Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 10
` Date: May 12, 2020
`
`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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 10
` Date: May 12, 2020
`
`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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00147
`Patent 10,027,505 B2
`
`
`I.
`
`INTRODUCTION
`
`Dataspeed Inc. (“Petitioner”) filed a Petition under 35 U.S.C. § 311
`
`requesting inter partes review of claims 1–16 of U.S. Patent No. 10,027,505
`
`B2 (Ex. 1101, “the ’505 patent”). Paper 1 (“Pet.”). Sucxess LLC (“Patent
`
`Owner”) filed a Preliminary Response. Paper 9 (“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 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
`
`The parties state that the ’505 patent is the subject five district-court
`
`cases involving Patent Owner and various third parties, namely, Sucxess
`
`LLC v. AutoX Technologies, Inc., Case No. 1:19-cv-02121 (D. Del.); Sucxess
`
`LLC v. Phantom Auto, Inc., Case No. 1:19-cv-02122 (D. Del.); Sucxess LLC
`
`v. Pony.ai, Inc., Case No. 1:19-cv-02123 (D. Del.); Sucxess LLC v. SF
`
`2
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`IPR2020-00147
`Patent 10,027,505 B2
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`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 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.
`
`C. 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.
`
`Messaging described in the ’505 patent includes Controller Area
`
`Network (“CAN”) messages. The ’505 patent states that CAN messages
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`3
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`Patent 10,027,505 B2
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`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.
`
`D. 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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`IPR2020-00147
`Patent 10,027,505 B2
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`E. Prior Art and Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds under 35 U.S.C. § 103:
`
`Claims
`
`1–13
`
`14–16
`
`1–13
`1–13
`
`14–16
`
`14–16
`
`6–12
`10, 14–16
`
`
`
`35 U.S.C. §
`1031
`
`103
`
`103
`103
`
`103
`
`103
`
`103
`103
`
`Reference(s)/Basis
`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
`
`
`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 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, http:/www.dietz.biz. Ex. 1005.
`
`5
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`Patent 10,027,505 B2
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`Petitioner 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
`
`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 CAN systems. Pet. 8 (citing Ex. 1103 ¶ 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. 9. According to Patent Owner, although Petitioner’s proposed
`
`POSITA may be trained to perform the method claimed in the ’505 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. 11.
`
`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 bachelor’s degree and eight years of
`
`experience) is not reflected by the prior art of record. See Okajima v.
`
`
`8 Allen et al. (US 2007/0016342 A1; filed June 19, 2006; published Jan. 18,
`2007). Ex. 1018.
`
`6
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`Patent 10,027,505 B2
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`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995).
`
`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 or systems using similar
`
`communications protocols.
`
`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” and
`
`“responds.” Pet. 6–7. Patent Owner contends that no claim terms need to be
`
`construed at this stage. Prelim. Resp. 7–8.
`
`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.
`
`7
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`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 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. 8.
`
`At this stage in the proceeding, we do not expressly interpret “data
`
`bus,” and the parties are encouraged to develop the record regarding the
`
`scope and meaning of “data bus” as that term is used in the claims in
`
`briefing leading up to trial. 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
`
`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. 7 (citing Ex. 1103 ¶ 63; Ex. 1006, 6–7, 13,
`
`Figure 8). Patent Owner does not disagree with Petitioner.
`
`At this stage and for the purposes of institution, we do not expressly
`
`construe “responds” as recited in claim 12.
`
`8
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`
`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 [(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.
`
`
`
`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
`
`
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`9
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`IPR2020-00147
`Patent 10,027,505 B2
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`Control Electronics 110 via Roof Control Module 100, such that the factory
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`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.
`
`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
`
`10
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`Patent 10,027,505 B2
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`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 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 to the
`
`extent that certain limitation are “not clearly disclosed by Munoz when
`
`viewed in light of the knowledge possessed by a POSITA, it would have
`
`been obvious to complement Munoz’s teachings with the standard CAN bus
`
`teachings of Negley, SAE, and Bosch.” Pet. 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. Prelim. Resp. 12–26.
`
`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 the CAN protocol. Pet.
`
`15–16.
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`11
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`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).
`
`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 1–13.
`
`2. Claim 1
`
`a. [1.p] A method comprising
`
`Petitioner contends Munoz discloses a “method of adding a retrofit
`
`device to a vehicle.” Pet. 13 (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 has satisfied its burden
`
`regarding 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
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`12
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`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
`
`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 does not contest Petitioner’s showings, and for the purposes of
`
`institution, we determine that Petitioner has satisfied its burden regarding
`
`this limitation.
`
`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, depicts this limitation because Munoz’s “[s]witch 120, when open,
`
`terminates the connection between the [first] 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). Patent Owner does not
`
`contest Petitioner’s showings, and for the purposes of institution, we
`
`determine that Petitioner has satisfied its burden regarding this limitation.
`
`d. [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).
`
`13
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`Patent Owner does not contest Petitioner’s showings, and for the purposes of
`
`institution, we determine that Petitioner has satisfied its burden regarding
`
`this limitation.
`
`e. [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 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. 19–20 (citing
`
`Ex. 1103 ¶¶ 143–145, 160–161; Ex. 1004, 3:50–4:33, 5:21–26, Fig. 1).
`
`Further, Petitioner contends a POSITA 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
`field, and the identical command from the original dashboard
`105.
`
`Pet. 20.
`
`Patent Owner contends the prior art does not disclose this limitation
`
`because, according to Patent Owner, none of the references teaches
`
`transmitting a second message that is indistinguishable from the first
`
`message. Prelim. Resp. 14–17. According to Patent Owner, Munoz
`
`14
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`discloses “the operation of his Roof Control Module 100 as ‘removing or
`
`altering data exchanged.’” Prelim. Resp. 15–16 (citing Munoz, Fig. 1).
`
`Patent Owner argues that removing or altering data is not the same as
`
`transmitting a second message that is indistinguishable from a first message,
`
`and Patent Owner further argues that the Petition relies on improper
`
`hindsight for this limitation. Prelim. Resp. 16–17.
`
`Although Munoz is not explicit regarding the messaging required to
`
`implement its CAN-based disclosures, 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 upgrades vehicle functions
`
`without compromising existing factory features (Ex. 1004, 5:21–26) requires
`
`communication between the original equipment. See Pet. 19–20; Ex. 1003
`
`¶¶ 143–145, 160, 161. On the present record and although our
`
`determination is not final, we determine at this stage that the arguments
`
`presented in the Petition are not the subject of improper hindsight and that
`
`Petitioner provides sufficient evidence that Munoz teaches limitation 1.4.
`
`f. Conclusion: Claim 1
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`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.
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`3. Claims 2–5
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`Petitioner provides a limitation-by-limitation comparison of each of
`
`claims 2–5. Pet. 21–23. For claim 2, Petitioner contends that “a POSITA
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`would understand that the second message from the retrofit control module
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`100 employs a message identifier identical to that originally used by the first
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`message . . . so that the first factory-installed apparatus 110 (roof
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`electronics) would recognize, accept, and act upon the second message.”
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`Pet. 21 (citing Ex. 1103, ¶¶ 159–160).
`
`Patent Owner responds that the prior art teaches that “assigning the
`
`same message identifier to messages originating from two different CAN
`
`nodes is impermissible.” Prelim. Resp. 17; accord Prelim. Resp. 18 (citing
`
`Ex. 2002, 37; Ex. 2003, 9). According to Patent Owner, Petitioner does not
`
`explain how something directly contradicted by the prior art could be
`
`obvious, in light of Petitioner’s conclusion being “based on unsupported
`
`expert testimony tainted by hindsight.” Prelim. Resp. 19.
`
`On the present record, we do not agree with Patent Owner. Patent
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`Owner’s arguments for claim 2 do not show how the purported unique
`
`identifier conflict is present in the Munoz 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. 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 for the purposes of institution.
`
`For 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. 21 (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
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`message, indistinguishable from the first CAN message, to allow factory-
`
`installed roof 110 to perform its original, pre-existing features as originally
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`programmed. Pet. 22 (citing Ex. 1103 ¶ 167). For claim 5, Petitioner
`
`contends Munoz discloses a vehicle (an automobile or truck) that has been
`
`retrofitted with a roof control module. Pet. 23.
`
`Patent Owner does not address Petitioner’s showings 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. 20. 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. 21.
`
`At this stage and on this record, we determine that Petitioner presents
`
`sufficient supporting testimony regarding Munoz’s teachings regarding CAN
`
`messaging for a retrofit device in communication with factory-installed
`
`devices “without interfering with vehicle controls” and “without
`
`compromising existing factory features” such that Munoz teaches the re-
`
`transmit messaging limitation of claim 4. See, e.g., Ex. 1103 ¶¶ 144–145,
`
`158, 160, 164. Accordingly, for the purposes of institution we determine
`
`Petitioner has satisfied its burden for claims 3–5.
`
`4. 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.” Ex. 1101, 12:1–3.
`
`Similar to claim 1, Petitioner contends that a POSITA would have
`
`understood that Munoz discloses
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`a first CAN message . . .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 (i.e., a
`mimic of the first message), to the factory installed roof 110
`with the proper information in the identifier field, and the
`identical command from the original dashboard 105.
`
`Pet. 25 (citing Ex. 1103 ¶ 171). Patent Owner contends the prior art does
`
`not disclose transmitting a second message that is indistinguishable from the
`
`first message, because Munoz discloses “removing or altering data.” Prelim.
`
`Resp. 21–23 (citing Munoz, Fig. 1). Specifically, Patent Owner argues that
`
`Munoz discloses removing or altering data, which is not the same as
`
`transmitting a second message that mimics a first message. Prelim. Resp.
`
`21.
`
`At this stage and on the current record, for reasons similar to those
`
`discussed above regarding claim 1, we determine that Petitioner has
`
`satisfied its burden relating to this limitation and as well as the remaining
`
`limitations of claim 6.
`
`5. Claims 7–9
`
`Petitioner provides a limitation-by-limitation comparison of each of
`
`claims 7–9. Pet. 26–29. Patent Owner does not address Petitioner’s showings
`
`for claims 7–9.
`
`At this stage and on this record, for the purposes of institution we
`
`determine Petitioner has satisfied its burden for claims 7–9.
`
`6. Claim 10
`
`Claim 10 recites, inter alia, “a retrofit apparatus, operatively
`
`connected to the vehicle data bus, including a second processor programmed
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`to send a second message having the same message identifier.” Ex. 1101,
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`12:19–22.
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`Petitioner contends that “Munoz’s retrofit roof control module 100
`
`processor is programmed to send a second message having the same
`
`message identifier as a first message from original dashboard 105 for the
`
`same reasons already detailed above for Element [d] of Claim 1.” Pet. 30–
`
`31 (citing Ex. 1103 ¶¶182–183). Patent Owner disagrees, asserting that
`
`Petitioner does cite to a specific disclosure by Munoz, because Munoz does
`
`not teach a second message having the same message identifier as a first
`
`message. Prelim. Resp. 23–24.
`
`At this stage and on the current record, for reasons similar to those
`
`discussed above regarding claim 1, we determine that Petitioner has satisfied
`
`its burden relating to this limitation.
`
`7. Claims 11–13
`
`Petitioner provides a limitation-by-limitation comparison of each of
`
`claims 11–13. Pet. 31–33. For claim 13, Petitioner contends that Munoz
`
`discloses that switch 120 electrically disconnects the factory-installed first
`
`apparatus 110 from the vehicle data bus. Pet. 32 (citing Ex. 1004, 6:32–36).
`
`Patent Owner does not address Petitioner’s showings for claims 11
`
`and 12. For claim 13, Patent Owner asserts that Petitioner’s position
`
`contradicts the disclosure of Munoz, which states that “switch 120 connects
`
`the vehicle factory dashboard electronics and controls 105 to the Roof
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`Control Electronics 110 via the Roof Control Module 100.” Prelim. Resp.
`
`24 (citing Ex. 1004, 6:32–36).
`
`Although Munoz does refer to switch 120 connecting the factory
`
`dashboard electronics to controls 105, Munoz also states that “the original
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`data connection will be terminated so all communication has to go through
`
`the roof control module.” Ex. 1004, Fig. 1. At this stage and on this record,
`
`for the purposes of institution, we determine Petitioner has satisfied its burden
`
`for claims 11–13.
`
`H. Obviousness over Munoz or Munoz, Negley, SAE, Bosch, and
`Lobaza
`
`For dependent claims 14–16, Petitioner compares each limitation of
`
`each claim to Munoz alone or the combined teachings of Munoz, Negley,
`
`SAE, Bosch, and Lobaza. Pet. 32–34. In addition to the combined
`
`teachings of Munoz, Negley, SAE, and Bosch addressed above, the Petition
`
`cites Lobaza as teaching or suggesting an object detection systems to detect
`
`objects in the frontal area of a vehicle, an automatic braking system, and a
`
`parking aid. Pet. 32 (citing Ex. 1014, 4:43–49). Petitioner contends a
`
`person of ordinary skill would have had reason to include the features of
`
`Lobaza’s system in combination with the teachings of Munoz, Negley, SAE,
`
`and Bosch for activation of an additional device connected to a CAN bus.
`
`Pet. 32–33 (citing Ex. 1014, 4:39–43). Patent Owner does not address
`
`Petitioner’s showings for these claims, separate from the arguments
`
`addressed above. See Prelim. Resp. 26. At this stage and on this record, for
`
`the purposes of institution we determine Petitioner has satisfied its burden
`
`for claims 14–16.
`
`I. Dietz
`
`Dietz discloses an installation manual for a multimedia interface. Ex.
`
`1005, 1. More specifically, Dietz describes a 1280 Multimedia Interface
`
`device added to a vehicle that allows playback of video through the factory-
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`installed vehicle navigation screen. Ex. 1005, 2–3. Among other things,
`
`Dietz describes its unit as a CAN-based system. E.g., Ex. 1005, 2.
`
`J. Obviousness over Dietz combined with Negley, SAE, and Bosch, or
`Dietz combined with Negley, SAE, Bosch, and Lobaza
`
`1. Claims 1–16
`
`Petitioner provides a limitation-by-limitation comparison of each of
`
`limitation 1.p–1.4. Pet. 34–42. Patent Owner only addresses Petitioner’s
`
`showings
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