REQUEST FOR INTER PARTES REVIEW
`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of
`
`Docket No: PR00078
`
`James E. Smith, et al.
`
`Issued: July 10, 2007
`
`U.S. Patent No. 7,241,034 C1
`
`Application No. 10/285,312
`
`Filing Date: October 31, 2002
`
`
`
`For: AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE
`HEADLIGHTS
`
`
`
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,241,034 UNDER 35 U.S.C. §§311-319, 37 C.F.R. § 42
`
`Mail Patent Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner Toyota
`
`Motor Corporation (“Toyota” or “Petitioner”) respectfully request Inter Partes
`
`Review of claims 7, 14-16, and 31 of U.S. Patent No. 7,241,034 C1 (Ex. 1001, “the
`
`’034 patent”), which was filed on October 31, 2002, issued on July 10, 2007, to
`
`James E. Smith, et al., and for which a reexamination certificate issued June 14,
`
`2013. The '034 patent is currently assigned to Adaptive Headlamp Technologies,
`
`Inc. (“Patent Owner”) according to the US Patent and Trademark Office
`
`

`
`assignment records. There is a reasonable likelihood that Petitioner will prevail
`
`with respect to at least one of the claims challenged in this Petition.
`
`ii
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`

`
`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .......................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. §
`42.8(b)(1) ............................................................................................... 1
`
`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ..................... 1
`
`LEAD AND BACK-UP COUNSEL .................................................... 2
`
`SERVICE INFORMATION ................................................................. 3
`
`II.
`
`PAYMENT OF FEES — 37 C.F.R. § 42.103 ................................................... 3
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104............................ 4
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 4
`
`B.
`
`C.
`
`Prior Art Patents and Printed Publications ............................................ 4
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`and Relief Requested ............................................................................. 5
`
`IV. SUMMARY OF THE ’034 PATENT ............................................................... 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`Brief Description ................................................................................... 6
`
`Summary of the Prosecution History of the ’034 patent ....................... 7
`
`Prior Ex Parte and Inter Partes Reexaminations ................................ 10
`
`Prior Inter Partes Reviews .................................................................. 14
`
`V.
`
`CLAIM CONSTRUCTION ............................................................................. 14
`
`“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” ...................................... 15
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT
`LEAST CLAIMS 7, 14-16, AND 31 OF THE ’034 PATENT
`ARE UNPATENTABLE .................................................................................. 16
`
`A. Overview of Kato JP ’191 ................................................................... 16
`
`B. Overview of Takahashi GB ’774 ........................................................ 18
`
`C. Overview of Speak US '488 ................................................................ 21
`
`D. Overview of Uguchi JP ’042 .............................................................. 25
`
`iii
`
`

`
`E.
`
`Ground 1: Claims 7, 14-16, and 31 are obvious over Kato
`in view of Takahashi ........................................................................... 28
`
`1.
`
`2.
`
`3.
`
`Summary of Ground 1 .............................................................. 28
`
`Kato ........................................................................................... 29
`
`Takahashi .................................................................................. 30
`
`F.
`
`Ground 2: Claims 7, 14-16, and 31 are obvious over
`Speak in view of Takahashi and Uguchi ............................................. 38
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Ground 2 .............................................................. 38
`
`Speak ......................................................................................... 40
`
`Takahashi .................................................................................. 42
`
`Uguchi ....................................................................................... 45
`
`VII. CONCLUSION ................................................................................................. 54
`
`
`
`iv
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`

`
`EXHIBITS
`
`
`
`Exhibit
`
`Description
`
`U.S. Patent No. 7,241,034
`
`Reexamination Certificate 7,241,034 C1
`
`File History of U.S. Patent No. 7,241,034
`
`File History of Ex Parte Reexamination of U.S. Patent No.
`7,241,034
`
`File History of Inter Partes Reexamination of U.S. Patent No.
`7,241,034
`
`Kato JP H10-324191
`
`Certified English Translation of Kato
`
`Takahashi GB 2,309,774
`
`Speak US 5,868,488
`
`Uguchi JP H01-223042
`
`Certified English Translation of Uguchi
`
`Expert Declaration of Dr. A. Galip Ulsoy
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`
`
`v
`
`

`
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`
`Petitioner TOYOTA MOTOR CORPORATION is a real party-in-interest.
`
`TOYOTA MOTOR SALES, U.S.A., INC. and DENSO Corporation are also a real
`
`parties-in-interest.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ’034 patent is
`
`currently the subject of the following on-going litigations: Adaptive Headlamp
`
`Technologies, Inc. v. Hyundai Motor America, 1:15-cv-00563-GMS (D. Del.);
`
`Adaptive Headlamp Technologies, Inc. v. FCA US LLC, et al., No. 1:15-cv-00073
`
`(D. Del.); Adaptive Headlamp Technologies, Inc. v. Toyota Motor Sales, U.S.A.,
`
`Inc., 1:15-cv-00779 (D. Del.); Adaptive Headlamp Technologies, Inc. v. Volvo
`
`Cars of North America, LLC, 1:15-cv-00780 (D. Del.); Adaptive Headlamp
`
`Technologies, Inc. v. Mazda Motor of North America, Inc., 1:15-cv-00782 (D.
`
`Del.); and Adaptive Headlamp Technologies, Inc. v. Nissan North America Inc.,
`
`1:15-cv-00074 (D. Del.).
`
`The '034 patent was also the subject of the following litigations, which are
`
`now settled: Adaptive Headlamp Technologies, Inc. v. Mercedes-Benz USA, LLC,
`
`No. 1:15-cv-00075 (D. Del.); Adaptive Headlamp Technologies, Inc. v. BMW of
`
`
`
`

`
`
`North America, LLC, 1:14-cv-00962 (D. Del.); and Adaptive Headlamp
`
`Technologies, Inc. v. General Motors LLC, 1:15-cv-00781 (D. Del.).
`
`The claims of this patent were the subject of an Ex Parte Reexamination
`
`filed by the Patentee (Ex. 1004, Ex Parte Reex. No. 90/011,011) and an Inter
`
`Partes Reexamination initiated in response to a petition filed by Volkswagen
`
`Group of America, Inc. (Ex. 1005, Inter Partes Reex. No. 95/001,621.) A
`
`reexamination certificate issued July 30, 2015.
`
`The ’034 patent is the subject of three other pending petitions for Inter
`
`Partes Review (“IPR”). A first petition by Koito Manufacturing Co., Ltd.,
`
`IPR2016-00079, was filed October 23, 2015, and a second petition by SL Corp.,
`
`Hyundai Motor Company, and Hyundai Motor America, IPR2016-00193, was
`
`filed November 13, 2015. The petitions have been instituted. Another Petition for
`
`IPR filed by SL Corp., Hyundai Motor Company, and Hyundai Motor America,
`
`IPR2016-01368, was filed July 6, 2016, and is at the pre-institution stage.
`
`Two other petitions for IPR were terminated before institution: a petition by
`
`BMW of North America, LLC, IPR2016-00196, filed November 16, 2015, and a
`
`petition by Mercedes-Benz USA, LLC, IPR2016-01368, filed January 26, 2016.
`
`C. LEAD AND BACK-UP COUNSEL
`
`Petitioners provide the following designation of counsel.
`
`2
`
`

`
`
`
`
`
`LEAD COUNSEL
`William H. Mandir (Reg No 32,156)
`(wmandir@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`T: 202-293-7060, F: 202-293-7068
`
`BACK-UP COUNSEL
`John M. Bird (Reg No 46,027)
`(jbird@sughrue.com)
`Fadi N. Kiblawi (Reg. No. 61,973)
`(fkiblawi@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`T: 202-293-7060, F: 202-293-7068
`
`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
`
`Petition.
`
`D. SERVICE INFORMATION
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel, above. Service of any documents via
`
`hand-delivery may be made at the postal mailing addresses listed above.
`
`Petitioners also consent to electronic service by email at
`
`Toyota-AHT@sughrue.com.
`
`II.
`
`
`
`PAYMENT OF FEES — 37 C.F.R. § 42.103
`
`Petitioner has concurrently paid the $23,000 Inter Partes Review fees set in
`
`37 C.F.R. § 42.15(a). Petitioners authorize the Patent and Trademark Office to
`
`charge any additional required fees to be charged to Deposit Account No. 19-
`
`4880.
`
`3
`
`

`
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`
`
`Petitioners certify that U.S. Patent 7,241,034 C1 (“’034 patent") (Ex. 1001)
`
`is available for Inter Partes Review and that Petitioners are not barred or estopped
`
`from requesting an Inter Partes Review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`B. Prior Art Patents and Printed Publications
`
`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.
`
`Kato JP H10-324191 (Ex. 1006) published December 8, 1998, qualifies as
`
`prior art under 35 U.S.C. § 102(b). JP ’191 was published in Japanese. Pursuant to
`
`35 C.F.R. § 42.63(b), an English translation and declaration attesting to the
`
`accuracy of the translation accompanies this Petition (Ex. 1007).
`
`Takahashi GB 2,309,774 (Ex. 1008) published August 6, 1997, and
`
`qualifies as prior art under 35 U.S.C. § 102(b).
`
`Speak US 5,868,488 '488 (Ex. 1009) issued February 9, 1999, and qualifies
`
`as prior art under 35 U.S.C. § 102(b).
`
`4
`
`

`
`
`
`Uguchi JP 'H01-223042 (Ex. 1010) published September 6, 1989, and
`
`qualifies as prior art under 35 U.S.C. § 102(b). JP ’042 was published in Japanese.
`
`Pursuant to 35 C.F.R. § 42.63(b), an English translation and declaration attesting to
`
`the accuracy of the translation accompanies this Petition (Ex. 1011).
`
`C. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`
`
`Petitioners request Inter Partes Review of claims 7, 14-16, and 31 of
`
`the ’034 Patent (Ex. 1001) on the grounds set forth in the tables below and request
`
`that each of the claims be found unpatentable. An explanation of how claims 7,
`
`14-16, and 31 are unpatentable under the statutory grounds identified below,
`
`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. Additional explanation and support for each ground
`
`of rejection is set forth in the Declaration of Dr. A. Galip Ulsoy (Ex. 1012).
`
`Ground
`
`Ground 1
`
`’034 Patent Claims Basis for Rejection
`Obvious under 35 U.S.C. § 103(a) over Kato
`
`1, 14-16, and 31
`
`(Exhibit 1006) in view of Takahashi (Ex.
`
`Ground 2
`
`1, 14-16, and 31
`
`
`
`1008)
`
`Obvious under 35 U.S.C. § 103(a) over Speak
`
`(Exhibit 1009) in view of Takahashi and
`
`Uguchi (Exhibit 1010)
`
`5
`
`

`
`
`IV. SUMMARY OF THE ’034 PATENT
`A. Brief Description
`
`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.)
`
`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
`6
`
`

`
`
`
`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.)
`
`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.)
`
`B. Summary of the Prosecution History of the ’034 patent
`
`The application that eventually issued as the ’034 patent, U.S. App. No.
`
`7
`
`

`
`
`
`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.
`
`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):
`
`
`
`1. An automatic directional control system for a vehicle
`
`headlight comprising:
`
`8
`
`

`
`
`
`
`
`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.
`
`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.)
`
`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
`
`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:
`
`9
`
`

`
`
`
`
`
`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.
`
`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 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
`
`Ex Parte Reexamination Request No. 90/011,011 was filed on July 10, 2010,
`
`10
`
`

`
`
`(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.
`
`During the reexamination proceedings, the claims were amended in two
`
`stages to ultimately lead to an Allowance.
`
`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;
`
`
`
`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
`
`11
`
`

`
`
`
`
`
`[[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.
`
`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).
`
`In an Amendment filed July 26, 2012, the Patentee rewrote the allowable
`
`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):
`
`12
`
`

`
`
`
`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
`
`least one output signal;
`
`
`
`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.
`
`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
`
`13
`
`

`
`
`and a steering angle (See Ex. 1002, Reexamination Certificate).
`
`D. Prior Inter Partes Reviews
`
`In both the instituted IPR proceedings, IPR2016-00079 filed by Koito and
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`IPR2016-00193 filed by SL Corp., the instituted grounds for claim 7, 14-16, and
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`31 are based on the combination of Kato and Takahashi.
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`V. CLAIM CONSTRUCTION
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`A claim subject to inter partes review is given its “broadest reasonable
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`construction in light of the specification of the patent in which it appears.” (37
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`C.F.R. § 42.100(b).) The ordinary and customary meaning applies unless the
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`inventor has set forth a special meaning for a term in the specification. Nuvasive v.
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`Warsaw Orthopedic, Inc., IPR2013-00206, Paper No. 17 at 6 (P.T.A.B. Sept. 23,
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`2013). Here, a person of ordinary skill in the art at the time of the alleged
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`invention would have at least a bachelor’s degree in electrical engineering, physics,
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`or an equivalent field and at least two years of related industry experience. The
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`person of ordinary skill in the art would have a working understanding of
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`microprocessors for controlling automotive systems, including controls using
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`sensors and actuators. See Exhibit 1012 at ¶ 45. Petitioner respectfully submits
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`that the claim terms are understandable by a person having ordinary skill without
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`the need for construction. Nonetheless, Petitioner has provided a construction for
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`the following limitation of the '034 patent.
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` “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”
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`The recitation in independent claim 7 that the controller “is responsive to
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`said two or more sensor signals for generating at least one output signal only when
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`at least one of said two or more sensor signals changes by more than a
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`predetermined minimum threshold amount” means that, for a particular sensed
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`condition, at least two signal values are generated, an initial value and a later value.
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`The change between the values is compared to a threshold to determine whether
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`the change is greater than the threshold. An output signal to effect movement of
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`the headlight is output to the actuator only if the change is greater than the
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`threshold amount. (Ex. 1001, '034 patent, at 13:7-56 (see 13:11-12 & 13:21 "or
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`greater than")). The plain claim language does not preclude there being an
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`additional threshold or other requirement that must be met as well. That is, the
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`decision to generate the "at least one output signal" may also be based on
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`determinations other than whether the change between the values is determined to
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`be greater than the threshold. The only requirement is that the "at least one output
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`15
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`signal" is not generated for the particular sensed condition when the change
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`between the values is equal to or less than the threshold.
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`CLAIMS 7, 14-16, AND 31 OF THE ’034 PATENT ARE
`UNPATENTABLE
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`As discussed in detail below, claims 7, 14-16, and 31 of the ’034 patent are
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`(1) obvious under 35 U.S.C. § 103(a) over Kato (Exhibit 1006) in view of
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`Takahashi. (Exhibit 1008) and are also (2) obvious under 35 U.S.C. § 103(a) over
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`Speak (Exhibit 1009) in view of Takahashi and Uguchi (Exhibit 1010).
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`A. Overview of Kato JP ’191
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`Kato relates to a “front axis control device…applied to a motorcycle in
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`which the front lamp is affixed to the vehicle body, and can correct an angle of the
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`optical axis via an actuator no matter how the vehicle body tilts by finding not only
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`the pitch angle direction correction amount…but also the steering angle direction
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`correction amount.” (Ex. 1007, Translation of Kato at ¶ [0012].) As shown in FIG.
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`1, Kato's lamp control device includes "potentiometers 121 and 122, which serve
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`as the pitch angle sensor, that detect a pitch [angle] θp,… a steering [angle] sensor
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`16 that detects a steering angle θs,…[and] step motors 22x, 22y, and 22z, which
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`serve as the actuator, that rotate an optical axis of a front lamp 20 in a pitch [angle]
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`direction Dp…[and] a steering angle direction [Ds].” (Id. at ¶ [0016].)
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`Based on the pitch angle θp and the steering angle θs, the “controller 24
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`finds a pitch [angle] direction correction amount Dpy…and a steering [angle]
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`direction correction amount Dsz.” (Id.) “The step motors 22x, 22y, and 22z turn
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`forward and backward by a predetermined angle in accordance with a pulse signal
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`output by the controller 24.” (Id. at ¶ [0017].) “Specifically…[t]he step motor 22y
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`rotates the optical axis of the front lamp 20 in the pitch angle direction Dp around a
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`Y-axis [a]nd the step motor 22z rotates the optical axis of the front lamp 20 in the
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`steering angle direction Ds around a Z-axis,” as illustrated in Fig. 3, reproduced
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`below. (Id. at ¶ [0019].)
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`B. Overview of Takahashi GB ’774
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`Takahashi relates to "a vehicle lamp illumination direction control device
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`which detects the posture of a vehicle and correctly adjust[s] the illumination
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`direction of a vehicle lamp so that it can be always kept in a predetermined
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`direction.” (Ex. 1008, Takahashi at 1:3-7.)
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`The illumination direction control device of Takahashi includes “vehicle
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`posture detection device 2…used to detect the posture of a vehicle including the
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`vertical inclination of the vehicle in the advancing direction thereof.” (Id. at 5:24-
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`30.) A height detection device 7 can detect the posture of the vehicle by detecting
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`"the expansion and contraction amount x of a suspension S in order to detect the
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`amount of variations in the vertical position of the axle of the vehicle." (Id. at 6:5-
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`11.) The posture detection device 2 can be "composed of four height sensors 9
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`which are respectively provided in the neighborhood of the front and rear as well
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`as right and left wheels of the vehicle." (Id at 15:24-30.)
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` “The output of the vehicle posture detection device 2 is sent to the control 4
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`and is used as basic information for correction calculation of the illumination
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`direction of the lamp 6.” (Id. at p. 6:12-15.) Based on the “information on the
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`vehicle posture obtained from the vehicle posture detection device 2, [the control
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`device 4] transmits to the drive signal 5 a control signal for correction of the
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`illumination direction of the lamp 6.” (Id. at 6:26-32.) Accordingly, “[the control
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`device 4] can correct the illumination direction of the lamp 6.” (Id. at p. 7: 16-17.)
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`Takahashi notes that “in order to prevent the illumination direction of the
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`lamp 6 from being corrected inadvertently when a sudden change in the posture of
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`the vehicle occurs temporarily or due to the wrong operation of the lamp 6 caused
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`by external disturbances, for example, when the vehicle makes a sudden start or a
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`sudden stop, preferably, a threshold value with respect to time may be set in
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`detection of the road gradient and, only when the amount of variations in the detect
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`signal of the vehicle posture detection device 2 exceeds a given reference value
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`and such excessive state continues for a time equal to or more than the threshold
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`value, the illumination direction of the lamp may be corrected.” (Id. at 9:16-28.)
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`Fig. 8, reproduced below, "is a graphical representation in which, when the
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`vehicle runs down along a downhill slope from a road having small gradient and
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`runs along for a short time along the road having small gradient and, after then, it
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`stops, there are shown the respective amounts of variations with time in the output
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`level V of the height sensor." (Id. at 13:6-11.) In the upper stage of Fig. 8,
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`"reference character Va represents a detect level detected on the downhill slope
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`and Vb represents a detect level detected on the road having a small gradient." (Id.
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`at 13:15-18.) Thus, the change in the output level V of the height sensor between
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`Va and Vb is referred to as the "amount of variations." (Ex. 1012 at ¶ 55.)
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`20
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`“In this example, when the vehicle runs from a road having a small gradient
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`into a downhill slope the amount of variations in the output level V of the height
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`sensor is equal to or more than a reference value and such high variation amount
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`state continues for a time equal to a judging time Ts or longer.” (Ex. 1008 at 13:31-
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`14:2.) In this manner, “the lamp 6 may be corrected in accordance with the detect
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`signal of the vehicle posture detection device 2…when the amount of variations
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`with time of the detect signal of the vehicle posture detect signal 2 is equal to or
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`larger than a reference value.” (Id. at p. 8:26-32.)
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`C. Overview of Speak US '488
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`Speak is generally related to “adjustable [automobile] headlights and
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`headlight adjusting and direction sensing control system which incrementally
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`adjusts the Y axis and the adjustable headlights in accordance with the vehicle
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`turning direction and adjusts the X axis in accordance with the hood orientation in
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`relation to the road topography.” (Ex. 1009, Speak at 1:7-18.)
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`Speak discloses a “direction sensing control system 10 further compris[ing]
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`sensor means 17, sensor means 60, adjustable headlight structures 30 and 30’ and
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`two headlight rotating control means 20 and 20’.” (Id. at 3:29-33 and FIG. 1,
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`reproduce