PTAB

IPR2019-00508

U.D. Electronic Corporation v. Pulse Electronics, Inc.

Title: Modular Connector Assembly
Brief Description: The ’473 patent discloses a modular connector assembly, such as a stacked RJ-45 jack, that incorporates terminal insert assemblies and electronic component insert assemblies within a main connector housing. The invention is directed at configurations of these insert assemblies, including their terminals, substrates, and wire routing features, to manage electrical components and signals within a compact form factor.

Prior Art Relied Upon: Korsunsky (Patent 6,743,047).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Korsunsky, which was not considered during prosecution, discloses every element of independent claims 1 and 37. Korsunsky teaches an electrical connector with a housing, a plurality of insert modules, and a rear ground plate. Petitioner asserted that Korsunsky’s insert modules include a first, second, and third internal PCB, with the third PCB functioning as the claimed “top substrate” by including electronic elements (resistors/capacitors) and conductive pathways. The insert modules also contain magnetic boxes that serve as the claimed “pair of insert body elements,” which define a chamber for electronic components (magnetic coils) and include upper and lower conductors corresponding to the claimed terminal portions. Furthermore, Korsunsky was alleged to show channels for routing wires internal to the magnetic boxes.

Prior Art Relied Upon: Korsunsky (Patent 6,743,047) and Chen (Application # 2003/0022553).
Core Argument for this Ground:
- Prior Art Mapping: This ground asserted that Korsunsky taught most elements of claim 16, including the connector housing, terminal insert structures, and an insert assembly with a substrate. Chen was introduced to supply the limitation of an "upper and a lower polymer carrier" arranged in a mirror-image configuration. Chen discloses a multiport connector with a contact pin block assembly made of a polymer material that holds contacts and can be ultrasonically welded, which Petitioner argued corresponds to the claimed polymer carrier.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Chen’s polymer carrier with Korsunsky’s connector design to improve the ease of assembly and provide better electrical isolation for the conductors. Using a non-conductive polymer carrier like Chen's to hold and position contacts is a known and predictable design choice in the field of electrical connectors.
- Expectation of Success: A POSITA would have a reasonable expectation of success in combining these elements as both references operate in the same technical field of modular connectors and address similar problems of contact management.

Prior Art Relied Upon: Korsunsky (Patent 6,743,047), Chen (Application # 2003/0022553), and Colantuono (Application # 2002/0146940).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the combination in Ground 2 to further challenge dependent claim 18, which adds an "indicator assembly" with light pipes, light sources, and an "optical isolation element." Petitioner argued that Colantuono, which also concerns modular RJ-45 jacks, explicitly taught this missing element. Colantuono discloses a connector with LEDs on a rear cover and molded-in light pipes that transmit light to indicator panels on the front. Colantuono further describes features like bridge rails and thinned window areas to create separate light paths and prevent crossover, thereby teaching the claimed "optical isolation element."
- Motivation to Combine: A POSITA would be motivated to add the indicator assembly from Colantuono to the connector of Korsunsky/Chen for the well-known purpose of providing power or signal status for individual ports. This was a common and desirable feature for multiport connectors at the time.
- Expectation of Success: The integration was argued to be a predictable application of a known feature (LED indicators) to a known device (a multiport connector).

Prior Art Relied Upon: Korsunsky (Patent 6,743,047) and Colantuono (Application # 2002/0146940).
Core Argument for this Ground:
- Prior Art Mapping: This ground challenged claims 33, 39, and 41, which depend from claims 1 or 37 and add limitations for an indicator assembly and optical isolation means. Similar to Ground 3, this combination relied on Korsunsky for the base connector assembly and Colantuono for the indicator assembly features, including LEDs, light pipes, and structures for optical isolation.
- Motivation to Combine: The motivation was identical to that in Ground 3: it would have been obvious to a POSITA to incorporate a standard LED indicator system, as taught by Colantuono, into the connector of Korsunsky to add useful status indication functionality.
- Expectation of Success: The combination was presented as a straightforward integration of known components for their conventional purposes.

Means-Plus-Function Terms: Petitioner argued that numerous claim terms are indefinite unless construed under 35 U.S.C. §112, ¶ 6 as means-plus-function limitations. This included the term “optical isolation element” (which Petitioner asserted is a generic nonce word defined only by its function) and all explicit "means for..." limitations in claims 37, 39, and 41 (e.g., "means for receiving a modular plug," "means for routing wire"). For each, Petitioner identified corresponding structures from the ’473 patent's specification, such as plug recesses, wire channels, and the light pipe assembly.
“Internal To An Outer Periphery…”: For the wire routing limitation in claims 1 and 37, Petitioner proposed this term be construed as “without passing the external boundary of mated pairs of insert body elements.” This construction was argued to be critical to mapping the channels shown in the Korsunsky reference.

Non-Cumulative Grounds: Petitioner argued that the proposed grounds are non-cumulative and should be instituted. The argument was based on the fact that the petition relies on a single, compelling primary reference (Korsunsky) that was not before the examiner during prosecution. Petitioner further contended that the secondary references (Chen and Colantuono) are combined in distinct ways to demonstrate the invalidity of different sets of claims, making each ground a unique challenge.

Petitioner requests institution of IPR and cancellation of claims 1, 16, 18, 33, 37, 39, and 41 as unpatentable.