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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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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`Case IPR2013-00472
`Patent 7,518,879
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`DECLARATION OF STEVE VISSER
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`Page 1 of 30
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`PHISON 2008
`PNY Technologies Inc.
`v. Phison Electronics Corp.
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`
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`I.
`1.
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`2.
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`Engagement
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`I am Steven Carl Visser.
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`I live at 2472 Gala Court, West Lafayette, IN 47906. I can be
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`reached by phone at the following numbers; Purdue phone 765-494-
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`2295, home phone 765-588-4241, and cell phone 765-491-9633.
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`3.
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`I have been asked to offer technical opinions with respect to
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`the present inter partes review of U.S. Patent No. 7,518,879 (“the ’879
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`patent”). I base these opinions on my experience regarding industrial
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`design and manufacturing. My current curriculum vita is attached. I
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`have been asked to opine on issues related to the validity of U.S. Patent
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`No. US 7,518,879, entitled “UNIVERSAL SERIAL BUS (USB) MEMORY
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`PLUG” (the “’879 patent”).
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`4.
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`I have been retained by the law firm of Fish & Richardson,
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`P.C. on behalf of Phison Electronics Corp., (“Phison”). My billing rate
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`through IMS expert services is $455/hour for time spent on this matter.
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`My compensation is hourly and unaffected by the substance or outcome
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`of my opinions.
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`5.
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`I received a Masters of Fine Art with a major of Industrial
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`Design in 1988 from the University of Illinois at Urbana-Champaign. I
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`have also received a Bachelor of Art with a major of Fine Art in 1982
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`from Northwestern College, Orange City Iowa.
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`6.
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`I began my academic career as a teaching assistant at
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`University of Illinois at Champaign Urbana from 1986 to 1988. Since
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`1989, I have held several positions in the Department of Visual and
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`Performing Arts at Purdue University: Visiting Assistant Professor of
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`Industrial Design at Purdue University from 1989 to 1990; Assistant
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`Professor of Industrial Design from 1990 to 1996; Associate Professor of
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`Industrial Design from 1996 to 2006; and Professor of Industrial Design
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`from 2006 to present. I am currently a tenured Full Professor at Purdue
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`University in the area of Industrial Design, where I serve as the Area
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`Representative for Industrial Design. I served as a Fulbright Professor
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`at the University of Art and Design Helsinki from 1996 to 1997.
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`7.
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`In preparing my report I have reviewed documents listed in
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`Exhibit A.
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`8. A copy of my CV is attached as Exhibit B.
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`Page 3 of 30
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`II. Qualifications and Experience
`9.
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`Before teaching, I worked as an industrial designer at Hari
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`and Associates in Skokie, Illinois.
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`10. From 1990 to 2005, I designed through a consultancy firm I
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`founded: Steve Visser Design. I worked for a variety of companies and
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`inventors by providing industrial design services.
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`11. From 2005 to present, I have designed through
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`DesigNapkin, a firm I co-founded that provides industrial design
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`services. The firm has designed products for a variety of companies
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`including: Samsung, Omega Lighting, Klipsch, and Filadex.
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`12.
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`I have designed a variety of products as an industrial
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`designer. Of particular interest in this case, I have designed several
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`consumer electronic products. Specifically, near the time of the ‘879
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`patent application, I designed several electronic products, including cell
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`phones for Samsung, an iPhone accessory for Klipsch, a conceptual
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`networking device that was exhibited internationally, and a USB
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`memory device for Filadex Inc.
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`13. My industrial design work focuses on the integration of the
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`functional and psychological requirements of products. I consider the
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`functional needs of both the manufacturing process, and the functional
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`needs of the consumer in producing designs. As part of this design
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`work, I am responsible for understanding the physical structures that
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`make up each particular design. I also consider various manufacturing
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`processes and materials in the design of a product, with the goal of
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`creating a design that can be profitably produced and still fulfill all of its
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`needs. The psychological requirements of the consumer are also
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`considered. My work helps create the interface and aesthetics that allow
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`the consumer understand how to use the product as well as appreciate
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`it.
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`14. My design work has been recognized nationally and
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`internationally. I have received recognition in international design
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`competitions, including the following: Award of Excellence in the
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`Taiwan International Design Competition, two Opus Awards in the
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`Opus Design Award: International Eyewear Design Competition in
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`Japan, Honorable Mention in ID Magazine’s 50th Annual International
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`Design Competition, Finalist in the Korean International Travel
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`Souvenir Design Competition, Second Place in Neste Forma Finlandia 3
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`International Plastic Design Competition, and Silver Winner in Idea95
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`Industrial Designers Excellence Award.
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`15. My designs have been exhibited both nationally and
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`internationally. Locations include the following: the Museum of Modern
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`Art in New York, the Chicago Antheneum, the Cooper Hewitt National
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`Design Museum (Smithsonian) in New York, the Groninger Museum
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`(Netherlands), Veletrzni Palác Prague (Czech Republic), and the
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`Biennale Internationale Design 2000 and 2002 sponsored by the Museum
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`of Modern Art in Saint-Étienné (France).
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`16. Based on the qualifications above, I am qualified to testify as
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`one skilled in the art with respect to the designs at issue in this case.
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`III. Opinions Regarding the ‘879 Patent
`17. My opinions, as explained below, are based on my
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`education, experience, and background in the fields discussed above.
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`18.
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`I am familiar with the content of the ’879 patent.
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`Additionally, I have reviewed the following: U.S. Patent No. 7,352,601 to
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`Minneman et al., issued on April 1, 2008 (“Minneman”); U.S. Patent
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`Publication No. 2004/0027809 to Takahashi et al., published on February
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`12, 2004 (“Takahashi”); U.S. Patent Publication No. 2004/0259423 to
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`Page 6 of 30
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`Elbaz et al., published on December 23, 2004 (“Elbaz”); and U.S. Patent
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`No. 6,829,672 to Deng et al., issued on Dec. 7, 2004 (“Deng”).
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`A.
`Level of Ordinary Skill
`19. Counsel has informed me that I should consider the
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`materials above through the lens of one of ordinary skill in the art
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`related to the ‘879 patent at the time of the invention. I believe one of
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`ordinary skill as of March 21, 2006 (the filing date of the ‘879 patent)
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`would have had a bachelor’s degree in industrial design or engineering
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`from an accredited university and two or more years of experience, or, if
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`no industrial design or engineering degree, 5-10 years of equivalent
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`work experience or training. I base this on my own personal experience,
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`including my knowledge of colleagues and others at the time.
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`B. Claim Construction
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`Concave
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`20. The ‘879 Patent shows and describes a prop that is both
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`concave and that props the PCBA apart from the interior wall of the
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`USB housing. I can envision many types of props that are not concave,
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`so in my understanding, a “concave prop” is a particular type of prop,
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`i.e., one that is concave.
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`Page 7 of 30
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`21. The following annotated FIG. 6 from the ’879 patent will be
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`referenced in the discussion that follows:
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`Recess
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`PCBA
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`Prop structure
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`
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`Ex. 1001 (‘879 Patent), Detail of Figure 6 (annotated)
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`22. Over the years, in my studies and in my practice as an
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`industrial designer, I have encountered many concave shapes. In my
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`experience, a “concave” shape must not only “curve inward,” but must
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`“form a recess” (i.e., a hollow region) relative to the surrounding
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`material. By “curving inward,” I do not mean that the concave shape
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`curves toward the middle of whatever body has the concave shape.
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`Rather, “curving inward” refers to the concave shape curving inward, as
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`opposed to outward, from a surface surrounding the concave shape. It
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`is this inward curvature from the surrounding surface that necessarily
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`forms a recess on the surface (see the recess in Figure 6, above). Hence,
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`something that is “concave” is “curving inward to form a recess.”
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`23. The following figure is a detail, cross-sectional view of the
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`USB housing, taken from a different direction than Figure 6 above,
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`showing my understanding of what a concave prop could look like. The
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`figure is annotated to show the recess of the concave shape:
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`USB housing
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`Concave shape
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`Recess
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`24. Defining “concave” as “curving inward to form a recess”
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`properly excludes shapes that are not concave. For example, the
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`Decision on Institution of Inter Partes Review, Case 2013-00473
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`(hereinafter “First Institution Decision”) interprets a convex solid shape,
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`shown in the figure below from Takahashi, as being concave. In my
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`experience, this shape is not concave, and the construction “curving
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`inward to form a recess” properly excludes it. I have also not seen
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`anything in the ‘879 Patent that I, or one of ordinary skill in the art,
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`would understand as redefining “concave” to include non-concave
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`Page 9 of 30
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`structures. The ‘879 Patent’s usage is consistent with my understanding
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`of the word and the definition above.
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`Convex solid
`shape
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`Ex. 1006 (Takahashi), Detail of FIG. 20A (annotated)
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`25.
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`In my opinion, based on my experience, one of ordinary skill
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`in the art would understand “concave” to mean “curving inward to
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`form a recess.” Additionally, dictionary definitions contemporary to the
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`’879 Patent confirm that a skilled artisan would have understood
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`“concave” to mean “curving inwards to form a recess” at the time of the
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`‘879 Patent. For example, the Webster’s Dictionary from 1991 defines
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`“concave” as “hollow and curved like the inside half of a hollow ball.”
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`See Ex. 2010 (Websters), p. 287. One of skill would have understood this
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`definition to make clear that concave shapes necessarily form a recess.
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`26.
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`In the Decision on Institution of Inter Partes Review, Case
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`IPR2014-00150 (hereinafter “Second Institution Decision”) the Board
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`expressed confusion as to this definition of “concave,” explaining that a
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`concave shape cannot act as a prop. However, a skilled artisan would
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`understand that the recess of the concave prop described in the ‘879
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`Patent does not, and need not, function as a prop. Rather, the structure
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`of the concave prop as a whole props the PCBA. The Second Institution
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`Decision also suggests that Patent Owner’s definition of “concave”
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`improperly limits the claims to the concave props being “punched” on
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`the housing. On the contrary, there are other processes that could form
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`concave shapes on the housing, such as, for example, casting, and
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`injection molding.
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`Prop
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`27. Over the years, I have also encountered many structures that
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`could be characterized as a prop. In my experience, a “prop” must not
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`only support, but must also “support one thing apart from another.” In
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`other words, a “prop” is a “structure that supports one thing apart from
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`another.” The function of supporting is broader than propping. Thus,
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`to equate a “prop” with a support encompasses structures that do not
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`Page 11 of 30
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`perform a propping function. For example, consider a person standing
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`on the ground and a second person sitting at a table with their feet
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`resting on the table. The first person’s feet are supported by the ground
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`and the second person’s feet are supported off the ground by the table.
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`Both the ground and the table can be described as a support, because
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`they perform a supporting function. However, while it is common to
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`describe the second person as sitting with their feet propped on the
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`desk, the first person’s feet are not propped on the ground. In this
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`example, only the table is a prop and performs a propping function,
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`supporting the second person’s feet apart from the ground. In my
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`opinion, a definition of “prop” that ignores this distinction fails to
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`realize the core of the ‘879 Patent – providing a concave prop, instead of
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`the flake spacer, to space the PCBA apart from the USB housing to
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`provide room in the USB housing for an additional module. See Ex.
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`1001 (‘879 Patent), 5:40-50.
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`28.
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`In my opinion, based on my experience, one of ordinary skill
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`in the art would have understood the distinction between a prop and a
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`support, and would have understood a “prop” to be “a structure that
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`supports one thing apart from another.”
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`Page 12 of 30
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`Fixed
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`29. Over the years, I have encountered many structures that
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`were fixed relative to another structure. It is my understanding that the
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`term "fixed" has been construed as "fastened securely in position," and
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`this definition is consistent with my understanding of the term.
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`However, the Second Institution Decision reads the definition
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`differently than my understanding. In particular, the Second Institution
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`Decision reads “fixed” as being only secured in one direction. To me,
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`something cannot be “fixed” or "fastened securely in position" yet also
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`be unsecured to move in certain directions. Therefore, to read the
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`construction of "fastened securely in position" as encompassing things
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`fastened securely in fewer than all directions is inconsistent with my
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`understanding. In my opinion, based on my experience, such a reading
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`is inconsistent with how one of ordinary skill in the art would
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`understand the definition, as well as the term “fixed.” The definition
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`defines fixed as fastened “in position,” i.e., one position. If a structure
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`were secured in one direction, yet unsecured in another, it would not be
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`fastened securely in one position.
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`Page 13 of 30
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`30. Accordingly, in my opinion, based on my experience, one of
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`ordinary skill in the art would understand “fixed” to mean “fastened
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`securely in position,” and understand that something secured in one
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`direction but not another, is not fastened securely “in position.”
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`C. Grounds Based on Minneman
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`31.
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`It is my opinion that neither the stand-offs nor captivating
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`indentations described in Minneman are the claimed concave props. As
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`an initial matter, I note that the stand-offs and captivating indentations
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`are two separate structures, despite an assertion otherwise in the First
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`Institution Decision. The “stand-offs 45” which are shown in FIGS. 3
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`and 4 of Minneman, are described as an example of a “securement”
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`mechanism. Ex. 1003 (Minneman), 10:48-52. After listing several
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`examples of types of stand-offs (“plastic studs, electrically non-
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`conductive rivets, screws, bolds, studs, or electrically conductive ones,
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`etc.”), the passage concludes by describing a separate type of
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`securement mechanism, “captivating indentations.” Id. at 10:48-55. One
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`of skill in the art would have understood this passage as describing two
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`separate example securement mechanisms (stand-offs and captivating
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`indentations), and not that the captivating indentations are an example
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`type of stand-off.
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`32.
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` The stand-offs are not concave props, in at least that they
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`are not “concave.” For example, one of ordinary skill in the art would
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`not consider either the rectangular solid stand-offs shown in
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`Minneman’s FIGS. 3 and 4 or the examples of “plastic studs, electrically
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`non-conductive rivets, screws, bolds, studs, or electrically conductive
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`ones, etc.” as curving inward to form a recess. Ex. 1003 (Minneman),
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`10:48-55. Also, one of skill in the art would not have understood
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`Minneman’s stand-offs and housing as being the claimed “a housing
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`having . . . a plurality of concave props.” The stand-offs are shown as
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`attached between the housing and the PCBA in FIG. 4 of Minneman. Id.
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`at 10:48-52, FIG. 4. A person of ordinary skill in the art would have
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`understood the stand-offs to not be part of Minneman’s housing, but
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`rather separate elements, attached between the PCBA and housing by a
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`mechanical attachment, such as an adhesive, solder connection, or
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`mechanical retainer. Id. at 10:43-47. Conversely, claim 1 of the ’879
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`Patent recites “a housing having...a plurality of concave props,”
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`Page 15 of 30
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`indicating to one skilled in the art that the concave props are part of the
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`housing. (Emphasis added).
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`33. Minneman’s captivating indentations are not necessarily
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`“curved” simply because they are disclosed as “formed by pushing or
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`pressing on the housing.” Id. at 10:55-56. The shape of indentations
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`formed by pushing or pressing would be dictated by the shape of the
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`presses and dies used to form them. For example, a housing could be
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`formed with matched die sets in a blanking press, stamping press, a die
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`cast press, or an injection mold press. All of these processes use the
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`pushing or pressing with very high pressure to form the material.
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`During manufacture with these processes nearly any shape or form of
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`indentation could be made in the housing, including shapes that are not
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`curved. For example: a blanking press can create hole indentations such
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`as simple circular holes or more complex shapes. Stamping presses can
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`form simple tabs, to complex 3-dimentional forms with progressive dies.
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`Die casting press can form metal into almost any shape (Hot Wheels by
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`Mattel are typically formed with a die cast press). Injection molding
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`presses can form any number of shapes, from a simple solid box to
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`sculpted forms. The variety of materials and processes available to one
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`Page 16 of 30
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`skilled in the art would allow almost any form of indentation to be
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`made by pushing or pressing. However, as previously discussed,
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`Minneman does not specify which of these types of pushing or pressing
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`are used to form the captivating indentations, and thus does not teach
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`any particular shape or form for the captivating indentations. Also,
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`pushing or pressing on the outside of the housing does not necessarily
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`form a recess. For example, in Figure 6 of the ‘879 Patent, material at the
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`open end of the USB housing is bent over to form a guide/detent, yet it
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`is not recessed relative to any surface. Accordingly, it is my opinion that
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`one of ordinary skill in the art would not have interpreted Minneman’s
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`captivating indentations as necessarily being curved or forming a recess.
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`Thus, Minneman’s captivating indentations are not necessarily concave.
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`34. One of skill in the art would have understood that the
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`captivating indentations are also not “props,” as Minneman does not
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`disclose them as spacing one thing apart from another. Minneman
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`describes the captivating indentations as “guides or detents.” Ex. 1003
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`(Minneman), 10:57. A skilled artisan would understand that a detent is
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`a “locking piece of a mechanism.” See Ex. 2003 (Collins English
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`Dictionary), p. 4. They would further understand that a guide is “any
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`Page 17 of 30
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`device that directs the motion of a tool or machine part.” Id. at p. 5.
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`Nothing in the function of either guides or detents relates to spacing one
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`thing apart from another, and neither structure necessarily does so. For
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`example, guides like the ones shown below prevent lateral movement of
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`an inserted object, but do not space the object apart from anything:
`Inserted
`object
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`Guide
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`35.
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`Guides
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`36. Further, the example detent shown below retains the object,
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`but does not space it apart from anything:
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`Object
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`37.
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`38.
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`Detent
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`In my opinion, a skilled artisan would not have understood
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`the stand-offs as fixing the PCBA by pressing. As noted above, the
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`Page 18 of 30
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`stand-offs are described as “plastic studs, electrically non-conductive
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`rivets, screws, bolds [sic], studs, or electrically conductive ones, etc.” Ex.
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`1003 (Minneman), 10:48-52. FIG. 4 of Minneman (reproduced below)
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`shows the stand-offs as rectangular solids attached to the housing and to
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`the PCBA:
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`Ex. 1003 (Minneman), FIG. 4 (annotated)
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`
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`39. These structures may retain the circuit board by a
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`mechanical attachment to the board, such as an adhesive, solder
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`connection, or mechanical retainer, rather than by pressing the circuit
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`board as recited in the claims of the ’879 Patent. Id. at 10:43-47.
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`40. Similarly, one of skill in the art would not have understood
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`the captivating indentations as necessarily pressing on Minneman’s
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`PCBA. Minneman does not show the captivating indentations, and
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`Page 19 of 30
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`Minneman is unclear on how they interact with the PCBA. The mention
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`of mechanical interference, friction and press fit in Minneman regarding
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`the captivating indentations does not specify with what structure the
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`captivating indentations mechanically interfere, friction and press fit.
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`For example, the captivating indentations could interfere, friction and
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`press fit with a securement mechanism or another structure attached to
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`the PCBA (such as the stand offs 45). Minneman is not clear on this
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`point. Accordingly, the captivating indentations do not necessarily
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`press on Minneman’s PCBA.
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`41. One of skill in the art would have understood that the use of
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`“concave props” of the ’879 patent to support the PCBA both “decreases
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`the cost” and “simplifies the manufacturing process” of the USB
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`memory device versus prior methods. Id. at 2:39-40, 5:40-45. For
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`example, by being concave, the props each form a recess on the exterior
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`of the housing that can function as an orientated indentation, thereby
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`reducing the number of manufacturing steps to produce the USB plug
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`and reducing manufacturing cost. Id. at 4:28-32. In addition, no
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`additional materials are required to be introduced to form the concave
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`Page 20 of 30
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`props from the housing, leading to further decreases in manufacturing
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`costs.
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`42. Further, a skilled artisan would have understood that there
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`are advantages associated with the curved shape of the concave props.
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`For example, the curved shape provides greater stability over other
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`shapes, due to its wide base, while still having a small contact area on
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`the PCBA. As a result, less space on the PCBA needs to be allocated for
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`prop contact, allowing the manufacturer more usable space on the
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`PCBA. Further, a curved structure has structural advantages over
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`traditional rectilinear forms, as shown by the widespread use of support
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`arches in architecture.
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`43. Takahashi does not disclose concave props, because, as
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`noted above, its protrusions are convex, not concave or curving inward
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`to form a recess. Therefore, applying Takahashi’s convex shapes to
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`Minneman’s stand-offs or captivating indentations would not yield a
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`concave shape, nor would one of ordinary skill in the art find
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`motivation from Takahashi’s convex shapes to make Minneman’s stand-
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`offs or captivating indentations concave. The concave shape is not
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`obvious.
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`Page 21 of 30
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`D. Grounds Based on Elbaz
`44. One of skill in the art would not understand Elbaz as
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`teaching that the module is secured in its adapter by features of the
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`adapter. In fact, Elbaz is silent on how the position of the module is
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`secured by features of the adapter, such as the means for raising or
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`guiding means, or even if the position, lateral, vertical or otherwise, is
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`secured by the adapter. Rather, Elbaz discloses a “means of locking” for
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`securing the module in the housing. Ex. 2012 (Elbaz), ¶60.
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`45. As shown in FIG. 10C, Elbaz’s module is merely sitting on
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`the “means for raising.” The guiding of the module is done by “guiding
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`means” 515, and the “means of locking” of module 5 in the inserted
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`position in the adapter is not shown.
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`46.
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`I have annotated FIG. 10 of Elbaz, below, for reference in the
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`following discussion: :
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`Page 22 of 30
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`47.
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`Guiding means 515
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`Module 5 top
`surface
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`Gap
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`Gap
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`
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`Ex. 2012 (Elbaz), Detail of FIG. 10C (annotated)
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`48. FIG. 10C of Elbaz does not clearly show how the module 5
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`and guiding means 515 interface. For example, the figure does not
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`definitively show whether the guiding means 515 overlap the top of the
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`module 5 or overlap the side of module 5. If the guiding means 515
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`overlap the top of module 5, module 5 will not be secured in the lateral
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`direction by the guiding means 515 and can move laterally into the gaps
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`on either side of the module 5 (gaps annotated on the figure above). If
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`the guiding means 515 overlap the sides of module 5, module 5 will not
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`be secured in the vertical direction by the guiding means 515, because
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`the space between the guiding means 515 must be at least as wide as the
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`module 5 to overlap the sides of the module 5. Even still, FIG. 10C does
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`not show whether and how tightly the guiding means 515 touch the
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`Page 23 of 30
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`module 5. For example, the guiding means 515 could loosely receive the
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`module, allowing some movement of the module 5 between the guiding
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`means 515 and between the guiding means 515 and means for raising
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`516, yet still provide guidance to the module 5. Such movement is not
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`fastened securely in position, and there would be no substantive friction
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`between the module 5 and the means for raising 516 or guiding means
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`515. The module 5 being loosely received between the guiding means
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`515 is consistent with Elbaz’s teaching that the module 5 is removable
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`from the adapter when not secured by the means of locking, as if the
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`module 5 were tightly clamped between the guiding means 515 or
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`between the guiding means 515 and means for raising 516, friction
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`would make it difficult to remove the module 5 when desired.
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`49.
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`If the lower inside corners of the ribs 515 and the upper
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`outside corners of the module 5 meet at their edges, one skilled in the art
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`would realize that such a structure would be difficult to manufacture,
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`due to tolerances, and would be inherently unstable. The edges would
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`tend to slip off each other if any significant force were applied,
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`potentially rendering the module unsupported. However, as I noted
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`Page 24 of 30
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`above, FIG. 10C is unclear and does not definitively show how the
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`module 5 and guiding means 515 interface.
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`50. The Second Institution Decision asserts that since Deng
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`discloses its PCBA is constrained with its casing, it would have been
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`obvious to provide greater constraints on the module of Elbaz. I
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`disagree, in particular, because Elbaz is an adapter, not a permanent
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`housing, that is specifically designed to allow removal of the module 5.
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`Ex. 2012 (Elbaz), ¶ 60. Adding greater constraints of the type in Deng to
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`Elbaz would make removal of the module 5 more difficult.
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`51. Also, in my opinion, when the claims say “said PCBA is
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`fixed by means of pressing of said plurality of concave props,” a skilled
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`artisan would have understood the term “pressing,” to require more
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`force than simply touching. For example, in common usage, consider
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`that a key on a keyboard may be touched without “pressing” the key. In
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`the context of the claims, the concave props must press on the PCBA
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`with enough force to fasten the PCBA securely in position. One of skill
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`in the art would thus have understood pressing implies more than
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`merely touching or contacting.
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`Page 25 of 30
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`52.
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` Elbaz discusses that integrated circuit chip cards provide
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`advantages that allow manufacturing costs to be reduced. Elbaz
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`distinguishes prior art dongles, such as shown in its Figure 1, because
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`“[t]he cost of manufacturing these dongles is high because in particular
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`of the number of elements...to be manufactured, assembled and
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`electrically connected.” Ex. 2012 (Elbaz), ¶0013. Elbaz also states that
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`“[t]he purpose of the present invention is therefore to propose a dongle
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`which is less expensive to manufacture” than those of the prior art. Ex.
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`2012 (Elbaz), ¶ 0014. Elbaz further states that “[t]he device of the
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`invention therefore preferably comprises, for reasons of cost, the most
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`possible of the characteristics of the above chip card components.” Ex.
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`2012 (Elbaz), ¶ 0069. Elbaz elaborates on the chip card’s role in reducing
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`cost:
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`[T]he current chip cards of the contact type such
`as ISO cards already have certain characteristics
`ensuring for them good resistance to attacks
`caused by frequent usage, such as for example
`that of a bank card. It is then no longer
`necessary to provide, for the dongle according to
`invention, elements for protecting the
`the
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`Page 26 of 30
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`module such as the elements 6, 14 and 15
`depicted in FIG. 1.
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`Ex. 2012 (Elbaz), ¶ 0045 (emphasis added). This passage teaches
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`that chip cards provide an attack resistance benefit that allows certain
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`elements of the device to be omitted, such as the protecting elements 6,
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`14, and 15 shown in the dongle of FIG. 1. Elbaz also describes that
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`manufacturing cost can be reduced by lowering the “number of
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`elements...to be manufactured, assembled, and electrically connected”
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`for a particular device. Ex. 2013 (Elbaz), ¶ 0013. A skilled artisan would
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`have recognized that a PCBA has exposed components, unlike the chip
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`cards contemplated by Elbaz, and would have recognized that the
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`PCBA would not provide the same attack resistance as chip cards. They
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`would also recognize that the protecting elements that can be omitted
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`through the use of the chip card must be included in a device using a
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`PCBA for the device to provide the same attack resistance. One of skill
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`would understand that the inclusion of these elements would increase
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`the manufacturing cost of the device, which is against the stated
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`purpose of Elbaz. See Ex. 2012 (Elbaz), ¶ 0013-0014.
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`Page 27 of 30
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`53. One of skill in the art would have understood that Elbaz’s
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`device is not configured to encase or display an LED, such as the LED
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`from Deng the Petitioner proposes adding to the device of Elbaz. Note,
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`for example, that the entire adapter of Elbaz is the same size – the size
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`that fits within the female USB port. Therefore, adding an LED to Elbaz
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`presents a similar problem of finding space within the adapter as
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`addressed by the ‘879 Patent. Deng provides its LED and its PCBA in a
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`separate, larger housing than the portion that is inserted into the female
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`USB port. Ex. 2013 (Deng), 7:1-7, FIG. 2. Yet, Deng provides no special
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`teaching of how one could accommodate an LED and the PCBA in a
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`housing sized to fit within the female USB port. In other words, Deng
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`nor Elbaz teach how the adapter of Elbaz, sized to fit in a female USB
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`port, could accommodate both a module or PCBA and an LED. A
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`skilled artisan would also not have included the LED of Deng in the
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`adapter of Elbaz, because such a combination would have increased the
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`manufacturing cost of the device by requiring the adaptor to be
`
`modified to provide an enclosure to encase the LED, and by requiring
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`additional material (e.g., transparent material) to display the LED. This
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`is in direct contrast to the stated purpose of Elbaz of decreasing
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`Page 28 of 30
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`manufacturing costs. The artisan would have weighed this teaching of
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`Elbaz over any benefit gained from adding the LED, and ultimately not
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`performed the combination. Therefore, in my opinion, one of ordinary
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`skill in the art would have been motivated against combining the
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`teachings of Elbaz with those of Deng.
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`
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`Page 29 of 30
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`54.
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`I currently hold the opinions set expressed in this
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`declaration. But my analysis may continue. If and as my study of the
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`investigation continues, I may acquire additional information and/ or
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`attain supplemental insights that result in added observations.
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`55.
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`I declare under penalty of perjury under the laws of the
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`United States of America that the foregoing is true and correct.
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`Dated: ]uly 8, 2014
`
`Steven Carl Visser
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`Page 30 of 30