DCT
1:19-cv-02121
Sucxess LLC v. Autox Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sucxess LLC (Michigan)
- Defendant: AutoX Technologies, Inc. (Delaware, with a principal place of business in California)
- Plaintiff’s Counsel: O'Kelly & Ernst, LLC
- Case Identification: 1:19-cv-02121, D. Del., 01/31/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s autonomous vehicles, retrofitted with third-party ADAS kits, infringe patents related to methods and systems for intercepting and modifying a vehicle's internal data bus communications.
- Technical Context: The technology concerns adding aftermarket functionality to production vehicles by inserting a new electronic module into the vehicle’s Controller Area Network (CAN) bus, enabling it to control factory-installed systems like steering and braking by mimicking legitimate signals.
- Key Procedural History: The three patents-in-suit are part of a family sharing a 2007 priority date. The complaint alleges Defendant had pre-suit knowledge of the patents via notice letters. Subsequent to the filing of the original complaint, all three patents-in-suit were the subject of Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board. These IPRs resulted in the cancellation or disclaimer of all claims asserted in this complaint, a development that poses a significant challenge to the viability of the case as currently pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-30 | Earliest Priority Date for '671, '505, and '707 Patents |
| 2018-01-16 | U.S. Patent No. 9,871,671 Issued |
| 2018-03-27 | Plaintiff allegedly sent notice letter to Defendant regarding '671 and '505 Patents |
| 2018-07-17 | U.S. Patent No. 10,027,505 Issued |
| 2019-10-22 | U.S. Patent No. 10,454,707 Issued |
| 2020-01-31 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,871,671 - METHOD, APPARATUS AND SYSTEM FOR RETROFITTING A VEHICLE
- Patent Identification: U.S. Patent No. 9,871,671, "METHOD, APPARATUS AND SYSTEM FOR RETROFITTING A VEHICLE," issued January 16, 2018.
The Invention Explained
- Problem Addressed: The patent describes a need for a more effective way to integrate aftermarket systems with a vehicle's embedded electronics, particularly for critical functions like emergency calls. Factory systems may be closed or require subscriptions, and user interfaces for functions like dialing 911 can be cumbersome. (’971 Patent, col. 1:11-14, col. 2:1-6).
- The Patented Solution: The invention proposes a method for retrofitting a vehicle by physically intercepting its internal data bus. The method involves electrically disconnecting the existing data bus path between two factory-installed components, adding a new "second data bus," and connecting a retrofit apparatus to both the original bus and the new bus. This "man-in-the-middle" positioning allows the retrofit apparatus to transmit its own messages that are "indistinguishable" from factory messages, thereby controlling an original vehicle component. (’971 Patent, Abstract; Fig. 2C).
- Technical Importance: This architecture enables third parties to add sophisticated features, such as autonomous control, to existing vehicles by taking command of core vehicle functions without altering the factory components themselves. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts product-by-process Claim 5 (dependent on method Claim 1) and apparatus Claim 6. (Compl. ¶15-16).
- Independent Claim 1 (Method) Elements:
- providing a vehicle with a factory-installed first and second apparatus communicating via a data bus with a first message;
- electrically disconnecting the vehicle data bus between the first and second apparatus;
- adding a second data bus to the vehicle;
- electrically connecting a retrofit apparatus to the vehicle data bus and the second data bus;
- electrically connecting the factory-installed first apparatus to the second data bus;
- transmitting a second message from the retrofit apparatus to the first apparatus via the second data bus, with the second message being indistinguishable from the first message.
- Independent Claim 6 (Apparatus) Elements:
- a factory-installed first apparatus programmed to receive a first message from a factory-installed second apparatus;
- a retrofit apparatus connected to the vehicle data bus programmed to transmit a second message which mimics the first message through a second data bus.
U.S. Patent No. 10,027,505 - METHOD, APPARATUS AND SYSTEM FOR RETROFITTING A VEHICLE
- Patent Identification: U.S. Patent No. 10,027,505, "METHOD, APPARATUS AND SYSTEM FOR RETROFITTING A VEHICLE," issued July 17, 2018.
The Invention Explained
- Problem Addressed: Similar to the ’971 Patent, the technology addresses the challenge of adding new functionality that requires control over a vehicle's factory-installed communication network. (’505 Patent, col. 1:11-14).
- The Patented Solution: The patent discloses a method and system where a retrofit apparatus is inserted into the vehicle's data bus. This is achieved by electrically disconnecting the link between two factory components and connecting the retrofit apparatus to the bus, which then transmits a "second message" that is "indistinguishable" from the original factory message to control one of the components. (’505 Patent, Abstract, col. 11:18-31).
- Technical Importance: The solution provides a pathway for aftermarket vehicle modifications, including autonomous driving systems, by enabling reliable control over native vehicle systems through signal spoofing. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts product-by-process Claim 5 (dependent on method Claim 1) and apparatus Claim 6. (Compl. ¶23-24).
- Independent Claim 1 (Method) Elements:
- providing a vehicle with a factory-installed first and second apparatus communicating via a data bus with a first message;
- electrically disconnecting the vehicle data bus between the first and second apparatus;
- electrically connecting a retrofit apparatus to the vehicle data bus;
- transmitting a second message from the retrofit apparatus to the first apparatus, the second message being indistinguishable from the first message.
- Independent Claim 6 (Apparatus) Elements:
- a factory-installed first apparatus programmed to receive a first message from a factory-installed second apparatus;
- 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.
U.S. Patent No. 10,454,707 - METHOD, APPARATUS AND SYSTEM FOR RETROFITTING A VEHICLE (Multi-Patent Capsule)
- Patent Identification: U.S. Patent No. 10,454,707, "METHOD, APPARATUS AND SYSTEM FOR RETROFITTING A VEHICLE," issued October 22, 2019. (Compl. ¶8).
- Technology Synopsis: This patent, also part of the same family, discloses a system for retrofitting a vehicle by electrically disconnecting two factory-installed apparatuses and connecting a retrofit apparatus between them. The retrofit apparatus generates a "mimicked electrical signal" independently of the first factory apparatus and transmits it to the second factory apparatus to control vehicle functions. (’707 Patent, Abstract; col. 11:1-11).
- Asserted Claims: Independent claims 1 (method) and 6 (apparatus), as well as dependent claim 15. (Compl. ¶31-33).
- Accused Features: The "steering and shifting by-wire controller module," which is alleged to be a retrofit apparatus that disconnects factory components and generates "spoofed CAN messages" to control the vehicle's steering and transmission systems. (Compl. ¶31.e, ¶32.c).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as "one or more Lincoln MKZ automobiles, retrofitted with an Advanced Driver Assistance Systems ('ADAS') kit made by Dataspeed Inc." (Compl. ¶14).
Functionality and Market Context
- The ADAS kit allegedly includes a "throttle and brake by-wire controller module" and a "steering and shifting by-wire controller module" that enable autonomous operation. (Compl. ¶15.e). The complaint alleges that to install the kit, the vehicle's data bus is disconnected between factory-installed apparatuses (e.g., between the power steering control module and park assist module), and the retrofit module is inserted using jumper harnesses. (Compl. ¶15.c-d). The complaint includes a table identifying various factory apparatuses and the messages they exchange, such as "Vehicle Speed" and "Parking aid status." (Compl. ¶15.b). This retrofitted system allegedly allows the vehicle to be operated "without a human driver" by sending modified signals to control factory systems. (Compl. ¶15.g). These vehicles are characterized as "autonomous vehicle prototypes." (Compl. ¶12).
IV. Analysis of Infringement Allegations
’971 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a vehicle having a factory-installed first apparatus... programmed to communicate with a factory-installed second apparatus through a vehicle data bus with a first message having an identifier | The accused Lincoln MKZ vehicles come equipped with factory-installed modules (e.g., PSCM, PAM) that communicate messages with CAN identifiers over a data bus. | ¶15.b | col. 11:19-25 |
| electrically disconnecting the vehicle data bus between the factory-installed first apparatus and the factory installed second apparatus | During a retrofit, AutoX or its supplier allegedly disconnects the vehicle data bus between factory modules, for example, by removing a connector. | ¶15.c | col. 11:26-29 |
| adding a second data bus to the vehicle | AutoX or its supplier allegedly installs "additional jumper harnesses in the vehicle." | ¶15.d | col. 12:2-3 |
| electrically connecting a retrofit apparatus to the vehicle data bus and to the second data bus | The retrofit "by-wire controller module" is allegedly connected to the original vehicle data bus and the newly added jumper harness (second data bus). | ¶15.e | col. 12:4-6 |
| electrically connecting the factory-installed first apparatus to the second data bus | The factory-installed apparatus is allegedly connected to the newly added jumper harness. | ¶15.f | col. 12:7-9 |
| transmitting a second message from the retrofit apparatus to the factory-installed first apparatus through the second data bus, the second message being indistinguishable from the first message | The retrofit apparatus allegedly transmits a second message (e.g., modified steering signals) to a factory module, which is indistinguishable from the original message. | ¶15.g | col. 12:10-14 |
- Identified Points of Contention:
- Scope Questions: A central question for the court may be how to construe the term "adding a second data bus." It is unclear whether installing "jumper harnesses" as alleged in the complaint meets this limitation, or if the claim requires a more distinct, separate bus structure.
- Technical Questions: What evidence demonstrates that the "second message" is "indistinguishable from the first message"? The complaint does not specify the technical basis for this allegation, leaving open whether it means bit-for-bit identity or functional acceptance by the receiving module.
’505 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a vehicle having a factory-installed first apparatus... programmed to communicate with a factory-installed second apparatus through a vehicle data bus with a first message having an identifier | The accused Lincoln MKZ vehicles are purchased with factory-installed modules (e.g., PSCM, PAM) that communicate messages with CAN identifiers over a data bus. A table in the complaint lists examples. (Compl. ¶23.b). | ¶23.b | col. 11:18-25 |
| electrically disconnecting the vehicle data bus between the factory-installed first apparatus and the factory-installed second apparatus | During retrofitting, the data bus connection between factory modules is allegedly disconnected, for instance, by "removing a connector." | ¶23.b | col. 11:26-29 |
| electrically connecting a retrofit apparatus to the vehicle data bus | A "throttle and brake by-wire controller module" and a "steering and shifting by-wire controller module" are allegedly connected to the vehicle data bus. | ¶23.c | col. 11:30-31 |
| transmitting a second message from the retrofit apparatus to the factory-installed first apparatus, the second message being indistinguishable from the first message | The retrofit apparatuses allegedly transmit modified signals to factory systems (e.g., TRCM and PSCM) to operate the vehicle without a human driver. | ¶23.d | col. 11:32-36 |
- Identified Points of Contention:
- Scope Questions: Does the accused system's connection of the retrofit apparatus meet the requirement of "electrically connecting a retrofit apparatus to the vehicle data bus"? The patent figures suggest an insertion into the path, and the court will need to determine if the alleged connection scheme falls within the claim's scope.
- Technical Questions: The complaint's assertion of "indistinguishable" messages remains a key factual question. Evidence will be required to show the technical characteristics of the original and the "spoofed" messages to determine if they meet this limitation.
V. Key Claim Terms for Construction
The Term: "indistinguishable" (from ’671 Patent, cl. 1; ’505 Patent, cl. 1)
Context and Importance: This term is the linchpin of the infringement theory, defining how closely the retrofit apparatus must mimic the original signal. Its construction will determine whether functional equivalence is sufficient for infringement or if a more stringent, technical identity is required. Practitioners may focus on this term because the patent does not provide an explicit definition, creating ambiguity.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification’s objective is to make a factory apparatus perform a function as if it received a legitimate signal, suggesting an operational or functional standard. The patent states the goal is to have the telecommunication apparatus "respond properly." (’505 Patent, col. 9:6-8). This may support a construction where any message accepted and acted upon by the receiving module is "indistinguishable."
- Evidence for a Narrower Interpretation: The specification discusses the structure of CAN messages, including unique "identifier segments." (’505 Patent, col. 10:11-25, Table 1). This could support a narrower construction requiring the "indistinguishable" message to share, at a minimum, the same identifier and data structure as the original message it replaces.
The Term: "electrically disconnecting" (from ’671 Patent, cl. 1; ’505 Patent, cl. 1)
Context and Importance: This active step is a prerequisite for the claimed retrofitting method. If the accused ADAS kit merely taps into or bridges the data bus without creating a physical break in the original communication path, this limitation may not be met.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of evidence supporting a broader interpretation.
- Evidence for a Narrower Interpretation: The patent specification describes a process where the "electrical connection... is separated and... rewired." (’505 Patent, col. 2:49-53). Further, Figure 2C visually depicts the removal of a direct link between the telecommunication apparatus and the service center, with the emergency call apparatus inserted into the communication path. This intrinsic evidence suggests a physical severing of the original circuit is required.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific allegations of indirect infringement (inducement or contributory). The allegations focus on direct infringement by Defendant for "making, using, offering to sell, or selling" the accused retrofitted vehicles. (Compl. ¶14).
- Willful Infringement: The complaint alleges willful infringement for all three patents. The basis for this allegation is Defendant's alleged pre-suit and post-suit knowledge of the patents and the alleged infringement, stemming from a notice letter sent on March 27, 2018, and continued infringement thereafter. (Compl. ¶19-20, ¶28, ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
Procedural Viability: The most immediate and potentially dispositive issue is the legal effect of the Inter Partes Review decisions. With all asserted claims having been cancelled or disclaimed after the complaint was filed, a primary question is whether Plaintiff has any remaining basis to pursue this action or if the case is effectively moot, pending any appeal of the IPR outcomes.
Definitional Scope: Should the case proceed, a core issue will be one of claim construction, centered on the term "indistinguishable." The court will need to decide if this requires a technically identical signal (e.g., same message identifier and payload) or a functionally equivalent one (i.e., any signal that the receiving component accepts as valid).
Factual Mismatch: A key evidentiary question will be one of operational mechanics: does the accused ADAS kit installation process perform the specific step of "electrically disconnecting" the original bus by creating a physical break in the circuit, as the patent figures and description suggest, or does it employ a less invasive method of tapping into the bus that might fall outside the scope of the claims?