IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 062446—O 1994
`
`In re Inter Partes Review of:
`U.S. Patent No. 7,518,879
`
`Patent Issued: April 14, 2009
`
`Named Inventors: Chung et al.
`
`that
`
`this
`certify
`hereby
`I
`2
`being
`is
`correspondence
`:
`electronically filed per 37 CFR
`:
`§ 42.6(b)(1) with the U.S. Patent and
`:
`: Trademark Office via PRPS on
`:
`‘:1 lag [,3 Q1;
`.
`
`Patentee: Phison Electronics Corp.
`
`:
`
`Typed or printed name of person
`signing this certificate
`
`Janelle Fava
`
`: n ure
`pn
`:
`
`
`
`App. No.: 11/384,371
`
`App. Filed: March 21, 2006
`
`Title: UNIVERSAL SERIAL BUS
`
`(USB) MEMORY PLUG
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,518,879
`
`MEI 16059540V.l
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`List of Exhibits ............................................................................. ..iv
`
`1.
`
`II.
`
`Introduction .................................................................................................... .. 1
`
`Real Party in Interest...................................................................................... ..1
`
`III.
`
`Related Proceedings ....................................................................................... ..l
`
`IV. Grounds for Standing and Eligibility............................................................. ..1
`
`V.
`
`Lead and Back-up Counsel ............................................................................ ..2
`
`VI.
`
`Service Information ....................................................................................... ..2
`
`VII. Fee Information .............................................................................................. ..2
`
`VIII. Specific Identification of Challenges ............................................................. ..3
`
`IX. . Overview of the Chung ‘879 Patent .............................................................. ..4
`
`X.
`
`Claim Construction ........................................................................................ ..5
`
`XI.
`
`The Patent Claims are Invalid Under 35 U.S.C. §§ 102-103 ....................... ..6
`
`A.
`
`B.
`
`C.
`
`D.
`
`Claims 1-4, 8-12, and 16 ofthe Chung ‘879 Patent
`are unpatentable as anticipated under 35 U.S.C. § l02(e)
`over Minneman et al. ........................................................................... ..6
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent
`are unpatentable as obvious under 35 U.S.C. § 103
`over Minneman et al. in view of Takahashi et al. ............................ .. 14
`
`Claims 1-4 and 8 of the Chung ‘879 Patent
`are unpatentable as obvious under 35 U.S.C. § 103
`over Minneman et al. in view of AAPA ........................................... .. 23
`
`Claims 9, 11, 12, and 16 ofthe Chung ‘879 Patent
`are unpatentable as anticipated under 35 U.S.C. §§ 102(a)
`and l02(e) over Wang et al. ............................................................. .. 28
`
`ME1 16059540v.1
`
`

`
`E.
`
`F.
`
`G.
`
`Claims 1-4, 8, and 10 of the Chung ‘879 Patent
`are unpatentable as obvious under 35 U.S.C. § 103
`over Wang et al. in view of AAPA .................................................. .. 31
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent
`are unpatentable as obvious under 35 U.S.C. § 103
`over Ni et al. ..................................................................................... .. 37
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent
`are unpatentable as obvious under 35 U.S.C. § 103
`over Ni et al. in view of Takahashi et al ........................................... .. 44
`
`XII. Conclusion ............................................................................ ., .................... .. 52
`
`X111. Certificate of Service ............................................................................ ..Cert. 1
`
`ME1 16059540v.1
`
`iii
`
`

`
`LIST OF EXHIBITS
`
`PNY Exhibit 1001:
`
`U.S. Patent No. 7,518,879 to Chung et a1., issued
`April 14, 2009
`
`PNY Exhibit 1002:
`
`Power of Attorney
`
`PNY Exhibit 1003:
`
`U.S. Patent No. 7,352,601 to Minneman et a1., issued
`on April 1, 2008
`A
`
`PNY Exhibit 1004:
`
`U.S. Patent Publication No. 2006/0002096 to Wang et
`e_1L, published on January 5, 2006
`
`PNY Exhibit 1005:
`
`U.S. Patent No. 7,074,052 to Ni et al., issued on July
`
`11, 2006
`
`PNY Exhibit 1006:
`
`U.S. Patent Publication No. 2004/0027809 to
`Takahashi et a1., published on February 12, 2004
`
`ME1 16059540v.1
`
`

`
`I.
`
`Introduction
`
`PNY Technologies, Inc.
`
`(“PNY”) respectfully petitions for inter partes
`
`review of Claims 1-4, 8-12, and 16 of United States Patent No. 7,518,879, which
`
`issued April 14, 2009, to Chung et al., (the “Chung ‘879 Patent”). A copy of the
`
`Chung ‘879 Patent is attached hereto and made a part hereof as PNY Exhibit 1001.
`
`II.
`
`Real Party in Interest
`
`The real party in interest is PNY Technologies, Inc.
`
`III.
`
`Related Proceedings
`
`A patent infringement lawsuit involving the Chung ‘879 Patent is presently
`
`pending in the United States District Court for the District of Delaware, and is
`
`captioned Phison Electronics Corp.
`
`V. PNY Technologies
`
`Inc., Case No.
`
`1:12-—cv-Ol478—GMS (hereinafter the “Patent Lawsuit”). The Patent Lawsuit was
`
`filed on November
`
`15, 2012, wherein Phison Electronics Corp.
`
`alleged
`
`infringement of the Chung ‘879 Patent and U.S. Patent No. 8,176,267.
`
`IV. Grounds for Standing and Eligibilig
`
`PNY certifies that the Chung ‘879 Patent is eligible for inter partes review,
`
`and that PNY is not barred or estopped from requesting an inter partes review
`
`challenging the patent claims on the grounds identified herein.
`
`PNY further
`
`certifies that it has not filed a civil action challenging the validity of any claim of
`
`the Chung ‘879 Patent. PNY certifies that this inter partes review petition is not
`
`being filed more than one year after being served with a complaint alleging
`
`ME1 16059540v.1
`
`l
`
`

`
`infringement of the Chung ‘879 Patent. PNY certifies that estoppel does not
`
`prohibit this review.
`
`V.
`
`Lead and Back-up Counsel
`
`PNY notes that the lead counsel is designated as Mark E. Nikolsky (Reg.
`
`No. 48,319) and the back-up counsel is designated as Sanjiv M. Chokshi (Reg. No.
`
`44,480). A Power of Attorney (PNY Exhibit 1002) is attached.
`
`VI.
`
`Service Information
`
`Service information is provided as follows: Mark E. Nikolsky (McCarter &
`
`English, LLP, Four Gateway Center, 100 Mulberry St., Newark, NJ 07102; Phone:
`
`973.639.6987;
`
`Fax:
`
`973.297.6624;
`
`mnikolsky@mccarter.com
`
`and
`
`schokshi@mccarter.com).
`
`A
`
`PNY consents
`
`to
`
`electronic
`
`service
`
`to
`
`mnikolsky@mccarter.com, with a copy to schokshi@mccarter.com.
`
`VII.
`
`Fee Information
`
`The Commissioner is authorized to charge all fees due to Deposit Account
`
`No. 503571, including but not limited to $9,000 upon the filing of this petition and,
`
`if institution is ordered, an additional $14,000 upon institution.
`
`If any additional
`
`and/or other fees are due in connection with the submission of this Request, or if
`
`any credit is due, the Commissioner is hereby authorized to charge and/or credit
`
`them to Deposit Account No. 503571.
`
`ME1 16059540v.1
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`

`
`VIII. Specific Identification of Challenges
`
`PNY identifies the challenged claims, the grounds on which the challenge to
`
`each claim is based, and the evidence that supports each ground in Section XI,
`
`herein -— noting where each limitation of the claim is found in the prior art. PNY
`
`includes the appropriate construction for the_ challenged claims in Section X,
`
`herein.
`
`A.
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent are unpatentable as
`
`anticipated under 35 U.S.C. § l02(e) over Minneman et al.
`Exhibit 1003)
`0
`
`(PNY
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent are unpatentable as
`
`obvious under 35 U.S.C. § 103 over Minneman et al.
`
`in view of
`
`Takahashi et al. (PNY Exhibit 1006)
`
`Claims 1-4 and 8 of the Chung ‘879 Patent are unpatentable as
`
`obvious under 35 U.S.C. § 103 over Minneman et al.
`
`in View of
`
`AAPA.
`
`Claims 9, 11, 12, and 16 of the Chung ‘879 Patent are unpatentable as
`
`anticipated under 35 U.S.C. §§ 102(a) and l02(e) over Wang et al.
`
`(PNY Exhibit 1004)
`
`Claims 1-4, 8, and 10 of the Chung ‘879 Patent are unpatentable as
`
`obvious under 35 U.S.C. § 103 over Wang et al. in view of AAPA.
`
`ME1 16059540v.1
`
`

`
`F.
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent are unpatentable as
`
`obvious under 35 U.S.C. § 103 over Ni__e_t_aL (PNY Exhibit 1005)
`
`G.
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent are unpatentable as
`
`obvious under 35 U.S.C. § 103 over I_\I_i_et_2g in View of Takahashi et
`
`.2_t.1.-
`
`Minneman et al., Wang et al., and l\_l_i_et_a_l_. are prior art at least under 35
`
`U.S.C. § 102(a) and/or l02(e) because each has an effective filing date and/or
`
`publication date in the United States that precedes the filing date of the Chung ‘879
`
`Patent. Takahashi et al. is prior art under 35 U.S.C. § 102(b) because it published
`
`more than 1 year prior to the filing date of the Chung ‘879 Patent.
`
`IX. Overview of the Chung ‘879 Patent
`
`The Chung ‘879 Patent relates to a universal serial bus (USB) memory plug.
`
`The memory plug includes a housing with a plurality of orientated indentations and
`
`a plurality of concave props. See, e. g., 4:17-27. A print circuit board assembly is
`
`positioned in the housing.
`
`See id.
`
`The orientated indentations facilitate the
`
`memory plug to be connected when the memory plug is inserted into a female USB
`
`socket. See id.
`
`The print circuit board assembly is “fixed by means” of pressing
`
`of the concave props. See id.
`
`The disclosure of the Chung ’879 Patent admits that certain limitations
`
`recited in the asserted claims were well known at the time of the alleged invention.
`
`ME1 16059540v.1
`
`

`
`For example, the Chung ‘879 Patent admits that the orientated indentations were
`
`known prior to the filing date of the Chung ‘879 Patent. See, e.g., FIG. 1; 1:41-52.
`
`The Chung ‘879 Patent also admitted that it
`
`is known in the art for the USB
`
`connector to be configured to be plugged into a USB connector on a personal
`
`computer or other hosting device.
`
`_S_e§, gg, 1:32-40. Further, the Chung ‘879
`
`Patent admitted that it
`
`is known in the art to provide a printed circuit board
`
`assembly (PCBA) 12 disposed in the housing 11.
`
`§e_e_, gg_., FIG. 1; 1:41-52.
`
`These admissions are referred to herein as Applicant Admitted Prior Art (_AA_l_’_A_).
`
`.
`
`The only difference between the
`
`subject matter of the challenged
`
`independent claims and AABA appears to relate to the concave props. This slight
`
`difference is taught by the prior art, e.g., the use of “captivating indentations”
`
`disclosed in Minneman et al., as well as the disclosures of selected prior art
`
`references discussed herein.
`
`X.
`
`Claim Construction
`
`PNY respectfully requests that all of the claim terms be construed under a
`
`broadest reasonable interpretation standard in light of the specification of the
`
`patent. 37 C.F.R. § 42.100(b).
`
`To meet the broadest reasonable interpretation standard, the term “concave”
`
`should be construed herein to encompass a prop that extends inwardly from a
`
`housing. This is consistent with the Patentee’s use of the term in the Chung ‘879
`
`ME1 16059540v.1
`
`

`
`Patent.
`
`For example, with reference to FIG. 6 of the Chung ‘879 Patent
`
`reproduced below, the concave props 512 extend inwardly from the housing 51.
`
`511
`
`512
`
`
`
`Further, nothing in the file history of the Chung ‘879 Patent contradicts the
`
`foregoing construction.
`
`XI.
`
`The Patent Claims are Invalid Under 35 U.S.C. §§ 102-103
`
`PNY respectfully submits that Claims 1-4, 8-12, and 16 are unpatentable
`
`under 35 U.S.C. §§ 102 and 103 as specifically demonstrated in the following
`
`claim charts.
`
`A.
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent are unpatentable as
`anticipated under 35 U.S.C. § 102(e) over Minneman et al.
`
`Minneman et al. was filed on November 24, 2004, and claims priority to an
`
`earlier provisional application filed on November 24, 2003. These dates precede
`
`the filing date of the Chung ‘879 Patent. Minneman et al. anticipates Claims 1-4,
`
`8-12, and 16, as follows:
`
`ME1 16059540V.1
`
`

`
`Claim 1
`
`Minneman et al.
`
`F
`
`1. A Universal Serial Bus
`(USB) memory plug,
`comprising:
`
`Minneman et al. discloses a memory device for
`interconnection with a Universal Serial Bus
`(USB).
`_S_e_e_, ggm Title; Abstract; and 1:14-17.
`
`J
`
`a housing having a plurality —lMinneman et al. discloses a housing 25 having a
`of orientated indentations
`plurality of openings 28 (orientated indentations)
`and a plurality of concave
`and a plurality of stand—offs 45 (props).
`§_e_e_,
`props,
`gg, FIGS. 3, 4, and 6-8; 9:65—l0:6; and 10:48-
`6l. Minneman et al. discloses that the plurality
`of props 45 can be captivating indentations
`formed in the housing, which would be concave
`in nature. _S_ee, gg, 10:48-61.
`
`wherein said plurality of
`orientated indentation
`facilitates said USB memory
`plug to be connected while
`said USB memory plug is
`inserted into a female USB
`socket; and
`
`JT/Iinneman et al. discloses that the openings 28
`(indentations) are provided for retention
`purposes including locating and/or retaining the
`USB plug within a conventional USB connector
`port.
`_S_e_e_, e_.g_., 9:65—10:6. Minneman et al.
`discloses that the openings 28 can be orientated
`in specific locations to facilitate retention.
`_S_e_e,
`PnKn i_c_L
`
`a print circuit board
`assembly (PCBA) disposed
`in said housing,
`
`Minneman et al. discloses a sub—assemb1y 44 that
`includes a printed circuit board 40. The sub-
`assembly 44 and printed circuit board 40 are
`disposed in the housing 25. See, gg, FIGS. 3, 4,
`6, 7, and 8; 10:11-31; and 10:39-41.
`
`ME1 16059540v.1
`
`

`
`Claim 1
`
`Minneman et al.
`
`rwherein said PCBA is fixed
`by means of pressing of said
`plurality of concave props,
`
`l—Minneman et al. discloses that the sub—assembly
`44, including the printed circuit board 40, are
`secured in the housing by the props 45, which
`can be formed by pressing on, and causing a
`deformation in, the housing 25.
`_S;e_e, §_.g_., FIGS.
`3, 4, 6, 7, and 8; 10:48-61. Indeed, at 10:55-61,
`Minneman et al. explicitly discloses “captivating
`indentations” for retaining the sub—assembly 44
`(which includes the printed circuit board 40),
`e.g., by mechanical interference, by friction fit,
`and/or by press fit.
`
`1
`
`and a space is formed
`between said housing and
`said PCBA.
`
`Minneman et al. discloses that a space is formed
`between the housing 25 and the sub—assembly
`44, including the printed circuit board 40. _S_e§,
`§_.g_., FIGS. 3, 4, 6, 7, and 8.
`
`Claim 2
`
`_l
`
`2. The USB memory plug
`according to claim 1,
`wherein said housing is
`made from a metallic
`
`conductive material.
`
`Minneman et al.
`
`Minneman et al. discloses that the housing 25
`can be made ofa metal.
`_S_e_e, _e_g, 9:48-49.
`
`Claim 3
`
`Minneman et al.
`
`3. The USB memory plug
`according to claim 1,
`wherein said PCBA further
`
`comprises: a memory
`controller;
`
`Minneman et al. discloses that the sub—assembly
`44 includes a control system 24 that fiinctions as
`a memory controller 24m.
`_S_e_e, gg, FIG. 20;
`10:23-28; and 10:39-41.
`
`ME1 16059540v.1
`
`

`
`.1
`
`.1
`
`a storage memory in
`communication with said
`
`memory controller;
`
`Minneman et al. discloses a memory 23, e.g., a
`storage memory, in communication with the
`memory controller 24m. figg, gg, FIGS. 2c and
`3-10; 8:45-9:41; and 10:36-41.
`
`a USB interface circuit in
`
`communication with said
`
`memory controller; and
`
`Minneman et al. discloses a USB controller 240,
`e.g., a USB interface circuit, in communication
`with the memory controller 24m. gee, gg,,
`FIGS. 2c and 3-10; 1026-41.
`
`an integrated circuit package T_Minneman et al. discloses that the control 24,
`which is made up of the memory controller 24m,
`for accommodating said
`the memory 23, and the USB controller 24c, can
`memory controller, said
`be a single integrated circuit, chip or device.
`storage memory, and said
`gee, ;e_.g,, 10:23-28. Accordingly, Minneman et
`USB interface circuit
`al_. discloses that the control 24 is an integrated
`circuit package that accommodates the memory
`controller 24m, the memory 23, and the USB
`controller 24c. Minneman et al. discloses that
`the sub-assembly 44, which includes the control
`24, is located in the interior space 27 of the
`housing 25. §ge_, §_.g,, 10:41-43.
`
`together within physical
`dimensions of said USB
`
`memory plug.
`
`Claim 4
`
`Minneman et al.
`
`—l Minneman et al. discloses that the device can
`include “[c]ompact Flash type memories or the
`like,” and explicitly discloses that the data
`memory can be flash memory. §_e§, e,g,, 10:28-
`31; and 18:59-60.
`
`4. The USB memory plug
`according to claim 3,
`wherein said storage
`memory is one of a flash
`memory and an Electrically
`Erasable Programmable
`Read Only Memory
`(EEPROM).
`3
`
`ME1 16059540v.1
`
`

`
`Claim 8
`
`Minneman et al.
`
`8. The USB memory plug
`according to claim 1,
`wherein the plurality of
`concave props are used to
`support said PCBA so that a
`space is formed between said
`housing and said PCBA.
`
`Minneman et al. discloses that the sub—assembly
`44, including the printed circuit board 40, is
`supported in the housing by the props 45.
`_S_e;c_,
`e.g,, FIGS. 3, 4, 6, 7, and 8; 10:48-61.
`Minneman et al. discloses that a space is formed
`between the housing 25 and the sub—assembly
`44, including the printed circuit board 40, due to
`the props 45. _See, gg, FIGS. 3, 4, 6, 7, and 8.
`
`1.
`
`Claim 9
`
`Minneman et al.
`
`9. A USB memory plug,
`comprising:
`
`.—.l
`
`Minneman et al. discloses a memory device for
`interconnection with a Universal Serial Bus
`(USB).
`_S_e_e_, _gg,, Title; Abstract; and 1:14-17.
`
`—~|
`
`Fa print circuit board
`assembly (PCBA); and
`
`T-T‘ Minneman et al. discloses a sub—assembly 44 that 1
`includes a printed circuit board (PCB) 40. The
`sub—assembly 44 and printed circuit board 40 are
`disposed in the housing 25.
`_S_ee_, _e_.g,, FIGS. 3, 4,
`6, 7, and 8; 10:11-31; and 10:39-41.
`
`a housing having a plurality
`of concave props,
`
`w
`
`_L
`Minneman et al. discloses a housing 25 having a
`plurality of stand-offs 45 (props).
`_S_ge_:, _e_.g,,
`FIGS. 3, 4, 6, 7, and 8; 9:65-10:6; and 10:48-61.
`Minneman et al. discloses that the plurality of
`stand—offs 45 (props) can be captivating
`indentations formed in the housing, which would
`be concave in nature. _S_e§, ggn 10:48-61.
`
`ME1 16059540v.1
`
`10
`
`

`
`Claim 9
`
`Minneman et al.
`
`wherein said PCBA is
`
`disposed in said housing;
`
`said plurality of concave
`props protrude inward to fix
`said PCBA, and a space is
`formed between said housing
`and said PCBA.
`
`Minneman et al. discloses a sub—assembly 44 that
`includes a printed circuit board (PCB) 40. The
`sub-assembly 44 and printed circuit board 40 are
`disposed in the housing 25. See, gg, FIGS. 3, 4,
`6, 7, and 8; 10:11-31; and 10:39-41.
`
`Minneman et al. discloses that the sub-assembly
`44, including the printed circuit board 40, are
`secured in the housing by the stand-offs 45
`(props), which can be formed by pressing on,
`and causing a deformation in, the housing 25.
`See, gg, FIGS. 3, 4, 6, 7, and 8; 10:48-61.
`Indeed, at 10:55-61, Minneman et al. explicitly
`discloses “captivating indentations” (which
`would necessarily protrude inward) for retaining
`the sub—assembly 44 (which includes the printed
`circuit board 40), e.g., by mechanical
`interference, by friction fit, and/or by press fit.
`Minneman et al. discloses that a space is formed
`between the housing 25 and the sub—assembly
`44, including the printed circuit board 40.
`§_e_e_,
`gg, FIGS. 3, 4, 6, 7, and 8.
`
`Claim 10
`
`Minneman et al.
`
`10. The USB memory plug
`according to claim 9,
`wherein said housing is
`made from a metallic
`
`conductive material.
`
`Minneman et al. discloses that the housing 25
`can be made of a metal.
`_S_e_e_, ggm 9:48-49.
`
`ME1 16059540v.1
`
`ll
`
`

`
`Claim 11
`
`Minneman et al.
`
`H 1. The USB memory plug
`according to claim 9,
`wherein said PCBA further
`
`comprises: a memory
`controller;
`
`a storage memory in
`communication with said
`
`memory controller;
`
`Minneman et al. discloses that the sub—assembly
`44 includes a control system 24 that functions as
`a memory controller 24m.
`_S_e_e, _e,g,, FIG. 2c;
`10:23-28; and 10:39-41.
`
`Minneman et al. discloses a memory 23, e.g., a
`storage memory, in communication with the
`memory controller 24m. §e_§, §_.g,, FIG. 2c and
`3-10; 8:45-9:41; and 10:36-41.
`
`a USB interface circuit in
`
`communication with said
`
`memory controller; and
`
`Minneman et al. discloses a USB controller 24c,
`e.g., a USB interface circuit, in communication
`with the memory controller 24m.
`_S_§e_, _e_.g, FIG.
`2c and 3-10; 10:6-41.
`
`-1
`
`an integrated circuit package
`for accommodating said
`memory controller, said
`storage memory, and said
`USB interface circuit
`
`together within physical
`dimensions of said USB
`
`memory plug.
`
`Minneman et al. discloses that the control 24,
`which is made up of the memory controller 24m,
`the memory 23, and the USB controller 24c, can
`be a single integrated circuit, chip or device.
`_S_e_e_:, ggw 10:23-28. Accordingly, Minneman et
`a_l_. discloses that the control 24 is an integrated
`circuit package that accommodates the memory
`controller 24m, the memory 23, and the USB
`controller 24c. Minneman et al. discloses that
`the sub—assembly 44, which includes the control
`24, is located in the interior space 27 of the
`housing 25.
`_S_e_e_, gg, 10:41-43.
`
`ME1 16059540v.1
`
`l2
`
`

`
`Claim 12
`
`Minneman et al.
`
`12. The USB memory plug
`according to claim 11,
`wherein said storage
`memory is one ofa flash
`memory and an Electrically
`Erasable Programmable
`Read Only Memory
`(EEPROM).
`
`Minneman et al. discloses that the device can
`include “[c]ompact Flash type memories or the
`like,” and explicitly discloses that the data
`memory can be flash memory. §§e, e_.g,, 10:28-
`31; and 18:59-60.
`
`
`
`Claim 16
`
`4
`
`Minneman et al.
`
`J
`
`16. The USB memory plug
`according to claim 9,
`wherein the plurality of
`concave props are used to
`support said PCBA so that
`said PCBA is not in direct
`
`Contact with said housing,
`
`and a space is formed
`between said housing and
`said PCBA.
`
`Minneman et al. discloses that the sub-assembly
`44, including the printed circuit board 40, are
`supported in the housing by the stand—offs 45
`(props) so that the sub-assembly 44 is not in
`direct Contact with the housing, such that a space
`is formed between the housing 25 and the sub-
`assembly 44. _S_e§, gg,, FIGS. 3, 4, 6, 7, and 8;
`10:48-61. As can be seen, the printed circuit
`board 40 does not contact the housing 25.
`
`Minneman et al. discloses that the sub-assembly
`44, including the printed circuit board 40, are
`supported in the housing by the stand-offs 45
`(props) so that the sub-assembly 44 is not in
`direct contact with the housing, such that a space
`is formed between the housing 25 and the sub-
`assembly 44. fieg, eg, FIGS. 3, 4, 6, 7, and 8;
`10:48-61.
`
`ME1 16059540V.1
`
`13
`
`

`
`B.
`
`Claims 1-4, 8-12, and 16 of the Chung ‘879 Patent are unpatentable as
`obvious under 35 U.S.C. § 103 over Minneman et al.
`in View of
`Takahashi et al.
`
`Takahashi et al.
`
`teaches a base card 11 (housing) having a plurality of
`
`protrusions 32.
`
`fififi, gg, FIGS. 20A and 20B; M 0159-0162. As shown in FIG.
`
`20A, the protrusions 32 are curved in shape, and extend inwardly into the housing.
`
`Takahasi et al. is prior art under 35 U.S.C. § l02(b) because it published more than
`
`l year prior to the filing date of the Chung ‘879 Patent.
`
`PNY submits that it would have been obvious to a person of ordinary skill in
`
`the art to modify the shape of the stand-offs 45 in Minneman et al. so that they
`
`would be curved (concave), as taught by Takahashi et al. The concave shape is a
`
`matter of choice which a person of ordinary skill in the art would have found to be
`
`obvious. Claim charts applying the combination of these two references are
`
`provided below.
`
`Claim 1
`
`Minneman et al. [Block Type]
`in view of Takahashi et al. [Italics Type]
`
`1. A Universal Serial Bus
`(USB) memory plug,
`comprising:
`
`Minneman et al. discloses a memory device for
`interconnection with a Universal Serial Bus
`(USB).
`§_e_e_, gg, Title; Abstract; and 1:14-,l7.
`
`ME1 16059540v.1
`
`14
`
`

`
`. Claim 1
`
`Minneman et al. [Block Type]
`in View of Takahashi et al. [Italics Type]
`
`_L
`
`a housing having a plurality Minneman et al. discloses a housing 25 having a j
`of orientated indentations
`plurality of openings 28 (orientated indentations)
`and a plurality of concave
`and a plurality of stand—offs 45 (props).
`_S__e_e_,
`pr0pS,
`§,g,, FIGS. 3, 4, 6, 7, and 8; 9:65-10:6; and
`10:48-61. Minneman et al. discloses that the
`plurality of props 45 can be captivating
`indentations formed in the housing, which would
`be concave in nature.
`_S_e__e_, ggg 10:48-61.
`
`Takahashi et al. discloses a base card I 1
`(housing) having a plurality ofprotrusions 32
`that are curved in shape (concave props).
`_§:e_e_,
`e_.g,, FIGS. 20A and 20B; 1H] 0159-0162. The
`protrusions 32 support a package I which
`includes a wiring (circuit) board 3.
`t_S:e_e, e_.g,
`FIG. 20B.
`
`wherein said plurality of
`orientated indentation
`facilitates said USB memory
`plug to be connected while
`said USB memory plug is
`inserted into a female USB
`socket; and
`
`Minneman et al. discloses that the openings 28
`(indentations) are provided for retention
`purposes including locating and/or retaining the
`USB plug within a conventional USB connector
`port.
`_S_.;c;c_, e,g_., 9:65-10:6. Minneman et al.
`discloses that the openings 28 can be orientated
`in specific locations to facilitate retention.
`_S_e_e,
`Pyn 191..
`
`a print circuit board
`assembly (PCBA) disposed
`in said housing,
`
`Minneman et al. discloses a sub—assemb1y 44 that
`includes a printed circuit board 40. The sub-
`assembly 44 and printed circuit board 40 are
`disposed in the housing 25. §_e§, e_.g,, FIGS. 3, 4,
`6, 7, and 8; 10:11-31; and 10:39-41.
`
`ME1 16059540v.1
`
`15
`
`

`
`Claim 1
`
`Minneman et al. [Block Type]
`in View of Takahashi et al. [Italics Type]
`
`wherein said PCBA is fixed _l_Minneman et al. discloses that the sub—assembly
`44, including the printed circuit board 40, are
`by means of pressing of said
`secured in the housing by the props 45, which
`plurality of concave props,
`can be formed by pressing on, and causing a
`deformation in, the housing 25. _S_e§, _e_.g,, FIGS.
`3, 4, 6, 7, and 8; 10:48-61. Indeed, at 10:55-61,
`Minneman et al. explicitly discloses “captivating
`indentations” for retaining the sub—assembly 44
`(which includes the printed circuit board 40),
`e.g., by mechanical interference, by friction fit,
`and/or by press fit.
`
`and a space is formed
`between said housing and
`said PCBA.
`
`Minneman et al. discloses that a space is formed
`between the housing 25 and the sub—assembly
`44, including the printed circuit board 40.
`_S_§_e_,
`_e_g, FIGS. 3, 4, 6, 7, and 8.
`
`Claim 2
`
`W
`
`_L
`
`Minneman et al. [Block Type]
`in view of Takahashi et al. [Italics Type]
`
`2. The USB memory plug
`according to claim 1,
`wherein said housing is
`made from a metallic
`
`conductive material.
`
`Minneman et al. discloses that the housing 25
`can be made ofa metal. _S_e§, egg” 9:48-49.
`
`ME1 16059540v.1
`
`16
`
`

`
`Claim 3
`
`Minneman et al. [Block Type]
`in View of Takahashi et al. [Italics Type]
`
`3. The USB memory plug
`according to claim 1,
`wherein said PCBA further
`
`comprises: a memory
`controller;
`
`a storage memory in
`communication with said
`
`memory controller;
`
`F‘
`
`a USB interface circuit in
`
`communication with said
`
`memory controller; and
`
`an integrated circuit package
`for accommodating said
`memory controller, said
`storage memory, and said
`USB interface circuit
`
`together within physical
`dimensions of said USB
`
`memory plug.
`
`.1.
`Minneman et al. discloses that the sub-assembly
`44 includes a control system 24 that functions as
`a memory controller 24m. §§_e_, _e_.g,, FIG. 2c;
`10:23-28; and 10:39-41.
`
`—l Minneman et al. discloses a memory 23, e.g., a
`storage memory, in communication with the
`memory controller 24m. See, ggn FIG. 2c and
`3-10; 8:45-9:41; and 10:36-41.
`
`Minneman et al. discloses a USB controller 24c,
`e.g., a USB interface circuit, in communication
`with the memory controller 24m.
`§_e_e_, e_.g,, FIG.
`2c and 3-10; 10:6-41.
`
`-————-I
`
`Minneman et al. discloses that the control 24,
`which is made up of the memory controller 24m,
`the memory 23, and the USB controller 24c, can
`be a single integrated circuit, chip or device.
`_S__e§, ggn 10:23-28. Accordingly, Minneman et
`al_. discloses that the control 24 is an integrated
`circuit package that accommodates the memory
`controller 24m, the memory 23, and the USB
`controller 24c. Minneman et al. discloses that
`the sub-assembly 44, which includes the control
`24, is located in the interior space 27 of the
`housing 25. fieg, ggm 10:41-43.
`
`ME1 16059540V.1
`
`17
`
`

`
`Claim 4
`
`Minneman et al. [Block Type]
`in view of Takahashi et al. [Italics Type]
`
`4. The USB memory plug
`according to claim 3,
`wherein said storage
`memory is one of a flash
`memory and an Electrically
`Erasable Programmable
`Read Only Memory
`(EEPROM).
`
`j—Minneman et al. discloses that the device can
`include “[c]ompact Flash type memories or the
`like,” and explicitly discloses that the data
`memory can be flash memory.
`_S_ge_, _e_,g,, 10:28-
`31; and 18:59-60.
`
`Claim 8
`
`Minneman et al. [Block Type]
`in view of Takahashi et al. [Italics Type]
`
`8. The USB memory plug —‘l Minneman et al. discloses that the sub—assembly -1
`according to claim 1,
`44, including the printed circuit board 40, is
`wherein the plurality of
`supported in the housing by the props 45.
`_S_e_e_,
`concave props are used to
`g, FIGS. 3, 4, 6, 7, and 8; 10:48-61.
`support said PCBA so that a Minneman et al. discloses that a space is formed
`space is formed between said between the housing 25 and the sub—assembly
`housing and said PCBA.
`44, including the printed circuit board 40, due to
`the props 45. _S§§, e_.g,, FIGS. 3, 4, 6, 7, and 8.
`
`_l
`
`Claim 9 _
`
`Minneman et al. [Block Type]
`in view of Takahashi et al. [Italics Type]
`
`I
`
`9. A USB memory plug,
`comprising:
`
`rMinneman et al. discloses a memory device for
`interconnection with a Universal Serial Bus
`(USB). See, e_.g_., Title; Abstract; and 1:14-17.
`
`a print circuit board
`assembly (PCBA); and
`
`Minneman et al. discloses a sub—assembly 44 that
`includes a printed circuit board (PCB) 40. The
`sub—assembly 44 and PCB 40 are disposed in the
`housing 25. See, _e_,g,, FIGS. 3, 4, 6, 7, and 8;
`
`ME1 16059540v.1
`
`18
`
`

`
`Claim 9
`
`7-
`
`Minneman et 211. [Block Type]
`in view of Takahashi et al. [Italics Type]
`
`a housing having a plurality
`of concave props,
`
`10:11-31; and 10:39-41.
`
`Minneman et al. discloses a housing 25 having a
`plurality of stand-offs 45 (props).
`_S_e_e, ggn
`FIGS. 3, 4, 6, 7, and 8; 9265-1026; and 10:48-61.
`Minneman et al. discloses that the plurality of
`stand-offs 45 (props) can be captivating
`indentations formed in the housing, which would
`be concave in nature. §e_e_, e_g, 10:48-61.
`
`Takahashi et al. discloses a base card 11
`(housing) having a plurality ofprotrusions 32
`that are curved in shape (concave props).
`iS‘_ee,
`gg, FIGS. 20A and 20B; 111] 0159-0162. The
`protrusions 32 support the package I which
`includes a wiring (circuit) board 3.
`§_e_e, gg,
`FIG. 20B.
`_—1 Minneman et al. discloses a sub—assembly 44 that W
`includes a printed circuit board 40. The sub-
`assembly 44 and printed circuit board 40 are
`disposed in the housing 25. §_e_§, gg, FIGS. 3, 4,
`6, 7, and 8; 10:11-31; and 10:39-41.
`
`_1
`
`wherein said PCBA is
`
`disposed in said housing;
`
`ME1 16059540v.1
`
`19
`
`

`
`Claim 9
`
`Minneman et al. [Block Type]
`in View of Takahashi et al. [Italics Type]
`
`said plurality of concave
`props protrude inward to fix
`said PCBA, and a space is
`formed between said housing
`
`and said PCBA.
`
`TMinneman et al. discloses that the sub-assembly
`44, including the printed circuit board 40, are
`secured in the housing by the stand-offs 45
`(props), which can be formed by pressing on,
`and causing a deformation in, the housing 25.
`_S_e§, gg, FIGS. 3, 4, 6, 7, and 8; 10:48-61.
`Indeed, at 10:55-61, Minneman et al. explicitly
`discloses “captivating indentations” (which
`would necessarily protrude inward) for retaining
`the sub—assembly 44 (which includes the printed
`circuit board 40), e.g., by mechanical
`interference, by friction fit, and/or by press fit.
`Minneman et al. discloses that a space is formed
`between the housing 25 and the sub-assembly
`44, including the printed circuit board 40.
`_S__e§,
`_e_.g, FIGS. 3, 4, 6, 7, and 8.
`
`Claim 10
`
`Minneman et al. [Block Type]
`in View of Takahashi et al. [Italics Type]
`
`—l Minneman et al. discloses that the housing 25
`can be made of a metal.
`_S_e_§, §;g,, 9:48-49.
`
`10. The USB memory plug
`according to claim 9,
`wherein said housing is
`made from a metallic
`
`conductive material.
`
`ME1 16059540v.1
`
`20
`
`

`
`Claim 11
`
`Minneman et al. [Block Type]
`in View of Takahashi et al. [Italics Type]
`
`11. The USB memory plug
`according to claim 9,
`wherein said PCBA further
`
`comprises: a memory
`controller;
`
`a storage memory in
`communication with said
`
`memory controller;
`
`Minneman et al. discloses that the sub-assembly
`44 includes a control sy