UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`UNIFIED PATENTS, LLC
`
`Petitioner
`
`v.
`
`Torchlight Technologies LLC
`
`Patent Owner
`
`———————
`
`IPR2022-01500
`U.S. Patent 11,208,029
`
`———————
`
`DECLARATION OF A. BRENT YORK
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`
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`UNIFIED PATENTS EXHIBIT 1002
`Page 1 of 113
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`
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`UNIFIED PATENTS, LLC
`
`Petitioner
`
`v.
`
`Torchlight Technologies LLC
`
`Patent Owner
`
`———————
`
`IPR2022-01500
`U.S. Patent 11,208,029
`
`———————
`
`DECLARATION OF A. BRENT YORK
`
`
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`UNIFIED PATENTS EXHIBIT 1002
`Page 1 of 113
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`
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`TABLE OF CONTENTS
`I.
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND QUALIFICATIONS ................................................. 4
`II.
`III. RELEVANT LEGAL STANDARDS ........................................................... 10
`IV. THE ’029 PATENT ...................................................................................... 12
`A.
`Summary and Prosecution History ..................................................... 12
`B.
`Person of Ordinary Skill in the Art ..................................................... 13
`THE CHALLENGED CLAIMS ................................................................... 15
`V.
`VI. CLAIM CONSTRUCTION .......................................................................... 19
`VI. SUMMARY OF OPINIONS ........................................................................ 19
`A.
`Priority of the ’029 Patent ................................................................... 20
`B.
`Prior Art .............................................................................................. 22
`C.
`Technical Concepts ............................................................................. 24
`VII. AVAILABILITY FOR CROSS-EXAMINATION ...................................... 97
`VII. CONCLUSION ............................................................................................. 97
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` i
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`IPR2022-01500; U.S. Patent 11,208,029
`Declaration of A. Brent York
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`I, A. Brent York, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by counsel for Unified Patents, LLC (“Unified” or
`
`“Petitioner”) as an independent expert witness for the above-captioned Petition for
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`Inter Partes Review (“IPR”) of U.S. Patent No. 11,208,029 (“the ’029 patent”). I am
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`being compensated at my usual and customary rate for the time I spend in connection
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`with this IPR. My compensation is not affected by the outcome of this IPR. I make
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`this declaration based upon my own personal knowledge and, if called upon to
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`testify, would testify competently to the matters stated herein.
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`2.
`
`I have been asked to provide my opinions regarding whether claims 1,
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`2, 10-13, 23, and 24 (each a “Challenged Claim” and collectively the “Challenged
`
`Claims”) of the ’029 patent are unpatentable as they would have been anticipated by
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`the prior art or obvious to a person having ordinary skill in the art (“POSITA”) as of
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`the earliest claimed priority date of the ’029 patent. It is my opinion that all of the
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`Challenged Claims would have been unpatentable as obvious to a POSITA, after
`
`reviewing the prior art discussed below.
`
`3.
`
`In preparing this Declaration, I have reviewed:
`
`a)
`
`b)
`
`EX1001, the ’029 patent;
`
`the prior art references discussed below:
`
`1
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`
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`● U.S. Patent 5,588,733, filed June 7, 1995, published Dec.
`
`31, 1996 (“Gotou”) (EX1003);
`
`● U.S. Patent 6,406,172, filed June 22, 2000, published June
`
`18, 2002 (“Harbers”) (EX1004)
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`● German Patent DE19923187C2, published May 3, 2001
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`(“Heinz”) (Certified Translation) (EX1006).1
`
`EX10011, the file history of the ’029 patent;
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`EX1012, U.S. Provisional Patent Application 60/395308;
`
`EX1013, the file history of US Patent 9,955,551’s Ex Parte
`
`c)
`
`d)
`
`e)
`
`Reexamination; and
`
`d)
`
`any other document cited below.
`
`4.
`
`I understand that the ’029 patent issued on December 28, 2021 from
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`U.S. Patent Application No. 17,152,399 (“the ’399 application”), filed on January
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`19, 2021. I understand that the ’029 patent is a continuation of U.S. Application
`
`15/961,861, filed April 24, 2018, which issued as U.S. Patent 10,894,503, which is
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`a continuation of U.S. Application 13/357,549, filed January 24, 2012, which issued
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`1 I note that EX1006 is the certified translation of DE19923187C2. EX1007 is the
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`original German-language version of DE19923187C2.
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`2
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`as U.S. Patent 9,955,551, which is a continuation in part of U.S. Application
`
`10/604,360, filed July 14, 2003, which issued as U.S. Patent 8,100,552.
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`5.
`
`I also understand that the ’029 patent claims priority to U.S. Provisional
`
`Application 60/395,308, filed July 12, 2002, as well as U.S. Provisional Application
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`61/535,981, filed September 17, 2011.
`
`6.
`
`The face of the ’029 Patent lists Yechezkal Evan Spero as the purported
`
`inventor. I understand that an entity named TORCHLIGHT TECHNOLOGIES LLC
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`is purportedly the current assignee of the ’029 patent.
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`7.
`
`To the best of my knowledge, I have no financial interest in Petitioner.
`
`Petitioner’s counsel has informed me that TORCHLIGHT TECHNOLOGIES LLC
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`purports to own the ’029 patent. To the best of my knowledge, I have no financial
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`interest in TORCHLIGHT TECHNOLOGIES LLC. To the best of my knowledge, I
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`similarly have no financial interest in the ’029 patent. To the extent any mutual funds
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`or other investments that I own have a financial interest in the Petitioner, Unified
`
`Patents, LLC, the Patent Owner, TORCHLIGHT TECHNOLOGIES LLC, or the
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`’029 patent, I am not aware of, nor do I have control over, any financial interest that
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`would affect or bias my judgment.
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`8.
`
`In forming the opinions expressed in this Declaration, I relied upon my
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`education and experience in the relevant field of art, and have considered the
`
`3
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`viewpoint of a Person of Ordinary Skill in the Art (POSITA), as of July 12, 2002. I
`
`have also considered:
`
`a)
`
`b)
`
`the documents listed above,
`
`any additional documents and references cited in the analysis
`
`below,
`
`c)
`
`the relevant legal standards, including the standards for
`
`anticipation and obviousness, and
`
`d)
`
`my knowledge and experience based upon my work in the
`
`relevant technical areas as described below.
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`9.
`
`I understand that claims in an IPR are construed according to the same
`
`claim construction standard as one would use in a District Court proceeding.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`10. My complete qualifications and professional experience are described
`
`in my curriculum vitae, a copy of which is attached as Appendix A to this
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`declaration. The following is a brief summary of my relevant background,
`
`qualifications, and professional experience.
`
`11.
`
`In 1985, I received my Bachelor of Applied Science (“BASc”) in
`
`Engineering Physics from the University of British Columbia in Vancouver, British
`
`Columbia, Canada. In 1993, I received my master’s in business administration
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`4
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`(“MBA”) degree in Business Strategy – Technology from Simon Fraser University
`
`in Burnaby, BC, Canada.
`
`12.
`
`I am a licensed Professional Engineer (“P.Eng.”) in the Province of
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`British Columbia (BC License #119512) since 1988 and have also been a
`
`professional member of the Illuminating Engineering Society of North America
`
`(IESNA) since 1986 and have served as the Vice President and President of the local
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`section of the IESNA in the past.
`
`13.
`
`I have over 36 years of experience in the lighting industry (including
`
`transportation lighting), including over 24 years in the LED lighting space in which
`
`I have been directly involved in all levels of LED lighting product design,
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`development, testing, manufacturing, marketing, sales and senior management. I
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`have led companies and teams of engineers, scientists, product managers, operations,
`
`and sales staff in all phases of LED lighting products and systems for a broad range
`
`of lighting markets including architectural, automotive, entertainment, industrial,
`
`retail, public works and specialty applications.
`
`14.
`
`Following graduation, I started my career as a light measurement and
`
`experimental engineer with TIR Systems where I was responsible for the
`
`measurement of lighting sources and lighting apparatus within a laboratory setting.
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`I also received professional training in light measurements and experimental design
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`via the National Research Council of Canada at their laboratories in Ottawa. The
`
`5
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`equipment I used in the laboratory provided the ability to measure all the physical
`
`properties of a light bulb or a light source in terms of color, spatial distribution,
`
`intensity, stability and overall light output which is needed to validate performance
`
`and to forecast performance in a particular setting.
`
`15. My experience and roles progressed from laboratory testing to product
`
`design where I was responsible for the design of new lighting products for a variety
`
`of applications. TIR Systems was a manufacturer and designer of unique
`
`optical/lighting systems that found applications in a wide range of industries such as
`
`Aerospace, Automotive, Coast Guard, Public Space, Building Highlighting, Retail,
`
`Office, Medical, Machine Vision, Roadway and Entertainment Lighting. These
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`roles required knowledge of light source properties, detailed lighting specifications,
`
`electrical parameters, optical design, system design, and industry standards unique
`
`to each of these sectors.
`
`16.
`
`I am an early pioneer in LED systems development and began
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`developing transportation lighting systems in the late 1980’s, as well as lighting
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`systems for roadway, architectural and medical applications. My specific
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`professional experience in the automotive lighting industry started in the late 1980’s.
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`At TIR Systems, I worked with automakers to redesign new low profile exterior light
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`assemblies for new automobile models. Challenges included ensuring transportation
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`lighting designs complied with SAE (Society of Automotive Engineers) and DOT
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`6
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`(Department of Transport) lighting standards while creating more space for desired
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`styling changes for future automobiles and adding additional functionalities desired
`
`by the automaker such as automated patterns. Conventional approaches were not
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`suitable so automakers looked to TIR System’s expertise to help with the optical
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`design and prototyping of new lighting systems. I worked on, tested, and delivered
`
`a variety of a smaller and thinner lighting prototypes that would help to solve these
`
`problems and also reduce the depth of penetration into the body of the car, creating
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`a unique styling aesthetic. The engineering challenges included applying optical
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`system design to achieve defined optical characteristics, including variable light
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`patterns, within a mechanically constrained system in an automobile.
`
`17.
`
`In 2001, I led a special research group within TIR Systems to achieve
`
`an ambitious target of a perfectly color-tunable, high-output directional light source
`
`with LEDs that would integrate into customer’s product designs. This program
`
`achieved several technical breakthroughs and garnered significant industry praise,
`
`as well as the investment approximately $2 million from one of the largest lighting
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`manufacturers in Germany. This program also resulted in dozens of new patents in
`
`optics, thermal management, lighting control, spatial color mixing, LED Packaging
`
`and feedback systems, which ultimately led to TIR System’s acquisition by Philips
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`Lighting in 2007.
`
`7
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`18. After TIR Systems was acquired by Philips, I was appointed Chief
`
`Technology Officer for the newly formed Business Unit of Solid State Lighting for
`
`Philips and then transitioned to the Corporate Technologies group based in
`
`Eindhoven, Netherlands. During my tenure with Philips, I was engaged in
`
`evaluating new technologies at various global research laboratories and exposed to
`
`several key lighting product initiatives related to the adoption of LED technology
`
`into lighting, including automotive lighting systems. Specifically, I was actively
`
`involved with Philips and their joint venture, Lumileds’ and their development of
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`LED Sources and assemblies for automotive applications, including headlights. I
`
`was exposed to the development of new addressable solid state light sources
`
`(including laser sources) and adaptive optical systems that could enable variable
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`beam patterns to be created.
`
`19.
`
`In 2009, I founded Tangenesys Consulting Ltd., which provides
`
`technical, strategic, marketing and innovation leadership relating to lighting.
`
`20.
`
`In 2017, I was appointed President and CEO of LensVector, Inc., a
`
`company that was applying its unique electronically adaptable optical technology
`
`into the broader lighting industry. LensVector’s technology enables tunable optical
`
`systems that can actively modify source beam patterns under electronic control.
`
`Under my leadership, we achieved several early new product design wins with
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`internationally recognized lighting companies. LensVector’s technology was
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`8
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`recognized as the leading new technology in the top 10 best new technologies at
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`Light & Building in Frankfurt in 2018.
`
`21. During my tenure with LensVector I also worked with various
`
`automakers in their advanced headlight/foglight/daytime running light programs
`
`with our unique electronically controllable optics for use in various forward lighting
`
`programs such as electronically steerable beam patterns, anti-glare systems, and
`
`headlight leveling applications. I also lead similar activities with aerospace
`
`companies that explored the use of LensVector technology for adaptive landing
`
`lights in conjunction with an addressable LED light source. The goal of all of these
`
`programs was to create automated, or adaptable, beam patterns that would comply
`
`with SAE, DOT or FAA standards for the combined purpose of improved adaptable
`
`illumination with good glare control to aid in safety, driver/pilot performance while
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`still complying with existing standards. Similar work was undertaken with other
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`companies to create advanced adaptive emergency signal lights for ambulances,
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`firetrucks and adaptable alley takedown lights for law enforcement.
`
`22.
`
`In my professional practice I continue to work extensively on lighting
`
`design, strategy, technologies and development with a variety of companies in a
`
`wide range of fields. I am a named inventor or co-inventor on well over 200 patents
`
`and patent application publications worldwide related to lighting and LED lighting.
`
`This includes over 55 issued U.S. patents and dozens of U.S. patent applications,
`
`9
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`PCT international patent applications, and foreign national or regional patents and
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`patent applications in numerous countries.
`
`III. RELEVANT LEGAL STANDARDS
`
`23.
`
`I am not an attorney and offer no legal opinions, but in my work, I have
`
`had experience studying and analyzing patents and patent claims from the
`
`perspective of a person skilled in the art. I am also a named inventor on over 55 U.S.
`
`patents. For the purposes of this declaration, I have been informed about certain
`
`aspects of the law that are relevant to forming my opinions. My understanding of the
`
`law is as follows:
`
`24.
`
`I understand that a claim is invalid if it is anticipated or obvious. I
`
`understand that anticipation of a claim requires that every element of a claim is
`
`disclosed expressly or inherently in a single prior art reference, arranged as in the
`
`claim. Petitioner’s counsel has informed me that for a claimed limitation to be
`
`inherently present, the prior art need not expressly disclose the limitation, so long as
`
`the claimed limitation necessarily flows from a disclosure in the prior art.
`
`25.
`
`Petitioner’s counsel has informed me that a patent claim can be
`
`considered to have been obvious to a person of ordinary skill in the art at the time
`
`the application was filed. This means that, even if all of the requirements of a claim
`
`are not found in a single prior art reference, the claim is not patentable if the
`
`differences between the subject matter in the prior art and the subject matter in the
`
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`claim would have been obvious to a person of ordinary skill in the art at the time the
`
`application was filed.
`
`26.
`
`Petitioner’s counsel has informed me that a determination of whether a
`
`claim would have been obvious should be based upon several factors, including,
`
`among others:
`
`•
`
`•
`
`the level of ordinary skill in the art at the time the application was filed;
`
`the scope and content of the prior art; and
`
`• what differences, if any, existed between the claimed invention and the
`
`prior art.
`
`27.
`
`Petitioner’s counsel has informed me that a single reference can render
`
`a patent claim obvious if any differences between that reference and the claims
`
`would have been obvious to a person of ordinary skill in the art. Alternatively, the
`
`teachings of two or more references may be combined in the same way as disclosed
`
`in the claims, if such a combination would have been obvious to one having ordinary
`
`skill in the art. In determining whether a combination based on either a single
`
`reference or multiple references would have been obvious, it is appropriate to
`
`consider, among other factors:
`
`• whether the teachings of the prior art references disclose known concepts
`
`combined in familiar ways, and when combined, would yield predictable
`
`results;
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`• whether a person of ordinary skill in the art could implement a predictable
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`variation, and would see the benefit of doing so;
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`• whether the claimed elements represent one of a limited number of known
`
`design choices, and would have a reasonable expectation of success by
`
`those skilled in the art;
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`• whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
`
`• whether there is some teaching or suggestion in the prior art to make the
`
`modification or combination of elements claimed in the patent; and
`
`• whether the innovation applies a known technique that had been used to
`
`improve a similar device or method in a similar way.
`
`28.
`
`Petitioner’s counsel has informed me that one of ordinary skill in the
`
`art has ordinary creativity, and is not an automaton. Petitioner’s counsel has
`
`informed me that in considering obviousness, it is important not to determine
`
`obviousness using the benefit of hindsight derived from the patent being considered.
`
`IV. THE ’029 PATENT
`
`A.
`29.
`
`Summary and Prosecution History
`I have reviewed, had input into, and endorse the discussions in
`
`Section IV of the Petition, which provide a summary of the ’029 patent, discussion
`
`on how the ’029 patent’s claims are not entitled to the patent’s earliest claimed
`
`12
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`priority date, ’029 patent’s file history, and level of ordinary skill in the art, and
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`which I hereby incorporate by reference.
`
`30.
`
`I further note that the prior art cited in the grounds of the petition
`
`(Gotou, Harbers, and Heinz) are, in my opinion, not cumulative of art analyzed
`
`during prosecution of the ’029 patent’s application or any of its related applications.
`
`31.
`
`I understand Gotou and Heinz are not cited by the ’029 patent. I
`
`understand Harbers is cited by the ’029 patent but was not applied to the patent’s
`
`claims during prosecution or otherwise analyzed. I understand Harbers was cited by
`
`Patent Owner in an ex parte reexamination Patent Owner filed against related U.S.
`
`Patent 9,955,551, which recites different claims to the Challenged Claims. See Ex
`
`Parte Reexamination 90/014,815 (EX1013).
`
`B.
`32.
`
`Person of Ordinary Skill in the Art
`I understand that the level of ordinary skill may be reflected by the prior
`
`art of record, and that a person of ordinary skill in the art (“POSITA”) to which the
`
`claimed subject matter pertains would have the capability of understanding the
`
`scientific and engineering principles applicable to the pertinent art. I understand that
`
`one of ordinary skill in the art has ordinary creativity, and is not a robot.
`
`33.
`
`It is my opinion that a person of ordinary skill in the art at and before
`
`the priority date for the ’029 patent (“POSITA”) would have had at least a bachelor’s
`
`degree in physics, engineering physics, mechanical engineering, electrical
`
`13
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`engineering, or a related field, and at least two years of work experience in
`
`transportation lighting. More education can supplement practical experience and
`
`vice-versa.
`
`34. Based on my educational and professional experience, I have an
`
`understanding of the capabilities of a POSITA in the relevant field and qualified as
`
`a POSITA as of the ’029 patent’s earliest claimed priority date of July 12, 2002.2 As
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`mentioned above, I obtained a bachelor’s degree in engineering physics in 1985 and
`
`had over 10 years of experience in transportation lighting.
`
`35.
`
`The analysis set forth herein evaluates anticipation, obviousness, and/or
`
`priority issues consistent with the legal principles provided to me by counsel and
`
`through the eyes of one of a POSITA at the time of the priority date for the ’029
`
`patent.
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`2 For the reasons discussed in Section IV of the Petition, and the reasons in this
`
`declaration, the ’029 patent is not entitled to this date. Whether this date is held as
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`the priority date or a later date is, I still qualified as a POSITA regarding the ’029
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`patent.
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`V.
`
`THE CHALLENGED CLAIMS
`
`36. Below I have reproduced the Challenged Claims, including identifiers
`
`in brackets “[]” I use to refer to particular limitations in my analysis below. These
`
`identifiers are the same as the identifiers used in the Petition.
`
`Claim 1
`
`[G1-1a-preamble; G2/3-1a-preamble] A system, for a motor vehicle,
`
`comprising:
`
`[G1-1b; G2/3-1b] a plurality of headlamps, each comprising a plurality of
`
`LED light sources;
`
`[G1-1c; G2/3-1c] one or more processors; and a memory storing instructions
`
`that, when executed by one or more of the one or more processors, enable the one or
`
`more processors to:
`
`[G1-1d; G2/3-1d] receive first data, including at least map data,
`
`indicating a road curvature upcoming along a road on which the motor vehicle
`
`is traveling;
`
`[G1-1e; G2/3-1e] determine a light change, the change adapting a light
`
`pattern of the headlamps in at least one of color, intensity or spatial
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`distribution to increase light in a direction of the road curvature ahead of the
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`motor vehicle and shaping light based at least in part on the road curvature;
`
`and
`
`[G1-1f; G2/3-1f] control at least a first plurality of the LED light
`
`sources to provide light based at least in part on the determined light change
`
`and prior to the motor vehicle reaching the road curvature.
`
`Claim 2
`
`The system of claim 1, wherein the determination of the light change includes
`
`selection of the first plurality of the LED light sources.
`
`Claim 10
`
`The system of claim 1, further including one or more optical control elements
`
`for controlling light from one or more of the LED light sources.
`
`Claim 11
`
`The system of claim 10, wherein the optical control elements include at least
`
`one of one or more reflectors, refractors or lenses.
`
`Claim 12
`
`16
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`UNIFIED PATENTS EXHIBIT 1002
`Page 18 of 113
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`
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`IPR2022-01500; U.S. Patent 11,208,029
`Declaration of A. Brent York
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`[12a-preamble] A non-transitory computer-readable storage medium, storing
`
`instructions that, when executed by one or more processors of a motor vehicle that
`
`includes a plurality of headlamps that each comprise a plurality of LED light sources,
`
`enable the one or more processors to:
`
`[12b] receive first data, including at least map data, indicating a road
`
`curvature upcoming along a road on which the motor vehicle is traveling;
`
`[12c] determine a light change, the change adapting a light pattern of
`
`the headlamps in at least one of color, intensity or spatial distribution to
`
`increase light in a direction of the road curvature ahead of the motor vehicle
`
`and shaping light based at least in part on the road curvature; and
`
`[12d] control at least a first plurality of the LED light sources to provide
`
`light based at least in part on the determined light change and prior to the
`
`motor vehicle reaching the road curvature.
`
`Claim 13
`
`The storage medium of claim 12, wherein the determination of the light
`
`change includes selection of the first plurality of the LED light sources.
`
`17
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`UNIFIED PATENTS EXHIBIT 1002
`Page 19 of 113
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`
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`IPR2022-01500; U.S. Patent 11,208,029
`Declaration of A. Brent York
`
`Claim 23
`
`[23a-preamble] A computer-implemented method for adapting light from
`
`headlamps of a motor vehicle to accommodate road shape changes, the headlamps
`
`including a plurality of LED light sources, comprising:
`
`[G1-23b] determining an upcoming shape change of a road, ahead of
`
`the motor vehicle, based on first data, including map data, indicating the shape
`
`change;
`
`[G1-23c] determining a light output, the output adapting a light pattern
`
`of the headlamps in at least one of color, intensity or spatial distribution to
`
`increase light in a direction associated with the shape change ahead of the
`
`motor vehicle and shaping light based on the shape change; and
`
`[G1-23d] prior to reaching the road shape change, causing at least a first
`
`plurality of the LED light sources to provide light based at least in part on the
`
`determined light output.
`
`Claim 24
`
`The method of claim 23, wherein the determining the light includes selecting
`
`the first plurality of the LED light sources.
`
`18
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`UNIFIED PATENTS EXHIBIT 1002
`Page 20 of 113
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`
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`IPR2022-01500; U.S. Patent 11,208,029
`Declaration of A. Brent York
`
`VI. CLAIM CONSTRUCTION
`
`37.
`
`It is my understanding that in order to properly evaluate the ’029 patent,
`
`the terms of the claims must first be interpreted. It is my understanding that the
`
`claims are to be construed according to the same claim construction standard that
`
`district courts use. Thus, it is my understanding that claim terms are construed
`
`according to their ordinary and customary meaning as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.
`
`38.
`
`In my opinion, no terms of the ’029 patent warrant construction beyond
`
`their ordinary and customary meaning. If Patent Owner, seeking to avoid the prior
`
`art, offers a specific construction or interpretation for these or other terms, I reserve
`
`the right to respond and supplement my opinions herein.
`
`VI.
`
`SUMMARY OF OPINIONS3
`
`39.
`
`In my opinion, claims 1, 2, 10-13, 23, and 24 (“Challenged Claims”)
`
`of the ’029 are unpatentable because they would have been obvious to a POSITA at
`
`the time the ’029 patent’s earliest claimed priority date. My opinions are based on
`
`my expertise in the technology of the ’029 patent at the time of the ’029 patent’s
`
`3 Unless otherwise specified, all bold and underline emphasis below has been added.
`
`Text in italics is used to signify claim language and/or add emphasis.
`
`19
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`UNIFIED PATENTS EXHIBIT 1002
`Page 21 of 113
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`
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`IPR2022-01500; U.S. Patent 11,208,029
`Declaration of A. Brent York
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`earliest claimed priority date, as well as my review of the ’029 patent, its file history
`
`(and the file history of its directly related applications), and the prior art discussed
`
`in the Petition. If the patent owner is allowed to submit additional evidence
`
`pertaining to the validity of the ’029 patent, I intend to review that as well and update
`
`my analysis and conclusions as appropriate and allowed under the rules of this
`
`proceeding.
`
`40.
`
`I have reviewed each limitation of the Challenged Claims in relation to
`
`the prior art of the Petition’s Grounds and performed a limitation-by-limitation
`
`analysis of the Challenged Claims in view of the Petition’s Grounds. I reviewed and
`
`contributed to the Petition’s explanation as to why the Challenged Claims are
`
`unpatentable. The Petition’s explanation in Section VI as to why these claims are
`
`unpatentable reflects my understanding, and I incorporate it herein by reference.
`
`41.
`
`The Petition sets forth my reasons for my opinion that the Challenged
`
`Claims would have been obvious. Below I elaborate on certain points raised in the
`
`discussion of the Petition from the perspective of a POSITA at the time of the ’029
`
`patent’s earliest claimed priority date.
`
`A.
`
`42.
`
`Priority of the ’029 Patent
`
`I understand that the ’029 patent claims priority via continuation and
`
`continuation-in-part applications to provisional application 60/395,308 filed July 12,
`
`2002 (EX1012). EX1001, 1:6-22, (63) (60). I refer to EX1012 as the “’308
`
`20
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`UNIFIED PATENTS EXHIBIT 1002
`Page 22 of 113
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`
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`IPR2022-01500; U.S. Patent 11,208,029
`Declaration of A. Brent York
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`provisional” herein. In my opinion, a POSITA would not have understood that the
`
`’308 provisional contains written description or description in drawings or figures
`
`that support the subject matter of the ’029 patent’s claims. Thus, in my opinion, the
`
`’029 patent claims should not be afforded the July 12, 2002 priority date of the ’308
`
`provisional.
`
`43.
`
`Specifically, many figures of the ’029 patent, such as figures 15 and 16
`
`relating to a headlamp, are missing from the ’308 provisional. EX1012, 21-27
`
`(showing only Figures 1-10); EX1001, Figures 1-33; 15:60-65. Further, the ’308
`
`provisional makes no mention of the following: a “system, for a motor vehicle,” “a
`
`plurality of headlamps, each comprising a plurality of LED light sources” to “receive
`
`first data, including at least map data, indicating a road curvature upcoming along a
`
`road on which the motor vehicle is traveling,” to “determine a light change, the
`
`change adapting a light pattern of the headlamps in at least one of color, intensity or
`
`spatial distribution to increase light in a direction of the road curvature ahead of the
`
`motor vehicle and shaping light based at least in part on the road curvature,” or to
`
`“control at least a first plurality of the LED light sources to provide light based at
`
`least in part on the determined light change and prior to the motor vehicle reaching
`
`the road curvature,” which I understand are required elements of the ’029 patent’s
`
`independent claims. See generally EX1012; EX1001, claims 1, 12, 23. I note that all
`
`21
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`UNIFIED PATENTS EXHIBIT 1002
`Page 23 of 113
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`IPR2022-01500; U.S. Patent 11,208,029
`Declaration of A. Brent York
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`disclosure from the ’029 patent relating to headlamps or headlights is missing from
`
`the ’308 provisional. EX1001, 50:49-57:49; EX1012, 2-20.
`
`44.
`
`Thus, in my opinion, the ’029 patent’s claims do not have support in
`
`disclosure of the ’308 provisional, and the ’029 patent’s claims do not have priority
`
`to the ’308 provisional. And even if the ’308 provisional did disclose similar
`
`concepts to those claimed by the ’029 patent as identified above (which it does not),
`
`in my
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