Tesla Inc v. Arsus LLC

1. Case Identification

• Case #: IPR2022-01216
• Patent #: 11,077,877
• Filed: July 21, 2022
• Petitioner(s): Tesla, Inc.
• Patent Owner(s): Arsus, LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Rollover Prevention Apparatus
• Brief Description: The ’877 patent relates to steering control devices that prevent a vehicle from being steered beyond a rollover threshold. The apparatus selectively applies a braking force or extends actuator pins to physically block the steering column from rotating past a dynamically calculated, speed-dependent limit.

3. Grounds for Unpatentability

Ground 1: Anticipation by Schramm - Claims 1-21 are anticipated by Schramm under 35 U.S.C. §102.

• Prior Art Relied Upon: Schramm (Patent 8,634,989).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’877 patent is not entitled to its claimed 2010 priority date due to a break in the priority chain, resulting in an effective filing date no earlier than June 8, 2015. This break allegedly occurred when a "great-grandparent" application was statutorily abandoned. Consequently, the Schramm patent, published in 2014 to the same inventor, qualifies as prior art. Petitioner contended that the disclosure of the ’877 patent was copied nearly verbatim from Schramm, and thus Schramm teaches every element of claims 1-21, including the corresponding structure for the means-plus-function limitations.
  • Key Aspects: This ground’s viability rests on a detailed legal and technical argument that the patent’s priority chain is defective, a fact Petitioner asserted was not before the Examiner during prosecution.

Ground 2: Obviousness over Dechamp and Husain - Claims 1-21 are obvious over Dechamp in view of Husain under 35 U.S.C. §103.

• Prior Art Relied Upon: Dechamp (WO 2007/031817) and Husain (Application 2005/0082107).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Dechamp teaches a steer-by-wire system that prevents rollover by calculating a maximum allowable steering angle for the steerable wheels based on vehicle speed, thereby defining a non-rollover steering range. However, Dechamp does not explicitly teach a physical stop on the steering wheel itself. Husain was argued to remedy this by teaching an electromechanical end-of-travel brake for a steering column in a steer-by-wire system to prevent its rotation under selected circumstances. The combination allegedly provides the claimed "mode" that allows steering within a range but physically prevents steering beyond a rollover threshold by implementing Dechamp's rollover prevention logic with Husain's steering column brake.
  • Motivation to Combine: A POSITA would combine the references to realize Dechamp's objective of providing a steering wheel with a "fixed angular travel." Husain’s end-of-travel brake was presented as a well-known, off-the-shelf solution to implement such a physical stop, which would provide important tactile feedback to the driver in Dechamp’s steer-by-wire system.
  • Expectation of Success: Success was expected because both references concern steer-by-wire systems, and implementing a known type of steering wheel brake (Husain) into a steering control system (Dechamp) was within the ordinary skill in the art.

Ground 3: Obviousness over Dechamp and Nishikawa - Claims 1-21 are obvious over Dechamp in view of Nishikawa under §103.

• Prior Art Relied Upon: Dechamp (WO 2007/031817) and Nishikawa (Patent 6,053,270).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground uses Dechamp as the primary reference, as in Ground 2. Nishikawa was introduced for its teaching of a steering system with multiple modes. Specifically, Nishikawa teaches a "direct-steering mode" where, for a limited range of small steering angles (e.g., for minor highway corrections), the steering wheel angle directly corresponds to the steerable wheel angle (a 1:1 ratio). Beyond this limited range, the system can switch to a different mode. Petitioner argued that modifying Dechamp to include Nishikawa's dual-mode concept would result in the claimed invention, where the apparatus "transitions" between modes.
  • Motivation to Combine: A POSITA would be motivated to incorporate Nishikawa's teaching to improve Dechamp's system. The combination would create a more intuitive user experience by allowing for small, direct steering inputs for minor course corrections at high speeds while retaining Dechamp’s robust rollover prevention functionality for larger, more aggressive steering maneuvers. This modification would predictably improve driver control and accurately reflect driver intent for small adjustments.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in integrating these electronic control strategies, as both references relate to automotive steering systems and modifying control software to switch between steering ratios based on steering wheel position was a known design choice.

• Additional Grounds: Petitioner asserted that claims 15-16 and 19-21 are anticipated or, alternatively, rendered obvious by Inagaki (Patent 5,022,480).

4. Key Claim Construction Positions

• Petitioner argued that several claim terms should be interpreted under 35 U.S.C. §112(f) because they are "nonce words" followed by purely functional language without sufficient corresponding structure recited in the claims.
• "mode" [Claims 1, 8]: Argued to be a substitute for "means," as it is a generic term that fails to connote any structure. The claim recites a "mode that allows...but prevents," which Petitioner contended is a functional description. Petitioner identified two corresponding structures from the specification: (1) an adaptive steering range limiting device using unidirectional brake assemblies, and (2) a device using a disc with selectively extended actuator pins.
• "apparatus" [Claim 15]: Similarly argued to be a nonce word used in a means-plus-function context, as the claim recites a "rollover prevention apparatus that allows...but prevents..." without further structural limitations.

5. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art: Petitioner argued denial is unwarranted because the petition raises new issues and prior art. The Examiner never considered the defective priority chain that makes Schramm anticipatory under §102. Furthermore, the primary obviousness combinations rely on Husain and Nishikawa, neither of which was cited or considered during prosecution.
• §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its infancy, with no trial date scheduled. Petitioner asserted that the merits of the petition are particularly strong and that flaws in the prosecution history, including the unaddressed priority issue, weigh in favor of institution to promote the integrity of the patent system.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of the ’877 patent as unpatentable.