Trials@uspto.gov
`571.272.7822
`
`
`Paper 10
`Entered: April 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`U.D. ELECTRONIC CORP.,
`Petitioner,
`
`v.
`
`PULSE ELECTRONICS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00262
`Patent 9,178,318 B2
`_______________
`
`
`Before KEVIN F. TURNER, KRISTEN L. DROESCH, and
`SHEILA F. MCSHANE, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571.272.7822
`
`
`Paper 10
`Entered: April 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`U.D. ELECTRONIC CORP.,
`Petitioner,
`
`v.
`
`PULSE ELECTRONICS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00262
`Patent 9,178,318 B2
`_______________
`
`
`Before KEVIN F. TURNER, KRISTEN L. DROESCH, and
`SHEILA F. MCSHANE, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Case IPR2019-00262
`Patent 9,178,318
`
`I. INTRODUCTION
`A. Background
`U.D. Electronic Corp. (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 14 and 17 (“challenged claims”) of U.S. Patent
`No. 9,178,318 B2 (Ex. 1001, “’318 Patent”). Paper 1 (“Pet”). Pulse
`Electronics, Inc. (“Patent Owner”) timely filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An
`inter partes review may not be instituted unless it is determined that “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons provided below, we determine, based on the record
`before us, Petitioner has not established that there is a reasonable likelihood
`Petitioner would prevail in showing at least one of the challenged claims is
`unpatentable.
`
`B. Related Proceeding
`The parties represent that the ’318 Patent is at issue in Pulse
`Electronics, Inc. v. U.D. Electronic Corp., No. 3:18-cv-00373 (S.D. Cal.).
`Pet. 2; Paper 4, 1.
`
`C. The ’318 Patent (Ex. 1001)
`The ’318 Patent relates to an integrated connector module (ICM)
`having noise shielding and internal electronic components. See Ex. 1001,
`1:26–29.
`
`
`
`2
`
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`Case IPR2019-00262
`Patent 9,178,318
`Figure 1 of the ’318 Patent is reproduced below.
`
`
`Figure 1 is a perspective view of ICM 100. See Ex. 1001, 3:1–4. ICM 100
`is mounted on networking apparatus printed circuit board 200 and interfaces
`with networking apparatus panel 300. See id. at 5:9–11, 5:23–24.
`
`Figure 1A of the ’318 Patent is reproduced below.
`
`
`Figure 1A is a side view of ICM 100. See Ex. 1001, 3:5–6. ICM 100
`includes back shield 106, body shield 104, and electromagnetic interference
`(EMI) collar 102 positioned to be in contact with body shield 104, and used
`3
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`Case IPR2019-00262
`Patent 9,178,318
`to position EMI gasket 310 against networking apparatus panel 300 and
`body shield 104. See id. at 5:28–34. EMI collar 102 and EMI gasket 310
`provide a common ground between body shield 104 and networking
`apparatus panel 300. See id. at 5:34–37.
`Figure 1B of the ’318 Patent is reproduced below.
`
`
`Figure 1B is a detailed perspective view of ICM 100. See Ex. 1001, 3:7–8.
`ICM 100 includes a 2XN configuration of connector ports 120, and
`shielding tabs 114, 116 of body shield 104 associated with connector ports
`120. See id. at 6:10–19, 6:21–27, 6:60–61. “These front grounding shield
`tabs 114, 116 provide electrical connectivity between an internal printed
`circuit board and the body shield 104.” Id. at 6:19–21.
`
`
`
`4
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`Case IPR2019-00262
`Patent 9,178,318
`Figure 1D of the ’318 Patent is reproduced below.
`
`
`Figure 1D is a cross-sectional side view of ICM 100. See Ex. 1001, 3:12–
`14. ICM 100 includes internal printed circuit board 130 containing
`grounding pads that interface with front grounding shield tab 114. See id. at
`6:37–43.
`
`Figure 1F of the ’318 Patent is reproduced below.
`
`
`Figure 1F is a cross-sectional perspective view of ICM 100. See Ex. 1001,
`3:18–20. ICM 100 includes rear grounding shield tab 124 formed from back
`
`
`
`5
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`Case IPR2019-00262
`Patent 9,178,318
`shield 106, which interfaces with internal printed circuit board 130. See id.
`at 7:19–40.
`
`Figure 1I of the ’318 Patent is reproduced below.
`
`
`Figure 1I is a perspective view of a pair of electronic subassemblies 150
`used in ICM 100. See Ex. 1001, 3:27–29. Electronic subassemblies 150
`include insert body shield 160, internal printed circuit board 130 including
`front grounding pads 168 and rear grounding tabs 166, and electronic
`components 162 within interior cavity 156. See id. at 8:38–40, 8:54–57,
`9:13–15. Front grounding pads 168 and rear grounding pads 166 are for
`interfacing with front shield grounding tabs 114 and rear shield grounding
`tabs 124, respectively. See id. at 9:13–17. Insert body shield 160 is
`positioned between adjacent electronics subassemblies 150 and provides
`electrical shielding between adjacent columns of ports 120. See id. at 8:18–
`25, 8:40–43, 9:28–31.
`
`D. Illustrative Claim
`Claim 17 depends from independent claim 14. Claim 14 is illustrative
`and reproduced below:
`14. An integrated connector module, comprising:
`6
`
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`
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`Case IPR2019-00262
`Patent 9,178,318
`a connector housing comprising a plurality of connector ports
`arranged in a row-and-column fashion;
`a plurality of sets of electronic components disposed within one
`or more insert bodies, the one or more insert bodies further
`comprising an internal printed circuit board;
`a plurality of electromagnetic interference (EMI) shields
`configured to provide electrical isolation for the plurality of
`sets of electronic components;
`the plurality of EMI shields further comprising a body shield that
`interfaces with the internal printed circuit board at least at a
`back portion of the internal printed circuit board to improve
`electrical isolation for the plurality of sets of electronic
`components; and
`a shielding tab disposed at least partly within at least one of the
`plurality of connector ports, the shielding tab configured to
`provide electrical connectivity between the internal printed
`circuit board and the body shield at a front portion of the
`internal printed circuit board.
`Ex. 1001, 16:19–38.
`
`E. Asserted Grounds of Unpatentability and Asserted Prior Art
`Petitioner challenges claims 14 and 17 as unpatentable on the
`following statutory bases and references (Pet. 4, 16–70):
`Claim
`Statutory Basis
`Reference(s)
`14
`§ 102(a)
`Molex1
`14
`§ 102(e)
`Regnier2
`17
`§ 103
`Molex and Zhang3
`17
`§ 103
`Regnier and Zhang
`The Petition also relies on the Declaration of Michael Lebby, Ph.D.
`(Ex. 1006).
`
`
`
`1 Ex. 1003, WO 2011/057195 A2, published May 12, 2011 (“Molex”).
`2 Ex. 1005, US 8,888,538 B2, issued Nov. 18, 2014 (“Regnier”).
`3 Ex. 1009, US 2012/0196458 A1, published Aug. 2, 2012 (“Zhang”).
`7
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`Case IPR2019-00262
`Patent 9,178,318
`
`II. ANALYSIS
`A. Claim Construction
`Petitioner proposes constructions for numerous claim terms and
`phrases. See Pet. 9–13. Patent Owner disputes two of Petitioner’s
`constructions, does not dispute others, and proposes constructions for three
`claim terms. See Prelim. Resp. 10–13.
`As demonstrated in the analysis below, no claim terms or phrases
`require an explicit construction. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e
`need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`B. Principles of Law
`“Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every
`limitation is found either expressly or inherently in a single prior art
`reference.’” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274
`(Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150
`F.3d 1354, 1361 (Fed. Cir. 1998)). “Anticipation requires the presence in a
`single prior art disclosure of all elements of a claimed invention arranged as
`in the claim.”). Therasense, Inc. v. Becton, Dickenson and Co., 593 F.3d
`1325, 1332 (Fed. Cir. 2010).
`
`C. Unpatentability of Claim 14 under 35 U.S.C. § 102(a) by Molex,
`Unpatentability of Claim 14 under 35 U.S.C. § 102(e) by Regnier
`1. Overview of Molex (Ex. 1003)
`Molex discloses high data rate capable modular telecommunications
`jacks. See Ex. 1003 ¶ 2.
`
`
`
`8
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`Case IPR2019-00262
`Patent 9,178,318
`Figure 1 of Molex is reproduced below.
`
`
`Figure 1 depicts a front perspective view of a multiport magnetic jack
`assembly 30. See Ex. 1003 ¶ 8. Jack 30 includes insulative housing 32
`(shown below in Fig. 4) having ports 33 configured to receive an Ethernet or
`RJ-45 type jack and arranged in vertically aligned pairs 33'. See id. ¶ 24.
`Conductive shield assembly 50 surrounds housing 32 for the purposes of RF
`and EMI shielding and providing a ground reference. See id. Jack 30 is
`mounted on circuit board 100. See id. Shield assembly 50 includes front
`shield component 52, rear shield component 53, and additional shield
`components 54. See id. ¶ 26.
`
`
`
`9
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`Case IPR2019-00262
`Patent 9,178,318
`Figure 4 of Molex is reproduced below.
`
`
`Figure 4 depicts a partially exploded rear perspective view of jack assembly
`30 of Figure 1 with internal subassembly modules 70 and inter-module
`shields 60 in various stages of insertion within housing 32. See Ex. 1003
`¶¶ 11, 27. Inter-module shields 60 provide vertical electrical isolation or
`shielding between each module 70. See id. ¶ 27.
`
`
`
`10
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`Case IPR2019-00262
`Patent 9,178,318
`Figure 13 of Molex is reproduced below.
`
`
`Figure 13 depicts an exploded view of internal subassembly module 70. See
`Ex. 1003 ¶ 20. Internal subassembly module 70 includes upper circuit board
`74 comprising upper contact assembly 76 and lower contact assembly 77,
`lower circuit board 78, and component housing 75 comprising a two-piece
`assembly having left housing half 75a and right housing half 75b for holding
`magnetics 120a, 120b (i.e., transformer and choke subassemblies 121
`comprising transformers 130 and chokes 140). See id. ¶¶ 37–39. Internal
`elongated shield member 190 is a generally rectangular plate positioned
`between the left housing half 75a and the right housing half 75b. See id.
`¶¶ 40, 44. Internal elongated shield member 190 includes seven downward
`solder tails 193 configured for insertion and soldering in holes in lower
`circuit board 78 and two upwardly extending solder tails 194 and 195
`configured for insertion and soldering in holes 74a in upper circuit board 74.
`See id. ¶ 44. Internal elongated shield member 190
`
`
`
`11
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`
`
`Case IPR2019-00262
`Patent 9,178,318
`is configured to shield the transformers 130 and chokes 140 as
`well as other circuit components of each housing half from
`those of its adjacent housing half in order to shield the circuitry
`of the lower port from that of its vertically aligned upper port
`and to provide a conductive ground or reference path between
`the upper circuit board 74 and lower circuit board 78.
`
`Id.
`
`
`Figure 7 of Molex is reproduced below.
`
`
`Figure 7 is a front perspective view of magnetic jack assembly of Figure 1.
`See Ex. 1003 ¶ 14. Shield interconnection clip 110 is a generally elongated,
`conductive member extending along the front face of housing 32 between
`upper and lower ports 33 and configured to mechanically and electrically
`interconnect various shielding components generally adjacent the front
`portion of jack 30. See id. ¶ 33.
`
`
`
`12
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`Case IPR2019-00262
`Patent 9,178,318
`Figure 11 of Molex is reproduced below.
`
`
`Figure 11 depicts a fragmented front perspective view of magnetic jack
`assembly of Figure 1. See Ex. 1003 ¶ 18. Shield interconnection clip 110
`includes deflectable contact arms 115, each dimensioned and configured to
`engage conductive ground contact pads 73 located on circuit board 74. See
`id. ¶¶ 34, 50.
`
`2. Overview of Regnier (Ex. 1005)
`Regnier discloses the same high data rate capable modular
`telecommunications jacks as Molex. Compare Ex. 1005, Figs. 1, 4, 7, 11,
`13, 1:15–17, 2:14–15, 2:21–25, 2:31–33, 2:42–45, 2:48–49, 3:6–16, 3:28–
`54, 4:22–47, 5:19–30, 5:51–6:44, 7:3–19, 8:24–40, with Ex. 1003, Figs. 1, 4,
`7, 11, 13, ¶¶ 2, 8, 11, 14, 18, 20, 24, 26, 27, 30, 34, 37–40, 44, 50. As such,
`we consider Petitioner’s contentions regarding Molex and Regnier together
`below.
`
`
`
`13
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`Case IPR2019-00262
`Patent 9,178,318
`
`3. Analysis
`Petitioner identifies Molex’s shielding member 190 and upwardly
`extending solder tail 195 configured for insertion into soldering hole 74a
`located at a backside of upper circuit board 74, as disclosing “a body shield
`that interfaces with the internal printed circuit board at least at a back portion
`of the internal printed circuit board to improve electrical isolation for the
`plurality of sets of electronic components” (“body shield limitation”), as
`recited in claim 14. See Pet. 31–32 (citing Ex. 1003 ¶ 44, Figs. 8, 12, 13;
`Ex. 1006 ¶¶ 89–92). Petitioner identifies Molex’s clip 110 with flexible
`contact arms 115 that electrically connect inter-module shields 60 to ground
`contact pads 73 of circuit board 74 as disclosing “a shielding tab disposed at
`least partly within at least one of the plurality of connector ports, the
`shielding tab configured to provide electrical connectivity between the
`internal printed circuit board and the body shield at a front portion of the
`internal printed circuit board” (“shielding tab limitation”), as recited in claim
`14. See id. at 33–35 (citing Ex. 1003 ¶¶ 33–34, Fig. 11; Ex. 1006 ¶¶ 93–99).
`As to Regnier’s disclosure, Petitioner identifies the same shielding
`member 190 with upwardly extending solder tail 195 inserted through hole
`74a located at a backside of circuit board 74 as disclosing the body shield
`limitation. See Pet. 47–49 (reproducing Ex. 1005, Figs. 8, 12, 13; citing Ex.
`1005, 7:3–19; Ex. 1006 ¶¶ 137–140). Petitioner also identifies the same clip
`110 with contact arms 115 electrically connecting inter-module shields 60 to
`circuit board ground contact pads 73 as disclosing the shielding tab
`limitation. See id. at 50–51 (reproducing Ex. 1005, Fig. 11; citing Ex. 1005,
`5:4–30; Ex. 1006 ¶¶ 141–146).
`
`
`
`14
`
`
`
`Case IPR2019-00262
`Patent 9,178,318
`Patent Owner contends that Petitioner’s mapping of the components
`of Molex and Regnier to the “body shield” and “shielding tab” recitations
`are inconsistent with the recited limitations of claim 14. See Prelim. Resp.
`34. Patent Owner asserts that Petitioner alleges that Molex’s and Regnier’s
`elongated shield member 190 constitutes the claimed “body shield” with
`respect to the body shield limitation. See id. at 35 (reproducing Ex. 1004,
`Fig. 13; citing Pet. 31–33, 47–49). Patent Owner asserts the Petitioner
`appears to point to the teaching of clip 110 as constituting the claimed
`“shielding tab,” with respect to the shielding tab limitation. See id. at 36
`(citing Pet. 33–35, 50–51; Ex. 2002 ¶ 104). Patent Owner contends that,
`consistent with Petitioner’s application of the disclosures of Molex and
`Regnier to the term “body shield,” Molex’s and Regnier’s clip 110 is not
`“configured to provide electrical connectivity between the internal printed
`circuit board and the body shield,” as required by the shielding tab limitation
`of claim 14. See id. at 36–37 (citing Ex. 1005, 5:20–26; Ex. 2002 ¶¶ 107,
`108). Specifically, Patent Owner argues clip 110 does not provide electrical
`connectivity between circuit board 74 and elongated shield member 190 at a
`front portion of circuit board 74. See id. at 37 (citing Ex. 2002 ¶ 108).
`Patent Owner further argues that Petitioner fails to address or acknowledge
`this second recited limitation in claim 14 that applies to “body shield.” See
`id. (citing Pet. 33–35, 50–51).
`We agree with Patent Owner’s arguments. Petitioner does not direct
`us to any description in Molex or Regnier sufficient to support a finding that
`clip 110 is configured to provide electrical connectivity between internal
`printed circuit board 74 or 78 and elongated body shield 190, as required by
`claim 14. As pointed out by Patent Owner, elongated shield member 190
`
`
`
`15
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`Case IPR2019-00262
`Patent 9,178,318
`has solder tails 193–195 that electrically engage upper circuit board 74 and
`lower circuit board 78. See Prelim. Resp. 35–36 (reproducing Ex. 1005, Fig.
`13; citing Ex. 1005, 7:3–6, 7:9–12; Ex. 2002 ¶ 102). In other words,
`although there is electrical connectivity between upper circuit board 74 and
`body shield 190, provided directly by way of solder tails 194, 195, and
`electrical connectivity between lower circuit board 78 and body shield 190,
`provided directly by way of solder tails 193, Petitioner fails to provide
`evidence of the disclosure of “the shielding tab configured to provide
`electrical connectivity between the internal printed circuit board and the
`body shield at a front portion of the internal printed circuit board” in Molex
`or Regnier. Additionally, although Petitioner points out that Molex and
`Regnier disclose clip 110 is configured to provide electrical connectivity to
`circuit board 74 at a front portion of circuit board 74 by way of grounding
`tab 73, Petitioner, however, does not direct us to any description in Molex or
`Regnier that clip 110 is configured to provide electrical connectivity
`between circuit board 74 and elongated body shield 190 at the front portion
`of circuit board 74. See Pet. 33–34, 50–51; Ex. 1003 ¶¶ 33, 34, 50, Figs. 10–
`11; Ex. 1005, 5:4–30, 8:24–40, Figs. 10–11. Finally, although this is not
`disclosed in the Petition, assuming that Petitioner attempts to assert that
`Molex’s and Regnier’s inter-module shields 60 disclose the claimed “body
`shield,” in the alternative, there does not appear to be any disclosure in
`Molex or Regnier of inter-module shields 60 interfacing with circuit board
`74, at least at a back portion of circuit board 74, to improve electrical
`isolation for the plurality of sets of electronic components, as required by the
`body shield limitation of claim 14. See Pet. 31–33, 47–49.
`
`
`
`16
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`Case IPR2019-00262
`Patent 9,178,318
`Accordingly, based on the record before us, given the deficiencies in
`the Petition, we conclude that Petitioner has not established that there is a
`reasonable likelihood that it would prevail in showing independent claim 14
`is unpatentable under 35 U.S.C. § 102(a) as anticipated by Molex, or
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Regnier.
`
`D. Unpatentability of Claim 17 under 35 U.S.C. § 103(a) over
`Molex and Zhang, and over Regnier and Zhang
`Claim 17 depends from claim 14. As applied by Petitioner, the
`teachings of Zhang do not remedy the deficiencies of Molex and Regnier
`discussed in the preceding section-addressing claim 14. See Pet. 51–70.
`Accordingly, for the same reasons as those addressing claim 14 in the
`preceding section, based on the record before us, Petitioner has not
`established that there is a reasonable likelihood it would prevail in showing
`claim 17 is unpatentable over Molex and Zhang, or unpatentable over
`Regnier and Zhang.
`
`E. Discretion to Deny Institution
`Patent Owner urges the Board to exercise its discretion and deny
`institution of review under 35 U.S.C. § 325(d) on the basis that Molex and
`Regnier are cumulative to the prior art considered during prosecution of the
`’318 Patent. See Prelim. Resp. 45–46. Petitioner and Patent Owner filed
`additional briefing to address this issue. See Papers 8, 9. We need not reach
`or address the parties’ arguments because, as demonstrated in the above
`analysis, we determine, based on the record before us, Petitioner has not
`demonstrated a reasonable likelihood that it would prevail in showing at
`least one of the challenged claims is unpatentable.
`
`
`
`17
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`Case IPR2019-00262
`Patent 9,178,318
`
`III. CONCLUSION
`For the foregoing reasons, we determine Petitioner has not established
`that there is a reasonable likelihood that it would prevail in showing at least
`one of the challenged claims of the ’318 Patent is unpatentable.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
`denied, and no inter partes review is instituted.
`
`PETITIONER:
`
`Mainak H. Mehta
`Michael C. Jones
`Sonali K. Shah
`PROCOPIO, CORY, HARGREAVES
`& SAVITCH LLP
`miku.mehta@procopio.com
`michael.jones@procopio.com
`sonali.shah@procopio.com
`
`
`
`PATENT OWNER:
`
`Peter J. Gutierrez, III
`Robert F. Gazdzinski
`GAZDZINSKI & ASSOCIATES, PC
`peter.gutierrez@gazpat.com
`robert.gazdzinski@gazpat.com
`
`
`
`
`
`
`18
`
`
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