Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 8
`
`
`
` Entered: April 28, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2014-00150
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 8
`
`
`
` Entered: April 28, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2014-00150
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`I.
`
`INTRODUCTION
`
`PNY Technologies, Inc. (“PNY”) filed a Petition (“Pet.,” Paper 1)
`
`requesting inter partes review of claims 1-21 of U.S. Patent No. 7,518,879
`
`(“the ’879 Patent”). Patent Owner, Phison Electronics Corp. (“Phison”),
`
`filed a Preliminary Response thereto (“Prelim. Resp.,” Paper 6).
`
`Subsequently, the parties filed a joint motion for joinder with Case IPR2013-
`
`00472 (Paper 7, “Mot.”) on March 19, 2014. We have jurisdiction under 35
`
`U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides:
`
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`We are persuaded that the information presented in the Petition and
`
`Preliminary Response demonstrates that there is a reasonable likelihood that
`
`PNY will prevail in challenging claims 1-21 as unpatentable under
`
`35 U.S.C. § 103. Pursuant to 35 U.S.C. § 314, we hereby authorize an inter
`
`partes review to be instituted as to claims 1-21 of the ’879 Patent.1
`
`
`
`
`
`
`
`1 In a decision being entered concurrently, the joint motion for joinder is
`granted, and this proceeding is joined with Case IPR2013-00472.
`
`2
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`A.
`
`Related Matters
`
`PNY indicates (Pet. 2) that a complaint alleging infringement of the
`
`’879 Patent was filed on November 15, 2012, in a case titled Phison
`
`Electronics Corp. v. PNY Technologies, Inc., Civil Action No. 1:12-cv-
`
`01478-GMS, in the U.S. District Court for the District of Delaware. The
`
`’879 Patent also is the subject of a pending inter partes review proceeding,
`
`challenging claims 1-4, 8-12, and 16, filed by PNY and instituted on
`
`February 4, 2014 (Case IPR2013-00472).
`
`B. The Invention of the ’879 Patent (Ex. 1001)
`
`The invention of the ’879 Patent relates to a Universal Serial Bus
`
`(USB) memory device. Ex. 1001, Abs. As context for Figures 5 and 6,
`
`reproduced below, the indicated portion of the USB connector illustrated
`
`would be part of the “male” USB connector that is inserted into a “female”
`
`USB socket.
`
`Inserted portion
`
`Figs. 5 and 6 illustrate a USB memory apparatus.
`
`3
`
`
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`The USB memory apparatus includes housing 51 having a plurality of
`
`orientated indentations 511 and a plurality of concave props 512, wherein
`
`the plurality of orientated indentations facilitates the USB memory apparatus
`
`to be connected through insertion into the female USB socket. Ex. 1001,
`
`4:14-27. The apparatus also includes print circuit board assembly (PCBA)
`
`52 disposed in the housing with end base 54, wherein the PCBA is fixed by
`
`means of pressing of the plurality of concave props 512 and forms space 53
`
`between the housing and the PCBA. Id.
`
`
`
`
`
`C.
`
`Challenged Claims
`
`
`
`PNY challenges independent claims 1, 9, and 17, as well as dependent
`
`claims 2-8, 10-16, and 18-21. Claim 1 (with emphasis added) is reproduced
`
`below:
`
`1. A Universal Serial Bus (USB) memory plug,
`comprising:
`
`a housing having a plurality of orientated indentations
`and a plurality of concave props, wherein said plurality of
`orientated indentation facilitates said USB memory plug to be
`connected while said USB memory plug is inserted into a
`female USB socket; and a print circuit board assembly (PCBA)
`disposed in said housing, wherein said PCBA is fixed by means
`of pressing of said plurality of concave props, and a space is
`formed between said housing and said PCBA.
`
`
`
`D. Prior Art
`
`PNY refers to the following prior art references:
`
`
`
`4
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`Elbaz
`Deng
`
`
`
`US 2004/0259423 A1 December 23, 2004
`US 6,829,672 B1
`December 7, 2004
`
`Ex. 1003
`Ex. 1004
`
`Admitted Art – the Background of the Invention section of the ’879
`Patent (Ex. 1001, 1:41-52; Fig. 1; 1:10-2:26).
`
`
`
`E. Asserted Grounds of Unpatentability
`
`PNY challenges the patentability of claims 1-21 of the ’879 Patent
`
`based on the following asserted grounds of unpatentability:
`
`Reference(s)
`
`Basis
`
`Claims challenged
`
`Elbaz
`
`§ 102
`
`1, 8, 9, and 16
`
`Elbaz and Admitted Art
`
`§ 103
`
`1, 2, 8-10, and 16
`
`Elbaz and Deng
`
`§ 103
`
`1, 3-9, and 11-21
`
`Elbaz, Deng and
`Admitted Art
`
`
`§ 103
`
`2 and 10
`
`II. ANALYSIS
`
`A. Claim Construction
`
`As a first step in our analysis for determining whether to institute a
`
`trial, we determine the meaning of the claims. In an inter partes review,
`
`claim terms in an unexpired patent are given their broadest reasonable
`
`construction in light of the specification of the patent in which they appear.
`
`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard,
`
`claims are to be given their broadest reasonable interpretation consistent
`
`with the specification, and the claim language should be read in light of the
`
`5
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`specification, as it would be interpreted by one of ordinary skill in the art.
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`
`The sole contested claim term in dispute is “concave prop,” recited in
`
`independent claims 1, 9, and 17. PNY argues that the broadest reasonable
`
`interpretation of concave “should be construed herein to encompass a prop
`
`that extends inwardly from a housing.” Pet. 5. PNY argues that this
`
`construction is consistent with Phison’s alleged use of the term and the
`
`disclosure of the ’879 Patent Specification. Id. at 5-6. Phison disputes such
`
`a construction, arguing instead that concave means “curving inwards to form
`
`a recess.” Prelim. Resp. 9-15. We are not persuaded that either party has
`
`provided the broadest reasonable interpretation of “concave prop,”
`
`consistent with the Specification, as discussed below.
`
`With respect to “concave,” PNY’s proposed interpretation, Pet. 5,
`
`reads out the topology inherent to concavity. A prop that “extends inwardly
`
`from a housing” can have any topology, but the recitation that the props are
`
`“concave” require a curving aspect to the props. Prelim. Resp. 9-10
`
`(providing a dictionary definition). Phison’s proposed interpretation
`
`achieves that aspect by interpreting “concave” as “curving inwards.” We are
`
`persuaded, however, that Phison unduly narrows the interpretation by
`
`requiring that “concave” also “form[s] a recess.” Prelim. Resp. 9. The ’879
`
`Specification does not support Phison’s narrow interpretation.
`
`Phison quotes language from the ’879 Patent Specification that
`
`implies that the concave props are “integrally formed by means of punching
`
`the housing,” Prelim. Resp. 11; Ex. 1001, 2:55-57. The Specification,
`
`however, also provides that “[i]n practice, the housing 51 is usually made
`
`6
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`from a metallic conductive material . . . and the plurality of concave props
`
`512 can be formed simultaneously by means of punching the housing 51.”
`
`Ex. 1001, 4:28-32 (emphasis added). This language makes clear that the
`
`props are not required to be made by punching the housing. Additionally,
`
`the independent claims all are directed to USB memory plugs, and not
`
`methods for their manufacture, so we must construe the claim terms by their
`
`structures and not by how they were formed. Thus, the topological aspect of
`
`the claim term is met by interpreting “concave” as “curving inwards from a
`
`housing.” We conclude that such a limitation can be met based on the shape
`
`of an element, such that the particular element need not have a recess.
`
`Phison also argues that the construction of “concave” determined in
`
`Case IPR2013-00472 is incorrect because it can be read to cover shapes that
`
`are convex, not concave. Prelim. Resp. 13-15. See PNY Tech., Inc. v.
`
`Phison Elec. Corp., IPR2013-00472, slip op. at 6-7 (PTAB Feb. 4, 2014)
`
`(Paper 10), reh’g denied (Paper 16). However, the concave shape presented
`
`by Phison, Prelim. Resp. 14, cannot act as a prop, as discussed below. The
`
`portion that acts as a prop is the portion that extends inwardly from the
`
`housing. The Specification of the ’879 Patent refers to these as concave
`
`props (Ex. 1001, 4:28-32), and the inventors in the ’879 Patent are permitted
`
`to be their own lexicographers. As we conclude that the formation of the
`
`concave props need not include punching the housing, we further conclude
`
`that “concave” need not require the formation of a recess.
`
`With respect to “prop,” neither party proffers an interpretation, but the
`
`Board has found previously that a “prop” means “a structure that supports.”
`
`See PNY Tech., Inc. v. Phison Elec. Corp., IPR2013-00472, slip op. at 7-8
`
`7
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`(PTAB Feb. 4, 2014) (Paper 10). Thus, we are persuaded that a “prop”
`
`means “a structure that supports,” for the same reasons discussed in that
`
`decision, and that a “concave prop” means “a structure curving inwards from
`
`a housing providing support.”
`
`Additionally, Phison contends that the Specification requires “fixed”
`
`be interpreted as “fastened securely in position.” Prelim. Resp. 5. Phison
`
`goes on to argue that such a definition was generally accepted in the art at
`
`the time of invention, and that any broader construction would be
`
`inconsistent with the specification. Id. We agree with Phison on the
`
`construction of the claim term, but are not persuaded by Phison’s implicit
`
`disapproval of PNY’s reading of the claim term “fixed.” Id. at 6. Phison
`
`argues that “Petitioner attempts to read ‘fixed’ synonymously with merely
`
`supporting the PCBA.” Id. However, we are not persuaded that the terms
`
`“support” and “fixed” must be mutually exclusive, as Phison suggests. Id. at
`
`6-9. Rather, we interpret the use of “support” in claims 8, 16, and 19, in the
`
`context of those claims, as discussed further below. Thus, we agree with
`
`Phison that the meaning of “fixed” is properly “fastened securely in
`
`position.”
`
`B. Alleged Defects in the Petition
`
`Phison argues that the present Petition does not provide any
`
`justification for its filing in light of the previous petition (Case IPR2013-
`
`00472), and does not distinguish its cited references from those cited in the
`
`previous petition. Id. at 15. Phison cites Intelligent Bio-Systems v. Illumina
`
`Cambridge, IPR2013-00324, slip op. at 5-7 (PTAB Nov. 21, 2013) (Paper
`
`19), for the proposition that an inter partes review should be denied because
`
`8
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`the instant Petition fails to distinguish the grounds cited therein from the
`
`grounds cited in the previous petition. Id. at 15-17. We are not persuaded
`
`by Phison’s arguments.
`
`The Intelligent Bio-Systems case is unavailing to Phison because the
`
`facts of that proceeding and the instant proceeding are quite different. In
`
`IPR2013-00472, only claims 1-4, 8-12, and 16 were challenged in proposed
`
`grounds, and in the instant Petition, all of claims 1-21 are challenged in the
`
`proposed grounds. In Intelligent Bio-Systems, the same claims were the
`
`subject of grounds in both petitions, and the disclosures of all of the cited
`
`references were determined to be similar. Intelligent Bio-Systems, slip op. at
`
`*5-6. In contrast, it is evident that Elbaz (cited in this proceeding) and
`
`Minneman (cited in IPR2013-00472), for example, have different
`
`disclosures because they are applied to different sets of claims. See, for
`
`example, claim 5 of the ’879 Patent, which recites, in part, “a LED
`
`indicator.” As such, we are persuaded that it is not necessary, under the
`
`present facts, for the instant Petition to distinguish the teachings of the cited
`
`references from those disclosed and discussed in the previous petition.
`
`Phison also argues that “[s]uch serial challenges place [an] undue burden on
`
`the Patent Owner” (Prelim. Resp. 19), but in light of the joint motion for
`
`joinder, discussed above, we are not persuaded that that is the case here.
`
`
`
`C. Grounds of Unpatentability
`
`i)
`
`Anticipation by Elbaz
`
`PNY asserts that claims 1, 8, 9, and 16 of the ’879 Patent are
`
`anticipated by Elbaz under 35 U.S.C. § 102 (b). Pet. 6-10. Elbaz is directed
`
`9
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`to a dongle having a module with an integrated circuit chip connected to a
`
`contact area flush with the module. Ex. 1003 ¶ 0001. Figures 10A, 10B,
`
`and 10C of Elbaz are reproduced below:
`
`
`
`Figs. 10A, 10B, and 10C of Elbaz illustrate one embodiment of the dongle.
`
`Elbaz discloses, in a third embodiment, that the dongle has adaptor
`
`514 that can be plugged into a USB port of a computer. Id. at ¶ 0003. Elbaz
`
`also discloses that the adaptor receives module 5 through guiding means 515
`
`that may be ribs and work in concert with a locking means to maintain the
`
`module in the inserted position. Id. at ¶ 0060. Elbaz continues in that
`
`“[t]hese locking means do not necessarily lock the module in the adaptor
`
`definitively; the module is preferably removable in order possibly to be
`
`replaced by another module.” Id.
`
`The adaptor also includes openings 512 that are oriented indentations
`
`that cooperate with locking blades of a USB port receptacle to hold the
`
`adaptor. Id. at ¶¶ 0048, 0049, 0054. Elbaz also discloses that the adaptor:
`
`10
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`also comprises means 516 for raising the module 5 or the part
`51 so that the contact areas 28 are in contact with the
`connection lugs 32 when the dongle 1 consisting of the adaptor
`plus module assembly is inserted in the port 3: these means 516
`can be ribs situated at the base of the connector 514 or on the
`sides and thus cooperate with the guidance means 515. The
`guidance means 515 of the module then also ensure the
`positioning of the module at the correct height.
`
`Id. at ¶ 0061 (emphasis added). Figure 10C of Elbaz illustrates that a space
`
`is formed between the module and the adaptor housing, both above and
`
`below the housing, as illustrated by PNY. Pet. 8.
`
`
`
`We note that Elbaz also provides that:
`
`The module 5 obtained using a method of manufacturing a chip
`card 29 and depicted in FIG. 1 is composed of a plastic module
`body 27 in which there is embedded an integrated circuit chip
`connected to contact areas 28 flush with the surface of the said
`module 5 and comprising at least four contact areas for
`supplying current to the chip, communicating digital data and
`earthing.
`
`Ex. 1003 ¶ 0011. The module, however, is not necessarily the same as the
`
`claimed “printed circuit board assembly.” As illustrated in figure 1 of Elbaz,
`
`the integrated circuit chip is integrated into the chip card material and there
`
`does not appear to be any printed circuit board.
`
`Phison argues that Elbaz is directed to a “dongle” and that a dongle is
`
`not a USB memory device. Prelim. Resp. 20-21. Phison also notes that “the
`
`majority of Elbaz’s disclosure concerns manners of adapting its security
`
`dongle to work in a USB.” Id. at 21. We agree. Elbaz does not disclose a
`
`“USB memory plug,” as required by independent claims 1 and 9. Elbaz
`
`provides that the purpose of the dongle is “the protection of data,” (Ex. 1003
`
`11
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`¶ 0002), and the dongle may include memory (id. at ¶ 0066), but it does not
`
`disclose a “USB memory plug,” as that claim term would have been
`
`understood in the context of the specification. See Ex. 1001, 1:41-52. We
`
`further agree with Phison (Prelim. Resp. 25-26) that to the degree that Elbaz
`
`discloses a memory, that memory could easily be read only memory (ROM)
`
`and would not comport with an ordinarily skilled artisan’s understanding of
`
`a “USB memory plug.”
`
`
`
`Given this deficiency in Elbaz, we are persuaded that Elbaz cannot
`
`anticipate the subject matter of claims 1, 8, 9, and 16, and further not
`
`persuaded that PNY has shown a reasonable likelihood that it will prevail in
`
`challenging 1, 8, 9, and 16 of the '879 Patent as anticipated under 35 U.S.C.
`
`§ 102 by Elbaz.
`
`
`
`ii) Obviousness over Elbaz and Admitted Art
`
`PNY also asserts that claims 1, 2, 8-10, and 16 would have been
`
`obvious over Elbaz in view of the Admitted Art. Pet. 11-19. Having
`
`asserted claims anticipated by Elbaz, PNY allows that Elbaz may be
`
`supplemented by teachings of the Admitted Art, namely use of a “printed
`
`circuit board assembly,” and that it was well known for the housing to be
`
`formed of a metallic conductive material. Id. at 11. However, even
`
`accepting these teachings of the Admitted Art, this ground of unpatentability
`
`does not cure the deficiencies of Elbaz noted above. PNY argues that the
`
`device in Elbaz “includes memory,” and it would have been obvious to
`
`fashion the module as a printed circuit board assembly,” (id. at 12), but does
`
`12
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`not provide any discussion of whether it would have been obvious to fashion
`
`the device as a USB memory plug.
`
`Accordingly, we are not persuaded that PNY has shown a reasonable
`
`likelihood that it will prevail in challenging 1, 2, 8-10, and 16 of the '879
`
`Patent as obvious over Elbaz and the Admitted Art under 35 U.S.C. § 103.
`
`
`
`iii) Obviousness over Elbaz and Deng
`
`PNY also asserts that claims 1, 3-9, and 11-21 of the ’879 Patent
`
`would have been obvious over Elbaz and Deng. Pet. 20-38. Per our prior
`
`discussion above, we are persuaded that Elbaz discloses all of the elements
`
`of claims 1 and 9, with the exception of the limitation a “USB memory plug”
`
`and a “printed circuit board assembly.” PNY argues that it would have been
`
`obvious to ordinary skilled artisans to have modified the device in Elbaz, in
`
`view of Deng, to include a printed circuit board assembly, a light-emitting
`
`diode (LED), a flash memory with a microcontroller and a USB interface
`
`controller. Pet. 20-23. We consider this ground below.
`
`Deng is directed to an electronic flash memory external storage device
`
`having an access control circuit that, in cooperation with firmware, allows
`
`for data transfer through a USB port. Ex. 1004, Abstract. Deng discloses
`
`printed circuit board 51, with components mounted thereon, that is contained
`
`within casing 5 with USB connector 23. Id. at 6:66-7:5; Fig. 2. Access
`
`control circuit 2 has microprocessor 21, USB interface controller 221, and
`
`USB interface 231. Id. at 7:16-31; Fig. 3. The device also includes an LED,
`
`where various light states of the LED represent various operating states. Id.
`
`at 13:49-52.
`
`13
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`PNY argues that it would have been obvious to a person of ordinary
`
`skill in the art to fashion the module of Elbaz as a printed circuit board, as
`
`taught by Deng. Pet. 21. PNY further argues that such a modification
`
`would be nothing more than a mere substitution of a well-known type of
`
`circuit configuration for the module used in Elbaz. Id. Based on the instant
`
`record, we agree. In addition, PNY argues that since Deng includes an LED
`
`for indicating the operating state of the device, ordinarily skilled artisans
`
`would have incorporated such an LED into the device of Elbaz, in view of
`
`its use in Deng. Id. at 22. We agree that the use of an LED in one device
`
`likely renders its use obvious in the other device. Lastly, PNY argues that
`
`the use in the device of Elbaz of a flash memory, memory controller and
`
`USB interface controller, all disclosed in Deng, would have been obvious.
`
`Id. at 22-23. PNY argues so that such components are well-known, standard
`
`electrical components that one of ordinary skill in the art would recognize
`
`their utility to the device in Elbaz.
`
`Phison argues that Elbaz cannot teach or suggest that the printed
`
`circuit board assembly is fixed by means of pressing of the concave props,
`
`per claims 1, 9, and 17, because Elbaz states that its module is held in place
`
`by the locking means, and not the raising or guidance means. Prelim. Resp.
`
`24. We disagree. Certainly when the module in Elbaz is introduced
`
`between the guiding means 515 or ribs, it is fastened securely in a position
`
`between the sides of the adaptor. The ribs secure its lateral position, and
`
`hold it securely in place. The fact that it can move longitudinally before the
`
`locking means is applied does not mean that it is not fastened securely in
`
`position in at least one direction. Additionally, the friction between the
`
`14
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`guiding means and the module would also act, through those ribs, to fasten
`
`the module securely in position. Although Phison finds that the “axial”
`
`movement, allowing for removal of the module, in Elbaz illustrates that the
`
`module is not fastened securely in position (id. at 24), we find nothing in the
`
`construction of the term “fixed” that would require fixation in every
`
`direction and along any degree of freedom. Additionally, since Deng
`
`discloses that its printed circuit board is constrained within the casing (Ex.
`
`1004 Fig. 2), it would have been obvious to provide even greater constraints
`
`on the module in Elbaz. Lastly, we disagree with Phison’s assertion that
`
`being fastened securely in position is inapposite to being removable; we are
`
`persuaded, based on the instant record, that the module in Elbaz can be
`
`fastened securely in position, as well as be removable.
`
`Phison also argues that a person of ordinary skill in the art would not
`
`have combined Elbaz and the Admitted Art or Deng because Elbaz
`
`specifically teaches away from such a combination. Prelim. Resp. 29.
`
`Phison cites to Elbaz’s recitation of the benefits of chip cards (Prelim. Resp.
`
`29-30; Ex. 1003 ¶ 0045), and proffers that Elbaz is distinguishing “prior art
`
`PCBA based USB devices.” Id. However, we can find no recitations in
`
`Elbaz of “PCBA,” “PCB,” “printed,” or “board.” Therefore, if Elbaz is
`
`distinguishing from PCBA devices, as alleged, it must not be doing so
`
`explicitly. We also are persuaded that the fact that Elbaz provides a
`
`preference for the use of an integrated circuit chip card does not rise to the
`
`level of teaching away. “[T]he prior art’s mere disclosure of more than one
`
`alternative does not constitute a teaching away from any of these alternatives
`
`because such disclosure does not criticize, discredit, or otherwise discourage
`
`15
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`
`As such, we are not persuaded by Phison’s argument.
`
`Additionally, Phison also argues that Deng teaches away from the
`
`combination with Elbaz. Prelim. Resp. 31-33, 34-35. Phison argues that in
`
`Deng, the printed circuit board is contained within a casing that is separate
`
`from the portion inserted into the USB port, such that the casing lacks the
`
`claimed oriented indentations used to facilitate the connection. Id. at 31.
`
`From this, Phison argues that “Deng teaches away from providing the PCB
`
`and associated components within a housing like Elbaz’s and, rather teaches
`
`using a separate casing.” Id. at 32. We do not agree.
`
`“The test for obviousness is not whether the features of a secondary
`
`reference may be bodily incorporated into the structure of the primary
`
`reference. . . . Rather, the test is what the combined teachings of those
`
`references would have suggested to those of ordinary skill in the art.” In re
`
`Keller, 642 F.2d 413, 425 (CCPA 1981). As discussed above, the
`
`adaptor/body of the device in Elbaz is designed to be inserted into a USB
`
`port. Phison has presented no persuasive evidence that one of ordinary skill
`
`in the art, when comparing Elbaz and Deng, would have dropped the
`
`structure of Elbaz, and adopted the structure of Deng, with the USB
`
`interface being separate from the casing. Further, as discussed above, we are
`
`not persuaded that the teaching of an alternative structure in Deng is a
`
`“teaching away” from the combination of Elbaz and Deng. As such, we are
`
`not persuaded by Phison’s argument.
`
`In addition, Phison argues that there would have been no need to
`
`incorporate the LED of Deng into the security dongle of Elbaz because the
`
`16
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`only operation of the dongle is to provide credentials upon connection.
`
`Prelim. Resp. 33. Phison continues that the read operation in Elbaz is near
`
`instantaneous, that successful authentication would be readily apparent
`
`without the need for the LED, and that any use of the LED to communicate
`
`status would require communication back to the dongle and thus take more
`
`time. Id. at 33-34. We do not agree. These arguments assume that the LED
`
`of Deng would be incorporated into the device of Elbaz, and nothing else.
`
`The actual ground of unpatentability (Pet. 20-38) in question discusses the
`
`use of the LED from Deng and also the use of Deng’s electronic flash
`
`memory. The proffered combination assumes the form factor of Elbaz with
`
`the flash memory device of Deng, such that Phison’s arguments about the
`
`use of an LED with an authentication dongle are inapposite. It is clear from
`
`Deng how the LED provides utility to its memory device, and we are
`
`persuaded that it would provide similar utility to a device formed from the
`
`combination of Elbaz and Deng.
`
`Lastly, Phison argues that the proposed combination would be
`
`inoperable because “[t]he Petition offers no explanation of how the LED of
`
`Deng would be connected to the plastic chip card of Elbaz.” Prelim. Resp.
`
`at 34. This argument is faulty for the same reasons discussed above in that it
`
`assumes only the LED of Deng would be incorporated into the device of
`
`Elbaz. The actual ground of unpatentability discusses the use of the printed
`
`circuit board of Deng being incorporated into the device of Elbaz, such that
`
`a connection with the plastic chip card of Elbaz would not be material. As
`
`such, we are not persuaded by Phison’s argument.
`
`17
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`Accordingly, we are persuaded that PNY has demonstrated that it has
`
`a reasonable likelihood of prevailing in showing that claims 1, 3-9, and 11-
`
`21 of the ’879 Patent would have been obvious over Elbaz and Deng under
`
`35 U.S.C. § 103.
`
`
`
`iv) Obviousness over Elbaz, Deng, and Admitted Art
`
`PNY also asserts that claims 2 and 10 of the ’879 Patent would have
`
`been obvious over Elbaz, Deng, and the Admitted Art under 35 U.S.C.
`
`§ 103. Pet. 38-39. PNY argues that the Admitted Art acknowledges that it
`
`was known for a housing to be made of a metallic conductive material. Pet.
`
`38; Ex. 100,1 1:41-52. PNY argues that forming the housing of Elbaz from
`
`such a metallic conductive material would have been a simple substitution to
`
`yield predictable results. On this record, we agree. Phison has not
`
`responded to this ground specifically, addressing arguments to the teachings
`
`and combination of Elbaz and Deng. We have addressed those arguments
`
`above and do not find them to be persuasive.
`
`Accordingly, we are persuaded that PNY has demonstrated that it has
`
`a reasonable likelihood of prevailing in showing that claims 2 and 10 of the
`
`’879 Patent would have been obvious over Elbaz, Deng, and the Admitted
`
`Art under 35 U.S.C. § 103.
`
`18
`
`
`
`Case IPR2014-00150
`Patent 7,518,879
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented shows that there is a reasonable likelihood that PNY would prevail
`
`with respect to claims 1-21 of the ’879 Patent. The Board has not made a
`
`final determination on the patentability of any claim.
`
`
`
`
`
`IV. ORDER
`
`It is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1-21 of the ’879 Patent for the
`
`following grounds of unpatentability:
`
`Claims 1, 3-9, and 11-21 as unpatentable under 35 U.S.C. § 103
`
`over Elbaz and Deng;
`
`Claims 2 and 10 as unpatentable under 35 U.S.C. § 103 over
`
`Elbaz, Deng, and Admitted Art.
`
`It is FURTHER ORDERED that an inter partes review is not
`
`instituted with respect to any of the other alleged grounds of
`
`unpatentability proffered in the Petition.
`
`
`
`It is FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`
`will commence on the entry date of this decision.
`
`
`
`
`
`19
`
`
`
`20
`
`Case IPR2014-00150
`Patent 7,518,879
`
`
`
`For PETITIONER:
`
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`
`For PATENT OWNER:
`
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
