Trials@uspto.gov
`571.272.7822
`
`
`Paper 12
`Entered: June 19, 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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`I. INTRODUCTION
`
`Petitioner filed a Request for Rehearing (Paper 11, “Req. Reh’g”) of
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`the Decision Denying Institution of Inter Partes Review (Paper 10,
`
`“Decision” or “Dec.”) of claims 14 and 17 of U.S. Patent 9,178,318 B2 (Ex.
`
`1001, “’318 Patent”). Petitioner contends the Board abused its discretion
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`and committed legal error by: (1) basing the Decision on an implicit
`
`construction of “body shield,” which Petitioner alleges resulted in an
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`apparent claim scope that improperly imports limitations into the claim,
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`where the limitations lack written description support and are not enabled;
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`and (2) by expressly stating that an explicit claim construction was not
`
`required. See Req. Reh’g 1–2, 11 (citations omitted). For the reasons
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`explained below, Petitioner’s Request for Rehearing is denied.
`
`Overview of Petition, Preliminary Response, and Decision
`
`Independent claim 14 of the ’318 Patent recites in pertinent part:
`
`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 [(“body shield limitation”)]; 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 [(“shielding tab limitation”)].
`
`Ex. 1001, 16:29–38 (emphasis added).
`
`
`
`The parties presented proposed constructions for numerous claim
`
`terms and phrases, including “body shield,” and “interfaces with.” See Pet.
`
`9–13; Prelim. Resp. 10–15. Petitioner asserted that “body shield” should be
`
`construed as “a member positioned and formed of materials to mitigate
`2
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`
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`possible electrical noise on at least one side thereof” (Pet. 11), with Patent
`
`Owner asserting that the term should be construed as “one or more shields
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`that are disposed on one or more outer surfaces or boundaries of the
`
`connector housing” (Prelim. Resp. 10–11). Petitioner asserted that
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`“interfaces with” should be construed as “contacts and electrically interacts
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`with” (Pet. 11–12), with Patent Owner asserting that the term should be
`
`construed as “is in electrical conductivity with” (Prelim. Resp. 12–13). The
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`Board determined that no claim terms or phrases required an explicit
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`construction for the purposes of determining whether to institute inter partes
`
`review. See Dec. 8 (quoting Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017)).
`
`
`
`Petitioner asserted multiple grounds, alleging the unpatentability of
`
`claims 14 and 17, with all of the grounds relying, at least in part, on the prior
`
`art references Molex and Regnier. Dec. 7 (citing Exs. 1003, 1005).
`
`Petitioner identified Molex or Regnier’s shielding member 190 and
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`upwardly extending solder tail 195 configured for insertion into soldering
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`hole 74a of circuit board 74 as disclosing the body shield limitation. See
`
`Pet. 31–32; Dec. 14. Petitioner identified Molex or Regnier’s “clip 110 with
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`flexible contact arms 115 that electrically connect inter-module shields 60 to
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`ground contact pads 73 of circuit board 74 as disclosing” the shielding tab
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`limitation. Dec. 14; see Pet. 33–35.
`
`Patent Owner argued that, even assuming Petitioner’s proposed
`
`construction of “body shield” was correct, Petitioner’s application of Molex
`
`and Regnier’s disclosures were inconsistent with the recitations of claim 14.
`
`See Prelim. Resp. 34–37. The Board agreed with Patent Owner’s arguments,
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`finding that “Petitioner does not direct us to any description in Molex or
`
`
`
`3
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`Regnier sufficient to support a finding that clip 110 is configured to provide
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`electrical connectivity between internal printed circuit board 74 or 78 and
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`elongated body shield 190.” Dec. 15; see id. at 16–17.
`
`Standard of Review
`
`The applicable standard for a request for rehearing is set forth in
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`37 C.F.R. § 42.71(d), which provides that a request for rehearing “must
`
`specifically identify all matters the party believes the Board misapprehended
`
`or overlooked, and the place where each matter was previously addressed in
`
`a motion, an opposition, or a reply.” The party challenging a decision bears
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`the burden of showing the decision should be modified. See id. “When
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`rehearing a decision on petition, a panel will review the decision for an
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`abuse of discretion.” 37 C.F.R. § 42.71(c).
`
`II. ANALYSIS
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`A. Alleged Board Adoption of Claim Construction
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`Petitioner asserts that claim 14 “only states that the body shield
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`‘interfaces with the internal printed circuit board at least at a back portion,’
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`and is in ‘electrical connectivity’ with ’the internal printed circuit board’ at
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`‘a front portion of the internal printed circuit board.’ Req. Reh’g 3 (citing
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`Ex. 1001, 16:29–38). Petitioner contends that the ’318 Patent discloses two
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`different elements––back shield 106 and body shield 104––that describe and
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`enable these separate limitations. See id. (citing Ex. 1001, 6:20–60,
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`7:21–23), id. at 8–9 (citing Ex. 1001 6:58–65, 7:19–30, Figs. 1D, 1F), id. at
`
`10. According to Petitioner, “the Board adopted an implicit construction of
`
`‘body shield’ as requiring claim 14 to have a single, unitary structure that
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`meets the two separate limitations of the ‘body shield’.” Id. at 3. Petitioner
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`contends that the alleged “single structure” requirement is contrary to the
`
`
`
`4
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`

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`Case IPR2019-00262
`Patent 9,178,318
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`claim’s scope, as described and enabled, under the ’318 Patent Specification.
`
`See id. at 2–3. Petitioner contends that nothing in the ’318 Patent
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`Specification or claim 14 requires the “body shield” to be a single unitary
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`piece of shielding. See id. at 3–4, 8–9. Petitioner further contends the
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`Board’s alleged implicit construction is a factual finding unsupported by the
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`evidence. See id. at 4. Petitioner argues that it was an abuse of discretion
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`and clear error of law for the Board to impose a single unitary body
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`requirement on the language of claim 14. See id. at 2–3, 6, 9–11 (case
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`citations omitted). Petitioner further argues that the Board’s alleged
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`improper construction requiring a single unitary structure led the Board to
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`improperly conclude that Molex and Regnier are not likely to anticipate the
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`challenged claims. See id. at 4. Specifically, in regard to the shielding tab
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`limitation, Petitioner contends the Board’s finding was based on the
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`requirement that the limitations of claim 14 relating to body shield be met by
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`a single unitary structure. See id. at 5–6; Dec. 10.
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`
`
`Contrary to Petitioner’s arguments, the Board did not impose an
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`implicit claim construction requiring a single, unitary body requirement for
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`“body shield” as recited in the limitations of claim 14. The reason that the
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`Petition was denied was not based on the alleged claim construction, but
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`rather was that the prior art, as asserted, did not teach all of the claim 14
`
`limitations. Dec. 16. As briefly discussed above, Petitioner identified
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`Molex or Regnier’s shielding member 190 and upwardly extending solder
`
`tail 195 as disclosing “a body shield” of the body shield limitation. See Pet.
`
`31–32.
`
`
`
`5
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`Figure 13 of Molex1 is reproduced below.
`
`
`
`Figure 13 depicts an exploded view of internal subassembly module 70,
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`including internal elongated shield member 190, upper circuit board 74, and
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`lower circuit board 78. See Ex. 1003 ¶¶ 37, 40. Internal elongated shielding
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`member 190 includes upwardly extending solder tails 194 and 195
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`configured for insertion into soldering holes 74a in upper circuit board 74,
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`and downwardly depending solder tails 193 configured for insertion in holes
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`78a in lower circuit board 78 and insertion into circuit board 100 of jack 30
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`(not shown in Fig. 13). See id. ¶ 44.
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`Importantly, Petitioner did not identify any additional structure or
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`structures besides shielding member 190 and upwardly extending solder tail
`
`195 as disclosing “a body shield” (i.e., one or more body shields). See Pet.
`
`31–32. Thus, in applying the prior art to the limitations of claim 14,
`
`
`1 The disclosure of Regnier is identical to the disclosure of Molex. Compare
`Ex. 1005, with Ex. 1003.
`
`
`
`6
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`Petitioner only asserted that shielding member 190 and upwardly extending
`
`solder tail 195 disclose “a body shield.” See id.
`
`Petitioner provides no support for its assertion that the Board’s
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`findings with respect to the recitation of “the body shield” of the shielding
`
`tab limitation of claim 14 were based on a requirement that the limitations
`
`relating to “a body shield” be met by a single unitary structure.2 See Req.
`
`Reh’g 5–6. Instead, in addressing the shielding tab limitation, Petitioner did
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`not identify any additional structures of Molex or Regnier as disclosing “the
`
`body shield” of the shielding tab limitation. See Pet. 31–35. The Board’s
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`finding that “Petitioner does not direct us to any description in Molex or
`
`Regnier sufficient to support a finding that clip 110 is configured to provide
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`electrical connectivity between internal printed circuit board 74 or 78 and
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`elongated body shield 190, as required by claim 14” (Dec. 15), was based on
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`Petitioner’s identification of shielding member 190 and upwardly extending
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`solder tail 195, as disclosing “a body shield” (i.e., or one or more body
`
`shields), and the antecedent basis “a body shield” provides for the later
`
`
`2 Although it was unnecessary to reach a claim construction determination in
`the Decision for the term “a body shield” because we analyzed Petitioner’s
`allegations without imposing a more limited unitary body claim
`construction, we agree with Petitioner that “a body shield” may mean one or
`more body shields. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
`1356 (Fed. Cir. 2000). (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance
`carries the meaning of ‘one or more’ in open-ended claims containing the
`transitional phrase ‘comprising.’”). We further note that the recitation of “a
`body shield” in the body shield limitation provides antecedent basis for the
`later recitation of “the body shield” in the shielding tab limitation of claim
`14. In other words, the later recitation of “the body shield” refers to the
`same one or more body shields required by the earlier recitation of “a body
`shield.”
`
`
`
`7
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`recitation of “the body shield.” For this reason, we are not persuaded that
`
`the Board abused its discretion.
`
`B. Alleged Prior Art Disclosure of “Shielding Tab”
`
`Related to its argument that the Board’s finding with respect to the
`
`shielding tab limitation was based on an improper implicit construction of
`
`“body shield,” Petitioner contends that, under a proper construction, Molex
`
`and Regnier each disclose the shielding tab limitation. See Req. Reh’g 6–7.
`
`Specifically, Petitioner contends that “clip 110 mechanically and electrically
`
`interconnects various shielding components . . . .” Id. at 7 (quoting Pet. 34);
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`see also id. at 7–8 (addressing disclosures of Regnier (citing Pet. 36, 38–40,
`
`50–51)). According to Petitioner, “‘clip 110’ electrically connects the
`
`shielding components of conductive shield assembly 50 that provides the
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`‘ground reference.’” Id. at 7 (citing Pet. 17–18, 20–21) see id. at 7–8
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`(addressing disclosures of Regnier (citing Pet. 36, 38–40, 50–51)).
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`Petitioner further asserts, “the internal elongated shield member 190
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`includes pins 943 . . . are inserted into a circuit board 100 of the entire Jack
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`30’ which provides the ‘ground reference for the Jack 30.’” Id. at 7 (quoting
`
`Pet. 24); see id. at 7–8 (addressing disclosures of Regnier (citing Pet. 36,
`
`38–40, 50–51)).
`
`
`3 Petitioner’s reference to “pins 94” appears to be a typographical error in
`the Petition. As discussed above in reference to Figure 13 of Molex, internal
`elongated shielding member 190 includes downwardly depending solder
`tails 193 configured for insertion into circuit board 100 of jack 30. See Ex.
`1003 ¶ 44.
`
`
`
`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 multiport magnetic jack
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`assembly 30. See Ex. 1003 ¶ 8. Jack 30 is mounted on circuit board 100.
`
`See id. ¶ 24. Jack 30 includes conductive shield assembly 50 surrounding
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`insulative housing 32 (not shown in Fig. 1) for the purposes of RF and EMI
`
`shielding and providing a ground reference. See id. Shield assembly 50
`
`includes front shield component 52, rear shield component 53, and
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`additional shield components 54. See id. ¶ 26. Shield components 52, 53
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`includes ground pegs 57, 58, respectively, that extend into ground through-
`
`holes 102 in circuit board 100 when mounted thereon. See id.
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`
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`9
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`Figure 7 of Molex is reproduced below.
`
`
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`Figure 7 is a front perspective view of magnetic jack assembly of Figure 1.
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`See Ex. 1003 ¶ 14. Shield interconnection clip 110 is a generally elongated,
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`conductive member extending along the front face of housing 32 (not
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`numbered in Figure 7) and configured to mechanically and electrically
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`interconnect various shielding components generally adjacent the front
`
`portion of jack 30. See id. ¶ 33.
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`Figure 11 of Molex is reproduced below.
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`10
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`

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`Case IPR2019-00262
`Patent 9,178,318
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`Figure 11 depicts a fragmented front perspective view of magnetic jack
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`assembly of Figure 1. See Ex. 1003 ¶ 18. Shield interconnection clip 110
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`includes deflectable contact arms 115, each dimensioned and configured to
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`engage conductive ground contact pads 73 located on circuit board 74. See
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`id. ¶¶ 34, 50.
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`We understand Petitioner to argue that clip 110 is configured to
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`provide electrical connectivity between circuit board 74 and internal
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`elongated shield member 190 based on the electrical connectivity between
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`clip 110 and ground contact pads 73 of circuit board 74 (see Pet. 33–34), and
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`also based on the electrical connectivity of clip 110 to ground reference, via
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`conductive shield components 50, and the electrical connectivity of ground
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`reference, via circuit board 100 and pins 193, to elongated shield member
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`190 (see Req. Reh’g 7–8). Petitioner does not identify where these
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`additional structures (i.e., shield components 50, circuit board 100, pins 193)
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`of Molex or Regnier were identified in the Petition as disclosing “a body
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`shield” of the body shield limitation or “the body shield” of the shielding tab
`
`limitation. See id. at 7–8. Petitioner merely presents a citation to its original
`
`argument in the Petition that “clip 110 mechanically and electrically
`
`interconnects various shielding components . . . .” (see id. at 7 (citing Pet.
`
`34)), along with several citations to Petitioner’s summary of Molex’s
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`disclosure (see id. (citing Pet. 17–18, 20–21, 24)). A request for rehearing is
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`not an opportunity to present new arguments regarding the application of the
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`prior art to the claim limitations. On the basis of such new arguments, we
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`are not persuaded that the Board abused its discretion in rendering the
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`Decision.
`
`
`
`11
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`C. Alleged Error Due to Failure to Issue Claim Constructions
`
`
`
`Petitioner also argues that the Board committed legal error by not
`
`issuing explicit claim constructions for “body shield” and “interfaces with,”
`
`which, according to Petitioner were in dispute between the parties and
`
`served as the foundation for the Board’s Decision. See Req. Reh’g 11–15
`
`(citing Dec. 7–8; case citations omitted). Petitioner asserts there was a
`
`dispute between Petitioner and Patent Owner over the construction of “body
`
`shield” because Petitioner proposed “a member positioned and formed of
`
`materials to mitigate possible electrical noise on at least tone side thereof,”
`
`and Patent Owner proposed “one or more shields that are disposes on one or
`
`more outer surfaces or boundaries of the connector housing.” See Req.
`
`Reh’g 12 (quoting Pet. 11; Prelim. Resp. 10–11). Petitioner also contends
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`there was a dispute between Petitioner and Patent Owner over the
`
`construction of “interfaces with” because Petitioner proposed “contacts and
`
`electrically interacts with,” and Patent Owner proposed “in electrical
`
`conductivity with.” See id. at 13–14 (quoting Pet. 11–12; Prelim. Resp. 12–
`
`13).
`
`We are not persuaded the Board abused its discretion by not explicitly
`
`construing “body shield” and “interfaces with.” Specifically, we are not
`
`persuaded by Petitioner’s suggestion that the Board must provide explicit
`
`claim constructions for claim terms or phrases when the parties provide
`
`differing proposed constructions. Other than pointing out that the proposed
`
`constructions are different, Petitioner does not explain sufficiently how or
`
`why explicit claim constructions for these terms would have been necessary
`
`to resolve a controversy between the parties regarding Petitioner’s asserted
`
`grounds of unpatentability. See Req. Reh’g 11–15; Vivid Techs., Inc. v. Am.
`
`
`
`12
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`

`

`Case IPR2019-00262
`Patent 9,178,318
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly
`
`only those claim terms in controversy and only to the extent necessary to
`
`resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
`
`Techs. in the context of an inter partes review).
`
`An explicit claim construction for “body shield” was not necessary
`
`because, for example, Patent Owner did not challenge Petitioner’s
`
`unpatentability assertions on the basis that Molex or Regnier do not disclose
`
`“a body shield” in accordance with Patent Owner’s proposed construction
`
`(i.e., “one or more body shields that are disposed on one or more outer
`
`surfaces or boundaries of the connector housing”). Although Patent Owner
`
`argued that Petitioner’s construction of “body shield” was unreasonably
`
`broad, Patent Owner did not contest Petitioner’s application of the prior art
`
`based on Petitioner’s construction. See Prelim. Resp. 10–11, 29–33. In fact,
`
`Patent Owner contended that, even when applying Petitioner’s proposed
`
`construction of “body shield,” the prior art did not teach the limitations of
`
`claim 14. See id. at 34–37.
`
`An explicit claim construction for “interfaces with” was not
`
`necessary, as well, because Patent Owner merely argued that Petitioner’s
`
`proposed construction for “interfaces with” is “artificially narrow.” Prelim.
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`Resp. 13. Patent Owner did not challenge Petitioner’s unpatentability
`
`assertions on the basis that Molex or Regnier do not disclose the claim
`
`limitations in accordance with Patent Owner’s construction (i.e., a body
`
`shield that “is in electrical conductivity with” the internal printed circuit).
`
`Because explicit constructions for “body shield” and “interfaces with”
`
`were not necessary to resolve a controversy between the parties regarding
`
`
`
`13
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`

`Case IPR2019-00262
`Patent 9,178,318
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`Petitioner’s asserted grounds of unpatentability, we are not persuaded that it
`
`was an abuse of discretion to decline to provide explicit claim constructions
`
`for these terms.
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`III. DECISION ON REHEARING
`
`Accordingly, Petitioner’s Request for Rehearing is denied.
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`14
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`

`Case IPR2019-00262
`Patent 9,178,318
`
`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
`
`
`
`
`
`
`15
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`