Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 5, 2020
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`
`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
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 5, 2020
`
`
`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
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2020-00116
`Patent 9,871,671 B2
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`
`I. INTRODUCTION
`Dataspeed Inc. (“Petitioner”) filed a Petition under 35 U.S.C. § 311
`requesting inter partes review of claims 1–19 of U.S. Patent No. 9,871,671
`B2 (Ex. 1001, “the ’671 patent”). Paper 1 (“Pet.”). Sucxess, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary Response shows that “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The
`Supreme Court has held that under 35 U.S.C. § 314, we may not institute
`review of fewer than all claims challenged in the petition. SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Having considered the arguments and the associated evidence
`presented in the Petition, for the reasons described below, we institute inter
`partes review.
`
`II. BACKGROUND
`
`A. Real Party-in-Interest
`Petitioner states that it, Dataspeed Inc., is the sole real party-in-
`interest. Pet. 2.
`
`B. 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,
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`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.
`
`C. 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.
`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.
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`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
`message originating from emergency call apparatus 214 even though it may
`not have been designed for this purpose.” Id. at 10:3–7.
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`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.
`
`D. 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 elements in brackets.
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`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.
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`35 U.S.C. §
`
`References
`
`E. Prior Art and Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds under 35 U.S.C. § 103
`(Pet. 3):
`Challenged
`Claims
`1–15, 19
`
`§ 1031
`
`Munoz2 or Munoz, Negley3,
`SAE4, and Bosch5
`Munoz or Munoz, Negley,
`SAE, Bosch, and Lobaza6
`Dietz7, Negley, SAE, and
`Bosch
`Dietz, Negley, SAE, Bosch,
`and Lobaza
`Petitioner relies on the Declaration of Robert Leale (Ex. 1003) to support the
`Petition. Pet. 1.
`
`16–18
`
`1–15, 19
`
`16–18
`
`§ 103
`
`§ 103
`
`§ 103
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
`’671 patent has an effective filing date prior to the effective date of the
`applicable AIA amendment, we refer to the pre-AIA version 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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`III. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`Petitioner contends a person of ordinary skill in the art (“POSITA”)
`would have a bachelor’s degree in engineering with relevant coursework, or
`at least two years of work experience in the design, operation, and
`functioning of Controller Area Network (“CAN”) systems. Pet. 12 (citing
`Ex. 1003 ¶ 51).
`Patent Owner disputes Petitioner’s position regarding the level of
`ordinary skill in the art and contends that a POSITA would have at least a
`bachelor’s degree in electrical engineering and eight years of work
`experience with vehicle communication networks, 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. Prelim.
`Resp. 10. According to Patent Owner, although Petitioner’s proposed
`POSITA may be trained to perform the method claimed in the ’671 patent,
`that does not make the person a POSITA, because “[a]n inexperienced
`engineer or an uneducated technician will not appreciate the prior art,
`including art that teaches away from the invention.” Prelim. Resp. 12–13.
`On the present record, we do not agree with Patent Owner’s proposed
`level of ordinary skill in the art. Patent Owner’s arguments for a high level
`of skill in the art (requiring a bachelors degree and eight years of
`experience) is not reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995). Based on the limited record before us, we find
`that Petitioner’s statement of the level of ordinary skill reflects the level art
`of record in part, except for the reference to “at least” and the amount of
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`education and work experience equivalent to an engineering degree with
`relevant coursework. Pet. 12. We determine from the level of skill reflected
`in the prior art of record that an ordinarily skilled artisan requires a
`bachelor’s degree or some post-secondary education along with experience
`in the relevant field or an engineering degree with relevant coursework.
`Accordingly, at this stage and for the purposes of this Decision, we
`determine that a person of ordinary skill in the art would have a bachelor’s
`degree in engineering with relevant coursework or post-secondary education
`(Bachelor’s or associate degree) and four years of work experience in the
`design, operation, and functioning of CAN systems.
`
`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).
`
`Petitioner proposes constructions for the terms “data bus,” “adding a
`second data bus,” and “responds.” Pet. 7–12. Patent Owner contends that
`no claim terms need to be construed at this stage. Prelim. Resp. 6. 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
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`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
`(citing Ex. 1003 ¶ 59). Patent Owner contends that “[t]here 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.” Prelim. Resp. 6.
`At this stage in the proceeding, we do not expressly construe “data
`bus.” The parties are encouraged to develop the record regarding the scope
`and meaning of “data bus” during trial. See, e.g., Ex. 1001, Fig. 3; see also
`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). Patent
`Owner contends that “Petitioner’s construction is overly broad, but does not
`necessarily cause a controversy that requires resolution by the Board at this
`time.” Prelim. Resp. 7. Although Patent Owner concedes that “[a] second
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`data bus does add a communication channel,” they dispute that every
`communication channel is a data bus.
`At this stage in the proceeding, we do not expressly interpret “adding
`a second data bus.” See Nidec Motor Corp., 868 F.3d at 1017.
`
`3. “Responds”
`Dependent claim 12 recites “the factory-installed first apparatus
`responds to the second message originating from the retrofit apparatus as if
`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, but sees no need to
`construe this term.
`At this stage in the proceeding, we do not expressly interpret
`“responds” as recited in claim 12.
`
`C. Munoz
`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
`it’s 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.
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`Ex. 1007.
`
`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.
`
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`D. Negley
`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.
`
`E. SAE
`SAE discloses that the CAN protocol “offers a comprehensive
`solution to managing communication between multiple CPUs,” using
`message identifiers. Ex. 1009, 29.
`
`F. Bosch
`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.
`
`G. 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
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`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) in support. Pet. 18–41. Patent Owner’s arguments address
`certain individual claims. Prelim. Resp. 16–28. We address the parties’
`contentions regarding claim 1 below.
`
`1. Motivation to Combine & Background References
`Petitioner provides 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
`CAN protocol); Ex. 1010, 6–16, 38–51, 58 (discussing messaging over
`CAN).
`At this stage in the proceeding and for the purposes of institution, we
`determine that Petitioner has provided sufficient rationale for combining the
`teachings of Munoz, Negley, SAE, and Bosch.
`In addition to combining the Munoz, Negley, SAE, and Bosch
`references, at this stage of the proceeding, 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).
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`We address Munoz alone with Negley, SAE, and Bosch as
`background knowledge and the combination of Munoz, Negley, SAE, and
`Bosch with respect to claims 1–15 and 19.
`
`2. Claim 1
`a. [1.p] A method comprising
`Petitioner contends Munoz discloses a “method of adding a retrofit
`device to a vehicle.” Pet. 18 (citing Ex. 1004, 1:41–57). Patent Owner does
`not contest Petitioner’s showings regarding the preamble, and for the
`purposes of institution, we determine that Petitioner provides sufficient
`evidence that Munoz teaches the preamble.
`
`b. [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 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 1st 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).
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`Based on the record at this stage, we determine that Petitioner
`provides sufficient evidence that Munoz, Negley, Bosch, and SAE in
`combination or Munoz in view of knowledge of Negley, SAE, and Bosch
`teach limitation 1.1.
`
`c. [1.2] electrically disconnecting the vehicle data bus between the
`factory-installed first apparatus and the factory-installed second
`apparatus
`Petitioner contends that the annotated Figure 1 of Munoz, reproduced
`above, discloses this limitation because Munoz’s “[s]witch 120, when open,
`terminates the connection between the 1st factory-installed apparatus 110
`and the [second] factory-installed apparatus 105.” Pet. 23 (citing Ex. 1003
`¶¶ 139–145, 154; Ex. 1004, 6:32–36; Fig. 1). Patent Owner does not contest
`Petitioner’s showings, and for the purposes of institution, we determine that
`Petitioner provides sufficient evidence at this stage of the proceeding that
`Munoz teaches this limitation.
`
`d. [1.3] adding a second data bus to the vehicle
`Petitioner contends that Munoz adds second data bus “B” to the
`vehicle as show in annotated Ex. 1007. Pet. 24 (citing Ex. 1004, 6:32–36;
`Ex. 1003 ¶¶ 139, 142, 155; Ex. 1007).8 Patent Owner disagrees with
`Petitioner’s characterization of Munoz’s Figure 1 and offers an alternative
`interpretation, reproduced below.
`
`
`8 Ex. 1007 is Petitioner’s annotated Figure 1 of Munoz, reproduced above.
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`Prelim. Resp. 18. Patent Owner’s annotated Figure 1 of Munoz includes
`labels, in red, that explain Patent Owner’s understanding of how this figure
`should be interpreted. Prelim. Resp. 18. Specifically, Patent Owner asserts
`that Petitioner’s elements “A” and “B” are part of the same bus as denoted
`by Patent Owner’s “Internal Connection. Prelim. Resp. 18. According to
`Patent Owner, this depiction is consistent with Munoz’s disclosure that “all
`communication has to go through the roof control module.” Prelim. Resp.
`18.
`
`Patent Owner’s arguments do not negate the Munoz teachings that the
`data connection is routed through the retrofit control module Petitioner cites
`in Figure 1 of Munoz. Pet. 23; Ex. 1004, 6:32–36; Ex. 1007. At this stage
`and on the current record, Petitioner presents sufficient argument and
`evidence that Munoz teaches the limitation for adding the second bus as
`recited in claim 1. Pet. 23–24; Ex. 1004, 6:32–36; Ex. 1003 ¶¶ 139, 142,
`155.
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`e. [1.4] electrically connecting a retrofit apparatus to the vehicle data
`bus and to the second data bus
`Petitioner contends the annotated Figure 1 of Munoz, reproduced
`above, teaches this limitation because Munoz’s “roof control module 100 is
`connected to both the vehicle data bus ‘A’ and to the second vehicle data bus
`‘B’ and is disclosed as an aftermarket automobile device.” Pet. 24 (citing
`Ex. 1003 ¶¶ 128–132, 137–139, 157; Ex. 1004, 3:7–12, 3:50–4:33; Fig. 1).
`Patent Owner asserts that because Munoz does not teach a second data bus,
`Munoz does not teach connecting a retrofit apparatus to the second data bus.
`Prelim. Resp. 19.
`On the present record, we find that Petitioner has provided sufficient
`evidence and argument regarding the electrical connection of the data bus in
`Munoz. Accordingly, we determine that Petitioner provides sufficient
`evidence at this stage of the proceeding that Munoz teaches limitation 1.4.
`
`f. [1.5] electrically connecting the factory-installed first apparatus to
`the second data bus
`Petitioner contends that Munoz shows this step in Figure 1, wherein
`factory-installed first apparatus 110 is electrically connected to second data
`bus “B.” Pet. 24 (citing Ex. 1004, 6:32–36; Ex. 1003 ¶¶ 134–144, 159).
`Patent Owner asserts that because Munoz does not teach a second data bus,
`Munoz does not teach connecting a factory-installed first apparatus to the
`second data bus. Prelim. Resp. 19.
`We determine that Petitioner provides sufficient evidence at this stage
`of the proceeding that Munoz teaches limitation 1.5.
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`g. [1.6] 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
`Petitioner contends Munoz teaches or suggests transmitting an
`indistinguishable message limitation 1.6 by disclosing that all
`communication passes through the roof control module 100, which a
`POSITA would have understood to include “the identical command from the
`original dashboard 105,” because Munoz’s aftermarket device “allows
`multiple functions to be performed without interfering with vehicle controls
`or requiring additional appurtenances.” Pet. 25–26 (citing Ex. 1003 ¶¶ 143–
`145, 160–161; Ex. 1004, 3:50–4:33, 5:21–26, Fig. 1).
`Patent Owner contends the prior art does not disclose transmitting a
`second message that is indistinguishable from the first message, because
`Munoz discloses “the operation of his Roof Control Module 100 as
`‘removing or altering data exchanged.’” Prelim. Resp. 19–21 (citing Ex.
`1004, Fig. 1). Specifically, Patent Owner argues that removing data is not
`the same as transmitting a second message that is indistinguishable from a
`first message, nor is “altering” data. Prelim. Resp. 20. On the present
`record, Patent Owner’s arguments do not sufficiently undermine Petitioner’s
`evidence that a POSITA would have understood that maintaining pre-
`existing functions from the original vehicle equipment indicates that the
`message is transmitted and sufficiently indistinguishable in operation. See
`Pet. 24–26.
`Based on the record before us, Petitioner presents sufficient evidence
`and argument that an ordinarily skilled artisan would have understood
`Munoz teaches (in combination with Negley, Bosch, and SAE or in view of
`knowledge evidenced by Negley, SAE, and Bosch) that the retrofit apparatus
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`upgrades vehicle functions without compromising existing factory features
`(Ex. 1004, 5:21–26) requires communication between the original
`equipment. Pet. 24–26; Ex. 1003 ¶¶ 143–145, 160, 161. We determine that
`Petitioner provides sufficient evidence at this stage of the proceeding that
`Munoz teaches limitation 1.6.
`
`h. Conclusion: Claim 1
`Based on the record before us, we determine that Petitioner has
`demonstrated a reasonable likelihood that it will succeed in showing the
`claim 1 would have been obvious over Munoz alone or Munoz, Negley,
`Bosch, and SAE.
`
`3. Dependent Claims 2–5
`Petitioner provides a limitation-by-limitation comparison of each of
`claims 2–5. Pet. 26–28. For claim 2, Petitioner contends that “a POSITA
`would understand that the second message from the retrofit control module
`100 employs a message identifier identical to that originally used by the first
`message . . . so that the first factory-installed apparatus 110 (roof
`electronics) would recognize, accept, and act upon the second message.”
`Pet. 26 (citing Ex. 1003 ¶ 163).
`Patent Owner responds for claim 2 that the prior art teaches that
`“assigning the same message identifier to messages originating from two
`different CAN nodes is impermissible.” Prelim. Resp. 22. According to
`Patent Owner, Petitioner does not explain how something directly
`contradicted by the prior art could be obvious, and Patent Owner contends
`Petitioner relies on “unsupported expert testimony tainted by hindsight.”
`Prelim. Resp. 23. On the present record, we do not agree. Patent Owner’s
`arguments for claim 2 do not show how the purported unique identifier
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`conflict Patent Owner identifies is present in the system, in which
`communications for the factory-installed apparatus flow first to the retrofit
`apparatus and then to the factory installed equipment, as Petitioner argues
`Munoz teaches here. See Pet. 26. Accordingly, we find on the present
`record that Petitioner has sufficiently shown that Munoz alone or Munoz,
`Negley, Bosch, and SAE teach the message identifier limitation of claim 2.
`With respect to claim 3, Petitioner contends that Munoz discloses
`receiving the first message in the retrofit apparatus, because Munoz
`discloses that “all communication [from 105 to 110] has to go through the
`[retrofit] roof control module [100].” Pet. 27 (citing Munoz, Fig. 1). For
`claim 4, Petitioner contends that a POSITA would have understood that
`Munoz’s retrofit roof control module 100 would have retransmitted a second
`CAN message, indistinguishable from the first CAN message, to allow
`“factory-installed roof 110 to perform its original, pre-existing features as
`originally programmed.” Pet. 28 (citing Ex. 1003 ¶ 167). Petitioner also
`presents arguments and evidence that Munoz teaches the limitations of claim
`5. Pet. 28.
`Patent Owner does not address Petitioner’s contentions for claims 3
`and 5. For claim 4, Patent Owner asserts that Munoz does not disclose that a
`retrofit apparatus re-transmits messages and that “Petitioner’s argument is
`. . . based on unsupported testimony.” Prelim. Resp. 24–25. Patent Owner
`notes that although Bosch uses the phrase “retransmission,” this refers to the
`same message when an error occurs, not retransmission of a second
`message. Prelim. Resp. 25.
`At this stage and on this record, we determine that Petitioner presents
`sufficient supporting testimony regarding Munoz’s CAN-messaging
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`teaching that a vehicle retrofit device performs “without interfering with
`vehicle controls” and “without compromising existing factory features” such
`that Munoz teaches the re-transmit messaging limitation of claim 4. Ex.
`1004, 5:21–26; Ex. 1003 ¶¶ 126–148, 167. Accordingly, we find that
`Munoz alone or Munoz in combination with Negley, Bosch, and SAE
`teaches the limitations of claim 4. We also determine on this record that
`Petitioner’s provides sufficient argument and evidence that Munoz teaches
`the limitations of claims 3–5.
`
`4. Independent Claim 6
`Independent claim 6 recites, inter alia, “a retrofit apparatus connected
`to the vehicle data bus including a second processor programmed to transmit
`a second message which mimics the first message through a second data
`bus.” Ex. 1001, 11:50–53.
`Petitioner contends that a POSITA would have understood that “a first
`CAN message . . . intended . . . to operate the factory-installed roof 110
`would have been received by the retrofit roof control module 100, and the
`retrofit roof control module 100 would have transmitted a second CAN
`message, indistinguishable from the first CAN message (i.e., a mimic of the
`first message).” Pet. 31 (citing Ex. 1003 ¶ 174). Patent Owner contends the
`prior art does not disclose transmitting a second message that is
`indistinguishable from the first message, because Munoz discloses only
`“removing or altering data.” Prelim. Resp. 25–27 (quoting Munoz, Fig. 1).
`Specifically, Patent Owner argues that removing data is not the same as
`transmitting a second message that mimics a first message, nor is “altering”
`data. Prelim
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