Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: July 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BMW OF NORTH AMERICA, LLC AND MERCEDES-BENZ USA, LLC,
`Petitioner,
`v.
`STRAGENT, LLC,
`Patent Owner.
`
`IPR2021-00419
`Patent 9,705,765 B2
`
`
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and JASON M.
`REPKO, Administrative Patent Judges.
`WHITE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 325(d)
`
`
`
`
`
`
`
`

`

`IPR2021-00419
`Patent 9,705,765 B2
`
`
`INTRODUCTION
`I.
`BMW of North America and Mercedes-Benz USA, LLC (collectively
`“Petitioner”), request institution of an inter partes review of claims 1–31 of
`U.S. Patent No. 9,705,765 B2 (Ex. 1001, “the ’765 patent”). Paper 1
`(“Pet.”). Patent Owner Stragent, LLC, filed a Preliminary Response. Paper
`7 (“Prelim. Resp.”). Patent Owner also filed a Disclaimer (Ex. 2004)
`disclaiming claims 1–11 and 13–23. Paper 13.
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “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.” For the reasons explained
`below, we do not institute an inter partes review in this proceeding.
`A. Related Matters
`The Board previously determined that all claims of U.S. Patent Nos
`8,209,705 B2 (“the ’705 patent”) and 8,566,843 B2 (“the ’843 patent”) were
`unpatentable. See Pet. 1–3, 11–12. The previous IPRs involving the ’705
`patent are IPR2017-00458, IPR2017-00676, IPR2017-01502, IPR2017-
`01521, and IPR2017-01522. Paper 5, 2. The previous IPRs involving the
`’843 patent are IPR2017-00457, IPR2017-00677, IPR2017-01503,
`IPR2017-01504, IPR2017-01519, and IPR2017-01520.1 Id. Patent Owner
`did not appeal these decisions. See Pet. 3. The ’765 patent claims priority to
`the ’843 patent and the ’705 patent through a chain of continuations.
`Ex. 1001, code (63).
`
`
`1 For convenience, the other IPRs will be referenced using the last three or
`four digits of the case followed by “IPR.” For example, “the 458 IPR”
`refers to IPR2017-00458, and “the 1522 IPR” refers to IPR2017-01522.
`
`2
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`Patent 9,705,765 B2
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`
`The ’765 patent also has been asserted in the following matters:
`Stragent, LLC v. BMW of North America, LLC, and BMW Manufacturing
`Co., LLC, (C.A. No. 20-510-LPS) (D. Del); Stragent, LLC v. Mercedes-Benz
`USA, LLC Mercedes-Benz Vans, LLC, Daimler Trucks North America, LLC,
`and Daimler North America Corp. (C.A. No. 20-511-LPS) (D. Del), and
`Stragent, LLC v. Volvo Car North America, LLC (C.A. No. 20-512-LPS) (D.
`Del). Pet. 4; Paper 5, 1–2.
`B. Statutory Disclaimer
`Patent Owner filed a “Statutory Disclaimer of Claims 1–11 and 13–23
`of U.S. Patent No. 9,705,765.” Paper 11; Ex. 2004. A “patent owner may
`file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with
`§1.321(a) of this chapter, disclaiming one or more claims in the patent. No
`inter partes review will be instituted based on disclaimed claims.”
`37 C.F.R. § 42.107(e) (2019). A disclaimer under 35 U.S.C. § 253(a) is
`“considered as part of the original patent” as of the date on which it is
`“recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be
`“recorded” in the Office, the document filed by the patent owner must:
`(1) Be signed by the patentee, or an attorney or agent of record;
`(2) Identify the patent and complete claim or claims, or term
`being disclaimed. A disclaimer which is not a disclaimer of a
`complete claim or claims, or term will be refused recordation;
`(3) State the present extent of patentee’s ownership interest in
`the patent; and
`(4) Be accompanied by the fee set forth in [37 C.F.R.]
`§ 1.20(d).
`37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is immediately
`“recorded” on the date that the Office receives a disclaimer meeting the
`
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`IPR2021-00419
`Patent 9,705,765 B2
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`requirements of 37 C.F.R. § 1.321(a), and that no further action is required
`in the Office). Based on our review of Exhibit 2004 and Office public
`records, we conclude that claims 1–11 and 13–23 have been disclaimed
`under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), and thus,
`no inter partes review shall be instituted as to those claims. 37 C.F.R.
`§ 42.107(e).
`
`C. The ’765 Patent
`The ’765 patent is titled “System, Method and Computer Program
`Product for Sharing Information in a Distributed Framework.” Ex. 1001,
`code (54). The purported invention of the ’765 patent “may optionally apply
`to electronic vehicle communication and control systems, real-time
`monitoring systems, industrial automation and control systems, as well as
`any other desired system.” Id. at 1:27–31. Figure 1 is reproduced below.
`
`
`Figure 1 depicts elements of a distributed embedded communication
`and computing system. Id. at 3:19–20. In an automotive environment,
`electronic control units 102 (“ECUs”) control applications such as engine
`
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`IPR2021-00419
`Patent 9,705,765 B2
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`control, brake control, or diagnostics through connections to various sensors
`and actuators organized into separate subnetworks. Id. at 3:22–27.
`Applications are grouped into backbone system functions, such as “body
`control, power train, and chassis.” Id. at 3:29–31. Messages are relayed up
`and down through the system layers. Id. at 3:34–36. Each layer may
`contain multiple ECUs connected through wired serial multiplexing bus
`systems such as Controller Area Network (“CAN”), Local Interconnect
`Network (“LIN”), and Flexray. Id. at 3:37–42.
`ECUs 102 “typically share information with devices that are
`connected on the same physical multiplexing system. This method of
`information sharing is called horizontal information sharing in a hierarchical
`system.” Id. at 3:61–66. In the alternative, a bulletin board may be used in a
`manner such that “information is shared, in real-time, among a plurality of
`heterogeneous processes.” Id. at 1:36–38. “[H]eterogeneous networks may
`refer to any different communication networks with at least one aspect that
`is different.” Id. at 7:43–45. Figure 7 is reproduced below.
`
`
`Figure 7 “illustrates the logical architecture of the interconnection
`between three heterogeneous network controllers (702, 703,704), the
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`Patent 9,705,765 B2
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`associate[d] Operating System interfaces (705), the remote message
`communication process (706), the bulletin board (608), and the application
`process (606).” Id. at 6:46–50. In operation, external event 701, such as a
`flag indicating that data from a sensor are available, is transmitted on a
`network to a communication bus controller, such as network controller 703.
`Id. at 7:20–23. This causes an operating system interface (e.g.,
`communication interface 709) to notify a remote message communication
`process (e.g., remote message conversion method 710) that data are
`available. Id. at 7:23–25. Remote message conversion method 2 (710)
`extracts the data (e.g. real time variables) from the message and stores the
`data in bulletin board 608. Id. at 7:25–27. In addition, the bulletin board
`may store the associated event as variable and signal the bulletin-board event
`manager that new data is available. Id. at 7:27–31. The bulletin event
`manager then notifies application process 606 that an event has occurred.
`Id. at 7:32–33. Figure 10 is reproduced below.
`
`
`Figure 10 depicts the usage of the bulletin board. Id. at 8:29–30. A
`request is made to access to the common resource. Id. at 8:30–31. If the
`
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`Patent 9,705,765 B2
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`resource is not available, the requestor may try again after a waiting period
`(step 1011) until the resource is available. Id. at 8:36–37. An error
`notification may be issued if the requestor is unable to access the common
`resource after a certain time has elapsed (step 1009) beyond a configurable
`threshold. Id. at 8:37–41. If the resource is available then the requesting
`process gains access to the resource. Id. at 8:35. “Then, the bulletin board
`store procedure (804) copies the variables or parameters from its private
`memory (1006) to the shared bulletin-board memory (601).” Id. at 8:44–47.
`D. Illustrative Claim
`After the disclaimer, claims 12 and 24–31 remain at issue. Claims 12
`and 24 are independent. Claims 25–31 depend from claim 24. Claim 12 is
`reproduced below and is illustrative of the claimed subject matter.
`12. An apparatus, comprising:
`an automotive electronic control unit comprising a hardware
`and instructions for:
`receiving information associated with a message received
`utilizing a Controller Area Network protocol associated with
`a Controller Area Network;
`determining whether a storage resource is available;
`if the storage resource is not available, ascertaining whether a
`threshold has been reached and re-trying an access in
`connection with the storage resource if the threshold has not
`been reached;
`if the threshold has been reached, sending an error
`notification;
`if the storage resource is available, storing the information
`utilizing the storage resource; and
`sharing the information utilizing a Flexray network protocol
`associated with a Flexray network;
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`IPR2021-00419
`Patent 9,705,765 B2
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`
`wherein the receiving, the determining, the storing, and the
`sharing all occur in less than one second; the automotive
`electronic control unit remains in hardwired communication
`with the Controller Area Network and the Flexray network;
`and the automotive electronic control unit includes:
`a first interface for interfacing with the Controller Area
`Network, the first interface including a first interface-related
`data link layer component for using Controller Area Network-
`related data link layer header bits and a first interface-related
`network layer component for using Controller Area Network-
`related network layer header bits; and
`a second interface for interfacing with the Flexray network,
`the second interface including a second interface-related data
`link layer component for using Flexray network-related data
`link layer header bits and a second interface-related network
`layer component for using Flexray network-related network
`layer header bits;
`layer
`interface-related network
`wherein
`the
`second
`component uses the Flexray network-related network layer
`header bits by adding the Flexray network-related network
`layer header bits to a data unit including the information, and
`then the second interface-related data link layer component
`uses the Flexray network-related data link layer header bits
`by adding the Flexray network-related data link layer header
`bits to the data unit, before communicating the data unit on a
`physical link of the Flexray network;
`wherein the first interface-related data link layer component
`uses the Controller Area Network-related data link layer
`header bits by removing the Controller Area Network-related
`data link layer header bits from another data unit, and the first
`interface-related network
`layer component uses
`the
`Controller Area Network-related network layer header bits by
`removing the Controller Area Network-related network layer
`header bits from the another data unit, where the information
`is extracted from the another data unit before the sharing.
`Ex. 1001, 14:4–64.
`
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`IPR2021-00419
`Patent 9,705,765 B2
`
`
`D. Evidence
`Petitioner relies on the following references:
`OSEK/VDX Network Management Concept and Application
`Programming Interface, Ver. 2.51 (May 31, 2000) (“OSEK
`NM”) (Ex. 1011)
`
`OSEK/VDX Communication Specification, Ver. 2.2.2 (Dec.
`18, 2000) (“OSEK COM”) (Ex. 1012)
`
`OSEK/VDX Fault-Tolerant Communication, Ver. 1.0 (July 24,
`2001) (“OSEK FTCom”) (Ex. 1013)
`
`OSEK/VDX Binding Specification, Ver. 1.3 (Sept. 17, 2001)
`(“OSEK Binding”) (Ex. 1014)
`
`OSEK/VDX Operating System, Ver. 2.1 rev. 1, OSEK (Nov.
`13, 2000) (“OSEK-OS”) (Ex. 1015)
`
`OSEK/VDX Time-Triggered Operating System, Ver. 1.0,
`OSEK (July 24, 2001) (“OSEK-TimeOS”) (Ex. 1016) 2
`
`U.S. Patent Pub. No. 2003/0043739 A1, pub. Mar. 6, 2003,
`filed Aug. 31, 2001 (“Reinold”) (Ex. 1017)
`
`U.S. Patent Pub. No. 2002/0073243 A1, pub. June 13, 2002,
`filed Dec. 4, 2001 (“Staiger”) (Ex. 1018)
`
`
`Pet. 6–7. In addition, Petitioner provides Declarations by Vijay K.
`Madisetti, Ph.D., and R. Benjamin Cassady and Affidavits from Christopher
`Butler and Elizabeth Rosenberg. Exs. 1004, 1020 – 1022.
`
`
`2 For ease of reference, we refer to OSEK-NM, -COM, -FTCom, -Binding,
`-OS, and -Time OS collectively as “OSEK.”
`
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`Patent 9,705,765 B2
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`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 7):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`12, 24, 25, and 29–31
`103(a)3
`OSEK, Reinold
`26–28
`103(a)
`OSEK, Reinold, Staiger
`
`
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 325(d)
`Patent Owner asserts that Petitioner relies on OSEK as the primary
`reference for these challenges and that
`the OSEK prior art was submitted to the USPTO so that the
`same Examiner has received and considered the same OSEK
`prior art six (6) times during the prosecution of the patent
`family from which the instant patent spawned. Further, the
`claims of the instant patent were specifically amended to
`overcome such OSEK prior art.
`Prelim. Resp. 1 (citing Ex. 2003) (internal citations omitted). Pursuant to
`35 U.S.C. § 325(d) as part of our determination as to whether review should
`be instituted we “may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” Based on Patent Owner’s
`assertions we find it prudent to consider whether we should exercise our
`discretion under § 325(d).
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (2018); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367
`
`
`3 The ’765 patent claims priority through a chain of continuations to an
`application that was filed before the effective dates of the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”)
`amendments to 35 U.S.C. § 103. Therefore, we refer to the pre-AIA version
`of this section.
`
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`IPR2021-00419
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`(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute
`an IPR proceeding.”). We use a two-part framework in determining whether
`to exercise discretion under § 325(d), specifically:
`(1) whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office;
`and (2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of
`challenged claims.
`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).
`In applying the two-part framework, we consider several non-
`exclusive factors, including
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`paragraph). If, after review of factors (a), (b), and (d), we determine that the
`same or substantially the same art or arguments previously were presented to
`
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`the Office, then we consider factors (c), (e), and (f), which relate to whether
`the petitioner demonstrates that the Office erred in a manner material to the
`patentability of the challenged claims. Advanced Bionics, Paper 6 at 10.
`1. Whether the Same or Substantially the Same Art Previously Was
`Presented to the Office
`Under the first prong of the Advanced Bionics framework, we
`evaluate whether the same or substantially the same art or arguments
`previously were presented to the Office. In this prong, we consider Becton
`Factors (a), (b), and (d), which relate to the similarities and material
`differences between the asserted art and the prior art involved during
`examination, the cumulative nature of the art, and the overlap of the
`arguments presented. Advanced Bionics, Paper 6 at 10.
`Petitioner argues that Patent Owner “failed to properly cite in any
`Information Disclosure Statement the papers from the previous Stragent
`IPRs that lead to the cancellation of the ’843 and ’705 claims.” Pet. 11
`(citing Ex. 1002; Ex. 1001, 1–3). Patent Owner argues that “[d]uring the
`prosecution of the application leading to the ‘765 Patent, Patent Owner
`advised the Patent Office of the Prior IPR proceedings, including that
`‘related patents (e.g. US8209705 and US8566843) are the subject of pending
`inter partes reviews (IPR No. 2017-00457, IPR No. 2017-00458, IPR No.
`2017-00676, IPR No. 2017-00677).’” Prelim. Resp. 8–9 (citing Ex. 1002,
`3419). Patent Owner further asserts that it cited OSEK on an Information
`Disclosure Statement (“IDS”). Id. at 9 (citing 1002, 31–33, 3238, 3464, and
`3478–3480). In addition, we note that Staiger was cited on an IDS.
`Ex. 1002, 31, 3478.
`We agree with Patent Owner that because each of the OSEK
`references and Staiger were identified on an IDS, which was signed by the
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`Patent 9,705,765 B2
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`Examiner, the six OSEK references and Staiger were considered during the
`prosecution of the ’765 patent. See Ex. 1002, 3478–80 (signed IDS); see
`also Ex. 1001, code (56) (references cited on the face of the ’765 patent).
`Although the record does not reflect that Reinold was presented previously
`to the Office, Petitioner relies extensively on OSEK in its contentions and
`notes that, in previous IPRs, OSEK was found to teach subject matter similar
`to that recited in the claims challenged here. See Pet. 11–12. Accordingly,
`considering Becton factors (a), (b), and (d), the six OSEK references and
`Staiger were previously considered by the Office.
`Therefore, we find that “the same or substantially the same art
`previously was presented to the Office,” and we proceed to determine
`“whether the petitioner has demonstrated that the Office erred in a manner
`material to the patentability of challenged claims.” See Advanced Bionics,
`Paper 6 at 8.
`2. Whether Petitioner Sufficiently Demonstrates that the Office Erred
`Now we turn to the second prong of the Advanced Bionics framework
`and evaluate whether Petitioner sufficiently demonstrates that the Office
`erred. In this prong, we consider Becton Factors (c), (e), and (f), which
`relate to whether Petitioner demonstrates that the Office erred in a manner
`material to the patentability of the challenged claims. Advanced Bionics,
`Paper 6 at 10.
`Becton Factors (c) and (e) address the extent to which the asserted art
`was evaluated previously and the existence of error in regards to that
`previous evaluation. Petitioner repeatedly asserts that, in previous final
`written decisions involving the ’705 and ’843 patents, the Board found that
`OSEK teaches subject matter that is similar to what is recited in the
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`challenged claims. See, e.g., Pet. 11–12, 20, 27, 31, 33, and 34. Petitioner
`does not specifically point to a “material error,” but Petitioner’s arguments
`imply that the Examiner erred in issuing the ’765 patent in light of Board
`findings in the prior IPRs.
`Patent Owner argues that the ’765 patent claims “were specifically
`amended to overcome . . . OSEK prior art.” Prelim. Resp. 1. As part of this
`analysis, it is helpful to review the relevant prosecution history. The
`application that led to the ’765 patent was filed January 12, 2017, along with
`an IDS. Ex. 1002, 29–30. In the IDS cover letter, the Applicant identified
`the IPR proceedings directed to ’705 and ’843 patents. Id. The IDS
`identified Staiger and the six OSEK references. Id. at 31–36. Staiger was
`the first patent document listed on the IDS and in addition to the six OSEK
`references in this proceeding, an additional fourteen references that referred
`to OSEK in the title of the publication were listed on the IDS. Id. at 31–33.
`An Examiner Interview was held on February 27, 2017. Id. at 3432. The
`Interview Summary notes that “Applicants agreed to amend the claims in
`accordance with the Examiners Amendment.” Id. An Examiner’s
`Amendment was entered canceling all pending claims in the application and
`adding claims 28–57. Id. at 3434–54. The amended claims were allowed.
`See id. at 3433. The Notice of Allowability states that it is “responsive to
`the response of 1/12/17 and interview of 2/27/17.” Id. Patent Owner
`characterized these amendments as overcoming the OSEK reference.
`Prelim. Resp. 1.
`Thus, we have a situation in which the Examiner was presented with
`an original set of claims and a set of prior art references including Staiger
`and all six OSEK references. The Examiner had a discussion with the
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`Applicant and at that point, when the Examiner was faced with the original
`application and the references in the IDS, the Examiner and Applicant
`agreed on an entirely new set of claims. Even if the claim amendments were
`not made to avoid OSEK, the evidence indicates a greater degree of
`consideration and evaluation here than the scenario where a reference is
`merely listed on an IDS. The Applicant was aware of OSEK and Staiger and
`their potential application to the claimed subject matter discussed with the
`Examiner due to then pending IPR petitions. For example, the 676 IPR
`petition contends that the there-contested claims were anticipated by Staiger
`and would have been obvious over the OSEK references. See, e.g., 676 IPR,
`Paper 2. The Applicant brought these references and the previous IPR
`petitions to the attention of the Examiner more than a month prior to the
`Examiner interview, which led to the complete replacement of the then
`pending claim set. Petitioner has not brought to our attention any arguments
`or evidence that would dispute Patent Owner’s characterization of the
`prosecution history. See Pet 10–114 (Petitioner’s description of the
`prosecution history). Under this set of circumstances, we are persuaded that
`during the prosecution of the application that led to the ’765 patent, OSEK
`and Staiger were the subject of considerable consideration and evaluation.
`Second, Patent Owner notes what it characterizes to be material
`differences in the claim language between independent claims 12 and 24 of
`the ’765 patent and the claims considered in the previous IPRs. Prelim
`Resp. 3–5. For example, in the Preliminary Response, Patent Owner argues
`
`
`4 Petitioner did make the bare assertion that the previous IPRs were not
`properly cited in the IDS. Pet. 11. Petitioner, however, did not explain its
`basis for making that assertion nor did Petitioner discuss the fact that the
`IPRs were listed in the IDS cover letter. See id.
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`any findings made in the prior IPRs would be irrelevant in regard to certain
`limitations of claims 12 and 24 and that, in any event, those limitations are
`not taught by the asserted art. Id. at 28–64. In our view, the record would
`not support Petitioner’s implied assertion of error by the Examiner if the
`evaluation performed by the Examiner were distinct from the evaluation
`performed in the prior IPRs. This is true because Petitioner is asking us to
`reevaluate the art the Examiner applied to the issued claims, and, if this
`evaluation (OSEK and Staiger applied to the current claims) is the same as
`the evaluation previously performed by the Board, then Petitioner’s
`arguments imply that the Examiner erred by overlooking the teachings relied
`upon by the Board. If, however, the Examiner’s evaluation of OSEK and
`Staiger as applied to the challenged claims is distinct, then Petitioner has
`provided no basis for us to find error on behalf of the Examiner. As such,
`we look to the differences in the claims and the arguments presented to
`determine whether those distinctions would indicate that the Examiner was
`performing the same evaluation as that done in the related IPRs.
`Patent Owner directs our attention to claim 12’s requirement that “if
`the storage resource is not available, ascertaining whether a threshold has
`been reached and re-trying an access in connection with the storage
`resource if the threshold has not been reached.” Id. at 28 (emphasis added).
`Independent claim 24 also recites “re-trying an access.” Ex. 1001, 16:39–
`41. None of the original claims recited “re-trying an access” but rather, the
`original claims recited “issuing another storage resource request in
`connection with the storage resource.” Ex. 1002, 75–82 (independent claims
`1, 8, and 14 contained that the “issuing” language and independent claim 21
`recited “causing a request in connection with the storage resource”).
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`Similarly, claim 1 of the ’705 patent and claim 1 of the ’843 patent both
`recite “determining whether a timeout has been reached and causing a re-
`request in connection with the storage resource if the timeout has not been
`reached.” We also note that now disclaimed claims 1 and 13 recite “issuing
`another storage request.” Ex. 1001, 12:52–53, 15:12–13. Patent Owner
`describes the difference between “re-trying access” and “issuing another
`storage request” as “notable” and provides argument as to why it believes
`the OSEK references fail to teach “re-trying.” Prelim. Resp. 28–53.
`Petitioner does not address the difference in language between “re-
`trying” and “issuing another storage request.” See Pet. 66. The Petition
`does not include specific arguments for this limitation, but rather directs us
`to the allegations regarding now disclaimed claims 1, 5, and 6 and states that
`claim 12 is “unpatentable for similar reasons.” Id. Claim 1, however does
`not contain the “re-trying” language; instead it recites “issuing another
`storage resource request in connection with the storage resource.” Ex. 1001,
`12:52–53. In the context of claim 1, Petitioner asserts that OSEK teaches
`that “the node may receive another message from the unavailable node (i.e.,
`‘issuing another storage resource request in connection with the storage
`resource’).” Pet. 32 (citing OSEK-NM 32). Petitioner directs us to findings
`from the 676 IPR, the 1522 IPR, the 677 IPR, and the 1520 IPR and asserts
`that the Board’s findings in those cases support its arguments here. Id. at 33
`(citing Ex. 1035, 53–56; Ex. 1043, 38; Ex. 1036, 51–54; Ex. 1041, 37). For
`example in the 676 IPR, “Petitioner [drew] a correspondence between OSEK
`NM’s teachings related to receiving another message from the unavailable
`node and a ‘re-request in connection with the storage resource if the timeout
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`IPR2021-00419
`Patent 9,705,765 B2
`
`has not been reached,’ with the normal mode being re-established when the
`message is received.” Ex. 1035, 53–54.
`Patent Owner argues that “‘[OSEK’s] received . . .message’ does not
`constitute the electronic control unit doing anything other than ‘receiving,’
`and certainly does not meet ‘re-trying access.’” Id. at 46–47. Further,
`Patent Owner directs us to an argument from Petitioner that characterizes
`each received message as a separate request for access. Id. at 32.
`Specifically, Petitioner argues that
`As explained claims 1[c]-1[e], OSEK discloses that each node
`issues and receives messages from other nodes to determine
`whether a node is available (“request for access”) and
`consequently whether the storage resource (i.e., data buffer, or
`shared memory) is available; and, if not, and the threshold
`associated with the storage resource request has not been
`reached, issuing another storage resource request in connection
`with the storage resource. OSEK-NM, 8-11. OSEK further
`discloses that each request includes a request for an access.
`Pet. 68–69 (citing Ex. 1004 ¶ 134) (emphasis added). According to Patent
`Owner, if each message received from another node constitutes a separate
`access request then OSEK cannot be said to teach an ECU containing
`instruction for re-trying access. Prelim. Resp. 32. Thus, Patent Owner
`contends that OSEK does not teach a single node containing instructions to
`retry access in the event that access was not obtained originally and the
`threshold had not been met. Id.
`We are charged with ascertaining whether the similarity between the
`previously challenged claims and the issued claims of the ’765 patent is such
`that Petitioner has shown that it was error for the Examiner to have allowed
`these claims over OSEK. See Advanced Bioncs, Paper 6 at 9 (“If reasonable
`minds can disagree regarding the purported treatment of the art or
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`IPR2021-00419
`Patent 9,705,765 B2
`
`arguments, it cannot be said that the Office erred in a manner material to
`patentability.”). In other words, are the previous IPRs sufficient to imply
`that the Examiner erred, or was the Examiner presented with different claim
`language such that a reasonable mind could come to a different conclusion
`as to the application of OSEK and Staiger than the Board found in the
`previous IPRs. Here, the language of claims 12 and 24 was amended to
`recite “re-trying an access” as opposed to the original claims of the
`application that led to the ’765 patent which recited “issuing another storage
`resource request” (original claims 1, 8, and 14) or “causing a re-request”
`(original claim 21) and the claims at issue in the previous IPRs that recited
`“causing a re-request.” See Ex. 1002, 75–82 (original claims). Our review
`of the ’705 and ’843 patents showed that the term “re-trying” was not used
`in either of those patents. See Ex. 1008, Ex. 1009. Thus, the previous
`panels were not charged with determining whether OSEK’s received
`messages taught the recited “re-trying.”
`Based on the record before us, we are persuaded that the Examiner
`was presented with a new limitation and there is no evidence that such a
`limitation was previously analyzed by the Board in light of OSEK. We have
`no testimony or other evidence from Petitioner that the analysis performed
`by the Board as to the previous language implicates the same issues as those
`analyzed by the Examiner. Thus, we are left without evidence in this record
`to establish that the Examiner committed material error in determining that
`the newly presented limitation was patentable over OSEK. Thus, based on
`the record before us, Petitioner has not demonstrated that the Examiner
`committed material error in allowing these claims. Therefore, we are
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`Patent 9,705,765 B2
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`persuaded that Becton Factors (c) and (e) weigh in favor of not instituting
`this IPR.
`As to Becton Factor (f) (extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art), Petitioner
`contends that “the Examiner never considered: (1) Reinold (Ex-1017),
`(2) the OSEK documents (Ex-1011–Ex-1016) in combination with Reinold
`and Staiger (Ex-1018), nor (3) the specific arguments and grounds set forth
`in this Petition and supported by