UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case IPR2014-00150
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`PRELIMINARY RESPONSE
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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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case IPR2014-00150
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`PRELIMINARY RESPONSE
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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 IPR2014-00150
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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 ........................................................... 4
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`IV. CLAIM CONSTRUCTION ........................................................................... 5
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`A.
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`B.
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`"Fixed" is properly construed as "fastened securely in position" ........ 5
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`“Concave” requires “curving inward to form a recess” ....................... 9
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`V. DEFECTS IN THE PETITION ..................................................................... 15
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`VI. DEFECTS IN THE PROPOSED GROUNDS OF UNPATENTABILITY
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`A. Elbaz ........................................................................................................... 20
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`B. Grounds 1-4 are defective because the module of Elbaz (the alleged
`PCBA) is not “fixed” by the means for raising the module (the alleged
`concave props) ................................................................................................... 23
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`C. Ground 1 is defective because Elbaz does not disclose a “Universal
`Serial Bus (USB) memory plug”...................................................................... 25
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`D. Ground 1 is defective because Elbaz does not disclose a printed
`circuit board assembly (PCBA). ...................................................................... 27
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`E. Grounds 2-4 are defective because a person of ordinary skill in the
`art would not have combined Elbaz and the AAPA or Deng. ................... 29
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`F. Grounds 3 and 4 are defective because a person of ordinary skill in
`the art would not have combined Elbaz and Deng. .................................... 33
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`VII. CONCLUSION ......................................................................................... 36
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`Case IPR2014-00150
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`LIST OF EXHIBITS
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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”)
`2003
`Collins English Dictionary, p. 350 (2005)
`Erik Oberg et al., Machinery’s Handbook, 26th Edition, pp. 720-
`2004
`973 (2000)
`Oxford English Dictionary, p. 654 (2005)
`Webster’s New World Dictionary, p. 287 (1991).
`www.universetoday.com/82338/concave-lens; retrieved
`2/18/2014
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`2005
`2006
`2007
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`TABLE OF AUTHORITIES
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`Case IPR2014-00150
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`Page(s)
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`Cases
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`Intelligent Bio-Systems v. Illumina Cambridge
`IPR2013-00324 (Paper 19, 2013) ................................................ 2, 16, 17, 18, 19
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`Chi. Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC.
`677 F.3d 1361, 1369 (Fed. Cir. 2012) ................................................................. 7
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`Tempo Lighting Inc. v. Tivoli LLC.
`2014 U.S. App. LEXIS 2437 at (Fed. Cir. 2014) ............................................... 9
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`Innova/Pure Water v. Safari Water Filtration Sys.
`381 F.3d 1111, 1119 (Fed. Cir. 2004) ......................................................... 14, 27
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`In re Gurley
`27 F.3d 551, 53 (Fed. Cir. 1994) ....................................................................... 30
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`Winner Int’l Royalty Corp. v. Wang
`202 F. 3d 1340, 1349 n.8 (Fed. Cir. 2000) ....................................................... 30
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`DePuy Spine, Inc. v. Medtronic Sofamar Danek, Inc.
`567 F.3d 1314, 1327 (Fed. Cir. 2009) ............................................................... 30
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`Statutes
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`35 U.S.C. § 325(d) .............................................................................................. 2, 16
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`Rules and Regulations
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`37 C.F.R. § 42.107(a) ................................................................................................ 1
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`Case IPR2014-00150
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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 1-21. The Petition relies on two
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`different references and the alleged “Applicant Admitted Prior Art
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`(AAPA)” of the ’879 patent1 to propose four grounds of unpatentability: (1)
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`anticipation based on Elbaz (Ground 1), (2) obviousness based on Elbaz in
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`view of the AAPA of the ’879 patent (Ground 2), (3) obviousness based on
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`Elbaz in view of Deng (Ground 3), and (4) obviousness based on Elbaz and
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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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`Deng in view of the AAPA of the ’879 patent (Ground 4). The Petition is
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`deficient, and should be denied in whole, for at least the following reasons.
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`The present Petition for inter partes review of the ’879 patent follows
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`an earlier petition by the same real party in interest for inter partes review
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`of the same patent. See Case IPR2013-00472. The Board, in Intelligent Bio-
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`Systems v. Illumina Cambridge, recently denied institution on a second
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`petition for inter partes review that failed to provide any justification for its
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`filing, and failed to distinguish its cited references from the references cited
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`in an earlier petition. Intelligent Bio-Systems v. Illumina Cambridge, IPR2013-
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`00324, Paper No. 19 (2013) (citing 35 U.S.C. § 325(d)). The present Petition
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`mirrors the defective petition in Intelligent Bio-Systems by failing to provide
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`any justification for its filing, and failing to distinguish the cited references
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`from those cited in the earlier petition for inter partes review of the ’879
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`patent filed by Petitioner. Accordingly, the Board should treat the present
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`Petition similarly to the petition in Intelligent Bio-Systems, and deny
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`institution of the requested inter partes review.
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`Even assuming arguendo that the Petition is proper in light of these
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`deficiencies, the Petition also fails to establish a reasonable likelihood of
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`prevailing with respect to any of the proposed grounds for rejection for at
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`least the following reasons. First, none of the cited references, either alone
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`or in combination, teach or suggest that the concave props recited in all
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`claims. Second, none of the cited references, either alone or in combination,
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`teach or suggest that the PCBA is fixed as recited in all claims, as the
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`alleged PCBA from the reference relied on as teaching this feature (Elbaz)
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`is removable, and thus not fixed. Finally, the primary reference (Elbaz) fails
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`to disclose other critical limitations of all of the claims, and it would not
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`have been obvious to provide these limitations from Petitioner’s proposed
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`combinations.
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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 1-21 of the ‘879 patent for at least the reasons discussed
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`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. Because it is a memory device, the PCBA
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`includes a storage memory, such as a flash memory. Id. at 4:41-49. The
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`housing includes a plurality of orientated indentations formed by
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`punching on the housing. Id. at 2:55-57; See Fig. 6 ref. 511. The orientated
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`indentations facilitate the connection of the device to a female USB socket,
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`such as by receiving spring engagement mechanisms of the socket. Id. at
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`4:35-39. Punching the housing to form the orientated indentations creates a
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`plurality of concave props protruding inward into the interior of the
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`housing. Id. at 2:55-57, 4:28-32; See Fig. 6 ref. 512. The concave props are
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`operable to fasten the PCBA in position and to supplant the flake spacer in
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`forming a space between the PCBA and the housing. Id. at 2:50-52, 5:40-45.
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`The space resulting from removal of the flake spacer enables additional
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`components to be included within the USB housing. Id. at 2:6-9, 4:-53-56,
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`5:35-39. The ’879 patent states that the use of “punched concave props” to
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`fix the PCBA both “decreases the cost” and “simplifies the manufacturing
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`process” of the USB memory device versus prior methods. Id. at 2:39-40,
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`5:40-45.
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`IV. CLAIM CONSTRUCTION
`A.
`"Fixed" is properly construed as "fastened securely in
`position"
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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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`“fixed” to require, at least, “fastened securely in position.” This
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`construction is proper because (i) such a definition of “fixed” was generally
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`accepted in the art at the time; and (ii) any broader construction would be
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`inconsistent with the ’879 patent.
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`“Fixed” was generally accepted to mean “fastened securely in
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`position” at the time of the ’879 patent. For example, the Oxford English
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`Dictionary from 2005 defines “fixed” as “fastened securely in position.”
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`See Ex. 2005 (Oxford English Dictionary), p. 654.
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`Use of “fixed” to mean “fastened securely in position” is reinforced
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`throughout the ‘879 patent. For example, the ’879 patent describes the
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`concave props as replacing a prior art flake spacer used to fasten the PCBA
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`in position, in order to create a space within the housing. See Ex. 1001 (’879
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`Patent), 2:3-15, 2:40-41, 2:50. Moreover, the ’879 patent describes the
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`fastening performed by the flake spacer as stemming from the flake spacer
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`“fitting the PCBA 32 in the metallic conductive housing 31 tightly.” Id. at
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`2:5-6. Analogously, the concave props fasten the PCBA securely in position
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`by pressing on the PCBA. Id. at 4:23-26 and 5:2-4. While not necessary to
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`satisfy the claim limitation, the concave props are the only aspect described
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`in the ‘879 patent as fixing the PCBA and, in certain instances, the only
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`portion of the housing contacting the PCBA. Id. at claim 16.
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`To construe “fixed” more broadly than “fastened securely in
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`position” would be contrary to the ’879 patent. For example, in its asserted
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`grounds, Petitioner attempts to read “fixed” synonymously with merely
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`supporting the PCBA. However, the claims use the words “fixed” and
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`“support” as distinct concepts to describe distinct functions of the concave
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`props: fixing the PCBA and propping up the PCBA so that a space is
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`formed between the housing and the PCBA. In particular, dependent
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`claims 8, 16, 19 use the word “support” even though the independent
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`claims from which they depend already recite the word “fixed.” To read
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`fixed and support synonymously would improperly ignore the differences
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`between the independent and dependent claims. It is well established that
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`different words used in the claims are presumed to have different
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`meanings. Chi. Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361,
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`1369 (Fed. Cir. 2012).
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`To construe “fixed” more broadly than “fastened securely in
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`position” would also encompass prior art disclaimed in the original
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`prosecution. In particular, the applicant distinguished rib supports in Ni
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`(Ex. 2002 (Ni Publication)) that merely support the PCB off the bottom of
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`the housing, arguing that “the supports 356C and 357C do not correspond
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`to the claimed props since they do not actually fix the PCBA 110 in the
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`housing. Instead, PCB is fixed by ‘snap-coupling’ upper and lower
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`housing portions over the PCBA as described in lines 11-38 of col. 9 of the
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`Ni publication.” Ex. 2001 (’879 File History), p. 99. The examiner agreed,
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`and subsequently allowed the application. Figures 4A and 4B of the Ni
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`publication are reproduced below:
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`Ex. 2002 (Ni Publication), FIGS. 4(A) and 4(B)
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`To read “fixed” synonymously with supporting runs counter to this
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`prosecution history. “In claim construction, this court gives primacy to the
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`language of the claims, followed by the specification. Additionally, the
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`prosecution history, while not literally within the patent document, serves
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`as intrinsic evidence for purposes of claim construction. This remains true
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`in construing patent claims before the PTO.” Tempo Lighting Inc. v. Tivoli
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`LLC, 2014 U.S. App. LEXIS 2437 at 8 (Fed.Cir. 2014).
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`Thus, the Patent Owner’s proposed construction of “fixed” to be, at
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`least, “fastened securely in position,” is proper in light of the teachings of
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`the ’879 patent, and any broader construction would be impermissibly
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`broad.
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`B.
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`“Concave” requires “curving inward 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 require “curving inwards to form a recess,” such as curving
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`inwards to form a recess on the exterior of the housing. This construction
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`is proper because such a definition of “concave” (i) was generally accepted
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`in the art at the time; and (ii) is required by ’879 specification.
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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. 350. Webster’s New World
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`Dictionary from 1991 defines “concave” as “hollow and curved like the
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`inside half of a hollow ball.” See Ex. 2006 (Webster’s New World
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`Dictionary), p. 287.
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`In another example, the edition of the Machinery’s Handbook from
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`2000 includes the following illustration of a concave structure:
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`Curving
`inwards to
`form a recess
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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 shape not only curves
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`inward, but forms a recess in the surrounding surface. The label
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`“Concave” appears in the original figure.
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`To further illustrate the point, the figure below illustrates a concave
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`solid (labeled “Concave” in the original figure) in contrast with a convex
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`solid (labeled “Convex” in the original figure).
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`Recess formed by
`inward curve
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`Ex. 2007 (universetoday.com) (annotated).
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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 specification. The ‘879 patent states
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`that “Preferably, the plurality of concave props are formed by means of
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`punching on the housing.” Ex. 1001 (’879 Patent), 3:15-16 (emphasis
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`added). While the specification does not limit the concave props to being
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`formed specifically by “punching,” it does state that “Certainly, the
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`pulurality of orentated indentations and concave props are integrally
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`formed . . . on the housing.” Id. at 2:55-57 (emphasis added). The term
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`“concave” refers to the recesses formed on the exterior of the housing from
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`punching, pressing and other processes for integrally forming the concave
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`props on the housing. Figure 6 of the ‘879 patent, reproduced below,
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`illustrates the recess.
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`Recess formed by
`the inward curve of
`concave prop 512
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`Ex. 1001 (‘879 Patent), Fig. 6 (annotated)
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`The concave props are concave, because they curve inward from the
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`exterior surface of the housing to form a recess.
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`Punching the concave props enables the orientated indentations and
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`concave props to be formed simultaneously using the same manufacturing
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`process. Id. at 4:28-32. The specification also states that the goal of
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`punching the concave props is to “decrease the cost” and “simplify the
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`manufacturing process” for USB memory devices. Id. at 2:39-40.
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`A construction of “concave” was initially adopted in the related
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`proceeding IPR2013-00472 as “curving inward” and omitting “to form a
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`recess.” This construction, however, is incorrect because it can be read to
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`cover shapes that those of skill in the art would consider to be convex, not
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`concave. For example, using the figure from above, the solid labeled
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`“Concave” can be accurately described as “curving inward,” because it has
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`a surface that curves inward from where the surface would be if it were
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`flat. The result is a recess adjacent the concave surface. However, the
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`solid labeled “Convex” can also be described as “curving inward,” because
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`one surface curves inward toward the shape labeled “Concave.” Yet, the
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`solid labeled “Convex” is not concave and has no concave surfaces. Thus,
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`the construction of “concave” adopted in IPR2013-00472 cannot be correct
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`because it is so broad as to encompass the convex shape shown below.
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`Curving inward
`toward the
`Concave shape
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`Curving inward
`to form a recess
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`Ex. 2007 (universetoday.com) (annotated)
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`As a result, the prior construction adopted in IPR2013-00472
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`improperly reads the term “concave” out of the claims. Innova/Pure Water
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`v. Safari Water Filtration Sys., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (reading
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`claim terms out is improper and “all claim terms are presumed to have
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`meaning in a claim”).
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`The Petitioner’s use of “concave” is even broader, as it asserts
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`concave to “encompass a prop that extends inwardly from a housing.” Not
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`only does this construction deviate from the generally accepted meaning of
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`concave, it would read on any shape, concave, convex or neither concave or
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`convex. Thus, the Petitioner’s construction is wrong.
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`Therefore, the Patent Owner’s proposed construction of “concave” to
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`be, at least, “curving inward to form a recess,” is proper in light of the
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`teachings of the ’879 patent, and any broader construction would be
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`impermissibly broad
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`V. DEFECTS IN THE PETITION
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`A previous petition for inter partes review of the ’879 patent (the
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`“Previous Petition”) was filed on July 29, 2013 by the same Petitioner (PNY
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`Technologies, Inc.) as the present Petition. See Case IPR2013-00472, Paper
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`No. 1 (2013). Two grounds from the Previous Petition were instituted. The
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`present Petition does not provide any justification for its filing in light of
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`the Previous Petition, and does not distinguish its cited references from
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`those cited in the Previous Petition. Accordingly, institution of inter partes
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`review on the Petition should be denied, as the Board has done previously
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`when presented with similar facts.
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`In Intelligent Bio-Systems v. Illumina Cambridge, the Board recently
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`ruled against institution of a second petition because grounds from a
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`previous petition on the same patent were previously instituted. Intelligent
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`Bio-Systems, p. 7. The Board noted that it has discretion as to whether to
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`institute inter partes review, noting that Congress mandated that the Board
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`“may not institute review unless certain conditions are met,” not “that an
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`inter partes review must be instituted under certain conditions.” Id. at 4
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`(emphasis in original). The Board stated that 35 U.S.C. § 325(d) guides this
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`discretion, stating that the Board may “take into account whether, and
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`reject the petition or request because, the same or substantially the same
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`prior art or arguments previously were presented to the Office.” Id. at 6
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`(quoting 35 U.S.C. § 325(d)). The Board found that the petitioner did not
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`“provid[e] any justification for filing the instant petition, other than its
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`representation that it became aware of the relevance of” a particular
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`reference cited in the petition “after the filing of the” previous petition.
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`Intelligent Bio-Systems, p. 6. Further, the teachings of the new of the new
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`prior art reference applied to the claims were “substantially the same” as
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`those presented in the previous petition. Id. Weighing these factors, the
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`Board exercised its discretion and denied institution of inter partes review
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`on the petition. Id. at 8.
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`The present Petition is defective for the same reasons as the petition
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`in Intelligent Bio-Systems. First, the Petition presents additional grounds of
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`unpatentability based on the Elbaz and Deng references. Petition, pp. 3-4.
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`The Previous Petition presented several grounds of unpatentability based
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`on references other than Elbaz and Deng, specifically the Minneman,
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`Wang, Ni, and Takahashi references. See Previous Petition, p. 3-4. The
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`Elbaz and Deng references both describe USB devices similar to those
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`described in Minneman, Wang, Ni and Takahashi. Petitioner has not
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`provided any analysis distinguishing the teachings of Elbaz and Deng from
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`those relied on from the Minneman, Wang, Ni, and Takahashi in the
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`Previous Petition. Accordingly, the Elbaz and Deng references are
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`substantially similar to the references presented in the Previous Petition,
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`and the Board should weigh this against institution of inter partes review as
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`it did in Intelligent Bio-Systems. See Intelligent Bio-Systems, p. 8.
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`Further, the Petition presents grounds and arguments similar to those
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`presented in the Previous Petition. For example, the Previous Petition
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`presents an anticipation ground based on Minneman, and obviousness
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`grounds based on Minneman in combination separately with the AAPA
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`and another reference (Takahashi). Similarly, the present Petition presents
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`essentially the same grounds, an anticipation ground based on Elbaz, and
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`obviousness grounds based on Elbaz in combination separately with the
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`AAPA and another reference (Deng). Petitioner makes no attempt to
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`explain the need for these additional grounds, and provides no rationale
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`distinguishing them from the similar grounds presented in the Previous
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`Petition. Accordingly, the grounds presented in the Petition are
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`substantially similar to the grounds presented in the Previous Petition, and
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`the Board should weigh this against institution of inter partes review as it
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`did in Intelligent Bio-Systems. See Intelligent Bio-Systems, p. 8.
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`Further still, the Petition does not provide any justification for its
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`filing in light of the Previous Petition. In Intelligent Bio-Systems, the Board
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`found that the petition did not justify its filing even though the petitioner
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`stated that the petition was filed because that it had not become aware of
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`the cited prior art reference until after filing of the first petition. See id. at 6-
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`8. The present Petition does not even contain such a justification, and
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`Case IPR2014-00150
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`therefore the Board should weigh this against institution of inter partes
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`review as it did in Intelligent Bio-Systems.
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`Finally, the additional claims challenged by the Petition could have
`
`been challenged in the Previous Petition. Such serial challenges place
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`undue additional burden on the Patent Owner, and by extension the Board,
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`and should be denied.
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`In particular, the additional claims challenged in the Petition (claims
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`5-7, 13-15, and 17-21) all include limitations related to an LED indicator
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`included in the USB memory plug. When the Previous Petition was filed,
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`Petitioner was aware of multiple references including teachings similar to
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`the Deng reference applied to these LED indicator limitations. For
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`example, the Ni reference cited in the Previous Petition includes disclosure
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`of an LED indicator similar to that described in Deng. See, e.g., Case
`
`IPR2013-00472, Ex. 1005 (Ni), 12:28-29. Further, the Ni publication cited on
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`the face of the ’879 patent and used during prosecution to address the LED
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`indicator limitations also includes similar disclosure to Deng. See, e.g., Ex.
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`2002 (Ni Publication), ¶ 68. Petitioner, thus, was aware of multiple
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`references that were available against the claims, including LED indicator
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`limitations, when the Previous Petition was filed, yet has not indicated why
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`Deng is different or special. By delaying the presentation of these grounds,
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`Petitioner attempts to give the present Petition the appearance of
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`addressing new issues in an effort to avoid its denial. The Board should
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`reject this end-run around the rules and decline to institute an inter partes
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`review on the present Petition.
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`VI. DEFECTS IN THE PROPOSED GROUNDS OF
`UNPATENTABILITY
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`The Petition proposes 4 grounds of unpatentability for the ’879
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`patent. This section identifies reasons why all 4 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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`The Petition relies on Elbaz as the base reference for all 4 grounds of
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`unpatentability. Accordingly, a brief overview of Elbaz may be inciteful.
`
`A.
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`Elbaz
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`Elbaz describes a “dongle which is intended to be connected to a port
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`of a telecommunications device.” Ex. 1003 (Elbaz), Title. The dongle is not
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`a USB memory device. Rather, it is a security dongle of a type used in “the
`
`protection of data, access to the Internet, identification, electronic
`
`commerce, on-line payment, etc.” Id. at ¶ 0002. Therefore, the majority of
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`Elbaz’s disclosure concerns manners of adapting its security dongle to
`
`work in a USB.
`
`One embodiment includes a USB adapter into which an integrated
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`circuit “module” of the security dongle can be inserted and removed. Id. at
`
`¶ 0060. Examples of the module include a subscriber identification module
`
`(SIM) card or other integrated circuit in accordance with ISO 7816, entitled
`
`Identification Cards – Integrated Circuit Cards. Id. at ¶ 0066. The USB
`
`adapter includes a “means 516 for raising the module” running along the
`
`entire length of the bottom of the adapter, and a “guidance means 515.” Id.
`
`at ¶ 0061. FIG. 10C of Elbaz shows the means 516 for raising the module
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`and the guidance means 515 in relation to the module 5:
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`Case IPR2014-00150
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`Guidance
`means 515
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`Module 5 inserted
`into adapter
`
`
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`Means 516
`for raising
`
`Ex. 1003 (Elbaz), FIG. 10C (annotated)
`
`The adapter also includes a locking means separate from the means
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`516 for raising and the guidance means 515. The locking means is not
`
`shown in the figures of Elbaz, and is described as “means (not shown) of
`
`locking the module 5 or the part 51, in the inserted position in the adaptor,
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`consisting for example of a stop disposed at the bottom of the connector.”
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`Id. at ¶ 0060. The module is intended to be easily inserted and withdrawn
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`from the adapter, as Elbaz states that the module is “removable in order
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`possibly to be replaced by another module.” Id. at ¶ 0060. FIGs. 10A-C
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`from Elbaz shows the module 5 being inserted into the adapter:
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`Case IPR2014-00150
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`Ex. 1003 (Elbaz), Figs. 10A – 10C
`
`
`
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`B. Grounds 1-4 are defective because the module of Elbaz (the
`alleged PCBA) is not “fixed” by the means for raising the module
`(the alleged concave props)
`
`Claim 1 et seq. and 17 et seq. require “wherein said PCBA is fixed by
`
`means of pressing of said plurality of concave props.” Claim 9 et seq.
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`requires the “plurality of concave props protrude inward to fix said
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`PCBA.” As discussed above, “fixed” means at least “fastened securely in
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`position.”
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`The Petition alleges that the means 516 for raising described in Elbaz
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`are concave props, and that the module (the alleged PCBA) is “held (fixed)
`
`in position between the means 516 and the guidance means 515.” Petition
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`at 8. This interpretation of Elbaz is incorrect because Elbaz states that its
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`module is held in position by a “means (not shown) of locking the module
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`Case IPR2014-00150
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`5 or the part 51, in the inserted position in the adaptor.” Ex. 1003 (Elbaz), ¶
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`0060. Accordingly, it is this means of locking, and not the means 516 for
`
`raising or guidance means 515, that fastens the module securely in position.
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`There is nothing in Elbaz that says the means of raising fastens the
`
`module securely in position – to the contrary, Elbaz describes that the
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`means for raising and guidance means specifically allow the module to
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`move axially in the adapter, because the module is “removable in order
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`possibly to be replaced by another module.” Id. at ¶ 0060. See also FIGS.
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`10A-10C (showing the module being moved axially). Thus, Elbaz’s module
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`is not “fastened securely in position” by pressing, if any, of the means for
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`raising on the module, but is rather, intentionally, allowed to move axially
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`in the adapter to allow the module to be removed.
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`Neither the AAPA nor Deng disclose a concave prop, and thus
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`cannot remedy this deficiency. Moreover, Elbaz’s teaching that the module
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`be removable teaches away from modifying the means for raising to fasten
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`the module in position.
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`Therefore, Elbaz does not disclose the “PCBA is fixed by means of
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`pressing of said plurality of concave props” as recited in claims 1 et seq.
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`Case IPR2014-00150
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`and 17 et seq. or that the “plurality of concave props protrude inward to fix
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`said PCBA” of claim 9 et seq.
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`Accordingly, because Elbaz does not teach or suggest at least that the
`
`PCBA is fixed by the concave props as required by all claims of the ’879
`
`patent, Grounds 1-4 are defective and should not be instituted.
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`C. Ground 1 is defective because Elbaz does not disclose a
`“Universal Serial Bus (USB) memory plug”
`
`All claims of the ‘879 patent require a “USB memory plug.” Elbaz
`
`describes a “dongle which is intended to be connected to a port of a
`
`telecommunications device.” Ex. 1003 (Elbaz), Title. The dongle is not a
`
`USB memory plug. Rather, it is a device of a type used in “the protection
`
`of data, access to the Internet, identification, electronic commerce, on-line
`
`payment, etc.” Id. at ¶ 0002. The dongle includes a “module” said to be
`
`based on a modified subscriber identification module (SIM) minicard or
`
`other integrated circuit in accordance with ISO 7816, entitled Identification
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`Cards – Integrated Circuit Cards. Id. at ¶¶ 0012, 0066. There is no
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`disclosure in Elbaz of its module containing or being used as a memory. In
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`fact, the terms “memory” and “storage” never appear in the text of Elbaz.
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`See id. at ¶¶ 1-69. While current SIM cards often include flash memory,
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`Case IPR2014-00150
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`Petitioner has made no showing that as of the effective filing date of the
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`‘879 patent SIM minicards or integrated circuits in accordance with ISO
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`7816 had included flash or any read/write memory, nor any showing that
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`the form factor of a SIM card at the time of the effective filing date of the
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`‘879 patent presented the same challenges as the form factor of a memory
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`device at the same time. Indeed, SIM cards at the relevant time were much
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`thinner than memory circuits. Similarly, Petitioner has made no showing
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`that the SIM standard or the ISO 7816 requires any read/write memory.
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`To the extent the Petitioner contends a memory is inherent in Elbaz’s
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`dongle to st
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