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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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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`RESPONSE UNDER 37 C.F.R § 42.120
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`
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`Case IPR2013-00472
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`TABLE OF CONTENTS
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`I.
`
`Introduction ........................................................................................................ 1
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`II. Statement of Relief Requested ........................................................................... 5
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`III. Background OF THE ‘879 PATENT ............................................................... 5
`
`IV. CLAIM CONSTRUCTION ............................................................................. 8
`
`A. Concave must include “forming a recess” .................................................... 9
`
`1. The ’879 Patent does not redefine the term “concave” ............................ 10
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`2. The preliminary construction improperly fails to give meaning to both
`words – “concave” and “prop,” thereby improperly reading a word out of the
`claims. .............................................................................................................. 14
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`3. A skilled artisan would understand the plain and ordinary meaning of
`“concave” to be “curving inward to form a recess” ........................................ 16
`
`B. Prop must include “spacing one thing apart from another” ........................ 19
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`C. Fixed should not be interpreted more broadly than “fastened securely in
`position” ............................................................................................................... 23
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`V. DEFECTS IN THE GROUNDS OF UNPATENTABILITY ......................... 25
`
`A. Grounds Based on Minneman ..................................................................... 25
`
`1. Ground 1 is defective because neither the protrusions described in
`Takahashi nor the stand-offs described in Minneman are concave according to
`the broadest reasonable interpretation of the term ........................................... 25
`
`2. Ground 1 is also defective because Takahashi is not analogous art to the
`Challenged Claims ........................................................................................... 35
`
`3. Ground 1 is also defective because the curved shape of the claimed
`concave props provides multiple functional advantages, and thus is not an
`obvious design choice ...................................................................................... 36
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`i
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`Case IPR2013-00472
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`4. Ground 1 is also defective because Minneman does not teach “said
`PCBA is fixed by means of pressing of said plurality of concave props” as
`recited in the claims ......................................................................................... 39
`
`5. Ground 1 is also defective because Minneman does not teach “a housing
`having...a plurality of concave props” as recited in the claims
`
` .................................................................................................................. 41
`
`B. Grounds Based on Elbaz ............................................................................. 42
`
`1. Grounds 2 and 3 are defective because the combination of Elbaz and
`Deng or of Elbaz, Deng and AAPA does not teach or suggest that the “PCBA
`is fixed” by the concave props ......................................................................... 42
`
`2. Grounds 2 and 3 are also defective because the combination of Elbaz and
`Deng or of Elbaz, Deng and AAPA does not teach or suggest the “said PCBA
`is fixed by means of pressing of said plurality of concave props.” ................. 48
`
`3. Grounds 2 and 3 also are defective because Elbaz teaches away from a
`combination including a PCBA ....................................................................... 49
`
`4. Ground 2 is also defective because the combination of Elbaz and Deng
`does not teach or suggest “a LED module having a LED indicator disposed in
`said housing” or the components recited in claims 3, 11, and 20 .................... 52
`
`VI. CONCLUSION .............................................................................................. 57
`
`
`
`ii
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`
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`LIST OF EXHIBITS
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`Case IPR2013-00472
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`
`2005
`
`2006
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`2007
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`Exhibit No. Description
`2001
`File History of the ’879 Patent
`2002
`U.S. Publication No. 2007/0178769 to Ni (“Ni Publication”)
`Collins English Dictionary, pp. 350, 452, 725 (2005)
`2003
`Erik Oberg et al., Machinery’s Handbook, 26th Edition, pp. 720-
`2004
`973 (2000)
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2013-00003 (Paper 7, Oct. 25, 2012)
`DETENTS & DIAMETERS OF SPRING LOADED DEVICES,
`http://www.vlier.com/product_index/sld/ sel_06_diam.html (2007)
`Affidavit of David M. Barkan In Support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`Steve Visser - Declaration
`Steve Visser - Curriculum Vitae
`Webster New World Dictionary – “concave”
`American Heritage Dictionary – “fastened”, “position”, and
`“securely”
`Elbaz – U.S. Publication No. 2004/0259423
`Deng – U.S. Patent No. 6,829,672
`
`2008
`2009
`2010
`2011
`
`2012
`2013
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`iii
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`
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`TABLE OF AUTHORITIES
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`Case IPR2013-00472
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`Page(s)
`
`
`Cases
`
`Brookhill-Wilk 1, LLC, v. Intuitive Surgical, Inc.,
`334 F.3d 1294 (Fed. Cir. 2003) .................................................................... 10, 16
`
`Merck & Co., Inc., v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005). ....................................................... 10, 15, 18, 20
`
`Multiform Desiccants Inc. v. Medzam Ltd.,
`133 F.3d 1473 (Fed. Cir. 1998) ........................................................ 10, 11, 16, 21
`
`Hill-Rom Services, Inc. v. Stryker Corp.,
`2014 U.S. App. LEXIS 12105 (Fed. Cir. 2014) ................................................. 11
`
`Agilent Techs., Inc. v. Affymetrix, Inc.,
`567 F.3d 1366 (Fed. Cir. 2009) ................................................................... 15, 18
`
`Mangosoft, Inc. v. Oracle Corp.,
` 525 F.3d 1327 (Fed. Cir. 2008) ................................................................... 15, 18
`
`Applied Med. Res. Corp. v. U.S. Surgical Corp.,
`448 F.3d 1324 (Fed. Cir. 2006) .......................................................................... 23
`
`Curtiss-Wright Flow Control Corp. v. Velan, Inc.,
`438 F.3d 1374 (Fed. Cir 2006). .......................................................................... 24
`
`Seachange International, Inc. v. C-COR Inc.,
` 413 F.3d 1361 (Fed. Cir. 2005) ......................................................................... 24
`
` Ex Parte Lee,
`Appeal 20110089991 (BPAI Mar. 21, 2012) ..................................................... 37
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2009) ......................................................................... 37
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 38
`
`iv
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`Case IPR2013-00472
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`In re Chu,
`66 F.3d 292 (Fed. Cir. 1995). ........................................................................... 40
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`Knoll Pharmaceutical v. Teva Pharmaceuticals,
`367 F.3d 1381 (Fed. Cir. 2004) ......................................................................... 42
`
`Bettcher Indus. v. Bunzl,
`661 F.3d 629 (Fed. Cir. 2011). ..................................................................... 44, 50
`
`Ball Aerosol v. Ltd. Brands,
`555 F.3d 984 (Fed. Cir. 2009) ...................................................................... 57, 59
`
`KSR v. Teleflex,
` 550 U.S. 398 (2007) .................................................................................... 58, 59
`
`
`
`Statutes
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`35 U.S.C. § 103 ........................................................................................................ 29
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`
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`v
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`Case IPR2013-00472
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`Pursuant to 37 C.F.R § 42.120, the patent owner, Phison Electronics Corp.
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`(“Patent Owner”), hereby submits the following Response to the Petition for Inter
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`Partes Review (“IPR”) of U.S. Patent No. 7,518,879 (“the ‘879 Patent”) from
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`which the present IPR (case IPR2013-00472) has been instituted.
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`I.
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`INTRODUCTION
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`The ‘879 Patent, entitled “Universal Serial Bus (USB) Memory Plug”
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`contains twenty-one claims, of which claims 1, 11, and 17 are independent. The
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`Board devised preliminary claim constructions and instituted the present IPR1 on
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`claims 1-4, 8-12, and 16 of the ‘879 Patent (the “Challenged Claims”) based on
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`three grounds of unpatentability: (1) obviousness of claims 1-4, 8-12, and 16 based
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`on Minneman in view of Takahashi (Ground 1); (2) obviousness of claims 1, 3-9,
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`and 11-21 based on Elbaz in view of Deng (Ground 2); and (3) obviousness of
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`claims 2 and 10 based on Elbaz and Deng in view of alleged Applicant Admitted
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`Prior Art (AAPA). These grounds are defective for at least the following reasons.
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`
`
` 1
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` The present IPR is a joined proceeding of case IPR2013-00472 and case
`IPR2014-00150, as ordered by the Board in Decision on the joint motion for
`joinder, entered April 28, 2014 in case IPR2014-00150. See IPR2014-00150,
`Paper 9.
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`1
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`Ground 1 is defective because when all claim terms are properly construed,
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`Minneman and Takahashi, either alone or in combination, fail to disclose, teach, or
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`suggest all elements of the claims of the ‘879 Patent. For example, neither
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`Minneman nor Takahashi teach the “concave props” recited in the claims of the
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`‘879 Patent. Ground 1 is thus defective for at least these reasons and must be
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`withdrawn.
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`Ground 1 is also defective, even under the Board’s preliminary claim
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`constructions, because both the curved shape and the recessed shape of the claimed
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`“concave props” is not an obvious design choice, and thus it would not have been
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`obvious for a person of ordinary skill in the art to modify the cited structures of
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`Minneman or Takahashi to have this curved, recessed shape. The ’879
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`specification describes specific functional advantages of the curved and recessed
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`shapes of the props, and, as described in greater detail below, additional functional
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`advantages arise from these specific shapes.
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` These functions were not
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`contemplated by the prior art. Accordingly, because the shape of the concave
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`props provides specific functional advantages, it is not an obvious matter of design
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`choice. Thus, for at least these reasons, Ground 1 is defective and must be
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`withdrawn.
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`Ground 1 is also defective, even under the Board’s preliminary claims
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`constructions, because Minneman’s structures lack other features of the claims.
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`2
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`For example, the claims require the PCBA be fixed by means of pressing of the
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`plurality of concave props, yet the stand-offs of Minneman are described as studs,
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`rivets, screws, and bolts, none of which retain the PCBA by pressing. In another
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`example, the claims require that the housing have the plurality of concave props,
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`yet these studs, rivets, screws, and bolts described in Minneman are all structures
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`apart from the housing. Thus, because Minneman fails to disclose these other
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`features of the claims, Ground 1 is defective and must be withdrawn.
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`Finally, Ground 1 is also defective, even under the preliminary claim
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`constructions, because it would not have been obvious to modify the structures of
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`Minneman based on the teachings of Takahashi. Takahashi is not analogous art.
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`Takahashi is neither from the same field of endeavor as the claimed invention, i.e.,
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`USB memory plugs, nor is it reasonably pertinent to the problems faced in
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`providing space in the tight confines of a USB memory plug. As Takahashi is not
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`analogous art, one of ordinary skill would not have looked to Takahashi for
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`inspiration. Thus, for at least these reasons, Ground 1 is defective and must be
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`withdrawn.
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`Grounds 2 and 3 are defective, even if the preliminary construction is
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`interpreted as proposed by the Board, because it would not be obvious from Elbaz
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`and Deng or Elbaz, Deng and AAPA to fix a PCBA in housing using concave
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`props. The structures asserted in Elbaz as being concave props do not fasten
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`3
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`Case IPR2013-00472
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`Elbaz’s module securely in position, as required by the claims, but leave it loose
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`and unsecured. Instead, Elbaz teaches that its module is held by a “means for
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`locking.” Elbaz does not disclose that the constraint provided by its structures
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`holds Elbaz’s module tightly, even in the direction of constraint. Therefore, even
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`if “fixed” is interpreted as unsecured in some directions, Elbaz’s module cannot be
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`characterized as fixed. Moreover, many of the claims also require the PCBA be
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`fixed by pressing of the concave props. As Elbaz is silent on whether and how
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`tightly its structures contact its module, Elbaz cannot be read as teaching a PCBA
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`be fixed by pressing of concave props. Even still, Elbaz teaches its module is
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`removable, and teaches away from holding the module tightly. Therefore, it would
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`not be obvious from Deng to fasten Elbaz’s module more securely in position, and
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`Grounds 2 and 3 must be withdrawn.
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`Grounds 2 and 3 are also defective, even under
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`the preliminary
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`constructions, because Elbaz teaches away from a combination including the
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`claimed PCBA. Elbaz advocates using an integrated circuit card such as a SIM
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`card, and distinguishes PCBA based on cost and durability. Therefore, one of
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`ordinary skill in the art would have been motivated away from using a PCBA, as
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`proposed in Grounds 2 and 3. For these additional reasons, Grounds 2 and 3 must
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`be withdrawn.
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`4
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`Case IPR2013-00472
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`Ground 2 is defective, even under the preliminary constructions, because the
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`combination of Elbaz and Deng does not teach an LED indicator in the housing, as
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`required by the claims. Elbaz does not have an LED. Deng, relied on for the LED,
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`teaches providing the LED outside of the housing in a second body. Therefore, the
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`combination of Elbaz and Deng do not teach the claimed LED in the housing.
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`Additionally, Elbaz teaches away from including an LED in its housing, due to
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`high part count and cost. Therefore, for these additional reasons, Ground 2 must
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`be withdrawn.
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`Accordingly, for at least the reasons described herein, Patent Owner submits
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`that all grounds of rejection in the Present IPR are defective, and the Board must
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`withdraw the grounds of rejection and confirm the patentability of the Challenged
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`Claims of the ‘879 Patent.
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`II.
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`STATEMENT OF RELIEF REQUESTED
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`Patent Owner respectfully requests that the Board withdraw the instituted
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`grounds of rejection of the Challenged Claims of the ‘879 Patent (Grounds 1 to 3)
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`for at least the reasons discussed herein. Patent Owner further requests that the
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`Board confirm patentability of the Challenged Claims of the ‘879 Patent.
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`III. BACKGROUND OF THE ‘879 PATENT
`The ‘879 Patent describes a low cost, simple to manufacture manner of
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`making space for additional components in a universal serial bus (USB) memory
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`5
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`Case IPR2013-00472
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`device. The described USB memory device is of a type having a housing
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`enclosing a printed circuit board assembly (PCBA). Ex. 1001 (‘879 Patent),
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`Abstract. The housing includes a plurality of concave props formed by punching
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`or pressing on the housing. Id. at 2:55-57, 4:28-32; See Fig. 6 ref. 512. The
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`concave props are operable to fix the PCBA in place and to supplant the flake
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`spacer to form a space between the PCBA and the housing. Id. at 2:50-52, 5:40-
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`45. The space resulting from removal of the flake spacer enables additional
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`components to be included within the USB housing. Id. at 2:6-9, 4:-53-56, 5:35-
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`39.
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`An example of the concave props are illustrated in Figure 6 of the ‘879
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`Patent, reproduced below and annotated. In this figure, the concave props are item
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`512.
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`6
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`
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`Orientated indentation
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`Concave prop
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`Case IPR2013-00472
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`Recess
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`
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`Ex. 1001 (‘879 Patent), Figure 6 (annotated, Ex. 2008 (Expert Declaration),
`
`¶ 21)
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`The ‘879 Patent states that the use of “concave props” to support the PCBA
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`both “decreases 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 example, by
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`being concave, the props 512 each form a recess on the exterior of the housing.
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`This recess can function as an orientated indentation. The recess is labeled above,
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`and the orientated indentations are item 511. The orientated indentations are
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`provided to engage metal springs on the USB socket to secure the USB plug in the
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`socket. Id. at 4:35-39. By forming the props to be concave (i.e., recessed), some
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`7
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`of
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`the orientated
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`indentations are
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`formed simultaneously
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`Case IPR2013-00472
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`the same
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`in
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`manufacturing step with forming the concave props. This reduces the number of
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`manufacturing steps to produce the USB plug and saves on manufacturing cost. Id.
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`Moreover, the curved shapes of the concave pops are simple and cheap to form by
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`punching on the housing, and have other advantages.
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`IV. CLAIM CONSTRUCTION
`The preliminary claim constructions for the terms “concave” and “prop” are
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`overly inclusive, and thus not indicative of the broadest reasonable interpretation
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`of these terms. Specifically, a person of ordinary skill in the art would have
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`understood the concave shape must “form a recess,” and thus the broadest
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`reasonable interpretation of the term “concave” must reflect this understanding.
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`Further, one of ordinary skill in the art would have understood that a prop must
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`“support one thing apart from another,” and thus the broadest reasonable
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`interpretation of the term “prop” must reflect this understanding. Finally, “fixed”
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`is correctly construed to mean “fastened securely in position,” but then interpreted
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`in a manner inconsistent with the understanding of a skilled artisan. The net effect
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`of this was to make the construction of fixed broader than the understanding of a
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`skilled artisan, and thus improper under the broadest reasonable interpretation
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`standard.
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`8
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`Case IPR2013-00472
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`A. Concave must include “forming a recess”
`“Concave” is preliminarily construed to mean “curving inwards from a
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`housing.” See Institution Decision, Paper 10, IPR2013-00472, p. 8 (hereinafter the
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`“First Institution Decision”); Institution Decision, Paper 8, IPR2014-00150, p. 7
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`(hereinafter the “Second Institution Decision”). Although Patent Owner agrees
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`that a proper construction of “concave” must include at least “curving inwards,”
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`the adopted construction is imprecise. It fails to comport with the ordinary
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`meaning of the term “concave,” which also requires “forming a recess” in addition
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`to curving inwards. A construction of “concave” that does not require forming a
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`recess wrongly encompasses structures not concave in any sense of the word. Ex.
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`2008 (Expert Declaration), ¶ 24. The Board agrees, but asserts that the ‘879 Patent
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`redefines “concave,” because, according to the Board, the patentee acted as its own
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`lexicographer. See Decision on Request for Rehearing, Paper 16, IPR2013-00472,
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`p. 52 (hereinafter “Decision on Request for Rehearing”). The ‘879 Patent,
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` 2
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` The Board stated “While Phison is correct that ‘Takahashi’s protrusions are not
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`concave in any sense of the word’ and that ‘Takahashi’s protrusions are convex,’
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`(Req. 5), that does not mean that Takahashi cannot suggest a particular shape. In
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`Case IPR2013-00472
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`however, does not create a special and unique definition of “concave,” let alone
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`one that is directly in conflict with the ordinary understanding of those of skill in
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`the art. Moreover, the “patentee as a lexicographer” doctrine has exacting
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`requirements which are not present in the specification of the ‘879 Patent. The
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`Board, therefore, erred in invoking this doctrine to construe the term “concave.”
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`1.
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`The ’879 Patent does not redefine the term “concave”
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`It is well established that claim terms are “presumed to take on the ordinary
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`and customary meanings attributed to them by those of ordinary skill in the art.”
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`Brookhill-Wilk 1, LLC, v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir.
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`2003). “We depart from the plain and ordinary meaning of claim terms in only
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`two instances: lexicography and disavowal. . . .The standards for finding
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`lexicography and disavowal are exacting.” Hill-Rom Services, Inc. v. Stryker
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`Corp., 2014 U.S. App. LEXIS 12105, *5 (Fed. Cir. 2014). “To act as its own
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`lexicographer, a patentee must clearly set forth a definition of the disputed claim
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`term other than its plain and ordinary meaning and must clearly express an intent
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`to redefine the term.” Id. Disavowal requires that the specification or prosecution
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`
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`addition, per the adopted claim construction, the limitation may be met by the
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`shape of the element, and not the presence of a recess.”
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`10
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`history make clear that the invention does not include a particular feature. Id. at *6.
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`See also Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed.
`
`Cir. 2005) (“When a patentee acts as his own lexicographer in redefining the
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`meaning of particular claim terms away from their ordinary meaning, he must
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`clearly express that intent in the written description.”); Multiform Desiccants Inc.
`
`v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998) (Any special meaning
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`assigned to a term “must be sufficiently clear in the specification that any departure
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`from common usage would be so understood by a person of experience in the field
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`of the invention.”).
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`The ’879 specification does not express any intent to redefine the term
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`“concave,” and thus the term must be interpreted according to its plain and
`
`ordinary meaning (i.e. “curving inward to form a recess”).
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`Neither the Petitioner nor the Board identify any explicit definition of
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`“concave” within the ’879 Patent. No instances of the ‘879 Patent distinguishing
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`its concave shape from other shapes commonly recognized as concave have been
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`identified, nor does the ‘879 Patent or its prosecution history include such.
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`Further, the ‘879 Patent includes no implication that “concave” was intended to
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`encompass structures not concave in any sense of the word, while in contrast, the
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`Board’s preliminary construction does improperly encompass such structures.
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`11
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`Rather, all instances of the concave props shown and described in the ‘879
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`Patent are concave in accordance with the ordinary meaning of the word. Ex. 2008
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`(Expert Declaration), ¶ 24. For example, the ‘879 Patent’s preferred manner of
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`forming the concave props, i.e., “punching on the housing,” can produce a concave
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`shape curving inward to form a recess.3 See Ex. 1001 at 3:15-16. The ‘879 Patent
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`also describes advantages to the recess of a concave shape. For example, in some
`
`instances, the concave props and orientated indentations can be “formed
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`simultaneously” in the same manufacturing process and, thus, coincide. See id. at
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`4:28-32. As seen in Figures 5, 6, and 8, when the concave props and orientated
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`indentations are formed simultaneously and coincide, the recess of the concave
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`prop defines the orientated indentation. Finally, the ‘879 Patent always shows the
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`concave props as being concave. The cross-sectional view of Figure 6 of the ‘879
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`Patent is reproduced below, showing the concave surface and the resulting recess
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`of the concave props 512. Figures 5, 8 and 9 also accord.
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`
`
` 3
`
` Patent Owner agrees with the Board that formation of the concave props need not
`be limited to “punching,” and notes that other techniques, such as casting or
`pressing, could also form a shape curving inward to form recess. Ex. 2008 (Expert
`Declaration), ¶ 26.
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`12
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`Case IPR2013-00472
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`Recess
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`Concave prop
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`
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`Ex. 1001, Figure 6 (annotated, Ex. 2008 (Expert Declaration), ¶ 21).
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`There are no contrary examples or description of the concave props in the
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`figures or specification of the ‘879 Patent – in all instances that the concave props
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`are illustrated and described as having a recess that is an essential characteristics of
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`the prop being “concave.”
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`13
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`Case IPR2013-00472
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`2.
`The preliminary construction improperly fails to give full
`meaning to both words – “concave” and “prop,” thereby improperly
`reading a word out of the claims.
`
`If the patentee had intended to claim only the propping portion of the
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`structure, the patentee would have not chosen to call the props “concave” props.
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`The patentee could have just called them “props,” or “curved props.” Instead,
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`however, the patentee chose to call the props “concave props” to claim both their
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`concave nature and their propping function. Ex. 2008 (Expert Declaration), ¶ 20.
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`The Second Institution Decision justifies deviating from the ordinary
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`meaning of “concave” by arguing that a recess “cannot act as a prop. The portion
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`that acts as a prop is the portion that extends inwardly from the housing.” See
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`Second Institution Decision, p. 7. While it is true that a “portion” of the claimed
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`“concave prop” structure acts as a prop, the Second Institution Decision fails to
`
`acknowledge that this is only one aspect of the claimed “concave prop.” As the
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`plain language of the claim term mandates, the claimed structure must also be as
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`the term plainly says – “concave.” By focusing exclusively on the “prop” aspect,
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`the preliminary construction has wrongly read the word concave out of the term
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`“concave prop.”
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`The fundamental problem with the preliminary construction is manifest in
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`the acknowledgement by the Board that the preliminary construction is so broad as
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`to encompass structures that “are not concave in any sense of the word.” Decision
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`on Request for Rehearing, p. 4. The reason why the Board must now wrestle with
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`a preliminary construction that covers non-concave structures is that, by
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`eliminating the requirement of a recess, the preliminary construction has read the
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`word “concave” out of the claim term “concave prop.” Thus, the acknowledgement
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`that the preliminary construction covers non-concave structures should it self be a
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`red flag that there is a fundamental problem in any construction that fails to give
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`full meaning to both words “concave” and “prop.” All terms in a claim must be
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`given meaning. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1378
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`(Fed. Cir. 2009); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372
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`(Fed. Cir. 2005); Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed.
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`Cir. 2008).
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`Instead of addressing this red flag problem, the preliminary construction
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`attempts to rescue the construction by arguing that the patentee acted as its own
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`lexicographer and somehow redefined “concave” to encompass non-concave
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`structures. But nothing in the specification supports this argument. Simply stated,
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`the ‘879 Patent always shows and describes the concave props in a manner
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`comporting with the ordinary meaning of the term, and discusses advantages
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`stemming from this shape. Nothing cited in the Second Institution Decision
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`supports an express redefinition of the term “concave” in the specification, and the
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`Second Institution Decision fails to wrestle with the high threshold set by the
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`Case IPR2013-00472
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`Federal Circuit before the patentee is determined as having acted as its own
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`lexicographer has not been met. See Hill-Rom Services at *5; Brookhill-Wilk at
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`1298; Multiform at 1477.
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`The term “concave prop” must be construed to encompass the plain and
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`ordinary meaning of concave; namely, “curving inward to form a recess.”
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`3.
`A skilled artisan would understand the plain and ordinary
`meaning of “concave” to be “curving inward to form a recess”
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`One of skill in the art at the time of the ’879 patent would have understood
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`that a concave shape must not only curve inward, as the concave props curve
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`inward from the USB housing, but must “form a recess” relative to the surrounding
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`housing. Ex. 2008 (Expert Declaration), ¶ 22. Such a definition properly excludes
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`shapes not concave in any sense of the word.
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`First, “concave” was generally accepted to mean “curving inwards to form a
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`recess” at the time of the ‘879 Patent. For example, although the definition cited in
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`the Patent Owner’s First Preliminary Response defined “concave” only as “curving
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`inwards,” as Patent Owner noted, that definition is imprecise. See Ex. 2003
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`(Collins English Dictionary), p. 3. Consider, additionally, the Webster’s
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`Dictionary from 1991 that defines “concave” as “hollow and curved like the inside
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`half of a hollow ball.” See Ex. 2010 (Webster’s), p. 287 (emphasis added). This
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`definition makes clear that concave shapes necessarily form a recess. Ex. 2008
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`(Expert Declaration), ¶ 25.
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`In yet another example, the Machinery’s Handbook from 2000, a handbook
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`for metal working such as manufacturing metal USB housings, provides an
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`illustration of the meaning of concave. Patent Owner included this illustration in
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`its initial response, but the Board misunderstood its significance in its First
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`Institution Decision, expressing confusion over how this illustration could show a
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`“concave prop.” The purpose of including the Machinery’s Handbook was to
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`show the generally accepted meaning of “concave” in the field, not the “concave
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`prop.” Indeed, it is impossible to construe the meaning of “concave prop” without
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`having a correct interpretation of “concave” first. A “concave prop” that is
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`contrary to the generally accepted meaning of “concave” cannot be a correct
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`construction. All terms in a claim must be given meaning. See Agilent, 567 F.3d at
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`1378 (“A ‘closed chamber . . . adapted to retain a quantity of fluid’ must mean
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`something different than just a ‘chamber . . . adapted to retain a quantity of fluid.’
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`Otherwise, the word ‘closed’ becomes superfluous.”); Merck, 395 F.3d at 1372 (“A
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`claim construction that gives meaning to all the terms of the claim is preferred over
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`one that does not do so.”); Mangosoft, 525 F.3d at 1330-31 (rejecting claim
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`construction that “ascribes no meaning to the term . . . not already implicit in the
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`rest of the claim.”).
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`Case IPR2013-00472
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`Surface
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`Recess
`relative to
`the surface
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`
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`Ex. 2004 (Machinery’s Handbook), p. 71 (annotated).
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`As shown in the annotated figure above, the concave feature curves inward
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`into the surface and necessarily forms a recess – illustrating the generally accepted
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`meaning of “concave” – which must form the basis for any construction of
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`“concave prop.”
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`Accordingly, the multiple references presented above clearly indicate that
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`the ordinary meaning of “concave” was “curving inwards to form a recess” at the
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`time of the ‘879 Patent. Such a meaning is consistent with the understanding of
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`those of ordinary skill in the art at the time of the ‘879 Patent. Ex. 2008 (Expert
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`Declaration), ¶ 25. The props are concave, because they form a concave shape on
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`the exterior surface of the housing. The prop and its recessed, curved concave
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`surface is depicted diagrammatically below.
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`USB housing
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`Case IPR2013-00472
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`Concave prop
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`
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`Recess
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`Ex. 2008 (Expert Declaration), ¶ 23
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`A person of ordinary skill in the art at the time of the ‘879 Patent would
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`have understood that the term “concave” refers to this recessed, curved shape
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`formed on the exterior of the housing by the concave props. Ex. 2008 (Expert
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`Declaration), ¶ 22.
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`Thus, a proper construction of concave must include at least “curving inward
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`to form a recess,” because (i) such a definition was generally accepted in the art at
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`the time of the ‘879 Patent, which provides no alternate definition, and (ii) any
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`definition not so limited would be so broad as to include structures “not concave in
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`any sen