ZF Active Safety Electronics US LLC v. Facet Technology Corp

1. Case Identification

• Case #: IPR2025-00749
• Patent #: 9,671,328
• Filed: April 4, 2025
• Petitioner(s): ZF ACTIVE SAFETY AND ELECTRONICS US LLC
• Patent Owner(s): Facet Technology Corp.
• Challenged Claims: 1-22

2. Patent Overview

• Title: System and Assessment of Reflective Objects Along a Roadway
• Brief Description: The ’328 patent discloses a vehicle-mounted automated system for assessing the retroreflectivity of road markers. The system uses a light source to illuminate the markers, a light intensity sensor to measure reflected light, and a computer processing system to analyze the measurements and determine the characteristics and location of the reflective objects.

3. Grounds for Unpatentability

Ground 1: 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 disclosed the core elements of the challenged claims, including a vehicle-mounted "reflectivity measuring apparatus" with a light source, light sensors, and a computer to detect and assess road markers based on reflectance levels. However, Gallagher's system had limited object differentiation. Schofield taught a more advanced vehicle-mounted imaging system that identified objects like lane markers and traffic signs by analyzing their spectral characteristics, shape, and spatial layout, using techniques like pattern recognition and spatial filtering.
  • Motivation to Combine: A POSITA would combine Schofield's advanced object identification capabilities with Gallagher's reflectivity measurement system. The motivation was to improve the accuracy and specificity of Gallagher's system, allowing it to not just detect a reflective object but also to better differentiate between various types of markers (e.g., markers on the left vs. right side of a lane) by analyzing their discrete location within the field of view, as taught by Schofield.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both Gallagher and Schofield disclosed systems using similar photosensing arrays (photodiodes). Integrating Schofield's known image processing techniques with Gallagher's similar hardware would have been a predictable application of conventional technology to improve a known device.

Ground 2: Claims 15-16, 19, and 21-22 are obvious over Gallagher, Schofield, and 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 builds upon the combination of Gallagher and Schofield by incorporating the teachings of Frank. Frank disclosed a laser radar system for a vehicle that accurately measured both the distance (D) and angle (θ) to retroreflectors on the roadway. Petitioner argued that this combination would provide a system capable of determining "exemplary angular displacements of incident light" (i.e., the observation angle) and the lateral distance to a marker, as required by the dependent claims.
  • Motivation to Combine: A POSITA would be motivated to add Frank's distance and angle measurement capabilities to the Gallagher/Schofield system to improve the accuracy of reflectivity assessments. It was well-known that retroreflectivity values vary with the observation angle, which in turn depends on the distance to the target. By using Frank to measure distance, the system could calculate a precise observation angle for each measurement, ensuring compliance with road authority standards (e.g., ASTM standards) that specify reflectivity at particular angles. This would be a desirable improvement over Gallagher's system, which assumed a fixed observation angle.
  • Expectation of Success: Success was expected as Frank's system, like Gallagher's, could be implemented with a photodiode array. Applying conventional mathematics (trigonometry) to the distance and angle data provided by Frank to calculate lateral distance and observation angle would be straightforward for a POSITA.

Ground 3: Claims 5-7 are obvious over Gallagher, Schofield, 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 addresses claim limitations related to determining a marker's location using light vectors and a look-up table. Leonard taught a system with an expanded field of view that used light sub-fields of varying intensity to detect multiple objects simultaneously. Popovich taught an optical triangulation system that used a non-uniform light pattern to determine a retroreflector's spatial coordinates by analyzing the peak intensity on a sensor array and comparing it to an intensity look-up table.
  • Motivation to Combine: A POSITA would combine these references to enhance Gallagher's system. Leonard's expanded field of view would allow the system to detect multiple markers at various distances in a single pass, an improvement over Gallagher's more limited beam. Popovich's triangulation and look-up table method would then be used to accurately determine the precise location of each marker detected within this expanded field. This combination would provide a more robust and accurate location-determination capability than Gallagher's reliance on GPS alone.
  • Expectation of Success: The combination involved integrating familiar elements using known methods. Gallagher already disclosed modifying the field of view and using GPS, making the further implementation of Leonard's more advanced field-of-view and Popovich's triangulation techniques a predictable path to an improved system.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 14 and 20 based on Gallagher, Schofield, Frank, and the ASTM D4383-96 standard. This ground argued a POSITA would use the ASTM standard, which defines required reflectivity at specific entrance and observation angles, to configure the system to make measurements that comply with well-known industry requirements.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and the Fintiv factors would be inappropriate. Key reasons included that the ’328 patent was not asserted against the Petitioner in district court and that the parallel litigations involving the patent have been stayed pending the outcome of related IPRs, which this petition seeks to join.
• Petitioner also argued that denial under §325(d) would be improper because the primary prior art references asserted (Schofield, Frank, ASTM, Leonard, and Popovich) were never considered during the original prosecution. While Gallagher was cited, the Examiner never applied it in a rejection.

5. Relief Requested

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