PTAB

IPR2019-00262

U.D. Electronic Corporation v. PULSE ELECTRONICS, INC.

1. Case Identification

2. Patent Overview

  • Title: Integrated Connector Module with EMI Shielding
  • Brief Description: The ’318 patent discloses an integrated connector module (ICM) for networking apparatuses. The ICM features multiple electronic subassemblies housed together, with various electromagnetic interference (EMI) shields designed to increase electrical isolation between adjacent subassemblies and mitigate electrical noise.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 14 - Claim 14 is unpatentable as anticipated under 35 U.S.C. §102(a) by Molex.

  • Prior Art Relied Upon: Molex (International Publication No. WO 2011/057195).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Molex discloses every limitation of claim 14. Molex's "modular jack" with housing 32 and ports 33 arranged in "vertically aligned pairs" was argued to correspond to the claimed connector housing with ports in a "row-and-column fashion." Molex's subassembly modules 70, containing transformers and chokes 121 within component housings 75 and including circuit boards 74 and 78, were argued to meet the limitations for electronic components in insert bodies with an internal printed circuit board. The claimed electromagnetic interference (EMI) shields were mapped to Molex's overall shield assembly 50 and inter-module shields 60. Specifically, the "body shield" that interfaces with the back of the printed circuit board was mapped to Molex's internal shield member 190, whose solder tail 195 connects to the back of circuit board 74. The "shielding tab" was mapped to Molex's clip 110, which has flexible contact arms 115 extending into the housing to contact ground pads 73 on the front portion of the circuit board.

Ground 2: Anticipation of Claim 14 - Claim 14 is unpatentable as anticipated under 35 U.S.C. §102(e) over Regnier ’538.

  • Prior Art Relied Upon: Regnier ’538 (Patent 8,888,538).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Regnier ’538, which issued from the same international application as Molex, likewise anticipates every element of claim 14. The mapping of claim limitations to the features of the Regnier ’538 disclosure is identical to the mapping for Molex, as both references describe the same connector assembly using the same figures and element numbers. This ground was asserted under §102(e) based on the filing date of the Regnier ’538 patent, making it a distinct statutory basis for rejection from Ground 1.

Ground 3: Obviousness of Claim 17 - Claim 17 is obvious over Molex in view of Zhang.

  • Prior Art Relied Upon: Molex (WO 2011/057195) and Zhang (Application # 2012/0196458).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Molex teaches all limitations of base claim 14 and that Zhang supplies the additional limitation of dependent claim 17: "a wall structure that separates the shielding tab from a plurality of electrical conductors." Zhang was argued to teach this element through its disclosure of an insulative housing that includes a wall structure separating electrical conductors from a grounding conductor and a shielding front wall within the connector ports.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Zhang's teaching of a separating wall structure with Molex's connector design to improve electrical isolation and prevent shorting between the conductors and the EMI shields. Both references are in the same field of endeavor and address the problem of improving shielding in multi-port connectors.
    • Expectation of Success: The petition argued there would be a clear expectation of success, as combining a known physical barrier from Zhang into a standard connector like that in Molex would predictably and simply improve electrical isolation.

Ground 4: Obviousness of Claim 17 - Claim 17 is obvious over Regnier ’538 in view of Zhang.

  • Prior Art Relied Upon: Regnier ’538 (Patent 8,888,538) and Zhang (Application # 2012/0196458).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an argument analogous to Ground 3, using Regnier ’538 as the base reference disclosing all elements of claim 14. Zhang was again relied upon to teach the "wall structure" limitation of claim 17, as it did in the previous ground.
    • Motivation to Combine: The motivation to combine Regnier ’538 and Zhang was identical to that asserted for combining Molex and Zhang: to use a known physical barrier to improve electrical isolation and prevent shorting in a multi-port connector, a common goal in the art.

4. Key Claim Construction Positions

  • "Row-and-Column Fashion": Petitioner proposed construing this term as an "array structure having rows and columns." This construction was central to arguing that the "vertically aligned pairs" of ports disclosed in the prior art (Molex and Regnier '538) meet the claim limitation.
  • "Insert Bodies": The proposed construction was "housings defining an interior cavity within a subassembly." This interpretation allowed Petitioner to map the limitation to the "component housings 75" in the prior art, which were formed from two halves rather than a single unibody structure.
  • "Wall Structure that separates...": Petitioner proposed construing this as "a structural portion disposed between a shielding tab and electrical conductors." This construction was key to the obviousness grounds, as it supported using Zhang, which shows a portion of the connector housing itself acting as the separating structure.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the grounds presented are non-cumulative and that an inter partes review (IPR) should be instituted. The challenges against claim 14 (Grounds 1 and 2), while based on the same underlying disclosure, rely on different statutory grounds (§102(a) and §102(e)) tied to the distinct publication and filing dates of the Molex and Regnier '538 references. Petitioner contended this presents separate, non-redundant legal challenges that warrant consideration.

6. Relief Requested

  • Petitioner requested that the Board institute an IPR and cancel claims 14 and 17 of Patent 9,178,318 as unpatentable.