UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIALS AND APPEAL BOARD
`
`SL CORPORATION
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,241,034
`Case IPR No.: Unassigned
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,241,034 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.1-80, 42.100 et seq.
`
`DECLARATION OF HARVEY WEINBERG
`
`1
`
`SL-1019
`
`

`
`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`BACKGROUND AND QUALIFICATIONS.................................................2
`
`III. MATERIALS CONSIDERED........................................................................2
`
`IV. DECLARATION OF RALPH V. WILHELM, PH.D.....................................3
`
`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART ...............................4
`
`VI. CLAIM CONSTRUCTION ............................................................................4
`
`i
`
`

`
`I, Harvey Weinberg, being of legal age, hereby declare, affirm, and state the
`
`following:
`
`I.
`
`1.
`
`INTRODUCTION
`
`I have been retained on behalf of Petitioner, SL Corporation (“SL” or “SL
`
`Corp”), to offer statements and opinions generally regarding the validity, novelty,
`
`prior art, obviousness considerations, and understanding of a person of ordinary
`
`skill in the art (“POSITA”) in the industry as it relates to U.S. Patent No. 7,241,034
`
`(“’034 patent”). Attached hereto as Appendix A is a true and correct copy of my
`
`Curriculum Vitae describing my background and experience. I have personal
`
`knowledge of the facts and opinions set forth in this declaration, and, if called upon
`
`to do so, I would testify competently thereto. All of the opinions and conclusions
`
`found in this declaration are my own.
`
`2.
`
`I submitted a declaration (the “IPR193 Dec.”) in SL Corp’s petition for inter
`
`partes review of the ‘034 Patent (IPR2015- 00193), which was instituted as to
`
`claims 7-10, 12-21, 23, 24, 28-33 on June 7, 2016.
`
`3.
`
`I am being compensated at a rate of $200 per hour for my services. This
`
`compensation is in no way based on the content of my opinions or the outcome of
`
`this matter.
`
`II.
`
`4.
`
`BACKGROUND AND QUALIFICATIONS
`
`Please refer to my resume attached as Appendix A.
`
`1
`
`

`
`5.
`
`To summarize with respect to the technology of the ‘034 patent, I have over
`
`18 years of experience in the automotive industry in various areas supporting
`
`automotive OEMs directly and through Tier-One manufacturers in the following
`
`applications: MEMS inertial sensors used for crash detection (sensors used in
`
`center crash modules as well as those used as “satellite” sensors at doors, near front
`
`bumpers, etc.); MEMS inertial sensors (gyroscopes and low-g accelerometers)
`
`used in electronic stability control; MEMS inertial sensors (gyroscopes and
`
`accelerometers) used in roll over detection; MEMS inertial sensors (gyroscopes
`
`and accelerometers) used in body/chassis management electronics including theft
`
`alarms, sliding door protection, noise cancellation, suspension control, etc.; current
`
`sensing for transmission control; Li-Ion and Lead-Acid battery management for
`
`conventional internal combustion engines as well as hybrid electric vehicles; and
`
`LIDAR (optical RADAR) systems for short and mid-range presence detection.
`
`III. MATERIALS CONSIDERED
`
`6.
`
`In developing my opinions below relating to the ‘034 patent, I have
`
`considered the materials cited herein, as well as the following materials:
`
`1) US Patent 7,241,034 (“the ’034 Patent”) (SL-1001);
`2) Declaration of Ralph V. Wilhelm, Ph.D. (“Wilhelm Declaration”)
`(Appendix B);
`3) Reexamination Certificate, U.S. Patent No. 7,241,034 C1 (SL-1002);
`4)
`File History for U.S. Serial No. 10/285,312 (SL-1003);
`5)
`File History for Ex Parte Reexamination Proceedings 90/011,011 (SL-
`1004);
`
`2
`
`

`
`6)
`
`File History for Merged Reexamination Proceedings 90/011,011 &
`95/001,621 (SL-1005);
`7) Kato Japan Patent Application Publication H10-324191 (“Kato”) (Ex.
`1006);
`8) Certified Translation of Kato (SL-1007);
`9) Takahashi, UK Published Patent Application GB 2 309 774 A
`(“Takahashi”) (SL-1008);
`10) Mori, Japan Patent Application Publication H7-164960 (“Mori”) (SL-
`1009);
`11) Certified Translation of Mori (SL-1010);
`12) Uguchi et al, Japan Patent Application Publication H01-223042
`(“Uguchi”) (SL- 1011);
`13) Certified Translation of Uguchi (SL-1012);
`14) Ishikawa et al, “Auto-Levelling Projector Headlamp System with
`Rotatable Light Shield,” SAE Technical Paper Series No. 930726, March
`1993 (“Ishikawa”) (SL- 1013);
`15) Panter, U.S. Patent No. 5,751,832 (“Panter”) (SL- 1014);
`16) Suzuki, Japan Patent Application Publication H6-335228 (“Suzuki”) (SL-
`1015);
`17) Certified Translation of Suzuki (SL- 1016);
`18) Okuchi, U.S. Patent No. 6,193,398 (“Okuchi”) (SL- 1017);
`19) Okuchi, U.S. Patent Application No. 09/333,686 “Okuchi Application”)
`(SL- 1018);
`20) Ishikawa STN Abstract (SL- 1027); and
`21) Hogrefe, U.S. Patent No. 6,227,691 (“Hogrefe”) (SL- 1028).
`
`IV. DECLARATION OF RALPH V. WILHELM, PH.D.
`
`7.
`
`I have reviewed the Declaration of Ralph V. Wilhelm, Ph.D. (“Wilhelm
`
`Declaration”), submitted with Koito Manufacturing Co., Ltd.’s petition for inter
`
`partes review of the ‘034 Patent (IPR2015- 00079) and attached as Appendix B,
`
`including the materials and exhibits cited therein. I fully agree with, and hereby
`
`adopt, the opinions set forth in the Wilhelm Declaration.
`
`3
`
`

`
`8.
`
`In particular, I have reviewed the opinions expressed in the Wilhelm
`
`Declaration concerning the claim 3 being obvious from Kato in view of Uguchi,
`
`claim 4 being obvious from Kato in view of Uguchi and further in view of
`
`Ishikawa, claim 5 being obvious from Kato in view of Uguchi and further in view
`
`of Takahashi, and claim 6 being obvious from Kato in view of Uguchi. It is my
`
`opinion that the opinions concerning claims 3-6 in the Wilhelm Declaration are
`
`accurate and correct.
`
`9. While I believe that the “predetermined minimum threshold” limitation of
`
`claims 3 and 7 is inherently disclosed in Kato as I discussed in the IPR193 Dec., I
`
`agree with Dr. Wilhelm that this limitation is not expressly disclosed in Kato.
`
`V.
`
`10.
`
`PERSON HAVING ORDINARY SKILL IN THE ART
`
`To the extent there is any difference between the definition of a person
`
`having ordinary skill in the art provided in the IPR193 Dec. and the definition
`
`provided in the Wilhelm Declaration, it is my opinion that the differences are not
`
`substantive. The differences, if any, do not affect my analysis.
`
`VI. CLAIM CONSTRUCTION
`
`11.
`
`To the extent there is any difference in the construction of claim terms
`
`provided in the IPR193 Decl. and the construction of claim terms provided in the
`
`Wilhelm Declaration, it is my opinion that the differences are not material.
`
`Further, the differences, if any, do not affect my analysis.
`
`4
`
`

`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Dated: June 30, 2016
`
`Respectfully submitted,
`
`3 H
`
`Byzgzfi-[3
`
`arvey Weinberg
`
`

`
`APPENDIX A
`
`APPENDIX A
`
`

`
`HARVEY WEINBERG
`159 Beach Street
`Sharon, MA
`781-929-2534
`hwandes@msn.com
`
`Professional Experience:
`ANALOG DEVICES.
`Automotive Business Unit. (Wilmington, MA)
`2014 – Present
`Division Technologist
`Identify basic technologies necessary for Analog Devices to develop in
`
`order to grow our automotive business in the 7 to 12 year time horizon.
` Create technology in the optical ranging space (i.e. LIDAR) for automotive
`safety and autonomous driving applications.
` Filed and was granted a wide ranging patent for a novel LIDAR method
`which is in the process of being realized in Silicon.
` Liaise with automotive OEMs to understand their pain points in their long-
`term strategies and determine where Analog Devices is, or can be, well
`placed to develop compelling solutions. Develop IP as needed.
`
`Automotive Business Unit. (Wilmington, MA)
`2010 – 2014
`System Applications Engineering Manager
` Led a team of eight System Architects whose charter was to cultivate deep
`system level expertise in the ADAS RADAR, Battery Management, Power
`Train Sensor, and Active/Passive Safety domains. Using this expertise to
`direct our development teams to design best-in-class products on a <5-year
`time horizon.
`
`Micromachined Products Division. (Wilmington, MA)
`2006 – 2010
`Applications Engineering Manager
` Led a team of three Product Application Engineers (acted as player/coach)
`supporting our inertial sensor business (Automotive, Consumer, and
`Industrial).
` Supported Nintendo in their integration of our motion sensing technology
`initially into the Game-Boy and finally in the Wii gaming system.
` Filed and was awarded three patents pertaining to sensor calibration,
`methods for using motion sensors to control portable devices, and using
`inertial sensors with digital cameras
` Authored multiple technical papers and presented numerous lectures
`regarding the evaluation and use of MEMS inertial sensors.
`
`1
`
`

`
`Micromachined Products Division. (Cambridge, MA)
`1997 - 2006
`Senior Applications Engineer.
` Provided application support and drove design-ins at large key accounts for
`Analog Devices MEMS inertial sensors (automotive and high volume
`consumer).
` Developed reference designs for safety-critical automotive applications.
` Responsible for determining product requirements for three strategic
`markets (Automotive stability control, roll-over detection, and gaming).
` Authored dozens of application notes and technical articles (print and on-
`line).
` Granted US and international patents (Method for Continuous Sensor Self
`Test) that essentially locked out competitors from certain safety-critical
`automotive markets.
`
`FUTURE ELECTRONICS. (Montreal, Quebec.)
`1995 - 1997
`Technical Sales Manager.
` Supported outside sales staff in discovery of new business.
` Offered direct client technical support for sensor and linear products during
`the design-in process.
` Presented training seminars internally and externally.
`
`ELECTRONIC SALES PROFESSIONALS. (Montreal, Quebec.)
`Applications Engineer.
`1994 - 1995
` Supported outside sales staff in discovery of new business.
` Offered technical support to distributors and key accounts during design-in
`process.
`
`NATIONAL ENVIRONMENTAL PRODUCTS. (Montreal, Quebec.)
`Electronic Design Engineer.
`1991 - 1994
` Designed, developed, and brought to production analog, digital, and mixed
`signal controls and instrumentation products used primarily in the HVAC
`market (i.e. temperature controls, valve and damper actuators). These
`products earned the company >$30M. Some of these products are still
`being sold today.
` Developed test and calibration methods for new instrumentation products.
` Granted US patent for a method to measure air velocity that is highly
`accurate and cost effective.
`
`INTEMPCO CONTROLS. (Montreal, Quebec.)
`1988 - 1991
`Design Engineer.
` Designed, developed, and brought to production analog and microcontroller
`based controls and instrumentation used primarily in the industrial process
`control market (i.e. temperature instrumentation, level measurement
`instrumentation).
`
`2
`
`

`
`Education:
` Bachelors of Engineering (Electrical), Concordia University, 1988.
`
`List of US Patents:
` 9,086,275 – System and Method For LIDAR Signal Conditioning
` 7,720,376 – Camera With Acceleration Sensor
` 8,666,460 – Method and Apparatus for Controlling a Portable Device
` 7,359,816 – Sensor Calibration Method and Apparatus
` 7,086,270 – Method for Continuous Self-Test
` 5,583,301 – Ultrasound Air Velocity Detector for HVAC Ducts and Methods
`Thereof
` Two other patents in process of prosecution
`
`Foreign Languages:
` French (fluent – spoken and written).
`
`3
`
`

`
`APPENDIX B
`
`APPENDIX B
`
`

`
`
`
`Attorney Docket: 10973-0232IP1
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Reexam. Cert. No.:
`Reexam. Cert. Date:
`
`Title:
`
`Attorney Docket No.: 10973-0232IP1
`
`Smith et al.
`7,241,034 B2
`July 10, 2007
`10/285,312
`October 31, 2002
`7,241,034 C1
`June 14, 2013.
`
`AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE
`HEADLIGHTS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`DECLARATION OF RALPH V. WILHELM, PH.D.
`
`
`
`
`
`1
`
`KOITO 1019
`
`

`
`
`
`
`
`Attorney Docket: 10973-0232IP1
`
`TABLE OF CONTENTS
`
`
`
` PERSONAL WORK EXPERIENCE AND AWARDS ..................................... 1
` MATERIALS CONSIDERED ........................................................................... 5
` PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ...................... 7
` CLAIM CONSTRUCTION ............................................................................. 8
` LEGAL PRINCIPLES ........................................................................................ 9
` PRIOR ART CONSIDERED ......................................................................... 11
`A. Background of the Art ................................................................................. 13
` SUMMARY OF THE ’034 PATENT ............................................................ 18
` CLAIMS 7-9, 13-18, 20-21, 23-24, 28-29, 31-32 AND 35 – OBVIOUS
`FROM KATO IN VIEW OF TAKAHASHI ........................................................... 20
`A. All of the limitations of independent claim 7, except the “threshold”
`limitation, and all limitations of its dependent claims 8, 14-18, 20-21, 23-24, 28
`and 32 are disclosed in Kato ................................................................................. 20
`1. Claim Chart for Kato ................................................................................ 22
`2. Takahashi discloses the “threshold” limitation in claim 7 ....................... 28
`3. Claims 7, 8, 14-18, 20-21, 23-24, 28 and 32 are unpatentable as obvious
`from Kato in view of Takahashi ....................................................................... 30
`4. Takahashi also discloses the additional limitations in dependent claims 9,
`13, 29, 31 and 35 ............................................................................................... 31
`5. Claims 9, 13, 29, 31 and 35 also are unpatentable as obvious from Kato
`in view of Takahashi ......................................................................................... 33
` CLAIM 10 – OBVIOUS FROM KATO IN VIEW OF TAKAHASHI AND
`FURTHER IN VIEW OF MORI ............................................................................. 36
` CLAIMS 11 AND 19 – OBVIOUS FROM KATO IN VIEW OF
`TAKAHASHI AND FURTHER IN VIEW OF UGUCHI ...................................... 38
` CLAIM 12 – OBVIOUS FROM KATO IN VIEW OF TAKAHASHI AND
`FURTHER IN VIEW OF ISHIKAWA ................................................................... 42
` CLAIM 22 – OBVIOUS FROM KATO IN VIEW OF TAKAHASHI AND
`FURTHER IN VIEW OF PANTER ........................................................................ 45
` CLAIMS 25 AND 26 – OBVIOUS FROM KATO IN VIEW OF
`TAKAHASHI AND FURTHER IN VIEW OF SUZUKI ....................................... 47
`
`
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`2
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`

`
`Attorney Docket: 10973-0232IP1
`
`
`
`
` CLAIMS 30, 33 AND 34 – OBVIOUS FROM KATO IN VIEW OF
`TAKAHASHI AND FURTHER IN VIEW OF OKUCHI ...................................... 49
` CLAIM 3 – OBVIOUS FROM KATO IN VIEW OF UGUCHI .................. 52
`A. All of the limitations of independent claim 3 are disclosed in Kato, except
`the “threshold” limitation and the “rate of change of steering angle” limitation,
`which are disclosed in Uguchi .............................................................................. 52
`B. Uguchi discloses the “threshold” limitation and the “rate of change of
`steering angle” limitation in claim 3 .................................................................... 54
`C.
`Independent claim 3 is unpatentable as obvious from the combination of
`Kato and Uguchi ................................................................................................... 55
` CLAIM 4 – OBVIOUS FROM KATO IN VIEW OF UGUCHI AND
`FURTHER IN VIEW OF ISHIKAWA ................................................................... 57
` CLAIM 5 - OBVIOUS FROM KATO IN VIEW OF UGUCHI AND
`FURTHER IN VIEW OF TAKAHASHI ................................................................ 58
` CLAIM 6 - OBVIOUS FROM KATO IN VIEW OF UGUCHI ................ 59
` ADDITIONAL REMARKS ........................................................................ 60
`
`
`
`
`
`ii
`
`3
`
`

`
`
`
`
`
`
`
`
`Attorney Docket: 10973-0232IP1
`
`PERSONAL WORK EXPERIENCE AND AWARDS
`1. My name is Ralph V. Wilhelm. I am currently President of Wilhelm
`
`Associates, LLC., an independent consulting firm that I founded in 2001. The firm
`
`specializes in automotive electronics, telematics, systems engineering, data
`
`communications between systems and devices, and product/market and business
`
`strategies. In this role, I provide advice and assistance in the development and use
`
`of market assessment methodologies, product requirement definitions, product
`
`design, product and market strategy, expert witness support and testimony, and
`
`product implementation in my areas of technical expertise.
`
`2.
`
`In addition to the below summary, a copy of my current curriculum
`
`vitae more fully setting forth my experiences and qualifications is submitted
`
`herewith as Koito Exhibit 1020 (“KOITO 1020”).
`
`3.
`
`I have more than 44 years of industrial experience in Engineering. I
`
`received a Bachelor of Science degree in Electrical Engineering from Cornell
`
`University in 1967, a Doctor of Philosophy degree in Ceramic
`
`Engineering/Material Science from Rutgers University in 1972, an Executive
`
`Management Program certificate from the University of Illinois in 1985, and a
`
`Master of Business Administration degree in Operations and Strategy from the
`
`University of Michigan in 1987.
`
`4.
`
`I have authored dozens of published technical papers and delivered
`
`
`
`1
`
`4
`
`

`
`
`
`many lectures addressing various aspects of automotive electronic systems. I am a
`
`Attorney Docket: 10973-0232IP1
`
`named inventor on three issued U.S. patents directed to methods of constructing
`
`automotive sensors.
`
`5.
`
`I have been involved in the development of and/or have experience in
`
`working with closed loop control systems that had a variety of sensor input that
`
`was fed into a microprocessor that then made decisions based on that input versus
`
`trigger information or thresholds or max/min values and fed instructions to on-
`
`board actuators or communication links on-board and/or off-board the vehicle.
`
`Typical closed loop control systems where I have had this experience include
`
`automotive systems such as stability control systems, anti-skid braking systems,
`
`traction control systems, engine control systems, and others.
`
`6.
`
`I was a Senior Research Scientist from 1971 to 1978 at General
`
`Motors Research Laboratories. Thereafter, from 1978 to 1984, I worked in General
`
`Motors Corporation’s AC Spark Plug Division as the Supervisor and Department
`
`Head of Materials Development.
`
`7.
`
`From 1984 to 2001, I worked at and held various positions in the AC
`
`Spark Plug Division and Delphi Delco Electronics Corporation. I was the
`
`Department Head of Advanced Instruments & Display from 1984 to 1989.
`
`8.
`
`From 1989 to 1994, I was a Director of Advanced
`
`Development/Systems Integration. There, I oversaw the design and development of
`
`
`
`2
`
`5
`
`

`
`
`
`automotive electronic systems, including, for example, a precursor system to the
`
`Attorney Docket: 10973-0232IP1
`
`OnStar telematics system, navigation systems, advanced engine control systems,
`
`night vision systems, millimeter wave-based radar systems, and digital audio
`
`systems.
`
`9.
`
`From 1994 to 1997, I was a Vice President of Engineering for
`
`Asia/Pacific, and oversaw product launches for audio, powertrain control, and
`
`security systems, as well as the co-development of advanced systems with Toyota,
`
`Honda, Holdens, Daewoo, and other vehicular OEMs.
`
`10. From 1997 to 2001, I was a Product Line Manager in the Mobile
`
`Multi-Media Systems division. In this role, I managed product lines covering
`
`telematics, navigation, Rear Seat Audio Video (RSAV), and Dedicated Short
`
`Range Communications (DSRC) systems, some of which were later acquired and
`
`installed in vehicles by Toyota, General Motors, Honda, and Ford.
`
`11.
`
`I first served as an expert witness in 2005. Since that time, I have been
`
`hired by numerous law firms to provide them and their clients with expert
`
`consultation and expert testimony, often in the areas of patent infringement
`
`litigation related to various automotive electronic systems in the general areas of
`
`infotainment (navigation, telematics, audio, communication, user interfaces),
`
`engine control, safety (object detection and warning, multi-camera vision for
`
`object detection), reconfigurable displays and interfaces, and on-board and off-
`
`
`
`3
`
`6
`
`

`
`
`
`board diagnostics and prognostics for driver information and warnings.
`
`Attorney Docket: 10973-0232IP1
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`12. Throughout my career, I have been actively involved in numerous
`
`professional organizations including the Society of Automotive Engineers (SAE),
`
`The Institute of Electrical and Electronic Engineers (IEEE), Sigma Xi,
`
`Accreditation Board for Engineering and Technology (ABET), and the Society for
`
`Information Display.
`
`13. As indicated in my CV (KOITO 1020), I have received various
`
`professional awards, including the Vincent Bendix Automotive Electronics
`
`Engineering Award for Outstanding Society of Automotive Engineers Paper
`
`(1978), the Arch T. Colwell Merit Award for Outstanding Society of Automotive
`
`Engineers Technical Presentation (1978), the “Boss” Kettering Technical Award
`
`(internal General Motors, 1979), and election to the Delphi Automotive Innovation
`
`Hall of Fame (1997).
`
`14. Based on my above-described 44 years of dual industrial and
`
`consulting experience in Automotive Electronics Research, Development and
`
`Engineering, and the acceptance of my publications and professional recognition
`
`by societies in my field, I believe that I am considered to be an expert in the fields
`
`of automotive electronic systems, including vehicle control systems, sensors, and
`
`actuators as more clearly delineated in the paragraphs above and my attached CV.
`
`(KOITO 1020).
`
`
`
`4
`
`7
`
`

`
`
`
`
` MATERIALS CONSIDERED
`15.
`In writing this Declaration, I have considered the following: my own
`
`Attorney Docket: 10973-0232IP1
`
`knowledge and experience, including my work experience in the fields of
`
`automotive electronic systems, the research and development of automotive
`
`sensors and actuators, my industry experience with those subjects; and my
`
`experience in working with others involved in those fields. I have also analyzed the
`
`publications and materials referenced in the below chart, in addition to other
`
`materials I cite in this declaration.
`
`KOITO 1001 U.S. Patent No. 7,241,034
`
`KOITO 1002 Reexamination Certificate, U.S. Patent No. 7,241,034 C1
`
`KOITO 1003
`
`File History for U.S. Serial No. 10/285,312
`
`KOITO 1005
`
`KOITO 1004
`
`File History for Ex Parte Reexamination Proceedings
`90/011,011
`File History for Merged Reexamination Proceedings
`90/011,011 & 95/001,621
`KOITO 1006 Kato Japan Patent Application Publication H10-324191
`(“Kato”)
`KOITO 1007 Certified Translation of Kato
`
`KOITO 1008 Takahashi, UK Published Patent Application GB 2 309 774 A
`(“Takahashi”)
`KOITO 1009 Mori, Japan Patent Application Publication H7-164960
`(“Mori”)
`KOITO 1010 Certified Translation of Mori
`
`KOITO 1011 Uguchi et al, Japan Patent Application Publication H01-
`223042 (“Uguchi”)
`
`
`
`5
`
`8
`
`

`
`
`
`
`
`KOITO 1012 Certified Translation of Uguchi
`
`Attorney Docket: 10973-0232IP1
`
`KOITO 1013
`
`KOITO 1014
`
`Ishikawa et al, “Auto-Levelling Projector Headlamp System
`with Rotatable Light Shield,” SAE Technical Paper Series No.
`930726, March 1993 (“Ishikawa”)
`Panter, U.S. Patent No. 5,751,832 (“Panter”)
`
`KOITO 1015
`
`Suzuki, Japan Patent Application Publication H6-335228
`(“Suzuki”)
`KOITO 1016 Certified Translation of Suzuki
`
`KOITO 1017 Okuchi, U.S. Patent No. 6,193,398 (“Okuchi”)
`
`KOITO 1018 Okuchi, U.S. Patent Application No. 09/333,686 “Okuchi
`Application”)
`KOITO 1021 Dunning, U.S. Patent No. 982,803 (“Dunning”)
`
`KOITO 1022 McVey, U.S. Patent No. 1,524,443 (“McVey”)
`
`KOITO 1023
`
`Schjotz, U.S. Patent No. 1,595,879 (“Schjotz”)
`
`KOITO 1024 Yssel, U.S. Patent No. 3,316,397 (“Yssel”)
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`KOITO 1025
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`Fleury, U.S. Patent No. 3,617,731 (“Fleury”)
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`KOITO 1026 USPTO Assignment Records for U.S. Patent No. 7,241,034
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`KOITO 1027
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`Ishikawa STN Abstract
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`KOITO 1028 Hogrefe, U.S. Patent No. 6,227,691 (“Hogrefe”)
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`16. Although for the sake of brevity this Declaration refers to selected
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`portions of the cited references, it should be understood that a person of ordinary
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`skill in the art (“POSITA”) would view the references cited herein in their entirety
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`and in combination with other references cited herein or cited within the references
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`themselves. The references used in this Declaration, therefore, should be viewed as
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`being incorporated herein in their entirety.
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`17.
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`I am not currently and have not at any time in the past been an
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`employee of Koito Manufacturing Co., Ltd. or any of its subsidiaries. I have been
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`engaged in the present matter to provide my independent analysis of the issues
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`raised in the petition for inter partes review of U.S. Patent No. 7,241,034 (“the
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`’034 patent”). I received no compensation for this declaration beyond my normal
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`hourly compensation ($500 per hour) based on my time actually spent studying the
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`matter and preparing this declaration, and my compensation does not depend on
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`the outcome of this inter partes review of the ’034 patent.
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` PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`18.
`I am familiar with the content of the ’034 patent, which, I have been
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`informed by counsel, has an earliest priority date of October 31, 2001.
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`Additionally, I have reviewed the other references cited above in this declaration.
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`Counsel has informed me that I should consider these materials through the lens of
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`one of ordinary skill in the art (“POSITA”) related to the ’034 patent at the time of
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`the invention. I have supervised and directed many such persons over the course
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`of my career. Further, I had at least those capabilities myself in October 2001.
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`19.
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`I believe that a POSITA at the filing date of the ’034 Patent
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`(“POSITA”) would have been a person with at least a bachelor’s degree in
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`electrical engineering, computer science, or physics with at least two years of
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`related post-graduate or industry work experience. I base my evaluation of the
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`level of skill of a POSITA on my own personal experience, including my
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`knowledge of colleagues, and related professionals at the time of interest.
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`20. A POSITA in October 2001 would also have had a working
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`understanding of microprocessor-driven controls for automotive systems including
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`knowledge of automotive closed loop computer control, sensors and actuators.
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`This POSITA would have been comfortable with elementary decision-making in
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`the area of automotive systems development and design for new vehicles.
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` CLAIM CONSTRUCTION
`21.
`I understand that, for the purposes of my analysis in this matter, the
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`claims of the ’034 Patent must be given their broadest reasonable interpretation
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`consistent with the specification. Stated another way, it is contemplated that the
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`claims are understood by their broadest reasonable interpretation except where
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`construed in the specification. I also understand that this “broadest reasonable
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`interpretation” is with respect to how one of ordinary skill in the art would
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`interpret the claim language. I have followed these principles in my analysis. In a
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`few instances, I have discussed my understanding of the claims in the relevant
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`paragraphs below.
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` LEGAL PRINCIPLES
`22. Counsel has informed me that prior art to the ’034 Patent includes
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`patents and printed publications in the relevant art that were published prior to
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`October 31, 2001.
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`23. Counsel has informed me that a claim may be invalid based on either
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`anticipation or obviousness.
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`24. Counsel has informed me that for a claim to be invalid as anticipated,
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`every element of a claim is expressly disclosed or inherently contained in one
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`reference, in combination, as claimed.
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`25. Counsel has informed me that that for a claim to be invalid as
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`obvious, the claim should be obvious from the perspective of a person having
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`ordinary skill in the relevant art at the time the alleged invention was made in view
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`of the prior art. Counsel has informed me that a combination of two or more prior
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`art references may invalidate a claim under obviousness.
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`26. Counsel has informed me that an obviousness analysis requires
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`analyzing the scope and content of the prior art, the differences between the prior
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`art and the alleged invention, and the understanding of one of ordinary skill in the
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`art.
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`27. Counsel has informed me that other factors, called “secondary
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`considerations,” may support or rebut the obviousness of a claim. Counsel has
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`informed me that these can include: commercial success of the patented invention,
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`skepticism of those having ordinary skill in the art at the time of invention,
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`unexpected results of the invention, any long-felt but unsolved need in the art that
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`was satisfied by the alleged invention, the failure of others to make the alleged
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`invention, praise of the alleged invention by those having ordinary skill in the art,
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`and copying of the alleged invention by others in the field.
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`28. Counsel has informed me that a connection between any secondary
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`considerations and the alleged invention should exist. Counsel has informed me
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`that independent invention by others at the same time of the alleged invention is a
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`secondary consideration that supports a conclusion of obviousness. Counsel has
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`informed me that a claim is also obvious if it unites old elements with no change to
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`the respective functions of those elements, or alters prior art by substituting one
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`element for another known element, yielding predictable results. Counsel has
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`informed me that while it may be helpful to identify a reason for this combination,
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`the common sense of one having ordinary skill can be sufficient, and no rigid
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`requirement of finding a teaching, suggestion or motivation to combine is required.
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`Counsel has informed me that when a product is available, design incentives and
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`other market forces can prompt variations of it, either in the same field or a
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`different one. Counsel has informed me that if a person having ordinary skill in the
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`relevant art can implement a predictable variation, obviousness likely bars its
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`patentability. Counsel has informed me that for the same reason, if a technique has
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`been used to improve one device and a person having ordinary skill in the art
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`would recognize that it would improve similar devices in the same way, using the
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`technique may be obvious. Counsel has informed me that a claim may be obvious
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`if common sense directs one to combine multiple prior art references or add
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`missing features to reproduce the alleged invention recited in the claims.
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`29. Counsel has informed me that in an IPR, claim terms are given their
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`broadest reasonable interpretation in view of the patent specification and the
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`understanding of one of ordinary skill in the relevant art.
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` PRIOR ART CONSIDERED
`30.
`I have been asked to consider the prior art references identified in the
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`table below, along with their pertinent date of patenting, publication or filing.
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`
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`Prior Art Reference
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`1. Kato Japan Unexamined Published
`Patent Application H10-324191,
`“Headlight Optical Axis Control Device
`for Motorcycle” (“Kato”)
`2. Takahashi, UK Published Patent
`Application GB 2 309 774 A,
`“Controlling direction of vehicle
`headlights” (“Takahashi”)
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`Prior Art Date &
`Exhibit Number
`Publ. Dec. 8, 1998
`(KOITO 1006;
`1007)
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`Publ. Aug. 6, 1997
`(KOITO 1008)
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`Prior Art Reference
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`3. Mori, Japan Unexamined Published
`Patent Application 7-164960(“Mori”)
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`5.
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`4. Uguchi et al, Japan Unexamined
`Publ