BMW Of North America LLC v. Stragent LLC

1. Case Identification

• Case #: IPR2021-00419
• Patent #: 9,705,765
• Filed: January 21, 2021
• Petitioner(s): BMW of North America, LLC and Mercedes-Benz USA, LLC
• Patent Owner(s): Stragent, LLC
• Challenged Claims: 1-31

2. Patent Overview

• Title: System for Sharing Information in a Distributed Framework
• Brief Description: The ’765 patent describes systems for sharing information between electronic control units (ECUs) within a distributed automotive framework. The invention uses a hierarchical structure of gateways to relay messages between ECUs connected via various subnetworks, such as Controller Area Network (CAN), Local Interconnect Network (LIN), and FlexRay.

3. Grounds for Unpatentability

Ground 1: Obviousness over OSEK and Reinold - Claims 1-7, 9-19, 21-25, and 29-31 are obvious over OSEK in view of Reinold.

• Prior Art Relied Upon: OSEK (a collection of publicly available automotive software architecture specifications) and Reinold (Application # 2003/0043739).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the OSEK specifications, an open-ended architecture standard for automotive ECUs, disclose the core limitations of independent claim 1. OSEK allegedly taught an apparatus with an ECU, identifying information from a CAN message, issuing storage requests to network nodes, determining resource availability using timers that function as thresholds, and sending notifications upon failure. Petitioner asserted that OSEK’s exemplary system designs, with time intervals of 70ms or 220ms, satisfy the claimed "less than one second" timing limitation for information sharing. Reinold was introduced to supply the teaching of concurrently using a FlexRay network alongside a CAN network.
  • Motivation to Combine: A POSITA would combine OSEK’s standard architecture with Reinold’s teaching of concurrently using multiple bus types (CAN, FlexRay, LIN). The motivation was to achieve the well-known benefits of total vehicle system integration, enhanced scalability, and plug-and-play device functionality, as explicitly taught by Reinold. OSEK’s design, being independent of underlying network hardware, was intended to facilitate such combinations.
  • Expectation of Success: Petitioner contended that combining the OSEK standard with the known bus architectures from Reinold would have been a straightforward implementation yielding predictable results. Both references operate in the vehicle communication systems field and propose architectures that are independent of specific physical interfaces, ensuring a high likelihood of successful integration.

Ground 2: Obviousness over OSEK, Reinold, and Staiger - Claims 8, 20, and 26-28 are obvious over OSEK in combination with Reinold and Staiger.

• Prior Art Relied Upon: OSEK, Reinold (Application # 2003/0043739), and Staiger (Application # 2002/0073243).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of OSEK and Reinold to specifically address the more stringent "less than a millisecond" timing requirement present in claims 8, 20, and 26-28. Petitioner argued that while OSEK and Reinold provide the base system, Staiger supplies the missing element by disclosing ECUs connected to "real-time" networks that are designed to respond to stimuli within "milliseconds or microseconds" and initiate "immediate distribution" of messages.
  • Motivation to Combine: A POSITA would be motivated to modify the OSEK/Reinold system to achieve the sub-millisecond performance taught by Staiger. This modification would be desirable to support fault-tolerant, highly dependable, and safety-critical real-time applications (e.g., braking systems), which is a stated objective of the OSEK standard. The need for rapid message distribution in such systems provides a strong reason to implement faster communication protocols.
  • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success. OSEK describes its system timers as programmable and its time measurement ticks as occurring in "nanoseconds." Therefore, a POSITA would have understood that configuring OSEK’s system for sub-millisecond operation, as suggested by Staiger’s teachings on real-time systems, was a predictable modification to improve system performance rather than an inventive step.

4. Key Claim Construction Positions

• "threshold": Petitioner asserted that, consistent with prior Board decisions on related patents, this term should be construed as "a value above which something is true or will take place and below which it is not or will not." This construction allows OSEK’s error timers, which trigger a notification after a set time has elapsed without a message, to be mapped to the claimed "threshold" limitation.
• "sharing the information": Petitioner argued for a construction requiring only that information be made accessible, without necessarily requiring it to be stored. This construction is supported by dictionary definitions and allows OSEK’s methods, which include both direct message passing and access via a shared bulletin board, to meet the "sharing" limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: A central contention was that the challenged claims are not entitled to the December 17, 2002, priority date of the parent provisional application. Petitioner argued the provisional lacked sufficient written description for key memory-related claim limitations. It asserted the correct priority date is December 15, 2003, the filing date of the subsequent non-provisional application. This later priority date is critical, as it ensures that the OSEK specifications (published 2000-2003), Reinold (filed 2001), and Staiger (filed 2001) all qualify as prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The core reasons provided were that, as of the petition's filing date, no trial date had been scheduled in the parallel district court litigation, case schedules had not been issued, and investment in the court case was minimal. Petitioner also cited the strong merits of its unpatentability grounds and their similarity to arguments that the Board found persuasive in prior IPRs against related patents in the same family.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-31 of Patent 9,705,765 as unpatentable under 35 U.S.C. §103.