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

1. Case Identification

• Case #: IPR2021-00726
• Patent #: 10,002,036
• Filed: April 2, 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 system, such as an automobile. The system uses a common "bulletin board" 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 Miesterfeld, Wense, OSEK-COM, and OSEK-NM - Claims 1-2, 7-23, 26, 28, 30-36, 38-42, 102-108, 121, and 126 are obvious over Miesterfeld in view of Wense, OSEK-COM, and OSEK-NM.

• Prior Art Relied Upon: Miesterfeld (Patent 6,141,710), Wense (a 2001 article titled “Building Automotive LIN Applications”), OSEK-COM (OSEK/VDX Communication Specification, Dec. 2000), and OSEK-NM (OSEK/VDX Network Management Specification, May 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miesterfeld disclosed the core apparatus of claim 1: an automotive gateway (ECU) with a processor and shared memory for exchanging data between two different vehicle networks. However, Miesterfeld did not explicitly name the networks as Flexray and CAN. Wense supplied this missing element, disclosing the common, concurrent use of Flexray, CAN, and LIN protocols in automotive systems. Petitioner contended that Miesterfeld, when modified by Wense, met the networking limitations. For limitations related to managing data storage (e.g., resource requests, thresholds, notifications), Petitioner asserted that the OSEK-COM and OSEK-NM standards provided the necessary teachings. These standards disclosed standardized methods for managing communication, including using timers as thresholds to determine resource availability and sending notifications upon timeouts.
  • Motivation to Combine: A POSITA would combine Miesterfeld and Wense because they address the same problem of integrating heterogeneous networks in an automotive environment. Substituting the industry-standard Flexray and CAN protocols from Wense into Miesterfeld's generic gateway would have been a simple and predictable design choice. A POSITA would further incorporate the OSEK standards because OSEK was the established framework for implementing network management and communication protocols in automotive ECUs, providing a well-known solution for managing shared resources and ensuring reliable data transfer.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved applying industry-standard protocols (Wense, OSEK) to a known system architecture (Miesterfeld) to achieve the predictable result of a managed, multi-protocol communication gateway.

Ground 2: Obviousness over Miesterfeld, Wense, OSEK-COM, OSEK-NM, and Kershaw - Claims 3-6 and 104-105 are obvious over the combination of Ground 1 in view of Kershaw.

• Prior Art Relied Upon: The combination from Ground 1, plus Kershaw (a 1990 article on fault-tolerant design concepts).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring certain actions to occur in "less than one microsecond." While Petitioner argued Miesterfeld's disclosure of "less than 5 microseconds" already suggested this, Kershaw was introduced to explicitly teach sub-microsecond timing. Kershaw described a fault-tolerant system for critical applications, including automotive systems, that generated a "sub-microsecond pulse" for system checks.
  • Motivation to Combine: A POSITA would have been motivated to implement the sub-microsecond timing of Kershaw into the Miesterfeld system to increase the speed, reliability, and robustness of the automotive gateway. Reducing reaction and response time was a well-known goal in designing such systems, making Kershaw's teachings directly applicable and desirable.
  • Expectation of Success: A POSITA would have easily implemented Kershaw's timing in the proposed system, particularly given the use of a faster Flexray network which would support faster processing times.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including: (1) adding OSEK-OS (OSEK/VDX Operating System Specification) to the Ground 1 combination to teach sharing information with an operating system and providing dynamic preemptive scheduling (Ground 3); and (2) adding OSEK-FTCom (OSEK/VDX Fault-Tolerant Communication Specification) to teach protecting a storage resource with semaphores and providing failure redundancy (Ground 4).

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, adopted by the Board in prior IPRs against parent patents, was central to mapping Miesterfeld's "timeout" and OSEK's timers to the claims.
• "share the information": Petitioner argued this phrase requires that information is "accessible, without requiring storage of the information." This construction was important for arguing that Miesterfeld's system, which makes data in shared memory available to different buses, meets the "sharing" limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments that discretionary denial would be inappropriate.
  • Against §325(d) Denial: Petitioner argued that while some prior art (Miesterfeld, OSEK) was cited in an IDS during prosecution, it was never substantively considered by the examiner. The patent issued without any office action or rejection, and the examiner failed to consider prior PTAB decisions that found claims of parent patents unpatentable over similar art, constituting a material error by the USPTO.
  • Against Fintiv Denial: Petitioner argued that the parallel district court litigation was in its infancy. At the time of filing, only motions to dismiss were pending, and no case schedule or trial date had been set. Therefore, the Board's resources would not be wasted, and the strong merits of the petition favored institution.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-42, 102-108, 121, and 126 of the ’036 patent as unpatentable under 35 U.S.C. §103.