Trials@uspto.gov
Tel: 571-272-7822

Paper 15
Entered: May 25, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
QUANERGY SYSTEMS, INC.
Petitioner,
v.
VELODYNE LIDAR, INC.
Patent Owner.
____________
Case IPR2018-00255
Patent 7,969,558 B2
____________
Before CARL M. DEFRANCO, JOHN P. PINKERTON, and
MICHAEL L. WOODS, Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.
DECISION
Institution of Inter Partes Review
35 U.S.C. § 314(a)
I. INTRODUCTION
Velodyne Lidar, Inc. (“Velodyne”) is the owner of U.S. Patent
No. 7,969,558 B2 (“the ’558 patent”). Quanergy Systems, Inc.
(“Quanergy”) filed a petition requesting inter partes review of claims 1–4, 8,
and 9 of the ’558 patent. Paper 2 (“Pet.”). Velodyne, in turn, filed a
preliminary response. Paper 11 (“Prelim. Resp.”). After considering the

 IPR2018-00255
Patent 7,969,558 B2
parties’ submissions, we determine that Velodyne has demonstrated a
reasonable likelihood that at least claim 1 of the ’558 patent is unpatentable.
As such, we institute inter partes review of claims 1–4, 8, and 9 as
challenged in the petition. See 35 U.S.C. § 314(a).
II. BACKGROUND
A. Related Matters
The ’558 patent is the subject of an infringement action in Quanergy
Systems, Inc. v. Velodyne LiDAR, Inc., Case No. 5:16-cv-05251 (N.D. Cal.),
which commenced September 13, 2016, when Quanergy filed a complaint
for declaratory judgment of non-infringement. Pet. 1. In commencing that
action, Quanergy did not challenge the validity of the ’558 patent.
Subsequently, on December 5, 2016, Velodyne served Quanergy with a
counterclaim for infringement of the ’558 patent. Id. The infringement
action was stayed earlier this year pending our decision on whether to
institute. The ’558 patent is also the subject of another preliminary
proceeding pending before us, IPR2018-00256, involving the same parties
and patent as this proceeding, only challenging a different set of claims,
specifically, claims 16–19 and 23–25.
B. The ’558 Patent
The ’558 patent, titled “High Definition Lidar System,” issued on
June 28, 2011, and claims priority to a provisional application filed on
July 13, 2006. Ex. 1001, (54), (45), (60), 1:5–7. “Lidar,” which stands for
“Laser Imaging Detection and Ranging,” uses a pulse of light emitted from a
laser to measure distance to an object. Id. at 1:11–14, 3:65–66. More
specifically, a laser emitter sends a pulse of light toward an object and a
detector detects the time it takes for the reflected pulse of light to return. Id.

2

 IPR2018-00255
Patent 7,969,558 B2
at 1:13–17. The time elapsed is used to derive a distance measurement. Id.
at 1:17–18. According to the ’558 patent, “[w]hen multiple pulses are
emitted in rapid succession, and the direction of those emissions is somehow
sequentially varied,” the capture of each distance measurement creates a
“pixel,” and a “collection of pixels” forms a “point cloud.” Id. at 1:19–24.
These point clouds can then be rendered as three-dimensional (“3-D”)
images. Id. at 1:24–31.
The ’558 patent acknowledges that “3-D point cloud systems exist in
several configurations” in the prior art, however, “the needs for autonomous
vehicle navigation place unrealistic demands on current systems.” Id. at
2:35–37. To address these needs, the ’558 patent discloses a system which
“performs at a frame rate that permits high-speed navigation, provides
recognition of both positive and negative obstacles, provides exceptional
point cloud density, provides full 360 degree HFOV, 1 provides broad
VFOV, 2 and provides high accuracy rates.” Id. at 6:37–41 (footnotes
added); see also id. at 4:3–18 (describing additional benefits). In particular,
the system comprises a housing mounted on a base which contains a
“plurality of photon transmitters and photon detectors.” Id. at 3:4–5,
Figs. 5–9. A “rotary motor” rotates the housing about the base, allowing the
photon transmitters and photon detectors to capture the distances of
surrounding objects in 360 degrees. Id. at 4:3–6. The housing “rotates at a
rate of up to 200Hz, thereby providing a high point cloud refresh rate, such
high rate being necessary for autonomous navigation at higher speeds.” Id.
at 4:7–9.
1
2

“Horizontal Field of View.”
“Vertical Field of View.”
3

 IPR2018-00255
Patent 7,969,558 B2
C. The Challenged Claims
Of the challenged claims, only claim 1 is independent. In particular,
claim 1 recites:
1.

A lidar-based 3-D point cloud system comprising:
a support structure;

a plurality of laser emitters supported by the support
structure;
a plurality of avalanche photodiode detectors supported by
the support structure; and
a rotary component configured to rotate the plurality of
laser emitters and the plurality of avalanche photodiode detectors
at a speed of at least 200 RPM.
Ex. 1001, 7:59–67.
D. The Asserted Grounds of Unpatentability
Quanergy challenges claims 1–4, 8, and 9 of the ’558 patent on
alternative grounds, first, as obvious over Mizuno3 alone, and, second, as
obvious over Mizuno and Kilpelä. 4 Pet. 3, 16–50. In support of these
grounds, Quanergy proffers the declaration of Dr. James F. Brennan, III, an
expert retained for purposes of this proceeding. Ex. 1002.
III. ANALYSIS
A. Claim Construction
The U.S. District Court for the Northern District of California
previously construed many of the claim terms, including: “3-D point cloud”
(claim 1), “rotary component” (claims 1, 8), “a plurality of laser emitters”
3

Japanese Patent Appln. Pub. No. H3-6407, pub. Jan. 11, 1991 (Ex. 1004,
“Mizuno”).
4
Kilpelä, “Precise pulsed time-of-flight laser range finder for industrial
distance measurements,” Review of Scientific Instruments, April 2001
(Ex. 1005, “Kilpelä”).
4

 IPR2018-00255
Patent 7,969,558 B2
(claim 1), “rotary power coupling” (claim 2), “plurality of photon detectors”
(claim 3), and “a communication component configured to allow
transmission of signals generated by the avalanche photodiode detectors to
an external component” (claim 9). Ex. 1027. Notably, the district court also
determined that the preamble of claim 1, which recites the terms “lidar” and
“3-D point cloud,” is limiting. Id. at 7–11, 32.
Quanergy does not contest the district court’s claim construction
order. Pet. 11. Nor does Velodyne. Prelim. Resp. 18–19. At this stage, we
see no reason to depart from the district court’s thorough analysis of the
disputed claim terms, except to clarify one point. In particular, according to
the parties, the district court’s construction of the term “3-D point cloud”
may indicate that “distance measurements” are emitted from the laser
emitter, rather than derived from it. See Pet. 20; Prelim. Resp. 18–19. We
agree. The specification of the ’558 patent states that “pulsing a laser
emitter . . . causes a burst of light to be emitted . . . [t]hen, the time it takes
for that pulse of light to return to a detector mounted near the emitter is
measured, and a distance can then be derived from that measurement with
high accuracy.” Ex. 1001, 1:11–18. That description supports a
construction where the distance measurement is derived from the laser
emission, as opposed to being part of the emission itself. Thus, consistent
with the specification, we interpret the term “3-D point cloud” to be “a
collection of distance measurements derived from multiple laser light pulses
emitted in rapid succession along sequentially varied directions and captured
in rapid succession so as to be rendered as a three dimensional image or
analyzed for other reasons such as detecting obstacles.” Aside from this

5

 IPR2018-00255
Patent 7,969,558 B2
modification, at this time, we adopt the district court’s construction of the
above-indicated terms for the purpose of this proceeding.
B. Quanergy’s Petition Meets the Threshold for Institution
In determining whether Quanergy satisfies the statutory threshold for
institution under 35 U.S.C. § 314(a), we focus on claim 1 of the ’558 patent,
as it is the only independent claim challenged in the petition. Quanergy
argues that Mizuno, along with what a skilled artisan would have known in
the relevant time frame, renders claim 1 obvious. Pet. 15–36. After
reviewing Quanergy’s petition and Velodyne’s preliminary response, we
conclude that the information presented in the petition demonstrates a
reasonable likelihood that at least claim 1 is unpatentable as obvious over
Mizuno.
Mizuno discloses a “peripheral shape measurement device . . . that
measures the peripheral shape of an object” by means of “four laser
measurement devices 40 . . . disposed at 90° intervals around a shared
circumference” of a “ring-shaped rotating plate 30.” Ex. 1004, 1, 3, Fig. 1.
The laser measurement devices “are all mounted in such a way as to emit
their laser light toward the center line of rotation of the rotating plate” where
the object to be measured is held at a fixed position. Id. at 3. Mizuno
explains that the laser measurement devices “constitute light-reflection
based distance measurement devices,” which “[b]y emitting laser light
toward the center line of rotation of the rotating plate 30, . . . measure the
distance up to the peripheral surface of the [object], and . . . output distance
signals SD that express that distance.” Id.; see also id. at 1 (“a lightreflection-based distance measurement device that emits a light, receives the
reflection of said light, measures the distance up to the point of reflection,

6

 IPR2018-00255
Patent 7,969,558 B2
and outputs a distance signal that corresponds to said distance”). Once
generated, the distance measurements are used to “display the crosssectional shape of the [object] . . . stereoscopically in three dimensions, or
record it on a chart or the like.” Id. at 5.
At this stage, Velodyne does not dispute that Mizuno’s peripheral
shape measurement device includes a plurality of laser emitters and a
plurality of laser detectors rotating at high speed to generate a collection of
distance measurements that can be rendered as a 3-D image. Rather,
Velodyne’s primary contentions focus on how Mizuno’s distance
measurements are calculated, namely, that Mizuno uses a “triangulation”
technique to calculate distance rather than the “lidar-based” technique
required by claim 1. Prelim. Resp. 21–24, 29–32. We disagree, at least as
the record currently stands.
It is undisputed that lidar uses laser light to perform imaging,
detection, and ranging. Ex. 1002 ¶¶ 34, 40; Ex. 2003 ¶ 33. Mizuno’s laser
measurement device does all three. For instance, Mizuno discloses emitting
and reflecting laser light to measure distances to an object, which is laser
“ranging.” Ex. 1002 ¶¶ 101–103. It also describes receiving the reflected
light from the laser, which is laser “detection.” Id. And, finally, it teaches
using the measured distances to display a three-dimensional representation
of the object, which is laser “imaging.” Id. ¶ 104. Given Mizuno’s
performance of these functions, we find that a skilled artisan would have
understood Mizuno to be a “lidar-based” system.
Velodyne does not persuade us at this time that Mizuno is limited to a
“triangulation” method for calculating distance. Prelim. Resp. 21–24, 29–
32. Velodyne’s own expert concedes that “Mizuno provides little detail

7

 IPR2018-00255
Patent 7,969,558 B2
regarding the calculations by which depth of a surface flaw, for example,
may be determined.” Ex. 2003 ¶ 68. That Mizuno may lack specific details
as to how its distance measurement is derived does not give Velodyne carte
blanche to read Mizuno in a manner that excludes what a skilled artisan
would have understood from Mizuno as a whole. In that regard, we are not
persuaded by Velodyne’s attempt to incorporate an “x” variable into figure 5
of Mizuno in order to support its argument that Mizuno performs a
triangulation-like calculation. Prelim. Resp. 22. Had Mizuno contemplated
such a method, it seems only prudent that Mizuno would have described a
mathematical formula similar to those in the triangulation-based references
relied upon by Velodyne. See Ex. 2007, 9; Ex. 2009, 19–20. But Mizuno
does not, and we reject Velodyne’s attempt to intimate a triangulation
method of calculation into Mizuno without clear support for doing so. As
such, Velodyne’s arguments that Mizuno fails to teach a lidar-based system
are unavailing at this time.
Velodyne also argues that a skilled artisan would not have used
avalanche photodiode detectors (“APDs”) in Mizuno’s system because “an
APD . . . detects only when light is received,” whereas “Mizuno’s position
detectors . . . detect where the light is received.” Prelim. Resp. 24.
According to Velodyne, “Mizuno expressly uses a position-sensitive
detector instead of a common photodetector.” Id. at 20. We disagree.
Although Mizuno lists a “position sensor” as one form of light detection, it
also describes light detection in terms of “photoreceptors, such as image
sensors or the like.” Ex. 1004, 1. We note that, by the earliest priority date
for the ’558 patent, image sensors were known to “make[] use of laser
ranging based on the time-of-flight principle.” Ex. 1014, 3; Ex. 1015, 1–2.

8

 IPR2018-00255
Patent 7,969,558 B2
It was also well known that “laser rangefinding” was the “most common
application of APDs.” Ex. 1020, 4. Given that Mizuno is a laser
rangefinding system, and that image sensors and APDs were commonly used
for that purpose, we conclude that a skilled artisan likely would have
understood Mizuno’s disclosure of “image sensors or the like” as including
time-of-flight detectors, such as APDs. See Ex. 1002 ¶¶ 49, 130–138.
Velodyne also argues that Mizuno “does not teach generating a 3-D
point cloud,” and that Quanergy “failed to demonstrate that Mizuno teaches
capturing multiple distance measurements in rapid succession.” Prelim.
Resp. 27, 34–36. As properly construed, the phrase “3-D point cloud”
requires “a collection of distance measurements . . . captured in rapid
succession so as to be rendered as a three-dimensional image.” See supra
Section III.A. Each laser measurement device in Mizuno “measure[s] the
distance from the laser measurement device 40 to the reflection point” of an
object and “output[s] distance signals SD that express that distance.” Ex.
1004, 3. It is undisputed that Mizuno’s distance signals SD are distance
measurements. Ex. 1002 ¶¶ 109–110; Ex. 2003 ¶ 67. Nor is it disputed that
Mizuno’s distance measurements are used to display the object “in three
dimensions.” Ex. 1004, 5; Ex. 1002 ¶¶ 120–124. As to how fast the
distance measurements are collected, Mizuno discloses that the laser
measurement devices rotate around the circumference of the object “at high
speeds on the order of, for example, 3000-5000 rpm.” Ex. 1004, 4. The
distance to the object is measured every one quarter of a rotation. Id. at
Fig. 6. Thus, if the laser measurement devices are rotating at a minimum of
3000 rpm (i.e., 200 quarter-rotations per second), Mizuno is capturing
distance measurements every 1/200th of a second. Those disclosures support

9

 IPR2018-00255
Patent 7,969,558 B2
that Mizuno teaches collecting distance measurements “in rapid succession”
to generate a “3-D point cloud,” per the proper construction of claim 1.
Ex. 1002 ¶¶ 107–115.
Based on the preliminary record, we are persuaded at this time that a
skilled artisan would have understood Mizuno’s “peripheral shape laser
measurement device” to encompass a lidar-based, point cloud system
equipped a plurality of rotating laser emitters and APDs for collecting
distance measurements to render a 3-D image of an object. Thus, Quanergy
has demonstrated a reasonable likelihood of success in proving that at least
claim 1 of the ’558 patent is unpatentable as obvious over Mizuno. Because
Quanergy has met the threshold for institution, we institute inter partes
review of all claims and grounds presented in the petition.
In reaching our decision to institute, we acknowledge Velodyne’s
extensive presentation of secondary considerations in support of nonobviousness. Prelim. Resp. 38–57. The issue of secondary considerations is
highly fact-dependent. At this stage, the record regarding secondary
considerations is incomplete for at least two reasons. First, Quanergy has
not had an opportunity to submit rebuttal evidence. And, second, Velodyne
fails to account for what was already known in the art insofar as lidar
systems that used multiple laser/detector assemblies for 3-D imaging, as
opposed to the “single emitter/detector assembly” discussed by Velodyne.
Id. at 43; see also id. at 53 (“single laser/detector assembly”). As such, we
determine that it would be premature to reach any conclusion regarding
secondary considerations. Our consideration of Velodyne’s evidence of
secondary considerations will be based on the full record developed during
trial.

10

 IPR2018-00255
Patent 7,969,558 B2
IV. ORDER
Accordingly, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
review of claims 1–4, 8, and 9 of the ’558 patent is hereby instituted; and
FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
C.F.R. § 42.4(b), inter partes review of the ’558 patent will commence on
the entry date of this Order, and notice is hereby given of the institution of a
trial.
FOR PETITIONER:
Erik B. Milch
Christopher C. Campbell
Priya Viswanath
Jennifer Volk
COOLEY LLP
emilch@cooley.com
ccampbell@cooley.com
pviswanath@cooley.com
jvolkfortier@cooley.com
zQuanergyIPR@cooley.com
zpatdcdocketing@cooley.com
FOR PATENT OWNER:
Jonathan M. Strang
Ann Marie Wahls
Priyen N. Patel
Douglas E. Lumish
Brett M. Sandford
LATHAM & WATKINS LLP
jonathan.strang@lw.com
annmarie.wahls@lw.com
priyen.patel@lw.com
doug.lumish@lw.com
brett.sandford@lw.com
11