Sony Corp v. Imation Corp

1. Case Identification

• Case #: IPR2015-01557
• Patent #: 6,890,188
• Filed: July 6, 2015
• Petitioner(s): Sony Corporation
• Patent Owner(s): Imation Corporation
• Challenged Claims: 10 and 14

2. Patent Overview

• Title: Memory Card Compatible With Device Connector And Host Connector Standards
• Brief Description: The ’188 patent discloses a dual-connector memory card. The technology addresses the inconvenience of requiring a separate adapter or reader to transfer data from a memory card (e.g., SD card) to a host computer by integrating a second, host-compatible connector (e.g., USB) directly onto the memory card.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 10 - Claim 10 is 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 limitation of claim 10. Yen taught a dual-interface memory card designed to eliminate the need for a separate computer adapter, the same problem addressed by the ’188 patent. Yen’s device included a housing containing memory, a first "application interface" (the claimed "device connector") for memory card standards like Memory Stick, and a second USB interface (the claimed "host connector") that protrudes from the housing. Yen also disclosed adding a "cover guard" that, when attached, resulted in the memory card having the same size and shape as an ordinary Memory Stick, thereby meeting the "form factor" limitation.
  • Key Aspects: Petitioner noted that the European counterpart to Yen was the central reference in a previously instituted IPR (IPR2015-00066) against the same patent, and that the U.S. Yen patent has an even earlier prior art date under §102(e).

Ground 2: Obviousness of Claim 14 - Claim 14 is obvious over Yen in view of Yu under 35 U.S.C. § 103.

• Prior Art Relied Upon: Yen (Patent 6,744,634), Yu (Patent 6,763,410).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 14 adds the limitation that the cover is connected to the housing via a hinge. While Yen disclosed a cover that could be detachable or fixedly attached, Petitioner argued that Yu explicitly taught attaching a dustproof cap to a portable memory device’s housing using a "flexible strap hinge."
  • Motivation to Combine: A POSITA would combine the teachings because both Yen and Yu were directed to portable memory devices with protruding USB connectors and protective covers. The motivation was to improve Yen's design by incorporating Yu's hinge to prevent the user from losing the cover—a simple and common design choice to solve a known problem.
  • Expectation of Success: The combination involved applying a known feature (a hinge) to a similar device for its intended purpose, which would have yielded predictable results with a high expectation of success.

Ground 3: Obviousness of Claim 10 - Claim 10 is obvious over Kao in view of Yen under 35 U.S.C. § 103.

• Prior Art Relied Upon: Kao (Application # US 2004/0033727), Yen (Patent 6,744,634).

• Core Argument for this Ground:

  • Prior Art Mapping: Kao disclosed a dual-interface memory card (an SD card with a thin, protruding USB plug) to eliminate the need for a reader, thus teaching the core elements of claim 10. However, the specific embodiment in Kao did not explicitly show a cover. Yen, in the context of a nearly identical device, taught adding a cover to protect the USB connector.
  • Motivation to Combine: A POSITA would combine these references for the predictable benefit of protecting the exposed electrical contacts of Kao’s protruding USB plug. Since both references addressed the same problem with similar solutions, applying Yen's protective cover to Kao's device was a simple, obvious improvement. Further, Petitioner argued it would have been obvious to make the exterior of the combined device conform to the SD card standard form factor, a goal taught by both Kao and Yen, to ensure compatibility with existing portable devices.
  • Expectation of Success: Adding a known type of cover to a similar device for protection was a routine design modification with a clear expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Chang (Application # US 2002/0177362), Yen, Yu, Kao, and the Secure Digital (SD) Specification, all relying on similar design modification and combination rationales.

4. Key Claim Construction Positions

• "Device Connector" / "Host Connector": Petitioner argued that, based on the specification, these terms should be construed to include not only the electrical contacts but also the supporting substrate that holds the contacts.
• "Form Factor": Petitioner proposed adopting the construction used by the Board in the related Kingston IPR, defining the term to mean "exterior size and shape."
• "Hinge" (Claim 14): Petitioner proposed adopting the Board's construction from the Kingston IPR, defining "hinge" as "a jointed device or flexible piece on which the cover rotates, turns, or swings."

5. Arguments Regarding Discretionary Denial

• Petitioner acknowledged the existence of a related IPR (IPR2015-00066) filed by Kingston Technology Company. However, Petitioner argued this petition served unique purposes and should not be denied. It explained that this petition re-presents a key ground using a U.S. counterpart reference (Yen) with an earlier and more robust prior art date, which would be important if the Kingston IPR were to settle. Furthermore, this petition raised additional, distinct obviousness grounds not present in the Kingston proceeding.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 10 and 14 of Patent 6,890,188 as unpatentable.