`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`BMW OF NORTH AMERICA, LLC,
`
`Petitioner
`
`v.
`
`STRAGENT, LLC
`
`Patent Owner
`
`____________
`
`Case No. IPR2017-01522
`
`U.S. Patent No. 8,209,705
`
`Title: SYSTEM, METHOD AND COMPUTER PROGRAM PRODUCT FOR
`SHARING INFORMATION IN A DISTRIBUTED FRAMEWORK
` ____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
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`
`
`
`
`
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`
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`TABLE OF CONTENTS
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`IPR2017-01522
`Petitioner’s Reply
`
`
`I.
`II.
`
`INTRODUCTION ....................................................................................... 1
`STRAGENT IS ESTOPPED FROM ARGUING ANY CLAIM NOT
`PATENTABLY DISTINCT FROM THOSE HELD
`UNPATENTABLE ...................................................................................... 2
`III. PATENT OWNER’S EXPERT DECLARATION SHOULD BE
`GIVEN LITTLE WEIGHT .......................................................................... 2
`A. Dr. Miller’s Four Misunderstandings of Patent Law .......................... 3
`1.
`Dr. Miller’s Still Misunderstands BRI, So, His Opinions
`Should be Given Little Weight ................................................. 3
`Dr. Miller Imports Limitations from the Specification ............. 4
`Dr. Miller Does Not Understand What Defines the
`Invention .................................................................................. 4
`Dr. Miller Cannot Identify Antecedent Basis Despite
`Relying Heavily on It for His Opinions .................................... 5
`B. Dr. Miller’s Declaration Opinions are Not His Own .......................... 5
`IV. CLAIM CONSTRUCTIONS ....................................................................... 6
`A.
`Stragent’s Construction of Limitation 7.7 Improperly Imports
`Limitations from the Specification into the Claims ............................ 6
`
`2.
`3.
`
`4.
`
`The ’705 Patent Expressly Defines “Real-time” ................................. 8
`A.
`B. Neither “The Information,” “Protocol,” or “the Second
`Network” Require Construction ......................................................... 8
`1.
`The Claims Expressly Define “The Information” ..................... 8
`2.
`“Protocol” is Inconsequential to the Challenged Grounds ........ 8
`3.
`Stragent’s Construction of “The Second Network”
`Improperly Imports Limitations from the Specification
`into the Claims ......................................................................... 9
`
`ii
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`
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`IPR2017-01522
`Petitioner’s Reply
`Software “Mode” Performs “Different Types of Execution” .............. 9
`C.
`V. GROUND 1: OSEK RENDERS OBVIOUS CLAIMS 7-14 and 16-19 ......10
`A.
`Stragent Presents the Same Arguments that Failed in IPR2017-
`00676 ................................................................................................10
`Stragent’s Arguments Fail to Distinguish Claims 7 and 18 from
`OSEK ...............................................................................................12
`1.
`OSEK Renders Claim 7 Obvious ............................................13
`
`B.
`
`OSEK Renders Dependent Claim 18 Obvious ........................17
`2.
`VI. GROUND 2: OSEK IN VIEW OF MILLSAP AND WONG
`RENDERS CLAIMS 7-14 and 16-19 OBVIOUS .......................................19
`A.
`Because OSEK Teaches Limitations 7.2, 7.3, and 7.7 Petitioner
`Did Not Rely on Millsap or Wong ....................................................19
`B. A POSITA Would Combine OSEK, Millsap, and Wong ..................20
`VII. CONCLUSION ..........................................................................................20
`
`
`iii
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`IPR2017-01522
`Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`Under Stragent’s view, the issues before the Board are already decided—
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`namely claims 7-14 and 16-19 are invalid—because IPR2017-1522 presents “the
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`same issues that has already been tried to the Board, the same two patents, the
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`same primary prior art, the same arguments, [and] same experts,” as the issues
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`decided in IPR2017-00676, where the Board held claims 1-6 and 20 invalid as
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`anticipated and obvious over “the same primary prior art.” See IPR2017-001522,
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`Ex. 1020, 14:7-10; IPR2017-00676, Paper No. 33. The Final Written Decision
`
`estops Stragent from re-litigating those issues and obtaining claims that are not
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`patentably distinct.
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`On the merits, the result is the same because Stragent’s arguments are
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`divorced from the claims and the law. First, Stragent attempts to import language
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`from the specification into its claims, thus committing the “cardinal sin” of patent
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`law. Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005), cert. denied,
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`546 U.S. 1170 (2006); Telex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324
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`(Fed. Cir. 2002). Second, Stragent’s other arguments contradict the teachings of
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`the ’705 patent and ignore how a POSITA would view the prior art. Accordingly,
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`the Board should find these arguments unpersuasive and cancel claims 7-14 and
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`16-19 of the ’705 patent (“Challenged Claims”).
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`1
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`
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`II.
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`IPR2017-01522
`Petitioner’s Reply
`STRAGENT IS ESTOPPED FROM ARGUING ANY CLAIM NOT
`PATENTABLY DISTINCT FROM THOSE HELD UNPATENTABLE
`Stragent is estopped from arguing any claim not patentably distinct from
`
`those held unpatentable in IPR2017-00676, IPR2017-00677, IPR2017-00457, and
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`IPR2017-00458. 37 C.F.R. 42.73(d)(3)(i) (“when a patent claim is cancelled or
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`finally refused in a PTAB trial, the Patent Owner is thereafter precluded from
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`taking an inconsistent action before the USPTO.”) The Board has issued final
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`written decisions finding claims 1-7 and 20 of the ’705 patent unpatentable.
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`IPR2017-00676, Paper No. 33; IPR2017-00458, Paper No. 31. Because the claims
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`here were already found unpatentable or are not patentably distinct from the claims
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`previously found unpatentable, the Board should find claims 7-14 and 16-19
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`unpatentable.
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`III. PATENT OWNER’S EXPERT DECLARATION SHOULD BE GIVEN
`LITTLE WEIGHT
`Stragent’s Patent Owner’s Response (“POR”) misplaced reliance on the
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`expert declaration of Dr. Miller deserves little weight because he misapplies the
`
`law and provides contradictory testimony. Indeed, in IPR2017-00676 this Board
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`“agree[d] with Petitioner that Dr. Miller did not provide responses sufficient to
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`conclude that he was aware of and/or applied the correct claim-construction
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`standard.” IPR2017-00676, Paper No. 33, 13-14.
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`2
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`IPR2017-01522
`Petitioner’s Reply
`A. Dr. Miller’s Four Misunderstandings of Patent Law
`Dr. Miller’s opinions rest upon four misunderstandings of patent law: (i) he
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`does not understand or apply broadest reasonable interpretation (“BRI”) in
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`providing his claim constructions; (ii) he imports limitations from the specification
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`into the claims; (iii) he does not understand what defines an invention; and (iv) he
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`cannot identify an antecedent basis but relies heavily on it for his opinions.
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`1.
`
`Dr. Miller’s Still Misunderstands BRI, So, His Opinions
`Should be Given Little Weight
`Dr. Miller should have but failed to apply BRI. See 37 C.F.R. § 42.100(b).
`
`See generally Exs. 2001 and 1027. Even when questioned by his own counsel “Do
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`your declarations set forth what it is that you relied on in every case in forming
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`your claim constructions,” he replied, “So not specifically, but I did have a
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`paragraph on what sources I used.” Only after his previous deposition, does he now
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`include BRI as his claim construction methodology. Ex. 2001, ¶27 (“ I have been
`
`advised … that patent claims in IPR proceedings … are given their broadest
`
`reasonable construction….”). The inclusion of this statement now is evidently
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`attributable to his attorneys “advis[ing]” him to include it because Dr. Miller’s
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`understanding of BRI remains unchanged. See Ex. 1027, 129:22-23 (“my
`
`understanding of ‘broadest reasonable construction’ has not changed …”). And
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`because his “understanding … has not changed” IPR2017-00676 and this IPR the
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`Board should similarly find that “Dr. Miller did not provide responses sufficient to
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`3
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`IPR2017-01522
`Petitioner’s Reply
`conclude that he was aware of and/or applied the correct claim-construction
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`standard.” IPR2017-00676, Paper No. 33, 13.
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`Dr. Miller Imports Limitations from the Specification
`2.
`Dr. Miller incorrectly believes it is proper to import limitations from the
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`specification into the claims:
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`Q: Do you believe it’s okay to pull from the specification
`[into] the claims?
`
`A: So I pulled from the specification and the claims in
`drafting my declaration.1
`
`3.
`
`Dr. Miller Does Not Understand What Defines the
`Invention
`Dr. Miller does not understand what defines the invention:
`
`Q: … in your opinion, do you believe or do you have an
`understanding of whether or not the specification or the
`claims control what is the invention?
`
`A: So I don’t necessarily have an understanding one way
`or the other…2
`
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`1 Ex. 1027, 86:14-19.
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`2 Id., 84:24-85:4.
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`4
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`
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`IPR2017-01522
`Petitioner’s Reply
`Dr. Miller Cannot Identify Antecedent Basis Despite
`Relying Heavily on It for His Opinions
`Dr. Miller’s opinions should be given little weight, if any, because he does
`
`4.
`
`not understand the principles of patent law that he bases his opinions upon.
`
`Indeed, he is only “somewhat” familiar with the term antecedent basis. While he
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`“[did]n’t recall” if he had even heard the term before preparing his declaration, id.,
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`30:5-11, a sizeable portion of his opinion relies on the notion that “causing the
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`information to be stored” in limitation 7.4 is the antecedent basis for “sharing the
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`information” in limitation 7.7.
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`Dr. Miller admits the opinions are not his own. When asked if his counsel
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`provided him with the definition of antecedent basis, he admitted that the
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`“attorneys did provide some clarifications and help in preparing the declaration”.
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`Id., 30:21-24. And when asked if he could even identify an antecedent basis in a
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`claim, he responded, “[w]ell, I’ve never warranted to be an attorney, and it seems
`
`like you’re asking me a very specific legal question right now.” Id., 31:6-11.
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`B. Dr. Miller’s Declaration Opinions are Not His Own
`The Board should give little weight to Dr. Miller’s declaration because he is
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`a pay for opinion expert, whose opinions reflect counsel instructions rather than his
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`views. Dr. Miller’s declaration in another proceeding decided by the Board,
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`IPR2017-00458, also offered opinions on the ’705 patent. Ex. 1019, ¶2; Ex. 1026.
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`There, he construed “sharing the information,” as “completing delivery of
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`5
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`IPR2017-01522
`Petitioner’s Reply
`information to a destination.” Ex. 1019, ¶16. Dr. Miller’s declaration admits that
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`the construction was supplied to him, not his own. Ex. 1019, ¶16 (“Patent Owner’s
`
`counsel has asked me to construe the term “sharing the information” to mean
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`“completing delivery of information to a destination.”); see also Ex. 1026, 42:24-
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`43:3 (“Q: So you’re saying—I’ll paraphrase—in Exhibit 5 [Ex. 1028], the lawyers
`
`told you to construe it a different way; right? A: Yes.”)3
`
`Because Dr. Miller’s opinions are based upon a misunderstanding of patent
`
`law and were provided to him by his counsel, his opinions on claim construction
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`(Ex. 2001, ¶¶27-34) should be afforded little weight. Dr. Miller’s opinions in ¶¶67-
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`103 of Ex. 2001, resting upon those improper constructions, should also be given
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`little to no weight. See 37 C.F.R. 42.65; see also 77 Fed. Reg. 157, 48524 (citing
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`Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).
`
`IV. CLAIM CONSTRUCTIONS
`Stragent’s Construction of Limitation 7.7 Improperly Imports
`A.
`Limitations from the Specification into the Claims
`Stragent proposes a construction for limitations [7.6]/[7.7]; however, it is
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`unnecessary to construe the entire limitation because only shared/sharing and real-
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`time are applicable to Stragent’s arguments.
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`Stragent’s proposed construction improperly limits sharing to only certain
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`embodiments of the specification, namely, sharing from a storage such as a bulletin
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`3 Emphasis added unless otherwise noted.
`6
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`IPR2017-01522
`Petitioner’s Reply
`board. Ex. 1026, ¶18. But it excludes other embodiments of the specification that
`
`share information not using a shared storage. A claim construction that avoids
`
`embodiments of the patent cannot be the BRI. Id. For example, the specification
`
`discloses “horizontal information sharing in a hierarchical system” where output
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`variables generated by an ECU are output to local actuators, which are connected
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`via discrete signal lines (physical layer interfaces) or networked actuators
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`connected via a multiplexing bus. See Ex. 1001, 3:51-59; 7:38-49 (“In an alternate
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`embodiment of the remote message communication process … To communicate
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`between two heterogeneous networks, this process may then be repeated in reverse
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`by adding back the header information for the various layers of the second
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`network, and eventually putting the message onto the second network’s physical
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`link.”)4.
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`The general-purpose dictionary definition of “share” cited by Stragent is
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`untethered to the claims of the patent. First, that definition does not contemplate
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`the sharing of “information,” which the specification describes as “include[ing]
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`data, a signal, and/or anything else capable of being stored and shared.” See Ex.
`
`2003 (general definition of “share”). Second, the technical definition provided in
`
`parallel, but not relied upon, recites a more relevant definition because it expressly
`
`contemplates the sharing in the same context as the ’705 patent, i.e. sharing over a
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`4 Emphasis added unless otherwise noted.
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`7
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`
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`IPR2017-01522
`Petitioner’s Reply
`network. See Ex. 2004 (technical definition of “share” meaning “[t]o make files,
`
`directories, or folders accessible to other users over a network”). Thus, the term
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`“sharing the information” should be construed to mean making the information
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`accessible, but not requiring storage of the information.5
`
`A. The ’705 Patent Expressly Defines “Real-time”
`The specification expressly defines “real-time,” as “include[ing] any
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`response time that may be measured in milli- or microseconds, and/ or is less than
`
`1 second.” Ex. 1001, 3:35-38.
`
`B. Neither “The Information,” “Protocol,” or “the Second
`Network” Require Construction
`The Claims Expressly Define “The Information”
`1.
`“The information” does not require construction because it is simply the
`
`“information associated with a message, utilizing a first network protocol
`
`associated with a first network,” as recited by limitation 7.1. The Board need not
`
`construe “the information” where, as here, the claim is clear.
`
`“Protocol” is Inconsequential to the Challenged Grounds
`2.
`Neither Stragent nor its expert, in construing a near identical limitation 1.7,
`
`found it necessary to provide a construction for the term “protocol.” And Stragent
`
`does not rely on it to challenge any ground. POR, 18-55 (relying only on
`
`5 The Board construed the parallel limitation 1.7 to mean “making the information
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`accessible, but not requiring storage of the information,” in IPR2017-00676.
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`8
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`
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`IPR2017-01522
`Petitioner’s Reply
`“sharing/shared” and “real-time”). Thus, the Board need not construe the term
`
`“protocol” because “protocol” is not material to any ground.
`
`3.
`
`Stragent’s Construction of “The Second Network”
`Improperly Imports Limitations from the Specification into
`the Claims
`Stragent states, “[i]n general, the language [of limitation 7.10] is plain and
`
`ordinary meaning,” POR, 16, but does not articulate any credible reason to
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`construe limitation 7.10 differently than “plain and ordinary meaning.” Id.
`
`Stragent’s construction of “the second network” is based on flawed analysis—
`
`namely
`
`importing specific embodiments
`
`into
`
`the claims and
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`identifying,
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`incorrectly, limitation 7.4 as an antecedent basis. Indeed, such a reading contradicts
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`the teachings of the specification, which describes “information” as “capable of
`
`being stored and shared,” which is consistent with storage and sharing being two
`
`discrete actions. Ex. 1001, 3:56–59. Thus, “the second network” does not require
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`explicit construction.
`
`Software “Mode” Performs “Different Types of Execution”
`C.
`The specification describes “a diagnostic mode” as one “that allows
`
`inspection of the system, while it is running.” Id., 11:59-62. Further, Dr. Miller
`
`explained that a software “mode” performs “different types of execution.” Ex.
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`1027, 91:4-5. Thus, “diagnostic mode” should be construed as “an operation mode
`
`that allows inspection of the system while the system is running.” Ex. 1003, ¶59.
`
`9
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`
`
`IPR2017-01522
`Petitioner’s Reply
`V. GROUND 1: OSEK RENDERS OBVIOUS CLAIMS 7-14 and 16-19
`Stragent argues that OSEK fails to disclose elements [7.2], [7.3], and [7.7] of
`
`independent claim 7 and dependent claim 18; however, does not present separate
`
`arguments for dependent claims 8-14, 16, 17, and 19. The Board should find
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`Stragent’s arguments unpersuasive and cancel claims 7-14 and 16-19 because
`
`Stragent presents the same arguments that failed in IPR2017-00676 and fails to
`
`distinguish its claims from OSEK.
`
`A.
`
`Stragent Presents the Same Arguments that Failed in
`IPR2017-00676
`Stragent already concedes that the decision in IPR2017-00676 is applicable
`
`in this proceeding arguing that “the same issues that has already been tried to the
`
`Board, the same two patents, the same primary prior art, the same arguments, [and]
`
`same experts” apply to the current proceeding. See IPR2017-001522, Ex. 1020,
`
`14:7-10. The chart below illuminates this argument.
`
`Stragent’s IPR2017-00676 Argument
`Against Limitation 1.3
`“Petitioner points directly to receiving a
`message as evidence for disclosure of
`‘causing a re-request. Receiving a
`message is the opposite of sending one,
`which is what is required in order to
`‘cause’ a re-request.” IPR2017-00676,
`Paper No. 11, 49 (emphasis in original).
`
`Stragent’s IPR2017-01521
`Argument Against Limitation 7.3
`“Petitioner points directly to receipt of
`a message as evidence for disclosure
`of issuing another storage request.
`Receiving is the opposite of sending,
`and this reading of OSEK does not
`disclose
`limitation 7.3” POR, 28
`(emphasis in original).
`
`10
`
`
`
`
`IPR2017-01522
`Petitioner’s Reply
`Independent claim 7 differs from independent claim 1 principally in that it is
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`directed to a non-transitory computer-readable medium, rather than a method, with
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`computer code to perform the parallel steps of claim 1.6 And this Board held claim
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`1 invalid in IPR2017-00676. Paper No. 33.
`
`Claim 1/ Claim 7
`1.0 [7.0 A non-transitory computer-readable medium storing a computer program product
`the computer program product comprising] A method for sharing information, the method
`comprising:
`1.1 [7.1 computer code for] allowing receipt of information associated with a message,
`utilizing a first network protocol associated with a first network;
`1.2 [7.2 computer code for] causing a determination as to whether a storage resource is
`available;
`1.3 [7.3 computer code for] in the event the storage resource is not available, determining
`whether a timeout has been reached and causing a re-request in connection with the storage
`resource if the timeout has not been reached;
`1.4 [7.5 computer code for,] in the event the timeout has been reached, causing an error
`notification to be sent;
`1.5 [7.4 computer code for,] in the event the storage resource is available, causing storage
`of the information utilizing the storage resource; and
`
`
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`6 Similarly, it differs from claim 20, which recites a system including a processor
`
`and a memory that stores various logic elements in principle only reciting parallel
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`limitations.
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`11
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`
`
`IPR2017-01522
`Petitioner’s Reply
`1.6 [7.6 computer code for] causing the information to be shared by:
`1.7 [7.7] in real-time, sharing the information utilizing at least one message format
`corresponding to a second network protocol associated with a second network which is
`different from the first network protocol;
`1.8 [7.8 wherein the computer program product] wherein the method is associated with an
`electronic control unit with at least one gateway function, and a plurality of interface
`portions including:
`1.9 [7.9] a first interface portion for interfacing with the first network, the first interface
`portion including a first interface-related first layer part for receiving first interface-related
`first layer messages and a first interface-related second layer part, the first interface-related
`first layer messages being processed after which first interface-related second layer
`messages are provided, where the first network is at least one of a Controller Area
`Network, a Flexray network, or a Local Interconnect Network; and
`1.10 [7.10] a second interface portion for interfacing with the second network, the second
`interface portion including a second interface-related first layer part for receiving second
`interface-related first layer messages and a second interface-related second layer part, the
`second interface-related first layer messages being processed after which second interface-
`related second layer messages are provided, where the second network is different from the
`first network and is at least one of the Controller Area Network, the Flexray network, or
`the Local Interconnect Network.
`
`
`B.
`
`Stragent’s Arguments Fail to Distinguish Claims 7 and 18
`from OSEK
`Stragent arguments fail to distinguish elements [7.2], [7.3], and [7.7] of
`
`independent claim 7 and dependent claim 18 from the disclosure of OSEK.
`
`Therefore, OSEK renders claims 7 and 18 obvious.
`12
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`
`
`
`IPR2017-01522
`Petitioner’s Reply
`
`1. OSEK Renders Claim 7 Obvious
`suggests
`or
`teaches
`Limitation
`7.2: OSEK
`a.
`determining whether a storage resource is available.
`Stragent contends that “Petitioner is completely inconsistent in defining
`
`what elements in OSEK are the claimed ‘storage resource.’ First, Petitioner cites to
`
`the ‘data buffer,’ and then, later, cites to a ‘node.’” POR, 25. But Stragent
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`mischaracterizes Petitioner’s argument, or at a minimum, misunderstands the
`
`argument. OSEK discloses determining whether nodes in a network are present
`
`and able to transfer information because each node in the network has a data buffer
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`and because each node is actively monitored by every other node in the network to
`
`determine whether another node is available. Pet., 27-40; Ex. 1009, 11, 20. Thus,
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`Petitioner consistently defines what element in OSEK is the claimed “storage
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`resource”—namely the data buffer. And Stragent acknowledges “that a node may
`
`include a storage resource.” Id.
`
`Stragent argues that “Petitioner has failed to distinguish between ‘alive’ and
`
`‘awake,’” POR, 26, and “[a]n alive message introduces a new transmitter to the
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`logical ring.” Id., 27. But even assuming that is all an alive message does, that
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`satisfies this limitation because the introduction of the node contains a “data
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`buffer” (that can store data and therefore is a “storage resource”) and the node “is
`
`actively monitored by every other node in the network” to determine its
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`availability, and consequently whether the storage resource, is available. Ex. 1009,
`
`13
`
`
`
`
`IPR2017-01522
`Petitioner’s Reply
`8-10; Pet., 18-19; OSEKNM FIG. 4 illustrates a node including a “data buffer.”
`
`Thus, OSEK discloses “causing a determination as to whether a storage resource is
`
`available,” as recited in 7.2. Pet., 27-29.
`
`b.
`
`or
`teaches
`7.3: OSEK
`Limitation
`conditionally issuing another storage request.
`Stragent contends that “Petitioner relies on an inversion of the disclosed
`
`suggests
`
`OSEK/VDX process of monitoring the logical ring in order to make it look like the
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`invention of the ’705 patent,” because “Petitioner points directly to receipt of a
`
`message as evidence for disclosure of issuing another storage request. Receiving is
`
`the opposite of sending.” POR, 28. Stragent either misreads element 7.3 or
`
`attempts to improperly import a limitation to require that the storage resource
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`request and determination must be made by a node based on messages transmitted
`
`to them, a meaning that is not in the plain and ordinary meaning of element 7.3.
`
`Id.; Ex. 1026, ¶39. Quite the opposite, element 7.3 does not state where the request
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`and determination are made, or how the request and determination are made. Id.
`
`Therefore, requesting a node to make a determination of the availability of another
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`node based on messages received from that node falls within the scope of element
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`7.3. Id.; Pet., 29-31.
`
`14
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`
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`IPR2017-01522
`Petitioner’s Reply
`Limitation 7.7: OSEK teaches or suggests sharing the
`information.
`Stragent alleges that Petitioner “ignores that the limitation specifically
`
`c.
`
`references ‘the information,’ which is information whose storage was completed to
`
`the bulletin board or storage resource.’” POR, 28-29. But Petitioner cannot ignore
`
`a limitation not present in the plain language of the claims. Stragent’s argument
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`against OSEK, thus, relies on an inherently flawed analysis because it attempts to
`
`improperly import specific embodiments into the claims. But the Federal Circuit
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`has consistently held that courts are prohibited from doing this. Innogenetics, N.V.
`
`v. Abbott Labs., 512 F.3d 1363, 1370 (Fed. Cir. 2008). “It is a ‘bedrock principle’
`
`of patent law that ‘the claims of a patent define the invention to which the patentee
`
`is entitled the right to exclude.’” Phillips, 415 F.3d at 1323 (citing Innova/Pure
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`Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
`
`2004)). They are the “sole measure of the [patent] grant.” Innova/Pure Water, Inc.,
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`381 F.3d at 1115 (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365
`
`U.S. 336, 339 (1961)). To be absent from the claims is to be absent from “the
`
`invention to which the patentee is entitled.” Phillips, 415 F.3d at 1312.
`
`Next, Stragent alleges that “[n]othing in OSEK suggests that the logical
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`predecessor’ and ‘logical successor’ can be different networks. Therefore, there is
`
`no second network,” POR, 30, but this is wrong because it ignores the teachings of
`
`OSEK. Specifically, OSEK discloses Figure 2 of OSEK NM specification,
`
`15
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`IPR2017-01522
`Petitioner’s Reply
`captioned “Infrastructure of the NW (logical ring), example with two busses,”
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`shows a logical ring that comprises two communication media (communication
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`media 1 and communication media 2). Ex. 1009, Figure 2 (reproduced below); 8
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`(“[a] micro processor with two communication modules connected to two different
`
`communication media (e.g., low speed CAN and a high speed CAN) represents
`
`two nodes from the OSEK point of view.”)
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`
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`Stragent further contends that OSEK “does not say anything about sharing
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`information between a low speed CAN bus and a high speed CAN bus.” POR, 33.
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`Stragent continues its argument by alluding that the “only discussion of ‘low speed
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`CAN’ and ‘high speed CAN.’” POR, 32. Stragent quotes OSEK:
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`2.1.1. Node Monitoring
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`OSEK-NM supports
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`the direct node monitoring by dedicated NM
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`communication. A node is a logical whole to which a communication access
`
`16
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`
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`IPR2017-01522
`Petitioner’s Reply
`is possible. A micro processor with two communication modules connected
`
`to two different communication media (e.g. low speed CAN and a high
`
`speed CAN) represents two nodes from the OSEK point of view.7
`
`Stragent ignores, however, that three lines down OSEK’s discloses “[e]very
`
`node is actively monitored by every other node in the network. For this purpose the
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`monitored node sends a NM message…” Ex. 1009, 9. And two paragraphs below
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`that, which Stragent also ignores, discloses that in a logical ring “[a]ny node must
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`be able to send NM messages to all other nodes and receive messages from them,”
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`and that requires nodes of different networks be able to communicate with each
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`other. Id., 9.
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`Therefore, OSEK renders claim 7 obvious. Pet., 35-38.
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`2. OSEK Renders Dependent Claim 18 Obvious
`As explained above in Section IV.C, “diagnostic mode” should be construed
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`to mean an operation mode that allows inspection of the system while the system is
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`running. Even under Stragent’s construction of “diagnostic mode” as “an alternate
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`mode of operation, distinct from normal operations, that still allows inspection of
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`the system while running,” OSEK teaches or suggests that its software performs
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`“different types of executions.” Ex. 1004, ¶57; see Ex. 1030, 3 (defining “mode” as
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`7 Id. (quoting Ex. 1009, 8).
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`17
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`IPR2017-01522
`Petitioner’s Reply
`“operational state of a computer or a program”). Because as Dr. Miller explains,
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`the word “mode” in software is defined as “different types of execution.”
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`Q: So in software, what’s the mode of software?
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`A: It depends on the type of software we’re talking about,
`a web application, operating system, firmware, device
`drivers. There’s a lot of different possibilities of modes.
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`Q: So the ones you just named, provide me a definition
`for each of them.
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`A: So maybe a generic definition would be different
`types of execution.8
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`Stragent acknowledges that OSEK “discloses that diagnostics can be run on
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`the system,” but suggests that OSEK teaches “the ability to gather diagnostic
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`information at any time.” But Stragent’s suggestion is incorrect because it ignores
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`the teachings of OSEK. First, OSEK defines “both direct and indirect NM [node
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`monitoring].” Ex. 1009, 6. And during execution of direct NM, “extended NM
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`features, e.g. dedicated enhanced diagnosis support could be mapped into the data
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`field of the NM message. This is an optional feature.” Id., 123.
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`Thus, under either BMW’s construction or Stragent’s construction, OSEK
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`teaches or suggests “multiple modes of operation are enabled,” and “at least one of
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`the modes include a diagnostic mode,” as recited in claim 18. Ex. 1003, ¶131.
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`8 Ex. 1027, 90:19-91:5.
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`18
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`IPR2017-01522
`Petitioner’s Reply
`VI. GROUND 2: OSEK IN VIEW OF MILLSAP AND WONG RENDERS
`CLAIMS 7-14 and 16-19 OBVIOUS
`Stragent does not present separate arguments for the combination of OSEK,
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`Millsap, and Wong render claims 7-14 and 16-19. POR. Rather, Stragent contends
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`“Petitioner never explains how either Millsap or Wong disclose any of the
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`limitations that are missing from OSEK,” id., 36, and “there is no reason that a
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`skilled artisan would combine OSEK/VDX, Millsap, and Wong.” Id., 39.
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`A. Because OSEK Teaches Limitations 7.2, 7.3, and 7.7
`Petitioner Did Not Rely on Millsap or Wong
`Stragent does not dispute that elements 7.8-7.10, where Petitioner relied
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`upon Millsap or Wong, are not obvious. Instead, Stragent alleges that the
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`combination of references does not teach or suggest limitations 7.2, 7.3, and 7.7.
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`Id., 36. But Petitioner has not relied on Millsap or Wong to disclose these
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`limitations because, as explained above, OSEK teaches or suggests 7.2, 7.3, and
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`7.7.
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`Further, Stragent arguments attack the references individually rather than
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`considering the combination. For example, Stragent contends “Millsap does not
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`disclose, for example, any CAN, Flexray or LIN network, and, does not disclose
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`any concept of networks operating under different protocols,” POR, 37-38, and
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`“Wong is nothing more than a general discussion, lacking any technical analyses,
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`about what car companies are planning for the future.” Id. But “[o]ne cannot show
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`19
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`IPR2017-01522
`Petitioner’s Reply
`non-obviousness by attacking references individually” where the obviousness
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`analysis is “based on [a] combination[] of references.” In re Keller, 642 F.2d 413,
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`208 USPQ 871 (CCPA 1981); and In re Merck & Co., 800 F.2d 1091, 231 USPQ
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`375 (Fed. Cir. 1986). Determining whether a single one of the references is
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`deficient with respect to a particular claim element misapplies the test for
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`obviousness, which is what the combined teachings of the prior art would have
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`suggested to the hypothetical person of ordinary skill in the art. In re Keller, 642
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`F.2d 425 (CCPA 1981).
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`B. A POSITA Would Combine OSE
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