`571-272-7822
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`Paper 7
`Entered: March 10, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR COMPANY,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01740
`Patent 7,241,034 C1
`_______________
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`RAMA G. ELLURU and SCOTT C. MOORE, Administrative Patent
`Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d); 37 C.F.R. § 42.108
`
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`Case IPR2016-01740
`Patent 7,241,034 C1
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`INTRODUCTION
`I.
`Toyota Motor Company (“Petitioner”) filed a Petition (Paper 2;
`“Pet.”) to institute an inter partes review of claims 7, 14–16, and 31 of U.S.
`Patent No. 7,241,034 C1 (Exs. 1001–1002; “the ’034 patent”). Adaptive
`Headlamp Technologies, Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 6; “Prelim. Resp.”).
`The Petition is before us pursuant to 35 U.S.C. § 314(a), which
`provides that an inter partes review may not “be instituted unless the
`Director[1] determines that the information presented in the petition [] shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the Petition and Preliminary Response, we deny institution
`of an inter partes review.
`
`BACKGROUND
`II.
`Related Proceedings in the USPTO
`A.
`The ’034 patent was the subject of an ex parte reexamination filed by
`the Patent Owner (Serial No. 90/011,011, filed July 10, 2010) (see Exs.
`1002, 1004), and an inter partes reexamination request filed by Volkswagen
`Group of America, Inc. (Serial No. 95/001,621) (see Exs. 1002, 1005).
`These reexamination proceedings were subsequently merged, and a
`reexamination certificate issued on June 14, 2013. Ex. 1002.
`
`
`1 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
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`The ’034 patent has also been the subject of five other inter partes
`review petitions, three of which remain pending and have already proceeded
`to oral argument:
`(a) Koito Manufacturing Co., Ltd. v. Adaptive Headlamp
`Technologies, Inc., Case IPR2016-00079 (the “Koito IPR”) (filed Oct. 23,
`2015; instituted May 5, 2016; oral hearing held Jan. 11, 2017)2;
`(b) SL Corp. v. Adaptive Headlamp Technologies, Inc., Case
`IPR2016-00193 (the “first SL Corp. IPR”) (filed Nov. 13, 2015; instituted
`June 6, 2016; oral hearing held Feb. 23, 2017)3;
`(c) BMW of North America, LLC v. Adaptive Headlamp Technologies,
`Inc., Case IPR2016-00196 (filed Nov. 16, 2015; terminated Apr. 19, 2016)4;
`(d) Mercedes-Benz USA, LLC. v. Adaptive Headlamp Technologies,
`Inc., Case No. IPR2016-00501 (filed Nov. Jan. 26, 2016; terminated April
`19, 2016)5; and
`(e) SL Corp. v. Adaptive Headlamp Technologies, Inc., Case No.
`IPR2016-01368 (the “second SL Corp. IPR”) (filed July 6, 2016; merged
`with IPR2016-00079 on Nov. 16, 2016; oral hearing held Feb. 23, 2017).6
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`
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`2 See IPR2016-00079 Papers 2, 11, 23.
`3 See IPR2016-00193 Papers 2, 10, 24.
`4 See IPR2016-00196 Papers 2, 11.
`5 See IPR2016-00501 Papers 1, 10.
`6 See IPR2016-01368 Papers 2, 9; IPR2016-00079 Paper 19.
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`Patent 7,241,034 C1
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`Related Proceedings in District Court
`B.
`The’034 patent is asserted by Patent Owner in several pending
`litigations in the U.S. District Court for the District of Delaware. Pet. 1–2;
`Paper 5, 2–3.
`One of the Delaware litigations is Adaptive Headlamp Technologies,
`Inc. v. Toyota Motor Sales, U.S.A., Inc., Civil Action No. 1:15cv00779 (D.
`Del.), which was filed on September 4, 2015. See CM/ECF Docket of Case
`No. 1:15-cv-00779-GMS (D. Del.), D.I. 1. On May 13, 2016, the Court
`granted a request by Defendant Toyota Motor Sales, U.S.A., Inc. (“Toyota
`Motor Sales”) for a stay of the Delaware litigation in view of our May 5,
`2016 decision in IPR2016-00079 instituting an IPR of the ’034 patent, and
`the second inter partes review petition in IPR2016-00193 regarding the ’034
`patent. See id., D.I. 31, 1–2, 6. Toyota Motor Sales is a real party in interest
`in this proceeding. Pet. 1.
`The petitioners in the five earlier-filed inter partes review requests
`described above all are parties to pending or terminated litigations in the
`District of Delaware. See Pet. 1–2; Paper 5, 2–3.
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`References Relied Upon
`C.
`Petitioner relies on the following references in support of the asserted
`grounds of unpatentability:
`
`References and Materials
`Japan Patent Application Publication H10-324191
`(pub. Dec. 8, 1998) (“Kato”)
`UK Published Patent Application GB 2 309 774 A
`(pub. Aug. 6, 1997) (“Takahashi”)
`
`Exhibit No.
`1007
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`1008
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`References and Materials
`U.S. Patent No. 5,868,488 (iss. Feb. 9, 1999)
`(“Speak”)
`Japan Patent Application Publication H01-223042
`(pub. Sept. 6, 1989) (“Uguchi”)
`
`Pet. 5.
`
`Exhibit No.
`1009
`
`1011
`
`D.
`
`Asserted Grounds of Unpatentability
`
`Asserted
`Ground7
`1
`
`2
`
`Challenged
`Claim(s)
`7, 14–16,
`and 31
`7, 14–16,
`and 31
`
`Pet. 5, 16.8
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`Statutory Basis
`
`References
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`35 U.S.C. § 103(a) Kato and Takahashi
`
`35 U.S.C. § 103(a) Speak, Takahashi,
`and Uguchi
`
`III. ANALYSIS
`“Congress did not mandate that an inter partes review must be
`instituted under certain conditions. Rather, by stating that the Director—and
`by extension, the Board—may not institute review unless certain conditions
`are met, Congress made institution discretionary.” Intelligent Bio-Systems,
`Inc. v. Illumina Cambridge Ltd., Case IPR2013-00324, slip op. 4 (PTAB
`Nov. 21, 2013) (Paper 19).
`
`
`7 We refer to the asserted grounds by these numbers in our analysis.
`8 Page 5 of the Petition erroneously refers to claim 1, which was cancelled
`during the inter partes reexamination proceeding. See Ex. 1002, 1:17. Page
`16 of the Petition makes clear that Petitioner intended to refer to claim 7.
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`35 U.S.C. § 325(d) gives us discretion to deny institution of an inter
`partes review in the event other proceedings involving the challenged patent
`are already pending, and indicates that we may consider the extent of
`overlap between proceedings in reaching our decision:
`MULTIPLE PROCEEDINGS – [I]f another proceeding or
`matter involving the patent is before the Office, the
`Director may determine the manner in which the [current
`proceeding] or other matter may proceed,
`including
`providing
`for
`the stay,
`transfer, consolidation, or
`termination of any such matter or proceeding.
` In
`determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take
`into account whether, and reject the petition or request
`because, the same or substantially the same prior art or
`arguments previously were presented to the Office.
`35 U.S.C. § 325(d). Our rules also provide that “[w]here another matter
`involving the patent is before the Office, the Board may during the pendency
`of the inter partes review enter any appropriate order regarding the
`additional matter including providing for the stay, transfer, consolidation, or
`termination of any such matter.” 37 C.F.R. § 42.122(a). We construe our
`rules “to secure the just, speedy, and inexpensive resolution of every
`proceeding.” 37 C.F.R. § 42.1.
`Patent Owner asks that we deny institution of a trial in this proceeding
`in view of the five other inter partes review requests that have been filed
`challenging the ’034 patent. Prelim. Resp. 3. Below, we analyze the extent
`of the overlap between the present Petition and the prior petitions, and then
`consider other factors relevant to the issue of whether we should exercise
`our discretion to deny institution of an inter partes review.
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`A. Overlap between Current Petition and Pending Proceedings
`Ground 1: Obviousness of Claims 7, 14–16, and 31 over Kato and
`Takahashi
`
`1.
`
`Ground 1 of the present Petition is subsumed by instituted grounds of
`unpatentability in the three currently pending proceedings. In the Koito IPR
`and second SL Corp. IPR, we instituted an inter partes review as to the
`alleged obviousness of claims 7–9, 13–18, 20, 21, 23, 24, 28, 29, 31, 32, and
`35 over Kato and Takahashi. IPR2016-00079 Paper 11, 39; IPR2016-01368
`Paper 9, 10. In the first SL Corp. IPR, we instituted inter partes review as to
`the alleged obviousness of claims 7–9, 13–18, 21, 23, 24, and 28–33 over
`Kato and Takahashi. IPR2016-00193 Paper 10, 36.
`
`2.
`
`Ground 2: Obviousness of Claims 7, 14–16, and 31 over Speak,
`Takahashi, and Uguchi
`
`As discussed above, all of the claims challenged in Ground 2 are
`already the subject of pending challenges based on Kato and Takahashi.
`Four of the instituted grounds in the Koito IPR also involve the Uguchi
`reference. IPR2016-00079 Paper 11, 39. The Speak reference was not cited
`in any of the pending proceedings; however, as explained below, Petitioner
`is citing Speak in a similar manner to the way that Kato was cited in the
`Koito and SL Corp. IPRs.
`In the Koito and SL Corp. IPRs, the petitioners rely on Kato primarily
`for its disclosure of an automatic directional control system for a vehicle
`headlight that includes sensors, a control unit, and actuators/step motors.
`See generally IPR2016-00079 Paper 11, 8–23; IPR2016-00193 Paper 10,
`9–20; IPR2016-01368 Paper 2, 5. Figure 1 of Kato is reproduced below.
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`Figure 1 of Kato is a block diagram illustrating one embodiment of a
`headlight optical axis control device. Ex. 1007 ¶ 15. Figure 1 depicts a
`series of sensors (reference numerals 14, 16, 18, 121, and 122) that detect
`steering angle and other vehicle data, and a control unit (reference numeral
`24) that receives sensor data and drives three actuators (step motors 22x,
`22y, and 22z) in order to adjust headlight 20. See Ex. 1007 ¶¶ 16–19.
`In Ground 2 of the present Petition, Petitioner relies primarily on
`similar aspects of Speak’s system. See generally Pet. 40–53. Speak
`discloses a “direction sensing control system 10” for automobile headlights.
`Ex. 1009, 3:29–33. Figure 1 of Speak is reproduced below.
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`Figure 1 of Speak depicts sensor means 17 that detects movement of a
`steering wheel, and sends data to microprocessor 18. Id. at 2:36–38, 3:45–
`47. Microprocessor 18 controls headlight control means 20 and 20' to adjust
`a vehicle’s headlight structures. Id. at 3:42–51, 3:57–59.
`
`The only substantive difference between Speak and Kato that
`Petitioner specifically identifies in the Petition is the fact that Kato relates to
`a motorcycle, whereas Speak relates to a four-wheeled vehicle. See Pet.
`38–39. However, the challenged claims all relate to an “automatic
`directional control system for a vehicle headlight,” and do not differentiate
`between motorcycles and four-wheeled vehicles. See Ex. 1002 1:57–2:16,
`2:43–58, 3:45–4:3. Thus, we are not persuaded that this difference between
`Kato and Speak is material to the patentability arguments advanced in the
`Petition.
`On this record, we find that even though Ground 2 relies on a different
`primary reference, it still presents “substantially the same . . . arguments
`[that] previously were presented to the Office” in the Koito IPR and SL
`Corp. IPRs. See 35 U.S.C. § 325(d).
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`B. Other Considerations that Guide our Discretion
`In considering whether to invoke our discretion to deny institution
`under 35 U.S.C. § 325(d) and 37 C.F.R. § 42.122(a), we consider Patent
`Owner’s interest in avoiding harassment and delays. See H.R. Rep. No. 112-
`98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for
`harassment or a means to prevent market entry through repeated litigation
`and administrative attacks on the validity of a patent. Doing so would
`frustrate the purpose of the section as providing quick and cost effective
`alternatives to litigation.”).
`We also consider the Board’s interest in deciding issues efficiently.
`See, e.g., Samsung Elec. Co. v. Rembrandt Wireless Techs., LP, Case
`IPR2015-00114, slip op. at 6 (PTAB Jan. 28, 2015) (Paper 14) (“[I]t is more
`efficient for the parties and the Board to address a matter once rather than
`twice.”). The Board may deny institution when the earlier proceedings are
`at an advanced stage. See, e.g., Unified Patents, Inc. v. PersonalWeb Techs.,
`LLC, Case IPR2014-00702, slip op. at 6–9 (PTAB July 24, 2014) (Paper 13)
`(denying institution of inter partes review under 35 U.S.C. § 325(d) because
`three other petitions for inter partes review of the same patent based on the
`same prior art were filed by third parties, one of which had already resulted
`in issuance of a final written decision that was the subject of an appeal, and
`another of which was pending a final written decision).
`In addition, we are mindful of the potential prejudice that would be
`suffered by a petitioner if we deny institution. For example, if a petitioner is
`a defendant in litigation and would be barred from filing a subsequent inter
`partes review, this factor may weigh against invoking our discretion to deny
`institution. See, e.g., Initiative for Responsibility in Drug Pricing LLC v.
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`Wyeth LLC, Case IPR2014-01259, slip op. at 6–7 (PTAB Feb. 13, 2015)
`(Paper 8). Where the petitioner is not a real party in interest to a previously
`filed petition, this factor weighs in favor of institution. See, e.g., Square,
`Inc. v. Protegrity Corp., Case CBM2014-00182, slip op. at 8 (PTAB Mar. 5,
`2015) (Paper 16).
`Here, the Patent Owner’s interest in avoiding harassment and delay
`weighs strongly against institution of an inter partes review. The ’034
`patent has already been the subject of six post-grant challenges that were
`filed by various third parties over the course of several years, including five
`inter partes review proceedings. The three pending inter partes reviews
`were all filed by defendants in the same set of related lawsuits in which
`Toyota Motor Sales, the present Petitioner, is a defendant. SL Corp. filed its
`first petition less than one month after Koito filed its petition. As a result,
`Patent Owner was able to address the patentability arguments in those
`petitions at approximately the same time, and SL Corp.’s initial petition will
`not significantly delay the date upon which proceedings before the Board
`will conclude. The Second SL Corp. petition merely copied the petition in
`the Koito IPR, and those proceedings were subsequently merged. Thus, the
`second SL Corp. petition also will not significantly delay proceedings. In
`contrast, instituting an inter partes review here would require Patent Owner
`to defend itself yet again against substantially the same arguments against
`the same claims that were raised many months ago, significantly delaying
`the completion of proceedings before the Board.
`The Board’s interest in deciding issues efficiently also weighs
`strongly against institution of an inter partes review. The Board has already
`considered arguments raised in three separate inter partes review
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`proceedings, and issuance of final written decisions in those proceedings is
`imminent. Allowing Petitioner to proceed with a new petition now would
`require the Board to expend additional resources to address substantially the
`same arguments again. We also are mindful of the delay that instituting
`another inter partes review might have on the Delaware litigations, which
`have been stayed pending the outcome of proceedings before the Board.
`The fact that Petitioner has not previously filed an inter partes review
`petition weighs in favor of institution, as does the fact that Petitioner would
`likely be barred under 35 U.S.C. § 315(b) from seeking inter partes review
`of the ’034 patent in the future. However, Petitioner bears at least some
`responsibility for any prejudice that would result from these circumstances.
`Had Petitioner—which was aware of the earlier-filed inter partes review
`petitions—expeditiously moved to raise its arguments, the Board likely
`could have coordinated Petitioner’s proceeding with the earlier-filed
`proceedings, minimizing the prejudice to Patent Owner and avoiding the
`waste of Board resources. Petitioner has provided no persuasive explanation
`for its delay.
`
`IV. CONCLUSION
`On this record, we conclude that the circumstances in this case weigh
`in favor of invoking our discretion under 35 U.S.C. § 325(d) and 37 C.F.R.
`§ 42.122(a) to deny institution of an inter partes review.
`
`V. ORDER
`Accordingly, it is ORDERED that the Petition is denied as to all
`challenged claims of the ’034 patent.
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`For PETITIONER:
`
`William Mandir
`John Bird
`Fadi Kiblawi
`SUGHRUE MION, PLLC
`wmandir@sughrue.com
`jbird@sughrue.com
`fkiblawi@sughrue.com
`
`For PATENT OWNER:
`
`Brett Pinkus
`Richard Wojcio
`FRIEDMAN, SUDER & COOKE
`pinkus@fsclaw.com
`wojcio@fsclaw.com
`
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