Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 25
` Date: May 10, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`DATASPEED INC.,
`Petitioner,
`
`v.
`
`
`
`
`SUCXESS LLC,
`Patent Owner.
`____________
`
`IPR2020-00147
`Patent 10,027,505 B2
`______________
`
`
`Before TREVOR M. JEFFERSON, MINN CHUNG, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 25
` Date: May 10, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`DATASPEED INC.,
`Petitioner,
`
`v.
`
`
`
`
`SUCXESS LLC,
`Patent Owner.
`____________
`
`IPR2020-00147
`Patent 10,027,505 B2
`______________
`
`
`Before TREVOR M. JEFFERSON, MINN CHUNG, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2020-00147
`Patent 10,027,505 B2
`
`
`INTRODUCTION
`I.
`This is a Final Written Decision in an inter partes review challenging
`the patentability of claims 1–16 of U.S. Patent No. 10,027,505 B2
`(Ex. 1101, “the ’505 patent”). We have jurisdiction under 35 U.S.C. § 6.
`For the reasons discussed herein, we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1–16 of the ’505
`patent are unpatentable.
`
`II. BACKGROUND
`
`A. Procedural History
`Dataspeed Inc. (“Petitioner”) filed a Petition under 35 U.S.C. § 311
`requesting inter partes review of claims 1–16 of the ’505 patent. Paper 1
`(“Pet.”). Sucxess LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 9.
`We issued a Decision instituting inter partes review. Paper 10. After
`institution, Patent Owner filed a Response. Paper 15 (“PO Resp.”).
`Petitioner filed a Reply to Patent Owner’s Response. Paper 18 (“Pet.
`Reply”). Patent Owner filed a Sur-Reply to Petitioner’s Reply. Paper 19
`(“PO Sur-Reply”).
`An oral hearing was held on February 11, 2021, and the record
`includes a transcript of the hearing. Paper 24.
`
`B. Real Party-in-Interest
`Petitioner states that it, Dataspeed Inc., is the sole real party-in-
`interest. Pet. 2.
`
`C. Related Proceedings
`The parties state that the ’505 patent is the subject of five district-
`court cases involving Patent Owner and various third parties, namely,
`
`2
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`Sucxess LLC v. AutoX Technologies, Inc., No. 1:19-cv-02121 (D. Del.);
`Sucxess LLC v. Phantom Auto, Inc., No. 1:19-cv-02122 (D. Del.); Sucxess
`LLC v. Pony.ai, Inc., No. 1:19-cv-02123 (D. Del.); Sucxess LLC v. SF
`Motors, Inc., No. 1:19-cv-02124 (D. Del.); and Sucxess LLC v. WeRide
`Corp., No. 1:19-cv-02130 (D. Del.). Paper 8 at 1. Patent Owner also states
`that Petitioner filed a Petition for review of US 9,871,671 in IPR2020-
`00116. Paper 8 at 1.
`
`D. The ’505 Patent (Ex. 1101)
`Titled “Method, Apparatus and System for Retrofitting a Vehicle”
`(Ex. 1101, code (54)), the ’505 patent states that a vehicle could be
`retrofitted to add, for example, an emergency call apparatus. Ex. 1101,
`2:48–49. Among other things, the ’505 patent describes a retrofit apparatus
`in communication with a factory-installed telecommunication apparatus.
`Ex. 1101, 2:14–2:62, 9:47–10:16. In one embodiment disclosed in the ’505
`patent, the retrofit apparatus is an emergency call apparatus that mimics the
`dial command message of a factory-installed apparatus, such as a navigation
`system, by using “the same message identifier segment that has been
`assigned to navigation system 218 when transmitting its telephone dial
`command message.” Ex. 1101, 9:62–65. “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.” Ex. 1101, 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.” Ex. 1101, 10:3–7.
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`Messaging described in the ’505 patent includes Controller Area
`Network (“CAN”) messages. The ’505 patent states that CAN messages
`may consist of an identifier segment of 11 or 29 bits and a data segment
`carrying a message payload of up to 8 bits. Ex. 1101, 10:17–34.
`
`E. Challenged Claims
`Petitioner challenges claims 1–16 of the ’505 patent. Claims 1, 6, and
`10 are independent claims, and claim 1 is reproduced below with added
`identification of claim elements 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] electrically connecting a retrofit apparatus to the
`vehicle data bus; and
`[1.4] transmitting a second message from the retrofit
`apparatus to the factory-installed first apparatus, the second
`message being indistinguishable from the first message.
`
`4
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`F. Prior Art and Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds under 35 U.S.C. § 103:
`Claim(s)
`35 U.S.C. §1
`Reference(s)/Basis
`Challenged
`1–13
`
`103
`
`Munoz2 or Munoz, Negley3,
`SAE4, Bosch5
`Munoz or Munoz, Negley,
`SAE, Bosch, Lobaza6
`Dietz7, Negley, SAE, Bosch
`Dietz, Allen8, Negley, SAE,
`Bosch
`Dietz, Negley, SAE, Bosch,
`Lobaza
`Dietz, Allen, Negley, SAE,
`Bosch, Lobaza
`Allen, Negley, SAE, Bosch
`Lobaza, Allen, Negley,
`SAE, Bosch
`
`14–16
`
`1–13
`1–13
`
`14–16
`
`14–16
`
`6–12
`10, 14–16
`
`
`
`103
`
`103
`103
`
`103
`
`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
`’505 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 18–33. 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, http:/www.dietz.biz. Ex. 1005.
`
`5
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`Petitioner also relies on the Declaration of Robert Leale (Ex. 1103) to support
`the Petition. Pet. 1.
`
`III. 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
`work experience in the design, operation, and functioning of CAN systems
`or systems using similar communications protocols. Dec. 7. After
`institution, Petitioner did not further address the level of ordinary skill, and
`Patent Owner “embraced the Board’s guidance” (PO Resp. 9–10).
`Accordingly, we apply the same level articulated in the Decision.
`
`B. Claim Construction
`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 address construction of the terms “data bus,” “responds,”
`and “receives.” Pet. 6–13; PO Resp. 6–9.
`
`
`8 Allen et al. (US 2007/0016342 A1; filed June 19, 2006; published Jan. 18,
`2007). Ex. 1018.
`
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`1. “Data bus”
`Among other limitations, 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 include
`substantially similar recitations.
`
`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. 6
`(citing Ex. 1103 ¶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. 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. “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 received from the factory-installed second
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`apparatus” (emphasis added). Petitioner proposes that “[t]he word
`‘responds’ should be interpreted to mean ‘act on,’ which, according to
`Petitioner, is consistent with the understanding of a POSITA in the field of
`CAN systems.” Pet. 7 (citing Ex. 1103 ¶ 63; Ex. 1006, 6–7, 13, Figure 8).
`Patent Owner does not disagree with Petitioner’s proposed construction. PO
`Resp. 7.
`We apply the plain and ordinary meaning of “responds,” which is
`consistent with Petitioner’s proposed construction.
`
`3. “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. 7; see Pet. 7–8,
`11–14, 31, 57, 62. According to Patent Owner, Petitioner’s 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.
`Patent Owner contends “receive” should be construed as “accept.”
`PO Resp. 8. Also, citing an overview of CAN-bus messaging in Figure 8 of
`Negley, Patent Owner “construes a message to be received when it has
`passed the Message Filters/Masks block and is accepted in the ‘Receive
`Register’ block so that a microcontroller can act on it.” PO Resp. 7–8
`(citing Ex. 1006 p. 11, Fig. 8; Ex. 2028 ¶¶ 23–24).
`We find nothing in the intrinsic record that supports construing
`“receive” in terms of the message filters/masks block or receive register
`
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`block, and we determine that it is unnecessary to expressly construe
`“receive.” Accordingly, we apply the term’s plain and ordinary meaning.
`
`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
`[its] ECU [(electronic control unit)] 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 copied 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.” Ex. 1004, 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.” Ex.
`1004, 3:47–49.
`
`D. Negley
`Negley discloses that the CAN protocol “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. Ex. 1006, 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. Ex. 1006,
`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.
`
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`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. Petitioner’s Expert’s Alleged Bias
`Patent Owner asserts that we should discount Mr. Leale’s declaration
`testimony because, according to Patent Owner, Mr. Leale has an interest in
`the outcome of the litigation because he may have practiced the claims of the
`’505 patent. PO Resp. 3–4, 12–16. We find this argument unavailing.
`Petitioner filed Mr. Leale’s declaration testimony with its Petition.
`During Mr. Leale’s deposition, Patent Owner’s counsel asked Mr. Leale
`whether had installed retrofit devices and spoofed CAN messages.
`Ex. 2024, 107:6–20, 111:23–112:24.
`Patent Owner contends Mr. Leale’s testimony suggests that “Mr.
`Leale is a likely infringer” (PO Resp. 13) and that “Mr. Leale’s testimony
`. . . makes clear that he stands to personally benefit if the ’505 patent is
`found invalid” (PO Resp. 16). Mr. Leale provided his declaration testimony
`before Mr. Leale was allegedly put in “fear that he would be sued by Patent
`Owner” (PO. 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 declaration
`testimony. We give Mr. Leale’s testimony due weight.
`
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`H. Obviousness over Munoz or Munoz, Negley, SAE, and Bosch
`For its obviousness arguments, Petitioner provides a limitation-by-
`limitation comparison of each of claims 1–13 to Munoz and states that to the
`extent certain limitations 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. 15. Petitioner also cites to the
`Declaration of Robert Leale (Ex. 1103) in support. Pet. 1–67.
`Patent Owner’s arguments address certain individual claims, and
`Patent Owner cites the Declaration of Mahdi Shahbakhti (Ex. 2028) in
`support. PO Resp. 29–53. We address both parties’ arguments in the
`analysis of 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. 15–17. Petitioner
`argues that a POSITA would have understood that by the time of the
`invention of the ’505 patent, use of CAN message identifiers was well
`known and standard in a CAN bus system, and Petitioner contends there
`would have been many reasons to use the same CAN bus message identifier
`for retrofit devices and factory-installed devices in communications intended
`to control other ECUs. Pet. 16 (citing, e.g., Ex. 1103 ¶¶ 53–85). Among
`other things, Petitioner contends the CAN protocol teachings of Negley,
`Bosch, and SAE complement Munoz’s teachings of CAN the protocol.
`Pet. 15–16.
`
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`We determine that Petitioner has provided sufficient rationale for
`combining the teachings of Munoz, Negley, SAE, and Bosch, each of which
`relates to CAN bus systems in the automotive industry. 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).
`We address Munoz alone in light of 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. [1.1] A method comprising:
`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. 13–14 (citing Ex. 1004, Fig. 1).
`According to Petitioner, “[i]n accordance with [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
`
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`apparatus 110 would have constituted a ‘first message having an identifier’
`of claim 1.” Pet. 15 (citing Ex. 1103 ¶¶ 53–85, 133–145); see Pet. 14–16.
`Patent Owner argues Petitioner cannot identify the claimed first
`message in Munoz. PO Resp. 37. Patent Owner contends “Munoz does not
`disclose any communication between the original dashboard 105 and the
`roof control electronics 110” (PO Resp. 38), and Patent Owner contends
`Munoz’s reference to controls on original dashboard 105 refers to controls
`used only after the addition of Munoz’s retrofit device (PO Resp. 38).
`Citing evidence relating to several 2007 model year convertible vehicles,
`Patent Owner contends that controls for the vehicles’ convertible tops were
`hardwired such that “there cannot be a roof open/roof close first CAN
`message sent to the original roof electronics 110.” PO Resp. 41–42 (citing
`Ex. 2028 ¶¶ 64–76); accord PO Sur-Reply 3–4; see Ex. 2028 ¶ 57 (“[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.”).
`Although Patent Owner’s evidence relating to controls in several 2007
`model year vehicles may not be irrelevant, that evidence is not instructive
`regarding what a person of ordinary skill would have understood from the
`teachings of Munoz. Even taking as true the evidence that each 2007 model
`year vehicle examined by Patent Owner’s declarant had its convertible top
`controlled by hardwired controls, the fact remains that Munoz describes
`Figure 1 more generally, describing “vehicle factory dashboard electronics
`and controls” as follows:
`FIG. 1 is a flow chart that illustrates the operation of the roof
`control module in various embodiments of the invention. 105
`illustrates the vehicle factory dashboard electronics and controls
`that are used to control Roof Control Electronics 110. 100
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`illustrates the Roof Control Module, which is a portion of the
`device devoted to roof or cabriolet top controls. As diagramed,
`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, 6:28–36. Further, Figure 1 itself states that “the original data
`connection will be terminated so all communication has to go through the
`roof control module.” Ex. 1004, Fig. 1. In other words, contrary to Patent
`Owner’s arguments, Munoz teaches that there was an “original data
`connection” between “original dashboard, internal sensors and electronics
`105,” Munoz teaches terminating that original connection, and Munoz
`teaches that all communication has to go through the roof control module.
`Ex. 1004, 6:28–36, Fig. 1. As such, regardless of whether real-world
`vehicles did not implement Munoz’s system as depicted in Figure 1 and the
`related description, we agree with Petitioner that a person of ordinary skill
`would have understood Munoz to teach an original data connection between
`“the vehicle factory dashboard electronics and controls that are used to
`control Roof Control Electronics 110” (Ex. 1004, 6:28–30). See Belden Inc.
`v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must
`be considered for everything it teaches by way of technology and is not
`limited to the particular invention it is describing and attempting to protect.”
`(internal quotation marks and alterations omitted)). We further agree with
`Petitioner that Munoz teaches or at least suggests a CAN bus as the original
`data connection and that communication through the original data
`connection would have included a first message having an identifier, as
`claimed. See Pet. 13–17; Ex. 1103 ¶ 152; Ex. 1004, 1:26–40 (describing
`automobile electronic control units using CAN-bus systems for connecting
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`to and transmitting data between various ECUs); see also Tr. 39:5 (“So the
`first message requires original module to the original module.”); PO Resp.
`39 (“How an open/close roof button is wired indicates whether a roof
`open/close (first) message can exist. ‘The factory buttons must be connected
`to a CAN bus module and that CAN bus module must be transmitting the
`message over the CAN bus in order for the roof control, the factory roof
`control 110 to receive it.’” (quoting Ex. 2024, 61:20–24)).
`
`b. [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, depicts this limitation because Munoz’s “[s]witch 120, when open,
`terminates the connection between the 1st factory-installed apparatus 110 and
`the 2nd factory-installed apparatus 105. Pet. 17–18 (citing Ex. 1103 ¶¶ 139–
`145, 153–154; Ex. 1004, 6:32–36; Fig. 1).
`Although not directly addressing this claim limitation, Patent Owner
`argues Munoz’s depiction of switch 120 is merely symbolic and that it
`would serve no purpose in Munoz’s system. PO Sur-Reply 12–13 (citing
`Ex. 1004, 3:35–37, Fig. 1; Ex. 1020, 70:9–17; Ex. 2024, 51:5–55:10, 56:11–
`15); accord Ex. 2028 ¶ 80. Contrary to Patent Owner’s arguments, however,
`Munoz plainly discloses a switch that, according to Munoz, terminates the
`original data connection (Ex. 1004, 6:32–36, Fig. 1), and the weight of the
`evidence supports Petitioner’s argument that Munoz teaches this limitation.
`Cf. Ex. 2028 ¶ 80 (“I recognize that Munoz’s specification describes the
`switch 120 as if it were a real component . . . which is not consistent with
`my interpretation.”).
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`c. [1.3] electrically connecting a retrofit apparatus to the vehicle data
`bus
`Petitioner contends the annotated Figure 1 of Munoz, reproduced
`above, depicts this limitation because Munoz’s “roof control module 100 is
`connected to both the vehicle data bus ‘A’ and to a vehicle data bus ‘B’ and
`is disclosed as an aftermarket automobile device.” Pet. 18–19 (citing Ex.
`1103 ¶¶ 127–148, 155–156; Ex. 1004, 3:7–12, 3:50–4:33; Fig. 1).
`Patent Owner does not contest Petitioner’s showings, and we
`determine that Petitioner has satisfied its burden regarding this limitation.
`
`d. [1.4] transmitting a second message from the retrofit apparatus to the
`factory-installed first apparatus, the second message being
`indistinguishable from the first message
`Petitioner contends Munoz teaches or suggests limitation 1.4 by
`disclosing that all communication passes through the roof control module
`100, which a person of ordinary skill would have understood to include “the
`identical command from the original dashboard 105,” because, according to
`Petitioner, Munoz’s aftermarket device allows multiple functions to be
`performed without interfering with vehicle controls or compromising
`existing factory features. Pet. 19–20 (citing Ex. 1103 ¶¶ 143–145, 160–161;
`Ex. 1004, 3:50–4:33, 5:21–26, Fig. 1). Further, Petitioner contends a person
`of ordinary skill would have understood that when 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 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, to the factory-
`installed roof 110 with the proper information in the identifier
`
`17
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`IPR2020-00147
`Patent 10,027,505 B2
`
`
`field, and the identical command from the original dashboard
`105.
`Pet. 20.
`Patent Owner disputes Petitioner’s showing for this limitation. PO
`Resp. 43–46. First, Patent Owner contends that because Munoz does not
`teach a first message, Munoz cannot teach a second message that is
`indistinguishable from the first message. PO Resp. 44; PO Sur-Reply 2–3.
`For the reasons explained above, we disagree with Patent Owner’s
`arguments that Munoz does not disclose the claimed first message.
`Regarding the second message, Patent Owner acknowledges that
`Munoz teaches sending an open roof signal, but Patent Owner contends
`Munoz does not disclose how it could send a second message as claimed.
`Patent Owner states “[t]his open roof signal (second message) must be
`received and acted upon by the original roof control electronics 110, which
`implies that it is sent with a CAN bus identifier which the roof control
`electronics 110 is configured to recognize and respond to.” PO Resp. 44–45
`(citing Ex. 1004, 6:50–53); PO Sur-Reply 4–5. But according to Patent
`Owner, Munoz does not explain how that is possible. PO Resp. 45 (citing
`Ex. 2028 ¶ 96). Citing messaging in real-world vehicles (PO Resp. 45–46
`(citing Ex. 2008; Ex. 2010)), Patent Owner argues “Munoz’s open roof
`message does not mimic any first message sent from a factory-installed
`device but uses a diagnostic command” (PO Resp. 45 (citing Ex. 2028
`¶ 97)). Accord PO Resp. 46 (citing Ex. 2028 ¶ 98); PO Sur-Reply 4.
`As noted above, Munoz teaches routing the factory data connection
`between vehicle factory dashboard electronics and controls 105 and Roof
`Control Electronics 110 through Roof Control Module 100, as depicted in
`
`18
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`IPR2020-00147
`Patent 10,027,505 B2
`
`Figure 1. Ex. 1004, 6:27–36, Fig. 1 (block 115: “the original data
`connection will be terminated so all communication has to go through the
`roof control module”). Munoz’s Figure 2 discloses “the device” connected
`between a first CAN bus 210 and a second CAN bus 205. Ex. 1004, 5:40–
`42; 6:37–40, Fig. 2 (block 200: “The VARIO PLUS CONTROL MODULE
`is connected to the integrated CAN-Network through 2 interfaces”).
`We agree with Petitioner that a person of ordinary skill would have
`understood Munoz to thus teach that messages from factory dashboard
`electronics and controls 105 would be routed on a first bus to Roof Control
`Module 100 and then on a second bus from Roof Control Module 100 to
`Roof Control Electronics 110. See Pet. 19. Although Munoz teaches that its
`Roof Control Module 100 can remove or alter the data exchanged “to allow
`additional operations normally not available to operate an automatic folding
`roof” (Ex. 1004, Fig. 1 (block 100)), Munoz teaches that the additional
`features can be turned off (Ex. 1004, 6:44–46 (“Operation 305 represents the
`on/off switch that determines whether or not the device features are
`activated.”)) and that the additional features do not compromise the existing
`factory features (Ex. 1004, 5:21–26).
`We agree with Petitioner that a person of ordinary skill would have
`understood the messaging required to maintain the factory features with
`Roof Control Module 100 installed. Pet. 12–13, 15–17, 20, Ex. 1103 ¶¶ 63,
`132, 152, 158. And Patent Owner acknowledges that Munoz teaches CAN
`messaging; Patent Owner recognizes that for Munoz’s system to act on an
`open roof signal, the “open roof signal (second message) must be received
`and acted upon by the original roof control electronics 110, which implies
`that it is sent with a CAN bus identifier which the roof control electronics
`
`19
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`IPR2020-00147
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`
`110 is configured to recognize and respond to.” PO Resp. 44–45 (citing
`Ex. 1004, 6:50–53) (emphasis added). The same implication applies to the
`messaging from original factory dashboard and controls 105—to maintain
`the factory features with the Roof Control Module 100 installed, a first
`message from factory dashboard electronics and controls 105 would have
`included a CAN bus identifier that Roof Control Electronics 110 would have
`been configured to recognize and respond to. Because Munoz teaches that
`“all communication has to go through the roof control module” (Ex. 1004,
`Fig. 1 (block 115)), the first message from factory dashboard and
`controls 105 would have been routed to Roof Control Module 100 on the
`first CAN bus and then from Roof Control Module 100 to original Roof
`Control Electronics 110 on the second CAN bus (Ex. 1004, Figs. 1, 2).
`Following the same reasoning, a person of ordinary skill would have
`understood this to mean that the message on the second CAN bus from Roof
`Control Module 100 to original Roof Control Electronics 110 would have
`been sent with a CAN bus identifier which the roof control electronics 110 is
`configured to recognize and respond to. See PO Resp. 44–45.
`Patent Owner argues that in real-world vehicle installations, such
`aftermarket controls would have been installed using a single CAN bus, with
`two segments of the CAN bus on either side of the aftermarket controls, and
`using diagnostic messages instead of mimicking or “spoofing” messages
`sent from original factory controls. PO Resp. 32–37; PO Sur-Reply 7–8.
`Again, though, the evidence of real-world installations does not outweigh
`the fact that Munoz plainly teaches terminating the original data connection
`and using two CAN buses. E.g., Ex. 1004, 6:37–40 (describing “a first
`CAN-bus 210 and a second CAN-bus 205”), Figs. 1, 2. Further, we credit
`
`20
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`Mr. Leale’s testimony that a person of ordinary skill would have understood
`that Munoz’s teachings of maintaining existing factory features with Roof
`Control Module 100 installed would h
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