Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 13
`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.
`
`IPR2023-01126
`Patent 11,208,029 B2
`
`Before JON M. JURGOVAN, JASON W. MELVIN, and
`AARON W. MOORE, Administrative Patent Judges.
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 13
`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.
`
`IPR2023-01126
`Patent 11,208,029 B2
`
`Before JON M. JURGOVAN, JASON W. MELVIN, and
`AARON W. MOORE, Administrative Patent Judges.
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2023-01126
`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”). Petitioner filed also a
`Contingent Motion for Joinder seeking to join Petitioner as a party to Volkswagen
`Group of America, Inc. v. Yechezkal Evan Spero, IPR2022-01586 (“the VW IPR”),
`instituted May 24, 2023. Petitioner filed also a Petition Ranking and Explanation
`of Material Differences Between Petitioner (Paper 4, “Petition Ranking).
`Yechezkal Evan Spero (“Patent Owner”) filed a Preliminary Response. (Paper 11,
`“Prelim. Resp.”) and did not oppose joinder. 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
`exercise our discretion to deny institution.
`
`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. 102. 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 6, 1 (Patent Owner’s
`Mandatory Notices).
`
`2
`
`
`
`IPR2023-01126
`Patent 11,208,029 B2
`
`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
`(D. Del.); Torchlight Technologies LLC v. General Motors LLC et al., No. 1:22-
`cv-00752 (D. Del). Pet. 102–03; Paper 6, 1.
`The parties identify the following PTAB inter partes reviews of the
`’029 patent: IPR2022-01500; IPR2023-01586; IPR2023-01034; and
`IPR2023-01122. Pet. 102–03; Paper 6, 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
`
`
`
`IPR2023-01126
`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.
`
`[2]
`
`[3]
`
`
`2 Patent Owner refers to these as the “predictive curve illumination limitations.”
`Prelim. Resp. 16.
`3 Patent Owner refers to these as the “control limitations.” Prelim. Resp. 16.
`
`4
`
`
`
`IPR2023-01126
`Patent 11,208,029 B2
`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. 4–5. Petitioner also relies on the Declaration of Dr. Jianzhong Jiao. Ex. 1003.
`
`II. ANALYSIS
`Petitioner asserts that we should institute here only if we deny institution in
`IPR2023-01034. Pet. 105. Petitioner’s Motion for Joinder is expressly conditioned
`on whether we institute review in IPR2023-01034. Mot. 1.
`Because we instituted review in IPR2023-01034, we accept Petitioner’s
`position and exercise our discretion to deny institution here, regardless of the
`Petition’s merits. Because we deny institution, Petitioner’s Motion for Joinder is
`moot.
`
`III. CONCLUSION
`For the reasons discussed above, we exercise our discretion to deny
`institution. In addition, Petitioner’s Motion for Joinder is dismissed as moot.
`
`
`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
`
`
`
`IPR2023-01126
`Patent 11,208,029 B2
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of the
`’029 patent is denied and no trial is instituted; and
`FURTHER ORDERED that Petitioner’s Contingent Motion for Joinder is
`dismissed as moot.
`
`
`
`
`6
`
`
`
`IPR2023-01126
`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
`
`
`
`
`
`7
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