Patent Assignment Abstract of Title
`
`Total Assignments: 4
`Application #: 10285312
`PCT #: NONE
`Inventors: James E. Smith, Anthony B. McDonald
`Title: AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE HEADLIGHTS
`
`Filing Dt: 10/31/2002
`
`Patent #: R4fl_Q3A
`Publication #: US2003010789B
`
`Issue Dt: 07/10/2007
`Pub Dt: 06/12/2003
`
`Assignment: 1
`Recorded: 02/06/2003
`Received: 02/10/2003
`0559
`Reel/Frame: 0137 9
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignors: SMITH, JAMES E.
`MQDQNALD, ANTHQNY B.
`Assignee: DANA CORPORATION
`4500 DORR STREET
`TOLEDO, OHIO 43615
`‘
`Correspondent: MACMILLAN, SOBANSKI BITODD, LLC
`RICHARD s. MACMILLAN
`’
`720 WATER STREl:T
`ONE MARITIME PLAZA, FOURTH FLOOR
`TOLEDO, OH 43604-1853
`
`Assignment: 2
`Recorded: 02/22/2008
`Received: 02/22/2008
`Reel/Frame: 020540 0476
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: DANA CORPORATTON
`Assignee: DANA AUTOMOTIVE SYSTEMS GROUP LLC
`4500 DORR STREET
`TOLEDO, OHIO 43615
`Correspondent: DANA HOLDING CORPORATION
`4500 DORR STREET
`KRISTENE M RAGAN
`TOLEDO, OH 43615
`
`.
`
`Assignment: 3
`Recorded: 06/12/2009
`Received: 06/12/2009
`Reel/Frame: LLOLZ.
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: DANA AUTOMOTIVE SYSTEMS GROUP LLC
`Assignee: STRAGENT LLC
`211 W. TYLER, SUITE C
`LONGVIEW, TEXAS 75601
`Correspondent: ASSIGNMENT RECORDATION
`211 W. TYLER ST., SUITE C
`LONGVIEW, TX 75601
`
`Assignment: 4
`Recorded: 03/08/2010
`Received: 03/08/2010
`Reel/Frame: 0_23tE5L'E
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: STRAGENT, LLC
`Assignee: BALTHER TECHNOLOGIES. LLC
`211 W. TYLER
`SUITE C-4
`LONGVIEW, TEXAS 75601
`Correspondent: THE CALDWELL FIRM, LLC
`PO BOX 59655
`DEPT. SVIPGP
`DALLAS, TX 75229
`
`Mailed: 06/13/2003
`
`Pages: 3
`
`Exec Dt: 01/31/2003
`Exec Dt: 01/31/2003
`
`Mailed: 02/22/2008
`
`Pages: 30
`
`Exec Dt: 01/31/2008
`
`Mailed: 06/12/2009
`
`Pages: 2
`
`Exec Dt: 05/26/2009
`
`Mailed: 03/09/2010
`
`Exec Dt: 12/16/2009
`
`ll you have any wmmenls or questions concerning the data displayed. umtad PRD I Assignments at 571-272-3350.
`
`Search Results as of: 07/28/2010 01:33 PM
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`Notice of References Cited
`
`Document Number
`
`Date
`
`Application/Control No.
`
`90/011,01-1
`.
`Examiner
`
`MY-TRANG N. TON
`U.S. PATENT DOCUMENTS
`
`App|icant(s)/Patent Under
`Reexamination
`7 241 034
`.
`An Umt
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`3992
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`Page 1 °f1
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`FOREIGN PATENT DOCUMENTS
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`:
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`‘A copy of this reference is not being furnished with this Office action. (See MPEP
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`PTO/SB/58 (02-09)
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`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
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`(Also referred to as FORM PTO-1465)
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`REQUEST FOR INTER PARTES REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`
`Mail Stop Inter Panes Reexam
`Commissioner for Patents
`
`P.O. Box1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.:
`
`Date: May 16, 2011
`
`7.241.034
`This is a request for inter partes reexamination pursuant to 37 CFR 1.913 of patent number
`issued July 10’ 2007
`. The request is made by a third party requester, identified herein below.
`
`a. The name and address of the person requesting reexamination is:
`
`Volkswagen Group of America, Inc.
`
`2200 Ferdinand Porsche Drive
`
`Herndon, Virginia 20171
`
`b. The real party in interest (37 CFR 1.915(b)(8)) is: Volkswagen Group Of America, |nC-
`
`A check in the amount of $
`
`is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(2);
`
`The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(2)
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`:| CD-ROM or CD—R in duplicate, Computer Program (Appendix) or large table
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`:l A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
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`Xi Reexamination of claim(s) 1'5
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`. Xi A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/SB/08, PTO-1449, orequivalent.
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`[Page 1 of 2]
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`PTO/SB/58 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
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`12.
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`The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR 1.915(b)(3)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.915(b)(1) & (3).
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`It is certified that the estoppel provisions of 37 CFR 1.907 do not prohibit this reexamination. 37 CFR 1.915(b)(7)
`
`a.
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`It is certified that a copy of this request has been served in its entirety on the patent owner as provided in
`37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`
`13.
`
`14.
`
`The Caldwell Firm, LLC
`
`PO BOX 59655, Dept. SVIPGP
`
`Dallas, TX 75229
`
`Date of Service:
`
`May 16’ 2011
`
`;or
`
`D b. A duplicate copy is enclosed because service on patent owner was not possible. An explanation of the efforts
`made to serve patent owner is attached. See MPEP 2620.
`
`15. Third Party Requester Correspondence Address: Direct all communications about the reexamination to:
`
`The address associated with Customer Number:
`
`26646
`
`OR
`
`Address
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`Firm or
`Individual Name
`
`KENYON & KENYON LLP, One Broadway
`
`City New York
`
`Te'eP"°“e 212.425.7200
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`15_
`
`The patent is currently the subject of the following concurrent proceeding(s):
`a Copending reissue Application No.
`
`b. Copending reexamination Control No. 90/011.011
`c. Copending Interference No.
`E‘
`D d . Copending litigation styled:
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`May 16, 2011
`Date
`
`42,194
`Registration No., if applicable
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`6
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`James E. SMITH et al.
`
`7,241,034
`
`July 10, 2007
`
`AUTOMATIC DIRECTIONAL CONTROL SYSTEM
`FOR VEHICLE HEADLIGHTS
`
`10/285,312
`
`October 31, 2002
`
`Volkswagen Group of America, Inc.
`
`In Re Patent of
`
`Patent No.
`
`Issued
`
`Title
`
`Application Serial No.
`
`Filed
`
`Requester
`
`:
`
`:
`
`:
`
`2
`
`:
`
`:
`
`:
`
`VIA EFS-VVEB
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, Virginia 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION
`OF U.S. PATENT NO. 7 241 034 PURSUANT TO 37 C.F.R.
`
`SIR:
`
`Volkswagen Group of America, Inc. (“VWGQA”), through its undersigned counsel,
`
`hcrcby rcspcctfully rcqucsts inter partes rccxamination of U.S. Patent No. 7,241,034 pursuant
`
`to 35 U.S.C. § 311 et seq. and the provisions of 37 C.F.R. § 1.902 et seq.
`
`7
`
`

`

`TABLE OF CONTENTS
`
`IDENTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(1) .................................. ..1
`
`COPY OF *034 PATENT PURSUANT TO 37 C.F.R. § 1.915(b)(5) ......................... ..1
`
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(7) .................................... ..1
`IDENTIFICATION OF REAL PARTY IN
`
`INTEREST PURSUANT TO 37 C.F.R. § 1.915(b)(8) ............................................... ..1
`PROCEEDINGS RELATED TO ’034 PATENT ........................................................ ..1
`
`THE ’034 PATENT AND ITS PROSECUTION ........................................................ ..2
`
`A.
`
`Prosecution of ’3 12 Application ...................................................................... ..3
`
`Pending Ex Parte Reexamination of ’034 Patent ............................................ ..7
`B.
`CITATIONS OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`THAT ARE PRESENTED TO PROVIDE SUB STANTIAL NEW
`
`QUESTIONS OF PATENTABILITY PURSUANT TO 37 C.F.R. § 1.915(b)(2) ..... ..9
`
`STATEMENTS POINTING OUT EACH SUBSTANTIAL NEW QUESTION
`OF PATENTABILITY PURSUANT TO 37 C.F.R. § 1.915(b)(3) ........................... ..10
`
`DETAILED EXPLANATIONS PURSUANT TO 37 C.F.R. § 1.915(b)(3) ............. ..13
`
`1.
`
`Claims 1, 2, 4, and 5 ofthe ’034 Patent Are
`Anticipated by Uchida Under 35 U.S.C. § lO2(b) ......................................... ..l6
`
`Claims 1, 2, 4, and 5 ofthe ’034 Patent Are
`Anticipated by Takahashi Under 35 U.S.C. § lO2(b) .................................... ..l7
`
`Claims 1, 2, 4, and 5 ofthe ’034 Patent Are
`Anticipated by Hussman Under 35 U.S.C. § lO2(b) ...................................... ..19
`
`Claims 1 and 5 of the ’034 Patent Are
`
`Anticipated by Miskin et al. Under 35 U.S.C. § 102(b) ................................ ..21
`
`Claims 1 and 5 of the ’034 Patent Are
`
`Anticipated by Leleve Under 35 U.S.C. § lO2(b) .......................................... ..22
`
`Claims 1, 2, 4, and 5 of the ’034 Patent Are Unpatentable Over
`The Combination of Toda et al. and Uchida Under 35 U.S.C. § l03(a) ........ ..23
`
`Claims 1, 2, 4, and 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Toda et al. and Takahashi Under 35 U.S.C. § l03(a) .......... ..24
`
`Claims 1, 2, 4, and 5 of the ’034 Patent Are
`Unpatentable Over the Combination of
`Toda et al. and Hussman Under 35 U.S.C. § l03(a) ...................................... ..26
`
`Claims 1, 2, 4, and 5 of the ’034 Patent Are
`Unpatentable Over the Combination of
`Toda et al. and Miskin et al. Under 35 U.S.C. § 103(a) ................................ ..28
`
`Claims 1, 2, 4, and 5 of the ’034 Patent Are Unpatentable Over
`The Combination of Toda et al. and Leleve Under 35 U.S.C. § 103(a) ........ ..29
`
`Claims 1, 2, 4, and 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Okuchi et al. and Uchida Under 35 U.S.C. § 103(a) ........... ..31
`
`8
`
`

`

`Claims 1, 2, 4, and 5 ofthe ’034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Takahashi Under 35 U.S.C. § 103(a) ................................. ..33
`
`Claims 1, 2, 4, and 5 ofthe ’034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Hussman Under 35 U.S.C. § 103(a) .................................. ..34
`
`Claims 1, 2, 4, and 5 ofthe ’034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Miskin et al. Under 35 U.S.C. § 103(a) ............................. ..36
`
`Claims 1, 2, 4, and 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Okuchi et al. and Leleve Under 35 U.S.C. § l03(a) ............ ..38
`
`Claims 1 to 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Gotoh and Uchida Under 35 U.S.C. § l03(a) ...................... ..40
`
`Claims 1 to 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Gotoh and Takahashi Under 35 U.S.C. § l03(a) ................. ..42
`
`Claims 1 to 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Gotoh and Hussman Under 35 U.S.C. § 103(a) .................. ..43
`
`Claims 1, 2, 3, and 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Gotoh and Miskin et al. Under 35 U.S.C. § l03(a) ............. ..45
`
`Claims 1 to 5 of the ’034 Patent Are Unpatentable Over the
`Combination of Gotoh and Leleve Under 35 U.S.C. § 103(a) ...................... ..47
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 20, 22, 24, 25, 37,
`38, 41, 42, 44, and 45 ofthe ’034 Ex Parte Reexamination
`Are Anticipated by Uchida Under 35 U.S.C. § 102(b) .................................. ..48
`
`Proposed Claims 1, 2, 4 to 6, 9 to 11, 17, 18,
`20 to 22, 24, 25, 28, 33, 34, 37, 38,41, 42, 44, and
`45 of the ’O34 Ex Parte Reexamination Are
`
`Anticipated by Takahashi Under 35 U.S.C. § l02(b) .................................... ..50
`
`Proposed Claims 1, 2, 4 to 6, 9, 10, 37, 38, 41, 42,44, and
`45 of the "034 Ex Parte Reexamination Are
`
`Anticipated by Hussman Under 35 U.S.C. § 102(b) ...................................... ..52
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22,
`24, 25, 28, 29, 36 to 42, 44, and 45 ofthe ’034
`
`Ex Parte Reexamination Are Unpatentable Over the
`Combination of Toda et al. and Uchida Under 35 U.S.C. § 103(a) ............... ..53
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, I7, 18, 20 to 22, 24, 25,
`28, 29, 33, 34, 36 to 42, 44, and 45 ofthe ’034 Ex Parte
`Reexamination Are Unpatentable Over the
`Combination of Toda et al. and Takahashi Under 35 U.S.C. § l03(a) .......... ..56
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22, 24,
`25, 28, 29, 36 to 42, 44, and 45 ofthe ’034 Ex Parte
`Reexamination Are Unpatentable Over the Combination
`OfToda et al. and Hussman Under 35 U.S.C. § 103(a) ................................ ..58
`
`9
`
`

`

`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18,20 to 22,
`24, 25, 28, 29, 33, 35, 37 to 42, 44, and 45 ofthe
`’034 Ex Parte Reexamination Are Unpatentable Over the
`Combination of Okuchi et al. and Uchida Under 35 U.S.C. § l03(a) ........... ..6l
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18, 20 to 22, 24, 25,
`28, 29, 33 to 35, 37 to 42, 44, and 45 ofthe ’O34 Ex
`
`Parte Reexamination Are Unpatentable Over the Combination
`Of Okuchi et al. and Takahashi Under 35 U.S.C. § 103(a) ........................... ..63
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18,20 to 22, 25, 28,
`29, 33 to 35,37 to 42, 44, and 45 ofthc ’034 Ex Parte
`Reexamination Are Unpatentable Over the Combination
`Of Okuchi et al. and Hussman Under 35 U.S.C. § 103(a) ............................. ..66
`
`Proposed Claims 1 to 14, 20, 22, 24 to 26, 28, 29, 37,
`38, and 41 to 45 of the ’034 Ex Parte Reexamination
`Are Unpatentable Over the Combination
`Of Gotoh and Uchida Under 35 U.S.C. § l03(a) ........................................... ..69
`
`Proposed Claims 1 to 12, 14, 16 to 18, 20 to 22, 24 to 26,
`28, 29, 33, 34, 37, 38, and 41 to 45 ofthe ’O34 Ex Parte
`Reexamination Are Unpatentable Over the
`Combination of Gotoh and Takahashi Under 35 U.S.C. § l03(a) ................. ..7l
`
`Proposed Claims 1 to 13, 24, 26, 28, 29, 37, 38, and
`41 to 45 of the ’034 Ex Parte Reexamination Are
`
`Unpatentable Over the Combination of
`Gotoh and Hussman Under 35 U.S.C. § 103(a) ............................................. ..74
`
`Proposed Claims 17, 19, 21, 23, 26, and 30 to 32 ofthe
`’034 Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Uchida and the Admitted Prior Art
`
`Described in the ’034 Patent Specification Under 35 U.S.C. § 103(a) .......... ..76
`
`Proposed Claims 19, 23, 26, and 30 to 32 ofthe ’034
`Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Takahashi and the Admitted Prior Art
`
`Described in the ’O34 Patent Specification Under 35 U.S.C. § lO3(a) .......... ..78
`
`Proposed Claims 17 to 21, 23 to 26, and 30 to 32 of the ’034
`Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Hussman and the Admitted Prior Art
`
`Described in the ’034 Patent Specification Under 35 U.S.C. § l03(a) .......... ..80
`
`Proposed Claim 27 of the ’034 Ex Parte Reexamination
`ls Unpatentable Over the Combination of
`Uchida and Wassen et al. Under 35 U.S.C. § 103(a) ..................................... ..82
`
`Proposed Claim 27 of the ’034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of
`Takahashi and Wassen et al. Under 35 U.S.C. § 103(a) ................................ ..84
`
`Proposed Claim 27 ofthe ’034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of Hussman
`’460 and Wassen et al. Under 35 U.S.C. § 103(a) ......................................... ..85
`
`10
`
`

`

`PROPOSED REJECTION OF PROPOSED
`
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 314(A) ..................................................... ..87
`
`PROPOSED REJECTION OF PROPOSED
`
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 112,114 .................................................... ..88
`
`FEE PURSUANT TO 37 C.F.R. § 1.915(a) .............................................................. ..88
`
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(6) .................................. ..88
`
`CONCLUSION .......................................................................................................... ..89
`
`11
`
`

`

`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`Exhibit 5
`
`Exhibit 6
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`Exhibit 11
`
`Exhibit 12
`
`Exhibit 13
`
`Exhibit 14
`
`Exhibit 15
`
`Exhibit 16
`
`EXHIBITS
`
`U.S. Patent No. 7,241,034
`
`“Original Complaint for Patent Infringement,” filed on March 8, 2010,
`BALTHER TECHNOLOGIES, LLC, v. AA/I. HONDA A/IOTOR CO. INC., et al.,
`Case No. 6:10-CV-78-LED (ED. Tex.)
`
`“Plaintiff” s Notice of Voluntary Dismissal,” filed on May 17, 2010, BALTHER
`TECHNOLOGIES, LLC, v. AM HONDA MOTOR CO. INC., er al., Case No.
`6:10-CV-78-LED (ED. Tex.)
`
`“Order,” dated May 17, 2010, BALTHER TECHNOLOGIES, LLC, v. AAI.
`HONDA MOTOR CO. INC., et al., Case No. 6:10-CV-78-LED (E.D. Tex.)
`
`Listing of Prior Art Patents and Printed Publications that Raise Substantial
`New Questions of Patentability
`
`United Kingdom Patent Application Publication No 2 309 773 to Uchida
`
`United Kingdom Patent Application Publication No. 2 309 774 to Takahashi
`
`U.S. Patent No. 5,182,460 to Hussman
`
`German Patent Application Publication No. 31 10 094 to Miskin et al.
`
`Certified English-Language Translation of German Patent Application
`Publication No. 31 10 094 to Miskin et al.
`
`German Patent Application Publication No. 31 29 891 to Leleve
`
`Certified English-Language Translation of German Patent Application
`Publication No. 31 29 891 to Leleve
`
`U.S. Patent No. 6,305,823 to Toda ct al.
`
`U.S. Patent No. 6,193,398 to Okuchi et al.
`
`U.S. Patent No. 5,909,949 to Gotoh
`
`U.S. Patent No. 4,954,933 to Wassen et al.
`
`Exhibit 17
`
`Ccrtificatc of Service
`
`12
`
`

`

`IDENTIFICATION PURSUANT TO 37 C.F.R. § 1.915gbgg1g
`
`Inter partes reexamination of claims 1 to 5 of U.S. Patent No. 7,241,034 (“the ’034
`
`patent”) is requested.
`
`II.
`
`COPY OF ’034 PATENT PURSUANT TO 37 C.F.R.
`
`1.915 b 5
`
`Pursuant to 37 C.F.R. § 1.9l5(b)(5), annexed hereto as Exhibit 1
`
`is a copy of the
`
`entire ’O34 patent including the front face, drawings, specification and claims (in double
`
`column format) for which inter partes reexamination is requested.
`
`To the best of VWGoA’s knowledge, as of the filing date of this Request, no
`
`disclaimer, certificate of correction, or
`
`reexamination certificate has been issued in
`
`connection with the ’O34 patent.
`
`III.
`
`CERTIFICATION PURSUANT TO 37 C.F.R.
`
`1.915 b 7
`
`Pursuant to 37 C.F.R. § 1.9l5(b)(7), VWGoA certifies that the estoppel provisions of
`
`37 C .F.R. § 1.907 do not prohibit the inter partes reexamination.
`
`IV.
`
`IDENTIFICATION OF REAL PARTY IN
`
`INTEREST PURSUANT TO 37 C.F.R. § 1.915gbgg81
`
`The real party in interest is VOLKSWAGEN GROUP OF AMERICA, INC., which is
`
`a subsidiary of VOLKSWAGEN AG.
`
`V.
`
`PROCEEDINGS RELATED TO ’034 PATENT
`
`Although VWGoA is not obligated to inform the Office of proceedings related to the
`
`’O34 patent, the Office is hereby informed of the following proceeding that relates to the ’O34
`
`patent which is pending as of the filing date of this Request:
`
`13
`
`

`

`EX PARTE REEXAMINATION OF THE ’034 PATENT,
`Control Number
`90/011,011
`(Request
`for Ex Parte
`Reexamination filed July 10, 2010)
`(“the ’034 Ex Parte
`Reexamination”). Pursuant to M.P.E.P. § 2282,1 VWGOA is
`filing in the ’034 Ex Parte Reexamination a “Notice of
`Concurrent Proceeding” to inform the Office of the filing of
`this Request.
`
`The Office is hereby further informed of the following concluded proceeding that
`
`related to the ’034:2
`
`BALTHER TECHNOLOGIES, LLC, v. AM. HONDA MOTOR
`
`CO. INC., et al., Case No. 6:10-CV-78-LED (ED. Tex. —
`Complaint Filed on March 8, 2010) (“the BALTHER case”).
`Plaintiff Balther Technologies, LLC (“Balther”)
`asserted
`infringement of the ’034 patent by the Requester. Requester
`was therefore a party to the BALTHER case. A copy of the
`“Original Complaint for Patent Infringement” filed on March
`8, 2010 is annexed hereto as Exhibit 2. A copy of “Plaintiffs
`Notice of Voluntary Dismissal” filed on May 17, 2010 is
`annexed hereto as Exhibit 3. A copy of the “Order” dismissing
`the BALTHER case pursuant to Plaintiff’ s request dated May
`18, 2010 is annexed hereto as Exhibit 4.
`
`VI.
`
`THE ’034 PATENT AND ITS PROSECUTION
`
`The ’034 patent issued on July 10, 2007 from U.S. Patent Application Serial No.
`
`10/285,312 (“the ’312 application”), filed on October 31, 2002. The ’034 patent states that it
`
`claims the benefit of U.S. Provisional Application No. 60/369,447, filed on April 2, 2002,
`
`“Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into
`1
`the reexamination or patent file while the reexamination proceeding is pending. However, in order to ensure a
`complete file, with updated status information regarding prior or concurrent proceedings regarding the patent
`under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file,
`copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in
`the court from litigations or other proceedings involving the patent.”
`
`Despite its duty under 37 C.F.R. § 1.565(a) (“In an ex parte reexamination proceeding before the
`2
`Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or
`was involved such as .
`.
`. litigation and the results of such proceedings”) and M.P.E.P. § 2282 (“It is important
`for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing ex parte
`reexamination is or was involved, such as .
`.
`. litigations, and the results of such proceedings”) to inform the
`Office of all prior and concurrent proceedings involvirig the ’034 patent, as of the filing date of this Request,
`Ralther has not informed of Office of the BALTHER case in connection with the ’034 Ex Parte Reexamination.
`
`14
`
`

`

`U.S. Provisional Application No. 60/356,703,
`
`filed on February 13, 2002, and U.S.
`
`Provisional Application No. 60/335,409, filed on October 31, 2001.
`
`A.
`
`Prosecution of ’3 12 Application
`
`As originally filed, the ’3 12 application included thirteen claims, of which application
`
`claim 1 was the only independent claim. Application claim 1 is reproduced below:
`
`1. An automatic directional control system for a vehicle
`headlight comprising:
`
`is
`is adapted to generate a signal that
`a sensor that
`representative of a condition of the vehicle,
`said sensed
`condition includes one or more of road speed, steering angle,
`pitch, and suspension height of the vehicle;
`
`a controller that is responsive to said sensor signal for
`generating an output signal; and
`
`is adapted to be connected to the
`an actuator that
`headlight to effect movement thereof in accordance with said
`output signal.
`
`An Office Action was issued on December 23, 2003, in which: (1) application claims
`
`1 to 2, 4 to 8, and 10 to 13 were rejected under 35 U.S.C. § l02(c) as anticipated by U.S.
`
`Patent No. 6,305,823 (“Toda et al.”); (2) application claims 1 to 2, 4 to 8, and 10 to 13 were
`
`rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 6,193,398 (“Okuchi et
`
`al.”); and (3) application claims 1
`
`to 3 and 9 were rejected under 35 U.S.C. §
`
`l02(b) as
`
`anticipated by U.S. Patent No. 5,909,949 (“Gotoh”).
`
`In an Amendment submitted on March 23, 2004, application claim 6 was cancelled,
`
`and application claims 1 and 7 were amended as follows:
`
`1. An automatic directional control system for a Vehicle
`headlight comprising:
`
`a 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, steering angle,
`pitch, and suspension height of the vehicle;
`
`a controller that is responsive to said sensor signal for
`generating an output signal only when said sensor signal
`changes by more than a predetermined amount; and
`
`15
`
`

`

`is adapted to be connected to the
`an actuator that
`headlight to effect movement thereof in accordance with said
`output signal.
`
`7. Q The automatic directional control system defined
`for a vehicle headlight comprising:
`
`that is
`a sensor that is adapted to generate a signal
`representative of a condition of the vehicle,
`said sensed
`condition includes one or more of road speed, steering angle,
`pitch, and suspension height of the vehicle;
`
`a controller that is responsive to a rate of change of said
`sensor signal for generating said output signal; and
`
`is adapted to be connected to the
`an actuator that
`headlight to effect movement thereof in accordance with said
`output signal.
`
`The “Remarks” section of the Amendment alleged that: (1) “None of the art of record
`
`is believed to show or suggest a controller that
`
`is responsive to the sensor signal for
`
`generating an output signal only when the sensor signal changes by more than a
`
`predetermined amount,” as recited in amended claim 1, and (2) “None of the art of record is
`
`believed to show or suggest a controller that is responsive to a rate of change of the sensor
`
`signal for generating the output signal,” as recited in amended claim 7. Amendment at page
`
`5.
`
`A Final Office Action was issued on June 15, 2004, in which all of the claims were
`
`again rejected.
`
`In particular, (1) application claims 1 to 2, 4 to 5, 7 to 8, and 10 to 13 were
`
`rejected under 35 U.S.C. § 102(e) as anticipated by Toda et al.; (2) application claims 1 to 2,
`
`4 to 5, 7 to 8, and 10 to 13 were rejected under 35 U.S.C. § l02(e) as anticipated by Okuchi et
`
`al.; and (3) application claims 1
`
`to 3 and 9 were rejected under 35 U.S.C. § l02(b) as
`
`anticipated by Gotoh. The Examiner fuither stated that the applicants’ arguments had been
`
`considered but were not persuasive.
`
`On September 15, 2004, the applicants filed a Request for Reconsideration along with
`
`a Notice of Appeal. On December 28, 2004, the Examiner issued an Advisory Action, which
`
`stated that the “request for reconsideration has been considered but does NOT place the
`
`application in condition for allowance because [t]he prior art of record including Toda et al[.]
`
`in particular reads on independent claims l and 7.
`
`16
`
`

`

`Concurrent with the filing of a Request for Continued Examination on February 17,
`
`2005, the applicants again argued that the claims, as amended on March 23, 2004, were
`
`allowable. Again, the applicants argued in particular that (l) “None of the art of record is
`
`believed to show or suggest a controller that is responsive to the sensor signal for generating
`
`an output signa