IN THE 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
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`Filed Electronically via PRPS
`
`To the Board,
`
`
`
`Petitioner PNY Technologies, Inc. (“Petitioner”) timely submits this
`
`“Petitioner Reply to Patent Owner Response” (“Reply”) on September 8, 2014, in
`
`response to the “Patent Owner Phison Electronic Corp.’s Response Under 37
`
`C.F.R. § 42.120” (“Response”) filed July 8, 2014 (Paper No. 24). Petitioner
`
`respectfully requests entry and consideration of this Reply and a final
`
`determination that all claims (i.e., Claims 1-21) of U.S. Patent No. 7,518,879 (the
`
`“’879 Patent”) are unpatentable and cancelled.
`
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`Table of Contents
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`Page
`
`I.
`
`Introduction .......................................................................................................... 1
`
`II. The Board’s Claim Constructions Are Proper and Should be Adopted .............. 1
`
`A. The Board Properly Construed “Concave” as “Curving Inwards
`From a Housing” ........................................................................................ 1
`
`1. Patent Owner and its Expert Agree that “Concave” includes
`“Curving Inwards” .......................................................................... 1
`
`2. Patent Owner Improperly Includes a “Recess” in its
`Construction of “Concave” ............................................................. 2
`
`3. The Drawings of the ‘479 Patent Do Not Show a Concave
`Prop ................................................................................................. 3
`
`B. The Board Properly Construed “Prop” as “A Structure That
`Supports” .................................................................................................... 4
`
`1. Patent Owner Admits that a Prop Functions as a Support .............. 4
`
`2. Patent Owner’s Claim Differentiation Arguments Should be
`Rejected ........................................................................................... 5
`
`3. The Board’s Construction Does Not Ignore the “Crux” of
`the ‘879 Patent ................................................................................ 6
`
`C. The Board Properly Construed “Fixed” as “Fastened Securely in
`Position” ..................................................................................................... 6
`
`D. The Board’s Constructions are not “Preliminary” and Should Not
`Be Treated As Such .................................................................................... 7
`
`III. The Board Properly Instituted Review on Grounds Based on Minneman .......... 7
`
`A. Substantial Evidence Supports the Conclusion that One of
`Ordinary Skill in the Art Would Shape the Props of Minneman So
`That They are Concave ............................................................................... 8
`
`B. The Captivating Indentations of Minneman are Recesses, and the
`the Structures of Minneman and Takahashi are Props ............................... 9
`
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`C. The Structures of Minneman and Takahashi are “Pressed,”
`Contrary to Patent Owner’s Arguments ................................................... 10
`
`D. Contrary to Patent Owner’s Argument, the Concave Props Do Not
`Need to be Integral with the Housing ....................................................... 11
`
`E. Patent Owner’s Non-Analogous Art Argument Should be Rejected ....... 12
`
`IV. The Board Properly Instituted Grounds of Review Based on Elbaz ................. 12
`
`A. Elbaz Discloses Concave Props ............................................................... 12
`
`B. The Adaptor of Elbaz Securely Fastens the Module in Place .................. 13
`
`C. The Locking Means of Elbaz is Irrelavant ............................................... 14
`
`D. Frictional Engagement of the Module of Elbaz with the Adaptor
`Would Not Defeat Removability of the Module ...................................... 14
`
`E. Petitioner’s Expert Acknowledged that a Printed Circuit Board
`Assembly (PCBA) Could be Inserted into the Adaptor of Elbaz............. 15
`
`V. Conclusion and Relief Requested ...................................................................... 15
`
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`PETITIONER’S UPDATED LIST OF EXHIBITS AS OF SEPTEMBER 8, 2014
`
`PNY Exhibit 1001:
`
`
`PNY Exhibit 1002:
`
`PNY Exhibit 1003:
`
`
`PNY Exhibit 1004:
`
`
`PNY Exhibit 1005:
`
`
`PNY Exhibit 1006:
`
`
`PNY Exhibit 1007:
`
`
`PNY Exhibit 1008:
`
`U.S. Patent No. 7,518,879 to Chung et al., issued
`April 14, 2009
`
`Power of Attorney
`
`U.S. Patent No. 7,352,601 to Minneman et al., issued
`on April 1, 2008
`
`U.S. Patent Publication No. 2006/0002096 to Wang et
`al., published on January 5, 2006
`
`U.S. Patent No. 7,074,052 to Ni et al., issued on July
`11, 2006
`
`U.S. Patent Publication No. 2004/0027809 to
`Takahashi et al., published on February 12, 2004
`
`The American Heritage Dictionary of the English
`Language, Fourth Edition, Copyright 2000, Houghton
`Mifflin Company, Boston - New York: “indentation”
`
`Transcript of the Oral Deposition of Steven Carl
`Visser Taken on July 23, 2014 (“Visser Deposition”)
`
`
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`
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`I.
`
`Introduction
`
`Petitioner submits this Reply in response to the Response filed on July 8,
`
`2014. Since the Response did not include a Statement of Facts section, this Reply
`
`does not include a corresponding section disputing any Statement of Facts.
`
`II.
`
`The Board’s Claim Constructions Are Proper and Should be Adopted
`
`Contrary to Patent Owner’s assertions, Petitioner respectfully submits that
`
`the Board properly construed and interpreted the terms “concave,” “prop,” and
`
`“fixed” for the reasons set forth below. Nothing set forth in the Response warrants
`
`alteration of the Board’s constructions.
`
`A. The Board Properly Construed “Concave” as “Curving Inwards
`From a Housing”
`
`The Board construed the term “concave” as “curving inwards from a
`
`housing.” See Paper No. 10, p. 7; see also Decision – Institution of Inter Partes
`
`Review (Paper No. 8 in IPR2014-00150) (“Second Decision”), p. 7. For the
`
`reasons set forth below, Petitioner respectfully submits that this construction is
`
`correct.
`
`1.
`
`Patent Owner and its Expert Agree that “Concave” includes
`“Curving Inwards”
`
`As a preliminary matter, Patent Owner does not dispute that the construction
`
`of the term “concave” includes the concept of “curving inwards.” See Response, p.
`
`9 (“Patent Owner agrees that a proper construction of ‘concave’ must include at
`
`least ‘curving inwards,’…”). Moreover, Patent Owner’s expert, Steve Visser,
`
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`agreed with this premise. See Exh. 1008, 62:20-63:7; see also Declaration of Steve
`
`Visser (Exh. 2008), ¶¶22, 24. Accordingly, there is no dispute that the term
`
`“concave” requires that there be curvature, and that such curvature is inwards in
`
`direction.
`
`2.
`
`Patent Owner Improperly Includes a “Recess”
`Construction of “Concave”
`
`in
`
`its
`
`Patent Owner essentially argues that the plain and ordinary meaning of the
`
`term “concave” is “curving inward to form a recess” and that the specification of
`
`the ‘879 Patent does not “redefine” the term “concave.” See, e.g., Response, p.
`
`10. However, these two positions are untenable. Essentially, Patent Owner admits
`
`that the specification of the ‘879 Patent does not describe the term concave as
`
`including a “recess” (by virtue of Patent Owner’s statement that the ‘879 Patent
`
`specification does not “redefine” that term). In fact, there is a sheer absence of the
`
`word “recess” anywhere in the specification of the ‘879 Patent. Given this, Patent
`
`Owner cannot then seek to impart the “recess” limitation into its construction of
`
`“concave” since the recess concept is not supported in the specification of the ‘879
`
`Patent. As the Board correctly held, the term “concave” is properly construed not
`
`in accordance with its customary and ordinary meaning, but rather, in light of the
`
`specification and claims. See Paper No. 12, p. 5. Since the specification does not
`
`mention recesses, the construction of “concave” also should not include “recess.”
`
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`
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`The claims cover a device, not a method of forming the device. See Second
`
`Decision, p. 7.
`
`Moreover, Patent Owner’s own dictionary citation (Exh. 2010) does not use
`
`the word “recess” in defining the word “concave,” but rather, defines “concave” as
`
`“hollow and curved like the inside half of a hollow ball.” Exh. 2010, p. 287; Exh.
`
`1008, 61:16-62:16. Contrary to the Patent Owner’s assertion, the terms “hollow”
`
`and “recess” are not synonymous. Indeed, the inside of a ball is hollow because it
`
`lacks material, but that does not mean that the ball is recessed. Instead, a ball
`
`includes a single, closed wall. Even further, the drawing at p. 18 of the Response
`
`(reproduced from Exh. 2004 -- the Machinery’s Handbook) draws a distinction
`
`between a “recess” and something that is merely hollow, because it illustrates a
`
`recess as something that is relative to a surface. Simply put, it is clear that the
`
`Board’s construction of the term “concave” is correct, and Patent Owner’s
`
`construction should not be adopted.
`
`3.
`
`The Drawings of the ‘479 Patent Do Not Show a Concave
`Prop
`
`Patent Owner contends that “the ‘879 Patent always shows the concave
`
`props as being concave.” Response, p. 12. This is entirely false; in fact, the ‘879
`
`Patent never shows the props as being concave. Indeed, in all drawings which
`
`show the props, no curvature is shown whatsoever. For example, FIG. 6 of the
`
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`
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`‘479 Patent only shows the props (labelled 512) as flat pieces of material with no
`
`curvature at all:
`
`Prop 512 is shown
`with no indication
`that it is curved or
`concave
`
`
`
`Exh. 1001, Fig. 6. Moreover, the drawing included in paragraph 23 of Mr.
`
`Visser’s Declaration and cited on p. 19 of the Response should not be given any
`
`weight because it is not a drawing from the ‘879 Patent. See Response, p. 19; Exh.
`
`2008, ¶ 23. Rather, it is Mr. Visser’s own drawing, and as such, is not part of
`
`either the disclosure of the ‘879 Patent or the intrinsic record. See Exh. 1008,
`
`53:22-54:20.
`
`B.
`
`The Board Properly Construed “Prop” as “A Structure That
`Supports”
`
`The Board construed the term “prop” as “a structure that supports.” See
`
`Paper 10, pp. 7-8; see also Second Decision, pp. 7-8. For the reasons set forth
`
`below, Petitioner respectfully submits that this construction is correct.
`
`1.
`
`Patent Owner Admits that a Prop Functions as a Support
`
`As a preliminary matter, Patent Owner agrees that the proper construction of
`
`prop “must include at least ‘a structure that supports.’” Response, p. 19.
`
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`Moreover, Patent Owner mischaracterizes the Board’s construction of the term
`
`“prop” when both state that “construing a ‘prop’ to be the same as a ‘support’ is
`
`erroneous.” Response, p. 20; Exh. 2008, ¶ 27. The Board did not construe the
`
`word “prop” with the noun “support” – rather, it construed “prop” as a “structure
`
`that supports.” As such, the Board’s construction is entirely correct in this regard.
`
`2.
`
`Patent Owner’s Claim Differentiation Arguments Should be
`Rejected
`
`Patent Owner effectively makes a claim differentiation argument in
`
`connection with dependent Claims 8, 16, and 19, arguing that since the word
`
`“support” appears in these claims but does not appear in Claim 1, the Board’s
`
`construction is therefore improper because it includes the word “support” in the
`
`construction. See Response, p. 21 (“It is error to define ‘prop’ synonymously with
`
`‘support’ as each word must impart a distinct meaning to the claims”). However,
`
`this is not only misguided, it also ignores the actual language of Claims 8, 16, and
`
`19. Claims 8, 16, and 19 do not recite the noun “support” as Patent Owner
`
`incorrectly argues. Rather, they recite the word “support” as an infinitive
`
`describing actions (functions) performed by the prop, i.e., “wherein the plurality of
`
`concave props are used to support said PCBA….” Exh. 1001, 6:46-48 (emphasis
`
`added). Clearly, the Board is not equating the term “prop” with “support” but
`
`rather, a structure that supports. This is entirely consistent with the language of
`
`Claim 1, and is not in conflict with the language of dependent Claims 8, 16, or 19.
`
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`3.
`
`The Board’s Construction Does Not Ignore the “Crux” of the
`‘879 Patent
`
`Patent Owner states that “[c]onstruing ‘prop’ in a manner that does not
`
`require it to support one thing apart from another, e.g., forming the space between
`
`the PCBA and the housing, ignores the crux of the ‘879 Patent.” Response, p. 21.
`
`This argument should not be given weight, as the Board’s construction specifically
`
`allows for a space which permits an object to be inserted between a housing and
`
`the PCB. The Board’s construction simply states “a structure that supports.”
`
`Paper 10, pp. 7-8; Second Decision, pp. 7-8. This construction does not foreclose a
`
`structure which suspends an object (such as a PCB) above a housing, and which
`
`allows space to exist between the housing and the object. Moreover, the Board
`
`specifically notes that Claim 8 separately recites the “space” concept, and it would
`
`be improper to narrowly construe “prop” to also include “space.” See Paper No.
`
`10, p. 8. As such, the Board’s construction is correct.
`
`C. The Board Properly Construed “Fixed” as “Fastened Securely in
`Position”
`
`The Board construed the term “fixed” as “fastened securely in position.”
`
`See Second Decision, p. 8. For the reasons set forth below, Petitioner respectfully
`
`submits that this construction is correct.
`
`Patent Owner urges that the term “fixed” necessarily means that an object
`
`must be fixed in a single position. See, e.g., Response, p. 24-25. However, the
`
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`Board’s construction is not so limited, and is the proper construction, as it merely
`
`states “fastened securely in position.” Second Decision, p. 8 (emphasis added). It
`
`is clear that the phrase “in position” means that an object is at a proper location,
`
`not that the object can never move. Just as a driver of a car can be fastened
`
`securely in his or her seat by a seatbelt, the driver can still move relative to the seat
`
`yet still be held securely in place relative to the entire car. See, e.g., Exh. 1008,
`
`78:18-79:10. Even further, Mr. Visser drew a distinction between the term “in
`
`position” and an object that is fixed in every direction and all degrees of freedom.
`
`See Exh. 1008, 85:4-9. As such, the Board’s construction of “fixed” is correct.
`
`D. The Board’s Constructions are not “Preliminary” and Should Not
`Be Treated As Such
`
`Finally, with respect to claim construction, Patent Owner repeatedly refers to
`
`the Board’s constructions as “preliminary.” See, e.g., Response, p. 8. However,
`
`nowhere does the Board refer to its own constructions as “preliminary.” As set
`
`forth above, the Board’s constructions are the correct constructions, and they
`
`should continue to govern these proceedings.
`
`III. The Board Properly Instituted Review on Grounds Based on Minneman
`
`Petitioner hereby refutes the arguments made by Patent Owner in connection
`
`with the instituted grounds of review based on Minneman, and respectfully submits
`
`that the challenged claims are unpatentable over Minneman in view of Takahashi.
`
`
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`A.
`
`Substantial Evidence Supports the Conclusion that One of
`Ordinary Skill in the Art Would Shape the Props of Minneman
`So That They are Concave
`
`First, contrary to the positions advanced in the Response, Mr. Visser
`
`admitted during his deposition that the “props” of Minneman (i.e., the stand-offs
`
`45 and the captivating indentations disclosed in Minneman) could be shaped so
`
`that they are concave. Exh. 1008, 90:11-16; 98:23-99:1. This candid admission by
`
`Mr. Visser is clear evidence that one of ordinary skill in the art would have viewed
`
`shaping the structures of Minneman so that they are concave in shape as an
`
`obvious design choice, particularly since the shape is suggested by Takashashi.
`
`Second, the teachings of Takahashi are relevant in showing that supporting
`
`structures can be curved. Such curvature is clearly shown in FIG. 4A of
`
`Takahashi. Moreover, the Board properly found that the protrusions 32 of
`
`Takahashi curve inwardly from the housing of Takahashi (and are thus concave),
`
`and Mr. Visser also admitted this feature. See Paper No. 10, p. 13; see also Exh.
`
`1008, 59:7-14. Thus, it would be nothing more than an obvious design choice,
`
`given the teachings of Minneman and Takahashi, to shape the props of Minneman
`
`so that they are concave in shape as taught by Takahashi.
`
`Third, Patent Owners’ argument that the concave shape of the props
`
`provides functional advantages (see Response, pp. 36-39) should not be accorded
`
`any weight. As the Board properly concluded, the term “concave” is nothing more
`
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`
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`than non-functional language, as it is the props themselves, not the concave
`
`surfaces, which support the PCBA. See Paper No. 27, p. 4.
`
`Finally, Patent Owner’s suggestion that the “orientated indentations”
`
`language in Claim 1 can also function as props (see Response, p. 38) is irrelevant,
`
`and should not be accorded any weight. Claim 1 clearly recites two separate
`
`structures (indentations and props), and nowhere does Claim 1 state that these two
`
`separate structures are the same thing.
`
`B.
`
`The Captivating Indentations of Minneman are Recesses, and the
`the Structures of Minneman and Takahashi are Props
`
`Patent Owner’s expert, Mr. Visser, admitted in his deposition that
`
`indentations can be recesses, and vice versa. See Exh. 1008, 48:10-16. Moreover,
`
`Mr. Visser was provided with a copy of the definition of the term “indentation”
`
`from Patent Owner’s own dictionary (Exh. 10071), and he confirmed that the
`
`definition does recite the word “recess.” See Exh. 1008, 93:4-94:6. Such a
`
`structure falls squarely within Patent Owner’s construction of the term “concave
`
`props,” and certainly within the Board’s (correct) construction of “concave props.”
`
`
`1
`Exh. 1007 is introduced in these proceedings solely for purposes of
`
`impeachment, and as such, it is respectfully submitted that it is admissible at this
`
`stage in these proceedings without requiring a Motion for Supplemental
`
`Information.
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`Additionally, it is clear that the structures of both Minneman and Takahashi
`
`are props. When asked about the stand-offs 45 and the captivating indentations of
`
`Minneman, Mr. Visser admitted that they support the sub-assembly 44 and
`
`separate it from the housing (by creating a space between the sub-assembly and the
`
`housing), thus satisfying the Board’s construction as well as Patent Owner’s
`
`construction. See Exh. 1008, 97:14-98:12. Regarding Takahashi, Mr. Visser also
`
`admitted that the protrusions 32 function as props which support a wafer from the
`
`wall 13 of Takahashi, so that glue can be inserted. See Exh. 1008, 72:8-18.
`
`C. The Structures of Minneman and Takahashi are “Pressed,”
`Contrary to Patent Owner’s Arguments
`
`Patent Owner urges that the structures of Minneman are not “pressed.” See,
`
`e.g., Response, pp. 39-41. However, it is clear that both the sub-assembly 44 of
`
`Minneman and the wafer of Takahashi rest on top of the supporting structures
`
`disclosed in these two references, and it is axiomatic that the force of gravity pulls
`
`the sub-assembly 44 of Minneman and the wafer of Takahashi against these
`
`supporting structures, thereby pressing against them. Even further, it is axiomatic
`
`that the supporting structures of Minneman and Takahashi exert forces opposite the
`
`force of gravity pulling the sub-assembly and wafer downward, otherwise there
`
`would be no support for these structures to counteract gravity. Indeed, Mr. Visser
`
`even acknowledged such forces. See Exh. 1008, 71:16-20; 113:11-17; 114:2-
`
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`
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`115:6. It is thus clear that Minneman and Takahashi both meet Claim 1’s
`
`requirement of “pressing of said concave props.” (emphasis added)
`
`D. Contrary to Patent Owner’s Argument, the Concave Props Do
`Not Need to be Integral with the Housing
`
`It is noted that Claim 1 of the ‘879 Patent does not require that the props be
`
`integral to the housing, as Patent Owner improperly suggests. Rather, Claim 1
`
`merely states “a housing having … a plurality of concave props….” Exh. 1001,
`
`6:10-11. An object can “have” a feature, but that feature does not necessarily have
`
`to be integrally formed. Moreover, Mr. Visser admitted that the claims of the ‘879
`
`Patent do not require the concave props to be formed from the same material as the
`
`housing. See Exh. 1008, 100:23-101:5.
`
`Additionally, it is noted that the captivating indentations of Minneman could
`
`indeed be formed from the same material as the housing since they are described as
`
`indentations, i.e., they are pressed from the same material forming the wall of the
`
`housing. See Exh. 1008, 120:1-13. As such, even assuming arguendo that Patent
`
`Owner’s interpretation applies, i.e., that the concave props are formed from the
`
`same material as the housing, Minneman teaches forming such structures from the
`
`same material as the housing.
`
`11
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`
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`E.
`
`Patent Owner’s Non-Analogous Art Argument Should be
`Rejected
`
`Patent Owner argues that Minneman and Takahashi are non-analogous art,
`
`and are not properly combinable. However, it is clear that both references relate to
`
`the design and configuration of memory products, and more importantly, to the
`
`mechanical design and configuration of housings for flash memory devices. As
`
`such, they are clearly analogous art.
`
`IV. The Board Properly Instituted Grounds of Review Based on Elbaz
`
`
`
`Petitioner hereby refutes the arguments made by Patent Owner in connection
`
`with the instituted grounds of review based on Elbaz, and respectfully submits that
`
`the challenged claims are unpatentable over combinations of Elbaz, Deng, and
`
`Applicant-Admitted Prior Art (AAPA).
`
`A. Elbaz Discloses Concave Props
`
`
`
`As a threshold matter, contrary to the assertions set forth in the Response,
`
`Elbaz clearly discloses concave props. In particular, both the guiding means 515
`
`and the ribs 516 of Elbaz are props under the Board's construction, since they both
`
`are structures that support the module 5 of Elbaz. They both contact the module 5,
`
`and they both restrain movement of the module relative to the adaptor body.
`
`Further, Mr. Visser admitted during his deposition that the ribs 516 are concave in
`
`shape, and that they are props. See Exh. 1008, 130:9-15. He also admitted that the
`
`props 516 are recesses (Exh. 1008, 130:18-20) and that they exert a force on the
`
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`PCBA opposite the force of gravity (Exh. 1008, 130:24-131:6). It is thus clear that
`
`they are concave structures which support the module 5, and are thus concave
`
`props.
`
`B.
`
`The Adaptor of Elbaz Securely Fastens the Module in Place
`
`
`
`Contrary to the Patent Owner's assertion, the module 5 of Elbaz is securely
`
`fastened in place. Even though the module 5 is removable from the adaptor shown
`
`in FIGS. 10A-10C, it does not merely float freely within the adaptor. Rather, it is
`
`held in place for use in a USB socket of a computer. As argued in the Petition, it
`
`can be seen from FIGS. 10A-10C that the module 5 is "wedged" between the
`
`guiding means 515 and the ribs 516. Moreover, Mr. Visser admitted that both the
`
`guiding means 515 and the ribs 516 contact the module 5. See Exh. 1008, 130:9-
`
`131:6;131:13-132:4. It is this contact between the module 5 and both the guiding
`
`means 515 and the ribs 516 which restrains movement of the module 5; otherwise,
`
`the module 5 would float freely within the adaptor. Additionally, even if contact
`
`between the guiding means 515 and the module 5 only occurred at the edges of
`
`these two components as Mr. Visser speculates (Exh. 2008, ¶ 49), the guiding
`
`means 515 and the ribs 516 still function together to restrain movement of the
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`module 5. Thus, it is clear that the module 5 is "fixed" by pressing of both the
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`guiding means 515 and the ribs 516.
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`Even further, it is axiomatic that both the guide means 515 and the ribs 516
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`hold the module 5 in a fixed position since, if they did not, the module 5 would not
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`be properly aligned for insertion into a USB socket when the adaptor is inserted
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`into such a socket. It is well-known that a USB socket has a specific mechanical
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`arrangement, and if the module 5 of Elbaz is not held in proper position to
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`accommodate this arrangement, the module 5 would not be insertable into the
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`socket.
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`C. The Locking Means of Elbaz is Irrelavant
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`Patent Owner points to the locking means disclosed in paragraph 60 of Elbaz
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`as purportedly evidencing that the guide means 515 do not fix the module 5, but
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`this should not be accorded any weight. As disclosed in Elbaz, the locking means
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`is nothing more than a "stop" formed at the bottom of the connector. However, as
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`established above, it is the guiding means 515 and ribs 516 which "fix" the module
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`5 by pressing, whether or not the locking means is provided. As such, the locking
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`means of Elbaz is irrelevant.
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`D.
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`Frictional Engagement of the Module of Elbaz with the Adaptor
`Would Not Defeat Removability of the Module
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`The Board properly acknowledges that there is a frictional engagement
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`between the module 5 and the guide means 515 when the module 5 is inserted into
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`the adaptor. See Paper No. 12, pp. 3-4. As argued in the Petition, Petitioner
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`further submits that there is also a frictional engagement between the module 5 and
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`the ribs 516 when the module is inserted into the adaptor. Contrary to the Patent
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`Owner's arguments, such friction would not prevent insertion or removal of the
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`module 5, but rather, it ensures that the module 5 does not fall out of the adaptor
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`after it has been inserted. Indeed, Mr. Visser even admitted that such friction
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`would not make it impossible to remove the module from the adaptor. See Exh.
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`1008, 139:1-3.
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`E.
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`Petitioner’s Expert Acknowledged that a Printed Circuit Board
`Assembly (PCBA) Could be Inserted into the Adaptor of Elbaz
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`During his deposition, Mr. Visser was asked whether it would be possible to
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`insert a PCBA into the adaptor of Elbaz. He candidly admitted that it would be
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`possible to do so. See Exh. 1008, 144:12-19. As such, this provides further
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`evidence in support of combining the teachings of Deng (which recites a PCBA)
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`with the teachings of Elbaz.
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`V.
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`Conclusion and Relief Requested
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` For the reasons set forth above, Petitioner respectfully submits that Claims 1-
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`21 should be found unpatentable and cancelled.
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`September 8, 2014
`Dated
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`/Mark E. Nikolsky/
` By: Mark E. Nikolsky (Lead Counsel)
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`Reg. No. 48,319
`
`Sanjiv M. Chokshi (Back-up Counsel)
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`Reg. No. 44,080
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`McCarter & English, LLP
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`Four Gateway Center
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`100 Mulberry Street
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`Newark, New Jersey 07102
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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
`____________
`
`Case IPR2013-00472
`Patent 7,518,879
`____________
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`
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`CERTIFICATE OF SERVICE
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`E-Filed Via PRPS
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`To the Honorable Patent Judge Turner:
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`
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`I hereby certify that true and complete copies of this PETITIONER’S
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`REPLY TO PATENT OWNER RESPONSE, including this Certificate of Service,
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`and including PNY Exhibits 1007 and 1008, have been served on the following
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`individual via electronic mail as agreed to by the parties:
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`Cert. 1
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`ME1 18853496v.1
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`
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`Joshua A. Griswold, Esq.
`Fish and Richardson PC
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: Griswold@fr.com,
`Hoffman@fr.com, and
`IPR23490-0010IP1@fr.com.
`
`
`September 8, 2014
`Dated
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`/Mark E. Nikolsky/
` By: Mark E. Nikolsky (Lead Counsel)
`
`Reg. No. 48,319
`
`Sanjiv M. Chokshi (Back-up Counsel)
`
`Reg. No. 44,080
`
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`Attorneys for PNY
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`McCarter & English, LLP
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`Four Gateway Center
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`100 Mulberry Street
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`Newark, New Jersey 07102
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`ME1 18853496v.1
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`Cert. 2