PTAB

IPR2017-00861

Delphi Technologies, Inc. v. Microchip Technology Inc.

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1. Case Identification

2. Patent Overview

  • Title: MULTI-HOST USB DEVICE
  • Brief Description: The ’708 patent describes a Universal Serial Bus (USB) peripheral device that can connect to two or more host computers simultaneously. The device includes a controller that arbitrates access, allowing the hosts to share the peripheral without needing to disconnect, reconfigure, or re-enumerate the device for each access.

3. Grounds for Unpatentability

Ground 1: Anticipation over Furukawa - Claims 1-8, 10-11, 15-20, and 22-25 are anticipated by Furukawa under 35 U.S.C. §102.

  • Prior Art Relied Upon: Furukawa (Japanese Patent Application Publication 2003-256351).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Furukawa discloses every element of the challenged claims. Furukawa describes a "USB Hub" that allows multiple host PCs to connect to and share various peripheral devices (e.g., printer, scanner). It features a "controlling circuit" (CPU, hub repeater, hub controller) that functions as the claimed "multi-host device controller." This circuit establishes concurrent connections, manages data transmission between the hosts and peripherals using FIFO memories, and arbitrates access to prevent data collisions. This architecture allows multiple hosts to simultaneously access the peripherals without requiring a "switching operation," which Petitioner equated with the claimed benefit of not reconfiguring or re-enumerating the device upon alternate access.
    • Key Aspects: The core of the argument was that Furukawa’s "USB Hub" is a multi-host device that achieves the same functionality as the ’708 patent—sharing a peripheral among multiple hosts with persistent connections—thereby anticipating the claims.

Ground 2: Anticipation over Dickens - Claims 1-8, 11, 15-20, and 22-25 are anticipated by Dickens under §102.

  • Prior Art Relied Upon: Dickens (Patent 6,549,966).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Dickens provides a second, independent basis for anticipation. Dickens disclosed a "data routing device" for sharing USB peripherals between multiple computers. The device includes a microprocessor-based controller that manages data routing between the hosts and a shared printer. Critically, Dickens taught that its device emulates the presence of peripherals for each host, causing each host to configure a connection that is maintained, even when another host is actively using the printer. This maintained connection and controlled, alternating access to the printer, without disconnection, was argued to meet the claim limitations, including simultaneous enumeration and access without re-configuration. Print data from a waiting host is buffered, which anticipates claims related to buffering and ordering requests.
    • Key Aspects: The argument focused on Dickens' explicit teaching of emulating peripheral presence to maintain simultaneous connections with multiple hosts, thereby avoiding the disconnection and reconnection cycle that the ’708 patent purports to solve.

Ground 3: Obviousness over Furukawa/Dickens and Chen - Claims 9, 11-14, and 21 are obvious over either Furukawa or Dickens in view of Chen under §103.

  • Prior Art Relied Upon: Furukawa or Dickens, in view of Chen (Patent 7,073,010).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims requiring "interleaving" of host access requests. Petitioner argued that while Furukawa and Dickens provide the foundational multi-host system, Chen teaches the specific technique of interleaving USB transactions to improve data throughput. Chen disclosed a "smart switch" that re-orders and overlaps packets from different transactions to a peripheral, allowing them to proceed in parallel rather than strictly sequentially.
    • Motivation to Combine: A person of ordinary skill in the art (POSA), starting with the multi-host systems of Furukawa or Dickens, would have been motivated to incorporate Chen's known interleaving technique to achieve the recognized benefit of improved data throughput and system efficiency. The combination was presented as the application of a known technique (Chen's interleaving) to a similar system (Furukawa/Dickens' multi-host device) to yield a predictable result.
    • Expectation of Success: A POSA would have had a high expectation of success, as Chen's method for improving performance in a single-host USB system was directly applicable to managing multiple data streams in a multi-host USB system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Furukawa or Dickens with the USB 2.0 specification for its teachings on interleaving. Further grounds argued that the combination of Wurzburg and Osakada (cited during prosecution of the parent patent), which lacked concurrent connections, would have been rendered obvious by the teachings of Furukawa or Dickens, which explicitly provide for such connections. A final ground asserted obviousness over a broad combination of all cited art.

4. Key Claim Construction Positions

  • "Function block" / "Device": Petitioner argued for a broad construction of these terms, consistent with their use in the art and the ’708 patent’s specification. It was asserted that these terms are not limited to end-user peripherals (like printers) but also encompass devices like USB hubs. This interpretation was critical to the anticipation arguments, as it allows prior art hubs like Furukawa to be considered a "USB multi-host device" comprising a "function block."
  • "Configured to" / "Operable to": Petitioner argued these terms, when used to describe the capabilities of the device's components (e.g., a controller "configured to" establish connections), should be interpreted as functional language. The petition contended that this language simply describes the function of the structure, which is fully disclosed in the prior art.
  • "Simultaneous" / "Concurrent": Petitioner argued these terms do not require simultaneous data transfer but refer to the state where multiple hosts maintain active, enumerated connections to the shared device at the same time, allowing them to alternately access it without re-establishing those connections.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-25 of Patent 7,627,708 as unpatentable.