Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 16
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` Entered: April 23, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-00472
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
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`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
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`
`Tel: 571-272-7822
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` Paper 16
`
`
` Entered: April 23, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-00472
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`INTRODUCTION
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`Patent Owner Phison Electronics Corp. (“Phison”) filed a Request for
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`Rehearing (Paper 12, “Req.”) of the Decision on Institution (Paper 10, “Dec.”),
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`which instituted inter partes review of claims 1-4, 8-12, and 16 of U.S. Patent No.
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`7,518,879 (“the ‟879 patent”). In its request, Phison argues that we misinterpreted
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`the governing law regarding inherency, and that we provided an improper
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`construction of the claim term “concave.” The request for rehearing is granted-in-
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`part.
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`ANALYSIS
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`When rehearing a decision on institution, the Board will review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
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`determined if a decision is based on an erroneous interpretation of law, if a factual
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`finding is not supported by substantial evidence, or if the decision represents an
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`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United
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`States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d
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`1338, 1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
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`2000).
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`The Decision on Institution included two grounds: a first indicating that
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`claims 1-4, 8-12, and 16 were anticipated by Minneman, and a second with the
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`same claims being obvious over Minneman and Takahashi. Dec. 16. Beginning
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`with the first ground, we found that Minneman discloses the claim limitation
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`“concave props,” as recited in claims 1 and 9. Dec. 9-10.
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`2
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`
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`Case IPR2013-00472
`Patent 7,518,879
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`Phison argues that the Decision failed to adhere to the legal standards for
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`determining inherency in the application of anticipation. Req. 2. Phison also
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`argues that it is undisputed that Minneman‟s captivating indentations are not
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`shown in the figures and are not described as curving. Req. 3. Phison takes issue
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`with statements provided in the Decision detailing that it is “conceivable that the
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`processes of Minneman could create an indent with no curvature” (Dec. 11), and
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`that “logic and physics dictate that any die pressed into a housing sufficient to form
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`an indentation on the inside of the housing, without puncturing the housing, is
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`likely to create some curvature in that indentation through deformation of the
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`housing material” (id.). Phison argues that these statements illustrate “a lack of
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`inherency under the proper Federal Circuit standard.” Req. 4.
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`“A reference may anticipate inherently if a claim limitation that is not
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`expressly disclosed „is necessarily present, or inherent, in the single anticipating
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`reference.‟” In re Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) (quoting
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`Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir.
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`2010)). “„Inherency . . . may not be established by probabilities or possibilities.
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`The mere fact that a certain thing may result from a given set of circumstances is
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`not sufficient.‟” Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40
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`(Fed. Cir. 2011) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
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`We agree that we misapplied the standard for inherency based on the
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`analysis provided for the anticipation ground over Minneman. Upon
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`consideration, we agree with Phison that the institution of the instant proceeding
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`should not have included the unpatentability ground of claims 1-4, 8-12, and 16 as
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`anticipated by Minneman.
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`3
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`
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`Case IPR2013-00472
`Patent 7,518,879
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`Turning to the second instituted ground, over Minneman and Takahashi,
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`Phison also argues that Takahashi‟s protrusions “are not concave in any sense of
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`the word.” Req. 5. Phison argues that Takahashi‟s protrusions are solid and curve
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`outward, such that no aspect is concave. Req. 6-7. Phison also argues that the
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`concave props of the ‟879 patent are concave because a recessed, concave shape is
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`formed on the exterior of the housing when the props are punched or pressed into
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`the housing. Req. 7-8. We are not persuaded by Phison‟s arguments.
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`As discussed in the Decision: “[w]e conclude that such a limitation can be
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`met based on the shape of an element, such that the particular element need not
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`have a recess.” Dec. 7. In fact, we interpreted “concave” as “curving inwards
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`from a housing.” Id. In addition, we are uncertain how the Machinery‟s
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`Handbook illustration, Req. 7, could illustrate a “concave prop.” The indentation
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`illustrated, Req. 7, is certainly concave, but it does not appear it can act as a prop,
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`i.e., it acts as a notch instead. Rather, the statement in the Request that “the props
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`are punched or pressed into the housing” is more consistent with the specification
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`of the ‟879 patent. Req. 8.
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`Although we acknowledge that Minneman does not inherently disclose the
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`formation of “concave props,” the formation of such concave props was concluded,
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`in the Decision (Dec. 11), to be likely. Minneman provides that the “captivating
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`indentations may be formed by pushing or pressing on the outside of the housing
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`25 to cause it to deform to cr[e]ate guides or detents on the inside of the housing.”
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`Dec. 10-11; Ex. 1003 at 10:55-58. As such, we concluded that it would have been
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`obvious to provide curvature to the stand-offs of Minneman in view of the curved
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`protrusions disclosed in Takahashi. Dec. 13.
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`4
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`Case IPR2013-00472
`Patent 7,518,879
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`While Phison is correct that “Takahashi‟s protrusions are not concave in any
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`sense of the word” and that “Takahashi‟s protrusions are convex,” (Req. 5), that
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`does not mean that Takahashi cannot suggest a particular shape. In addition, per
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`the adopted claim construction, the limitation may be met by the shape of the
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`element, and not the presence of a recess. Dec. 7. We were further persuaded that
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`“„[t]he concave shape is a matter of [design] choice which a person of ordinary
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`skill in the art would have found to be obvious.‟” Dec. 13. (citation omitted).
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`In essence, Phison asks us to reconsider the references, Minneman and
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`Takahashi, separately; it would be error, however, to consider the references only
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`separately, when they are applied together in a proper combination. One cannot
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`show nonobviousness by attacking references individually where the obviousness
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`findings are based on combinations of references. In re Keller, 642 F.2d 413
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`(CCPA 1981). Additionally, Phison presented the same argument in its
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`Preliminary Response, (Prelim. Resp. 21-22); therefore, we did not overlook or
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`misapprehend the argument in the Decision.
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`With respect to dependent claims 2-4, 8, 10-12, and 16, we relied upon the
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`discussion of aspects of those claims being described in Minneman. Dec. 14.
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`Because Phison has not contested that elements of those claims are taught by
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`Minneman, limiting its arguments to an element of claim 1 not found in Minneman
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`inherently, we continue to rely on that analysis of the dependent claims in the
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`remaining ground.
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`As such, we are not persuaded that we misapprehended or overlooked the
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`disclosure of Takahashi in the Decision in determining that PNY demonstrated that
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`it has a reasonable likelihood of prevailing in showing that claims 1-4, 8-12, and
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`5
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`
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`Case IPR2013-00472
`Patent 7,518,879
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`16 of the ‟879 Patent would have been obvious over Minneman and Takahashi
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`under 35 U.S.C. § 103.
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`For the foregoing reasons, Phison has not shown that the Board abused its
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`discretion in instituting trial on the ground of claims 1-4, 8-12, and 16 as
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`unpatentable under 35 U.S.C. § 103 over Minneman and Takahashi.
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`
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`Accordingly, it is
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`
`
`ORDER
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`ORDERED that Patent Owner‟s request for rehearing is granted-in-part;
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`FURTHER ORDERED that the Order instituting trial is modified so that the
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`trial is limited to the following ground:
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`Claims 1-4, 8-12, and 16 as unpatentable under 35 U.S.C. § 103 over
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`Minneman and Takahashi.
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`FURTHER ORDERED that the trial schedule remains as set forth in the
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`Scheduling Order (Paper 11), as modified by stipulations of the parties (Paper 15).
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`6
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`
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`Case IPR2013-00472
`Patent 7,518,879
`
`For PETITIONER:
`
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`
`
`
`For PATENT OWNER:
`
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`IPR23490-0008IP1@fr.com
`PTABInbound@fr.com
`
`
`7
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`
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