Mercedes Benz Group AG v. Phelan Group LLC

1. Case Identification

• Case Number: To be assigned
• Patent #: 9,908,508
• Filed: March 21, 2025
• Petitioner(s): Mercedes-Benz Group AG
• Patent Owner(s): The Phelan Group, LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: Driver Authentication and Safety System
• Brief Description: The ’508 patent discloses a system for authenticating a driver and monitoring vehicle usage against a pre-defined "operating profile." The system is designed to control vehicle operation for high-risk drivers by enforcing restrictions such as speed limits and hours of operation, and providing feedback or taking control actions upon violation.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Murphy - Claims 1-6, 8-11, and 13-14 are unpatentable under 35 U.S.C. §102/103 over Murphy.

• Prior Art Relied Upon: U.S. Patent No. 6,225,890 ("Murphy")
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Murphy discloses a near-identical system for restricting vehicle use by a selected operator, such as a teenager. Murphy teaches a "driver authentication system" (a controller) that authenticates a driver using various "driver identification interfaces" (e.g., biometric scanner, smart card reader, keypad). The system stores "vehicle operation restrictions" (the claimed "operating profile") in a database and permits vehicle operation only within these restrictions, which include parameters like maximum speed and geographic routes. If a driver violates the profile, Murphy’s system is configured to monitor the violation, generate signals (e.g., an alarm), and cooperate with associated computers (e.g., a vehicle interface module) to control the vehicle by, for example, reducing its speed. This, Petitioner contended, anticipates or at least renders obvious all limitations of independent claims 1 and 11, as well as the additional features of the challenged dependent claims, such as using a GPS module for location data and logging vehicle operation data.

Ground 2: Anticipation and Obviousness over Petrik - Claims 1-6, 8-11, and 13-14 are unpatentable under 35 U.S.C. §102/103 over Petrik.

• Prior Art Relied Upon: Application # 2007/0168125 ("Petrik")
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Petrik discloses all elements of the challenged claims. Petrik describes an "in-vehicle monitoring unit" (the claimed "driver authentication system") that authenticates a driver using a smart card and a fingerprint reader (the "driver identification interface"). The system receives a unique identification code (fingerprint template on the card) to permit operation within a defined "operating profile," which includes an intended route plan, required rest times, and speed limits. Petrik’s unit is in communication with an "engine management system" computer, monitors for violations of the operating profile, generates signals (e.g., a "beep" or an alert to a remote command center), and cooperates with the computer to control the vehicle by slowing it down or disabling it. Petitioner argued this maps directly to the limitations of independent claims 1 and 11 and the dependent claims.

Ground 3: Obviousness over Murphy in view of Adams - Claim 10 is obvious over Murphy in view of Adams.

• Prior Art Relied Upon: Murphy, Application # 2008/0046739 ("Adams")

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that claim 10 adds the limitation that the driver identification interface comprises a portable handheld device, a radio frequency identification (RFID) device, or a USB device. Murphy already disclosed a "token or smart card," which is a portable handheld device. Adams taught that smart cards were known to use RFID for contactless communication with a reader.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Adams's teaching of RFID with Murphy's smart card system to implement a well-known, standardized, and convenient wireless communication protocol. This would obviate the need for a driver to physically insert the token into a reader.
  • Expectation of Success: A POSITA would have had a high expectation of success, as this combination represented a simple substitution of one known communication method (RFID) for another (physical contact) to achieve a predictable result in a conventional smart card system.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Murphy-Wu, Petrik-Schanz, Petrik-Adams, and Petrik-Wu. These grounds primarily relied on similar arguments, seeking to add disclosures of well-known, ubiquitous vehicle components (e.g., starter relays, alarm synthesizers, power regulators) or alternative identification methods to the primary systems of Murphy and Petrik.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court case was in its earliest stages, having been recently transferred to the Northern District of Georgia with no initial conference held, no case schedule issued, and no Markman proceedings commenced. Trial was not scheduled until February 2026 at the earliest.
• Petitioner further argued that denial under §325(d) is unwarranted because the grounds rely on new, non-cumulative prior art (Murphy, Petrik, Adams, Wu, and Schanz) that was not before the examiner during the original prosecution of the ’508 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of Patent 9,908,508 as unpatentable.