PTAB

IPR2024-00496

Microchip Technology Inc v. Aptiv Technologies AG

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Flexible Mobile Device Connectivity to Automotive Systems with USB Hubs
  • Brief Description: The ’899 patent describes a USB hub system designed to handle connections from dual-role consumer devices, such as smartphones, which can operate in either a host or a device mode. The system uses a routing switch and a host-to-host bridge to automatically direct communications through the bridge for a host-to-host connection or bypass the bridge for a standard host-to-device connection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang in view of Chang II - Claims 1-6 are obvious over Chang in view of Chang II and general knowledge of a Person of Ordinary Skill in the Art (POSITA).

  • 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 disclosed the core components of a USB hub architecture featuring a host-to-host bridge. Specifically, Chang taught a hub with an upstream port for a host, multiple downstream ports for devices, and a dedicated downstream host port connected through a bridge (52) to enable host-to-host communications. However, Chang utilized separate, dedicated ports for host and device connections. Petitioner asserted that Chang II taught the missing elements: a single port capable of connecting to either a host or a device (a dual-role port), a detection unit (134) to determine the connected product's mode, and a switching mechanism to route signals along one of two paths. Chang II explicitly described a "bridge transmission path" for host-to-host connections and a "bypass path" for host-to-device connections, which functions as the claimed "routing switch."
    • Motivation to Combine: A POSITA would combine Chang's hub-and-bridge architecture with Chang II's dual-role port and automatic switching capabilities. The motivation stemmed from the increasing prevalence of dual-role consumer products like smartphones. Modifying Chang's design to use a single, dual-role port instead of multiple dedicated ports would offer significant user convenience, especially in an automotive context where simplicity is critical, and would reduce hardware costs and complexity. Chang II itself noted its invention functions "similar[ly] to the commonly known USB HUB function," directly suggesting its applicability. A POSITA would recognize that Chang II's method of detecting device type and switching between a bridge path and a bypass path was the logical solution to adapt Chang's hub for modern dual-role devices.
    • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success. The components required for the combination—such as dual-role interfaces, detection circuits, multiplexers, and crossbar switches—were well-known, commercially available, and understood as basic electronic building blocks. The combination involved applying the predictable switching solution from Chang II to the established hub architecture of Chang to achieve the desired, improved functionality.

4. Key Claim Construction Positions

  • "a USB hub having a plurality of USB Ports": Petitioner argued in a co-pending district court case that this term renders claim 1 indefinite. However, for the purpose of this IPR, Petitioner adopted the Patent Owner's proposed construction that "having" can mean "interconnected to." This construction allows the downstream consumer-facing ports to satisfy the limitation even if they are not physically part of the USB hub integrated circuit, which is critical for Petitioner's mapping of the prior art.
  • "USB host mode port": Petitioner agreed with the Patent Owner's position in the district court litigation that this phrase in claim 1 is a typographical error. For the IPR, Petitioner proceeded under the stipulated construction that this term should be read as "first USB port" to give the claim its intended meaning.

5. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv): Petitioner argued against discretionary denial by stipulating that, if the IPR is instituted, it will not pursue in a parallel district court proceeding the same invalidity grounds or any grounds that could have reasonably been raised in the petition. This stipulation is intended to satisfy the PTAB's guidance under the Sotera framework.
  • §325(d) (Same or Substantially Same Art or Arguments): Petitioner asserted that discretionary denial under §325(d) is unwarranted because the core prior art and arguments were not before the Examiner during the prosecution of the ’899 patent. Specifically, Chang II was never cited or considered by the Examiner. Therefore, the Examiner never evaluated an obviousness combination of Chang's hub architecture with Chang II's teachings on dual-role port detection and automatic path switching between a bridge and a bypass circuit. Petitioner maintained this presents a new and compelling unpatentability challenge.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 of the ’899 patent as unpatentable under 35 U.S.C. §103.