PTAB

IPR2024-00494

Microchip Technology Inc v. Aptiv Technologies AG

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Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs
  • Brief Description: The ’037 patent discloses a system for connecting dual-role USB consumer products (e.g., smartphones) to an embedded host in a vehicle. The system uses a USB hub augmented with a host-to-host bridge and a routing switch, allowing a downstream product to connect as either a host (routing through the bridge) or a device (bypassing the bridge).

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4, and 6-10 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 Chang taught a USB hub with an integrated bridge to facilitate host-to-host communications, but it used separate, dedicated ports for host and device connections. Chang II, in contrast, taught a bridge device for a single, dual-role port that could automatically detect whether a connected product was a host or a device. Based on this detection, Chang II’s device would switch the signal path to either pass through a bridge (for host-to-host mode) or bypass the bridge (for host-to-device mode). Petitioner contended that implementing Chang II’s detection and switching functionality into Chang’s hub-plus-bridge architecture would arrive at the claimed invention.
    • Motivation to Combine: A POSITA would combine these references to address the market need for supporting dual-role products like smartphones. The combination would create a more user-friendly system by replacing Chang's separate, dedicated ports with a single dual-role port. This modification would reduce costs, lower complexity, and avoid consumer confusion, particularly in an automotive setting where simplicity is critical.
    • Expectation of Success: Petitioner asserted a high expectation of success, as dual-role ports, host/device detection, and signal switching were well-understood concepts using commercially available components. Chang II was argued to provide a clear roadmap for adding dual-role capability and automatic switching to the existing hub and bridge architecture disclosed in Chang.

Ground 2: Claims 1-2, 4, and 6-10 are obvious over Chang in view of Chang II, Chutorash, and POSITA Knowledge.

  • Prior Art Relied Upon: Chang (Application # 2006/0206650), Chang II (Application # 2009/0268743), and Chutorash (Patent 8,447,598).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted the same fundamental combination of Chang and Chang II as in Ground 1. The Chutorash reference was added to explicitly provide the automotive context for the invention. Chutorash disclosed a vehicle infotainment system that uses USB hubs to connect an embedded host to numerous portable consumer devices (e.g., mobile phones, media players). Petitioner argued that Chutorash established the environment and need for the improved USB hub taught by the combination of Chang and Chang II.
    • Motivation to Combine: The motivation for this combination was to apply the improved hub from Ground 1 to the specific, well-known application of an automotive infotainment system as taught by Chutorash. Chutorash highlighted a need for better connectivity solutions in vehicles, which the combination of Chang and Chang II directly addressed. This would satisfy the claim limitations requiring the system be "disposed within a vehicle" and include an "embedded USB Host."
    • Expectation of Success: The expectation of success remained high, as this ground merely involved implementing the known hub technology from the primary combination into the conventional automotive environment described by Chutorash.

4. Key Claim Construction Positions

  • Petitioner argued that for the purposes of this inter partes review (IPR), it would adopt the Patent Owner's proposed constructions from a parallel district court case.
  • "a USB Hub having a plurality of USB Ports": In the district court, Petitioner contended this term renders claim 1 indefinite. However, for this IPR, Petitioner adopted the Patent Owner's interpretation that "having" means the hub is "interconnected to" the ports, even if the ports are not physically part of the hub integrated circuit. This construction was central to Petitioner's ability to map the prior art.
  • "embedded [USB] Host": The parties stipulated in the district court action that this term means a "USB host physically embedded in a vehicle," and Petitioner applied this construction.

5. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv): Petitioner argued discretionary denial is not warranted because it provided a stipulation consistent with the Sotera Wireless framework. Petitioner stipulated that if the IPR is instituted, it will not pursue in a parallel district court proceeding the same grounds or any grounds that could have reasonably been raised in this petition.
  • §325(d) (Same or Substantially Same Art or Arguments): Petitioner argued denial under §325(d) would be improper because the core prior art references, Chang and Chang II, were neither submitted to nor considered by the examiner during the prosecution of the ’037 patent. Petitioner asserted that the petition raises new arguments and art combinations that the Patent Office has not previously evaluated, and that the examiner misapprehended the teachings of art that was of record.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-2, 4, and 6-10 of Patent 9,460,037 as unpatentable.