UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`__________
`
`
`
`Case IPR2016-01740
`Patent 7,241,034
`
`
`
`PATENT OWNER ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner
`
`__________
`
`
`
`Case IPR2016-01740
`Patent 7,241,034
`
`
`
`PATENT OWNER ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`Case IPR2016-01740
`Patent 7,241,034 B2
`
`
`
`Petitioner Toyota Motor Corporation (“Toyota” or “Petitioner”) filed a
`
`petition for inter partes review (the “Petition”) of claims 7, 14-16, and 31 of U.S.
`
`Patent No. 7,241,034 (“the ‘034 Patent”). Patent Owner Adaptive Headlamp
`
`Technologies, Inc. (“Patent Owner” or “AHT”) respectfully requests that the Petition
`
`be denied as redundant, so as to “secure a just, speedy, and inexpensive resolution
`
`of the proceedings.” 37 C.F.R. § 42.1.
`
`Redundancy-based denials are authorized as an exercise of the Patent and
`
`Trademark Office’s (“PTO”) broad discretion in deciding whether to grant inter
`
`partes review petitions. The Patent Act gives the PTO authority to prescribe
`
`regulations governing the handling of review petitions. 35 U.S.C. § 316(a), for
`
`example, states that “[t]he Director shall prescribe regulations . . . (2) setting forth
`
`the standards for the showing of sufficient grounds to institute [IPR review].”
`
`Further, 35 U.S.C. § 316(b) identifies “the efficient administration of the Office, and
`
`the ability of the Office to timely complete proceedings” as relevant factors to be
`
`considered in setting standards for institution of review (emphasis added). The
`
`Patent Rules governing inter partes review proceedings authorize “the Board [to]
`
`deny some or all grounds for unpatentability for some or all of the challenged claims.
`
`Denial of a ground is a Board decision not to institute inter partes review on that
`
`ground.” 37 C.F.R. § 42.108(a).
`
`2
`
`
`
`Case IPR2016-01740
`Patent 7,241,034 B2
`
`
`
`In Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., No. CBM2012-00003,
`
`Paper 7 (PTAB 2012), for example, the PTAB elected not to institute review over
`
`many grounds asserted by the Petitioner because they were found to be redundant of
`
`other grounds identified in the Petitions. The PTAB explained that review of the
`
`redundant prior art grounds asserted would create an undue burden on the patent
`
`owner and on the PTAB, and would delay final resolution of the matter. Similarly,
`
`in Shaw Indus. Group Inc. v. Automated Creel Sys. Inc., IPR2013-00132, Paper 9
`
`(PTAB 2013), the PTAB denied review on several asserted grounds because the
`
`asserted grounds were redundant of other grounds upon which inter partes review
`
`was instituted. Patent Owner respectfully requests that the PTAB use its discretion
`
`in the present matter to deny review of the challenged claims of the ‘034 Patent
`
`because the grounds asserted by Petitioner are redundant of other grounds upon
`
`which review has been either petitioned for or instituted in other proceedings.
`
`The Petition includes two grounds for invalidity, each based on obviousness
`
`under 35 U.S.C. § 103. The first ground relies upon Japanese Patent Application
`
`Publication H10-324191 to Kato (hereinafter “Kato”; Ex. 1006) as modified by U.K.
`
`Published Patent Application GB-2-309-774 A
`
`to Takahashi (hereinafter
`
`“Takahashi”; Ex. 1008). The second ground relies upon U.S. Patent No. 5,868,488
`
`to Speak (hereinafter, “Speak”; Ex. 1009) as modified by both Takahashi and
`
`3
`
`
`
`Case IPR2016-01740
`Patent 7,241,034 B2
`
`
`
`Japanese Patent Application Publication H01-223042 to Uguchi (hereinafter
`
`“Uguchi”; Ex. 1010). This proceeding, IPR2016-01740, involves the same patent
`
`(i.e., the ’034 Patent) and similar prior art that is involved in several already
`
`instituted inter partes review proceedings, at detailed in the following table:
`
`Proceeding
`
`Patent
`
`Claims Challenged
`
`Status
`
`IPR2016-00079
`
`’034 Patent 3-39
`
`IPR2016-00193
`
`’034 Patent 3-39
`
`Trial instituted for claims
`3-26, 28-32, and 351
`
`Trial instituted for claims
`7-10, 12-21, 23, 24, and
`28-392
`
`IPR2016-00196
`
`’034 Patent 3, 5, 7, 14-16, 31-32 and
`36
`
`Terminated prior to entry
`of Institution Decision3
`
`IPR2016-00501
`
`’034 Patent 3, 5, 7, 14-16, 31-32, 36 Terminated prior to entry
`of Institution Decision 4
`
`IPR2016-01368
`
`’034 Patent 3-26 and 28-35
`
`Trial instituted for claims
`3-26, 28-32, and 35;
`proceeding joined with
`IPR2016-000795
`
`The prior art and obviousness arguments in this proceeding are the same or
`
`substantially the same as those raised in the proceedings listed above, the original
`
`
`1 See IPR2016-00079, Paper 19 (Decision at 2).
`2 See IPR2016-00193, Paper 10 (Decision at 2).
`3 See IPR2016-00196, Paper 11 (Decision at 2).
`4 See IPR2016-00501, Paper 10 (Decision at 2).
`5 See IPR2016-01368, Paper 9 (Decision at 10).
`
`4
`
`
`
`Case IPR2016-01740
`Patent 7,241,034 B2
`
`
`
`prosecution of the ‘034 Patent, and the previous reexaminations of the ‘034 Patent.
`
`Specifically, both IPR2016-00079 and IPR2016-01368 assert the prior art
`
`combination of Kato as modified by Takahashi in challenging the patentability of
`
`claims 7, 14-16, and 31, among others, of the ‘034 Patent as being obvious. These
`
`challenges, for which inter partes review was instituted, are identical to those of the
`
`first ground of the present Petition.6 Patent Owner respectfully submits that
`
`institution of review under this ground would be counter to efficient administration
`
`of the Office and the ability of the Office to timely complete proceedings as
`
`resolution of the already-instituted proceedings will fully dispose of the issue and
`
`remove any motivation for continued or additional review of the claims of the ‘034
`
`Patent for non-obviousness over the combination of Kato and Takahashi.
`
`Petitioner’s second ground for challenging the validity of claims of the ‘034
`
`Patent are similarly redundant because it relies upon prior art references which were
`
`considered during the prosecution of the ‘034 Patent and are cumulative of the
`
`references considered by the PTAB in the prior inter partes review proceedings
`
`listed above. The primary reference relied upon for Petitioner’s second ground, the
`
`Speak patent, was considered by the Examiner during prosecution of the ‘034 Patent
`
`along with Takahashi. Ex. 1001 at 2. In addition, Uguchi has been relied upon as a
`
`
`6 See IPR2016-01740, Paper 2 (Petition at 14).
`
`5
`
`
`
`Case IPR2016-01740
`Patent 7,241,034 B2
`
`
`
`secondary reference in obviousness challenges to the claims of the ‘034 Patent in the
`
`already-considered Petitions of the prior proceedings. Each prior art reference relied
`
`upon in Petitioner’s second ground is, therefore, cumulative of other references
`
`previously considered by the PTAB in other Petitions or over which review has been
`
`instituted.
`
`Each reference relied upon in the present proceeding relates to systems for
`
`movement of a headlight in either or both of the horizontal and vertical directions,
`
`just as those cited to in each of the prior inter partes review proceedings. Petitioner
`
`has not explained why the grounds set forth in this Petition are distinct from or
`
`require substantially different analysis than any of the prior art involved in these
`
`other proceedings, the original prosecution, or the previous reexaminations. As
`
`noted above, Petitioner’s first ground is identical to that of the already instituted inter
`
`partes reviews and would, therefore, require duplicate analysis by the PTAB. With
`
`regard to the second ground, Petitioner has not explained why the combination of
`
`Speak, Takahashi, and Uguchi would not be reasonably understood as being based
`
`on “substantially the same prior art or arguments” that were presented in the prior
`
`proceedings, the original prosecution, or the previous reexamination. 35 U.S.C.
`
`§ 325(d); see Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-
`
`00312, Paper 14 at 12-13 (PTAB, July 8, 2014) (rejecting the petition because the
`
`6
`
`
`
`Case IPR2016-01740
`Patent 7,241,034 B2
`
`
`
`same prior art and substantially the same arguments were presented to the Office
`
`during prosecution); U.S. Endodontics, LLC v. Gold Standard Instruments, LLC,
`
`IPR2015-01476, Paper 13 at 9 (PTAB, October 26, 2015) (rejecting the petition
`
`because the same prior art and substantially the same arguments were presented to
`
`the Office during other co-pending Inter Partes Review proceedings);. As such, the
`
`Board should deny this Petition as redundant.7
`
`Respectfully submitted,
`
`By: / Brett M. Pinkus /
`
`Brett M. Pinkus
`Reg. No. 59,980
`Richard A. Wojcio, Jr.
`Reg. No. 71,640
`FRIEDMAN, SUDER & COOKE
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`wojcio@fsclaw.com
`Counsel for Patent Owner
`
`
`
`
`Dated: December 13, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7 Patent Owner’s present response is limited to the redundancy of the prior art
`references and arguments as set forth in the Petition. Patent Owner does not waive
`the right to make additional arguments on the merits if the Petition is granted and
`the Inter Partes Review of the ‘034 Patent is instituted, and Patent Owner hereby
`expressly reserves the right to do so.
`
`7
`
`
`
`Case IPR2016-01740
`Patent 7,241,034 B2
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this the 13th day of December, 2016, a true and correct
`
`
`
`
`
`copy of
`
`the
`
`foregoing PATENT OWNER ADAPTIVE HEADLAMP
`
`TECHNOLOGIES, INC.’S PRELIMINARY RESPONSE was served via electronic
`
`mail upon counsel of record for Petitioners, as agreed upon by counsel, at the
`
`following addresses:
`
`William H. Mandir (wmandir@saghrue.com)
`
`John M. Bird (jbird@sughrue.com)
`
`Fadi N. Kiblawi (fkiblawi@sughrue.com)
`
`Dated: December 13, 2016
`
`By: / Brett M. Pinkus/
`
` Brett M. Pinkus
` Registration No. 59,980
`
`
`
`8
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
