UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`Phison Electronics Corp.
`Patent Owner
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`Case IPR2014-00150
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNY Technologies, Inc.
`Petitioner
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`v.
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`Phison Electronics Corp.
`Patent Owner
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`Case IPR2014-00150
`Patent 7,518,879
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`PATENT OWNER PHISON ELECTRONICS CORP.’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)
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`TABLE OF AUTHORITIES
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`Case IPR2014-00150
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`Page(s)
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`Cases
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`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed.Cir. 2005) .............. 2
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`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed.Cir. 2004) ................................ 2
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`In re Gartside, 203 F.3d 1305, 1315-16 (Fed.Cir. 2000) .......................................... 2
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`In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). ....................................... 2
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`Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40
`(Fed.Cir.2011) ...................................................................................................... 3
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`In reMcLaughlin, 443 F.2d 1392, 1395, (CCPA 1971) ............................................. 3
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`Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
`Cir. 2003) .............................................................................................................. 6
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`Rules and Regulations
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`37 C.F.R. § 42.71(c) ................................................................................................... 1
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`i
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`Case IPR2014-00150
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`Pursuant to 37 C.F.R. § 42.71(c), the patent owner, Phison Electronics
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`Corp. (“Patent Owner”), hereby submits the following Request for
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`Rehearing in response to the Decision, Institution of Inter Partes Review of
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`U.S. Patent No. 7,518,879 (“the Decision”) (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 on two grounds of unpatentability:
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`Ground C, claims 1, 3-9 and 11-21 as unpatentable under 35 U.S.C. § 103
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`over Elbaz and Deng, and Ground D, claims 2 and 10 as unpatentable under
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`35 U.S.C. § 103 over Elbaz, Deng and Admitted Art.
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`Patent Owner requests that the Board reconsider its decision to
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`institute for two reasons. First, the Board improperly relied upon its own
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`speculation about the operation of the device described by Elbaz, and thus
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`attributed features to the device that are nowhere taught or described by
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`Elbaz. Second, the Board based its claim construction on its assertion that
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`the patentee “acted as its own lexicographer” with respect to the term
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`“concave props,” contrary to Federal Circuit precedent that has established
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`certain threshold requirements (not present in the ‘879 patent) before the
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`“lexicographer” doctrine may be relied upon for claim construction. Patent
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`Owner therefore requests that no trial be instituted in this proceeding.
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`II. LEGAL STANDARDS
`When rehearing a decision on institution, the Board will review the
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in
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`weighting relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d
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`1277, 1281 (Fed.Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
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`(Fed.Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315-16 (Fed.Cir.
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`2000).
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`III. BASIS FOR RELIEF REQUESTED
`A. The Decision Overlooked, and Thus Failed to Apply, the
`Law Governing Obviousness
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`Patent Owner requests reconsideration of the decision to institute on
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`claims 1, 3-9 and 11-21 as unpatentable under 35 U.S.C. § 103 over Elbaz
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`and Deng, and claims 2 and 10 as unpatentable under 35 U.S.C. § 103 over
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`Elbaz, Deng and Admitted Art, because the Decision overlooked, and thus
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`failed to adhere to, the legal standards for obviousness.
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`To establish obviousness of a claimed invention, all claim limitations
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`must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180
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`USPQ 580 (CCPA 1974). Yet, the Decision here commits clear legal error
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`by relying not on a teaching or suggestion in the prior art – but instead upon
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`speculation regarding how the device described in Elbaz might work. The
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`Decision is thus contrary to Federal Circuit precedent in two respects. First,
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`in the absence of express disclosure, one cannot rely on “probabilities or
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`possibilities” to show claim limitations, as the Decision does here. Bettcher
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`Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40 (Fed.Cir.2011).
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`Second, by expanding upon what is actually taught by Elbaz, the Decision
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`necessarily engages in improper “hindsight” – taking the operation of the
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`claimed invention and using its features to fill in missing disclosures in the
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`prior art. However, impermissible hindsight must be avoided and the legal
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`conclusion of obviousness must be reached on the basis of the facts gleaned
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`from the prior art. In reMcLaughlin, 443 F.2d 1392, 1395, (CCPA 1971).
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`Claims 1 et seq. and 17 et seq. require “wherein said PCBA is fixed
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`by means of pressing of said plurality of concave props.” Claims 9 et seq.
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`require the “plurality of concave props protrude inward to fix said PCBA.”
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`The Decision institutes Grounds C and D based on a conclusory finding that
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`“[c]ertainly when the module in Elbaz is introduced between the guiding
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`means 515 or ribs, it is fastened securely in a position between the sides of
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`the adapter. The ribs secure its lateral position, and hold it securely in
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`place.” Decision at p. 14. This finding, however, is unsupported.
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`The Decision cites no basis for concluding that “when the module in
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`Elbaz is introduced between the guiding means 515 or ribs, it is fastened
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`securely in a position between the sides of the adapter,” or that “[t]he ribs
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`secure [the module’s] lateral position.” In fact, it is quite the opposite. The
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`guiding means 515 cannot be involved in laterally positioning the module,
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`because, as Figure 10C of Elbaz shows, the module 5 is beneath, not
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`between the guiding means 515. Moreover, Elbaz is silent on how the
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`lateral position of the module is secured, or even if the position, lateral,
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`vertical or otherwise, is secured. For example, Figure 10C shows the
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`module 5 is not held from the side, having gaps on both sides of the module
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`5 and the guiding means 515 do not overlap the top surface of the module 5.
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`In the absence of express disclosure, one cannot rely on “probabilities or
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`possibilities” to show claim limitations. Bettcher Indus at 639-40.
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`Case IPR2014-00150
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`Gap
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`Gap
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`IPR2014-00150 Ex. 1003, Fig. 10C (annotated)
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`Given that Elbaz is silent and includes no teaching that “when the
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`module in Elbaz is introduced between the guiding means 515 or ribs, it is
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`fastened securely in a position between the sides of the adapter,” or that
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`“[t]he ribs secure [the module’s] lateral position,” any assertion otherwise is
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`unsupported.
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`Therefore, the Decision committed legal error in concluding, without
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`basis, that all elements of claims 1-9 and 10-21 are met. Institution of
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`Grounds C and D must be withdrawn.
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`B.
`The Decision Overlooked, and Thus Failed to Apply, the
`Law Governing Claim Construction.
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`Patent Owner requests reconsideration of the Decision’s initial
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`construction of “concave,” because the Decision overlooked, and thus failed
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`to adhere to, the legal standards for claim construction.
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`It is well established that “[i]n the absence of an express intent to
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`impart a novel meaning to the claim terms, the words are presumed to take
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`on the ordinary and customary meanings attributed to them by those of
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`ordinary skill in the art.” Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc.,
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`334 F.3d 1294, 1298 (Fed. Cir. 2003). The Decision failed to adhere to the
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`legal standard for claim construction by construing “concave” inconsistent
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`with its ordinary meaning, when ‘879 Patent indicated no express intent to
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`impart such novel meaning.
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`The initial construction of “concave,” i.e., curving inward from a
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`housing, is acknowledged by the Board as encompassing shapes that are
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`“not concave in any sense of the word.” PNY Tech., Inc. v. Phison Elec.
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`Corp., IPR2013-00472, slip op. at 5 (PTAB April 23, 2014) (Paper 16).
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`Therefore, the construction does not comport with the ordinary meaning of
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`“concave.”
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`The Decision asserts, however, that “concave prop” must be construed
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`differently than its ordinary meaning, because the patentee acted as its own
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`lexicographer, re-defining “concave” different from its ordinary meaning.
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`See Decision at p. 7. In support, the Decision explains that a concave shape,
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`characterized by Patent Owner as curving inward to form a recess, “cannot
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`act as a prop,” and “[t]he portion that acts as a prop is the portion that
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`extends inwardly from the housing.” Decision at p. 7. The Board’s adopting
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`a construction of “concave” that does not comport with the ordinary
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`meaning is clear legal error, because the ‘879 Patent provides no express
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`intent to impart a novel meaning to the term “concave” and lacks the
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`threshold requirements established by the Federal Circuit before the
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`“lexicographer” rule of claim construction may be invoked.
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`In particular, the Decision identifies no express definition of
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`“concave,” nor does the ‘879 Patent include one. The Decision identifies no
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`instance of the patentee distinguishing the ‘879 Patent’s concave shape from
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`other shapes commonly recognized as concave, nor does the ‘879 Patent or
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`its prosecution history include such. The ‘879 Patent includes no
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`implication in the ‘879 Patent that “concave” was intended to encompass
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`structures not concave in any sense of the word.
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`Rather, all instances of the concave props in the ‘879 Patent are
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`concave in accordance with the ordinary meaning of the word. For example,
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`the ‘879 Patent’s preferred manner of forming the concave props, i.e.,
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`“punching on the housing,” can produce a concave shape curving inward to
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`form a recess.1 See Ex. 1001 at 3:15-16. The ‘879 Patent describes
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`advantages to the recess of a concave shape. For example, the concave
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`props and orientated indentations can be “formed simultaneously” in the
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`same manufacturing process and, thus, coincide. See id. at 4:28-32. As seen
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`in Figures 5, 6, and 8, when the concave props and orientated indentations
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`are formed simultaneously and coincide, the recess of the concave prop
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`defines the orientated indentation. Finally, the ‘879 Patent always shows the
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`concave props as being concave. For example, the cross-sectional view of
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`Figure 6 of the ‘879 Patent is reproduced below, showing the concave
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`surface and the resulting recess of the concave props 512.2 Figures 5, 8 and
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`9 also accord.
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`1 Patent Owner agrees with the Board that formation of the concave props
`need not include “punching,” and notes that other techniques, such as casting
`or pressing, could also form a shape curving inward to form recess.
`2 This annotated figure was originally included in Patent Owner Phison
`Electronics Corp.’s Preliminary Response, p. 12 (Paper 6).
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`Recess formed by
`the inward curve of
`concave prop 512
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`Ex. 1001, Figure 6 (annotated).
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`Indeed, if the patentee had intended to claim only the propping portion
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`of the structure, the patentee would have not chosen to call the props
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`“concave” props. The patentee could have just called them “props,” or
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`“curved props.” Instead, however, the patentee chose to claim both their
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`concave nature and their propping function.
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`The stated justification for deviating from the ordinary meaning of
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`“concave,” i.e., that a recess “cannot act as a prop,” assumes the ‘879 Patent
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`equates the prop’s concave surface with performing the propping function.
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`It does not. The ‘879 Patent clearly shows a prop that is both concave and
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`that has a non-concave surface propping the PCBA. In other words, the
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`term “concave” describes a different aspect of the props than their propping
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`surface.
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`Simply stated, the ‘879 Patent shows and describes the concave props
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`in a manner comporting with the ordinary meaning of the term, and
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`discusses advantages stemming from this shape. The Decision articulates no
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`viable basis to assert the patentee acted as its own lexicographer and defined
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`“concave” different from its ordinary meaning. Therefore, any construction
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`of the term “concave” that finds otherwise is a clear error of law.
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`As discussed previously, the proper construction of concave is
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`“curving inward to for a recess.” This construction comports with the term’s
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`usage in the ‘879 Patent, and with the ordinary meaning, including
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`dictionary definitions, such as “hollow and curved like the inside half of a
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`hollow ball.” See Ex. 2006 (Webster’s New World Dictionary), p. 287.
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`Therefore, the Decision committed legal error in adopting a
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`construction for “concave” that can encompass shapes not concave in any
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`sense of the word, because the ‘879 Patent indicated no express intent to
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`depart so substantially from the ordinary meaning. Patent Owner again
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`asserts its proposed construction of “curving inward to form a recess” should
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`be adopted instead.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner requests that the Board deny
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`Grounds C and D in the Petition, and decline to institute Inter Partes Review
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`of the ‘879 patent.3 If Inter Partes Review is instituted, Patent Owner
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`requests that the Board adopt Patent Owner’s construction of the term
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`Respectfully submitted,
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`/Joshua A. Griswold/
`Joshua A. Griswold,
`Reg. No. 46,310
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 214-292-4034
`F: 877-769-7945
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`Counsel for Patent Owner
`Phison Electronics Corporation
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`“concave.”
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`Dated: May 12, 2014
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` (Trial No. IPR2014-00150)
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`3 If Ground B, unpatentable as obvious under 35 U.S.C. § 103 over Elbaz in
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`view of AAPA, is instituted based on Petitioner’s Request for Rehearing
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`(paper 10), Patent Owner requests Ground B be denied for the same reasons
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`articulated for Grounds C and D, herein.
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`Case IPR2014-00150
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.205(b), the undersigned
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`certifies that on May 12, 2014, a complete and entire copy of this Patent
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`Owner Phison Electronics Corp’s Preliminary Response was provided via
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`email to the Petitioner by serving the correspondence email address of
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`record as follows:
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`Mark E. Nikolsky
`MCCARTER & ENGLISH, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
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`Email: mnikolsky@mccarter.com
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`schokshi@mccarter.com
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`/Susan C. Johnson/
`Susan C. Johnson
`Fish & Richardson P.C.
`60 South Sixth Street Suite 3200
`Minneapolis, MN 55402
`(214) 292-4086
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`90787085.doc
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