`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`____________
`
`
`
`DATASPEED INC.,
`
`Petitioner,
`
`v.
`
`SUCXESS LLC,
`
`Patent Owner.
`
`
`
`____________
`
`
`
`Case IPR2020-00147
`
`Patent 10,027,505
`
`
`
`____________
`
`
`
`PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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, Chapter 9.2
`
`Multiplexing, 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 IPR2020-00147
`Patent 10,027,505
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ........................................................................................................ 1
`
`II. The '505 patent ................................................................................................... 1
`
`III. Summary of the argument ................................................................................ 3
`
`IV. Claim Construction ........................................................................................... 7
`
`A.
`
`"data bus" ....................................................................................................... 8
`
`B.
`
`“responds” ..................................................................................................... 8
`
`V. Person having ordinary skill in the art ............................................................... 8
`
`VI. Ground 1: The Claims are not obvious over Munoz alone or in combination
`
`with Negley, SAE, and Bosch. .................................................................................12
`
`A.
`
`Independent Claim 1 ...................................................................................15
`
`1. Munoz does not teach transmitting a second message from the retrofit
`
`apparatus to the factory-installed first apparatus, the second message being
`
`indistinguishable from the first message. ........................................................15
`
`B. Dependent Claim 2: Munoz fails to teach that the second message uses the
`
`identifier of the first message. ..............................................................................17
`
` ii
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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. .............................................................................................................19
`
`D.
`
`Independent Claim 6 ...................................................................................21
`
`1. Munoz fails to teach a retrofit apparatus connected to the vehicle data bus
`
`including a second processor programmed to transmit a second message
`
`which mimics the first message. ......................................................................21
`
`E.
`
`Independent Claim 10 .................................................................................23
`
`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. ..................................................23
`
`F. Dependent Claim 13 ....................................................................................24
`
`1. Munoz fails to teach that the factory-installed first apparatus is
`
`electrically disconnected from the vehicle data bus. .......................................24
`
`VII. Ground 2: Claims 14-16 Are not obvious over Munoz in combination with
`
`Negley, SAE, Bosch, and Lobaza. ...........................................................................26
`
`VIII. Ground 3: Claims 1-13 are not obvious by Dietz in view of Negley, SAE,
`
`and Bosch. ................................................................................................................26
`
` iii
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`A.
`
`Independent Claim 1 ...................................................................................29
`
`1. Dietz fails to teach transmitting a second message from the retrofit
`
`apparatus to the factory-installed first apparatus, the second message being
`
`indistinguishable from the first message. ........................................................29
`
`B. Dependent Claim 2: Dietz fails to teach wherein the second message uses
`
`the identifier of the first message. ........................................................................31
`
`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. ...............................................................33
`
`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 which mimics the first message through a second data bus. ....36
`
`E. Dependent Claim 7: Dietz fails to teach the second message with the same
`
`message identifier as the first message. ...............................................................37
`
`F.
`
`Independent Claim 10 .................................................................................38
`
`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. ..................................................38
`
` iv
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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. ...........................................................................................38
`
`H. Dependent Claim 13: Dietz fails to teach that the factory-installed first
`
`apparatus is electrically disconnected from the vehicle data bus. .......................38
`
`IX. Ground 4: Claims 1-13 are not obvious over Dietz in view of Allen, Negley,
`
`SAE and Bosch. .......................................................................................................40
`
`X. Ground 5: Claims 14-16 are not obvious over Dietz in combination with
`
`Negley, SAE, Bosch, and Lobaza. ...........................................................................42
`
`XI. Ground 6: Claims 14-16 are not obvious over Dietz in combination with
`
`ALLEN, Negley, SAE, Bosch, and Lobaza. ............................................................42
`
`XII. Ground 7: Claims 6-12 are not obvious over Allen in view of Negley, SAE,
`
`and Bosch. ................................................................................................................43
`
`A.
`
`Independent claim 6: Allen does not teach a second message that is
`
`indistinguishable from a first message. ................................................................43
`
`B. Dependent claim 7: Allen does not teach a second message that uses the
`
`identifier of a first message. .................................................................................44
`
` v
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`C.
`
`Independent claim 10: Allen does not teach a second processor
`
`programmed to send a second message having the same message identifier. .....45
`
`XIII. Ground 8: Claims 10 and 14-16 are not obvious over Lobaza in view of
`
`Allen, Negley, SAE, and Bosch. ..............................................................................45
`
`A.
`
`Independent claim 10: Lobaza does not teach a retrofit apparatus, nor a
`
`second message. ...................................................................................................47
`
`XIV. Conclusion ...................................................................................................48
`
`
`
`
`
`
`
` vi
`
`
`
`
`
`
`Cases
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`TABLE OF AUTHORITIES
`
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`
`694 F.3d 1312, 1327 (Fed. Cir. 2012) .................................................................18
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`
`IPR2015-00355 (PTAB, June 26, 2015) ..............................................................14
`
`C & A Potts & Co. v. Creager,
`
`155 U.S. 597, 608 (1895) .....................................................................................12
`
`Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc.,
`
`IPR2013-00439 (PTAB Jan. 16, 2014) ................................................................17
`
`Graham v. John Deere Co.,
`
`383 U.S. 1, 17– 18 (1966) ....................................................................................14
`
`In re GPAC, Inc.
`
`57 F.3d 1573, 1579 (Fed. Cir. 1995) ..................................................................... 9
`
`KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 406 (2007) .................................................................. 13, 18, 20, 32
`
`Medichem, S.A. v. Rolabo, S.L.,
`
`437 F.3d 1157, 1164 (Fed. Cir. 2006) .................................................................15
`
` vii
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`Norgren, Inc. v. ITC,
`
`699 F.3d 1317, 1323 (Fed. Cir. 2012) .................................................................39
`
`Par Pharm., Inc. v. TWi Pharms., Inc.,
`
`773 F.3d 1186, 1194 (Fed. Cir. 2014) .................................................................15
`
`Silver Star Capital,
`
`IPR2016-00736 (PTAB Aug. 26, 2018) ..............................................................16
`
`U.S. v. Adams,
`
`383 U.S. 39, 51-52 (1966) ...................................................................................20
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) ....................................................................... 8
`
`Statutes
`
`35 U.S.C. § 103(a) ...................................................................................................12
`
`Rules
`
`37 C.F.R. § 42.100 ..................................................................................................... 7
`
`37 C.F.R. § 42.104 ...................................................................................................12
`
`
`
` viii
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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 1-16 of U.S. Patent 10,027,505
`
`(Ex. 1101, "the '505 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 '505 PATENT
`
`The '505 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.
`
`Ex. 1101, 12:14-22.
`
` 1
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`The '505 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 '505 patent teaches adding
`
`a retrofit apparatus to the vehicle. See Ex. 1101, 2:48-53. The retrofit apparatus
`
`sends a spoofed ("mimicked") message to the first apparatus. See Ex. 1101, 9:59-
`
`10:7.
`
`The '505 patent provides detailed instructions on how this spoofing is
`
`accomplished. It illustrates the structure of a vehicle network message (see Ex.
`
`1101, 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. 1101, 9:63-64). The invention disclosed by the '505 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. 1101, 10:21-24; Ex.
`
`2002, 37. In a Controller Area Network, message collision is prevented by means a
`
`bitwise arbitration using unique message identifiers. See Ex. 1006, 10. Importantly,
`
`the teaching of the '505 patent is a direct violation of the applicable rule,
`
` 2
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`recognized in the literature of the time, that every message must have a unique
`
`identifier. See Ex. 2002, 37 (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 '505 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. 1101, Figs 6,7. The block diagrams are explained
`
`in the specification. Ex. 1101, 8:25-9:13. The '505 patent enables hacking pre-
`
`existing vehicles by providing detailed instructions not found in the prior art.
`
`III. SUMMARY OF THE ARGUMENT
`
`Petitioner asserts that the claims are invalid based on various combinations
`
`of the following seven prior art references:
`
`• U.S. Patent No. 7,737,831 to Munoz (Ex. 1004, "Munoz")
`
`• Dietz, "Installation Manual For A Multimedia Interface 1280" (Ex.
`
`1005, "Dietz")
`
`• U.S. Patent Application Pub. No. 2007/0016342 to Allen (Ex. 1018,
`
`"Allen")
`
`• U.S. Patent No. 6,812,832 to Lobaza (Ex. 1014, "Lobaza")
`
`• Negley, "Getting Control Through CAN" (Ex. 1006, "Negley")
`
` 3
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`• Szydlowski, "A Gateway For CAN Specification 2.0 Non-Passive
`
`Devices” (Ex. 1009, "SAE")
`
`• Robert Bosch GmbH, “CAN Specification, Version 2.0.” (Ex. 1010,
`
`"Bosch")
`
`(collectively, "the Cited References"). Pet., 3-4.
`
`More specifically, Petitioner asserts that claims 1-13 are rendered obvious
`
`by Munoz alone or in view of Negley, SAE, and Bosch (ground 1) and that claims
`
`14-16 are obvious in further view of Lobaza (ground 2).
`
`Petitioner also asserts that claims 1-13 are rendered obvious by Dietz in
`
`view of Negley, SAE, and Bosch (ground 3) and that claims 14-16 are obvious in
`
`further view of Lobaza (ground 5).
`
`Petitioner further asserts that claims 1-13 are rendered obvious by Dietz in
`
`view of Allen, Negley, SAE, and Bosch (ground 4), and that claims 14-16 are
`
`obvious in further view of Lobaza (ground 6).
`
`Petitioner finally asserts that claims 6-12 are rendered obvious by Allen in
`
`view of Negley, SAE, and Bosch (ground 7) and that claims 10 and 14-16 are
`
`rendered obvious by Lobaza in view of Allen, Negley, SAE, and Bosch (ground 8).
`
`
`
` 4
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`Petitioner fails to show a reasonable likelihood that any combination of the
`
`Cited References renders even one claim obvious. 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).
`
`With respect to grounds 1-4, 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, 37. In other words, the relevant standard of the
`
`time required that every vehicle network message must have a unique identifier.
`
` 5
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`Petitioner is aware of the ISO 11898-1 standard (see Pet. 10) but fails to notice that
`
`it contradicts Petitioner's arguments.
`
`With respect to grounds 4 and 6-8, Petitioner misreads Allen to recognize
`
`spoofed bus messages where none are disclosed. Petitioner asserts that Allen "is
`
`creating emulated bus messages like those originally sent by the IFCM [a CAN
`
`node]" (Pet., 57). Allen does not. Allen refers to emulating signals between an
`
`OEM Transceiver and an Intermediate Function Control Module, but those signals
`
`are not bus messages and are functionally upstream of the vehicle data bus.
`
`Finally, with respect to ground 8, Petitioner proposes a combination of
`
`Lobaza with Allen based on a flawed analogy between Allen's "shock sensor" and
`
`Lobaza's "pre-impact" system. Allen's shock sensor is e.g. an impact sensor to
`
`trigger a car alarm used while the vehicle is parked whereas Lobaza's pre-impact
`
`sensor is used while driving to recognize an imminent collision before it occurs.
`
`Based on the flawed analogy, Petitioner falsely concludes that Lobaza's Pre-Impact
`
`System could be a retrofit device.
`
`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
`
` 6
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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
`
`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 two claim terms. Pet., 6-8. 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
`
`
`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.
`
` 7
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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., 6. 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.
`
`“responds”
`
`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;
`
` 8
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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
`
`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
`
` 9
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`work experience in the design, operation, and functioning of CAN systems." Pet.,
`
`8, 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.
`
`Leale does not cite any evidence whatsoever supporting his opinion that the
`
`POSITA’s level of skill mirrors his own qualifications. See Ex. 1103, ¶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
`
` 10
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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 '505
`
`patent, but that does not make the technician a POSITA.
`
`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
`
` 11
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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 1-13 are rendered obvious by Munoz alone or
`
`in view of Negley, SAE, and Bosch. Pet., 13. 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 the knowledge" through which a POSITA might read
`
`Munoz. Pet., 20. By describing it this way, Petitioner appears to admit that Negley,
`
`SAE, and Bosch do not add any limitations missing from Munoz. Hence, Petitioner
`
`asserts that "Munoz alone, viewed through the lens of the knowledge of a POSITA
`
`informed by Negley, SAE, and Bosch, discloses or suggests all features of claim
`
`1". Pet., 20, 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
`
` 12
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`obviousness of the claims over Munoz alone2. 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
`
`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.
`
`
`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.”).
`
` 13
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`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
`
`Cited References teach a second message, as required by the independent claims 1,
`
`6, and 10.
`
` 14
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`A.
`
`Independent Claim 1
`
`1. Munoz does not teach transmitting a second message from
`the retrofit apparatus to the factory-installed first
`apparatus, the second message being indistinguishable from
`the first message.
`
`Petitioner refers to Munoz’s disclosure of an aftermarket roof control
`
`module, which can be disabled, and through which communication between
`
`factory installed systems has to go. (See Pet., 19). Petitioner fails to provide, and
`
`cannot provide, any reference to a second message being transmitted that is
`
`indistinguishable from the first message. Instead, petitioner asserts that a "POSITA
`
`would have understood that [...] the retrofit roof control module 100 would have
`
`transmitted a second CAN message, indistinguishable from the first CAN
`
`message" Pet., 20.
`
`Petitioner cites the Leale Declaration to substantiate its "would have
`
`transmitted" argument. However, even a cursory glance at the declaration shows
`
`that it lacks analysis and tracks the lawyer arguments in the Petition verbatim.
`
`Such testimony is routinely disregarded. See, e.g., Silver Star Capital, IPR2016-
`
`00736, Paper 11 at 14 (PTAB Aug. 26, 2018) (according little weight to parroted
`
`declaration); Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-
`
`00439, Paper 26 at 15-16 (PTAB Jan. 16, 2014) (giving “little to no credit” to
`
`expert’s conclusory declaration); 37 C.F.R. § 42.65(a).
`
` 15
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-00147
`Patent 10,027,505
`
`Munoz describes the operation of his Roof Control Module 100 as
`
`"removing or altering data exchanged". Munoz, Fig. 1. Removing data is clearly
`
`not the same as transmitting a second message, as recited in the claims. Neither is
`
`"altering" data that is being exchanged. Altering a first message and transmitting a
`
`second message are distinctly different activities.
`
`Munoz does not teach a second message that is indistinguishable from the
`
`first message. Quite to the contrary, Munoz teaches that "the system sends an open
`
`roof message for 26-seconds". Munoz, 6:59-60. A message being sent for 26
`
`seconds is not indistinguishable from a message being sent for a shorter period o