GBT v. Walletex Microelectronics Ltd

1. Case Identification

• Case #: IPR2018-00325
• Patent #: 7,458,825
• Filed: December 28, 2017
• Petitioner(s): G.B.T. Inc.
• Patent Owner(s): Walletex Microelectronics Ltd.
• Challenged Claims: 1-16, 18, 19, 22, and 24

2. Patent Overview

• Title: Double-Sided USB-Compatible Plug Connector Adapted for Insertion in Either Orientation into a USB-Compatible Receptacle
• Brief Description: The ’825 patent discloses a multi-contact plug connector that can be inserted into a compatible receptacle in two opposite orientations (e.g., face up or face down) while maintaining identical functionality. Although titled as USB-compatible, the specification states its principles are equally applicable to other standards, such as smart cards.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 8-15 under §102(e)

• Prior Art Relied Upon: Michel (WO 2004/053777).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Michel, which was not considered during prosecution, anticipates the challenged claims. Michel discloses a receiver case for a smart card that allows insertion in two orientations ("face down or face up") while remaining electrically connected. This receiver constitutes a multi-contact connector with contacts on opposite surfaces (upper and lower blades). Petitioner asserted Michel also teaches a short circuit prevention device, as its contact blades are positioned to prevent "undesirable electrical contacts or short circuit" when no card is present. The dependent claims are met by Michel's disclosure of contacts on a planar substrate (insulating body) and a female connector adapted to accommodate the smart card.

Ground 2: Obviousness of Claims 1, 2, 4-6, 8-12, and 16 over Michel in view of Chen

• Prior Art Relied Upon: Michel (WO 2004/053777) and Chen (Patent 6,564,275).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that to the extent Michel is found not to teach a short circuit prevention device, combining it with Chen would render the claims obvious. Michel provides the fundamental reversible connector for a smart card. Chen, which addresses USB interfaces, discloses an electronic switching device using a diode to prevent reverse current flow and avoid short circuits.
  • Motivation to Combine: A POSITA would combine Chen's well-established diode-based short circuit protection with Michel's reversible connector to enhance safety and reliability. Petitioner contended this combination would have been apparent because the ’825 patent itself states its teachings apply broadly beyond USB to other standards, making the technologies analogous.
  • Expectation of Success: Incorporating a known electronic short circuit prevention method like a diode into a connector system was a common design choice that would have yielded predictable results.

Ground 3: Obviousness of Claims 3, 13, 16, and 24 over Michel in view of Chen and Freeman

• Prior Art Relied Upon: Michel (WO 2004/053777), Chen (Patent 6,564,275), and Freeman (Patent 6,019,284).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Michel/Chen combination by adding Freeman. Freeman discloses a "flexible chip card" with features relevant to the dependent claims. Specifically, Freeman teaches a planar substrate made of a resilient material capable of flexing without losing functionality (claim 3), a card supporting a magnetic stripe (claim 13), a display device for visual information (claim 16), and the use of non-volatile flash memory for quick data transactions (claim 24).
  • Motivation to Combine: A POSITA would combine Freeman's teachings into the Michel/Chen device to improve its physical durability (flexibility), expand its applications (magnetic stripe), enhance user interaction (display), and improve performance (flash memory). These were known and desirable improvements for portable electronic devices like smart cards.
  • Expectation of Success: Integrating features like a flexible substrate, magnetic stripe, display, and flash memory into a smart card-type device were well-understood design modifications with a high expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Michel with Admitted Prior Art from the ’825 patent (APA), Michel with Lin (Patent 6,733,328) for an earphone connection, and Michel/Chen with Abbott (Patent 6,671,808) for biometric authentication features.

4. Key Claim Construction Positions

• "FCCS": Petitioner argued this term, an abbreviation for "flexibly connectable computer systems," should be construed broadly under the Broadest Reasonable Interpretation (BRI) standard to mean "any interface standard for allowing devices to be connected to a computer." This construction is based on the patent's own definition and is critical for establishing that smart card prior art like Michel is analogous.
• "spatially aligned" and "mutually opposed": Petitioner contended these terms, based on the specification and file history, do not require a strict 180-degree anti-phase relationship. This broader construction would allow the terms to cover contact arrangements like those in Michel, which may not be perfectly opposed at 180 degrees.
• "short circuit prevention device": Petitioner argued this term should be interpreted to include any device configured to prevent a short circuit, encompassing both mechanical arrangements (like in Michel) and electronic components (like diodes or relays, as in Chen).

5. Key Technical Contentions (Beyond Claim Construction)

• Analogous Art Scope: A central contention of the petition was that the relevant field of art is not limited to USB connectors, but broadly includes other connector standards. Petitioner repeatedly cited the ’825 patent's own specification, which explicitly states its principles are "equally applicable to other standards" like smart cards. This argument was foundational to justifying the use of prior art references like Michel (smart card receiver), Freeman (flexible chip card), and others that do not explicitly focus on the USB standard.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16, 18, 19, 22, and 24 of the ’825 patent as unpatentable.