American Honda Motor Co Inc v. MicroPairing Technologies LLC

1. Case Identification

• Case #: IPR2022-01082
• Patent #: 8,020,028
• Filed: May 27, 2022
• Petitioner(s): American Honda Motor Co., Inc.
• Patent Owner(s): MicroPairing Technologies, LLC
• Challenged Claims: 18, 20, 21, and 23

2. Patent Overview

• Title: Reconfiguring Applications in a Multiprocessor
• Brief Description: The ’028 patent describes a method for reconfiguring applications in an in-vehicle multiprocessor system. The system detects a new wireless device, identifies the type of data it processes using data codes, and then selects, downloads, and runs a corresponding software application on one of its processors to control the new device.

3. Grounds for Unpatentability

Ground 1: Obviousness over AMI-C, Berry, Bluetooth, and Pedersen - Claims 18, 20, 21, and 23

• Prior Art Relied Upon: AMI-C Specification (a 2001 automotive multimedia standard), Berry (Patent 6,559,773), Bluetooth Specification (Version 1.1), and Pedersen (European Patent No. EP 1,049,347 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination renders claim 18 obvious. AMI-C, an automotive multimedia interface standard, was asserted to disclose the base multiprocessor system for a vehicle, including a wireless device manager (gateway/controller) that monitors for and connects to new devices like mobile phones. Bluetooth, which is referenced in AMI-C, was cited for its standard protocols for discovering devices and identifying data types via codes in wireless signals. Berry was argued to teach a system where a second software application (an interface specifier) is selected from memory based on the device type, downloaded to a processor, and run to provide functionality on an in-vehicle display, satisfying the limitations regarding application management. Finally, to meet the "take over control and operation of the new device" limitation, Petitioner relied on Pedersen, which explicitly taught a vehicle "carkit" that takes "total control" of a connected mobile phone for the purpose of improving driver safety. Dependent claims 20, 21, and 23 were argued to be obvious as they recited common device types (cell phone), features (audio device with screen), and components (data storage) taught or made obvious by AMI-C and the general knowledge of a POSITA.
  • Motivation to Combine: A POSITA implementing the high-level AMI-C standard would have been motivated to look to other sources for specific implementation details. Petitioner asserted a POSITA would combine Berry for its specific methods of managing and loading applications from memory to improve system efficiency. A POSITA would have incorporated the well-known Bluetooth standard for wireless connectivity. Finally, driven by the paramount concern of driver safety, a POSITA would have integrated the "total control" teaching from Pedersen to prevent driver distraction.
  • Expectation of Success: The combination involved applying known techniques (application management from Berry, total device control from Pedersen) to a known automotive standard (AMI-C) using a standard wireless protocol (Bluetooth), which would have yielded predictable results.

Ground 2: Obviousness over Berry, Bluetooth, and Pedersen - Claims 18, 20, 21, and 23

• Prior Art Relied Upon: Berry (Patent 6,559,773), Bluetooth Specification (Version 1.1), and Pedersen (European Patent No. EP 1,049,347 A1).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented Berry as the primary reference. Petitioner argued Berry taught the core method of a reconfigurable in-vehicle display system with a multiprocessor architecture (HMI controllers) that detects a new wireless accessory (e.g., a cell phone), identifies its device type, and responsively selects and downloads a corresponding software application (interface specifier) from memory to a processor to control the device. While Berry disclosed using an RF-wireless network like Bluetooth, Petitioner argued a POSITA would have consulted the Bluetooth specification itself for standard protocols on device discovery, data identification, and security measures (the "security manager" limitation). As in Ground 1, Pedersen was added to explicitly teach having the in-vehicle system take "total control" of the connected device to enhance driver safety.
  • Motivation to Combine: A POSITA starting with Berry's system would have been motivated to implement the wireless features using the explicitly referenced and ubiquitous Bluetooth standard for its known security and connectivity protocols. To address the critical issue of driver distraction, a POSITA would have been motivated to incorporate Pedersen's teaching of taking complete control of the mobile device, disabling its native interface to ensure the driver uses the safer in-vehicle system.
  • Expectation of Success: Combining the well-understood Bluetooth protocol and Pedersen's safety feature into the automotive system of Berry was presented as a straightforward integration of known elements for their intended purposes.

• Additional Grounds: Petitioner asserted that claims 18 and 20-23 are also obvious over AMI-C in view of Berry and Bluetooth (Ground 1B) and over Berry in view of Bluetooth (Ground 2B). These grounds relied on the same core teachings but argued the "take over control" limitation was met even without Pedersen, albeit under the Patent Owner's proposed claim construction.

4. Key Claim Construction Positions

• "take over control and operation of the new device" (claim 18): Petitioner argued this central term should be construed to mean "take over control and operation of the new device, such that the new device cannot be controlled and operated directly outside the multiple processor system." This construction was based on the prosecution history of a related patent where the applicant distinguished prior art by emphasizing the complete preemption of the device's own controls. Patent Owner, in parallel litigation, proposed a broader construction: "control operations performed by the new device." Petitioner contended its arguments prevail under either construction.
• "multiprocessor system" (claim 18): Petitioner proposed "system of multiple processors which share memory, and in which the processing tasks for an application can be coordinated across multiple processors."

5. Arguments Regarding Discretionary Denial

• §325(d) (Same or Substantially the Same Art): Petitioner argued against denial, stating that the obviousness combinations were not evaluated during prosecution. Specifically, the AMI-C specifications and Pedersen were never cited by the Examiner. While Berry and Bluetooth were cited, the Examiner never used them in a rejection of the challenged claims, meaning the specific arguments and combinations in the petition are new.
• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court case was in a very early stage, with trial scheduled for November 2023, well after the IPR's projected Final Written Decision. Petitioner noted the early filing of the petition, the liberal policy of granting stays in that district, the lack of significant investment by the court, and the strength of the petition's merits as factors weighing heavily in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 18, 20, 21, and 23 of Patent 8,020,028 as unpatentable.