• 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 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
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · May 22, 2024 · IPR2023-01122 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–8, 10–19, 21–30, 32, and 33 are unpatentable over Gotou and Karlsson; claims 9, 20, and 31 were not shown unpatentable under either asserted ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided 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” and “may work as part of a team” listing an example. Pet. 10 (citing Ex. 1003 ¶¶ 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 does not satisfy the agreed level of ordinary skill (see Pet. Reply 2–5), Patent Owner relies on Petitioner’s expert’s statement that “a higher level of education or skill might make up 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 ¶ 42). We proceed 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.” slip op. at 7

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

    “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. Id. at 39–40. We do not agree. Most significantly, Karlsson is specifically directed to a motor vehicle headlight capable of varying its emitted beam. E.g., Ex. 1010, 1:3–7. And Karlsson expressly discloses that LEDs are appropriate options for its headlamp. Id. 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 LEDs as light sources for headlamps. Pet. 56 (citing Ex. 1005, 4:9–15, 6:9–12, Claims 4 and 5; Ex. 1006 ¶¶ 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 LEDs provided less 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 Karlsson’s, used many individual devices. E.g., Ex. 1010, 13:24–14:4, Fig. 6. We conclude that the weight of evidence establishes that Karlsson’s LED-based light source would have been sufficient to implement a vehicle headlamp, as disclosed in Karlsson. For the same reasons as illumination level, Patent Owner’s arguments regarding heat management and packaging are not persuasive. See PO Resp. 44–45. Because (1) Karlsson discloses a system using LEDs and (2) the challenged claims impose no specific requirements regarding Patent Owner’s asserted characteristics, we conclude that those characteristics would not have counseled against the proposed combination. See Ex. 1010, 3:34–35 (“[I]t is furthermore possible to comply with relevant national and international regulations.”).” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableDecided for patent owner

    “We agree with Patent Owner. Claim 9 recites “the control of the second plurality of LED light sources, which naturally and logically refers to claim 8’s “control . . . 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.” Thus, the claim language’s antecedent basis establishes that claim 9’s control must also be “to diminish glare to a driver of the other vehicle.” The Petition does not identify teachings in the prior art that render claim 9’s limitation obvious under the correct claim interpretation. Nor does Petitioner’s Reply explain how the asserted combination satisfies Patent Owner’s construction, which we adopt. See Pet. Reply 23–24. Therefore, Petitioner has failed to carry its burden for claims 9, 20, and 31.” slip op. at 22

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner. Claim 9 recites “the control of the second plurality of LED light sources, which naturally and logically refers to claim 8’s “control . . . 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.” Thus, the claim language’s antecedent basis establishes that claim 9’s control must also be “to diminish glare to a driver of the other vehicle.” The Petition does not identify teachings in the prior art that render claim 9’s limitation obvious under the correct claim interpretation. Nor does Petitioner’s Reply explain how the asserted combination satisfies Patent Owner’s construction, which we adopt. See Pet. Reply 23–24. Therefore, Petitioner has failed to carry its burden for claims 9, 20, and 31.” slip op. at 22

  Patent outcomesUS 11,208,029 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 11,208,029
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · May 22, 2024 · IPR2022-01586 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–8, 10–19, 21–30, 32, and 33 are unpatentable over Gotou and Karlsson; claims 9, 20, and 31 were not shown unpatentable under either asserted ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided 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” and “may work as part of a team” listing an example. Pet. 10 (citing Ex. 1003 ¶¶ 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 does not satisfy the agreed level of ordinary skill (see Pet. Reply 2–5), Patent Owner relies on Petitioner’s expert’s statement that “a higher level of education or skill might make up 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 ¶ 42). We proceed with the agreed level of ordinary skill. We note that the” slip op. at 7

  • Expert testimonyOther

    “Considering Karlsson’s statement that its emitted light beam may be produced from a “window which can shift . . . from the left to the right,” we conclude that 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 illuminates all possible light sources unless detecting an oncoming vehicle. Ex. 1036 ¶¶ 51–64.” slip op. at 13

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

    “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 regarding dependent claims, we agree that the claims do not require express construction. 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)). As to the two disputes that implicate claim scope, we discuss the relevant issues in context below. See infra at 21 (§ II.C.7), 22 (§ II.C.8).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “to the dispute here, claim 1 requires capability to “determine a light change . . . to increase light in a direction of road curvature” and control a first plurality of LEDs “to provide light based at least in part on the determined light change.” Ex. 1001, 95:66–96:8. Claim 8 requires capability to control a second plurality of light sources “to diminish glare to a driver of the other vehicle.” Id. at 97:5–14. Claim 9 recites “the control of the second plurality of LED light sources is based at least in part on third data received from a non-camera sensor of the motor vehicle.” Id. at 97:18–20. Petitioner asserts that “Gotou’s map data is not from a camera sensor” and therefore satisfies claim 9’s language. Pet. 88. Patent Owner disputes that assertion, arguing that claim 9’s control of the second plurality takes its antecedent basis from claim 8, which requires that the control be to diminish glare. PO Resp. 36. Because Gotou’s map data is used to accommodate road curvature, not to diminish glare to oncoming vehicles, Patent Owner submits that Petitioner’s proof is inadequate. Id. Petitioner responds that claim 9 recites “additional control,” not the same control from claim 8 that is limited in purpose. Pet. Reply 23–24. We agree with Patent Owner. Claim 9 recites “the control of the second plurality of LED light sources, which naturally and logically refers to claim 8’s “control . . . 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.” Thus, the claim language’s antecedent basis establishes that claim 9’s control must also be “to diminish glare to a driver of the other vehicle.” The Petition does not identify teachings in the prior art that render claim 9’s limitation obvious under the correct claim interpretation. Nor does Petitioner’s Reply explain how the asserted combination satisfies Patent Owner’s construction, which we adopt. See Pet. Reply 23–24. Therefore, Petitioner has failed to carry its burden for claims 9, 20, and 31.” slip op. at 21

  Patent outcomesUS 11,208,029 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 11,208,029
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.Some claims unpatentable
  PTAB · Jun 20, 2023 · IPR2022-00236 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1, 10–13, and 21 are unpatentable over Osanai and Tokuhiro; claims 2, 6, and 22 were not shown unpatentable because key limitations were not established.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of ordinary skill, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. Thus, we determine that a person of ordinary skill in the art would have been a person with an advanced degree in electrical or computer engineering and two years working in the field, or a bachelor’s degree in such engineering disciplines and three years working in the field.” slip op. at 9

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

    “constructions” from the related proceedings. Pet. 10 (citing Ex. 1019). Patent Owner states that it does not seek construction of any terms in the ʼ035 patent and “agrees with Petitioners that all terms of the ʼ035 Patent have their plain and ordinary meaning.” PO Resp. 13. We determine no terms need to be construed to resolve the disputes between the parties.” slip op. at 10

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

    “determine that Petitioner has sufficiently demonstrated that one of ordinary skill would have been motivated to combine Osanai and Tokuhiro in the way proposed by Petitioner. Petitioner provides sufficient support for its allegation that one of ordinary skill would have been motivated to combine Osanai and Tokuhiro. For example, Dr. Alpert credibly explains that “it would have been obvious to use Tokuhiro’s teaching in Osanai’s data register buffer to achieve the same benefit achieved by Tokuhiro’s device, i.e., reduce the number of steps needed to determine the read delay by basing that determination on timing information determined during write leveling.” Ex. 1003 ¶ 126. This is because, as Dr. Alpert explains, Tokuhiro’s leveling technique uses timing information determined during write leveling for write operations to determine the delay for subsequent read operations. Id. ¶ 122 (citing Ex. 1006, 3:16–26, 16:1–28). Thus, Tokuhiro’s technique reduces the number of steps because it uses previous measurements and calculations from prior write leveling instead of making additional measurements and calculations to determine the delay for read operations. As for reducing power consumption and circuit area, Tokuhiro itself states “[a]ccordingly, the delay times Dt1 and Dt2 from the input of the two signals to the output thereof can be efficiently set without increasing the 24:26–29. Dr. Alpert provides credible testimony that Tokuhiro’s leveling technique allows for “using a common structure for implementing write and read delays [that] would improve power consumption for Osanai.” Ex. 1003 ¶ 127 (citing Ex. 1006, 21:15–24:42, Figs. 16, 17). We determine that evidence from Tokuhiro and Dr. Alpert sufficiently demonstrates that there would be benefits from using Tokuhiro’s technique in combination with Osanai. In terms of Petitioner’s argument that combining Tokuhiro with Osanai would improve signal fidelity, decrease timing skew among components and lower the load perceived by the memory controller (Pet. 40–41), we agree with Patent Owner that the reasoning provided is somewhat conclusory. The portions of Tokuhiro cited in support of this argument do not mention signal fidelity or lowering load, although they do mention adjusting for timing skew. See Ex. 1006, 1:63–2:28. Overall, however, considering the other two reasons provided, we determine Petitioner has sufficiently demonstrated that a person of ordinary skill would have been motivated to combine Osanai and Tokuhiro.” slip op. at 41

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

    “demonstrated by a preponderance of the evidence that Osanai and Tokuhiro teach the limitations of claim 1 and that claim 1 would have been obvious over the combination of Osanai and Tokuhiro.” slip op. at 43

  Patent outcomesUS 9,824,035 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,824,035
• Assembly Guidance Systems, Inc. v. Virtek Vision International UlcSome claims unpatentable
  PTAB · May 6, 2022 · IPR2021-00062 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 2, 5, 7, and 10–13 are unpatentable as obvious; claims 3, 4, 6, 8, and 9 were not shown unpatentable because the asserted combinations lacked sufficient motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree (or equivalent education) in electrical engineering or electro-optics engineering or physics, with at least three years of experience in a relevant technical field, such as laser systems, with related experience in working with coordinate systems in three dimensional space.” Pet. 8 (citing Ex. 1007 ¶¶ 1–6). Patent Owner indicates that it “generally agrees with the definition,” but argues that the term “laser systems” is too broad in that it would include “completely unrelated technologies, such as medical lasers and cutting lasers.” PO Resp. 31 (citing Ex. 2005 ¶ 11). As such, Patent Owner proposes an alternate formulation, stating that the appropriate person of ordinary skill in the art would have: A bachelor’s degree (or equivalent education) in electrical engineering or electro-optics engineering or physics, with at least three years of experience in a relevant technical field such as laser systems for alignment and metrology, with related experience in working with coordinate systems in three-dimensional space. Id. at 32. We are not persuaded that the minor change in the formulation of the level of ordinary skill in the art affects the combinations proffered by Petition’s grounds of unpatentability, and adopt Patent Owner’s formulation for purposes of this decision, because it is more narrowly focused on alignment and metrology, which is consistent the with the ’734 patent and the prior art at issue. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “required,” and asserts that its definition of “reflecting” is “to throw back (heat, light, or sound) without absorbing it.” PO Resp. 26 (citing Ex. 2008). Patent Owner refers to the ’732 patent, which “describes its targets as being ‘reflective’ because they throw back non-laser light from the secondary light source and laser light from the laser source.” Id. (citing Ex. 1001, code (57), 2:5–13). We agree, in part, with Patent Owner’s definition and arguments. The specification of the ’732 patent describes reflection of light for making determinations, but does not include a limitation that there be no absorption. See Ex. 1001, code (57), 2:5–13. Mr. Dorsey-Palmateer testifies that reflective targets reflect both laser and non-laser light and reflecting light, but does not indicate that light could not be absorbed. Ex. 2005 ¶ 31; see also id. ¶¶ 26, 30. Mr. Dorsey-Palmateer also testifies that the ordinary meaning of reflecting light does not refer to the physics of what makes a light visible, but does not provide any explanation or support for this statement. Id. ¶ 31. An examination of the definitions in Exhibit 2008, taken from Merriam-Webster’s dictionary, does not show any definition that specifies absorption, with or without. The closest is “to throw back light or sound,” but the definition does not include any degree of absorption, per Patent Owner’s proposed construction. As such, we agree, in part, that a proper construction of “reflecting” is “to throw back.” It is self-evident that if all of the heat, light or sound is absorbed, then nothing can be thrown back. The addition of “without absorbing it” to the definition does not provide further clarity, as neither Patent Owner, nor the ’734 Patent, provides any means for determining a degree of absorption/reflectance. Patent Owner may be advocating the adoption of the alternative definition because Patent Owner seeks to distinguish certain types of reflection from “ordinary” reflection. Patent Owner asserts that “[t]he ordinary meaning of reflecting light, however, does not refer to the physics of what makes an object visible.” PO Resp. 27 (citing Ex. 2005 ¶ 31). Patent Owner’s declarant, Mr. Dorsey-Palmateer, asserts that: The term “reflective target” (also known as a “retroreflective target”) is known in the industry and refers to a target with a mirror-like, reflective surface that can reflect both laser and non-laser light. Note that the ordinary meaning of reflecting light, however, does not refer to the physics of what makes an object visible. Ex. 2005 ¶ 31. We do not agree. The terms “reflective target” and “retroreflective target” are different and cannot be presumed to have the same meaning. Further, the ’734 Patent does not disclose that the “reflective targets” to be “mirror-like,” and claim 1 merely requires that they “reflect[] light toward the photogrammetry device.” Lastly, it is exactly the amount of reflectance and at what wavelengths that determines the appearance of an object; the color of an object is determined by the absorption of wavelengths corresponding to that color and the reflectance back of the rest of the visible spectrum. See Paper 23, 56:21–59:8 (discussion from the Oral Hearing of Specification support for reflectance). Accordingly, the ’734 Patent provides no disclosure of reflecting light by allowing for no absorption, nor are there any other disclosures constraining the definition from the normal understanding of the term. As such, we agree, in part, with Patent Owner, that “reflecting” should be understood as “to throw back,” consistent with its ordinary and customary meaning, and apply the same in the analysis below.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We address these arguments by first looking to the subject language of independent claim 1: “identifying a pattern of the reflective targets on the work surface in a three dimensional coordinate system.” It is apparent that targets are on the work surface and are not placed according to the three-dimensional coordinate system; rather, it is the pattern that is identified in the three-dimensional coordinate system, according to claim 1. This suggests that this is not akin to the mere recognition of a constellation in the sky because the pattern is used later, in claim 1, to direct the laser beam to scan the targets and to calculate “a precise location of the targets.” A mere recognition of a pattern, i.e., the relative placement of targets, without more, such as providing their 3D coordinates, is not sufficient to meet the requirements of the claim. We also note that the term “pattern recognition” is a term of art (Ex. 3001) and is not used in the ’734 Patent. Similarly, “allat-once recognition” and “simultaneously identifying both the locations and relative positions” are not disclosed in the ’734 Patent. Although Patent Owner may envision such use of the method of independent claim 1, we are not persuaded that claim 1 requires the identification of the pattern to through “pattern recognition” or “all-at-once recognition.” In general, limitations are not to be read from the specification into the claims, although in this case, they do not appear to be recited in the Specification either. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). As such, we determine that “identifying a pattern of the reflective targets” should be construed as determining the locations, and thus the relative positions, of those targets. See Dec. 10–11.” slip op. at 15

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

    “We disagree with Patent Owner’s arguments. Although the analysis in the Petition could have been more robust, we continue to find that the Petition provides a motivation to combine the disclosure of Keitler and Briggs. The Petition provides the alternatives in Briggs, i.e., angular direction and 3D coordinates, such that one of ordinary skill in the art would have understood them to be alternative formulations. Pet. 33–35. “A person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. The two alternatives satisfy the criterion supplied in KSR of “a finite number of identified predictable solutions,” such that it would have been obvious to try 3D coordinate process in the system disclosed in Keitler. That is what Petitioner is positing in its Petition. See Pet. 33–35. We find the support provided in the Petition to be sufficient, even absent additional support by Petitioner’s declarant. Based on the foregoing discussion and record developed during this proceeding, we determine that Petitioner has shown by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine the teachings of Keitler and Briggs as provided in the Petition.” slip op. at 22

  Patent outcomesUS 10,052,734 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,052,734
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

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

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision

  Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16

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

    “Accordingly, we find that the record does not support construing” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81

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

    “144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043

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.