Trials@uspto.gov
`571-272-7822
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`Paper No. 63
`Entered: August 28, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, LLC1,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00861
`Patent 7,627,708 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`and
`DECISION DENYING PATENT OWNER’S MOTION TO EXCLUDE
`37 C.F.R. § 42.64
`
`
`
`
`1 Petitioner filed a notice of its name change from “Delphi Technologies,
`Inc.” to “Delphi Technologies, LLC.” Paper 53, 1–2.
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`IPR2017‐00861
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`Patent 7,627,708 B2
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`INTRODUCTION
`I.
`Delphi Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–25 (hereinafter the
`“challenged claims”) of U.S. Patent No. 7,627,708 B2 (Ex. 1001, “the ’708
`patent”) pursuant to 35 U.S.C. §§ 311–319. Microchip Technology Inc.
`(“Patent Owner”) filed a Patent Owner Preliminary Response (Paper 11,
`“Prelim. Resp.”). On August 29, 2017, based on the record before us at that
`time, we instituted an inter partes review of only claims 1–9 and 11–25.
`Paper 14 (“Decision” or “Dec.”), 2, 43.
`Patent Owner filed a Patent Owner Response2 (Paper 23, “Response”
`or “PO Resp.”) and Petitioner filed a Corrected Reply (Paper 32, “Pet.
`Reply”). The Petition relies on Declarations of John Garney (Exs. 1023,
`1053) and Patent Owner relies on Declaration of Geert Knapen (Ex. 2007).
`In accordance with our authorizing order (Paper 29), Patent Owner
`filed a Sur-Reply addressing various claim construction issues (Paper 30,
`“PO Sur-Reply”) and Petitioner filed a Sur-Sur-Reply responsive to Patent
`Owner’s claim constructions (Paper 31, “Pet. Sur-Sur-Reply”)
`Responsive to the Supreme Court’s decision in SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), we issued an Order modifying our Decision
`to institute review of all claims and all grounds. Paper 38 (“SAS Order”).
`We authorized additional briefing to address issues relating to claims and
`grounds that were denied initially in our Decision on Institution. Paper 40.
`Petitioner filed an authorized Supplemental Reply (Paper 42, “Supp.
`
`
`2 Patent Owner improperly attempts to incorporate by reference portions of
`its Preliminary Response into its Response. PO Resp. 16 n.5; see also 37
`C.F.R. § 42.6(a)(3). We disregard the improperly incorporated material.
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`2
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`Reply”), Patent Owner filed an authorized Supplemental Response (Paper
`45, “Supp. Resp.”), and Petitioner filed an authorized Sur-Reply (Paper 46).
`Oral Argument was conducted on June 14, 2018, and a transcript of
`that hearing is of record. Paper 57 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. The Petitioner has the
`burden of proving unpatentability by a preponderance of the evidence. See
`35 U.S.C. § 316(e); see also 37 C.F.R. § 42.1(d). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons expressed below, we conclude that Petitioner has
`shown by a preponderance of the evidence that claims 1, 3–5, 7–9, 11–14,
`18–21, 23, and 25 are unpatentable. Petitioner has not persuaded us by a
`preponderance of the evidence that claims 2, 6, 10, 15–17, 22, and 24 are
`unpatentable.
`
`
`Real Parties in Interest and Related Matters
`A.
`The Petition identifies Delphi Technologies, Inc. and Delphi
`Automotive Systems, LLC as real parties in interest. Pet. 1. Petitioner filed
`a notice indicating that Delphi Technologies, Inc. had changed its name to
`Delphi Technologies, LLC and indicating that Delphi Automotive Systems,
`LLC had changed its name to Aptiv Services US, LLC. Paper 53, 1–2. Both
`Petitioner and Patent Owner identify a related litigation matter captioned
`Microchip Technology Inc. v. Delphi Automotive Systems, LLC., Case No.
`2:16-cv-02817-DJH, filed in the U.S. District Court for the District of
`Arizona. Pet. 2; Paper 12, 1. Petitioner also identifies two related petitions
`for Inter Partes Review as IPR2017-00864 and IPR2017-00970. Paper 3, 1;
`Paper 5, 1.
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`The ’708 Patent
`B.
`According to the ’708 patent, the Universal Serial Bus (“USB”)
`allows coupling of a variety of peripheral devices to a computer system. Ex.
`1001, 1:23–24. To satisfy consumers’ desire to share peripheral devices,
`such as printers, scanners, etc., prior solutions provided switching devices
`that allow a peripheral device to be switchably shared among multiple USB
`host computer systems. Id. at 1:59–63. Each time a USB peripheral device
`is switched (disconnected and re-connected) from one USB host to another,
`the USB host must reconfigure the peripheral device before data exchanges
`may ensue. Id. at 1:63–2:5. Such configuration or reconfiguration includes
`bus enumeration—a step that, inter alia, assigns an address to each
`peripheral device on the bus used by the host on that bus to access each
`peripheral device. See Ex. 1004, 47–48.3 This reconfiguration causes,
`among other problems, loss of state information relevant to the previously
`connected host. Ex. 1001, 1:67–2:5.
`The ’708 patent purports to resolve this problem by allowing sharing
`of a USB device among multiple USB hosts without requiring such
`reconfiguration. Ex. 1001, 2:12–15. Specifically, according to the ’708
`patent, a multi-host capable device is disclosed and claimed that includes
`separate buffers for each of multiple host connections and maintains a
`dedicated address and configuration for each host. Id. at 2:36–38.
`Figure 1, reproduced below, depicts an exemplary system according
`to the ’708 patent.
`
`
`3 Citations are to Petitioner’s page numbering added in the footer of the
`Exhibit, as opposed to the original page numbering of the document.
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`Figure 1 depicts a system including hosts 102 and 104, both coupled with
`multi-host device 106, which, in turn, includes USB multi-host device
`controller. Id. at 3:49–53.
`Figure 3, reproduced below, depicts additional exemplary details of
`multi-host device 106 of Figure 1.
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`Figure 3 depicts USB multi-host device 106 comprising upstream ports 302
`and 304, each configured to couple with a corresponding host system. Id. at
`3:63–4:2. Upstream ports 302 and 304 are coupled with USB endpoint &
`status buffers 306 and 308, respectively, “to buffer data and control reads
`and writes to/from each respective host corresponding to PHY 302 and PHY
`304 and/or peripheral device/function 312 coupled to USB multi-host device
`controller 108.” Id. at 4:18–21. The ’708 patent further discloses:
`In one set of embodiments, USB multi-host device
`controller 108 may be configured with an internal arbitration
`mechanism that may permit each host—first host 102 and second
`host 104, for example—to access shared peripheral function 312
`by either interleaving host accesses, or by using a common
`request/grant structure that may hold-off one host while another
`host completes a data transfer to/from shared device/function
`312. The selection of the specific mechanism used may be
`configured according to the specific USB device type that is
`being shared. In one set of embodiments, the bandwidth from
`shared peripheral device/function 312 to each host may be
`reduced in order to allow each host equal access. In other
`embodiments, the bandwidth may not be reduced if the
`bandwidth of the peripheral function exceeds the bandwidth of
`the host.
`Id. at 4:22–36.
`
`
`Illustrative Claim
`C.
`Claims 1, 3, 7, 18, and 23 are the independent claims of the ’708
`patent. Independent claim 1, reproduced below, is exemplary of the
`challenged claims (with some formatting changes for readability):
`1. A USB multi-host device comprising:
`first and second upstream ports configured to couple to
`corresponding first and second hosts;
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`a USB function block; and
`a multi-host device controller coupling the USB function
`block to the first and second upstream ports,
`wherein the multi-host device controller is configured to
`establish concurrent respective USB connections between the
`USB function block and the first and second upstream ports, to
`allow the corresponding first and second hosts to:
`simultaneously enumerate and configure the USB
`multi-host device;
`simultaneously access the USB multi-host device;
`
`and
`
`alternately access the USB function block without
`reconfiguring and/or re-enumerating the USB multi-host
`device before each access.
`
`
`Alleged Grounds of Unpatentability
`D.
`The Petition sets forth the following asserted grounds of
`unpatentability:
`Reference(s)
`Furukawa4
`Dickens5
`(Furukawa or Dickens) and
`Chen6
`
`Basis
`102(b)
`102(b)
`103(a)
`
`Challenged Claims
`1–8, 10, 11, 15–20, and 22–25
`1–8, 11, 15–20, and 22–25
`9, 11–14, and 21
`
`
`4 Japanese Patent Application Publication P2003-256351A. Ex. 1002
`(“Furukawa”). Exhibit 1002 includes an English translation of the Japanese
`publication, a certification by the translator, and the original Japanese
`language version of the publication.
`5 U.S. Patent No. 6,549,966 B1. Ex. 1003 (“Dickens”).
`6 U.S. Patent No. 7,073,010 B2. Ex. 1005 (“Chen”).
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`Reference(s)
`(Furukawa or Dickens) and
`USB 2.07
`Wurzburg,8 Osakada,9 and
`(Furukawa or Dickens)10
`(Furukawa or Dickens),
`USB 2.0, APA11, and “other
`art cited herein” (Pet. 4)
`
`
`Basis
`103(a)
`
`Challenged Claims
`9, 11–14, and 21
`
`
`
`103(a)
`
`1–25
`
`103(a)
`
`1–25
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`II. ANALYSIS
`A. General Principles
`1.
`Anticipation
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). Each element of the challenged claim must be found, either
`expressly or inherently, in the single prior art reference. Verdegaal Bros.,
`Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the
`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Furthermore, “a
`
`7 Universal Serial Bus Specification Rev. 2.0 April 27, 2000. Ex. 1004
`(“USB 2.0”).
`8 U.S. Patent Publication No. 2006/0059293 A1. Ex. 1026 (“Wurzburg”).
`9 U.S. Patent No. 6,308,239 B1. Ex. 1027 (“Osakada”).
`10 We note Petitioner’s harmless error in misidentifying the Osakada
`reference as Exhibit 1026 (“E1026”). Pet. 4.
`11 Petitioner identifies Admitted Prior Art (“APA”) as disclosure at column
`1, line 19 through column 2, line 2 of Exhibit 1001. Pet. 7–9.
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`reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all
`the limitations arranged or combined as in the claim, if a person of skill in
`the art, reading the reference, would ‘at once envisage’ the claimed
`arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool
`Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d
`676, 681 (CCPA 1962)). Still further, “it is proper to take into account not
`only specific teachings of the reference but also the inferences which one
`skilled in the art would reasonably be expected to draw therefrom.” In re
`Preda, 401 F.2d 825, 826 (CCPA 1968).
`
`
`Obviousness
`2.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter[,] as a whole[,] would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`
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`Level of Ordinary Skill in the Art
`3.
`Petitioner argues a person of ordinary skill in the art related to the
`’708 patent would have a Bachelor’s Degree in electrical engineering,
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`computer science, or the equivalent, and would also have “a few to many”
`years of experience in the design of USB devices as well as familiarity with
`the USB specifications and protocols. Pet. 6 (citing Ex. 1023 ¶¶ 53–58).
`Petitioner further argues (id. at 7) that Patent Owner admitted the level of
`ordinary skill when, in prosecution of the parent application of the ’708
`patent,12 Patent Owner asserted:
`Applicant further submits that one skilled in the art (i.e. having
`appropriate understanding of basic USB design principles as set
`forth in at least the USB 2.0 specification) would therefore be
`enabled by Applicant’s specification as detailed above, to build
`a USB multi-host device controller that enables multiple hosts to
`access the USB device function without the USB device having
`to be reconfigured and/or re-enumerated each time a different
`host accesses the USB device function.
`Ex. 1014, 15 (emphasis added). Patent Owner further asserted in
`prosecution of the parent patent application that “one skilled in the art to
`which the present application pertains would be well informed and well
`aware of the USB 2.0 specification.” Ex. 1014, 41.
`In its Response, Patent Owner does not address the level of ordinary
`skill in the art. See PO Resp. passim. Furthermore, Mr. Knapen testifies,
`one of ordinary skill at the time of the ’708 patent (1) would be familiar with
`these industry-standard interconnect interfaces; (2) would be familiar with
`the circuit-level design and implementation of a standard USB device
`(because Figure 3 of the ’708 patent does not disclose the internal structure
`
`
`12 The parent patent application of the ’708 patent is application serial
`number 11/425,613 issued as U.S. Patent Number 7,523,243 (“the ’243
`patent”). The claims of the ’243 patent are nearly identical to the claims of
`the ’708 patent to such an extent that, in prosecution, the ’708 patent was
`subject only to a non-statutory double patenting rejection. Ex 1012, 10–11.
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`of its various blocks); (3) will have also been exposed to the various
`interconnect options for connecting USB hosts and USB devices; and (4)
`would have a bachelor’s degree in electrical or computer engineering (or
`similar), and at least five years of industry experience in computer peripheral
`device design. Ex. 2007 ¶¶ 44–46. Mr. Knapen then concludes, “I agree the
`Board’s determination of the level of ordinary skill in the art is consistent
`with my assessment, and my opinions consider the level of skill in the art as
`determined by the Board.” Id. ¶ 47.
`We are persuaded by Petitioner’s definition of the level of ordinary
`skill in the art and we find this definition is commensurate with the level of
`ordinary skill in the art as reflected in the prior art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
`findings on the level of skill in the art does not give rise to reversible error
`where the prior art itself reflects an appropriate level and a need for
`testimony is not shown.”) (internal quotation marks omitted); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The parties’ respective experts
`(Mr. Garney and Mr. Knapen) substantially agree regarding the education
`and experience of persons of ordinary skill at the time of the ’708 patent.
`The parties’ experts specifically agree that the person of ordinary skill in the
`art would have had familiarity with the USB 2.0 specification and
`experience in the design of USB devices.
`Based on the complete record of this trial, we discern no reason to
`alter our preliminary determination of the level of ordinary skill in the art.
`Therefore, we define the level of ordinary skill in the art, at the time of the
`’708 patent, to include at least a Bachelor’s degree in electrical engineering,
`computer engineering, computer science, or equivalent fields as well as
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`familiarity with the USB 2.0 specifications to the extent of having designed
`a USB device. This definition is reflected in the prior art of record and is
`consistent with the testimony of both parties’ experts and consistent with
`Patent Owner’s admissions during prosecution of the ’708 patent.
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`Claim Construction
`4.
`As a step in our analysis of patentability, we determine the meaning of
`the claims for this Decision. In an inter partes review, a claim in an
`unexpired patent, as is the case here, shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.
`37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard).
`Under the broadest reasonable construction standard, claim terms are
`generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). “[A] claim construction analysis must begin and remain centered on
`the claim language itself.” Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “Though
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Only terms that are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
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`1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`Aside from the following terms we interpret, we determine that it is
`unnecessary to construe any other claim terms.
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`a.
`
`“Function” / “Function Block” / “Shared USB Function”
`Each independent apparatus claim (1, 3, 7, and 23) includes a
`recitation of a “function block” element of the apparatus. Independent
`method claim 18 recites a method step for establishing a connection with “a
`shared USB function comprised in the USB device.”
`The parties substantially agree that a function block is “a segment of a
`USB device that performs a USB function.” Pet. 31; PO Resp. 16, 18.
`Patent Owner argues the ’708 patent uses the term “block” to refer to a
`segment of a USB device. PO Resp. 16 (citing Ex. 1001, 2:41–42; Ex. 2002
`¶ 62). The abstract of the ’708 patent refers to a “shared function block” by
`disclosing that “[t]he USB device may include a shared USB function block,
`and a multi-host controller configured to establish concurrent respective
`USB connections between the shared USB function block and two or more
`USB hosts.” Ex. 1001, Abstract. Aside from the above reference, the
`Specification of the ’708 patent does not use the term “function block.” The
`Specification also discloses that a USB device may have three blocks, the
`third of which “may comprise the ‘Peripheral Function’ itself, which may
`include the circuitry necessary for the specific USB device function, for
`example an Ethernet Controller, printer, Video Camera, etc.” Id. at 2:20–53.
`The USB specification defines function more broadly as “[a] USB
`device that provides a capability to the host, such as an ISDN connection, a
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`digital microphone, or speakers.” Ex. 1004, 34. Thus, according to the USB
`specification, a “function” is a type of “USB device.”
`As discussed further below, the parties raise arguments relating to the
`packaging or integration of a function or function block within the claimed
`device. However, these arguments, directed to packaging and integration of
`the claimed elements, do not change our understanding of the terms function
`or function block.
`We adopt the parties’ proposed interpretation of “function” and
`“function block” as meaning “a segment of a USB device that performs a
`USB function.”
`Patent Owner argues “shared USB function comprised in the USB
`device,” as recited in method claim 18, means “a USB function that is in a
`USB device and shared by two or more USB hosts.” PO Resp. 18 (citing
`Ex. 2007 ¶ 66). Fundamentally, Patent Owner’s interpretation is focused on
`packaging and integration of the function block with other components of
`the claims—an issue discussed further below. Other than the implied
`arguments regarding packaging or integration of the function within a
`device, we further determine that the “shared USB function” recited in claim
`18 is synonymous with “function” and “function block.”
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`“Device” / “USB Device” / “USB Multi-Host Device”
`b.
`The parties disagree as to the proper interpretation of the term device.
`Each independent apparatus claim (1, 3, 7, and 23) recites a “device.”
`Specifically, the preambles of claims 1 and 3 recite a “USB multi-host
`device” and the preambles of claims 7 and 23 recite a “USB device.” The
`parties disagreement, in essence, centers around packaging—specifically,
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`whether a “device,” as claimed, must be integral/unitary in that the recited
`components are physically housed within the claimed device or can be a
`collection of physically separate, distinct components operating together to
`provide the recited functions.
`Petitioner argues “device” means “both hubs and functions, in a single
`one or a collection of hardware components.” Pet. 33 (citing Ex. 1023 ¶ 67);
`see also Ex. 1004, 32. Patent Owner’s Response does not specifically
`construe the term “device.” However, its Response argues Dickens does not
`disclose the devices of claims 1, 3, 7, and 23 because the Petition merely
`identifies separate elements disclosed in Dickens rather than a device (i.e.,
`an integral device comprising recited components). PO Resp. 19–20.
`Implied in Patent Owner’s Response regarding Dickens is a construction of
`“device” as a single, integral, device as distinct from a collection of separate,
`distinct, components.
`The USB specification provides a definition of “device” as follows:
`A logical or physical entity that performs a function. The actual
`entity described depends on the context of the reference. At the
`lowest level, device may refer to a single hardware component,
`as in a memory device. At a higher level, it may refer to a
`collection of hardware components that perform a particular
`function, such as a USB interface device. At an even higher
`level, device may refer to the function performed by an entity
`attached to the USB; for example, a data/FAX modem device.
`Devices may be physical, electrical, addressable, and logical.
`When used as a non-specific reference, a USB device is either a
`hub or a function.
`Ex. 1004, 32 (emphasis added). Thus, the USB specification defines
`“device” relative to the context of the reference—lowest level, higher level,
`even higher level. Furthermore, we understand that the broadest reasonable
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`interpretation of a term must be consistent with the specification of the
`patent. SuperGuide, 358 F.3d at 875. Therefore, for the reasons discussed
`below, the ’708 patent Specification does not require a “device” to be a
`unitary, integral device. The USB specification provides further evidence,
`consistent with the Specification, that a skilled artisan would have
`understood the term “device” to encompass either a “single hardware
`component” or “a collection of hardware components that perform a
`particular function.” Ex. 1004, 32.
`Patent Owner presents arguments regarding construction of “device”
`as follows:
`
`
`Preamble Is Not Limiting
`1.
`Patent Owner argues the preamble of the claims limits the
`understanding of “device” because it recites a “particular structure that is
`highlighted as important by the Specification” and because the preamble
`“provides antecedent basis for a claim limitation.” PO Sur-Reply 1 (citing
`Catalina Mktg. Int’l v. Coolsavings.com, 289 F.3d 801, 808 (Fed. Cir. 2002)
`and Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012)).
`Petitioner contends the preamble recitation of “device” supports an
`important highlight of the Specification because the Abstract of the ’708
`patent discloses the invention as a “single device”13 and the Specification
`further distinguishes the invention over “a combination of a standalone
`switch and another USB device.” Id. at 2 (citing Ex. 1001, 1:61–2:5).
`
`
`13 Referring to the claimed “device” as a “single device” sheds no useful
`light on construing the term “device” any more than a reference to “a”
`device or “the” device.
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`Patent 7,627,708 B2
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`Petitioner argues the distinction over a prior art switch in combination
`with a USB device is a distinction based on the function of the switch
`requiring reconfiguration of the USB device for each switch between hosts
`rather than the physical distinction of a combination of separate components.
`Pet. Sur-Sur-Reply 3 (quoting Ex. 1001, 1:61–67 (“the device can generally
`be configured and accessed by only a single host at any given time”)). We
`are persuaded by Petitioner’s argument. The ’708 patent does not
`distinguish the prior art combination of a switch and a separate USB device
`based on its physical packaging.
`Furthermore, the mere fact that “device” in the preamble provides an
`antecedent basis for the same recitation in the claim elements in no way
`further defines the proper construction of “device.” Patent Owner’s reliance
`on Deere is inapposite. Deere also holds “if the body of the claim describes
`a structurally complete invention, a preamble is not limiting where it ‘merely
`gives a name’ to the invention, extols its features or benefits, or describes a
`use for the invention”). Deere, 703 F.3d at 1358 (quoting Catalina, 289
`F.3d at 809). Here, use of the term “device” provides no structural
`limitation but, instead, the body of the claim sufficiently defines a complete
`structure and the preambles merely provide a name for the claimed
`structures.
`For the above reasons, we determine the preamble of the claims does
`not limit the claim elements to an integral, unitary, physical packaging of the
`device as Patent Owner alleges.
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`2.
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`The Claimed Device May Encompass An “Off-The-Shelf Item”
`Petitioner argues Patent Owner’s limiting definition of “device”
`would require the function block and the controller be located “within a
`single unitary housing.” Pet. Reply 4. However, Petitioner argues, the ’708
`patent Specification discloses that “Peripheral Device/Function 312” “may
`be a standard off-the-shelf item.” Id. (quoting Ex. 1001, 4:8–12). Petitioner
`contends that, if the “off-the-shelf” function 312 is, for example, a mass
`storage device, “[i]t could not be a standard off-the shelf item if the
`inventive multi-host device controller were already embedded inside.” Id.
`Patent Owner argues the disclosure of an “off-the-shelf” item merely
`refers to the function being a standard function such as an Ethernet
`controller or a mass storage device. PO Sur-Reply 2. Instead, Patent Owner
`emphasizes that the ’708 patent Specification clearly refers to the function as
`one of three segments or blocks within a USB device as support for its
`contention that the claimed USB device is an integral, unitary structure. Id.
`We are persuaded by Petitioner’s arguments. Figure 3 of the ’708
`patent (reproduced above) depicts an embodiment of USB multi-host device
`106 comprising, inter alia, USB multi-host device controller 108 and
`device/function 312. Ex. 1001, 4. The Specification’s disclosure that
`device/function 312 may be a standard off-the-shelf item such as an Ethernet
`controller or mass storage device clearly describes a typical device that may
`be common and commercially available—not an item that is already
`physically integrated with the inventive features of the invention (the other
`elements shown within box 106 of Figure 3).
`For the above reasons, we determine the Specification’s exemplary
`embodiment incorporating an “off-the-shelf” item aids in understanding
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`“device” to encompass a combination of hardware components (including
`“off-the-shelf” items) and, thus, would not limit the claim elements as to
`integral, unitary, physical packaging of the device as Patent Owner alleges.
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`3.
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`“Device” Encompasses “A Collection Of Hardware Components”
`Patent Owner further argues the USB specification definition of a
`device as encompassing a “collection of hardware components” is not the
`same as encompassing a collection of separate devices. PO Sur-Reply 3.
`We discern no support for Patent Owner’s assertion that there is a difference
`between a collection of hardware components and a collection of devices.
`This assertion merely shifts the focus of the discussion to defining another
`term (“hardware components”) as somehow distinct from “devices.”
`Furthermore, Patent Owner’s expert, Mr. Knapen, agrees with the
`definition of “device” as provided in the USB specification. Ex. 1049, 40:9–
`16 (“Q. Do you agree or disagree that a person of ordinary skill in USB
`matters in 2006 would consider the word ‘device’ to potentially refer to a
`collection of hardware components that perform a particular function? A.
`Yes. . . .”). In addition, Patent Owner’s counsel and Mr. Garney
`(Petitioner’s expert) engage in a lengthy colloquy in which Mr. Garney
`explains a variety of types of devices defined by the USB specification all
`within the scope of “device,” regardless of physical packaging constraints,
`as ordinary skilled artisans would understand the USB specification. See Ex.
`2006, 67:9–74:15.
`For the above reasons, we determine that an ordinarily skilled artisan
`would understand “device” in the context of the ’708 patent Specification
`and in the context of the USB specification to encompass devices that
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`comprise the recited “collection of hardware components” without imposing
`particular physical packaging constraints.
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`Conclusion Regarding Construction of “Device”
`4.
`Accordingly, we construe “device,” in accordance with the USB
`specification and in accordance with the ’708 patent Specification discussion
`of Figure 3, to, at least, encompass any collection of hardware components
`that perform a USB function.
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`“USB Connections”
`c.
`All claims recite USB connections between the first host (or upstream
`port) and the function block and between the second host (or upstream port)
`and the function block. The USB specification does not expressly define the
`term “USB connection” but uses the term only in reference to the electrical
`signaling standard (the type of cable) used in various speeds of connectivity.
`See Ex. 1004, 147, 152, 157. The ’708 patent Specification does not
`expressly define the term “U