PTAB

IPR2019-00511

Ud Electronic Corp v. Pulse Electronics Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Connector Assembly with Integral Substrate
  • Brief Description: The ’302 patent discloses an electrical connector assembly, such as an RJ-type modular jack, that integrates a substrate (e.g., a printed circuit board) with associated electronic components within the main connector housing. The design features first conductors that mate with a modular plug and second conductors that connect to an external device, with both sets of conductors interfacing with the internal substrate.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kan - Claims 1, 3-5, and 13-15 are obvious over Kan.

  • Prior Art Relied Upon: Kan (Patent 6,179,668).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kan, which discloses an electrical connector with a terminal board and an internal circuit board, teaches all key elements of the independent claims. Kan’s structure was alleged to be a connector assembly with a housing, a recess for a plug, an internal substrate (circuit board 15), first conductors (upper terminals 12), and second conductors (lower terminals 13, 14). Petitioner contended the most specific limitation—first conductors having an "effectively curved portion" with a "different effective radius"—is met by Kan's terminals, which have mirrored "adiabatic bends" that are substantially coplanar.
    • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
    • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Ground 2: Obviousness over Kan in view of Hughes - Claims 6-8 are obvious over Kan in view of Hughes.

  • Prior Art Relied Upon: Kan (Patent 6,179,668), Hughes (Patent 4,225,209).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims requiring the substrate to be disposed in a "substantially vertical orientation within, and substantially orthogonal to the front face of, said housing." Petitioner asserted that Kan discloses the vertical orientation of its circuit board but is silent on its orthogonality to the connector's front face. Hughes was introduced to supply this missing element, as it explicitly describes a circuit board engaging a connector sidewall in a manner substantially orthogonal to the front face.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine the teachings because both Kan and Hughes are directed to the common problem of incorporating a circuit board within a connector assembly. A POSITA would have applied the known orthogonal orientation from Hughes to Kan's design to achieve predictable benefits, such as convenient plug insertion or saving space.
    • Expectation of Success (for §103 grounds): Success was expected because the combination involved applying a known orientation technique from Hughes to a similar connector structure in Kan to achieve a predictable and desirable layout.

Ground 3: Obviousness over Kan, Hughes, and Loudermilk - Claims 9-12 and 16 are obvious over Kan, Hughes, and Loudermilk.

  • Prior Art Relied Upon: Kan (Patent 6,179,668), Hughes (Patent 4,225,209), and Loudermilk (Patent 5,639,247).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targeted claims directed to a "multi-port connector assembly." While the combination of Kan and Hughes was argued to teach a single-port connector with an orthogonal substrate, Loudermilk was added to teach the multi-port and stacked "port pair" configurations. Loudermilk discloses a modular jack assembly with multiple connectors, including vertically stacked ports, which Petitioner mapped to the "port pair" limitation of claim 11. Loudermilk also allegedly shows conductors in an opposing, mirror-image orientation for its stacked ports, satisfying limitations related to the angular relationship between conductors in a port pair.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to extend the single-port design of Kan and Hughes into a multi-port assembly using the teachings of Loudermilk to meet the common industry need for multiple connections. Petitioner argued this was a simple and predictable duplication of parts to increase port density and maximize space, a well-known design goal.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in creating a multi-port version of the Kan/Hughes connector, as Loudermilk provided a clear blueprint for arranging multiple modular jacks.

  • Additional Grounds: Petitioner asserted that claims 1, 3-5, and 13-15 are also anticipated by Kan alone. An alternative obviousness ground for claims 11 and 12 was asserted over Kan, Hughes, Loudermilk, and Scheer (Patent 5,501,608) to address a narrower potential claim construction.

4. Key Claim Construction Positions

  • "effectively curved portion": Petitioner proposed this term be construed as "any form of bend in the first conductors." This broad construction was critical to arguing that the "adiabatic bends" in the terminals of the Kan reference met the claim limitation.
  • "the effective radius of each said effectively curved portion being different for each of said first conductors": Petitioner argued this phrase should be construed to mean that the "vector of curvature for an associated bend" is different. Under this interpretation, a conductor bend with a vector of magnitude 'A' is "different" from a mirrored conductor bend with a vector of magnitude '-A' (i.e., rotated 180 degrees). This construction was central to asserting that Kan's symmetrical, mirrored conductor bends satisfied the claim language.
  • "port pair": Based on the ’302 patent’s specification, Petitioner construed this term to mean "an upper and lower modular connector (port) which are in a substantially over-under arrangement." This construction was used to map Loudermilk's stacked connector disclosures to the claims.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 3-16 of Patent 6,773,302 as unpatentable.