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