US Conec Ltd v. Senko Advanced Components Inc

1. Case Identification

• Case #: IPR2024-00122
• Patent #: 11,061,190
• Filed: January 4, 2024
• Petitioner(s): US Conec Ltd.
• Patent Owner(s): Senko Advanced Components, Inc.
• Challenged Claims: 1-3, 6-16, and 19-20

2. Patent Overview

• Title: Optical Fiber Connector
• Brief Description: The ’190 patent discloses an optical fiber connector with a multi-purpose, rotatable boot assembly. The assembly allows for changing the polarity of the connector, for instance by rotating the boot to reverse the transmit and receive positions of the optical fibers.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6-16, and 19 are obvious over Nakagawa in view of Raven.

• Prior Art Relied Upon: Nakagawa (Application # 2011/0299814) and Raven (Patent 9,557,495).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nakagawa taught most elements of the challenged claims, including a duplex optical connector with a boot that rotates relative to a holder to reverse polarity. However, Nakagawa disclosed a front body comprising two separate optical connectors, one for each ferrule. Raven, which was well-known in the art, disclosed a duplex fiber optic connector with a unitary front body (a "leading end unit") configured to hold two ferrules. Petitioner asserted that combining Raven’s unitary front body with Nakagawa’s connector would arrive at the claimed invention. Key limitations of independent claim 1, such as the rotatable boot assembly with an elongate arm for setting polarity, were allegedly disclosed by Nakagawa.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Nakagawa and Raven to improve Nakagawa's design. Petitioner pointed out that Raven itself identified shortcomings in prior art connectors like Nakagawa, noting they require "relatively precise and robust engineering to ensure that the fibre optic connectors retain their axial alignment." Raven's unitary leading end unit was presented as a solution to this problem, providing a clear reason to substitute it into Nakagawa's design to create a more robust and simplified connector.
  • Expectation of Success: A POSITA would have an expectation of success because the combination was a simple substitution of one known element (Nakagawa's separate front bodies) for another known element (Raven's unitary front body) to obtain the predictable result of a more robust duplex connector.

Ground 2: Claims 1-3, 6-11, 13-16, and 19 are obvious over Veatch in view of Connelly.

• Prior Art Relied Upon: Veatch (Patent 9,684,130) and Connelly (Patent 6,575,640).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Veatch disclosed a polarity-reversible, push-pull duplex fiber connector that included a rotatable boot, a cover, and a latch forming a boot assembly. The latch featured resilient arms (the claimed "elongate arm") that could be repositioned to change polarity. However, Veatch’s design comprised two separate connector bodies and a fiber holder. Connelly disclosed a duplex fiber optic plug with a single, unitary housing that holds two ferrules. Petitioner argued that replacing Veatch’s multi-part front-end assembly (two connector bodies and a fiber holder) with Connelly’s single unitary housing would result in the claimed invention.
  • Motivation to Combine: A POSITA would combine Veatch and Connelly to achieve a higher-density connector with fewer components. Petitioner noted that a stated goal of Veatch was to "enable higher density placement of mating adapters." Replacing Veatch’s spaced-apart, multi-component front body with Connelly’s more compact, unitary housing was a straightforward way to achieve this goal while maintaining the polarity-reversing functionality.
  • Expectation of Success: Success would be expected because the modification was a simple substitution of one known housing type (Veatch's multi-part) for another known, functionally similar housing type (Connelly's unitary) to obtain the predictable benefits of component reduction and higher density.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claim 20 based on the primary combinations of Nakagawa/Raven and Veatch/Connelly, each in further view of Cline (Patent 8,662,760). Cline was used to teach a tapered geometry for the back body passageway, which Petitioner argued was a known design choice to improve wiring workability.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that although Nakagawa and Veatch were considered during prosecution, the Examiner made material errors. Specifically, the Examiner's reasons for allowance relied on features like "projections and keys" that were not actually present in the final patented claims.
• Petitioner also argued against discretionary denial under Fintiv. It was noted that the parallel district court litigation had been stayed, and Petitioner stipulated that, if the IPR is instituted, it would not pursue the same grounds or any grounds that could have been reasonably raised in the petition in the district court.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 6-16, and 19-20 of the ’190 patent as unpatentable.