IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 10
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY TECHNOLOGIES, INC.
`
`Petitioner
`
`V.
`
`PHISON ELECTRONICS CORP.
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`Patent Owner
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`Case IPR2014—0015O
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`'
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`Patent 7,518,879
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`PNY TECHNOLOGIES, INC.’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)
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`ME] 17807458v.2
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`
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`Paper No. 10
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PNY TECHNOLOGIES, INC.
`
`Petitioner
`
`V.
`
`PHISON ELECTRONICS CORP.
`
`Patent Owner
`
`Case IPR2014—0015O
`
`'
`
`Patent 7,518,879
`
`PNY TECHNOLOGIES, INC.’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)
`
`ME] 17807458v.2
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`
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`TABLE OF AUTHORITIES
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`_PEg9_(§1
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`Case
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`Bilstad v. Wakalopulos,
`386 F.3d 1116, 1121 (Fed. Cir. 2004) ..................
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`-
`......................... ..2
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`Rules and Regulations
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`37 C.F.R.§42.71(c)..-. .......................................................... ..1,2
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`37 C.F.R. § 42.71(d). .1 ............................................................... ..2
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`MEI 17807458v.2
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`Case IPR2014—00150
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`Pursuant
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`to 37 C.F.R.
`
`§ 42.71(c), Petitioner, PNY Technologies,
`
`Inc.
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`(“Petitioner”), hereby submits the following Request for Rehearing in response to
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`the Decision, Institution of Inter Partes Review (“the Decision”) of U.S. Patent
`
`No. 7,518,879 (“the ‘879 Patent”) dated April 28, 2014 (Paper 8).
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`The Decision ordered review of the ‘879 Patent on two grounds of
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`unpatentability:
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`(i) Claims
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`1, 3-9, and 11-21 as obvious over U.S. Patent
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`Application Publication No. 2004/0259423 to Elbaz in view of U.S. Patent No.
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`6,829,672 to Deng; and (ii) Claims 2 and 10 as obvious over Elbaz in view of
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`Deng and Applicant—Admitted Prior Art (AAPA) set forth at Col. 1, line 10 to C01.
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`2,
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`line 26 in the ‘879 Patent.
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`Petitioner appreciates the Board’s decision to
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`institute review on these grounds.
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`The Decision did not, however, order review of Claims 1, 2, 8-10, and 16 as
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`obvious over Elbaz in View of AAPA. For the reasons set forth herein, Petitioner
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`requests that the Board reconsider its decision in this regard, and that the Board
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`institute review of Claims 1, 2, 8-10, and 16 of the ‘879 Patent as obvious over
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`Elbaz in view of AAPA.
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`ME] l7807458v.2
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`
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`Case IPR2014—00150
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`II.
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`LEGAL STANDARDS
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
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`§42.71(d).
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`“When rehearing a decision on petition, a panel will review the
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`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion
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`is found if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is
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`based on an erroneous conclusion of law; (3) rests on clearly erroneous fact
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`findings; or (4) involves a record that contains no evidence on which the Board
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`could rationally base its decision.” Bilstad v. Wakalopulos, 386 P.3d 1116, 1121
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`(Fed. Cir. 2004).
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`III. BASIS FOR RELIEF REQUESTED
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`Petitioner respectfully submits that
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`the Board abused its discretion in
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`declining to institute review of Claims 1, 2, 8-10, and 16 of the ‘879 Patent as
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`obvious over Elbaz in View of AAPA, as set forth in the Petition for Inter Partes
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`Review (Paper No. 1).
`
`The Decision denied review of Claims 1, 2, 8-10, and 16 as obvious over
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`Elbaz in view of AAPA for two reasons. First, the Decision held that Elbaz does
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`not disclose a “USB memory plug” as required by the claims. Decision, p. 11.
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`In
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`ME1 17807458v.2
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`Case IPR20 14-00 1 50
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`so holding, the Decision stated that “to the degree that Elbaz discloses a memory,
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`that memory could easily be read only memory (ROM) and would not comport
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`with an ordinarily skilled artisan’s understanding of a ‘USB memory plug.”’
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`Decision, p. 12. Second, although the Decision acknowledged that AAPA teaches
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`a printed circuit board assembly (PCBA),
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`the Decision held that Petitioner
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`purportedly did not “provide any discussion of whether it would have been obvious
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`to fashion the device [of Elbaz] as a USB memory plug” that includes such a
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`PCBA. Decision, pp. 12-13. However, these conclusions are clearly erroneous
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`and contrary to the express teachings of E_lb_a; and AAPA that were cited in the
`Petition, and they ignore the obviousness rationales that were provided in the
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`Petition.
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`A.
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`The Petition Established that Both Elbaz and AAPA Disclose a
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`“USB Memory Plug”
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`At the outset, Petitioner submits that the Board improperly interpreted the
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`term “USB memory plug” to exclude devices with read-only memory.
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`In this
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`regard, the Board stated “... to the degree that Elbaz discloses a memory, that
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`memory could easily be read only memory (ROM) and would not comport with an
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`ordinarily skilled artisan’s understanding of a ‘USB memory plug.’” Decision, p.
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`12. However, Petitioner submits that this narrow interpretation is contrary to both
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`MEI 17807458V.2
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`Case IPR20 l 4-00 1 50
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`the broadest reasonable interpretation of that term, as well as the teachings of the
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`‘879 Patent.
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`The Petition requested that the claims of the ‘879 Patent be construed using *
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`the broadest reasonable interpretation standard. Petition, p. 5. However,
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`the
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`Board’s interpretation of the term “USB memory plug” is not
`
`the broadest
`
`reasonable interpretation.
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`Instead, the broadest reasonable interpretation of the
`
`term “USB memory plug” merely only requires that (i) the device has memory,
`and (ii) that the device has a UEB plug. This is plainly what the claim language of
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`the ‘879 Patent says, and imparting an interpretation that excludes ROMs is unduly
`
`narrowing. Moreover, dependent Claims 4 and 12 of the ‘879 Patent recite ROMs
`— they require thatthe memory be “one of a flash memory and an Electrically
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`Erasable Programmable Read Only Memory (EE-PROM)?’ PNY Exhibit 1001
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`(‘879 Patent) at 6:32-35; 7:1—_4 (emphasis added). To interpret the term “USB
`
`memory plug” in Claim 1 to exclude ROMS would ignore the express recitation of
`
`ROMS in Claims 4 and 12. As such, the claims were not given the broadest
`
`reasonable interpretation.
`
`Even if the term “USB memory plug” is interpreted to exclude ROMS, bot//z
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`’ Elbaz and AAPA disclose memories that are re-writable, as established in the
`
`Petition. With respect to Elbaz, nowhere does Elbaz state that the module 5 is
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`MEI l7807458v.2
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`Case IPR2014—OOl 50
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`limited to a ROM. Rather, as established in the Petition, Egg; discloses a module
`5
`that _complies with Subscriber
`Identity Module (SIM) or
`International
`
`Organization for Standardization (ISO) 7816 specifications. See Petition, pp. 11-
`
`12 (citing PNY Exhibit 1003 (Ell_:>a_z) at 11 66). The module 5 is provided in an
`
`adaptor 514 that can be plugged into a Universal Serial Bus (USB) port of a
`
`computer. See id., p. 13 (citing PNY Exhibit 1003 (Elbaz) at FIGS. 10a—l0c; and
`
`1111 3, 16, 25, and 43). The module 5 is a memory because it stores information for
`
`identification purposes. To interpret E_1b_ag as having only a ROM would mean that
`
`the devices of _Elb_a; could only be programmed once. Nowhere does E113; state,
`
`much less even hint, at this.
`
`Moreover,
`
`the AAPA cited in the Petition explicitly teaches that USB
`
`memory plugs were known in the art prior to the filing of the ‘879 Patent. See
`
`PNY Exhibit 1001 (AAPA), FIG.
`
`1 and 1:41-52.
`
`In particular,
`
`the AAPA
`
`expressly discloses a USB connector [plug] with a housing having a printed
`
`circuit board assembly (PCBA) for providing memory storage. See Petition, p. 12
`
`(citing AAPA at FIG. 1 and 1:41-52). The AAPA clearly teaches USB memory
`
`plugs.
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`ME1 17807458v.2
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`Case IPR20 14-00 1 50
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`It is thus clear that both Elbaz and AAPA teach USB memory plugs, and the
`
`Board’s conclusion that Elbaz does not teach a “USB memory plug” is clearly
`
`GITOIIGOUS .
`
`B.
`
`The Board’s Own Analysis of the Term “USB Memory Plug”
`Compels a Finding of Obviousness over Elbaz in view of AAPA
`
`In interpreting the term “USB memory plug,
`
`the Decision pointed to
`
`73
`
`disclosure in the AAPA. Specifically, the Decision stated the following: “it [Elbaz]
`
`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.” Decision,
`
`p. 12 (emphasis added). Ex. 1001, 1:41-52 is the same AAPA cited by the
`
`Petition. Thus, by citing the AAPA as an example of what one would understand
`
`the term “USB memory plug” to mean,
`
`it
`
`is clear that the AAPA provides
`
`sufficient teachings of that claim term.
`
`In other words, if the Board considers
`
`Elbaz as missing av“USB memory plug” but then points to AAPA as an example of
`
`such a plug (as it has in the Decision, p. 12), then it is only proper that the AAPA
`
`be combined with Elbaz. As such, at the Very least, the Decision should have
`
`adopted the obviousness grounds raised in the Petition on the basis of Elbaz in
`
`View of AAPA.
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`MEI l7807458v.2
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`Case IPR20l4-00150
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`C.
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`The Petition Clearly Set Forth Obviousness Rationales for
`
`Combining the Teachings of AAPA with the Teachings of Elbaz
`
`The Board concluded that Petitioner purportedly did not “provide. any
`
`discussion of whether it would have been obvious to fashion the device [of Elbaz]
`
`as a USB memory plug” that includes a PCBA. Decision, pp. 12-13. However,
`
`this conclusion ignores the obviousness rationales that were expressly set forth in
`
`the Petition.
`
`Petitioner explicitlyarticulated rationales in supportof why one of ordinary
`
`skill
`
`in the art would combine Elbaz with AAPA. For example, the Petition
`
`advanced the following rationales, neither of which were addressed in the
`
`Decision:
`
`»
`
`(1)
`
`“Modifying the USB device of Elbaz et al.
`
`to
`
`include the printed circuit board assembly of _AAI:A_ is
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`nothing more
`
`than combining prior
`
`art
`
`elements
`
`according to known methods to yield predictable results.
`
`fiefi M.P.E.P. § 2143(a). Moreover, one of ordinary skill
`
`in the art would understand that the printed circuit board
`
`assembly of ;AAflX_ could be used with USB memory
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`devices, and that doing so is nothing more than a mere
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`substitution of a well—known type of circuit configuration
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`ME] l7807458v.2
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`7
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`Case IPR20l4-001 50
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`(PCBA) for the module 5 of Elbaz et al. §e_:§iM.P.E.P. §
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`2l43(b).” Petition, p. 12.
`
`(2)
`
`“Specifically, PNY submits that
`
`it would have
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`been obvious to a person of ordinary skill in the art to
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`_combine the teachings of _/gflllé with the teachings of
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`Elbaz et al., so that the housing is made from a metallic
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`conductive material.
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`_S_ge_3 M.P.E.P. § 2143 (a).
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`Such
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`would be a simple substitution to yield predictable
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`results.
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`_S_e_e_ M.P.E.P. § 2143 (b). Still further, _AAP_A
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`explicitly teaches the use of metallic components with a
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`USB flash drive connector, and thus one of ordinary skill
`in the art would be motivated to provide such a connector
`
`9
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`in the device of Elbaz et al.
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`S_e_e M.P.E.P. § 2143(g).”
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`Petition, p. 13.
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`Accordingly, sufficient rationales for combining Elbaz with AAPA were
`
`provided in the Petition, but these rationales were not addressed and adequately
`
`considered by the Decision. This was clearly erroneous, and Petitioner respectfully
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`submits that the Board should not only consider these rationales, but also institute
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`ME] l7807458v.2
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`Case lPR2014—00150
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`review on obviousness grounds in View of Elbaz and AAPA as urged in the
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`Petition and this request for rehearing.
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`IV. Conclusion
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`It is clear from the combined teachings of Elbaz and AAPA that Claims 1, 2,
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`8-10,‘ and 16 of the ‘879 Patent are obvious. Accordingly, for the foregoing
`
`’
`
`reasons, Petitioner respectfully requests that the Board institute review of Claims 1,
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`2, 8-10, and 16 as obvious over Elbaz in view of AAPA. '
`
`Respectfully submitted,
`
`
`
`
`
`By: M rk E. Nikolsky (Lea Counsel)
`Reg. No. 48,319
`
`’ ’
`
`By: Sa _]1V M. Chokshi (Back-up Counsel)
`Reg. No. 44,080
`Attorneys for PNY
`McCarter & English, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
`
`5
`Dated
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`Zo/
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`5
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`20/4’
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`Dated
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`'
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`MEI l7807458v.2
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`Case IPR20 14-00 1 50
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §42.6(e), I hereby certify that a true and complete
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`copy of this PNY Technologies, Inc.’s Request for Rehearing was provided by
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`email to the Patent Owner on May 9, 2014, by serving the correspondence email
`
`address of record as follows:
`
`V
`
`Joshua A. Griswold, Reg. No. 46,310
`3200 RBC Plaza
`
`60 South Sixth Street
`
`Minneapolis, MN 55402
`Email:
`Griswo1d@fr.com,
`00l0IPl @fr.com.
`
`Hoffman@fr.com,
`
`and
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`IPR23490—
`
`
`
`By: Ma
`
`E. Nikolsky (Lead ounsel)
`
`ologies, Inc.
`Attorney for PNY Tec
`McCarter & English, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
`973.639.6987 (Mr. Nikolsky)
`
`May 9, 2014
`Dated
`
`I
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`MEI l7807458v.2
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`10
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