” and that “only one of the two tiered thresholds of Takahashi is
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`rooted in a measured operating condition of the vehicle while the second is
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`time based.” PO Resp. 34. According to Patent Owner, this two-tiered
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`“thresholding scheme cannot read on the threshold limitation of Claim 7.”
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`Id. Petitioner concedes that Takahashi employs two separate thresholds, but
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`argues that the predetermined minimum threshold limitation “does not
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`preclude there being an additional threshold (e.g., of time) that also must be
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`met before the ‘at least one output signal’ is generated.” Reply 19. We are
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`persuaded by Petitioner’s argument.
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`The “predetermined minimum threshold” limitation of claim 7 recites
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`a controller “responsive to said two or more sensor signals” for
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`generating at least one output signal only when at least one of
`said two or more sensor signals changes by more than a
`predetermined minimum threshold amount to prevent at least
`one of two or more actuators from being operated continuously
`or unduly frequently in response to relatively small variations in
`at least one of the sensed conditions
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`Claim 7 (emphasis added). This limitation requires (i) a predetermined
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`minimum threshold that is applied to “at least one of said two or more sensor
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`signals,” and (ii) that no “output signal” be generated by the controller
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`unless this predetermined minimum threshold is met. Takahashi’s controller
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`generates an output signal to correct the illumination direction of lamp 6
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`only when both “the amount of variations in the detect signal of the vehicle
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`posture detection device 2 exceeds a given reference value” (i.e., a
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`predetermined minimum threshold is exceeded), and “such excessive state
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`continues for a time equal to or more than the threshold value” (i.e., a second
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`time threshold is also exceeded). Ex. 1008, 9:23–27. The fact that
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`Takahashi’s controller employs this second time-based threshold does not
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`mean Takahashi’s controller falls outside the scope of the predetermined
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`minimum threshold limitation because, notwithstanding the existence of this
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`second time-based threshold, Takahashi’s controller only generates an
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`output signal when “at least one of said two or more sensor signals” (i.e., the
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`amount of variations in the detect signal of Takahashi’s vehicle posture
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`detection device 2) exceeds a “predetermined minimum threshold” (i.e.,
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`Takahashi’s given reference value). Accordingly, on this record, we find
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`that Takahashi’s controller satisfies the predetermined minimum threshold
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`limitation of claim 7.
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`Petitioner asserts that a person of ordinary skill would have found it
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`obvious to combine Takahashi’s reference (i.e., threshold) values with
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`Kato’s headlight optical axis control device. See Pet. 34–35. As Petitioner
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`points out (id. at 34), Takahashi teaches that the use of such reference values
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`is desirable because it “prevent[s] the illumination direction of [the
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`headlight] from being corrected inadvertently when a sudden change of the
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`posture of the vehicle occurs temporarily . . . .” Ex. 1008, 9:16–34.
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`Patent Owner argues in response that Kato is not analogous art
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`because the term “vehicle,” as used the ’034 patent, does not encompass
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`motorcycles. PO Resp. 15–24. In particular, Patent Owner argues that
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`Kato’s “optical axis control device for motorcycle” (see Ex. 1007, 1) is
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`addressed to a different field of endeavor than the “automatic directional
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`control system for vehicle headlights” (Ex. 1001, 1:1–2) of the ’034 patent,
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`because the term “vehicle” in the ’034 patent excludes motorcycles. PO
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`Resp. 20. Patent Owner also argues that Kato is not reasonably pertinent to
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`the problem addressed by the ’034 patent. Id. at 20–24. We disagree.
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`Patent Owner’s first argument, that Kato and the ’034 patent are
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`directed to different fields of endeavor, depends on its argument that the
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`term “vehicle,” as used in the ’034 patent, excludes motorcycles. As
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`discussed above, we reject this argument. In view of our determination that
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`the ’034 patent’s use of the term “vehicle” does not exclude motorcycles, we
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`are persuaded by Petitioner’s arguments (see Reply 7–8; Ex. 1037 ¶ 23) and
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`find that Kato is directed to the same field of endeavor as the ’034 patent,
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`i.e., automatic directional control systems for vehicle headlights. Compare
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`Ex. 1001, 1:57–67, with Ex. 1007 ¶ 1.
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`Even if the ’034 patent’s controller and Kato’s motorcycle controller
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`were directed to different fields of endeavor, Kato’s controller would still be
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`reasonably pertinent to the problem addressed by the ’034 patent. In
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`particular, we find that Patent Owner is incorrect in its assertion that “[n]o
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`crossover applicability exists [] between control devices for a motorcycle
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`headlight and those of four-wheeled vehicles.” PO Resp. at 19. For
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`example, Kato’s controller adjusts a headlight’s optical axis based upon
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`changes to pitch angle or steering angle of a motorcycle. Ex. 1007 ¶ 11; see
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`Ex. 1037 ¶ 33. The controller of the ’034 patent adjusts the aiming angle of
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`vehicle headlights to account for operating conditions such as “steering
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`angle” and “pitch.” Ex. 1001, 2:3–20. In view of the fact that the ’034
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`patent and Kato both disclose controllers that automatically adjust headlights
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`of motorized vehicles according to steering angle and pitch, we are
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`persuaded by Petitioner’s arguments (see Reply 8–13; Ex. 1037 ¶¶ 24–29)
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`that Kato would “logically have commended itself” to the attention of an
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`inventor considering the problem addressed by the ’034 patent, even if the
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`problem addressed by the ’034 patent only related to four wheeled vehicles.
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`See In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir.
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`2007). On this record, we find that Kato qualifies as analogous art.
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`Patent Owner also argues that a person of ordinary skill in the art
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`would not have had reason to combine Kato with the threshold of Takahashi.
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`PO Resp. 24–31. In particular, Patent Owner argues that Takahashi “is
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`applicable in the context of cars, trucks, rather than in the context of
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`motorcycles” (id. at 25–26), and that a headlight controller for a motorcycle
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`(such as Kato’s controller) would operate differently because, for example,
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`motorcycles lean when they turn, and because “smaller, more agile
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`motorcycles experience greater magnitude changes in pitch, steering or bank
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`angles during operation than four-wheeled vehicles.” Id. at 26–27. Patent
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`Owner also argues that language in Kato suggesting that the headlight angle
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`be corrected immediately teaches away from a combination with Takahashi.
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`Id. at 28–29. Patent Owner additionally argues that the proposed
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`combination would render Kato’s system unsuitable for performing its
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`intended purpose (i.e., the “immediate” correction of headlight direction).
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`Id. at 30–31. We are not persuaded by these arguments.
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`Takahashi’s thresholds operate to “prevent the illumination of the
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`lamp [] from being corrected inadvertently when a sudden change in the
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`posture of the vehicle occurs temporarily or due to the wrong operation of
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`the lamp [] caused by external disturbances.” Ex. 1007 ¶ 6. We are not
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`persuaded that Takahashi’s thresholds could not be used to prevent the
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`direction of Kato’s motorcycle headlight from being corrected inadvertently
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`in the event of a temporary change in vehicle posture or external
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`disturbance. Mr. Katona, Patent Owner’s expert, identifies several
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`differences between motorcycles and four-wheeled vehicles, but does not
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`persuasively and credibly explain why these differences would have
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`prevented the use of such thresholds to prevent Kato’s headlight from being
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`adjusted inadvertently in the event of a sudden and transient disturbance.
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`See Ex. 1002 ¶¶ 54–56. We find credible the testimony of Petitioner’s
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`expert, Dr. Wilhelm, that a skilled artisan would have realized that
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`Takahashi’s thresholds could be used to prevent a motorcycle headlight
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`controller from making undesirable adjustments to the headlight. Ex. 1019
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`¶¶ 61–62; Ex. 1037 ¶¶ 34–36.
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`We also are not persuaded by Patent Owner’s argument that Kato
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`teaches away from the use of Takahashi’s thresholds, or that such thresholds
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`would render Kato’s system unsuitable for its intended purpose. Kato’s
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`stated “Object of the Invention” is “to provide a headlight optical axis
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`control device that can stably ensure a beam irradiation range of a headlight
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`even when pitch, bank, steering angle or the like change while driving a
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`motorcycle.” Ex. 1007 ¶ 6. Kato does disclose an embodiment that is able
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`to correct direction of a headlamp “immediately” (id. ¶ 8), but we do not
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`find that the portions of Kato cited by Patent Owner “criticize, discredit, or
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`otherwise discourage investigation” into the use of a threshold of the type
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`taught by Takahashi. Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 73