Paper 10
`
`
`
` Entered: February 4, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-00472
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
` Entered: February 4, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-00472
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`I.
`INTRODUCTION
`PNY Technologies, Inc. (“PNY”) filed a Petition (“Pet.,” Paper 2)
`requesting inter partes review of claims 1-4, 8-12, and 16 of U.S. Patent
`No. 7,518,879 (“the ’879 Patent”). Patent Owner, Phison Electronics Corp.
`(“Phison”), filed a Preliminary Response thereto (“Prelim. Resp.,” Paper 7).
`We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides:
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`We are persuaded that the information presented in the Petition and
`Preliminary Response demonstrates that there is a reasonable likelihood that
`PNY will prevail in challenging claims 1-4, 8-12, and 16 as unpatentable
`under 35 U.S.C. §§ 102 and 103. Pursuant to 35 U.S.C. § 314, we hereby
`authorize an inter partes review to be instituted as to claims 1-4, 8-12, and
`16 of the ’879 Patent.
`
`
`
`A.
`
`Related Matters
`
`PNY indicates (Pet. 2) that a complaint alleging infringement of the
`’879 Patent was filed on November 15, 2012, titled Phison Electronics
`Corp. v. PNY Technologies, Inc., Civil Action No. 1:12-cv-01478-GMS, in
`the U.S. District Court for the District of Delaware. Another patent, U.S.
`
`2
`
`
`
`Casee IPR2013--00472
`
`
`18,879
`
`Patennt No. 7,5
`
`004773) filed byy Silicon MMotion Tecchnology CCorp. Siliccon Motionn identifiess
`
`
`
`
`
`
`
`
`Patennt No. 8,1776,267, alsso assignedd to Phisonn, is also thhe subject oof that
`
`
`
`
`
`litigaation, and is challengged in an innter partess review peetition (IPRR2013-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PNYY as a real pparty-in-innterest in thhat inter paartes revieww proceedding. In
`
`
`
`
`
`
`
`
`addition, PNY filed a seccond inter ppartes reviiew petitioon (IPR20114-00150)
`
`
`
`
`
`
`
`
`on NNovember 14, 2013, cchallengingg additionaal claims oof the ’879
`Patent.
`
`
`
`
`B. The IInvention oof the ’8799 Patent (ExEx. 1001)
`
`
`
`
`
`
`
`
`
`
`
`
`
`The inveention of thhe ’879 Paatent relatess to a Univversal Seriaal Bus
`and 6,
`
`
`
`
`(USBB) memoryy device. EEx. 1001, AAbs. As c
`ontext for
`Figures 5
`
`
`
`
`
`
`
`reprooduced bellow, the inndicated poortion of thhe USB connnector illuustrated
`
`
`
`would be part oof the “maale” USB connector thhat is inserrted into a
`“female”
`
`
`
`
`USBB socket.
`
`
`
`Inserted portion
`
`
`
`
`
`
`
`
`
`
`
`FFigs. 5 andd 6 illustratte a USB mmemory app
`paratus.
`
`3
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`The USB memory apparatus includes housing 51 having a plurality of
`orientated indentations 511 and a plurality of concave props 512, wherein
`the plurality of orientated indentations facilitates the USB memory apparatus
`to be connected through insertion into the female USB socket. Ex. 1001 at
`4:14-27. The apparatus also includes print circuit board assembly (PCBA)
`52 disposed in the housing with end base 54, wherein the PCBA is fixed by
`means of pressing of the plurality of concave props 512 and forms space 53
`between the housing and the PCBA. Id.
`
`
`
`
`C.
`
`Challenged Claims
`
`PNY challenges independent claims 1 and 9, as well as dependent
`
`claims 2-4, 8, 10-12, and 16. Claim 1 (with emphasis added) is reproduced
`below:
`
`1. A Universal Serial Bus (USB) memory plug,
`comprising:
`a housing having a plurality of orientated indentations
`and a plurality of concave props, wherein said plurality of
`orientated indentation facilitates said USB memory plug to be
`connected while said USB memory plug is inserted into a
`female USB socket; and a print circuit board assembly (PCBA)
`disposed in said housing, wherein said PCBA is fixed by means
`of pressing of said plurality of concave props, and a space is
`formed between said housing and said PCBA.
`
`
`D. Prior Art
`
`PNY refers to the following prior art references:
`Wang
`US 2006/0002096 A1
`January 5, 2006
`
`Ex. 1004
`
`4
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`US 7,074,052 B1
`Ni
`Takahashi US 2004/0027809 A1
`Minneman US 7,352,601 B1
`
`Admitted Art – the Background of the Invention section of the ’879
`Patent (Ex. 1001, 1:32–52, Fig. 1).
`
`
`July 11, 2006
`February 12, 2004
`April 1, 2008
`
`Ex. 1005
`Ex. 1006
`Ex. 1003
`
`E. Asserted Grounds of Unpatentability
`PNY challenges the patentability of claims 1-4, 8-12, and 16 of the
`’879 Patent based on the following asserted grounds of unpatentability:
`Reference(s)
`Basis Claims challenged
`Minneman
`§ 102 1-4, 8-12, and 16
`Minneman and Takahashi
`§ 103 1-4, 8-12, and 16
`Minneman and Admitted Art § 103 1-4 and 8
`Wang
`§ 102 9, 11, 12, and 16
`Wang and Admitted Art
`§ 103 1-4, 8, and 10
`Ni
`§ 103 1-4, 8-12, and 16
`Ni and Takahashi
`§ 103 1-4, 8-12, and 16
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`As a first step in our analysis for determining whether to institute a
`trial, we determine the meaning of the claims. In an inter partes review,
`claim terms in an unexpired patent are given their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard,
`
`5
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`claims are to be given their broadest reasonable interpretation consistent
`with the specification, and the claim language should be read in light of the
`specification, as it would be interpreted by one of ordinary skill in the art.
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`The sole contested claim term in dispute is “concave prop,” recited in
`independent claims 1 and 9. PNY argues that the broadest reasonable
`interpretation of concave “should be construed herein to encompass a prop
`that extends inwardly from a housing.” Pet. 5. PNY argues that this
`construction is consistent with Phison’s alleged use of the term and the
`disclosure of the ’879 Patent Specification. Id. at 5-6. Phison disputes such
`a construction, arguing instead that concave means “curving inwards to form
`a recess,” and that “prop” means “a structure that supports one thing apart
`from another.” Prelim. Resp. 4-7, 9-12. We are not persuaded that either
`party has provided the broadest reasonable interpretation of “concave prop,”
`consistent with the Specification, as discussed below.
`With respect to “concave,” PNY’s proposed interpretation, Pet. 5,
`reads out the topology inherent to concavity. A prop that “extends inwardly
`from a housing” can have any topology, but the recitation that the props are
`“concave” require a curving aspect to the props. Prelim. Resp. 5 (providing
`a dictionary definition). Phison’s proposed interpretation achieves that
`aspect by interpreting “concave” as “curving inwards.” We are persuaded,
`however, that Phison unduly narrows the interpretation by also requiring that
`“concave” also “form[s] a recess.” Prelim. Resp. 5. The ’879 Specification
`does not support Phison’s narrow interpretation.
`
`6
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`Phison quotes language from the ’879 Patent Specification that
`implies that the concave props are “integrally formed by means of punching
`the housing,” Prelim. Resp. 6; Ex. 1001 at 2:55-57. The Specification,
`however, also provides that “[i]n practice, the housing 51 is usually made
`from a metallic conductive material . . . and the plurality of concave props
`512 can be formed simultaneously by means of punching the housing 51.”
`Ex. 1001 at 4:28-32 (emphasis added). This language makes clear that the
`props are not required to be made by punching the housing. Additionally,
`the independent claims are all directed to USB memory plugs, and not
`methods for their manufacture, so we must construe the claim terms by their
`structures and not by how they were formed. Thus, the topological aspect of
`the claim term is met by interpreting “concave” as “curving inwards from a
`housing.” We conclude that such a limitation can be met based on the shape
`of an element, such that the particular element need not have a recess.
`With respect to “prop,” PNY does not proffer an interpretation, but
`Phison argues that “prop” means a structure that supports one thing apart
`from another. Prelim. Resp. 9-12. Phison argues that, according to the
`Specification, concave props take the place of the “flake spacer,” used in the
`disclosed prior art USB connectors, which kept elements apart, Id. at 10, and
`that other prop structures disclosed, such as detents that secure the flake
`spacer to the housing, must be distinguished from the claimed concave
`props. Id. at 11. We are not persuaded, however, that Phison’s proposed
`interpretation should be adopted in full.
`We are persuaded that a “prop” means “a structure that supports,” as
`alleged-in-part by Phison. Prelim. Resp. 9-10. We are not persuaded,
`
`7
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`however, that “prop,” as recited in claim 1, means keeping one thing apart
`from another. Claim 8, which depends from claim 1, explicitly recites that
`the props create the space between the housing and the PCBA, i.e., keep
`them apart. See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir.
`2005) (“the presence of a dependent claim that adds a particular limitation
`gives rise to a presumption that the limitation in question is not present in
`the independent claim.”) Detents in the disclosed prior art, Ex. 1001 Figs. 3
`and 4, are also distinguishable from the claimed concave props because the
`detents are not disclosed as being concave and do not fix by pressing of the
`PCBA, but instead secure the flake spacer. Thus, we are persuaded that a
`“prop” means “a structure that supports,” and that a “concave prop” means
`“a structure curving inwards from a housing providing support.”
`Additionally, while Phison contends that the Specification requires
`concave props “to be formed integrally” with the housing, Prelim. Resp. 6-8,
`we do not conclude that such a requirement is recited in the claims.
`Additionally, we conclude that such a requirement should not be imported
`into the claims from the Specification. Claims generally are not limited to
`any particular embodiment disclosed in the specification, even where only a
`single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004).
`
`
`B. Grounds of Unpatentability
`Anticipation by Minneman
`i)
`PNY asserts that claims 1-4, 8-12, and 16 of the ’879 Patent are
`anticipated by Minneman under 35 U.S.C. § 102 (e). Minneman is directed
`
`8
`
`
`
`Casee IPR2013--00472
`
`
`18,879
`
`Patennt No. 7,5
`
`
`
`to a mmemory device for uuse with a UUSB recepptacle. Ex.. 1003 Absstract.
`
`
`
`
`
`
`
`
`
`
`
`
`Figuures 3 and 44 of Minneeman are reeproduced d below:
`
`
`mbodiment Figgs. 3 and 4 of Minnemman illustrate one em
`
`
`
`
`
`of a memoory device
`es that the
`
`Minnemman disclos
`
`memory ddevice has
`housing 25
`
`disclosed
`
`
`withh openings 28 to carryy out reten
`
`
`
`
`
`tion of thee device wiith a USB rreceptacle..
`
`
`
`
`
`
`
`Id. aat 9:56 - 100:6. The mmemory devvice also inncludes cirrcuit board 40, with
`
`
`
`
`
`
`
`condductive patths 43 thereeon to interconnect eelectrical teerminals 222, data
`
`
`
`
`memmory 23, annd control ssystem 24.. Id. at 10::32-39. Thhe circuit bboard,
`
`
`
`
`
`
`
`
`
`
`condductive patths, controll system, ddata memorry, and eleectrical termminals
`
`
`
`
`
`
`formm sub-assemmbly 44. IId. at 10:399-41. Minnneman disccloses thatt:
`
`
`
`
`
`
`
`captivatiing indentaations in thhe housingg may be uused to possition
`
`
`
`
`and to seecure or too retain thee sub-assemmbly 44 in
`
`the housinng. . .
`
`
`
`
`
`
`[and] may be formmed by pusshing or ppressing onn the outsidde of
`
`
`the houssing 25 too cause it
`es or
`
`to deformm to crate
`[sic] guid
`
`
`detents oon the insidde of the hhousing; annd those guuides or deetents
`
`
`
`
`may be
`
`
`
`
`
`used to pposition and to retaain the suub-assemblly 44
`
`e.g., by mmechanical
`
`
`
`interferennce, by fricction fit annd/or
`therein,
`
`by presss fit.
`
` 5
`
`9
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`Id. at 10:55-61 (emphasis added). Figures 3 and 4 illustrate that a space is
`formed between the housing (25) and the printed circuit board (40). The
`captivating indentations of Minneman are equivalent to the claimed
`“concave props” because they fix the position of the circuit board within the
`housing. We are persuaded that PNY has demonstrated, Pet. 7-8, that it has
`a reasonable likelihood of prevailing in showing that independent claim 1is
`anticipated by Minneman. Similarly, with respect to independent claim 9,
`we also are persuaded that PNY has demonstrated, Pet. 10-11, that it has a
`reasonable likelihood of prevailing in showing that claim 9 is anticipated by
`Minneman, applying the same above-discussed elements.
`
`Phison argues that “the Petition conflates the stand-offs and the
`captivating indentations described by Minneman into a single structure.”
`Prelim. Resp. 13-14. Phison argues that Minneman describes the stand-offs
`and the captivating indentations as “being two wholly different structures.”
`Id. at 14. Even if the stand-offs and captivating indentations of Minneman
`were different structures, although we do not agree, the Petition has cited to
`both and has not “combined” those elements. As discussed above,
`Minneman clearly discloses that the “detents may be used to position and to
`retain the sub-assembly 44.” Ex. 1003 at 10:58-59. We are persuaded that
`the captivating indentations provide the retention of the concave props, as
`recited in independent claims 1 and 9.
`
`Phison also argues that the captivating indentations of Minneman
`cannot be read as the claimed “concave props” because Minneman does not
`illustrate them in the figures nor describe their shapes. Prelim. Resp. 16-17.
`While Phison acknowledges that Minneman specifies that the captivating
`
`10
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`indentations may be formed by pushing or pressing on the outside of the
`housing, Phison asserts that “curved shapes do not follow necessarily from
`these processes.” Id. at 16. However, logic and physics dictate that any die
`pressed into a housing sufficient to form an indentation on the inside of the
`housing, without puncturing the housing, is likely to create some curvature
`in that indentation through deformation of the housing material. While
`conceivable that the processes of Minneman could create an indent with no
`curvature, nothing therein or proffered by Phison indicates such a
`possibility. And while Phison argues that prior art Figure 3 of the ’879
`Patent illustrates a “non-prop recess,” id. at 18, formed by pushing and
`pressing on the housing, such a recess cannot be characterized as an
`“indentation,” as described in Minneman. The formation of a hole or such a
`non-prop recess must occur by puncturing the housing.
`Phison also argues that a detent is not a prop because it does not
`support one thing apart from another. Id. at 17. This argument, however,
`relies on an interpretation of “prop,” proffered by Phison, which we have not
`adopted. Phison also argues that the “position” function of the captivating
`indentations supports the conclusion that Minneman does not disclose that
`the captivating indentations perform the “support” function of the stand-offs.
`Id. at 18. Clearly, however, the “retain” function disclosed in Minneman is
`equivalent to the claim requirement of the circuit board being “fixed by
`means of pressing of said plurality of concave props.” Accordingly, we are
`not persuaded by Phison’s arguments.
`With respect to claims 2, 4, 8, 10, 12, and 16, PNY argues that
`Minneman discloses that the housing may be formed of metal (Ex. 1003,
`
`11
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`9:48-49; Pet. 8, 11), that a space is provided between the circuit board and
`the housing (Ex. 1003, Figs. 3, 4; Pet. 10, 13), and that the memory device
`may be used for a Compact Flash type memory (Ex, 1003, 10:28-31; Pet. 9,
`13). We are persuaded on the present record that Minneman discloses all of
`the limitations of dependent claims 2, 4, 8, 10, 12, and 16.
`With respect to claims 3 and 11, PNY argues that Minneman discloses
`that the sub-assembly includes a control system that functions as a memory
`controller, a storage memory, and a USB interface circuit, where those
`circuits may be a single integrated circuit, chip or device, located in the
`interior space of the housing. Ex. 1003 at 10:11-61; Pet. 8-9, 12. We are
`persuaded on the present record that Minneman discloses all of the
`limitations of dependent claims 3 and 11.
`Accordingly, we are persuaded that PNY has shown a reasonable
`likelihood that it will prevail in challenging 1-4, 8-12, and 16 of the '879
`Patent as anticipated under 35 U.S.C. § 102 by Minneman.
`
`
`ii) Obviousness over Minneman and Takahashi
`PNY also asserts that claims 1-4, 8-12, and 16 of the ’879 Patent are
`obvious over Minneman and Takahashi. Per our prior discussion above, we
`are persuaded that Minneman discloses all of the elements of those claims.
`PNY also argues that it would have been obvious to ordinary skilled artisans
`to have modified the stand-offs (45) of Minneman, which are acknowledged
`to not be curved, so that they would have been curved, as taught by
`Takahashi. We consider this ground below.
`
`12
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`Takahashi is directed to an integrated circuit (IC) card and IC device
`package. Ex. 1006 Abstract. The card includes a concave portion having
`protrusions, where the protrusions support a package including a wiring
`board. Id. at ¶¶ 0159-0162. We are persuaded by PNY’s argument that it
`would have been obvious to provide a curvature to the stand-offs of
`Minneman in view of the curved protrusions disclosed in Takahashi. Pet.
`14. We are further persuaded that “[t]he concave shape is a matter of
`[design] choice which a person of ordinary skill in the art would have found
`to be obvious.” Id.
`Phison argues that this ground is defective because Takahashi does
`not teach “concave props,” and instead teaches convex structures. Prelim.
`Resp. 21-22. However, this argument is based on the protrusions in
`Takahashi not forming a recess, which we do not adopt in our interpretation
`of “concave props.” The fact that Phison acknowledges that the protrusions
`“curve outward from the sidewalls of IC receiving portion 13,” id. at 23,
`comports with the adopted interpretation of “a structure curving inwards
`from a housing providing support,” in that they are curving, and curve
`outward from the sidewalls but inwards towards the concave portion, which
`would be equivalent to the inside of the housing.
`Phison also argues that a person of ordinary skill in the art would not
`have combined Minneman and Takahashi because their devices have
`different constructions and solve different problems. Id. at 23-25. We are
`not persuaded by this argument. “When a work is available in one field,
`design incentives and other market forces can prompt variations of it, either
`in the same field or in another.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`13
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`401 (2007). Moreover, while Phison is correct that “[t]here are an infinite
`number of shapes that can be adopted,” id. at 24, the concave protrusions of
`Takahashi would provide a suggestion for rounding of the stand-offs of
`Minneman, if not already suggested by experience or common sense. Thus,
`Phison’s arguments are not persuasive.
`With respect to the dependent claims, 2-4, 8, 10-12, and 16, the above
`discussion of the elements of those claims being anticipated by Minneman
`applies equally to those claims being obvious over Minneman and
`Takahashi. “‘[A]nticipation is the epitome of obviousness.’” In re
`McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002)(quoting Connell v. Sears
`Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Accordingly, we are
`persuaded that PNY has demonstrated that it has a reasonable likelihood of
`prevailing in showing that claims 1-4, 8-12, and 16 of the ’879 Patent are
`obvious over Minneman and Takahashi under 35 U.S.C. § 103.
`
`iii) Other Proposed Grounds of Unpatentability
`PNY also contends that claims 1-4, 8-12, and 16 are also unpatentable
`under 35 U.S.C. §§ 102 and 103 based in whole or in part on Minneman,
`Takahashi, the Admitted Art, Wang, or Ni. Pet. 23-52. Those grounds of
`unpatentability are redundant to the grounds of unpatentability on which we
`initiate an inter parties review, or are deficient in view of the above
`discussion.
`We acknowledge that PNY discusses the additional teachings of the
`Admitted Art, Wang and Ni, Pet. 23, 29-30, 31-34, 37. However, the
`Admitted Art does not add anything not already considered in the grounds
`
`14
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`discussed above. Thus, we conclude that the grounds applying the Admitted
`Art are redundant over the initiated grounds. Additionally, PNY discusses
`the alignment pins of Wang as being equivalent to the claimed concave
`props. Pet. 29. We determine, however, that Phison’s argument, i.e., that
`the Wang pins are not concave, Prelim. Resp. 26, to be persuasive and to be
`consistent with the adopted claim interpretation. Thus, we conclude that
`grounds applying Wang are deficient. With respect to Ni, PNY
`acknowledges that the props of Ni are not concave but that it would have
`been obvious to modify their shapes to make them concave. Pet. 37. Even
`if accepted to be true, however, that obviousness variation does not
`contribute anything not already considered in the grounds discussed above.
`Thus, we conclude that the grounds applying Ni are redundant over the
`initiated grounds.
`Accordingly, we do not authorize an inter partes review on the
`remaining grounds of unpatentability asserted by PNY against claims 1-4, 8-
`12, and 16 of the '879 Patent. See 37 C.F.R. § 42.108(a).
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented shows that there is a reasonable likelihood that PNY would prevail
`with respect to claims 1-4, 8-12, and 16 of the ’879 Patent. Accordingly, the
`Petition is granted on the grounds discussed above. The Board has not
`made a final determination on the patentability of any claim.
`
`
`
`
`15
`
`
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`IV. ORDER
`It is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1-4, 8-12, and 16 of the ’879 Patent
`for the following grounds of unpatentability:
`Claims 1-4, 8-12, and 16 as anticipated under 35 U.S.C. § 102 by
`Minneman;
`Claims 1-4, 8-12, and 16 as unpatentable under 35 U.S.C. § 103
`over Minneman and Takahashi.
`It is FURTHER ORDERED that an inter partes review is not
`instituted with respect to any of the other alleged grounds of
`unpatentability proffered in the Petition.
`
`It is FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`will commence on the entry date of this decision.
`
`It is FURTHER ORDERED that an initial conference call with the
`Board is scheduled for 2 PM Eastern Time on February 21, 2014. The
`parties are directed to the Office Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,765-66 (Aug. 14, 2012) for guidance in preparing for the initial
`conference call, and should be prepared to discuss any proposed changes to
`the Scheduling Order entered herewith and any motions the parties
`anticipate filing during the trial.
`
`
`
`16
`
`
`
`17
`
`Case IPR2013-00472
`Patent No. 7,518,879
`
`
`For PETITIONER:
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`
`For PATENT OWNER:
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`IPR23490-0008IP1@fr.com
`PTABInbound@fr.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
