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

1. Case Identification

• Case #: IPR2021-00728
• 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: 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 relates to a system for sharing information within a distributed framework, particularly in an automotive context. The technology uses a gateway with a common memory to facilitate data exchange 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, and Core OSEK Standards - Claims 84-85, 89, 101, 106-108, 125, and 127 are obvious over Miesterfeld, Wense, OSEK-COM, and OSEK-NM.

• Prior Art Relied Upon: Miesterfeld (Patent 6,141,710), Wense (a 2001 article on automotive applications), OSEK-COM (a 2000 communication specification), and OSEK-NM (a 2000 network management specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miesterfeld taught the core apparatus: a gateway with shared memory for exchanging data between a vehicle data bus and an intelligent transportation system bus. Wense taught the common practice of concurrently using different network protocols like CAN and FlexRay in vehicles. The combination of OSEK-COM and OSEK-NM, which were well-known industry standards, taught key missing elements, including using timers to determine if a resource is available (the claimed "threshold") and issuing notifications when a timeout occurs. For example, OSEK-NM disclosed monitoring timers (TTyp, TMax) to determine if a node becomes unavailable and then entering a recovery state to signal an error.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Miesterfeld’s gateway with Wense’s disclosure of specific modern protocols (e.g., FlexRay) as a simple design choice to solve the known problem of integrating heterogeneous networks. A POSITA would further be motivated to incorporate the OSEK standards to ensure interoperability, manage network resources efficiently, and implement standardized error handling, such as timeout thresholds for resource requests, which are fundamental to robust network design.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because all references are from the same field of automotive networking and address the same problem of integrating disparate systems. OSEK was an industry standard designed for this exact purpose, making its application to Miesterfeld’s gateway architecture predictable.

Ground 3: Obviousness with HAL/Middleware Layers - Claims 90-97 and 109-116 are obvious over Miesterfeld, Wense, OSEK-COM, OSEK-NM, OSEK-OS, and OSEK-Binding.

• Prior Art Relied Upon: The references from Ground 1, plus OSEK-OS (a 2000 operating system specification) and OSEK-Binding (a 2001 specification index).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the base combination of Miesterfeld, Wense, and the core OSEK standards. To meet limitations related to middleware and a hardware abstraction layer (HAL), Petitioner added OSEK-OS and OSEK-Binding. These references taught a user interface independent of specific hardware and networks (the HAL) and defined an API communication interface that acts as middleware to isolate applications from the underlying operating system and hardware. This middleware allows applications to share variables locally and interfaces with input/output systems without directly utilizing the real-time OS, as recited in the challenged claims.
  • Motivation to Combine: A POSITA would be motivated to modify Miesterfeld's system with the teachings of OSEK-OS and OSEK-Binding to increase modularity, enhance software portability, and facilitate the integration of third-party devices—a stated goal of Miesterfeld. Implementing a standardized HAL was a well-known methodology for achieving these benefits in complex embedded systems.
  • Expectation of Success: Success would be expected, as implementing a HAL based on a mature industry standard like OSEK was a well-understood and routine task for a POSITA at the time. The combination was predictable and aimed at improving the known gateway architecture.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including OSEK-OS for claims related to multiple modes of operation (Ground 2) and OSEK-FTCom for claims related to data integrity watchdogs and device drivers (Grounds 4, 5, and 6), relying on similar motivations to implement standardized features.

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 central to mapping the timeout mechanisms taught by Miesterfeld and OSEK-NM to the claim language.
• "share the information": Petitioner contended this phrase requires that information is "accessible, without requiring storage of the information." This construction, supported by prior Board decisions on related patents, was used to align Miesterfeld's shared memory architecture with the claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner argued that the ’036 patent was not entitled to its earliest claimed priority date of December 17, 2002. It was asserted that the provisional application lacked sufficient written description for key memory-related limitations, such as determining whether a threshold has been reached. Petitioner contended the correct priority date was no earlier than December 15, 2003, which would make certain prior art references available against the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the examiner did not substantively consider the key prior art. While Miesterfeld and OSEK were cited in an Information Disclosure Statement, they were part of over 60 references and were never used in a rejection. The Wense reference was never before the examiner.
• Petitioner also argued against discretionary denial under Fintiv, stating that at the time the petition was filed, the parallel district court litigation was in its earliest stages. No trial date had been set, discovery had not commenced, and there was no significant overlap of issues or investment of judicial resources that would justify denying institution.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 84-101, 109-120, 122-125, and 127 as unpatentable.