Sony Corp v. Imation Corp

1. Case Identification

• Case #: IPR2015-01556
• Patent #: 6,908,038
• Filed: July 6, 2015
• Petitioner(s): Sony Corporation
• Patent Owner(s): Imation Corporation
• Challenged Claims: 1, 3, and 8

2. Patent Overview

• Title: Multi-Connector Memory Card With Retractable Sheath To Protect The Connectors
• Brief Description: The ’038 patent describes a memory card with two distinct connectors: a "device connector" for use with portable devices (e.g., digital cameras) and a "host connector" (e.g., a USB connector) for direct connection to a host computer. This dual-connector design aims to eliminate the need for separate card readers or adapters.

3. Grounds for Unpatentability

Ground 1: Anticipation by Yen - Claims 1, 3, and 8 are unpatentable under 35 U.S.C. §102(e) as anticipated by Yen.

• Prior Art Relied Upon: Yen (Patent 6,744,634).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yen taught a dual-interface memory card that disclosed every element of the challenged claims. Yen described a memory card with an "application interface" (the claimed "device connector") and a USB interface (the claimed "host connector") protruding from the housing. To address the claimed dimensions of approximately 32 mm x 24 mm, Petitioner asserted that Yen explicitly taught making its dual-connector card the same size as an "ordinary memory card," which included SD and MMC cards. Because SD and MMC cards inherently had the claimed 32 x 24 mm dimensions as part of their industry standard, Yen inherently disclosed this limitation.
  • Key Aspects: Petitioner contended that Yen solved the exact same problem as the ’038 patent—eliminating the need for adapters—using the same dual-connector solution. The argument hinges on the assertion that by teaching compatibility with standard memory cards (SD/MMC), Yen necessarily taught the standard dimensions of those cards.

Ground 2: Obviousness over Kao - Claims 1, 3, and 8 are obvious over Kao.

• Prior Art Relied Upon: Kao (Application # US 2004/0033727).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kao disclosed a dual-interface memory card, specifically an SD card embodiment with an added protruding USB plug (host connector) and a standard SD slot (device connector). Kao described both retractable and non-retractable versions of the USB plug. Petitioner contended that Kao taught all elements of claim 1 except for an explicit statement of the 32 x 24 mm dimensions for the entire dual-connector card.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would have been motivated to make the overall dimensions of Kao's device conform to the standard SD card dimensions (32 x 24 mm). The primary motivation was market-driven: ensuring the dual-connector card remained fully compatible with the vast ecosystem of existing portable devices that accepted standard SD cards. Kao itself taught the desirability of this compatibility.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as this involved applying known dimensions from a well-established standard (the SD card) to a device intended to be compatible with that standard, which is a routine design choice.

Ground 3: Obviousness over Yen, Kao/Chang, and the SD Specification - Claims 1, 3, and 8 are obvious over Yen, combined with either Kao or Chang, and the SD Specification.

• Prior Art Relied Upon: Yen (Patent 6,744,634), Kao (’727 application), Chang (Application # US 2002/0177362), and the Secure Digital Specification ("SD Specification").

• Core Argument for this Ground:

  • Prior Art Mapping: As an alternative to anticipation, Petitioner argued that even if Yen did not inherently teach the claimed dimensions, a POSITA would find it obvious to apply them. Yen taught the core concept of a dual-connector memory card compatible with standards like SD. The SD Specification explicitly taught the 32 x 24 mm dimensions for a standard SD card. Kao and Chang were cited as teaching specific implementations of a protruding USB connector on a memory card.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references to create a commercially viable product. Yen provided the blueprint for a dual-connector card and identified the need for compatibility with standards like SD. The SD Specification provided the exact, known dimensions required for that compatibility. A POSITA would combine these teachings to ensure the resulting product could be fully inserted into and used with existing SD-compatible devices, a key market advantage.
  • Expectation of Success (for §103 grounds): The combination was merely the application of a known standard's dimensions to a device designed for that standard, yielding the predictable result of a compatible, adapter-free memory card.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that the claims are obvious over Kao in view of Yen; over Chang in view of the SD Specification; and over Chang in view of Yen and the SD Specification. These grounds relied on similar rationales of combining known dual-connector card designs with established industry standard dimensions for compatibility.

4. Key Claim Construction Positions

• "Device Connector" and "Host Connector": Petitioner argued that these terms should be construed to mean "a connector, including electrical contacts and a supporting substrate." This construction was based on distinctions made within the ’038 patent's specification and figures, which separately identified the entire connector assembly versus just the electrical contacts. This broader construction was important to map the prior art, which showed connectors as integrated units of contacts and substrates, onto the claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 3, and 8 of the ’038 patent as unpatentable.