Patent Assignment Abstract of Title
`
`Patent #: 7241034
`Publication #: US20030107898
`
`Issue Dt: 07/10/2007
`Pub Dt: 06/12/2003
`
`Filing Dt: 10/31/2002
`
`Total Assignments: 4
`Application #: 10285312
`PCT #: NONE
`Inventors: James E. Smith, Anthony B. McDonald
`Title: AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE HEADLIGHTS
`Assignment: 1
`Received: 02/10/2003
`Reel/Frame: 013729/ 0559
`Recorded: 02/06/2003
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignors: SMITH. JAMES E.
`MCDONALD. ANTHONY B.
`Assignee: DANA CORPORATION
`4500 DORR STREET
`TOLEDO, OHIO 43615
`Correspondent: MACMILLAN, SOBANSKI & TODD, LLC
`RICHARD S. MACMILLAN
`720 WATER STREET
`ONE MARITIME PLAZA, FOURTH FLOOR
`TOLEDO, OH 43604-1853
`Assignment: 2
`Received: 02/22/2008
`Reel/Frame: 020540 / 0476
`Recorded: 02/22/2008
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: DANA CORPORATION
`Assignee: DANA AUTOMOTIVE SYSTEMS GROUP. LLC
`4500 DORR STREET
`TOLEDO, OHIO 43615
`Correspondent: DANA HOLDING CORPORATION
`4500 DORR STREET
`KRISTENE M RAGAN
`TOLEDO, OH 43615
`Assignment: 3
`Received: 06/12/2009
`Reel/Frame: 022813 / 0432
`Recorded: 06/12/2009
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: DANA AUTOMOTIVE SYSTEMS GROUP. LLC
`Assignee: STRAGENT. LLC
`211 W. TYLER, SUITE C
`LONGVIEW, TEXAS 75601
`Correspondent: ASSIGNMENT RECORDATION
`211 W. TYLER ST., SUITE C
`LONGVIEW, TX 75601
`Assignment: 4
`Received: 03/08/2010
`Reel/Frame: 024045 / 0235
`Recorded: 03/08/2010
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: STRAGENT. LLC
`Assignee: BALTHER TECHNOLOGIES. LLC
`211W.TYLER
`SUITE C-4
`LONGVIEW, TEXAS 75601
`Correspondent: THE CALDWELL FIRM, LLC
`PO BOX 59655
`DEPT. SVIPGP
`DALLAS, TX 75229
`
`Mailed: 06/13/2003
`
`Pages: 3
`
`Exec Dt: 01/31/2003
`Exec Dt: 01/31/2003
`
`Mailed: 02/22/2008
`
`Pages: 30
`
`Exec Dt: 01/31/2008
`
`Mailed: 06/12/2009
`
`Pages: 2
`
`Exec Dt: 05/26/2009
`
`Mailed: 03/09/2010
`
`Pages: 2
`
`Exec Dt: 12/16/2009
`
`If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350.
`
`Search Results as of: 07/28/2010 01:33 PM
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`Web interface last modified: October 18, 2008 v.2.0.1
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`

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`Applicant(s)/Patent Under
`Reexamination
`7,241,034
`Art Unit
`3992
`
`Page 1 of 1
`
`Classification
`
`362/40
`
`Notice of References Cited
`
`Application/Control No.
`
`90/011,011
`
`Examiner
`
`MY-TRANG N. TON
`U.S. PATENT DOCUMENTS
`
`Date
`MM-YYYY
`03-1988
`
`Shibata et al.
`
`Name
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`*
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`*
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`Document Number
`Country Code-Number-Kind Code
`US-4,733,333
`US-
`US-
`US-
`US-
`US-
`US-
`US-
`us-
`us-
`us-
`US-
`US-
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`*
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`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Country
`
`Name
`
`Classification
`
`FOREIGN PATENT DOCUMENTS
`
`NON-PATENT DOCUMENTS
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
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`*
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`Q
`R
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`S
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`V
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`X
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`*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`
`U.S. Patent and Trademark Office
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20100810
`
`Copied from 9001.1.011 on 05/1(>/2013
`
`3
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`

`
`PTO/SB/58 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`(Also referred to as FORM PTO-1465)
`
`REQUEST FOR INTER PARTES REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`7,241,034
`[X] This is a request for inter partes reexamination pursuant to 37 CFR 1.913 of patent number
`July 10, 2007
`issued
`. The request is made by a third party requester, identified herein below.
`
`Attorney Docket No.:
`Date: May 16, 2011
`
`1-
`
`[X] a. The name and address of the person requesting reexamination is:
`Volkswagen Group of America, Inc.
`2200 Ferdinand Porsche Drive
`Herndon, Virginia 20171
`
`3. Q
`
`|
`
`|
`
`b. The real party in interest (37 CFR 1.915(b)(8)) is: Volkswagen Group Of Ainerica, Inc.
`
`a. A check in the amount of $
`
`is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(2);
`
`b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(2)
`; or
`to Deposit Account No.
`
`Payment by credit card. Form PTO-2038 is attached.
`Ixl Any refund should be made by EH check or [X] credit to Deposit Account No. 11 "0600
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`4
`
`[X] A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`enclosed. 37 CFR 1.915(b)(5)
`
`|
`
`|
`
`| CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`|
`| Landscape Table on CD
`
`| Nucleotide and/or Amino Acid Sequence Submission
`If applicable, items a. - c. are required.
`a. Q Computer Readable Form (CRF)
`b. Specification Sequence Listing on:
`i. Q CD-ROM (2 copies) or CD-R (2 copies); or
`ii. Q paper
`
`|
`
`| Statements verifying identity of above copies
`
`8. O A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`[X] Reexamination of claim(s) ^
`9.
`is requested.
`10. [X] A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/SB/08, PTO-1449, or equivalent.
`11. [X] An English language translation of all necessary and pertinent non-English language patents and/or printed
`publications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.915. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 18 minutes to complete, including
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`Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND
`TO: Mail Stop Inter Partes Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`4
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`

`
`PTO/SB/58 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`12. [X] The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR 1.915(b)(3)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.915(b)(1) & (3).
`13. [X] It is certified that the estoppel provisions of 37 CFR 1.907 do not prohibit this reexamination. 37 CFR 1.915(b)(7)
`14. [X] a- It is certified that a copy of this request has been served in its entirety on the patent owner as provided in
`37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`The Caldwell Firm, LLC
`PO Box 59655, Dept. SVIPGP
`Dallas, TX 75229
`
`Date of Service:
`
`May 16, 2011
`
`; or
`
`|
`
`| b. A duplicate copy is enclosed because service on patent owner was not possible. An explanation of the efforts
`made to serve patent owner is attached. See MPEP 2620.
`
`15. Third Party Requester Correspondence Address: Direct all communications about the reexamination to:
`
`[X]
`OR
`
`•
`
`The address associated with Customer Number:
`
`26646
`
`Firm or
`Individual Name
`
`Address
`KENYON & KENYON LLP, One Broadway
`
`State
`
`NY
`
`City
`New York
`Country yg
`Telephone 212.425.7200
`16. [x] The patent is currently the subject of the following concurrent proceeding(s):
`|
`| a. Copending reissue Application No.
`[Xj b. Copending reexamination Control No. 90/011,011
`|
`| c. Copending Interference No.
`
`Zip 10004
`
`Email
`
`|
`
`| d. Copending litigation styled:
`
`WARNING: Information on this form may become public. Credit card information should not be
`included on this form. Provide credit card information and authorization on PTO-2038.
`May 16, 2011
`/Clifford A. UI rich/
`Date
`Authorized Signature
`42,194
`Clifford A. UI rich
`Registration No., if applicable
`Typed/Printed Name
`
`[Page 2 of 2]
`
`5
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`

`
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`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`3.
`
`4
`
`5.
`
`Q
`
`6
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In Re Patent of
`James E. SMITH et al.
`Patent No.
`7,241,034
`Issued
`July 10, 2007
`Title
`AUTOMATIC DIRECTIONAL CONTROL SYSTEM
`FOR VEHICLE HEADLIGHTS
`10/285,312
`October 31, 2002
`Volkswagen Group of America, Inc.
`
`Application Serial No.
`Filed
`Requester
`
`VIA EES-WEB
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION
`OF U.S. PATENT NO. 7.241.034 PURSUANT TO 37 C.F.R. g 1.915
`
`SIR:
`
`Volkswagen Group of America, Inc. ("VWGoA"), through its undersigned counsel,
`hereby respectfully requests inter partes reexamination of U.S. Patent No. 7,241,034 pursuant
`to 35 U.S.C. § 311 et seq. and the provisions of 37 C.F.R. § 1.902 et seq.
`
`7
`
`

`
`I.
`II.
`III.
`IV.
`
`V.
`VI.
`
`g
`
`TABLE OF CONTENTS
`IDENTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(1)
`COPY OF '034 PATENT PURSUANT TO 37 C.F.R. § 1.915(b)(5)
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(7)
`IDENTIFICATION OF REAL PARTY IN
`INTEREST PURSUANT TO 37 C.F.R. § 1.915(b)(8)
`PROCEEDINGS RELATED TO '034 PATENT
`THE '034 PATENT AND ITS PROSECUTION
`Prosecution of '312 Application
`Pending Ex Parte Reexamination of '034 Patent
`VII. CITATIONS OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`THAT ARE PRESENTED TO PROVIDE SUBSTANTIAL NEW
`QUESTIONS OF PATENTABILITY PURSUANT TO 37 C.F.R. § 1.915(b)(2)
`VIII. STATEMENTS POINTING OUT EACH SUBSTANTIAL NEW QUESTION
`OF PATENTABILITY PURSUANT TO 37 C.F.R. § 1.915(b)(3)
`IX. DETAILED EXPLANATIONS PURSUANT TO 37 C.F.R. § 1.915(b)(3)
`1.
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Uchida Under 35 U.S.C. § 102(b)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Takahashi Under 35 U.S.C. § 102(b)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Hussman Under 35 U.S.C. § 102(b)
`Claims 1 and 5 of the '034 Patent Are
`Anticipated by Miskin et al. Under 35 U.S.C. § 102(b)
`Claims 1 and 5 of the '034 Patent Are
`Anticipated by Leleve Under 35 U.S.C. § 102(b)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over
`The Combination of Toda et al. and Uchida Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Toda et al. and Takahashi Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Toda et al. and Hussman Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Toda et al. and Miskin et al. Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over
`The Combination of Toda et al. and Leleve Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Okuchi et al. and Uchida Under 35 U.S.C. § 103(a) ...
`
`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`g
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`g
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`10.
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`11.
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`1
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`1
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`.2
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`7
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`9
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`10
`13
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`16
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`17
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`,21
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`,22
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`.28
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`.29
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`8
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`12.
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`13.
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`14.
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`15.
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`16.
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`17.
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`18.
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`19.
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`20.
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`21.
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`22.
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`23.
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`24.
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`25.
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`26.
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Takahashi Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Hussman Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Miskin et al. Under 35 U.S.C. § 103(a)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Okuchi et al. and Leleve Under 35 U.S.C. § 103(a)
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Uchida Under 35 U.S.C. § 103(a)
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Takahashi Under 35 U.S.C. § 103(a)
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Hussman Under 35 U.S.C. § 103(a)
`Claims 1, 2, 3, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Miskin et al. Under 35 U.S.C. § 103(a) .
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Leleve Under 35 U.S.C. § 103(a)
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 20, 22, 24, 25, 37,
`38, 41, 42, 44, and 45 of the '034 Ex Parte Reexamination
`Are Anticipated by Uchida Under 35 U.S.C. § 102(b)
`Proposed Claims 1, 2, 4 to 6, 9 to 11, 17, 18,
`20 to 22, 24, 25, 28, 33, 34, 37, 38, 41, 42, 44, and
`45 of the '034 Ex Parte Reexamination Are
`Anticipated by Takahashi Under 35 U.S.C. § 102(b)
`Proposed Claims 1, 2, 4 to 6, 9, 10, 37, 38, 41, 42, 44, and
`45 of the '034 Ex Parte Reexamination Are
`Anticipated by Hussman Under 35 U.S.C. § 102(b)
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22,
`24, 25, 28, 29, 36 to 42, 44, and 45 of the '034
`Ex Parte Reexamination Are Unpatentable Over the
`Combination of Toda et al. and Uchida Under 35 U.S.C. § 103(a)
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22, 24, 25,
`28, 29, 33, 34, 36 to 42, 44, and 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the
`Combination of Toda et al. and Takahashi Under 35 U.S.C. § 103(a)
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22, 24,
`25, 28, 29, 36 to 42, 44, and 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the Combination
`Of Toda et al. and Hussman Under 35 U.S.C. § 103(a)
`
`ii
`
`,33
`
`34
`
`,36
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`,38
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`.40
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`.42
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`.43
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`.45
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`.47
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`.48
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`50
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`52
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`.53
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`56
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`.58
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`9
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`

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`27.
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`28.
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`29.
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`30.
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`31.
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`32.
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`33.
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`34.
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`35.
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`36.
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`37.
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`38.
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18, 20 to 22,
`24, 25, 28, 29, 33, 35, 37 to 42, 44, and 45 of the
`'034 Ex Parte Reexamination Are Unpatentable Over the
`Combination of Okuchi et al. and Uchida Under 35 U.S.C. § 103(a)
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18, 20 to 22, 24, 25,
`28, 29, 33 to 35, 37 to 42, 44, and 45 of the '034 Ex
`Parte Reexamination Are Unpatentable Over the Combination
`Of Okuchi et al. and Takahashi Under 35 U.S.C. § 103(a)
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18, 20 to 22, 25, 28,
`29, 33 to 35, 37 to 42, 44, and 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the Combination
`Of Okuchi et al. and Hussman Under 35 U.S.C. § 103(a)
`Proposed Claims 1 to 14, 20, 22, 24 to 26, 28, 29, 37,
`38, and 41 to 45 of the '034 Ex Parte Reexamination
`Are Unpatentable Over the Combination
`Of Gotoh and Uchida Under 35 U.S.C. § 103(a)
`Proposed Claims 1 to 12, 14, 16 to 18, 20 to 22, 24 to 26,
`28, 29, 33, 34, 37, 38, and 41 to 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the
`Combination of Gotoh and Takahashi Under 35 U.S.C. § 103(a)
`Proposed Claims 1 to 13, 24, 26, 28, 29, 37, 38, and
`41 to 45 of the '034 Ex Parte Reexamination Are
`Unpatentable Over the Combination of
`Gotoh and Hussman Under 35 U.S.C. § 103(a)
`Proposed Claims 17, 19, 21, 23, 26, and 30 to 32 of the
`'034 Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Uchida and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a)
`Proposed Claims 19, 23, 26, and 30 to 32 of the '034
`Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Takahashi and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a)
`Proposed Claims 17 to 21, 23 to 26, and 30 to 32 of the '034
`Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Hussman and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a)
`Proposed Claim 27 of the '034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of
`Uchida and Wassen et al. Under 35 U.S.C. § 103(a)
`Proposed Claim 27 of the '034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of
`Takahashi and Wassen et al. Under 35 U.S.C. § 103(a)
`Proposed Claim 27 of the '034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of Hussman
`'460 and Wassen et al. Under 35 U.S.C. § 103(a)
`
`iii
`
`61
`
`63
`
`66
`
`69
`
`,71
`
`,74
`
`,76
`
`,78
`
`80
`
`.82
`
`84
`
`.85
`
`10
`
`

`
`PROPOSED REJECTION OF PROPOSED
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 314(A)
`PROPOSED REJECTION OF PROPOSED
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 112, If 4
`FEE PURSUANT TO 37 C.F.R. § 1.915(a)
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(6)
`CONCLUSION
`
`XI.
`
`XII.
`XIII.
`XIV.
`
`87
`
`88
`.88
`
`.88
`89
`
`iv
`
`11
`
`

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

`
`IDENTIFICATION PURSUANT TO 37 C.F.R. S 1.915(b¥n
`
`Inter partes reexamination of claims 1 to 5 of U.S. Patent No. 7,241,034 ("the '034
`patent") is requested.
`
`II.
`
`COPY OF '034 PATENT PURSUANT TO 37 C.F.R. S 1.915(b)(5)
`
`Pursuant to 37 C.F.R. § 1.915(b)(5), annexed hereto as Exhibit 1 is a copy of the
`entire '034 patent including the front face, drawings, specification and claims (in double
`column format) for which inter partes reexamination is requested.
`To the best of YWGoA's knowledge, as of the filing date of this Request, no
`disclaimer, certificate of correction, or reexamination certificate has been issued in
`connection with the '034 patent.
`
`III. CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)m
`
`Pursuant to 37 C.F.R. § 1.915(b)(7), VWGoA certifies that the estoppel provisions of
`37 C.F.R. § 1.907 do not prohibit the inter partes reexamination.
`
`IV.
`
`IDENTIFICATION OF REAL PARTY IN
`INTEREST PURSUANT TO 37 C.F.R. S 1.915(b¥8)
`
`The real party in interest is VOLKSWAGEN GROUP OF AMERICA, INC., which is
`a subsidiary of VOLKSWAGEN AG.
`
`V.
`
`PROCEEDINGS RELATED TO '034 PATENT
`
`Although VWGoA is not obligated to inform the Office of proceedings related to the
`'034 patent, the Office is hereby informed of the following proceeding that relates to the '034
`patent which is pending as of the filing date of this Request:
`
`13
`
`

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

`
`U.S. Provisional Application No. 60/356,703, filed on February 13, 2002, and U.S.
`Provisional Application No. 60/335,409, filed on October 31, 2001.
`
`Prosecution of '312 Application
`As originally filed, the '312 application included thirteen claims, of which application
`claim 1 was the only independent claim. Application claim 1 is reproduced below:
`
`1. An automatic directional control system for a vehicle
`headlight comprising:
`
`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.
`
`An Office Action was issued on December 23, 2003, in which: (1) application claims
`1 to 2, 4 to 8, and 10 to 13 were rejected under 35 U.S.C. § 102(e) as anticipated by U.S.
`Patent No. 6,305,823 ("Toda et al."); (2) application claims 1 to 2, 4 to 8, and 10 to 13 were
`rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 6,193,398 ("Okuchi et
`al."); and (3) application claims 1 to 3 and 9 were rejected under 35 U.S.C. § 102(b) as
`anticipated by U.S. Patent No. 5,909,949 ("Gotoh").
`In an Amendment submitted on March 23, 2004, application claim 6 was cancelled,
`and application claims 1 and 7 were amended as follows:
`1. An automatic directional control system for a vehicle
`headlight comprising:
`
`a sensor that is adapted to generate a signal that is
`representative of a condition of the vehicle, said sensed
`condition includes one or more of road speed, steering angle,
`pitch, and suspension height of the vehicle;
`
`a controller that is responsive to said sensor signal for
`generating an output signal only when said sensor signal
`changes by more than a predetermined amount; and
`
`3
`
`15
`
`

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

`
`Concurrent with the filing of a Request for Continued Examination on February 17,
`2005, the applicants again argued that the claims, as amended on March 23, 2004, were
`allowable. Again, the applicants argued in particular that (1) "None of the art of record is
`believed to show or suggest a controller that is responsive to the sensor signal for generating
`an output signal only when the sensor signal changes by more than a predetermined amount,"
`as recited in amended claim 1, and (2) "None of the art of record is believed to show or
`suggest a controller that is responsive to a rate of change of the sensor signal for generating
`the output signal," as recited in amended claim 7.
`Request for Continued Examination,
`Remarks at pages 2 to 4 (emphasis in o