Daimler Ag Mercedes Benz USA LLC Mercedes Benz Intl Inc v. Stragent LLC

1. Case Identification

• Case #: IPR2021-00425
• Patent #: 10,002,036
• Filed: January 21, 2021
• Petitioner(s): Mercedes-Benz USA, LLC, and BMW of North America, LLC
• Patent Owner(s): Stragent, LLC
• Challenged Claims: 1-42, 102-108, 121, and 126

2. Patent Overview

• Title: System, Method and Computer Program Product for Sharing Information in a Distributed Framework
• Brief Description: The ’036 patent relates to a system and software for sharing information in a distributed automotive environment. The system uses a gateway with a shared "bulletin board" or private memory to interface between at least two different vehicle networks, such as a Controller Area Network (CAN), FlexRay, or Local Interconnect Network (LIN).

3. Grounds for Unpatentability

Ground 1: Obviousness over OSEK, Reinold, and Staiger - Claims 1-42, 102-108, 121, and 126

• Prior Art Relied Upon: OSEK (a collection of seven interrelated automotive software architecture specifications, Exhibits 1006-1012), Reinold (Application # 2003/0043739), and Staiger (Application # 2002/0073243).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that OSEK, an open-ended industry standard for distributed Electronic Control Units (ECUs) in vehicles, discloses the core architecture of the challenged claims, including an ECU apparatus with processors, memory, and multiple network interfaces. OSEK’s design is network-independent, inviting the use of various bus systems. Reinold explicitly taught combining CAN, LIN, and FlexRay networks in a single-vehicle architecture to achieve total system integration. Therefore, a Person of Ordinary Skill in the Art (POSITA) would combine Reinold's specific network teachings with the OSEK framework. Furthermore, OSEK disclosed all elements of the claimed memory management scheme, including issuing storage requests, determining resource availability using timers (e.g., TTyp, TMax), treating timer expiration as a "threshold," and performing conditional actions based on whether the threshold is met. For limitations requiring sub-millisecond timing, Staiger taught that automotive networks like CAN are "real-time" and designed to respond to stimuli in milliseconds or microseconds. A POSITA would have been motivated to configure OSEK's programmable timers to meet the real-time requirements described by Staiger.
  • Motivation to Combine: A POSITA would combine these references as they are all in the same field of endeavor (automotive network communications) and address the same problem of integrating different vehicle networks. Combining the well-known networks of Reinold with the flexible OSEK standard was a predictable design choice to improve system capability, and optimizing for speed as taught by Staiger was a matter of routine engineering.
  • Expectation of Success: A POSITA would have a high expectation of success because combining these known elements—a standard architecture (OSEK), common network types (Reinold), and known performance goals (Staiger)—involved applying predictable solutions to achieve a predictable result.

Ground 2: Obviousness over OSEK, Reinold, Staiger, and Kershaw - Claims 3-4 and 104-105

• Prior Art Relied Upon: OSEK, Reinold, Staiger, and Kershaw (a 1990 article on dependable systems).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 and adds Kershaw to address claims requiring performance in "less than one microsecond." While Staiger taught millisecond or microsecond timing, Kershaw provided a more explicit motivation for even faster, sub-microsecond performance. Kershaw taught that in highly integrated, safety-critical systems like automotive controls, using "sub-microsecond" pulses for fault injection and error reporting is beneficial for building a dependable system.
  • Motivation to Combine: A POSITA, seeking to implement a highly dependable real-time system as described in OSEK, would be motivated by Kershaw to reduce system latency to the sub-microsecond level to facilitate quicker fault detection and resolution. As OSEK’s own specifications define system timer ticks in nanoseconds, a POSITA would recognize that implementing the sub-microsecond timing taught by Kershaw was well within the capabilities of the OSEK architecture.

4. Key Claim Construction Positions

• "threshold": Petitioner argued 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 is critical to mapping OSEK's use of timers (e.g., TTyp, TMax) to the claimed threshold limitations.
• "share the information": Petitioner argued this term requires that "the information is accessible, without requiring storage of the information." This construction supports the argument that OSEK's "WithoutCopy" method, which maps nodes to a shared memory location for instantaneous access, meets the timing limitations of the claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner contended the ’036 patent is not entitled to its earliest claimed priority date of December 17, 2002. It was argued that the initial provisional application failed to provide sufficient written description for key "memory-related limitations" (e.g., determining whether a threshold has been reached). Petitioner asserted the effective priority date is therefore December 15, 2003, the filing date of a later application, which ensures that the OSEK, Reinold, and Staiger references qualify as prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution.
• Against Fintiv Denial: Petitioner asserted that at the time of filing, no trial date was set in the parallel district court litigation, no significant investment had been made beyond motions to dismiss, and the strong merits of the petition favored institution.
• Against §325(d) Denial: Petitioner argued that the key prior art was not properly considered during prosecution. Although the OSEK specifications were cited in an Information Disclosure Statement (IDS), the Examiner never substantively analyzed them or based any rejection upon them. Reinold and Kershaw were never presented to the Examiner. Petitioner contended this "silent" record on the most relevant art constituted an Examiner error that warranted review.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-42, 102-108, 121, and 126 of the ’036 patent as unpatentable.