PTAB

IPR2017-00970

Delphi Technologies Inc v. Microchip Technology Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Automatically Switching USB Peripherals Between USB Hosts
  • Brief Description: The ’191 patent discloses a system and method for a Universal Serial Bus (USB) switching hub that manages connectivity for peripherals shared between two host devices. The technology allows a second host to connect and gain control of one or more peripherals while the first host simultaneously maintains connectivity to the remaining peripherals.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 4-8, 10-12, 17, 19, and 21 under 35 U.S.C. §102 by Dickens

  • Prior Art Relied Upon: Dickens (Patent 6,549,966).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dickens, which discloses a data routing device for sharing peripherals between multiple computers, taught every limitation of the challenged claims. Dickens describes a USB switching hub system with multiple hosts and a plurality of peripherals (e.g., keyboard, mouse, printer). Petitioner asserted that Dickens’s hub is operable to provide a first host with connectivity to all peripherals when a second host is not connected. Critically, when a second host sends data (e.g., a print job), Dickens’s system automatically connects that host to the required peripheral (the printer) while the first host can maintain its connection to the remaining peripherals (keyboard and mouse). This functionality directly maps to the ’191 patent’s key limitation of maintaining connectivity for the first host to peripherals not provided to the second host.
    • Key Aspects: Petitioner emphasized that Dickens’s automatic sharing of a printer, independent of the user-selected keyboard and mouse routing, inherently creates the two distinct connectivity states required by the claims.

Ground 2: Anticipation of Claims 1, 4-13, 17, 19, and 21 under 35 U.S.C. §102 by Adder

  • Prior Art Relied Upon: Adder (U.K. Application GB 2 353 540).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Adder, which discloses a stand-alone switching device for sharing USB peripherals, also anticipated the claims. Adder explicitly describes a system allowing multiple users to access multiple computers using shared USB peripherals. Petitioner pointed to Adder’s figures, which illustrate different connectivity configurations. One configuration shows a first host connected to all peripherals ("User A" and "User B" peripherals). Another illustrated example shows the peripherals split, where a second host is connected to the "User B" peripherals while the first host maintains its connection to the "User A" peripherals. Petitioner argued this directly teaches the claimed "two-host-distributed-peripherals" connectivity state, thereby anticipating the independent claims.
    • Key Aspects: Petitioner argued that Adder’s disclosure of distinct, selectable configurations for peripheral sharing, implemented via electronic switch control, meets all functional and structural limitations of the claims.

Ground 3: Anticipation of Claims 1-2, 4-10, 12-14, and 17-21 under 35 U.S.C. §102 by Wurzburg ‘293

  • Prior Art Relied Upon: Wurzburg ‘293 (Application # 2006/0059293).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the ’293 application, which names the same inventor and was incorporated by reference into the ’191 patent, anticipated the claims. The ’293 application describes a USB switching hub with two upstream ports for hosts and multiple downstream ports for peripherals. Its disclosure and figures explicitly detail a first state where a host computer is connected to a plurality of downstream peripherals. It further discloses a second state where a second host (a dual-role device) connects and gains access to one downstream peripheral, while the first host "maintains connectivity" with the remaining downstream peripherals. This language and functionality were argued to be a verbatim disclosure of the allegedly novel feature of the ’191 patent’s claims.
    • Key Aspects: Petitioner noted that during prosecution of the abandoned ’293 application, a nearly identical claim (claim 80) was rejected, suggesting the examiner in the ’191 case was unaware of this highly relevant prior art from the same inventor.

  • Additional Grounds: Petitioner asserted several additional obviousness challenges under 35 U.S.C. §103. These grounds argued that claim 3 (requiring the hub be in a display device) was obvious over the primary references in view of Silverbrook or Torii. Other grounds argued that claims were obvious over combinations of Dickens, Adder, and Wurzburg ’293 with secondary references like the USB 2.0 Specification, Kim, and Hannah to teach specific features related to power control and memory configurations.

4. Key Claim Construction Positions

  • "Operable to" / "Configured to": Petitioner argued these terms should be interpreted as functional limitations, meaning anticipation is met if the prior art device is merely capable of performing the recited function. This construction is central to the anticipation arguments, as the prior art systems (Dickens, Adder) inherently possess the capability to exist in the two claimed connectivity states, even if not explicitly described in the same terms as the patent.
  • Absence of "Switching": Petitioner contended that the independent claims do not recite a limitation of "switching" between the two described connectivity states (a "first-host-only" state and a "two-host-distributed" state). Instead, the claims merely describe the hub's capabilities within each of these two static states. This interpretation removes any need for the prior art to show a dynamic transition, broadening the scope of anticipatory art to references that simply disclose the existence of both configurations.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of Patent 7,478,191 as unpatentable.