DCT
1:19-cv-02123
Sucxess LLC v. Ponyai Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sucxess LLC (Michigan)
- Defendant: Pony.ai, Inc. (Delaware)
- Plaintiff’s Counsel: Maxwell Goss, PLLC; O'Kelly Ernst & Joyce, LLC
- Case Identification: 1:19-cv-02123, D. Del., 11/12/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a corporation organized under the laws of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s autonomous vehicles, which are retrofitted with third-party advanced driver-assistance systems, infringe patents related to methods for integrating aftermarket electronics with a vehicle's native data bus.
- Technical Context: The technology concerns the "man-in-the-middle" interception and spoofing of signals on a vehicle's internal communication network (e.g., CAN bus), a key technique for enabling aftermarket autonomous systems to control factory-installed components like steering and braking.
- Key Procedural History: The complaint alleges pre-suit notification for both asserted patents. Subsequent to the filing of this complaint, both patents were subject to Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. As a result of IPR2020-00147, all claims of the ’505 Patent were cancelled. As a result of IPR2020-00268, the claims of the ’707 Patent asserted in this complaint were disclaimed by the patent owner. These post-filing events raise fundamental questions about the viability of the infringement claims as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-30 | Earliest Priority Date ('505 and '707 Patents) |
| 2018-03-22 | Alleged pre-suit notice for '505 Patent |
| 2018-07-17 | Issue Date, U.S. Patent No. 10,027,505 |
| 2019-10-22 | Issue Date, U.S. Patent No. 10,454,707 |
| 2019-11-12 | Complaint Filing Date |
| 2019-11-14 | Filing of IPR2020-00147 against '505 Patent |
| 2019-12-11 | Filing of IPR2020-00268 against '707 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,027,505 - “Method, Apparatus and System for Retrofitting a Vehicle,” issued July 17, 2018
The Invention Explained
- Problem Addressed: The patent describes the technical challenge of integrating aftermarket systems with a vehicle’s existing electronic infrastructure, particularly for functions like emergency calling where a factory-installed system (e.g., a telecommunications apparatus) needs to be controlled by a new, retrofitted device ('505 Patent, col. 2:6-10).
- The Patented Solution: The invention provides a method for intercepting communications on a vehicle’s data bus. A retrofit apparatus is physically inserted into the communication path between two factory-installed apparatuses. This retrofit device is programmed to transmit a new message that is "indistinguishable" from the original factory message, thereby allowing the retrofit device to control the original vehicle systems by "spoofing" commands ('505 Patent, Abstract; col. 7:1-10).
- Technical Importance: This approach provides a pathway for third parties to add advanced functionality, such as autonomous control, to existing vehicles by manipulating the native command and control system without needing access to the original manufacturer's proprietary source code or protocols ('505 Patent, col. 7:17-24).
Key Claims at a Glance
- The complaint asserts infringement of claims 5 and 6 (Compl. ¶14, ¶15).
- Independent Claim 1 (underlying the asserted product-by-process claim 5): A method comprising the steps of:
- providing a vehicle with a factory-installed first apparatus programmed to communicate with a factory-installed second apparatus via a data bus using a first message;
- electrically disconnecting the data bus between the two factory-installed apparatuses;
- electrically connecting a retrofit apparatus to the data bus; and
- transmitting a second message from the retrofit apparatus to the first apparatus that is "indistinguishable from the first message."
- Independent Claim 6: A vehicle comprising:
- a factory-installed first apparatus programmed to receive a first message from a factory-installed second apparatus; and
- a retrofit apparatus connected to the vehicle data bus, programmed to transmit a second message that "mimics the first message."
- The complaint reserves the right to assert other claims (Compl. ¶13).
U.S. Patent No. 10,454,707 - “Method, Apparatus and System for Retrofitting a Vehicle,” issued October 22, 2019
The Invention Explained
- Problem Addressed: Similar to the ’505 Patent, the technology addresses the need to integrate aftermarket devices into a vehicle’s embedded electronic systems ('707 Patent, col. 2:4-10).
- The Patented Solution: This invention also describes a method of retrofitting where an aftermarket apparatus intercepts communication between factory-installed components. The key distinction appears to be the focus on generating a "mimicked electrical signal" independently of the original signal, rather than an indistinguishable "message." This allows the retrofit device to control a factory-installed apparatus by generating a signal that the apparatus is configured to receive and act upon ('707 Patent, Abstract; col. 8:28-44).
- Technical Importance: This method enables the control of vehicle functions by aftermarket systems through the generation of authentic-appearing electrical signals, providing an alternative integration strategy for autonomous vehicle and other advanced systems developers ('707 Patent, col. 7:46-58).
Key Claims at a Glance
- The complaint asserts infringement of claims 5 and 6 (Compl. ¶22, ¶23).
- Independent Claim 1 (underlying the asserted product-by-process claim 5): A method comprising the steps of:
- providing a vehicle with a factory-installed first apparatus electrically connected to a second, which receives an electrical signal from the first;
- electrically disconnecting the first apparatus from the second;
- electrically connecting a retrofit apparatus to both factory-installed apparatuses;
- generating a "mimicked electrical signal" in the retrofit apparatus; and
- receiving the mimicked signal in the second apparatus.
- Independent Claim 6: A vehicle comprising:
- a factory-installed first apparatus configured to generate an electrical signal and a second apparatus configured to receive it; and
- a retrofit apparatus that generates a "mimicked electrical signal" independently of the first apparatus's signal, which is then received by the second apparatus.
- The complaint reserves the right to assert other claims (Compl. ¶21).
III. The Accused Instrumentality
- Product Identification: The accused products are automobiles, specifically Lincoln MKZ models, that have been retrofitted by Defendant Pony.ai with an Advanced Driver Assistance Systems (“ADAS”) kit manufactured by Dataspeed Inc. (Compl. ¶13). These are referred to as the “Accused Vehicles.”
- Functionality and Market Context: The complaint alleges that Pony.ai or its suppliers modify these vehicles to enable autonomous driving (Compl. ¶14.d). This process involves physically intercepting the vehicle’s internal data bus (e.g., HS-CAN) that connects factory-installed modules such as the Park Assist Module (PAM) and Power Steering Control Module (PSCM) (Compl. ¶14.b-c). Aftermarket "by-wire controller modules" are installed and connected to this data bus, from which they allegedly transmit "spoofed CAN messages" or mimicked signals to control the vehicle’s factory-installed steering and shifting systems without a human driver (Compl. ¶14.d, ¶22.e).
IV. Analysis of Infringement Allegations
'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 | The Accused Vehicles (Lincoln MKZ) are purchased with factory-installed modules (e.g., PSCM, GWM, PAM) that communicate with each other over a CAN bus using messages with identifiers. The complaint provides a table listing exemplary combinations of factory-installed vehicle modules and the CAN bus messages they exchange, offered as evidence of the 'first message' element of the claims (Compl. ¶14.b, p. 3). | ¶14.b | col. 11:18-24 |
| electrically disconnecting the vehicle data bus between the factory-installed first apparatus and the factory installed second apparatus | During retrofitting, Pony.ai or its supplier allegedly "disconnects the vehicle data bus between the factory-installed first and second apparatuses," for example, by removing a connector. | ¶14.b | col. 11:25-28 |
| electrically connecting a retrofit apparatus to the vehicle data bus | Pony.ai or its supplier installs a "throttle and brake by-wire controller module" and a "steering and shifting by-wire controller module" and connects them to the vehicle data bus. | ¶14.c | col. 11:29-31 |
| transmitting a second message from the retrofit apparatus to the factory-installed first apparatus, the second message being indistinguishable from the first message | The installed retrofit modules allegedly transmit messages to control factory systems (e.g., TRCM, PSCM) to operate the vehicle autonomously. These messages are alleged to be indistinguishable. | ¶14.d | col. 11:32-36 |
- Identified Points of Contention:
- Scope Questions: A primary issue for claim construction may be the meaning of "indistinguishable." The court would need to determine if this requires the "second message" to be a bit-for-bit identical copy of the "first message," or if it can be functionally equivalent in a way that causes the receiving apparatus to respond as intended.
- Technical Questions: A key evidentiary question is whether the complaint provides sufficient factual support that the messages sent by the Dataspeed ADAS kit are, in fact, "indistinguishable" from the original Ford/Lincoln messages, beyond a conclusory allegation.
'707 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 electrically connected to a factory-installed second apparatus, the factory-installed second apparatus being configured to receive an electrical signal from the factory-installed first apparatus | The Accused Vehicles contain factory-installed modules (e.g., GWM, PAM) that are electrically connected and exchange electrical signals over a data bus. The complaint includes a table showing examples of these modules and the signals they exchange (Compl. ¶22.b, p. 6). | ¶22.b | col. 10:20-25 |
| electrically disconnecting the factory-installed first apparatus from the factory-installed second apparatus | During the retrofit process, the data bus connection between the factory-installed modules is allegedly disconnected, for instance, by removing a connector. | ¶22.c | col. 11:1-3 |
| electrically connecting a retrofit apparatus to the factory-installed first apparatus and to the factory-installed second apparatus | Aftermarket "by-wire controller" modules are installed and electrically connected to the vehicle data bus, and thereby to the factory-installed modules. | ¶22.d | col. 11:4-6 |
| generating a mimicked electrical signal in the retrofit apparatus independently... and receiving the mimicked electrical signal in the factory-installed second apparatus | The retrofit modules allegedly generate "mimicked electrical signals in the form of spoofed CAN messages" to control factory systems (TRCM, PSCM), and these signals are received by the factory modules. | ¶22.e | col. 11:7-11 |
- Identified Points of Contention:
- Scope Questions: A central question is whether a complex, packetized "CAN message" qualifies as an "electrical signal" as that term is used in the patent. The defense may argue that the patentee's choice to use "electrical signal" in the ’707 Patent, in contrast to "message" in the related ’505 Patent, implies a different, perhaps simpler, type of signal was intended.
- Technical Questions: The complaint alleges the "mimicked electrical signals are independently generated" (Compl. ¶22.e). A factual dispute may arise over the degree of independence, i.e., whether the signals from the retrofit kit are truly generated from scratch or are merely modifications or replays of original signals.
V. Key Claim Terms for Construction
'505 Patent
- The Term: "indistinguishable" (from Claim 1)
- Context and Importance: The infringement theory rests on the allegation that the "second message" from the retrofit kit is indistinguishable from the "first message" of the factory system. The construction of this term is therefore critical. Practitioners may focus on this term because its definition—whether requiring absolute identity or functional equivalence—could be dispositive of infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the goal is for the receiving apparatus to "respond properly," which could support a functional definition where the message need only be similar enough to elicit the desired operational response ('505 Patent, col. 10:5-7). Claim 6 uses the term "mimics," which may also suggest functional similarity rather than identity.
- Evidence for a Narrower Interpretation: The plain meaning of "indistinguishable" suggests a high degree of similarity, potentially identity. The specification’s discussion of using the "same message identifier segment" could be argued to set a minimum requirement for what makes a message indistinguishable ('505 Patent, col. 10:63-65).
'707 Patent
- The Term: "electrical signal" (from Claim 1)
- Context and Importance: The scope of this term is fundamental to the infringement allegation, which identifies "spoofed CAN messages" as the infringing "electrical signal" (Compl. ¶22.e). Whether a complex data packet falls within the scope of "electrical signal" will be a central point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses the invention in the context of a "vehicle data bus" ('707 Patent, col. 3:12-14), which is commonly understood in the automotive arts to carry digital data packets like CAN messages. This context may support reading "electrical signal" broadly to include such messages.
- Evidence for a Narrower Interpretation: The patentee used the term "message" throughout the related ’505 Patent but chose "electrical signal" for the ’707 Patent. This linguistic shift may be evidence of a deliberate choice to claim a different type of signal. Further, dependent claim 4 of the ’707 Patent specifies the signal as a "variable resistance" ('707 Patent, col. 11:19-20), which could be used to argue that the patentee contemplated simpler, non-packetized signals.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain separate counts for indirect infringement. The allegations focus on Defendant's direct infringement through its own acts of making, using, and selling the Accused Vehicles (Compl. ¶13, ¶21).
- Willful Infringement: The complaint explicitly alleges willful infringement for both patents. The basis for willfulness is alleged pre-suit knowledge of the patents and the alleged infringement, stemming from notice letters sent by Plaintiff. The complaint alleges Defendant continued its infringing activities despite this knowledge (Compl. ¶18-19, ¶26-27).
VII. Analyst’s Conclusion: Key Questions for the Case
- Case Viability: The primary and overarching issue is whether this lawsuit can proceed. Given that post-filing IPR proceedings resulted in the cancellation ('505 Patent) or disclaimer ('707 Patent) of all patent claims asserted in the complaint, the foundational basis for the action appears to have been eliminated. The court's first analysis will likely focus on the legal effect of these events on the pending litigation.
- Definitional Scope: Should any claims remain viable, a core question for the ’505 Patent will be one of definitional scope: does the term "indistinguishable", in the context of a vehicle data bus, require bit-for-bit identity between messages, or can it be satisfied by a message that is merely functionally equivalent from the perspective of the receiving electronic module?
- Technical Distinction: For the ’707 Patent, a key question will be one of technical distinction: does the claim term "electrical signal" encompass a complex, packetized "CAN bus message", or did the patentee, by using different language than in the related ’505 Patent, intend to claim a simpler, non-message-based form of electrical communication?