ZF Active Safety Electronics US LLC v. Facet Technology Corp

1. Case Identification

• Case #: IPR2025-00748
• Patent #: 9,335,255
• Filed: April 4, 2025
• Petitioner(s): ZF Active Safety and Electronics US LLC
• Patent Owner(s): Facet Technology Corp.
• Challenged Claims: 12-15, 17-23

2. Patent Overview

• Title: System and Assessment of Reflective Objects Along a Roadway
• Brief Description: The ’255 patent discloses a vehicle-mounted system for automatically assessing the retroreflectivity of reflective surfaces, such as road markers and signs, disposed along a roadway using a light source, intensity sensors, and a computer processing system.

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, standing alone, renders the independent claims obvious. Gallagher taught a vehicle-mounted "reflectivity measuring apparatus" that assesses reflective road markers. This system included all core elements of the challenged claims: a light source (a vehicle headlight) traversed along a roadway to illuminate markers, at least one light sensor (a sensor module with an array of sensors) to detect reflected light and determine a plurality of light intensity values, and a computer processing system. The computer was configured to identify road markers based on peak reflectance levels and analyze those values to determine if the reflectivity met a minimum acceptable level, thereby performing the claimed assessment.

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

• Prior Art Relied Upon: Gallagher (’638 application) and Lumia (a 1991 SPIE publication on mobile retroreflectance measurement).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring "synchronizing activation of a plurality of light sources" (claim 13) and "determining a luminance value" (claim 15). Petitioner asserted that Gallagher's standard headlight was suitable for night use but not for daytime measurements. Lumia disclosed a mobile system using a high-intensity xenon flash to overcome ambient daylight. To enable daytime operation, a POSITA would have replaced or supplemented Gallagher's headlight with a plurality of Lumia's xenon flashes. For claim 15, Lumia explicitly taught that when its system is properly calibrated, measured intensity values from its video camera sensor correspond to luminance values, which are then used to calculate retroreflectivity.
  • Motivation to Combine: A POSITA would combine Lumia's high-intensity flash technology with Gallagher's system to overcome the disadvantage of being restricted to night-time testing, thereby improving safety and scheduling flexibility. For claim 15, a POSITA would have been motivated to incorporate Lumia's method of determining luminance to allow Gallagher's system to assess road markers against various international standards, which are often specified in terms of retroreflectivity derived from luminance.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because both references related to vehicle-based systems for measuring retroreflectivity. Combining them would involve applying well-known techniques for timing light source activation and calibrating sensors to relate intensity to luminance.

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

• Prior Art Relied Upon: Gallagher (’638 application) and Schofield (Patent 5,796,094).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims adding a "color identification subsystem" (claim 18) and specifying colors like yellow, red, and white (claim 19). While Gallagher disclosed a base system, Schofield taught a vehicle-mounted system that identifies objects like traffic signs and lane markers based on their "spectral signature," or color.
  • Motivation to Combine: A POSITA would have been motivated to integrate Schofield's color identification into Gallagher's apparatus because Gallagher itself suggested using sensors with different spectral responses for "sensing [colored] markers." Since different colored markers (e.g., white lane lines vs. yellow center lines) have different regulatory reflectance standards, adding color identification would allow Gallagher’s system to perform a more accurate and context-aware assessment, which was a known goal in the art.
  • Expectation of Success: Success was expected because Schofield taught that reflectivity and spectral characteristics (color) could be used together to identify objects. A POSITA could apply conventional techniques to use light sensors with color filters, as suggested by both references, to predictably confirm the color of a detected marker and apply the correct assessment standard.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 20 and 22 based on combining Gallagher with Frank (for a laser scanning device) and Currie (for an incandescent lamp).

4. Key Claim Construction Positions

• Petitioner proposed a construction for the means-plus-function term "means for determining a plurality of light intensity values..." recited in independent claim 17.
  • 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"
• This construction was asserted to be supported by dependent claim 23, which recites that the "means... comprises a light sensor," and by the specification's repeated references to "light intensity sensor 280." The construction is important for tying the broad claim language to a concrete structure disclosed in the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §314(a) and §325(d).
• §314(a) (Fintiv): Denial under Fintiv was argued to be unwarranted because the parallel district court litigations involving the ’255 patent have been stayed pending the outcome of a related IPR, IPR2024-01110, which this petition seeks to join.
• §325(d): Denial was argued to be improper because the petition is a "copycat" of an already-instituted IPR (IPR2024-01110) and is filed with a motion for joinder. Furthermore, several key prior art references (Schofield, Frank, Currie) were never considered during prosecution, and the primary reference, Gallagher, was merely cited but never applied by the Examiner in any rejection.

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.