Paper 29
`Trials@uspto.gov
`571-272-7822 Entered: February 7, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2018-015531
`Patent 5,699,275
`____________
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining the Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 Google LLC, who filed a petition in IPR2019-00111, has been joined as a
`petitioner in this proceeding.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 7, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2018-015531
`Patent 5,699,275
`____________
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining the Challenged Claim Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 Google LLC, who filed a petition in IPR2019-00111, has been joined as a
`petitioner in this proceeding.
`
`
`
`IPR2018-01553
`Patent 5,699,275
`
`I. INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”)2 filed a Petition for inter
`partes review of claim 1 of U.S. Patent No. 5,699,275 (Ex. 1001, “the
`’275 patent”). Paper 1 (“Pet.”). Iron Oak Technologies, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Upon
`consideration of the Petition and Preliminary Response, we instituted inter
`partes review, pursuant to 35 U.S.C. § 314, as to claim 1 based on all
`challenges set forth in the Petition. Paper 9 (“Decision to Institute” or
`“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 18, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 20, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 21, “Sur-reply”). On November 4, 2019, we held a consolidated oral
`hearing for this case and related Case IPR2018-01552. A transcript of the
`hearing has been entered into the record. Paper 28 (“Tr.”).
`In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response may be deemed
`waived.” See Paper 10, 5; see also Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“The patent owner response . . .
`should identify all the involved claims that are believed to be patentable and
`state the basis for that belief.”). In addition, “[a]rguments must not be
`incorporated by reference from one document into another document.” 37
`C.F.R. § 42.6(a)(3) (2018). In violation of our rule and guidance, Patent
`
`
`2 Petitioner, Samsung Electronics Co., Ltd., identifies Samsung Electronics
`America, Inc. as a real party-in-interest. Pet. 1.
`
`2
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`Owner argues in its Patent Owner Response: “Patent Owner incorporates
`herein those arguments presented in its Preliminary Response for all
`purposes.” PO Resp. 1. We decline to consider whatever Patent Owner
`considers is “incorporated” from its Preliminary Response as if it were a part
`of Patent Owner’s Response, but only consider arguments substantively
`presented in Patent Owner’s Response. Any arguments for patentability not
`raised in the Patent Owner Response are deemed waived.
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claim 1 of the ’275 patent is
`unpatentable.
`
`A. Related Matters
`The parties indicate that the ’275 patent is the subject of several
`stayed court proceedings. Pet. 1–2; Paper 6, 2–3; Paper 17, 4. The ’275
`patent also is the subject of Board proceedings IPR2018-01552 and
`IPR2019-00106. A Final Written Decision is made in each of IPR2018-
`01552 and IPR2019-00106 concurrently with this Final Written Decision. In
`IPR2019-00110, Google LLC filed a motion to join IPR2018-01552, which
`we granted. See Google LLC v. Iron Oak Techs., LLC, IPR2019-00110,
`Paper 11 (PTAB Apr. 3, 2019). In IPR2019-00111, Google LLC filed a
`motion to join IPR2018-01553, which we granted. See Google LLC v. Iron
`Oak Techs., LLC, IPR2019-00111, Paper 10 (PTAB Apr. 3, 2019).
`
`B. The ’275 Patent
`The specification of the ’275 patent describes a system “for remote
`patching or updating of operating code located in a mobile unit.” Ex. 1001,
`code (57). The system includes a manager host operable to initiate
`transmission of a discrete patch message to a mobile unit. Id. The mobile
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`unit is operable to create patched operating code by merging the patch with
`the current operating code and to switch execution to the patched operating
`code. Id. The mobile unit also can receive a download message defining
`new operating code to replace current operating code. Id.
`
`C. Illustrative Claim
`Petitioner challenges claim 1 of the ’275 patent. Claim 1 is
`reproduced below.
`1. A system for remote patching of operating code
`located in a mobile unit, comprising:
`a manager host operable to initiate transmission through a
`wireless communication network of at least one discrete patch
`message defining at least one patch;
`a first mobile unit operable to receive the at least one
`discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch
`with current operating code located in the first mobile unit and to
`switch execution to the patched operating code; and
`a second mobile unit operable to receive the at least one
`discrete patch message, the second mobile unit further operable
`to create patched operating code by merging the at least one
`patch with current operating code located in the second mobile
`unit and to switch execution to the patched operating code; and
`wherein the manager host is further operable to address the
`at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but
`not to the second mobile unit.
`Id. at 13:32–53.
`
`4
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`D. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted grounds of unpatentability
`under 35 U.S.C.3 as follows (Dec. 4, 19):
`Challenged Claim
`35 U.S.C. § References
`1
` 103
`Hapka,4 Parrillo5
`1
` 103
`Hapka, Parrillo, Wortham6
`
`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claim, Petitioner must
`demonstrate by a preponderance of the evidence7 that the claim is
`unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d). A claim is
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’275
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`4 U.S. Patent No. 5,619,412, issued Apr. 8, 1997 (Ex. 1008, “Hapka”).
`5 U.S. Patent No. 5,442,553, issued Aug. 15, 1995 (Ex. 1009, “Parrillo”).
`6 U.S. Patent No. 5,155,689, issued Oct. 13, 1992 (Ex. 1014, “Wortham”).
`7 The burden of showing something by a preponderance of the evidence
`simply requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
`5
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`underlying factual determinations including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective indicia of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner relies on the testimony of Dr. Benjamin
`Bederson, who testifies that a person with ordinary skill in the art “would
`have had at least a Bachelor’s degree in computer science, electrical
`engineering, or a similar discipline and at least two years additional relevant
`experience relating to, for example, device software management, including
`the remote update of code, such as mobile device software development and
`mobile device software updates.” Pet. 4; Ex. 1002 ¶ 20. Patent Owner does
`not propose an alternative assessment. See generally PO Resp.
`We adopt Dr. Bederson’s assessment of a person with ordinary skill in
`the art as it is consistent with the ’275 patent and the asserted prior art. We
`further note that the prior art of record in the instant proceeding reflects the
`appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261
`F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific
`findings as to the level of ordinary skill in the art “where the prior art itself
`reflects an appropriate level and a need for testimony is not shown”).
`
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`C. Claim Construction
`The ’275 patent is expired. Ex. 1001; Pet. 8. For claims of an expired
`patent, our claim interpretation is similar to that of a district court. See In re
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In particular, for claims of
`an expired patent, the Board construes claims to generally have their
`ordinary and customary meaning, as that meaning would be understood by
`one of ordinary skill in the art in the context of the entire patent disclosure.
`See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
`banc). Petitioner, recognizing that the ’275 patent is expired, contends that
`the claims should be construed consistent with the principles set forth in
`Phillips. Pet. 8. Patent Owner does not contend otherwise. See generally
`PO Resp.
`
`Petitioner proposes constructions for the following claim terms found
`in claim 1: “mobile unit,” “operating code,” “manager host operable to
`initiate transmission through a wireless communication network of at least
`one discrete patch message defining at least one patch,” “merging the at least
`one patch with current operating code,” and “manager host is further
`operable to address the at least one discrete patch message.” Pet. 8–16.
`In our Decision to Institute, we adopted Petitioner’s proposed claim
`construction, interpreting “merging the at least one patch with current
`operating code” as “incorporating the at least one patch into the current
`operating code, without replacing the entire current operating code.” Dec. 5.
`Neither party has indicated that our interpretation was improper, and we do
`not perceive any reason or evidence that now compels any deviation from
`our initial interpretation. Accordingly, “merging the at least one patch with
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`current operating code” means “incorporating the at least one patch into the
`current operating code, without replacing the entire current operating code.”
`“second mobile unit” and the “wherein” limitation
`Claim 1 recites “wherein the manager host is further operable to
`address the at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but not to the
`second mobile unit” (the “wherein limitation”). In our Decision to Institute,
`we adopted Petitioner’s claim construction and interpreted “manager host is
`further operable to address the at least one discrete patch message” as
`“[manager host is further operable to] decide which specific mobile unit to
`send [the at least one discrete patch message] to before beginning
`transmission” of the message. Dec. 6. Neither party has indicated that our
`interpretation was improper, and we do not perceive any reason or evidence
`that now compels any deviation from our initial interpretation. See
`generally PO Resp.; Pet. Reply; see also Tr. 29:6–8.
`Patent Owner, however, argues that the wherein limitation, and claim
`1 in general, implicates a narrow construction having temporal restrictions.
`See PO Resp. 3–6; Sur-reply 2–9; Tr. 5:24–26, 30:1–3. Patent Owner argues
`that the “second mobile unit of claim 1 must be in a condition that its current
`operating code could be updated by the patch message sent to the first
`mobile unit” and that a “mobile unit whose operating code has been updated
`by the patch message cannot be a ‘second mobile unit.’” PO Resp. 5
`(emphasis in original); see also Sur-reply 3 (“If the alleged Second Mobile
`Unit cannot create patched operating code from that patch message (such as
`because the operating code is already patched) that unit cannot be the
`‘Second Mobile Unit’ of claim 1 for purposes of that patch message”).
`
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`Patent Owner further argues that “at the time of transmission of the patch
`message by the manager host both mobile units must be operable to create
`patched operating code from current operating code.” PO Resp. 6 (emphasis
`added).
`Patent Owner does not direct us to evidence, such as the prosecution
`history or specification of the ’275 patent, to support its contentions. In
`particular, Patent Owner does not direct us to evidence to support reading
`claim 1 to include that at the time of transmission of the patch message by
`the manager host, both mobile units must be operable to create patched
`operating code from current operating code. The claim language does not
`specify when the mobile units must be “operable to create patched operating
`code” from current operating code, only that they are “operable to” do so.
`Ex. 1001, 13:37–49.
`Moreover, we disagree that a second mobile unit that has already
`created patched operating code from the at least one patch message cannot
`meet the “second mobile unit” limitation as Patent Owner argues. PO Resp.
`5; Sur-reply 3. We note that claim 14, which depends directly from claim 1,
`recites “wherein the manager host is further operable to address the at least
`one discrete patch message such that the at least one discrete patch message
`is transmitted to the first mobile unit and to the second mobile unit.” Ex.
`1001, 14:22–26 (emphasis added). Accordingly, the full scope of claim 1
`encompasses that the at least one patch message is transmitted to the second
`mobile unit. There is nothing in claim 1 that excludes a second mobile unit
`that has already created patched operating code from the at least one patch
`message from meeting the claim 1 wherein limitation. A second mobile unit
`that is capable of creating patched operating code in some circumstances still
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`satisfies the claim. Claim 1 is an apparatus claim, not a method claim. “[A]
`prior art reference may anticipate or render obvious an apparatus claim—
`depending on the claim language—if the reference discloses an apparatus
`that is reasonably capable of operating so as to meet the claim limitations,
`even if it does not meet the claim limitations in all modes of operation.”
`ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018).
`We agree with Petitioner that a mobile device “whose operating code has
`been updated by the patch message can be a ‘second mobile device’ because,
`for it to have been updated, it must be ‘operable to’ receive the message and
`create patched operating code.” Pet. Reply 5–6. A mobile unit that has
`created patched operating code is clearly operable to do so, because it has
`created the patched operating code. Again, there are no timing requirements
`for apparatus claim 1 as Patent Owner argues.
`Accordingly, as in our Decision to Institute, we construe “manager
`host is further operable to address the at least one discrete patch message” to
`mean that the “[manager host is further operable to] decide which specific
`mobile unit to send [the at least one discrete patch message] to before
`beginning transmission” of the message. See Dec. 6.
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
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`D. Asserted Obviousness of Claim 1 over Hapka and Parrillo
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Hapka in view of Parrillo. Pet. 16–61. In support of its
`showing, Petitioner relies upon the declaration of Dr. Bederson. Id. (citing
`Ex. 1002).
`
`1. Hapka
`Hapka describes “[a] system for remotely accessing an engine control
`system and selectively controlling and changing an existing engine
`algorithm.” Ex. 1008, code (57). Hapka further describes a remote
`command interface device that modifies data using translating software so
`that it is readable by the engine control system. Id. at 3:23–25. The
`translating software may be incorporated into the computer terminal at the
`fixed base site, the on-board vehicle communications system, or the engine
`control system. Id. at 3:32–34. The system allows a remote user to enable
`or disable an engine idle shutdown device attached to a vehicle’s engine. Id.
`at 4:34–36. Figures 1a and 1b of Hapka are reproduced below.
`
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`
`Figure 1a of Hapka illustrates a block diagram of a vehicle control
`system.
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`
`Hapka’s Figure 1b illustrates a vehicle idle control system.
`Figure 1a of Hapka shows vehicle control system 1 with fixed base
`site equipment 37, on-board communications system 4 located on a vehicle,
`remote command interface section 35, and engine control system 36. Id. at
`4:5–10. Fixed base site equipment includes computer 12 with radio
`telephone 24, modem 25, and communications channel 26. Id. at 4:10–12.
`Engine control system 36 includes engine control device 9, which includes
`microprocessor 33 for storing, processing, and implementing a sequence of
`data commands received from data bus 29. Id. at 4:25–29. Engine control
`device 9 is connected to idle shutdown device 2, which houses electronic
`control module 34 for monitoring the throttle, clutch, and service brake. Id.
`at 4:29–32.
`
`2. Parrillo
`Parrillo describes a wireless software upgrade system for mobile and
`stationary vehicles. Ex. 1009, 1:31–33. Parrillo describes that “when
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`specific programs are upgraded or new algorithms are developed/adapted,
`the upgrade or complete new program is transmitted to” the vehicle’s
`microprocessor during a time that the vehicle is not being used. Id. at 4:60–
`64. Figure 1 of Parrillo is reproduced below.
`
`
`
`Figure 1 of Parrillo illustrates a diagnostic and software upgrade
`system.
`Parrillo describes that in the operation of the wireless diagnostic and
`software upgrade system, remote station 12 interrogates vehicle 15 at some
`time when it is not being used. Id. at 4:65–68.
`
`3. Discussion
`The preamble of claim 1 recites “a system for remote patching of
`operating code located in a mobile unit.” Petitioner argues, to the extent that
`the preamble is limiting, Hapka in view of Parrillo meets the preamble. Pet.
`25.8 Petitioner contends, and we agree, that Hapka discloses a “system” that
`includes a fixed base site and components on board a vehicle, where the
`system provides remote updating of software for controlling the vehicle’s
`
`
`8 We need not resolve the issue of whether the preamble is limiting
`because, regardless of whether the preamble is limiting, Petitioner shows
`that Hapka in view of Parrillo meets the preamble.
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`engine. Id. at 25 (citing Ex. 1008, 3:66–4:32, Figs. 1a–1b; Ex. 1002 ¶¶ 202–
`203). In particular, Petitioner shows, and we find, that Hapka’s described
`engine control system 36, which includes control device 9, microprocessor
`33, and idle shutdown device 2, on board a vehicle is a mobile unit. Id. at
`25–26 (citing Ex. 1008, 4:5–53, 6:9–29, Figs. 1a–1b; Ex. 1002 ¶¶ 202–203).
`Petitioner asserts, and we agree, that system 36 is a “mobile unit” because
`system 36 is mounted to or otherwise associated with a vehicle for use while
`in motion and is thus portable and battery-powered. Id. at 26–27 (citing Ex.
`1008, 4:5–54, 5:1–12, 6:9–55, 7:32–8:61, Fig. 1b; Ex. 1002 ¶¶ 202–203).
`Petitioner further argues, and we are persuaded, that to the extent Hapka’s
`system 36 is not battery-powered, it would have been obvious to configure
`system 36 to be battery-powered to further Hapka’s goal of modifying
`software code remotely while the vehicle is in motion. Id. at 27–28 (citing
`Ex. 1008, 2:17–28, 2:35–42, 3:7–10, 3:34–37, 9:45–54; Ex. 1002 ¶ 204).
`Notwithstanding Patent Owner’s late argument that Hapka fails to
`disclose operating code (Sur-reply 7–8), discussed below, we determine that
`Petitioner has shown by a preponderance of the evidence that Hapka
`discloses operating code. In particular, Petitioner contends, and we agree,
`that Hapka’s algorithm includes the sequence of operating commands
`implemented by a computer operated engine controller that is stored in the
`vehicle’s engine control system 36 (“mobile unit”), and therefore, meets the
`limitation of being “operating code.” Id. at 28–29 (citing Ex. 1008, 2:11–16,
`3:65–4:4, 6:44–7:9, 8:33–61; Ex. 1002 ¶ 205). Petitioner asserts, and we
`agree, that Hapka generally describes a system for remote patching of
`operating code located in a mobile unit, because engine control system 36
`(“mobile unit”) can modify an engine algorithm (“operating code”) based on
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`a received message from computer 12 of a fixed base site. Id. at 29 (citing
`Ex. 1008, 2:36–46, 3:7–13, 8:33–61, Figs. 1a–1b; Ex. 1002 ¶¶ 206–207).
`Petitioner relies on Parrillo for its description of details of the claimed
`“patching of operating code” and provides reasons for combining Hapka and
`Parrillo. Pet. 30–39. In particular, Petitioner contends, and we agree, that
`Parrillo’s disclosure that an upgrade or a complete new program can be
`wirelessly transmitted from a remote station to a vehicle’s microprocessor
`meets the claimed “patching of operating code.” Id. at 30–35 (citing Ex.
`1009, code (57), 1:28–38, 2:8–21, 2:32–3:28, 3:39–4:50, 4:60–5:2, 5:14–30,
`Figs. 1, 2; Ex. 1002 ¶¶ 208–216). Petitioner provides reasons for combining
`Hapka and Parrillo, asserting that due to the compatibility of Hapka and
`Parrillo, a person having ordinary skill in the art would have been motivated
`to implement the patching features of Parrillo to allow corrections and/or
`updates to be remotely installed in the current executing algorithms of
`Hapka’s vehicle components. Id. at 36 (citing Ex. 1002 ¶ 218). Petitioner
`provides additional persuasive reasons for combining Hapka with Parrillo,
`along with reasons why such a modification would have been expected to
`have been successful. Id. at 36–39. Based on our review of Petitioner’s
`proposed reasons to combine and supporting evidence, we determine that
`Petitioner has shown by a preponderance of the evidence that a person of
`ordinary skill in the art would have been motivated to combine Hapka and
`Parillo, and that the combination meets the recited “patching of operating
`code.”
`In its Sur-reply, Patent Owner argues that in Hapka, there is no
`disclosure that the software or firmware is modified or patched and that
`Hapka’s “parameter” or “data” used by an engine control algorithm is not
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`“operating code.” Sur-reply 7–8. We understand Patent Owner to argue that
`Hapka does not meet the “operating code” requirement of claim 1. Tr. 25:5–
`8.9 Nowhere, however, does Patent Owner make this argument in the Patent
`Owner Response. The argument is improper, as it is raised for the first time
`in the Sur-reply and is not responsive to arguments presented in Petitioner’s
`Reply. See, e.g., 37 C.F.R. § 42.23(b); Trial Practice Guide Update 14–15
`(Aug. 2018)10 (“Generally, a reply or sur-reply may only respond to
`arguments raised in the preceding brief. . . . [A] reply or sur-reply that raises
`a new issue or belatedly presents evidence may not be considered. The
`Board is not required to attempt to sort proper from improper portions of the
`reply or sur-reply.”); see also Patent Trial and Appeal Board Consolidated
`Trial Practice Guide 73–75 (Nov. 2019)11 (consolidating prior Trial Practice
`Guide and updates). As such, we need not consider such belated arguments.
`Even considering such arguments, Patent Owner’s arguments amount
`to unsupported attorney conjecture, which fails to rebut Petitioner’s
`showing. In particular, Petitioner shows by a preponderance of the evidence
`that Hapka’s algorithm includes the sequence of operating commands
`implemented by a computer operated engine controller that is stored in the
`vehicle’s engine control system 36 (“mobile unit”) and is “operating code.”
`Id. at 28–29 (citing Ex. 1008, 2:11–16, 3:65–4:4, 6:44–7:9, 8:33–61; Ex.
`1002 ¶ 205). Dr. Bederson testifies that a person having ordinary skill in the
`art would have understood Hapka’s described engine operation algorithms to
`
`9 Claim 1 recites “operating code” throughout claim 1.
`10 Available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf.
`11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`17
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`
`be “operating code.” Ex. 1002 ¶ 205 (citing Ex. 1008, 3:65–4:4).
`Dr. Bederson explains that Hapka describes (Ex. 1008, 3:65–4:4, 6:44–7:9,
`8:33–61) that such engine operation algorithms, such as idle shutdown, are
`used to operate the mobile unit, and further describes vehicle engine
`operating algorithms as a “sequence of operating commands implemented by
`a computer operated engine controller.” Id. (quoting Ex. 1008, 2:11–16).
`Dr. Bederson’s testimony stands unrebutted. Patent Owner did not cross-
`examine Dr. Bederson. Nor did Patent Owner direct us to any evidence,
`such as by a declarant, to rebut Dr. Bederson’s testimony. Based on the
`record before us, we give substantial weight to Dr. Bederson’s testimony
`that Hapka meets the “operating code” limitation, because his testimony is
`supported by Hapka itself. Ex. 1002 ¶ 205 (citing Ex. 1008, 2:11–16, 3:65–
`4:4, 6:44–7:9, 8:33–61). Such record evidence is not outweighed by Patent
`Owner’s attorney arguments.
`Claim 1 further recites “a manager host operable to initiate
`transmission through a wireless communication network of at least one
`discrete patch message defining at least one patch.” Petitioner contends, and
`we find, that Hapka’s base site equipment including computer 12 is a
`manager host, which is operable to transmit information through a wireless
`network (communications channel 26) to one or more vehicles to transmit a
`message defining a modification of engine algorithms executed by engine
`control system 36. Id. at 39–41 (citing Ex. 1008, 4:5–7, 4:33–37, 4:54–66,
`Figs. 1a, 1b). Petitioner contends, and we agree, that Hapka describes a fleet
`manager that operates computer 12 to provide updates to engine algorithms
`executed by the on-board components of a vehicle and thus initiates
`transmission of the messages to the mobile units. Id. at 40–41 (citing Ex.
`
`18
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`1008, 8:33–41, Figs. 1a, 1b, 5). Petitioner further contends, and we are
`persuaded, that Hapka begins transmission of the algorithm update message
`to vehicle components without first receiving a request for a patch from a
`mobile unit because Hapka’s fleet manager is deciding to modify and control
`the mobile unit’s algorithm. Id. at 40–42 (citing Ex. 1008, 8:33–41, Figs.
`1a, 1b, 5; Ex. 1002 ¶¶ 228–229). Similarly, we find that Parrillo also
`discloses beginning transmission without first receiving a request. Id. at 43–
`44 (citing Ex. 1009, 4:65–5:19; Ex. 1002 ¶¶ 228–231). Petitioner further
`provides reasons with rational underpinnings for modifying Hapka with
`Parrillo, such as that the feature would allow for remote monitoring and
`modification of code on remote vehicles. Id. at 44–45 (citing Ex. 1009,
`2:10–14).
`We determine that it would have been obvious to a person having
`ordinary skill in the art to modify Hapka’s computer 12 (manager host) in
`the combined Hapka-Parrillo system to be operable to transmit at least one
`discrete patch message defining at least one patch for the reasons provided
`by Petitioner. Id. Petitioner explains, and we agree, that Hapka refers to
`communications sent from computer 12 to the vehicle’s component as
`messages, and, thus, the message transmitted defines a modification for an
`engine algorithm, given the instructions in the message are used by system
`36 to modify the engine algorithm. Id. at 45 (citing Ex. 1002 ¶ 233).
`Petitioner further shows that Parrillo similarly describes the use of a message
`to transmit software code updates for vehicle components. Id. at 45–46
`(citing Ex. 1009, 5:16–19). Petitioner concludes, for example, that a person
`having ordinary skill in the art would have had reason to configure computer
`12 to be operable to initiate transmission of the engine algorithm in the
`
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`combined Hapka-Parrillo system via a separate and distinct message that
`included the updated code to modify the currently executed and installed
`algorithm by engine control system 36. Id. at 46 (citing Ex. 1002 ¶ 234).
`We are persuaded by Petitioner’s showing and determine that the combined
`Hapka-Parrillo system teaches all of the elements of this limitation. Patent
`Owner does not dispute Petitioner’s showing with respect to the Hapka-
`Parrillo system meeting this limitation. See generally PO Resp.
`Claim 1 further recites “a first mobile unit operable to receive the at
`least one discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch with current
`operating code located in the first mobile unit and to switch execution to the
`patched operating code.” We are persuaded by Petitioner’s showing that
`Hapka describes multiple mobile communications terminals (system 36
`located on a fleet of vehicles), any one of which is a first mobile unit. Id. at
`48 (citing Ex. 1002 ¶ 237). Petitioner explains, and we agree, that Hapka
`describes that system 36 on a given vehicle receives an update message, and
`that the combined teachings of Hapka and Parrillo suggest a system in which
`a discrete patch message would be received by system 36 (at least one
`discrete patch message). Id. Petitioner also provides persuasive reasons
`why a person having ordinary skill in the art would have understood that
`Hapka’s engine control system 36 was configured to incorporate the
`received information from computer 12 to modify the current algorithm
`executed by control system 36, which controls operations of engine 3. Id. at
`49 (citing Ex. 1008, 3:65–4:4, 8:32–61; Ex. 1002 ¶ 238).
`We also are persuaded by Petitioner’s showing that although Hapka
`does not explicitly disclose that the modification to the existing algorithm is
`
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`IPR2018-01553
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`a partial update and not a wholesale replacement, it would have been
`obvious to a person having ordinary skill in the art, in light of Parrillo, to
`provide a patch to a portion of the
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