Trials@uspto.gov
`571-272-7822
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`
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`Paper 27
`Date: May 4, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DATASPEED INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`SUCXESS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00116
`Patent 9,871,671 B2
`______________
`
`
`Before TREVOR M. JEFFERSON, MINN CHUNG, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 27
`Date: May 4, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DATASPEED INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`SUCXESS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00116
`Patent 9,871,671 B2
`______________
`
`
`Before TREVOR M. JEFFERSON, MINN CHUNG, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-00116
`Patent 9,871,671 B2
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`
`I. INTRODUCTION
`In this inter partes review, Dataspeed Inc. (“Petitioner”) challenges
`claims 1–19 (“the challenged claims”) of U.S. Patent No. 9,871,671 B2
`(Ex. 1001, “the ’671 patent”) owned by Sucxess, LLC (“Patent Owner”).
`Paper 1 (“Pet.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed herein, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–19 are unpatentable.
`
`A. Procedural History
`Petitioner filed a Petition challenging claims 1–19 of the ’671 patent
`(Pet. 3, 18–65) and Patent Owner filed a Preliminary Response (Paper 11).
`We instituted trial on all grounds of unpatentability. Paper 12 (“Dec.”), 27–
`28.
`
`Patent Owner filed a Response (Paper 17, “PO Resp.”), Petitioner
`filed a Reply (Paper 20, “Reply”), and Patent Owner filed a Sur-reply
`(Paper 21, “Sur-reply”).
`Petitioner submits the Declaration of Robert Leale (Ex. 1003) in
`support of the Petition and Reply. Patent Owner supports its Response and
`Sur-reply with the Declaration of Dr. Mahdi Shahbakhti (Ex. 2028).
`Petitioner also submits the Deposition Transcript of Mahdi Shahbakhti,
`Ph.D. (Ex. 1020) and Patent Owner submits the Deposition Transcript of
`Robert Leale (Ex. 2024).
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`
`A combined oral hearing for this inter partes review and related cases,
`IPR2020-00147 and IPR2020-00268 was held on February 11, 2021, a
`transcript of which appears in the record in each case. Paper 26 (“Tr.”).
`
`35 U.S.C. §
`
`References
`
`B. Instituted Grounds
`We instituted inter partes review of the challenged claims on
`following grounds asserted by Petitioner under 35 U.S.C. § 1031
`(Dec. 7, 27–28):
`Challenged
`Claims
`1–15, 19
`
`§ 103
`
`16–18
`
`1–15, 19
`16–18
`
`§ 103
`
`§ 103
`§ 103
`
`Munoz2 or Munoz, Negley3,
`SAE4, Bosch5
`Munoz or Munoz, Negley,
`SAE, Bosch, Lobaza6
`Dietz7, Negley, SAE, Bosch
`Dietz, Negley, SAE, Bosch,
`Lobaza
`
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’671 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of § 103.
`2 Munoz (US 7,737,831 B2; filed Feb. 6, 2007; issued June 15, 2010).
`Ex. 1004.
`3 Bruce Negley, Getting Control Through CAN, The Journal of Applied
`Sensing Technology, Oct. 2000, vol. 17, no. 10, pages 16–33. Ex. 1006.
`4 Craig Szydlowski, A Gateway for CAN Specification 2.0 Non-Passive
`Devices, SAE Technical Paper Series, 930005, Society of Automotive
`Engineers, Inc. 1993, pages 29–37. Ex. 1009.
`5 Robert Bosch, CAN Specification Version 2.0, Bosch, Sept. 1991.
`Ex. 1010.
`6 Lobaza et al. (US 6,812,832 B2; filed Nov. 26, 2002; issued Nov. 2, 2004).
`Ex. 1014.
`7 Audiotechnik Dietz, Installation/connection manual for multimedia
`interface 1280, March 16, 2005, http:/www.dietz.biz. Ex. 1005.
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`C. Real Party-in-Interest
`Petitioner states that it, Dataspeed Inc., is the sole real party-in-
`interest. Pet. 2.
`
`D. Related Proceedings
`Patent Owner states that two patents in the same family as the ’671
`patent, namely, US 10,027,505 and US 10,454,707 are the subject of five
`district court cases involving Patent Owner and various third parties,
`namely, Sucxess LLC v. AutoX Technologies, Inc., Case No. 1:19-cv-02121
`(D. Del.); Sucxess LLC v. Phantom Auto, Inc., Case No. 1:19-cv-02122 (D.
`Del.); Sucxess LLC v. Pony.ai, Inc., Case No. 1:19-cv-02123 (D. Del.);
`Sucxess LLC v. SF Motors, Inc., Case No. 1:19-cv-02124 (D. Del.); and
`Sucxess LLC v. WeRide Corp., Case No. 1:19-cv-02130 (D. Del.). Paper 8,
`1. Patent Owner also states that Petitioner filed a Petition for review of US
`10,027,505 in IPR2020-00147. Paper 10, 1.
`
`E. The ’671 Patent (Ex. 1001)
`Titled “Method, Apparatus and System for Retrofitting a Vehicle”
`(Ex. 1001, [54]), the ’671 patent states that a vehicle could be retrofitted to
`add, for example, an emergency call apparatus. Ex. 1001, 2:48–49. The
`retrofit apparatus is used to transmit a message on the vehicle data bus. Id.
`at 2:54–57. The ’671 patent states that a retrofit apparatus may be added to
`the vehicle with two data buses, with the first bus used to communicate with
`the original vehicle equipment and the second bus used to communicate with
`the rest of the vehicle. Id. at 3:33–37. With respect to this communication,
`the ’671 patent states that the retrofit apparatus can be configured to mimic
`command messages to enable the original vehicle equipment to perform
`specified functions not originally enabled. Id. at 9:52–10:7.
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`In one embodiment of the ’671 patent, the retrofit apparatus is an
`emergency call apparatus 214 that sends a message to a first apparatus, i.e.,
`telecommunication apparatus 200 as seen in Figure 4, reproduced below.
`
`
`
`Figure 4 illustrates vehicle communication system 400 having
`telecommunication apparatus 200 in communication with vehicle data bus
`212 using an indirect connection through emergency call apparatus 214.
`Ex. 1001, 7:59–63. Emergency call apparatus 214 mimics the dial command
`message by using “the same message identifier segment that has been
`assigned to navigation system 218 when transmitting its telephone dial
`command message.” Id. at 9:63–65. “By sharing the same message
`identifier segment a telephone dial command message originating from
`emergency call apparatus 214 and a telephone dial command message
`originating from navigation system 218 become indistinguishable for the
`telecommunication apparatus 200.” Id. at 9:66–10:3. “Telecommunication
`apparatus 200 hence responds properly to a telephone dial command
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`message originating from emergency call apparatus 214 even though it may
`not have been designed for this purpose.” Id. at 10:3–7.
`Messages to telecommunication apparatus 200 are communicated
`through first and second data buses, as depicted in Figure 7, reproduced
`below.
`
`
`Figure 7 is a block diagram that depicts emergency call apparatus 710.
`
`Ex. 1001, 8:60–61. In Figure 7, control processor 500 communicates with
`telecommunication apparatus 200 through vehicle data bus interface 504 and
`electric terminal 600. Id. at 8:61–64. Control processor 500 also
`communicates with other electronic modules connected to vehicle data bus
`212 through second vehicle data bus interface 700 and electric terminal 602.
`Id. at 8:64–66. “Control processor 500 retransmits any messages it receives
`from vehicle data bus interface 504 through vehicle data bus interface 700
`and any messages it receives from vehicle data bus interface 700 through
`vehicle data bus interface 504, thereby functionally connecting
`telecommunication apparatus 200 with vehicle data bus 212.” Id. at 9:7–13.
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`F. Challenged Claims
`Petitioner challenges claims 1–19 of the ’671 patent. Claims 1, 6, and
`10 are independent claims, and claim 1 is reproduced below with added
`identification of claim limitations in brackets.
`1. [1.p] A method comprising:
`[1.1] providing a vehicle having a factory-installed first
`apparatus including a processor, programmed to communicate
`with a factory-installed second apparatus through a vehicle data
`bus with a first message having an identifier;
`[1.2] electrically disconnecting the vehicle data bus
`between the factory-installed first apparatus and the factory-
`installed second apparatus;
`[1.3] adding a second bus to the vehicle;
`[1.4] electrically connecting a retrofit apparatus to the
`vehicle data bus and to the second data bus;
`[1.5] electrically connecting the factory-installed first
`apparatus to the second data bus; and
`[1.6] transmitting a second message from the retrofit
`apparatus to the factory-installed first apparatus through the
`second bus, the second message being indistinguishable from the
`first message.
`Ex. 1001, 11:18–35.
`
`II. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`Our Decision instituting inter partes review included a preliminary
`determination that a person of ordinary skill in the art (“POSITA”) would
`have had a bachelor’s degree in engineering with relevant coursework or
`post-secondary education (Bachelor’s or associate degree) and four years of
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`work experience in the design, operation, and functioning of CAN systems
`or systems using similar communications protocols. Dec. 8–9; see Pet. 12
`(citing Ex. 1003 ¶ 51). After institution, Petitioner did not contest the level
`of ordinary skill, and Patent Owner “embraced the Board’s guidance” (PO
`Resp. 11–12). Accordingly, we apply the same level articulated in the
`Decision.
`
`B. Claim Construction
`Because the Petition was filed after November 13, 2018, we construe
`claims of the challenged patent using the same claim construction standard
`used to construe claims in a civil action under 35 U.S.C. § 282(b), including
`construing the claims in accordance with the ordinary and customary
`meaning as understood by one of ordinary skill in the art reading the claims
`in light of the intrinsic evidence. 37 C.F.R. § 42.100(b) (2019); see Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
`
`The parties propose constructions for the terms “data bus,” “adding a
`second data bus,” “responds,” and “receives.” Pet. 7–12; PO Resp. 6–10.
`We address the claim construction issues below.
`
`1. “Data bus”
`Independent claim 1 recites “a processor, programmed to
`
`communicate with a factory-installed second apparatus through a vehicle
`data bus,” “electrically disconnecting the vehicle data bus,” and “electrically
`connecting a retrofit apparatus to the vehicle data bus” (emphases added).
`Independent claims 6 and 10 recite substantially similar limitations.
`
`According to Petitioner, “a POSITA would understand a ‘data bus’ to
`refer to ‘a contiguous network providing a communication channel for two
`or more modules,’” when construed in light of the Specification. Pet. 7
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`(citing Ex. 1003 ¶ 59). Patent Owner contends Petitioner’s definition is not
`helpful and that defining “data bus” to be a “contiguous network” is
`confusing. PO Resp. 6. Patent Owner further states that “‘bus’ should be
`construed as defined in the applicable ISO-Standard 11898 as a ‘topology of
`a communication network, where all nodes are reached by passive links
`which allow transmission in both directions.’” PO Resp. 6–7 (citing
`Ex. 2002, 2; Ex. 2028 ¶¶ 21–22).
`We determine it is unnecessary to interpret “data bus,” and we apply
`the term’s plain and ordinary meaning. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(explaining the need to construe only terms that are in controversy and only
`to the extent necessary to resolve the controversy) (citations omitted).
`
`2. “Adding a Second Data Bus”
`Claim 1 also includes the limitation “adding a second bus to the
`vehicle.” Petitioner asserts that this limitation should be construed as
`“adding a second communication channel,” because the Specification does
`not require physical wiring for the second bus, only providing a
`communication channel. Pet. 11 (citing Ex. 1003 ¶¶ 59, 98–105). Petitioner
`states that “a POSITA would understand FIG. 4 and FIG. 7 [of the ’671
`Patent] as disclosing a vehicle data bus 212, and a separate, or second, data
`bus connecting the emergency call apparatus 214 and telecommunication
`apparatus 200.” Pet. 10.
`Patent Owner contends that “[a]dding a second bus” should be
`understood as “adding a second communication network which is
`electrically isolated from an existing first communication network.” PO
`Resp. 9 (citing Ex. 2028 ¶¶ 23–25). Patent Owner acknowledges that “[a]
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`second data bus does add a communication channel, but not every added
`communication channel is necessarily a second data bus,” which makes
`Petitioner's construction overly broad. PO Resp. 7, Ex. 2028 ¶ 23. Patent
`Owner asserts that Figure 4 of the ’671 patent refers to Figure 6 which
`shows the internal wiring of the retrofit apparatus with a switch that isolates
`the BUS1 and BUS2 shown in Figure 6. PO Resp. 8–9; Ex. 1001, 7:63–64.
`We are not persuaded by Patent Owner’s argument and evidence. The
`’671 patent describes the retrofit apparatus of Figure 4 as being further
`explained by both Figures 6 and 7, which are alternative embodiments of the
`retrofit apparatus. See Ex. 1001, 7:63–64, 8:25–27; 8:60–61. Patent Owner
`has not shown that the term “adding a second bus to the vehicle” is limited
`to the embodiment shown in Figure 6, nor has Patent Owner shown that an
`ordinarily skilled artisan would know that adding an electrically isolated
`communication channel was required by the claims. PO Resp. 8–11.
`We agree with Petitioner that in the ’671 patent “adding second data
`bus provides a communication channel between the 1st factory-installed
`apparatus (200) and the retrofit apparatus (214).” Pet. 11 (citing Ex. 1003
`¶¶ 98–105); Ex. 1001, 2:48–53, 6:65–7:24 (discussing adding an electrical
`connection and rewiring to connect retrofit apparatus between two existing
`apparatuses). Based on the record and consistent with the embodiment
`disclosed in Figures 4 and 6 of the ’671 patent, we agree with Petitioner that
`“adding second data bus” should be construed as “adding a second
`communication channel.”
`
`3. “Responds”
`Dependent claim 12 recites “the factory-installed first apparatus
`responds to the second message originating from the retrofit apparatus as if
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`it were the first message which the first processor is programmed to receive
`from the factory-installed second apparatus” (emphasis added). Petitioner
`proposes that “[t]he word ‘responds’ should be interpreted to mean ‘act on,’
`which is consistent with the understanding of a POSITA in the field of CAN
`systems.” Pet. 11 (citing Ex. 1003 ¶ 63; Ex. 1006, 6–7, 13, Fig. 8). Patent
`Owner does not disagree with Petitioner and asserts that no clarification
`from the Board is necessary. PO Resp. 9.
`We do not expressly interpret “responds,” and apply the plain and
`ordinary meaning.
`
`4. “Receives”
`Although Petitioner does not directly advance an interpretation of
`“receives,” Patent Owner contends Petitioner construes the term too broadly
`by advancing the position that a message is received when it arrives in a
`processor’s “Receive Assembly Registers” block. PO Resp. 9–10.
`According to Patent Owner, Petitioner’s implied interpretation would mean
`that all nodes on a network receive all messages, such that “receiving a
`message” would be meaningless to differentiate nodes. PO Resp. 7, 10.
`Patent Owner asserts that consistent with Negley’s description of message
`receipt, “receive” in the context of the claims should be construed as
`“accept” because it “indicates, in the case of [a CAN bus], an acceptance of
`a message in a device’s receive register.” PO Resp. 10–11 (citing Ex. 2024,
`25:23–26:5 (Deposition of Mr. Leale)); Ex. 2028 ¶ 27. Patent Owner further
`argues that this construction is consistent with Negley’s discussion of node
`buffers and filters that determine which messages to receive (Ex. 1006, 15)
`and Munoz that recites in its claims a device configured to receive input
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`signals (Ex. 1004, 8:22–23, 9:59–60). PO Resp. 10–11. Petitioner does not
`respond directly to Patent Owner’s contention. See Reply.
`We are not persuaded by Patent Owner’s argument with respect to
`“receive.” Patent Owner’s declarant cites Negley’s Figure 8, which depicts
`the CAN bus acting on bus messages. Ex. 2028 ¶ 27. Figure 8 in Negley
`expressly states that “[e]very active node reads every message transmitted
`on the [CAN] bus” and “[w]hen a node receives a message and determined
`that there are no errors . . . the identifier . . . is checked to determine if the
`message should be acted on.” Ex. 1006, 11 (Fig. 8). Thus, Negley describes
`“receive” as part of a process for CAN controllers to “us[e] masks, filters,
`and interrupts to minimize message processing requirements.” Ex. 1006, 12
`(describing Figure 8). Patent Owner has not provided sufficient argument
`and evidence that a person of ordinary skill in the art would understand
`“receive” as recited in the claims in view of the intrinsic evidence to mean
`acceptance of a message in a device’s receive register. PO Resp. 10–11.
`The intrinsic evidence does not limit “receive” as recited in the claims to the
`specific “receive register” that Patent Owner’s declarant testifies allows the
`microcontroller to act on the received message. Ex. 2028 ¶ 27.
`Patent Owner’s argument construes “accept” to indicate that the
`microcontroller acts upon a message after certain masks or filters have
`passed the message. Ex. 2028 ¶ 27; PO Resp. 10–11 (citing Ex. 1006, 11
`(Fig. 8)). However, Figure 8 of Negley also states that “every active node
`reads every message” and describes the processing as a node “receiv[ing] a
`message.” Ex. 1006, 12 (Fig. 8). Thus, we are not persuaded that the ’671
`patent’s discussion of “configured to receive” or “programmed to receive”
`(Ex. 1001, 2:25, 9:40, 9:53, 9:56, 11:47, 12:12, 12:25 12:30) indicates that
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`the claim term “receive” requires microcontroller action to deem a CAN bus
`message received. Ex. 2028 ¶ 27.
`We do not expressly interpret “receives,” and apply the plain and
`ordinary meaning.
`
`C. Asserted References
`1. Munoz (Ex. 1004)
`Munoz discloses “control devices that interface with automobile
`computers in order to control multiple automobile systems.” Ex. 1004, 1:9–
`10. Specifically, Munoz discloses “an after-market automobile device that is
`seamlessly integrable to factory automobile networks such as CAN-bus and
`[its] ECU systems and allows multiple convenience and performance
`enhancements to be controlled through factory controls and displayed on
`factory displays.” Ex. 1004, 3:7–12. Munoz’s Figure 1 is provided below
`with annotations added by Petitioner.
`
`Ex. 1007.
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`Munoz’s Figure 1 is a flow chart that illustrates the operation of roof
`
`control module 100. Ex. 1004, 6:26–30. Figure 1 depicts that switch 120
`connects vehicle factory dashboard electronics and controls 105 to Roof
`Control Electronics 110 via Roof Control Module 100, such that the factory
`data connection is routed through the Roof Control Module 100. Ex. 1004,
`6:32–36. Munoz discloses that the device improves over other systems by
`operating using only the factory display such that messages to “operate and
`adjust the device's features and settings are displayed on the vehicle’s
`factory display.” Id. at 3:43–47. Munoz explains that by using the device,
`“the user may control multiple additional functions and operations,
`integrated by the device, without the need for additional displays.” Id. at
`3:47–49.
`
`2. Negley (Ex. 1006)
`Negley discloses that a Controller Area Network (“CAN”) is a
`protocol that “creates a communications path that links all the nodes
`connected to the bus and enables them to talk to one another.” Ex. 1006, 18.
`Negley discloses the CAN protocol uses a message-based data format to
`transfer information from one location to another. Id. at 20. Among other
`things, Negley describes that all messages have an identifier field and that
`the node uses the identifier to determine whether to accept and act upon an
`incoming message. Id. at 21.
`
`3. SAE (Ex. 1009)
`SAE discloses that the CAN protocol “offers a comprehensive
`solution to managing communication between multiple CPUs,” using
`message identifiers. Ex. 1009, 29.
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`4. Bosch (Ex. 1010)
`Bosch discloses that CAN is a serial communications protocol that
`supports distributed real-time control with a high level of security.
`Ex. 1010, 4. Bosch explains that information on a bus is sent in fixed format
`messages and that the content of a message uses an identifier, so that all
`nodes in a network are able to decide whether the data is to be acted upon by
`them. Ex. 1010, 6.
`
`D. Obviousness over Munoz, Negley, SAE, and Bosch
`Petitioner contends that Munoz alone or in combination with Negley,
`SAE, and Bosch teaches the limitations of claims 1–15 and 19. Pet. 18–41.
`Petitioner provides a limitation-by-limitation comparison of each of claims
`1–15 and 19 to Munoz and states to the extent that certain limitation are “not
`clearly disclosed by Munoz when viewed in light of the knowledge
`possessed by a POSITA, it would have been obvious to complement
`Munoz’s teachings with the standard CAN bus teachings of Negley, SAE,
`and Bosch.” Pet. 20–21. Petitioner also cites to the Declaration of Robert
`Leale (Ex. 1003) to support their obviousness grounds. Pet. 18–41. We
`address the parties’ contentions regarding claim 1 below.
`
`1. Motivation to Combine & Background References
`Petitioner provides sufficient support for the motivation to combine
`the teachings of Munoz, Negley, SAE, and Bosch. Pet. 21–22. Petitioner
`argues that a POSITA would have understood that the ECU and CAN bus
`features of Munoz are supported by the CAN protocol teachings of Negley,
`Bosch, and SAE. Pet. 19–20; Ex. 1003 ¶¶ 133–145; Ex. 1006, 7 (discussing
`sensor nodes on CAN including a microcontroller); Ex. 1009, 3 (discussing
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`CAN protocol); Ex. 1010, 6–16, 38–51, 58 (discussing messaging over
`CAN).
`In addition to combining the Munoz, Negley, SAE, and Bosch
`references Petitioner also provides sufficient testimony and argument to rely
`on the Negley, SAE, and Bosch references to support the knowledge that
`skilled artisans would have brought to bear on the prior art functions of CAN
`systems (Pet. 15–17, 19–22). See Randall Mfg. v. Rea, 733 F.3d 1355, 1362
`(Fed. Cir. 2013); see also Ariosa Diagnostics v. Verinata Health, Inc., 805
`F.3d 1359, 1365–66 (Fed. Cir. 2015).
`Patent Owner argues that “[a] POSITA, having studied Munoz and
`being familiar with the operation of a CAN bus as disclosed in Bosch,
`Negley and SAE, would not have been enabled to implement Munoz’s ‘open
`roof while driving’ feature.” PO Resp. 21 (citing Ex. 2028 ¶ 36). Patent
`Owner relies heavily on additional information showing the purported
`implementation of Munoz’s invention in vehicles as shown in YouTube
`videos. PO Resp. 21–31; Ex. 2028 ¶¶ 36–44; Ex. 2030. We do not agree
`with Patent Owner that Munoz’s teachings are compromised by Patent
`Owner’s evidence regarding a single implementation method described in
`Ex. 2030 and Ex. 2028 ¶¶ 36–44. Accordingly, Petitioner provides
`sufficient argument and evidence to support the combination of Munoz,
`Negley, SAE, and Bosch.
`
`E. Petitioner’s Expert Alleged Bias
`Patent Owner asserts that we should discount Mr. Leale’s declaration
`because, according to Patent Owner, Mr. Leale he has an interest in the
`outcome of the litigation because he may have practiced the claims of the
`’671 patent. PO Resp. 3–4, 14–18. We find this argument unavailing.
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`During his deposition, Patent Owner’s counsel asked Mr. Leale
`whether he had installed retrofit devices and spoofed CAN messages.
`Ex. 2024, 107:6–20, 111:23–112:22. Patent Owner contends Mr. Leale’s
`testimony suggests that “Mr. Leale is a likely infringer” (PO Resp. 15) and
`that “Mr. Leale’s testimony . . . makes clear that he stands to personally
`benefit if the ’671 patent is found invalid” (PO Resp. 18). Mr. Leale
`provided his declaration testimony before he was put in “fear that he would
`be sued by Patent Owner” (Prelim. Resp. 14), and Mr. Leale’s deposition
`responses do not establish that the declaration testimony should be
`discounted in this case. Furthermore, Patent Owner’s deposition objections
`(PO Resp. 15–17; Ex. 2024, 109:8–111:8) do not support discounting
`Mr. Leale’s testimony. We also note that Patent Owner’s evidence does not
`establish that Mr. Leale was aware of the alleged infringement when he
`provided his sworn declaration. See PO Resp. 15–17. We are not persuaded
`by Patent Owner’s argument that Mr. Leale is personally biased, and we
`give Mr. Leale’s testimony due weight.
`
`F. Munoz Fails to Teach
`Patent Owner argues that Munoz alone or in combination fails to
`teach the limitations of the claims in general because Munoz contains
`numerous differences from the ’671 patent. PO Resp. 32–38 (arguing that
`Munoz’s disclosure implements a different scheme). Specifically, Patent
`Owner bases its arguments on implementation of the Munoz-based retrofit
`product in the Volkswagen Eos automobile. See Ex. 2030; Ex. 2028 ¶¶ 51–
`55.
`
`Patent Owner argues that the implementation shown in Ex. 2028
`¶¶ 51–55 demonstrates that Mr. Leale’s testimony is wrong regarding the
`
`17
`
`
`
`IPR2020-00116
`Patent 9,871,671 B2
`
`teachings of Munoz. PO Resp. 38–40; see Ex. 2028 ¶ 60 (“[I]t is my
`opinion that Munoz’s invention had been demonstrated in a VW Eos. My
`further analysis is therefore based on that vehicle.”).
`We disagree with Patent Owner that an implementation of the Munoz
`retrofit device in a specific vehicle demonstrates the differences between the
`teachings of Munoz and the ’671 patent. See PO Resp. 32. Patent Owner’s
`evidence does not tie the implementation shown in Ex. 2030 to the
`disclosure in the Munoz patent reference, and the reference is not limited to
`the specific implementation Patent Owner cites. Patent Owner’s reliance on
`the implementation in Ex. 2030 is misplaced, as it does not address
`sufficiently the teachings from the Munoz reference, or show that an
`ordinarily skilled artisan would have known that Munoz was limited to such
`an implementation or would have been viewed through the specific vehicle
`implementation shown in Exhibit 2030.
`Based on the full record, we are not persuaded by Patent Owner’s
`arguments based on the implementation of Exhibit 2030 that Munoz fails to
`disclose certain limitations of the ’671 patent. PO Resp. 33–34; Ex. 2028
`¶ 51. Indeed, Patent Owner’s arguments are based solely on the specific
`implementation of Munoz, such as assuming that Munoz’s implementation
`shows a pass through of messages and that the original data connection is
`maintained creating a single common bus. PO Resp. 36–38; Ex. 2028 ¶¶ 40,
`54, 56, 81–95, 103–105; Reply 5–6. Munoz’s demonstration of a specific
`vehicle implementation does not persuasively address the teachings of
`Munoz patent reference in Exhibit 1004. We address Patent Owners specific
`arguments based on the implementation of Munoz below.
`
`18
`
`
`
`IPR2020-00116
`Patent 9,871,671 B2
`
`
`1. Claim 1
`a. [1.p] A method comprising [1.1] providing a vehicle having a factory-
`installed first apparatus including a processor, programmed to
`communicate with a factory-installed second apparatus through a
`vehicle data bus with a first message having an identifier
`Petitioner contends Munoz discloses a “method of adding a retrofit
`device to a vehicle.” Pet. 18 (citing Ex. 1004, 1:41–57). Petitioner contends
`Munoz teaches limitation 1.1 with its disclosures relating to Munoz’s vehicle
`with a factory-installed first apparatus 110 programmed to communicate
`with a factory-installed second apparatus 105 through vehicle data bus 115.
`Pet. 18 (citing Ex. 1004, Fig. 1). According to Petitioner, based on the
`teachings of “Negley, Bosch, and SAE, a POSITA would have known that
`CAN message protocols use message identifier bits and a bus message
`transmitted by the [second] factory-installed apparatus 105 to the [first]
`factory-installed apparatus 110 would have constituted a ‘first message
`having an identifier’ of claim 1.” Pet. 20 (citing Ex. 1003 ¶¶ 133–145); see
`Ex. 1006, 7 (discussing sensor nodes on CAN including a microcontroller);
`Ex. 1009, 3 (discussing CAN protocol); Ex. 1010, 6–16, 38–51, 58
`(discussing messaging over CAN).
`Patent Owner asserts that
`Munoz does not disclose any communication between the
`original dashboard 105 and the roof control electronics 110.
`Munoz describes Fig. 1 as “105 illustrates the vehicle factory
`dashboard electronics and controls that are used to control Roof
`Control Electronics 110.” Ex. 1004, 6:28–30. That the original
`vehicle dashboard electronics 105 is used to control the original
`roof electronics 110 as part of Munoz’s invention after the
`retrofit does not indicate that the two communicated with one
`another before the retrofit. See Ex. 2028, ¶65.
`
`19
`
`
`
`IPR2020-00116
`Patent 9,871,671 B2
`
`PO Resp. 41. Thus, Patent Owner’s argument asserts that controls for the
`Roof Control Electronics of Munoz are directly connected to the roof control
`electronics and not to CAN bus. PO Resp. 35, 40–42. In other words,
`Patent Owner argues that the implementation shown in Ex. 2030 and other
`2007 model year vehicles show that factory cabriolet tops were hardwired to
`the equivalent of Munoz’s original roof electronics as they are in the
`Volkswagen implementation. PO Resp. 42–44
`
`Patent Owner’s argument ignores the express disclosure in Munoz
`that the controls for the Roof Control Electronics 110 are in the dashboard
`105, not directly connected to Roof Control Electronics 110. Ex. 1004,
`6:26–30. Patent Owner’s arguments and Dr. Shahbakhti’s testimony
`(Ex. 2028 ¶ 65) are based on the single implementation shown in Ex. 2030
`(Ex. 1020, 39:1–40:22) without addressing Munoz’s express teachings
`regarding the location of the original controls and their continued use after
`the retrofit. Reply 19 (citing Ex. 1004, 1:55–60; 3:10–12; 3:18–21; 3:34–36;
`3:43–45; 3:49–50; 4:25–26; 4:56–59; 5:21–26).
`Patent Owner’s arguments are also based on the assertion that Munoz
`uses hardwired or direct controls between the dashboard and the controls for
`the Roof Control Electronics 110 before the Munoz retrofit is installed
`between these devices. PO Resp. 41–42. Because of this direct control,
`Patent Owner concludes that there is no communication between the original
`dashboard 105 and the roof control electronics 110 and therefore no “first
`message.” Id. at 38, 41 (citing Ex. 2028 ¶ 55). See Reply 19–20. We
`disagree with Patent Owner. We credit Petitioner’s argument and evidence
`that a “first message” from the dashboard 105 is sent to control the Roof
`Control Electronics 110 to open or close the roof, and this same “first
`
`20
`
`
`
`IPR2020-00116
`Patent 9,871,671 B2
`
`message” is sent to the Roof Control Module 100 via bus “A” after Munoz’s
`retrofit is installed. Pet. 24–26.
`We are not persuaded by Patent Owner’s arguments that
`implementation in particular vehicles (Ex. 2030) with a direct wired
`connection between the dashboard and roof controls demonstrates that
`Munoz’s first message and second messages are not implemented. PO Resp.
`36–40, 42–44. Patent Owner has not persuasively shown that the wiring of
`the “open/close roof button” in Exhibit 2030 or other vehicles demonstrates
`that Munoz does not teach a first message. PO Resp. 42–44. Petitioner has
`shown persuasively that
`a POSITA would have understood that when the aftermarket
`functionality is disabled, a first CAN message sent from the
`original dashboard 105 intended for the original electronics to
`operate the factory-installed roof 110 would have been received
`by th
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