Ud Electronic Corp v. Pulse Electronics Inc

1. Case Identification

• Case #: IPR2019-00515
• Patent #: 6,593,840
• Filed: December 31, 2018
• Petitioner(s): U.D. Electronic Corp.
• Patent Owner(s): Pulse Electronics, Inc.
• Challenged Claims: 1, 7, 10-12

2. Patent Overview

• Title: Electronic Packaging Device with Insertable Leads and Method of Manufacturing
• Brief Description: The ’840 patent describes an electronic connector package designed to improve the reliability of electrical connections for miniaturized components. The invention combines features of prior "open header" and "interlock base" designs, using a non-conductive base with lead channels into which non-embedded, trapping-style conductive terminals are inserted to secure fine gauge wires.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gutierrez - Claims 1, 7, and 10-12 are obvious over Gutierrez.

• Prior Art Relied Upon: Gutierrez (Patent 6,395,983).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gutierrez, which was filed before the ’840 patent’s priority date and shares a co-inventor, discloses every element of the challenged claims. Gutierrez teaches an electronic packaging device with a non-conductive base body, side walls defining lead channels, and a recess for electronic components. Crucially, Gutierrez discloses two distinct types of "retention elements"—a "bayonet shape" and a modified "bayonet" shape for receiving a "T-bar"—that are formed within the lead channels. Petitioner contended these structures prevent lead terminals from moving longitudinally by using friction and mechanical interference, directly teaching the core "retention element" limitation of claims 1 and 10.
  • Motivation to Combine (for §103 grounds): As this ground is based on a single reference, Petitioner argued that Gutierrez itself renders the claims obvious because it teaches all claimed features, and a person of ordinary skill in the art (POSITA) would have recognized these known elements could be arranged as claimed to achieve the predictable result of a secure electrical connector.

Ground 2: Obviousness over Machado in view of Tsunezawa ’719 - Claims 1, 7, and 10-12 are obvious over Machado in view of Tsunezawa ’719.

• Prior Art Relied Upon: Machado (WO 99/27545) and Tsunezawa ’719 (Patent 6,206,719).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Machado discloses the basic structure of the claimed electronic device, including a non-conductive base element with sidewalls, lead channels, and recesses for electronic components. However, Machado’s method for securing wires relies on locking notches that guide a wire but does not explicitly teach the friction-based retention element of the ’840 patent. Tsunezawa ’719 was argued to supply this missing feature. It discloses an electronic component unit with terminal mounting grooves (lead channels) containing raised portions that define a restricted space. These raised portions have surfaces that abut projections on the lead terminals to prevent them from dislocating, thereby teaching a friction-based retention element.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references because they are in the same technical field and address the common problem of ensuring stable electrical connections in miniature packages. Petitioner argued a POSITA would have been motivated to improve the connection stability of Machado's device by incorporating the known friction-based retention structures taught by Tsunezawa ’719.
  • Expectation of Success (for §103 grounds): Success would be expected because incorporating the retention elements of Tsunezawa ’719 into the lead channels of Machado was a straightforward application of known design principles to achieve the predictable result of improved terminal retention.

Ground 3: Obviousness over Tsunezawa - Claims 1, 7, and 10-12 are obvious over Tsunezawa.

• Prior Art Relied Upon: Tsunezawa (Patent 6,109,980).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the standalone Tsunezawa reference teaches all elements of the challenged claims. Tsunezawa discloses an electronic component unit with an insulating casing (base body) that includes a terminal fixture (side wall) and terminal fixing structures (lead channels). It also describes recesses for receiving electronic components. For the critical "retention element" limitation, Tsunezawa teaches a terminal fixing structure with a coupling section recess that receives a terminal via a press-fit, creating friction. Additionally, it discloses a pair of holding elements that function as a stopper and create friction to prevent the terminal from detaching.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference. Petitioner asserted that Tsunezawa alone discloses a complete, self-contained system with all the claimed features, making the claimed invention obvious to a POSITA.

4. Key Claim Construction Positions

• "retention element" (claims 1 and 10): Petitioner argued this term is central to the patentability of the challenged claims and proposed two alternative constructions.
  • Primary Proposal: The term should be construed under 35 U.S.C. §112 ¶ 6 as a means-plus-function term. Petitioner asserted the term fails to recite sufficiently definite structure and instead recites a function ("retaining" or "restricting" movement). The corresponding structure disclosed in the ’840 patent’s specification is retainer 160 and its equivalents.
  • Alternative Proposal: If not construed as means-plus-function, the term should be construed as "an element that captures and retains a lead terminal within the lead channel by friction." This construction was based on the specification’s description of retainer 160.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), contending that the grounds present new and non-cumulative questions of patentability not previously considered by the USPTO. The prior art considered by the Examiner during prosecution (specifically, the Lu patent) taught securing a lead terminal by molding a pin into the base body. In contrast, all three grounds in the petition are based on prior art that teaches the distinct mechanism of retaining the lead terminal by friction, the very feature the Examiner identified as the basis for allowance.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 7, and 10-12 of the ’840 patent as unpatentable.