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

1. Case Identification

• Case #: IPR2021-00426
• 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: 43-83

2. Patent Overview

• Title: System, Method and Computer Program Product for Sharing Information in a Distributed Framework
• Brief Description: The ’036 patent discloses a system for sharing information between heterogeneous networks (e.g., Controller Area Network (CAN), FlexRay, Local Interconnect Network (LIN)) within a distributed framework, such as an automobile. The system uses a shared "bulletin board" or private memory to facilitate real-time data exchange between electronic control units (ECUs).

3. Grounds for Unpatentability

Ground 1: Obviousness over OSEK, Reinold, and Staiger - Claims 43-83 are obvious over OSEK in view of Reinold and Staiger.

• Prior Art Relied Upon:
  • OSEK (a collection of seven automotive industry standard specifications, c. 2000-2001)
  • Reinold (Application # 2003/0043739)
  • Staiger (Application # 2002/0073243)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of OSEK, Reinold, and Staiger taught all limitations of the challenged claims. OSEK, an open-ended architecture standard for automotive ECUs, was asserted to teach the core apparatus of claim 1, including an ECU with a processor and memory, interfacing with multiple networks, and a system for managing data access. Specifically, OSEK’s network management (NM) protocols, which use timers (e.g., TTyp, TMax, TError) to monitor node availability, were alleged to disclose the claimed method of issuing a storage request, determining if a resource is available, and checking if a "threshold" (the timer's expiration) has been reached. OSEK’s conditional logic for handling available nodes (storing data) versus unavailable nodes (entering a recovery state or sending a notification) was mapped to the corresponding claim elements. Reinold was cited to explicitly teach the use of a gateway to integrate FlexRay and LIN networks with a CAN network, as required by the challenged claims. Staiger, which describes real-time automotive networks, was used to support the "in less than one millisecond" sharing limitation, arguing it teaches immediate data distribution in microseconds.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to combine the references. A POSITA would start with the OSEK industry standard, which was designed to be network-independent, and integrate other common automotive networks like FlexRay and LIN as taught by Reinold to enhance system capability. This combination was presented as a predictable integration of known elements for their intended purposes. Further, a POSITA would have been motivated to configure the timers in OSEK’s real-time system to achieve the high-speed performance and "immediate distribution" taught by Staiger, a known objective for safety-critical automotive applications.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success because OSEK’s framework was explicitly designed to accommodate different bus systems. Combining it with the specific networks disclosed in Reinold was a straightforward application of known technologies that yielded predictable results, namely a more versatile and integrated vehicle communication system.

Ground 2: Obviousness over OSEK, Reinold, Staiger, and Simulink - Claims 71-72 are obvious over OSEK in view of Reinold, Staiger, and Simulink.

• Prior Art Relied Upon:
  • OSEK, Reinold, Staiger (as in Ground 1)
  • Simulink (a 2000 paper titled "Automatic Code Generation for Multirate Simulink Models with Support for the OSEK Real-Time Operating System")
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated all arguments from Ground 1 and added Simulink to address the specific limitations of claims 71 and 72. Simulink was described as a design tool that integrates code generation with the OSEK operating system, enabling developers to model and simulate a "virtual automotive ECU." This was alleged to directly teach the limitation of claim 71 ("the automotive [ECU] is a virtual automotive [ECU]"). Petitioner further argued that Simulink's role as a development tool for OSEK-based systems, along with OSEK’s own "OSEK Builder" and "System Generator" tools, taught the limitation of claim 72, which requires a system capable of interfacing with a "design tool."
  • Motivation to Combine (for Simulink): A POSITA developing an OSEK-based system would naturally use well-known design and simulation tools like Simulink to model, test, and generate code for the system before deployment, especially for creating virtual ECUs for development purposes.

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 was asserted to be consistent with prior Board decisions and allows OSEK's timers, which trigger events upon expiration, to meet the limitation.
• "share the information": Petitioner proposed that "sharing" requires that information is made accessible, without necessarily requiring storage. This construction supports the argument that OSEK’s "WithoutCopy" method, which maps nodes to the same shared memory location for instantaneous access, meets the patent’s high-speed sharing requirements.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued that discretionary denial under Fintiv was inappropriate. At the time of filing, the parallel district court litigation was in its infancy, with only motions to dismiss pending and no trial date set. Petitioner contended that the early stage of the litigation and the strong merits of the petition, which mirrored arguments the Board found persuasive against parent patents, weighed heavily in favor of institution.
• §325(d) (Same or Substantially Same Art): Petitioner argued against denial under §325(d), asserting that the core prior art was not substantively considered during prosecution. Although OSEK and Staiger were cited in an Information Disclosure Statement (IDS), they were never applied in a rejection or discussed by the Examiner. Reinold was never before the Examiner. Petitioner characterized the Examiner's failure to consider OSEK as a material error, especially given that the Board had previously instituted IPRs and found claims of parent patents unpatentable over OSEK.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 43-83 of the ’036 patent as unpatentable.