T-Mobile USA, Inc v. Sharpe Innovations, Inc.

1. Case Identification

• Case #: To be assigned
• Patent #: Patent 8,573,986
• Filed: November 21, 2017
• Petitioner(s): T-Mobile USA, Inc.
• Patent Owner(s): Sharpe Innovations, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Adaptor for Different Sized SIM Cards
• Brief Description: The ’986 patent relates to a physical adaptor that allows a smaller form-factor Subscriber Identity Module (SIM) card (e.g., micro SIM, nano SIM) to be used in an electronic device designed for a larger form-factor SIM card (e.g., mini SIM). The patent specifies that the adaptor is made of materials like plastic or nylon capable of withstanding high temperatures (e.g., 200°F) encountered in mobile phones.

3. Grounds for Unpatentability

Ground 1: Obviousness over Martinent and 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 asserted that Martinent, a reference not considered during prosecution, discloses a plastic SIM card adaptor for fitting a smaller micro-SIM into a device designed for a larger mini-SIM, teaching the core structure of the invention. The key limitation added during prosecution to overcome prior art was specific heat resistance. Petitioner argued that Takeda, which teaches a "sheet-framed IC carrier" (SIM card), explicitly discloses making its substrate from a polymer alloy of acrylonitrile-butadiene-styrene (ABS) with a heat resistance of 120°C (248°F), satisfying the claimed limitation of withstanding temperatures "up to at least about 200° Fahrenheit."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references because they are in the analogous art of SIM card substrates. Takeda explicitly teaches the importance of high heat resistance for cards that may be left in "severe environments," such as a hot car. A POSITA would incorporate Takeda's heat-resistant material into Martinent’s adaptor design to improve its durability and reliability in the known operating environments of mobile devices.
  • Expectation of Success: Petitioner argued the combination would be predictable, as it involves substituting one known plastic material for another (Takeda's heat-resistant ABS for Martinent's standard plastic) in a simple mechanical device. The manufacturing techniques are conventional and compatible, ensuring a high expectation of success.

Ground 2: Obviousness over Boccia and 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 presented a parallel argument using Boccia, the primary reference from the parent patent's prosecution. Petitioner argued Boccia teaches a plastic adaptor for converting between SIM card sizes, including a body, cutout region, and floor. As with the Martinent ground, Petitioner asserted that Takeda supplies the express teaching of a specific heat-resistant material (an ABS alloy resistant to 248°F) that the Examiner previously found lacking in Boccia alone.
  • Motivation to Combine: The motivation was identical to the first ground. A POSITA, knowing from Takeda the importance of heat resistance for components used in mobile devices, would manufacture the plastic adaptor of Boccia using the specific heat-resistant ABS taught by Takeda to ensure its functionality under expected thermal stress.
  • Expectation of Success: Petitioner asserted success would be highly predictable, as it simply involves using a well-known, heat-resistant plastic for its known properties in an existing, analogous product design.

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

• Prior Art Relied Upon: Martinent (Application # 2008/0251587), Takeda (Patent 6,320,751), and ETSI-V11 (ETSI TS 102 221 V.11.0.0, June 2012).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims reciting a "nano SIM card." Petitioner argued that while Martinent predates the nano SIM standard, the ETSI-V11 standard provides the public, standardized dimensions for the nano SIM format. The combination of Martinent and Takeda provides the heat-resistant adaptor, and ETSI-V11 provides the dimensions for the specific card to be adapted.
  • Motivation to Combine: The motivation was presented as a simple design choice to keep a product current. As the mobile industry continuously shrinks SIM card sizes, a POSITA would naturally modify the dimensions of an existing adaptor (from Martinent/Takeda) to accommodate the newest industry-standard "nano" SIM (from ETSI-V11). This ensures backward compatibility, a goal inherent in the primary references.
  • Expectation of Success: Modifying the dimensions of a molded plastic recess to fit a newly standardized component is a trivial, predictable design change with a clear expectation of success.
• Additional Grounds: Petitioner asserted an additional, parallel obviousness challenge for claims 2-3 and 9-16 based on Boccia (as modified by Takeda) in view of ETSI-V11, relying on the same motivation to adapt to the new nano-SIM standard.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner dedicated significant argument to challenging the claimed priority dates. It contended that claims 1, 4-8, and 17-20 are not entitled to the priority date of the provisional application because limitations regarding specific materials (nylon, carbon fiber, aluminum) and the 200°F heat resistance were first disclosed in the later-filed '239 parent application.
• Nano-SIM Claims Priority: Furthermore, Petitioner argued that claims reciting a "nano SIM card" (claims 2-3 and 9-16) are only entitled to the November 13, 2012 filing date of the ’986 patent itself. This is because the nano SIM concept was not disclosed in either the provisional or the parent '239 application. This later priority date makes the June 2012 ETSI-V11 standard, which defines the nano SIM, available as prior art against these claims under 35 U.S.C. §102(a).

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 1-20 of Patent 8,573,986 as unpatentable under 35 U.S.C. §102 and §103.