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:
`
`Smith et al.
`7,241,034 B2
`July 10, 2007
`10/285,312
`October 31, 2002
`7,241,034 C1
`June 14, 2013.
`
`Title:
`
`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
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 3-26 AND 28-35
`OF UNITED STATES PATENT NO. 7,241,034 C1
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`IV.
`
`INTRODUCTION - This Petition Presents the Same Grounds Which
`Were Instituted in IPR2016-00079..................................................................1
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8....................................2
`A.
`Related PTO Proceedings......................................................................2
`B.
`Litigation Involving the ‘034 Patent .....................................................2
`C.
`Real Party-in-Interest ............................................................................4
`D.
`Designation of Counsel, Consent to Service, and Payment of
`Fees........................................................................................................4
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104..........................5
`A.
`Grounds for Standing Under 37 C.F.R. § 42.104(a).............................5
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) ....................5
`SUMMARY OF THE ‘034 PATENT.............................................................8
`A.
`The Alleged Invention of the ‘034 Patent.............................................8
`B.
`Background of the Art.........................................................................10
`C.
`Summary of the Prosecution Histories of the ‘034 Patent &
`Reexamination Certificate...................................................................12
`1.
`The Original Application & ‘034 Patent...................................12
`2.
`Reexamination ..........................................................................14
`GENERAL PRINCIPLES OF OBVIOUSNESS ..........................................19
`V.
`VI. CLAIMS 3-26, 28-35 ARE UNPATENTABLE OVER PRIOR ART.........21
`A.
`IPR Ground 1 - Claims 7, 8-9, 13-18, 20-21, 23-24, 28-29, 31-
`32 and 35 are unpatentable as obvious from Kato in view of
`Takahashi.............................................................................................22
`1.
`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...........................................................................................22
`Claim Chart for Kato ................................................................24
`Takahashi discloses the threshold limitation in claim 7 ...........30
`Claims 7, 8, 14-18, 20-21, 23-24, 28 and 32 are
`unpatentable as obvious from Kato in view of Takahashi........32
`Takahashi also discloses the additional limitations in
`dependent claims 9, 13, 29, 31 and 35......................................33
`
`2.
`3.
`4.
`
`5.
`
`i
`
`

`
`D.
`
`Claims 9, 13, 29, 31 and 35 are unpatentable as obvious
`from Kato in view of Takahashi ...............................................35
`IPR Ground 2 – Claim 10 is unpatentable as obvious from Kato
`in view of Takahashi and further in view of Mori ..............................38
`IPR Ground 3 – Claims 11 and 19 are unpatentable as obvious
`from Kato in view of Takahashi and further in view of Uguchi.........39
`IPR Ground 4 – Claim 12 is unpatentable as obvious from Kato
`in view of Takahashi and further in view of Ishikawa........................42
`IPR Ground 5 – Claim 22 is unpatentable as obvious from Kato
`in view of Takahashi and further in view of Panter............................43
`IPR Ground 6 – Claims 25 and 26 are unpatentable as obvious
`from Kato in view of Takahashi and further in view of Suzuki .........44
`IPR Ground 7 – Claims 30, 33 and 34 are unpatentable as
`obvious from Kato in view of Takahashi and further in view of
`Okuchi .................................................................................................46
`IPR Ground 8 – Claims 3 and 6 are unpatentable as obvious
`from Kato in view of Uguchi ..............................................................49
`1.
`All of the limitations of independent claim 3 and
`dependent claim 6 are disclosed in Kato, except the
`threshold and rate of change of steering angle limitations
`of claim 3, which are disclosed in Uguchi................................49
`Uguchi discloses the threshold limitation and the rate of
`change of steering angle limitation in
`claim 3.......................................................................................51
`Independent claim 3 and dependent claim 6 are
`unpatentable as obvious from the combination of Kato
`and Uguchi ................................................................................53
`IPR Ground 9 – Claim 4 is unpatentable as obvious from Kato
`in view of Uguchi and further in view of Ishikawa ............................54
`IPR Ground 10 – Claim 5 is unpatentable as obvious from Kato
`in view of Uguchi and further in view of Takahashi ..........................55
`VII. CONCLUSION..............................................................................................57
`
`B.
`
`C.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`6.
`
`2.
`
`3.
`
`ii
`
`

`
`EXHIBIT LIST
`
`Exhibit No.
`
`Title of Document
`
`SL-1001
`
`SL-1002
`
`SL-1003
`
`SL-1004
`
`SL-1005
`
`SL-1006
`
`SL-1007
`
`SL-1008
`
`SL-1009
`
`SL-1010
`
`SL-1011
`
`SL-1012
`
`SL-1013
`
`SL-1014
`
`SL-1015
`
`U.S. Patent No. 7,241,034
`
`Reexamination Certificate, U.S. Patent No. 7,241,034 C1
`
`File History for U.S. Serial No. 10/285,312
`
`File History for Ex Parte Reexamination Proceedings 90/011,011
`
`File History for Merged Reexamination Proceedings 90/011,011
`& 95/001,621
`
`Kato, Japan Patent Application Publication H10-324191 (“Kato”)
`
`Certified Translation of Kato
`
`Takahashi, UK Published Patent Application GB 2 309 774 A
`(“Takahashi”)
`
`Mori et al., Japan Patent Application Publication H7-164960
`(“Mori”)
`
`Certified Translation of Mori
`
`Uguchi et al, Japan Patent Application Publication H01-223042
`(“Uguchi”)
`
`Certified Translation of Uguchi
`
`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”)
`
`Suzuki et al., Japan Patent Application Publication H6-335228
`(“Suzuki”)
`
`SL-1016
`
`Certified Translation of Suzuki
`
`iii
`
`

`
`Exhibit No.
`
`Title of Document
`
`SL-1017
`
`SL-1018
`
`SL-1019
`
`SL-1020
`
`SL-1021
`
`SL-1022
`
`SL-1023
`
`SL-1024
`
`SL-1025
`
`SL-1026
`
`SL-1027
`
`SL-1028
`
`Okuchi et al., U.S. Patent No. 6,193,398 (“Okuchi”)
`
`Okuchi et al., U.S. Patent Application No. 09/333,686 (“Okuchi
`Application”)
`
`Expert Declaration of Harvey Weinberg
`Appendix A: Harvey Weinberg CV
`Appendix B: Expert Declaration of Ralph V. Wilhelm
`
`Curriculum Vitae of Ralph V. Wilhelm
`
`Dunning, U.S. Patent No. 982,803 (“Dunning”)
`
`McVey et al., U.S. Patent No. 1,524,443 (“McVey”)
`
`Schjotz et al., U.S. Patent No. 1,595,879 (“Schjotz”)
`
`Yssel, U.S. Patent No. 3,316,397 (“Yssel”)
`
`Fleury et al., U.S. Patent No. 3,617,731 (“Fleury”)
`
`USPTO Assignment Records for U.S. Patent No. 7,241,034
`
`STN on the Web Session
`
`Hogrefe et al., U.S. Patent No. 6,227,691 (“Hogrefe”)
`
`iv
`
`

`
`I.
`
`INTRODUCTION - THIS PETITION PRESENTS THE SAME
`GROUNDS WHICH WERE INSTITUTED IN IPR2016-00079
`SL Corp. (“Petitioner” or “SL Corp.”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 3-26 and 28-35
`
`in the Reexamination Certificate of U.S. Patent No. 7,241,034 C1 (“the ‘034
`
`Patent”) (SL-1001 & 1002), and asserts that there is a reasonable likelihood that it
`
`will prevail with respect to at least one of the claims challenged in this petition
`
`(hereinafter “the Petition”).
`
`The instant inter partes review petition presents challenges which are
`
`identical to those on which trial was instituted in IPR2016-00079. Paper No. 11.
`
`The petition in the instant case copies verbatim1 the challenges set forth in the
`
`petition in IPR2016-00079 (Paper No. 2) (“Koito petition”) and relies upon the
`
`same evidence, including the same expert declaration. This petition is
`
`accompanied by a motion for joinder.
`
`1 To meet the new word limits of 37 CFR §42.24 which went into effect on May 2,
`
`2016, Petitioner has omitted Sections III. E and F of the Koito petition addressing
`
`potential issues under 35 U.S.C. §112, ¶6 (and references to the same), neither of
`
`which was addressed or referenced in the institution decision.
`
`1
`
`

`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`
`A.
`
`Related PTO Proceedings
`
`The ‘034 Patent claims the priority of the following provisional applications:
`
`No. 60/369,447, filed on April 2, 2002; No. 60/356,703, filed on Feb. 13, 2002;
`
`and No. 60/335, 409, filed on Oct. 31, 2001.
`
`The ‘034 Patent was subject to an ex parte reexamination, Control No.
`
`90/011,011, and an Inter Partes reexamination filed by Volkswagen Group of
`
`America, Inc., Control No. 95/001,621, which were consolidated. As a result, the
`
`‘034 patent was modified by Inter Partes Reexamination Certificate 7,241,034 C1,
`
`issued June 14, 2013. (SL-1002) All extant claims are in that certificate.
`
`Litigation Involving the ‘034 Patent
`B.
`The ‘034 patent was asserted against approximately 35 defendants in Balther
`
`Technologies, LLC v. American Honda Motor Co. Inc. et al, filed March 8, 2010 as
`
`Civil Action No. 6-10-cv-00078 in the Eastern District of Texas. Following the
`
`filing of a Notice of Voluntary Dismissal by the Plaintiff, that case was dismissed
`
`without prejudice on May 18, 2010. Because that case was dismissed without
`
`prejudice, it cannot be relevant with respect to the 35 U.S.C. § 315(b) one year bar
`
`to filing an IPR. See, e.g., Atlanta Gas Light Co. v. Bennett Regulator Guards,
`
`Inc., IPR2015-00826, Paper 12 at 12-14 (Sept. 1, 2015) and cited decisions.
`
`2
`
`

`
`Infringement of the ‘034 Patent is currently being asserted by Adaptive
`
`Headlamp Technologies, Inc., against the defendants in the civil actions in the
`
`District of Delaware listed below:
`
`Defendants
`BMW of North America, LLC
`FCA US LLC (“Chrysler”), Maserati North America,
`Inc. & Fiat Chrysler Automobiles N.V.
`General Motors LLC
`Hyundai Motor America
`Mazda Motor of North America, Inc.
`Mercedes-Benz USA LLC
`Nissan North America Inc.
`Toyota Motor Sales, U.S.A., Inc.
`Volvo Cars of North America, LLC
`
`Civil Action No.
`1-14-cv-00962
`1-15-cv-00073
`
`1-15-cv-00781
`1-15-cv-00563
`1-15-cv-00782
`1-15-cv-00075
`1-15-cv-00074
`1-15-cv-00779
`1-15-cv-00780
`
`Those cases cannot be relevant with respect to the 35 U.S.C. § 315(b) one year bar,
`
`because BMW is not in privity with or a customer of SL Corp. and the cases
`
`against SL Corp. customers or related companies were filed in 2015, less than one
`
`year ago.
`
`U.S. Patent No. 7,241,034 is also the subject of the following Patent Trial
`
`and Appeal Board proceeding: Petition for Inter Partes Review by Koito
`
`Manufacturing Co., Ltd., IPR2016-00079 (Petition filed Oct. 23, 2015)(SL-1019),
`
`Petition for Inter Partes Review by SL Corporation, IPR2016-00193 (Petition filed
`
`Nov 13, 2015), Petition for Inter Partes Review by BMW of North America, LLC,
`
`IPR2016-00196 (Petition filed Nov. 16, 2015), and Petition for Inter Partes
`
`3
`
`

`
`Review by Mercedes-Benz USA, LLC, IPR2016-00501 (Petition filed Jan. 26,
`
`2016).
`
`Real Party-in-Interest
`C.
`The real parties-in-interest for this petition to institute inter partes review are
`
`SL Corp., Hyundai Motor Company, and Hyundai Motor America.
`
`D.
`
`Designation of Counsel, Consent to Service, and Payment of Fees
`
`Petitioner provides the following designation of counsel. 37 C.F.R. §
`
`42.8(b)(3):
`
`LEAD COUNSEL
`Peter J. Cuomo (Reg. No. 58,481)
`Tel.: 617-348-1854
`Fax: 617-542-2241
`
`MINTZ LEVIN COHN FERRIS
`GLOVSKY AND POPEO PC
`One Financial Center
`Boston, MA 02111
`
`BACK-UP COUNSEL
`Kongsik Kim (Reg. No. 63,867)
`Tel.: 617-348-3087
`Fax: 617-542-2241
`
`Serge Subach (Reg. No. 74,652)
`Tel.: 617-348-1846
`Fax: 617-542-2241
`
`Adam P. Samansky (pro hac vice to be
`filed)
`Tel.: 617-348-1819
`Fax: 617-542-2241
`
`MINTZ LEVIN COHN FERRIS
`GLOVSKY AND POPEO PC
`One Financial Center
`Boston, MA 02111
`
`Please address all correspondence to the lead counsel at the address provided
`
`above. Petitioner also consents to electronic service by email at:
`
`4
`
`

`
`pjcuomo@mintz.com; kkim@mintz.com; ssubach@mintz.com and
`
`apsamansky@mintz.com, per 37 C.F.R. § 42.8(b)(4).
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`SL Corp. certifies that the ‘034 Patent is available for IPR and that SL Corp.
`
`is not barred or estopped from requesting IPR.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`
`SL Corp. requests IPR of claims 3-26, 28-35 of the ‘034 Patent (the
`
`“Challenged Claims”) based on the prior art and grounds set forth below, and
`
`requests that the Office finds each of these claims to be unpatentable.
`
`The prior art references relied upon are identified in the table below, along
`
`with their pertinent date of patenting, publication or filing, and whether they are
`
`mentioned in the original or reexamination file histories.
`
`Prior Art Reference
`
`Prior Art Date & Exhibit
`Number
`Publ. Dec. 8, 1998 (SL-
`1006 & 1007)
`
`In File
`Histories ?
`No
`
`Publ. Aug. 6, 1997 (SL-
`1008)
`
`Cited in
`Reexam
`only
`
`Publ. June 27, 1995 (SL-
`1009 & 1010)
`Publ. Sept. 6, 1989 (SL-
`1011 & 1012)
`
`No
`
`No
`
`5
`
`1.
`
`2.
`
`Kato Japan Patent Application
`Publication H10-324191,
`“Headlight Optical Axis Control
`Device for Motorcycle” (“Kato”)
`Takahashi, UK Published Patent
`Application GB 2 309 774 A,
`“Controlling direction of vehicle
`headlights” (“Takahashi”)
`3. Mori, Japan Patent Application
`Publication H7-164960(“Mori”)
`Uguchi et al, Japan Patent
`Application Publication H01-
`
`4.
`
`

`
`Prior Art Reference
`
`223042 “Vehicle Headlight
`Control Device” (“Uguchi”)
`Ishikawa et al, “Auto-Levelling
`Projector Headlamp System with
`Rotatable Light Shield,” SAE
`Technical Paper Series No.
`930726 (“Ishikawa”)
`Panter, U.S. Patent No. 5,751,832
`(“Panter”)
`Suzuki, Japan Patent Application
`Publication H6-335228 (“Suzuki”)
`Okuchi, U.S. Patent No. 6,193,398
`& its Application Serial No.
`09/333,686, (“Okuchi”)
`
`5.
`
`6.
`
`7.
`
`8.
`
`Prior Art Date & Exhibit
`Number
`
`In File
`Histories ?
`
`Publ. 1993 (SL-1013)
`
`No
`
`Pat. May 12, 1998 (SL-
`1014)
`Publ. Dec. 2, 1994 (SL-
`1015 & 1016)
`Filed Jun 16, 1999 Pat.
`Feb 27, 2001 (SL-1017 &
`1018)
`
`IDS only
`
`No
`
`IDS in
`original
`appln. &
`cited in
`Reexam
`
`All of these references except Okuchi were published or patented more than
`
`one year before the earliest priority date of the ‘034 Patent (October 31, 2001) and,
`
`therefore, are prior art under 35 U.S.C. §102(b).
`
`Okuchi qualifies as prior art under 35 U.S.C. §102(a) because of its
`
`publication date of February 27, 2001, before the ‘034 Patent’s earliest priority
`
`date, and under §102(e), because of Okuchi’s U.S. filing date of June 16, 1999. A
`
`copy of the Okuchi application, as filed, is submitted as SL-1017.
`
`Claims 3 and 7 of the ‘034 Patent are independent. Claims 4-6 depend from
`
`Claim 3 and Claims 8-35 depend from Claim 7.
`
`Each of the grounds and references relied upon is identified below. The
`
`principal reference for all of the grounds is Kato. We discuss Claim 7 and its
`
`6
`
`

`
`dependent claims first because it is the broadest claim, and both that claim and
`
`eighteen of its dependent claims are obvious from Kato in view of Takahashi.
`
`Ground
`Ground 1
`
`Ground 2
`
`‘034 Patent Claims
`7-9, 13-18, 20-21, 23-
`24, 28-29, 31-32 and
`35
`10
`
`Ground 3
`
`11 and 19
`
`Ground 4
`
`Ground 5
`
`12
`
`22
`
`Ground 6
`
`25 and 26
`
`Ground 7
`
`30, 33 and 34
`
`Ground 8
`
`3, 6
`
`Ground 9
`
`4
`
`Ground 10 5
`
`Basis for Rejection
`Obvious under 35 USC §103(a) from Kato in
`view of Takahashi
`
`Obvious under 35 USC §103(a) from Kato in
`view of Takahashi and Mori
`Obvious under 35 USC §103(a) from Kato in
`view of Takahashi and Uguchi
`Obvious under 35 USC §103(a) from Kato in
`view of Takahashi and Ishikawa
`Obvious under 35 USC §103(a) from Kato in
`view of Takahashi and Panter
`Obvious under 35 USC §103(a) from Kato in
`view of Takahashi and Suzuki
`Obvious under 35 USC §103(a) from Kato in
`view of Takahashi and Okuchi
`Obvious under 35 USC §103(a) from Kato in
`view of Uguchi
`Obvious under 35 USC §103(a) from Kato in
`view of Uguchi and Ishikawa
`Obvious under 35 USC §103(a) from Kato in
`view of Uguchi and Takahashi
`
`An explanation of how each of the Challenged Claims is unpatentable as
`
`obvious under 35 U.S.C. §103(a) is set forth in Section V below. Identification of
`
`where each element is found in the cited prior art patents or publications, and the
`
`relevance of the prior art references, are provided primarily in detailed claim
`
`charts. Additional explanation and support for each ground of rejection is set forth
`
`in the Declaration of SL Corp.’s expert, Harvey Weinberg, who adopts the
`
`7
`
`

`
`declaration of Koito’s expert, Ralph V. Wilhelm in its entirety. (SL-1019, ¶ 7-8,
`
`App. B)
`
`IV.
`
`SUMMARY OF THE ‘034 PATENT
`
`A.
`
`The Alleged Invention of the ‘034 Patent
`
`We first discuss the alleged invention to give focus to the following sections.
`
`In pertinent part, the ‘034 patent disclosed directional control systems for
`
`adjusting aiming angles of vehicle headlight to account for vehicle operating
`
`conditions such as, steering angle, pitch and rate of change of steering angle, etc.
`
`The principal components of the claimed systems are sensors, a controller,
`
`headlights and actuators to aim the headlights. The controller is responsive to one
`
`or more sensor signals for generating an output signal. An actuator is connected to
`
`the headlight to aim it in accordance with the output signal. (SL-1001, 2:3-17.) As
`
`illustrated in FIG. 1, such systems include a headlight 11, one or more actuators 12
`
`(and 13, not shown) for moving the headlight, condition sensors 15 & 16, and a
`
`directional controller 14 responsive to sensors for producing one or more outputs
`
`to the actuators. (See SL-1001 2:63 – 4:6.) Most or all of the system components
`
`are described as “conventional.” (Id., 3:28-29; 3:33-35; 3:61-62; 4:11-12; 4:34-36;
`
`14:14-16.)
`
`The independent claims 3 and 7 include three principal, functional
`
`limitations that were added to secure allowance in the original examination and the
`
`8
`
`

`
`reexamination. (Throughout the prosecution and reexamination, the patent owners
`
`argued patentability of independent claims and did not provide any additional
`
`arguments or distinctions from the prior art for dependent claims.)
`
` During prosecution of the original application, Claim 1 was
`
`substantially narrowed to require, inter alia, that the controller be
`
`responsive to at least one sensor signal only when it changes by more
`
`than a predetermined minimum threshold amount.
`
` Claim 1 was rejected and cancelled in the reexamination, primarily
`
`because Takahashi (SL-1008) disclosed the threshold requirement.
`
` Following reexamination, the independent claims, Nos. 3 and 7,
`
`include substantially all of the limitations of patent Claim 1.
`
` Reexam Claim 3 further requires that at least one of the sensors
`
`generates a sensor signal representative of a rate of change of the
`
`steering angle of the vehicle.
`
` Reexam Claim 7 does not include that limitation, but requires that one
`
`sensor be adapted to generate a signal representative of steering angle
`
`of the vehicle and another sensor be adapted to generate a signal
`
`representative of the pitch of the vehicle.
`
`9
`
`

`
`B.
`
`Background of the Art
`
`The idea of moving a motor vehicle headlight assembly or part thereof so to
`
`direct the headlight beam is very old.
`
`The most basic form of an “automatically” steered vehicle headlight beam is
`
`produced by a light source assembly attached to bicycle or motorcycle handlebars.
`
`In 1911, Dunning (SL-1021) disclosed headlights for automobiles in which the
`
`direction of headlights was controlled by mechanical links to the steering system.
`
`(See SL-1019 App. B, ¶ 36.) It was known at least as early as 1925 that the
`
`headlight beam could be directed by moving the entire headlight assembly or only
`
`some components. See Fig. 3 of McVey (SL-1022) in which the reflector 12 and
`
`“lamp” (light source) 13 are moved by a mechanical connection to the steering
`
`system, but the casing 5 and front lens 14 are fixed to standards 3 and held in a
`
`“rigid position.” (1:66-73; 1:85 – 2:20; see also SL-1019 App. B, ¶ 36.)
`
`In 1926, Schjotz (SL-1023) disclosed an automobile headlight assembly
`
`combining automatic direction of the headlights from side to side (see, e.g., 1:56-
`
`63), with means for directing a reflector 32’ and lamp 34’ up and down. Schjotz’s
`
`example provides for manual adjustment of the up-down angle, by the knob 47 and
`
`linkage components identified by 39, 42, 43, 45 and 54 (see, e.g., Fig. 3; 1:39-42).
`
`Schjotz generally disclosed that the headlight control “may be entirely automatic”
`
`(1:22-25). (See also SL-1019 App. B ¶ 37.)
`
`10
`
`

`
`In 1941, the United States adopted regulations requiring sealed beam
`
`headlights in a fixed position on the vehicle body. That regulation and World War
`
`II deterred further development of headlights that were moveable or had moveable
`
`components to direct the light beams. (SL-1019 App. B, ¶38.)
`
`The 1967 patent of Yssel (SL-1024) contains an extensive discussion of
`
`automatically moving the angle of vehicle headlights up and down to maintain an
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`angle of light beams relative to the road surface. (See, e.g., 1:9-35; 2:53-59; 7:16-
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`28.) Yssel disclosed that the actuating means may also incorporate hydraulic,
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`mechanical, electrical or pneumatic devices. (See, e.g., 1:36-39; 2:1-52.) Yssel
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`specifically disclosed use of rheostats at the front and rear regions of the vehicle,
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`which produce the electric current controlling the headlight tilting. (See, e.g., 2:45-
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`52.) Yssel also disclosed that either the entire headlight assembly, or a part such as
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`the reflector, may be pivotally mounted (see, e.g., 2:61-65; 6:38-47); and that
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`means may be provided for “preventing unintentional relative movement ... due to
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`road surface irregularities”(6:30-32; see Fig. 6; see also 2:53-60; 5:52-56). (SL-
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`1019 App. B, ¶39.)
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`The 1971 Fleury patent, initially assigned to Citroen, disclosed adjustable
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`lighting equipment for a road vehicle, implemented by a hydraulic system. (SL-
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`1025.) Various Citroen models offered a hydraulically-driven adjustable headlamp
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`system; however, it reportedly had to be deactivated in vehicles sold in the United
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`11
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`States, due to the regulations prohibiting moveable headlights. (SL-1019 App. B,
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`¶40.)
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`Later, when electronic controllers, such as microprocessors had become
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`available, patents and publications appeared in which an electronic controller, such
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`as a microprocessor, is used to control the direction of a headlight beam based on
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`sensed conditions. (SL-1019 App. B ¶41.) By the time of the alleged inventions of
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`the ‘034 patent, a person of ordinary skill in the art (“POSITA”) would have
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`understood that any physical conditions which can have an influence on the vehicle
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`condition can be determined by one or more sensor(s) and supplied to the control
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`unit in order to control the direction of a headlight beam. (Id.) The more recent
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`history is revealed in the discussion of the prior art relied on in this Petition.
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`C.
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`Summary of the Prosecution Histories of the ‘034 Patent &
`Reexamination Certificate
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`The prosecution histories of the independent claims of the original ‘034
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`patent and the reexamination certificate was briefly outlined in Section I.A, supra.
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`A detailed discussion follows.
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`1.
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`The Original Application & ‘034 Patent
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`The application for the ‘034 patent, No. 10/285,312, was filed on October
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`31, 2002. It claimed priority of provisional applications: No. 60/369,447, filed on
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`April 2, 2002; No. 60/356,703, filed on Feb. 13, 2002; and No. 60/335, 409, filed
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`12
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`on Oct. 31, 2001. (SL-1001, cover) The original application included independent
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`claim 1 and twelve dependent claims. (SL-1003, pp. 25-26)
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`Original application Claim 1 was highly generic and functional (SL-1003, p.
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`25):
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`2. 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; and
`an actuator that is adapted to be connected to the headlight to
`effect movement thereof in accordance with said output signal.
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`In pertinent part, following a non-final rejection, the Applicant’s attorney held a
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`personal interview with the Examiner on January 31, 2007. The Examiner’s
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`Interview Summary states, inter alia (SL-1003, p. 237):
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`We discussed independent claims 1, 7, and 14 [which became patent
`claim 1]. We agreed that claim 14 is allowable over the prior art of
`record because of the specific limitation of “a predetermined
`minimum threshold amount to prevent the actuator from being
`operated continiously [sic.] or duly [sic.] in response to relatively
`small variations in the sensed operating speed.”
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`13
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`

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`The Applicant’s attorney described the interview and resulting amendments in the
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`Remarks section of the January 31, 2007 amendments as follows (SL-1003, p.
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`236):
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`During that interview, independent Claims 1, 7, and 14 were
`discussed in light of the Toda et al, Gotoh, and Okuchi et al.
`references. As noted on the Examiner Interview Summary Record, it
`was agreed that Claim 14 was allowable over the prior art of record.
`Thus, independent Claims 1 and 7 have been cancelled, and Claims 2
`through 5 have been amended to depend from allowable Claim 14. ....
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`The Examiner’s statement of reasons for allowance in the Notice of
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`Allowability merely stated: “applicant’s amendment and accompanying remarks
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`has persuaded the examiner to place this application in condition for allowance.”
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`(SL-1003, p. 252.)
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`The ‘034 patent issued on July 10, 2007 with amended Claim 1 and Claims
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`2-5 depending from it. (SL-1001.)
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`2.
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`Reexamination
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`As noted in section 1.B above, a civil action was filed on March 8, 2010
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`asserting infringement of the ‘034 against a number of defendants and then
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`voluntarily dismissed without prejudice on May 18, 2010. In July 2010 a request
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`for ex parte reexamination (Control No. 90/011,011) of the ‘034 patent was filed.
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`14
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`That reexamination initially involved only original claims 1 and 3 of the ‘034
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`patent. (SL-1004, p. 110.)
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`A second, inter partes request for reexamination, Control No. 95/001,621
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`was filed by Volkswagen Group of America, Inc. (“VWGoA”) on May 16, 2011.
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`(SL-1005 at 4-652.) The patent owner’s response presented an amended,
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`independent Claim 1, amended dependent Claims 2-5 and new Claims 6-45. (Id. at
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`956-969.) VWGoA does not appear to have actively participated thereafter in the
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`reexamination proceedings).
`
`The Board ordered consolidation of the two reexaminations and ordered that
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`the owner present a single set of claims. (SL-1005 at 941-955.) The owner
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`provided such a set by Amendment D2, filed April 27, 2012. (Id. at 979-992.)
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`That proposed claim set, which included amendments to Claims 1-5, and new
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`Claims 6-41, was an amended version of the claims it had presented in the ex parte
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`case.
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`A 104-page Office Action was mailed June 29, 2012 in the consolidated
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`reexaminations. (SL-1005 at 1011-1115.) In pertinent part, it addressed 38
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`proposed grounds of rejection (“Issues”), rejected independent claim 1 and
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`dependent claims 2, 4-6, 8-10 and 12-37. Other, dependent claims were objected
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`to and indicated as allowable in independent form. (Id. at 1111.)
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`15
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`As far as this Petition is concerned, all of the rejected proposed claims were
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`rejected as anticipated by or obvious from Takahashi, either alone or in
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`combination with one or more of other references. In particular, Takahashi, which
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`had not been a reference in the examination of the original application, discloses
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`the “predetermined minimum threshold” limitation that the original examination
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`had found missing. (See quotations in Section V.A.3 below.)
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`The owner responded with Amendment E, dated July 26, 2012, thanking the
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`Examiner for indication of allowable subject matter and without any arguments
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`other than asserting the amendments were believed to place the claims in condition
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`for allowance. (SL-1005 at 1119-1130.) In particular, no arguments were
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`presented in this or any other amendment for allowance of the dependent claims, as
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`the owner relied only on the asserted distinctions in the independent claims.
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`A Table in the Remarks section summarized the amendments. (Id. at 1127-
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`1130.) In particular, independent claim 1 and dependent claim 2 were cancelled.
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`Claim 3 was rewritten in independent form, inserting the subject matter of
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`previously amended claim 1, and making other amendments as indicated in the
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`Table. Claims 4-6 were amended primarily to depend from Claim 3. Claim 7 was
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`rewritten in independent form, inserting the subject matter of previously amended
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`claims 1 and 6. Claims 8-41 were amended primarily to depend from Claim 7.
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`16
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`

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`An Action Closing Prosecution, mailed December 18, 2012, acknowledged
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`that Claims 1 and 2 had been cancelled, stated that Claims 3-13, 15-35 and 38-41
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`are patentable, and rejected Claims 14, 36 and 37 under § 112, ¶ 2 as indefinite.
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`(Id. at 1148-1165.) The Examiner summarized the Reasons for Patentability as
`
`follows (id. at 1161-1162 (emphasis in original)):
`
`Independent claim 3 is patentable because of the fact that no
`single reference of record or combination of references teach “at least
`one of said two or more sensors generates at least one of said two or
`more sensor signals that is representative of a rate of change of the
`steering angle of the vehicle” in combination with a [sic.] “a
`controller” and “two or more actuators” as required in claim 3.
`Dependent claims 4-6 come freighted with the limitations of
`claim 3 from which they stem and are therefore patentable for the
`same reasons.
`Independent claim 7 is patentable because of the fact that no
`single reference of record or combination of references teach
`“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 in
`combination with “a controller” and “two or more actuators” as
`required in claim 7.
`Dependent claims 8-13, 15-35, 38-41 come freighted with the
`limitations of claim 7 from which they stem and are therefore
`patentable for the same reasons.
`
`17
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`

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`The owner filed a proposed amendment on January 2, 2013, amending
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`Claim 14 to cure the § 112, ¶ 2 indefiniteness problem and additionally cancelling
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`claims 36 and 37. (SL-1005 at pp. 1168-1178.)
`
`A Right of Appeal Notice was mailed March 5, 2013 and a Notice of Intent
`
`to Issue Inter Partes Reexamination Certificate was mailed May 17, 2013. (SL-
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`1005 at 1184 & 1209) Each indicated the patentability of Claims 3-35 and 38-41,
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`and each included substantially the same Examiner’s Reasons for Patentability
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`quoted above from the Action Closing Prosecution. (The later documents each
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`refer in one place to Claim 1 where Claim 3 clearly was intended.)
`
`The Reexamination Certificate was issued on June 14, 2013. (SL-1002.)
`
`D.
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`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
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`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the Patent in which it appears.” 37 C.F.R. § 42.100(b). The
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`words of the claim are given their plain meaning unless that meaning is
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`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`The words in the Challenged Claims should take their plain meaning. The
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`‘034 Patent describes “headlight 11” without specific structure relating to the
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`claimed functions. (SL-1001, 2:66 – 3:6.) “Actuators 12 and 13” may be servo,
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`step or microstepping motors, or “other electronically controlled mechanical
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`actuators.” (Id. at 3:28-37.) “Condition sensors 15 and 16” may sense pitch or
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`18
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`

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`level, or “any other operating condition.” (Id. at 6:65 – 7:9; see also 3:61-65.)
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`“Position feedback sensors 18 and 19” may be “any conventional sensor
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`structur