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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
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`PATENT TRIAL AND APPEAL BOARD
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`
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`
`
`Luxshare Precision Industry Co., Ltd.,
`Petitioner,
`
`v.
`
`Amphenol Corp.,
`Patent Owner.
`
`_____________________
`U.S. PATENT NO. 10,381,767
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`
`TABLE OF CONTENTS
`
`MANDATORY NOTICES (37 C.F.R. § 42.8(b)) ..................................................... v
`
`A.
`
`B.
`
`C.
`
`Real Parties-In-Interest .......................................................................... v
`
`Related Matters ...................................................................................... v
`
`Lead and Backup Counsel and Service (37 C.F.R. § 42.8(b)(3)-(4)) . vi
`
`INTRODUCTION ........................................................................................... 1
`
`CHINESE SIBLING OF THE ’767 PATENT INVALIDATED ................... 1
`
`I.
`
`II.
`
`III. OVERVIEW OF THE ’767 PATENT ............................................................ 1
`
`A.
`
`B.
`
`Prosecution History of the ’767 Patent ................................................. 3
`
`’767 Patent Priority ............................................................................... 4
`
`IV. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ................................. 4
`
`V.
`
`PAYMENT OF FEES (37 C.F.R. §§ 42.15 and 42.103) ................................ 5
`
`VI. PERSON OF ORDINARY SKILL IN THE ART .......................................... 5
`
`VII. CLAIM CONSTRUCTION ............................................................................ 5
`
`VIII. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFORE (37 C.F.R. § 42.22(a) AND 42.104(b)) ................ 6
`
`A.
`
`The Petition Should Not Be Discretionarily Denied ............................. 7
`
`1.
`
`2.
`
`Becton, Dickinson ....................................................................... 7
`
`Fintiv ........................................................................................... 7
`
`B.
`
`Overview of the Prior Art .................................................................... 11
`
`1.
`
`Cai ............................................................................................. 11
`
`ii
`
`
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
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`Cohen ........................................................................................ 12
`
`QSFP Standard .......................................................................... 14
`
`Droesbeke .................................................................................. 15
`
`2.
`
`3.
`
`4.
`
`C.
`
`Ground 1: Claims 1-10 and 28-32 Are Unpatentable Under 35 U.S.C. §
`103(a) as Obvious over Cai ................................................................. 16
`
`1.
`
`Claims 1-10 and 28-32 .............................................................. 16
`
`D. Ground 2: Claims 10-27 are Unpatentable Under 35 U.S.C. § 103(a) as
`Obvious Over Cai in view of Cohen ................................................... 60
`
`1.
`
`2.
`
`Basis for Combination of Cai and Cohen ................................. 60
`
`Claims 10-27 ............................................................................. 63
`
`E.
`
`Ground 3: Claims 6 and 28-31 are Unpatentable Under 35 U.S.C. §
`103(a) as Obvious Over Cai and QSFP Standard ............................... 81
`
`1.
`
`2.
`
`Basis for Combination of Cai and QSFP Standard ................... 81
`
`Cage Claims: Claims 6, 28-31 .................................................. 82
`
`F.
`
`Ground 4: Claims 9 and 28-31 are Unpatentable Under 35 U.S.C. §
`103(a) as Obvious Over Cai and Droesbeke ....................................... 84
`
`1.
`
`2.
`
`Basis for Combination of Cai and Droesbeke .......................... 84
`
`3rd and 4th Housing Members Claims: Claims 9, 28-31 ......... 85
`
`G. Ground 5: Claims 28-31 are Unpatentable Under 35 U.S.C. § 103(a) as
`Obvious Over Cai, QSFP Standard, and Droesbeke ........................... 86
`
`IX. CONCLUSION .............................................................................................. 86
`
`X.
`
`CLAIM APPENDIX OF THE CHALLENGED CLAIMS .......................... 88
`
`
`
`iii
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`
`LIST OF EXHIBITS
`
`Exhibit No. Description
`1001
`U.S. Patent No. 10,381,767 to Milbrand, Jr. et al. (“’767 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Declaration of Joseph C. McAlexander III
`
`File History of U.S. Patent No. 10,381,767
`
`CN Utility Model Patent No. 201112782Y to Cai et al. (“Cai”)
`and Certified Translation
`
`U.S. Patent No. 7,494,383 to Cohen et al. (“Cohen”)
`
`Specification for QSFP (Quad Small Formfactor Pluggable)
`Transceiver, Revision 1.0 (“QSFP Standard”)
`
`Specification for SFP (Small Formfactor Pluggable) Transceiver,
`Revision 1.0 (“SFP Standard”)
`
`U.S. Patent Application Publication No. 2002/0192988 A1 to
`Droesbeke et al. (“Droesbeke”)
`
`CV of Joseph C. McAlexander III
`
`Decision Invalidating CN Patent Application No.
`201610952606.4, which issued as CN Utility Model Patent No.
`107069274B, and Certified Translation
`
`In re Certain Electrical Connectors and Cages, Components
`Thereof, and Prods. Containing the Same, Inv. No. 337-TA-
`1241, Order No. 31 (Oct. 19, 2021): Construing Certain Terms
`of the Asserted Claims of the Patents at Issue
`
`
`
`
`
`
`
`iv
`
`
`
`MANDATORY NOTICES (37 C.F.R. § 42.8(b))
`A. Real Parties-In-Interest
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`
`The following are real parties-in-interest pursuant to 37 C.F.R. §42.8(b)(1):
`
` Luxshare Precision Industry Co., Ltd.
`
` Dongguan Luxshare Precision Industry Co., Ltd.
`
` Luxshare Precision Limited (HK)
`
` Luxshare-ICT Inc.
`
` Amphenol Corporation
`
`B. Related Matters
`
`Patent Owner has asserted the ’767 Patent in the following litigations:
`
` Amphenol Corp. v. Luxshare-ICT, Inc. and Luxshare Precision
`
`Industry Co. Ltd., Case 3:20-cv-06785 (N.D. Cal.) (“NDCA Action”);
`
`and
`
` In re Certain Electrical Connectors and Cages, Components Thereof,
`
`and Prods. Containing the Same, Inv. No. 337-TA-1241 (“ITC
`
`Investigation”).
`
`The following patents are also at issue in the NDCA Action:
`
` U.S Patent No. 7,371,117;
`
` U.S Patent No. 8,371,875;
`
` U.S Patent No. 8,864,521; and
`
`v
`
`
`
` U.S Patent No. 9,705,255.
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`
`The following patents are also currently at issue in the ITC Investigation:
`
` U.S Patent No. 7,371,117; and
`
` U.S Patent No. 9,705,255.
`
`The following related patent applications are currently pending before the
`
`United States Patent and Trademark Office (“USPTO”):
`
` Ser. No. 16/518,362.
`
`C. Lead and Backup Counsel and Service (37 C.F.R. § 42.8(b)(3)-(4))
`
`Lead Counsel
`Jason A. Engel
`Reg. No. 51,654
`K&L GATES LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`Jason.Engel.PTAB@klgates.com
`T: (312) 807-4236
`F: (312) 827-8145
`
`Backup Counsel
`Ragae M. Ghabrial
`Reg. No. 59,104
`K&L GATES LLP
`210 Sixth Ave.
`Pittsburgh, PA 15222
`Ragae.Ghabrial@klgates.com
`T: (412) 355-8690
`F: (412) 355-6501
`
`Katherine L. Allor
`Reg. No. 72,691
`K&L GATES LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`Katy.Allor@klgates.com
`T: (312) 807-4325
`F: (312) 345-9987
`
`
`
`Petitioner consents to electronic service by email.
`
`vi
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`
`Petitioner requests institution of Inter Partes Review (“IPR”) of claims 1-32
`
`(“Challenged Claims”) of U.S. Patent No. 10,381,767 (“’767 Patent”) (Ex. 1001),
`
`and subsequent cancellation of the same, in view of the Grounds described below.
`
`The Challenged Claims are not novel, and are obvious over myriad prior art.
`
`II. CHINESE SIBLING OF THE ’767 PATENT INVALIDATED
`
`On September 18, 2021,
`
`the China National Intellectual Property
`
`Administration (“CNIPA”) issued a decision (Ex. 1010) invalidating CN Utility
`
`Model Patent No. 107069274B (“’274 Patent”), a Chinese sibling of the ’767 Patent
`
`with similar claims. The ’274 Patent was invalidated as not inventive over references
`
`relied upon in this Petition such as, Cai and Cohen, and other similar references. See
`
`Ex. 1010, 39, 41.
`
`III. OVERVIEW OF THE ’767 PATENT
`
`The ’767 Patent is titled “High Performance Cable Connector” and issued on
`
`August 13, 2019.
`
`The ’767 Patent relates to a board-mounted connector in which a plug may be
`
`inserted, completing a connection between a cable and electronic components within
`
`the device. Ex. 1001, 2:3-12; Ex. 1002, ¶29. The ’767 Patent relates to small form
`
`factor pluggable (“SFP”’) and quad small form factor pluggable (“QSFP”)
`
`connectors, both of which are standardized by working groups. Ex. 1001, 2:7-12.
`
`1
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`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`The ’767 Patent purports to improve upon these connectors “through incorporation
`
`of one or more design features.” Ex. 1001, 2:16-19; Ex. 1002, ¶28. Such “features []
`
`provide desirable electrical performance, such as reduced crosstalk.” Ex. 1001, 4:38-
`
`39.
`
`The ’767 Patent discloses that the connector includes a receptacle containing a
`
`housing and lead assemblies each including a housing member and conductive
`
`elements comprising each a contact tail, mating contact portion, and intermediate
`
`portion. Ex. 1002, ¶29. The ’767 Patent discloses that “the specific structure of the
`
`tails extending from conductive elements within receptacle assembly 110 and the
`
`specific mechanism by which the tails are attached to printed circuit board [(“PCB”)]
`
`120 are not critical to the invention.” Ex. 1001, 7:11-16.
`
`Figure 6 (below) illustrates the concept. Ex. 1002, ¶30. Lead assemblies 610A-
`
`610D are similarly formed and claimed as such. Id. Lossy inserts 650 and 652 may
`
`be provided to separate adjacent ones of the lead assemblies 610A-610D. Ex. 1001,
`
`11:11-67; Ex. 1002, ¶32.
`
`2
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`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`
`
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`Ex. 1001, FIG. 6.
`
`A.
`
`Prosecution History of the ’767 Patent
`
`During prosecution, the claims of the ’767 Patent were repeatedly rejected. In
`
`each occasion, the Patent Owner responded by narrowing the claims. See Ex. 1003,
`
`231-236, 263-269, 443-451, 521-530. In result, the 32 claims of the ’767 Patent
`
`comprise a whopping 2818 words, and are loaded with frivolous limitations that
`
`were and are well-known in the art. Ex. 1002, ¶34.
`
`Many of the amendments, e.g., very precise geometrical relationships, do not
`
`even appear in the specification of the ’767 Patent and, as such, solely and liberally
`
`seek support from the drawings of the ’767 Patent which do not disclose those
`
`3
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`elements. All 32 claims of the ’767 Patent are directed to a receptacle. Yet, a number
`
`of the claim amendments do not appear to be limitations at all, as they do not modify
`
`the claimed receptacle, but only describe how to use the claimed receptacle, e.g., in
`
`combination with a cage, by attachment to a PCB.
`
`B.
`
`’767 Patent Priority
`
`The ’767 Patent, filed as U.S. Patent Application No. 15/065,683 on March 9,
`
`2016, claims earliest priority to Provisional Application Ser. No. 61/332,366 filed
`
`on May 7, 2010. Ex. 1001, 1-2.
`
`The ’767 Patent is a continuation of U.S. Patent No. 10,122,129. Id. at 1:6-22.
`
`U.S. Patent No. 10,122,129 is a continuation of U.S. Patent No. 10,211,577. Id. U.S.
`
`Patent No. 10,211,577
`
`is a continuation of
`
`international application
`
`PCT/US2011/035515, filed on May 6, 2011. Id. PCT/US2011/035515, published as
`
`WO2011140438A2, claims priority to Provisional Application Ser. No. 61/332,366
`
`filed on May 7, 2010. Id.
`
`IV. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that (1) the ’767 Patent is available for IPR; (2) Petitioner
`
`is not barred or estopped from requesting IPR on the Grounds identified herein; and
`
`(3) Petitioner has not filed a complaint relating the ’767 Patent.
`
`4
`
`
`
`PAYMENT OF FEES (37 C.F.R. §§ 42.15 and 42.103)
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`
`V.
`
`Petitioner authorizes USPTO to charge any required fees to Deposit Account
`
`02-1818.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`
`With respect to the ’767 Patent, a person of ordinary skill in the art
`
`(“POSITA”) as of May of 2010, had, among other attributes, a Bachelor’s Degree in
`
`engineering or similar discipline, and three to five years of experience working with
`
`electromechanical systems. Ex. 1002, ¶39. Additional graduate education might
`
`substitute for experience, while significant industry experience may substitute for
`
`formal education. Id. Such a POSITA would have had an understanding of high-
`
`speed signal transmission and knowledge of design considerations known in the
`
`industry and would have been familiar with then-existing products and solutions,
`
`including known protocols and techniques; the POSITA would have understood how
`
`to search available literature for relevant publications. Id.
`
`VII. CLAIM CONSTRUCTION
`
`A claim construction order was recently issued in the co-pending ITC matter.
`
`See Ex. 1011. Petitioner believes no terms need to be construed for purposes of this
`
`proceeding as the prior art utilizes substantially the same language such that, under
`
`any construction of the terms of the Challenged Claims, the claims are unpatentable.
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
`
`5
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`(Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999)). Petitioner reserves its right to respond to any unforeseeable
`
`claim constructions Patent Owner may advance.
`
`VIII. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFORE (37 C.F.R. § 42.22(a) AND 42.104(b))
`
`Petitioner requests institution of IPR and the cancellation of the Challenged
`
`Claims on the following Grounds:
`
`References
`Ground Basis
`1
`§ 103 CN 201112782 (“Cai”) (Ex. 1004)
`
`Claims
`1-10 and 28-32
`
`2
`
`3
`
`4
`
`§ 103 Cai and U.S. Patent No. 7,494,383
`(“Cohen”) (Ex. 1005)
`
`10-27
`
`§ 103 Cai and Specification for QSFP (Quad
`Small Formfactor Pluggable) Transceiver
`(“QSFP Standard”) (Ex. 1006)
`
`§ 103 Cai and U.S. Patent Publication No.
`2002/0192988 A1
`(“Droesbeke”)
`(Ex.
`1008)
`
`6 and 28-31
`
`9 and 28-31
`
`§ 103 Cai, QSFP Standard, and Droesbeke
`
`5
`
`Petitioner submits herewith the declaration of Joseph C. McAlexander III, an
`
`28-31
`
`expert in the field of the ’767 Patent and the prior art, in support of these Grounds
`
`of unpatentability. See Ex. 1002; see also Ex. 1009.
`
`6
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`
`A. The Petition Should Not Be Discretionarily Denied
`1.
`
`Becton, Dickinson
`
`The claims of the ’767 Patent were not considered over any prior art relied
`
`upon in Grounds 1, 3, 4, or 5. Cohen (Ground 2) was cited in an information
`
`disclosure statement (IDS), but was not been meaningfully applied to the claims,
`
`particularly in view of Cai. See Ex. 1001, 2. Accordingly, the Petition should not be
`
`discretionarily denied under 35 U.S.C. § 325(d). Advanced Bionics, LLC v. MED-
`
`EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13,
`
`2020) (precedential).
`
`2.
`
`Fintiv
`
`The Board should not deny this Petition in view of 35 U.S.C. § 314(a). Apple
`
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).
`
`Events in the NDCA Action and ITC Investigation do not warrant denial under
`
`Fintiv, as they are strongly outweighed by the differences between the issues raised
`
`in the present Petition and in the parallel ITC Investigation, as per factor (4), and the
`
`strength of Petitioner’s position, as per factor (6). The NDCA Action is stayed and
`
`trial has not been scheduled.
`
`Factor 4 weighs strongly in favor of institution. This Petition seeks review of
`
`all the claims, whereas only Claims 1, 4-6, 9-13, 15-17, 19, 23, 28, and 29 are at
`
`issue in the ITC Investigation. See Samsung Electronics Co., Ltd. v. Dynamics, Inc.,
`
`7
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`IPR2020-00502, Paper 34 at 12 (PTAB Aug. 12, 2020) (fourth factor weighs in favor
`
`of institution when the petition sought review of all claims, not merely those at issue
`
`in the concurrent litigation). More importantly, Petitioner is stipulating that, if IPR
`
`is instituted, Petitioner will not pursue in the NDCA Action or the ITC Investigation
`
`any of the grounds raised or could have been reasonably raised in the IPR based at
`
`least in part on Cai. Petitioner is also not pursuing any Cai based grounds in the ITC
`
`Investigation. Thus, there will be no overlap of invalidity issues between the NDCA
`
`Action, the ITC Investigation, and the IPR. This factor thus weighs in favor of
`
`institution. See VMware, Inc. v. Intellectual Ventures I LLC, IPR2020-00470, Paper
`
`13 at 19-20 (PTAB Aug. 18, 2020); Nanocellect Biomedical, Inc. v. Cytonome/ST,
`
`LLC, IPR2020-00551, Paper 19 at 21-23 (PTAB Aug. 27, 2020); Nvidia Corp. v.
`
`Tessera Advanced Techs., Inc., IPR2020-00708, Paper 9 at 16-17 (PTAB Sept. 2,
`
`2020); see also 3Shape A/S v. Align Tech., Inc., IPR 2020-00223, Paper 912 at 33-
`
`34 (PTAB May 26, 2020); 3Shape A/S v. Align Tech., Inc., IPR2019-00157, Paper 9
`
`at 38 (PTAB Jun. 5, 2019) (“We agree with Petitioner . . . that differing claim sets is
`
`a factor that weighs against exercise of our discretion under § 314(a) to deny
`
`institution based on the ITC investigation.”).
`
`Factor 6 likewise weighs strongly in favor of institution. The claims of the
`
`’767 Patent are designed to frustrate the patent process. The 32 claims of the ’767
`
`Patent comprise a whopping 2818 words, and are loaded with limitations that were
`
`8
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`and are well-known in the art. Ex. 1002, ¶34. Yet their sheer number and specific
`
`non-inventive geometrical arrangements cleverly hide the fact that the claims of the
`
`’767 Patent are void of inventive concepts.
`
`Patent Owner relies solely and liberally on the figures of the ’767 Patent to
`
`support many of the precise geometrical arrangements required by many of the
`
`claims, as the specification is void of any corresponding supporting disclosure or
`
`any discussion of the inventive value of the specific geometrical arrangements
`
`besides, at best, being design choices that carry no patentable weight. Nonetheless,
`
`Petitioner presents a strong invalidity position. The first two grounds presented by
`
`Petitioner easily address every limitation of the 32 claims of the ’767 Patent, relying
`
`only on two references. Additional grounds are presented mainly to provide an
`
`express disclosure of duplicative or intended use limitations that ought not to be
`
`given patentable weight.
`
`Under the heading “related technology,” Patent Owner passingly mentions the
`
`SFP and QSFP Standards, but failed to submit any such standards documents in an
`
`IDS as required under 37 C.F.R. § 1.56. Ex. 1001, 2:7-12. The SFP and QSFP
`
`Standards define common characteristics that are standard to electrical connectors
`
`of the type claimed in the ’767 Patent. Ex. 1002, ¶28. The SFP and QSFP Standards
`
`are materially relevant to the patentability of a number of the claims, and submission
`
`of these references in an IDS would have aided the Examiner in understanding that
`
`9
`
`
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
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`a number of limitations pertaining to these claims are well-known standards in the
`
`electronics industry. For example, a number of claims (e.g., Independent Claim 24)
`
`rely on a specific conductive element arrangement (ground- signal pair- ground) that
`
`is expressly disclosed by the QSFP and SFP Standards. See Ex. 1006, FIG. 2, 14-15;
`
`Ex. 1007, FIG. 2 and Table 1, 20-23. Also, a number of claims (e.g., Independent
`
`Claim 28) rely on a cage that is expressly disclosed in the QSFP and SFP Standards.
`
`See Ex. 1006, 33-38; Ex. 1007 FIG. 7A, 17-20. Denying institution will allow Patent
`
`Owner to again circumvent the patent system, and will deprive Petitioner from an
`
`opportunity to challenge validity based on well-known QSFP and SFP Standards,
`
`under the lesser burden of proof.
`
`Moreover, during prosecution, Applicants improperly filed a non-publication
`
`request in violation of 35 U.S.C § 122 (b)(2)(B)(i). The nonpublication request
`
`improperly denied access to the examiner of the international search report and
`
`written opinion issued in connection with PCT/US2011/035515, a PCT application
`
`in the priority chain of the ’767 Patent, which included material prior art references.
`
`Also, the non-publication request denied Petitioner and third parties from the right
`
`to present prior art references to the examiner.
`
`In addition, as discussed in Section II, this Board will not be the first to assess
`
`the patentability of erroneously-issued claims in the ’767 Patent family. Recently,
`
`the CNIPA issued a decision (Ex. 1010) invalidating the ’274 Patent, a Chinese
`
`10
`
`
`
`IPR2022-00132
`U.S. Patent No. 10,381,767
`
`sibling of the ’767 Patent with similar claims, at request of Petitioner. The ’274
`
`Patent was invalidated as not inventive over references relied upon in this Petition
`
`(Cai and Cohen), and other similar references.
`
`Thus, denying institution due to the NDCA Action or the ITC Investigation
`
`does not promote the efficient administration of justice.
`
`B. Overview of the Prior Art
`
`The Challenged Claims merely represent a collection of known components
`
`modified or combined according to known methods to yield predictable results, and
`
`are, therefore, obvious. See, e.g., Ex. 1002, ¶¶52-169.
`
`1.
`
`Cai
`
`Cai is titled “Electrical Connector” and issued on September 10, 2008. Ex.
`
`1004, 15. Cai qualifies as prior art to the ’767 Patent under pre-AIA 35 U.S.C. §
`
`102(b).
`
`Cai discloses an “electrical connector 1” with “first and [] second insert[ion]
`
`holes” for receiving “docking connector[s].” Ex. 1004, 20; Claim 1; FIG. 1. The
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`electrical connector 1 includes four layers of right-angled conductive terminals 31,
`
`32 organized in two assemblies, and fixed in an insulating body 2. Id. at FIG. 4; see
`
`also id. at 21-22. “A first inserting hole 221 and a second inserting hole 222 are
`
`arranged side by side up and down by protruding forward from the docking surface
`
`22.” Ex. 1004, 19. Insulating blocks prevent the conductive terminals from moving
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`11
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`upwardly and thereby prevent them from being deformed or causing signal crosstalk.
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`Id. at 22; see also id. at FIGS. 4, 6.
`
`
`
`Ex. 1004, FIG. 4.
`
`2.
`
`Cohen
`
`Cohen is titled “Adapter for Interconnecting Electrical Assemblies” and
`
`issued on February 24, 2009. Ex. 1005, 1. Cohen qualifies as prior art to the ’767
`
`Patent under pre-AIA 35 U.S.C. § 102(b).
`
`Cohen discloses an electrical connector suitable for use as an adapter. Ex.
`
`1005, Abstract. The adapter may be mounted on a PCB. Id. at 1:12-15. Cohen
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`discloses an adapter
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`including electrical connectors with a plurality of
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`subassemblies. Id. at 3:19-26. A first subassembly includes a first plurality of
`
`conductive members. Id. at 3:28-44. A first insulating housing is molded around at
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`12
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`U.S. Patent No. 10,381,767
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`least a portion of each of the first plurality of conductive members. Id. A second
`
`subassembly includes a second plurality of conductive members. Id. A second
`
`insulating housing is molded around at least a portion of each of the second plurality
`
`of conductive members. Id.; see also id. at FIG. 2.
`
`
`
`Ex. 1005, FIG. 2.
`
`The adapter includes an insert that may be wholly or partially formed of lossy
`
`material. Id. at 9:48-49. The lossy insert includes projections that are positioned to
`
`couple with ground conductors. Id. at 9:54-60; see also id. at FIG. 5.
`
`Cohen teaches that the lossy insert has been found to “reduce both near and
`
`far end cross-talk.” Id. at 19:61-62.
`
`13
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`
`
`3.
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`QSFP Standard
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`QSFP Standard published on December 1, 2006. Ex. 1006, 8. QSFP Standard
`
`qualifies as prior art to the ’767 Patent at least under pre-AIA 35 U.S.C. § 102(b).
`
`QSFP Standard further provides that “SFF Committee documentation may be
`
`purchased in hard copy or electronic form SFF specifications are [sic] available at
`
`ftp://ftp.seagate.com/sff.” Id. at 2. A POSITA would have known that QSFP
`
`Standard was available for review on the Seagate website, and a skilled artisan could
`
`have easily accessed the website and found QSFP Standard as of its release date. Ex.
`
`1002, ¶47. Moreover, as previously discussed, although QSFP Standard itself was
`
`never disclosed to the patent office, Patent Owner acknowledged its existence and
`
`prior art status when referencing it in the related technology in the background. Ex.
`
`1001, 2:7-12.
`
`QSFP Standard discloses specifications for the QSFP module edge connector.
`
`Ex. 1006, 16-24. The QSFP connector has conductive elements including a plurality
`
`of signal pairs and ground conductors. Id.; see also id. at FIG. 2.
`
`QSFP Standard further discloses that the QSFP connector is disposed within
`
`a cage. Id. at 33-37; see also id. at FIGS. 15, 16.
`
`14
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`
`Ex. 1006, FIG. 15.
`
`4.
`
`Droesbeke
`
`
`
`Droesbeke is titled “RIGHT-ANGLED CONNECTOR” and published on
`
`December 19, 2002. Ex. 1008, 1. Droesbeke qualifies as prior art to the ’767 Patent
`
`under pre-AIA 35 U.S.C. § 102(b).
`
`Droesbeke discloses an electrical “connector compris[ing] a housing of
`
`insulating material and [four] right-angled contact elements arranged in rows and
`
`columns.” Ex. 1008, Abstract. The contact elements of Droesbeke are disposed in
`
`four housing members. See id. at FIG. 1 (below); see also id. at ¶15 (“The contact
`
`elements 4 are inserted into holes in the front wall parts 18 as straight contact
`
`elements and are bent to obtain the right-angled contact elements 4”).
`
`15
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`
`
`
`Ex. 1008, FIG. 1.
`
`C. Ground 1: Claims 1-10 and 28-32 Are Unpatentable Under 35
`U.S.C. § 103(a) as Obvious over Cai
`
`Claims 1-10 and 28-32 would have been obvious over Cai. Ex. 1002, ¶¶52-
`
`129.
`
`1.
`
`Claims 1-10 and 28-32
`
`a.
`
`Independent Claim 1
`(1)
`
`1[pre]1
`
`To the extent the preamble is limiting, Cai discloses a receptacle adapted for
`
`
`
`1 Petitioner would appreciate the Board’s referral to the Claim Appendix of the
`
`challenged claims for the language of each claim element. Inclusion of the
`
`challenged claims (2818 words) would have effectively reduced the threshold
`
`16
`
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`U.S. Patent No. 10,381,767
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`mounting to a PCB. For example, Figure 1 of Cai (below) depicts an “electrical
`
`connector 1” that has “first and second insert[ion] holes” for receiving “docking
`
`connector[s].” Ex. 1004, 20; Claim 1. A POSITA would have understood that an
`
`electrical connector with insertion holes for receiving docking connectors constitutes
`
`a receptacle. Ex. 1002, ¶53.
`
`Ex. 1004, FIG. 1
`
`
`
`
`
`word-count limit by 20%, which would have prevented Petitioner from
`
`completing the Petition.
`
`17
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`Moreover, the electrical connector 1 includes “a mounting support 252 that
`
`can fix the electrical connector 1 on [a] circuit board (not shown).” Ex. 1004, 20.
`
`Accordingly, the electrical connector 1, like the receptacle of Claim 1, is adapted for
`
`mounting on a PCB. Ex. 1002, ¶54.
`
`(2)
`
`1[a]
`
`Electrical connector 1 includes an “insulating body 2 [] provided with an
`
`upper surface 20, a lower surface 21, and a docking surface 22.” Ex. 1004, 19; see
`
`also id. at FIGS. 2, 4. “A first inserting hole 221 and a second inserting hole 222 are
`
`arranged side by side up and down by protruding forward from the docking surface
`
`22.” Id. The insulating body 2 defines a housing and the first inserting hole 221
`
`defines a cavity bounded by a first surface and second surface, as illustrated in Figure
`
`1 of Cai (below).
`
`18
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`
`
`
`Ex. 1004, FIG. 1 (annotated).
`
`Cai discloses that its electrical connector 1 is to be attached to a circuit board.
`
`See, e.g., Ex. 1004, 20. While Cai does not show a PCB, a POSITA would have
`
`readily understood that the first and second surfaces depicted in annotated Figure 1
`
`of Cai are parallel to each other, and to a PCB when the electrical connector 1 is
`
`attached to the PCB. Ex. 1002, ¶56.
`
`It was well-known that electrical connectors and outlets they plug into
`
`comprise corresponding parallel surfaces to ensure establishing proper electrical
`
`19
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`contact. Id. at ¶57. Accordingly, it was well-known for the lower surface 21 to be
`
`parallel to the PCB when connected to the electrical connector 1. Moreover, Figure
`
`1 of Cai clearly shows the lower surface 21 in parallel with the first and second
`
`surfaces. Id. Accordingly, by the transitive properties of parallel relationships, it
`
`would have been obvious for the PCB to also be in parallel with the first and second
`
`surfaces, when the electrical connector 1 was assembled with the PCB. Id.
`
`As illustrated in Figures 2 and 4 of Cai, the vertical portions 34 have the same
`
`heights. A POSITA would have readily understood that the lower surface 21 must
`
`be in parallel with the PCB to allow all of the vertical portions 34 to establish a
`
`proper contact with corresponding connections in the PCB. Ex. 1002, ¶61. A
`
`POSITA would have readily understood that a lower surface 21 non-parallel to the
`
`PCB would have resulted in undesirable partially-exposed and/or misaligned
`
`connections between the electrical connector 1 and the PCB. Id. at ¶60. Accordingly,
`
`it is reasonable to conclude that the lower surface 21 would have been in parallel
`
`with the PCB and, thus, in parallel with the first and second surfaces, when the
`
`electrical connector 1 is connected to the PCB. Id.
`
`Also, arguments that Cai’s specification does not expressly disclose the
`
`parallel relationship cannot be upheld, as the ’767 Patent’s specification is also void
`
`of an express disclosure of the same. Cai cannot be held to higher standard than that
`
`afforded to the disclosure of the ’767 Patent. Lockwood v. Am. Airlines Inc., 107
`
`20
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`F.3d 1565, 1570 (Fed. Cir. 1997) (prior art cannot be held to a higher standard than
`
`the disclosure of the patent to which the art is applied).
`
`(3)
`
`1[b]
`
`As discussed in Section VIII.C.1.a(2), while Cai does not show the PCB, Cai
`
`expressly discloses “vertical portion[s] 34 [] provided with [] welding portion[s] 341
`
`extending out from the insulating body 2 to connect to a circuit board,” and as
`
`illustrated in Figures 2-4, the welding portions 341 extend downward from the lower
`
`surface 21. Ex. 1004, 21. Moreover, the first and second surfaces of the first inserting
`
`hole 221, as depicted in annotated Figure 1 (above) of Cai, are disposed above the
`
`lower surface 21 and above the welding portions 341. Accordingly, the first and
`
`second surfaces of the first inserting hole 221 must have been disposed above a first
`
`side of the PCB, in accordance with Claim 1.
`
`Moreover, a POSITA would have readily understood the first and second
`
`surfaces of the first inserting hole 221 of Cai to be disposed above a first side of the
`
`PCB, in accordance with Claim 1. Ex. 1002, ¶63.
`
`(4)
`
`1[c]
`
`Cai’s electrical connector 1 satisfies this element of Claim 1, as depicted in
`
`Figure 6 (below). Id. at ¶64. Cai discloses “a plurality of conductive terminals 3”
`
`including a top “first conductive terminals 31” that defines a first plurality of
`
`conductive elements in accordance with Claim 1. Ex. 1004, 19, 22, FIGS. 4, 6. The
`
`21
`
`
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`IPR2022-00132
`U.S. Patent No. 10,381,767
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`top first conductive terminal 31 includes conductive elements each comprising a
`
`contact tail (e.g., vertical portion 34), a mating contact portion (e.g., mating part of
`
`horizontal portion 332, also referred to as contact portion 331), and an intermediate
`
`portion (e.g., intermediate part of horizontal portion 332) coupling the contact tail to
`
`the mating contact portion. See id; see
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