Western Digital Corp v. Kuster Martin

1. Case Identification

• Case #: IPR2020-01391
• Patent #: 8,693,206
• Filed: August 4, 2020
• Petitioner(s): Western Digital Corporation, Western Digital Technologies, Inc., and SanDisk, LLC
• Patent Owner(s): Martin Kuster
• Challenged Claims: 1-19

2. Patent Overview

• Title: External Storage Device Connector
• Brief Description: The ’206 patent relates to external storage devices, such as USB flash drives, featuring connectors with a two-tier contact arrangement to ensure compatibility with both USB 2.0 and USB 3.0 standards. The invention focuses on the mechanical structure of the connector, comprising a substrate, memory die stack, controller, and specific spatial arrangements of "connection fingers" (for USB 2.0) and a "contact bar" with extensions (for USB 3.0).

3. Grounds for Unpatentability

Ground 1: Obviousness over He and Cheng - Claims 1-5, 8-11, 13-15, and 18-19 are obvious over He in view of Cheng.

• Prior Art Relied Upon: He (Patent 7,909,654) and Cheng (Application # 2009/0098773).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that He disclosed a USB plug connector compatible with both USB 2.0 and 3.0 standards, which it described as suitable for a "USB flash disk." He’s design included a PCB substrate, a first set of contacts ("golden fingers" 13) corresponding to the claimed "connection fingers," and a second set of contacts ("resilient contacts" 2 within a "contact module") corresponding to the claimed "contact bar." He’s design showed the resilient contacts having portions at a greater height from the substrate than the flat golden fingers. Petitioner asserted that while He did not explicitly detail the memory and controller, a person of ordinary skill in the art (POSITA) would understand these components to be necessarily present in a functional "USB flash disk."
  • Motivation to Combine: Cheng taught that conventional flash drives include memory and controllers disposed on a printed circuit board. Petitioner contended a POSITA would be motivated to incorporate the conventional memory and controller taught by Cheng into He's connector design to create a complete and functional storage device, which was a simple and predictable combination of known elements.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining standard flash drive components like memory and controllers with a USB connector was routine practice.

Ground 2: Anticipation by Hsiao - Claims 11-12 are anticipated by Hsiao.

• Prior Art Relied Upon: Hsiao (Patent 8,480,435).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hsiao disclosed every element of claims 11 and 12 in a single reference. Hsiao described a Chip-on-Board (COB) USB flash memory device with both USB 2.0 and 3.0 interfaces, a substrate (310), flash memory (340), and a USB controller (330). Hsiao taught a "contact bar" (connector main body 320 with terminals 323) mounted on the substrate, with upwardly bent portions at a first distance from the substrate. It also taught a plurality of "connection fingers" (terminals 322) electrically coupled to the substrate at a second, lower distance. For claim 12, Petitioner mapped Hsiao’s connector main body (320) to the claimed "cover" and argued that the connection fingers (322) were "embedded to be exposed upon" this cover as they were installed below its slot columns.
  • Key Aspects: Petitioner argued the examiner materially erred by overlooking these specific teachings in Hsiao, which was submitted late in prosecution without any substantive analysis provided by the examiner for its allowance.

Ground 3: Obviousness over Chen and Cheng - Claims 11-12, 14-15, and 18 are obvious over Chen in view of Cheng.

• Prior Art Relied Upon: Chen (Patent 7,625,243) and Cheng (Application # 2009/0098773).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Chen disclosed a memory device with a two-tier connector plug, including an insulative housing (10) that functions as a contact bar and cover. This plug contained flat, non-elastic connection fingers (131-134) for a USB 2.0 interface and elastic contacts (137) for a second, non-USB high-speed interface. The elastic contacts had portions (1381, 1391) that protruded upwardly from the supporting surface, creating a first height, while the flat connection fingers were substantially coplanar with the surface, creating a second, lower height.
  • Motivation to Combine: Cheng taught mounting memory die stacks on both sides of a PCB to miniaturize a flash drive while increasing memory capacity. A POSITA would be motivated to apply Cheng's dual-sided memory layout to Chen's connector design. This combination would achieve the goals of increased storage capacity (satisfying claims 15) and reduced device length, a well-known design trade-off.
  • Expectation of Success: Combining a known connector configuration with a known memory layout technique was a predictable path to creating a more compact, higher-capacity device.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of He/Cheng/Hiller (to add stacked dies with multiple dies), He/Sun (as an alternative for adding memory/controller), Hsiao/Sun (as an alternative for configuring the controller), and Chen/Cheng/Wan (to explicitly configure for USB 3.0 standards), which relied on similar motivations of combining known features for predictable results.

4. Key Claim Construction Positions

• "Mounted on": Petitioner proposed this term be construed by its plain meaning as "Securely Attached, Affixed or Fastened To," arguing it has no special meaning in the art.
• "Embedded to be exposed upon": Petitioner argued this term should be given its ordinary dictionary definition, such as "to fix firmly in a surrounding mass," noting that the phrase was added during prosecution to overcome an indefiniteness rejection.
• "Memory die stack": Petitioner contended that the patent’s specification supports an interpretation where a "stack" may comprise only a single memory die.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The core arguments were that the co-pending district court litigation was in its earliest stages with no trial date set and minimal court investment in the merits. Petitioner further argued there was minimal overlap between the proceedings, as the inter partes review (IPR) challenges claims 1-19, whereas the litigation complaint only alleges infringement of claims 11-12 and 18-19. Finally, Petitioners offered to stipulate that they would not pursue the same invalidity grounds in the district court if the IPR is instituted.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-19 of the ’206 patent as unpatentable.