Mobileye Global Inc v. Facet Technology Corp

1. Case Identification

• Case #: IPR2024-01111
• Patent #: 9,671,328
• Filed: August 1, 2024
• Petitioner(s): Mobileye Global, Inc.
• Patent Owner(s): Mandli Communications, Inc.
• Challenged Claims: 1-22

2. Patent Overview

• Title: Automated System for Assessing Roadway Reflective Surfaces
• Brief Description: The ’328 patent discloses a vehicle-mounted system for determining the retroreflectivity of reflective surfaces, such as road signs and pavement markers. The system uses a high-output light source, a light intensity sensor, and a computer processing system to capture data and imagery to assess the reflectivity of objects of interest along a roadway.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gallagher and Schofield - Claims 1-4, 8-13, and 17-18 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: Petitioner asserted that Gallagher taught a vehicle-mounted "reflectivity measuring apparatus" that used a light source, sensors, and a computer to detect road markers and measure their reflectivity in real time. To meet limitations related to image capture and more advanced object detection, Petitioner pointed to Schofield, which disclosed a vehicle-mounted imaging system that identified objects like traffic signs and lane markers using their shape, reflectivity, and spectral characteristics (color) through pattern recognition.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Schofield's imaging and pattern recognition capabilities with Gallagher's reflectivity measurement system to improve overall object identification. Petitioner argued the systems were complementary, as Gallagher's system measured reflectivity while Schofield's identified objects by visual characteristics, and combining them would yield a more robust and accurate system. Incorporating a video camera (as in Schofield) into a mobile retroreflectivity system was a known technique to provide a driver's view and numerical data simultaneously.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references described vehicle-mounted systems for identifying road markings in real time and disclosed using similar components, such as photodiode-based sensors. The combination was presented as a straightforward application of known components to improve a known device.

Ground 2: Obviousness over Gallagher, Schofield, and Frank - Claims 15-16, 19, and 21-22 are obvious over Gallagher and Schofield in view of Frank.

• Prior Art Relied Upon: Gallagher (Application # 2002/0063638), Schofield (Patent 5,796,094), and Frank (Patent 5,202,742).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Gallagher and Schofield by adding Frank to address claim limitations requiring the determination of "exemplary angular displacements" and "lateral distance." Petitioner argued Frank taught a vehicle-mounted laser radar system capable of accurately measuring the distance and angle to roadway retroreflectors. Frank’s system calculated the distance (D) and angle (θ) for each scanned retroreflector.
  • Motivation to Combine: A POSITA would be motivated to incorporate Frank’s distance and angle measurement capabilities into the Gallagher/Schofield system to improve the accuracy of reflectivity assessments. Gallagher only provided a rough estimate for the observation angle, but it was well known that reflectivity values vary significantly with observation angle and distance. Frank provided a precise method for determining these parameters, which would allow the combined system to make more accurate reflectivity measurements that conform to road authority standards.
  • Expectation of Success: The combination was argued to be predictable. Frank’s system, like Gallagher’s, used a photodiode array and was vehicle-mounted, making it compatible. Integrating Frank’s teachings would involve applying known mathematics (e.g., trigonometry) to the measured distance and angle to calculate lateral distance, a predictable result.

Ground 3: Obviousness over Gallagher, Schofield, Leonard, and Popovich - Claims 5-7 are obvious over Gallagher and Schofield in view of Leonard and Popovich.

• Prior Art Relied Upon: Gallagher, Schofield, Leonard (Patent 5,313,262), and Popovich (WO 96/17258).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed limitations in claims 5-7 related to determining a marker's location using light intensity values, a light vector, and a "light source angle characterization." Petitioner asserted that Leonard taught a system with an expanded field of view using a light source with sub-fields of varying intensity to detect multiple objects simultaneously. Popovich was cited for its teaching of an optical triangulation system that used a non-uniform light pattern and an intensity look-up table to determine a retroreflector's position by analyzing the peak intensity of reflected light on a sensor array.
  • Motivation to Combine: A POSITA would combine these references to overcome the limitations of Gallagher's narrow, fixed-angle beam. Leonard's expanded field of view would allow Gallagher's system to detect multiple markers at varying distances in a single pass. Popovich’s triangulation and look-up table methods would then provide an accurate way to determine the precise location of each marker detected within that expanded field of view.
  • Expectation of Success: Petitioner argued success would be expected because the combination involved modifying Gallagher's system with known techniques for expanding a field of view and performing triangulation. The components disclosed (e.g., photodetectors, GPS interfaces) were compatible, and the integration would rely on conventional optical and mathematical principles.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 14 and 20 based on the combination of Gallagher, Schofield, Frank, and ASTM (a 1996 standard for pavement markers), which provided specific tables relating entrance and observation angles to required reflectivity values.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and Fintiv, stating that no trial date had been set in any co-pending litigation, weighing against denial.
• Petitioner also argued against denial under §325(d), asserting that the primary prior art references relied upon (Schofield, Frank, ASTM, Leonard, and Popovich) were never considered during the original prosecution. While Gallagher was cited on the face of the ’328 patent, it was never applied by the Examiner in any rejection.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22 of the ’328 patent as unpatentable.