Dataspeed Inc v. Sucxess LLC

1. Case Identification

• Case #: IPR2020-00268
• Patent #: 10,454,707
• Filed: December 11, 2019
• Petitioner(s): Dataspeed Inc.
• Patent Owner(s): Sucxess LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Aftermarket Device for Mimicking an Electrical Signal
• Brief Description: The ’707 patent describes methods and systems for retrofitting a vehicle with an apparatus that intercepts and replaces signals between two factory-installed components. The retrofit apparatus generates a "mimicked" electrical signal to control a factory-installed component independently of the original signal it would have received.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Walker - Claims 1-14 and 16-20 are invalid under 35 U.S.C. §102(b) and/or §103 over Walker.

• Prior Art Relied Upon: Walker (Patent 6,647,328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Walker discloses every element of the challenged claims. Walker teaches retrofitting vehicles with "trickster" circuits to enable remote control. These circuits are inserted between a factory-installed OEM sensor (the "first apparatus," e.g., a throttle position sensor) and an OEM control module (the "second apparatus," e.g., a power train control module). The trickster circuit uses a relay to electrically disconnect the OEM sensor from the control module and connect itself to both components. It then generates a "simulated" or "mimicked" signal independently of the OEM sensor's signal, which is then received by the OEM control module to operate the vehicle remotely.
  • Motivation to Combine (for §103 ground): The petition asserted that even if Walker did not explicitly disclose every limitation, it would have been obvious to a person of ordinary skill in the art (POSITA) to adapt Walker's teachings to arrive at the claimed invention. As Walker teaches all elements, any minor variations would have been obvious modifications.
  • Expectation of Success (for §103 ground): A POSITA would have had a high expectation of success as Walker provides detailed circuit diagrams and instructions for implementing the exact functionality claimed.

Ground 2: Anticipation and Obviousness over Smart Roadster - Claims 1-3, 5-10, 12, 13, and 16-20 are invalid under §102 and/or §103 over Smart Roadster.

• Prior Art Relied Upon: Smart Roadster (a 2006 conference paper titled "Smart Roadster Project: Setting up Drive-by-Wire or How to Remote-Control your Car").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Smart Roadster describes a control circuit retrofitted into a vehicle to enable drive-by-wire capability. The circuit is inserted between an OEM torque sensor ("first apparatus") and an OEM steering control module ("second apparatus"). The circuit uses relays to disconnect the sensor from the control module and, in its place, provide "imaginary torque values" (a mimicked signal) to the control module. This mimicked signal is generated independently based on external commands from a Control-CAN-bus, allowing for remote steering. The teachings were argued to map directly to the limitations of independent claims 1 and 6.
  • Motivation to Combine (for §103 ground): Petitioner highlighted that Smart Roadster explicitly states its method "leads to an obvious idea of separating the sensor from the control box and generating imaginary torque values." This statement was presented as strong evidence that a POSITA would have found the claimed invention obvious.
  • Expectation of Success (for §103 ground): A POSITA would have expected success because Smart Roadster is a report on a successfully implemented project, complete with circuit diagrams and operational descriptions.

Ground 3: Obviousness over Dietz Combination - Claims 1-3, 5-10, 12, 13, and 15-20 are obvious over Dietz in view of SAE, Negley, and Bosch.

• Prior Art Relied Upon: Dietz (an installation manual for a Multimedia Interface 1280), SAE (a technical paper on CAN specifications), Negley (a journal article on CAN control), and Bosch (a CAN specification document).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Dietz teaches a method of retrofitting a multimedia interface into a vehicle's CAN bus. The interface is installed between the car's control modules ("first apparatus") and the OEM navigation system ("second apparatus") by cutting the CAN bus. When activated, the Dietz module intercepts CAN bus messages indicating vehicle motion and generates an independent, mimicked "spoof" message indicating the vehicle is in "Park." This mimicked signal is sent to the navigation system, allowing it to play video while the vehicle is actually in motion. SAE, Negley, and Bosch provide the foundational knowledge a POSITA would possess regarding the structure and protocols of CAN bus systems.
  • Motivation to Combine (for §103 grounds): A POSITA, seeking to enable video-in-motion as described in Dietz, would have been motivated to consult standard CAN protocol references like SAE, Negley, and Bosch to understand how to intercept, interpret, and generate CAN messages. The combination involved applying known, standard protocols (from SAE et al.) to the specific problem solved by Dietz.
  • Expectation of Success (for §103 grounds): Success would have been expected because the combination merely applies well-established, standardized CAN bus principles to the specific implementation taught by the Dietz installation manual.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 4, 11, and 14 over Smart Roadster in view of Walker and Buehler (to teach a variable resistance sensor), and various combinations of Walker, Dietz, and Smart Roadster to address specific dependent claim features like the use of a CAN bus interface.

4. Key Claim Construction Positions

• Petitioner argued that no explicit constructions were necessary, but highlighted the prosecution history for the terms "independently" and "in response to."
• During prosecution, the Patent Owner explained that generating a signal "independently" means the "retrofit apparatus is not required to even receive the original signal." Petitioner argued its cited prior art, which uses relays to physically disconnect the original signal path, directly meets this definition.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’707 patent as unpatentable.