Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 24
`Entered: June 15, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DATASPEED INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`SUCXESS LLC,
`Patent Owner.
`____________
`
`IPR2020-00268
`Patent 10,454,707 B2
`______________
`
`
`Before TREVOR M. JEFFERSON, MINN CHUNG, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 24
`Entered: June 15, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DATASPEED INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`SUCXESS LLC,
`Patent Owner.
`____________
`
`IPR2020-00268
`Patent 10,454,707 B2
`______________
`
`
`Before TREVOR M. JEFFERSON, MINN CHUNG, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-00268
`Patent 10,454,707 B2
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`
`I. INTRODUCTION
`In this inter partes review, Dataspeed Inc. (“Petitioner”) challenges
`claims 1–20 (“the challenged claims”) of U.S. Patent No. 10,454,707 B2
`(Ex. 1201, “the ’707 patent”) owned by Sucxess LLC (“Patent Owner”).
`Paper 1 (“Pet.”). Patent Owner disclaimed claims 1–14 and 16–19 of the
`’707 patent (Ex. 2002), leaving only claims 15 and 20 (“the remaining
`challenged claims”) of the ’707 patent for our consideration.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the
`reasons discussed herein, we determine that Petitioner has shown by a
`preponderance of the evidence that claim 15 of the ’707 patent is
`unpatentable, but has not shown by a preponderance of the evidence that
`claim 20 of the ’707 patent is unpatentable.
`
`A. Procedural History
`Petitioner filed a Petition challenging claims 1–20 of the ’707 patent
`(Pet. 3, 18–65). We instituted trial on all grounds of unpatentability.
`Paper 8 (“Dec.”), 27–28. Patent Owner filed a Response (Paper 14, “PO
`Resp.”) addressing the remaining challenged claims. PO Resp. 2; Ex. 2002.
`Petitioner filed a Reply (Paper 16, “Reply”), and Patent Owner filed a Sur-
`reply (Paper 18, “Sur-reply”).
`Petitioner submits the Declaration of Robert Leale (Ex. 1203) in
`support of the Petition and the Second Declaration of Robert Leale
`(Ex. 1213) in support of the Reply. Patent Owner supports its Response and
`Sur-reply with the Declaration of Dr. Mahdi Shahbakhti (Ex. 2004).
`Petitioner also submits the Deposition Transcript of Mahdi Shahbakhti,
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`Ph.D. (Ex. 1212), and Patent Owner submits the Deposition Transcript of
`Robert Leale (Ex. 2005) and the Second Deposition Transcript of Robert
`Leale (Ex. 2009).
`An oral hearing for this inter partes review was held on February 11,
`2021, and a copy of the hearing transcript has been entered into the record.
`Paper 23 (“Tr.”).
`
`B. Instituted Grounds
`We instituted inter partes review of the remaining challenged claims
`on the following grounds asserted by Petitioner under 35 U.S.C. §§ 102 and
`1031 (Dec. 7; PO Resp. 2–3):
`Challenged
`35
`Claims
`U.S.C. §
`20
`102 Walker2
`20
`103 Walker
`20
`102
`Smart Roadster3
`20
`103
`Smart Roadster
`
`Reference(s)/Basis
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’707 patent has an effective filing date prior to the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of §§ 102 and
`103.
`2 U.S. Patent No. 6,647,328 B2, filed Dec. 18, 2000; issued Nov. 11, 2003.
`(Ex. 1204, “Walker”).
`3 Joachim Schröder, et al, Smart Roadster Project: Setting up Drive-by-Wire
`or How to Remote-Control your Car in Intelligent Autonomous Systems 9 -
`IAS-9 (Tamio Arai, et al eds., Feb. 2006) (Ex. 1205, “Smart Roadster”).
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`Reference(s)/Basis
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`35
`U.S.C. §
`Dietz4, SAE5, Bosch6, Negley7
`103
`Dietz, SAE, Negley, Bosch, Smart Roadster
`103
`103 Walker, one or more of Dietz, SAE, Negley,
`Bosch
`
`Challenged
`Claims
`15, 20
`20
`15
`
`
`
`C. Real Party-in-Interest
`Petitioner states that it, Dataspeed Inc., is the sole real party-in-
`interest. Pet. 2.
`
`D. Related Proceedings
`Patent Owner states that two patents, namely, US 10,027,505 and US
`10,454,707, are the subject of five district court cases involving Patent
`Owner and various third parties, namely, Sucxess LLC v. AutoX
`Technologies, Inc., Case No. 1:19-cv-02121 (D. Del.); Sucxess LLC v.
`Phantom Auto, Inc., Case No. 1:19-cv-02122 (D. Del.); Sucxess LLC v.
`Pony.ai, Inc., Case No. 1:19-cv-02123 (D. Del.); Sucxess LLC v. SF Motors,
`Inc., Case No. 1:19-cv-02124 (D. Del.); and Sucxess LLC v. WeRide Corp.,
`Case No. 1:19-cv-02130 (D. Del.). Pet. 2, Paper 5, 1.
`
`
`4 Audiotechnik Dietz, Installation/connection manual for multimedia
`interface 1280, March 16, 2005, http:/www.dietz.biz. (Ex. 1005, “Dietz”).
`5 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, “SAE”).
`6 Robert Bosch, CAN Specification Version 2.0, Bosch, Sept. 1991.
`(Ex. 1010, “Bosch”).
`7 Bruce Negley, Getting Control Through CAN, The Journal of Applied
`Sensing Technology, Oct. 2000, vol. 17, no. 10, pages 16–33. (Ex. 1006,
`“Negley”).
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`E. The ’707 Patent (Ex. 1201)
`Titled “Method, Apparatus and System for Retrofitting a Vehicle”
`(Ex. 1201, code [54]), the ’707 patent states that a vehicle could be
`retrofitted to add, for example, an emergency call apparatus. Ex. 1201,
`2:46–47. The retrofit apparatus is used to transmit a message on the vehicle
`data bus. Id. at 2:52–55. The ’707 patent states that a retrofit apparatus may
`be added to the vehicle with two data buses, with the first bus used to
`communicate with the original vehicle equipment and the second bus used to
`communicate with the rest of the vehicle. Id. at 3:32–36. With respect to
`this communication, the ’707 patent states that the retrofit apparatus can be
`configured to mimic command messages to enable the original vehicle
`equipment to perform specified functions not originally enabled. Id. at
`9:28–9:50.
`In one embodiment of the ’707 patent, the retrofit apparatus is an
`emergency call apparatus 214 that sends a message to a first apparatus, i.e.,
`telecommunication apparatus 200 as seen in Figure 4, reproduced below.
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`Figure 4 illustrates vehicle communication system 400 having
`telecommunication apparatus 200 in communication with vehicle data bus
`212 using an indirect connection through emergency call apparatus 214.
`Ex. 1201, 7:59–63. Emergency call apparatus 214 mimics the dial command
`message by using “the same message identifier segment that has been
`assigned to navigation system 218 when transmitting its telephone dial
`command message.” Id. at 9:39–41. “By sharing the same message
`identifier segment a telephone dial command message originating from
`emergency call apparatus 214 and a telephone dial command message
`originating from navigation system 218 become indistinguishable for the
`telecommunication apparatus 200.” Id. at 9:42–9:47. “Telecommunication
`apparatus 200 hence responds properly to a telephone dial command
`message originating from emergency call apparatus 214 even though it may
`not have been designed for this purpose.” Id. at 9:46–50.
`Messages to telecommunication apparatus 200 are communicated
`through first and second data buses, as depicted in Figure 7, reproduced
`below.
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`Figure 7 is a block diagram that depicts emergency call apparatus 710.
`
`Ex. 1201, 8:36–37. In Figure 7, control processor 500 communicates with
`telecommunication apparatus 200 through vehicle data bus interface 504 and
`electric terminal 600. Id. at 8:37–40. Control processor 500 also
`communicates with other electronic modules connected to vehicle data bus
`212 through second vehicle data bus interface 700 and electric terminal 602.
`Id. at 8:40–47. “Control processor 500 retransmits any messages it receives
`from vehicle data bus interface 504 through vehicle data bus interface 700
`and any messages it receives from vehicle data bus interface 700 through
`vehicle data bus interface 504, thereby functionally connecting
`telecommunication apparatus 200 with vehicle data bus 212.” Id. at 8:50–
`56.
`
`F. Illustrative Claims
`Challenged dependent claim 15 depends from claims 6 and 13, and
`challenged dependent claim 20 depends from claims 6, 18, and 19. Claims
`6, 13, 15, 18, 19, and 20 are reproduced below with added identification of
`claim elements in brackets.
`6. [pre] A vehicle, comprising:
`[a] a factory-installed first apparatus configured to
`generate an electrical signal;
`[b] a factory-installed second apparatus configured to
`receive the electrical signal; and
`[c] a retrofit apparatus electrically connected to the
`factory-installed second apparatus,
`[d] wherein the retrofit apparatus generates a mimicked
`electrical signal independently of the electrical signal generated
`by the factory-installed first apparatus, and
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`[e] wherein the factory-installed second apparatus receives
`the mimicked electrical signal.
`13. The vehicle as in claim 6, wherein a first electrical
`interface between the factory-installed first apparatus and the
`retrofit apparatus and a second electrical interface between the
`retrofit apparatus and the factory-installed second apparatus are
`identical.
`15. The vehicle as in claim 13, wherein the first electrical
`interface is a CAN vehicle data bus.
`18. The vehicle as in claim 6, wherein the retrofit
`apparatus includes an electronically controlled switch to
`selectively separate a direct electrical connection between the
`factory-installed first apparatus and the factory-installed second
`apparatus.
`19. The vehicle as in claim 18, wherein the electronically
`controlled switch is a relay.
`20. The vehicle as in claim 19, wherein the relay is
`selectively controlled in response to a presence of an electrical
`failure.
`Ex. 1201, 11:24–36, 12:15–19, 12:22–23, 12:30–39.
`II. 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. 8; see Pet. 9
`(citing Ex. 1203 ¶ 46). Petitioner did not contest the level of ordinary skill,
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`and Patent Owner “adopted the Board’s guidance” (PO Resp. 9–10).
`Accordingly, we apply the same level articulated in the Decision.
`
`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 does not seek construction of any claim term. Pet. 5–6.
`Patent Owner asserts that construction is necessary for the term
`“electronically controlled switch,” as recited in claim 18 and incorporated
`into challenged claim 20. PO Resp. 6–9. Patent Owner argues that “the
`‘electronically controlled switch’ of claim 18 [refers] to ‘a switch that is
`caused to open and close by an electronic circuit’ . . . [and] a switch that is
`operated by a human or controlled by a mechanical device would not be
`considered an ‘electronically controlled switch.’” PO Resp. 9 (citing
`Ex. 2004 ¶ 23).
`Patent Owner provides annotated Figures 4 and 6 of the ’707 patent
`showing the electronically controlled switch. PO Resp. 6–7.
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`Patent Owner annotates Figures 4 and 6 combined to show the
`electromechanical relay 606 with coil 704. PO Resp. 7; Ex. 1201, 8:12–13.
`Patent Owner argues that the ’707 patent teaches that because “‘[c]ontrol
`processor 500 electronically controls switch 606,’ a POSITA would
`understand the ‘electronically controlled switch’ of claim 18 to refer to ‘a
`switch that is caused to open and close by an electronic circuit,’” limiting the
`switch to being electronically controlled by the control processor. PO Resp.
`9; see Ex. 1201, 8:12–28; Ex. 2004 ¶¶ 21–23.
`
`Petitioner notes that Patent Owner disclaimed claim 19, which
`introduces the limitation that an electronically controlled switch is a relay,
`and that claim 20 adds no terms of patentable weight regarding control of the
`relay introduced in claim 19. Reply 1–2. Patent Owner’s arguments
`introduce an unnamed controller into claim 20, which recites that “the relay
`is selectively controlled in response to a presence of an electrical failure” but
`does not require implementing a particular type of control. Id. Indeed,
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`Petitioner argues that claim 19 is a functional recitation of the nature of the
`relay, that is suggested by claim 18 to change based on an electronic control
`signal. Id. at 12–13. As such, Petitioner avers that claim 20, which depends
`from claim 19, does not introduce a controller.
`In this case, claims 18 and 19 recite that the electronically controlled
`switch is a relay that responds to electronic control. Ex. 1201, 12:30–39.
`We disagree with Patent Owner’s proposed construction limiting the method
`of controlling the electronically controlled switch, as claims 15 and 20 do
`not expressly require a control processor or otherwise limit the source of the
`electronic control. On the full record, Patent Owner has not demonstrated
`that the example of controlling the switch in the specification limits the type
`of control applied in claim 20. PO Resp. 6–9. We determine it is
`unnecessary to interpret that the relay is an “electronically controlled
`switch” that is selectively controlled as recited in claim 20, 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).
`
`C. Asserted References
`1. Walker (Ex. 1204)
`Walker is entitled “Electrically Controlled Automated Devices to
`Control Equipment and Machinery with Remote Control and Accountability
`Worldwide.” Ex. 1204, code [54]. Walker describes trickster circuits
`inserted between OEM sensors and OEM control modules that “are intended
`to interrupt and interface with . . . OEM control and processor products to
`augment normal operating data streams and provide specific electrical
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`signals as [an] automated and/or remote control PFN [Primary Focal Node]
`response to initiate a desired OEM function without changing the OEM’s
`software and/or system in general.” Ex. 1204, 100:21–26. Figure 24A of
`Walker, depicted below, shows a trickster circuit. Id.
`
`
`Figure 24A depicts a trickster circuit where relay 1010 and variable resistor
`1011 allow the circuit “to send an adjusted but specific voltage level to
`simulate an analog OEMS senders signal” to the OEM Input for Sensor
`Control Module. Ex. 1204, 101:15–18. The “OEM SI terminal is the OEM
`sensor signal coming into . . . the relay and on to the OEM control module
`in the normal state” when the signal is not sent by variable resistor 1011. Id.
`at 101:58–60.
`
`2. Smart Roadster (Ex. 1205)
`Smart Roadster, entitled “Smart Roadster Project: Setting up Drive-
`by-Wire or How to Remote-Control your Car,” describes interfacing with
`existing vehicle control systems, sensors, and components to control to
`provide drive-by-wire capability for a vehicle. Ex. 1205, Abstract, 383, 385.
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`Smart Roadster teaches a control circuit to interface the steering control and
`the CAN bus to force steering movements and switch between the regular
`sensor and the CAN bus used for control. Ex. 1205, 387–388.
`
`3. Buehler (Ex. 1211)
`Buehler discloses a device and method for remote operation of a first
`vehicle from a second vehicle. Ex. 1211, code [57]. For the throttle-by-wire
`system, Buehler discloses that a gas pedal is connected to a transducer that
`may be a potentiometer. Ex. 1211 ¶ 46.
`
`4. Dietz (Ex. 1005)
`Dietz discloses an installation manual for a multimedia interface that
`processes data from the CAN-protocol of a vehicle. Ex. 1005, 2. Dietz
`describes a device called “Multimedia Interface 1280” that is added to a
`vehicle that allows playback of video through the factory-installed vehicle
`navigation screen. Ex. 1005, 2–3.
`
`5. Negley (Ex. 1006)
`Negley discloses that a Controller Area Network (“CAN”) is a
`protocol that “creates a communications path that links all the nodes
`connected to the bus and enables them to talk to one another.” Ex. 1006, 18.
`Negley discloses the CAN protocol uses a message-based data format to
`transfer information from one location to another. Id. at 20. Among other
`things, Negley describes that all messages have an identifier field and that
`the node uses the identifier to determine whether to accept and act upon an
`incoming message. Id. at 21.
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`6. SAE (Ex. 1009)
`SAE discloses that the CAN protocol “offers a comprehensive
`solution to managing communication between multiple CPUs,” using
`message identifiers. Ex. 1009, 29.
`
`7. Bosch (Ex. 1010)
`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.
`
`D. Anticipation and Obviousness Based on Walker
`Petitioner argues that Walker discloses the limitations of claims 1–14
`and 16–20. Pet. 13–40; Ex. 1203 ¶¶ 85–171. Specifically, Petitioner argues
`that Walker discloses the limitations of independent claims 1 and 6, by
`disclosing retrofitting vehicles with trickster circuits between OEM sensors
`and control modules. Pet. 17–23, 26–29; Ex. 1204, 100:21–26; Ex. 1203
`¶ 87. Petitioner maps the limitations of claims 1 and 6 to the disclosure in
`Walker and provides evidence supporting the retrofit device generating
`mimicked signals received by the OEM equipment. Pet. 17–23; Ex. 1204,
`Figs. 24A, 24B, 100:14–102:24, 101:16–23; Ex. 1203 ¶¶ 105–111.
`With respect to independent claim 6, Petitioner provides argument and
`evidence mapping the claim limitations to the trickster circuit in Walker.
`Pet. 27–30; Ex. 1204, 24:54–64, 100:15–102:34, 101:16–23, Figs. 24A,
`24B; Ex. 1203 ¶¶ 132–141. Petitioner provides an annotated version of
`Walker’s Figure 24A, shown below, to illustrate its teachings. Pet. 39.
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`Petitioner’s annotated Figure 24A shows Relay 1010 an electronically
`controlled switch between the OEM Sensor and OEM control Module.
`Pet. 38–39.
`Petitioner argues that Walker discloses or renders obvious claims 18
`and 19, because “[r]elay 1010 in Walker’s trickster circuits is an
`electronically controlled switch that selectively separates a direct electrical
`connection between the OEM sensor (1st apparatus) and OEM control
`module (2nd apparatus).” Pet. 38 (citing Ex. 1204, 101:32–37; Ex. 1203
`¶¶ 167–169); see also Pet. 14–15; Ex. 1203 ¶ 88–89 (describing signal
`passed through relay 1010). For claim 20, Petitioner argues that when the
`battery is disconnected or discharged from the IN VIN voltage of
`Figure 24A, the relay electrically connects the OEM sensor and the OEM
`control module.
`
`We agree with Patent Owner’s argument that the selective control
`limitation of claim 20 is not met in the case where a vehicle battery is
`disconnected or discharged because no voltage in signal necessary to operate
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`the relay is provided during such an electrical failure. PO Resp. 12–13.
`Petitioner does not address Patent Owner’s contentions. See, generally,
`Reply. We credit Patent Owner’s argument and evidence that without IN
`VIN of Figure 24A supplying power to the relay, the relay cannot selectively
`separate the apparatuses as required in claim 18 and subsequently claim 20.
`PO Resp. 14; Ex. 2004 ¶ 28.
`Based on the full record, Petitioner has not shown by a preponderance
`of the evidence that Walker anticipates or renders obvious claim 20.
`
`E. Anticipation and Obviousness Based on Smart Roadster
`Petitioner argues Smart Roadster discloses each element of claims 1–
`3, 5–10, 12, 13, and 16–20, or a person of ordinary skill in the art would
`have found claims 1–3, 5–10, 12, 13, and 16–20 to have been obvious over
`Smart Roadster. Pet. 40–64; Ex. 1203 ¶¶ 172–253. Petitioner provides
`detailed argument and testimony regarding the power steering control circuit
`of Smart Roadster describing the connection and operation of the circuit to
`the OEM control module and sensor of the vehicle. Pet. 40–43; Ex. 1203
`¶¶ 172–178; Ex. 1205, 387–388. Petitioner maps the functions and
`operation of the Smart Roadster circuit to the limitations of claims 1–3, 5–
`10, 12, 13, and 16–20. Pet. 40–64; Ex. 1203 ¶¶ 172–253. Petitioner
`provides citations to the record and testimony to support that a person of
`ordinary skill in the art would understand the control circuit (Ex. 1205, 387–
`388, Fig. 4) to disclose the functions or operations to generate and mimic
`sensor values to remotely control a vehicle via the CAN bus system of the
`vehicle. Pet. 48–49; Ex. 1203 ¶¶ 191–198.
`Patent Owner has disclaimed claims 1–14 and 16–19. Ex. 2002.
`With respect to the remaining challenged claim 20, which recites that “the
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`relay is selectively controlled in response to a presence of an electrical
`failure,” Petitioner’s argument in full asserts that
`Smart Roadster discloses or renders obvious claim 20. In the
`remote control circuits of Smart Roadster, relays K1 and K2
`controlled the position of switches K1 and K2 in response to the
`presence of an electrical failure. In particular, if the
`NOTAUS_SENSE line falls to a low level, which a POSITA
`would understand to be an electrical failure or which a POSITA
`would find obvious as occurring in the case of the vehicle
`battery being disconnected or discharged, or in the case of
`some other cause or fault resulting in a failure to supply the
`NOTAUS_SENSE signal, the relays are set to electrically
`connect the OEM sensors to the OEM control devices to allow
`the human driver to take control of the vehicle instead of the
`remote control. See Smart Roadster [Ex. 1205], Figure 4, p.
`387-388 (“The state of the relay depends on … the level of
`NOTAUS_SENSE line”); Smart Roadster [Ex. 1205], p. 388
`(“Connection … [is] only established if level of
`NOTAUS_SENSE is high.”); Leale [Ex. 1203], ¶249.
`Pet. 62–63 (emphasis added) (alterations added).
`Patent Owner contends that the relays in Smart Roadster are a
`hardwired connection to a physical button, and that the “NOTAUS_SENSE
`line falling to a low level as an electrical failure is not supported by Smart
`Roadster.” PO Resp. 15–16. Furthermore, Patent Owner argues that Mr.
`Leale agreed that the low level in the NOTAUS_SENSE line that Petitioner
`cites occurs when the emergency button is pushed. PO Resp. 16; Ex. 2005,
`29:12–20, 32:22–24. Patent Owner argues that Petitioner failed to recognize
`that when the “NOTAUS_SENSE is low [in Smart Roadster] the second
`apparatus receives the output of the first apparatus, not the mimicked
`electrical signal” as required in claim element 6[e]. PO Resp. 17 (citing
`Ex. 2004 ¶ 32; Pet. 63). Finally, Patent Owner argues that in the event of
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`electrical failure by the vehicle battery disconnected or discharged, the
`Smart Roadster control circuit would lose power and no mimicked electrical
`signal would be available. PO Resp. 17–18. Accordingly, Petitioner does
`not demonstrate sufficiently that Smart Roadster teaches the claim 20
`limitation of “the relay [being] selectively controlled in response to a
`presence of an electrical failure.” Id. at 16–18.
`Petitioner asserts that Smart Roadster discloses an emergency circuit
`that controls the state of relays as argued for claims 18 and 19. Pet. 61–62
`(citing Ex. 1205, 387–388 (“The state of the relays depends on the
`emergency circuit”); Ex. 1203 ¶¶ 246–247). Thus, Petitioner argues that
`“‘in response to the presence of an electrical failure,’ such as when the
`NOTAUS_SENSE is not maintained at a high level, for example due to
`battery discharge, the relays will be opened, as opposed to when
`NOTAUS_SENSE is maintained at a high level where the relays are caused
`to be closed,” and thus meets the limitations of claim 20. Reply 13;
`Ex. 1213 ¶¶ 27–29.
`On the full record we are not persuaded by Petitioner’s argument that
`the Petition persuasively demonstrates the limitations of claim 20. Petitioner
`argues that when the NOTAUS_SENSE line falls to a low level, where the
`relays are controlled by the emergency circuit of Smart Roadster, an
`ordinarily skilled artisan would recognize the NOTAUS_SENSE line falling
`to a low level to be an electrical failure as recited in claim 20. Reply 13.
`Petitioner’s support for this argument depends on testimony and argument
`that the emergency circuit controls the state of the relays and switches (Pet.
`63; Ex. 1205, 387–388), such that “if the NOTAUS_SENSE line falls to a
`low level, [] a POSITA would understand [that] to be an electrical failure”
`
`18
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`(Pet. 62). In its Reply, Petitioner specifically asserts that this low level on
`the NOTAUS_SENSE line occurs when any component in the safety chain
`cuts the emergency circuit. Reply 13 (citing Ex. 1203 ¶¶ 175–178, 202–
`203). This argument connecting the low level with a component triggering
`the emergency circuit, however, is not supported adequately or persuasively
`by the Petition. See Pet. 61–63; Ex. 1203 ¶¶ 244–249. Petitioner’s Reply
`cites testimony that addresses the connection of Smart Roadster’s control
`circuit to the OEM equipment and the Smart Roadster teaching the
`limitations of claim 3 (concerning mimicked electrical signal being initiated
`in response to the external input). Ex. 1203 ¶¶ 175–178, 202–203. This
`testimony fails to sufficiently demonstrate that the electrical failure recited
`in claim 20 is disclosed in Smart Roadster. See Pet. 62–63. In addition,
`Petitioner fails to show adequately that a person of ordinary skill in the art
`would have understood that the Smart Roadster control circuit teaches the
`electrical failure limitation of claim 20 when there is a low level on the
`NOTAUS_SENSE line. Id.
`We also note that Petitioner’s Reply argument that Smart Roadster
`discloses or teaches opening the relays when “any component in the safety
`chain cuts the emergency circuit” (Reply 13) is not adequately presented in
`the Petition. Reply 13; Ex. 1213 ¶¶ 27–29. Our rules require that the
`Petition identify where claimed elements are found in the reference(s) and
`must explain the relevance of those identified portions of the reference(s).
`See, e.g., 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each
`element of the claim is found in the prior art patents or printed publications
`relied upon.”); see also 37 C.F.R. § 42.104(b)(5) (the petition must identify
`
`19
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`IPR2020-00268
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`“the relevance of the supporting evidence to the challenge raised, including
`identifying specific portions of the evidence that support the challenge”).
`Here, Petitioner’s argument in the Reply regarding the functions of
`the emergency circuit, DSPs, and the circuits functions during electrical
`failure (Reply 14–17; Ex. 1213 ¶¶ 20–40) do not merely provide
`clarification of the argument presented in the Petition but, instead, address
`the explanation that should have been included in the Petition, as required by
`our rules. Petitioner’s arguments and evidence in the Reply are the type of
`material that should have been included in the Petition in the first instance to
`present a prima facie case of unpatentability, and, therefore, are improperly
`introduced for the first time in the Petitioner Reply. See Patent Trial and
`Appeal Board Consolidated Trial Practice Guide 73–75 (Nov. 2019)
`(“Consolidated Trial Practice Guide”), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated (discussing the appropriate scope for a
`reply); id. at 73 (“Petitioner may not submit new evidence or argument in
`reply that it could have presented earlier, e.g. to make out a prima facie case
`of unpatentability.”). It was Petitioner’s burden to demonstrate sufficiently
`in the Petition that the cited prior art renders the challenged claims
`unpatentable, including showing that the Petition’s contentions are supported
`by evidence. See 35 U.S.C. § 314(a); see also Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
`is unpatentable.” (emphases added)) (citing 35 U.S.C. § 312(a)(3));
`Intelligent Bio-Systems, 821 F.3d at 1369 (requiring “the initial petition
`identify ‘with particularity’ the ‘evidence that supports the grounds for the
`challenge to each claim.’” (emphases added)); 37 C.F.R. §§ 42.104(b)(4) &
`
`20
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`(5). Petitioner’s arguments in its Reply are not supported sufficiently by the
`Petition. Accordingly, we accord Petitioner’s new argument in the Reply no
`weight.
`Referring back to only the arguments introduced in the Petition,
`Petitioner’s conclusory argument regarding the Smart Roadster circuit and
`performance when the battery is being disconnected or discharged fails to
`show that Smart Roadster anticipates the limitations of claim 20. Pet. 62–
`63. Furthermore, Petitioner fails to provide sufficient argument and
`evidence in the Petition to establish that Smart Roadster teaches that when
`the NOTAUS_SENSE is not maintained at a high level due to battery
`discharge or disconnection an electrical failure as recited in claim 20 has
`occurred. Pet. 62–63. Petitioner’s obviousness arguments rely on the same
`NOTAUS_SENSE signal arguments addressed above and fail to adequately
`address how a battery disconnection or discharge performs with respect to
`the Smart Roadster emergency circuit that Petitioner cites in its Reply. Id.;
`Reply 17.
`Based on the foregoing, we find that Petitioner has not shown by a
`preponderance of the evidence that Smart Roadster anticipates or renders
`obvious claim 20.
`
`F. Obviousness based on Dietz
`Petitioner argues that Dietz, Negley, SAE, and Bosch teach the
`limitations of claims 1–3, 5–10, 12, 13, 15–20, providing argument and
`evidence mapping the limitations of the challenged claims to Dietz. Pet. 64–
`77; Ex. 1203 ¶¶ 214–327; Ex. 1005, 3, 4–6. Petitioner also argues that
`Dietz, Negley, SAE, Bosch, and Smart Roadster teach the limitations of
`claims 6 and 18–20. Pet. 78–79; Ex. 1203 ¶¶ 333–335. Petitioner’s
`
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`argument and evidence rely on a figure in the Dietz installation manual
`showing a retrofit module inserted into the CAN bus between a navigation
`OEM apparatus and the vehicle. Pet. 66 (showing annotated figure);
`Ex. 1005, 3. Petitioner argues that a skilled artisan would have understood
`the operation of the OEM CAN bus and the signaling necessary to add the
`1280 module in Dietz to the vehicle. Pet. 64–66; Ex. 1005, 3, 4–6; Ex. 1203
`¶¶ 254–258.
`In our Decisi
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