BMW Of North America LLC v. Stragent LLC

1. Case Identification

• Case #: IPR2021-00418
• Patent #: 10,031,790
• Filed: January 21, 2021
• Petitioner(s): BMW of North America, LLC and Mercedes-Benz USA, LLC
• Patent Owner(s): Stragent, LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: System, Method and Computer Program Product for Sharing Information in a Distributed Framework
• Brief Description: The ’790 patent discloses systems and methods for sharing information between electronic control units (ECUs) in a vehicle. The system uses a hierarchical framework of gateways to relay messages between different subnetworks, such as Controller Area Network (CAN), Local Interconnect Network (LIN), and FlexRay.

3. Grounds for Unpatentability

Ground 1: Obviousness over OSEK, Reinold, and Staiger - Claims 1-2, 6-14, and 26 are obvious over OSEK in view of Reinold and Staiger.

• Prior Art Relied Upon: OSEK (a collection of automotive open-ended architecture specifications published between 2000-2003), Reinold (Application # 2003/0043739), and Staiger (Application # 2002/0073243).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that OSEK, an industry standard for distributed ECUs in vehicles, discloses the core apparatus of claim 1, including an ECU with a processor and memory for facilitating inter-ECU communication over multiple networks. While OSEK discloses using CAN, it does not explicitly disclose using FlexRay concurrently. Reinold remedies this by teaching the well-known practice of combining multiple legacy bus architectures—specifically naming CAN, LIN, and FlexRay—to achieve total vehicle system integration. Petitioner asserted that OSEK further teaches the claimed memory management functions, such as determining node availability and issuing storage requests via its network management protocols and timers. The "less than one millisecond" timing limitation was argued to be taught by Staiger, which describes real-time automotive networks that respond to stimuli in "milliseconds or microseconds" to achieve "immediate distribution" of messages.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine OSEK's standardized ECU architecture with Reinold’s teaching of using multiple network protocols (including FlexRay) to achieve the known benefits of improved integration, scalability, and upgradeability. A POSITA would be further motivated by Staiger to optimize the OSEK system for high-speed performance, particularly for safety-critical applications, by implementing the sub-millisecond message distribution times Staiger describes as typical for such real-time systems.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved implementing a known protocol (FlexRay) into a standardized, protocol-agnostic architecture (OSEK) to achieve predictable improvements in system integration and performance.

Ground 2: Obviousness over OSEK, Reinold, Staiger, and Kershaw - Claims 3-5, 15-25, and 27-30 are obvious over OSEK in view of Reinold, Staiger, and Kershaw.

• Prior Art Relied Upon: OSEK, Reinold, Staiger, and Kershaw (a 1990 article titled "Dependable Systems Using ‘Viper’").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1 but adds Kershaw to address the more stringent timing requirement of "less than one microsecond" recited in claims such as claim 3. Petitioner argued that the combination of OSEK, Reinold, and Staiger renders the overall system obvious, as detailed in Ground 1. To achieve sub-microsecond timing, a POSITA would look to prior art concerning highly dependable, fault-tolerant systems. Kershaw provides the express teaching for this, describing fault-tolerant design for critical systems, including automotive systems, and disclosing the generation of a "sub-microsecond pulse" to confirm system checks. Petitioner also pointed to OSEK's own disclosure that its system timers can be configured with a tick duration in "nanoseconds," making sub-microsecond operation an inherent capability.
  • Motivation to Combine: The motivation to add Kershaw’s teachings is to further enhance the speed and reliability of the OSEK/Reinold/Staiger system, particularly for safety-critical functions where fault detection and response times are paramount. A POSITA would recognize the need for faster message transfer when dealing with potential system faults, as taught by Kershaw, and would modify the system to operate in the sub-microsecond range to facilitate quicker notifications and responses.
  • Expectation of Success: A POSITA would expect success in achieving sub-microsecond timing because OSEK’s architecture was designed to be configurable and supported timers with nanosecond-level resolution. Implementing faster processing for critical events, as taught by Kershaw, was a known engineering principle that would yield the predictable result of reduced system latency.

4. Key Claim Construction Positions

• "threshold": Citing prior IPRs involving related patents, Petitioner argued "threshold" should be construed as "a value above which something is true or will take place and below which it is not or will not," consistent with its use in the specification in the context of an elapsed time.
• "sharing the information": Petitioner argued this term requires making information accessible, without necessarily requiring storage of the information, based on the plain language of the claims and the written description.
• "protocol": Petitioner contended that "protocol" is a well-understood term in computer science meaning "a standard that specifies the format of data as well as the rules to be followed in transmitting it."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors. At the time of filing, motions to dismiss were pending in the parallel district court litigation, and no case schedules or trial dates had been issued. Therefore, Petitioner contended that no factor favored denial, and the strong merits of the petition, along with its similarity to previously successful challenges against related patents, favored institution.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-30 of the ’790 patent as unpatentable.