Toshiba America Information Systems Inc v. Walletex Microelectronics Ltd

1. Case Identification

• Case #: IPR2018-01538
• Patent #: 7,458,825
• Filed: August 10, 2018
• Petitioner(s): Toshiba America Information Systems, Inc. and MSI Computer Corp.
• Patent Owner(s): Walletex Microelectronics Ltd.
• Challenged Claims: 1-24

2. Patent Overview

• Title: Multi-Contact Connector
• Brief Description: The ’825 patent describes a reversible, multi-contact electrical connector, such as a USB plug, that can be inserted into a corresponding receptacle in two opposite orientations while maintaining identical functionality. The connector features two sets of contacts on opposite surfaces that are electrically interconnected and a device to prevent short circuits upon insertion.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1, 2, 4, 8, and 9 are anticipated by Harkabi.

• Prior Art Relied Upon: Harkabi (Patent 7,361,059).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the "SLIM" embodiment of Harkabi discloses every limitation of claim 1. Harkabi teaches a double-sided USB connector with two sets of contacts on opposite sides of a tongue (a planar substrate), which are electrically interconnected and spatially arranged in a mutually opposed, reverse-symmetry relationship to ensure proper mating in either orientation. Petitioner asserted that Harkabi's "protective edges," which protrude further than the electrical contacts, function as the claimed "short circuit prevention device" by preventing the unused contacts from touching the grounded housing of the receptacle.
  • Key Aspects: Petitioner contended that Harkabi's SLIM embodiment was designed to solve the exact same problem as the ’825 patent—creating a reversible USB connector—and did so using an identical structure.

Ground 2: Obviousness over Harkabi Embodiments - Claims 1, 2, 4, and 8-10 are obvious over Harkabi.

• Prior Art Relied Upon: Harkabi (Patent 7,361,059).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that even if the SLIM embodiment did not anticipate, it would have been obvious to combine features from Harkabi’s SLIM and "FLEX" embodiments. The FLEX embodiment explicitly discloses "insulating strips" lining the connector shell as a short-circuit prevention mechanism. It also discloses a flexible tongue with contacts on both sides. A POSITA would combine the SLIM embodiment's teaching of electrically interconnected contacts with the FLEX embodiment.
  • Motivation to Combine: Petitioner asserted a POSITA would combine teachings from Harkabi's different embodiments because they are presented as alternative solutions to the same problem. Combining the SLIM embodiment’s clear interconnection scheme with the FLEX embodiment’s structure would be a predictable application of a known technique to improve a similar device, as Harkabi itself suggests its features could be substituted or varied.
  • Expectation of Success: The combination involved applying known techniques from different sections of the same reference to achieve the predictable result of a functional, reversible, short-circuit-proof connector.

Ground 3: Obviousness over Harkabi and EDN - Claim 5 is obvious over Harkabi in view of EDN.

• Prior Art Relied Upon: Harkabi (Patent 7,361,059) and EDN (a 1996 article titled "Overload and Reverse-Current Circuitry Protects Battery and Load").

• Core Argument for this Ground:

  • Prior Art Mapping: Claim 5 depends from claim 1 and specifies that the short circuit prevention device is a diode. Petitioner argued Harkabi discloses all limitations of claim 1. EDN, a technical article on preventing short circuits in electronic devices, explicitly teaches that the "simplest" method for preventing short circuits is to use a diode in series with the power terminal.
  • Motivation to Combine: A POSITA, recognizing the short-circuit problem identified in Harkabi, would have been motivated to look for known electrical solutions. Petitioner argued EDN provided a well-known, simple, and effective solution (a diode) directly applicable to the problem Harkabi’s mechanical "protective edges" sought to solve. A POSITA would have been motivated to replace or supplement Harkabi's mechanical solution with EDN's more robust electrical one to improve reliability and reduce wear.
  • Expectation of Success: Applying a diode for short-circuit protection was a fundamental and predictable technique in electrical engineering, ensuring a high expectation of success.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges against the remaining claims. These grounds primarily combined Harkabi with secondary references to teach specific features recited in the dependent claims, including: a switching unit for overcurrent protection (Wiener); specific material resiliency (USB 2.0 Specification); connection to an earphone (Hisano); a credit-card-shaped device with a magnetic stripe (Le); a wireless communication circuit (Benayoun); a display and audio player (Kim); a biometric sensor (Funahashi); and an imaging device (Poo).

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention of the petition was that the ’825 patent is not entitled to its claimed priority date from its 2004 provisional applications. Petitioner argued that the provisional applications only disclosed a double-sided USB connector. The term "FCCS" ("flexibly connectable computer systems"), which broadened the claims beyond USB to other standards like IEEE 1394, was not introduced until the PCT application was filed on June 17, 2005. Therefore, Petitioner argued the effective filing date for the claims is June 17, 2005, which makes Harkabi (based on its 2004 nonprovisional filing date) §102(e) prior art.

5. Relief Requested

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