PTAB

IPR2015-01556

Sony Corporation v. Imation Corp.

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1. Case Identification

2. Patent Overview

  • Title: Multi-Connector Memory Card With Retractable Sheath To Protect The Connectors
  • Brief Description: The ’038 patent relates to a dual-connector memory card designed to eliminate the need for an adapter. The card includes a standard "device connector" for use in portable devices (e.g., cameras) and a protruding "host connector" (e.g., USB) for direct connection to a host computer, with the card's overall dimensions substantially conforming to existing memory card standards like SD or MMC.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Yen (Patent 6,744,634).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yen disclosed every element of the challenged claims. Yen taught a dual-interface memory card with a housing, memory, a "device connector" (an application interface compliant with standards like Memory Stick, MMC, or SD), and a protruding "host connector" (a USB interface). Petitioner asserted that Yen's memory card was explicitly designed to have the "same size as an ordinary memory card," which included SD and MMC cards. The ’038 patent admitted that these standards specified dimensions of 32 mm x 24 mm. Therefore, Yen taught a memory card with a protruding USB host connector whose overall dimensions inherently conformed to the 32 mm x 24 mm dimensions recited in claim 1.
    • Key Aspects: Yen also disclosed the limitations of dependent claims 3 (host connector is USB standard) and 8 (host connector protrudes from an edge and its thickness is less than or equal to the card's thickness).

Ground 2: Claims 1, 3, and 8 are obvious over Kao under 35 U.S.C. §103.

  • Prior Art Relied Upon: Kao (Application # US 2004/0033727).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Kao disclosed a dual-interface memory card that solved the same problem as the ’038 patent. Kao taught an SD memory card (claim 1 housing, memory, and device connector) with an additional, protruding USB plug (claim 1 host connector) to eliminate the need for a reader. Kao’s embodiment in its Figure 16 explicitly showed an SD card with a protruding USB connector. The ’038 patent itself acknowledged that SD cards had standard dimensions of 32 mm x 24 mm.
    • Motivation to Combine (for §103 grounds): This ground did not require a combination, but the motivation to adopt the claimed dimensions was central. A POSITA would have been motivated to make Kao's dual-connector card conform to the well-known 32 mm x 24 mm dimensions of a standard SD card. This was because a primary goal of Kao was to add a USB connector to existing memory cards while maintaining their usability in standard portable devices, which required adherence to standard form factors.
    • Expectation of Success: A POSITA would have had a high expectation of success in manufacturing Kao's dual-connector card with standard SD dimensions, as it involved applying a known form factor to a known device for the predictable purpose of ensuring compatibility.

Ground 3: Claims 1, 3, and 8 are obvious over Chang in view of the SD Specification under 35 U.S.C. §103.

  • Prior Art Relied Upon: Chang (Application # US 2002/0177362) and the Secure Digital Specification ("SD Specification").

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Chang disclosed a portable memory storage-retrieval device with a housing, built-in memory, a "connecting device" for portable electronics (the claimed device connector), and a protruding USB port connecting joint (the claimed host connector). The SD Specification, acknowledged as prior art in the ’038 patent, disclosed the standard dimensions for SD cards as 32 mm x 24 mm.
    • Motivation to Combine: A POSITA would combine Chang’s teachings with the SD Specification's dimensions to ensure compatibility. Chang explicitly stated that its device was compatible with existing memory card standards, including MMC and SDC (Secure Digital). To achieve this compatibility and allow the device to be used in the vast number of existing SD-compatible portable devices, a POSITA would have been motivated to fashion Chang’s device to meet the standard 32 mm x 24 mm dimensions taught by the SD Specification.
    • Expectation of Success: Combining a known device (Chang's dual-interface memory card) with a known industry standard dimension (from the SD Specification) for the predictable result of interoperability would have been straightforward for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1, 3, and 8 are obvious over Yen in view of Kao or Chang and the SD Specification; over Kao in view of Yen; and over Chang in view of Yen and the SD Specification. These grounds primarily relied on combining the references to supply any perceived deficiencies in the primary reference, such as an explicit teaching of a protruding connector or specific dimensions.

4. Key Claim Construction Positions

  • "Device Connector" / "Host Connector": Petitioner argued that based on the patent’s specification and figures, these terms should be construed to mean not only the electrical contacts but also the supporting substrate that holds those contacts. This construction was important because it clarified that the entire connector structure, not just the contacts, was disclosed in the prior art references like Yen, which showed electrical contacts on a printed circuit board substrate.

5. Relief Requested

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