Trials@uspto.gov
`571-272-7822
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`Paper No. 59
`Entered: August 28, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, LLC1,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00864
`Patent 7,523,243 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 49, 1–2.
`
`
`571-272-7822
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`Paper No. 59
`Entered: August 28, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, LLC1,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00864
`Patent 7,523,243 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 49, 1–2.
`
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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. 7,523,243 B2 (Ex. 1001, “the ’243
`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 1–8, 11, 15–20, and
`22–25. Paper 12 (“Decision” or “Dec.”), 2, 43.
`Patent Owner filed a Patent Owner Response2 (Paper 21, “Response”
`or “PO Resp.”) and Petitioner filed a Reply (Paper 25, “Reply”). The
`Petition relies on Declarations of John Garney (Exs. 1023, 1053) and Patent
`Owner relies on a Declaration of Geert Knapen (Ex. 2007).
`In accordance with our authorizing order (Paper 27), Patent Owner
`filed a Sur-Reply addressing various claim construction issues (Paper 28,
`“PO Sur-Reply”) and Petitioner filed a Sur-Sur-Reply responsive to Patent
`Owner’s claim constructions (Paper 29, “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 33 (“SAS Order”).
`We authorized additional briefing to address issues relating to claims and
`grounds that were denied initially in our Decision on Institution. Paper 36.
`Petitioner filed an authorized Supplemental Reply (Paper 38, “Supp.
`
`
`2 Patent Owner improperly attempts to incorporate by reference portions of
`its Preliminary Response into its Response. PO Resp. 17 n.5; see also 37
`C.F.R. § 42.6(a)(3). We disregard the improperly incorporated material.
`
`2
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`Reply”), Patent Owner filed an authorized Supplemental Response (Paper
`41, “Supp. Resp.”), and Petitioner filed an authorized Sur-Reply (Paper 42).
`Oral Argument was conducted on June 14, 2018, and a transcript of
`that hearing is of record. Paper 53 (“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, 11–15,
`and 18–21 are unpatentable. Petitioner has not persuaded us by a
`preponderance of the evidence that claims 2, 6, 10, 16, 17, and 22–25 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 49, 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 9, 1. Petitioner also identifies another related
`litigation captioned Microchip Technology Inc. v. Delphi Automotive
`Systems, LLC., Case No. 1:17-cv-01194-LPS, filed in the U.S. District Court
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`for the District of Delaware. Paper 14, 1. Petitioner also identifies a related
`petition for Inter Partes Review as IPR2017-00970. Paper 3, 1.
`
`
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`
`The ’243 Patent
`B.
`According to the ’243 patent, the Universal Serial Bus (“USB”)
`allows coupling of a variety of peripheral devices to a computer system. Ex.
`1001, 1:19–21. 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 1:56–60. 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 1:60–2:2. 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, 1:64–2:5.
`The ’243 patent purports to resolve this problem by allowing sharing
`of a USB device among multiple USB hosts without requiring such
`reconfiguration. Ex. 1001, 2:9–12. Specifically, according to the ’243
`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 2:33–35.
`
`
`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, reproduced below, depicts an exemplary system according
`to the ’243 patent.
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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 3:47–51.
`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
`3:60–66. 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
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`304 and/or peripheral device/function 312 coupled to USB multi-host device
`controller 108.” Id. at 4:15–18. The ’243 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 4:19–33.
`
`
`Illustrative Claim
`C.
`Claims 1, 3, 7, 18, and 23 are the independent claims of the ’243
`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;
`a USB device block corresponding to at least one
`function4; and
`
`
`4 A Certificate of Correction issued for this patent changing two occurrences
`in claim 1 of “USB device/function” to “USB device block corresponding to
`at least one function.” Ex. 1001, 9.
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`a multi-host device controller coupling the USB device
`block corresponding to at least one function to the first and
`second upstream ports,
`wherein the multi-host device controller is configured to
`establish concurrent respective dedicated USB connections
`between the USB device block and the first and second upstream
`ports, to allow the corresponding first and second hosts to:
`simultaneously request access to the USB device;
`
`and
`
`alternately access the USB device block to use the
`at least one function without either one of the first and
`second hosts reconfiguring the USB device block each
`time a different one-of the first and second hosts is given
`access to the USB device block to use the at least one
`function.
`
`
`Alleged Grounds of Unpatentability
`D.
`The Petition sets forth the following asserted grounds of
`unpatentability:
`Reference(s)
`Furukawa5
`Dickens6
`(Furukawa or Dickens) and
`Chen7
`
`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
`
`
`5 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.
`6 U.S. Patent No. 6,549,966 B1. Ex. 1003 (“Dickens”).
`7 U.S. Patent No. 7,073,010 B2. Ex. 1005 (“Chen”).
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`Reference(s)
`(Furukawa or Dickens) and
`USB 2.08
`Wurzburg,9 Osakada,10 and
`(Furukawa or Dickens)11
`(Furukawa or Dickens),
`USB 2.0, APA12, and “other
`art cited herein” (Pet. 5)
`
`
`Basis
`103(a)
`
`Challenged Claims
`9, 11–14, and 21
`
`
`
`103(a)
`
`1–25
`
`103(a)
`
`1–25
`
`
`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
`
`8 Universal Serial Bus Specification Rev. 2.0 April 27, 2000. Ex. 1004
`(“USB 2.0”).
`9 U.S. Patent Publication No. 2006/0059293 A1. Ex. 1026 (“Wurzburg”).
`10 U.S. Patent No. 6,308,239 B1. Ex. 1027 (“Osakada”).
`11 We note Petitioner’s harmless error in misidentifying the Osakada
`reference as Exhibit 1026 (“E1026”). Pet. 4.
`12 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).
`
`
`Level of Ordinary Skill in the Art
`3.
`Petitioner argues a person of ordinary skill in the art related to the
`’243 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, 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 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. However, Mr. Knapen testifies, one of
`ordinary skill at the time of the ’243 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 ’243 patent does not disclose the internal structure 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
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`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 ’243 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
`’243 patent, to include at least a Bachelor’s degree in electrical engineering,
`computer engineering, computer science, or equivalent fields as well as
`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 ’243 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,
`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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`Concurrent and Simultaneous
`a.
`Independent claims, 1, 3, 18, and 23 (and their respective dependent
`claims) recite establishment of “concurrent” connections. Independent
`claims 1, 3, 7, and 23 (and their respective dependent claims) recite
`“simultaneous” requests from hosts and claim 23 recites “simultaneous”
`configuration of the device by multiple hosts. The Specification of the ’243
`patent does not provide an express definition of either term and “concurrent”
`does not appear in the ’243 patent Specification other than in the claims.
`Petitioner does not provide a specific interpretation of either term but
`argues what is not meant by each term. Specifically, Petitioner argues
`references to “simultaneous” in the claims do “not require simultaneous data
`transfer from two or more computers to a peripheral such as a printer” but
`instead encompasses transfer of data from one computer at a time to the
`peripheral—a mode Petitioner refers to as “data switching” as distinguished
`from “connection switching” in which a connection is established and
`disconnected to allow another computer to connect to a peripheral. Pet. 18–
`19 (citing Ex. 1001, 2:28–37). Petitioner asserts this requirement is
`consistent with the USB specification. Id. at 19.
`Petitioner similarly argues connections are “concurrent” to the extent
`they allow the recited functionality, for example, in claim 1, to allow for
`simultaneous enumeration and configuration, allow for simultaneous access,
`and allow for alternating access without reconfiguring or re-enumerating.
`Id. at 19.
`Patent Owner presented arguments regarding interpretation of these
`terms in its Preliminary Response. Prelim Resp. 15–28. Consistent with the
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`plain and ordinary meaning and consistent with the Specification, in our
`Decision on Institution, we adopted Patent Owner’s dictionary-based
`definition of concurrent to mean “operating or occurring at the same time”
`and adopted the dictionary-based definition of simultaneous to mean “at the
`same time.” Dec. 15.
`Patent Owner does not address the construction of these terms in its
`Response. Although we find merit in Petitioner’s suggestions that there are
`aspects of USB operations that are excluded when interpreting these terms in
`the context of USB protocols, Petitioner has not provided a proposed
`interpretation as to what is within the scope of a proper interpretation of
`these terms.
`Thus, we perceive no reason on the complete record to change this
`construction.
`
`b.
`
`“USB Device Block Corresponding To At Least One
`Function”
`Independent apparatus claim 1, 3, 7, and 18 each include a recitation
`of a device block “corresponding to at least one function.”
`Apart from the claims, the ’243 patent Specification does not use the
`phrase “device block corresponding to at least one function” or even the
`phrase “device block” and, thus, does not expressly define the phrase. To
`whatever extent “function” is an element of the claims, neither party proffers
`an express construction of “function” and we discern no express definition in
`the ’243 patent Specification.
`The ’243 patent Specification discloses a device is made up of blocks
`or segments:
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`A USB device may be divided into three segments or
`blocks. The first block may comprise a USB interface that
`includes the physical (PHY) or digital link, USB Link layer
`(SIE), and other circuitry necessary to send and/or receive data
`over the USB. The second block may comprise an Endpoint
`Buffer Block, which may include the endpoint buffers that are
`used by the first and third blocks to buffer data and control reads
`and writes to/from the USB—transferred through the first
`block—and/or the Peripheral Function—transferred through the
`third block. The third block 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.
`Ex. 1001, 2:38–50. Nothing in this paragraph (or the rest of the
`Specification) identifies one of the three segments as a “device block.”
`The USB specification does not use or define the phrase “device
`block” but defines “function” broadly as “[a] USB device that provides a
`capability to the host, such as an ISDN connection, a digital microphone, or
`speakers.” Ex. 1004, 34. Thus, according to the USB specification, a
`“function” is a type of “USB device.”
`The parties essentially agree to a construction of “USB device block
`corresponding to at least one function” as meaning “a segment of a device
`that performs a function.” Pet. 30; PO Resp. 17–18.
`Based on the parties’ agreed upon construction and within the scope
`of the broader definition in the USB specification, we determine “USB
`device block corresponding to at least one function” is equivalent to the term
`“function” (see Pet. 30–31) and we construe these terms to mean “a USB
`device, or a segment of a USB device, that performs a USB function to
`provide a capability to a host.”
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`“Shared USB Device Block” / “Shared USB Device”
`c.
` Claim 23 recites accessing a “function of the shared USB device
`block.”
`Based on the above discussion, a “shared USB device block” is,
`therefore, a “shared” function. As above, neither the phrase “shared USB
`device block” nor “device block” are used in the Specification of the ’243
`patent apart from the claims. Patent Owner proffers a construction of this
`term to mean “a segment of a device . . . shared or accessible by two or more
`USB hosts.” PO Resp. 19–20.
`The Specification uses the term “share” (or derivatives thereof) as an
`or verb to describe a number of objects “shared USB device” (Ex. 1001,
`Abstract, 2:29); “share a single device/function” (id. at 2:15–16); “a single
`USB device may be shared” (id. at 2:9–10); “the USB device that will be
`shared” (id. at 2:56–57); “shared Peripheral Device” (id. at 2:62); “the
`shared device” (id. at 2:65); “USB device type that is being shared” (id. at
`2:67); “shared peripheral function” (id. at 3:1); “share devices” (id. at 3:45);
`“printer 120 shared by personal computer (PC) 122 and PC 123” (id. at
`3:54–55; “shared peripheral function 312” (id. at 4:22); “shared
`device/function 312” (id. at 4:25); “USB device type that is being shared”
`(id. at 4:28); and “shared peripheral device/function 312” (id. at 4:29). In all
`cases, the things that are sharing the “shared” objects are multiple hosts
`(e.g., multiple PCs). However, these various recitations refer to sharing of
`the “device” as a whole as well as sharing of some portion (e.g., a segment
`or block) of the device (e.g. “peripheral function,” “peripheral function
`312,” “peripheral device/function 312”). As discussed above, we understand
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`“device block” to include a block or segment referred to as a “function” or
`“function block.”
`Of the above references to shared objects, those that refer to sharing
`of the “function” or “device/function,” in particular block 312 of Figure 3,
`appear to be consistent with the references in claim 23 to a “shared USB
`device block.” Thus, we construe “shared USB device block” means a
`“function” (as discussed above) that is “shared or accessible by two or more
`USB hosts.”
`Claim 18 recites “a shared USB device . . . wherein the USB device
`corresponds to at least one function.” Thus, claim 18 does not refer to a
`block or segment that is shared but, rather, refers to the entire device as
`being shared. The entire device then “corresponds to at least one function,”
`but it is not the “function” that is shared in claim 18—it is the entire device
`that is shared.
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`“Device” / “USB Device” / “USB Multi-Host Device”
`d.
`The parties disagree as to the proper interpretation of the term device.
`The preambles of independent apparatus claims 1, 3, and 23 recite a “USB
`multi-host device.” The preambles of independent apparatus claim 7 and
`independent method claim 18 each recite a “device.” Subsequent references
`in these independent claims and in various dependent claims refer back to
`the claimed device as a “USB device,” “Shared USB device,” or simply
`“device.” The ’243 patent Specification similarly uses various of these
`terms interchangeably. We view these various terms as synonymous.
`The parties disagreement, in essence, centers around packaging—
`specifically, whether a “device,” as claimed, must be integral/unitary in that
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`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. 32 (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. 23–24.
`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
`interpretation of a term must be consistent with the specification of the
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`patent. SuperGuide, 358 F.3d at 875. Therefore, for the reasons discussed
`below, the ’243 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
`NTP, Inc. v. Research In Motion, 418 F.3d 1282, 1305 (Fed. Cir. 2005);
`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 ’243 patent
`Specification discloses a “single USB device . . .” (Ex. 1001, 2:9–12) and
`distinguishes the invention over “a combination of a standalone switch and
`another USB device” (Ex. 1001, 1:58–2:2). Id. at 1–2.
`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
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`rather than the physical distinction of a combination of separate components.
`Pet. Sur-Sur-Reply 3 (quoting Ex. 1001, 1:60–62 (“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 ’243 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 limit
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