Trials@uspto.gov
`571-272-7822
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` Paper 36
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` Entered: February 4, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`
`
`PHISON ELECTRONICS CORP.,
`Patent Owner.
`____________
`
`Case IPR2013-004721
`Patent 7,518,879 B2
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`1 Case IPR2014-00150 has been joined with this proceeding.
`
`
`571-272-7822
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`
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`
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`
`
`
`
`
`
` Paper 36
`
`
`
` Entered: February 4, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`
`
`PHISON ELECTRONICS CORP.,
`Patent Owner.
`____________
`
`Case IPR2013-004721
`Patent 7,518,879 B2
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`1 Case IPR2014-00150 has been joined with this proceeding.
`
`
`
`IPR2013-00472
`Patent 7,518,879 B2
`
`I.
`INTRODUCTION
`PNY Technologies, Inc. (“PNY”) filed a Petition (“1st Pet.,” Paper 2)
`requesting inter partes review of claims 1–4, 8–12, and 16 of U.S. Patent
`No. 7,518,879 B2 (“the ’879 Patent”). Patent Owner Phison Electronics
`Corp. (“Phison”) filed a Preliminary Response thereto ( Paper 7). On
`February 4, 2014, we instituted an inter partes review of claims 1–4, 8–12,
`and 16 on multiple grounds of unpatentability alleged in the Petition. Paper
`10 (“1st Dec.”). PNY also filed a second Petition (“2nd Pet.,” Paper 1,
`IPR2014-00150), alleging other grounds, and Phison filed a Preliminary
`Response thereto (Paper 6, IPR2014-00150). On April 28, 2014, we
`instituted an inter partes review of claims 1–21 on multiple grounds of
`unpatentability alleged in the second Petition. (“2nd Dec.,” Paper 8,
`IPR2014-00150). We granted a joint motion for joinder (Paper 7, IPR2014-
`00150), joining the IPR2014-00150 case with the IPR2013-00472 case
`(Paper 9, IPR2014-00150).
`After institution of trial, Phison filed a Patent Owner Response (PO
`Resp.,” Paper 24) and PNY filed a Reply thereto (“Reply,” Paper 29). An
`oral argument was held on November 12, 2014. The transcript of the
`consolidated hearing has been entered into the record. “Tr.,” Paper 36.
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`PNY has shown by a preponderance of the evidence that claims 1–21
`of the ’879 Patent are unpatentable.
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`2
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`IPR22013-004772
`
`
`Patennt 7,518,8779 B2
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`
`
`A. The ’8779 Patent ((Ex. 1001)
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`The’8799 Patent rellates to a UUniversal SSerial Bus ((USB) memmory
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`device. Ex. 10001, Abs. AAs contextt for the figgures reprooduced bellow, the
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`uppeer portion oof the connnector illusstrated in FFigs. 5 and
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`6 would bbe part of
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`the ““male” USB connectoor that is innserted intto a “femalle” USB soocket.
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`f
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`FFigs. 5 andd 6 illustratte a USB mmemory appparatus
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` having a pplurality o
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`The USBB memory apparatus includes hhousing 51
`11 and a p
`wherein
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`orienntated indeentations 5
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`lurality of f concave pprops 512,
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`the pplurality off orientatedd indentatioon facilitattes the USBB memoryy apparatuss
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`to bee connectedd through iinsertion innto the femmale USB ssocket. Exx. 1001 at
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`4:144–27. The apparatus also includdes print ciircuit boardd assemblyy (PCBA)
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`52 ddisposed in the housinng with endd base 54,
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`
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`wherein thhe PCBA iis fixed by
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`meanns of presssing of the plurality oof concave
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`props 5122 and formss space 53
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`betwween the hoousing and the PCBAA. Id.
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`3
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`IPR2013-00472
`Patent 7,518,879 B2
`
`Illustrative Claim
`B.
`The ’879 Patent includes claims 1–21, and a trial was instituted on all
`
`of those claims. Claims 1, and 9, and 17 are independent claims.
`Independent claim 1 is reproduced below (with emphases):
`
`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.
`
`
`C. Prior Art Relied Upon
`PNY relies upon the following prior art references in its alleged
`grounds of unpatentability:
`June 13, 2007
`Takahashi US 2004/0027809 A1
`Apr. 1, 2008
`Minneman US 7,352,601 B1
`Elbaz
`US 2004/0259423 A1 Dec. 23, 2004
`Deng
`US 6,829,672 B1
`
`Dec. 7, 2004
`
`Ex. 1006
`Ex. 1003
`Ex. 10032
`Ex. 10042
`
`Admitted Art – the Background of the Invention section of the ’879
`Patent (Ex. 1001, 1:41–52; Fig. 1; 1:10–2:26).
`
`
`
`
`2 The cited exhibit numbers come from exhibits in the IPR2014-00150
`proceeding.
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`4
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`Patent 7,518,879 B2
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`D. Grounds of Unpatentability Instituted for Trial
`The following table summarizes the challenges to patentability that
`were instituted for inter partes review3:
`References
`Basis
`Minneman and Takahashi
`§ 103
`Elbaz and Deng
`§ 103
`Elbaz, Deng, and Admitted Art.
`§ 103
`
`
`Claims challenged
`1–4, 8–12, and 16
`1, 3–9, and 11–21
`2 and 10
`
`II. ANALYSIS
`
`A. Claim Construction
`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). Claim terms also are
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech, Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Concave Prop
`The claim term “concave prop” is recited in independent claims 1, 9,
`and 17. We determined, in the Decision to Institute, that “concave prop”
`means “a structure curving inwards from a housing providing support.” 2nd
`Dec. 8. Phison disputes this construction, arguing that “concave” must
`
`3 An anticipation ground over Minneman was also part of the instituted
`grounds (1st Dec. 16), but was later removed as a ground of the trial. Paper
`16, 3.
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`include the aspect of forming a recess and that it must be understood that a
`“prop” must also support one thing apart from another. PO Resp. 8–23.
`PNY counters that the construction espoused in the Decision to Institute is
`correct. Reply 1–6. We are persuaded partially by Phison’s arguments and
`amend our construction as discussed below.
`With respect to the “concave” aspect of “concave prop,” we are
`persuaded that construing “concave” as only “curving inwards from a
`housing” does not conform to the ordinary meaning of the term. We stated
`in the second Decision to Institute that a recess “cannot act as a prop, . . .
`[t]he portion that acts as a prop is the portion that extends inwardly from the
`housing,” and “that ‘concave’ need not require the formation of a recess.”
`2nd Dec. 7. We are now persuaded that construing “concave” such that a
`convex protrusion that acts as a prop, without a concave portion,
`impermissibly “reads out” the concave aspect of “concave prop.” We also
`are persuaded that there is not sufficient evidence in the instant record that
`shows that Phison acted as its own lexicographer, redefining the term
`“concave prop.”
`PNY argues that the ’879 Patent fails to describe the term “concave”
`as including a recess and that Phison should not be allowed “to impart the
`‘recess’ limitation into its construction of concave.” Reply 2. We do not
`agree that including the recess aspect can only be proper if explicitly recited
`in the Specification. The plain, ordinary meaning of “concave,” in the
`context of the claim language, includes the meaning of having a recess, thus,
`one of ordinary skill in the art would have included that aspect in any
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`possible construction of “concave.” Equally, we are unpersuaded that a lack
`of illustration in the drawings of the ’879 Patent showing curvature is
`dispositive. Reply 3–4. As PNY has pointed out, both parties agree that the
`term “concave” includes the concept of “curving inwards” (Reply 1) – a lack
`of illustrated curvature does not undermine that construction where the plain,
`ordinary meaning of “concave” would imply curvature.
`In addition, Phison has effectively disclaimed the claims covering
`embodiments where the recess has been filled-in or covered:
`
`JUDGE ELLURU: Say I take that product from figure 6 and I
`want to have a smooth housing. So I fill in those indentations
`with rubber, okay, because I want a smooth outer surface.
`What is the shape of that prop at that point?
`MR. BARKAN: If it is completely filled in, it is no longer
`concave. It is also not the invention of the claims because we
`are no longer being oriented indentations.
`Tr. 38. Based on the plain meaning of “concave,” consistent with the claim
`language and the ’879 Patent Specification, we construe “concave” to mean
`“curving inwards from a housing to form a recess.”
`With respect to Phison’s arguments regarding the “prop” portion of
`“concave prop,” we are not persuaded. Phison argues that the construction
`for “prop” is incomplete because it encompasses structures that cannot be
`props because they fail to maintain one structure apart from another. PO
`Resp. 19–20. Phison continues that in the context of the ’879 Patent, the
`concave props supplant the flake spacer which provides separation, and the
`separation function of the props is essential to meeting the explicit objects of
`the invention. PO Resp. 20–21. We do not agree. Claim 1 recites, for
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`example, “a space is formed between said housing and said PCBA,” such
`that ascribing the “separation” to the claim term “prop” is unnecessary.
`Requiring that a prop also provides for separation of elements creates an
`unduly narrow construction. We find no explicit recitation in the
`Specification of the ’879 Patent that requires a prop to provide separation for
`one thing apart from another.
`Phison also argues that the claims use both words, “prop” and
`“support,” such that defining “prop” synonymously with “support” is
`impermissible since it would provide different claim terms with the same
`meanings. PO Resp. 21–22. We are persuaded, however, by PNY’s
`arguments that claims 8, 16, and 19 recite “support” not as a noun, per the
`independent claims, but as an infinitive, such as the “concave props are used
`to support said PCBA.” Reply 5. If dependent claims recited “a support,” it
`could be error to equate “support” and “prop,” but that is not the instant
`circumstance.
`As such, we amend our construction of “concave prop” to mean “a
`structure curving inwards from a housing to form a recess providing
`support.”
`
`Fixed, to Fix
`The claim terms “fixed” and “to fix” are recited in independent claims
`1, 9, and 17, where we found that the meaning of “fixed” is “fastened
`securely in position.” 2nd Dec. 8. This was a construction suggested by
`Phison, but Phison argues that the construction used in the Decisions to
`Institute “is broader than the plain meaning of the term ‘fixed’ as a skilled
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`Patent 7,518,879 B2
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`artisan would have understood it at the time of the ’879 Patent, and thus, is
`improper under the broadest reasonable interpretation standard.” PO Resp.
`24. Phison argues that it is unclear how an object could be fastened securely
`in position and yet unsecured in certain directions. Id. PNY counters that
`the adopted construction need not be constrained to a single position such
`that the object can never move. Reply 6–7.
`We agree with PNY. It is not necessary for an object to be
`constrained in all directions and along every degree of freedom to be
`fastened securely in position. To the extent that Phison is arguing that
`“fixed” should be equivalent to immovable or immobile, we conclude that
`that is a different construction. We continue to find that the meaning of
`“fixed” is “fastened securely in position.”
`
`
`Principles of Law
`B.
`To prevail in its challenges to the patentability of the claims, PNY
`must prove unpatentability by a preponderance of the evidence. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
`§ 103(a) if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill
`in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007). To establish obviousness of a claimed
`invention, all the claim limitations must be taught or suggested by the prior
`art. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
`
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`2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974).
`A patent claim composed of several elements, however, is not proved
`obvious merely by demonstrating that each of its elements was known,
`independently, in the prior art. KSR, 550 U.S. at 419. In that regard, for an
`obviousness analysis it is important to identify a reason that would have
`prompted one of skill in the art to combine prior art elements in the way the
`claimed invention does. Id. However, a precise teaching directed to the
`specific subject matter of a challenged claim is not necessary to establish
`obviousness. Id. Rather, obviousness must be gauged in view of common
`sense and the creativity of an ordinarily skilled artisan. Id. Moreover,
`obviousness can be established when the prior art itself would have
`suggested the claimed subject matter to a person of ordinary skill in the art.
`In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
`We analyze the instituted grounds of unpatentability in accordance
`with the above-stated principles.
`
`
`Claims 1–4, 8–12, and 16
`C.
`– Alleged Obviousness Over Minneman and Takahashi
`PNY asserts that claims 1–4, 8–12, and 16 of the '879 Patent are
`unpatentable over Minneman and Takahashi under 35 U.S.C. § 103.
`Independent claims 1 and 9 recite “concave props.” Phison argues that this
`ground is defective because neither the protrusions of Takahashi nor the
`captivating indentations of Minneman are concave according to the broadest
`reasonable interpretation of the term. PO Resp. 25–34. PNY counters that
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`IPR2013-00472
`Patent 7,518,879 B2
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`substantial evidence supports the conclusion that one of ordinary skill in the
`art would shape the props of Minneman so that they are concave. Reply. 8–
`10. Based on the our construction of “concave prop,” discussed above, we
`are not persuaded that Minneman and Takahashi render claims 1–4, 8–12,
`and 16 obvious under 35 U.S.C. § 103.
`We have determined previously that Minneman does not disclose that
`the captivating indentations are curving or that it would have been inherent
`for them to have curvature based on their formation process. Paper 16, 3.
`The rationale for altering the stand-offs of Minneman to have curvature
`comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We
`have acknowledged as well that protrusions in Takahashi do not disclose a
`recess as a part thereof. Id. Based on our construction of “concave prop,”
`we are not persuaded that one of ordinary skill in the art would have
`modified Minneman’s stand-offs to be curved and have recesses based on
`the disclosure of Takahashi.
`PNY argues that Mr. Steven Visser, Phison’s expert, admitted during
`his deposition that the “props” of Minneman could be shaped so that they are
`concave, and that this is clear evidence that one of ordinary skill in the art
`would have viewed shaping the structures of Minneman so that they are
`concave as an obvious design choice. Reply 8; Ex. 1008, 90:11–16, 98:23–
`99:1. Mr. Visser’s testimony is not persuasive, however, because he merely
`acknowledges that Minneman’s stand-offs could be formed by forming a
`recess in the housing, and that they could be curved in shape. This does not
`address why the combination would have props which are concave with a
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`recess when Takahashi’s elements are solid and it is not clear that
`Minneman’s stand-offs have a recess. We find neither statement by Mr.
`Visser to be persuasive.
`As such, we are not persuaded that PNY has shown by a
`preponderance of the evidence that independent claims 1 and 9, and for the
`same reasons, dependent claims 2–4, 8, 10–12, and 16 of the ’879 Patent are
`unpatentable over Minneman and Takahashi under 35 U.S.C. § 103.
`
`
`D. Claims 1, 3–9, and 11–21
`– Alleged Obviousness Over Elbaz and Deng
`PNY asserts that claims 1, 3–9, and 11–21 of the ’879 Patent are
`unpatentable over Elbaz and Deng under 35 U.S.C. § 103. Phison argues
`that this ground is defective for several reasons. PO Resp. 42–56. PNY
`counters those arguments. Reply 12–15. We are persuaded that PNY has
`shown by a preponderance of the evidence that claims 1, 3–9, and 11–21 of
`the ’879 Patent are unpatentable over Elbaz and Deng under 35 U.S.C.
`§ 103.
`Elbaz is directed to a dongle having a module with an integrated
`circuit chip connected to a contact area flush with the module. Ex. 10034
`¶ 1. Figures 10A, 10B, and 10C of Elbaz are reproduced below:
`
`
`4 The cited exhibit numbers for Elbaz and Deng come from exhibits in the
`IPR2014-00150 proceeding.
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`one emboddiment of tthe donglee
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`Figgs. 10A, 100B, and 10CC of Elbazz illustrate
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`PNY arggues that EElbaz disclooses the eleements of
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`the indepeendent
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`claimms. Elbaz discloses, in a third eembodimennt, that thee dongle haas adaptor
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` Id. ¶ 3. EElbaz also
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`514 that can bee plugged iinto a USBB port of a
`computer.
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`disclloses that tthe adaptorr receives mmodule 5 tthrough guuiding meanns 515 thaat
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`may be ribs annd work in concert wiith a lockinng means tto maintainn the
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`moddule in the iinserted poosition. Id.. ¶ 60. Elbbaz continuues in that
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`“[t]hese
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`the mmodule is ppreferably removablee in order ppossibly too be replaceed by
`e.” Id.
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`anothher modul
`dentations
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`The adapptor also inncludes oppenings 5122 that are ooriented in
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`that cooperate with locking blades oof a USB pport recepttacle to holld the
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`adapptor. Id. ¶¶¶ 48, 49, 544. Elbaz allso disclosses that thee adaptor:
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`also commprises meeans 516 ffor raising
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`the modulle 5 or thee part
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`51 so tthat the ccontact arreas 28 aare in conntact withh the
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`connectiion lugs 322 when thee dongle 1
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`consistingg of the addaptor
`13
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`locking means do not neccessarily loock the moodule in thee adaptor ddefinitivelyy;
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`plus module assembly is inserted in the port 3: these means 516
`can be ribs situated at the base of the connector 514 or on the
`sides and thus cooperate with the guidance means 515. The
`guidance means 515 of the module then also ensure the
`positioning of the module at the correct height.
`
`Id. ¶ 61 (emphasis added). Figure 10C of Elbaz illustrates that a space is
`formed between the module and the adaptor housing, both above and below
`the housing, as illustrated by PNY. 2nd Pet. 8.
`
`We note that Elbaz also provides that:
`The module 5 obtained using a method of manufacturing a chip
`card 29 and depicted in FIG. 1 is composed of a plastic module
`body 27 in which there is embedded an integrated circuit chip
`connected to contact areas 28 flush with the surface of the said
`module 5 and comprising at least four contact areas for
`supplying current to the chip, communicating digital data and
`earthing.
`Ex. 1003 ¶ 11. The module, however, is not necessarily the same as the
`claimed “printed circuit board assembly.” As illustrated in Figure 1 of
`Elbaz, the integrated circuit chip is integrated into the chip card material and
`there does not appear to be any printed circuit board.
`Deng is directed to an electronic flash memory external storage device
`having an access control circuit that, in cooperation with firmware, allows
`for data transfer through a USB port. Ex. 1004, Abstract. Deng teaches
`printed circuit board 51, with components mounted thereon, that is contained
`within casing 5 with a USB connector 23. Id. at 6:66–7:5; Fig. 2. The
`access control circuit 2 has microprocessor 21, USB interface controller 221,
`and USB interface 231. Id. at 7:16–31; Fig. 3. The device also includes an
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`LED, where various light states of the LED represent various operating
`states. Id. at 13:49–52.
`PNY argues that it would have been obvious to a person of ordinary
`skill in the art to fashion the module of Elbaz as a printed circuit board, as
`taught by Deng, per the independent claims. 2nd Pet. 21. PNY further
`argues that such a modification would be nothing more than a mere
`substitution of a well-known type of circuit configuration for the module
`used in Elbaz. Based on the instant record, we agree. In addition, PNY also
`argues that since Deng includes an LED for indicating the operating state of
`the device, ordinarily skilled artisans would have incorporated such an LED
`into the device of Elbaz, in view of its use in Deng, per claims 3–7, 13–15,
`and 17–21. Id. at 22. We agree that the use of an LED in one device renders
`its use obvious in the other device. Lastly, PNY argues that the use of a
`flash memory, memory controller and USB interface controller, all disclosed
`in Deng, in the device of Elbaz would have been obvious. Id. at 22–23.
`PNY argues that such components are well-known, standard electrical
`components, and that one of ordinary skill in the art would recognize their
`utility to the device in Elbaz. Phison raises various arguments why this
`combination fails to meet all of the claim limitations and would not be
`obvious. We find Phison’s arguments, however, unpersuasive. Therefore,
`we agree and are persuaded by Petitioner’s contentions that the combination
`of Elbaz and Deng renders claims 1, 3–9, and 11–21 obvious.
`Phison begins by arguing that the combination of Elbaz and Deng is
`defective because the combination fails to teach or suggest that the “PCBA
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`is fixed” by the concave props. PO Resp. 42–48. Phison argues that Elbaz’s
`means for raising (516) does not fasten Elbaz’s module securely in any
`position. Id. at 43. Phison continues that it is a means of locking the
`module that fixes the module in place and not the means for raising or the
`guidance means. Id. at 44. We do not agree. First, independent claims 1, 9,
`and 17 do not require that the concave props act alone to fix the PCBA,
`because of the use of “comprising” language in those claims, and merely
`require that the concave props act to fix the PCBA.
`Second, although Phison expounds on the lack of clarity in Elbaz’s
`description of the interface between the module and adaptor, alleging that it
`is unclear whether there is overlap, edge contact, or how tightly the module
`is constrained (PO Resp. 45–47), the most obvious formulation is that the
`guiding means and the raising means allow for the module to be placed in its
`proper position. Elbaz details that the adaptor receives the module through
`guiding means to place the module in the inserted, proper position. Ex. 1003
`¶ 60. Although Phison focuses on the disclosure of Elbaz as providing for
`“‘probabilities and possibilities’” (PO Resp. 47), we determine that one of
`ordinary skill in the art would have read Elbaz as having the module touch
`the guiding means and the raising means and being fixed, at least partially,
`by that contact.
`Phison also relies on the testimony of Mr. Visser. PO Resp. 45–47;
`Ex. 2008 ¶¶ 44–48. Although Mr. Visser argues that the “guiding means
`515 could loosely receive the module, allowing some movement of the
`module 5 between the guiding means 515 and between the guiding means
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`515 and means for raising 516, yet still provide guidance to the module 5,”
`(Ex. 2008 ¶ 48), for example, we do not find this testimony persuasive.
`Although the Elbaz drawings and specification do not provide tolerances or
`dimensions, we are persuaded that one of ordinary skill in the art would have
`arrived at the conclusion that the module was received in the adaptor
`through the guiding means and the raising means and maintained securely
`such that vertical movement would not occur. Further, Mr. Visser
`acknowledges that the guiding means and the raising means act to properly
`position the module (Ex. 1008, 133:8–19), so that those aspects of the
`adaptor would need to at least touch and come in contact with the module.
`As such, we are not persuaded by Mr. Visser’s testimony that one of
`ordinary skill in the art would not have understood that the module in Elbaz
`would have been inserted and secured in position through the guiding means
`and the raising means.
`Phison also argues that the combination of Elbaz and Deng fails to
`teach or suggest that the PCBA is fixed by means of pressing of the concave
`props. PO Resp. 48–49. Phison argues that, at most, the means for raising
`touch the module in certain circumstances and that touching cannot
`constitute a disclosure of concave props that fix by pressing. Id. at 48.
`Phison also cites to declarant Mr. Visser who opines that “[o]ne of skill in
`the art would thus have understood pressing implies more than merely
`touching or contacting.” Ex. 2008 ¶ 51. PNY counters that there is
`frictional engagement between the module and the means for raising in
`Elbaz when the module is inserted into the adaptor, which implies pressing
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`
`of some kind. Reply 14–15. Additionally, PNY argues that the friction
`between elements would not prevent insertion or removal of the module,
`which was agreed to by Mr. Visser. Id. at 15; Ex. 1008, 139:1–3.
`We agree with PNY. Similar to the discussion above with respect to
`fixing of the module in the adaptor, there must be some sort of frictional
`engagement to maintain the position of the module. If the module is
`maintained in position by the ribs of the means for raising and the guidance
`means, as discussed above, it must be pressed by the adaptor to achieve that
`end. Such pressure need not be of the sort that would disallow removal of
`the module or cause fracturing of the module, but be sufficient to maintain
`the position. As pointed out by PNY, this position is critical so that when
`the adaptor is inserted into the USB socket the contacts on the module would
`be aligned properly. Reply 14. As such, we are persuaded that it would
`have been obvious for one of ordinary skill in the art to have inserted the
`PCBA of Deng into the adaptor of Elbaz to achieve a working memory plug,
`such that the ribs of the means for raising would press and fix the PCBA into
`its proper position and alignment.
`Phison also argues that the combination of Elbaz and Deng is
`defective because Elbaz teaches away from a combination that includes a
`PCBA. PO Resp. 49–52. Phison argues that Elbaz teaches away because it
`seeks to create a dongle which is less expensive to manufacture, and
`discloses that chip cards provide the benefit of increased attack resistance
`and the omission of certain elements. Id. at 50–51. Phison continues that a
`PCBA would not provide the same attack resistance as chip cards and would
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`
`require the inclusion of shielding elements, and would increase
`manufacturing costs. Id. Phison also takes exception to our characterization
`that “Elbaz provides a preference for the use of an integrated circuit chip
`card [that] does not rise to the level of teaching away.” 2nd Dec. 15. We do
`not agree.
`Phison provides no evidence of the relative costs of PCBAs and chip
`cards, such that an increase in manufacturing costs has not been
`demonstrated. Although the use of a PCBA may require shielding and not
`provide the same attack resistance, such disadvantages may be offset by the
`lower relative cost of the PCBA. We also do not agree that Elbaz teaches
`away, as a reference must criticize, discredit, or otherwise discourage the
`solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195,
`1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not
`teachings that disparage or discourage the use of alternate electronic
`components.
`Phison disputes that it would have been obvious to one of ordinary
`skill in the art to have included an LED in the housing of Elbaz. PO Resp.
`53–54. Phison argues that Elbaz teaches away because it seeks to create a
`dongle which is less expensive to manufacture, and the inclusion of the LED
`would increase cost and complexity. Id. at 53. We do not agree that Elbaz
`teaches away, as a reference must criticize, discredit, or otherwise
`discourage the solution to constitute a teaching away. In re Fulton at 1201.
`The aspirational objective of Elbaz can be countered by the benefits of
`knowing the operational status of the user. See 2nd Dec. 17. Thus, we are
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`not persuaded that Elbaz teaches away from the incorporation of the LED
`into its system.
`Phison continues that the second Petition fails to provide explicit
`analysis required for the obviousness determination and that Elbaz’s housing
`fails to provide sufficient space for the inclusion of an LED. PO Resp. 53–
`54. We disagree that the analysis is insufficient merely because it is general;
`rather, we are concerned with what the combined teachings of the references
`would have suggested to those of ordinary skill in the art. In addition, the
`“test for obviousness is not whether the features of a secondary reference
`may be bodily incorporated into the structure of the primary reference.” In
`re Keller, 642 F.2d 413, 425 (CCPA 1981). The fact that Elbaz’s dongle, as
`disclosed, cannot accommodate an LED in its physical structure does not
`refute what the combination would have suggested to ordinarily skilled
`artisans.
`Phison also argues that the rationale supplied in the second Petition to
`render the elements of claims 3, 11, and 20 obvious is insufficient. PO
`Resp. 54–56. Phison argues that no reason is provided by PNY for finding
`the memory controller, the storage memory, and the interface circuit to be
`well-known, standard electrical components recognized by ordinarily skilled
`artisans. Id. We do not agree. As provided in the second Decision, Deng
`discloses a microprocessor, a USB interface controller, and a USB interface.
`2nd Dec. 13. As such, Deng discloses the elements of claims 3, 11, and 20,
`so that Phison’s argument is directed merely to the efficacy of the
`combination of Elbaz and Deng, as discussed above. Because we are not
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`persuaded as to defects in the combination with respect to the independent
`claims, we are also unpersuaded with respect to the dependent claims.
`Thus, we are persuaded that PNY has shown by a preponderance of
`the evidence that claims 1, 3–9, and 11–21 of the ’879 Patent are
`unpatentable over Elbaz and Deng under 35 U.S.C. § 103.
`
`
`Claims 2 and 10
`E.
`– Alleged Obviousness Over Elbaz, Deng, and Admitted Art
`With respect to claims 2 and 10, PNY argues that the Admitted Art
`establishes that it was known for a housing to be made of a metallic
`conductive material. 2nd Pet. 38; Ex. 1001 1:41–52. PNY also argues that
`forming the housing of Elbaz from such a metallic conductive material
`would have been a simple substitution to yield predictable results. Id.
`Phison addresses this ground based on supposed defects in the
`combinations of Elbaz and Deng. PO Resp. 42–56. As discussed above, we
`are not persuaded that Elbaz and Deng fail to teach or suggest all of the
`elements of the independent claims. We are further persuaded that it would
`have been obvious to form the housing from a metallic conductive material,
`per Admitted Art. Ex. 1001 1:41–52. Thus, we also are persuaded that PNY
`has shown by a preponderance of the evidence that claims 2 and 10 of
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