Trials@uspto.gov
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`571-272-7822
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`Paper No. 37 and 14
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`February 10, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
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`PNY TECHNOLOGIES, INC.
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`Petitioner
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`vs.
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`PHISON ELECTRONICS CORP.
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`Patent Owner
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`- - - - - - - -
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`Case Nos. IPR2013-00472, IPR2014-00150
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`Patent No. 7,518,879
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`Technology Center 2800
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`Oral Hearing Held: Wednesday, November 12, 2014
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`Before: KEVIN TURNER (via video link), STEPHEN SIU, RAMA
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`G. ELLURU, Administrative Patent Judges.
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`The above-entitled matter came on for hearing on Wednesday,
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`November 12, 2014, at 1:05 p.m., in Hearing Room D, taken at the U.S.
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`Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`
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`571-272-7822
`
`
`
`
`
`
`
`Paper No. 37 and 14
`
`February 10, 2015
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`PNY TECHNOLOGIES, INC.
`
`Petitioner
`
`vs.
`
`PHISON ELECTRONICS CORP.
`
`Patent Owner
`
`- - - - - - - -
`
`
`
`Case Nos. IPR2013-00472, IPR2014-00150
`
`Patent No. 7,518,879
`
`Technology Center 2800
`
`
`
`Oral Hearing Held: Wednesday, November 12, 2014
`
`
`
`
`
`Before: KEVIN TURNER (via video link), STEPHEN SIU, RAMA
`
`G. ELLURU, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`November 12, 2014, at 1:05 p.m., in Hearing Room D, taken at the U.S.
`
`Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`MARK E. NIKOLSKY, ESQ.
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`SANJIV CHOKSHI, ESQ.
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`TIMOTHY P. HORNLISH, ESQ.
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`McCarter & English, LLP
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`Four Gateway Center
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`100 Mulberry Street
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`Newark, New Jersey 07102
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`973-622-4444
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`ON BEHALF OF THE PATENT OWNER:
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`DAVID M. BARKAN, ESQ.
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`Fish & Richardson P.C.
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`500 Arguello Street, Suite 500
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`Redwood City, California 94063
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`650-839-5065
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`JOSHUA A. GRISWOLD, ESQ.
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`Fish & Richardson P.C.
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`1717 Main Street, Suite 5000
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`Dallas, Texas 75201
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`214-292-4034
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` 2
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`P R O C E E D I N G S
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`JUDGE ELLUR U: Let's go on the record. This is
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`(1:05 p. m.)
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`the final hearing in IPR's 2013 -00472 and 2014 -00150,
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`between PNY Te c hnologies, Inc . as Petitioner and Phison
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`Electronics Corpo ration as the Pate nt Owner.
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`Counsel, could yo u please identif y yourselves
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`starting with Peti tioner.
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`MR. NI KOLSKY: Good afte rnoon. On behalf of
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`the Petitioner my na me is M ark Nikolsky fro m the la w fir m of
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`McCarter & Engli sh.
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`With me are my c olleagues Sanjiv Chokshi, who is
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`backup counsel, a nd our associate Ti m Ho mlish, wh o has been
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`working with us o n this case.
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`JUDGE ELLUR U: Welco me . And Patent Owner?
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`MR. BARKAN: Good afternoon, Your Honor.
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`David Ba rkan, Fi sh & Richardson, for Phison. And with me is
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`Josh Griswold.
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`JUDGE ELLUR U: Thank you . I a m Judge Elluru.
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`I have Judge Siu on my right, and Judge Turner appearing
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`re mot el y is o n my left. Please take into consideration that
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`Judge Turner is a ppearing re motel y in making your
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`presentation.
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`Judge Turner, can you he ar us?
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`JUDGE TURNER : I can hear you . Can you hea r
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`me?
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` 3
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`JUDGE ELLUR U: Yes. This hea r ing covers two
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`cases and one pat ent. The 472 cas e challenges clai ms in U.S .
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`Patent No . 7 ,518, 879. The 150 c ase also challenges clai ms of
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`the '879 patent. We joined the 150 case to the 472 case and
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`we instituted an i nter partes review of clai ms 1 throu gh 21 of
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`the '879 patent.
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`The issues toda y are confined to the grounds set
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`forth for tri al in our decision to institute in the 450 case. We
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`instituted review on the ground that clai ms 1 through 4, 8
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`through 12, and 16 are unpatentable under 35 U. S. C. Section
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`103 over the co mbination of Minneman and Takahas hi.
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`And in the 150 c a se we instituted review on the
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`ground that clai ms 1, 3 through 9, and 11 through 21 are
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`unpatentable under 35 U. S. C. Sect ion 103 over the
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`co mbination of El baz and Deng, an d clai ms 2 and 10 are
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`unpatentable unde r 35 U. S. C. 103 over the co mbination of
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`Elbaz, Deng, and the ad mitted art .
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`Each side will have one hour of total ti me to
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`present argu ment in the two cases. The parties ma y allocate
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`their 60 minutes between the two c ases as the y se e f it.
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`But we do ask tha t when you mak e an argu ment
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`that is specific to a pa rticular c ase or a pa rticular gr ound,
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`please identif y cl earl y for the r eco rd which of the c ases and
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`which ground that argu ment is dire cted toward .
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`PNY Technologies bears the ulti ma te burden of
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`proof t hat the pat ent clai ms at issue ar e unpatentable, so PNY
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`Technologies will present a rgu ment first, followed by Phison
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`Electronics.
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`Mr. Nikolsk y, does P NY Technologies wish to
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`reserve ti me for r ebuttal?
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`MR. NI KOLSKY: Yes, the y do. C an we r eserve
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`15 min utes, pleas e?
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`JUDGE ELLUR U: Yes. And I ' m g oing to do this
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`the old -fashioned wa y b y using the clock. So I will give you a
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`warning at five minutes.
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`MR. NI KOLSKY: Oka y. Gre at.
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`JUDGE ELLUR U: Are you read y?
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`MR. NI KOLSKY: Yes, I a m.
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`JUDGE ELLUR U: Pl e ase begin.
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`MR. NI KOLSKY: Thank you , You r Honors. Ma y
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`it please the Boar d, again, my na me is Ma rk Nikolsky on
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`behalf of the Peti tioner PNY Te chnologies.
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`Your Honors, the Petitioners are he re toda y to set
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`forth that all the clai ms of the '879 patent ar e invalid for the
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`reasons set forth in the first and se cond petition that P NY has
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`filed, for the reas ons set forth in th e Board's first and second
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`decisions, and for the re asons that we will discuss toda y in our
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`presentation in this hearing.
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`Your Honors, we have set forth on slide 2 just a
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`ver y quick overview of what we wo uld like to acco mplish
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`today. Fi rst, we would like to give you a ve r y brief overview
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`of the '879 patent and what the te c hnology is at issue.
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` 5
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`We would then li ke to move to cla i m constru ction
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`and talk about the three speci fic te r ms that have be en
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`construed by the Board and wh y P etitioner believes that those
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`constructions are correct.
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`And then finall y we would like to move to our
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`su mmar y of the r eje ctions that are based on the two pri ma r y
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`referenc es, the fir st one Minne man and the second one Elbaz.
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`Turning to slide 3, Your Honors, we have provided
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`a ver y brie f overv iew of the patent . And what we ar e dealing
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`with, the technology in the '879 pa tent, it r elates to a USB
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`serial bus plug. And in particular we have shown figures 5
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`and 6 fro m the pa tent.
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`And as we can se e fro m figure 5, this is a device ,
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`and also fro m figure 6, that plugs into the US B port of a
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`co mputer s yste m. It is di mensioned to specificall y plug into
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`it.
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`And in parti cular , if you look at figure 6, which is
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`the cross -sectional view looking in along line AA of figure 5,
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`we can see multiple structures that are shown in the ' 879
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`patent, principally of which are a printed circuit board
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`asse mbl y 52, which is positioned with in the housing 51. The re
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`are also what are refer red to as con cave props 512, which
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`contact the side o f the printed circ uit asse mbl y 52, and there is
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`also an end c ap, what is refe rred t o as an end cap 54
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`positioned within the housing.
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` 6
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`We can see that t he concave props touch against
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`and contact the pr inted circuit boar d on one side, an d the end
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`cap touches and c ontacts the printed circuit board on the other
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`side.
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`The goal of this p atent, Your Honors, as it is
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`articulated in the '879 patent, is to replace what is re ferred to
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`in the prior a rt as a flake spac er. And a flake spac e r is just a
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`sheet of mat erial that ordinaril y would be positioned between
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`the printed circui t board and the back wall of the housing, the
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`side wall that you see the re where t he conc ave props are. But
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`that was articulat ed as the goal, re placing that.
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`Your Honors, tur ning now to slides 4 through 6,
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`we have provided each of the independent clai ms a
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`reproduction of e ach of the independent clai ms of t he patent.
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`There are three , indepe ndent clai m 1, independent clai m 9 and
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`independent claim 17.
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`And ju mping bac k to slide 4 and i ndependent clai m
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`1, we can see the li mitations here. And in particular , Your
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`Honors, we have highlighted the clai m ter ms that ha ve been
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`construed by the Board. We will g et into those constructions
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`and wh y we believe that the y ar e p roper.
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`Of course clai m 1 , I don't have to r ead it to Your
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`Honors, but the principal object , th e principal contents are a
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`housing, a plurali t y of orientated i ndentations and concave
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`props, and the abi lity of the printed circuit board asse mbl y to
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` 7
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`be disposed within the housing, and it is also r etained within
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`the US B port of a co mputer once it' s inserted.
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`And in particular the PCB A is fixe d b y means of
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`pressing of the pluralit y of con cav e props, and a spa ce
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`between the housing and the PC BA.
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`Moving to slide 5, Your Honors, clai m 9 is
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`essentially coveri ng the sa me concepts as clai m 1. Of course
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`it is broader and i t has fe wer li mita tions but, again,
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`structurally we believe the si milar t ype of thing is cl ai med
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`here.
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`Wh en we move to clai m 17 , Your Honors, which is
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`slide 6, in clai m 17, again, the firs t two li mitations are nea rl y
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`identical to what appears in the pri or clai ms, but the re is also
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`the addition of what is ref erred to as an LED module as the
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`last li mitation the re, an LED module having an LED indicator.
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`Your Honors, we have reproduced on slide 7 a
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`chart of the depe ndent clai ms . An d in particular we have just
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`listed the features that appear in e a ch of these dependent
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`clai ms .
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`We would note th at since the Paten t Owner has not
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`independently a rgued for patentabil ity of an y of these
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`dependent clai ms , and because of ti me considerations in
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`today's hea ring, we will not go int o the validit y of t hose
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`clai ms but, suffic e it to sa y, that we believe the y are invalid
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`for the reasons that were set forth in the two petitions that
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`Petitioner has file d.
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` 8
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`Your Honor, on s lide 8 we now mo ve to the issue
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`of clai m construction. Of course, we are a ware that the Board
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`has construed the ter m "concave " t o mean curving inwards
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`fro m the housing. And that is set f orth in the decisi on, the
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`two decisions that the Court has se t forth in these pr oceedings.
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`Petitioner sub mit s that that constr uction is correct
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`and that it should continue to be ap plied b y the Boar d when a
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`final decision is r endered.
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`On slide 9, Your Honors, we now s tart to
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`su mmariz e wh y we believe that construction is corre ct, wh y
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`we believe that c oncave does mean curving inwards fro m the
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`housing. And, of course, the fi rst t hing we have to t urn to is
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`the specification of the patent itsel f. And in particu lar we turn
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`to the dra wings.
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`We have reproduc ed figure 6 on slide 9 and we
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`have highlighted the two structures 512, which ar e r eferred to
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`as the concave pr ops. And the t wo structures that we believe
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`are i mportant and we believe that s upport the Board' s
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`construction are, of course, the con cave props and, o f course,
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`the housing as we ll, and the fact that the P CB is positioned
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`and held in place within that housing.
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`In the Boa rd's - - i n the first instanc e the Boa rd has
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`construed the ter m "concave" to mean extending inwards fro m
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`the housing. And we can see that f ro m figure 6 of th e patent.
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`We can see that t he concave props 512 are not on th e sa me
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`plane as the side of the met al that for ms the housing itself on
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` 9
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`the left side the re . The y are in a di fferent plane and the y
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`extend inwards.
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`We would sub mit that the '879 pate nt does not
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`show in figure 6 an actual connect ion between that concave
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`prop 512 and the rest of the side wall, but ce rtainl y does show
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`an extension inwa rds fro m the housing. So we belie ve the
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`Board is cor rect i n construing it that wa y.
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`With respect to the ter m "concave" and the Board's
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`construction that this means curving inward, we wou ld agree
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`with that construction because b y nature of using the word
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`concave, b y the p atent using that ter m, concave req uires so me
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`t ype of curvature .
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`So we think that i s i mportant and t he Board got
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`right and should continue to construe that ter m to me an
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`curving inwards f ro m the housing.
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`Your Honors, tur ning to slide 10, we have also
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`reproduced fro m t he specification o f the patent , colu mn 4,
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`lines 28 through 32, and we have h ighlighted particular
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`language in that e xcerpt which s a ys : " The pluralit y of
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`concave props 512 can be for med s i multaneo usl y b y me ans of
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`punching of the housing 51."
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`We believe that t hat is i mport ant because it goes to
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`show that the '879 patent conte mpl ates that there co uld be
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`other wa ys of for ming these props. And because of that
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`punching is not required. It is not a r equired metho d of
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`actuall y for ming these concave pro ps.
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` 10
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`And because of th at it would be i mproper to re ad
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`in a li mitation of a re cess or so mething else like that, in
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`particular as the Patent Owner has tried to read in the
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`li mitation of a r e cess.
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`Now, we also tur n, Your Honors, t o slide 11 which
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`we believe provides support in the Board's interpreta tion that a
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`recess is not required when construing the ter m concave.
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`There are a nu mb er of things here, the principal of
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`which, Your Hon ors, is that the word "recess" is not mentioned
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`an ywhe re in the s pecification of th e '879 patent. Th e words
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`are not used and certainl y a recess is not shown in t he
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`drawings itself.
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`JUDGE ELLUR U: Counsel, when you curve
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`inwards fro m the housing don't you necessaril y have a r e cess?
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`MR. NI KOLSKY: Your Honors, when you have a
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`curving inwards o f mate rial, it depe nds on how that r ecess --
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`I' m sor r y, ho w th at co mponent is s tructured. If ther e is a
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`direct connection between, or an in dentation, then, yes, we
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`would sa y that th ere is a recess.
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`But unfortunatel y with this patent we don't see
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`exactl y ho w that connection is ma de. It is not shown in the
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`drawings. It is just a flat piece of mate rial and then the side
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`wall of the housing itself.
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`JUDGE ELLUR U: So you are sa yi ng reces s goes
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`towards how you for m the concave ?
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`MR. NI KOLSKY: Cor rect , Your Honor.
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` 11
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`The se cond point that we would lik e to address
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`here, Your Honor s, is that the conc ept of a re cess does not
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`support anything. It is the prop that actuall y does t he
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`supporting in the '879 patent. That 's the structure of the
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`actual device that provides the support.
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`And to i mpart a r ecess require ment into that
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`construction would be i mparting a me aningless li mit ation. It
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`is the prop that s upports. It is not a spac e that supp or ts.
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`Your Honors, we would also point to the Patent
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`Owne r's dictionar y de finition as we ll, which does not mention
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`the word recess . It mentions hollow and curved, like the
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`inside of a hollow ball .
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`The last thing that we would mention, Your
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`Honors, and i t is not on the slide but it is supported in the
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`record is that their expert , P atent Owner's expert, Mr . Visser,
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`stated in his deposition that pushing or pressing does not
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`necessaril y -- I' m sorr y, in his decl aration -- does not
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`necessaril y for m a re cess.
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`And, in fact , the citation for that i s the Visser
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`declaration at par agraph 33. And it has been cited b y us
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`previously in these proceedings.
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`So we think that i n the totalit y of what is taught
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`here, Your Honor s, what is i mporta nt is that there is an inw ard
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`curvature, that the structure or the prop curves inwar d fro m
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`the housing to support the printed circuit board.
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` 12
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`Turning now to sl ide 12, Your Honors, the next
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`ter m that we beli eve the Boa rd has properl y construed is the
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`ter m "props" and the Board, of course, has construed that as a
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`structure that supports.
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`Turning to slide 13 which shows , a gain, this figure
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`6, we believe that it is cle ar fro m t he drawing that t he concave
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`prop 512 supports the printed cir cuit board asse mbl y. It
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`actuall y contacts it. You c an see c ontact that is shown in the
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`patent on figure 6 . And , in fact, it serves to hold it i n place
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`along with the en d base in the housing 51.
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`Now, Your Honors, turning to slide 14, we also
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`believe that the P atent Owner has a d mitted that a pro p
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`functions as a support. In fa ct, in t heir Patent Owne r response
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`the y have said th at a prop must include, and the y d o qualif y it
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`b y sa ying at l east, what the y do admit, a structure th at
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`supports.
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`JUDGE ELLUR U: Wh at is the diff erence bet ween
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`a structure tha t supports and a support?
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`MR. NI KOLSKY: I believe, Your Honor, that a
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`structure that supports -- let me think about this -- a structure
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`that supports versus a support.
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`Well, if you a re using the noun term support, then
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`I believe that they are two si mi la r things. The y are both, you
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`know, mat erial or that perfor m a fu nction. But support can
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`also mean a verb , a ve rb tense, so i n that case it would be the
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`act of doing it. Again, it depends o n the connotation.
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` 13
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`The onl y other th ing I would menti on, Your
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`Honors, on slide 14 is to also dra w attention to the Board's
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`what we believe i s i mportant clai m differentiation ar gu ment
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`that was cited in t he first decision.
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`And the Boa rd, I believe, said that , you know,
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`since clai m 8 reci tes a space bet we en the P CBA and the
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`housing, and the fact that the conc ave prop is c reati ng that
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`space between th e housing and the PCB A, that it 's i mproper to
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`li mit clai m 1 to this concept of su pporting and keeping apart
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`the PCB A and the housing itself and, rathe r, that tha t is more
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`proper for clai m 8.
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`And Petitioner ag rees. Clai m 8 rea lly r ecites mor e
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`than what cl ai m 1 recites . So that 's wh y we believe t hat it was
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`proper for the Bo ard not to include or i mpart a construction
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`that required ther e being a keeping apart o f the two
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`co mponents -- tha t doesn't support keeping apart the two
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`co mponents.
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`JUDGE TURNER : Be fore you go on, can I ask a
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`question?
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`MR. NI KOLSKY: Sur e.
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`JUDGE TURNER : Wh at part of th e prop is
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`concave? If I go back to slide 13.
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`MR. NI KOLSKY: Yes, Your Honor.
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`JUDGE TURNER : It looks like it i s a convex
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`prop. So wh y isn't, you know, wh y isn't, the fa ct tha t it is a
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` 14
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`concave prop, wh y isn't that, you k now, a nonfunctional
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`descriptive?
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`MR. NI KOLSKY: Your Honor, we would agre e
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`that it is nonfunctional, that the wo rd concave reall y does not
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`i mpart an y functi onal li mitation whatsoever.
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`We believe what i s i mportant are t wo things. One
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`is that the Pat ent Owne r chose to be their o wn lexic ographer in
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`using that ter m, c oncave prop.
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`And nu mbe r 2 , what is i mport ant a nd wha t I think
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`the Board got rig ht is the fa ct that there is an inward curvature
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`that is supporting the device that is positioned on top of it.
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`So it is the fact t hat it is the prop that is
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`supporting that is i mportant , not so much the fact that it is
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`concave. The y ju st labeled it conc ave. Does that an swer Your
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`Honor's question?
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`JUDGE TURNER : Yes, it does. If I recall
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`correctl y, I don't think that was P etitioner's original use, but
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`apparentl y you c a me around to the Board's wa y of thinking on
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`concave.
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`MR. NI KOLSKY: We don't disagree with the
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`Board, Your Hon or.
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`JUDGE TURNER : Oka y.
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`MR. NI KOLSKY: Turning now, Your Honors, to
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`the ter m "fixed" which I believe is wher e we left off , slide 15,
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`the Board has construed this ter m t o mean " fastened securel y
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`in pos ition."
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` 15
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`
`
`
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`And, again, we be lieve the Board is corre ct
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`because there is n o require ment, we don't believe, as the
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`Patent Owner see ms to believe, tha t you must have f ixation
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`and all degrees of fre edo m and in a ll directions.
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`We believe the B oard got it right t hat so mething
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`could be fastened in a position, yet re movable, and you could
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`have so mething that is re movable. But when it is in its one
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`position it could be fixed in position.
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`And in support of that, Your Honor , we would also
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`point to slide 16 which i s the t ranscript of a colloquy with
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`Patent Owner 's ex pert, M r. Visser, and wherein we a sked hi m
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`the question, the h ypothetical, if you were to position yourself
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`in a ca r with a se atbelt on, would you be fixed in p osition?
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`And he said , well , yeah , I would be fixed in
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`position. But he said here: I guess in the sense that when you
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`are buckled, you are se cured.
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`We think that goe s to highlight and support the
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`construction that we don't have to have co mpl ete
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`nonre movable, pe r manent fixation. So mething can b e fixed
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`relative to anothe r obje ct, but there can be so me pla y
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`involved.
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`And, in fact , the f ollow -up question that we had
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`asked their expert , you know, is the re an y pla y that 's
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`per missible of the obje ct? And while he qualified his answer ,
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`ulti matel y he said: I don't think that fixed me ans ab solutely
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`no potential move ment in there .
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` 16
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`
`
`
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`So we think that also supports the Board's vie w
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`that we don't hav e to necessa ril y have fixation in all directions
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`and no move ment whatsoever .
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`Your Honors, tur ning now to the g rounds of
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`rejection that hav e been advanced, we would like to address
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`the grounds that are based on Minne man, and we bel ieve that
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`the y a re proper a nd that the y should continue to be - - and the
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`clai ms should be held invalid in view of Minne man .
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`We ha ve reproduc ed the abstract of Minne man
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`ver y quickl y in figures 3 and 4. What we ar e dealin g with
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`with the Minne ma n refe rence is a USB flash me mor y device.
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`You can see the d evice labeled gen erall y 10 and
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`the housing is element 25. The pri nted circuit bo ard is
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`ele ment 40, whic h is positioned within that housing 25. There
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`are a nu mber of c hips and co mpone nts, including me mor y,
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`flash me mor y, et cetera , which ar e ele ment 23.
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`And what I would like to do, Your Honors, is just
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`go through clai m- ele ment -b y- clai m-ele ment with res pect to
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`clai m 1, where we think we see ea ch of these li mita tions, and
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`then briefl y take you through the r e maining clai ms and
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`then move to Elbaz.
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`So turning to slide 18, Your Honor s, the first
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`li mitation is a housing. And we be lieve th at Minneman
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`teaches that. In f act, we have sho wn it is ele ment 2 5, which is
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`disclosed as the housing of the device. It can be for med of
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`metal or another co mponent, accor ding to Minne ma n.
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` 17
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`
`
`
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`And in particular , Your Honor, we would note,
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`before we go throug h all of these li mitations, it is the
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`Petitioner's position that structurally Minne man discloses
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`ever y li mitation of clai m 1 with the exception of the express
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`words concave . And we take that teaching fro m Ta kahashi, a
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`ver y li mited teac hing fro m Takaha shi, but it is r eally
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`Minne man that ha s all of the struct ure that we believe
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`invalidates the clai ms .
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`Turning to slide 19, Your Honors, t he next
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`li mitation, of cou rse, is a pluralit y of orientated inde ntations.
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`Those corr espond to ele ment 28 in Minne man, whi ch is
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`identified as the openings that engage the springs of a US B
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`port.
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`The next li mitati on, Your Honors, is on slide 20,
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`which is a pluralit y of concave props. And we have identified
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`two, actuall y thre e excerpts o f Min ne man which we t hink are
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`i mportant .
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`The first, o f cour se, is the stand -of fs 45. The y ar e
`
`labeled as stand -offs. The y a re str uctures that are p ositioned
`
`between the printed circuit board 40 and the botto m of the
`
`housing 25.
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`And we have also cited in our petition colu mn 9,
`
`line 65, thr ough c olu mn 10, line 6, and colu mn 10 , li ne 48
`
`through line 61 -- the y are all cited there and the y ar e in the
`
`record - - bec ause the y establish tha t captivating -- a nd
`
`Minne man disclo ses this -- that ca ptivating indentations could
`
` 18
`
`
`
`
`
`be for med in the housing and could also be used to support the
`
`printed circuit board asse mbl y. So we believe that b oth of
`
`those structures r ead on the li mitat ion of the plurality of
`
`concave props.
`
`Your Honors, the next li mitation is on slide 21,
`
`wherein the plura lity of orientat ed indentations facilitates the
`
`USB me mor y plu g to be connected while the USB me mor y
`
`plug is inserted into a fe ma le USB socket.
`
`We believe that t hat is taught, agai n, in colu mn 9 ,
`
`line 65, through c olu mn 10, line 6. And in particular
`
`Minne man sa ys that that is what the se openings do. The y
`
`receive the springs of a USB port o f a co mputer to re tain it in
`
`place. It is the sa me function and i t is the sa me stru cture.
`
`On slide 22, Your Honors, the next li mitation is
`
`printed circuit board asse mbl y disc losed in the housing. I
`
`believe that that i s clear . That is s hown in Minne ma n as
`
`ele ment 40, whic h is the actual cir cuit board asse mb l y, the
`
`circuit board, and ele ment 44 , whic h is a subasse mbl y that
`
`includes the chips and the other things that you see there. So
`
`we believe that th at li mitation is ta ught.
`
`The next li mitati on -- and we ar e getting close to
`
`the end of clai m 1 -- the PC BA is fixed b y means of pressing
`
`of the pluralit y of concave props.
`
`Here , Your Honor s, we have cited c olu mn 10, lines
`
`52 throu gh line 61. And in pa rticular this is the dis closure of
`
`Minne man that sa ys that captivating indentations could be
`
` 19
`
`
`
`
`
`for med. And that in particular at t he end of the cita tion they
`
`sa y that the y ma y be used to position or retain the
`
`subasse mbl y 44 therein b y mechan ical interfer ence, friction fit
`
`and/or b y pr ess fi t.
`
`So the ver y words , pressing, are tau ght by
`
`Minne man, that if you have that str ucture of a c aptivating
`
`indentation, it wi ll press and it wil l hold a cir cuit board
`
`asse mbl y in plac e in the housing .
`
`The last li mitatio n, Your Honors, o n slide 24 is
`
`that a space is for med betwe en the housing and the P CBA. We
`
`believe that that i s clear fro m the d rawing. On figure 4, you
`
`can see that there is, b y virtue of t hose stand -offs a ppearing
`
`there, the re is a s pace in bet ween t hat's provided and there is
`
`also space, of cou rse, on top of the PCB as well.
`
`Turning to the ob viousness combin ation, the
`
`secondar y te achings, Your Honors, on slide 25. Agai n, as I've
`
`said before, the o nly li mited tea ching that we ar e tak ing fro m
`
`Takahashi is that you could have a prop and it could be
`
`curved. You could have a curved p rop.
`
`And, in fact , the Takahashi re feren ce talks about
`
`an IC card -- and I will just ver y br iefl y go over the
`
`technology on tha t one -- an IC car d. A nd figure 20A we have
`
`reproduced fro m Takahashi. And i n figure 20A we s ee a base
`
`card 11, and we see a botto m portion 13. And that bottom
`
`portion 13 receives an integrated c ircuit card.
`
` 20
`
`
`
`
`
`32 are the protrusions that are discl osed in
`
`Takahashi. And i n pa rticular Taka hashi states that the
`
`integrated circuit card sits on and r ests on those protrusions
`
`32.
`
`Yes, there is adhe sive that is inserted underneath
`
`that once the y res t on there so that you have a bond with it,
`
`but what we belie ve is i mportant is the tea ching that there is a
`
`propping structure that is taught he re and that propping
`
`structure could be shaped to be cur ved.
`
`Your Honors, on slides 26 forward , we then go
`
`through clai m 9 a nd clai m 17. In t he interest of ti me, since
`
`there ar e such si milari ties betwee n clai m 9 and clai m 1, we a re
`
`going to just ver y briefl y flip throu gh these slides, if we can ,
`
`and then focus, I think, on clai m 1 7 which talks abo ut the last
`
`li mitation of an LED module.
`
`So ver y brie fl y, Your Honors, on slide 26 we have
`
`mapped the printe d circuit board asse mbl y li mitation to
`
`ele ments 40 and 4 1 which we have discussed earlier.
`
`On slide 27 we ha ve shown the hou sing and, again,
`
`that corresponds to ele ment 25 of Minne man which we
`
`discussed, again.
`
`The next li mitati on is a plur alit y o f concave props.
`
`And we would ref er, again, to the e le ments 45 which are the
`
`stand -offs, as wel l as the captivating indentations that are
`
`expressly disclosed in the Minne man ref erence at colu mn 9
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`and also colu mn 10. We have the citations there.
`
` 21
`
`
`
`
`
`On slide 29, agai n, the next li mitat ion, PCB A
`
`disposed in the housing. That is c lear. We have sh own that to
`
`you that the PCB A 40 is positioned within the housing 25.
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`Slide 30, pluralit y of concave props protrude
`
`inward to fix the PCBA. We have quoted column 10, line 52
`
`through line 61. And in particular , in support of tha t
`
`li mitation there , Your Honors, that sa ys protrude in ward to fix
`
`it, it expressl y di scloses here in th at excerpt that ca ptivating
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`indentations ma y be for med b y pushing or pressing on the
`
`outside of the housing.
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`So it is ver y explicit and sa ys that you have got to
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`push something inwards and it has got to protrude i nwards to
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`fix the circuit bo ard asse mbl y. We think Minne man is ver y
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`clear on that .
`
`Clai m 9, the last li mitation is the s pace and, of
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`course, we see th at fro m the diagra m here . There is a space
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`between the printed circuit board 40 and the botto m of the
`
`housing.
`
`Once again on slide 32, Your Honors, we have
`
`only taken Takah ashi for that na rr ow proposition that you
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`could h ave a conc ave prop. And wi th that we believe that
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`independent claims 1 and 9 are invalid in view of Minne man
`
`and Takahashi an d, of course, the dependent clai ms that are
`
`associated with it and have be en ch allenged.
`
`We would like to move now to the Elbaz refe rence ,
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`if we could, and s ort of walk throu gh in si milar fash ion wh y
`
` 22
`
`
`
`
`
`we believe that th is refer ence also i nvalidates and should be
`
`held to invalidate the clai ms .
`
`So, Your Honors, on slide 33 we h ave reproduced
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`portions of the El baz patent publication. And Elbaz , ver y
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`briefl y, it discloses a dongle which is intended to be connected
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`to the port of a te leco mmunications device, and in pa rticular
`
`the specification mentions that this co mponent can b e inserted
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`into the port, like a US B port of a co mputer s ys te m or a
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`teleco mmunicatio ns device.
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`And we think that figures 10A through 10C are the
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`most r elevant for purposes of this proceeding. Figures 10A
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`through 10C show an e mbodi ment of this invention whereb y
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`you have an adapt er 514. It 's discl osed that that ada pter could
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`be for med b y met al or b y pr essing or punching or bending.
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`And it specificall y receives what is ref erred to in the patent, in
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`the Elbaz patent a pplication, as a module 5.
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`That module 5 is shown in sequence here being
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`inserted into the adapt er. So figur e 10C shows you the final
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`position where it is inserted into the adapter .
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`I would like to go through, if I c an now, Your
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`Honors, the specific li mitations of clai m 1 and appl y it with
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`Elbaz, and then move through and give so me further detail of
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`what Elbaz disclo ses.
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`On slide 34, of course, the first li mitation with
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`referenc e to clai m 1 is a housing. Elbaz has a housing.
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`Petitioner sub mit s that it does. It is the adapter 514. It
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`
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