PTAB

IPR2024-00495

Microchip Technology Inc v. Aptiv Technologies AG

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs
  • Brief Description: The ’420 patent describes a system that adds a host-to-host bridge and a routing switch to a traditional USB hub. This architecture allows a dual-role consumer device, such as a smartphone, to connect to an upstream host (e.g., a vehicle's head unit) and operate in either a host mode (communicating through the bridge) or a device mode (bypassing the bridge).

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang and Chang II - Claims 13-14 and 18-20 are obvious over Chang in view of Chang II and the knowledge of a POSITA.

  • Prior Art Relied Upon: Chang (Application # 2006/0206650) and Chang II (Application # 2009/0268743).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Chang taught a USB hub with an integrated bridge (bridge 52) to enable host-to-host communications between an upstream host and a downstream host. However, Chang's system used dedicated downstream ports for either host connections or device connections. Petitioner argued that Chang II addressed this limitation by teaching a data transmission bridge device that supported dual-role products through a single port. Chang II explicitly disclosed a "detection unit" to determine if a connected product was a host or a device, and a switching mechanism to route communications along either a "bridge transmission path" for host-to-host connections or a "bypass path" for host-to-device connections. The combination of these references, therefore, taught all key elements of the challenged claims.
    • Motivation to Combine: A POSITA would combine Chang and Chang II to improve Chang's design by replacing its dedicated ports with a more flexible dual-role port. By the ’420 patent's priority date, dual-role devices like smartphones were common, making dedicated ports inconvenient and costly, especially in an automotive context where user simplicity is paramount. Chang II provided a known, elegant solution to support these devices. Applying Chang II's teachings would allow a single port in Chang's hub to automatically handle a device in either host or device mode, fulfilling Chang's goal of easily connecting two computers (one being the smartphone) while eliminating user confusion and reducing component overhead.
    • Expectation of Success: A POSITA would have a high expectation of success. The proposed modification involved combining well-understood USB concepts. The components required, such as dual-role ports, detection circuitry, and routing switches (e.g., multiplexers or crossbars), were commercially available and their integration was a routine design task for someone skilled in the art of USB systems.

4. Key Claim Construction Positions

  • Petitioner argued that this petition is based on the claim constructions urged by Patent Owner in a related district court litigation. This approach is taken to address Patent Owner's attempt to rewrite certain claim terms to avoid indefiniteness or cover accused products.
  • Key disputed terms include:
    • "USB hub" vs. "USB host": In claim 13, Patent Owner proposed construing "connecting the consumer device... to the USB hub" as "connecting the consumer device... to the USB host."
    • "including" vs. "interconnected to": In claims 18 and 19, Patent Owner proposed construing "a USB hub including a... port" as "a USB hub interconnected to a... port."
  • Petitioner asserted these changes significantly broaden the claims but presented its invalidity arguments under Patent Owner's proposed constructions to ensure the petition's relevance to the co-pending litigation.
  • For claim 20, Petitioner adopted the parties' stipulation in district court that a typographical error, "second communication path," should be read as "third communication path."

5. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv): Petitioner argued that discretionary denial is unwarranted and provided a Sotera stipulation, committing not to pursue in a parallel district court proceeding the same grounds, or any grounds that could have reasonably been raised in this petition, if the IPR is instituted.
  • §325(d) (Advanced Bionics): Petitioner contended denial is not warranted because the core prior art references, Chang and Chang II, were not submitted to or cited by the Examiner during the original prosecution of the ’420 patent. Therefore, the Examiner never considered the specific combination and arguments presented in the petition. Petitioner asserted that the arguments are not cumulative, as no prior art of record disclosed a host-to-host bridge within a USB hub combined with a dual-role port and bypass path as taught by the proposed combination.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 13-14 and 18-20 of Patent 9,619,420 as unpatentable.