PTAB

IPR2024-00228

Microchip Technology Inc v. Aptiv Technologies AG

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1. Case Identification

2. Patent Overview

  • Title: Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs
  • Brief Description: The ’420 patent describes a USB hub module designed to solve the problem of connecting a downstream dual-role USB product (e.g., a smartphone) that can operate in either host or device mode. The purported solution involves adding a host-to-host bridge and a routing switch to a conventional USB hub architecture.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang in view of Chang II - Claims 1-12 and 15-17 are obvious over Chang in view of Chang II and POSITA knowledge.

  • Prior Art Relied Upon: Chang (Application # 2006/0206650) and Chang II (Application # 2009/0268743).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Chang, disclosed the core architecture of the claimed invention: a USB hub that includes an integrated host-to-host bridge to enable communication between an upstream host and a downstream host. However, Chang accomplished this using dedicated downstream ports—separate ports for devices and a separate port for a host. The secondary reference, Chang II, was cited for its explicit teaching of a system for dual-role USB products. Chang II disclosed a "detection unit" to determine if a connected product was in host or device mode and a switching mechanism to route the connection through either a "bridge transmission path" (for host-to-host communication) or a "bypass path" (for standard host-to-device communication). Petitioner contended that applying the mode-detection and switching teachings of Chang II to the hub-plus-bridge architecture of Chang renders the challenged claims obvious.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would have been motivated to modify Chang’s design to incorporate the teachings of Chang II. By the ’420 patent’s priority date, dual-role consumer products like smartphones were common, making Chang's use of dedicated host and device ports inconvenient, confusing for users, and costly. A POSITA would have sought to replace these dedicated ports with a single dual-role port. Chang II addressed this exact problem by teaching how to detect a product's operating mode and switch the data path accordingly. Combining the references was presented as a predictable solution to a known market need, resulting in a more user-friendly and efficient design.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success. The components and techniques for implementing dual-role ports, detecting host/device status, and switching signal paths (e.g., using multiplexers or crossbar switches) were well-known, routine, and involved commercially available components. Chang II provided a clear functional roadmap for adapting Chang’s architecture to support the widespread use of dual-role devices.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §314(a), stipulating that if the inter partes review (IPR) is instituted, it will not pursue the same invalidity grounds, or any that could have been reasonably raised, in the parallel district court litigation.
  • Petitioner also argued against denial under §325(d), asserting that the core prior art references, Chang and Chang II, were not submitted to or considered by the Examiner during the prosecution of the ’420 patent. Therefore, the petition raised new arguments and art that were not previously before the Patent Office, and the Examiner never had the opportunity to evaluate the specific combination and modification theory presented in the petition.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-12 and 15-17 of the ’420 patent as unpatentable.