Granting Institution Despite Request for Consideration of Previously-Submitted Prior Art IPR2015-01557


Takeaway: The Board may exercise its discretion to deny asserted grounds of unpatentability for reasons of administrative necessity and to ensure timely completion of an instituted proceeding.

In its Decision, the Board determined Petitioner had established a reasonable likelihood of establishing that claims 10 and 14 of the ’188 patent are unpatentable. The ’188 patent “is directed to a memory card that includes both a device connector, conforming to a device connection standard, and a host connector, conforming to a host connection standard.”

Addressing claim construction under the broadest reasonable construction in light of the specification, the Board construed three terms. The term “host connector protruding from the housing” was found to encompass “the host connector and the housing as different parts of a single integral structure, i.e., attached, connected, joined, or molded to one another,” disagreeing with Patent Owner’s proposed narrow construction. Regarding the term “form factor,” the Board disagreed with Petitioner’s assertion that the term is indefinite and maintained its construction of the term from IPR2015-00066. In particular, the term “form factor” was defined as “exterior size and shape.” Regarding the term “hinge,” the Board maintained its construction in IPR2015-00066, defining the term to mean “a jointed device or flexible piece on which the cover rotates, turns, or swings.”

The Board then addressed Patent Owner’s argument that the Board should exercise its discretion under Section 325(d) to deny institution “because the Board has considered the ‘same or substantially the same prior art or arguments’ in IPR2015-00066.” Patent Owner contended that the Yen reference asserted in the instant Petition has the same disclosure as Yen EP asserted in IPR2015-00066. The Board disagreed, noting that IPR2015-00066 did not rely upon “Kao, Chang, the SD Specification, nor the MMC Specification.” Thus, the Board considered the merits of the asserted grounds.

Petitioner asserted anticipation of claim 10 based on Yen. The Board agreed with Petitioner’s contentions, finding “a reasonable likelihood that Petitioner would prevail in establishing that claim 10 is anticipated by Yen.” Regarding alleged obviousness of claim 14 over Yen and Yu, the Board was persuaded that Petitioner established a reasonable likelihood of prevailing. The Board was also persuaded that Petitioner established a reasonable likelihood of prevailing with respect to obviousness of claim 10 over Chang, Yen, and either the SD or MMC Specification. The Board also found that Petitioner showed a reasonable likelihood that it would prevail in establishing obviousness of claim 14 over Chang, Yen, either the SD or MMC Specification, and Yu.

As to alleged obviousness of claims 10 and 14 over Yen and Kao or Chang, the Board found that Petitioner did not “provide ‘articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness,’” and denied institution of the asserted ground.

Finally, the Board exercised its discretion, for reasons of administrative necessity and to ensure timely completion of the instituted proceeding, and denied institution as to four grounds of unpatentability challenging claims 10 and 14, given that review of claims 10 and 14 was instituted on two asserted grounds.

Sony Corp. v. Imation Corp., IPR2015-01557
Paper 7: Decision on Institution of
Inter Partes Review
Dated: January 4, 2016
Patent: 6,890,188 B1
Before: Kevin F. Turner, Stacey G. White, and Kerry Begley
Written by: Begley
Related Proceedings: Civil Action No. 14-00628 (D. Minn.); Civil Action No. 14-01385 (D. Minn.); IPR2015-00066