• U.D. Electronic Corp. v. Pulse Electronics, Inc.Institution denied
  PTAB · Apr 15, 2019 · IPR2019-00262 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 14 or 17 were unpatentable over the asserted references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “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))).” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “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 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. 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.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “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 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. 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.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,178,318

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