DCT
1:19-cv-02124
Sucxess LLC v. SF Motors Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sucxess LLC (Michigan)
- Defendant: SF Motors, Inc. d/b/a Seres (Delaware)
- Plaintiff’s Counsel: O'Kelly Ernst & Joyce, LLC
- Case Identification: 1:19-cv-02124, 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 and existing under the laws of the State of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s retrofitted autonomous vehicle prototypes infringe patents related to methods and systems for intercepting and mimicking messages on a vehicle’s internal data bus to add new functionality.
- Technical Context: The technology concerns the modification of modern vehicles, which use internal computer networks (like CAN buses) to control functions, by installing aftermarket hardware that can take control of factory-installed systems.
- Key Procedural History: The complaint alleges pre-suit notification for both asserted patents. Subsequent to the filing of the complaint, official records attached to the patents-in-suit indicate significant developments. An Inter Partes Review (IPR) proceeding on U.S. Patent No. 10,027,505 resulted in the cancellation of all claims. For U.S. Patent No. 10,454,707, a combination of a terminal disclaimer and a separate IPR proceeding resulted in the disclaimer or cancellation of all asserted claims, with only unasserted claim 20 remaining. These post-filing events raise questions about the ongoing viability of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-30 | Earliest Priority Date ('505 & '707 Patents) |
| 2018-07-11 | Alleged latest date of pre-suit notice letter for '505 Patent |
| 2018-07-17 | U.S. Patent No. 10,027,505 Issued |
| 2019-10-22 | U.S. Patent No. 10,454,707 Issued |
| 2019-11-12 | Complaint Filing Date |
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 difficulty of adding new functionality, such as a one-touch emergency call button, to vehicles with existing, proprietary telematics systems (e.g., OnStar) that are not designed for third-party modification (’505 Patent, col. 1:11-14). The patent notes that using standard interfaces like voice commands to dial "9-1-1" can be unreliable in an emergency (’505 Patent, col. 2:1-5).
- The Patented Solution: The invention provides a "man-in-the-middle" method for retrofitting vehicles. A new "retrofit apparatus" is installed by first disconnecting the vehicle’s data bus between two factory-installed components. The retrofit apparatus is then connected to the bus, where it can transmit a "second message" that is "indistinguishable" from the "first message" that the factory components originally used to communicate (’505 Patent, Abstract). This allows the retrofit device to intercept communications and "spoof" commands to control vehicle systems, as depicted in the relationship between the emergency call apparatus (214) and the telecommunication apparatus (200) (’505 Patent, Fig. 2C, col. 2:38-54).
- Technical Importance: This approach enables aftermarket manufacturers to add advanced features, such as autonomous driving capabilities, to existing vehicle platforms by integrating with and controlling factory-installed electronic systems.
Key Claims at a Glance
- The complaint asserts infringement of claims 5 and 6 (Compl. ¶¶14-15).
- Independent Method Claim 1 (basis for asserted Claim 5):
- providing a vehicle with a factory-installed first apparatus programmed to communicate with a factory-installed second apparatus via a vehicle data bus using 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; and
- transmitting a second message from the retrofit apparatus to the first apparatus, with the second message being "indistinguishable" from the first.
- Independent Apparatus 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, including a processor programmed to transmit a second message which "mimics" the first message.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,454,707, "Method, Apparatus and System for Retrofitting a Vehicle," Issued October 22, 2019
The Invention Explained
- Problem Addressed: The '707 patent addresses the same technical problem as the '505 patent: enabling the addition of third-party electronics to a vehicle’s closed communication network (’707 Patent, col. 1:11-14).
- The Patented Solution: The solution is also a "man-in-the-middle" retrofit. The claims of the '707 patent are structured differently, focusing on disconnecting a first apparatus from a second, then connecting a retrofit apparatus to both the first and second factory apparatuses. The retrofit apparatus then generates a "mimicked electrical signal" independently of the first apparatus, which is then received by the second apparatus (’707 Patent, Claim 1). This allows the retrofit device to inject its own commands into the system.
- Technical Importance: As with the '505 patent, this technology provides a pathway for integrating advanced aftermarket systems with original equipment manufacturer (OEM) vehicle electronics.
Key Claims at a Glance
- The complaint asserts infringement of claims 5 and 6 (Compl. ¶¶22-23).
- Independent Method Claim 1 (basis for asserted Claim 5):
- providing a vehicle with a factory-installed first apparatus electrically connected to a second apparatus configured to receive an electrical signal from the first;
- electrically disconnecting the first apparatus from the second;
- electrically connecting a retrofit apparatus to the first and second apparatuses;
- generating a mimicked electrical signal in the retrofit apparatus; and
- receiving the mimicked signal in the second apparatus.
- Independent Apparatus Claim 6:
- A vehicle comprising a first apparatus to generate an electrical signal and a second apparatus to receive it; and
- a retrofit apparatus connected to the second apparatus that generates a "mimicked electrical signal" independently of the first apparatus, which the second apparatus receives.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Lincoln MKZ automobiles that have been retrofitted with an Advanced Driver Assistance Systems ("ADAS") kit manufactured by Dataspeed Inc. (Compl. ¶13).
Functionality and Market Context
- The complaint alleges that Defendant Seres uses these retrofitted vehicles as "autonomous vehicle prototypes" (Compl. ¶11). The ADAS kit allegedly includes a "throttle and brake by-wire controller module" and a "steering and shifting by-wire controller module" (Compl. ¶14c). These modules are installed to connect to the vehicle’s data bus and "modify the steering and shifting signals to cause factory-installed systems... to operate the vehicle without a human driver" (Compl. ¶14d).
IV. Analysis of Infringement Allegations
'505 Patent Infringement Allegations
The complaint provides a table listing exemplary combinations of factory apparatuses and messages involved in the accused process (Compl. p. 3). This table shows, for example, the Power Steering Control Module (PSCM) and Park Assist Module (PAM) communicating about steering activation requests.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| 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 | Seres purchases and retrofits Lincoln MKZ vehicles equipped with factory-installed modules (e.g., PSCM, PAM, GWM) that communicate via CAN bus messages. | ¶14b | col. 9:18-24 |
| electrically disconnecting the vehicle data bus between the factory-installed first apparatus and the factory installed second apparatus | During the retrofit, Seres's supplier allegedly "disconnects the vehicle data bus between the factory-installed first and second apparatuses," for example, by "removing a connector." | ¶14b | col. 9:25-28 |
| electrically connecting a retrofit apparatus to the vehicle data bus | Seres's supplier installs a "throttle and brake by-wire controller module" and a "steering and shifting by-wire controller module," which are connected to the vehicle data bus. | ¶14c | col. 9:29-31 |
| 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 transmit messages that modify steering and shifting signals to control factory systems (e.g., TRCM, PSCM) and operate the vehicle without a human driver. | ¶14d | col. 9:32-36 |
- Identified Points of Contention:
- Technical Question: What evidence establishes that the retrofit process involves "electrically disconnecting" the bus between two specific factory apparatuses, as opposed to adding a new node to the shared bus network? The patent specification depicts a more explicit interception (e.g., '505 Patent, Fig. 6), and the complaint’s allegation of "removing a connector" may require factual development.
- Scope Question: What is the required scope of "indistinguishable"? The dispute may center on whether the mimicked message must be bit-for-bit identical to the original factory message, or if it need only be functionally equivalent in eliciting a response from the receiving module.
'707 Patent Infringement Allegations
The complaint includes a table detailing exemplary electrical signals between various factory-installed apparatuses, such as an "Active park assist steering activation request" between the PAM and GWM (Compl. p. 7).
| 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... configured to receive an electrical signal... | Seres purchases Lincoln MKZ vehicles with factory-installed apparatuses (e.g., PAM, PSCM, GWM) that are electrically connected and exchange signals via a data bus. | ¶22b | col. 11:1-6 |
| electrically disconnecting the factory-installed first apparatus from the factory-installed second apparatus | During the retrofit, Seres's supplier allegedly "disconnects the vehicle data bus between the factory-installed first and second apparatuses." | ¶22c | col. 11:7-9 |
| electrically connecting a retrofit apparatus to the factory-installed first apparatus and to the factory-installed second apparatus | The retrofit modules are "connected to the vehicle data bus and thereby electrically connected to the first apparatus and to the second apparatus." | ¶22d | col. 11:10-13 |
| 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" which are received by factory systems to control the vehicle without a human driver. | ¶22e | col. 11:14-21 |
- Identified Points of Contention:
- Technical Question: The claim requires connecting the retrofit apparatus to the first factory apparatus and to the second factory apparatus. The complaint alleges the retrofit apparatus is connected "to the vehicle data bus." A key factual question will be whether connecting to a shared bus constitutes the specific connections recited in the claim.
- Scope Question: How will "mimicked electrical signal" be defined? This raises a similar issue as the "indistinguishable" term in the '505 patent, focusing on the required degree of similarity between the original and spoofed signals.
V. Key Claim Terms for Construction
The Term: "electrically disconnecting" ('505 Patent, Claim 1; '707 Patent, Claim 1)
- Context and Importance: This term is foundational to the claimed retrofit method. Its construction will determine whether simply adding a new device to a bus network, which may intercept messages through software, meets the claim limitation, or if a physical alteration of the communication path is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification describes the electrical connection between an emergency call button and a telecommunication apparatus being "separated and the... switch is rewired" (’505 Patent, col. 2:50-53). Figures 4, 6, and 7 show the retrofit apparatus being physically inserted in the communication path, either through direct wiring or a controlled switch, suggesting a physical break and re-route is contemplated.
- Evidence for a Broader Interpretation: The term itself is not explicitly defined, which could leave room for an argument that any action that functionally severs the original communication path, even without physically cutting a wire, constitutes "disconnecting."
The Term: "indistinguishable" ('505 Patent, Claim 1) / "mimicked" ('707 Patent, Claim 6)
- Context and Importance: The definition of these terms is critical for determining infringement, as it sets the standard for how closely the retrofit apparatus's signal must replicate the factory signal.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The '505 patent specification states that to "mimic the dial command message emergency call apparatus 214 uses the same message identifier segment" as the original device (’505 Patent, col. 10:60-63). This suggests that being "indistinguishable" requires, at a minimum, spoofing the message source identifier to trick the receiving module.
- Evidence for a Broader Interpretation: The terms are not explicitly defined to require bit-for-bit identity. A party could argue that a signal is "mimicked" or "indistinguishable" if it causes the receiving apparatus to perform the same function it would have upon receiving the original signal, regardless of minor differences in the data payload.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement. The allegations are framed as direct infringement under 35 U.S.C. § 271(a) for "making, using, offering to sell, or selling" the accused vehicles (Compl. ¶¶13, 21). Specific factual allegations to support the knowledge and intent elements of induced infringement are not detailed.
- Willful Infringement: Willfulness is alleged for both patents. The complaint claims Defendant had pre-suit knowledge of the '505 patent and its alleged infringement via a letter sent "no later than July 11, 2018" (Compl. ¶18). For the '707 patent, knowledge is alleged based on a letter sent "[p]rior to filing suit" (Compl. ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive threshold question for the court will be one of mootness: given that post-filing administrative proceedings and disclaimers have resulted in the cancellation or surrender of all patent claims asserted in the complaint, does a viable cause of action for infringement still exist?
- A central technical question, had the claims survived, would be one of architectural conformity: does connecting a retrofit module to a shared CAN bus, as alleged in the complaint, satisfy the claim limitations requiring the "electrical disconnecting" of two factory apparatuses and the connection of the retrofit module to those specific apparatuses, as depicted in the patents' specifications?
- A key claim construction issue would concern the scope of imitation: must the "indistinguishable" or "mimicked" signal generated by the retrofit device be a bit-for-bit replication of the original factory signal, including its unique identifier, or is functional equivalence sufficient to meet the claim language?