Unified Patents LLC v. Oceana Innovations LLC

1. Case Identification

• Case #: IPR2020-01463
• Patent #: 6,508,678
• Filed: August 14, 2020
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): Oceana Innovations LLC
• Challenged Claims: 1-5

2. Patent Overview

• Title: Electrical Connector Assembly
• Brief Description: The ’678 patent discloses an electrical connector assembly, including a plug and receptacle with a distinct, non-standard shape. The purported invention aims to solve problems with conventional USB connectors by defining a specific multi-sided cross-section to ensure proper mating and orientation.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3

• Legal Basis: Claims 1-3 are anticipated by Jones under 35 U.S.C. § 102.
• Prior Art Relied Upon: Jones (Patent 4,764,129).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Jones, which was never considered during prosecution, discloses every element of claims 1-3. The argument focused on Jones’s embodiment 15, which allegedly depicts a connector cross-section with the same multi-sided confining wall structure recited in claim 1. Petitioner provided detailed, annotated side-by-side comparisons of the figures from the ’678 patent and Jones to map each geometric limitation, including the relative lengths of the first, second, and third sides; the greater width between the third sides than the fourth sides; and the fourth sides extending obliquely from the second side.

Ground 2: Obviousness of Claims 1-3

• Legal Basis: Claims 1-3 are obvious over Nishio in view of Jones under 35 U.S.C. § 103.
• Prior Art Relied Upon: Nishio (Patent 6,322,395) and Jones (Patent 4,764,129).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that during prosecution, the examiner rejected the claims over Nishio, which taught a miniature electrical connector with a multi-sided shape. To overcome this, the applicant amended the claims to add limitations, including that the "fourth sides extend obliquely from said second side." Petitioner contended this distinguishing feature is expressly taught by Jones, which discloses a trapezoidal key and keyway that creates the claimed oblique fourth sides.
  • Motivation to Combine: A POSITA would combine Jones with Nishio because both references address electrical connectors in the computer field and aim to ensure proper mating. Jones’s trapezoidal keyway was a known design for improving mechanical alignment, and a POSITA would have been motivated to incorporate this feature into Nishio’s connector to improve its usability and prevent misalignment.
  • Expectation of Success: Substituting the rectangular keyway of Nishio with the trapezoidal keyway of Jones was a simple modification of known components that would predictably improve connector alignment.

Ground 3: Obviousness of Claims 4 and 5

• Legal Basis: Claim 4 is obvious over Jones/Nishio in view of Koizumi; Claim 5 is obvious over the combination for claim 4 in further view of Roldan.
• Prior Art Relied Upon: Jones (Patent 4,764,129), Nishio (Patent 6,322,395), Koizumi (Patent 5,630,170), and Roldan (Patent 4,591,230).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 4, which recites a terminal arrangement for detecting plug type, is rendered obvious by Koizumi. Koizumi explicitly teaches using specific power and detecting terminal connections to identify different peripheral devices. Claim 5 adds that these terminals are "integrally formed and are punched from a metal plate," a manufacturing technique Petitioner asserted is explicitly taught by Roldan as a known, efficient method for making multi-pronged contacts.
  • Motivation to Combine: A POSITA would add Koizumi's plug-type detection circuitry to the connectors of Jones or Nishio to solve the known problem of plug mismatching. Furthermore, a POSITA would have found it obvious to use Roldan’s well-known and efficient stamping process to manufacture the integral power and detecting terminals, as it reduced waste and size.
  • Expectation of Success: The combination involved applying known techniques (Koizumi’s terminal configuration, Roldan’s stamping process) to a known device (the connector body of Jones/Nishio) to achieve predictable results.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on Kusagaya (Patent 6,231,129) in combination with Jones for claims 1-3, which relied on similar motivations to combine references addressing connector mismatching problems.

4. Key Claim Construction Positions

• The petition argued that two terms required construction if not given their plain and ordinary meaning.
• "obliquely": Petitioner proposed construing this term as "neither parallel nor at a right angle to a specified or implied line; slanting." This construction was central to arguing that Jones, with its trapezoidal keyway, discloses the feature added to overcome prior art during prosecution.
• "angled away from each other": Petitioner proposed this term be construed as "extending away from each other" and to include "angled at 180 degrees (i.e., parallel) and pointing in opposite directions." This construction was argued to be consistent with the patent’s disclosed embodiments and prosecution history, preventing a narrow interpretation that might exclude both the patent’s figures and the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner dedicated substantial argument to why discretionary denial under §314(a) and §325(d) would be inappropriate.
• Against §314(a) Denial (Serial Petitions/Fintiv): Petitioner argued it has no relationship with the petitioners in two prior IPRs (IPR2018-01036 and IPR2020-01272). It stressed that the first IPR was dismissed before institution due to settlement and that the related district court cases were in very early stages, making an IPR the more efficient forum to resolve validity.
• Against §325(d) Denial (Same Art/Arguments): Petitioner argued that its primary references (Jones, Koizumi, Roldan) were never considered by the USPTO. While some references (Nishio, Kusagaya) were before the examiner, they were not considered in the combinations presented in the petition, which allegedly supply the very limitations upon which the patent was allowed.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 of Patent 6,508,678 as unpatentable.