Sucxess LLC

Patent Trials and Appeals Board

May 10, 2021

IPR2020-00147 (P.T.A.B. May. 10, 2021)

Trials@uspto.gov Paper 25
571-272-7822 Date: May 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DATASPEED INC.,
Petitioner,

v.

SUCXESS LLC,
Patent Owner.
____________

IPR2020-00147
Patent 10,027,505 B2
______________

Before TREVOR M. JEFFERSON, MINN CHUNG, and
NATHAN A. ENGELS, Administrative Patent Judges.

ENGELS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1–16 of U.S. Patent No. 10,027,505 B2
(Ex. 1101, “the ’505 patent”). We have jurisdiction under 35 U.S.C. § 6.
For the reasons discussed herein, we determine that Petitioner has
shown by a preponderance of the evidence that claims 1–16 of the ’505
patent are unpatentable.
II. BACKGROUND
A. Procedural History
Dataspeed Inc. (“Petitioner”) filed a Petition under 35 U.S.C. § 311
requesting inter partes review of claims 1–16 of the ’505 patent. Paper 1
(“Pet.”). Sucxess LLC (“Patent Owner”) filed a Preliminary Response.
Paper 9.
We issued a Decision instituting inter partes review. Paper 10. After
institution, Patent Owner filed a Response. Paper 15 (“PO Resp.”).
Petitioner filed a Reply to Patent Owner’s Response. Paper 18 (“Pet.
Reply”). Patent Owner filed a Sur-Reply to Petitioner’s Reply. Paper 19
(“PO Sur-Reply”).
An oral hearing was held on February 11, 2021, and the record
includes a transcript of the hearing. Paper 24.
B. Real Party-in-Interest
Petitioner states that it, Dataspeed Inc., is the sole real party-in-
interest. Pet. 2.
C. Related Proceedings
The parties state that the ’505 patent is the subject of five district-
court cases involving Patent Owner and various third parties, namely,
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Sucxess LLC v. AutoX Technologies, Inc., No. 1:19-cv-02121 (D. Del.);
Sucxess LLC v. Phantom Auto, Inc., No. 1:19-cv-02122 (D. Del.); Sucxess
LLC v. Pony.ai, Inc., No. 1:19-cv-02123 (D. Del.); Sucxess LLC v. SF
Motors, Inc., No. 1:19-cv-02124 (D. Del.); and Sucxess LLC v. WeRide
Corp., No. 1:19-cv-02130 (D. Del.). Paper 8 at 1. Patent Owner also states
that Petitioner filed a Petition for review of US 9,871,671 in IPR2020-
00116. Paper 8 at 1.
D. The ’505 Patent (Ex. 1101)
Titled “Method, Apparatus and System for Retrofitting a Vehicle”
(Ex. 1101, code (54)), the ’505 patent states that a vehicle could be
retrofitted to add, for example, an emergency call apparatus. Ex. 1101,
2:48–49. Among other things, the ’505 patent describes a retrofit apparatus
in communication with a factory-installed telecommunication apparatus.
Ex. 1101, 2:14–2:62, 9:47–10:16. In one embodiment disclosed in the ’505
patent, the retrofit apparatus is an emergency call apparatus that mimics the
dial command message of a factory-installed apparatus, such as a navigation
system, by using “the same message identifier segment that has been
assigned to navigation system 218 when transmitting its telephone dial
command message.” Ex. 1101, 9:62–65. “By sharing the same message
identifier segment a telephone dial command message originating from
emergency call apparatus 214 and a telephone dial command message
originating from navigation system 218 become indistinguishable for the
telecommunication apparatus 200.” Ex. 1101, 9:66–10:3.
“Telecommunication apparatus 200 hence responds properly to a telephone
dial command message originating from emergency call apparatus 214 even
though it may not have been designed for this purpose.” Ex. 1101, 10:3–7.
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Messaging described in the ’505 patent includes Controller Area
Network (“CAN”) messages. The ’505 patent states that CAN messages
may consist of an identifier segment of 11 or 29 bits and a data segment
carrying a message payload of up to 8 bits. Ex. 1101, 10:17–34.
E. Challenged Claims
Petitioner challenges claims 1–16 of the ’505 patent. Claims 1, 6, and
10 are independent claims, and claim 1 is reproduced below with added
identification of claim elements in brackets.
1. [1.p] A method comprising:
[1.1] providing a vehicle having a factory-installed first
apparatus including a processor, programmed to communicate
with a factory-installed second apparatus through a vehicle data
bus with a first message having an identifier;
[1.2] electrically disconnecting the vehicle data bus
between the factory-installed first apparatus and the factory-
installed second apparatus;
[1.3] electrically connecting a retrofit apparatus to the
vehicle data bus; and
[1.4] transmitting a second message from the retrofit
apparatus to the factory-installed first apparatus, the second
message being indistinguishable from the first message.
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F. Prior Art and Asserted Grounds of Unpatentability
Petitioner asserts the following grounds under 35 U.S.C. § 103:
Claim(s)
Challenged
35 U.S.C. §1 Reference(s)/Basis
1–13 103 Munoz2 or Munoz, Negley3,
SAE4, Bosch5
14–16 103 Munoz or Munoz, Negley,
SAE, Bosch, Lobaza6
1–13 103 Dietz7, Negley, SAE, Bosch
1–13 103 Dietz, Allen8, Negley, SAE,
Bosch
14–16 103 Dietz, Negley, SAE, Bosch,
Lobaza
14–16 103 Dietz, Allen, Negley, SAE,
Bosch, Lobaza
6–12 103 Allen, Negley, SAE, Bosch
10, 14–16 103 Lobaza, Allen, Negley,
SAE, Bosch

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
’505 patent has an effective filing date prior to the effective date of the
applicable AIA amendment, we refer to the pre-AIA version of § 103.
2 Munoz (US 7,737,831 B2; filed Feb. 6, 2007; issued June 15, 2010).
Ex. 1004.
3 Bruce Negley, Getting Control Through CAN, The Journal of Applied
Sensing Technology, Oct. 2000, vol. 17, no. 10, pages 18–33. Ex. 1006.
4 Craig Szydlowski, A Gateway for CAN Specification 2.0 Non-Passive
Devices, SAE Technical Paper Series, 930005, Society of Automotive
Engineers, Inc. 1993, pages 29–37. Ex. 1009.
5 Robert Bosch, CAN Specification Version 2.0, Bosch, Sept. 1991.
Ex. 1010.
6 Lobaza et al. (US 6,812,832 B2; filed Nov. 26, 2002; issued Nov. 2, 2004).
Ex. 1014.
7 Audiotechnik Dietz, Installation/connection manual for multimedia
interface 1280, http:/www.dietz.biz. Ex. 1005.
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Petitioner also relies on the Declaration of Robert Leale (Ex. 1103) to support
the Petition. Pet. 1.
III. ANALYSIS
A. Level of Ordinary Skill in the Art
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. 7. After
institution, Petitioner did not further address the level of ordinary skill, and
Patent Owner “embraced the Board’s guidance” (PO Resp. 9–10).
Accordingly, we apply the same level articulated in the Decision.
B. Claim Construction
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).
The parties address construction of the terms “data bus,” “responds,”
and “receives.” Pet. 6–13; PO Resp. 6–9.

8 Allen et al. (US 2007/0016342 A1; filed June 19, 2006; published Jan. 18,
2007). Ex. 1018.
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1. “Data bus”
Among other limitations, independent claim 1 recites “a processor,
programmed to communicate with a factory-installed second apparatus
through a vehicle data bus,” “electrically disconnecting the vehicle data
bus,” and “electrically connecting a retrofit apparatus to the vehicle
data bus” (emphases added). Independent claims 6 and 10 include
substantially similar recitations.
According to Petitioner, “a POSITA would understand a ‘data bus’ to
refer to ‘a contiguous network providing a communication channel for two
or more modules’” when construed in light of the Specification. Pet. 6
(citing Ex. 1103 ¶59). Patent Owner contends Petitioner’s definition is not
helpful and that defining “data bus” to be a “contiguous network” is
confusing. PO Resp. 6. Patent Owner further states that “‘bus’ should be
construed as defined in the applicable ISO-Standard 11898 as a ‘topology of
a communication network, where all nodes are reached by passive links
which allow transmission in both directions.’” PO Resp. 7 (citing Ex. 2002,
2; Ex. 2028 ¶¶ 21–22).
We determine it is unnecessary to interpret “data bus,” 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).
2. “Responds”
Dependent claim 12 recites “the factory-installed first apparatus
responds to the second message originating from the retrofit apparatus as if
it were the first message received from the factory-installed second
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apparatus” (emphasis added). Petitioner proposes that “[t]he word
‘responds’ should be interpreted to mean ‘act on,’ which, according to
Petitioner, is consistent with the understanding of a POSITA in the field of
CAN systems.” Pet. 7 (citing Ex. 1103 ¶ 63; Ex. 1006, 6–7, 13, Figure 8).
Patent Owner does not disagree with Petitioner’s proposed construction. PO
Resp. 7.
We apply the plain and ordinary meaning of “responds,” which is
consistent with Petitioner’s proposed construction.
3. “Receives”
Although Petitioner does not directly advance an interpretation of
“receives,” Patent Owner contends Petitioner construes the term too broadly
by advancing the position that a message is received when it arrives in a
processor’s “Receive Assembly Registers” block. PO Resp. 7; see Pet. 7–8,
11–14, 31, 57, 62. According to Patent Owner, Petitioner’s interpretation
would mean that all nodes on a network receive all messages, such that
“receiving a message” would be meaningless to differentiate nodes. PO
Resp. 7.
Patent Owner contends “receive” should be construed as “accept.”
PO Resp. 8. Also, citing an overview of CAN-bus messaging in Figure 8 of
Negley, Patent Owner “construes a message to be received when it has
passed the Message Filters/Masks block and is accepted in the ‘Receive
Register’ block so that a microcontroller can act on it.” PO Resp. 7–8
(citing Ex. 1006 p. 11, Fig. 8; Ex. 2028 ¶¶ 23–24).
We find nothing in the intrinsic record that supports construing
“receive” in terms of the message filters/masks block or receive register
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block, and we determine that it is unnecessary to expressly construe
“receive.” Accordingly, we apply the term’s plain and ordinary meaning.
C. Munoz
Munoz discloses “control devices that interface with automobile
computers in order to control multiple automobile systems.” Ex. 1004, 1:9–
10. Specifically, Munoz discloses “an after-market automobile device that is
seamlessly integrable to factory automobile networks such as CAN-bus and
[its] ECU [(electronic control unit)] systems and allows multiple
convenience and performance enhancements to be controlled through
factory controls and displayed on factory displays.” Ex. 1004, 3:7–12.
Munoz’s Figure 1 is copied below with annotations added by Petitioner.

Ex. 1007.
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Munoz’s Figure 1 is a flow chart that illustrates the operation of roof
control module 100. Ex. 1004, 6:26–30. Figure 1 depicts that switch 120
connects vehicle factory dashboard electronics and controls 105 to Roof
Control Electronics 110 via Roof Control Module 100, such that the factory
data connection is routed through the Roof Control Module 100. Ex. 1004,
6:32–36. Munoz discloses that the device improves over other systems by
operating using only the factory display such that messages to “operate and
adjust the device's features and settings are displayed on the vehicle’s
factory display.” Ex. 1004, 3:43–47. Munoz explains that by using the
device, “the user may control multiple additional functions and operations,
integrated by the device, without the need for additional displays.” Ex.
1004, 3:47–49.
D. Negley
Negley discloses that the CAN protocol “creates a communications
path that links all the nodes connected to the bus and enables them to talk to
one another.” Ex. 1006, 18. Negley discloses the CAN protocol uses a
message-based data format to transfer information from one location to
another. Ex. 1006, 20. Among other things, Negley describes that all
messages have an identifier field and that the node uses the identifier to
determine whether to accept and act upon an incoming message. Ex. 1006,
21.
E. SAE
SAE discloses that the CAN protocol “offers a comprehensive
solution to managing communication between multiple CPUs,” using
message identifiers. Ex. 1009, 29.
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F. Bosch
Bosch discloses that CAN is a serial communications protocol that
supports distributed real-time control with a high level of security.
Ex. 1010, 4. Bosch explains that information on a bus is sent in fixed format
messages and that the content of a message uses an identifier, so that all
nodes in a network are able to decide whether the data is to be acted upon by
them. Ex. 1010, 6.
G. Petitioner’s Expert’s Alleged Bias
Patent Owner asserts that we should discount Mr. Leale’s declaration
testimony because, according to Patent Owner, Mr. Leale has an interest in
the outcome of the litigation because he may have practiced the claims of the
’505 patent. PO Resp. 3–4, 12–16. We find this argument unavailing.
Petitioner filed Mr. Leale’s declaration testimony with its Petition.
During Mr. Leale’s deposition, Patent Owner’s counsel asked Mr. Leale
whether had installed retrofit devices and spoofed CAN messages.
Ex. 2024, 107:6–20, 111:23–112:24.
Patent Owner contends Mr. Leale’s testimony suggests that “Mr.
Leale is a likely infringer” (PO Resp. 13) and that “Mr. Leale’s testimony
. . . makes clear that he stands to personally benefit if the ’505 patent is
found invalid” (PO Resp. 16). Mr. Leale provided his declaration testimony
before Mr. Leale was allegedly put in “fear that he would be sued by Patent
Owner” (PO. Resp. 14), and Mr. Leale’s deposition responses do not
establish that the declaration testimony should be discounted in this case.
Furthermore, Patent Owner’s deposition objections (PO Resp. 15–17;
Ex. 2024, 109:8–111:8) do not support discounting Mr. Leale’s declaration
testimony. We give Mr. Leale’s testimony due weight.
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H. Obviousness over Munoz or Munoz, Negley, SAE, and Bosch
For its obviousness arguments, Petitioner provides a limitation-by-
limitation comparison of each of claims 1–13 to Munoz and states that to the
extent certain limitations are “not clearly disclosed by Munoz when viewed
in light of the knowledge possessed by a POSITA, it would have been
obvious to complement Munoz’s teachings with the standard CAN bus
teachings of Negley, SAE, and Bosch.” Pet. 15. Petitioner also cites to the
Declaration of Robert Leale (Ex. 1103) in support. Pet. 1–67.
Patent Owner’s arguments address certain individual claims, and
Patent Owner cites the Declaration of Mahdi Shahbakhti (Ex. 2028) in
support. PO Resp. 29–53. We address both parties’ arguments in the
analysis of claim 1, below.
1. Motivation to Combine & Background References
Petitioner provides support for the motivation to combine the
teachings of Munoz, Negley, SAE, and Bosch. Pet. 15–17. Petitioner
argues that a POSITA would have understood that by the time of the
invention of the ’505 patent, use of CAN message identifiers was well
known and standard in a CAN bus system, and Petitioner contends there
would have been many reasons to use the same CAN bus message identifier
for retrofit devices and factory-installed devices in communications intended
to control other ECUs. Pet. 16 (citing, e.g., Ex. 1103 ¶¶ 53–85). Among
other things, Petitioner contends the CAN protocol teachings of Negley,
Bosch, and SAE complement Munoz’s teachings of CAN the protocol.
Pet. 15–16.
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We determine that Petitioner has provided sufficient rationale for
combining the teachings of Munoz, Negley, SAE, and Bosch, each of which
relates to CAN bus systems in the automotive industry. In addition to
combining the Munoz, Negley, SAE, and Bosch references, Petitioner also
provides sufficient testimony and argument to rely on the Negley, SAE, and
Bosch references to support the knowledge that skilled artisans would have
brought to bear on the prior art functions of CAN systems (Pet. 15–17, 19–
22). See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); see
also Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365–66
(Fed. Cir. 2015).
We address Munoz alone in light of Negley, SAE, and Bosch as
background knowledge and the combination of Munoz, Negley, SAE, and
Bosch with respect to claims 1–15 and 19.
2. Claim 1
a. [1.1] A method comprising:
providing a vehicle having a factory-installed first apparatus
including a processor, programmed to communicate with a factory-
installed second apparatus through a vehicle data bus with a first
message having an identifier
Petitioner contends Munoz teaches limitation 1.1 with its disclosures
relating to Munoz’s vehicle with a factory-installed first apparatus 110
programmed to communicate with a factory-installed second apparatus 105
through vehicle data bus 115. Pet. 13–14 (citing Ex. 1004, Fig. 1).
According to Petitioner, “[i]n accordance with [the teachings of] Negley,
Bosch, and SAE, a POSITA would have known that CAN message
protocols use message identifier bits and a bus message transmitted by the
[second] factory-installed apparatus 105 to the [first] factory-installed
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apparatus 110 would have constituted a ‘first message having an identifier’
of claim 1.” Pet. 15 (citing Ex. 1103 ¶¶ 53–85, 133–145); see Pet. 14–16.
Patent Owner argues Petitioner cannot identify the claimed first
message in Munoz. PO Resp. 37. Patent Owner contends “Munoz does not
disclose any communication between the original dashboard 105 and the
roof control electronics 110” (PO Resp. 38), and Patent Owner contends
Munoz’s reference to controls on original dashboard 105 refers to controls
used only after the addition of Munoz’s retrofit device (PO Resp. 38).
Citing evidence relating to several 2007 model year convertible vehicles,
Patent Owner contends that controls for the vehicles’ convertible tops were
hardwired such that “there cannot be a roof open/roof close first CAN
message sent to the original roof electronics 110.” PO Resp. 41–42 (citing
Ex. 2028 ¶¶ 64–76); accord PO Sur-Reply 3–4; see Ex. 2028 ¶ 57 (“[I]t is
my opinion that Munoz’s invention had been demonstrated in a VW Eos.
My further analysis is therefore based on that vehicle.”).
Although Patent Owner’s evidence relating to controls in several 2007
model year vehicles may not be irrelevant, that evidence is not instructive
regarding what a person of ordinary skill would have understood from the
teachings of Munoz. Even taking as true the evidence that each 2007 model
year vehicle examined by Patent Owner’s declarant had its convertible top
controlled by hardwired controls, the fact remains that Munoz describes
Figure 1 more generally, describing “vehicle factory dashboard electronics
and controls” as follows:
FIG. 1 is a flow chart that illustrates the operation of the roof
control module in various embodiments of the invention. 105
illustrates the vehicle factory dashboard electronics and controls
that are used to control Roof Control Electronics 110. 100
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illustrates the Roof Control Module, which is a portion of the
device devoted to roof or cabriolet top controls. As diagramed,
a switch 120 connects the vehicle factory dashboard electronics
and controls 105 to the Roof Control Electronics 110 via the
Roof Control Module 100, such that the factory data connection
is routed through the Roof Control Module 100.
Ex. 1004, 6:28–36. Further, Figure 1 itself states that “the original data
connection will be terminated so all communication has to go through the
roof control module.” Ex. 1004, Fig. 1. In other words, contrary to Patent
Owner’s arguments, Munoz teaches that there was an “original data
connection” between “original dashboard, internal sensors and electronics
105,” Munoz teaches terminating that original connection, and Munoz
teaches that all communication has to go through the roof control module.
Ex. 1004, 6:28–36, Fig. 1. As such, regardless of whether real-world
vehicles did not implement Munoz’s system as depicted in Figure 1 and the
related description, we agree with Petitioner that a person of ordinary skill
would have understood Munoz to teach an original data connection between
“the vehicle factory dashboard electronics and controls that are used to
control Roof Control Electronics 110” (Ex. 1004, 6:28–30). See Belden Inc.
v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must
be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to protect.”
(internal quotation marks and alterations omitted)). We further agree with
Petitioner that Munoz teaches or at least suggests a CAN bus as the original
data connection and that communication through the original data
connection would have included a first message having an identifier, as
claimed. See Pet. 13–17; Ex. 1103 ¶ 152; Ex. 1004, 1:26–40 (describing
automobile electronic control units using CAN-bus systems for connecting
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to and transmitting data between various ECUs); see also Tr. 39:5 (“So the
first message requires original module to the original module.”); PO Resp.
39 (“How an open/close roof button is wired indicates whether a roof
open/close (first) message can exist. ‘The factory buttons must be connected
to a CAN bus module and that CAN bus module must be transmitting the
message over the CAN bus in order for the roof control, the factory roof
control 110 to receive it.’” (quoting Ex. 2024, 61:20–24)).
b. [1.2] electrically disconnecting the vehicle data bus between the
factory-installed first apparatus and the factory-installed second
apparatus
Petitioner contends that the annotated Figure 1 of Munoz, reproduced
above, depicts this limitation because Munoz’s “[s]witch 120, when open,
terminates the connection between the 1st factory-installed apparatus 110 and
the 2nd factory-installed apparatus 105. Pet. 17–18 (citing Ex. 1103 ¶¶ 139–
145, 153–154; Ex. 1004, 6:32–36; Fig. 1).
Although not directly addressing this claim limitation, Patent Owner
argues Munoz’s depiction of switch 120 is merely symbolic and that it
would serve no purpose in Munoz’s system. PO Sur-Reply 12–13 (citing
Ex. 1004, 3:35–37, Fig. 1; Ex. 1020, 70:9–17; Ex. 2024, 51:5–55:10, 56:11–
15); accord Ex. 2028 ¶ 80. Contrary to Patent Owner’s arguments, however,
Munoz plainly discloses a switch that, according to Munoz, terminates the
original data connection (Ex. 1004, 6:32–36, Fig. 1), and the weight of the
evidence supports Petitioner’s argument that Munoz teaches this limitation.
Cf. Ex. 2028 ¶ 80 (“I recognize that Munoz’s specification describes the
switch 120 as if it were a real component . . . which is not consistent with
my interpretation.”).
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c. [1.3] electrically connecting a retrofit apparatus to the vehicle data
bus
Petitioner contends the annotated Figure 1 of Munoz, reproduced
above, depicts this limitation because Munoz’s “roof control module 100 is
connected to both the vehicle data bus ‘A’ and to a vehicle data bus ‘B’ and
is disclosed as an aftermarket automobile device.” Pet. 18–19 (citing Ex.
1103 ¶¶ 127–148, 155–156; Ex. 1004, 3:7–12, 3:50–4:33; Fig. 1).
Patent Owner does not contest Petitioner’s showings, and we
determine that Petitioner has satisfied its burden regarding this limitation.
d. [1.4] transmitting a second message from the retrofit apparatus to the
factory-installed first apparatus, the second message being
indistinguishable from the first message
Petitioner contends Munoz teaches or suggests limitation 1.4 by
disclosing that all communication passes through the roof control module
100, which a person of ordinary skill would have understood to include “the
identical command from the original dashboard 105,” because, according to
Petitioner, Munoz’s aftermarket device allows multiple functions to be
performed without interfering with vehicle controls or compromising
existing factory features. Pet. 19–20 (citing Ex. 1103 ¶¶ 143–145, 160–161;
Ex. 1004, 3:50–4:33, 5:21–26, Fig. 1). Further, Petitioner contends a person
of ordinary skill would have understood that when aftermarket functionality
is disabled,
a first CAN message sent from the original dashboard 105
intended for the original electronics to operate the factory-
installed roof 110 would have been received by the retrofit roof
control module 100, and the retrofit roof control module 100
would have transmitted a second CAN message,
indistinguishable from the first CAN message, to the factory-
installed roof 110 with the proper information in the identifier
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field, and the identical command from the original dashboard
105.
Pet. 20.
Patent Owner disputes Petitioner’s showing for this limitation. PO
Resp. 43–46. First, Patent Owner contends that because Munoz does not
teach a first message, Munoz cannot teach a second message that is
indistinguishable from the first message. PO Resp. 44; PO Sur-Reply 2–3.
For the reasons explained above, we disagree with Patent Owner’s
arguments that Munoz does not disclose the claimed first message.
Regarding the second message, Patent Owner acknowledges that
Munoz teaches sending an open roof signal, but Patent Owner contends
Munoz does not disclose how it could send a second message as claimed.
Patent Owner states “[t]his open roof signal (second message) must be
received and acted upon by the original roof control electronics 110, which
implies that it is sent with a CAN bus identifier which the roof control
electronics 110 is configured to recognize and respond to.” PO Resp. 44–45
(citing Ex. 1004, 6:50–53); PO Sur-Reply 4–5. But according to Patent
Owner, Munoz does not explain how that is possible. PO Resp. 45 (citing
Ex. 2028 ¶ 96). Citing messaging in real-world vehicles (PO Resp. 45–46
(citing Ex. 2008; Ex. 2010)), Patent Owner argues “Munoz’s open roof
message does not mimic any first message sent from a factory-installed
device but uses a diagnostic command” (PO Resp. 45 (citing Ex. 2028
¶ 97)). Accord PO Resp. 46 (citing Ex. 2028 ¶ 98); PO Sur-Reply 4.
As noted above, Munoz teaches routing the factory data connection
between vehicle factory dashboard electronics and controls 105 and Roof
Control Electronics 110 through Roof Control Module 100, as depicted in
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Figure 1. Ex. 1004, 6:27–36, Fig. 1 (block 115: “the original data
connection will be terminated so all communication has to go through the
roof control module”). Munoz’s Figure 2 discloses “the device” connected
between a first CAN bus 210 and a second CAN bus 205. Ex. 1004, 5:40–
42; 6:37–40, Fig. 2 (block 200: “The VARIO PLUS CONTROL MODULE
is connected to the integrated CAN-Network through 2 interfaces”).
We agree with Petitioner that a person of ordinary skill would have
understood Munoz to thus teach that messages from factory dashboard
electronics and controls 105 would be routed on a first bus to Roof Control
Module 100 and then on a second bus from Roof Control Module 100 to
Roof Control Electronics 110. See Pet. 19. Although Munoz teaches that its
Roof Control Module 100 can remove or alter the data exchanged “to allow
additional operations normally not available to operate an automatic folding
roof” (Ex. 1004, Fig. 1 (block 100)), Munoz teaches that the additional
features can be turned off (Ex. 1004, 6:44–46 (“Operation 305 represents the
on/off switch that determines whether or not the device features are
activated.”)) and that the additional features do not compromise the existing
factory features (Ex. 1004, 5:21–26).
We agree with Petitioner that a person of ordinary skill would have
understood the messaging required to maintain the factory features with
Roof Control Module 100 installed. Pet. 12–13, 15–17, 20, Ex. 1103 ¶¶ 63,
132, 152, 158. And Patent Owner acknowledges that Munoz teaches CAN
messaging; Patent Owner recognizes that for Munoz’s system to act on an
open roof signal, the “open roof signal (second message) must be received
and acted upon by the original roof control electronics 110, which implies
that it is sent with a CAN bus identifier which the roof control electronics
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110 is configured to recognize and respond to.” PO Resp. 44–45 (citing
Ex. 1004, 6:50–53) (emphasis added). The same implication applies to the
messaging from original factory dashboard and controls 105—to maintain
the factory features with the Roof Control Module 100 installed, a first
message from factory dashboard electronics and controls 105 would have
included a CAN bus identifier that Roof Control Electronics 110 would have
been configured to recognize and respond to. Because Munoz teaches that
“all communication has to go through the roof control module” (Ex. 1004,
Fig. 1 (block 115)), the first message from factory dashboard and
controls 105 would have been routed to Roof Control Module 100 on the
first CAN bus and then from Roof Control Module 100 to original Roof
Control Electronics 110 on the second CAN bus (Ex. 1004, Figs. 1, 2).
Following the same reasoning, a person of ordinary skill would have
understood this to mean that the message on the second CAN bus from Roof
Control Module 100 to original Roof Control Electronics 110 would have
been sent with a CAN bus identifier which the roof control electronics 110 is
configured to recognize and respond to. See PO Resp. 44–45.
Patent Owner argues that in real-world vehicle installations, such
aftermarket controls would have been installed using a single CAN bus, with
two segments of the CAN bus on either side of the aftermarket controls, and
using diagnostic messages instead of mimicking or “spoofing” messages
sent from original factory controls. PO Resp. 32–37; PO Sur-Reply 7–8.
Again, though, the evidence of real-world installations does not outweigh
the fact that Munoz plainly teaches terminating the original data connection
and using two CAN buses. E.g., Ex. 1004, 6:37–40 (describing “a first
CAN-bus 210 and a second CAN-bus 205”), Figs. 1, 2. Further, we credit
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Mr. Leale’s testimony that a person of ordinary skill would have understood
that Munoz’s teachings of maintaining existing factory features with Roof
Control Module 100 installed would have included a second message
indistinguishable from the first message. Ex. 1103 ¶¶ 132, 158. Mr. Leale’s
testimony is supported by secondary references describing CAN messaging
(Ex. 1006, 18–21, 24–28), and just as Patent Owner acknowledges what a
person of ordinary skill would have understood regarding the CAN
messaging from Roof Control Module 100 to roof control electronics 110,
the weight of the evidence supports Petitioner’s argument that a person of
ordinary skill would have understood Munoz’s CAN messaging from factory
dashboard and controls 105. Further, we need not decide whether Munoz’s
system would have been implemented as an actual gateway (as argued by
Petitioner (Pet. Reply 9–10, 22)) or a mere pass-through (as argued by
Patent Owner (Sur Reply 13)), because the weight of the evidence supports
that a person of ordinary skill would have understood a message on the first
CAN bus to be the first message and a message on the second CAN bus to
be the second message, and where both messages are sent to the same node
(e.g., roof control electronics 110) with the same command (e.g., open roof),
the messages would have been indistinguishable.
e. Conclusion: Claim 1
Based on the record before us, we determine that Petitioner has
demonstrated by a preponderance of the evidence the claim 1 would have
been obvious over Munoz alone or over the combined teachings of Munoz,
Negley, Bosch, and SAE.
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3. Claim 2
Claim 2 recites “The method as in claim 1, wherein the second
message uses the identifier of the first message.” Petitioner contends that “a
POSITA would understand that the second message from the retrofit control
module 100 employs a message identifier identical to that originally used by
the first message . . . so that the first factory-installed apparatus 110 (roof
electronics) would recognize, accept, and act upon the second message.”
Pet. 21 (citing Ex. 1103, ¶¶ 159–160).
Relying on the same arguments advanced for claim 1, Patent Owner
argues that Munoz fails to teach the first message and that the second
message sent from Munoz’s retrofit control module would have used an
identifier assigned to a diagnostic test device, not one assigned to a factory-
installed apparatus. PO Resp. 47 (citing Ex. 2028 ¶¶ 100–101).
For the same reasons discussed above, we determine Petitioner has
established by the preponderance of the evidence that claim 2 would have
been obvious over Munoz alone or over the combined teachings of Munoz,
Negley, Bosch, and SAE.
4. Claim 3
Claim 3 recites “The method as in claim 1, further comprising
receiving the first message in the retrofit apparatus.” Petitioner contends
Munoz discloses receiving the first message in the retrofit apparatus,
because Munoz discloses that “all communication [from 105 to 110] has to
go through the [retrofit] roof control module [100].” Pet. 21 (citing Munoz,
Fig. 1).
Relying on the same arguments addressed above, Patent Owner argues
Munoz does not disclose the claimed first message and, thus, there is no first
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message for the retrofit device to receive. PO Resp. 47 (citing Ex. 2028 ¶
102.
For the same reasons discussed above, we determine Petitioner has
established by the preponderance of the evidence that claim 3 would have
been obvious over Munoz alone or over the combined teachings of Munoz,
Negley, Bosch, and SAE.
5. Claim 4
Claim 4 recites “The method as in claim 3, wherein the retrofit
apparatus re-transmits messages received on the vehicle data bus to the
factory-installed first apparatus.” Petitioner contends that a POSITA would
have understood that Munoz’s retrofit roof control module 100 would have
retransmitted a second CAN message, indistinguishable from the first CAN
message, to allow factory-installed roof 110 to perform its original, pre-
existing features as originally programmed. Pet. 22 (citing Ex. 1103 ¶ 167).
Patent Owner argues that Munoz discloses that its device does nothing
when the aftermarket controls are turned off and thus does not teach
retransmitting messages. PO Resp. 48 (citing Ex. 1004, Figs. 3–7; Ex. 2028
¶ 103).
For the same reasons explained above, we agree with Petitioner that
Munoz teaches transmitting a first message on a first CAN bus to the retrofit
apparatus and retransmitting an indistinguishable message from the retrofit
apparatus on a second CAN bus to the factory-installed first apparatus.
Thus, we determine Petitioner has established by the preponderance of the
evidence that claim 4 would have been obvious over Munoz alone or over
the combined teachings of Munoz, Negley, Bosch, and SAE.
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6. Claim 5
Claim 5 recites “The vehicle that has been retrofitted according to the
method as in claim 1.” Petitioner contends Munoz discloses an automobile
or truck in which a retrofit control module is installed. Pet. 23 (citing
Munoz, code (54), Fig. 1; Ex. 1103 ¶ 166). Patent Owner contends Munoz
does not teach the method of claim 1 and therefore cannot teach a vehicle
that has been retrofitted according to that method. PO Resp. 48.
For the same reasons explained above, we determine Petitioner has
established by the preponderance of the evidence that claim 5 would have
been obvious over Munoz alone or over the combined teachings of Munoz,
Negley, Bosch, and SAE.
7. Claim 6
a. [6.1] A vehicle comprising:
a factory-installed first apparatus including a first processor which is
programmed to receive a first message on a vehicle data bus from a
factory-installed second apparatus; and
Citing Munoz Figure 1 and related disclosures, Petitioner contends
Munoz teaches this limitation with its aftermarket automobile accessory
using CAN messaging between a factory-installed first apparatus 110,
through vehicle data bus 115 to a factory-installed second apparatus 105.
Pet. 23–24.
Relying on the arguments equivalent to those advanced for claim 1,
Patent Owner argues that Munoz does not disclose any communication
between the original dashboard 105 and the roof control electronics 110
because factory open/close buttons would have been wired directly to roof
control electronics 110. PO Resp. 49 (citing Ex. 2028 ¶ 105). Patent Owner
argues Mr. Leale admits that Munoz does not disclose a first message and
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that the second message could be a diagnostic command, which does not
originate from a factory installed device. PO Resp. 49 (citing Ex. 2024,
58:3–4, 58:8–10, 69:13; Ex. 2028 ¶¶ 97–99).
For the same reasons discussed above, we agree with Petitioner that
Munoz discloses this limitation. Further, we disagree with Patent Owner’s
characterization of Mr. Leale’s testimony; Mr. Leale testified that Munoz
does not “specifically” state that there is a first message, but Mr. Leale
consistently testified that the original factory dashboard and controls 105
transmits the first message. Ex. 2024, 56:20–68:19.
b. [6.2] a retrofit apparatus connected to the vehicle data bus including
a second processor programmed to transmit a second message which
mimics the first message.
Petitioner contends Munoz teaches this limitation with its retrofit roof
control module 100 that has a processor and transmits a second message that
is indistinguishable or “mimics” the first message. Pet. 25–26.
Repeating arguments addressed above regarding claim 1, Patent
Owner argues Munoz does not teach a first message and therefore cannot
teach a second message that mimics a non-existent first message. PO Resp.
50.
For the same reasons explained above, we agree with Petitioner that
Munoz discloses this limitation.
c. Conclusion: Claim 6
We determine Petitioner has established by the preponderance of the
evidence that claim 6 would have been obvious over Munoz alone or over
the combined teachings of Munoz, Negley, Bosch, and SAE.
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8. Claim 7
Claim 7 recites “The vehicle as in claim 6, wherein the first message
comprises a message identifier that has been assigned to the factory-installed
second apparatus and wherein the second processor is programmed to
transmit the second message with the same message identifier.” Petitioner
contends Munoz teaches this limitation with its teachings relating to CAN
bus specifications used in Munoz’s system. Pet. 26. According to
Petitioner, a person of ordinary skill would have understood that an
identifier would have been assigned for the factory-installed second
apparatus to correspond with the data the second apparatus desired to send to
the first apparatus. Pet. 26. Further, Petitioner argues that a person of
ordinary skill would have understood that Munoz’s retrofit apparatus
includes a processor and, for the same reasons cited for element 6.1
addressed above, a person of ordinary skill would have understood the
processor to transmit the second message with the same identifier as the first
message. Pet. 27.
Patent Owner again argues that Munoz does not disclose a first
message and that Munoz’s system would have used diagnostic messages
having identifiers assigned to a diagnostic tester, not the factory apparatus.
PO Resp. 50–51.
For the same reasons explained above, we determine Petitioner has
established by the preponderance of the evidence that claim 7 would have
been obvious over Munoz alone or the combined teaches of Munoz, Negley,
Bosch, and SAE.
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9. Claim 8
Claim 8 recites “The vehicle as in claim 7, wherein the message
identifier is an 11 bit or a 29 bit CAN ID.” Petitioner argues a person of
ordinary skill would have understood from Munoz’s teachings of a CAN bus
system that every message (including the claimed first message and the
second message) includes a CAN message identifier of either 11 or 29 bits.
Pet. 28 (citing Ex. 1003 ¶¶ 56, 64, 175; Ex. 1006 pp, 9–12; Ex. 1010 pp. 3,
13, 45–46). Patent Owner does not contest Petitioner’s showings regarding
claim 8.
For the reasons explained above and because the evidence of record
establishes that standard CAN messages had identifiers of 11 bits or 29 bits,
we determine Petitioner has established by the preponderance of the
evidence that claim 8 would have been obvious over Munoz alone or the
combined teachings of Munoz, Negley, Bosch, and SAE.
10. Claim 9
Claim 9 recites “The vehicle as in claim 6, wherein the vehicle data
bus is a CAN network.” Petitioner contends Munoz discloses a vehicle
using a BAN bus network. Pet. 28–29 (citing Ex. 1004, code (57), 1:26–40,
1:50–53, 2:65–3:21, 6:20–40; Ex. 1003 ¶ 177). Patent Owner does not
contest Petitioner’s showings regarding claim 9.
For the reasons explained above, we determine Petitioner has
established by the preponderance of the evidence that claim 9 would have
been obvious over Munoz alone or the combined teachings of Munoz,
Negley, Bosch, and SAE.
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11. Claim 10
a. [10.1] A vehicle, comprising:
a factory-installed first apparatus including a first processor,
programmed to receive a first message via a vehicle data bus from a
factory-installed second apparatus, the first message having a
message identifier; and
Petitioner contends Munoz teaches this limitation for the same reasons
addressed above regarding claim elements 1.1, 6.1, and 7.
Referencing the arguments advanced for claims 1 and 6, Patent Owner
contends that Munoz does not disclose any communication between the
original dashboard 105 and roof control electronics 110 and that Munoz does
not teach the first message required by claim 10. PO Resp. 51.
b. [10.2] a retrofit apparatus, operatively connected to the vehicle data
bus, including a second processor programmed to send a second
message having the same message identifier.
Petitioner contends Munoz teaches this limitation with its retrofit roof
control module 100 connected to a CAN bus. Pet. 30 (citing Ex. 1003
¶¶ 128–132, 141, 187). Petitioner further states that Munoz’s module 100
would have included a processor programmed to send messages having the
same message identifier as the first message from original dashboard 105.
Pet. 30–31 (citing Ex. 1003 ¶¶ 134, 139, 182–183, 187).
Patent Owner again argues that Munoz does not teach the first
message and therefore cannot teach a second message having the same
identifier as the first message.
c. Conclusion: Claim 10
We determine Petitioner has established by the preponderance of the
evidence that claim 10 would have been obvious over Munoz alone or over
the combined teachings of Munoz, Negley, Bosch, and SAE.
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12. Claim 11
Claim 11 recites, “The vehicle as in claim 10, wherein the second
message originating from the retrofit apparatus is indistinguishable to the
first apparatus from the first message received from the second apparatus.”
Petitioner contends this limitation is satisfied for the same reasons addressed
above for limitation 1.4. Pet. 31 (citing Ex. 1003 ¶¶ 184–185).
Patent Owner again argues that Munoz fails to teach the first message
and therefore cannot teach that the second message is indistinguishable to
the first apparatus from the first message. PO Resp. 52. Further, Patent
Owner argues that Munoz does not teach that the first processor is
programmed to receive any messages from the second apparatus. PO Resp.
52 (citing Ex. 2028 ¶ 111).
For the reasons explained above, we determine Petitioner has
established by the preponderance of the evidence that claim 11 would have
been obvious over Munoz alone or the combined teachings of Munoz,
Negley, Bosch, and SAE.
13. Claim 12
Claim 12 recites “The vehicle as in claim 10, wherein the factory-
installed first apparatus responds to the second message originating from the
retrofit apparatus as if it were the first message received from the factory-
installed second apparatus.” Petitioner argues Munoz teaches this limitation
for the same reasons discussed above with claim element 1.4. Pet. 31–32.
Patent Owner again argues that Munoz fails to teach the first message
and therefore cannot teach that the second message is indistinguishable to
the first apparatus from the first message. PO Resp. 52. Further, Patent
Owner argues that Munoz does not teach that the first processor is
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programmed to receive any messages from the second apparatus. PO Resp.
52 (citing Ex. 2028 ¶ 112).
For the reasons explained above, we determine Petitioner has
established by the preponderance of the evidence that claim 12 would have
been obvious over Munoz alone or the combined teachings of Munoz,
Negley, Bosch, and SAE.
14. Claim 13
Claim 13 recites “The vehicle as in claim 10, wherein the factory-
installed first apparatus is electrically disconnected from the vehicle data
bus.” Petitioner contends Munoz teaches this limitation with its teachings of
switch 120 that electrically disconnects factory-installed first apparatus 110
from vehicle data bus A. Pet. 32 (citing Ex. 1004, 6:32–36, Fig. 1; Ex. 1103
¶ 188. Patent Owner argues that Munoz only discloses that switch 120
connects vehicle factory dashboard and controls 105 to Roof Control
Electronics 110. PO Resp. 52.
Based on Munoz’s disclosure of a switch 120, we determine a person
of ordinary skill would have understood switch 120 to connect and/or
disconnect factory-installed first apparatus 110 from the vehicle data bus, as
claimed. Accordingly, we determine Petitioner has established by the
preponderance of the evidence that claim 13 would have been obvious over
Munoz alone or the combined teachings of Munoz, Negley, Bosch, and
SAE.
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I. Obviousness over Munoz or Munoz, Negley, SAE, Bosch, and
Lobaza
1. Motivation to Combine & Background References
Petitioner provides support for the motivation to combine the
teachings of Munoz, Negley, SAE, Bosch, and Lobaza. Pet. 32–33.
Petitioner argues that a Lobaza evidences that certain automotive safety
features were known in the art and that such features used a CAN bus. Pet.
32–33. According to Petitioner, Munoz is similarly concerned with
automotive safety. Pet. 33 (citing Ex. 1004, 4:55–57).
We determine that Petitioner has provided sufficient rationale for
combining the teachings of Munoz, Negley, SAE, Bosch, and Lobaza, each
of which relates to CAN bus systems in the automotive industry. In addition
to combining the Munoz, Negley, SAE, Bosch, and Lobaza references,
Petitioner also provides sufficient testimony and argument to rely on the
Negley, SAE, and Bosch references to support the knowledge that skilled
artisans would have brought to bear on the prior art functions of CAN
systems (Pet. 15–17, 19–22). See Randall Mfg. v. Rea, 733 F.3d at 1362; see
also Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d at 1365–66.
We address Munoz alone with Negley, SAE, Bosch, and Lobaza as
background knowledge and the combination of Munoz, Negley, SAE,
Bosch, and Lobaza with respect to claims 14–16.
2. Claim 14
Claim 14 recites “The vehicle as in claim 10, wherein the factory-
installed second apparatus is an object sensor capable of detecting objects in
a frontal area of the vehicle.” Petitioner contends Munoz teaches using its
retrofit device to improve safety features, such as “common factory systems
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by automatically activating the vehicle hazard light when the Anti-Lock
Braking System (ABS), Traction Control, or Automatic Skid Control (ASC)
systems are activated” (Pet. 33 (quoting Ex. 1004, 4:65–5:2)), and Petitioner
additionally cites Lobaza as teaching that a known object detection system
for detecting objects in front of a vehicle (Pet. 32–33 (citing Ex. 1014, 2:4–
10, 4:39–49)). Petitioner contends the limitation of claim 14 would have
been obvious based on Munoz in view of Lobaza.
Patent Owner does not contest Petitioner’s showings regarding claim
14.
Because Munoz teaches use of its system for a variety of safety
features and Lobaza evidences that an object sensor for detecting objects in
front of a vehicle was a known safety feature, we agree with Petitioner’s
arguments regarding claim 14. Accordingly, we determine Petitioner has
established by the preponderance of the evidence that claim 14 would have
been obvious over Munoz alone or the combined teachings of Munoz,
Negley, Bosch, SAE, and Lobaza.
3. Claim 15
Claim 15 recites “The vehicle as in claim 10, wherein the factory-
installed second apparatus is part of an automatic braking system.” Similar
to claim 14, Petitioner cites Lobaza as evidencing that automatic braking
systems were known in the art. Pet. 32–33 (citing Ex. 1014, 2:4–10, 4:39–
49; Ex. 1103 ¶¶ 190–194). Patent Owner does not contest Petitioner’s
showings regarding claim 15.
Because Munoz teaches use of its system for a variety of safety
features and Lobaza evidences that automatic braking systems were known
safety features, we agree with Petitioner’s arguments regarding claim 15.
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Accordingly, we determine Petitioner has established by the preponderance
of the evidence that claim 15 would have been obvious over Munoz alone or
the combined teachings of Munoz, Negley, Bosch, SAE, and Lobaza.
4. Claim 16
Claim 16 recites “The vehicle as in claim 10, wherein the factory-
installed second apparatus is part of a parking aid system.” Petitioner cites
Lobaza as teaching that parking aid systems were known in the art. Pet. 32
(citing Ex. 1014, 2:4–10, 4:39–49; Ex. 1103 ¶¶ 190–194). Patent Owner
does not contest Petitioner’s showings regarding claim 16.
Because Munoz teaches use of its system for a variety of safety
features and Lobaza evidences that parking aid systems were known safety
feature, we agree with Petitioner’s arguments regarding claim 16.
Accordingly, we determine Petitioner has established by the preponderance
of the evidence that claim 16 would have been obvious over Munoz alone or
the combined teachings of Munoz, Negley, Bosch, SAE, and Lobaza.
J. Grounds Not Reached
The Petition includes challenges to claims 1–16 as obvious in view of
different combinations of references. Pet. 34–67. Patent Owner responded
to those grounds, arguing that certain limitations of each claim were not
satisfied. PO Resp. 53–78. In its Reply, Petitioner did not address the
additional grounds or Patent Owner’s arguments regarding the additional
grounds, and neither party substantively addressed the additional grounds at
Oral Argument. Because we determine claims 1–16 are unpatentable for the
reasons explained above, we do not reach the additional grounds. See SAS
Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is
entitled to a final written decision addressing all of the claims it has
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challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., Nos. 2019-1594, -
1604, -1605, 2020 WL 2071962, at *4 (Fed. Cir. Apr. 30, 2020) (non-
precedential) (recognizing that the “Board need not address issues that are
not necessary to the resolution of the proceeding” and, thus, agreeing that
the Board has “discretion to decline to decide additional instituted grounds
once the petitioner has prevailed on all its challenged claims”).
IV. CONCLUSION9
Petitioner has shown, by a preponderance of the evidence, that the
subject matter of claims 1–13 would have been obvious over Munoz alone
or the combination of Munoz, Negley, Bosch, and SAE and that the subject
matter of claims 14–16 would have been obvious over Munoz alone or the
combination of Munoz, Negley, SAE, Bosch, and Lobaza.
The table below summarizes our conclusions.

9 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claims 35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–13 103 Munoz or Munoz,
Negley, SAE,
Bosch
1–13
14–16 103 Munoz or Munoz,
Negley, SAE,
Bosch, Lobaza
14–16
1–13 103 Dietz, Negley,
SAE, Bosch

1–13 103 Dietz, Allen,
Negley, SAE,
Bosch

14–16 103 Dietz, Negley,
SAE, Bosch,
Lobaza

14–16 103 Dietz, Allen,
Negley, SAE,
Bosch, Lobaza

6–12 103 Allen, Negley,
SAE, Bosch

10, 14–16 103 Lobaza, Allen,
Negley, SAE,
Bosch

Overall
Outcome
1–16

V. ORDER
In view of the foregoing, it is hereby:
ORDERED claims 1–16 of the ’505 patent are determined to be
unpatentable, and
FURTHER ORDERED that, because this is a final written decision, parties
to this proceeding seeking judicial review of our Decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:

Peter Gowdey
Wayne Helge
James Wilson
DAVIDSON BERQUIST JACKSON & GOWDEY L.L.P.
pete@dbjg.com
whelge@dbjg.com
jwilson@dbjg.com

PATENT OWNER:

Bernd Axel Nix
SMARTPAT PLC
axel.nix@smartpat.net

Maxwell Goss
MAXWELL GOSS, PLLC
max@maxwellgoss.com