UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case IPR2013-00472
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`Phison Electronics Corp.
`Patent Owner
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case IPR2013-00472
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`Phison Electronics Corp.
`Patent Owner
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`TABLE OF AUTHORITIES
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`Case IPR2013-00472
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`Page(s)
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`Cases
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`Stevens v. Tamai, 366 F.3d 1325, 1329 (Fed. Cir. 2004) ....................................... 1
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`Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264,
`1266-67 (Fed. Cir. 2003)) ................................................................................... 1
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`Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383
`(Fed.Cir. 2009) ..................................................................................................... 3
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`In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). ...................................................... 3
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`In re Robertson, 169 F.3d 743, 745 (Fed.Cir. 1999) ................................................ 3
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`Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001). ................................... 3
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`Rules and Regulations
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`37 C.F.R. § 42.71(c) .................................................................................................. 1
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`i
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`Case IPR2013-00472
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`Pursuant to 37 C.F.R. § 42.71(c), the patent owner, Phison Electronics
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`Corp. (“Patent Owner”), hereby submits the following Request for
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`Rehearing in response to the Decision, Institution of Inter Partes Review of
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`U.S. Patent No. 7,518,879 (“the Decision”) (Paper 10).
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`The Decision ordered review on two grounds of unpatentability:
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`claims 1-4, 8-12 and 16 as anticipated by Minneman (US 7,074,052); and
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`claims 1-4, 8-12 and 16 as unpatentable over Minneman in view of
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`Takahashi (US 2004/0027809). Patent Owner requests that the Board
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`reconsider its decision to institute on both grounds, in light of the
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`governing law regarding inherency, and in light of the proper reading of
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`“concave.” Therefore, Patent Owner further requests that no trial be
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`instituted on the ‘879 patent.
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`II.
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`LEGAL STANDARDS
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`A request for rehearing “must specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an opposition, or
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`reply.” 37 C.F.R. § 42.71 (d). “When rehearing a decision on petition, the
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`panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.7 1
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`1
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`Case IPR2013-00472
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`(c). “An abuse of discretion occurs where the decision (1) is clearly
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`unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion
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`of law; (3) rests on clearly erroneous fact findings; or (4) involves a record
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`that contains no evidence on which the Board could rationally base its
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`decision.” Stevens v. Tamai, 366 F.3d 1325, 1329 (Fed. Cir. 2004) (quoting Eli
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`Lilly & Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266-67 (Fed.
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`Cir. 2003)).
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`III. BASIS FOR RELIEF REQUESTED
`A. The Decision Overlooked, and Thus Failed to Apply, the Law
`Governing Inherency.
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`Patent Owner requests reconsideration of the decision to institute on
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`claims 1-4, 8-12 and 16 as anticipated by Minneman, because the Decision
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`overlooked, and thus failed to adhere to, the legal standards for inherency.
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`Claims 1-4, 8-12 and 16 all require a “concave prop.” The phrase
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`“concave prop” is construed in the Decision to require at least “a structure
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`curving inwards from a housing providing support.” (Decision, pg. 8).
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`The decision to institute on anticipation by Minneman is based on a finding
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`that Minneman’s captivating indentations are curved, and thus meet the
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`claim feature of a “concave prop.”
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`It is undisputed that Minneman’s captivating indentations are not
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`shown in the figures and are not described to be curving. The finding that
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`the captivating indentations are curved relies entirely on inherency
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`stemming from an assumption in the Decision that the pressing described
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`by Minneman to form the captivating indentations would form curved
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`shapes.
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`The assumption on which the Decision relies, however, is not
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`sufficient to meet the legal requirements for inherency specified in Federal
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`Circuit caselaw. It is well established that to show inherency of a property
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`requires that the "reference unavoidably teaches the property in question.”
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`Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed.Cir. 2009),
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`citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981); In re Robertson, 169 F.3d
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`743, 745 (Fed.Cir. 1999). "Inherency, however, may not be established by
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`probabilities or possibilities. The mere fact that a certain thing may result
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`from a given set of circumstances is not sufficient." Hitzeman v. Rutter, 243
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`F.3d 1345, 1355 (Fed. Cir. 2001).
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`Here, as stated in the Patent Owner’s Preliminary Response, “curved
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`shapes do not necessarily follow from these processes. . . Rather, the shape
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`depends on the shape of the presses and dies used.” (Preliminary
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`Response, pg. 16). In fact, the Board agreed with this statement, stating in
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`the Decision that it is “conceivable that the processes of Minneman could
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`create an indent with no curvature.” (Decision, pg. 11).
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`Despite agreeing with Petitioner that the Minneman disclosure might
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`not result in an indent with curvature, the Decision went on to commit
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`legal error in at least two respects. First, while the Federal Circuit has
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`made clear that inherency may not be based on “probabilities or
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`possibilities,” the Decision improperly based its conclusion on the notion
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`that “logic and physics dictate” that it is “likely” to create some curvature.
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`Whether an outcome is “likely” is insufficient to establish inherency.
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`Hitzeman at 1355. Second, the Decision appeared to put the burden on
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`Petition to show the possibility of a non-curved indent as the outcome of
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`the Minneman disclosure. Again, this is legal error. Inherency requires
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`that the disclosure “unavoidably teaches the property in question,” and the
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`Decision’s agreement that it is “conceivable” that a non-curved indent
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`could be created in Minneman by itself establishes a lack of inherency
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`under the proper Federal Circuit standard. Therefore, Minneman’s
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`4
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`captivating indentations cannot satisfy the claimed feature of a “concave
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`Case IPR2013-00472
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`prop.”
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`Accordingly, Patent Owner requests that the decision to institute on
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`claims 1-4, 8-12 and 16 as anticipated by Minneman withdrawn and the
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`ground be denied.
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`B.
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`The Decision Misapprehended the Disclosure of Takahashi
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`Patent Owner requests reconsideration of the decision to institute on
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`claims 1-4, 8-12 and 16 as unpatetable over Minneman in view of
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`Takahashi, because the Decision misapprehends the disclosure of
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`Takahashi, and particularly, Takahashi’s Figs. 4A and 4C.
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`As mentioned above, claims 1-4, 8-12 and 16 all require a “concave
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`prop.” The Decision found that “the concave protrusions of Takahashi
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`would provide a suggestion for rounding off the stand-offs of Minneman”
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`to yield the concave props. (Decision, pg. 14). However, like Minneman’s
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`stand-offs, Takahashi’s protrusions are not concave in any sense of the
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`word. Takahashi’s protrusions are convex.
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`Figs. 4A and 4C of Takahashi as annotated in Patent Owner’s
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`Preliminary Response show the protrusions 32. (Preliminary Response, pp.
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`Case IPR2013-00472
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`22-23).
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`Takahashi, FIG. 4A (annotated)
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`Takahashi, FIG. 4C (annotated)
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`The figures, as reproduced herein, have been further shaded to make
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`clearer what they show, i.e., that Takahashi’s protrusions 32 are solid and
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`curve outward, not inward. There is no aspect of Takahashi’s protrusions
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`Case IPR2013-00472
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`32 that is concave.
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`Compare, below, the protrusions 32, enlarged from Fig. 4A, to the
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`example of a concave shape from the Machinery’s Handbook included in
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`Patent Owner’s Preliminary Response. The shapes are opposite: the
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`Machinery’s Handbook figure is concave and Takahashi’s protrusion 32 is
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`convex.
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`Machinery’s Handbook
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`Takahashi, FIG. 4A
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`Similarly, the concave props of the ‘879 patent are not concave
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`because they protrude inward into the housing. Rather, they are concave
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`because a recessed, concave shape is formed on the exterior of the housing
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`when the props are punched or pressed into the housing. (Preliminary
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`Response, pg. 6).
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`Therefore, as neither Minneman’s stand-offs 45 nor Takahashi’s
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`protrusions 32 are concave, the combination does not produce “concave
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`props” as recited in the claims of the ’879 patent.
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`Accordingly, Patent Owner requests that the decision to institute on
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`claims 1-4, 8-12 and 16 as unpatentable over Minneman in view of
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`Takahashi be withdrawn, and the ground be denied.
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`Case IPR2013-00472
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner requests that the Board
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`deny Grounds 1 and 2 in the Petition, and decline to institute Inter Partes
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`Respectfully submitted,
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`/Joshua A. Griswold/
`Joshua A. Griswold,
`Reg. No. 46,310
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 214-292-4034
`F: 877-769-7945
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`Counsel for Patent Owner
`Phison Electronics Corporation
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`Review of the ‘879 patent.
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`Dated: February 18, 2014
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` (Trial No. IPR2013-00472)
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`9
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`Case IPR2013-00472
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned
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`certifies that on February 18, 2014, a complete and entire copy of this Patent
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`Owner Phison Electronics Corp’s Preliminary Response was provided via
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`email to the Petitioner by serving the correspondence email address of
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`record as follows:
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`Mark E. Nikolsky
`MCCARTER & ENGLISH, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
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`Email: mnikolsky@mccarter.com
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`schokshi@mccarter.com
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`/Susan C. Johnson/
`Susan C. Johnson
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(214) 292-4086
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`10
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