UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`Phison Electronics Corp.
`Patent Owner
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`Case IPR2013-00472
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`PRELIMINARY RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`Phison Electronics Corp.
`Patent Owner
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`Case IPR2013-00472
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`PRELIMINARY RESPONSE
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`Case IPR2013-00472
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION .......................................................................................... 1
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`II. STATEMENT OF RELIEF REQUESTED .................................................. 3
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`III. BACKGROUND OF THE ‘879 PATENT ................................................. 3
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`IV. CLAIM CONSTRUCTION ......................................................................... 4
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`A. “Concave” requires “curving inwards to form a recess” ..................... 4
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`B. Petitioner’s construction of “concave” is inconsistent with the ‘879
`patent .................................................................................................................... 8
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`“Prop” requires “a structure that supports (i.e., props-up) one thing
`C.
`apart from another” ............................................................................................ 9
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`V. DEFECTS IN THE PROPOSED GROUNDS OF
`UNPATENTABILITY .......................................................................................... 12
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`A. Grounds 1 and 3 are defective because Minneman does not teach
`“concave props” as recited in the claims ....................................................... 12
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`B. Grounds 1 and 3 are 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 ........................................................................ 19
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`C. Ground 2 is defective because Takahashi does not teach “concave
`props” ................................................................................................................. 21
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`D. Ground 2 is defective because a person of ordinary skill in the art
`would not have combined Minneman and Takahashi................................ 23
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`E. Grounds 4 and 5 are defective because Wang does not teach
`“concave props” as recited in the claims ....................................................... 25
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`F. Ground 5 is defective because Wang does not teach “said PCBA is
`fixed by means of pressing of said plurality of concave props” as recited
`in the claims ....................................................................................................... 28
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`G. Grounds 6 and 7 are defective because another of Ni’s patent
`describing a similar invention was relied on and overcome during
`prosecution of the ’879 patent ......................................................................... 28
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`H. Grounds 6 and 7 are defective because Ni does not teach “concave
`props” as recited in the claims ........................................................................ 30
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`I. Grounds 6 and 7 are defective because Ni does not teach “said
`PCBA is fixed by means of pressing of said plurality of concave props”
`as recited in the claims ..................................................................................... 32
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`J. Ground 7 is defective because a person of ordinary skill in the art
`would not have combined Ni and Takahashi .............................................. 33
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`VI. REDUNDANT GROUNDS OF UNPATENTABILITY ...................... 35
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`A. Grounds 1, 4, 5 and 6 are redundant ..................................................... 35
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`B. Grounds 1, 2 and 3 are redundant ......................................................... 37
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`C. Grounds 6 and 7 are redundant ............................................................. 38
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`VII. CONCLUSION ........................................................................................ 39
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`LIST OF EXHIBITS
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`Case IPR2013-00472
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`Exhibit No. Description
`2001
`File History of the ’879 Patent
`2002
`U.S. Publication No. 2007/0178769 to Ni (“Ni Publication”)
`Collins English Dictionary, pp. 350, 452, 725 (2005)
`2003
`Erik Oberg et al., Machinery’s Handbook, 26th Edition, pp. 720-
`2004
`973 (2000)
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2013-00003 (Paper 7, Oct. 25, 2012)
`DETENTS & DIAMETERS OF SPRING LOADED DEVICES,
`http://www.vlier.com/product_index/sld/
`sel_06_diam.html (2007)
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`2006
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`2005
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`TABLE OF AUTHORITIES
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`Case IPR2013-00472
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`Page(s)
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`Cases
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`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2013-00003 (Paper 7, Oct. 25, 2012) ................................................... 2, 35
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`Ex parte Moller,
`Appeal 2010-012534 (BPAI 2010) ........................................................... 7, 8, 11
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`In re ICON Health & Fitness, Inc.
`496 F.3d 1374, 1379 (Fed. Cir. 2007) ....................................................... 7, 8, 12
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`In re Suitco Surface, Inc.,
`603 F.3d 1255, 1259 (Fed. Cir. 2010) ....................................................... 7, 8, 12
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`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359, 1364 (Fed. Cir. 2004) ............................................................... 12
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`CA, Inc. v. Simple.com, Inc.,
`780 F. Supp. 2d 196, 254 (E.D.N.Y. 2009) ...................................................... 14
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`Net MoneyIN v. Verisign,
`545 F.3d 1359, 1370 (Fed. Cir. 2008) ............................................................... 14
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`Statutes
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`35 U.S.C. § 102(e) ................................................................................. 12, 25, 35, 37
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`35 U.S.C. § 103 ....................................................... 19, 21, 27, 30, 32, 35, 36, 37, 38
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`Rules and Regulations
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`37 C.F.R. § 42.107(a) ................................................................................................ 1
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`37 C.F.R. § 42.1 (b) ............................................................................................. 2, 35
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`Case IPR2013-00472
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`Pursuant to 37 C.F.R. § 42.107(a), the patent owner, Phison
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`Electronics Corp. (“Patent Owner”), hereby submits the following
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`Preliminary Response in response to the Petition for Inter Partes Review
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`(“IPR”) of U.S. Patent No. 7,518,879 (“the ‘879 patent”).
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`I.
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`INTRODUCTION
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`The ‘879 patent, entitled “Universal Serial Bus (USB) Memory Plug”
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`contains twenty-one claims, of which claims 1, 11, and 17 are independent.
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`The Petition asserts invalidity of claims 1-4, 8-12, and 16. The Petition
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`relies on four different references and the alleged “Applicant Admitted
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`Prior Art (AAPA)” of the ’879 patent1 to propose seven grounds of
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`unpatentability: (1) anticipation based on Minneman (Ground 1), (2)
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`obviousness based on Minneman in view of Takahashi (Ground 2), (3)
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`obviousness based on Minneman in view of the AAPA of the ’879 patent
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` For brevity, the patent owner will refer to the alleged Applicant Admitted
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`Prior Art simply as the “AAPA” of the ’879 patent in the present response.
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`However, patent owner does not necessarily agree that the ’879 patent
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`includes any admitted prior art.
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`(Ground 3), (4) anticipation by Wang (Ground 4), (5) obviousness based on
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`Wang in view of AAPA of the ’879 patent (Ground 5), (6) obviousness
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`based on Ni (Ground 6), and (7) obviousness based on Ni in view of
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`Takahashi (Ground 7). The Petition is deficient, and should be denied in
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`whole, for at least the following reasons.
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`The Petition fails to establish a reasonable likelihood of prevailing
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`with respect to any of the proposed grounds for rejection for at least three
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`reasons. First, none of the references cited in the Petition disclose, teach, or
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`suggest the “concave props” recited in all claims of the ’879 patent.
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`Second, the concave shape of the props is not an obvious design choice, as
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`alleged in the Petition, because the patent owner selected the concave
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`shape of the props due to particular advantages it provides. Third, none of
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`the references cited in the Petition disclose, teach, or suggest that the
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`“PCBA is fixed by means of pressing of said plurality of concave props” as
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`recited in the claims of the ’879 patent.
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`Further, multiple grounds of unpatentability proposed in the Petition
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`are redundant, and should be denied as contrary to 37 C.F.R. § 42.1(b) and
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`the Patent Trial and Appeal Board’s Liberty Mutual representative order.
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`See Liberty Mutual Ins. Co. v. Progressive Casualty Co., CBM2012-00003 (Paper
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`7, Oct. 25, 2012); BC-2024.
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`II.
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`STATEMENT OF RELIEF REQUESTED
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`Patent Owner respectfully requests that the Board deny the Petition
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`for IPR of claims 1-4, 8-12, and 16 of the ‘879 patent for at least the reasons
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`discussed above.
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`Alternatively, if the Board institutes IPR review of the ‘879 patent,
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`Patent Owner additionally requests that the Board:
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`(1) Reject Petitioner’s proposed claim constructions, and instead
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`adopt a construction consistent with Patent Owner’s constructions
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`proposed herein;
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`(2) Decline to adopt Petitioner’s Grounds of Unpatentability.
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`III. BACKGROUND OF THE ‘879 PATENT
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`The ’879 patent describes a universal serial bus (USB) memory device
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`having a housing enclosing a printed circuit board assembly (PCBA). Ex.
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`1001 (’879 patent), Abstract. The housing includes a plurality of orientated
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`indentations formed by punching on the housing. Id. at 2:55-57; See Fig. 6
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`ref. 511. The orientated indentations facilitate the connection of the device
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`to a female USB socket, such as by receiving spring engagement
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`mechanisms of the socket. Id. at 4:35-39. Punching the housing to form the
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`orientated indentations creates a plurality of concave props protruding
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`inward into the interior of the housing. Id. at 2:55-57, 4:28-32; See Fig. 6 ref.
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`512. The concave props are operable to fix the PCBA in place and to
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`supplant the flake spacer in forming a space between the PCBA and the
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`housing. Id. at 2:50-52, 5:40-45. The space resulting from removal of the
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`flake spacer enables additional components to be included within the USB
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`housing. Id. at 2:6-9, 4:-53-56, 5:35-39. The ’879 patent states that the use of
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`“punched concave props” to support the PCBA both “decreases the cost”
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`and “simplifies the manufacturing process” of the USB memory device
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`versus prior methods. Id. at 2:39-40, 5:40-45.
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`IV. CLAIM CONSTRUCTION
`A.
`“Concave” requires “curving inwards to form a recess”
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`A person of ordinary skill in the art at the time of the ’879 patent
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`would have understood the broadest reasonable interpretation of the term
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`“concave” to at least require “curving inwards to form a recess,” such as
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`curving inwards to form a recess in the outer surface of the USB housing.
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`This construction is proper because (i) such a definition of “concave” was
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`generally accepted in the art at the time; and (ii) any broader construction
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`would be inconsistent with the ’879 patent.
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`First, “concave” was generally accepted to mean “curving inwards to
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`form a recess” at the time of the ’879 patent. For example, the Collins
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`English Dictionary from 2005 defines “concave” as “curving inwards.” See
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`Ex. 2003 (Collins English Dictionary), p. 3. This definition is instructive, yet
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`imprecise in the context of the ’879 patent, because the word “inwards” is
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`relative and the definition is silent as to what “inwards” is relative to. In
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`another example, the Machinery’s Handbook from 2000, a handbook for
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`metal working such as manufacturing metal USB housings, includes the
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`following illustration of a concave feature:
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`Surface
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`Recess
`relative to
`the surface
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`Ex. 2004 (Machinery’s Handbook), p. 71 (annotated).
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`As shown in the annotated figure above, the concave feature curves inward
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`into the surface and necessarily forms a recess. Thus, in the construction of
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`“curving inwards,” further stating that the concave feature forms a recess
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`eliminates ambiguity in the relative term “inwards.”
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`Second, to construe “concave” more broadly than the Patent Owner’s
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`proposal would be contrary to the ’879 patent. By specifying a “concave”
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`prop, the ‘879 patent distinguishes its prop from other types of props. The
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`’879 patent describes its “concave” props as integrally formed from the
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`housing, stating that “[c]ertainly, the plurality of orientated indentations
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`and the plurality of concave props are integrally formed by means of
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`punching on the housing.” Ex. 1001 (‘879 patent) at 2:55-57 (emphasis
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`added). The housing material displaced in integrally forming the ‘879
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`patent’s props from the housing leaves a concave shape that curves
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`inwards to form a recess.
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`Also, punching, pressing and similar processes enable the orientated
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`indentations and concave props to be formed integrally and
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`simultaneously using the same manufacturing process. Id. at 4:28-32. The
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`specification confirms that the goal of punching the concave props is to
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`“decrease the cost” and “simplify the manufacturing process” for USB
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`memory devices. Id. at 2:39-40. Recesses with curved bends that follow
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`from deformation of the housing, such as by types of punching, pressing or
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`other similar metal working processes, are simple and cheap to form.
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`Shapes that are not curved or that do not form a recess, such as those
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`formed by affixing pre-formed shapes to the housing, are not integral and
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`introduce additional manufacturing processes and additional steps to the
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`manufacture of the housing that add cost and complexity. A construction
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`of “concave” that encompasses these shapes would fail to give meaning to
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`“concave” in the phrase concave props and would be contrary to the goals
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`of decreased cost and simplicity of manufacturing stated in the ’879 patent,
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`and thus impermissibly broad. See Ex parte Moller, Appeal 2010-012534 at
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`p. 9 (BPAI 2010), citing In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
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`(Fed. Cir. 2007), and In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
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`2010).
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`B.
`Petitioner’s construction of “concave” is inconsistent with the
`‘879 patent
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`Petitioner proposes construing “concave” so as “to encompass a prop
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`that extends inwardly from a housing.” Petition, p. 5. This construction is
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`inconsistent with the ‘879 patent for a number of reasons.
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`Petitioner’s construction is impermissibly broad. If “concave” were
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`construed as Petitioner proposes, it would read on any prop, regardless of
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`its shape, regardless of whether it is integral or not, and regardless of how
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`difficult and costly to manufacture. Such props are contrary to the
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`explicitly stated goals of the ‘879 patent, thus rendering the proposed
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`construction of “concave” impermissibly broad. See Ex parte Moller, Appeal
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`2010-012534 at p. 9 (BPAI 2010), citing In re ICON Health & Fitness, Inc., 496
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`F.3d 1374, 1379 (Fed. Cir. 2007), and In re Suitco Surface, Inc., 603 F.3d 1255,
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`1259 (Fed. Cir. 2010).
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`Further, Petitioner’s proposed construction of “concave” renders the
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`word superfluous and redundant in the claims. For example, claim 9 of the
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`’879 patent recites that “said plurality of concave props protrude inward.”
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`See Ex. 1001, claim 9. If “concave” means no more than simply extending
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`inwardly, as proposed by Petitioner, then the word “concave” is wholly
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`redundant to the explicit language of claim 9, because the claim already
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`explicitly states that the props protrude inward.
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`In fact, the Petitioner, itself, implicitly acknowledges the improper
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`breadth of its proposed construction and that “concave” means “curved”
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`by repeatedly using the terms concave and curved synonymously or
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`conflating the meaning of the terms. For example, the Petition states that
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`“it would have been obvious to a person of ordinary skill in the art to
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`modify the shape of the ribs in Ni et al. so that they would be concave
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`(curved).” Petition, p. 37 (emphasis added); see many other examples p. 14,
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`15, 19, 29, 32, 38, 41, 44, 45, and 49.
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`Accordingly, for at least the foregoing reasons, “concave” is properly
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`construed to require at least “curving inwards to form a recess.”
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`C.
`“Prop” requires “a structure that supports (i.e., props-up) one
`thing apart from another”
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`A person of ordinary skill in the art at the time of the ’879 patent
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`would have understood the broadest reasonable interpretation of the term
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`“prop” to require “a structure that supports (i.e., props-up) one thing apart
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`from another.”
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`The ’879 specification defines the function of the concave props as to
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`“prop up” the PCBA, stating that it “simplifies the manufacturing process
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`because the PCBA could be propped up by punched concave props instead
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`of uncontrollable flake spacer.” Ex. 1001 (’879 Patent), 5:43-45 (emphasis
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`added). Use of the word “prop” in the claims is a reference to this
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`function. The props are also described in the ’879 patent as supplanting the
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`flake spacer. Id. at 5:40-43. The flake spacer spaces the PCBA from the
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`housing. Id. at 1:58-59. Accordingly, any construction that does not require
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`the props to support (i.e., prop-up) at least a portion of one thing apart
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`from another, e.g., the PCBA from the housing, would be impermissibly
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`broad, and thus inconsistent with the ’879 patent.
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`Notably, the background of the ’879 patent acknowledges and
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`distinguishes other non-prop structures that protrude inward into the
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`housing. Figures 3 and 4 of the ’879 patent, reproduced below, show these
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`structures:
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`Non-prop
`recess
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`Neither the original examiner, nor the ‘879 patent, assert these
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`structures as props, because these structures (detents that press into the
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`flake spacer 33 to secure it to the housing 31) do not space the PCBA or the
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`flake spacer from the housing. A construction of “prop” that encompasses
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`structures that do not, at least partially, space things apart would
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`encompass these distinguished structures, and would be contrary to the
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`’879 patent. “It is not reasonable to read the claims as reading on a prior art
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`configuration which was expressly addressed and remedied by [the
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`patent].” Ex parte Moller, Appeal 2010-012534 (BPAI 2010), citing In re Am.
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`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), In re ICON Health
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`& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007), and In re Suitco Surface,
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`Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010).
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`Accordingly, a person of ordinary skill in the art at the time of the
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`’879 patent would have understood the broadest reasonable interpretation
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`of the term “prop” to require “a structure that supports (i.e., props-up) one
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`thing apart from another.”
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`V. DEFECTS IN THE PROPOSED GROUNDS OF
`UNPATENTABILITY
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`The Petition proposes 7 grounds of unpatentability for the ’879
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`patent. This section identifies reasons why all 7 of the grounds advanced
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`in the Petition are defective, and, thus, why the Petition itself should be
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`denied. Patent Owner reserves the right to further contest any of the
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`grounds of unpatentability set forth in the Petition later in this proceeding
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`for additional reasons other than those presented below.
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`
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`A. Grounds 1 and 3 are defective because Minneman does not
`teach “concave props” as recited in the claims
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`Ground 1 alleges that claims 1-4, 8-12, and 16 are anticipated under
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`35 U.S.C. § 102(e) by Minneman. Minneman describes two different
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`examples of “securement mechanisms” that function to secure the housing
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`and the circuit board sub-assembly together: stand-offs and captivating
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`indentations. Ex. 1003 (Minneman) at 10:43-61.
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`The stand-offs are described as “plastic studs, electrically non-
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`conductive rivets, screws, bolds [sic], studs, or electrically conductive ones,
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`etc., support and retain the circuit board 40 in the housing 25.” Id. at 10:48-
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`52. FIG. 4 from Minneman shows the stand-offs (45):
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`Ex. 1003 (Minneman), FIG. 4 (annotated)
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`The captivating indentations are not shown in the figures of Minneman,
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`and very little detail is given.
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`As a threshold matter, the Petition conflates the stand-offs and
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`captivating indentations described by Minneman into a single structure,
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`attempting to combine features of the captivating indentations with the
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`stand-offs to argue that the stand-offs are concave props. The Petition
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`states that “Minneman et al. discloses a ... plurality of stand-offs 45 (props).
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`Minneman et al. discloses that the plurality of props 45 can be captivating
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`indentations formed in the housing, which would be concave in nature.”
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`Petition, p. 7 (citations omitted). The stand-offs and the captivating
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`indentations, however, are described in Minneman as being two wholly
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`different structures. See id at 10:48-62. Combining the features of the
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`stand-offs and captivating indentations into a single structure, as the
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`Petitioner does in Grounds 1 and 3, is improper. The features of each
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`structure, the stand-offs and the captivating indentations, must be
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`analyzed separately. See CA, Inc. v. Simple.com, Inc., 780 F. Supp. 2d 196,
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`254 (E.D.N.Y. 2009) (“[W]hen making an anticipation determination, it
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`would be inappropriate to combine multiple listings/examples ... to meet
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`the requirement of a single claim.”) (citing Net MoneyIN v. Verisign, 545
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`F.3d 1359, 1370 (Fed. Cir. 2008).
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`Further, neither the stand-offs nor the captivating indentations
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`described by Minneman can be read, individually, as being the “concave
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`props” of the ’879 patent.
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`As noted above, the stand-offs are described as “plastic studs,
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`electrically non-conductive rivets, screws, bolds [sic], studs, or electrically
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`conductive ones, etc.” Id. at 10:48-52. FIG. 4 of Minneman (reproduced
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`above) shows the stand-offs as rectangular solids attached to the housing
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`and to the PCBA. None of these variations of stand-offs can be
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`characterized as “concave, ” as required by the claims, because none of
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`these variations can be described as “curving inward” nor do they “form a
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`recess,” such as a recess on the outer surface of the housing. See, Section
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`IV.A, supra.
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`Moreover, Minneman’s stand-offs suffer from the same
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`manufacturing difficulties the ‘879 patent sought to remedy. For example,
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`the background of the ‘879 patent states that the flake spacer, an additional
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`element added into the housing, “is not easy to...fabricate[] into the space
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`between the metallic conductive housing 11 and the PCBA 12.” Ex. 1001
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`(‘879 patent) at 1:60-62. The ‘879 patent states that the concave props being
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`integral with the housing “simplifies the manufacturing process because
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`the PCBA could be propped up by punched concave props instead of
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`uncontrollable flake spacer.” Id. at 5:43-45. The stand-offs, like the
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`uncontrollable flake spacer distinguished by the ‘879 patent (see ‘879 FIG.
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`4), are an additional element that is added into the housing and not easy to
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`be fabricated into the housing.
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` Accordingly, for at least these reasons, the stand-offs of Minneman
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`cannot be read as the concave props recited in the claims.
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`The captivating indentations of Minneman also cannot be read as the
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`concave props of the ’879 patent. The captivating indentations are not
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`shown in the figures, and Minneman does not describe their shape. The
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`captivating indentations cannot be characterized as “concave,” because
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`Minneman does not disclose that the captivating indentations are
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`“curving” as in “curving inward to form a recess.” See Section IV.A, supra.
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`Although the captivating indentations in Minneman are said to be formed
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`by “pushing or pressing on the outside of housing,” curved shapes do not
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`necessarily follow from these processes. Ex. 1003 (Minneman) at 10:55-56.
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`Rather, the shape depends on the shape of the presses and dies used.
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`Case IPR2013-00472
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`Indeed, the only examples of “captivating indentations” disclosed in
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`Minneman are described as “guides or detents.” Id. at 10:56. A detent is a
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`“locking piece of a mechanism.” Ex. 2003 (Collins English Dictionary), p. 4.
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`A guide is “any device that directs the motion of a tool or machine part.”
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`Id. at p. 5. Neither of these structures is a “prop,” which, as discussed
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`previously, requires at least “a structure that supports (i.e., props-up) one
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`thing apart from another.” See Section IV.A, supra. For example, nothing
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`in the function of a detent relates to propping-up one thing apart from
`
`another, and detents do not typically do so. Similarly, a guide can take
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`many forms. Nothing in the function of a guide relates to propping-up one
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`thing apart from another, and guides do not typically do so.
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`In fact, Minneman describes the function of the stand-offs, shown in
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`FIG. 4 as stand-offs 45 supporting the circuit board 40 apart from the
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`housing 25, as to “support and retain” the circuit board. Ex. 1003
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`(Minneman) at 10:51. By comparison, Minneman describes the function of
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`the captivating indentations as to “position and retain the subassembly 44,”
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`including the circuit board. Id. at 10:59. The choice of the alternative verb
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`Case IPR2013-00472
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`“position” supports the conclusion that Minneman does not disclose the
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`captivating indentations perform the “support” function of the stand-offs.
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`Notably, there are many structures that could be formed by pushing
`
`and pressing on the housing that cannot be characterized as concave props.
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`For example, consider the non-prop recess, discussed above, that are
`
`distinguished in background of the ‘879 patent. See, Section IV.A, supra.
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`Non-prop
`recess
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`
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`18
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`Minneman’s captivating indentations, as detents and guides, are two
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`additional examples of structures that cannot be characterized as concave
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`Case IPR2013-00472
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`props.
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`Accordingly, for at least these reasons, the captivating indentations
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`cannot be read as the “concave props” of the ‘879 claims.
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`Ground 3 alleges that claims 1-4 and 8 are obvious under 35 U.S.C. §
`
`103 over Minneman in view of AAPA. As discussed above, Minneman
`
`does not teach the “concave props” recited in the claims of the ’879 patent.
`
`The Petition does not allege that the AAPA of the ’879 patent teaches the
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`claimed “concave props.” Accordingly, as the AAPA does not address the
`
`deficiencies of Minneman discussed above with respect to Ground 1,
`
`Ground 3 is defective for at least the same reasons as Ground 1.
`
`Accordingly, Patent Owner requests that the Board deny Grounds 1
`
`and 3 of the Petition.
`
`B. Grounds 1 and 3 are 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
`
`Minneman’s stand-offs further do not meet the limitation of “said
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`PCBA is fixed by means of pressing of said plurality of concave props” in
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`19
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`Case IPR2013-00472
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`claims 1-4 and 8. As noted above, the stand-offs are described as “plastic
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`studs, electrically non-conductive rivets, screws, bolds [sic], studs, or
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`electrically conductive ones, etc.” Id. at 10:48-52. FIG. 4 of Minneman
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`(reproduced above) shows the stand-offs as rectangular solids attached to
`
`the housing and to the PCBA. Although each of these structures may
`
`retain the circuit board, they do so not by pressing the circuit board, but
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`rather by a mechanical attachment to the board, such as an adhesive, solder
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`connection, or mechanical retainer. Id. at 10:43-47.
`
`The citation by Petitioner to suggest the stand-offs retain the circuit
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`board “by mechanical interference, by friction fit, and/or by press fit,” is
`
`describing the operation of captivating indentations (i.e. – the guides or
`
`detents), not the stand-offs. See id. However, as previously discussed, the
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`stand-offs and captivating indentations are two separate structures, and
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`therefore importing features from the captivating indentations (e.g., the
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`alleged pressing on the PCBA) to the stand-offs is improper.
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`Accordingly, the stand-offs of Minneman do not disclose at least that
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`“said PCBA is fixed by means of pressing of said plurality of concave
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`20
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`Case IPR2013-00472
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`props” of claims 1-4 and 8. Therefore, Patent Owner respectfully requests
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`that the Board deny Ground 1 of the Petition for at least this further reason.
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`
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`Ground 3 alleges that the same claims as Ground 1 are unpatentable
`
`over Minneman in view of the AAPA of the ’879 patent. The Petition does
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`not allege that the AAPA of the ’879 patent teaches that “said PCBA is fixed
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`by means of pressing of said plurality of concave props” as recited in
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`claims 1-4 and 8. Accordingly, as the AAPA does not address the
`
`deficiencies of Minneman discussed above with respect to Ground 1,
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`Ground 3 is defective for at least the same reasons as Ground 1. Further, a
`
`person of ordinary skill in the art would have had no reason to combine
`
`Minneman with the AAPA.
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`Accordingly, Patent Owner requests that the Board deny Grounds 1
`
`and 3 of the Petition.
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`C. Ground 2 is defective because Takahashi does not teach
`“concave props”
`
`Ground 2 alleges that claims 1-4, 8-12 and 16 are obvious under 35
`
`U.S.C. § 103 over Minneman plus Takahashi. As discussed above,
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`Minneman does not teach the “concave props” recited in the claims.
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`21
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`Case IPR2013-00472
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`Takahashi does not cure this deficiency of Minneman, because the
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`structures alleged to be concave props in Takahashi are in fact convex, and
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`not concave (i.e., not forming a curved recess) from any surface.
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`
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`Takahashi describes an integrated circuit or “IC” card including a
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`“base card” held in place in the device by a number of “protrusions 32.”
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`Ex. 1006 (Takahashi), ¶ 0159. Fig. 4A from Takahashi shows the
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`protrusions 32:
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`Ex. 1006 (Takahashi), FIG. 4A (annotated)
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`Petitioner asserts “protrusions 32” as teaching the claimed concave
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`props. However, these “protrusions” are not concave. As previously
`
`discussed, concave means “curving inward to form a recess.” Takahashi’s
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`22
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`Case IPR2013-00472
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`protrusions are solid and curve outward from the sidewalls of IC receiving
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`portion 13. FIG. 4C from Takahashi shows a side view of the protrusions
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`32, confirming that they are solid:
`
`
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`Ex. 1006 (Takahashi), FIG. 4C (annotated)
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`As such, the protrusions 32 do not form a recess, and therefore are
`
`not concave.
`
`Accordingly, Takahashi does not teach at least the “concave props”
`
`recited in the claims of the ’879 patent. Thus, as Minneman also does not
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`teach at least “concave props” as discussed previously, Patent Owner
`
`requests the Board to deny Ground 2 of the Petition.
`
`D. Ground 2 is defective because a person of ordinary skill in
`the art would not have combined Minneman and Takahashi
`
`A person of ordinary skill in the art would have had no reason to
`
`combine the IC card design of Takahashi with the USB device of
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`Minneman beyond impermissible hindsight. Petitioner fails to identify a
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`23
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`Case IPR2013-00472
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`reason why a person of ordinary skill in the art would have combined the
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`two references, stating only that “concave shape is a matter of choice which
`
`a person of ordinary skill in the art would have found to be obvious.”
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`Petition, p. 14. Notably, the IC card receptacle of Takahashi and USB
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`device of Minneman have different constructions, and thus are faced with
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`different problems in their manufacture. The purposes and teachings of
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`Takahashi relating to its providing protrusions 32 are inapplicable to
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`Minneman’s USB drive. Therefore, there is no reason to combine the
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`references as Petitioner suggests.
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`Moreover, the concave shape of the claimed “concave props” is not a
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`matter of mere design choice obvious to a person of ordinary skill. There
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`are an infinite number of shapes that can be adopted. As discussed above,
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`the inventors of the ‘879 patent sought to provide space for additional
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`components i
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