PTAB

IPR2021-00886

Kaijet Technology Intl Ltd Inc v. Sanho Corp

Log In
Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Port Extension Apparatus
  • Brief Description: The ’429 patent discloses a "many-to-many" docking station designed to expand the connectivity of an end-user device, such as a laptop. The apparatus features a main module with two input ports that connect to the host device, expanding them into multiple different output ports for various peripheral devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kwon and Kuo - Claims 1-6 and 13-17 are obvious over Kwon in view of Kuo.

  • Prior Art Relied Upon: Kwon (Patent 8,649,169) and Kuo (Application # 2018/0165053).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kwon disclosed a docking station system that meets the core limitations of claim 1, including a "main port module" (Kwon's second end member 215) containing first and second port units (male electrical connectors 270) for connecting to a laptop. Kwon also taught various output ports, such as for USB, video, and memory cards. However, Petitioner contended that Kwon provided only a high-level description of its internal "hub, switching circuitry, or splitting circuitry" without detailing its implementation. Kuo was argued to supply these missing details, disclosing a docking station with a comprehensive control system (hub) that manages data transmission for multiple output ports, including converting USB signals for video (HDMI/VGA), network (LAN), and other USB peripherals.
    • Motivation to Combine: Petitioner asserted that Kwon’s disclosure of a hub was incomplete and non-functional as described. A person of ordinary skill in the art (POSITA), seeking to build Kwon's docking station, would combine its teachings with a reference like Kuo that provided a well-known, conventional control system for implementing the necessary many-to-one connections for video, network, and USB data.
    • Expectation of Success: The combination would yield predictable results. Kuo's control system was designed for the exact purpose required in Kwon's docking station—to manage multiple peripheral connections from a single host port—and its integration would be a routine matter for a POSITA.

Ground 2: Obviousness over O'Shea and Kuo - Claims 1-6 and 13-17 are obvious over O'Shea in view of Kuo.

  • Prior Art Relied Upon: O'Shea (Patent 7,503,808) and Kuo (Application # 2018/0165053).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that O'Shea disclosed a port extension device with a plurality of input ports (e.g., USB ports 28 and 30) that connect to a laptop and a USB hub (56) that expands connectivity to multiple output ports. This combination taught the core elements of claim 1. However, O'Shea’s video technology was outdated (DVI/VGA) and it omitted details on the electronic coupling of its ports. Kuo was argued to provide the necessary modernization by disclosing a control system with contemporary video outputs (HDMI) and explicitly teaching the use of a circuit board to interconnect ports.
    • Motivation to Combine: A POSITA in 2017 would be motivated to update O'Shea's decade-old design to be compatible with modern laptops and displays. O'Shea’s docking station lacked modern video ports like HDMI and dual-monitor support, which were common by the time of the ’429 patent. Kuo provided a clear roadmap for replacing O'Shea's obsolete DVI/VGA channel and extra USB ports with modern HDMI functionality.
    • Expectation of Success: Incorporating Kuo's video processing functionality into O'Shea's hub was a predictable application of a known technique to a known device. The result would be an updated, commercially relevant docking station, achieved through routine engineering.

  • Additional Grounds: Petitioner asserted two additional obviousness grounds that added Chang (Application # 2012/0003852) to the Kwon/Kuo and O'Shea/Kuo combinations. Petitioner argued Chang was relevant for its explicit disclosure of a multi-interface connector built on a single, self-contained circuit board. A POSITA would have been motivated to incorporate Chang's design to improve the durability, pin-alignment, and manufacturability of the main input ports in the Kwon and O'Shea devices.

4. Key Claim Construction Positions

  • Term: "A main port module for connecting to an end-user device, the main port module having first and second port units"
  • Petitioner's Proposed Construction: A distinct, self-contained component, separate from other modules, that contains the first and second port units.
  • Argument: Petitioner argued this construction was supported by the claim language, which recited multiple distinct modules (main port, data, video, etc.), and the specification's figures, which depict the main port module as a separate component. Petitioner further asserted that this construction was consistent with arguments made during prosecution to overcome prior art, where the applicant distinguished the invention by noting the "first and second port units are contained in the main port module."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. The co-pending district court litigation was in its early stages, with no trial date set and no claim construction ruling issued. Petitioner contended that none of the asserted prior art was considered during the original prosecution. Crucially, Petitioner stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds or any grounds that it reasonably could have raised in the IPR in the parallel district court litigation, thereby avoiding duplicative efforts and potential for conflicting decisions.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 and 13-17 of the ’429 patent as unpatentable.