REQUEST FOR INTER PARTES REVIEW
`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of
`
`Docket No: PR00078
`
`
`
`Issued: July 10, 2007
`
`U.S. Patent No. 7,241,034
`
`Application No. 10/285.312
`
`Filing Date: July 20, 2007
`
`Rexamination Cert: June 14, 2013
`
`For: AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE
`HEADLIGHTS
`
` DECLARATION OF DR. A. GALIP ULSOY
`
`
`
`
`
`
`
`TOYOTA EX. 1012
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION AND BACKGROUND ...................................................... 1
`
`SUMMARY OF MY OPINIONS ...................................................................... 4
`
`A.
`
`Instructions ............................................................................................ 5
`
`B. Grounds of Unpatentability ................................................................... 9
`
`III.
`
`SUMMARY OF THE ’034 PATENT ............................................................. 11
`
`A.
`
`B.
`
`C.
`
`Brief Description ................................................................................. 11
`
`Summary of the Prosecution History of the ’034 patent ..................... 13
`
`Prior Ex Parte and Inter Partes Reexaminations ................................ 16
`
`IV. CLAIM CONSTRUCTION ............................................................................. 19
`
`A.
`
`“Generating at least one output signal only when at least
`one of said two or more sensor signals changes by more
`than a predetermined minimum threshold amount” ............................ 20
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT
`LEAST CLAIMS 7, 14-16, AND 31 OF THE ’034 PATENT
`ARE UNPATENTABLE .................................................................................. 21
`
`A. Overview of Kato JP ’191 ................................................................... 21
`
`B. Overview of Takahashi GB ’774 ........................................................ 23
`
`C. Overview of Speak US '488 ................................................................ 27
`
`D. Overview of Uguchi JP ’042 .............................................................. 31
`
`E.
`
`Ground 1: Claims 7, 14-16, and 31 are obvious over Kato
`in view of Takahashi ........................................................................... 34
`
`1.
`
`2.
`
`3.
`
`Summary of Ground 1 .............................................................. 34
`
`Kato ........................................................................................... 35
`
`Takahashi .................................................................................. 36
`
`F.
`
`Ground 2: Claims 7, 14-16, and 31 are obvious over
`Speak in view of Takahashi and Uguchi ............................................. 45
`
`1.
`
`Summary of Ground 2 .............................................................. 45
`
`ii
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`2.
`
`3.
`
`4.
`
`Speak ......................................................................................... 46
`
`Takahashi .................................................................................. 48
`
`Uguchi ....................................................................................... 51
`
`VI. CONCLUSION ................................................................................................. 61
`
`
`
`iii
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`I, A. Galip Ulsoy, of Dexter, Michigan, declare as follows:
`
`U.S. Patent No. 7,241,034
`
`
`
`
`
`
`
`
`
`I.
`INTRODUCTION AND BACKGROUND
`1. My background, education, and professional experiences are summarized
`
`below.
`
`2.
`
`I am currently the C.D. Mote Jr. Distinguished University Professor Emeritus
`
`and the William Clay Ford Professor Emeritus of Manufacturing at the University
`
`of Michigan (UM) in Ann Arbor, where I have worked since 1980.
`
`3.
`
`I have a B.S. Degree in Engineering (Swarthmore College, 1973), an M.S.E.
`
`degree in Mechanical Engineering (Cornell University, 1975) and a Ph.D. degree in
`
`Mechanical Engineering (University of California, Berkeley).
`
`4.
`
`I have also held temporary full-time positions as the Director of Civil and
`
`Mechanical Systems at the US National Science Foundation and as a Visiting
`
`Researcher at the Ford Scientific Research Laboratories. My expertise is in the
`
`automatic control of mechanical systems, especially manufacturing systems (e.g.,
`
`computer controlled machine tools, robotics) and automotive systems (e.g.,
`
`accessory drive belts, suspensions, active safety systems).
`
`5.
`
`I have taught courses at UM in dynamical systems, automatic control,
`
`automotive control systems, manufacturing systems, etc. In addition to the
`
`
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`summary below, which emphasizes the most relevant topics, a copy of my current
`
`curriculum vitae (CV) is included in the Appendix.
`
`6.
`
`I have taught a course on Vehicle Control Systems at the General Motors
`
`Technical Center for their engineering research staff. I am the author of four books,
`
`including the textbook Automotive Control Systems (Cambridge University Press,
`
`2012), and over 300 journal and conference papers.
`
`7. My research work includes many topics related to the dynamics and control
`
`of automotive systems, including active suspensions, accessory belt drive systems,
`
`and active safety systems to prevent run-off-road accidents.
`
`8.
`
`I am a co-inventor on three US and one European patent. Three of these
`
`patents are related to automotive control technologies (i.e., emergency steering of a
`
`vehicle via differential right-left braking, and estimation of the vehicle yaw rate
`
`using inexpensive accelerometers).
`
`9.
`
`I have also spent one year and several summers as a full-time Visiting
`
`Researcher at the Ford Scientific Research Laboratories where I worked on active
`
`suspensions, vehicle yaw rate estimation and control of stamping presses and
`
`received two Ford Innovation awards. I also worked with Ford and the US Army
`
`on a vehicle active safety system to prevent road-departure accidents, which was
`
`2
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`demonstrated and evaluated on test tracks and on Interstate 696 near Detroit. I have
`
`also worked with the US Army on control of small autonomous mobile robots used
`
`for explosive ordinance disposal, and served as Director of the US Army sponsored
`
`Ground Robotics Reliability Center at UM.
`
`10. Given the experience disclosed above, I believe I have an excellent
`
`understanding of the state of the art during the period of time of the patents under
`
`discussion and can provide sound judgment as to how persons skilled in the art
`
`would have understood the technical issues at the time.
`
`11.
`
`I am not currently, nor have I ever been, employed by TOYOTA MOTOR
`
`CORPORTATION; TOYOTA MOTOR SALES, U.S.A, INC.; or DENSO
`
`CORPORATION, or any affiliate or subsidiary thereof.
`
`12.
`
`I receive compensation for my time, billed at my normal hourly rate for time
`
`actually spent reviewing materials and performing my analysis of the technical
`
`issues relevant to this matter. I will not receive any compensation that is dependent
`
`on the opinions I formulate or offer below, nor will I receive any added
`
`compensation based on the outcome of the inter partes review of U.S. patent
`
`7,241,034 (hereafter, the ‘034 patent).
`
`3
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`13.
`
`In writing this Declaration, I have been asked to provide certain opinions
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`related to the patentability of the ‘034 patent. In doing so, I have considered my
`
`own work experience in research and development of feedback control systems, and
`
`their application in the automotive industry. I believe that these experiences render
`
`me well-qualified to judge the level of ordinary skill in the art and the anticipation
`
`or obviousness of claims in view of prior art.
`
`II.
`14.
`
`SUMMARY OF MY OPINIONS
`
`It is my opinion that claims 3, 14-16 and 31 of the Reexamination Certificate
`
`of the '034 Patent" (Ex. 1001) are unpatentable. My opinions are based on my
`
`expertise in the technology of the '034 patent, as well as my review of the '034
`
`patent, its file history, the reexamination file history and the prior art asserted by the
`
`Petitioner. If the patent owner is allowed to submit additional evidence pertaining to
`
`the validity of the '034 patent, I intend to review that as well and update my analysis
`
`and conclusions as appropriate, and allowed under the rules of this proceeding.
`
`15.
`
`I have reviewed and/or analyzed at least the publications and materials listed
`
`at Section II.B. below, in addition to other materials I may cite in my Declaration. It
`
`should be noted that the opinions I express in this Declaration are not exhaustive of
`
`my opinions on patentability of any claims in the ‘034 patent. Therefore, if a
`
`4
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`specific point is not addressed, it should not be construed that my opinion on that
`
`point indicates my agreement or disagreement with the patentability related to that
`
`point.
`
`A. Instructions
`
`16.
`
`I am not an attorney. My analysis and opinions are based on my expertise in
`
`this technical field, as well as the instructions I have been given by counsel for the
`
`legal standards relating to patent validity.
`
`17. The materials I have reviewed in connection with my analysis include the
`
`'034 patent, its file history, the reexamination file history, and the cited references
`
`and exhibits.
`
`18.
`
`I understand that patents are presumed to be valid. I understand that
`
`invalidity in this proceeding must be proven by a preponderance of evidence, and
`
`that is the standard I have used throughout my report. Further, I understand that
`
`each patent claim is considered separately for purposes of invalidity.
`
`19.
`
`I am informed that a patent claim is invalid as "anticipated" if each and every
`
`feature of the claim is found, expressly or inherently, in a single prior art reference
`
`or product. Claim limitations that are not expressly found in a prior art reference are
`
`inherent if the prior art necessarily functions in accordance with, or includes, the
`
`5
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`claim limitations. It is acceptable to examine evidence outside the prior art
`
`reference (extrinsic evidence) in determining whether a feature, while not expressly
`
`discussed in the reference, is necessarily present in it.
`
`20.
`
`I understand that a patent claim is invalid as "obvious" if, in view of a prior
`
`art reference or a combination of prior art references, it would have been obvious to
`
`a person of ordinary skill in the art at the time of the invention, taking into account:
`
`the scope and content of the prior art; the differences between the prior art and the
`
`claim under consideration; and the level of ordinary skill in the art.
`
`21. A person of ordinary skill in the art of vehicle control systems at the time of
`
`the alleged invention would have had a Bachelor's degree in physics, mechanical or
`
`electrical engineering or equivalent coursework and at least two years of experience
`
`in the area of vehicle control systems.
`
`22.
`
`I am informed that legal principles regarding invalidity of a claim due to
`
`obviousness were addressed by the U.S. Supreme Court. I am informed that the
`
`principles relating to a "motivation," "suggestion," or "teaching" in the prior art to
`
`combine references to produce the claimed alleged invention remain an appropriate
`
`approach in a validity analysis. I am informed that the suggestion or motivation
`
`may be either explicit or implicit, may come from knowledge generally available to
`
`6
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`one of ordinary skill in the art, and may come from the nature of the problem to be
`
`solved. The test for an implicit motivation, suggestion, or teaching is what the
`
`combined teachings, knowledge of one of ordinary skill in the art, and the nature of
`
`the problem to be solved as a whole would have suggested to those of ordinary skill
`
`in the art. The problem examined is not the specific problem solved by the
`
`invention, but the general problem that confronted the inventor before the invention
`
`was made.
`
`23. As I understand it, it is no longer always required to present evidence of a
`
`teaching, suggestion, or motivation to combine prior art references for purposes of
`
`determining whether an invention is obvious. Prior art can be combined based on
`
`either a teaching, suggestion, or motivation from the prior art itself, or from a
`
`reasoned explanation of an expert or other witness.
`
`24. A patent claim composed of several elements, however, is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art. In order to prove obviousness, it must be shown that the
`
`improvement is not more than the predictable use of prior-art elements according to
`
`their established functions. To determine whether there was an apparent reason to
`
`combine the known elements in the way a patent claims, it will often be necessary
`
`7
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`to look to interrelated teachings of multiple pieces of prior art, to the effects of
`
`demands known to the design community or present in the marketplace, and to the
`
`background knowledge possessed by a person having ordinary skill in the art. Also,
`
`in determining obviousness, one must be aware of the distortion caused by
`
`hindsight bias and be cautious of arguments reliant upon hindsight reasoning An
`
`obviousness argument cannot be sustained by mere conclusory statements. Instead,
`
`it must be some articulated reasoning with some rational underpinning to support
`
`the legal conclusion of obviousness.
`
`25.
`
`In an obviousness analysis, it is my understanding that there are "secondary
`
`considerations" that should be analyzed if they apply. I am told that these
`
`considerations include (1) whether the prior art teaches away from the claimed
`
`invention, (2) whether there was a long felt but unresolved need for the claimed
`
`invention, (3) whether others tried but failed to make the claimed invention,
`
`skepticism of experts, (4) whether the claimed invention was commercially
`
`successful, (5) whether the claimed invention was praised by others, and (6)
`
`whether the claimed invention was copied by others.
`
`26.
`
`I have also been instructed that ultimately claims are construed in light of
`
`how one of ordinary skill in the art would understand the claims. It is my
`
`8
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`understanding that what is to be considered includes the claims, the patent
`
`specification and drawings, and the prosecution history, including any art listed by
`
`the Examiner or the applicant. It is my understanding that information external to
`
`the patent, including expert and inventor testimony and unlisted prior art, are to be
`
`considered in construing the claims only if ambiguities remain. However, expert
`
`testimony may be useful in helping to explain the technology. I further understand
`
`technical dictionaries, encyclopedias, and treatises may also be used in claim
`
`construction, as long as these definitions do not contradict any definition found in
`
`or ascertained by a reading of the patent documents. In my analysis, I have
`
`considered and applied the proposed claim constructions of the Petitioners, unless
`
`otherwise indicated.
`
`27.
`
`I understand that an issued U.S. patent is presumed to be valid, and can be
`
`challenged in this proceeding on invalidity grounds only upon proof by a
`
`preponderance of evidence.
`
`B. Grounds of Unpatentability
`
`28.
`
`It is my opinion that claims 7, 14-16, and 31 of the Reexamination Certificate
`
`(Ex. 1002) of the ’034 Patent (Ex. 1001) are unpatentable for the grounds set forth
`
`in the tables below. An explanation of how claims 7, 14-16, and 31 are
`
`9
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`unpatentable, including the identification of where each element is found in the
`
`prior art references and the relevance of each of the prior art references, is provided
`
`in the form of detailed claim charts.
`
`Ground
`
`Ground 1
`
`’034 Patent Claims Basis for Rejection
`Obvious over Kato (Exhibit 1006) in view of
`
`1, 14-16, and 31
`
`Ground 2
`
`1, 14-16, and 31
`
`
`
`Takahashi (Ex. 1008)
`
`Obvious over Speak (Exhibit 1009) in view of
`
`Takahashi and Uguchi (Exhibit 1010)
`
`29. The ’034 patent (Ex. 1001) was filed October 31, 2002. It claims priority to
`
`U.S. provisional application No. 60/369,447 filed April 2, 2002, U.S. provisional
`
`application No. 60/356,703 filed February 13, 2002, and U.S. provisional
`
`application No. 60/335,409 filed October 31, 2001.
`
`30.
`
`I understand that the following references are prior art and can be used in
`
`grounds of unpatentability of the claims of the '034 patent:
`
`
`
`
`
`
`
`
`
`Kato JP H10-324191 (Ex. 1006 and English translation Ex. 1007).
`
`Takahashi GB 2,309,774 (Ex. 1008).
`
`Speak US 5,868,488 '488 (Ex. 1009).
`
`Uguchi JP 'H01-223042 (Ex. 1010 and English translation Ex. 1011).
`
`10
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`III.
`SUMMARY OF THE ’034 PATENT
`
`A. Brief Description
`
`U.S. Patent No. 7,241,034
`
`
`
`
`
`31. The ’034 patent “relates in general to headlights that are provided on vehicles
`
`for illuminating dark road surfaces or other areas in the path of movement [and] in
`
`particular…to an automatic directional control system for such vehicle headlights.”
`
`(Ex. 1001, ’034 patent at 1:15-19.) According to the ’034 patent, “headlights have
`
`been mounted on…vehicle[s] in fixed positions relative thereto such that the beams
`
`of light are projected therefrom at predetermined directional aiming angles relative
`
`to the vehicle.” (Id. at 1:36-39.) The ’034 patent notes that “[a]lthough such fixed
`
`aiming angle headlight systems have and continue to function adequately, they
`
`cannot alter the directional aiming angles of the headlight to account for changes in
`
`the operating conditions of the vehicle.” (Id. at 1:39-43.) “For example, if the speed
`
`of the vehicle is increased…[or] decreased…[or] if the vehicle turns a corner, it
`
`would be desirable to adjust the aiming angle of the headlights” to more brightly
`
`illuminate particular portions of the road surface. (Id. at 1:43-56.)
`
`32. The ’034 patent notes that “[t]o accomplish this, it is known to provide a
`
`directional control system for vehicle headlights that is capable of automatically
`
`altering the directional aiming angles of the headlights to account for changes in
`
`the operating conditions of the vehicle.” (Id. at 1:57-61.) Yet, the ’034 patent
`
`11
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`notes that “such known automatic headlight directional control systems have been
`
`found to be deficient for various reasons” and proposes a structure for addressing
`
`these deficiencies. (Id. at 1:63-67). To accomplish this, the ’034 patent employs
`
`“operating condition sensors…that generate signal…representative of an operating
`
`condition of the vehicle.” (Id. at 2:1-13.) “A controller is responsive to the sensor
`
`signal for generating an output signal” and the output signal is used “to effect
`
`movement” of “[a]n actuator…adapted to be connected to the headlight.” (Id. at
`
`2:15-20.)
`
`33. According to one embodiment of the ’034 patent, as shown in Figure 7,
`
`directional angle adjustments of the actuator are automatically implemented only
`
`when the rate of change of one or more of the sensed condition values of the
`
`sensors is less than or greater than a predetermined value. (Id. at 13:7-22.) In this
`
`embodiment, a first value of a sensor is initially read by the controller and, after a
`
`predetermined amount of time, a second value of the sensor is read. (Id. at 13:23-
`
`29.) The difference between these values divided by the predetermined amount of
`
`time is considered as the rate of change of the sensed condition. (Id. 13:33-37.)
`
`12
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`B. Summary of the Prosecution History of the ’034 patent
`
`34. The application that eventually issued as the ’034 patent, U.S. App. No.
`
`10/285,312, was filed on October 31, 2002. (See Ex. 1003, File History at pp. 1-
`
`36.) U.S. App. No. 10/285,312 originally included thirteen claims, of which only
`
`claim 1 was independent. (Id. at p. 25.) Original independent claim 1 recited:
`
`
`
`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.
`
`35.
`
`In the first Office Action, claims 1-13 were rejected as being anticipated by
`
`U.S. Patent No. 6,305,823 (“Toda”); U.S. Patent No. 6,193,298 (“Okuchi”); and
`
`U.S. Patent No. 5,909,949 (“Gotoh”). In response, the Applicant amended claim 1
`
`to include the feature of claim 6, as shown below with underlining showing
`
`additions (Id. at page 74):
`
`13
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`
`
`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
`
`
`
`an actuator that is adapted to be connected to the headlight to
`
`effect movement thereof in accordance with said output signal.
`
`36. Applicant provided only a general statement that "none of the art of record is
`
`believe to show or suggest" this added feature. (Id. at p. 77.) The Examiner then
`
`issued a Final Rejection in which all pending claims were still rejected as
`
`anticipated by Toda, Okuchi, and Gotoh. (Id. at pp. 85-87.)
`
`37. Applicant responded by filing a Notice of Appeal and a Request for Pre-
`
`Appeal Brief Review, which did not result in a reversal of the rejection. (Id. at p.
`
`141.) The Applicant subsequently filed a Request for Continued Examination
`
`(RCE) with an amendment adding new independent claim 14. (Id. at p. 212.) A
`
`14
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`comparison between independent claim 14 and previously presented claim 1 is
`
`provided below (additions shown with underlining):
`
`
`
`14. 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 minimum threshold amount to prevent said
`
`actuator from being operated continuously or unduly frequently in
`
`response to relatively small variations in the sensed operating
`
`condition; and
`
`
`
`an actuator that is adapted to be connected to the headlight to
`
`effect movement thereof in accordance with said output signal.
`
`38. The Examiner again maintained the same rejections. (Id. at pp. 222-25.) The
`
`Applicant then filed remarks and conducted a personal interview with the Examiner.
`
`(Id. at pp. 229-31.) After the interview, the Applicant filed an amendment canceling
`
`all of the claims except for recently added independent claim 14 and dependent
`
`claims 2-5, which were amended to depend from recently added independent claim
`
`15
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`14. (Id. at pp. 234-36.) The application was then allowed, and claim 14 issued as
`
`claim 1 of the ’034 patent.
`
`C. Prior Ex Parte and Inter Partes Reexaminations
`
`39. Ex Parte Reexamination Request No. 90/011,011 was filed on July 10, 2010,
`
`(Ex. 1004) and Inter Partes Reexamination Request No. 95/001,621 was filed by
`
`Volkswagen Group of America, Inc. (Ex. 1005) on May 16, 2001. The two
`
`proceedings were merged into a single proceeding on February 23, 2012.
`
`40. During the reexamination proceedings, the claims were amended in two
`
`stages to ultimately lead to an Allowance.
`
`41. First, in an Amendment filed April 27, 2012 (Ex. 1005 at p. 980),
`
`independent claim 1 was amended as follows (additions shown with underlining,
`
`deletions shown with double brackets or strikethrough):
`
`
`
`1. An automatic directional control system for a vehicle
`
`headlight comprising:
`
`
`
`[[a]] two or more sensors that [[is]] are each adapted to generate
`
`a signal that is representative of at least one of a plurality of sensed
`
`conditions of [[the]] vehicle, said sensed conditions including at least
`
`[[es one or more of road speed,]] steering angle [[,]] and pitch [[, and
`
`suspension height]] of the vehicle;
`
`16
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`
`
`a controller that is responsive to said two or more sensor signals
`
`for generating [[an]] at least one output signal only when said at least
`
`one of the two or more sensor signals changes by more than a
`
`predetermined minimum threshold amount to prevent [[said]] at least
`
`one of the two or more actuators from being operated continuously or
`
`unduly frequently in response to relatively small variations in the
`
`[[sensed]] operating conditions; and
`
`
`
`[[an]] said two or more actuators [[that is]] each being adapted
`
`to be connected to the headlight to effect movement thereof in
`
`accordance with said at least one output signal.
`
`42. An Office Action dated June 29, 2012, rejected most of the claims, including
`
`claim 1 reproduced above, but indicated claim 3, depending on claim 1, (amended
`
`during the Reexamination proceedings) and claims 7, depending on indirectly from
`
`claim 1 via claim 6, 11, and 38-41 (added during the Reexamination proceedings)
`
`as being allowable. (Id. at p. 1013). The Office Action rejected the claims as
`
`obvious over the combination of Toda and Takahashi, and indicated that Takahashi
`
`meets the limitation "generating at least one output signal only when said at least
`
`one of the two or more sensor signals changes by more than a predetermined
`
`minimum threshold amount to prevent…one of two or more actuators from being
`
`operated continuously.” (Id. at p. 1053).
`
`17
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`43.
`
`In an Amendment filed July 26, 2012, the Patentee rewrote the allowable
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`claims 3 and 7 into independent form with slight additional changes thereto,
`
`ultimately leading to the issuance of the Reexamination Certificate on June 14,
`
`2013 (Id. at p 1169-1175, new claim 7 is at p. 1170). A comparison between the
`
`new independent claim 7 (which ultimately issued) and previously presented claim
`
`1 above is provided below (additions shown with underlining, deletions shown with
`
`double brackets or strikethrough):
`
`1. An automatic directional control system for a vehicle headlight
`
`comprising:
`
`
`
`two or more sensors that are each adapted to generate a signal
`
`that is representative of at least one of a plurality of sensed conditions
`
`of vehicle, said sensed conditions including at least steering angle
`
`and pitch of the vehicle;
`
`
`
`a controller that is responsive to said two or more sensor signals
`
`for generating at least one output signal only when said at least one of
`
`the two or more sensor signals changes by more than a predetermined
`
`minimum threshold amount to prevent at least one of the two or more
`
`actuators from being operated continuously or unduly frequently in
`
`response to relatively small variations in the operating conditions; and
`
`
`
`said two or more actuators each being adapted to be connected
`
`to the headlight to effect movement thereof in accordance with said at
`
`18
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`least one output signal;
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`
`
`wherein said two or more sensors include a first sensor and a
`
`second sensor; and
`
`
`
`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.
`
`44. Thus, claims 3-39 of the Reexamination Certificate ultimately issued due to
`
`the added claim features of two actuators and two sensors to sense at least a pitch
`
`and a steering angle (See Ex. 1002, Reexamination Certificate).
`
`
`
`IV. CLAIM CONSTRUCTION
`45.
`
`I have been informed that a claim subject to inter partes review is given its
`
`“broadest reasonable construction in light of the specification of the patent in which
`
`it appears” and that the ordinary and customary meaning applies unless the inventor
`
`has set forth a special meaning for a term in the specification. Here, a person of
`
`ordinary skill in the art at the time of the alleged invention would have at least a
`
`bachelor’s degree in electrical engineering, physics, or an equivalent field and at
`
`least two years of related industry experience. The person of ordinary skill in the
`
`art would have a working understanding of microprocessors for controlling
`
`19
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`automotive systems, including controls using sensors and actuators. Although the
`
`claim terms are understandable by a person having ordinary skill without the need
`
`for construction, I have provided a construction for the following limitation of the
`
`'034 patent.
`
`A. “Generating at least one output signal only when at least one of said
`two or more sensor signals changes by more than a predetermined
`minimum threshold amount”
`
`46. The recitation in independent claim 7 that the controller “is responsive to said
`
`two or more sensor signals for generating at least one output signal only when at
`
`least one of said two or more sensor signals changes by more than a predetermined
`
`minimum threshold amount” means that, for a particular sensed condition at least
`
`two signal values are generated, an initial value and a later value. The change
`
`between the values is compared to a threshold to determine whether the change is
`
`greater than the threshold. An output signal to effect movement of the headlight is
`
`output to the actuator only if the change is greater than the threshold amount. (Ex.
`
`1001, '034 patent, at 13:7-56 (see 13:11-12 & 13:21 "or greater than")). The plain
`
`claim language does not preclude there being an additional threshold or other
`
`requirement that must be met as well. That is, the decision to generate the "at least
`
`one output signal" may also be based on determinations other than whether the
`
`20
`
`

`
`Declaration of Dr. A. Galip Ulsoy
`
`
`
`
`
`
`U.S. Patent No. 7,241,034
`
`change between the values is determined to be greater than the threshold. The only
`
`requirement is that the "at least one output signal" is not generated for the particular
`
`sensed condition when the change between the values is equal to or less than the
`
`threshold.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`CLAIMS 7, 14-16, AND 31 OF THE ’034 PATENT ARE
`UNPATENTABLE
`47. As discussed in detail below, it is my opinion that claims 7, 14-16, and 31 of
`
`the ’034 patent are (1) obvious over Kato (Exhibit 1006) in view of Takahashi.
`
`(Exhibit 1008) and are also (2) obvious over Speak (Exhibit 1009) in view of
`
`Takahashi and Uguchi (Exhibit 1010).
`
`A. Overview of Kato JP ’191
`
`48. Kato relates to a “front axis control device…applied to a mot