Trials@uspto.gov
`571-272-7822
`
`Paper No. 33
`Entered: May 22, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`VOLKSWAGEN GROUP OF AMERICA,INC. and
`PORSCHE CARS NORTH AMERICA,INC.,
`Petitioner,
`
`V.
`
`YECHEZKAL EVAN SPERO,
`Patent Owner.
`
`IPR2022-01586°
`Patent 11,208,029 B2
`
`Before JON M. JURGOVAN, JASON W. MELVIN,and
`AARON W. MOORE,Administrative Patent Judges.
`
`MELVIN,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Dismissing Petitioner’s Motion to Exclude Evidence
`37 CER. § 42.64(c)
`
`* Porsche Cars North America, Inc, which filed a petition in IPR2023-01122,
`has been joined as a party to this proceeding.
`
`
`571-272-7822
`
`Paper No. 33
`Entered: May 22, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`VOLKSWAGEN GROUP OF AMERICA,INC. and
`PORSCHE CARS NORTH AMERICA,INC.,
`Petitioner,
`
`V.
`
`YECHEZKAL EVAN SPERO,
`Patent Owner.
`
`IPR2022-01586°
`Patent 11,208,029 B2
`
`Before JON M. JURGOVAN, JASON W. MELVIN,and
`AARON W. MOORE,Administrative Patent Judges.
`
`MELVIN,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Dismissing Petitioner’s Motion to Exclude Evidence
`37 CER. § 42.64(c)
`
`* Porsche Cars North America, Inc, which filed a petition in IPR2023-01122,
`has been joined as a party to this proceeding.
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper No. 33
`Entered: May 22, 2024
`
`I.
`
`INTRODUCTION
`
`Volkswagen Group of America, Inc. (“Volkswagen’’) filed a Petition
`
`(Paper1, “Pet.’””) requesting inter partes review of claims 1—33 of U.S.
`
`Patent No. 11,208,029 B2 (Ex. 1001, “the 029 patent’’). Yechezkal Evan
`
`Spero (“Patent Owner”) filed a Preliminary Response. Paper 6. Weinstituted
`
`review. Paper 7 (“Institution Decision”or “Inst.’’). Following institution,
`
`Porsche Cars North America, Inc. (“Porsche’”’), filed a petition for inter
`
`partes review and a Motion for Joinder in IPR2023-01122, requesting that
`
`Porsche be joined as a petitioner to this proceeding. IPR2023-01122,
`
`Papers 2, 3. Weinstituted trial in IPR2023-01122, granted the Motion for
`
`Joinder, and added Porscheasa petitioner here. /d., Paper 10. A copyofthat
`
`decision was entered into the record of this proceeding. Paper 25. Thus,
`
`Volkswagen and Porscheare, collectively, “Petitioner” here.
`
`Patent Ownerfiled a Response (Paper 13, “PO Resp.”), Petitioner
`
`filed a Reply (Paper 17, “Pet. Reply”), and Patent Ownerfiled a Sur-Reply
`
`(Paper 20, “PO Sur-Reply”’).
`
`Petitioner filed a Motion to Exclude Evidence (Paper 27, “Mtn.
`
`Exclude”), which Patent Owner opposed (Paper 28, “Opp. Mtn. Exclude’),
`
`and Petitioner filed a Reply (Paper 29, “Reply Mtn. Exclude’).
`
`Weheld an oral hearing on February 22, 2024. Paper 32 (“Tr.”).
`
`For the reasons below, we conclude that Petitioner has proven claims
`
`1-8, 10-19, 21-30, 32, and 33 unpatentable but has not proven any of claims
`
`9, 20, and 31 unpatentable.
`
`A.
`
`REAL PARTIES IN INTEREST
`
`Petitioner Volkswagen identifies itself as the real party 1n interest.
`
`Pet. 95. Petitioner Porsche identifies itself and its affiliate Dr. Ing. h.c. F.
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`Porsche Aktiengesellschaft as the real parties in interest. IPR2023-01122
`
`Paper 2, 93. Patent Owneridentifies itself as the real party in interest, noting
`
`that Torchlight Technologies LLC is the exclusive licensee of the ’029
`
`patent. Paper 4, 1 (Patent Owner’s Mandatory Notices).
`
`B.
`
`RELATED MATTERS
`
`Theparties identify the followingrelated litigation: Torchlight Techs.
`
`LLC vy. Daimler AG et al., Case No. 1:22-cv-00751 (D. Del.); Torchlight
`
`Technologies LLC v. General Motors LLCet al., No. 1:22-cv-00752
`
`(D. Del). See Pet. 95; Paper 4, 1. They also identify Unified Patents, LLC v.
`
`Torchlight Technologies LLC, IPR2022-01500 (PTAB Sept. 22, 2022). See
`
`Pet. 95; Paper 4, 1.)
`
`C.
`
`THE ’029 PATENT
`
`The °029 patentistitled “Adaptive Headlight System”andrelates to
`
`motor vehicle headlamps with LED light sources and a processor to control
`
`the headlamp light pattern. Ex. 1001, codes (54, 57). The specification more
`
`generally describes a lighting device that “incorporates one or morediscrete
`
`light sources and their ancillary optical and electrical control equipment in
`
`an integrated illuminating element.” /d. at 13:34—36. The combined unit is
`
`referred to as a Digital Lighting Fixture (DLF). /d. at 18:29-33.
`
`The specification further describes transportation vehicle applications.
`
`Id. at 50:49-57:35. One such application involves a DLF headlamp device
`
`that includes a cluster of LEDsto illuminate arounda curve. /d. at 51:54—-63,
`
`' Patent Ownerfurther lists matters involving two different patents related to
`the ’029 patent, including several IPRs, a pending reissue, and a completed
`ex parte reexamination. Paper4, 2.
`
`3
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`54:8-15. With LEDshaving a variety of aims, the headlamp’s light
`
`distribution pattern may be controlled based on a numberoffactors,
`
`including location data from a GPS system, providing information about
`
`upcoming curves in the road. See id. at 51:54—67, 54:15-22.
`
`D.|CHALLENGED CLAIMS
`
`Petitioner challengesall thirty-three claims of the ’029 patent. Pet. 4.
`
`Claim | is independent and is reproduced below:
`
`1. A-system, for a motor vehicle, comprising:
`
`a plurality of headlamps, each comprising a plurality of
`LEDlight sources;
`
`one or more processors; and
`
`a memory storing instructions that, when executed by one
`or more of the one or more processors, enable the one or
`more processorsto:
`
`receive first data, including at least map data, indicating
`a road curvature upcoming along a road on whichthe
`motorvehicle 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 basedat least in part on the
`road curvature; and
`control at least a first plurality of the LED light sources
`to provide light based at least in part on the
`determined light change andprior to the motor
`vehicle reaching the road curvature.
`
`7]
`
`[7]
`
`? Patent Ownerrefers to these limitations as the “Predictive Curve
`Determination Element.” PO Resp. 8.
`> Patent Ownerrefers to these limitations as the “Predictive Curve Control
`Element.” PO Resp. 8.
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`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. /d. at 97:45-62. Claims 13-22 depend, directly or
`
`indirectly, from claim 12. /d. at 97:63—99:27. Claim 23 is independent and
`
`recites limitations similar to claim 1’s. /d. at 99:28—43. Claims 24—33
`
`depend, directly or indirectly, from claim 23. /d. at 99:44—-100:66.
`
`Claim 9, which is reproduced below, depends from claim 8, which
`
`dependsdirectly from claim 1. /d. at 96:62—97:38.
`
`8. The system of claim 1, further comprising one or more
`cameraspositioned to capture data indicating at least one
`other vehicle ahead of the motor vehicle;
`
`wherein the instructions include instructions that, when
`executed by the one or more processors, enable the one
`or more processorsto:
`
`determine a position associated with the at least one
`other vehicle based at least in part on second data
`captured by at least one of the one or more cameras;
`and
`
`control, based at least in part on the position, a second
`plurality of LED light sources providing light
`directed towards an area including at least a portion
`of the other vehicle to diminish glare to a driver of
`the other vehicle by a decrease to intensity of light
`directed towards and illuminating the area, the light
`that is directed towards and illuminating the area
`having lower intensity compared to light directed
`towardspoints laterally adjacent the area to either
`side.
`
`9. The system of claim 8, wherein:
`
`the first plurality and second plurality of LED light sources
`include at least one common LED light source;
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`the control of the second plurality of LED light sourcesis
`basedat least in part on third data received from a non-
`camera sensor of the motor vehicle;
`
`the position includesat least oneof:
`
`a distance associated with the at least one other vehicle,
`
`at least one elevation associated with the at least one
`other vehicle, or
`
`a position within image data captured byat least one of
`the cameras;
`
`the first data includes data from a non-camera sensorof the
`motor vehicle;
`
`either one of the control of the first plurality of LED light
`sources or control of the second plurality of LED light
`sources is subsequent to and accommodativeof the
`other;
`
`the control of the second plurality of LED light sources
`additionally includes termination of light from at least
`one LED providing light directed to the area prior to the
`termination; and
`
`the light pattern includes at least one of an illumination
`pattern or an emission pattern of the headlamps.
`
`Td.
`
`E.
`
`PRIOR ART AND ASSERTED GROUNDS
`
`Petitioner asserts the following unpatentability grounds:
`
`Gotou,° Karlsson’
`
`
`
`
`
`‘|Beam,’Kobayashi?Beam, Kobayashi |
`
`
`
`4 U-S. Patent No. 6,144,158, issued Nov. 7, 2000 (Ex. 1005).
`> U.S. Patent No. 6,049,749, issued Apr. 11, 2000 (Ex. 1008).
`° U.S. Patent No. 5,588,733, issued Dec. 31, 1996 (Ex. 1012).
`7 WIPO Patent Publication No. 98/54030, published December3, 1998
`(Ex. 1010).
`
`6
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`Pet. 4—5. Petitioner also relies on the Declaration of Dr. Jianzhong Jiao.
`
`Ex. 1003.
`
`Il.
`
`ANALYSIS
`
`A.
`
`LEVEL OF ORDINARYSKILL IN THE ART
`
`Petitioner asserts that an ordinarily skilled artisan “would have had a
`
`bachelor’s degree (B.S.) in mechanical engineering, electrical engineering,
`
`optical engineering, applied physics, or an equivalentfield, as well as at least
`
`2 years of industry experience in the area of automotive lighting and
`
`lighting-control systems” and “may workaspart of a team”listing an
`
`example. Pet. 10 (citing Ex. 1003 4] 41-43).
`
`In its Response, Patent Owner“does not dispute Petitioner’s proposed
`
`level of ordinary skill.” PO Resp. 21 (citing Pet. 10). Following Petitioner’s
`
`assertion in the Reply that Patent Owner’s declarant doesnotsatisfy the
`
`agreed level of ordinary skill (see Pet. Reply 2—5), Patent Ownerrelies on
`
`Petitioner’s expert’s statementthat “‘a higher level of education or skill
`
`might makeup for less experience”to argue that the level of skill does not
`
`require specific industry experience and instead encompasses work in optics
`
`and imaging systems. PO Sur-Reply 1—9 (quoting Ex. 1003 4 42).
`
`Weproceed with the agreed level of ordinary skill. We note that the
`
`parties’ belated dispute regarding the level of skill does not affect our
`
`analysis, as further discussed below regarding Petitioner’s Motion to
`
`Exclude.
`
`B.|CLAIM CONSTRUCTION
`
`The parties agree that no express claim construction is required.
`
`Pet. 10-11; PO Resp. 21—22. Other than two disputes discussed below
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`regarding dependentclaims, we agree that the claims do not require express
`
`construction. Realtime Data, LLC v. lancu, 912 F.3d 1368, 1375 (Fed. Cir.
`
`2019) (“The Board is required to construe ‘only those terms that... are in
`
`controversy, and only to the extent necessary to resolve the controversy.’”’)
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)). As to the two disputes that implicate claim scope, we
`
`discuss the relevant issues in context below. See infra at 21 (§ I.C.7), 22
`
`(§ I.C.8).
`
`C.|OBVIOUSNESS OVER GOTOU AND KARLSSON
`
`Petitioner asserts that claims 1—33 are unpatentable as obvious over
`
`Gotou and Karlsson.
`
`1.
`
`Gotou
`
`Gotouis titled “Head Lamp Device for Vehicle”andis directed to a
`
`vehicle headlamp with a left-right adjustable lighting region. Ex. 1012,
`
`codes (54), (57). Gotou’s device may adjust the lighting region based on a
`
`numberof factors, including “direction indicating signal, steering angle
`
`signal, map information and information of the present position.” /d. at 2:5—
`
`7. Gotou describes a “light distributing control ECU 10”that receives
`
`information from a variety of sensors and “processes the information[] and
`
`signals to determine a requisite optical axis angle 0.” /d. at 3:52—63. Gotou’s
`
`system uses the optical axis angle to control a motor driver that aims the
`
`lamp unit. /d. at 3:24—45, 3:63-67. Gotou describesthat its controller
`
`generates “a curve pre-noticing signal” from map information and adjusts
`
`the optical axis angle “when the vehicle reaches the predetermined distance
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`S before the curve entrance and the light distribution is deflected leftward at
`
`a proper timing before the curve.” /d. at 7:32—43.
`
`2.
`
`Karlsson
`
`Karlssonis titled “A Lighting Device Having a Controllable Lighting
`
`Pattern” andis directed to a lighting device that automatically adjusts the
`
`lighting pattern and intensity of a vehicle’s headlights to reduce blinding
`
`oncomingtraffic. Ex. 1010, codes (54), (57). Karlsson’s system uses “a
`
`plurality of controllable spotlight beams .
`
`.
`
`. such as LEDs, which can
`
`preferably be controlled either individually or in groups.” /d. at 13:24-14:4.
`
`“T]he pattern of the emitted light beam is varied automatically in an
`
`efficient manner and with maximum sensitivity in response to at least one
`
`control signal delivered by light-sensitive sensor.” /d. at 2:30—35. Karlsson
`
`sought to improve road safety, noting that “[w]hen taking a bendthere is
`
`also the problem that the road ahead of the vehicle is insufficiently lit,
`
`because the light beam is generally optimized for straight movement(rather
`
`than turning movement) of the vehicle.” /d. at 1:27-2:1. Karlsson describes
`
`using a direction sensor “for determining whenthe car 56 is taking a bend,
`
`so that the light beam 7 can be adapted to preventthe traffic on the other
`
`side of the road from being blinded as muchaspossible.” /d. at 20:29-32.
`
`3.
`
`
`Claims 1, 12, and 23
`
`Petitioner groups independentclaims 1, 12, and 23 together because
`
`they “recite substantially similar elements and concepts; thus, the same prior
`
`art disclosures map to corresponding elements.” Pet. 8. Petitioner
`
`summarizes the similarities and supplements this analysis with a claim chart
`
`corresponding the claims’ limitations. /d. at 8—9, Appendix A. Patent Owner
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
`
`similarly asserts that “[i]ndependent claim 1 is representative of claims 12
`
`and 23.” PO Resp. 24. Thus, those claims stand or fall together.
`
`Petitioner asserts that Gotou discloses a system for a motor vehicle
`
`comprising a plurality of headlamps, one or more processors, and the
`
`claimed memorystoring instructions. Pet. 65—79. Petitioner points out how
`
`Gotou concerns “adaptive vehicle headlamp[s]” and that Gotou’s control
`
`ECUhasthe claimed processor® and memorystoring instructions that enable
`
`the processor to receive map data indicating upcoming road curvature and,
`
`before the vehicle reaches the curve, determine the desired optical axis to
`
`increase light in the direction of road curvature. /d. at 68—78 (citing, e.g., Ex.
`
`1012, 3:52-67, 4:23—25, 8:23-27, 4:36—40). Petitioner submits that
`
`“headlamps with LED arrays were well-known,” which is why it would have
`
`been obvious“to substitute Karlsson’s known controllable LED arrays to
`
`control the headlight shape and/or intensity for Gotou’s”light source. /d. at
`
`67-68 (citing Ex. 1010, 13:24—14:4, 2:30-35, 9:18—26). The asserted
`
`combination substitutes “Gotou’s moving parts” with “Karlsson’s
`
`controllable LEDs.” /d. at 60. Petitioner explains how the combination
`
`teaches the “control”limitation because it teaches adjusting the LEDs based
`
`on the map data and before reaching a road curvature. /d. at 78-79.
`
`Patent Ownerasserts that Karlsson does not teach “increasing light in
`
`a direction of the road curvature” becauseit provides full-intensity light in
`
`8 In the alternative, Petitioner further argues that a person of ordinary skill
`would have found it obviousto include a processor or Karlsson’s “control
`means.” Pet. 69—70 (emphasis omitted). Petitioner provides additional
`alternative arguments throughout the Petition. See, e.g., id. at 72, 75, 77.
`10
`
`
`
`IPR2022-01586
`Patent 11,208,029 B2
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`all areas other than where an oncoming vehicle is detected. PO Resp. 24-30.
`
`Wedonotagree.
`
`Karlsson’s Figure 14 is reproduced below:
`
`41
`
`shat TS 8D
`
`
`EIQIIEAQO
`BNASSSENSOSONGSESSNSNSoe
`EKER
`OQ
`WIEN
`bE
`
`
`
`Figure 14 depicts an embodimentof spotlight sources D, I, and D/I,
`
`intermixed with spotlight sensors S. Ex. 1010, 19:18—28. Karlsson discloses
`
`that, in Figure 14,
`
`The emitted light beam 50 is represented as a window
`which can shift in the plane of the drawings from theleft to the
`right and from the top to the bottom,if desired, and vice versa,
`and which mayvary as regardsits shape and dimension in
`dependenceon the desired pattern and direction of the beam.
`
`Id. at 19:29-33. According to Patent Owner, that description supports that
`
`emitted light beam 50 would result from dimming the overall beam “‘to
`
`11
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`
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`IPR2022-01586
`Patent 11,208,029 B2
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`avoid blinding oncoming drivers.” PO Resp. 25; accord id. at 27
`
`(“[W]indow 50 is created by blanking a subset of the overall beam ‘if
`
`desired,” i.¢., to reduce potential glare.””). Karlsson’s description of
`
`window 50, however, does not support that it is created as a result of
`
`dimming the beam for oncomingtraffic. The description instead supports
`
`that Karlsson may operate its headlight to use a subset of the overallfield,
`
`regardless of detecting oncomingtraffic. To the extent that Karlsson
`
`describes shifting its entire beam to prevent glare to oncomingtraffic,it is in
`
`the context of “a direction sensor 54, which is for example connected to the
`
`steering wheel.” Ex. 1010, 20:22—24 (describing Figure 16). Karlsson states
`
`that “[t]he direction sensor 54 is in particular intended for determining when
`
`the car 56 is taking a bend,so that the light beam 7 can be adapted to prevent
`
`the traffic on the other side of the road from being blinded as muchas
`
`possible.” /d. at 20:29-32; accordid. at 6:26—33 (describing “direction
`
`sensors, for detecting whether a vehicle is taking a bend, for example a
`
`direction sensor whichis responsive to the steering wheel of a vehicle’). By
`
`focusing on the direction sensor as a primary input for steering the headlight
`
`beam, Karlsson discloses that its system may generally light the field’s
`
`central portion, shifting the light left or right as may be desired to
`
`accommodate road curvature.
`
`Patent Owner’s erroneous view of Karlsson would limit Karlsson to
`
`disclosing a single approach to controlling its lights. In this manner, Patent
`
`Ownerrelies on Petitioner’s statement regarding Karlsson from a different
`
`proceeding, IPR2023-00315. See PO Resp. 25—26. There, Petitioner asserted
`
`that operating Karlsson’s system in a particular manner—with a full-
`
`intensity main beam all around the area of reduced illumination—would
`
`12
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`
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`IPR2022-01586
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`provide a particular benefit—maximizing the fully illuminatedarea.
`
`Ex. 2008, 67. We do not read that assertion as limiting Karlsson’s system to
`
`only one operating mode. Thus, we do not agree with Patent Owner “that
`
`Karlsson uses full illumination .
`
`.
`
`. 1.e., use[s] the entire array just as Beam
`
`does, except for portions dimmed to avoid glare.” PO Resp. 26 (emphasis
`
`omitted).
`
`Considering Karlsson’s statementthat its emitted light beam may be
`
`produced from a “window which can shift .. . from the left to the right,” we
`
`concludethat the record better supports Petitioner’s position. In that regard,
`
`we credit Dr. Jiao’s testimony that skilled artisans would understand
`
`Karlsson to disclose a device capable of adapting its beam shape to myriad
`
`possible situations, rather than a device that illuminatesall possible light
`
`sources unless detecting an oncoming vehicle. Ex. 1036 7§ 51-64.
`
`Patent Ownerfurther argues that Petitioner has not established a
`
`sufficient reason that skilled artisans would have combined Karlsson’s
`
`teachings with Gotou’s as asserted. PO Resp. 37-51. As summarized above,
`
`Petitioner contendsthat skilled artisans had reason to use Karlsson’s
`
`controllable LEDsas a light source in place of Gotou’s because of the “well-
`
`knownbenefits of LEDs in vehicle headlamps—for example, life
`
`expectancy and redundancy, adaptation during unfavorable weather, and
`
`low-voltage direct current operation.” Pet. 55—56 (citing Ex. 1003 {fj 231—
`
`233, 235-236; Ex. 1009, 12:27—29, 20:9-12, 23:8-12; Ex. 1010, 2:30-35,
`
`4:25-35, 6:1—-5, 11:29-32, 13:24—29, 14:1-15, 14:26—-30; Ex. 1011, 1:18—
`
`2:2, 3:18-26, 10:6—-11, 10:21-22; Ex. 1022, 2:22—26, 3:44—47). Petitioner
`
`contends also that using Karlsson’s LEDs would have removed “Gotou’s
`
`13
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`
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`Patent 11,208,029 B2
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`moving parts (e.g., motors), while also providing expanded beam shaping
`
`abilities.” /d. (citing Ex. 1003 7 234).
`
`Patent Owner contendsthat, instead, LEDs did not offer a workable
`
`solution for vehicle headlamps because,at the time of invention, LEDs
`
`produced output levels far below “typical tungsten halogen”bulbs.
`
`PO Resp. 39. Thus, argues Patent Owner, using Karlsson’s LEDs would
`
`render Gotou unsuitable for its intended purpose of adjusting illumination
`
`direction. /d. at 39-40. We do not agree. Most significantly, Karlsson is
`
`specifically directed to a motor vehicle headlight capable of varyingits
`
`emitted beam. /.g., Ex. 1010, 1:3-7. And Karlsson expressly discloses that
`
`LEDs are appropriate options for its headlamp. /d. at 4:32—5:1, 14:1-4,
`
`19:34—36, 21:13-17. In addition, Petitioner cites to multiple exhibits that
`
`support its contention that skilled artisans would have recognized the
`
`benefits of LEDsas light sources for headlamps. Pet. 56 (citing Ex. 1005,
`
`4:9-15, 6:9-12, Claims 4 and 5; Ex. 1006 9] 5, 7, 8, 20, 27; Ex. 1009,
`
`19:27-29, 20:9-12, 23:8-12; Ex. 1010, 4:25-35, 13:24—29, 11:29-32;
`
`Ex. 1011, 1:18—2:3, 3:18-26, 8:13—20, 10:6-11, 10:21-—22). Patent Owner
`
`counters that evidence by pointing to its expert’s declaration and to the
`
`industry’s recognition that LEDsprovidedless illumination than
`
`incandescent bulbs. PO Resp. 39 (citing Ex. 2006 §/] 25-38; Ex. 2012, 3). Of
`
`course, evidence about an individual LED’s output does not undermine
`
`Petitioner’s combination because headlamps using LEDs, such as
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`Karlsson’s, used manyindividual devices. F.g., Ex. 1010, 13:24-14:4,
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`Fig. 6. We conclude that the weight of evidence establishes that Karlsson’s
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`LED-based light source would have been sufficient to implement a vehicle
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`headlamp,as disclosed in Karlsson.
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`14
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`For the same reasonsasillumination level, Patent Owner’s arguments
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`regarding heat management and packaging are not persuasive. See
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`PO Resp. 44—45. Because (1) Karlsson discloses a system using LEDs and
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`(2) the challenged claims impose nospecific requirements regarding Patent
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`Owner’s asserted characteristics, we conclude that those characteristics
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`would not have counseled against the proposed combination. See Ex. 1010,
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`3:34—35 (“[I]t is furthermore possible to comply with relevant national and
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`international regulations.”).
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`In addition to LEDs’ output level, Patent Ownerrelies on the need for
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`an optical system in an implemented system and criticizes Petitioner for
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`inadequately explaining how skilled artisans would configure the proposed
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`combination’s optical system. PO Resp. 43-44. We do not agree with Patent
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`Owner’s arguments. Petitioner asserts that the combination would involve
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`substituting “Karlsson’s directional-controllable LED headlamps”in place
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`of “Gotou’s non-LED light sources” (Pet. 64-65) and asserts that the
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`combination would “result[] in a more compact system with fewer moving
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`parts” (id. at 60). It is clear from the Petition that the proposed combination
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`would include Karlsson’s optical system, as that system is used to direct the
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`light from individual LEDs towards the illumination target. Ex. 1010, 8:15—
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`17 (disclosing “lens 6, which forms light 5 into a desired emitted light
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`beam 7”), 13:24—14:4 (disclosing an embodimentfor light source 2 using an
`
`array of LEDsto form spotlight beams). Moreover, configuring the
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`combined system with an appropriate optical system waswell within the
`
`ordinary skill at the time, as Karlsson includes an optical system as
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`discussed above, Gotou refers to an “optical axis” (Ex. 1012, 3:31-35), and
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`ordinarily skilled artisans would have had automotive-lighting experience
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`15
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`Patent 11,208,029 B2
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`(supra at 7 (§ IL.A)). See also In re ICON Health and Fitness, Inc., 496 F.3d
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`1374, 1382 (Fed. Cir. 2007) (“[W]e do not ignore the modifications that one
`
`skilled in the art would make to a device borrowed from the priorart.”’). The
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`claims recite no specific requirements for the optical system and wefind that
`
`skilled artisans would have understood howto achieve the goal of projecting
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`light to specific, controllable areas on the illumination target space.
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`Patent Ownercriticizes Petitioner for proposing a combination that
`
`includes “Karlsson’s LED array and control” because, in Patent Owner’s
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`view, that would result in a system with conflicting control strategies.
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`PO Resp. 46—47 (internal quotations omitted). We do not agree, because the
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`proposed combination makeslogical sense and the two control systems
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`would work together. Gotou’s system uses a control system to determine the
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`desired optical axis—the lateral direction for illuminationrelative to the
`
`vehicle—based on multiple possible inputs. Ex. 1012, 2:5—8 (“control means
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`for inputting said direction indicating signal, steering angle signal, map
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`information and information of the present position and adjusting the
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`lighting region of said head lamp”’), 3:62—63 (“ECU 10 processes the
`
`information|] and signals to determine a requisite optical axis angle 0”).
`
`Karlsson’s system uses a control system that accepts inputs and provides
`
`outputs “in such a mannerthat a light beam 7 having a desired pattern and a
`
`desired intensity is emitted.” Ex. 1010, 9:15—17. Wefind that skilled artisans
`
`would have understood to use Gotou’s control system to determine the
`
`desired pattern and intensity, and to use Karlsson’s control system to
`
`produce that desired pattern and intensity with Karlsson’s LED array and
`
`optical system.
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`16
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`Patent Ownerargues that Karlsson’s controller would not have
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`worked with Gotou’s because LEDs“are controlled differently than
`
`conventional light bulbs with respect to the input voltage and waveform.”
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`PO Resp. 48; accordid. at 49 (“Gotou’s ECU,withits limited control
`
`capability, would not have been capable of providing digital control of
`
`Karlsson’s LED array at the correct input voltage.”). As explained above, we
`
`find that ordinarily skilled artisans would have understood how to configure
`
`the two systems to work together, because they would not simply connect
`
`Gotou’s controller to Karlsson’s LED array, but would understand that
`
`Gotou’s controller would provide the desired illumination angle, and
`
`Karlsson’s controller would implement that desired illumination angle by
`
`controlling the individual LEDsin the array. Similar flaws undermine Patent
`
`Owner’s argumentthat skilled artisans making the proposed combination
`
`would not have appropriately adapted Karlsson’s optics, resulting in a
`
`combination that could not adjust its optical axis. See id. at 50-51. As
`
`explained above, Karlsson discloses that optics are part of the system used to
`
`create a projected light beam from the controllable light source, and skilled
`
`artisans would have understoodoptical design as part of implementing the
`
`combination.
`
`Wefind that skilled artisans would have had reason to combine
`
`Karlsson’s teachings with Gotou’s as Petitioner asserts because of known
`
`benefits from LEDsin headlamps. See Pet. 55—56.
`
`Patent Owner doesnot otherwise contest Petitioner’s unpatentability
`
`assertions regarding the independentclaims. See PO Resp. 24-30, 37-51.
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`Wehaveconsidered Petitioner’s contentionsin light of the full record and
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`conclude that Petitioner has shown the unpatentability of claims 1, 13, and
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`17
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`Patent 11,208,029 B2
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`23, for the reasons provided in the Petition, Reply, and as discussed above.
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`Pet. 55-79; Pet. Reply 6-17.
`
`4.
`
`
`Claims 5, 16, and 27
`
`Claim 5 depends from claim 1 and further recites that “the increase of
`
`light in the direction of the road curvature includesat least an increase of
`
`light emitted at a level below high-beam light and directed in the direction of
`
`the road curvature.” Ex. 1001, 96:24—27. Claim 16 depends from claim 12
`
`and recites a parallel limitation. Claim 27 depends from claim 23 andrefers
`
`to aroad “shape change”rather than curvature; we agree with Petitioner that
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`a curvature is a type of shape change. Pet. Reply 18 (citing Ex. 1003 4§ 175-
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`176, 302); Pet. 34 n.8.
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`Petitioner contends that Gotou implements lighting changesin the
`
`horizontal direction, by changing the horizontal optical axis, and that the
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`combination using Karlsson’s LED-based illuminator would implement a
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`similar lighting approach, resulting in increased lighting towards a road
`
`curve that is below high-beam level because nothing in the control strategy
`
`would increasethe lateral illumination to a high-beam level. Pet. 84. Patent
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`Ownerfaults that logic for lacking “any explanation of why Karlsson would
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`mimic Gotou’s incandescentlight source output.” PO Resp. 31-34. Patent
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`Owner’s argumentis deficient because the combination uses Gotou’s
`
`controller to determine the desired lateral optical axis, and then implements
`
`that illumination pattern using Karlsson’s LEDarray and optics, as discussed
`
`above. Given Gotou’s illumination pattern, which did not increase high-
`
`beam illumination in response to road curvature, there was no need for
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`Petitioner to justify maintaining that approach.
`
`18
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`IPR2022-01586
`Patent 11,208,029 B2
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`Patent Owner does not otherwise challenge Petitioner’s contentions
`
`regarding claims 5, 16, and 27. We haveconsidered Petitioner’s contentions
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`in light of the full record and conclude that Petitioner has proven claims 5,
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`16, and 27 are unpatentable for the reasons providedin the Petition, Reply,
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`and as discussed above. Pet. 84; Pet. Reply 18-19.
`
`J.
`
`
`Claims 6, 17, and 28
`
`Claim 6 depends from claim 1 and further recites a capability to
`
`determine a secondlight changeto increase light in a direction of a second
`
`road curvature and to control a second plurality of LEDs that includesat
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`least one LED different from the first plurality. Ex. 1001, 96:28—45. Claims
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`17 and 28 depend from claims 12 and 28, respectively, and recite parallel
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`limitations. Petitioner asserts that the claims require “merely a subsequent,
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`repeated step in the continuous,iterative processes of the ’029 patent and
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`Gotou-Karlsson system.” Pet. 85.
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`Patent Owner disputes whether a merely iterative process adequately
`
`addresses the requirement that the second plurality of LEDs includesat least
`
`one LED different from the first plurality. PO Resp. 34-35. As Petitioner
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`points out, however, the case where a road curvesright and then left would
`
`require different plurality of LEDs to direct light toward the road curvature
`
`as the car proceeds from the right turn to the left turn. Pet. Reply 20. That
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`fact is apparent when considering Patent Owner’s expert’s view of how
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`Karlsson accommodates such curves. Ex. 2006 4 84-86. Although Patent
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`Owner’s expert testifies that Karlsson operates with all LEDs illuminated
`
`absent a detected road curvature, that does not change that Karlsson
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`invariably uses different subsets when illuminating curves of different
`
`directions. We agree with Petitioner that claims 6, 17, and 28 are obvious
`
`19
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`over Gotou and Karlsson because the asserted combination would select a
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`different plurality of LEDs for each detected situation, and because Gotou
`
`and Karlsson both describe operating on an ongoing basis such that LEDs
`
`are repeatedly selected based on detected conditions. Ex. 1036 4] 94-98.
`
`Patent Owner does not otherwise challenge Petitioner’s contentions
`
`regarding claims 6, 17, and 28. We haveconsidered Petitioner’s contentions
`
`in light of the full record and conclude that Petitioner has proven claims 6,
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`17, and 28 are unpatentable for the reasons provided in the Petition, Reply,
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`and as discussed above. Pet. 84—85; Pet. Reply 19-21.
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`6.
`
`Claims 7, 18, and 29
`
`
`Claim 7 depends from claim 1 and, inter alia, further recites that “the
`
`increase of light in the direction of the road curvature includes at least one of
`
`expansion of the light pattern in the direction of the road curvature or an
`
`increase to intensity of light directed in the direction of the road curvature.”
`
`Ex. 1001, 96:46-61. Claims 18 and 29 depend from claims 12 and 23,
`
`respectively, and recite parallel limitations. Petitioner asserts that the
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`additional limitations recite nothing more than well-known alternatives for
`
`increasing light toward the road curvature and are obvious for the same
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`reasonsas the independent claims. P
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