DCT
0:24-cv-04149
Mobileye Vision Tech Ltd v. Facet Technology Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mobileye Vision Technologies Ltd. (Israel) and Mobileye, Inc. (Delaware)
- Defendant: Facet Technology Corp. (Minnesota)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; McCurdy Laud, LLC
- Case Identification: 0:24-cv-04149, D. Minn., 11/07/2024
- Venue Allegations: Plaintiffs allege venue is proper in the District of Minnesota because Defendant Facet Technology Corp. is incorporated in and maintains its principal place of business in Minnesota.
- Core Dispute: Plaintiffs seek a declaratory judgment that their EyeQ3 and EyeQ4 advanced driver-assistance systems (ADAS) do not infringe, and that the claims are invalid for, two of the Defendant’s expired patents concerning the automated assessment of reflective road markers.
- Technical Context: The technology relates to vehicle-mounted systems that use light sources and sensors to automatically assess the reflective properties of road signs and markers, a field relevant to infrastructure management and autonomous vehicle systems.
- Key Procedural History: This declaratory judgment action follows two lawsuits filed by Defendant Facet in the Eastern District of Texas against General Motors and a Mobileye affiliate ("Global"), alleging infringement of the same patents by products incorporating Plaintiffs' EyeQ technology. The Texas case against Global faces a pending venue challenge. Subsequently, Global filed petitions for inter partes review (IPR) seeking to invalidate both patents-in-suit at the U.S. Patent and Trademark Office. The complaint notes that both patents-in-suit expired no later than August 10, 2021, limiting any potential dispute to past damages.
Case Timeline
| Date | Event |
|---|---|
| 2000-08-12 | Earliest Priority Date for ’255 and ’328 Patents |
| 2016-05-10 | ’255 Patent Issue Date |
| 2017-06-06 | ’328 Patent Issue Date |
| 2021-04-29 | Exclusive License Agreement Executed to Facet |
| 2021-08-10 | Alleged Expiration Date of ’255 and ’328 Patents |
| 2024-01-26 | Facet Files Lawsuits Against General Motors and Mobileye Global |
| 2024-04-04 | Mobileye Global Files Motion to Dismiss for Improper Venue in Texas |
| 2024-08-01 | Mobileye Global Files IPR Petitions Against ’255 and ’328 Patents |
| 2024-08-26 | Facet Serves Infringement Contentions in Texas 'Global' Case |
| 2024-09-18 | Texas Court Grants Facet Venue-Related Discovery |
| 2024-11-07 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,335,255 - System and assessment of reflective objects along a roadway
Issued May 10, 2016
The Invention Explained
- Problem Addressed: The patent describes the process of manually inspecting roadway signs and markers for deterioration as time-consuming, expensive, and difficult to perform systematically, especially for the large number of signs in any given jurisdiction (’255 Patent, col. 2:8-23).
- The Patented Solution: The invention proposes an automated, vehicle-mounted system that solves this problem by repeatedly illuminating an area along a roadway with a light source and using a sensor to measure the intensity of the reflected light. A computer processing system then analyzes these intensity values to determine a "retroreflectivity value" and an "assessment for that reflective surface," allowing for automated, high-throughput evaluation of road infrastructure (’255 Patent, Abstract; col. 4:45-52).
- Technical Importance: By automating the assessment of road sign reflectivity, the technology sought to enable highway maintenance departments to more efficiently create inventories and evaluate the condition of traffic control devices, thereby improving safety and resource allocation (’255 Patent, col. 3:34-44).
Key Claims at a Glance
- The complaint identifies independent claims 12 (method) and 17 (system) as being asserted against Plaintiffs' products (Compl. ¶31).
- Independent Claim 12 (Method):
- Activating a light source from a traversing vehicle to illuminate an area with a reflective road marker.
- Determining a plurality of light intensity values with a sensor.
- Using a computer to identify a portion of the intensity values associated with the road marker.
- Analyzing that portion of intensity values to determine an "assessment for the reflective characteristic" of the marker.
- Independent Claim 17 (System):
- A light source traversed along a roadway to illuminate a road marker.
- A "means for determining a plurality of light intensity values" from the illuminated area.
- A computer processing system to identify and analyze a portion of the light intensity values to determine an "assessment for the reflective characteristic" of the marker.
- The complaint notes that dependent claims 13-15 are also implicated (Compl. ¶31).
U.S. Patent No. 9,671,328 - System and assessment of reflective objects along a roadway
Issued June 6, 2017
The Invention Explained
- Problem Addressed: Like its family member, the '255 Patent, this patent addresses the inefficiency and limitations of manual or semi-automated systems for determining the retroreflectivity of road signs (’328 Patent, col. 2:15-24).
- The Patented Solution: The invention claims an automated system on a vehicle that uses an image capture system alongside an "active light sensor" (comprising a light source and a light sensor). A computer processing system connects to these components to detect objects, determine if they are reflective, assess if the reflective surface is a road marker, and determine the marker's location (’328 Patent, Abstract; col. 4:51-64).
- Technical Importance: The technology provides a method for not only assessing reflectivity but also for detecting and locating road markers within a broader visual scene, contributing to the creation of a comprehensive asset management database (’328 Patent, col. 1:49-59).
Key Claims at a Glance
- The complaint identifies independent claims 1 (system), 9 (system), and 17 (method) as being asserted against Plaintiffs' products (Compl. ¶43).
- Independent Claim 1 (System):
- An image capture system.
- An active light sensor (light source and sensor).
- A computer processing system configured to detect objects and, for each object, determine if it has a reflective surface, if that surface is a road marker based on an "assessment of the reflective surface," and the marker's location.
- Independent Claim 9 (System):
- An active light sensor traversed along a roadway.
- A computer processing system to determine if an object has a light intensity value associated with a reflective road marker and analyze it to determine an "assessment of a discrete location of the road marker."
- Independent Claim 17 (Method):
- Activating a light source from a traversing vehicle to illuminate a road marker.
- Determining a plurality of light intensity values with a sensor.
- Using a computer to identify and analyze a portion of the light intensity values to determine an "assessment of a discrete location of the road marker."
- The complaint notes that various dependent claims are also implicated (Compl. ¶43).
III. The Accused Instrumentality
Product Identification
- Plaintiffs’ EyeQ3 and EyeQ4 Systems-on-Chip (SoCs) (Compl. ¶18).
Functionality and Market Context
- The complaint describes the accused products as SoCs that support "computationally intense vision tasks, including for use in the driver-assist and autonomous-driving markets" (Compl. ¶18). The specific functionalities implicated by Defendant's infringement allegations in other lawsuits are "lane keep assist and lane departure warning technology" (Compl. ¶17, ¶24). These SoCs are integrated into automotive vehicles from various manufacturers, including General Motors, positioning them as key components in the ADAS market (Compl. ¶17, ¶24).
IV. Analysis of Infringement Allegations
The complaint, seeking a declaratory judgment of non-infringement, does not contain affirmative infringement allegations. Instead, it summarily denies that the accused EyeQ3 and EyeQ4 products meet specific limitations of the asserted claims (Compl. ¶¶ 33, 45). The following tables summarize Plaintiffs' core non-infringement positions for one representative claim from each patent.
No probative visual evidence provided in complaint.
’255 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| activating a light source...to illuminate an area that includes at least one reflective surface on a road marker... | The complaint does not specifically deny this element but seeks a general judgment of non-infringement. | ¶33 | col. 20:1-5 |
| determining a plurality of light intensity values with at least one intensity sensor... | The complaint asserts that the EyeQ3 and EyeQ4 products do not perform this function. | ¶33 | col. 20:6-10 |
| using a computer processing system configured to: identify a portion of at least one light intensity value...associated with...the road marker... | The complaint asserts that the EyeQ3 and EyeQ4 products do not perform this function. | ¶33 | col. 20:11-15 |
| analyze the portion of the at least one light intensity value...to determine an assessment for the reflective characteristic of the road marker. | The complaint asserts that the EyeQ3 and EyeQ4 products do not perform this function. | ¶33 | col. 20:15-18 |
’328 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an image capture system that captures images within a field of view along the roadway; | The complaint does not specifically deny this element but seeks a general judgment of non-infringement. | ¶45 | col. 17:36-38 |
| an active light sensor including: a light sensor that measures light intensity values... | The complaint asserts that the EyeQ3 and EyeQ4 products do not perform this function. | ¶45 | col. 17:42-44 |
| a computer processing system...configured to...determine whether the object of interest includes a reflective surface based on the light intensity values; | The complaint asserts that the EyeQ3 and EyeQ4 products do not perform this function. | ¶45 | col. 17:50-52 |
| determine whether the reflective surface is a road marker based on an assessment of the reflective surface; and | The complaint does not specifically deny this element but seeks a general judgment of non-infringement. | ¶45 | col. 17:53-54 |
Identified Points of Contention
- Scope Questions: The patents focus on "assessing" reflective surfaces for purposes of infrastructure quality control and inventory management, including determining sheeting type and degradation (’255 Patent, col. 2:5-12). The accused products perform real-time lane departure warnings for driver assistance (Compl. ¶17). This raises a central question of claim scope: does a system that detects the presence of a lane marker for vehicle guidance perform an "assessment for the reflective characteristic" as contemplated by the patents?
- Technical Questions: Plaintiffs' denials focus on the steps of determining, identifying, and analyzing light intensity values to make an "assessment" (Compl. ¶¶ 33, 45). The key technical question will be what level and type of analysis the accused EyeQ SoCs perform on the visual data they receive. The court may need to determine if merely processing pixel data to identify the location of a lane marking is the same as the patents' more detailed "assessment" of a surface's inherent reflective qualities.
V. Key Claim Terms for Construction
The Term: "assessment for the reflective characteristic" (’255 Patent, cl. 12) and "assessment of the reflective surface" (’328 Patent, cl. 1).
- Context and Importance: This term is central to the dispute. Its definition will likely determine whether the functionality of an ADAS system falls within the scope of patents directed at infrastructure evaluation. Practitioners may focus on this term because it appears to be the primary point of differentiation between the claimed invention's purpose (quality analysis) and the accused product's function (real-time guidance).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstracts use general language, such as determining an "assessment for that reflective surface," which could be argued to encompass any evaluation based on reflected light (’255 Patent, Abstract).
- Evidence for a Narrower Interpretation: The specification provides detailed examples of the "assessment," such as classifying the specific type of sheeting material (e.g., Type I, Type III, Type VII) and comparing measured retroreflectivity values against established minimums for different colors to resolve discrepancies (’255 Patent, col. 5:3-26; FIG. 14A-1). This context suggests a narrower definition tied to quantitative or qualitative evaluation of the material itself, not just its detection.
The Term: "means for determining a plurality of light intensity values" (’255 Patent, cl. 17).
- Context and Importance: This is a means-plus-function limitation governed by 35 U.S.C. § 112(f). Its scope is not limitless but is confined to the specific structures disclosed in the specification for performing the function, and their equivalents. Plaintiffs’ specific denial of this limitation (Compl. ¶33) signals that a structural comparison between the accused products' sensors and the patented system will be a key issue.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Equivalents): A party asserting infringement may argue that any modern digital camera and image sensor used in an ADAS system is a structural equivalent to the disclosed embodiment.
- Evidence for a Narrower Interpretation (Disclosed Structure): The corresponding structure disclosed in the specification is the "light intensity measurement system 230," which includes a "high output light source 270," a "B/W intensity sensor 280," and a "source/sensor sync control 290" (’255 Patent, FIG. 3; col. 8:60-67). The analysis will focus on whether the components of the EyeQ SoCs are structurally equivalent to this specific combination of elements.
VI. Other Allegations
- Indirect Infringement: Plaintiffs seek a declaratory judgment that they do not infringe "directly or indirectly" (Compl., Prayer for Relief A, C). The complaint does not detail any specific allegations of indirect infringement made by Defendant Facet, but the context of Plaintiffs supplying SoCs to automotive manufacturers like GM implies that inducement would be a likely theory in the underlying dispute (Compl. ¶¶ 17-18).
- Willful Infringement: The complaint does not reference any allegations of willful infringement. However, Plaintiffs do ask the court for a declaration that the action is an "exceptional case" under 35 U.S.C. § 285, which could entitle them to attorneys' fees, suggesting they may argue Defendant's litigation conduct is baseless or improper (Compl., Prayer for Relief F).
VII. Analyst’s Conclusion: Key Questions for the Case
- A question of forum and strategy: Is this declaratory judgment action primarily a defensive maneuver to secure a more favorable forum (the patentee's home district of Minnesota) and seize control of the litigation narrative, in direct response to Defendant’s lawsuits in the Eastern District of Texas and the pending venue challenge in that court?
- A core issue will be one of definitional scope: Can the term "assessment for the reflective characteristic," which the patents frame in the context of infrastructure quality control and materials classification, be construed broadly enough to read on the real-time lane marker detection performed by an ADAS for vehicle guidance?
- A dispositive question of validity: Will the parallel inter partes review proceedings at the USPTO, which were filed by a Mobileye affiliate three months prior to this suit, result in the invalidation of the asserted patent claims, potentially rendering this district court case over expired patents (where only past damages are at issue) largely moot?