Mobileye Global Inc v. Facet Technology Corp

1. Case Identification

• Case #: IPR2024-01110
• Patent #: 9,335,255
• Filed: August 1, 2024
• Petitioner(s): Mobileye Global, Inc.
• Patent Owner(s): Mandli Communications, Inc.
• Challenged Claims: 12-15 and 17-23

2. Patent Overview

• Title: System and Method for Assessing Reflective Surfaces
• Brief Description: The ’255 patent discloses an automated, vehicle-mounted system for assessing the retroreflectivity of surfaces along a roadway, such as road markers and signs. The system uses a light source to illuminate the markers, a light intensity sensor to capture reflected light, and a computer processing system to analyze the intensity values and determine a reflectivity assessment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gallagher - Claims 12-14, 17, 21, and 23 are obvious over Gallagher

• Prior Art Relied Upon: Gallagher (Application # 2002/0063638).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gallagher, which is directed to a vehicle-mounted "reflectivity measuring apparatus," discloses all limitations of the independent claims. Gallagher’s system activates a light source (a standard vehicle headlight) as it traverses a roadway to illuminate road markers, uses an array of light sensors to detect the reflected light, and employs a computer to process the sensor data. The computer identifies markers by distinguishing their reflectance levels from the background and analyzes these levels to assess whether they meet minimum standards, thus teaching the core method and system of claims 12 and 17.
  • Key Aspects: Petitioner asserted that Gallagher alone provides a complete blueprint for the claimed invention, teaching an automated, real-time assessment of road marker reflectivity from a moving vehicle. Dependent claims were argued to be obvious as they recite inherent or obvious variations, such as using a single light source (claim 14), a vehicle headlight (claim 21), or a light sensor (claim 23), all of which were explicitly taught by Gallagher.

Ground 2: Obviousness over Gallagher and Lumia - Claims 13 and 15 are obvious over Gallagher in view of Lumia

• Prior Art Relied Upon: Gallagher (Application # 2002/0063638) and Lumia (a 1991 SPIE publication).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Gallagher’s standard headlight is suitable for nighttime use but lacks the intensity for reliable daytime measurements. Lumia addresses this exact problem by teaching a mobile retroreflectance measurement system that uses high-intensity xenon flashes to overcome ambient daylight. For claim 13, combining Gallagher's system with Lumia's teaching of multiple synchronized flashes would optimize light intensity for daytime operation. For claim 15, Lumia teaches determining a luminance value from sensor intensity values using a calibration profile to calculate retroreflectivity, a feature absent from Gallagher’s simpler reflectance-level assessment.
  • Motivation to Combine: A POSITA would combine these references to enhance Gallagher's system for daytime use, which offers greater operational flexibility and allows for faster replacement of faulty markers to improve road safety. A POSITA would also be motivated to incorporate Lumia’s more sophisticated luminance-based calculation to meet the specific retroreflectivity standards required by various road authorities, which Gallagher acknowledged as a goal.
  • Expectation of Success: Success would be expected because both references are in the same field of vehicle-based reflectivity measurement. Lumia provides a known solution (xenon flashes and luminance calculation) to a known problem (daytime operation and standards compliance) in systems like Gallagher's. The integration would involve applying well-understood principles of optics and sensor calibration.

Ground 3: Obviousness over Gallagher and Schofield - Claims 18-19 are obvious over Gallagher in view of Schofield

• Prior Art Relied Upon: Gallagher (Application # 2002/0063638) and Schofield (Patent 5,796,094).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on Gallagher by adding a color identification subsystem as required by claims 18 and 19. Petitioner argued that Schofield teaches a system that identifies objects like lane markers and traffic signs based on their "spectral signature" or color. Schofield discloses using color to distinguish between objects (e.g., red octagons as stop signs) and could be integrated into Gallagher's system.
  • Motivation to Combine: A POSITA would be motivated to add Schofield’s color identification capability to Gallagher's system to improve assessment accuracy. Different colored road markers (e.g., white, yellow, red) were known to have different minimum retroreflectivity standards. By associating a color with a measured reflectance level, the system could perform a more precise assessment against the correct standard for that specific marker type. Gallagher itself suggests using sensors for colored markers, providing a clear reason to look to a reference like Schofield.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Schofield teaches using both reflectivity and spectral characteristics together to identify objects. Combining Schofield’s known color analysis techniques with Gallagher’s reflectivity measurement apparatus would be a predictable integration to create a more robust assessment system.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Gallagher with Frank (Patent 5,202,742) to teach a laser scanning device light source (claim 20) and with Currie (Patent 5,162,643) to teach using an incandescent lamp as the vehicle headlight (claim 22).

4. Key Claim Construction Positions

• Petitioner argued that the term “means for determining a plurality of light intensity values directed to cover a field of view which includes at least a portion of the area illuminated by the light source” (claim 17) is a means-plus-function term under pre-AIA §112, ¶ 6.
  • Function: "determining a plurality of light intensity values directed to cover a field of view which includes at least a portion of the area illuminated by the light source."
  • Structure: "a light sensor, or equivalents." Petitioner supported this construction by citing dependent claim 23, which recites that the "means...comprises a light sensor," and multiple disclosures in the ’255 patent specification linking the "light intensity sensor 280" to this function.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
  • Under §314(a) and Fintiv: Petitioner asserted that no trial date has been set in the parallel district court litigation, and therefore no Fintiv factors weigh in favor of denial.
  • Under §325(d): Petitioner contended that denial would be improper because the core prior art and arguments presented in the petition were not previously considered by the Examiner. While Gallagher and Lumia were cited on the face of the ’255 patent, they were never applied in any rejection. The primary references of Schofield, Frank, and Currie were never considered at all during prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 12-15 and 17-23 of the ’255 patent as unpatentable.