Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 28
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` Entered: August 29, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-004721
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`
`1 Case IPR2014-00150 has been joined with this proceeding; Paper Numbers
`herein refer to documents in Case IPR2014-00150.
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 28
`
`
` Entered: August 29, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-004721
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`
`1 Case IPR2014-00150 has been joined with this proceeding; Paper Numbers
`herein refer to documents in Case IPR2014-00150.
`
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`
`
`INTRODUCTION
`
`Petitioner PNY Technologies, Inc. (“PNY”) filed a Request for Rehearing
`
`(Paper 10, “Reh’g Req.”) of the Decision on Institution (Paper 8, “Dec.”), which
`
`instituted inter partes review of claims 1-21 of Patent 7,518,879 (the ’879 patent).
`
`Based on a joint motion for joinder (Paper 7), we joined Case IPR2014-00150 with
`
`Case IPR2013-00472 (Paper 9). In its request, PNY argues essentially that the
`
`Board abused its discretion in declining to institute on the ground of claims 1, 2, 8-
`
`10, and 16 as obvious over Elbaz and Admitted Art (“AAPA,” see Dec. 5), in
`
`addition to the instituted grounds. The request for rehearing is denied.
`
`ANALYSIS
`
`When rehearing a decision on institution, the Board will review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
`
`determined if a decision is based on an erroneous interpretation of law, if a factual
`
`finding is not supported by substantial evidence, or if the decision represents an
`
`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
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`393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
`
`1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
`
`2000).
`
`PNY argues that we erred in our reasons for not adopting the ground of
`
`claims 1, 2, 8-10, and 16 as obvious over Elbaz and AAPA. Reh’g Req. 2-3, citing
`
`Dec. 11-13. We held that Elbaz “does not disclose a ‘USB memory plug,’ as that
`
`2
`
`
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`Case IPR2013-00472
`Patent 7,518,879
`
`claim term would have been understood in the context of the specification,”
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`(Dec. 11), and that PNY did “not provide any discussion of whether it would have
`
`been obvious to fashion the device as a USB memory plug.” Id. at 13. PNY
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`argues that both Elbaz and AAPA disclose a USB memory plug, that our analysis
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`compels a finding of obviousness over Elbaz and AAPA, and that the Petition
`
`clearly sets forth obviousness rationales for combining Elbaz and AAPA. Reh’g
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`Req. 3-9. We do not agree.
`
`PNY argues that we improperly excluded devices with read-only memory
`
`(ROM) from the term “USB memory plug.” Id. at 3. PNY alleges that the
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`broadest interpretation of “USB memory plug” is a device with memory and a
`
`USB plug. Id. at 4. Such arguments, however, also do not take into account the
`
`explicit discussion in the specification of the ’879 Patent of USB memory devices,
`
`as discussed in the Decision. Dec. 12, citing Ex. 1001, 1:41-52. To assume such a
`
`broad definition of a “USB memory plug,” as argued by PNY, would sweep many
`
`devices, having merely memory and a USB plug, under its scope, such as any
`
`computer peripheral device, which one of ordinary skill in the art would not
`
`understand to be a “USB memory plug.” Ex. 1001, 1:41-52.
`
`PNY also argues that our construction “USB memory plug” is unduly
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`narrow so as to exclude the recitations of dependent claims 4 and 12, i.e., that the
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`memory can be “an Electrically Erasable Programmable Read Only Memory (EE-
`
`PROM).” Reh’g Req. 4. However, we did not exclude the use of ROMs in USB
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`memory plugs, merely that the recitation of memory, generically, does not require
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`that the memory can be written to, as one of ordinary skill in the art would have
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`understood one of the properties of a USB memory plug to be. Ex. 1001, 1:41-52.
`
`3
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`
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`Case IPR2013-00472
`Patent 7,518,879
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`The discussion of ROMs (Dec. 12) demonstrates that the mere recitation of
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`“memory” does not imply that it would necessarily be suitable for use in a USB
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`memory plug.
`
`PNY also argues that both Elbaz and AAPA disclose memories that are re-
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`writable. Reh’g Req. 4. PNY alleges that Elbaz does not state that its module is
`
`limited to a ROM, and its Petition provides that the module in Elbaz complies with
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`specific standards. Id. at 4-5. We are not persuaded, however, that the “dongle” in
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`Elbaz, even if capable of being programmed multiple times would be considered a
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`USB memory plug. Again, we did not conclude that Elbaz only taught ROM, but
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`rather that PNY had not demonstrated that Elbaz taught a USB memory plug. Dec.
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`11-12.
`
`PNY also argues that the AAPA cited in the Petition explicitly teaches that
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`USB memory plugs were known in the art. Reh’g Req. 5, citing Pet. 11-12. We
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`agree that the specification of the ’879 Patent discusses USB memory devices, and
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`we implicitly found the definition of USB memory devices in the Specification, as
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`discussed above. PNY, however, did not reference the specification for such a
`
`teaching, but rather:
`
`AAPA can be relied upon for at least two teachings: (i) explicit use of
`the exact terminology “printed circuit board assembly”; and (ii) that it
`was known in the art prior to the filing of the Chung ‘879 Patent for
`the housing to be formed of a metallic conductive material.
`
`Pet. 11. As such, that specific section of PNY’s Petition is silent with respect to
`
`the ubiquity of USB memory plugs and their use in the device of Elbaz. We
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`cannot have overlooked arguments not made in the Petition.
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`4
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`
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`Case IPR2013-00472
`Patent 7,518,879
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`Similarly, PNY argues that because the same AAPA cited by the Petition
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`was used in establishing the definition of USB memory plug, we cannot say that
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`the AAPA cannot be combined with Elbaz. Reh’g Req. 6. We, however, did not
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`state that the AAPA cannot be combined with Elbaz, only that PNY “does not
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`provide any discussion of whether it would have been obvious to fashion the
`
`device as a USB memory plug.” Dec. 11-12. PNY has a burden of persuasion in
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`its Petition, “information presented in the petition,” 35 U.S.C. § 314(a), that cannot
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`be met through ex post facto reconstruction.
`
`
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`PNY also argues that its explicitly articulated rationales in support of
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`“combining Elbaz with AAPA were provided in the Petition, but these rationales
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`were not addressed and adequately considered by the Decision.” Reh’g Req. 7-8.
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`These rationales, however, argue for the obviousness of the use of a printed circuit
`
`board assembly and making the housing from a metallic conductive material. The
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`stated rationales do not address the deficiencies of Elbaz noted in the Decision.
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`Dec. 11-12. We accepted the teachings of the AAPA proffered in the Petition, but
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`we did not find them as demonstrating a reasonable likelihood of prevailing with
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`respect to the subject ground.
`
`For the forgoing reasons, PNY has not shown that the Board abused its
`
`discretion in not instituting the ground of claims 1, 2, 8-10, and 16 as obvious over
`
`Elbaz and the AAPA.
`
`Accordingly, it is
`
`
`
`ORDER
`
`ORDERED that PNY’s request for rehearing is denied.
`
`5
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`
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`Case IPR2013-00472
`Patent 7,518,879
`
`
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`6
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`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`For PETITIONER:
`
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`For PATENT OWNER:
`
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`
`
`PL initials: cu
`
`
`
`7
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