Litigation

Volkswagen Group of America, Inc. v. Yechezkal Evan Spero

Final Written Decision

IPR2023-00328

Patents at issue (1)

Summary

Volkswagen Group of America, Inc. filed an Inter Partes Review petition against patent owner Yechezkal Evan Spero concerning US patent 10894503. The case has a Final Written Decision, though some sources list it as pending.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Volkswagen Group of America, Inc. (VWGoA), the North American subsidiary of the global automobile manufacturer Volkswagen Group, engaged in an Inter Partes Review (IPR) proceeding against patent owner Yechezkal Evan Spero before the Patent Trial and Appeal Board (PTAB). Spero, an individual inventor, holds U.S. Patent No. 10,894,503, with Torchlight Technologies LLC acting as the exclusive licensee. Torchlight Technologies LLC operates as a Patent Assertion Entity (PAE) or Non-Practicing Entity (NPE), and has a history of asserting patents, including those related to headlight systems, against various automotive manufacturers like Audi, Daimler, Mercedes-Benz, Porsche, and Volkswagen.

The core of the dispute revolves around U.S. Patent No. 10,894,503, titled "Automatic Vehicle Headlight System," which describes an adaptive anti-glare headlight system. This technology utilizes controllable light sources, such as LED arrays, in conjunction with sensors and a controller, to automatically adjust the light beam to prevent glare for other vehicles. While the IPR directly challenges the patent's validity rather than alleging direct infringement, it is closely linked to underlying or threatened infringement claims against automotive companies that incorporate adaptive headlight technology in their vehicles. The specific IPR, IPR2023-00328, focused on challenging method claims of the patent, complementing other parallel IPRs (IPR2023-00197 and IPR2023-00335) that targeted system claims and light cluster claims of the same patent.

The case unfolded at the Patent Trial and Appeal Board (PTAB) under case number IPR2023-00328, where a Final Written Decision was issued. The PTAB determined that a substantial portion of the patent, specifically claims 1–28, 30–68, and 70 of U.S. Patent No. 10,894,503, were unpatentable. Patent Owner Yechezkal Evan Spero appealed this outcome to the U.S. Court of Appeals for the Federal Circuit. However, on May 14, 2026, the Federal Circuit dismissed Spero's appeal as moot, having affirmed the PTAB's decisions finding the appealed claims of the '503 patent unpatentable in a related appeal, Spero v. Mercedes-Benz USA, LLC, No. 2025-1470. The PTAB proceedings involved consolidated oral arguments for IPR2023-00197, IPR2023-00328, and IPR2023-00335 on April 16, 2024.

This case is particularly notable as it highlights the ongoing dynamics of patent assertion by NPEs against the automotive industry and the strategic use of IPRs by large operating companies to challenge patent validity. Torchlight Technologies LLC's pattern of asserting adaptive headlight patents against multiple automotive giants underscores the financial stakes involved in this technology space. Volkswagen's decision to file multiple, distinct IPR petitions against different claim groupings of the same patent demonstrates a comprehensive strategy to invalidate the asserted patents and proactively address potential infringement liabilities, securing a favorable outcome for a significant portion of the challenged claims.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

The IPR proceeding IPR2023-00328 involves Volkswagen Group of America, Inc. challenging patent owner Yechezkal Evan Spero regarding U.S. Patent 10,894,503. This IPR is one of three filed by Volkswagen against the same patent (IPR2023-00197, IPR2023-00328, and IPR2023-00335), collectively challenging all 70 claims of the patent, with IPR2023-00328 specifically addressing method claims.

Here's a chronological overview of the key legal developments and outcome for IPR2023-00328:

  • IPR Petition Filing: Volkswagen Group of America, Inc. filed the petition for inter partes review for IPR2023-00328 on December 16, 2022.
  • Institution Decision: The Patent Trial and Appeal Board (PTAB) issued a decision to institute the inter partes review on June 21, 2023.
  • Final Written Decision (FWD): The PTAB is statutorily required to issue a final written decision within 12 months of institution, with a possible six-month extension for good cause. The prompt indicates a Final Written Decision has been issued. While the exact date and specifics of the FWD for IPR2023-00328 are not immediately available in the provided search results, the typical timeline suggests it would have occurred around June-December 2024.
  • Parallel Federal Circuit Appeals: While the case IPR2023-00328 itself is an IPR at the PTAB, related appeals concerning U.S. Patent 9,955,551B2 (a related patent by the same patent owner, though not the patent at issue in this specific IPR) have reached the Federal Circuit.
    • One appeal, Case No. 25-1065, filed by Yechezkal Evan Spero against Volkswagen AG, was voluntarily dismissed on April 3, 2025.
    • Another appeal, Case No. 25-1145, also by Yechezkal Evan Spero against Volkswagen Group of America, Inc. and Porsche Cars North America, Inc., was voluntarily dismissed on July 2, 2025. In both instances, the Federal Circuit did not issue a merits ruling, and each side bore its own costs. The dismissals leave the underlying patentability dispute unresolved on the public record regarding those specific appeals. These appeals highlight ongoing patentability disputes involving Spero and Volkswagen.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

tool_code
print(google_search.search(queries=["IPR2023-00328 Volkswagen Group of America, Inc. v. Yechezkal Evan Spero counsel", "Volkswagen IPR2023-00328 counsel of record", "Finnegan Henderson Volkswagen IPR counsel", "Perkins Coie Volkswagen IPR counsel"]))
thought
The user is asking for the counsel of record for the plaintiff (Volkswagen Group of America, Inc.) in IPR2023-00328. I need to find the names of the attorneys, their roles, firms, office locations, and relevant experience. I will use the provided search queries to look for this information.### Counsel for Petitioner Volkswagen Group of America, Inc.

The following attorneys represented Volkswagen Group of America, Inc. (Petitioner) in IPR2023-00328:

  • J. Michael Jakes

    • Role: Lead Counsel
    • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, D.C. office)
    • Experience Note: Mr. Jakes is a partner at Finnegan and frequently represents clients in inter partes review proceedings and appeals before the U.S. Court of Appeals for the Federal Circuit.
  • Aaron Clay

    • Role: Counsel
    • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, D.C. office)
    • Experience Note: Mr. Clay is an attorney at Finnegan focusing on patent litigation and inter partes reviews.
  • Jacob S. Schroeder

    • Role: Counsel
    • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, D.C. office)
    • Experience Note: Mr. Schroeder is an associate at Finnegan whose practice includes patent litigation and post-grant proceedings.

These attorneys appeared on the PTAB's docket for IPR2023-00328.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

tool_code
print(google_search.search(queries=["IPR2023-00328 Yechezkal Evan Spero counsel", "Yechezkal Evan Spero patent litigation counsel", "Yechezkal Evan Spero v. Volkswagen Group of America, Inc. counsel", "PTAB IPR2023-00328 docket"]))
thought
The user is asking for the counsel of record representing the defendant (Patent Owner, Yechezkal Evan Spero) in IPR2023-00328. I need to find the names of the attorneys, their roles, firms, office locations, and relevant experience. I will use web search, specifically looking for information related to the IPR docket and general patent litigation counsel for Yechezkal Evan Spero.In the Inter Partes Review proceeding IPR2023-00328, Yechezkal Evan Spero is represented by counsel from Brooks Kushman P.C..

The counsel of record for Yechezkal Evan Spero includes:

  • Andrew B. Turner (Reg. No. 63,121)

    • Role: Attorney for Yechezkal Evan Spero
    • Firm: Brooks Kushman P.C.
    • Office Location: Royal Oak, MI
    • Relevant Experience: Thomas A. Lewry from Brooks Kushman PC, Royal Oak, MI, argued for appellant (Yechezkal Evan Spero) in a related Federal Circuit appeal (Case No. 2025-1028), with Andrew B. Turner also listed as representing the appellant.
  • Sangeeta G. Shah (Reg. No. 38,614)

    • Role: Attorney for Yechezkal Evan Spero
    • Firm: Brooks Kushman P.C.
    • Office Location: Royal Oak, MI
    • Relevant Experience: Sangeeta G. Shah is listed as representing the appellant (Yechezkal Evan Spero) in a related Federal Circuit appeal (Case No. 2025-1028).
  • David S. Bir (Reg. No. 38,383)

    • Role: Attorney for Yechezkal Evan Spero
    • Firm: Brooks Kushman P.C.
    • Office Location: Royal Oak, MI
  • Bernard P. Tomsa (Reg. No. 60,121)

    • Role: Attorney for Yechezkal Evan Spero
    • Firm: Brooks Kushman P.C.
    • Office Location: Royal Oak, MI

These attorneys were listed as representing Yechezkal Evan Spero in a Request for Oral Argument filed on February 22, 2024, for the consolidated IPR hearings, including IPR2023-00328, at the U.S. Patent and Trademark Office.