throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper 8
`Entered: June 16, 2020
`
`
`
`
`
`
`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
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2020-00268
`Patent 10,454,707 B2
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`
`I. INTRODUCTION
`
`Dataspeed Inc. (“Petitioner”) filed a Petition under 35 U.S.C. § 311
`
`requesting inter partes review of claims 1–20 of U.S. Patent No. 10,454,707
`
`B2 (Ex. 1201, “the ’707 patent”). Paper 1 (“Pet.”). Sucxess, LLC (“Patent
`
`Owner”) did not file a Preliminary Response.
`
`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) (2018); see also 37
`
`C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`
`The Supreme Court has held that under 35 U.S.C. § 314, we may not
`
`institute review of fewer than all claims challenged in the petition. SAS
`
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`
`Having considered the arguments and the associated evidence
`
`presented in the Petition, for the reasons described below, we institute inter
`
`partes review.
`
`II. BACKGROUND
`
`A. Real Party-in-Interest
`
`Petitioner states that it, Dataspeed Inc., is the sole real party-in-
`
`interest. Pet. 2.
`
`B. Related Proceedings
`
`Petitioner and Patent Owner note that 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.
`
`2
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`

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`IPR2020-00268
`Patent 10,454,707 B2
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`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.) are related matters. Pet. Paper 5, 1.
`
`C. 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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`IPR2020-00268
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`
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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.
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`4
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`IPR2020-00268
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`Messages to telecommunication apparatus 200 are communicated
`
`through first and second data buses, as depicted in Figure 7, reproduced
`
`below.
`
`
`
`
`
`Figure 7 is a block diagram that depicts emergency call apparatus 710.
`
`Ex. 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
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`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.
`
`5
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`IPR2020-00268
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`D. Challenged Claims
`
`Petitioner challenges claims 1–20 of the ’707 patent. Claims 1 and 6
`
`are independent claims, and claim 1 is reproduced below with added
`
`identification of claim elements in brackets.
`
`1. A method, comprising:
`
`[a] providing a vehicle having a factory-installed first
`apparatus electrically connected to a factory-installed second
`apparatus,
`the
`factory-installed second apparatus being
`configured to receive an electrical signal from the factory-
`installed first apparatus;
`
`[b] electrically disconnecting the factory-installed first
`apparatus from the factory-installed second apparatus;
`
`[c] electrically connecting a retrofit apparatus to the
`factory-installed first apparatus and to the factory-installed
`second apparatus;
`
`[d] generating a mimicked electrical signal in the retrofit
`apparatus independently of the electrical signal from the factory-
`installed first apparatus; and
`
`[e] receiving the mimicked electrical signal in the factory-
`installed second apparatus.
`
`Ex. 1201, 10:62–11:10.
`
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`E. Prior Art and Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds under 35 U.S.C. §§ 102 and
`
`103 (Pet. 3–4):
`
`Challenged Claims
`1–14, 16–20
`1–14, 16–20
`1–3, 5–10, 12, 13,
`16–20
`1–3, 5–10, 12, 13,
`16–20
`4, 11, 14
`
`1–3, 5–10, 12, 13,
`15–20
`4, 11
`6, 18–20
`
`6, 13, 15, 17
`
`35 U.S.C. §
`§ 1021
`§ 103
`§ 102
`
`Reference(s)/Basis
`Walker2
`Walker
`Smart Roadster3
`
`§ 103
`
`Smart Roadster
`
`§ 103
`
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`
`Smart Roadster, Walker,
`Buehler4
`Dietz5, SAE6, Bosch7,
`Negley8
`Dietz, Walker, Buehler
`Dietz, SAE, Negley, Bosch,
`Smart Roadster
`Walker, Dietz, SAE,
`Negley, Bosch
`
`Petitioner relies on the Declaration of Robert Leale (Ex. 1203) to support the
`
`Petition. Pet. 1.
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. §§ 102 and 103 effective March 16, 2013.
`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”).
`4 U.S. Patent Application No. 2005/0060066 A1 published Mar. 17, 2005.
`(Ex. 1211, “Buehler”).
`
`7
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`
`III. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`Petitioner contends a person of ordinary skill in the art (“POSITA”)
`
`would have a bachelor’s degree in engineering with relevant coursework, or
`
`at least two years of work experience in the design, operation, and
`
`functioning of Controller Area Network (“CAN”) systems. Pet. 9 (citing
`
`Ex. 1203 ¶ 46).
`
`Patent owner has not yet addressed the level of ordinary skill. Based
`
`on the limited record before us, we determine from the level of skill
`
`reflected in the prior art of record that an ordinarily skilled artisan requires a
`
`bachelor’s degree or some post-secondary education along with experience
`
`in the relevant field or an engineering degree with relevant coursework.
`
`Accordingly, at this stage and for the purposes of this Decision, we
`
`determine that a person of ordinary skill in the art would have a bachelor’s
`
`degree in engineering with relevant coursework or post-secondary education
`
`(Bachelor’s or associate degree) and four years of work experience in the
`
`design, operation, and functioning of CAN systems.
`
`
`5 Audiotechnik Dietz, Installation/connection manual for multimedia
`interface 1280, March 16, 2005, http:/www.dietz.biz. (Ex. 1005, “Dietz”).
`6 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”).
`7 Robert Bosch, CAN Specification Version 2.0, Bosch, Sept. 1991.
`(Ex. 1010, “Bosch”).
`8 Bruce Negley, Getting Control Through CAN, The Journal of Applied
`Sensing Technology, Oct. 2000, vol. 17, no. 10, pages 16–33. (Ex. 1006,
`“Negley”).
`
`8
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`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 that no terms require construction. Pet. 5–6.
`
`Petitioner argues that in light of the prosecution history, “the Board may
`
`wish to construe ‘independently’ or ‘in response to’ in view of the
`
`prosecution history of the ’707 patent.” Pet. 6. Petitioner asserts that that
`
`during prosecution of the ’707 patent, Patent Owner “described to the
`
`Examiner how ‘generat[ing/es] . . . independently’ (claims 1 and 6),
`
`‘receiving . . . independently’ (claim 3), and ‘generates . . .in response to’
`
`(claim 10) should be understood” and “provided illustrations and explained
`
`that a signal is generated ‘independently’ where the ‘retrofit apparatus is not
`
`required to even receive the original signal.’” Pet. 6 (citing Ex. 1202, 21–22
`
`(Amendment at 9–10)). Petitioner adds that Patent Owner also “provided a
`
`similar illustration for the ‘in response to’ recitation of claim 10.” Id.
`
`Petitioner argues that Patent Owner’s illustrations and description in
`
`the prosecution history are consistent with the how an ordinarily skilled
`
`artisan would have understood “independently and “in response to” in the
`
`challenged claims. Pet. 8–9; Ex. 1203 ¶¶ 110–112.
`
`Patent Owner has not yet addressed claim construction. We agree
`
`with Petitioner that no terms require express construction for purposes of
`
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`institution, and at this stage in the proceeding, we do not expressly construe
`
`“independently” and “in response to.” The parties are encouraged to
`
`develop the record regarding the scope and meaning of these terms. 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 Prior Art
`
`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
`
`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.
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`
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`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.
`
`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.
`
`11
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`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 1280 Multimedia Interface device 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.
`
`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.
`
`12
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`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. 17–40; Ex. 1203 ¶¶ 85–171. Specifically, Petitioner argues
`
`that Walker discloses the limitations of independent claims 1 and 6, by
`
`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.
`
`With respect to dependent claim 2–5, 7–14, and 16–20, Petitioner
`
`argues that Walker discloses or renders obvious the dependent limitations,
`
`arguing that a person of skill in the art would understand the known
`
`functions and operation of the trickster circuit to disclose the limitations or
`
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`would have motivated a person of skill in the art to apply the trickster circuit
`
`to teach the limitations of the dependent claims. Pet. 23–26, 30–40.
`
`Based on the record before us and having reviewed Petitioner’s
`
`contentions without a response from Patent Owner, we determine that
`
`Petitioner has demonstrated a reasonable likelihood that it will succeed in
`
`showing claims 1–14 and 16–20 are anticipated by Walker or would have
`
`been rendered obvious over Walker.
`
`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.
`
`On the present record and having reviewed Petitioner’s contentions
`
`for each challenged claim without a response from Patent Owner, we
`
`determine that Petitioner has demonstrated a reasonable likelihood that it
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`will succeed in showing claims 1–3, 5–10, 12, 13, and 16–20 anticipated by
`
`Smart Roadster or would have been rendered obvious over Smart Roadster.
`
`F. Claims 4, 11, and 14: Smart Roadster, Walker and Buehler
`
`Dependent claims 4 and 11 recite that the electric signal of claims 1
`
`and 6 respectively, “[are] a variable resistance” (Ex. 1201, 11:21–22, 12:11–
`
`12). Dependent claim 14 recites a related limitation for independent claim 6
`
`via dependent claim 13 that “the first electrical interface is a variable
`
`resistance interface.” Ex. 1201, 12:20–21.
`
`Petitioner argues that “Smart Roadster discloses or renders obvious
`
`the method of claims 1, 6, and 13, but Smart Roadster does not describe the
`
`internal transducing circuitry of its sensors” and a skilled artisan would
`
`understand that the sensor could be “a transducer that provides a signal
`
`based on a variable resistance.” Pet. 63–64; Ex. 1203 ¶¶ 250–253; Ex. 1211
`
`¶ 46 (“The transducer 42 may be a potentiometer, for example.”); Ex. 1204,
`
`74:14–16 (stating that “Most older [throttle position sensors] were simple
`
`variably resisted currents to signify the throttle position from a
`
`potentiometer”), 76:15-19. Petitioner argues that a person of ordinary skill
`
`would have recognized the structure of Buehler to correspond to the throttle
`
`control mechanism of Smart Roadster, or the known use of potentiometers
`
`for throttle control disclosed in Walker. Ex. 1203 ¶ 253. Petitioner has
`
`provided sufficient articulated reasoning to combine Smart Roadster with the
`
`teachings of one or more of Walker and Buehler. Pet. 63–64; Ex. 1203
`
`¶¶ 250–253.
`
`Based on the record before us and without a response from Patent
`
`Owner, we determine that Petitioner has demonstrated a reasonable
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`likelihood that claims 4, 11, and 14 would have been obvious in view of
`
`Smart Roadster in combination with one or more of Walker and Buehler.
`
`G. Obviousness over Dietz, Negley, SAE, and Bosch
`
`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’s argument and
`
`evidence relies heavily 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 understand 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. 1003, 3, 4–6; Ex. 1202 ¶¶ 254–258.
`
`On the present record, Petitioner has not demonstrated a likelihood of
`
`success in showing that Dietz, Negley, SAE, and Bosch teach the limitations
`
`of independent claims 1 and 6. Pet. 66–70; 71–72. Petitioner’s limitation-
`
`by-limitation analysis relies on page 3 of the Dietz 1280 installation manual
`
`and testimony from Mr. Leale to support the specific messaging and signal
`
`limitations of claims 1 and 6. Pet. 68–70, 72. We find that Petitioner has
`
`not provided sufficient evidence and argument to support the conclusions
`
`regarding Dietz’s functions. For example, Petitioner argues:
`
`The state of motion of the vehicle is determined by the
`navigation system module by way of the CAN Bus. When
`activated, Dietz operates to suppress the relevant vehicle
`motion signals provided by the OEM vehicle to the navigation
`unit and provides its own electrical signals or messages
`indicating the vehicle is not in motion (e.g., the vehicle in Park)
`instead.
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`Pet. 65–66; Ex. 1005, 3; Ex. 1203 ¶¶ 256–258, 290–294. Petitioner has not
`
`provided sufficient evidence and argument to support the conclusions
`
`regarding Dietz’s functions regarding signals or messaging regarding the
`
`motion of the vehicle or CAN bus messaging based on the installation
`
`manual figure in Dietz and Petitioner’s declarant testimony. Pet. 68;
`
`Ex. 1203 ¶¶ 271–272.
`
`Based on the present record and without a response from Patent
`
`Owner, Petitioner has not demonstrated a likelihood of success in showing
`
`that Dietz, Negley, SAE, and Bosch teach the limitations of claims 1 and 6.
`
`Accordingly, Petitioner has not demonstrated a likelihood of success with
`
`respect to claims 2, 3, 5, 7–10, 12, 13, and 15–20, which depend from
`
`independent claims 1 and 6.
`
`H. Claims 4 and 11: Dietz, Walker and Buehler
`
`Petitioner contends that Dietz in view of one or more of Walker or
`
`Buehler renders dependent claims 4 and 11 obvious. Pet. 77–78.
`
`Petitioner’s arguments rely on Dietz to teach the limitations of claim 1 and
`
`6. Because we determined above without a response from Patent Owner that
`
`Petitioner has not demonstrated a likelihood of success in showing that
`
`Dietz, Negley, SAE, and Bosch teach the limitations of claims 1 and 6, we
`
`determine that Petitioner has not demonstrated a likelihood of success in
`
`showing that Dietz in view of one or more of Walker or Buehler would
`
`render claims 4 and 11 obvious.
`
`I. Claims 6 and 18–20: Dietz, SAE, Negley, Bosch, and Smart
`Roadster
`
`Petitioner argues that Dietz, Negley, SAE, Bosch, and Smart Roadster
`
`teach the limitations of claims 6 and 18–20. Pet. 78–79; Ex. 1203 ¶¶ 333–
`
`17
`
`

`

`IPR2020-00268
`Patent 10,454,707 B2
`
`335. Because we determined above that Petitioner has not demonstrated a
`
`likelihood of success in showing that Dietz, Negley, SAE, and Bosch teach
`
`the limitations of claim 6 without a response from Patent Owner, we
`
`determine that Petitioner has not demonstrated a reasonable likelihood that
`
`Dietz, Negley, SAE, Bosch, and Smart Roadster would render claims 6 and
`
`18–20 obvious.
`
`J. Claims 6, 13, 15, and 17: Walker, Dietz, SAE, Negley, and Bosch
`
`Petitioner argues that Walker discloses the limitations for independent
`
`claims 6 and its dependent claim 13 ad discussed on pages 26–30 and 35–36
`
`of the Petition. Pet. 79–80. Claim 15 adds the requirement that the first
`
`electrical interface [of claim 13] is a CAN vehicle data bus. Ex. 1201,
`
`12:22–23. Claim 17 adds a control processor to the retrofit apparatus of
`
`claim 6. Ex. 1201, 12:28–29. Petitioner argues that a person of ordinary
`
`skill in the art would understand that OEM sensors provide signals to over a
`
`CAN bus to OEM control modules. Pet. 80 (citing Ex. 1006, 7; Ex. 1009, 3
`
`(“The Controller Area Network (CAN) protocol … offers a comprehensive
`
`solution to managing communication between multiple CPUs.”); Ex. 1010,
`
`6–16, 38–51, 58. Petitioner argues that “[i]t would have been would have
`
`been obvious for a POSITA to use a CAN bus to provide signals from an
`
`OEM sensor to an OEM control module in Walker,” which teaches installing
`
`a trickster circuit on the CAN bus and CAN bus control module node. Pet.
`
`80; Ex. 1204, 119:41–46, 117:38–46; Ex. 1203 ¶ 340. We determine that
`
`Petitioner has provided sufficient articulated reasoning to support the
`
`motivation to combine the teachings of Walker with one or more of SAE,
`
`Negley, and Bosch. We do not find that Petitioner has provided sufficient
`
`18
`
`

`

`IPR2020-00268
`Patent 10,454,707 B2
`
`evidence and argument to support the motivation to combine Dietz and
`
`Walker.
`
`Based on the foregoing and our determination above the regarding the
`
`likelihood of success in showing that Walker teaches the limitations of
`
`claims 6 and 13 and without a response from Patent Owner, we determine
`
`that Petitioner has demonstrated a reasonable likelihood that claims 6, 13,
`
`15, and 17 would have been obvious in view of Walker in combination with
`
`one or more of SAE, Negley, and Bosch. We do not find that Petitioner has
`
`demonstrated a reasonable likelihood that claims 6, 13, 15, and 17 would
`
`have been obvious in view of Walker in combination with Dietz.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we have determined that there is a
`
`reasonable likelihood that the Petitioner would prevail with respect to at
`
`least one of the claims challenged in the Petition. We therefore institute trial
`
`as to all challenged claims on all grounds stated in the Petition.
`
`V. ORDER
`
`In view of the foregoing, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to all claims and all grounds in the Petition;
`
`and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, inter partes review of the ʼ707 patent shall commence on
`
`the entry date of this Decision, and notice is hereby given of the institution
`
`of a trial.
`
`
`
`
`
`19
`
`

`

`IPR2020-00268
`Patent 10,454,707 B2
`
`
`PETITIONER:
`
`Peter W. Gowdey
`Wayne M. Helge
`James T. Wilson
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`pgowdey@dbjg.com
`whelge@dbjg.com
`jwilson@dbjg.com
`
`PATENT OWNER:
`
`Bernd Axel Nix
`SMARTPAT PLC
`axel.nix@smartpat.net
`
`
`
`
`
`20
`
`

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