Vicor Corp v. Delta Electronics Inc

1. Case Identification

• Case #: IPR2024-00706
• Patent #: 10,877,534
• Filed: March 25, 2024
• Petitioner(s): Vicor Corporation
• Patent Owner(s): Jian-Hong Zeng
• Challenged Claims: 1-8 and 10-12

2. Patent Overview

• Title: POWER SUPPLY APPARATUS
• Brief Description: The ’534 patent discloses a power supply apparatus featuring a central bearing plate, insulation material formed on its top and bottom surfaces, and a plurality of pins. These pins are located on the lateral sides of the apparatus and include two terminals with Surface Mount Device (SMD) pads extending to the upper and lower surfaces of the insulation material for external connection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Vinciarelli-218 and Zeng-014 - Claims 1-8 and 10-12 are obvious 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: Petitioner argued that Vinciarelli-218 discloses a panel-molded power converter with a central printed circuit board (PCB) serving as the claimed "bearing plate" and encapsulant layers on opposite sides serving as the "insulation material." Vinciarelli-218 uses various adapters for external connections. Petitioner asserted that all elements of claim 1 are met by this combination except for the specific pin structure. It contended that Zeng-014 supplies the missing element: a pin scheme with conductors that provide SMD pads on both the top and bottom surfaces of a component, which would replace the separate adapters taught by Vinciarelli-218. For dependent claims, Petitioner argued the combination also teaches pads on the bearing plate (claim 2), recesses for the pins (claim 4), and a cuboid body structure (claim 10).
  • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine these references to achieve common goals. Both references sought to increase power density and reduce the footprint of power converters. A POSITA would incorporate Zeng-014's pin design into Vinciarelli-218’s module to save board space by enabling component stacking and to achieve a flush surface mount, a feature explicitly identified as desirable in Vinciarelli-218.
  • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because the combination involves applying a known technique (Zeng-014's pin conductors) to a known system (Vinciarelli-218's power module) in the same field to achieve predictable results.

Ground 2: Anticipation by Zeng-014 - Claims 1-8 and 10-12 are anticipated by Zeng-014.

• Prior Art Relied Upon: Zeng-014 (Application # 2009/0175014).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Zeng-014's disclosed DC-to-DC converter embodiments (e.g., converter 110) teach every element of the challenged claims. The magnetic substrate (111) was identified as the "bearing plate." Petitioner asserted that an insulation layer on its opposite surfaces is expressly taught or inherently present to prevent short circuits. The "plurality of pins" (117, 118) are located on the lateral sides and form conductive layers on the top and bottom surfaces, which constitute the claimed "two terminals" with "two SMD pads." Furthermore, Petitioner argued that the semi-circular through-holes formed to create the pins are the "recesses" recited in claim 4, and the overall structure forms the "cuboid body" of claim 10.

Ground 3: Anticipation by Park - Claims 1-3 and 5-8 are anticipated by Park.

• Prior Art Relied Upon: Park (Application # 2015/0116891).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Park’s disclosure of a composite power supply component anticipates the claims. The inductor module (120) or its internal insulating substrate (123) was identified as the "bearing plate." The non-conductive ferrite magnet (122) that fills the module constitutes the "insulation material" on the top and bottom surfaces of the bearing plate. Petitioner argued that Park's wrap-around input and output electrodes (151, 152a) are the claimed "plurality of pins," as they are located on lateral sides and have top and bottom surfaces that function as "two terminals" with "two SMD pads" for mounting the component to a PCB and for stacking another component on top.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that claims 1-8 and 10-12 are obvious over Zeng-014 alone or in view of Jun (Application # 2005/0098874); claims 4 and 10-12 are obvious over Park in view of Zeng-014; and claims 1-8 and 10-12 are obvious over Vinciarelli-218 in view of Park.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is unwarranted because the Patent Owner did not cite any of the asserted prior art references during the original prosecution.
• Petitioner further argued that discretionary denial under §314(a) based on Fintiv factors is inappropriate. It contended that the parallel district court litigation is in its infancy, with no trial date set and minimal investment by the court or parties. Petitioner also stipulated that, if IPR is instituted, it will not pursue the same invalidity grounds in the district court litigation, thereby minimizing overlap.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 10-12 of Patent 10,877,534 as unpatentable.