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

1. Case Identification

• Case #: IPR2021-00427
• 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: 84-101, 109-120, 122-125, and 127

2. Patent Overview

• Title: System, Method and Computer Program Product for Sharing Information in a Distributed Framework
• Brief Description: The ’036 patent describes a system for sharing information between heterogeneous networks within a distributed framework, such as an automotive environment. The system utilizes gateways with multiple interfaces (e.g., for CAN, FlexRay, and LIN networks) and a shared memory architecture to facilitate real-time data exchange between electronic control units (ECUs).

3. Grounds for Unpatentability

Ground 1: Claims 84-101, 109-120, 122-125, and 127 are obvious over OSEK in view of Reinold and Staiger.

• Prior Art Relied Upon: OSEK (a collection of seven interrelated automotive software architecture specifications), Reinold (Application # 2003/0043739), and Staiger (Application # 2002/0073243).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of OSEK, Reinold, and Staiger disclosed all limitations of the challenged claims. OSEK, an established industry standard for automotive ECUs, was asserted to teach the core architecture: an apparatus with a processor, memory, and interfaces for connecting multiple networks. OSEK disclosed a system for sharing information using a "storage resource" (e.g., a data buffer) and managing access by determining resource availability. This included issuing storage requests (e.g., periodic "alive" messages), determining if a resource was available based on timers (a "threshold"), and taking different actions based on the outcome, such as re-issuing a request or sending an error notification ("LimpHome" message).

    Petitioner contended that while OSEK taught a network-independent system compatible with various protocols, Reinold explicitly disclosed a gateway for integrating the specific network types required by the claims—CAN, FlexRay, and LIN—within a single vehicle. Reinold’s teaching of a "plug-and-play" architecture with these legacy bus systems would be a natural and predictable implementation of the OSEK framework.

    To address the claim limitation of sharing information "in less than one millisecond," Petitioner pointed to Staiger. Staiger described automotive networks like CAN as "real-time" busses designed to respond to stimuli within "milliseconds or microseconds." Petitioner argued that a POSITA, seeking to implement the real-time, fault-tolerant systems described in OSEK, would be motivated to configure OSEK’s programmable timers (disclosed as being settable to nanoseconds) to achieve the immediate message distribution taught by Staiger. OSEK’s "WithoutCopy" mode, which maps nodes to a shared memory location for instantaneous access, was also argued to meet this timing requirement.

  • Motivation to Combine: A POSITA starting with the OSEK industry standard for an open-ended, network-independent architecture would have been motivated to consult references like Reinold to implement specific, well-known automotive networks such as FlexRay and LIN. OSEK’s express goal was to allow for "re-use across different bus platforms." The motivation to incorporate Staiger’s teachings stemmed from the fundamental need for high-speed, predictable performance in safety-critical automotive systems, making the goal of "immediate distribution" of messages a primary design consideration.

  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success. The references were all within the same field of automotive network communication, addressed the same problem of integrating diverse networks, and used predictable techniques. Combining them amounted to implementing a known standard (OSEK) with known network types (taught by Reinold) to achieve a known goal of real-time performance (taught by Staiger), yielding no unexpected results.

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 based on previous Board findings in IPRs involving related patents from the same family.
• "share the information": Petitioner argued this phrase requires that the information is made accessible, but does not necessarily require storage of the information. This position was also supported by citing the Board’s constructions in prior related cases.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date: Petitioner contended that the ’036 patent was not entitled to the priority date of its earliest provisional application (December 17, 2002). The argument was that key "memory-related limitations"—specifically the logic for determining whether a threshold is reached and taking different actions based on storage availability—were not disclosed until a later application filed on December 15, 2003. Petitioner asserted this later date was the correct priority date for the challenged claims, which makes prior art like Reinold and Staiger fully applicable.

6. Arguments Regarding Discretionary Denial

• Discretionary Denial under Fintiv: Petitioner argued against discretionary denial because the parallel district court litigation was in its earliest stages. At the time of filing, no case schedule had been issued and no trial date was set, meaning factors such as investment in the parallel proceeding and proximity to trial did not favor denial.
• Discretionary Denial under §325(d): Petitioner argued that denial under §325(d) was inappropriate because the core prior art had not been substantively considered by the examiner during prosecution. Although OSEK and Staiger were cited in an Information Disclosure Statement (IDS), they were never discussed or used as a basis for rejection. Reinold was not before the examiner at all. Therefore, the petition presented arguments and art that the Patent Office had not previously evaluated.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 84-101, 109-120, 122-125, and 127 of the ’036 patent as unpatentable.