UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LUXSHARE PRECISION INDUSTRY CO., LTD.

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LUXSHARE PRECISION INDUSTRY CO., LTD., Petitioner v. BING XU PRECISION CO., LTD., Patent Owner CASE: Unassigned Patent No. 8,78,044 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,78,044

2 TABLE OF CONTENTS -i- Page I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(B)... 2 A. REAL PARTY IN INTEREST... 2 B. RELATED MATTERS... 2 C. NOTICE OF COUNSEL AND SERVICE INFORMATION... 3 III. REQUIREMENTS FOR INTER PARTES REVIEW... 3 A. GROUND FOR STANDING... 3 B. IDENTIFICATION OF CHALLENGE Claims Challenged The Prior Art Supporting Evidence Relied Upon For The Challenge Statutory Ground(s) Of Challenge And Legal Principles... IV. OVERVIEW OF THE 044 PATENT... A. SUMMARY OF THE 044 PATENT... B. LEVEL OF ORDINARY SKILL IN THE ART... 8 C. PROPOSED CLAIM CONSTRUCTIONS FFC (flexible flat cable) Claims 1, 3, 6, 7, 8,, 11, 12, 14, 1, 19, and Latch Claims 4,, 16, and V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 044 PATENT IS INVALID A. DESCRIPTION OF THE PRIOR ART Wu is Prior Art Under 3 U.S.C. 2(b) and (e) The Area Array Interconnection Handbook of 2001 is Prior Art Under 3 U.S.C. 2(b) Tang is Prior Art Under 3 U.S.C. 2(b) and (e) Green is Prior Art Under 3 U.S.C. 2(b) and (e) De Lollis is Prior Art Under 3 U.S.C. 2(b) Brennan is Prior Art Under 3 U.S.C. 2(b) and (e)... 13

3 TABLE OF CONTENTS (continued) Page VI. 7. SATA Standard is Prior Art Under 3 U.S.C. 2(b) Su is Prior Art Under 3 U.S.C. 2(b) and (e) B. SUMMARY OF INVALIDITY POSITIONS DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY OF CLAIMS 1-20 OF THE 044 PATENT... 1 A. GROUND 1: CLAIMS 1 AND 3 ARE ANTICIPATED UNDER 3 U.S.C. 2 BY WU Claim 1 is anticipated by Wu Claim 3 is anticipated by Wu B. GROUND 2: CLAIMS 1-3, 8-, 12, 13, AND 1 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU Claim 1 is obvious in view of Wu Claim 8 is obvious in view of Wu Claim 12 is obvious in view of Wu Claims 2, 9, and 13 are obvious in view of Wu Claims 3 and are obvious in view of Wu Claim 1 is obvious in view of Wu C. GROUND 3: CLAIMS 2, 8, 9 AND 13 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU AND THE AREA ARRAY INTERCONNECTION HANDBOOK Claim 8 is obvious in view of Wu and the Area Array Interconnection Handbook Claims 2, 9 and 13 are obvious in view of Wu and the Area Array Interconnection Handbook D. GROUND 4: CLAIMS 4,, 16 AND 18 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU AND TANG Claims 4 and 16 are obvious in view of Wu and Tang Claims and 18 are obvious in view of Wu and Tang ii-

4 TABLE OF CONTENTS (continued) Page E. GROUND : CLAIM 14 IS OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU IN COMBINATION WITH GREEN AND DE LOLLIS Claim 14 is obvious in view of Wu, Green, and De Lollis... 0 F. GROUND 6: CLAIM 17 IS OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU AND BRENNAN Claim 17 is obvious in view of Wu and Brennan... 4 G. GROUND 7: CLAIMS 6, 7, 11, 19 AND 20 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU IN COMBINATION WITH THE SATA STANDARD AND SU Claims 6, 11, and 19 are obvious in view of Wu in combination with the SATA Standard and Su Claims 7 and 20 are obvious in view of Wu in combination with the SATA Standard and Su VII. CONCLUSION iii-

5 TABLE OF AUTHORITIES Statutes Page(s) 3 U.S.C U.S.C U.S.C U.S.C. 312(a)(3) U.S.C. 31(a)(1), 31(b), 31(e)(1) and 32(e)(1) C.F.R. 42.(a) C.F.R. 42.(b) C.F.R C.F.R. 42.0(b) C.F.R (a) C.F.R C.F.R. 42.8(b)(1) C.F.R. 42.8(b)(3) C.F.R. 42.4(b) and C.F.R. 42.4, 42., and C.F.R and Cases Novo Indus., L.P. v. Micro Molds Corp., 30 F.3d 1348, 137 (Fed. Cir. 2003) iv-

6 EXHIBIT LIST Ex. 01 Ex. 02 Ex. 03 Ex. 04 Ex. 0 Ex. 06 Ex. 07 Ex. 08 Ex. 09 Ex. Ex. 11 Ex. 12 Ex. 13 U.S. Patent No. 8,78,044 to Tseng Declaration of Dr. Pradeep Lall, John and Anne MacFarlane Endowed Professor in Mechanical Engineering at Auburn University, In Support of Petition for Inter Partes Review of U.S. Patent No. 8,78,044 U.S. Patent No. 7,63,8 to Wu The Area Array Interconnection Handbook of 2001 (Excerpts of Chapters 1 and 18) U.S. Patent No. 6,12,76 to Tang U.S. Patent No.,01,612 to Green The Use Of Adhesives and Sealants in Electronics by N. J. De Lollis, IEEE Transactions on Parts, Materials and Packaging, Vol. PMP-1, No. 3, December 196 U.S. Patent No.,941,72 to Brennan Serial ATA International Organization: Serial ATA Revision 2.6 of 2007 U.S. Patent No. 7,803,009 to Su U.S. Patent No. 7,81,49 to Chen U.S. Patent No. 8,12,071 to Tseng Plaintiff Bing Xu Precision Co. Ltd s Disclosure of Asserted Claims and Preliminary Infringement Contentions, Dated May 11,

7 Pursuant to 3 U.S.C. 311 and 37 C.F.R. 42.0, Luxshare Precision Industry Co., Ltd. petitions for Inter Partes Review of Claims 1-20 of U.S. Patent No. 8,78,044 ( the 044 Patent, Ex. 01), which is assigned to Bing Xu Precision Co. Ltd. I. INTRODUCTION The 044 Patent concerns an electrical connector assembly that is compliant with the SATA (Serial Advanced Technology Attachment) standard. SATA connectors are used to connect mass storage devices, such as hard drives and solid state drives, to computer systems. The 044 Patent purports to claim a new structure for a SATA connector that has a flex flat cable ( FFC ), a printed circuit board ( PCB ), and an insulated housing for a set of terminals. However, as explained in the Declaration of Dr. Pradeep Lall filed herewith, the design of SATA connectors as claimed by the 044 Patent was well-known, obvious, and in practice long before the 044 Patent was filed in March (Ex at ) Indeed, the prior art cited in this Petition, which was not before the Patent Office during original prosecution, explicitly discloses an electrical connector having a FFC, a PCB, and a plurality of power terminals and data terminals contained within an insulated housing soldered to the PCB, as claimed in the 044 Patent. Thus, as discussed in detail below, these references anticipate or 20 render obvious every claim of the 044 Patent under 3 U.S.C. 2 or

8 Accordingly, there is a reasonable likelihood that Petitioner will prevail with respect to at least one of challenged Claims 1-20, and Petitioner respectfully requests that the Board institute a trial for Inter Partes Review and cancel all claims of the 044 Patent. II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(B) A. REAL PARTY IN INTEREST Petitioner Luxshare, as well as defendants Acer Incorporated and Acer America Corporation in the related matter below, are the sole real parties in interest under 3 U.S.C. 312(a)(3) and 37 C.F.R. 42.8(b)(1). B. RELATED MATTERS The Patent Owner is asserting the 044 Patent against Acer Incorporated and Acer America Corporation in an action, Bing Xu Precision Co., Ltd. v. Acer Incorporated and Acer America Corporation, No. :16-cv EJD, filed in the U.S. District Court for the Northern District of California on May 9, 2016, and in 1 which an effective waiver of service was filed on May 31, Petitioner Luxshare filed a petition for Inter Partes Review, IPR No , involving U.S. Patent No. 8,12,071 (the parent patent to the 044 Patent) before the Patent Trial and Appeal Board on May 9,

9 C. NOTICE OF COUNSEL AND SERVICE INFORMATION Pursuant to 37 C.F.R. 42.8(b)(3) and 37 C.F.R. 42.(a), Petitioner appoints Howard Lithaw Lim as lead counsel and Christopher Kao and Brock Weber as back-up counsel: Howard Lithaw Lim Lead Counsel (Reg. No. 73,369) VINSON & ELKINS LLP 2001 Ross Ave., Suite 3700 Dallas, TX Telephone: (41) Facsimile: (41) Christopher Kao, Back-up Counsel (Pro hac vice motion to be filed) Brock S. Weber, Back-up Counsel (Pro hac vice motion to be filed) VINSON & ELKINS LLP Mission Street, Suite 2000 San Francisco, CA 94 Telephone: (41) Facsimile: (41) The following should be used for service and all communications: Pursuant to 37 C.F.R. 42.(b), a Power of Attorney executed by Petitioner for appointing the above-designated counsel is filed herewith. III. REQUIREMENTS FOR INTER PARTES REVIEW This Petition complies with all statutory requirements under the AIA and 37 C.F.R. 42.4, 42., and 42.1, and should be accorded a filing date as the date of filing of this Petition pursuant to 37 C.F.R A. GROUND FOR STANDING 1 Pursuant to 37 C.F.R (a), Petitioner hereby certifies that the 044 Patent is available for Inter Partes Review and that Petitioner is not barred or -3-

10 estopped from requesting Inter Partes Review challenging Claims 1-20 of the 044 Patent on the grounds identified herein. Specifically, Petitioner has the standing, or meets all requirements, to file this Petition under 3 U.S.C. 31(a)(1), 31(b), 31(e)(1) and 32(e)(1); and under 37 C.F.R and B. IDENTIFICATION OF CHALLENGE Pursuant to 37 C.F.R. 42.4(b) and 42.22, Petitioner requests that the Patent Trial and Appeal Board invalidate Claims 1-20 of the 044 Patent. 1. Claims Challenged Claims 1-20 of the 044 Patent are challenged in this Petition. 2. The Prior Art The prior art references relied upon are the following: (1) U.S. Patent No. 7,63,8 to Wu ( Wu ) (Ex. 03); (2) The Area Array Interconnection Handbook (the Handbook ) (Ex. 04); (3) U.S. Patent No. 6,12,76 to Tang ( Tang ) (Ex. 0); (4) U.S. Patent No.,01,612 to Green ( Green ) (Ex. 06); 1 () The Use Of Adhesives and Sealants in Electronics by N. J. De Lollis, IEEE Transactions on Parts, Materials and Packaging Vol. PMP-1, No. 3, December 196 ( De Lollis ) (Ex. 07); (6) U.S. Patent No.,941,72 to Brennan ( Brennan ) (Ex. 08); (7) Serial ATA International Organization: Serial ATA Revision 2.6 of 2007 ( SATA Standard ) (Ex. 09); and (8) U.S. Patent No. 20 7,803,009 to Su ( Su ) (Ex. ). -4-

11 3. Supporting Evidence Relied Upon For The Challenge The Declaration of Dr. Pradeep Lall, Ph.D., filed herewith (Ex. 02), supports the challenge in this Petition that Claims 1-20 of the 044 Patent are invalid as anticipated and obvious. 4. Statutory Ground(s) Of Challenge And Legal Principles This Petition challenges Claims 1-20 of the 044 Patent according to the versions of 3 U.S.C. 2 and 3 that were in effect before March 16, Statutory provisions 3 U.S.C that took effect on September 16, 2012 govern this Inter Partes Review. IV. OVERVIEW OF THE 044 PATENT The 044 Patent was filed on July 22, 2013 and is a continuation of U.S. Patent Application No. 13/422,03 (now U.S. Patent No. 8,12,071, Ex. 12), which in turn claims priority to Taiwan Patent Application No U, filed on March 28, A. SUMMARY OF THE 044 PATENT The 044 Patent concerns an electrical connector assembly compliant with the SATA standard. The 044 Patent recognizes that SATA connectors were conventional as of the time of its alleged invention. For example, the 044 Patent discusses an admittedly prior art SATA assembly by incorporating by reference 20 U.S. Patent No. 7,81,49 to Chen (the 49 Patent ) (Ex. 11), which discloses a SATA-compliant connector assembly. Figure 2 of the 49 Patent, reproduced --

12 below, shows an exploded view of the connector assembly with an insulative housing 1, a plurality of contacts 2, a spacer 3, a bracket 4 held on the housing 1, a cable connected to the contacts 2 and a cover 6 engaging with the housing 1. Fig. 2 of the Prior Art 49 Patent Within this context, the 044 Patent alleges that it is an improvement over the prior art 49 Patent because it purportedly eliminates the need for a separate spacer and a bracket by integrating those functions onto a PCB and incorporating a flexible flat cable ( FFC ) in place of the cable. (See Ex. 01, 044 Patent at 1:37-41; see also Fig. 3 of the 044 Patent, reproduced below.) An annotated version of Figure 3 from the 044 Patent shows an exploded view of the claimed SATA connector design, with insulating housing, PCB 40, FFC 0, power terminals 20, and data terminals 30: -6-

13 Fig. 3 of the 044 Patent The 044 Patent asserts that one of the advantages of its design is the use of a FFC, which purportedly reduces manufacturing cost by eliminating cable management equipment. (Id. at 1:3-7.) Another claimed advantage of a FFC is that a FFC that bends to fasten with the housing will allow the actual contacts of the FFC to remain in place on the PCB when the FFC is pulled accidentally[.] (Id. at 1:8-63.) The 044 Patent alleges that these advantages are not present in the admitted prior art. However, these features are simple design choices well-within the knowledge and ability of a person of ordinary skill in the art to implement for a SATA connector. (See Ex. 02, at ) -7-

14 The 044 Patent includes 20 apparatus claims, with three independent claims of substantially similar scope (Claims 1, 8, and 12). B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention (a POSA ) would have a Bachelor s degree with four years of experience or a Master s degree with two years of experience in the field of mechanical engineering and/or electrical engineering. (Ex. 02, at 34.) Petitioner s expert, Dr. Pradeep Lall, Ph.D., is qualified to testify about what a POSA would have understood at the time of the alleged invention of the 044 Patent. As detailed in his declaration, Dr. Lall has been a Professor of Mechanical Engineering at Auburn University for more than 1 years. (Id. at 8.) Prior to his teaching career, Dr. Lall was an engineer at Motorola, where his work focused on the design, development, and reliability of communication products such as twoway radios and cellular phones. (Id. at 9.) Dr. Lall, due to his educational 1 background and employment, has extensive experience in the fields of semiconductor packaging and has expertise working with ball-grid arrays, solderalloys, connectors, MEMS, light-emitting diodes, flexible electronics, batteries, and printed circuit boards. (Id. at 17.) Dr. Lall has also authored or co-authored more than 470 papers, 2 books, and 14 book chapters in the field of semiconductor -8-

15 packaging, and at least five publications are of direct relevance to the technology at issue. (Id. at 18.) C. PROPOSED CLAIM CONSTRUCTIONS In an IPR proceeding, a claim in an unexpired patent receives its broadest reasonable interpretation ( BRI ) in light of the specification. See 37 C.F.R. 42.0(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Petitioner submits, for purposes of this IPR only, that the broadest reasonable interpretation should govern the meaning of the claim terms, such that the claim terms in the 044 Patent should be given their plain and ordinary meaning to a POSA under the BRI standard, because they are common terms of the English language and/or in the field of mechanical engineering. (See Ex. 02 at 48.) Below, Petitioner provides specific constructions for certain claim terms for the sake of clarity and because these terms may have different meanings outside the context of the field of the alleged invention. 1 1 Petitioner expressly reserves the right to advance different constructions in the district court. Further, due to the different claim construction standards in the district court proceeding, Petitioner identifying any feature in the cited references as teaching a claim term of the 044 Patent is not an admission by Petitioner that claim term is met by any feature for infringement purposes, or that the claim term is enabled or meets the requirements for adequate written description. -9-

16 1. FFC (flexible flat cable) Claims 1, 3, 6, 7, 8,, 11, 12, 14, 1, 19, and 20 Under the BRI standard, in the context of the specification of the 044 Patent and its claims, the term FFC means a flexible flat cable that has a consolidated / unitary construction for housing both power and data conductor wires in one cable. (Ex. 02 at 48.) In the Summary of the Invention section of specification, the 044 Patent states that the purpose of the FFC is to reduce the manufacturing cost by eliminating cable management equipment and the step of cable managing processes. (Ex. 01 at 1:3-7.) As further explained in the 044 Patent and recited in the claims, the 044 Patent attempts to meet that stated objective by housing the power and data conductor wires in a unitary cable, which would lessen the manufacturing and management costs associated with a set of loose wires that must be individually managed. (See Ex. 01 at 1:3-7.) Specifically, the 044 Patent describes the FFC as compris[ing] a plurality of first conductors [i.e., 1 power conductors], a plurality of second conductors 6 [i.e., data conductors], and an insulating layer 01 for enclosing most portions of the first and second conductors[.] (Id. at 3:66-4:2; see also id. at 4:6-67 (indicating that the first conductors are for power and the second are for data).) Thus, the FFC, according to the 044 Patent, encloses both sets of conductors (power and data) in a unitary 20 structure having an insulating layer (i.e., a flexible layer). This is consistent with --

17 the claims. (See, e.g., Claim 1 (reciting an FFC (flexible flat cable) having an insulating layer for enclosing a plurality of conductors ).) 2. Latch Claims 4,, 16, and 18 Under the BRI standard, in the context of the specification of the 044 Patent and its claims, the term latch means a fastening mechanism. (Ex. 02 at 48.) The 044 Patent depicts a latch as element 3 with certain shapes. (Ex. 01 at Figs. 3 and 4.) However, the claimed latch should not be limited to a specific embodiment depicted in the Figures under the BRI standard. Cuozzo Speed Techs., 136 S. Ct. at Indeed, the 044 Patent describes that the latch is a fastening mechanism for the fastening of the PCB 40 and the insulating housing [.] (Ex. 01 at 3:37-44; Figs. 4 and.) This is consistent with the claims, which do not recite any specific type of latch just a latch on the insulated housing that can clamp (i.e., fasten) the PCB. (E.g., Claim 4.) 1 V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 044 PATENT IS INVALID Claims 1-20 are each invalid under 3 U.S.C. 2 or 3 for merely reciting known, predictable and/or obvious combinations of the prior art references. -11-

18 A. DESCRIPTION OF THE PRIOR ART 1. Wu is Prior Art Under 3 U.S.C. 2(b) and (e) Wu is a U.S. Patent filed on July 18, (Ex. 03.) Wu constitutes prior art under at least 3 U.S.C. 2(b) because Wu was patented on July 21, 2009, which is more than one year before the critical date of the 044 Patent (i.e., the March 28, 2011 filing date of the Taiwan Patent Application to which the 044 Patent claims priority). Further, Wu is also prior art under 3 U.S.C. 2(e) because its application was filed on July 18, 2008, before the presumptive invention date of the 044 Patent. 2. The Area Array Interconnection Handbook of 2001 is Prior Art Under 3 U.S.C. 2(b) The Area Array Interconnection Handbook is a book published in 2001 in the United States. (Ex. 04.) The Area Array Interconnection Handbook therefore constitutes prior art under at least 3 U.S.C. 2(b) because it was 1 published more than one year before the critical date of the 044 Patent. 3. Tang is Prior Art Under 3 U.S.C. 2(b) and (e) Tang is a U.S. Patent filed on May 4, (Ex. 0.) Tang is prior art under at least 3 U.S.C. 2(b) because Tang was patented on November 28, 2000, which is more than one year before the critical date of the 044 Patent. 20 Further, Tang is also prior art under 3 U.S.C. 2(e) because its application was filed on May 4, 1999, before the presumptive invention date of the 044 Patent. -12-

19 4. Green is Prior Art Under 3 U.S.C. 2(b) and (e) Green is a U.S. Patent filed on June 17, (Ex. 06.) Green is prior art under at least 3 U.S.C. 2(b) because Green was patented on March 26, 1996, which is more than one year before the critical date of the 044 Patent. Green is also prior art under 3 U.S.C. 2(e) because its application was filed June 17, 1994, before the presumptive invention date of the 044 Patent.. De Lollis is Prior Art Under 3 U.S.C. 2(b) The article, The Use Of Adhesives and Sealants in Electronics, by N. J. De Lollis was published in the December 196 edition of IEEE Transactions on Parts, Materials and Packaging, Vol. PMP-1, No. 3. (Ex. 07.) It therefore constitutes prior art under at least 3 U.S.C. 2(b) because it was published in December 196, which is more than one year before the critical date of the 044 Patent. 6. Brennan is Prior Art Under 3 U.S.C. 2(b) and (e) Brennan is a U.S. Patent filed on August 1, (Ex. 08.) Brennan is 1 prior art under at least 3 U.S.C. 2(b) because Brennan was patented on August 24, 1999, which is more than one year before the critical date of the 044 Patent. Further, Brennan is also prior art under 3 U.S.C. 2(e) because its application was filed on August 1, 1997, before the presumptive invention date of the 044 Patent. -13-

20 7. SATA Standard is Prior Art Under 3 U.S.C. 2(b) The SATA Standard, Serial ATA Revision 2.6, was published by the Serial ATA International Organization on February 1, (Ex. 09.) It therefore constitutes prior art under at least 3 U.S.C. 2(b) because it was published on February 1, 2007, which is more than one year before the critical date of the 044 Patent. 8. Su is Prior Art Under 3 U.S.C. 2(b) and (e) Su is a U.S. Patent filed on July 8, (Ex..) Su is prior art under at least 3 U.S.C. 2(b) because Su was patented on September 8, 20 and was published on January 14, 20, which is more than one year before the critical date of the 044 Patent. Further, Su is also prior art under 3 U.S.C. 2(e) because its application was filed July 8, 2009, before the presumptive invention date of the 044 Patent. B. SUMMARY OF INVALIDITY POSITIONS 1 The prior art presented in this Petition, which was not before the Patent Office during prosecution, discloses and/or renders obvious each and every element of Claims 1-20 of the 044 Patent. The table below summarizes Petitioner s invalidity positions with respect to each claim and prior art reference: Ground Statutory Basis Reference(s) Claim(s) 1. 2 Wu 1 and Wu 1-3, 8-, 12, 13, and 1-14-

21 Ground Statutory Reference(s) Claim(s) Basis 3. 3 Wu, Area Array 2, 8, 9, and 12 Interconnection Handbook 4. 3 Wu, Tang 4,, 16, and Wu, Green, De Lollis Wu, Brennan Wu, SATA Standard, Su 6, 7, 11, 19, and 20 VI. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY OF CLAIMS 1-20 OF THE 044 PATENT A. GROUND 1: CLAIMS 1 AND 3 ARE ANTICIPATED UNDER 3 U.S.C. 2 BY WU 1. Claim 1 is anticipated by Wu Preamble: An electrical connector assembly comprising: To the extent that the preamble is limiting, Wu discloses an electrical connector assembly. (Ex. 02 at ; see, e.g., Ex. 03 at 1:17-21, 1:4-6, Fig. 1.) Element [1.1]: an insulating housing having a plurality of grooves, a plurality of data terminal holes, and a plurality of power terminal holes; Wu discloses an insulating housing have a plurality of grooves, a plurality of data terminal holes, and a plurality of power terminal holes. (Ex. 02 at ; Ex. 03 at Fig. 1, 2:31-32.) Wu discloses a connector 1, a printed circuit board 1 (PCB) 2, a cable 3 and a cover 4 [and that the] connector 1 includes an elongate insulate housing and a plurality of contacts 14 received therein. (Ex. 03 at 2:29-32.) Wu further discloses that [a] plurality of slots 1224 are defined in the -1-

22 base portion 12[.] (Ex. 03 at 2:47-48.) These slots 1224 are the grooves in the language of the claim because they receive / retain the power and data contacts (i.e., the terminals in the language of the 044 Patent) in Wu. (Ex. 02 at 6-7.) As explained by Wu, [t]he contacts 14 are separated into a group of first contacts 142 for transmitting signal [i.e., data] and a group of second contacts 144 for transmitting power. Either [i.e., both] the first contact 142 or the second contact 144 includes mating portions 1420, 1440 extending into the ports, 6, main portions 1422, 1442 retained in the slots 1224[.] (Ex. 03 at 2:2-7 (emphasis added).) Therefore, it is clear that the portion of the slots 1224 that receive the contacts 142 ( data ) are grooves, and the ports are the data terminal holes, as the two terms are recited in this claim limitation. (Ex. 02 at 6-7.) It is also clear that the portion of the slots 1224 that receive the contacts 144 ( power ) are also grooves, and the ports 6 are the power terminal holes, as 1 the two terms are recited in this claim limitation. (Id.) Figures 1 and 2 of Wu, reproduced below, illustrate the connector 1, the insulated housing, the plurality of slots 1224, and the contacts 142 (data) and 144 (power) that fit within the slots. -16-

23 Fig. 1 of Wu Fig. 2 of Wu -17-

24 Figure 6 of Wu, reproduced below, is a cross-sectional view of the connector in Wu and discloses the portion that constitutes the slots 1224 (the grooves in the 044 Patent) and the portion that constitutes the ports and 6 (the data or power terminal holes in the 044 Patent). (Ex. 02 at 63-6.) Ports, 6 Slots 1224 Fig. 6 of Wu. Element [1.2]: a PCB (printed circuit board) having a plurality of first soldering holes, a plurality of second soldering holes, a plurality of first contacts electrically connected to the first soldering holes, and a plurality of second contacts electrically connected to the second soldering holes; Wu discloses a PCB (printed circuit board) adapted to be mounted to the insulated housing containing the claimed soldering holes and electrical contacts. (Ex. 02 at 8; Ex. 03 at 2:9-62.) Specifically, the PCB 2, as disclosed in -18-

25 Wu, contains a row of first conductive holes 202 and other row of second conductive holes 204 [] arranged in the mounting portion 20. A set of conductive pads 220 are formed on the connecting portion 22 and perpendicular to the first conductive holes 202 and the second conductive holes 204. The tail portions 1424, 1444 of the first and second contacts 142, 144 are inserted into the first and second conductive holes 202, 204 and soldered therein. (Ex. 03 at 2:62 3:2.) Thus, the PCB 2 in Wu contains two sets of conductive holes as claimed (i.e., soldering holes in the language of the claim, because, as in the 044 Patent, the conductive holes in Wu are used to solder the power and data terminals, as discussed herein). Further, it is inherent in Wu and understood that there are circuit lines (on the surface) or vias (embedded onto) the PCB 2 connecting the soldering holes 202 and 204 electrically to the conductive pads 220 disclosed in Wu. (Ex. 02 at 9.) A POSA would understand that such electrical connections between the 1 pads and holes are necessarily disclosed in Wu because they would be needed to allow the FFC to connect to the power and data terminals of the operative SATA connector disclosed in Wu. (Id. at 9.) Accordingly, Wu discloses this claim limitation. (Id. at 60.) Element [1.3]: a plurality of power terminals fastened in the grooves of 20 the insulating housing respectively, the power terminals each having a mating -19-

26 portion inserted into each of the power terminal holes, and the power terminals each having a soldering portion soldered in each of the first soldering holes; As explained above, Wu discloses that the contacts 14 consists of two groups of contacts wherein the second group of contacts 144 are for transmitting power. (See Ex. 03 at 2:2-7.) The second group of contacts 144 include mating portions 1440 extending into the port 6, main portions 1442 are retained in the slots (See id.) Again, as explained above, the slots 1224 are the grooves, in the language of the claims. The tail portions of the contacts 144 are then inserted into the conductive holes 204 and soldered within. (See Ex. 03 at 3:1-2.) Accordingly, Wu discloses this claim limitation. (See Ex. 02 at 62-6.) Element [1.4]: a plurality of data terminals fastened in the grooves of the insulating housing respectively, the data terminals each having a mating 1 portion inserted into each of the data terminal holes, and the data terminals each having a soldering portion soldered in each of the second soldering holes; and As explained above, Wu discloses that the contacts 14 consists of two groups of contacts, wherein the first group of contacts 142 are for transmitting 20 signal (i.e., data). (See Ex. 03 at 2:2-7.) The first group of contacts

27 include mating portions 1420 extending into the ports and where the main portions 1422 are retained in the slots 1224[.] (See id.) Again, as explained above, the slots 1224 are the grooves, in the language of the claims. The tail portions of the contacts 144 are then inserted into the conductive holes 204 and soldered within. (See Ex. 03 at 3:1-2.) Accordingly, Wu discloses this claim limitation. (See Ex. 02 at 70.) Element [1.]: an FFC (flexible flat cable) having an insulating layer for enclosing a plurality of conductors; Wu discloses a cable 3 (i.e., a FFC ) with an outer jacket 30 (i.e., an insulating layer ) and a number of wires 32 (i.e., a plurality of conductors ) inside the jacket 30. (Ex. 03 at 3:3-4.) A partial part of a front portion of the jacket 30 is removed so as to expose the wires 32 inside. (Id. at 3:4-.) The cable 3 clearly discloses the flexible flat cable, the jacket 30 discloses the insulating layer, and the wires 32 disclose the plurality of conductors. (Ex. 02 at ) 1 The cable 3 is a FFC because it is a flexible and flat cable that has a unitary construction for combining both power and data conductor wires into one cable, like the FFC of the 044 Patent and consistent with how this term is construed under BRI, as discussed above. (Ex. 02 at 72, 74.) Specifically, the cable 3 in Wu has wires 32 that are connected to the power and data contacts on the PCB, -21-

28 respectively, such that the cable 3 has a plurality of conductors, of which some are power conductors and some are data conductors, like the FFC in the 044 Patent. The cable 3 is also flat, as Wu shows in Figures 1 and 2, and because Wu explicitly states that cable 3 is itself housed in a flat-shaped cover 4. (Ex. 03 at Figs. 1 and 2; 3:9-.) And the cable 3 in Wu is flexible, as a cable of wires is inherently flexible (Ex. 02 at 73), and Wu explicitly discloses that it is housed in plastic or other insulated material (Ex. 03 at 3:9-). Plastic and other insulating materials (e.g., rubber) are known by a POSA to be flexible. (Ex. 02 at 73.) Likewise, the FFC described in the 044 Patent has an insulating layer for flexibility. (Ex. 01 at 3:1-3; Claims 1, 8, and 12.) Therefore, the cable 3 in Wu discloses the claimed FFC in the 044 Patent. (Ex. 02 at 73, 7.) Element [1.6]: wherein exposed ends of the conductors are electrically connected to the first contacts and the second contacts. Wu discloses that the conductors, consisting of the first conductors (i.e., data 1 wires) and the second conductors (i.e., power wires), inside the flat cable 3 are connected to the contacts pads 220 on the printed circuit board of the connector. (Ex. 02 at 76.) The specification of Wu states at 3:3-8 that: 20 The cable 3 has an outer jacket 30 and a number of wires 32 inside the jacket 30. Partial of a front portion of the jacket 30 is removed, with the wires 32 exposed outside. A metal ring 34 is crimped to a front end of jacket 30 for -22-

29 strain relief. The wires 32 are respectively soldered to the conductive pads 220 of the PCB. Wu therefore makes clear that it is the exposed ends of the wires 32 of the cable 3 that are soldered onto the conductive pads 220 on the PCB 2. Although Wu does not directly specify that the conductor wires 32 in the cable 3 are separated into power conductors and signal conductors, this is inherently disclosed by Wu. (Ex. 02 at 77.) This is because in order for Wu to be a connector assembly compliant with the SATA Standard, it must necessarily have separate power and signal conductors. (Id. at 77.) The conductive pads 220 in turn must necessarily be divided into conductive pads for the connecting the power conductors (i.e., first contacts) and conductive pads for connecting the signal conductors (i.e., second contacts). In fact, Patent Owner s own infringement contentions in the related district court action also argue that a FFC that connects to a PCB, as disclosed in Wu, necessarily means that the FFC has first and second conductors and that the 1 PCB has corresponding contacts. (See, e.g., Ex. 13 at Exhibit B, page 6 (providing infringement contentions for this element of the 044 Patent, and arguing that the designation of conductors as first or second is arbitrary and not significant for purposes of showing infringement of this claim because Patent Owner alleges that the accused FFC attaches to the PCB [i.e., such an arrangement 20 necessarily satisfies this element]).) -23-

30 As such, Wu necessarily discloses the limitation the exposed ends of the conductors are electrically connected to the first contacts and the second contacts. 2. Claim 3 is anticipated by Wu Claim 3: The electrical connector assembly of claim 1, wherein the insulating housing further comprises an internal wall, and wherein a first bending portion of the FFC is fastened by the internal wall and the PCB. Wu discloses a cable 3 connected to the PCB 2, where a cover 4 envelopes the PCB 2 and one end of the cable 3 connected to the PCB 2. (Ex. 03 at Fig..) As can be seen from Figure, reproduced below, a portion of the cable 3 extends into the opening formed by the cover 4. The wires 32 extending from the end of the cable 3 insert further into the assembly, thereby fitting into the cavity formed with the PCB 2 on one side and the bottom half of the cover 4 on the other side. Fig. of Wu -24-

31 Although Figure illustrates the cable 3 extending out from the cover 4 with no visible bend, in all practical applications, the cable has flex and will necessarily bend in the direction upon the point which it exits the cable 4; this is the fundamental nature of a flexible cable, such as cable 3. (Ex. 02 at 81.) The ends of the cable, i.e., the wires 32, are secured in part by the force applied by the PCB 2 and in part by the force applied by the back half of the cover 4. (See Ex. 02 at 80.) Accordingly, Wu discloses this claim. (Ex. 02 at 83.) B. GROUND 2: CLAIMS 1-3, 8-, 12, 13, AND 1 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU Wu anticipates Claims 1 and 3. In the alternative, even if Wu does not explicitly disclose the elements as recited in Claims 1 and 3, those elements, along with elements in Claims 2, 8-, and 12, 13 and 1, would have been obvious to a POSA in view of Wu. (Ex. 02 at 84, 122.) A POSA would have found Claims 1-3, 8-, 12-1 obvious in view Wu alone, because known work in one 1 field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. One of the most important design incentives in the field of connector design is the desire to reduce the number of components in the connector, both to make 20 the connectors easier to assemble and to make them more cost-efficient, because connectors are used in the highly cost-sensitive computer design and manufacture -2-

32 market. (Ex. 02 at 86.) Accordingly, a POSA would be motivated to apply these general motivations in the connector field to the designs taught by Wu. (Id.) Moreover, because the SATA Standard had already been issued for nearly eight years as of the time of the alleged invention of the 044 Patent, many of the possible design variations, including those specifically claimed by the 044 Patent, had already been tried and implemented. (Ex. 02 at 87.) For example, a POSA designing a SATA connector would have understood the benefit of more clearly distinguishing the contacts on the PCB to which the power and data conductors on the FFC are soldered because a SATA-compliant connector has separate power and data pins. (See Ex. 02 at 88.) Likewise, the use of a soldering portion (i.e., soldering contact) in place of a soldering hole to join a terminal with a bent tail would also have been obvious to a POSA because Wu disclosed using a soldering portion on another part of the PCB. (See Ex. 02 at ) 1 The need to provide strain relief for the wires of a FFC connected to the PCB through a physical bending design would also have been readily apparent to a POSA, for example, as Wu disclosed using a metal ring to provide strain relief. (See Ex. 02 at ) The need to provide additional strain relief by using the internal wall of the insulating housing and the PCB to fasten the PCB would 20 also be apparent to a POSA because Wu discloses fastening its FFC with the -26-

33 internal wall of its cover (i.e., internal wall of the housing) and the PCB. (See id. at 1) The foregoing general reasons for a POSA to modify Wu, to the extent even necessary, to arrive at the purported invention claimed in Claims 1-3, 8-, 12-1, are described in more detail below with respect to each specific claim limitation. 1. Claim 1 is obvious in view of Wu As explained above in Ground 1, Claim 1 is anticipated by Wu. However, the elements of Claim 1 would also have been obvious to a POSA in view of Wu alone. (Ex. 02 at 8.) Wu is directed to the design for a SATA connector assembly that includes a FFC, PCB, insulated housing, and power and data terminals (and corresponding soldering holes and electrical contacts), as recited in Claim 1. (Ex. 03 at 1:-30.) The difference, if any, between the scope of Claim 1 and the disclosures of Wu would have been obvious and readily apparent, simple design choices for a POSA. (See Ex. 02 at 8-87.) 1 It would have been obvious to a POSA that the PCB and FFC disclosed in Wu would and could have clearly distinguished between a set of first contacts for the power conductors and a set of second contacts for the data conductors, as claimed in Claim 1. (Id. at 88.) The explicit disclosure of separate power contacts 144 and data contacts 142 connected to the PCB (on the insulating 20 housing side) in Wu (Ex. 03 at 2:2-4) would have led a POSA to naturally -27-

34 choose to design the FFC and the PCB (on the side connecting to the FFC) in Wu with corresponding conductors and contacts respectively. (See Ex. 02 at 88.) The fact that electrical connection lines (e.g., vias) would have connected the soldering holes and the contacts in Wu would also have been obvious to a POSA because a POSA would know that such connections would be necessary to connect the conductors of the FFC to the host computer system through the PCB; without those electrical lines, the SATA connector would not be operative. (See Ex. 02 at 9.) Thus, to the extent that Wu does not anticipate Claim 1, that claim would have been obvious to a POSA in view of Wu. 2. Claim 8 is obvious in view of Wu Claim 8 of the 044 Patent recites substantially the same limitations as Claim 1. Claim 8 differs from Claim 1 in only the two following minor ways: (1) instead of claim element [1.2], which recites soldering holes, claim element [8.2] recites soldering portions ; and (2) instead of claim element [1.3], which recites a 1 soldering portion soldered in each of the first soldering holes, claim element [8.3] recites a bending tail soldered on each of the first soldering portions. While Wu explicitly discloses soldering holes and anticipates Claim 1 (see above at Section VI. A. 1.), it would have been obvious to a POSA to use a soldering portion in place of a soldering hole. (Ex. 02 at ) Soldering 20 portions and soldering holes have long been two common options for connecting a -28-

35 contact/terminal to a PCB. (Ex. 02 at 92.) Where a soldering hole is employed, a contact/terminal with a mating portion insertable into the soldering hole is used to complete the joint. (See id.) Where a soldering portion is employed, a contact/terminal intended to be perpendicularly joined uses a bending tail in conjunction to complete the joint. (Id.) This is a necessary relationship between soldering portions and contacts meant to be attached to the portions, due to the physical dimensions and characteristics of soldering portions and contacts (i.e., a terminal attaching to a soldering portion must have a bent tail to solder thereto, precisely because there is no hole). (See id.) Accordingly, while Wu explicitly discloses every other element in Claim 8 as is the case with Claim 1, it would have been obvious to substitute the mere design choice of a soldering portion and bending tail contact (i.e., terminal) combination in place of the soldering holes. (Ex. 02 at 93.) 3. Claim 12 is obvious in view of Wu 1 As explained above in Ground 1, Wu anticipates and renders obvious Claim 1 of the 044 Patent. Independent Claim 12 is substantially similar to Claim 1, but requires three additional limitations over Claim 1, as found within claim elements [12.] and [12.6]: (1) element [12.]: end of the FFC having a first bending portion and a second bending portion ; (2) element [12.6]: a cover secured to 20 the insulating housing; and (3) element [12.7]: the first bending portion is -29-

36 fastened by an internal wall of the insulating housing and the PCB, and the second bending portion is fastened by an internal wall of the cover and the PCB. These additional limitations, as found within Claim elements 12., 12.6, and 12.7, would have been obvious to a POSA in view of the Wu reference. (Ex. 02 at 114, 116.) As can be seen from Figure of Wu, reproduced below, Wu discloses a cable 3 connected to the PCB 2, where a cover 4 envelopes the PCB 2 and one end of the cable 3 connected to the PCB 2. (Ex. 03 at Fig..) Fig. of Wu Wu explains that the cover 4 is mounted to the connector 1 during assembly with the mating portion of the insulated housing extending outward through the front outlet 402, the base portion 12 held by engaging portion 40, the flange -30-

37 portion 1220 locked in the depression portion 406, the connecting portion 22 and the wires 32 soldered thereon accommodated in the retention portion 42, the metal ring 34 against protrusion portion 422. Glue (not shown) is applied to the cavity portion 1222 and grooves 1226 of the base portion 12 to ensure the cover 4 and the connector 1 combined reliably. (Ex. 03 at 3:24-33.) Therefore, Wu discloses element [12.6]: a cover secured to the insulating housing. The cable 3 can be designed, and would be understood by a POSA, to be inserted into the cover 4 at a bent angle. (see also Ex. 02 at ) Further, the cable 3 can be designed to bend twice, thus having a first and second bent portion, for the same reasons. (Ex. 02 at 111.) This obvious variation of Wu, with a FFC 3 having two bending portions, is illustrated below: Obvious Variation of Wu Patent (Ex. 02 at 111.) -31-

38 The design choice of providing two bent portions is primarily for the purpose of providing strain relief to the cable (i.e., securing the connection between the FFC and the PCB) and to provide for the routing of the cable. (Ex. 02 at 117.) The design in Wu provides for strain relief on the cable 3 (the FFC) using a metal ring 34 crimped to the front end of jacket 30. (Ex. 02 at 117; Ex. 03 at 3:-6.) Although the strain relief needs are met with the use of the crimped metal ring 34, it would be well-understood to a POSA to address the strain relief and routing needs of the cable by using two bent portions, which is a basic design choice easily within the ability and knowledge of a POSA and provides a cost benefit of obviating the need for an extra component i.e., the metal ring 34. (Ex. 02 at 117.) Thus, to the extent that Wu does not anticipate Claim 12, that claim would have been obvious to a POSA in view of Wu. (Ex. 02 at 118.) 4. Claims 2, 9, and 13 are obvious in view of Wu 1 Claims 2, 9, and 13: The electrical connector assembly of [claim 1, or claim 8, or claim 12] wherein a pitch between two adjacent first contacts is less than a pitch between any two adjacent first [soldering holes or soldering portion] of the PCB, and a pitch between any two adjacent second contacts is less than a pitch between any two adjacent second [soldering holes or 20 soldering portion] of the PCB. -32-

39 Claims 2, 9, and 13 are identical in the limitations that they recite, except that they depend from independent Claims 1, 8, and 12, respectively. Claim 9 further differs from Claims 2 and 13 in that it recites soldering portions instead of soldering holes, which would have been entirely obvious to a POSA. (See Section VI. B. 2.) Regarding the scope of Claims 2, 9, and 13, although Wu does not explicitly disclose that the pitch between any two adjacent contacts is less than a pitch between adjacent soldering holes, this would have been obvious to a POSA. Fundamentally, Wu is directed to a connector design for a SATA connector that must translate a connection between a standardized set of power and data terminals on one side of the connector to a cable connection on the other side that has a much narrower pitch between power and data lines. (Ex. 02 at 122.) Where a PCB is used as the mechanism for connection between the standardized set of power and data terminals to the much narrower pitch cable, the only solution is to employ a fan-in or fan-out design of the circuit lines or vias on the PCB 1 that reduces the pitch between the power and data terminals on one side and the cable on the other side. (See id.) Accordingly, Claims 2, 9, and 13 would have been obvious to a POSA.. Claims 3 and are obvious in view of Wu Claims 3 and : The electrical connector assembly of [claim 1 or 8], 20 wherein the insulating housing further comprises an internal wall, and -33-

40 wherein a first bending portion of the FFC is fastened by the internal wall and the PCB. Claims 3 and are identical in the limitations they recite except that they depend from independent Claims 1 and 8 respectively. As explained above, Wu anticipates Claim 3, which means that Wu also discloses the subject matter of Claim for the same reasons. In the alternative, even if Wu does not explicitly or inherently disclose Claims 3 and, it would have been obvious to a POSA to have a bending portion of the FFC be fastened by the internal wall and the PCB. (Ex. 02 at ) In designing a SATA connector with a cable connection on one end, management of the external forces exerted on the cable is a primary design consideration. (Ex. 02 at 128.) Significant strain is placed on the cable and the point where the cable is soldered to the PCB. (Id.) Without some form of strain relief, even a small amount of force exerted on the cable can cause the 1 soldered connection between the ends of the cable and the soldering portions on the PCB to become detached. (Id.) Wu discloses the use of one strain relief design option in the form of a metal ring 34 crimped to the front end of the cable around the jacket 30 just prior to where the wires 32 become exposed. (Ex. 03 at 3:-6, Fig..) Another obvious strain relief design option is to bend the cable as it exits 20 the cover 4. (Ex. 02 at 130; see also Ex. 02, Obvious Variant of Fig., at -34-

41 130 (reproduced below).) By simply designing the cable to exit the cover 4 from a side wall instead of an opening on the end (thus, necessarily leading to a bend in FFC wires), the direct force of a tug on the cable in the direction away from the connector insulating housing can be mitigated. (See Ex. 02 at 130.) The design of bending the cable as it exits the cover is coupled with a design of pinching (i.e., fastening) the soldered ends of the cable between the PCB 2 and the wall of the insulated housing. (Ex. 02 at 130; Ex. 03 at Fig..) It would have been obvious to a POSA to simply make the small modifications of (1) creating the opening for the cable to exit on a side wall of the cover or insulated housing and routing the cable out that way, and (2) using the internal wall of the cover or insulated housing to pinch (i.e., fasten) the cable in conjunction with a PCB. (See Ex. 02 at ) A POSA would be motivated to make these minor changes to Wu by the market and design forces discussed above (at Section VI. B.), and the changes represent a simple design 1 choice out of a finite and known set of options for securing the FFC wires to the PCB and housing, and which would lessen manufacturing costs by obviating the need for a component in Wu i.e., the metal ring 34. (Id. at 130.) Accordingly, Claims 3 and are obvious in view of Wu. -3-

42 Obvious Variation of Wu (Ex. 02 at 3.) 6. Claim 1 is obvious in view of Wu Claim 1: The electrical connector assembly of claim 12, wherein the cover further comprises an indentation to allow the FFC to pass therethrough. Claim 1 would have been obvious to a POSA in view of Wu. (Ex. 02 at 136.) Wu clearly discloses an opening at the end of the cover 4 (identified as a protrusion portion 422) from which the cable 3 enters the cover 4. (Ex. 03 at 3:13-1, Fig. 1.) In the 044 Patent, because the cover 60 happens to extend down to the point that it reaches past the point that the flexible flat cable 0 exits the insulating housing, a small indentation 63 must be provided for the flexible flat cable 0 to exit the cover 60 unobstructed. (Ex. 01 at Fig..) In Wu, because the cable 3 is exiting the cover 4 in a direction parallel to the length of the cover 4, the cover 4 does not obstruct the cable 3 in any way. But if the cable 3 had to be re-routed to exit the cover 4 in a direction perpendicular to its length, the opening could have been easily placed in a different location. (Ex. 02 at 130; see also -36-

43 Ex. 02, Obvious Variant of Fig., at 130 (reproduced above).) When the opening is in a different location where some obstruction is present, the opening is an indentation. (Ex. 02 at 134.) To a POSA, the creation of an indentation is only a matter of naming convention (as they perform the same function), but, in any event, the use of an indentation is one of the simple and obvious design choices out of the finite set of options for locating an opening within a cover. (Ex. 02 at 134.) Accordingly, Claim 1 is obvious in view of Wu. C. GROUND 3: CLAIMS 2, 8, 9 AND 13 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU AND THE AREA ARRAY INTERCONNECTION HANDBOOK As explained above in Grounds 1 and 2, Claims 1-3, 8-, 12, 13, and 1 of the 044 Patent are anticipated and rendered obvious by Wu. Further, Wu in combination with the Area Array Interconnection Handbook renders Claims 2, 8, 9 and 13 obvious to a POSA. A POSA would have reason to combine Wu with the 1 Area Array Interconnection Handbook because it is the application of a known technique to a known device (method, or product) ready for improvement to yield predictable results. The use of bent-tail (gull-wing) leads for attachment of electronic components by soldering to a PCB is well-known and produces predictably reliable connections just like a through-hole soldering. (See Ex at 149.) -37-

44 1. Claim 8 is obvious in view of Wu and the Area Array Interconnection Handbook As explained above (at Section VI. B. 2.), Claim 8 is obvious in view of Wu. In the alternative, the limitations recited in Claim 8 would have been obvious to a POSA when viewed in the light of Wu in combination with the Area Array Interconnection Handbook. More specifically, as discussed above, where Claim 8 recites a bending tail in place of a soldering portion, the use of a bending tail is obvious in view of the Area Array Interconnection Handbook. (Ex. 02 at ) A bending tail is a basic method for soldering the connections on a chip to the soldering portions on a PCB. (Ex. 02 at 149.) As can be seen from Figure of the Area Array Interconnection Handbook, reproduced below, a chip having a large number of leads are soldered onto a PCB. (Ex. 04 at p. 61.) Where a PCB has a soldering portion in place of a soldering hole, a POSA would understand that a bending tail lead, or better known in the prior art as a gull-wing 1 type lead, can be used. -38-

45 Fig of the Area Array Interconnection Handbook A POSA would have been motivated to combine Wu with the Area Array Interconnection Handbook because the use of bending tails is a known technique in electronics design and the design of PCBs. (Ex. 02 at -11.) The use of bending tails instead of terminals to be inserted and soldered within a soldering hole represents the application of a known technique to a known device ready for improvement a PCB with soldering holes for connections. (See Id.) The application of the known technique would yield predictable results, because the soldering of gull-wing leads from a chip to a corresponding soldering portion would produce the predictable results of creating a reliable connection. (See Id.) A reliable connection is a well-known and desired technique for a POSA, as explained above. (See id.) -39-

46 Accordingly, Claim 8 would have been obvious in view of Wu in combination with the Area Array Interconnection Handbook. 2. Claims 2, 9 and 13 are obvious in view of Wu and the Area Array Interconnection Handbook As explained above (at VI. B. 4.), Claims 2, 9, and 13 are obvious in view of Wu. In the alternative, the limitations recited in Claims 2, 9, and 13 would have been obvious when viewed in light of Wu in combination with the Area Array Interconnection Handbook. More specifically, as discussed above, where Wu is directed to a connector design for a SATA connector that must translate a connection between a standardized set of power and data terminals on one side of the connector to a cable connection on the other side that has a much narrower pitch between power and data lines, a fan-out design of the electrical vias on the PCB where the pitch of the soldering contacts are narrower than the pitch of the soldering holes (or portions) to which the cable is connected is obvious. 1 The Area Array Interconnection Handbook discloses a fan-out routing design on a substrate to connect features having different pitches, as shown in Figure 1-4, reproduced below. (Ex. 04 at p. 9; see also Ex. 02 at Fig. 1-4 below 14.) The fan-out design allows for the pitch between adjacent soldering contacts to be less than the pitch of adjacent soldering holes. While Wu does not 20 explicitly disclose the routing design on its PCB 2, a POSA would know and be -40-

47 motivated to apply the fan-out routing design of the Area Array Interconnection Handbook in conjunction with Wu. (Ex. 02 at ) Fig. 1-4 of the Area Array Interconnection Handbook A POSA would have been motivated to combine Wu with the Area Array Interconnection Handbook because the use of a fan-out routing design is the combination of prior art elements according to known methods to yield predictable results. For example, the use of a fan-out routing design represents the application of a known technique to a known device ready for improvement (i.e., a PCB as disclosed in Wu with soldering holes along it wide length and soldering contacts along its narrow length) according to known methods (i.e., using a fan-out routing method on a PCB to increase the pitch between soldering holes and contacts) to yield predictable results (i.e., the pitch of the soldering contacts can be narrower than the pitch of the soldering holes, which a POSA would have known to be highly desirable because only then can the standardized pin configuration of -41-

48 the SATA Connector be connected with a FFC with a much smaller pitch to be routed inside a computer). (Ex. 02 at ) Accordingly, Claims 2, 9, and 13 would have been obvious to a POSA in combination with Wu and the Area Array Interconnection Handbook. D. GROUND 4: CLAIMS 4,, 16 AND 18 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU AND TANG As explained above in Grounds 1 and 2, Claims 1-3, 8-, 12, 13, and 1 of the 044 Patent are anticipated and rendered obvious by Wu. Further, Wu in combination with Tang, renders Claims 4,, 16 and 18 obvious to a POSA. A POSA would have reason to combine Wu with Tang because it represents the use of a known technique to improve similar devices (methods, or products) in the same way. The use of a pin and a latch to secure and retain a PCB to the insulated housing of a connector is well-known. (Ex. 02 at 166.) Further, the use of protrusions as a spacing mechanism (i.e., a block) in the insulating housing to align 1 a PCB so it does not get positioned incorrectly during assembly is well-known. (Ex. 02 at 163.) Wu discloses the use of a protruding lip along the entire length of the bottom of the base portion 12 to ensure that the PCB is aligned correctly. A POSA designing SATA connectors referencing Wu would therefore consider additional mechanisms as disclosed in Tang for aligning, securing, and 20 retaining the PCB. (See Ex. 02 at 163.) -42-

49 1. Claims 4 and 16 are obvious in view of Wu and Tang Claim 4: The electrical connector assembly of claim 1, wherein the insulating housing further has at least one latch, and the latch of the insulating housing is pressed to clamp the PCB. Claim 16: The electrical connector assembly of claim 12, wherein the insulating housing further has at least one latch, the PCB further has, and the latch of the insulating housing is pressed to clamp the PCB. Claims 4 and 16 are essentially identical claims. Claim 16, however recites the claim terms, the PCB further has. These terms which are nonsensical in the grammatical structure of the claim, especially in light of corresponding Claim 4 are clearly typographical errors erroneously added into Claim 16 during drafting (and such prosecution history does not provide any contrary interpretation) and should therefore not be considered. See, e.g., Novo Indus., L.P. v. Micro Molds Corp., 30 F.3d 1348, 137 (Fed. Cir. 2003) (holding 1 that a patent claim may be corrected through claim construction if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims. ) For all intents and purposes, Claims 4 and 16 should be considered together for the purposes of this petition. -43-

50 Tang is directed to an electrical connector having a dielectric (i.e., insulating) housing, a plurality of terminals retained within the dielectric housing, a pair of securing devices fixed in the housing, and a PCB, where the PCB is secured by securing devices to the dielectric housing. (Ex. 0 at Abstract.) Figure 1 of Tang, reproduced below, illustrates the electrical connector 1 with a dielectric housing. (Ex. 0 at Fig. 1, 1:62-64.) Fig. 1 of Tang As seen for example in Figure 1, Tang also discloses a plurality of terminal passageways 11 formed in the dielectric housing, each terminal passageway 11 having a terminal 12 inserted within when assembled. (Ex. 0 at Fig. 1, 1:6-67.) -44-

51 Tang further discloses two pairs of spaced standoffs 1 (i.e., stopper or block in the language of the 044 Patent) are formed on opposite ends of the mounting surface b. (Ex. 0 at Fig. 1, 2:3-.) Within each of the spaced standoffs 1 ( stopper or block ) is a retaining recess 14 formed within the opening 1a that can retain a secur[ity] device 20, [which is used] for connecting to the printed circuit board 30. (Ex. 0 at Fig. 1, 2:-8.) As described by Tang, the security device is a board lock 21 which includes a base portion 21a retained in the retaining recess 14 and a fork portion 21b to be received in a retaining hole 33 (Fig. 4) of the printed circuit board 30. (Ex. 0 at Fig. 1, 2:9-13.) The printed circuit board 30 in Tang includes an array of through holes 31 for mounting of the terminals 12, a pair of mounting holes 32 for mounting the positioning posts 13, and a pair of retaining holes 33 for mounting the board locks 21 therein. (Ex. 0 at 2:44-47.) The printed circuit board 30 as disclosed in Tang in Figure 4, is reproduced below. 1-4-

52 Fig. 4 of Tang Next, the fork portion 21b of the board lock 21 in Tang is inserted into the retaining hole 33 to retain the PCB 30. (Ex. 0 at 2:9-13.) The combined action of the board lock 21 and its fork portion 21b discloses the claimed latch, because the board lock 21 and its fork portion 21b in Tang act as a fastening mechanism by retaining the PCB and preventing movement once they are mounted in to the mounting hole 33, just as described in the 044 Patent. (Ex. 02 at 170.) Moreover, the board lock 21 and its fork portion 21b in Tang disclose that the latch of the insulating housing is pressed to clamp the PCB, as recited in Claims 4 and 16. (Ex. 02 at 170.) This is because, in Tang, the board lock 21 and its fork portion 21b together exert a force against the rims of the mounting hole 33 in the PCB to fasten it, as claimed in this limitation. (See Ex. 02 at 170.) Lastly, a POSA would have been motivated to combine Wu with Tang because the combination represents the use of a known technique to improve -46-

53 similar devices (methods, or products) in the same way. Wu uses a sliding cover enveloping a portion of the insulating housing and the entire PCB to secure the PCB to the insulating house. This method represented one of the known and finite methods for securing the PCB to the insulating housing. (Ex. 02 at 166.) The use of a latch with corresponding holes for engaging the latch and the pin, as disclosed in Tang, was another known design choice. (See id.) A POSA would have known that using the latch in Tang would improve the connection in Wu because it is more secure as opposed to a sliding cover. (Ex. 02 at 166.) Thus, the combination of Wu and Tang represents the substitution of a known technique to improve similar devices in the same way. Accordingly, Claims 4 and 16 would have been obvious to a POSA in view of Wu in combination with Tang. (See Ex. 02 at ) 2. Claims and 18 are obvious in view of Wu and Tang Claim : The electrical connector assembly of claim 4, wherein the 1 insulating housing further has at least one stopper and at least one block, wherein a bottom edge of the PCB is held by the latch and the block, a top edge of the PCB is held by the latch and the stopper. Claim 18: The electrical connector assembly of claim 12, wherein the insulating housing has at least one block and at least one stopper, wherein a -47-

54 bottom edge of the PCB is held by the latch and the block, a top edge of the PCB is held by the latch and the stopper. Wu discloses the use of a stopper, labeled as element 122, for locating the PCB in a repeatable manner inside the insulating housing. Wu describes a sunken portion 120 recessed from the back surface of the base portion 120 with a stopper member 122 positioned laterally next to the sunken portion 120. (Ex. 03 2:41-44.) This stopper member serves the same function as the stopper of the 044 Patent by allowing the PCB to be positioned within the insulating housing in a repeatable manner. Thus, it discloses the stopper of the 044 Patent. (Ex. 02 at 173.) Tang also discloses the claimed block in the form of the pair of spaced standoffs 1 on each side of the dielectric housing and which are spacing mechanisms used when the PCB 30 is mounted to the dielectric housing. In Tang, the board lock 21 and spaced standoffs 1 serve as the latch and 1 block to hold the PCB 30. (Ex. 02 at 167.; see also Ex. 0 at 2:1-12.) The positioning posts 13 and their rings act as the pin and stopper to hold the PCB 30. (Ex. 02 at 167.) Together, the board lock 21, spaced standoffs 1, and positioning posts 13, space the PCB so that it is simultaneously secure and mounted flush against the insulating housing. (See Ex. 02 at ) Thus, 20 the two separate spaced standoffs in Tang perform the same function as the -48-

55 block and stopper in the 044 Patent. As such, Tang discloses Claims and 18 when combined with Wu. In the alternative, even if Tang were not deemed to explicitly disclose the limitations of Claims and 18, it would have been obvious to a POSA to make minor adjustments to the board lock 21, spaced standoffs 1, positioning posts 13 and ring so that they function identically to how the latch, block, and stopper function to retain the PCB. (Ex. 02 at 172.) One example of a minor modification is to enlarge and raise the small ring at the base of the positioning post 13 further up the length of the positioning post 13. (See Ex. 02 at ) Accordingly, Claims and 18 would have been obvious to a POSA in view of Wu in combination with Tang. 1 E. GROUND : CLAIM 14 IS OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU IN COMBINATION WITH GREEN AND DE LOLLIS As explained above in Grounds 1 and 2, Claims 1-3, 8-, 12, 13, and 1 of the 044 Patent are anticipated and rendered obvious by Wu. Further, Wu, when combined with Green and De Lollis, would have rendered Claim 14 obvious to a POSA. A POSA would have reason to combine Wu with Green and De Lollis 20 because it was obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Wu discloses that -49-

56 glue is applied to the cavity portion 1222 and grooves 1226 of the base portion 12 to ensure that cover 4 and the connector 1 are securely joined together. (Ex. 03 at 3:31-33, Fig. 2.) Wu was clearly concerned with using adhesives to reinforce and secure mechanically weak components together. (Ex. 02 at 176.) A POSA therefore would have referenced Green and De Lollis to understand how and where adhesive can be added (Green discloses an injection hole) and the type of adhesives that can be used (De Lollis). (See Ex. 02 at 176.) 1. Claim 14 is obvious in view of Wu, Green, and De Lollis Claim 14: The electrical connector assembly of claim 12, wherein the cover having an injecting hole for injecting adhesive thereinto, the position the injecting hole corresponded to the position of the first bending portions of the FFC, the adhesive being hot melt type adhesive, quick dry adhesive, silicone adhesive, acrylate acid based adhesive, hot melt type inorganic adhesive, AB adhesive, or UV adhesive for protecting the first bending portions and the 1 conductors. Green is directed to a connector for interconnecting a daughter card to a mother board. (Ex. 06 at Abstract.) Green discloses an injecting hole for injecting adhesive thereinto. (Ex. 02 at 177; Ex. 06 at Fig., 3:0-60.) As can be seen in Figure, reproduced below, Green discloses: 20 Holes 86 extend through plate 82 at each location of a solder connection between an upper contact section 66 and -0-

57 a circuit trace, and also at the upper end 88 of each guide post 62. Potting compound 98 is disposed in each hole 86 to embed and thus seal each electrical connection therein. (Ex. 06 at 3:0-60.) Fig. of Green The holes 86 extending throughout the plate 82 of dielectric material in Green are identical to the injecting hole 61 formed on the cover 60 of the 044 Patent. (Ex. 02 at 177.; see also Ex. 06 at 3:0-60.) The holes 86 are positioned over the soldering location so that potting compound 98 can be injected into each hole to embed and seal the electrical connection therein. (Ex. 06 at 3:0-60.) Potting compound is generally understood by a POSA to be an adhesive. (Ex. 02 at 178.) Green discloses one example of the potting compound to be an epoxy resin and recognizes that the potting compound can be used to provide -1-

58 strain relief at the soldering portion of the flexible circuit element and the connector. (Ex. 02 at ; See Ex. 06 at 4:34-40.) De Lollis is an article that discloses the use of adhesives and sealants in electronics. (Ex. 07 at p. 1.) De Lollis discloses that a wide variety of resin compounds in a wide variety of material classes, such as elastomers, epoxies, polyurethanes, polysulfides, and silicones, are available as sealants and adhesives for electronics. (Ex. 02 at 181; see also Ex. 07 at p. 1.) A POSA would therefore have been motivated to combine Wu with Green and with De Lollis because it was obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Green disclosed an obvious and known way to further secure connections by adding glue through an injection hole. (Ex. 02 at 176.) De Lollis discloses the finite number of types of substances useable as glue. It was therefore obvious to try these combinations to arrive at the claimed invention with full confidence in 1 success (securing items, including electronic components, with adhesives is a well- known, conventional, and basic technique, after all). (Id.) Accordingly, Claim 14 would have been obvious to a POSA in view of Wu in combination with Green and De Lollis. -2-

59 F. GROUND 6: CLAIM 17 IS OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU AND BRENNAN As explained above in Grounds 1 and 2, Claims 1-3, 8-, 12, 13, and 1 of the 044 Patent are anticipated and rendered obvious by Wu. Further, Wu, when combined with Brennan, would have rendered Claim 17 obvious to a POSA. A POSA would have had reason to combine Wu with Brennan because it was obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Wu has a cover 4 that it secures to the insulated housing by sliding the cover 4 into position and additionally securing it with glue. (See Ex. 03 at 3:31-33, Fig. 2, 3.) Brennan discloses openings and hooks for essentially clipping one component to another, which is reversible (it can be unclipped). There are only a finite number of methods to join plastic components in electronics. The use of hooks or latches clipped into openings is one method; ultra-sonic welding is another; and snap 1 fitting is a third. (Ex. 02 at 186.) A POSA would have known that this technique of hooks-and-latches would have been beneficial and successful for Wu s SATA connector because it may be reversible if necessary to repair loosened soldered connections. A POSA designing a SATA connector referencing Wu therefore would have combined Wu with Brennan. (Ex. 02 at 186.) -3-

60 1. Claim 17 is obvious in view of Wu and Brennan Claim 17: The electrical connector assembly of claim 12, wherein the cover is buckled on a rib of the insulating housing, the cover further comprises at least one buckling hole and at least one buckling portion, the rib further comprises at least one hook, and the buckling portion is buckled on the hook, wherein the hook having an inclined surface. Brennan is directed to an electrical connector that includes an inner insulating housing and an outer metallic shield 14 with an upper shield half portion 48 and a lower shield half portion 0. (Ex. 08 at Fig. 2, 3:46-1.) Figure 2 of Brennan, reproduced below, shows the two shield halves 48 and 0. The upper shield half 48 has a plurality of detent openings 8 along each of the pair of sidewalls 48b for snapping engagement with lower shield half 0. (Ex. 08 at Fig. 2, 3:9-61.) Lower shield half 0 has a pair of sidewalls 0b along which are a plurality of outwardly directed hook projections 70 that snap to the detent 1 openings 8 in side walls 48b of the upper shield half 48 to hold the two shield halves together. (Ex. 08 at Fig. 2, 4:16-21.) -4-

61 Fig. 2 of Brennan As shown and discussed above, Brennan s plurality of detent openings 8 on each side wall 48b of the upper shield half 48 disclose the cover further comprising at least one buckling hole and at least one buckling portion limitation of Claim 17. A POSA would understand the recitation of the pin and the hook in Claim 17 to at least include a hook-like projection that engages with an opening. (Ex. 02 at 190.) Brennan s outwardly directed hook projections 70 on both side walls 0b of the lower shield half portion 0 disclose the pin and hook of Claim 17 that engages with the buckling hole and buckling portion respectively. (Ex. 02 at 190.) The outwardly directed hook projections 70 in Brennan would have an inclined surface to facilitate the effectiveness of engaging with the detent openings 8, and such an inclined feature would have been obvious to a POSA, in any event, for the well-understood design technique of using inclined engaging mechanisms --

62 because they provide a more secure engagement due to fundamental properties of friction and gravity. (Ex. 02 at 191.) Accordingly, Claim 17 would have been obvious to a POSA in view of Wu in combination with Brennan. G. GROUND 7: CLAIMS 6, 7, 11, 19 AND 20 ARE OBVIOUS UNDER 3 U.S.C. 3 IN VIEW OF WU IN COMBINATION WITH THE SATA STANDARD AND SU As explained above in Grounds 1 and 2, Claims 1-3, 8-, 12, 13, and 1 of the 044 Patent are anticipated and rendered obvious by Wu. Further, Wu, when combined with the SATA Standard and Su, renders Claim 6, 7, 11, 19 and 20 obvious to a POSA. A POSA would have had reason to combine Wu with the SATA Standard because there was some teaching, suggestion, or motivation in the prior art that would have led a POSA to combine these references to arrive at the claimed invention. The 044 Patent discloses and claims a connector assembly 1 compliant with the SATA Standard. (Ex. 02 at 36.) When designing a SATA 20 connector assembly compliant with the SATA Standard, a POSA would have a clear reason to reference that standard in determining requirements under the standard and available design options to meet those requirements. (See Ex. 02 at 200) Further, a POSA would understand that in order to implement a multidevice connector that is compliant with the SATA Standard, more power must be delivered through the connector than there are ports available. Su provides a -6-

63 solution to address these problems; hence a POSA would be motivated to combine Wu with the SATA Standard and Su. (Ex. 02 at 200.) 1. Claims 6, 11, and 19 are obvious in view of Wu in combination with the SATA Standard and Su Claims 6, 11, and 19: The electrical connector assembly of [claim 1, or claim 8, or claim 12], wherein the conductors of the FFC are soldered on the first contacts and the second conductors of the PCB by a two-to-one soldering relation, the first contacts electrically connected to the first [soldering holes or soldering portions] by a one-to-one connecting relation, and the second contacts electrically connected to the second [soldering holes or soldering portions] by a one-to-one connecting relation. Claims 6, 11, and 19 are nearly identical with the exception that they depend from Claims 1, 8, and 12 respectively. As explained above (at VI. B. 2.), Claim 8 differs from Claim 1 only in that Claim 8 recites soldering portions in place of 1 soldering holes. This difference between the claims is of no consequence in these sets of claims because the focus of the claims is the soldering ratios that occur at each soldering point, regardless of whether it is a soldering contact, a soldering hole, or a more generic soldering portion. As explained above (at VI. A. 1), although the Wu reference clearly 20 discloses soldering contacts on the PCB to which the exposed ends of the FFC are soldered, as well as soldering holes on the PCB to which the terminals are inserted -7-

64 and soldered, it does not explicitly disclose electrical connections between them. However, it is inherent in Wu and obvious to a POSA that electrical connections in the form of circuit lines or vias are present on the PCB to interconnect the soldering contacts and soldering holes (see above at VI. A. 1.). The SATA Standard is a standard for a high-speed serial interface to interconnect various peripherals (see Ex. 02 at 36; Ex. 09 at p. 21), the SATA Standard allows for peripherals and computing devices to directly connect with each other without declaring which is the master and which is the slave. (Ex. 02 at 37.) The SATA Standard also defined the ability for one device to directly connect to multiple devices. The SATA Standard explained this in the form of a Multi Lane SATA cable connecting a device (for a processor on a motherboard) to two separate devices using two port multipliers, one for each device. (Ex. 09 at Fig. 12 (reproduced below), p..) As such, a single SATA-compliant connector may have inputs coming from 1 more than one device or outputs going to more than one SATA device. (Ex. 02 at 200.) It is also understood by a POSA, that in a SATA connector, data and power can flow in either direction over the connections. (See id.) -8-

65 Fig. 12 of the SATA Standard A POSA would understand that there are two cases that require a SATA connector to receive multiple inputs or deliver multiple outputs. (See Ex. 02 at 200.) The first case is where the FFC end (input side) is connected to a power source and the standardized terminal side is connected to the peripheral (output side) that requires more power. (See id.) In that scenario, more power can be delivered by soldering two conductors to the same contact on the PCB for the power terminals. (Ex. 02 at 197.) Under the well-known Kirchoff s Current Law in this field, two current sources coming into a junction is add together to deliver the sum of incoming currents in the output. (Id.) -9-