Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 17
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`v.
`YECHEZKAL EVAN SPERO,
`Patent Owner.
`
`IPR2023-01034
`Patent 11,208,029 B2
`
`Before JON M. JURGOVAN, JASON W. MELVIN, and
`AARON W. MOORE, Administrative Patent Judges.
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 17
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`v.
`YECHEZKAL EVAN SPERO,
`Patent Owner.
`
`IPR2023-01034
`Patent 11,208,029 B2
`
`Before JON M. JURGOVAN, JASON W. MELVIN, and
`AARON W. MOORE, Administrative Patent Judges.
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2023-01034
`Patent 11,208,029 B2
`
`INTRODUCTION
`I.
`Mercedes-Benz USA, LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1–33 (“the challenged claims”) of U.S.
`Patent No. 11,208,029 B2 (Ex. 1001, “the ’029 patent”). Yechezkal Evan Spero
`(“Patent Owner”) filed a Preliminary Response. (Paper 10, “Prelim. Resp.”). As
`authorized, Petitioner filed a Preliminary Reply (Paper 14, “Prelim. Reply”), and
`Patent Owner filed a Preliminary Sur-Reply (Paper 15, “Prelim. Sur-Reply”).
`Pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`determine whether to institute review.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
`conclude that Petitioner has shown a reasonable likelihood it will prevail in
`establishing the unpatentability of at least one challenged claim.
`
`A. REAL PARTIES IN INTEREST
`As real parties in interest, Petitioner identifies: Mercedes-Benz USA, LLC;
`Mercedes-Benz Group AG; Mercedes-Benz AG; and Mercedes-Benz Intellectual
`Property GmbH & Co. KG. Pet. 3. Patent Owner identifies Yechezkal Evan Spero
`and Torchlight Technologies LLC as the real parties in interest, noting that
`Torchlight is the exclusive licensee of the ’029 patent. Paper 3, 1 (Patent Owner’s
`Mandatory Notices).
`
`B. RELATED MATTERS
`The parties identify the following related federal district court litigations of
`the ’029 patent: Torchlight Techs. LLC v. Daimler AG et al., No. 1:22-cv-00751
`
`2
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`IPR2023-01034
`Patent 11,208,029 B2
`(D. Del.); Torchlight Technologies LLC v. General Motors LLC et al., No. 1:22-
`cv-00752 (D. Del). Pet. 3; Paper 3, 1.
`The parties identify the following PTAB inter partes reviews of the
`’029 patent: IPR2022-01500; IPR2023-01586; IPR2023-01122; IPR2023-01226.
`Pet. 3; Paper 3, 1–2.1
`
`C. THE ’029 PATENT
`The ’029 patent is titled “Adaptive Headlight System” and relates to motor
`vehicle headlamps with LED light sources and a processor to control the headlamp
`light pattern. Ex. 1001, codes (54), (57). The specification more generally
`describes a lighting device that “incorporates one or more discrete light sources
`and their ancillary optical and electrical control equipment in an integrated
`illuminating element.” Id. at 13:34–36. The combined unit is referred to as a
`Digital Lighting Fixture (DLF). Id. at 18:29–33.
`The specification further describes transportation-vehicle applications. Id.
`at 50:49–57:35. One such application involves a DLF headlamp device that
`includes a cluster of LEDs to illuminate around a curve. Id. at 51:54–63, 54:8–15.
`With LEDs having a variety of aims, the headlamp’s light distribution pattern may
`be controlled based on a number of factors, including location data from a GPS
`system, providing information about upcoming curves in the road. See id. at 51:54–
`67, 54:15–22.
`
`
`1 Patent Owner further lists reissue applications, reexaminations, and IPRs
`involving patents related to the ’029 patent. Paper 3, 2–3.
`
`3
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`IPR2023-01034
`Patent 11,208,029 B2
`
`D. CHALLENGED CLAIMS
`Petitioner challenges all thirty-three claims of the ’029 patent. Pet. 4.
`Claim 1 is independent and is reproduced below:
`1. A system, for a motor vehicle, comprising:
`a plurality of headlamps, each comprising a plurality of LED light
`sources;
`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:
`receive first data, including at least map data, indicating a road
`curvature upcoming along a road on which the motor
`vehicle is traveling;
`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
`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.
`Ex. 1001, 95:56–96:8. Claims 2–11 depend, directly or indirectly, from claim 1. Id.
`at 96:9–97:44. Claim 12 is independent and recites limitations similar to claim 1’s.
`Id. at 97:45–62. Claims 13–22 depend, directly or indirectly, from claim 12. Id. at
`97:63–99:27. Claim 23 is independent and recites limitations similar to claim 1’s.
`
`[2]
`
`[3]
`
`
`2 Patent Owner refers to these as the “predictive curve illumination limitations.”
`Prelim. Resp. 8.
`3 Patent Owner refers to these as the “control limitations.” Prelim. Resp. 8.
`
`4
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`IPR2023-01034
`Patent 11,208,029 B2
`Id. at 99:28–43. Claims 24–33 depend, directly or indirectly, from claim 23. Id.
`at 99:44–100:66.
`
`E. PRIOR ART AND ASSERTED GROUNDS
`This proceeding includes the following unpatentability grounds:
`Claims Challenged
`35 U.S.C. §4 References/Basis
`1–8, 10–19, 21–30, 32, 33
`103
`Alden5, Kobayashi6
`9, 20, 31
`103
`Alden, Beam7, Kobayashi
`
`Pet. 5. Petitioner also relies on the Declaration of Dr. Nikolaos Papanikolopoulos.
`Ex. 1003.
`
`II. ANALYSIS
`A. DISCRETIONARY DENIAL
`Patent Owner argues that we should exercise our discretion under 35 U.S.C.
`§ 314(a) to deny institution under the factors considering serial petitions set forth
`in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19, 15–16 (PTAB Sept. 6, 2017) (precedential). Prelim.
`Resp. 43–59.
`The ’029 patent was challenged by Unified Patents, LLC, in
`IPR2022-01500; we instituted review and later terminated by the parties’
`agreement. IPR2022-01500, Paper 15 (institution), Paper 26 (termination). The
`
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes.
`Because the application from which the ’029 patent issued was filed before this
`date, the pre-AIA version of § 103 applies.
`5 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005).
`6 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006).
`7 US 6,144,158, issued Nov. 7, 2000 (Ex. 1007).
`
`5
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`IPR2023-01034
`Patent 11,208,029 B2
`’029 patent was challenged also by Volkswagen Group of America, Inc., in
`IPR2023-01586; we instituted review, which remains pending. IPR2023-01586,
`Paper 7. Patent Owner challenges institution here based on both prior proceedings.
`Prelim. Resp. 47–51. We do not agree that this case warrants discretionary denial.
`The first General Plastic factor considers whether the same petitioner
`previously challenged the same claims of the same patent. General Plastic,
`Paper 19, 16. Here, Patent Owner asserts that although Petitioner did not do so, we
`should consider Petitioner as having a substantial relationship with both Unified, to
`which Patent Owner asserts Petitioner is a real party in interest (Prelim. Resp. 47–
`49), and Volkswagen, which is a co-defendant with Petitioner in Patent Owner’s
`infringement suit (id. at 50–51).
`As to Unified, Petitioner points out that Patent Owner makes no argument
`regarding a statutory bar or estoppel, arguing that we should therefore not assess
`the potential relationship. Prelim. Reply 1; see SharkNinja Operating LLC v.
`iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020)
`(precedential). Regardless of whether an RPI relationship may, in some case,
`influence factor 1, we determine that it would not support discretionary denial
`here. In particular, in IPR2022-01500, we instituted review and did not find the
`petition deficient. IPR2022-01500, Paper 15. Thus, Petitioner’s assertion of a
`different reference does not appear to have resulted from that prior IPR. And that
`proceeding settled without a final written decision, further supporting that
`Petitioner received no benefit from Unified’s IPR.
`To argue that we should consider Petitioner related to VW, Patent Owner
`relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062,
`Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve
`involved parties that were accused of infringement based on the same product.
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`IPR2023-01034
`Patent 11,208,029 B2
`Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of
`infringing “based on the same type of headlight technology” (Prelim. Resp. 50–
`51), but that is insufficient. Patent Owner asserts that both parties’ accused
`headlights were “developed jointly with Hella KGaA Hueck & Co.” (id. at 51), but
`that also is an insufficient connection for us to consider two parties substantially
`related for purposes of discretionary denial. As Petitioner points out, it and VW are
`direct competitors, accused of infringing based on two different products, not as a
`supplier and customer of a single product, as was at issue in Valve. Prelim.
`Reply 1.
`Additionally, although Patent Owner asserts that Petitioner and VW “have a
`history of coordinating serial IPR petitions” (Prelim. Resp. 51–53), the facts of
`each case are unique and we will not infer a motive from prior proceedings.
`Having considered Patent Owner’s arguments,8 we conclude that the first General
`Plastic factor weighs strongly against discretionary denial.
`Factors 2 through 5 relate to Petitioner’s knowledge of its asserted art,
`knowledge of Patent Owner’s or the Board’s position on previously asserted art,
`and any explanation for the time between two petitions. General Plastic, Paper 19,
`16. Because we determine that Petitioner did not previously challenge the
`challenged claims, those factors are substantially diminished. Even considering
`
`
`8 Patent Owner asserts further that we should follow Shenzhen Silver Star
`Intelligent Tech. v. iRobot Corp., IPR2018-00761, Paper 15 at 16-17 (PTAB
`September 5, 2018), to apply a presumption that a petition should be denied when
`it is filed after a preliminary response or institution decision arising from an
`earlier-filed petition. Prelim. Resp. 50. Patent Owner does not acknowledge that
`the discussion it seeks to rely on comes from a concurrence, which is not the
`opinion of the Board. That opinion is not binding and we decline to adopt its
`approach.
`
`7
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`Patent 11,208,029 B2
`that Petitioner saw Patent Owner’s preliminary responses to Unified’s and
`Volkswagen’s petitions and the Board’s institution decisions, any roadmapping
`concern is substantially reduced in light of our decision to institute review for the
`two prior petitions. See IPR2022-01500, Paper 15 (institution); IPR2023-01586,
`Paper 7. Patent Owner’s roadmapping contention relates to our evaluation of VW’s
`ground using Beam as a primary reference in IPR2023-01586. Prelim. Resp. 56–
`57. Because we noted “that Beam’s disclosures cast doubt on [VW’s]
`combination” of Beam and Kobayashi (IPR2023-01586, Paper 7, 20), Patent
`Owner submits that Petitioner here “dropped Beam as a primary reference for the
`independent claims” (Prelim. Resp. 57). Petitioner disputes that contention,
`submitting that it “developed its own challenges based on Alden.” Prelim.
`Reply 3–4, 4 n.3.
`We are not persuaded that the Petition shows unfair roadmapping. As
`discussed below, Patent Owner argues that Alden suffers from the same deficiency
`that it asserted against Beam in IPR2023-01586. See infra at 14 (discussing Patent
`Owner’s argument that Alden teaches projecting a high beam everywhere other
`than towards a detected oncoming vehicle); IPR2023-01586, Paper 7, 19–20
`(discussing same argument as to Beam). Although we read Alden as not suffering
`from Beam’s possible deficiency, had Petitioner wanted to address Patent Owner’s
`IPR2023-01586 argument (and our institution decision), Petitioner would have
`adjusted its challenge here more directly and fully. Stated otherwise, if Petitioner
`had roadmapped in light of IPR2023-01586, we would expect such an adjustment
`to be more evident. Instead, we view the Petition’s challenges as resulting from
`Petitioner’s independent evaluation of the prior art. Given our determination that
`Petitioner is not substantially related to VW, Petitioner should have the opportunity
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`IPR2023-01034
`Patent 11,208,029 B2
`to proceed with its own challenge against a patent for which Petitioner has been
`accused of infringing.
`We have considered Patent Owner’s arguments based on General Plastic
`and conclude that this case does not warrant discretionary denial.
`
`B. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner asserts that an ordinarily skilled artisan “would have had an
`undergraduate degree in mechanical engineering, electrical engineering,
`automotive engineering, optical engineering, applied physics, computer science, or
`similar disciplines, along with two years of experience working with intelligent
`vehicle systems, automotive control systems, or lighting control systems.” Pet. 8–9
`(citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in
`the art. Prelim. Resp. 9. We adopt the undisputed level of ordinary skill in the art
`for purposes of this decision.
`
`C. CLAIM CONSTRUCTION
`The parties agree that no express claim construction is required at this stage.
`Pet. 8; Prelim. Resp. 9. We agree with the parties and therefore do not further
`construe the claims for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368,
`1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that
`. . . are in controversy, and only to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999)).
`Below, we discuss Patent Owner’s argument relating to the “shaping” claim
`term, which appears to imply a claim construction that Patent Owner has not yet
`explained. See infra at 15. Should Patent Owner wish to pursue such an argument
`
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`IPR2023-01034
`Patent 11,208,029 B2
`in the instituted trial, Patent Owner should offer and support a construction for the
`term.
`
`D. OBVIOUSNESS OVER ALDEN AND KOBAYASHI
`Petitioner asserts that claims 1–8, 10–19, 21–30, 32, and 33 are unpatentable
`as obvious over Alden and Kobayashi. Pet. 12–68. For most of claim 1’s
`limitations, Petitioner relies on Alden alone. Id. at 12–30.
`Alden discloses a vehicle headlight system using a segmented-beam
`headlight and a sensor to detect other vehicles, such that the headlight’s beam can
`be dimmed in the area of a detected vehicle, maximizing illumination for the
`equipped vehicle while minimizing glare to other vehicles. Ex. 1005, codes (54),
`(57). Alden describes a sensor such as a photodiode array for detecting oncoming
`vehicles’ headlights as pairs of bright dots, and a controller that interprets those
`dots as an oncoming vehicle and designates for dimming a portion of the
`illumination field corresponding to the possible driver of the oncoming vehicle,
`then reduced the brightness of the segmented-beam headlight in the designated
`area. Id. ¶¶ 25–28. As one embodiment for the headlight, Alden discloses an array
`of individual LEDs, controlled to implement the desired lighting pattern in the
`projected beam. Id. ¶ 29. As an additional application of its system, Alden
`discloses that it may be “used to concentrate light to look around corners in
`response to road conditions.” Id. ¶ 36. When a vehicle detects road turns, the
`system “direct[s] light into the corner to maximize the driver’s ability to see there.”
`Id.
`
`For receiving map data indicating an upcoming road curvature, Petitioner
`relies on Kobayashi, submitting that it would have been obvious to “use map data
`to identify road curvature when adapting the LEDs of Alden to ‘direct light into the
`
`10
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`IPR2023-01034
`Patent 11,208,029 B2
`corner.’” Pet. 23–24 (quoting Ex. 1005 ¶ 36). Petitioner reasons that Alden
`discloses detecting road curvature through roadside reflectors and steering-wheel
`sensors, and Kobayashi discloses an additional way to detect road curvature. Id.
`at 24. Petitioner continues that, because Kobayashi discloses using map data to
`control vehicle headlights, skilled artisans would have had reason to adopt its
`teachings in Alden’s system “to maximize successful detection in different
`environments.” Id. at 24–25 (citing Ex. 1003 ¶ 70). Petitioner relies on Kobayashi
`also for determining a light change to increase light in the direction of road
`curvature and shaping light based on the road curvature. Id. at 27. Finally,
`Petitioner relies on Kobayashi for the requirement to control the light sources both
`based on the determined light change and also prior to the vehicle reaching the
`road curvature. Id. at 30.
`Patent Owner disputes several aspects of Petitioner’s contentions relating to
`the independent claims. Prelim. Resp. 22–41. The disputes relate to limitations that
`Patent Owner identifies as the “Predictive Illumination Determination Limitation”
`and the “Control Limitation.” Id. at 8; see supra at 4 n.2, n.3 (§ I.D). As noted
`above, Petitioner relies on a combination of Alden and Kobayashi for those
`limitations. Petitioner asserts that Alden discloses determining illumination based
`on road curvature as shown in Figure 11, reproduced below:
`
`11
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`IPR2023-01034
`Patent 11,208,029 B2
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`Figure 11 illustrates an application of Alden’s invention “being used to concentrate
`light to look around corners in response to road conditions” in which vehicle 153
`senses that the road turns and “direct[s] light into the corner to maximize the
`driver’s ability to see there.” Ex. 1005 ¶ 36.
`Petitioner asserts that Alden’s system determines a light change that both
`increases light in the direction of road curvature and shapes the light based on the
`road curvature. Pet. 25–27. Petitioner relies on Alden’s disclosures that it can
`“concentrate light to look around corners” and “direct light into the corner.” Id.
`Petitioner asserts further that Kobayashi discloses shaping light because it
`discloses controlling its lights “in accordance with the course concerned.” Pet. 23
`(quoting Ex. 1006, 17:59–61), 27 (referencing Pet. 23). Petitioner reasons that it
`would have been obvious to use Kobayashi’s teachings to adapt lighting to the road
`shape informed by map data. Id. at 27.
`Patent Owner argues first that Petitioner relies on multiple embodiments in
`Alden but provides no reason that a skilled artisan would have combined those
`
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`IPR2023-01034
`Patent 11,208,029 B2
`embodiments. Id. at 24–27. We do not agree. Alden discusses “elements of a
`segmented distribution illumination process” in connection with Figure 2. Ex. 1005
`¶ 26. The described process uses “Segmented Beam Headlight” 61 to differentially
`illuminate sectors of the illumination. Id. Alden’s description is generic to the
`specific headlight embodiment, and states that “[s]ome methods employed within
`61 to segment light into independently controlled sectors are discussed later.” Id.
`Similarly, Figure 3 and its associated discussion provides “a more detailed
`illustration of the information flow, processes and architecture of the elements
`described in FIG. 2.” Id. ¶ 27, Fig. 3. Figure 3 depicts Segmented Headlights 83
`and 85 generically, and the description refers to them without limiting the
`particular form of those headlights. Id. Thus, when Alden describes that Figure 5
`“illustrates the segmented headlight means and controlling switch array in a first
`embodiment,” that does not describe an aspect disconnected from the components
`and operation depicted in Figures 2 or 3, but rather provides details regarding one
`embodiment of the segmented headlights included in Figures 2 and 3. See id. ¶ 29.
`The same is true for Figure 11, in which Alden illustrates an application where its
`controllable headlights are used “to concentrate light to look around corners in
`response to road conditions.” Ex. 1005, ¶ 36, Fig. 11. As Alden states, the
`application directing light around road bends “can be achieved with the segmented
`sensing elements and segmented light distribution elements described herein.” Id.
`¶ 36. That disclosure supports that any of its embodiments for controllable
`headlights could be operated in a manner to light in the direction of road curvature.
`Patent Owner argues also that Alden does not disclose controlling its lights
`to increase light in the direction of road curvature. Prelim. Resp. 28–31. Patent
`Owner identifies Petitioner’s annotated Figure 5 from Alden, which Petitioner uses
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`Patent 11,208,029 B2
`to show how Alden would operate its segmented light to achieve Figure 11’s
`application. Petitioner’s annotated Figure 5 is reproduced below:
`
`
`
`Pet. 29. Figure 5 illustrates Alden’s segmented-beam headlight using a number of
`individual lighting element 119 to project light through headlight lens 121.
`Ex. 1005 ¶ 29. Petitioner’s annotations show a plurality of lighting elements being
`used to illuminate only one side of the possible lighting distribution area. Pet. 28–
`29.
`
`In Patent Owner’s view, Alden never discloses deactivating LED elements
`as depicted in Petitioner’s annotated Figure 5, because Alden discloses projecting a
`high beam everywhere other than where an oncoming vehicle is detected. Prelim.
`Resp. 29–31. Because all lights are activated in Alden’s base state, argues Patent
`Owner, Alden does not disclose increasing light in the direction of a curve. Id.
`
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`Patent Owner’s argument, however, does not consider Alden’s Figure 11
`application discussed above, in which light is directed towards the road curvature
`and not provided to the opposite side. We view Petitioner’s annotated Figure 5 as
`accurately depicting how Figure 5’s embodiment would operate when
`implementing the Figure 11 application.
`Next, Patent Owner argues that neither Alden nor Kobayashi discloses
`“shaping light” as claimed. Prelim. Resp. 31–33. In that regard, Patent Owner
`asserts Alden’s Figure 11 application “merely changes the direction of light
`emitted by the headlight . . . but does not shape the light emitted.” Id. at 32
`(emphasis omitted). Patent Owner further supports its position by pointing out that
`Alden never discusses “shaping” the projected light. Id. As discussed above,
`Petitioner relies on Alden’s disclosures that the Figure 11 application can
`“concentrate light to look around corners in response to road conditions” and that
`the headlights “direct light into the corner.” Pet. 25–26 (citing Ex. 1005 ¶¶ 36, 54,
`Fig. 11). Petitioner relies additionally on Kobayashi’s teaching of controlling light
`according to “the road profile.” Pet. 23 (quoting Ex. 1006, 5:5–8).
`Patent Owner asserts that Petitioner’s contentions conflate “directing” light
`with “shaping” light, but Patent Owner does not explain further. Patent Owner
`appears to be relying on particular view of what “shaping” requires but has not
`offered a claim construction at this stage. It seems that light projected out at
`different angles through Alden’s or Kobayashi’s optical system would have
`different shapes, as a result of each system’s characteristics. Moreover, Alden’s
`teaching to “concentrate” light appears to address the claims’ requirement for
`shaping light. We determine that Petitioner’s contentions support institution.
`Finally, Patent Owner argues that neither Alden nor Kobayashi discloses
`controlling lights based on road curvature “prior to” the vehicle reaching the
`
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`curvature. Prelim. Resp. 33–37. For that aspect of the claims, Petitioner asserts that
`Alden discloses detecting an upcoming turn using roadside reflectors, such that
`“sensing would occur before the road curves.” Pet. 29–30 (citing Ex. 1005 ¶¶ 36–
`40, Figs. 1, 4). Petitioner asserts that Alden teaches concentrating the light around
`the turn as soon as the turn is detected, thus “prior to” the vehicle reaching the turn.
`Id. Petitioner further relies on Kobayashi, which discloses using map data to
`indicate road curves to a controller that directs light into the curve. Id. at 23, 30.
`We agree with Petitioner that at least Kobayashi discloses controlling lights
`prior to the vehicle reaching a road curvature. Kobayashi’s Figure 10 is reproduced
`below:
`
`
`
`Figure 10 depicts vehicle K approaching a road curvature and shows that the
`“direction of irradiation point” has been altered in the direction of road curvature
`before the vehicle reaches the curvature. Ex. 1006, Fig. 10 (position A); see id.
`at 15:20–23. Controlling lights using Kobayashi’s method based on map data
`would therefore result in a vehicle that turns its lights toward a road curvature prior
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`Patent 11,208,029 B2
`to the vehicle reaching the curvature. Patent Owner points to Kobayashi’s
`statement that, “[w]hen the vehicle turns to the left, the left shoulder is
`illuminated” to argue that Kobayashi does not support adjusting lights prior to a
`curve. Prelim. Resp. 35 (quoting Ex. 1006, 15:21–23) (emphasis omitted). But that
`statement (1) does not preclude adjusting the lights before the vehicle turns left and
`(2) may be read as describing the general relationship without restricting the exact
`timing. Because Kobayashi’s Figure 10 discloses the claimed timing, we determine
`that Petitioner’s contentions support institution.
`Patent Owner does not otherwise contest Petitioner’s obviousness challenge
`to the independent claims. We have reviewed Petitioner’s contentions and evidence
`regarding obviousness of the independent claims and determine that they support
`institution. Additionally, at this stage, Patent Owner does not challenge Petitioner’s
`contentions regarding the dependent claims. We will evaluate the merits of those
`contentions during the instituted trial.
`
`E. OBVIOUSNESS OVER ALDEN, BEAM, AND KOBAYASHI
`Petitioner asserts that dependent claims 9, 20, and 31 would have been
`obvious over Alden, Beam, and Kobayashi. Pet. 68–79. Those claims indirectly
`depend from claims 1, 12, and 23, respectively, and further recite, inter alia, that
`controlling a second plurality of LEDs “includes termination of light from at least
`one LED providing light directed to the area prior to the termination.” E.g.,
`Ex. 1001, 97:33–36. Petitioner asserts first that skilled artisans would have
`understood that Alden’s approach of dimming an LED “could include operating at
`zero” and that “turning off LEDs that emit light directly at the drive of the other
`vehicle would accomplish Alden’s purpose of reducing glare to other drivers.”
`
`17
`
`
`
`IPR2023-01034
`Patent 11,208,029 B2
`Pet. 75 (citing Ex. 1003 ¶ 147). Those contentions appear to address obviousness
`without reliance on Beam.
`Petitioner asserts additionally that Beam discloses a headlight system using
`individually controlled microbeams to eliminate glare for other vehicles,
`“controlled to darken light directed to the areas of the sensed oncoming and
`preceding vehicles.” Id. at 76 (emphasis omitted) (citing Ex. 1007, 4:9–25, 4:45–
`59. 5:61–6:8, 6:61–7:8). Petitioner points also to Beam’s disclosure that its lighting
`elements can be “blanked” (id. at 77 (quoting Ex. 1007, 4:26–52, 5:33–54)), which
`skilled artisans would understand as terminating light output (id. (citing Ex. 1003
`¶¶ 149–150)). Petitioner reasons that skilled artisans would have had reason to
`modify Alden’s system to place at least one LED of the claimed second plurality in
`the terminated output state “to further dim headlight beam output directed to areas
`of the oncoming vehicles as taught by Beam.” Id. (citing Ex. 1003 ¶ 151).
`Patent Owner argues that including Beam does not remedy the deficiencies
`with Petitioner’s independent-claim challenge. Prelim. Resp. 42. To the extent
`Patent Owner addresses Beam’s disclosures, it does so in relation to the limitations
`of the independent claims, for which Petitioner does not rely on Beam. Id. For the
`reasons discussed above and considering Petitioner’s unchallenged contentions, we
`determine that Petitioner’s contentions for the independent claims support
`institution. And Petitioner’s contentions directed to Beam support obviousness of
`dependent claims 9, 20, and 21, further supporting institution.
`
`III. CONCLUSION
`For the reasons discussed above, we conclude Petitioner has shown a
`reasonable likelihood of prevailing with respect to at least one claim. We have
`
`18
`
`
`
`IPR2023-01034
`Patent 11,208,029 B2
`evaluated all of the parties’ submissions and determine that the record supports
`institution.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of
`claims 1–33 of the ’029 patent is instituted on the grounds set forth in the Petition;
`and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial commencing on the entry
`date of this decision.
`
`
`
`
`19
`
`
`
`IPR2023-01034
`Patent 11,208,029 B2
`For PETITIONER:
`Celine Crowson
`Joe Raffetto
`Scott Hughes
`Ryan Stephenson
`HOGAN LOVELLS US LLP
`celine.crowson@hoganlovells.com
`joseph.raffetto@hoganlovells.com
`scott.hughes@hoganlovells.com
`ryan.stephenson@hoganlovells.com
`
`For PATENT OWNER:
`Sangeeta G. Shah
`David Bir
`Andrew Turner
`BROOKS KUSHMAN P.C.
`sshah@brookskushman.com
`aturner@brookskushman.com
`btomsa@brookskushman.com
`
`
`
`
`
`20
`
`
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