US Conec Ltd v. Senko Advanced Components Inc

1. Case Identification

• Case #: IPR2024-00117
• Patent #: 11,333,836
• Filed: December 30, 2023
• Petitioner(s): US Conec Ltd.
• Patent Owner(s): Senko Advanced Components, Inc.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Adapter for Mating with Optical Fiber Connectors
• Brief Description: The ’836 patent discloses an adapter for joining optical fiber connectors. The invention centers on an adapter housing with multiple channels for receiving connectors, distinguished by the inclusion of first and second longitudinal ribs on the inner surfaces of the housing, located between the channels.

3. Grounds for Unpatentability

Ground 1: Anticipation over MDC Specification - Claims 1-9 and 13 are anticipated by the MDC Specification.

• Prior Art Relied Upon: MDC Receptacle Interface Specification (“MDC”), a commercial whitepaper published in 2020.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner’s central argument was that the ’836 patent is not entitled to its claimed 2017 priority date. It was asserted that none of the applications in the priority chain provide adequate written description under 35 U.S.C. §112 for the key "longitudinal rib" limitation, which was the sole basis for allowance. Because the priority claim is allegedly defective, the patent’s effective filing date is July 14, 2021, making the 2020 MDC specification available as prior art. Petitioner then argued that the MDC specification, which defines an interface for optical connectors, discloses every limitation of the challenged claims, including an outer housing, a plurality of channels, and first and second longitudinal ribs located between the channels as claimed.

Ground 2: Obviousness over Nguyen and Lee - Claims 3-5, 8, and 10-12 are obvious over Nguyen in view of Lee.

• Prior Art Relied Upon: Nguyen (Application # 2016/0161680) and Lee (WO 2017/127208).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Nguyen discloses the base adapter of claims 1 and 2, including an outer housing, multiple channels, and longitudinal ribs. For limitations not expressly found in Nguyen, Lee was asserted to supply the teachings. Specifically, Lee was argued to disclose a connector with a sliding remote release mechanism for unlatching (claims 3-5), a transverse wall with cylindrical sockets for receiving ferrules (claims 10-12), and the concept of varying rib height (claim 8).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Nguyen and Lee to improve the functionality of Nguyen’s adapter for use in high-density environments. Petitioner argued that incorporating Lee’s remote-release handle into Nguyen’s connector would make it easier to maintain and scale. The combination was presented as a predictable substitution of one known connector type for another to gain a known benefit.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because swapping connector features, such as release mechanisms, was a well-known design choice with predictable outcomes. The modification involved replacing an interior component without changing the fundamental principle of operation.

Ground 3: Obviousness over Prosecution History Art - Claims 1-13 are obvious over Kiani in view of Szilagyi and Tsuzaki.

• Prior Art Relied Upon: Kiani (Application # 2005/0135752), Szilagyi (Patent 6,764,222), and Tsuzaki (WO 2013/100892).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner leveraged the prosecution history, noting the Examiner found that Kiani disclosed every limitation of the claims except for the "longitudinal ribs." Petitioner argued Szilagyi, which discloses a similar adapter, explicitly teaches the use of such longitudinal "guide ribs" to separate channels and improve alignment. To the extent the latch openings in Kiani were deemed insufficient (i.e., not passing completely through the adapter wall), Tsuzaki was introduced to teach such through-wall latch openings.
  • Motivation to Combine: A POSITA would combine Kiani and Szilagyi to add Szilagyi's guide ribs to Kiani's adapter to improve connector alignment precision, directly furthering Kiani's stated goal of an easy-to-use interconnection system. A POSITA would further incorporate Tsuzaki’s latch openings to simplify Kiani's latching mechanism, making engagement visible and more user-friendly. Both modifications were framed as simple additions of well-known components to achieve predictable improvements.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved adding a known structural component (ribs from Szilagyi) and modifying another known component (latch openings from Tsuzaki) using conventional manufacturing methods to achieve their known functions.

• Additional Grounds: Petitioner asserted additional anticipation challenges based on Nguyen and Nakagawa (Japanese Publication No. 2004/354693), and an obviousness challenge based on Nakagawa in view of deJong (Application # 2011/0091159).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not discretionarily deny the petition. Regarding §325(d), it was contended that the primary obviousness ground based on Kiani presents that reference in a new light by combining it with Szilagyi and Tsuzaki, which were not considered during prosecution and directly address the longitudinal rib limitation that was the basis for allowance. Regarding Fintiv, Petitioner noted that the parallel district court litigation was stayed and stipulated that, if the inter partes review (IPR) is instituted, it would not pursue in court any ground that was raised or reasonably could have been raised in the petition.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-13 of Patent 11,333,836 as unpatentable.