Trials@uspto. gov
`571-272-7822
`
`Paper 15
`Entered: May 4, 2023
`
`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
`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/nter Partes Review
`35 US.C. $314
`
`
`571-272-7822
`
`Paper 15
`Entered: May 4, 2023
`
`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
`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/nter Partes Review
`35 US.C. $314
`
`
`
`IPR2022-01500
`Patent 11,208,029 B2
`
`I.
`
`INTRODUCTION
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`Unified Patents, LLC (“Petitioner”) filed a Petition (Paper1, “Pet.”’)
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`requesting interpartes review of claims 1, 2, 10-13, 23, and 24 of
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`U.S. Patent No. 11,208,029 B2 (Ex. 1001, “the 029 patent’). Torchlight
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`Technologies LLC (“Patent Owner”) filed a Preliminary Response. Paper 8
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`(Prelim. Resp.”’). Pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we
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`have authority to determine whetherto institute review.
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`An interpartes review may not be instituted unless “the information
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`presentedin the petition .
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`.
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`. and any response. .
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`. showsthat there is a
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`reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
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`reasonsset forth below, we concludethat Petitioner has shownareasonable
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`likelihood it will prevail in establishing the unpatentability of at least one
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`challenged claim, and weinstitute interpartes review.
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`A.
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`REAL PARTIES IN INTEREST
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`Petitioner identifies itself as the real party in interest. Pet. 1. Patent
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`Owneralso identifies itself as the real party in interest, noting thatit is the
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`exclusive licensee of the ’029 patent, which is owned by Yechezkal Evan
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`Spero. Paper 6, 1 (Patent Owner’s Mandatory Notices). Patent Owner
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`challenges Petitioner’s identification, and we discussthat challenge below.
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`See infra at 16 (§§ ILE, ILF).
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`B.
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`RELATED MATTERS
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`Theparties identify the following related litigation: Torchlight
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`Technologies LLC v. Daimler AG et al., No. 1:22-cv-00751 (D. Del);
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`Torchlight Technologies LLC v. General Motors LLC et al., No. 1:22-cv-
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`IPR2022-01500
`Patent 11,208,029 B2
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`00752 (D. Del.). Pet. 2; Paper 6, 1. Patent Owneradditionally identifies
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`Volkswagen Group ofAmerica, Inc. v. Yechezkal Evan Spero,
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`IPR2022-01586 (PTAB October 3, 2022). Paper6, 1.
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`C. THE’029 PATENT
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`The ’029 patentis titled “Adaptive Headlight System”andrelatesto
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`motor vehicle headlamps with LED light sources and a processorto control
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`the headlamplight pattern. Ex. 1001, codes (54), (57). The specification
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`more generally describes a lighting device that “incorporates one or more
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`discrete light sources and their ancillary optical and electrical control
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`equipmentin an integrated illuminating element.” /d. at 13:34—36. The
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`combinedunit is referred to as a Digital Lighting Fixture (DLF). /d. at
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`18:29-33.
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`The specification further describes transportation vehicle applications.
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`Id. at 50:49-57:35. One such application involves a DLF headlamp device
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`that includes a cluster of LEDs to illuminate aroundacorner./d. at 51:54—
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`63, 54:8-15. With LEDshaving a variety of aims, the headlamp’s light
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`distribution pattern may be controlled based on a numberoffactors,
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`including location data froma GPS system, providing information about
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`upcoming curvesin the road. See id. at 51:54—67, 54:15—22.
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`D.
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`CHALLENGED CLAIMS
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`Challenged claim 1 is independentand 1s reproduced below:
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`1. A system, fora motor vehicle, comprising:
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`a plurality of headlamps, each comprising a plurality of
`LED light sources;
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`one or more processors, and
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`
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`IPR2022-01500
`Patent 11,208,029 B2
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`a memory storing instructions that, when executed by one
`or more of the one or more processors, enable the one or
`more processorsto:
`receivefirst data, including at least map data, indicating
`a road curvature upcoming along a road on whichthe
`motor vehicle1s traveling;
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`determine a light change, the change adapting a light
`pattern of the headlampsin atleast one ofcolor,
`intensity or spatial distribution to increase light in a
`direction of the road curvature ahead ofthe motor
`vehicle and shapinglight basedat least in part on the
`road curvature; and
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`control at least a first plurality of the LED light sources
`to provide light basedat least in part on the
`determined light change and prior to the motor
`vehicle reaching the road curvature.
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`Id. at 95:56-96:8. Claims 2, 10, and 11 depend,directly or indirectly, from
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`claim 1. /d. at 96:9-11, 97:39-44. Claim 12 1s independentandrecites
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`limitations similar to claim 1’s. /d. at 97:45—62. Claim 13 depends from
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`claim 12. /d. at 97:63—65. Claim 23 is independentandrecites limitations
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`similar to claim 1’s. /d. at 99:28—43. Claim 24 depends from claim 23. /d. at
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`99:4446.
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`E.
`PRIOR ART AND ASSERTED GROUNDS
`Petitionerasserts the following ground of unpatentability:
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`
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`‘US 5,588,733; filed June 7, 1995, issued Dec. 31, 1996 (Ex. 1003).
`* US 6,406,172 B1; filed June 22, 2000, issued June 18, 2002 (Ex. 1004).
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`4
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`IPR2022-01500
`Patent 11,208,029 B2
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`1, 2, 10-13, 23, 24
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`1, 2, 10-13, 23, 24
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`Heinz, Gotou, Harbers
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`Heinz*, Gotou
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`103
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`103
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`Pet. 6. Petitioner also relies on the Declaration of Mr. A. Brent York.
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`Ex. 1002.
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`Il. ANALYSIS
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`A.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`Petitioner asserts that ordinarily skilled artisans “would have had at
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`least a bachelor’s degree in physics, engineering physics, mechanical
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`engineering, electrical engineering, or a related field, and at least two years
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`of work experience in transportation lighting.” Pet. 14 (citing Ex. 1002
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`4] 32-35). Patent Owner“disputes Unified’s proposedlevel of ordinary
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`skill’ and proposesthat skilled artisans:
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`would have had a Master’s of Science Degree (or a similar
`technical Master’s Degree, or higher degree) in an academic
`area emphasizing electrical engineering, computer engineering,
`or computer science with experience or education in optics and
`imaging systemsor, alternatively, a Bachelor’s Degree (or
`higher degree) in an academic area emphasizingelectrical,
`computer engineering or computer science and having two or
`more years of experience in thefield of optical and imaging
`systems.
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`Prelim. Resp. 16. Patent Owner, however, does not explain the significance
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`of the differing levels of ordinary skill proposed. To the extent Patent Owner
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`3 German Patent DE 199 23 187 C2, issued May 3, 2001 (Ex. 1006 (certified
`translation); Ex. 1007 (original)).
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`5
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`IPR2022-01500
`Patent 11,208,029 B2
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`believes the level of ordinary skill affects this proceeding, it should explain
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`that in the instituted trial.
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`B.
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`CLAIM CONSTRUCTION
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`The parties agree that no express claim construction is requiredat this
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`stage. Pet. 14; Prelim. Resp. 16. We therefore do not construe the claims for
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`this decision. Realtime Data, LLC v. lancu, 912 F.3d 1368, 1375 (Fed. Cir.
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`2019) (“The Boardis required to construe ‘only those terms. .. that are in
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`controversy, and only to the extent necessary to resolve the controversy.’”’)
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,200 F.3d 795, 803
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`(Fed. Cir. 1999)).
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`To the extent the scope of a particular claim term impacts a party’s
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`argument duringtrial, the party should propose an express construction and
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`show howthe record supportstt.
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`C.
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`OBVIOUSNESS OVER GOTOU AND HARBERS
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`Gotouistitled “Head Lamp Device for Vehicle” and is directed to a
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`vehicle headlamp withaleft-right adjustable lighting region. Ex. 1003,
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`codes (54), (57). Gotou’s device may adjust the lighting region based on a
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`numberoffactors, including “direction indicating signal, steermg angle
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`signal, map information and information ofthe presentposition.” /d. at
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`2:5—7. Gotou describes a “light distributing control ECU 10”that receives
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`information froma variety of sensors and “processes the information|] and
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`signals to determine a requisite optical axis angle 0.” /d. at 3:52—63. Gotou’s
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`system usesthe optical axis angle to control a motordriver that aims the
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`lamp unit. /d. at 3:24—45, 3:63-67. Gotou describesthatits controller
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`generates “a curve pre-noticing signal” from map information and adjusts
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`IPR2022-01500
`Patent 11,208,029 B2
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`the optical axis angle “when the vehicle reaches the predetermined distance
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`S before the curve entrance and the light distribution is deflected leftward at
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`a proper timing before the curve.”/d. at 7:32—43.
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`Harbersis titled “Headlamp and Dynamic Lighting System for
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`Vehicles” andis directed to a vehicle headlamp comprising multiple lighting
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`elements (preferably LEDs) that can be switched on andoff to adjust the
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`spatial distribution of the headlamp’s light beam. Ex. 1004, codes (54), (57),
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`2:9-12. Harbers describes adjusting the headlamp’s spatial distribution
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`based on vehicle velocity, steering-wheel rotation, weather conditions, or
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`driver input. /d. at 3:11—4:3.
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`Petitioner relies on Gotou’s control ECU as the claimed processorthat
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`receives map data indicating upcoming road curvature and, before the
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`vehicle reaches the curve, determinesthe desired optical axis to increase
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`light in the direction of road curvature, and relies on Harbers’s LED
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`headlampsas the mechanism included in the combination’s headlights for
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`realizing the desired optical axis. Pet. 28—50. Petitioner submitsthat it would
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`have been obvious to combine the teachings in that way because “the
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`combination would have enhanced how Gotou illuminates the surroundings
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`of a vehicle, providing Gotou’s headlights with Harbers’[s] LEDs to provide
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`“more dynamic lighting possibilities.’” Pet. 21 (quoting Ex. 1004, 1:43—45;
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`citing Ex. 1003, 3:24—35, Fig. 1; Ex. 1002 4 59). Petitioner asserts that, in
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`the combination, “Gotou’s ECU would have sent control signals .
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`.
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`. that
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`... control each of Harbers’[s] LEDs. . . to direct how the optical axes of
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`headlights 2 change.” /d. (citing Ex. 1002 4 59). Petitioner asserts
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`additionally that the combination “would have improvedthe efficacy of
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`Gotou’s system, providing improvedlighting by right andleft headlights 2,
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`7
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`and in turn, improvementsto the driver’s view of surroundings, furthering
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`Gotou’s goals of ‘superior visibility.’” /d. at 22—23. Petitioner contendsthat
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`“only routine, known circuitry and/or programming changes would have
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`been necessary to adjust ECU 10 suchthatits control signals implement
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`Harbers’[s] LED control.” /d. at 25 (citing Ex. 1002 4 60).
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`1.
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`The “control” limitation
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`Patent Ownerarguesthat the Petition fails to show that the asserted
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`combination discloses “the control limitation in claims 1—22”—‘control at
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`least a first plurality of the LED light sourcesto provide light basedatleast
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`in part on the determinedlight change andprior to the motor vehicle
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`reaching the road curvature.” Prelim. Resp. 20. Patent Ownercontrasts
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`Gotou’s motor-pivoted single-lamp unit with Harbers’s non-moveable
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`multi-LED system, contending “the applied referencesare not functionally
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`interchangeable.” /d. Petitioner, however, does not rely on interchanging the
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`mechanical aspects of the two systems. Rather, the combination applies
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`Gotou’s control system with Harbers’s LED light source. Pet. 20-28.
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`Petitioner has adequately supported that Gotou’s control system would
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`determinethe desired optical axis, which could then be realized with
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`Harbers’s light sources.
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`Additionally, because Gotou’s system anticipates direction changes
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`and movesthe optical axis “before the steering wheelis actually turned”
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`(Ex. 1003, 6:40—44), Patent Ownercontendsit is not compatible with
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`Harbers’s control strategy, which dependson the “steering wheelposition
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`during a turn.” Prelim. Resp. 22 (emphasis omitted). But Petitioner does not
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`assert a combination including Harbers’s control strategy. Pet. 20—28. Thus,
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`Harbers’s control strategy does not impact whetherthe claims read on the
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`asserted combination. To the extent Patent Ownerargues that Harbers’s
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`different control strategy would preclude the asserted combination with
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`Gotou’s control system, we do not agree. Gotou’s control system determines
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`the optical axis required at any given time. Ex. 1003, 3:62—63, 4:45—47.
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`Harbers describes a headlamp system in which “spatial distribution 1s
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`(continuously) adjustable.” Ex. 1004, 2:34. As Patent Ownerpointsout, in
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`Harbers,“spatial distribution of the light beam is achieved by controlling the
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`individual LEDsand the correspondinglight beam segments; the optical axis
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`of each LED 1sfixed.” Prelim. Resp. 23 (citing Ex. 1004, 2:56—60). Harbers
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`describesthat the spatial distribution may respond to a numberofinternal or
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`external conditions. Ex. 1004, 2:11—22, 3:11-4:3. Stated otherwise,
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`Harbers’s headlampcanflexibly respondto create a desired spatial
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`distribution andis not limited to one particular source for the desired
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`distribution. Thus, Petitioner’s proposed combinationis consistent with
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`Harbers’s teachings, in that Gotou’s controller would provide a desired
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`spatial distribution to Harbers’s headlamp.
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`According to Patent Owner, “use ofmap information to generate the
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`single optical axis angle calculation in Gotou, without more, would be of no
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`use as an input to the Heinz and Harbers LED systems.” Prelim. Resp. 25. In
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`particular, Patent Owner questions “howthe optical axis angle calculation in
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`Gotou would be used to control individual LEDs in the Harbers and Heinz
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`headlights.” /d. at 26. We do not agree. Because Harbersdescribes a system
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`that can flexibly respondto a desired spatial light distribution, it facilitates a
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`system in which Gotou’s controller provides a desired optical axis. Thus, the
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`present record supports Petitioner’s contention that skilled artisans could
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`IPR2022-01500
`Patent 11,208,029 B2
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`readily adapt Harbers’s headlampto respondto the desired distribution from
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`Gotou’s controller.
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`2. Reasonto combine
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`Relatedly, Patent Ownerarguesthat Petitioner makes an unsupported
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`assertion that “Gotou’s ECU would have been enhancedto provide headlight
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`control as taught by Harbers, where the ECU’s control signals (‘indicating
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`signals’) would have controlled LEDsas taught by Harbers.”
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`Prelim. Resp. 29-30 (quoting Pet. 24) (emphases omitted). In Patent
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`Owner’s view,Harbersdiscloses controlling its LEDs based only on “three
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`fixed inputs: ‘the velocity of the vehicle,’ “the rotational position of the
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`steering wheel,’ and manualinputs by the driver.” /d. at 29 (quoting
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`Ex. 1004, 3:11—17, 3:24—42, 3:54-59). We do not agree that Harbersis so
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`limited. It discloses a system that can achieve a desired spatial distribution
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`based on a numberofpossible inputs. Ex. 1004, 2:11—22, 3:11-4:3. We
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`agree with Petitioner that skilled artisans would have understoodthat a
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`different control strategy could be used to define Harbers’s desired spatial
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`distribution. See Pet. 24-25 (“[O]nly routine, known circuitry and/or
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`programming changes would have been necessary to adjust ECU 10 such
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`that its control signals implement Harbers’[s] LED control.” (citing Ex. 1002
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`1 60)).
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`Patent Ownerchallenges whetherPetitioner sufficiently justifies the
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`asserted combination. Prelim. Resp. 34—36. Petitioner asserts that using
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`Harbers’s LEDarray in place of Gotou’s headlights “would have enhanced
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`how Gotouilluminates the surroundings of a vehicle, providing Gotou’s
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`headlights with Harbers’[s] LEDsto provide ‘more dynamiclighting
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`possibilities.’” Pet. 21 (quoting Ex. 1004, 1:43—45, 2:69); accord id. at
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`10
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`22-23 (asserting the combination “would have improvedthe efficacy of
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`Gotou’s system, providing improvedlighting by right andleft headlights 2,
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`and in turn, improvementsto the driver’s view of surroundings, furthering
`299
`Gotou’s goals of ‘superior visibility’”). We concludethat Petitioner provides
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`a logical reason that skilled artisans would have made the combination.
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`Patent Ownerasserts that Gotou teaches away from the claimed
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`invention becauseit adjusts illumimation before the steering wheelis turned,
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`while Harbers teachesillumination that depends on the steering-wheel
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`position. Prelim. Resp. 36—37. On the present record, that argument does not
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`show a flaw in the proposed combination. At most, Patent Owner has
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`identified preferences expressedin the priorart, rather than disclosures that
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`would discourage skilled artisans from making the asserted combination.
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`Moreover, the asserted combinationsatisfies Gotou’s preference for
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`adjusting illumination before the steering wheel turns. Thus, Patent Owner
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`has not shownthat the asserted combinations would have proceeded counter
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`to the references’ disclosures.
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`Relatedly, Patent Owner argues that Gotoudisclosed a “fully
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`functional mechanicallighting system”and that skilled artisans would have
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`no need to modify that system. Prelim. Resp. 40-43. We do not agree. As
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`discussed already, Petitioner explains that the asserted combination would
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`have improved lighting performance over Gotou’s mechanicalsystem.
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`Pet. 21. That is sufficient. See Intel Corp. v. PACTXPP Schweiz AG, 61
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`F.4th 1373, 1380 (Fed. Cir. 2023).
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`Weconcludethat Petitioner has provided an adequate reason that
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`skilled artisans would have combined Gotou and Harbersasasserted.
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`3. Reasonable Expectation of Success
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`Patent Ownerarguesthat the asserted combinations would not have
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`been “predictable, straightforward, and routine”as Petitionerasserts. Prelim.
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`Resp. 32-33. In this regard, Patent Ownerdistinguishes Gotou’s mechanical
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`aiming system from Harbers’s fixed, multi-LED system. /d. We do notagree
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`that the systems wereso different that Petitioner’s proposed combination
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`would have beeninfeasible. Petitioner’s asserted combinationrelies on
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`aspects distinct from Gotou’s particular aiming mechanism.Instead,it relies
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`on Gotou’s control methodology using map data to predicted changesin the
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`desired illumination angle. Pet. 60-79. Thus, we do not agree with Patent
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`Ownerthat the asserted combination required “extensive modifications.”
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`Prelim. Resp. 33.
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`Adapting Gotou’s control system to use Harbers’s multi-LED
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`headlights would have involved software to translate Gotou’s control-system
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`output of illumination axis to Harbers’s target spatial distribution. That task
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`appears to be well within the ordinary skill in the art. See Keynetik, Inc.v.
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`Samsung Elecs. Co., No. 2022-1127, 2023 WL 2003932, at *2 (Fed. Cir.
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`Feb. 15, 2023) (nonprecedential) (“Normally, once the function to be
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`performed by software has beenidentified, writing code to achieve that
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`function is within the skill of the art.” (citing Honar Corp. v. Gen. Elec. Co.,
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`107 F.3d 1543, 1549 (Fed. Cir. 1997))).
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`WeconcludePetitioner has shownthatskilled artisans would have
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`had a reasonable expectation of success if making the asserted combination.
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`4. Conclusion
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`WehavereviewedPetitioner’s contentions for claims 1, 2, 12, 13, 23,
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`and 24 based on Gotou and Harbers, and Patent Owner’s arguments
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`challenging that combination, and concludethat Petitioner’s contentions and
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`evidence support institution. See Pet. 14-55.
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`D. OBVIOUSNESS OVER HEINZ AND GOTOU OR
`HEINZ, GOTOU, AND HARBERS
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`Petitioner asserts two groundsusing Heinz as the primary reference—
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`one combining it with Gotou and another combining it with Gotou and
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`Harbers. Pet. 55—86.
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`Heinz discloses a vehicle lighting system in which a controller
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`selectively switches lights to generate a light “adapted to the driving
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`situation of the motor vehicle.” Ex. 1006, 2:28—38. Heinz’s controller may
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`receive data including steering wheel angle, velocity, and turn signal
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`activation. /d. at 2:53—55. It may also receive route-detection data to
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`determine the roadwaypath. /d. at 3:2—9. Heinz discloses that “data of a
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`vehicle navigation system may be used”“for detecting the path of the
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`roadway.”/d. at 5:31-34.
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`Petitioner submits that, in light of Heinz’s suggestion to use
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`navigation data, skilled artisans “would have looked to Gotou for explicit
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`implementation details on the format of such navigational data.” Pet. 61. The
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`result would be “Heinz’s system explicitly considermg map information
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`indicating the direction and sharpness of a road curve and information on
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`proper vehicle position to determine wherelight from headlights should be
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`directed.” /d. at 62 (citing Ex. 1002 4 102). Petitioner argues additionally
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`that the combined system would determineaheadlight direction change
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`prior to reaching a road curvature, as taught by Gotou.Pet. 73-79.
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`Patent Ownerchallenges the combinations using Heinz as a primary
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`reference for much the samereasonsas discussed above regarding Gotou
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`and Harbers. Pet. 30-32. According to Patent Owner,skilled artisans reading
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`Heinz would not look to Gotou, because Heinz teachesthat turning the
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`headlights to accommodate a corner has a disadvantage of losing forward
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`illumination. Prelim. Resp. 30—31 (citing Ex. 1006, 1:37—46). Petitioner,
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`however, does not propose combinations using Gotou’s mechanicalaiming.
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`Rather, Petitioner proposes using Gotou’s navigational data to inform
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`Heinz’s controller. Pet. 60—64; accord id. at 71 (“[I]n the Heinz-Gotou
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`combination, Heinz’s system explicitly considers map information
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`indicating the direction and sharpness of a road curve and information on
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`proper vehicle position to determine wherelight from headlights should be
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`directed as taught by Gotou.”’). The other proposed modification to Heinz
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`relates to altering the illumination before reaching a road curvature
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`(Pet. 73—79), which similarly does not implicate Gotou’s mechanical aiming.
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`Patent Ownerarguesalso that Heinz teaches away from mechanical
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`lighting systems because oftheir complexity. Prelim. Resp. 38—40(citing
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`Ex. 1006, 2:5—-10). Because the asserted combination doesnotinclude
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`Gotou’s mechanical system, the argumentis inapposite. Stated otherwise,
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`Heinz’s preference for nonmechanicallighting adjustability is satisfied by
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`the asserted combination. Patent Ownerraises the same teaching-away
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`argumentdiscussed above—that Gotou teaches away from lighting changes
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`based on steering wheel angle—because Heinz teaches determining
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`illumination based on steering-wheelangle. /d. at 37-38. As discussed
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`above, that argumentis not persuasive because it at most identifies a
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`preferencein the prior art, nota disclosure that would discourage skilled
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`artisans from making the asserted combination.
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`Patent Ownerargues additionally that Gotou’s system addresses
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`“forward, curve illumination” and therefore would not apply to a system
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`seeking to improvelateralillumination. Prelim. Resp. 31—32 (emphasis
`
`omitted). But Gotou describestts field as “controlling of a lighting region of
`
`the head lamp in a horizontal direction.” Ex. 1003, 1:7—8. Thus, we do not
`
`agree with Patent Ownerthat Gotou would not apply to improvinglateral
`
`illumination.
`
`WehavereviewedPetitioner’s contentions for claims 1, 2, 12, 13, 23,
`
`and 24 based on Heinz and Gotou, and Patent Owner’s arguments
`
`challenging that combination, and concludethat Petitioner’s contentions and
`
`evidence support institution. See Pet. 55—79, 84-86.
`
`Asto the ground including Heinz, Gotou, and Harbers, Petitioner
`
`relies on Harbersfor the “control” limitation, arguing that Harbers’s
`
`teachings are relevantif the claimsare interpreted to require each LED light
`
`source is individually or separately controlled. /d. at 79. Petitioner contends
`
`that Harbers teaches the claim language undersuch an interpretation, and
`
`that skilled artisans had reason to use Harbers’s teachingsin that regard. /d.
`
`at 80—84. Specifically, Petitioner asserts “the combination would have
`
`enhanced the Heinz-Gotou system, providing Harber[s]’s individualized and
`
`more precise control of Heinz’s LED lighting elements to produce a desired
`
`spatial distribution oflight.” Pet. 80 (citing Ex. 1002 § 130).
`
`Patent Ownerdoesnot separately address Petitioner’s contentions
`
`directed to the Heinz-Gotou-Harbers combination. We have reviewed
`
`Petitioner’s contentions for claims 1, 2, 12, 13,23, and 24 based on Heinz,
`
`Gotou, and Harbers, and conclude that Petitioner’s contentions and evidence
`
`support institution. See Pet. 79-86.
`
`15
`
`
`
`IPR2022-01500
`Patent 11,208,029 B2
`
`E. DISCRETIONARY DENIAL UNDER§ 312(a)(2)
`
`Patent Ownerargues that we should denyinstitution because
`
`Petitioner fails to identify all real parties in interest (“RPI”). Prelim.
`
`Resp. 43-46. In Patent Owner’s view, Mercedes-Benz USA, LLC,1s a party
`
`in litigation mvolving the ’029 patent and is a Unified member, and
`
`therefore should have beenidentified. /d.
`
`Patent Ownerhasnotasserted that a statutory bar or other estoppel
`
`would apply to Mercedes-Benzin this proceeding. See 35 U.S.C. §§ 315(b),
`
`(e). Accordingly, we need not address whether Mercedes-Benzis an
`
`unnamed RPI. SharkNinja Operating LLC v. iRobot Corp., [PR2020-00734,
`
`Paper 11 at 18-20 (PTAB Oct. 6, 2020) (precedential). We decline to
`
`exercise discretion to deny institution based on Petitioner’s identification of
`
`real parties in interest.
`
`F.
`
`DISCRETIONARY DENIAL UNDER§ 314(a)
`
`Patent Ownerargues we should exercise our discretion to decline
`
`institution under § 314(a) because “Unified flouted ethics rules, increased
`
`inefficiencies and the possibility of inconsistent rulings, and is creating an
`
`unnecessary burden on the Board and Patent Owner.”Prelim. Resp. 47—54.
`
`According to Patent Owner, Petitioner’s failure to name its member
`
`companiesasreal parties in interest prohibits the Board from accurately
`
`identifying potential conflicts. /d. at 48-50. While the panel appreciates
`
`Patent Owner’s concern, the panel confirmsthat it does not have a conflict
`
`with the asserted unnamed RPI, Mercedes-Benz USA, LLC.
`
`Patent Ownerargues that we should denyinstitution becausethere ts
`
`nolitigation betweenthe parties. Prelim. Resp. 51. But there is no
`
`16
`
`
`
`IPR2022-01500
`Patent 11,208,029 B2
`
`requirementthat a petitioner be involvedin litigation in orderto file an IPR
`
`petition. See 35 U.S.C. $311.
`
`Patent Ownerarguesthat nothing will stop Petitioner’s member
`
`companies, such as Mercedes-Benz, from pursuing these IPR groundsin the
`
`district-court litigation, and that we should therefore declineto institute.
`
`Prelim. Resp. 52. To the extent Patent Ownerbelieves that estoppel should
`
`apply toalitigation party after an IPR final written decision, Patent Owner
`
`mayassert the AIA’s estoppel provision in the district court. See 35 U.S.C.
`
`§ 315(e)(2). We do not agree that we should denyinstitution based on
`
`speculation regarding arguments that may be madein the district court.
`
`Patent Ownersubmits that an IPR petition filed by Volkswagen
`
`addresses the ’029 patent and raises challenges based on Gotou.Prelim.
`
`Resp. 53 (identifying [PR2022-01586). According to Patent Owner, we
`
`should denyinstitution because Volkswagen’s petition overlaps the present
`
`Petition and will burden the Board. We do not agree. The Board has notyet
`
`considered the merits of the petition in [PR2022-01586. Assuming Patent
`
`Owneraccurately represents the substantial substantive overlap, there would
`
`be little additional burden to the Board if it additionally institutes
`
`Volkswagen’s petition. Further, Patent Ownerhas not adequately supported
`
`that the Board should denythefirst petition challenging a patent when other
`
`petitions have beenfiled but not yet considered.
`
`Moreover, Patent Ownerhas not showna significant relationship
`
`between Petitioner and Volkswagen that would support denying institution
`
`here. Patent Ownerarguesthat “Mercedes and VW also haveasignificant
`
`relationship as co-defendantsin litigation.” Prelim. Resp. 54 (citing Valve
`
`Corp. v. Elec. ScriptingProds., Inc., 1PR2019-00062, Paper 11 (PTAB
`
`17
`
`
`
`IPR2022-01500
`Patent 11,208,029 B2
`
`Apr. 2, 2019) (precedential)). Patent Owner does not contend that Mercedes-
`
`Benz and Volkswagen are accused of infringement based on the same
`
`products. Thus, Valve does not apply. We do notagreethatlitigation co-
`
`defendants necessarily have a significant relationship that would justify
`
`discretionary denial.
`
`Wehave considered Patent Owner’s argumentsfor discretionary
`
`denial and decline to exercise our discretion as Patent Ownerseeks.
`
`I. CONCLUSION
`
`For the reasonsdiscussed above, we concludePetitioner has showna
`
`reasonable likelihood ofprevailing with respect to at least one claim. We
`
`have evaluatedall of the parties’ submissions and determinethat the record
`
`supports institution.
`
`Our determinationat this stage of the proceeding is based on the
`
`evidentiary record currently before us. This decisionto institute trial is nota
`
`final decision as to patentability of any claim for which interpartes review
`
`has been instituted. Our final decision will be based on the full record
`
`developed duringtrial.
`
`Accordingly, it 1s
`
`IV. ORDER
`
`ORDEREDthat, pursuant to 35 U.S.C. §314(a), interpartes review
`
`of claims 1, 2, 10-13, 23, and 24 of the ’029 patentis instituted on the
`
`groundsset forth in the Petition; and
`
`FURTHER ORDEREDthat, pursuantto 35 U.S.C. §314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given ofthe institution ofa trial
`
`commencing on the entry date of this decision.
`
`18
`
`
`
`IPR2022-01500
`Patent 11,208,029 B2
`
`For PETITIONER:
`
`Ellyar Barazesh
`David Seastrunk
`UNIFIED PATENTS, LLC
`ellyar@unifiedpatents.com
`david@unifiedpatents.com
`
`For PATENT OWNER:
`
`Sangeeta Shah
`David Bir
`Bernard Tomsa
`BROOKS KUSHMANP.C.
`sshah@brookskushman.com
`dbir@brookskushman.com
`btomsa@brookskushman.com
`
`19
`
`
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