PTAB

IPR2024-00558

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 ’037 patent discloses a system for connecting a dual-role USB product (which can act as a host or a device) to an upstream host, such as a vehicle's infotainment system. The invention adds a host-to-host bridge and a routing switch to a traditional USB hub, allowing communications to be routed either through the bridge for host-to-host connections or around the bridge for standard host-to-device connections, depending on the downstream product's operating mode.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang in view of Chang II - Claims 1, 3, 5, and 11-17 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 Chang taught a USB hub with separate, dedicated downstream ports for host-to-host and host-to-device connections. The host-to-host connection utilized a bridge integrated with the hub. Chang II taught a data transmission bridge device that supported a single "dual-role" port capable of connecting to either a host or a slave device. Chang II also disclosed a detection unit to determine the connected device's mode and a bypass circuit to automatically switch the signal path—either through a bridge for host-to-host transfer or bypassing the bridge for host-to-device transfer. Petitioner asserted that combining these teachings rendered the claims obvious by modifying Chang’s hub to replace the dedicated ports with a dual-role port and a routing switch as taught by Chang II.
    • Motivation to Combine: A POSITA would combine these references to address the market trend of dual-role consumer products, such as smartphones. Modifying Chang's hub with Chang II's dual-role port and automatic switching would create a more versatile, cost-effective, and user-friendly product, particularly in an automotive context where simplicity is critical. This modification would eliminate the need for users to select the correct physical port based on their device's operating mode.
    • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success. The proposed modification involved combining well-known components (dual-role ports, detection circuits, switches) using established principles to achieve the predictable result of a more flexible USB hub.

Ground 2: Obviousness over Chang, Chang II, and Chutorash - Claims 1, 3, 5, and 11-17 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 built upon the combination in Ground 1, with the addition of Chutorash to explicitly situate the invention within a vehicle. Petitioner argued Chutorash disclosed a vehicle infotainment system that functions as an "embedded host" and uses USB hubs to connect numerous portable electronic devices. Chutorash thus provided express support for the "vehicle," "embedded USB Host system," and "infotainment system" limitations found in the challenged claims.
    • Motivation to Combine: The motivation was to implement the improved, dual-role USB hub from Ground 1 into the specific automotive environment taught by Chutorash. Given that Chutorash identified a need for improved connectivity in vehicles and USB hubs were common in automotive systems, a POSITA would have been motivated to use the more advanced hub design of the primary combination to solve the problem articulated in Chutorash.
    • Expectation of Success: The expectation of success remained high, as this ground merely involved applying the predictable hub combination from Ground 1 into a well-known and suitable environment (a vehicle infotainment system) for which it was designed.

4. Key Claim Construction Positions

  • "a USB Hub having a plurality of USB Ports" (Claim 1): Petitioner argued in parallel district court litigation that this term, in context, is indefinite. For the purpose of this IPR, however, Petitioner adopted the Patent Owner's proposed construction that a hub "has" the ports if it is merely "interconnected to" them, even if the ports are not structurally part of the hub. This broader construction was critical to Petitioner's obviousness arguments.
  • "embedded USB Host": The parties stipulated in the district court action that this term means a "USB host physically embedded in a vehicle." Petitioner applied this construction in its petition.

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 the parallel district court litigation the same grounds, or any grounds that could have reasonably been raised in the petition.
  • §325(d) (Same or Substantially Same Art): Petitioner contended that denial under §325(d) was unwarranted because the core prior art references, Chang and Chang II, were never submitted to, cited by, or considered by the Examiner during the prosecution of the ’037 patent. Petitioner asserted that its proposed combination presents arguments and art that are materially different from what the Examiner reviewed, and therefore the petition is not cumulative.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3, 5, and 11-17 of Patent 9,460,037 as unpatentable.