Unified Patents, LLC v. Oceana Innovations LLC

Decision Date14 February 2022
Docket Number508,678 B1,Patent 6,IPR2020-01463
PartiesUNIFIED PATENTS, LLC, Petitioner, v. OCEANA INNOVATIONS LLC, Patent Owner.
CourtUnited States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board

UNIFIED PATENTS, LLC, Petitioner,
v.
OCEANA INNOVATIONS LLC, Patent Owner.

No. IPR2020-01463

Patent 6, 508, 678 B1

United States Patent and Trademark Office, Patent Trial and Appeal Board

February 14, 2022


Before MINN CHUNG, STEVEN M. AMUNDSON, and STEPHEN E. BELISLE, Administrative Patent Judges.

JUDGMENT

AMUNDSON, ADMINISTRATIVE PATENT JUDGE

Final Written Decision

Determining All Challenged Claims Unpatentable

35 U.S.C.§ 318(a)

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I. INTRODUCTION

Unified Patents, LLC ("Petitioner") filed a Petition requesting an inter partes review of claims 1-5 in US. Patent No. 6, 508, 678 B1 (Ex. 1001, "the '678 patent") under 35 U.S.C. §§ 311-319. Paper 1 ("Pet"). Oceana Innovations LLC ("Patent Owner") filed a Preliminary Response. Paper 6 ("Prelim. Resp.").

In our Institution Decision, we instituted review based on all challenged claims and all grounds presented in the Petition. Paper 11 ("Inst. Dec"). We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R § 42.73. For the reasons explained below, Petitioner has shown by a preponderance of the evidence that claims 1-5 in the '678 patent are unpatentable. See 35 U.S.C. § 316(e) (2018).

II. BACKGROUND

A. Procedural History

After we instituted review, Patent Owner filed a Response (Paper 16, "Resp."), and Petitioner filed a Reply (Paper 17, "Reply"). On November 30, 2021, we held an oral hearing, and the record includes the hearing transcript. Paper 26 ("Tr.").

B. Real Parties in Interest

Petitioner identifies itself as the real party in interest. Pet. 3. Patent Owner identifies itself as the real party in interest. Paper 4, 2. The parties do not raise any issue about real parties in interest.

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C Related Matters

Petitioner and Patent Owner identify the following civil actions where the '678 patent has been asserted by Patent Owner or its predecessor in interest (Interface Linx, LLC) against an alleged infringer:

Interface Linx, LLC v. TTE Technology, Inc. et al., No. 5:17-cv-00826 (C.D. Cal. filed Apr. 27, 2017)
Interface Linx, LLC v. Haier America Company, LLC et al., No. 2:17-cv-03170, (C.D. Cal. filed Apr. 27 2017);
Interface Linx, LLC v. Hisense USA Corp., No. 2:17-cv-03182 (C.D. Cal. filed Apr. 27, 2017);
Interface Linx, LLC v. Onkyo USA Corp. et al., No. 2:17-cv-03188 (C.D. Cal. filed Apr. 27, 2017);
Interface Linx, LLC v. Pioneer Electronics (USA), Inc. et al., No. 2:17-cv-03191 (C.D. Cal. filed Apr. 27, 2017);
Interface Linx, LLC v. Sherwood America, Inc. et al., No. 2:17-cv-03192 (C.D. Cal. filed Apr. 27, 2017);
Interface Linx, LLC v. Sound United, LLC et al., No. 2:17-cv-03193 (C.D. Cal. filed Apr. 27, 2017);
Interface Linx, LLC v. VOXX International Corp. et al., No. 2:17-cv-03194 (C.D. Cal. filed Apr. 27, 2017);
Interface Linx, LLC v. Haier America Co., LLC et al., No. 1:17-cv-01098 (D. Del. filed Aug. 7, 2017);
Interface Linx, LLC v. Onkyo USA Corp. et al., No. 1:17-cv-01099 (D. Del. filed Aug. 7, 2017);
Interface Linx, LLC v. Pioneer Electronics (USA) et al., No. 1:17-cv-01100 (D. Del. filed Aug. 7, 2017);
Interface Linx, LLC v. Sherwood America, Inc. et al., No. 1:17-cv-01101 (D. Del. filed Aug. 7, 2017);
Interface Linx, LLC v. Sound United, LLC et al., No. 1:17-cv-01102 (D. Del. filed Aug. 7, 2017);
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Interface Linx, LLC v. TTE Technology, Inc. et al., No. l:17-cv-01103 (D. Del. filed Aug. 7, 2017);
Interface Linx, LLC v. VOXX Int'l Corp. et al., No. l:17-cv-01104 (D. Del. filed Aug. 7, 2017);
Oceana Innovations LLC v. Roku, Inc., No. 6:20-cv-00399 (W.D. Tex. filed May 15, 2020);
Oceana Innovations LLC v. Charter Communications, Inc., No. 6:20-cv-00432 (W.D. Tex. filed May 28, 2020);
Oceana Innovations LLC v. JVC Kenwood USA Corp., No. 3:20-cv-01613 (N.D. Tex. filed June 17, 2020); and
Oceana Innovations LLC v. Compal Electronics, Inc., No. 2:20-cv-00271 (E.D. Tex. filed Aug. 21, 2020).

Pet. 3-6; Paper 4, 2; Paper 10, 2. Petitioner states that all of the above-identified civil actions have been terminated except for the most recently filed action. Paper 10, 2-4.

In addition, Petitioner and Patent Owner identify the following proceedings involving the '678 patent previously before the Board:

TTE Technology, Inc. et al. v. Interface Linx, LLC, IPR2018-01036 (PTAB filed May 7, 2018); and
Frontier Communications Corp. v. Oceana Innovations LLC, IPR2020-01272 (PTAB filed July 16, 2020). Pet. 6; Paper 4, 2; Paper 10, 4-5. IPR2018-01036 and IPR2020-01272 each ended due to settlement at an early stage, i.e., before the filing of a preliminary response and before the Board decided whether to institute atrial. See TTE Tech., Inc. v. Interface Linx, LLC, IPR2018-01036, Paper 10 at 2-3 (PTAB Nov. 15, 2018); Frontier Commc'ns Corp. v. Oceana Innovations LLC, IPR2020-01272, Paper 9 at 2-3 (PTAB Dec. 14, 2020).
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D. The '678 Patent (Exhibit 1001)

The '678 patent, titled "Electrical Connector Assembly," issued on January 21, 2003, from an application filed on August 31, 2000. Ex. 1001, codes (22), (45), (54). The patent states that the invention "relates to an electrical connector assembly, more particularly to a [Universal Serial Bus] USB type electrical connector assembly." Id. at 1:6-8.

The '678 patent identifies a deficiency in conventional electrical connector assemblies due to the "same plugs" at opposite ends of a cable. Ex. 1001, 1:27-34. In particular, the patent discusses a "tendency to plug a wrong one of the plugs" into a receptacle on a printed circuit board when using a cable to "connect an electrical device to the printed circuit board." Id. at 1:29-32. An improper plug-receptacle connection "hinder[s] data transmission between the electrical device and the printed circuit board." Id. at 1:32-34. The patent states that "the object of the present invention is to provide an electrical connector assembly that is capable of overcoming the aforementioned drawback." Id. at 1:37-39. Specifically, the patent discloses an electrical connector assembly with a receptacle and a complementary plug having distinct shapes. See id. at 1:40-60, 2:29-31, code (57), Fig. 2.

Figure 2 in the '678 patent depicts an embodiment of an electrical connector assembly. Ex. 1001, 2:1-2, 2:29-31, Fig. 2. Figure 2 is reproduced below:

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(Image Omitted)

Figure 2 is "an exploded perspective view of an electrical connector assembly." Id. at 2:1-2, Fig. 2. As Figure 2 shows, the electrical connector assembly "includes a receptacle 4 with a complementary plug 3." Id. at 2:29-31, Fig. 2.

Figures 9 and 10 in the '678 patent depict in more detail receptacle 4 and plug 3, respectively. Ex. 1001, 2:3-4, 2:9-10, 2:17-18, 3:66-4:29. Figures 9 and 10 are reproduced below:

(Image Omitted)

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Figure 9 on the left "is a front view of the receptacle," and Figure 10 on the right "is a front view of the plug." Id. at 2:17-18, Figs. 9-10.

The '678 patent explains that receptacle 4 and plug 3 depicted in Figures 9 and 10, respectively, have various sides as follows:

• "opposite first and second sides 371, 372 (481, 482)";
• "a pair of opposite third sides 373 (483) respectively connected to two opposite ends of the first side 371 (481)";
• "a pair of fourth sides 374 (484) respectively connected to two opposite ends of the second sides 372 (482)"; and
• "a pair of fifth sides 375 (485) each extending between and interconnecting one of the third sides 373 (483) and one of the fourth sides 374 (484)."

Ex. 1001, 3:66-4:8.

Further, "[t]he first side 371 (481) is longer than the second side 372 (482)." Ex. 1001, 4:8-9. "The width between the third sides 373 (483) is greater than that between the fourth sides 374 (484)." Id. at 4:9-11. "The fifth sides 375 (485) are angled away from each other while extending from the fourth sides 374 (484) to the third sides 373 (483)." Id. at 4:11-13. "The first and second sides 371, 372 (481, 482) are substantially parallel." Id. at 4:13-14. "The third sides 373 (483) are substantially perpendicular to the first side 371 (481)." Id. at 4:14-16. "The fourth sides 374 (484) extend obliquely and respectively from the opposite ends of the second side 372 (482)." Id. at 4:16-18. "The fifth sides 375, (485) are respectively and substantially perpendicular to the third sides 373 (483)." Id. at 4:18-19.

For receptacle 4 and plug 3, the '678 patent describes the following height-to-width relationship:

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The shortest distance (indicated as reference mark H1 shown in FIG. 9 or H1' in FIG. 10) from one of, two opposite ends of each third side 373 (483), that is distal from the first side 371 (481), to a plane defined by the second side 372 (482) is smaller than the distance (indicated as reference mark W1 shown in FIG. 9 or W1' in FIG. 10) from one of the opposite ends of the second side 372 (482), that is adjacent to that third side 373 (483), to a plane defined by that third side 373 (483).

Ex. 1001, 4:19-28.

Figures 11 and 12 in the '678 patent depict another embodiment of a receptacle 4' and a complementary plug 3', respectively, having distinct shapes. Ex. 1001, 2:19-22, 4:36-50. Figures 11 and 12 are reproduced below:

(Image Omitted)

Figure 11 on the left "is a front view to illustrate a modified receptacle," and Figure 12 on the right "is a front view to illustrate a modified plug." Id. at 2:19-22, Figs. 11-12.

The '678 patent explains that receptacle 4' and plug 3' "are similar to the previous receptacle 4 and the previous plug 3" depicted in Figures 9 and 10 except that:

• "the fourth sides 374' (484') are substantially perpendicular to the second side 372' (482')"; and
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• "each fifth side 375' (485') is oblique relative to the respective third side 373' (483') and the
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