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 /nter Partes Review
`3S US.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 /nter Partes Review
`3S US.C. § 314
`
`
`
`IPR2023-01034
`Patent 11,208,029 B2
`
`I.
`
`INTRODUCTION
`
`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
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`(“Patent Owner”’’) filed a Preliminary Response. (Paper 10, “Prelim. Resp.”). As
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`authorized, Petitioner filed a Preliminary Reply (Paper 14, “Prelim. Reply”), and
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`Patent Ownerfiled 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
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`determine whetherto institute review.
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`An inter partes review maynotbeinstituted unless “the information
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`presented in the petition ... and any response .
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`.
`
`. showsthat there is a reasonable
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`likelihoodthat the petitioner would prevail with respect to at least 1 of the claims
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`challengedin the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
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`conclude that Petitioner has shown a reasonable likelihood it will prevail in
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`establishing the unpatentability of at least one challenged claim.
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`A. REAL PARTIES IN INTEREST
`
`Asteal parties in interest, Petitioner identifies: Mercedes-Benz USA, LLC;
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`Mercedes-Benz Group AG; Mercedes-Benz AG; and Mercedes-Benz Intellectual
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`Property GmbH & Co. KG. Pet. 3. Patent Owneridentifies Yechezkal Evan Spero
`
`and Torchlight Technologies LLCasthe real parties in interest, noting that
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`Torchlight is the exclusive licensee of the ’029 patent. Paper 3, 1 (Patent Owner’s
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`Mandatory Notices).
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`B. RELATED MATTERS
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`The parties identify the following related federal district court litigations of
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`the °029 patent: Torchlight Techs. LLC v. Daimler AG et al., No. 1:22-cv-00751
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`
`
`IPR2023-01034
`Patent 11,208,029 B2
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`(D. Del.); Torchlight Technologies LLC vy. General Motors LLC etal., No. 1:22-
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`cv-00752 (D. Del). Pet. 3; Paper 3, 1.
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`Theparties identify the following PTAB inter partes reviewsof the
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`°029 patent: IPR2022-01500; IPR2023-01586; IPR2023-01122; IPR2023-01226.
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`Pet. 3; Paper 3, 1-2.!
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`C. THE ’*029 PATENT
`
`The ’029 patentis titled “Adaptive Headlight System”and relates to motor
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`vehicle headlamps with LED light sources and a processor to control the headlamp
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`light pattern. Ex. 1001, codes (54), (57). The specification more generally
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`describes a lighting device that “incorporates one or more discrete light sources
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`and their ancillary optical and electrical control equipmentin an integrated
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`illuminating element.” /d. at 13:34—36. The combined unitis referred to as a
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`Digital Lighting Fixture (DLF). /d. at 18:29-33.
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`The specification further describes transportation-vehicle applications. /d.
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`at 50:49-57:35. One such application involves a DLF headlamp device that
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`includes a cluster of LEDs to illuminate around a curve. /d. at 51:54-63, 54:8-15.
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`With LEDshaving a variety of aims, the headlamp’s light distribution pattern may
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`be controlled based on a numberoffactors, including location data from a GPS
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`system, providing information about upcoming curvesin the road. See id. at 51:54—
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`67, 54:15-22.
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`' Patent Ownerfurther lists reissue applications, reexaminations, and IPRs
`involving patents related to the ’029 patent. Paper 3, 2-3.
`
`
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`IPR2023-01034
`Patent 11,208,029 B2
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`D. CHALLENGED CLAIMS
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`Petitioner challengesall thirty-three claims of the ’029 patent. Pet. 4.
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`Claim | is independent and is reproduced below:
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`1. A-system, for a motor vehicle, comprising:
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`a plurality of headlamps, each comprising a plurality of LED light
`sources;
`
`one or more processors; and
`
`a memorystoring 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 which the motor
`vehicle is traveling;
`determine a light change, the change adapting a light pattern of
`the headlampsin 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 sourcesto
`provide light based at least in part on the determined light
`change and prior to the motor vehicle reaching the road
`curvature.
`
`[7]
`
`[7]
`
`Ex. 1001, 95:56—96:8. Claims 2—11 depend, directly or indirectly, from claim 1. /d.
`
`at 96:9-97:44, Claim 12 is independentandrecites limitations similar to claim 1’s.
`
`Id. at 97:45—62. Claims 13—22 depend, directly or indirectly, from claim 12. /d. at
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`97:63—99:27. Claim 23 is independentandrecites limitations similar to claim 1’s.
`
`? Patent Ownerrefers to these as the “predictive curve illumination limitations.”
`Prelim. Resp. 8.
`> Patent Ownerrefersto these as the “control limitations.” Prelim. Resp. 8.
`
`4
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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`Id. at 99:28-43. Claims 24—33 depend, directly or indirectly, from claim 23. /d.
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`at 99:44—100:66.
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`E. PRIOR ART AND ASSERTED GROUNDS
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`This proceeding includes the following unpatentability grounds:
`
`
` 1-8, 10-19, 21-30, 32, 33
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`9,20, 31
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`103
`103
`
`Alden, Kobayashi®
`Alden, Beam’, Kobayashi
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`Pet. 5. Petitioner also relies on the Declaration of Dr. Nikolaos Papanikolopoulos.
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`Ex. 1003.
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`Il.
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`ANALYSIS
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`A. DISCRETIONARY DENIAL
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`Patent Ownerargues 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
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`IPR2022-01500; weinstituted review and later terminated by the parties’
`
`agreement. IPR2022-01500, Paper 15 (institution), Paper 26 (termination). The
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`* 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 wasfiled before this
`date, the pre-AIA version of § 103 applies.
`> US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005).
`° US 6,049,749, issued Apr. 11, 2000 (Ex. 1006).
`TUS 6,144,158, issued Nov. 7, 2000 (Ex. 1007).
`
`5
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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`°029 patent was challenged also by Volkswagen Group of America,Inc., in
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`IPR2023-01586; weinstituted review, which remains pending. IPR2023-01586,
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`Paper 7. Patent Ownerchallengesinstitution here based on both prior proceedings.
`
`Prelim. Resp. 47-51. We do not agree that this case warrants discretionary denial.
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`Thefirst General Plastic factor considers whether the samepetitioner
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`previously challenged the same claims of the same patent. General Plastic,
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`Paper 19, 16. Here, Patent Ownerasserts that although Petitioner did not do so, we
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`should consider Petitioner as having a substantial relationship with both Unified, to
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`which Patent Ownerasserts Petitioner is a real party in interest (Prelim. Resp. 47—
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`49), and Volkswagen, which is a co-defendant with Petitioner in Patent Owner’s
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`infringementsuit (id. at 50-51).
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`As to Unified, Petitioner points out that Patent Owner makes no argument
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`regarding a statutory bar or estoppel, arguing that we should therefore not assess
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`the potential relationship. Prelim. Reply 1; see SharkNinja Operating LLC vy.
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`iRobot Corp., IPR2020-00734, Paper 11 at 18—20 (PTAB Oct. 6, 2020)
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`(precedential). Regardless of whether an RPI relationship may, in somecase,
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`influence factor 1, we determine that it would not support discretionary denial
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`here. In particular, in IPR2022-01500, we instituted review and did not find the
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`petition deficient. [PR2022-01500, Paper 15. Thus, Petitioner’s assertion of a
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`different reference does not appear to have resulted from that prior IPR. And that
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`proceedingsettled without a final written decision, further supporting that
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`Petitioner received no benefit from Unified’s IPR.
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`To argue that we should consider Petitioner related to VW, Patent Owner
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`relies on Valve Corp. v. Electronic Scripting Products, Inc., 1PR2019-00062,
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`Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve
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`involved parties that were accused of infringement based on the same product.
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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`Valve, Paper 11, 9-10. Here, Patent Ownerasserts that Petitioner 1s accused of
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`infringing “based on the sametype of headlight technology” (Prelim. Resp. 50-
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`51), but that is insufficient. Patent Ownerasserts that both parties’ accused
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`headlights were “developed jointly with Hella KGaA Hueck & Co.”(id. at 51), but
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`that also is an insufficient connection for us to consider twoparties substantially
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`related for purposesof discretionary denial. As Petitioner points out, it and VW are
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`direct competitors, accused of infringing based on two different products, not as a
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`supplier and customerof a single product, as wasat issue in Valve. Prelim.
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`Reply 1.
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`Additionally, although Patent Ownerasserts that Petitioner and VW “have a
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`history of coordinating serial IPR petitions” (Prelim. Resp. 51-53), the facts of
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`each case are unique and wewill not infer a motive from prior proceedings.
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`Having considered Patent Owner’s arguments,® we conclude that the first General
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`Plastic factor weighsstrongly against discretionary denial.
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`Factors 2 through 5 relate to Petitioner’s knowledgeofits asserted art,
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`knowledge of Patent Owner’s or the Board’s position on previously assertedart,
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`and any explanation for the time between twopetitions. General Plastic, Paper 19,
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`16. Because we determinethat Petitioner did not previously challenge the
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`challenged claims, those factors are substantially diminished. Even considering
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`8 Patent Ownerasserts further that we should follow Shenzhen Silver Star
`Intelligent Tech. v. iRobot Corp., IPR2018-00761, Paper 15 at 16-17 (PTAB
`September5, 2018), to apply a presumption that a petition should be denied when
`it is filed after a preliminary response orinstitution 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 wedecline to adoptits
`approach.
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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`that Petitioner saw Patent Owner’s preliminary responses to Unified’s and
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`Volkswagen’s petitions and the Board’s institution decisions, any roadmapping
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`concern is substantially reduced in light of our decision to institute review for the
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`two prior petitions. See IPR2022-01500, Paper 15 (institution); IPR2023-01586,
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`Paper 7. Patent Owner’s roadmapping contention relates to our evaluation of VW’s
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`ground using Beam as a primary reference in IPR2023-01586. Prelim. Resp. 56—
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`57. Because we noted “that Beam’s disclosures cast doubt on [VW’s]
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`combination” of Beam and Kobayashi (IPR2023-01586, Paper 7, 20), Patent
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`Owner submits that Petitioner here “dropped Beam as a primary reference for the
`
`independent claims” (Prelim. Resp. 57). Petitioner disputes that contention,
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`submitting that it “developed its own challenges based on Alden.” Prelim.
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`Reply 3-4, 4 n.3.
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`Weare not persuadedthat the Petition shows unfair roadmapping. As
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`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
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`Owner’s argument that Alden teaches projecting a high beam everywhereother
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`than towards a detected oncoming vehicle); [PR2023-01586, Paper 7, 19-20
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`(discussing same argument as to Beam). Although we read Aldenas not suffering
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`from Beam’s possible deficiency, had Petitioner wanted to address Patent Owner’s
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`IPR2023-01586 argument (and ourinstitution decision), Petitioner would have
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`adjusted its challenge here more directly and fully. Stated otherwise, if Petitioner
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`had roadmappedin light of IPR2023-01586, we would expect such an adjustment
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`to be more evident. Instead, we view the Petition’s challenges as resulting from
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`Petitioner’s independent evaluation of the prior art. Given our determination that
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`Petitioner is not substantially related to VW, Petitioner should have the opportunity
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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`to proceed with its own challenge against a patent for which Petitioner has been
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`accused ofinfringing.
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`Wehave considered Patent Owner’s arguments based on General Plastic
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`and concludethat this case does not warrant discretionary denial.
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`B. LEVEL OF ORDINARY SKILL IN THE ART
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`Petitioner asserts that an ordinarily skilled artisan “would have had an
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`undergraduate degree in mechanical engineering, electrical engineering,
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`automotive engineering, optical engineering, applied physics, computer science, or
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`similar disciplines, along with two years of experience working with intelligent
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`vehicle systems, automotive control systems, or lighting control systems.” Pet. 8—9
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`(citing Ex. 1003 4 33). Patent Owner does not dispute that level of ordinary skill in
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`the art. Prelim. Resp. 9. We adopt the undisputed level of ordinary skill in the art
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`for purposesof this decision.
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`C. CLAIM CONSTRUCTION
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`The parties agree that no express claim construction is requiredat this stage.
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`Pet. 8; Prelim. Resp. 9. We agree with the parties and therefore do not further
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`construe the claims for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368,
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`1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those termsthat
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`... are in controversy, and only to the extent necessary to resolve the
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`controversy.’”) (quoting Vivid Techs., Inc. vy. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999)).
`
`Below, we discuss Patent Owner’s argumentrelating to the “shaping” claim
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`term, which appears to imply a claim construction that Patent Ownerhas not yet
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`explained. See infra at 15. Should Patent Owner wish to pursue such an argument
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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`in the instituted trial, Patent Owner should offer and support a construction for the
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`term.
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`D. OBVIOUSNESS OVER ALDEN AND KOBAYASHI
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`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
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`limitations, Petitioner relies on Alden alone. /d. at 12-30.
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`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 dimmedin the area of a detected vehicle, maximizing illumination for the
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`equipped vehicle while minimizing glare to other vehicles. Ex. 1005, codes (54),
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`(57). Alden describes a sensor such as a photodiodearray for detecting oncoming
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`vehicles’ headlights as pairs of bright dots, and a controller that interprets those
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`dots as an oncoming vehicle and designates for dimming a portion of the
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`illumination field corresponding to the possible driver of the oncoming vehicle,
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`then reduced the brightness of the segmented-beam headlight in the designated
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`area. Id. J] 25-28. As one embodimentfor the headlight, Alden discloses an array
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`of individual LEDs, controlled to implementthe desired lighting pattern in the
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`projected beam. /d. § 29. As an additional application of its system, Alden
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`discloses that it may be “used to concentrate light to look around corners in
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`response to road conditions.” /d. 4 36. When a vehicle detects road turns, the
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`system “direct[s] light into the corner to maximizethe driver’s ability to see there.”
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`Id.
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`For receiving map data indicating an upcoming road curvature, Petitioner
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`relies on Kobayashi, submitting that it would have been obvious to “use map data
`
`to identify road curvature when adapting the LEDs of Aldento ‘direct light into the
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`10
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`IPR2023-01034
`Patent 11,208,029 B2
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`corner.’” Pet. 23-24 (quoting Ex. 1005 4 36). Petitioner reasons that Alden
`
`discloses detecting road curvature through roadside reflectors and steering-wheel
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`sensors, and Kobayashi discloses an additional way to detect road curvature. /d.
`
`at 24. Petitioner continues that, because Kobayashi discloses using map data to
`
`control vehicle headlights, skilled artisans would have had reason to adoptits
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`teachings in Alden’s system “to maximize successful detection in different
`
`environments.” /d. at 24—25 (citing Ex. 1003 § 70). Petitioner relies on Kobayashi
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`also for determining a light change to increaselight in the direction of road
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`curvature and shaping light based on the road curvature. /d. at 27. Finally,
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`Petitioner relies on Kobayashi for the requirement to control the light sources both
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`based on the determinedlight change andalso prior to the vehicle reaching the
`
`road curvature. /d. at 30.
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`Patent Ownerdisputes several aspects of Petitioner’s contentions relating to
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`the independentclaims. Prelim. Resp. 22—41. The disputes relate to limitations that
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`Patent Owneridentifies as the “Predictive Illumination Determination Limitation”
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`and the “Control Limitation.”/d. at 8; see supra at 4 n.2, n.3 (§ LD). As noted
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`above, Petitioner relies on a combination of Alden and Kobayashi for those
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`limitations. Petitioner asserts that Alden discloses determining illumination based
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`on road curvature as shown in Figure 11, reproduced below:
`
`11
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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`
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`Figure 11 illustrates an application of Alden’s invention “being used to concentrate
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`light to look around corners in response to road conditions” in which vehicle 153
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`senses that the road turns and “direct[s] light into the corner to maximize the
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`driver’s ability to see there.” Ex. 1005 4 36.
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`Petitioner asserts that Alden’s system determinesa light change that both
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`increaseslight in the direction of road curvature and shapesthe light based on the
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`road curvature. Pet. 25-27. Petitioner relies on Alden’s disclosures that it can
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`“concentrate light to look around comers” and “direct light into the corner.” /d.
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`Petitioner asserts further that Kobayashi discloses shaping light becauseit
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`discloses controlling its lights “in accordance with the course concerned.” Pet. 23
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`(quoting Ex. 1006, 17:59-61), 27 (referencing Pet. 23). Petitioner reasonsthatit
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`would have been obvious to use Kobayashi’s teachings to adapt lighting to the road
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`shape informed by mapdata. /d. at 27.
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`Patent Ownerarguesfirst that Petitioner relies on multiple embodiments in
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`Alden but provides no reason that a skilled artisan would have combinedthose
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`12
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`IPR2023-01034
`Patent 11,208,029 B2
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`embodiments. /d. at 24-27. We do not agree. Alden discusses “elements of a
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`segmented distribution illumination process” in connection with Figure 2. Ex. 1005
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`{| 26. The described process uses “Segmented Beam Headlight” 61 to differentially
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`illuminate sectors of the illumination. /d. Alden’s description is generic to the
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`specific headlight embodiment, and states that “[s]ome methods employed within
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`61 to segmentlight into independently controlled sectors are discussed later.” /d.
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`Similarly, Figure 3 and its associated discussion provides “a more detailed
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`illustration of the information flow, processes and architecture of the elements
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`described in FIG. 2.” /d. | 27, Fig. 3. Figure 3 depicts Segmented Headlights 83
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`and 85 generically, and the description refers to them without limiting the
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`particular form of those headlights. /d. Thus, when Alden describes that Figure 5
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`“illustrates the segmented headlight means and controlling switch array inafirst
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`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
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`embodimentof the segmented headlights included in Figures 2 and 3. See id. ¥ 29.
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`The sameis true for Figure 11, in which Aldenillustrates an application whereits
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`controllable headlights are used “to concentrate light to look around corners in
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`response to road conditions.” Ex. 1005, § 36, Fig. 11. As Alden states, the
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`application directing light around road bends“can be achieved with the segmented
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`sensing elements and segmentedlight distribution elements described herein.” /d.
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`4] 36. That disclosure supports that any of its embodiments for controllable
`
`headlights could be operated in a mannerto light in the direction of road curvature.
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`Patent Ownerarguesalso that Alden does not disclose controlling its lights
`
`to increase light in the direction of road curvature. Prelim. Resp. 28-31. Patent
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`Owneridentifies Petitioner’s annotated Figure 5 from Alden, which Petitioner uses
`
`13
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`
`
`ae
`
` ‘
`
`‘ v
`
`tea
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`IPR2023-01034
`Patent 11,208,029 B2
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`to show how Alden would operate its segmented light to achieve Figure 11’s
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`application. Petitioner’s annotated Figure 5 is reproduced below:
`
`eySoe
`wm Me
`oe8
`
`Seni
`Sen,
`
`we
`:
`N. a Sa . Na
`A i NS
`NY
`“
`Ns ae Ny,
`. NN
`ag
`iN
`™,
`N
`ON .
`wN
`MN
`Ry,
`™N
`ne
`ne
`
`N,
`N\
`
`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.
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`Ex. 1005 ¢ 29. Petitioner’s annotations showaplurality of lighting elements being
`
`used to illuminate only one side of the possible lighting distribution area. Pet. 28—
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`29.
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`In Patent Owner’s view, Alden never discloses deactivating LED elements
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`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.
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`Resp. 29-31. Becauseall lights are activated in Alden’s base state, argues Patent
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`Owner, Alden does not disclose increasing light in the direction of a curve. /d.
`
`14
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`
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`IPR2023-01034
`Patent 11,208,029 B2
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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
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`implementing the Figure 11 application.
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`Next, Patent Ownerarguesthat neither Alden nor Kobayashi discloses
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`“shaping light” as claimed. Prelim. Resp. 31—33. In that regard, Patent Owner
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`asserts Alden’s Figure 11 application “merely changesthe direction of light
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`emitted by the headlight .
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`.
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`. but does not shape the light emitted.” /d. at 32
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`(emphasis omitted). Patent Owner further supports its position by pointing out that
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`Alden never discusses “shaping” the projected light. /d. As discussed above,
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`Petitioner relies on Alden’s disclosures that the Figure 11 application can
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`“concentrate light to look around corners in response to road conditions” andthat
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`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 Ownerasserts 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’ requirementfor
`
`shaping light. We determinethat 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
`
`15
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`IPR2023-01034
`Patent 11,208,029 B2
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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 roadsidereflectors, such that
`
`“sensing would occur before the road curves.” Pet. 29-30 (citing Ex. 1005 {| 36—
`
`AO, Figs. 1, 4). Petitioner asserts that Alden teaches concentrating the light around
`
`the turn as soon asthe 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 curvesto a controller that directs light into the curve. /d. at 23, 30.
`
`Weagree with Petitioner that at least Kobayashi discloses controlling lights
`
`prior to the vehicle reaching a road curvature. Kobayashi’s Figure 10 is reproduced
`
`below:
`
`FIG. 10
`
`
`
`meee DIRECTION GF IRRADIATION POINT
`voees ae DIRECTION OF VEHICLE BODY Axis
`@
`MOST APPROPRIATE IRRADIATING POSITION
`
`Figure 10 depicts vehicle K approaching a road curvature and showsthat the
`
`“direction of irradiation point” has beenaltered 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
`
`16
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`IPR2023-01034
`Patent 11,208,029 B2
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`to the vehicle reaching the curvature. Patent Ownerpoints to Kobayashi’s
`
`statement that, “[w]hen the vehicle turnsto 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) maybe read as describing the general relationship withoutrestricting 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 obviousnesschallenge
`
`to the independentclaims. We have reviewed Petitioner’s contentions and evidence
`
`regarding obviousnessof the independent claims and determinethat they support
`
`institution. Additionally, at this stage, Patent Owner does not challenge Petitioner’s
`
`contentions regarding the dependent claims. Wewill evaluate the merits of those
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`contentions during the institutedtrial.
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`E. OBVIOUSNESS OVER ALDEN, BEAM, AND KOBAYASHI
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`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.” F.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
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`IPR2023-01034
`Patent 11,208,029 B2
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`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 microbeamsto eliminate glare for other vehicles,
`
`“controlled to darken light directed to the areas of the sensed oncoming and
`
`preceding vehicles.” /d. 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 reasonsthat 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.”/d. (citing Ex. 1003 4 151).
`
`Patent Ownerargues 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. /d. 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 obviousnessof
`
`dependentclaims 9, 20, and 21, further supporting institution.
`
`IN. CONCLUSION
`
`For the reasons discussed above, we conclude Petitioner has shown a
`
`reasonablelikelihood of prevailing with respect to at least one claim. We have
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`18
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`IPR2023-01034
`Patent 11,208,029 B2
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`evaluatedall of the parties’ submissions and determinethat the record supports
`
`institution.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), inter partes review of
`
`claims 1—33 of the ’029 patentis instituted on the groundsset forth in the Petition;
`
`and
`
`FURTHER ORDEREDthat, 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
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`date of this decision.
`
`19
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`IPR2023-01034
`Patent 11,208,029 B2
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`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 KUSHMANP.C.
`sshah@brookskushman.com
`aturner@brookskushman.com
`btomsa@brookskushman.com
`
`20
`
`
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