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