PTAB

IPR2018-00225

T-Mobile USA Inc v. Sharpe Innovations Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: SIM Card Adaptor
  • Brief Description: The ’986 patent describes an adaptor that allows a smaller format Subscriber Identity Module (SIM) card to be used in an electronic device designed for a larger format SIM card. The adaptor body is made from materials such as plastic, nylon, or carbon fiber, and is characterized as being capable of withstanding heat levels up to at least 200°F without degradation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Martinent in view of Takeda - Claims 1-20 are obvious over Martinent in view of Takeda.

  • Prior Art Relied Upon: Martinent (Application # 2008/0251587) and Takeda (Patent 6,320,751).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Martinent disclosed all elements of the independent claims except for the specific heat resistance limitation. Martinent taught a SIM card adaptor made from plastic materials (e.g., ABS, PVC, PET) with a cutout region for receiving a smaller SIM card (e.g., micro SIM) to enable its use in a device designed for a larger SIM card (e.g., mini SIM). To supply the missing heat resistance element, Petitioner cited Takeda, which related to analogous SIM card substrates. Takeda expressly taught forming a SIM card carrier from a polymer alloy (including ABS) specifically chosen for its "higher heat resistance," specifying a resistance temperature of 120°C (248°F), which satisfied the ’986 patent’s requirement of withstanding "at least about 200°F."
    • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine Martinent and Takeda because both were in the analogous field of SIM card substrates. Takeda explicitly addressed the known problem of SIM cards being exposed to "severe environments," such as being left in a car in hot weather. A POSITA would therefore be motivated to incorporate Takeda’s disclosed heat-resistant material into Martinent’s adaptor design to improve its durability and ensure reliable operation in expected high-temperature conditions.
    • Expectation of Success: The combination was presented as a simple substitution of a known material (Takeda's heat-resistant ABS alloy) into a known device (Martinent's adaptor) to obtain a predictable result—a heat-resistant SIM card adaptor.

Ground 2: Obviousness over Boccia in view of Takeda - Claims 1-20 are obvious over Boccia in view of Takeda.

  • Prior Art Relied Upon: Boccia (Patent 7,183,636) and Takeda (Patent 6,320,751).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that this combination rendered the claims obvious for reasons similar to the Martinent-based ground. Boccia, which was cited by the Examiner during prosecution of the parent ’239 patent, disclosed a plastic adaptor for using a smaller SIM card in a device designed for a larger one. Petitioner argued that the Examiner only allowed the claims because Boccia did not expressly disclose the specific temperature its adaptor could withstand. Takeda, which was not considered during prosecution, remedied this alleged deficiency by teaching a heat-resistant ABS plastic for SIM card substrates capable of withstanding temperatures well over 200°F.
    • Motivation to Combine: The motivation to combine Boccia and Takeda mirrored that for the Martinent combination. Both references were analogous art. A POSITA would look to Takeda’s teachings on heat resistance to solve the known problem of thermal degradation in devices like the Boccia adaptor, which are used in environments prone to high temperatures.
    • Expectation of Success: Petitioner argued that applying Takeda's well-understood manufacturing techniques and heat-resistant materials to Boccia's plastic adaptor would predictably result in an adaptor with enhanced thermal stability.

Ground 3: Obviousness over Martinent/Boccia and Takeda in view of ETSI-V11 - Claims 2-3 and 9-16 are obvious over Martinent or Boccia (as modified by Takeda) in view of ETSI-V11.

  • Prior Art Relied Upon: Martinent, Boccia, Takeda, and ETSI-V11 (ETSI TS 102 221 V.11.0.0, a 2012 SIM card standard).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed dependent claims that recited a "nano SIM" card, a format introduced after Martinent and Boccia were filed. Petitioner argued that the primary combinations of Martinent/Takeda or Boccia/Takeda taught the fundamental heat-resistant adaptor. The ETSI-V11 standard provided the explicit dimensions and physical characteristics for the then-new "nano" SIM card format.
    • Motivation to Combine: Petitioner asserted that the continuous shrinking of SIM card sizes was a well-known industry trend. The purpose of the adaptors in Martinent and Boccia was to ensure backward compatibility for newer, smaller cards. Therefore, a POSITA would be strongly motivated to modify the dimensions of the prior art adaptors to conform to the latest industry standard (ETSI-V11) for the "nano" SIM. This modification was a simple and obvious design choice to keep the adaptor commercially relevant and functional with the latest technology.
    • Expectation of Success: Modifying the dimensions of the adaptor's cutout region to match a published, industry-wide standard was argued to be a trivial design change that would yield the predictable result of an adaptor compatible with nano SIM cards.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’986 patent as unpatentable.