Mercedes Benz USA LLC v. Spero Yechezkal

1. Case Identification

• Patent #: 11,208,029
• Filed: June 8, 2023
• Petitioner(s): Mercedes-Benz USA, LLC
• Patent Owner(s): Yechezkal Evan Spero
• Challenged Claims: 1-33

2. Patent Overview

• Title: Headlight System for a Vehicle
• Brief Description: The ’029 patent describes an adaptive vehicle headlight system. The system uses multiple LED light sources, a processor, and map data to anticipate upcoming road curvature and adjust the light pattern—by changing intensity, color, or spatial distribution—to increase illumination in the direction of the curve.

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 10-19, 21-30, and 32-33 are obvious over Alden in view of Kobayashi.

• Prior Art Relied Upon: Alden (Application # 2003/0137849) and Kobayashi (Patent 6,049,749).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Alden and Kobayashi taught all limitations of the independent claims. Alden disclosed a motor vehicle headlight system with a plurality of headlamps, each comprising individually controllable LEDs, a processor (CPU), and memory. Alden’s system could "concentrate light to look around corners" by detecting road conditions, such as sensing light from roadside reflectors. This taught the core system, processor, and control elements of the claims. However, Alden did not explicitly use map data. Kobayashi was argued to supply this missing element, as it disclosed an adaptive headlamp system that used "road map information" from a "road profile calculating means" (which could be a GPS sensor) to predict upcoming road curvature and adjust headlamp illumination accordingly. The combination, therefore, taught a system that receives map data indicating a road curvature to determine and execute a change in lighting.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Alden and Kobayashi to create a more robust and reliable adaptive headlight system. Alden's reliance on roadside reflectors is not effective in all environments (e.g., urban areas or roads without reflectors). Kobayashi taught a known, complementary method (using map data) to achieve the same goal of anticipating road curvature. A POSITA would be motivated to integrate Kobayashi’s map-based approach into Alden’s system to ensure functionality across various driving conditions, thereby maximizing successful detection.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Alden's controller was already designed to synthesize data from multiple sources (e.g., camera sensors, steering sensors). Integrating an additional, known data input like map data from Kobayashi would be a predictable modification, not an inventive leap.

Ground 2: Claims 9, 20, and 31 are obvious over Alden (alone or in combination with Beam) in view of Kobayashi.

• Prior Art Relied Upon: Alden (Application # 2003/0137849), Kobayashi (Patent 6,049,749), and Beam (Patent 6,144,158).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring, among other things, the termination of light from certain LEDs to reduce glare for oncoming vehicles. Petitioner argued that Alden, when combined with Kobayashi, rendered these claims obvious. Alden disclosed using non-camera sensors, such as a "steering wheel sensor," to control the headlights. The combination with Kobayashi, which taught using a GPS sensor (also a non-camera sensor), further supported this limitation. Regarding light termination, Alden taught dimming LEDs to reduce glare. Petitioner asserted a POSITA would understand that dimming is a change in intensity, and termination is simply reducing intensity to zero, a capability inherent in an adjustable LED system.
  • Motivation to Combine (for §103 grounds): As an alternative, Petitioner argued for combining Alden and Kobayashi with Beam. Beam explicitly disclosed "blanking" or terminating light from specific microbeams to eliminate the "blinding of a driver in an oncoming vehicle." A POSITA would be motivated to incorporate Beam's more effective termination technique into the Alden/Kobayashi system to improve upon its fundamental goal of glare reduction. Both Alden and Beam used sensors to detect other vehicles and selectively dim portions of the headlight beam; combining them would be a predictable integration of similar, complementary technologies.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in modifying Alden to terminate light output as taught by Beam. Alden’s system already included the necessary components—a processor and control circuits (55a, 55b) that managed power to individual LEDs. Modifying the control logic to cut power to specific LEDs, rather than just reducing it, would be a straightforward implementation using the existing hardware.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) or §325(d). Regarding the Fintiv factors, Petitioner asserted that the parallel district court cases were in their infancy, with no trial date set, no substantive proceedings conducted, and an indefinite stay in place, making it speculative that the court would address the invalidity challenges. Regarding §325(d), Petitioner argued the challenge was not cumulative because the primary prior art references (Alden, Kobayashi, and Beam) were not considered by the USPTO Examiner during the original prosecution of the ’029 patent.

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 1-33 of Patent 11,208,029 as unpatentable.