Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 10
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PORSCHE CARS NORTH AMERICA, INC.,
`Petitioner
`v.
`YECHEZKAL EVAN SPERO,
`Patent Owner.
`
`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
`
`Before JON M. JURGOVAN, JASON W. MELVIN, and
`AARON W. MOORE, Administrative Patent Judges.
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c)
`
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
`
`
`INTRODUCTION
`I.
`Porsche Cars North America, Inc. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 20–25 and 59–64 of U.S. Patent
`No. 10,894,503 B2 (Ex. 1001, “the ’503 patent”). Petitioner filed also a Motion
`for Joinder seeking to join Petitioner as a party to Volkswagen Group of America,
`Inc. v. Yechezkal Evan Spero, IPR2023-00197 (“the VW IPR”), instituted June 21,
`2023. See Paper 3 (“Mot.”). Yechezkal Evan Spero (“Patent Owner”) filed a
`Preliminary Response. See Paper 8 (“Prelim. Resp.”). Patent Owner did not
`oppose joinder. Pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have
`authority to determine whether to institute review.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any 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.” 35 U.S.C. § 314(a). For the reasons set forth below,
`we conclude that Petitioner has shown a reasonable likelihood it will prevail in
`establishing the unpatentability of at least one challenged claim, and we institute
`inter partes review.
`
`A. REAL PARTIES IN INTEREST
`Petitioner identifies itself and its affiliate Dr. Ing. h.c. F. Porsche
`Aktiengesellschaft as the real parties in interest. See Pet. 129. Patent Owner
`identifies itself and Torchlight Technologies LLC, the exclusive licensee of the
`’503 patent, as the real parties in interest. See Paper 6, 1 (Patent Owner’s
`Mandatory Notices).
`
`RELATED MATTERS
`B.
`The parties identify the following related litigation: Torchlight Techs. LLC v.
`Daimler AG et al., Case No. 1:22-cv-00751 (D. Del.), and Torchlight Technologies
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`LLC v. General Motors LLC et al., No. 1:22-cv-00752 (D. Del). See Pet. 129;
`Paper 6, 1–2.1 They also identify IPR2023-00197, IPR2023-00328, IPR2023-
`00335, and IPR2023-01026. Id.
`THE ’503 PATENT
`C.
`The ’503 patent is titled “Detector Controlled Headlight System” and is
`directed to “[a]n automated headlight system for vehicles [that] replaces the high
`and low beam with a continuum of beam patterns, with further variable spatial
`distribution of intensities and color spectrum.” Ex. 1001, Abstract. The
`embodiment that corresponds to the challenged claims is depicted in Figure 15,
`reproduced in part below:
`
`
`Figure 15 shows a “multiple light-source headlamp.” Ex. 1001, 15:64.
`The figure depicts “a headlamp 270 of a land, sea or air vehicle” . . . in front
`view 272, side view of a section 273 and top view of a section 274.” Ex. 1001,
`53:17–19.
`
`
`1 Patent Owner further lists matters involving two different patents related to the
`’503 patent. See Paper 6, 2–3.
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`A solid-state light source, “such as an LED 275 with [a] specific location
`within the cluster 276 has a specific spatial light distribution, color wavelength and
`aiming relative to the vehicle, such as straight ahead, and or downwards and or off
`towards the right or left.” Ex. 1001, 53:19–23. Different LED 277, which is “at a
`second location within the same cluster[,] may have a similar or dissimilar aiming,
`wavelength and spatial light distribution.” Id. at 53:19–32.
`The patent explains that, because drivers may find yellow colored headlamps
`less offending than blueish colors, a controller that “receives traffic data from
`sensors” can “shift wavelength specific radiant power contributions of SLSs such
`that the resultant on the CIE chromacity diagram would be yellowish” but that if
`“there is no car immediately ahead or oncoming traffic,” then the controller can
`shift the color to “bluish white, allowing the driver to better ascertain road
`conditions further up ahead.” Ex. 1001, 53:53–62.
`Claims 20 and 59 are independent and are directed to vehicle headlight
`systems. Claim 20 is reproduced in full below:
`20. A vehicle headlight system, comprising:
`one or more headlamps affixed to a vehicle, each headlamp including at least
`three directional light sources aimed at different angles relative to the
`vehicle, the light sources configured to have one or more controllable
`light characteristics, wherein a first light source of the more than one
`light sources at a first angle is less visually disturbing to traffic than a
`second light source of the more than one light sources aimed at a second
`angle, different from the first angle;
`control circuitry configured to adjust the at least one light characteristic of at
`least one of the directional light sources;
`one or more sensors configured to sense information defined as pertinent to
`determining illumination output from the one or more headlamps and
`communicating the sensed information to a processor as sensor data;
`the processor, in communication with at least the sensors and the control
`circuitry, configured to:
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`process the sensor data to determine, within a field-of-view, at least a
`first subsection including a detected vehicle and at least a second
`subsection not including the detected vehicle,
`determine optimal use of the differently aimed directional light sources to
`maximize vehicle operator visibility in at least the second subsection,
`while minimizing a disturbing effect, resulting from the illumination
`output, on the vision of other traffic in at least the first subsection, and
`direct the control circuitry to adjust the directional light sources to
`achieve the determined optimal use.
`PRIOR ART AND ASSERTED GROUNDS
`D.
`Petitioner asserts the following unpatentability grounds:
`
`Claims
`Challenged
`20, 24, 25
`
`Basis
`
`References
`
`§ 103 Beam,2 Thominet3
`
`59, 63, 64
`
`§ 103 Beam, Thominet, Stam4
`
`21–23
`
`§ 103 Beam, Thominet, Kobayashi5
`
`60–62
`20, 24, 25, 59,
`63, 64
`21–23, 60–62
`
`§ 103 Beam, Thominet, Stam, Kobayashi
`
`§ 103 Karlsson,6 Harbers7
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`§ 103 Karlsson, Harbers, Gotou8
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`
`2 U.S. Patent No. 6,144,158 (Exhibit 1005).
`3 U.S. Patent App. Pub. No. 2001/0019486 A1 (Exhibit 1006).
`4 PCT Patent App. Pub. No. WO 01/70538 (Exhibit 1007).
`5 U.S. Patent No. 6,049,749 (Exhibit 1008).
`6 PCT Patent App. Pub. No. WO 98,54030 (Exhibit 1010).
`7 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1011).
`8 U.S. Patent No. 5,588,733 (Exhibit 1012).
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`Petitioner also relies on Declaration of Scott Andrews, filed as Exhibit 1003.
`Patent Owner relies on Declaration of Matthew A. Turk, filed as Exhibit 2001.
`II. ANALYSIS
`To join a petitioner to an instituted proceeding, the Board first determines
`whether the Petition “warrants” institution under 35 U.S.C. § 314. See 35 U.S.C.
`§ 315(c); Facebook, Inc. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed.
`Cir. 2020).
`The Board next determines whether to exercise “discretion to decide
`whether to ‘join as a party’ the joinder applicant,” who is the Petitioner in this
`proceeding. Windy City, 973 F.3d at 1332. As moving party, Petitioner bears the
`burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A
`motion for joinder should (1) set forth the reasons joinder is appropriate; (2)
`identify any new grounds of unpatentability asserted in the petition; and (3) explain
`what impact (if any) joinder would have on the trial schedule for the existing
`review. See Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013). In addition, a motion for joinder must be filed “no later
`than one month after the institution date of any inter partes review for which
`joinder is requested.” 37 C.F.R. § 42.122(b).
`INSTITUTION OF INTER PARTES REVIEW
`A.
`Petitioner represents that the “Petition is essentially a copy of the petition
`filed in” the VW IPR and that the evidence and arguments “are substantively
`identical to the evidence and arguments supporting the VW Petition.” Mot. 1, 4.
`Our independent review of the Petition and the VW IPR petition confirms
`Petitioner’s representations, and that the petitions in the two proceedings are
`substantially the same. Further, although Petitioner relies on a different expert
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`U.S. Patent 10,894,503 B2
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`declarant, Petitioner submits that the two declarations are “substantively identical.”
`Id. at 3.
`Having already considered the merits of those challenges and the evidence in
`the VW IPR, and having determined that the threshold for institution of inter
`partes review has been met, we determine that this Petition also establishes a
`reasonable likelihood that Petitioner will prevail with respect to at least one claim.
`Additionally, we determine that Patent Owner’s arguments for discretionary denial
`(see Prelim. Resp. 65–74) are not persuasive.9 Therefore, for the same reasons
`stated in our Decision to Institute in the VW IPR, we institute inter partes review
`in this proceeding on the grounds presented in the Petition.
`B. MOTION FOR JOINDER
`Petitioner timely filed its Motion for Joinder on July 20, 2023, which was no
`later than one month after the institution of the VW IPR on June 21, 2023. See
`37 C.F.R. § 42.122(b).
`We determine that Petitioner has met its burden of showing that joinder is
`appropriate because, as set forth above, the Petition is substantially identical to the
`petition in the VW IPR, contains the same grounds based on the same evidence,
`and relies on a substantively identical declaration. Petitioner also represents that
`joinder will not impact the VW IPR schedule. See Mot. 4.
`Additionally, Petitioner represents that it is willing to accept a limited,
`“understudy role” to Volkswagen (the original petitioner in the VW IPR), taking
`over only in the event VW no longer participates. See id. at 5; id. at 5 n.3.
`
`
`9 Patent Owner notes that “the non-institution arguments in [the] Preliminary
`Response essentially repeat the non-institution arguments that were raised in the
`already-instituted target case.” Prelim. Resp. 1.
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`Specifically, Petitioner represents that in its understudy role, it agrees that the
`following conditions will apply:
`(a) Petitioner will not make any substantive filings and shall be bound
`by the filings of VW, unless a filing concerns termination and
`settlement, or issues solely involving Petitioner;
`(b) Petitioner will not present any argument or make any presentation
`at the oral hearing unless an issue solely involves Petitioner, or when
`addressing motions that do not affect VW;
`(c) Petitioner will not seek to cross-examine or defend the cross-
`examination of any witness, unless the topic of cross-examination
`concerns issues solely involving Petitioner, within the time permitted
`by VW alone and with VW’s agreement;
`(d) Petitioner will not seek discovery from Patent Owner, unless
`issues arise that are unique to, and only applicable to, Petitioner; and
`(e) Petitioner will not rely on expert testimony beyond that submitted
`by VW unless and until VW is terminated as party to the proceeding
`prior to any necessary depositions.
`See id. at 5–6. Patent Owner has not filed an opposition to Petitioner’s Motion.
`Thus, Petitioner’s Motion stands unopposed.
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in the VW IPR. We limit
`Petitioner’s participation in the VW IPR proceeding as follows: (1) VW alone is
`responsible for all petitioner filings until such time that it is no longer an entity in
`the proceeding; and (2) Petitioner is bound by all filings by VW in the VW IPR
`proceeding, except for (a) filings regarding termination or settlement, and (b)
`filings where Petitioner receives permission to file an independent paper. As long
`as VW remains as a non-terminated petitioner in the proceeding, Petitioner must
`obtain prior Board authorization to file any paper or take any action on its own in
`the proceeding. This arrangement promotes the just and efficient administration of
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`the ongoing trial in the VW IPR and protects the interests of VW as original
`petitioner in IPR2023-00197 and of Patent Owner.
`III. CONCLUSION
`For the reasons discussed above, we institute inter partes review of the
`challenged claims of the ’503 patent based on the asserted grounds. We grant
`Petitioner’s Motion for Joinder and join Petitioner to IPR2023-00197, with the
`restrictions set forth above.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of
`claims 20–25 and 59–64 of the ’503 patent is instituted on the grounds set forth in
`the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`§ 42.122, Petitioner’s Motion for Joinder is granted, and Petitioner is joined as a
`petitioner to IPR2023-00197, subject to the above-described restrictions on
`Petitioner’s participation;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2023-00197 are unchanged
`and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2023-00197, including any schedule changes agreed to by the parties in that
`proceeding, shall govern the trial schedule in IPR2023-01231;
`FURTHER ORDERED that the case caption in IPR2023-00197 for all
`further submissions shall be modified to add Porsche Cars North America, Inc., as
`a named Petitioner, and to indicate by footnote the joinder of Petitioner to that
`proceeding, as indicated in the attached sample case caption; and
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`FURTHER ORDERED that a copy of this Decision be entered into the
`record of IPR2023-00197.
`
`For PETITIONER:
`Edgar Haug
`Robert Colletti
`ehaug@haugpartners.com
`rcolletti@haugpartners.com
`
`For PATENT OWNER:
`Sangeeta Shah
`Andrew Turner
`David Bir
`sshah@brookskushman.com
`aturner@brookskushman.com
`dbir@brookskushman.com
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`Case IPR2023-01231
`U.S. Patent 10,894,503 B2
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`[Sample Case Caption]
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC. and
`PORSCHE CARS NORTH AMERICA, INC.,
`Petitioner
`v.
`YECHEZKAL EVAN SPERO,
`Patent Owner.
`
`IPR2023-00197*
`10,894,503 B2
`
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`* Porsche Cars North America, Inc., which filed a petition in IPR2023-01231, has
`been joined as a party to this proceeding.
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