• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jul 15, 2024 · IPR2023-01320 · APJ Aaron W Moore · IPR · Final written decision

  Claims 26–28, 30–36, 65–68, and 70 are unpatentable as obvious; claims 29 and 69 were not shown unpatentable because the asserted grounds did not establish sensed fog or snow.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Inst. Dec. 8. In its Response, Patent Owner stated that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 3. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  • BurdenMixed

    “measurement by sensor 9 is not affected by “scattered reflected light” due to “dirty cover glass 19”). Moreover, even if fog or snow might make the cover glass “dirty” nothing in Karlsson senses that. Instead, the reference simply explains that the switching of the light is helpful if the glass happens to be dirty. Sensor 9 is used to detect light, such as from oncoming vehicles, not fog or snow (see Ex. 1010, 9:9–26), and none of the other passages of Karlsson cited in the Petition describe sensing fog or snow. Petitioner does not identify anything in Harbers that senses fog or snow, and we do not find a description of that ourselves. Harbers describes adjusting the light based on vehicle velocity, the position of the steering wheel, “weather conditions,” or road type (e.g., motorway or country road). See Ex. 1011, 3:27–4:32. It seems reasonable to assume that the velocity and position of the steering wheel are sensed, and the reference indicates that light distribution for road type can be adjusted “by the driver.” Id. at 4:22–25. The reference is silent, however, on how the adjustment based on “weather conditions” is made. Dr. Jiao cites a passage from Braun about how its “headlights . . . are programmed . . . to detect fog and . . . provide light appropriate for driving in fog” (see Ex. 1003 ¶ 590), but Braun is not included in this ground in the Petition (see Pet. 3), and neither Petitioner not Dr. Jiao attempts to provide a reason to combine Braun for these claims. We conclude that, in order to show that these claims would have been obvious, Petitioner would have needed to show that sensing would have been disclosed or inherent in the Harbers/Karlsson combination, obvious in view of Karlsson and Harbers, or that it would have been obvious to add Braun’s fog detection to the Karlsson/Harbers combination. As Petitioner did not argue an express or inherent disclosure of fog/snow sensing in Harbers/Karlsson, did not argue that it would have been obvious to use fog/snow sensing in the Karlsson/Harbers combination, and did not include Braun in the combination, we conclude that Petitioner has not shown that claims 29 and 69 are unpatentable” slip op. at 26

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “This argument is not persuasive because, we conclude, it overstates the problem. These claims require bluish light towards the center and yellowish light to the side. Were an oncoming vehicle in the yellow area, corresponding yellow lights would be dimmed. Were the oncoming vehicle then moved to straddle the yellow and blue areas, the corresponding yellow and blue lights would be dimmed. And if the vehicle were to move to the blue area, the corresponding blue lights would be dimmed. We agree with Dr. Jiao that one of ordinary skill in this art, which is fairly predictable, would be able to avoid or sufficiently minimize any color shifting problems. See Ex. 1051 ¶¶ 162–165. We also credit Dr. Jiao’s explanation that, in the combination, there would only be “subtle variations of illuminated color within the range, such as bluish white and yellowish white” and that “all light would be recognized as white light (as defined in standards and regulations)” that not would be problematic in practice. See id. ¶ 167.9” slip op. at 22

  Patent outcomesUS 10,894,503 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jul 15, 2024 · IPR2023-00328 · APJ Aaron W Moore · IPR · Final written decision

  Claims 26–28, 30–36, 65–68, and 70 are unpatentable as obvious; claims 29 and 69 were not shown unpatentable because the grounds did not establish sensed fog or snow.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Inst. Dec. 8. In its Response, Patent Owner stated that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 3. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Inst. Dec. 8 (citing Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”)). Patent Owner agrees with that construction. See PO Resp. 6. However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  • BurdenDecided for petitioner

    “We addressed this issue at institution, explaining that “we understand the asserted combinations” and that “[a]ssertions that both references disclose a particular claim element do not undermine or overly cloud Petitioner’s asserted combinations.” Inst. Dec. 15. That remains the case. Patent Owner’s attempt to spin some loose language in the Petition into “sixty-one grounds” (PO Resp. 7) is not persuasive, particularly after the institution decision, in which we explained how we viewed the combinations presented by Petitioner. See Inst. Dec. 11–13. The combinations are simply not as multiplicated and complicated as Patent Owner contends, and Patent Owner acknowledged at the hearing that the alleged multiplicity did not prevent it from addressing any issue. See Tr. 37:17–18 (“[Q]: Which of these did you address in your papers? [A]: We address every single one for every single claim.”). Patent Owner also argues that “[the] lack of particularity is compounded by Petitioner’s other two petitions challenging the ’503 Patent – Petitions that similarly implicate massive numbers of sub-grounds and comparably lacking particularity – resulting in Petitioner asserting at least 149 sub-grounds.” PO Resp. 19 (emphasis omitted). We again disagree with Patent Owner’s assessment of the number of “sub-grounds” at issue, and conclude, as we did at institution, that three petitions were justified given the number of asserted claims and differences in claim scope. See Inst. Dec. 15. D.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “a. Motivation to Combine Patent Owner first argues that “Harbers curved substrate alone has not been shown to add anything useful to the combination.” Patent Owner 56. This argument is unpersuasive because the combination does not require a curved substrate and Patent Owner does not address the motivation for the combination identified by Petitioner, which is that Harbers’ illumination schemes would have provided “improved visibility for different functions, thereby increasing safety.” See Pet. 82–84 (citing Ex. 1011, 5:14–26, 6:1–7, 6:27–7:19, 8:10–18, Figs. 1B–2; Ex. 1003 ¶ 450). b. Segmentation and Color Shifting Patent Owner next argues that “without segmentation the motivation to use Harbers hardware alone is lacking” and that “[f]urther, the use of Harbers’ colored array creates a color-shifting problem.” PO Resp. 57. With regard to “segmentation,” Patent Owner cities Section VII.A.2.b of the Response, which argues that “[w]hile the system would have included differently colored LEDs, there still would not be a single component of the combination that would have any idea how to segment the beams as Harbers suggests.” PO Resp. 34. We disagree. The combination contemplates use of Harbers’ illumination scheme, and Harbers explains, in connection with Figure 2, for example, how the light sources are controlled to produce the desired illumination pattern. See Ex. 1011, 7:20–9:6.” slip op. at 21

  Patent outcomesUS 10,894,503 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jul 9, 2024 · IPR2023-01296 · APJ Jason W Melvin · IPR · Final written decision

  Claims 56–64, 66, 68–72, 74, and 76–87 are unpatentable as obvious; claims 65, 67, 73, and 75 were not shown unpatentable because the asserted grounds did not establish the required non-contiguous LED cluster.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “F. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits 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 equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶ 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 10. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Some of Petitioner’s and Patent Owner’s arguments depend on claim scope, and we address those implicit claim-construction arguments below.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “claim construction: that a controller must associate a target’s identity with a prior target. But the claim language neither imposes nor supports any such requirement. Claim 72 is illustrative, in that it expressly states that the disputed language regarding “illumination provided to the target” is achieved “by repeating the determination of target location, selection of the 10 We agree with Petitioner that the Petition’s reference to “Beam’s system” is a clear typographical error and that the Petition’s substance and citations refer to Karlsson, not Beam. See Pet. Reply 20. cluster and variance to illumination provided to the target, relative to the laterally adjacent areas, based on the subsequent data.” Ex. 1035, 12:8–11. That supports Petitioner’s view that a system can “maintain a variance of the illumination provided to the target” by iteratively performing the “determine,” “select,” and “vary” steps. Claim 80 does not expressly state that steps are repeated, but instead requires the processor be able to identify “a plurality of positions associated with the target” and “change, responsive to the positions associated with the target, first light associated with” LEDs aimed towards the target as the target moves. Id. at 13:30–40. That language, like claim 72’s, does not impose an additional requirement of correlating a detected target to prior detected targets. Rather, it requires that a given target results in multiple identified positions that produce light changes. Based on our understanding of the claim language, Patent Owner’s assertion that, in Karlsson, “[e]ach subsequent detection of light is performed anew and has no relationship to a prior detection and may or may not correspond to the same target” (PO Resp. 52) does not preclude the claim from reading on Karlsson. As Petitioner has identified, the claim language reads on Karlsson’s system when a particular vehicle results in multiple, subsequent detections at multiple positions. Pet. 74. Although Patent Owner poses an alternative situation in which Karlsson’s system might detect other objects rather than the particular vehicle first detected (see PO Resp. 50–51), that does not undermine Petitioner’s showing because the claims do not require that a system perform only as claimed. That is, even if Karlsson’s system detects and accommodates additional targets, if a single target results in multiple light configurations, the claim language is satisfied. And Patent Owner concedes that Karlsson’s system produces “a darkened area that changes position over time due to movement of the vehicle providing light relative to various light sources.” Id. at 52. That admission is consistent with Karlsson’s disclosure that its system adapts to sensed objects by “intermittently, repeatedly controlling” its light beam. Ex. 1010, 2:30–3:6. We find that when Karlsson’s system controls light to prevent glare to an oncoming vehicle, that would result in the processor identifying a plurality of positions associated with the vehicle and varying light associated with LEDs aimed toward the vehicle. Thus, the record supports Petitioner’s position that claims 72’s and 80’s disputed language reads on Karlsson. 5. “select a second, different cluster . . . directed towards the other vehicle”” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. 56 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 110 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 156 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 59–61. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17– 110:4. While there may be some tradeoffs involved in using a different camera location than Nakamura discusses, those tradeoffs would be balanced by the benefits that Karlsson discloses from locating a camera with each headlamp. Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented as a lighting change by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have had reason to modify Karlsson’s system with Nakamura’s teachings regarding capturing and using image coordinates as summarized above.” slip op. at 21

  Patent outcomesUS 9,955,551 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,955,551
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jul 9, 2024 · IPR2023-00318 · APJ Jason W Melvin · IPR · Final written decision

  Claims 56–64, 66, 68–72, 74, and 76–87 are unpatentable as obvious; claims 65, 67, 73, and 75 were not shown unpatentable because the asserted grounds did not establish the required non-contiguous LED clusters.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “F. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits 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 equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶ 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 10. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Some of Petitioner’s and Patent Owner’s arguments depend on claim scope, and we address those implicit claim-construction arguments below.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “claim construction: that a controller must associate a target’s identity with a prior target. But the claim language neither imposes nor supports any such requirement. Claim 72 is illustrative, in that it expressly states that the disputed language regarding “illumination provided to the target” is achieved “by repeating the determination of target location, selection of the 10 We agree with Petitioner that the Petition’s reference to “Beam’s system” is a clear typographical error and that the Petition’s substance and citations refer to Karlsson, not Beam. See Pet. Reply 20. cluster and variance to illumination provided to the target, relative to the laterally adjacent areas, based on the subsequent data.” Ex. 1035, 12:8–11. That supports Petitioner’s view that a system can “maintain a variance of the illumination provided to the target” by iteratively performing the “determine,” “select,” and “vary” steps. Claim 80 does not expressly state that steps are repeated, but instead requires the processor be able to identify “a plurality of positions associated with the target” and “change, responsive to the positions associated with the target, first light associated with” LEDs aimed towards the target as the target moves. Id. at 13:30–40. That language, like claim 72’s, does not impose an additional requirement of correlating a detected target to prior detected targets. Rather, it requires that a given target results in multiple identified positions that produce light changes. Based on our understanding of the claim language, Patent Owner’s assertion that, in Karlsson, “[e]ach subsequent detection of light is performed anew and has no relationship to a prior detection and may or may not correspond to the same target” (PO Resp. 52) does not preclude the claim from reading on Karlsson. As Petitioner has identified, the claim language reads on Karlsson’s system when a particular vehicle results in multiple, subsequent detections at multiple positions. Pet. 74. Although Patent Owner poses an alternative situation in which Karlsson’s system might detect other objects rather than the particular vehicle first detected (see PO Resp. 50–51), that does not undermine Petitioner’s showing because the claims do not require that a system perform only as claimed. That is, even if Karlsson’s system detects and accommodates additional targets, if a single target results in multiple light configurations, the claim language is satisfied. And Patent Owner concedes that Karlsson’s system produces “a” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. 56 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 110 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 156 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 59–61. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17– 110:4. While there may be some tradeoffs involved in using a different camera location than Nakamura discusses, those tradeoffs would be balanced by the benefits that Karlsson discloses from locating a camera with each headlamp. Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented as a lighting change by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have had reason to modify Karlsson’s system with Nakamura’s teachings regarding capturing and using image coordinates as summarized above.” slip op. at 21

  Patent outcomesUS 9,955,551 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,955,551
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentable
  PTAB · Jun 20, 2024 · IPR2023-01231 · APJ Aaron W Moore · IPR · Final written decision

  Claims 20–25 and 59–64 are unpatentable as obvious over Karlsson and Harbers, alone or with Gotou; the Beam and Thominet grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 7. In its Response, Patent Owner stated that it “does not dispute the Board’s reframing of Petitioner’s proposed level of ordinary skill” and asserts that “the modification should have no effect on the analysis.” See PO Resp. 14. We accordingly maintain the level of ordinary skill in the art we adopted in the institution decision. B.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”). Patent Owner agrees with that construction. See PO Resp. 14. However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  • BurdenDecided for petitioner

    “We addressed this issue at institution, explaining that “we understand the asserted combinations” and that “[a]ssertions that both references disclose a particular claim element do not undermine or overly cloud Petitioner’s asserted combinations.” Inst. Dec. 22. That remains the case. Patent Owner’s attempt to spin some loose language in the Petition into “41 Sub-Grounds within the nominal framework of six Grounds” (PO Resp. 15) is not persuasive, particularly after the institution decision, in which we explained how we viewed the combinations presented by Petitioner, for example finding that the primary references did not disclose differently angled light sources, and explaining that the combination contemplated the lighting schemes of the secondary references augmented by the selective dimming of the primary references. See Inst. Dec. 9–20. The combinations are simply not as multiplicated and complicated as Patent Owner contends, and Patent Owner acknowledged at the hearing that the alleged multiplicity did not prevent it from addressing any issue. See Trans. 37:17–18 (“[Q]: Which of these [alleged sub-grounds] did you address in your papers? [A]: We address every single one for every single claim.”). Patent Owner also argues that “[the] lack of particularity is compounded by Petitioner’s other two petitions challenging the ’503 Patent that suffer the same lack of particularity issues––meaning Petitioner has asserted at least 149 grounds.” PO Resp. 25 (emphasis omitted). We again disagree with Patent Owner’s assessment of the number of “sub-grounds” at issue, and conclude, as we did at institution, that three petitions were justified given the number of asserted claims and the differences in claim scope. See Inst. Dec. 22. D.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “opto-electronic elements” and that they “[do] not have to be provided on a flat substrate” and “may alternatively be provided on a curved substrate.” Ex. 1011, 7:20–29. In either case, however, we find that the light sources must be directed at different angles to produce the pattern shown in Figure 1B. In other words, we do not read Harbers’ explanation that the substrate may be flat or curved to mean that the light sources in the non-curved substrate embodiment would all be pointed in the same direction because that is simply not consistent with Figure 1B. Instead, we understand Harbers to be describing how the differently directed light beams may be achieved either by light sources mounted on a flat substrate at different angles relative to the substrate, or by light sources mounted on a substrate that is curved. The Petition asserted that “[h]aving multiple directional beam segments with different angles/aimings as in Harbers, implemented with Karlsson’s control means 14/spotlight beams 34 (including light modulator means 3), would have provided Karlsson’s system with different spatial distributions for different driving situations beyond reducing glare for drivers, thereby improving safety.” Pet. 84 (emphasis added, citing Ex. 1003 ¶ 350). Petitioner thus relied on Harbers’ “beam segments” with “different angles/aimings” that produce the pattern shown in Figure 1B. We agree that the advantages Harbers attributes to its spatial distribution scheme would have provided a sufficient motivation to use it in the combination, and that it would include the differently angled light sources present in both the flat and curved substrate embodiments of Harbers. Because all embodiments of Harbers’ illumination method require that the light sources be arranged at different angles, we need not conclude that it would have been obvious to use Harbers’ curved substrate in place of Karlsson’s flat substrate. However, were inclusion of Harbers’ curved substrate necessary for a finding of obviousness, we conclude that Harbers’ explanation of how the non-curved and curved embodiments are simply alternative means of producing differently angled beams would be sufficient to show that use of the curved substrate in place of a flat substrate would have been a simple substitution of a known element (a curved substrate) for another (a flat substrate), yielding the predictable results described in Harbers (differently angled light sources capable of producing the designed light pattern), and that this would be, therefore, an obvious modification. See Pet. 86 (asserting that use of the curved substrate would have been a simple and predictable substitution). We find that the skilled artisan would have known to use either a flat or curved substrate to achieve Harbers’ multi-directional lighting scheme as appropriate for a given application. slip op. at 17

  Patent outcomesUS 10,894,503 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentable
  PTAB · Jun 20, 2024 · IPR2023-00197 · APJ Aaron W Moore · IPR · Final written decision

  Claims 20–25 and 59–64 are unpatentable as obvious over Karlsson and Harbers, with claims 21–23 and 60–62 also relying on Gotou.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 7. In its Response, Patent Owner stated that it “does not dispute the Board’s reframing of Petitioner’s proposed level of ordinary skill” and asserts that “the modification should have no effect on the analysis.” See PO Resp. 14. We accordingly maintain the level of ordinary skill in the art we adopted in the institution decision. B.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”). Patent Owner agrees with that construction. See PO Resp. 14. However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  • BurdenDecided for patent owner

    “‘selectively adjust[s] . . . spotlight beam[s] 34, in response to a control signal from sensor means 23 . . . [to] provide a desired lighting pattern’ in ‘given directions,’” “recognizes ‘[w]hen taking a bend . . . [that] the road ahead . . . is insufficiently lit,’” and “discloses using additional sensors, for example, ‘direction sensor 54 . . . for determining when the car 56 is taking a bend, so that the light beam 7 can be adapted,’ and acknowledges the safety benefits of those systems.” Pet. 114–115 (citing Ex. 1010, 1:35–2:1, 6:26–33, 9:23–25, 11:25–28, 14:26–30, 20:22–32, Figs. 3, 6, 14; 16; Ex. 1003 ¶ 452) (emphasis omitted). We have reviewed the portions of Karlsson cited by Petitioner and find them insufficient to teach or suggest the subject matter of claims 21–23 and 60–62. Although they disclose direction sensors and controlling the light in response to sensors, the direction sensors are used “for determining when the car . . . is taking a bend, so that the light beam . . . can be adapted to prevent the traffic on the other side of the road from being blinded as much as possible.” Ex. 1010, 20:29–32. This suggests that the direction sensors are used to decrease illumination in the direction of the curve or turn, not to increase the illumination, as claimed.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “The Petition asserted that “[h]aving multiple directional beam segments with different angles/aimings as in Harbers, implemented with Karlsson’s control means 14/spotlight beams 34 (including light modulator means 3), would have provided Karlsson’s system with different spatial distributions for different driving situations beyond reducing glare for drivers, thereby improving safety.” Pet. 84 (emphasis added, citing Ex. 1003 ¶ 350). Petitioner thus relied on Harbers’ “beam segments” with “different angles/aimings” that produce the pattern shown in Figure 1B. We agree that the advantages Harbers attributes to its spatial distribution scheme would have provided a sufficient motivation to use it in the combination, and that it would include the differently angled light sources present in both the flat and curved substrate embodiments of Harbers. Because all embodiments of Harbers’ illumination method require that the light sources be arranged at different angles, we need not conclude that it would have been obvious to use Harbers’ curved substrate in place of Karlsson’s flat substrate. However, were inclusion of Harbers’ curved substrate necessary for a finding of obviousness, we conclude that Harbers’ explanation of how the non-curved and curved embodiments are simply alternative means of producing differently angled beams would be sufficient to show that use of the curved substrate in place of a flat substrate would have been a simple substitution of a known element (a curved substrate) for another (a flat substrate), yielding the predictable results described in Harbers (differently angled light sources capable of producing the designed light pattern), and that this would be, therefore, an obvious modification. See Pet. 86 (asserting that use of the curved substrate would have been a simple and predictable substitution). We find that the skilled artisan would have known to use either a flat or curved substrate to achieve Harbers’ multi-directional lighting scheme as appropriate for a given application. Patent Owner suggests that Virtek Vision Intl. ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882 (Fed. Cir. 2024), supports its position that it would not have been obvious to use the curved substrate in the combination. See Trans. 101, 127. In that case, the issue was whether it would have been obvious to modify the primary references, which used an angular direction system, to instead use a 3D coordinate system that was also known in the art. See id. at 886. The Federal Circuit found a lack of motivation to combine because “[t]he mere fact that . . . possible arrangements existed in the prior art” was insufficient. Id. at 887. Here, however, there is a motivation––the advantages of Harbers’ spatial lighting scheme––and Harbers teaches that those advantages may be achieved with differently directed light sources on either a flat substrate or a curved substrate. We find this to provide a sufficient motivation under the controlling law. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (explaining that to be non-obvious a change must be “more than the predictable use of prior art elements according to their established functions”).” slip op. at 17

  Patent outcomesUS 10,894,503 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,894,503
• Oracle Corporation v. Joseph L. De BellisInstituted
  PTAB · Jun 18, 2024 · IPR2024-00221 · APJ Jon M Jurgovan · IPR · Institution

  The Board instituted IPR on all challenged claims, 1–7, 15–23, and 25–30, on all asserted §103 obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’720 patent on all challenges in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had at least a bachelor’s degree in computer science, electrical engineering, or a related subject, and at least two years of experience working with databases, computer networks, and related web technologies. A more advanced degree can substitute for less work experience and vice versa. Pet. 17 (citing Ex. 1003 ¶¶ 57–61). Petitioner’s proposed level of skill in the art is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims’ terms “can be afforded their plain and ordinary meaning.” Pet. 17. As there is no dispute of any claim term at this time, we do not expressly construe any claim term, and will apply the ordinary and customary meaning consistent with 37 C.F.R. § 42.100(b).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Specifically, Petitioner contends that “Cochran endeavors to ‘provide an efficient and user-friendly method of searching computer databases’ using ‘a search system that efficiently displays information to users.’” Pet. 55 (citing Ex. 1005, 4:4–19). Petitioner asserts that Cochran acknowledges that “it may need to display more items than a pick box can display simultaneously, forcing a user to scroll through options.” Id. (citing Ex. 1006, 10:58–65). Petitioner argues that a “POSITA would have appreciated that certain lists in Cochran are extremely voluminous and would benefit from improved navigation methods.” Id. at 55–56 (citing Ex. 1006, Fig. 4e; Ex. 1003 ¶¶ 482–485). Petitioner contends that “Zellweger sought to remedy th[e] same problem.” Id. at 56. According to Petitioner, a “POSITA would have recognized that it is difficult for users to scroll through Cochran’s long pick box lists” and “would have looked to Zellweger to improve the usability of the pick boxes” by using Zellweger’s Alphabet or Content Lists instead of Cochran’s scroll bars when the number of entries exceeds what can be presented on a screen. Id. at 56–57 (citing Ex. 1003 ¶ 485). Petitioner contends that the combination is “nothing more than using one known method (Zellweger) to improve another known method (Cochran) according to the express teachings of Zellweger to yield predictable results.” Id. at 57. Petitioner further alleges that other methods for implementing pick boxes for use with “wide ranges” of terms were known in the art. Id. (citing Ex. 1006, 10:61–65). Petitioner contends that Cochran and Zellweger are analogous art because they are “directed to the same field (accessing information in databases), and address similar concepts (making information more easily accessible using graphical interfaces)” and teach several of the same concepts (e.g., GUIs to access databases) and are both implemented as computer software.” Id. (citing Ex. 1006, code (57), 1:14–20, 4:2–57; Ex. 1007, code (57), 1:35–40, 2:30–43; Ex. 1003 ¶¶ 480–481). Petitioner contends that a “POSITA would have appreciated that Cochran’s and Zellweger’s teachings were well-known and complementary to one another.” Id. Petitioner alleges that a “POSITA would have had a high expectation” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,760,720
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jun 18, 2024 · IPR2023-01225 · APJ Jason W Melvin · IPR · Final written decision

  Claims 24, 26, 28–32, 34, 36–40, 42, and 44–47 are unpatentable as obvious; claims 25, 27, 33, 35, 41, 43, and 48–55 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “F. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits 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 equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to 3 Beam, U.S. Patent No. 6,144,158, issued Nov. 7, 2000. Ex. 1005, code (45). 4 English translation of Satonaka et al., Japan Patent Publication No. H7-101291, published Apr. 18, 1995. Ex. 1014, 0001, code (43). 5 Kobayashi, U.S. Patent No. 6,049,749, issued Apr. 11, 2000. Ex. 1008, code (45). 6 Karlsson, WIPO Patent Publication No. 98/54030, published December 3, 1998. Ex. 1010, code (43). 7 English translation of Nakamura et al., Japan Patent Publication No. H7-65603, published Mar. 10, 1995. Ex. 1013, 0001, code (43). 8 Gotou, U.S. Patent No. 5,588,733, issued Dec. 31, 1996. Ex. 1012, code (45). integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner notes that, during reexamination of the ’551 patent, the Office interpreted “electronic circuitry apparatus for the controlled powering of the LEDs” as a means-plus-function limitation and identified the corresponding structure as “logic control electronics unit 7.” Id. at 8 (citing Ex. 1002, 929–39; Ex. 1001, 25:34–52). Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 9. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As to the advantages of Karlsson’s lamp-located sensor, nothing about that arrangement would have changed in the proposed combination. As described, Petitioner proposes using aspects of Nakamura’s processing in combination with Karlsson’s physical system. See Pet. 54–58. Thus, the combination preserves any advantages Karlsson obtains by locating a sensor with each illumination system. As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. Reply 58 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 125 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 168 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 57–59. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17–110:4. It is inapposite that “Nakamura does not contemplate LEDs and therefore does not control light in a similar fashion” as Patent Owner argues (PO Resp. 60), because Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “As to independent claims 24 and 32, Patent Owner does not assert any “unique characteristics that are novel and nonobvious over the asserted art.” See PO Resp. 70–71. Patent Owner asserts that claim 40 includes “adapting light emission to provide at least two dark zones with ‘light in-between’” and that the Stam declaration correlates that characteristic with the objective evidence. Id. The Stam declaration addresses claim language reciting illumination “that preserves a first level of illumination illuminating past the other vehicle while preventing glare to a driver of the other vehicle” and asserts that an article discussing that a commercial product’s “[i]ndividually controlled LEDs also provide two or more dark zones with ‘light in-between,’ allowing continuous use of a vehicle’s high-beams to maximize visibility and provide a safer driving experience.” Ex. 2023, 734 (Stam declaration ¶ 117) (quoting Ex. 2023, 182) (emphasis omitted). Patent Owner does not explain and we do not understand the connection between the claim language recited in the declaration and that of claim 40. But even accepting that the reexamination exhibit shows industry praise for a system with claim 40’s feature, Patent Owner has not shown that the feature was novel. As discussed above, we conclude that Karlsson discloses that aspect of claim 40 without modification. See supra at 16 (§ II.B.5). Accordingly, even viewing Patent Owner’s evidence as credible and appropriate, we conclude that it would not establish the required nexus for claim 40. To be clear, Patent Owner’s asserted evidence would not establish nexus for any aspect of the independent claims, because each element is found in the prior art and the only elements for which Petitioner asserts a combination of prior-art teachings—those relating to image coordinates—are not those that Patent Owner relies on for a unique characteristic of the claimed invention. Patent Owner asserts further that industry praise was directed at the “Predictive Curve Illumination feature” recited by dependent claims that require the ability to “accommodate the upcoming road curvature” by adapting the light. PO Resp. 8, 70–71. Patent Owner relies on a report of a new lighting system used by BMW that states, “[t]he benefit of a glare-free function is not only to shadow out other cars but also to provide visibility for upcoming curves and dangerous situations; there is a clear safety gain by illuminating this curve in front of the driver.” Ex. 2023, 727 (quoting Ex. 2023, 177) (emphasis omitted). That statement does not itself establish a nexus to the “Predictive Curve Illumination” claims. Patent Owner asserts that the reexamination declaration correlated objective evidence with the “Predictive Curve Illumination” claims (PO Resp. 70–71), but cited portion of the declaration does not address that claim feature (see Ex. 2023, 728–34). Accordingly, Patent Owner has not established a nexus with the dependent claims. That the praised characteristics were found in the prior art is consistent with Patent Owner’s asserted evidence, which largely pertains to efforts to change U.S. regulations to permit the use of adaptive headlight technology. See Pet. Reply 28; Ex. 1053 ¶¶ 198–199. Thus, Patent Owner’s evidence does not support nonobviousness.” slip op. at 22

  Patent outcomesUS 9,955,551 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,955,551
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jun 18, 2024 · IPR2023-00315 · APJ Jason W Melvin · IPR · Final written decision

  Claims 24, 26, 28–32, 34, 36–40, 42, and 44–47 are unpatentable as obvious; claims 25, 27, 33, 35, 41, 43, and 48–55 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to 3 Beam, U.S. Patent No. 6,144,158, issued Nov. 7, 2000. Ex. 1005, code (45). 4 English translation of Satonaka et al., Japan Patent Publication No. H7-101291, published Apr. 18, 1995. Ex. 1014, 0001, code (43). 5 Kobayashi, U.S. Patent No. 6,049,749, issued Apr. 11, 2000. Ex. 1008, code (45). 6 Karlsson, WIPO Patent Publication No. 98/54030, published December 3, 1998. Ex. 1010, code (43). 7 English translation of Nakamura et al., Japan Patent Publication No. H7-65603, published Mar. 10, 1995. Ex. 1013, 0001, code (43). 8 Gotou, U.S. Patent No. 5,588,733, issued Dec. 31, 1996. Ex. 1012, code (45). integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner notes that, during reexamination of the ’551 patent, the Office interpreted “electronic circuitry apparatus for the controlled powering of the LEDs” as a means-plus-function limitation and identified the corresponding structure as “logic control electronics unit 7.” Id. at 8 (citing Ex. 1002, 929–39; Ex. 1001, 25:34–52). Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 9. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As to the advantages of Karlsson’s lamp-located sensor, nothing about that arrangement would have changed in the proposed combination. As described, Petitioner proposes using aspects of Nakamura’s processing in combination with Karlsson’s physical system. See Pet. 54–58. Thus, the combination preserves any advantages Karlsson obtains by locating a sensor with each illumination system. As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. Reply 58 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 125 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 168 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 57–59. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17–110:4. It is inapposite that “Nakamura does not contemplate LEDs and therefore does not control light in a similar fashion” as Patent Owner argues (PO Resp. 60), because Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “however, has not presented Mr. Stam’s declaration as a declaration in this case, instead relying on its expert, Dr. Turk, who “reviewed the objective evidence statements in the Stam declaration.” PO Resp. 68 (citing Ex. 2006 ¶¶ 215–216). Dr. Turk, however, was not able to recall the meaning of multiple terms he used in his declaration (Ex. 1053, 124:5–135:18) and asserted that he determined that ADB technology falls within the claims by looking at the Stam declaration, without independently verifying statements in the Stam declaration or reviewing the documents upon which those statements were based (id. at 135:19–137:16). Dr. Turk’s declaration addressing secondary considerations is not credible as to the substance of the asserted secondary considerations, and Patent Owner’s asserted secondary considerations are not persuasive for that reason alone. Additionally, Petitioner asserts that Patent Owner has not shown any evidence that is “the direct result of the unique characteristics of the claimed invention.” Pet. Reply 25 (quoting Fox Factory, Inc. v. Sram, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (internal quotations omitted)). In particular, Petitioner asserts that all the elements of the claimed invention were known in the prior art, and thus that Patent Owner cannot show a nexus between any long-felt need or industry praise and the challenged claims. Id. at 25–26. As to independent claims 24 and 32, Patent Owner does not assert any “unique characteristics that are novel and nonobvious over the asserted art.” See PO Resp. 70–71. Patent Owner asserts that claim 40 includes “adapting light emission to provide at least two dark zones with ‘light in-between’” and that the Stam declaration correlates that characteristic with the objective evidence. Id. The Stam declaration addresses claim language reciting illumination “that preserves a first level of illumination illuminating past the other vehicle while preventing glare to a driver of the other vehicle” and asserts that an article discussing that a commercial product’s “[i]ndividually controlled LEDs also provide two or more dark zones with ‘light in-between,’ allowing continuous use of a vehicle’s high-beams to maximize visibility and provide a safer driving experience.” Ex. 2023, 734 (Stam declaration ¶ 117) (quoting Ex. 2023, 182) (emphasis omitted). Patent Owner does not explain and we do not understand the connection between the claim language recited in the declaration and that of claim 40. But even accepting that the reexamination exhibit shows industry praise for a system with claim 40’s feature, Patent Owner has not shown that the feature was novel. As discussed above, we conclude that Karlsson discloses that aspect of claim 40 without modification. See supra at 16 (§ II.B.5). Accordingly, even viewing Patent Owner’s evidence as credible and appropriate, we conclude that it would not establish the required nexus for claim 40. To be clear, Patent Owner’s asserted evidence would not establish nexus for any aspect of the independent claims, because each element is found in the prior art and the only elements for which Petitioner asserts a combination of prior-art teachings—those relating to image coordinates—are not those that Patent Owner relies on for a unique characteristic of the claimed invention. Patent Owner asserts further that industry praise was directed at the “Predictive Curve Illumination feature” recited by dependent claims that require the ability to “accommodate the upcoming road curvature” by adapting the light. PO Resp. 8, 70–71. Patent Owner relies on a report of a new lighting system used by BMW that states, “[t]he benefit of a glare-free function is not only to shadow out other cars but also to provide visibility for upcoming curves and dangerous situations; there is a clear safety gain by illuminating this curve in front of the driver.” Ex. 2023, 727 (quoting Ex. 2023, 177) (emphasis omitted). That statement does not itself establish a nexus to the “Predictive Curve Illumination” claims.” slip op. at 22

  Patent outcomesUS 9,955,551 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,955,551
• Keysight Technologies, Inc. v. Centripetal Networks, LLCSome claims unpatentable
  PTAB · Jun 3, 2024 · IPR2023-00448 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable under § 103; claims 6, 14, 22, 30, and 33 were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “In the Institution Decision, we instituted review based on all challenged claims and all challenges included in the Petition. Paper 7 (“Inst. Dec.”). We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons explained below, Petitioner has shown by a preponderance of the evidence that claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable but has not shown by a preponderance of the evidence that claims 6, 14, 22, 30, and 33 are unpatentable. See 35 U.S.C. § 316(e) (2018).” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Conclusion About Obviousness for Claim 1 For the reasons discussed above, the combined disclosures in Law and” slip op. at 86

  Patent outcomesUS 11,012,474 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,012,474

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.