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
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PHISON ELECTRONICS CORP.’S
`RESPONSE UNDER 37 C.F.R § 42.120
`
`

`
`Case IPR2013-00472
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ........................................................................................................ 1
`
`II. Statement of Relief Requested ........................................................................... 5
`
`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
`
`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
`
`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
`
`C. Fixed should not be interpreted more broadly than “fastened securely in
`position” ............................................................................................................... 23
`
`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
`
`i
`
`

`
`Case IPR2013-00472
`
`
`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
`
`

`
`LIST OF EXHIBITS
`
`Case IPR2013-00472
`
`
`2005
`
`2006
`
`2007
`
`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
`
`iii
`
`

`
`TABLE OF AUTHORITIES
`
`Case IPR2013-00472
`
`
`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
`
`

`
`Case IPR2013-00472
`
`
`In re Chu,
`66 F.3d 292 (Fed. Cir. 1995). ........................................................................... 40
`
`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
`
`35 U.S.C. § 103 ........................................................................................................ 29
`
`
`
`v
`
`

`
`Case IPR2013-00472
`
`Pursuant to 37 C.F.R § 42.120, the patent owner, Phison Electronics Corp.
`
`(“Patent Owner”), hereby submits the following Response to the Petition for Inter
`
`Partes Review (“IPR”) of U.S. Patent No. 7,518,879 (“the ‘879 Patent”) from
`
`which the present IPR (case IPR2013-00472) has been instituted.
`
`I.
`
`INTRODUCTION
`
`The ‘879 Patent, entitled “Universal Serial Bus (USB) Memory Plug”
`
`contains twenty-one claims, of which claims 1, 11, and 17 are independent. The
`
`Board devised preliminary claim constructions and instituted the present IPR1 on
`
`claims 1-4, 8-12, and 16 of the ‘879 Patent (the “Challenged Claims”) based on
`
`three grounds of unpatentability: (1) obviousness of claims 1-4, 8-12, and 16 based
`
`on Minneman in view of Takahashi (Ground 1); (2) obviousness of claims 1, 3-9,
`
`and 11-21 based on Elbaz in view of Deng (Ground 2); and (3) obviousness of
`
`claims 2 and 10 based on Elbaz and Deng in view of alleged Applicant Admitted
`
`Prior Art (AAPA). These grounds are defective for at least the following reasons.
`
`
`
` 1
`
` 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.
`
`1
`
`

`
`Case IPR2013-00472
`
`Ground 1 is defective because when all claim terms are properly construed,
`
`Minneman and Takahashi, either alone or in combination, fail to disclose, teach, or
`
`suggest all elements of the claims of the ‘879 Patent. For example, neither
`
`Minneman nor Takahashi teach the “concave props” recited in the claims of the
`
`‘879 Patent. Ground 1 is thus defective for at least these reasons and must be
`
`withdrawn.
`
`Ground 1 is also defective, even under the Board’s preliminary claim
`
`constructions, because both the curved shape and the recessed shape of the claimed
`
`“concave props” is not an obvious design choice, and thus it would not have been
`
`obvious for a person of ordinary skill in the art to modify the cited structures of
`
`Minneman or Takahashi to have this curved, recessed shape. The ’879
`
`specification describes specific functional advantages of the curved and recessed
`
`shapes of the props, and, as described in greater detail below, additional functional
`
`advantages arise from these specific shapes.
`
` These functions were not
`
`contemplated by the prior art. Accordingly, because the shape of the concave
`
`props provides specific functional advantages, it is not an obvious matter of design
`
`choice. Thus, for at least these reasons, Ground 1 is defective and must be
`
`withdrawn.
`
`Ground 1 is also defective, even under the Board’s preliminary claims
`
`constructions, because Minneman’s structures lack other features of the claims.
`
`2
`
`

`
`Case IPR2013-00472
`
`For example, the claims require the PCBA be fixed by means of pressing of the
`
`plurality of concave props, yet the stand-offs of Minneman are described as studs,
`
`rivets, screws, and bolts, none of which retain the PCBA by pressing. In another
`
`example, the claims require that the housing have the plurality of concave props,
`
`yet these studs, rivets, screws, and bolts described in Minneman are all structures
`
`apart from the housing. Thus, because Minneman fails to disclose these other
`
`features of the claims, Ground 1 is defective and must be withdrawn.
`
`Finally, Ground 1 is also defective, even under the preliminary claim
`
`constructions, because it would not have been obvious to modify the structures of
`
`Minneman based on the teachings of Takahashi. Takahashi is not analogous art.
`
`Takahashi is neither from the same field of endeavor as the claimed invention, i.e.,
`
`USB memory plugs, nor is it reasonably pertinent to the problems faced in
`
`providing space in the tight confines of a USB memory plug. As Takahashi is not
`
`analogous art, one of ordinary skill would not have looked to Takahashi for
`
`inspiration. Thus, for at least these reasons, Ground 1 is defective and must be
`
`withdrawn.
`
`Grounds 2 and 3 are defective, even if the preliminary construction is
`
`interpreted as proposed by the Board, because it would not be obvious from Elbaz
`
`and Deng or Elbaz, Deng and AAPA to fix a PCBA in housing using concave
`
`props. The structures asserted in Elbaz as being concave props do not fasten
`
`3
`
`

`
`Case IPR2013-00472
`
`Elbaz’s module securely in position, as required by the claims, but leave it loose
`
`and unsecured. Instead, Elbaz teaches that its module is held by a “means for
`
`locking.” Elbaz does not disclose that the constraint provided by its structures
`
`holds Elbaz’s module tightly, even in the direction of constraint. Therefore, even
`
`if “fixed” is interpreted as unsecured in some directions, Elbaz’s module cannot be
`
`characterized as fixed. Moreover, many of the claims also require the PCBA be
`
`fixed by pressing of the concave props. As Elbaz is silent on whether and how
`
`tightly its structures contact its module, Elbaz cannot be read as teaching a PCBA
`
`be fixed by pressing of concave props. Even still, Elbaz teaches its module is
`
`removable, and teaches away from holding the module tightly. Therefore, it would
`
`not be obvious from Deng to fasten Elbaz’s module more securely in position, and
`
`Grounds 2 and 3 must be withdrawn.
`
`Grounds 2 and 3 are also defective, even under
`
`the preliminary
`
`constructions, because Elbaz teaches away from a combination including the
`
`claimed PCBA. Elbaz advocates using an integrated circuit card such as a SIM
`
`card, and distinguishes PCBA based on cost and durability. Therefore, one of
`
`ordinary skill in the art would have been motivated away from using a PCBA, as
`
`proposed in Grounds 2 and 3. For these additional reasons, Grounds 2 and 3 must
`
`be withdrawn.
`
`4
`
`

`
`Case IPR2013-00472
`
`Ground 2 is defective, even under the preliminary constructions, because the
`
`combination of Elbaz and Deng does not teach an LED indicator in the housing, as
`
`required by the claims. Elbaz does not have an LED. Deng, relied on for the LED,
`
`teaches providing the LED outside of the housing in a second body. Therefore, the
`
`combination of Elbaz and Deng do not teach the claimed LED in the housing.
`
`Additionally, Elbaz teaches away from including an LED in its housing, due to
`
`high part count and cost. Therefore, for these additional reasons, Ground 2 must
`
`be withdrawn.
`
`Accordingly, for at least the reasons described herein, Patent Owner submits
`
`that all grounds of rejection in the Present IPR are defective, and the Board must
`
`withdraw the grounds of rejection and confirm the patentability of the Challenged
`
`Claims of the ‘879 Patent.
`
`II.
`
`STATEMENT OF RELIEF REQUESTED
`
`Patent Owner respectfully requests that the Board withdraw the instituted
`
`grounds of rejection of the Challenged Claims of the ‘879 Patent (Grounds 1 to 3)
`
`for at least the reasons discussed herein. Patent Owner further requests that the
`
`Board confirm patentability of the Challenged Claims of the ‘879 Patent.
`
`III. BACKGROUND OF THE ‘879 PATENT
`The ‘879 Patent describes a low cost, simple to manufacture manner of
`
`making space for additional components in a universal serial bus (USB) memory
`
`5
`
`

`
`Case IPR2013-00472
`
`device. The described USB memory device is of a type having a housing
`
`enclosing a printed circuit board assembly (PCBA). Ex. 1001 (‘879 Patent),
`
`Abstract. The housing includes a plurality of concave props formed by punching
`
`or pressing on the housing. Id. at 2:55-57, 4:28-32; See Fig. 6 ref. 512. The
`
`concave props are operable to fix the PCBA in place and to supplant the flake
`
`spacer to form a space between the PCBA and the housing. Id. at 2:50-52, 5:40-
`
`45. The space resulting from removal of the flake spacer enables additional
`
`components to be included within the USB housing. Id. at 2:6-9, 4:-53-56, 5:35-
`
`39.
`
`An example of the concave props are illustrated in Figure 6 of the ‘879
`
`Patent, reproduced below and annotated. In this figure, the concave props are item
`
`512.
`
`6
`
`

`
`Orientated indentation
`
`Concave prop
`
`Case IPR2013-00472
`
`
`Recess
`
`
`
`Ex. 1001 (‘879 Patent), Figure 6 (annotated, Ex. 2008 (Expert Declaration),
`
`¶ 21)
`
`The ‘879 Patent states that the use of “concave props” 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 512 each form a recess on the exterior of the housing.
`
`This recess can function as an orientated indentation. The recess is labeled above,
`
`and the orientated indentations are item 511. The orientated indentations are
`
`provided to engage metal springs on the USB socket to secure the USB plug in the
`
`socket. Id. at 4:35-39. By forming the props to be concave (i.e., recessed), some
`
`7
`
`

`
`of
`
`the orientated
`
`indentations are
`
`formed simultaneously
`
`Case IPR2013-00472
`
`the same
`
`in
`
`manufacturing step with forming the concave props. This reduces the number of
`
`manufacturing steps to produce the USB plug and saves on manufacturing cost. Id.
`
`Moreover, the curved shapes of the concave pops are simple and cheap to form by
`
`punching on the housing, and have other advantages.
`
`IV. CLAIM CONSTRUCTION
`The preliminary claim constructions for the terms “concave” and “prop” are
`
`overly inclusive, and thus not indicative of the broadest reasonable interpretation
`
`of these terms. Specifically, a person of ordinary skill in the art would have
`
`understood the concave shape must “form a recess,” and thus the broadest
`
`reasonable interpretation of the term “concave” must reflect this understanding.
`
`Further, one of ordinary skill in the art would have understood that a prop must
`
`“support one thing apart from another,” and thus the broadest reasonable
`
`interpretation of the term “prop” must reflect this understanding. Finally, “fixed”
`
`is correctly construed to mean “fastened securely in position,” but then interpreted
`
`in a manner inconsistent with the understanding of a skilled artisan. The net effect
`
`of this was to make the construction of fixed broader than the understanding of a
`
`skilled artisan, and thus improper under the broadest reasonable interpretation
`
`standard.
`
`8
`
`

`
`Case IPR2013-00472
`
`
`A. Concave must include “forming a recess”
`“Concave” is preliminarily construed to mean “curving inwards from a
`
`housing.” See Institution Decision, Paper 10, IPR2013-00472, p. 8 (hereinafter the
`
`“First Institution Decision”); Institution Decision, Paper 8, IPR2014-00150, p. 7
`
`(hereinafter the “Second Institution Decision”). Although Patent Owner agrees
`
`that a proper construction of “concave” must include at least “curving inwards,”
`
`the adopted construction is imprecise. It fails to comport with the ordinary
`
`meaning of the term “concave,” which also requires “forming a recess” in addition
`
`to curving inwards. A construction of “concave” that does not require forming a
`
`recess wrongly encompasses structures not concave in any sense of the word. Ex.
`
`2008 (Expert Declaration), ¶ 24. The Board agrees, but asserts that the ‘879 Patent
`
`redefines “concave,” because, according to the Board, the patentee acted as its own
`
`lexicographer. See Decision on Request for Rehearing, Paper 16, IPR2013-00472,
`
`p. 52 (hereinafter “Decision on Request for Rehearing”). The ‘879 Patent,
`
`
`
` 2
`
` The Board stated “While Phison is correct that ‘Takahashi’s protrusions are not
`
`concave in any sense of the word’ and that ‘Takahashi’s protrusions are convex,’
`
`(Req. 5), that does not mean that Takahashi cannot suggest a particular shape. In
`
`
`
`9
`
`

`
`Case IPR2013-00472
`
`however, does not create a special and unique definition of “concave,” let alone
`
`one that is directly in conflict with the ordinary understanding of those of skill in
`
`the art. Moreover, the “patentee as a lexicographer” doctrine has exacting
`
`requirements which are not present in the specification of the ‘879 Patent. The
`
`Board, therefore, erred in invoking this doctrine to construe the term “concave.”
`
`1.
`
`The ’879 Patent does not redefine the term “concave”
`
`It is well established that claim terms are “presumed to take on the ordinary
`
`and customary meanings attributed to them by those of ordinary skill in the art.”
`
`Brookhill-Wilk 1, LLC, v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir.
`
`2003). “We depart from the plain and ordinary meaning of claim terms in only
`
`two instances: lexicography and disavowal. . . .The standards for finding
`
`lexicography and disavowal are exacting.” Hill-Rom Services, Inc. v. Stryker
`
`Corp., 2014 U.S. App. LEXIS 12105, *5 (Fed. Cir. 2014). “To act as its own
`
`lexicographer, a patentee must clearly set forth a definition of the disputed claim
`
`term other than its plain and ordinary meaning and must clearly express an intent
`
`to redefine the term.” Id. Disavowal requires that the specification or prosecution
`
`
`
`addition, per the adopted claim construction, the limitation may be met by the
`
`shape of the element, and not the presence of a recess.”
`
`10
`
`

`
`Case IPR2013-00472
`
`history make clear that the invention does not include a particular feature. Id. at *6.
`
`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
`
`meaning of particular claim terms away from their ordinary meaning, he must
`
`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
`
`assigned to a term “must be sufficiently clear in the specification that any departure
`
`from common usage would be so understood by a person of experience in the field
`
`of the invention.”).
`
`The ’879 specification does not express any intent to redefine the term
`
`“concave,” and thus the term must be interpreted according to its plain and
`
`ordinary meaning (i.e. “curving inward to form a recess”).
`
`Neither the Petitioner nor the Board identify any explicit definition of
`
`“concave” within the ’879 Patent. No instances of the ‘879 Patent distinguishing
`
`its concave shape from other shapes commonly recognized as concave have been
`
`identified, nor does the ‘879 Patent or its prosecution history include such.
`
`Further, the ‘879 Patent includes no implication that “concave” was intended to
`
`encompass structures not concave in any sense of the word, while in contrast, the
`
`Board’s preliminary construction does improperly encompass such structures.
`
`11
`
`

`
`Case IPR2013-00472
`
`Rather, all instances of the concave props shown and described in the ‘879
`
`Patent are concave in accordance with the ordinary meaning of the word. Ex. 2008
`
`(Expert Declaration), ¶ 24. For example, the ‘879 Patent’s preferred manner of
`
`forming the concave props, i.e., “punching on the housing,” can produce a concave
`
`shape curving inward to form a recess.3 See Ex. 1001 at 3:15-16. The ‘879 Patent
`
`also describes advantages to the recess of a concave shape. For example, in some
`
`instances, the concave props and orientated indentations can be “formed
`
`simultaneously” in the same manufacturing process and, thus, coincide. See id. at
`
`4:28-32. As seen in Figures 5, 6, and 8, when the concave props and orientated
`
`indentations are formed simultaneously and coincide, the recess of the concave
`
`prop defines the orientated indentation. Finally, the ‘879 Patent always shows the
`
`concave props as being concave. The cross-sectional view of Figure 6 of the ‘879
`
`Patent is reproduced below, showing the concave surface and the resulting recess
`
`of the concave props 512. Figures 5, 8 and 9 also accord.
`
`
`
` 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.
`
`12
`
`

`
`Case IPR2013-00472
`
`
`Recess
`
`Concave prop
`
`
`
`Ex. 1001, Figure 6 (annotated, Ex. 2008 (Expert Declaration), ¶ 21).
`
`There are no contrary examples or description of the concave props in the
`
`figures or specification of the ‘879 Patent – in all instances that the concave props
`
`are illustrated and described as having a recess that is an essential characteristics of
`
`the prop being “concave.”
`
`13
`
`

`
`Case IPR2013-00472
`
`
`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
`
`structure, the patentee would have not chosen to call the props “concave” props.
`
`The patentee could have just called them “props,” or “curved props.” Instead,
`
`however, the patentee chose to call the props “concave props” to claim both their
`
`concave nature and their propping function. Ex. 2008 (Expert Declaration), ¶ 20.
`
`The Second Institution Decision justifies deviating from the ordinary
`
`meaning of “concave” by arguing that a recess “cannot act as a prop. The portion
`
`that acts as a prop is the portion that extends inwardly from the housing.” See
`
`Second Institution Decision, p. 7. While it is true that a “portion” of the claimed
`
`“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
`
`plain language of the claim term mandates, the claimed structure must also be as
`
`the term plainly says – “concave.” By focusing exclusively on the “prop” aspect,
`
`the preliminary construction has wrongly read the word concave out of the term
`
`“concave prop.”
`
`The fundamental problem with the preliminary construction is manifest in
`
`the acknowledgement by the Board that the preliminary construction is so broad as
`
`to encompass structures that “are not concave in any sense of the word.” Decision
`
`14
`
`

`
`Case IPR2013-00472
`
`on Request for Rehearing, p. 4. The reason why the Board must now wrestle with
`
`a preliminary construction that covers non-concave structures is that, by
`
`eliminating the requirement of a recess, the preliminary construction has read the
`
`word “concave” out of the claim term “concave prop.” Thus, the acknowledgement
`
`that the preliminary construction covers non-concave structures should it self be a
`
`red flag that there is a fundamental problem in any construction that fails to give
`
`full meaning to both words “concave” and “prop.” All terms in a claim must be
`
`given meaning. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1378
`
`(Fed. Cir. 2009); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372
`
`(Fed. Cir. 2005); Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed.
`
`Cir. 2008).
`
`Instead of addressing this red flag problem, the preliminary construction
`
`attempts to rescue the construction by arguing that the patentee acted as its own
`
`lexicographer and somehow redefined “concave” to encompass non-concave
`
`structures. But nothing in the specification supports this argument. Simply stated,
`
`the ‘879 Patent always shows and describes the concave props in a manner
`
`comporting with the ordinary meaning of the term, and discusses advantages
`
`stemming from this shape. Nothing cited in the Second Institution Decision
`
`supports an express redefinition of the term “concave” in the specification, and the
`
`Second Institution Decision fails to wrestle with the high threshold set by the
`
`15
`
`

`
`Case IPR2013-00472
`
`Federal Circuit before the patentee is determined as having acted as its own
`
`lexicographer has not been met. See Hill-Rom Services at *5; Brookhill-Wilk at
`
`1298; Multiform at 1477.
`
`The term “concave prop” must be construed to encompass the plain and
`
`ordinary meaning of concave; namely, “curving inward to form a recess.”
`
`3.
`A skilled artisan would understand the plain and ordinary
`meaning of “concave” to be “curving inward to form a recess”
`
`One of skill in the art at the time of the ’879 patent would have understood
`
`that a concave shape must not only curve inward, as the concave props curve
`
`inward from the USB housing, but must “form a recess” relative to the surrounding
`
`housing. Ex. 2008 (Expert Declaration), ¶ 22. Such a definition properly excludes
`
`shapes not concave in any sense of the word.
`
`First, “concave” was generally accepted to mean “curving inwards to form a
`
`recess” at the time of the ‘879 Patent. For example, although the definition cited in
`
`the Patent Owner’s First Preliminary Response defined “concave” only as “curving
`
`inwards,” as Patent Owner noted, that definition is imprecise. See Ex. 2003
`
`(Collins English Dictionary), p. 3. Consider, additionally, the Webster’s
`
`Dictionary from 1991 that defines “concave” as “hollow and curved like the inside
`
`half of a hollow ball.” See Ex. 2010 (Webster’s), p. 287 (emphasis added). This
`
`16
`
`

`
`Case IPR2013-00472
`
`definition makes clear that concave shapes necessarily form a recess. Ex. 2008
`
`(Expert Declaration), ¶ 25.
`
`In yet another example, the Machinery’s Handbook from 2000, a handbook
`
`for metal working such as manufacturing metal USB housings, provides an
`
`illustration of the meaning of concave. Patent Owner included this illustration in
`
`its initial response, but the Board misunderstood its significance in its First
`
`Institution Decision, expressing confusion over how this illustration could show a
`
`“concave prop.” The purpose of including the Machinery’s Handbook was to
`
`show the generally accepted meaning of “concave” in the field, not the “concave
`
`prop.” Indeed, it is impossible to construe the meaning of “concave prop” without
`
`having a correct interpretation of “concave” first. A “concave prop” that is
`
`contrary to the generally accepted meaning of “concave” cannot be a correct
`
`construction. All terms in a claim must be given meaning. See Agilent, 567 F.3d at
`
`1378 (“A ‘closed chamber . . . adapted to retain a quantity of fluid’ must mean
`
`something different than just a ‘chamber . . . adapted to retain a quantity of fluid.’
`
`Otherwise, the word ‘closed’ becomes superfluous.”); Merck, 395 F.3d at 1372 (“A
`
`claim construction that gives meaning to all the terms of the claim is preferred over
`
`one that does not do so.”); Mangosoft, 525 F.3d at 1330-31 (rejecting claim
`
`construction that “ascribes no meaning to the term . . . not already implicit in the
`
`rest of the claim.”).
`
`17
`
`

`
`Case IPR2013-00472
`
`
`Surface
`
`Recess
`relative to
`the surface
`
`
`
`Ex. 2004 (Machinery’s Handbook), p. 71 (annotated).
`
`
`
`As shown in the annotated figure above, the concave feature curves inward
`
`into the surface and necessarily forms a recess – illustrating the generally accepted
`
`meaning of “concave” – which must form the basis for any construction of
`
`“concave prop.”
`
`Accordingly, the multiple references presented above clearly indicate that
`
`the ordinary meaning of “concave” was “curving inwards to form a recess” at the
`
`time of the ‘879 Patent. Such a meaning is consistent with the understanding of
`
`those of ordinary skill in the art at the time of the ‘879 Patent. Ex. 2008 (Expert
`
`Declaration), ¶ 25. The props are concave, because they form a concave shape on
`
`the exterior surface of the housing. The prop and its recessed, curved concave
`
`surface is depicted diagrammatically below.
`
`18
`
`

`
`
`
`USB housing
`
`Case IPR2013-00472
`
`
`Concave prop
`
`
`
`Recess
`
`
`
`Ex. 2008 (Expert Declaration), ¶ 23
`
`A person of ordinary skill in the art at the time of the ‘879 Patent would
`
`have understood that the term “concave” refers to this recessed, curved shape
`
`formed on the exterior of the housing by the concave props. Ex. 2008 (Expert
`
`Declaration), ¶ 22.
`
`Thus, a proper construction of concave must include at least “curving inward
`
`to form a recess,” because (i) such a definition was generally accepted in the art at
`
`the time of the ‘879 Patent, which provides no alternate definition, and (ii) any
`
`definition not so limited would be so broad as to include structures “not concave in
`
`any sen