Vicor Corp v. Delta Electronics Inc

1. Case Identification

• Case #: IPR2024-00705
• Patent #: 9,819,263
• Filed: March 25, 2024
• Petitioner(s): Vicor Corporation
• Patent Owner(s): Jian-Hong Zeng, et al.
• Challenged Claims: 1-6

2. Patent Overview

• Title: POWER CONVERTER AND METHOD FOR MANUFACTURING THE SAME
• Brief Description: The ’263 patent describes a power converter featuring a carrier, such as a printed circuit board (PCB), with electronic components disposed on its upper and lower surfaces. A key aspect is a "first connection part" that connects components, where the carrier is specifically positioned between one-third and two-thirds of the total height of the power converter.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-6 by Vinciarelli-664

• Prior Art Relied Upon: Vinciarelli-664 (Patent 10,264,664).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Vinciarelli-664, which discloses manufacturing power modules from a panel, teaches every limitation of claims 1-6. Vinciarelli-664 allegedly describes a power converter module with a central PCB carrier, components mounted on both sides covered by encapsulant, and external contacts. The carrier’s position in the figures is asserted to be within the claimed 1/3 to 2/3 height range. For the limitation "fabricated by mechanical support," Petitioner asserted this argument under two alternative constructions: (1) it is a product-by-process limitation entitled to no patentable weight, or (2) it is met under the Patent Owner’s apparent construction from co-pending litigation, where plated contacts are supported by an underlying electronic component like an exposed transformer core.

Ground 2: Obviousness of Claims 1-6 over Vinciarelli-664 in view of its incorporated references and Zeng-014

• Prior Art Relied Upon: Vinciarelli-664 (Patent 10,264,664), Vinciarelli-269 (Patent 8,427,269), Vinciarelli-844 (Patent 7,361,844), Vinciarelli-747 (Patent 8,966,747), and Zeng-014 (Application # 2009/0175014).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that the combination of Vinciarelli-664 and the patents it incorporates by reference (Vinciarelli-269, Vinciarelli-844, and Vinciarelli-747) discloses all structural elements of the claimed power converter. Zeng-014 was introduced to explicitly teach the process limitation of fabricating a connection part by curving a conductive layer or lead frame against an electronic component, as claimed.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) reading Vinciarelli-664 would be motivated to consult the incorporated references for details on internal structures like transformers and component layouts. A POSITA would combine Zeng-014 because it provides a well-known, alternative method for adding external contacts to a power module. This modification would be desirable for manufacturing facilities not equipped to perform the specific panel-molding and contact-forming process of Vinciarelli-664, making the manufacturing process less complex.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because applying the lead frame wrapping technique from Zeng-014 to the module of Vinciarelli-664 is a simple mechanical modification using known principles to achieve a functional power converter.

Ground 3: Obviousness of Claims 1-6 over Vinciarelli-218 in view of Zeng-014

• Prior Art Relied Upon: Vinciarelli-218 (Application # 2014/0355218) and Zeng-014 (Application # 2009/0175014).

• Core Argument for this Ground:

  • Prior Art Mapping: Vinciarelli-218 discloses panel-molded electronic assemblies with components symmetrically distributed on both sides of a PCB. However, it relies on separate through-hole or surface-mount adapters for external connections. Zeng-014 teaches a compact connection method where a conductive lead frame is wrapped around a component to create integrated surface-mount pads. The combination allegedly provides the complete structure of the challenged claims.
  • Motivation to Combine: A POSITA would combine these references to improve the design of Vinciarelli-218. The motivation would be to replace the separate, space-consuming adapters of Vinciarelli-218 with the integrated, flush-mounting connection part of Zeng-014. This would achieve the well-understood goals of increasing power density and reducing the module's footprint on a customer motherboard, both of which are explicitly stated as desirable in the references.
  • Expectation of Success: Success would be expected because the combination involves substituting one known type of electrical interconnect (an adapter) with another (a wrapped lead frame) to achieve the predictable benefits of improved form factor and simplified assembly.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 1-6 over Vinciarelli-664 and its incorporated patents alone (Ground 1B), and over Zeng-014 in view of Vinciarelli-218 (Ground 3), which relied on similar technical principles and motivations.

4. Key Claim Construction Positions

• "is fabricated by mechanical support of the first electronic component" (claim 1): Petitioner advanced two primary positions on this term.
  • Product-by-Process: Petitioner argued this is a product-by-process limitation that describes the structure by its method of fabrication. As such, it should be given no patentable weight in an anticipation or obviousness analysis, and the analysis should focus only on the final structure of the "connection part."
  • Alternative Construction: If the term is not treated as a product-by-process limitation, Petitioner adopted the Patent Owner's "Apparent Construction" from related litigation. Under this construction, the term is met when a conductive layer (the connection part) is plated over and supported by an underlying component (e.g., an exposed transformer core).

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a) (Fintiv).
  • §325(d) (Advanced Bionics): Petitioner asserted that the primary prior art references, Vinciarelli-664 and Vinciarelli-218, are new and non-cumulative as they were never cited or substantively considered by the examiner during prosecution of the ’263 patent.
  • §314(a) (Fintiv): Petitioner argued the Fintiv factors weigh against denial because the co-pending district court case is in its early stages with no trial date set, and the median time to trial in that venue is over two years. Petitioner further stipulated that, if review is instituted, it will not pursue the same invalidity grounds in the district court litigation.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of the ’263 patent as unpatentable.