PTAB

PGR2024-00011

Microchip Technology Inc v. Aptiv Technologies AG

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: USB Hub with Dual Role Downstream Port
  • Brief Description: The ’643 patent describes a Universal Serial Bus (USB) hub module designed to manage connections with a downstream "dual-role" consumer product, such as a smartphone, that can operate in either host or device mode. The system uses a routing switch and a host-to-host bridge to direct communication paths based on the detected operating mode of the connected device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang and Chang II - Claims 1-15 are obvious over Chang in view of Chang II and general POSITA knowledge.

  • Prior Art Relied Upon: Chang (Application # 2006/0206650), Chang II (Application # 2009/0268743).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chang disclosed a USB hub with a host-to-host bridge and dedicated, separate downstream ports for connecting to either a host or a device. This system, however, lacked a single port that could handle a dual-role device. Chang II taught a data transmission bridge device that supported dual-role products, featuring a "detection unit" to determine if a connected device was in host or device mode and a "bypass circuit" to switch the data path accordingly. For a host-to-host connection, data was routed through a bridge; for a host-to-device connection, data bypassed the bridge.
    • Motivation to Combine: A POSITA would combine Chang’s hub architecture with Chang II’s dual-role port and switching logic to create a more versatile and cost-effective product. With the proliferation of dual-role devices like smartphones, combining Chang's separate host and device ports into a single dual-role port as taught by Chang II would eliminate user confusion, reduce component costs, and address the market demand for streamlined connectivity, a goal explicitly recognized in the art (e.g., Castleberry, Patent 8,683,085).
    • Expectation of Success: A POSITA would have a high expectation of success, as the components for detecting device mode and switching data paths were well-known, commercially available, and their integration was straightforward. Chang II provided a clear functional roadmap for implementing dual-role support in a USB bridge context, which was directly analogous to modifying Chang’s hub.

Ground 2: Obviousness over Chang, Chang II, and Chutorash - Claims 2, 7, and 13 are obvious over Chang in view of Chang II, Chutorash, and general 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 builds upon the combination in Ground 1. Petitioner added Chutorash to explicitly teach the limitation recited in dependent claims 2, 7, and 13: embedding the upstream USB host within a vehicle infotainment system. Chutorash disclosed a vehicle control system with an embedded host computer and multiple USB interfaces for connecting portable devices, a common application for USB technology.
    • Motivation to Combine: The motivation was to apply the improved, dual-role capable USB hub from Ground 1 to the known and widespread automotive infotainment environment taught by Chutorash. Given that both the ’643 patent and prior art recognized the trend of using smartphones as hosts in vehicles, it was a simple and predictable design choice to implement the versatile hub of Ground 1 in the automotive context shown by Chutorash.

  • Additional Grounds: Petitioner asserted multiple grounds of indefiniteness under 35 U.S.C. §112(b) for terms like "routing logic circuit" and "different components and functionality," argued that "signal detection circuit" is an indefinite means-plus-function term under §112(f), and asserted lack of written description under §112(a).

4. Key Claim Construction Positions

  • "the USB hub and USB bridge have different components and functionality" (Claims 1, 5, 10): Petitioner argued this phrase is indefinite under §112(b). The specification provides no guidance on what constitutes "different components" (e.g., different types of transistors vs. physically distinct but identical components) or at what level of detail the "functionality" must differ, rendering the claim scope uncertain.
  • "routing logic circuit" (Claims 1, 5, 10): Petitioner contended this is an indefinite coined term without a well-understood meaning. The specification fails to define the term or provide sufficient structural detail to inform a POSITA of its boundaries, especially in distinguishing it from a "USB routing switch," which is used in related patents and dependent claims.
  • "signal detection circuit" (Claims 1-9): Petitioner argued this is a means-plus-function term under §112(f) that is indefinite because the specification fails to disclose any corresponding structure for performing the claimed function of determining the host/device mode of a connected product.

5. Arguments Regarding Discretionary Denial

  • §324(a) (Parallel Litigation): Petitioner argued against discretionary denial by stipulating that, if the Board institutes this post-grant review (PGR), it will not pursue in a parallel district court proceeding the same grounds or any grounds that could have reasonably been raised in the petition.
  • §325(d) (Same or Substantially Same Art): Petitioner argued that denial is unwarranted because the Examiner erred by failing to properly consider the combination of Chang and Chang II. Although the references were before the Examiner, there is no evidence that the Examiner considered the specific combination and motivation argued in the petition—modifying Chang's dedicated-port hub with Chang II's dual-role switching logic. Petitioner asserted this represents a misapprehension of the prior art's teachings and that the petition presents important new arguments and evidence not previously considered.

6. Relief Requested

  • Petitioner requested institution of a PGR and cancellation of claims 1-15 of the ’643 patent as unpatentable.