`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`DATASPEED INC.,
`
`Petitioner,
`
`v.
`
`SUCXESS LLC,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00116
`
`Patent 9,871,671
`
`____________
`
`PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`Declaration of Maxwell Goss in Support of Motion to Appear Pro
`
`Hac Vice on behalf of patent owner Sucxess LLC
`
`2002
`
`ISO 11898-1, Road vehicles – Controller area network (CAN) –
`
`Part 1: Data link layer and physical signalling, First edition 2003-
`
`12-01 ("ISO")
`
`2003
`
`Denton, Tom. Advanced automotive fault diagnosis. Oxford
`
`Burlington, MA: Butterworth-Heinemann, 2006 ("Denton")
`
`2004
`
`BAE Systems, Inc., Job posting "Vehicle Systems Architect",
`
`retrieved from https://jobs.baesystems.com/global/en/job/56889BR
`
`on 02-Jan-2020
`
`2005
`
`Fiat Chrysler Automobiles, Job posting "Electrical Technician",
`
`retrieved from https://careers.fcagroup.com/job/10316315/ on 02-
`
`Jan-2020
`
`
`
`
`
` i
`
`
`
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`The '671 patent ................................................................................................. 1
`
`III. Summary of the argument ................................................................................ 3
`
`IV. Claim construction ............................................................................................ 5
`
`A.
`
`"data bus" ....................................................................................................... 6
`
`B.
`
`“adding a second data bus” ........................................................................... 6
`
`C.
`
`“responds” ...................................................................................................10
`
`V.
`
`Person having ordinary skill in the art ............................................................10
`
`VI. Ground 1: The Claims are not obvious over Munoz alone or in combination
`
`with Negley, SAE, and Bosch. .................................................................................13
`
`A.
`
`Independent Claim 1 ...................................................................................16
`
`1. Munoz does not teach adding a second data bus. ....................................16
`
`2. Munoz does not teach connecting a retrofit apparatus to the vehicle bus
`
`and the second data bus. ...................................................................................19
`
`3. Munoz does not teach connecting the factory-installed first apparatus to
`
`the second data bus. .........................................................................................19
`
` ii
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`4. Munoz does not teach transmitting a second message being
`
`
`
`
`indistinguishable from a first message. ............................................................19
`
`B. Dependent Claim 2: Munoz fails to teach that the second message uses the
`
`identifier of the first message. ..............................................................................22
`
`C. Dependent Claim 4: Munoz fails to teach wherein the retrofit apparatus re-
`
`transmits messages received on the vehicle data bus to the factory-installed first
`
`apparatus through the second data bus. ...............................................................24
`
`D.
`
`Independent Claim 6 ...................................................................................25
`
`1. Munoz fails to teach a retrofit apparatus connected to the vehicle data bus
`
`including a second processor programmed to transmit a second message that
`
`mimics the first message through a second data bus. ......................................25
`
`E.
`
`Independent Claim 10 .................................................................................27
`
`1. Munoz fails to teach a retrofit apparatus, operatively connected to the
`
`vehicle data bus, including a second processor programmed to send a second
`
`message having the same message identifier. ..................................................27
`
`VII. Ground 2: Claims 16-18 Are not obvious over Munoz in combination with
`
`Negley, SAE, Bosch, and Lobaza. ...........................................................................28
`
`VIII. Ground 3: Claims 1-15 and 19 are not obvious over Dietz in combination
`
`with Negley, SAE, and Bosch. .................................................................................28
`
` iii
`
`
`
`
`
`
`A.
`
`Case IPR2020-00116
`Patent 9,871,671
`Independent Claim 1 ...................................................................................31
`
`
`
`
`1. Dietz fails to teach adding a second data bus to the vehicle. ...................31
`
`2. Dietz fails to teach transmitting a second message from the retrofit
`
`apparatus to the factory-installed first apparatus through the second data bus,
`
`the second message being indistinguishable from the first message. ..............35
`
`B. Dependent Claim 2: Dietz fails to teach wherein the second message uses
`
`the identifier of the first message. ........................................................................36
`
`C. Dependent Claim 4: Dietz fails to teach wherein the retrofit apparatus re-
`
`transmits messages received on the vehicle data bus to the factory-installed first
`
`apparatus through the second data bus. ...............................................................38
`
`D.
`
`Independent Claim 6: Dietz fails to teach a retrofit apparatus connected to
`
`the vehicle data bus including a second processor programmed to transmit a
`
`second message that mimics the first message through a second data bus. ........41
`
`E. Dependent Claim 7: Dietz fails to teach the second message with the same
`
`message identifier as the first message. ...............................................................42
`
`F.
`
`Independent Claim 10 .................................................................................43
`
`1. Dietz fails to teach a retrofit apparatus, operatively connected to the
`
`vehicle data bus, including a second processor programmed to send a second
`
`message having the same message identifier. ..................................................43
`
` iv
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`2. Dietz fails to teach wherein the factory-installed first apparatus
`
`
`
`
`communicates with the retrofit apparatus through a second data bus. ............43
`
`G. Dependent Claim 11: Dietz fails to teach wherein the second message
`
`originating from the retrofit apparatus is indistinguishable to the first apparatus
`
`from the first message which the first processor is programmed to receive from
`
`the second apparatus. ...........................................................................................43
`
`H. Dependent Claim 13: Dietz fails to teach that the factory-installed first
`
`apparatus is electrically disconnected from the vehicle data bus. .......................44
`
`I. Dependent Claim 14: Dietz fails to teach a gateway through which the
`
`factory-installed first apparatus transmits and/or receives messages from the
`
`vehicle data bus. ...................................................................................................44
`
`J. Dependent Claim 15: Dietz fails to teach a retrofit apparatus selectively
`
`suppresses forwarding messages received from the factory-installed first
`
`apparatus to the vehicle data bus. ........................................................................46
`
`IX. Ground 4: Claims 16-18 are not obvious over DIETZ in combination with
`
`Negley, SAE, Bosch, and Lobaza. ...........................................................................46
`
`X. Conclusion ......................................................................................................47
`
`
`
`
`
`
`
` v
`
`
`
`
`
`
`
`
`Cases
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`TABLE OF AUTHORITIES
`
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`
`694 F.3d 1312, 1327 (Fed. Cir. 2012) .................................................................23
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`
`IPR2015-00355 (PTAB, June 26, 2015) ..............................................................15
`
`C & A Potts & Co. v. Creager,
`
`155 U.S. 597, 608 (1895) .....................................................................................13
`
`Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc.,
`
`IPR2013-00439 (PTAB Jan. 16, 2014) ................................................................21
`
`Graham v. John Deere Co.,
`
`383 U.S. 1, 17– 18 (1966) ....................................................................................15
`
`In re GPAC, Inc.
`
`57 F.3d 1573, 1579 (Fed. Cir. 1995) ...................................................................10
`
`KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 406 (2007) .................................................................. 15, 22, 24, 38
`
`Medichem, S.A. v. Rolabo, S.L.,
`
`437 F.3d 1157, 1164 (Fed. Cir. 2006) .................................................................16
`
` vi
`
`
`
`
`
`
`Norgren, Inc. v. ITC,
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`699 F.3d 1317, 1323 (Fed. Cir. 2012) .................................................................44
`
`Par Pharm., Inc. v. TWi Pharms., Inc.,
`
`773 F.3d 1186, 1194 (Fed. Cir. 2014) .......................................................... 16, 20
`
`Richardson v. Suzuki Motor Co.,
`
`868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989) ...........................14
`
`Silver Star Capital,
`
`IPR2016-00736 (PTAB Aug. 26, 2018) ..............................................................21
`
`U.S. v. Adams,
`
`383 U.S. 39, 51-52 (1966) ...................................................................................25
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) ....................................................................... 6
`
`Statutes
`
`35 U.S.C. § 103(a) ...................................................................................................15
`
`Rules
`
`37 C.F.R. § 42.100 ..................................................................................................... 6
`
`37 C.F.R. § 42.104 ...................................................................................................14
`
`37 C.F.R. § 42.65 .............................................................................................. 21, 24
`
`
`
` vii
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`Patent Owner Sucxess LLC ("Patent Owner") submits this Preliminary
`
`Response to the Petition for Inter Partes Review filed by petitioner Dataspeed Inc.
`
`("Petitioner") seeking inter partes review of claims 1-19 of U.S. Patent 9,871,671
`
`(Ex. 1001, "the '671 patent"). The Board should deny the Petition because it fails to
`
`demonstrate a reasonable likelihood that at least one claim is unpatentable under
`
`the proposed grounds, as required by 37 C.F.R. § 42.108(c).
`
`II. THE '671 PATENT
`
`The '671 patent concerns a novel method, apparatus, and system for
`
`retrofitting a vehicle. Claim 10 is representative:
`
`10. A vehicle, comprising:
`
`a factory-installed first apparatus including a first
`
`processor, programmed to receive a first message
`
`via a vehicle data bus from a factory-installed
`
`second apparatus, the first message having a
`
`message identifier; and
`
`a retrofit apparatus, operatively connected to the vehicle
`
`data bus, including a second processor
`
`programmed to send a second message having the
`
`same message identifier,
`
` 1
`
`
`
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`wherein the factory-installed first apparatus
`
`communicates with the retrofit apparatus through a
`
`second data bus.
`
`Ex. 1001, 12:10-21
`
`The '671 patent teaches a retrofit apparatus (exemplified as an emergency
`
`call apparatus) and its use in hacking a vehicle by sending spoofed messages.
`
`Many modern vehicles include a factory-installed first apparatus (e.g., a navigation
`
`system) that is connected to a second factory-installed apparatus (e.g., a
`
`telecommunication apparatus) via a vehicle data bus. To make the vehicle perform
`
`an action not originally enabled by its manufacturer, the '671 patent teaches adding
`
`a retrofit apparatus to the vehicle. Ex. 1001, 2:48-53. The retrofit apparatus sends a
`
`spoofed ("mimicked") message to the first apparatus. See Ex. 1001, 9:59-10:7.
`
`The '671 patent provides detailed instructions on how this spoofing is
`
`accomplished. It illustrates the structure of a vehicle network message (see Ex.
`
`1001, 10:30-35) and specifically discloses using the same message identifier for
`
`the spoofed message as has been assigned to the factory-installed first apparatus
`
`(see Ex. 1001, 9:63-64). The invention disclosed by the '671 patent does so while
`
`accepting possible message collisions, i.e., interference that occurs when two
`
`nodes on a data bus start transmitting at the same time. See Ex. 1001, 10:21-24; Ex.
`
`2002, 38. In a Controller Area Network, message collision is prevented by means a
`
`bitwise arbitration using unique message identifiers. See Ex. 1006, 10. Importantly,
`
` 2
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`the teaching of the '671 patent is a direct violation of the applicable rule,
`
`
`
`
`recognized in the literature of the time, that every message must have a unique
`
`identifier. See Ex. 2002, 38 (International Standard ISO 11898-1, providing that
`
`"[a] data frame with a given identifier and a non-zero DLC may only be initiated
`
`by one node.").
`
`The '671 patent shows block diagrams to teach the internal structure of a
`
`retrofit apparatus that can split an existing data bus into two separate busses and
`
`send spoofed messages. See Ex. 1001, Figs 6,7. The block diagrams are explained
`
`in the specification. Ex. 1001, 8:25-9:13. The '671 patent enables hacking pre-
`
`existing vehicles by providing detailed instructions not found in the prior art.
`
`III. SUMMARY OF THE ARGUMENT
`
`Petitioner asserts that claims 1-15 and 19 are obvious over Munoz alone or
`
`over Munoz in view of Negley, SAE, and Bosch (ground 1) and that claims 16-18
`
`are obvious in further view of Lobaza (ground 2).
`
`Petitioner further asserts that claims 1-15 and 19 are rendered obvious by
`
`Dietz in view of Negley, SAE, and Bosch (ground 3) and that claims 16-18 are
`
`rendered obvious in further view of Lobaza (ground 4).
`
`Petitioner fails to show a reasonable likelihood that Munoz or Dietz alone or
`
`combined with Negley, SAE, Bosch, and Lobaza (collectively, "the Cited
`
`References") render even one claim obvious, for at least two reasons.
`
` 3
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`First, none of Cited References teaches "a second message" that is
`
`
`
`
`indistinguishable from a first message (claim 1), mimics the first message
`
`(claim 6), or has the same message identifier as the first message (claim 10).
`
`Petitioner presents Munoz and Dietz showing installation of respective black
`
`boxes into a vehicle, and unsupported opinion testimony that the black boxes must
`
`obviously send a spoofed message. Yet, none of the Cited References disclose
`
`sending a spoofed message that is indistinguishable from another message, mimics
`
`another message, or has the same message identifier as another message. No
`
`amount of conclusory testimony made in hindsight can change that.
`
`Not only do the Cited References fail to teach a spoofed message, the
`
`applicable standard explicitly prohibits the allegedly obvious and teaches away
`
`from the invention. ISO 11898-1 relates to Controller Area Networks (CAN) and
`
`requires that "[a] data frame with a given identifier and a non-zero DLC may only
`
`be initiated by one node." Ex. 2002, 38. In other words, the relevant standard of the
`
`time required that every vehicle network message must have a unique identifier.
`
`Petitioner is aware of the ISO 11898-1 standard (see Pet. 14) but fails to notice that
`
`it contradicts Petitioner's arguments.
`
`Second, regardless of the "second message" limitations , Petitioner also fails
`
`to establish a reasonable likelihood that Munoz or Dietz, alone or in combination
`
`with Negley, SAE, and Bosch, teach that the second message is sent through "a
`
` 4
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`second data bus." Petitioner assumes a particular internal wiring within Munoz’s
`
`
`
`
`and Dietz's black boxes, but Petitioner's assumption is not supported by the
`
`references.
`
`While the deficiencies mentioned above are each sufficient to foreclose
`
`institution, they are merely examples of the Petition’s recurrent reliance on
`
`conclusory attorney arguments to fill in the limitations missing from the Cited
`
`References. The accompanying opinion testimony essentially does no more than
`
`copy those arguments without adding evidentiary support. The testimony,
`
`therefore, lends no material support to bridge the gaps in Petitioner’s references
`
`and grounds.
`
`Institution of inter partes review should be denied.1
`
`IV. CLAIM CONSTRUCTION
`
`The Petition was filed after November 13, 2018, the date of the Office’s
`
`adoption of the Phillips claim construction standard for IPRs. The claims therefore
`
`must be construed “in accordance with the ordinary and customary meaning of
`
`
`1 Because partial institution is not permitted, this Preliminary Response only
`
`addresses select arguments needed to dispose of Petitioner’s request. In the event
`
`an IPR is instituted, Respondent reserves the right to address each and every
`
`argument of Petitioner and to expand on the considerations raised here as may be
`
`appropriate.
`
` 5
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`such claim as understood by one of ordinary skill in the art and the prosecution
`
`
`
`
`history pertaining to the patent.” 37 C.F.R. § 42.100(b).
`
`Petitioner proposes constructions of three claim terms. Pet., 6-12. However,
`
`no claim terms require construction at this stage. 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.”).
`
`A.
`
`"data bus"
`
`Petitioner proposes claim construction for the "data bus" based on expert
`
`testimony as "a contiguous network providing a communication channel for two or
`
`more modules". Pet., 7. Petitioner's proposed construction does not serve any
`
`discernable purpose. Petitioner defines the data bus as "a contiguous network", but
`
`never uses the term "contiguous" again. There is no need to distinguish a
`
`contiguous network from a discontiguous network and no apparent controversy
`
`regarding the term "data bus" that requires resolution by the Board at this time.
`
`B. “adding a second data bus”
`
`Petitioner asks the Board to construe “adding a second bus” as “adding a
`
`communication channel.” Pet., 11. A second data bus does add a communication
`
`channel, but not every added communication channel is necessarily a second data
`
` 6
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`bus. Petitioner's construction is overly broad, but does not necessarily cause a
`
`
`
`
`controversy that requires resolution by the Board at this time.
`
`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. It is correct that FIG. 4 and FIG. 7 taken together disclose a second
`
`vehicle data bus. Importantly, though, FIG. 4 alone does not teach a second bus.
`
`Only by disclosing the internal wiring of the emergency call (retrofit)
`
`apparatus in FIG. 7 and its associated description in the specification does the '671
`
`patent enable the reader to recognize that there is a separate, or second, data bus.
`
`
`
` 7
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`The second data bus is present only because FIG. 7 shows that BUS1 and BUS2
`
`
`
`
`are wired to separate vehicle data bus interfaces 504, 700:
`
`
`
`The '671 patent recognized the need to teach the internal wiring of the
`
`emergency call (retrofit) apparatus 214 to enable a reader to practice the invention.
`
`FIG. 4 alone does not provide sufficient disclosure to teach a second data bus. The
`
`description of FIG. 4 therefore explicitly refers to FIG. 7. See Ex. 1001, 7:63-64.
`
`In contrast to the retrofit apparatus of FIG. 7, FIG. 6 shows a configuration
`
`in which BUS1 and BUS2 are connected together through a switch 606 so that no
`
`second data bus is formed.
`
` 8
`
`
`
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`
`
`In the configuration of FIG. 6, a second data bus is present only while the
`
`switch 606 has been opened. While switch 606 is closed, the terminals 600 and 602
`
`are wired together and there is no second communication channel, no discontinuity
`
`in the original data bus, and therefore no second data bus.
`
`Petitioner submits that "[t]he addition of the retrofit apparatus between two
`
`existing apparatuses includes rewiring of the existing electrical connections, but
`
`does not expressly require the installation of additional wiring." Pet., 11. Be that as
`
`it may, the addition of a retrofit apparatus between two existing apparatuses alone
`
`does not establish a second data bus. As shown in FIG. 6 of the '671 patent, a
`
`retrofit apparatus can internally connect two bus terminals. Two wires that are
`
`electrically connected to one another through a retrofit apparatus remain part of a
`
`single bus.
`
` 9
`
`
`
`
`
`
`C. “responds”
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`
`Patent Owner does not recognize any disagreement with Petitioner as to
`
`what constitutes "responds" that would require clarification by the Board at this
`
`time.
`
`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART
`
`The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to have known the relevant art at the time of the invention. In re GPAC,
`
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining this skill level, the Board
`
`may consider various factors, including "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." Id. In a given case, every factor may not be present, and one or more factors
`
`may predominate. Id.
`
`Here, a POSITA would have at least a bachelor's degree in electrical
`
`engineering and eight years of work experience with vehicle communication
`
`networks. Alternatively, the POSITA may have a master's degree in electrical
`
`engineering and six years of relevant work experience or a Ph.D. in electrical
`
`engineering and four years of relevant work experience.
`
`The POSITA may, for example, be a Vehicle Systems Architect. A
`
`representative job posting for such a role is submitted as exhibit 2004. The
`
` 10
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`proposed qualification and work experience of a POSITA match the skills required
`
`
`
`
`of a Vehicle Systems Architect by BAE Systems, Inc. in the submitted job posting.
`
`The required qualification and experience reflect the educational level of active
`
`workers in the field and are appropriate to address the type of problems
`
`encountered in the art.
`
`Petitioner's proposed POSITA is significantly less skilled. Petitioner
`
`suggests that a "POSITA at the time of the purported invention would have had a
`
`bachelor’s degree in engineering with relevant coursework, or at least two years of
`
`work experience in the design, operation, and functioning of CAN systems." Pet.,
`
`12, emphasis added. Petitioner suggests that "[a]dditional work experience could
`
`substitute for a bachelor’s degree, and additional education or training could
`
`substitute in part for work experience." Id. The proposed substitution of work
`
`experience for education and vice versa is of no consequence, since Petitioner's
`
`POSITA does not require a bachelor's degree and work experience to begin with.
`
`Petitioner's POSITA can be inexperienced, having a bachelor’s degree in
`
`engineering without any work experience, or uneducated, having two years of
`
`work experience without any formal education.
`
`Petitioner's definition relies on an opinion by its expert Robert Leale that a
`
`POSITA need not be an engineer. Mr. Leale's opinion appears self-serving, given
`
`that his resume does not list any engineering degree. See Ex. 1017. Notably, Mr.
`
` 11
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`Leale does not cite any evidence whatsoever supporting his opinion that the
`
`
`
`
`POSITA’s level of skill mirrors his own qualifications. See Ex. 1003, ¶ 51.
`
`A person without an engineering degree and at least two years of work
`
`experience in the "the design, operation, and functioning of CAN systems" is the
`
`equivalent of a mechanic or a technician trained to perform basic tasks on vehicles
`
`equipped with a CAN bus. Such tasks may include building wiring harnesses,
`
`troubleshooting electrical connections inside vehicles, installing modules in
`
`vehicles, and using a CAN diagnostic tools to follow step-by-step instructions
`
`provided by the tool. The mechanic or technician would have been trained to
`
`complete tasks based on instructions provided by others. She would not be
`
`expected to design a vehicle's CAN bus architecture or the internal circuitry of a
`
`CAN node, as those tasks are typically assigned to persons having an advanced
`
`degree in electrical engineering and substantial relevant work experience. Patent
`
`Owner's understanding is consistent with job postings in the field, for example a
`
`recent posting by Fiat Chrysler Automobiles seeking an Electrical Technician with
`
`a high school diploma or GED and two years of relevant work experience (Ex.
`
`2005).
`
`A technician may be trained to perform the method claimed in the '671
`
`patent, but that does not make the technician a POSITA.
`
` 12
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`An inexperienced engineer or an uneducated technician will not appreciate
`
`
`
`
`the prior art, including art that teaches away from the invention. “The apparent
`
`simplicity of a new device often leads an inexperienced person to think that it
`
`would have occurred to any one familiar with the subject; but the decisive answer
`
`is that, with dozens and perhaps hundreds of others laboring in the same field, it
`
`had never occurred to any one before.” C & A Potts & Co. v. Creager, 155 U.S.
`
`597, 608 (1895). The apparent lack of an engineering degree may so explain the
`
`willingness of Petitioner's expert to declare obvious what none of the Cited
`
`References teach.
`
`VI. GROUND 1: THE CLAIMS ARE NOT OBVIOUS OVER MUNOZ
`ALONE OR IN COMBINATION WITH NEGLEY, SAE, AND
`BOSCH.
`
`Petitioner argues that Claims 1-15 and 19 are rendered obvious by Munoz
`
`alone or in view of Negley, SAE, and Bosch. Pet., 18. However, Negley, SAE, and
`
`Bosch merely provide general background information regarding the function of a
`
`Controller Area Network (CAN) bus. Petitioner obscurely describes this
`
`information as a "lens of knowledge" through which a POSITA might read Munoz.
`
`Pet., 26. By describing it this way, Petitioner appears to admit that Negley, SAE,
`
`and Bosch do not add any limitations missing from Munoz. Hence, Petitioner
`
`believes that "Munoz alone, viewed through the lens of the knowledge of a
`
` 13
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`POSITA informed by Negley, SAE, and Bosch, discloses or suggests all features
`
`
`
`
`of claim 1". Pet., 26, emphasis added.
`
`In contravention of 37 C.F.R. § 42.104, the Petition fails to identify the
`
`specific statutory grounds under 35 U.S.C. §§ 102 or 103 on which the challenge to
`
`the claims is based. But its arguments are exclusively based on the alleged
`
`obviousness of the claims over Munoz alone.2 A claim is unpatentable under 35
`
`U.S.C. § 103(a) if “the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 406 (2007), emphasis added. The question of obviousness is resolved on
`
`the basis of 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 skill in the art; and (4) objective evidence of
`
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383
`
`
`2 Petitioner cannot meet the anticipation standard under Section 102, which would
`
`require Petitioner to prove that Munoz teaches the identical invention as claimed.
`
`See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920
`
`(Fed. Cir. 1989) (holding under pre-AIA Section 102 that “[t]he identical invention
`
`must be shown in as complete detail as is contained in the ... claim.”).
`
` 14
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`U.S. 1, 17– 18 (1966), emphasis added. Petitioner has not done so. Petitioner's
`
`
`
`
`obviousness challenge lacks particularity in that is fails to identify differences
`
`between the claimed subject matter and Munoz.
`
`The Board has held that a failure to identify the differences between the
`
`claimed subject matter and the prior art is fatal to an obviousness challenge. See
`
`Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00355, Decision Denying
`
`Institution of Inter Partes Review, Paper 9 at 9-10 (PTAB, June 26, 2015) (denying
`
`institution for failure to identify the differences between the claimed subject matter
`
`and the prior art).
`
`Even if Petitioner had identified the differences between the claimed subject
`
`matter and the prior art, Petitioner must show that all claimed limitations are
`
`present in the prior art. See Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186,
`
`1194 (Fed. Cir. 2014) (stating that the first question in an obviousness analysis is
`
`whether the patent challenger has “carried its burden to prove that all claimed
`
`limitations are disclosed in the prior art”); Medichem, S.A. v. Rolabo, S.L., 437
`
`F.3d 1157, 1164 (Fed. Cir. 2006) (stating that motivation to combine and
`
`reasonable expectation of success are considered only “if all the elements of an
`
`invention are found in a combination of prior art references”). Here, Petitioner
`
`failed to identify all claimed limitations in the prior art. Specifically, none of the
`
` 15
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`Cited References teach a second data bus or a second message, as required by the
`
`
`
`
`independent claims 1, 6, and 10.
`
`A.
`
`Independent Claim 1
`
`1. Munoz does not teach adding a second data bus.
`
`Petitioner alleges that
`
`Munoz teaches adding a second data bus “B” to the
`
`vehicle that provides a communication path from the
`
`retrofit roof control module 100 to 1st factory-installed
`
`apparatus 110. Munoz, 6:32-36.
`
`Pet., 24. The cited portion of Munoz does not support but rather
`
`contradicts Petitioner’s allegation:
`
`As diagrammed, a switch 120 connects the vehicle
`
`factory dashboard electronics and controls 105 to the
`
`Roof Control Electronics 110 via the Roof Control
`
`Module 100, such that the factory data connection is
`
`routed through the Roof Control Module 100.
`
`Ex. 1004 (Munoz), 6:32-36. Contrary to Petitioner’s characterization,
`
`Munoz explicitly states that his switch 120 connects electronics and controls 105 to
`
`roof control electronics 110 via the roof control module 105. The alleged second
`
`data bus “B” is a segment of a single data bus, connected to the segment “A” by
`
`the switch 120.
`
` 16
`
`
`
`
`
`
`Case IPR2020-00116
`Patent 9,871,671
`Petitioner presents a marked-up copy of Munoz Figure 1, shown below, and
`
`
`
`
`argues that
`
`
`
`[d]uring installation, the retrofit module 100 is connected
`
`to the 2nd factory-installed apparatus 105 via the original
`
`CAN bus, shown above at “A,” and is connected to the
`
`1st factory-installed apparatus 110 by an added second
`
`bus designated “B” above. Leale, ¶¶139-45, 154.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
