Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 12
`
`
` Entered: August 29, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-004721
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`1 Case IPR2014-00150 has been joined with this proceeding; Paper Numbers
`herein refer to documents in Case IPR2014-00150.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 12
`
`
` Entered: August 29, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-004721
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`1 Case IPR2014-00150 has been joined with this proceeding; Paper Numbers
`herein refer to documents in Case IPR2014-00150.
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`INTRODUCTION
`
`Patent Owner Phison Electronics Corp. (“Phison”) filed a Request for
`Rehearing (Paper 11, “Reh’g Req.”) of the Decision on Institution (Paper 8,
`“Dec.”), which instituted inter partes review of claims 1-21of Patent 7,518,879
`(the ’879 patent) in Case IPR2014-00150. Based on a joint motion for joinder
`(Paper 7), we joined Case IPR2014-00150 with Case IPR2013-00472 (Paper 9). In
`its request, Phison argues essentially that the Board improperly relied upon its own
`speculation as to how a referenced device operates and improperly asserted that the
`patentee acted as its own lexicographer. The request for rehearing is denied.
`
`ANALYSIS
`
`When rehearing a decision on institution, the Board will review the decision
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
`determined if a decision is based on an erroneous interpretation of law, if a factual
`finding is not supported by substantial evidence, or if the decision represents an
`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
`393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
`1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
`2000).
`Phison argues that to establish obviousness, all claim limitations must be
`taught or suggested by the prior art, and that we committed clear legal error by
`relying instead upon speculation regarding how the device described in Elbaz
`might work. Reh’g Req. 2-3. Phison takes issue with our finding that “[c]ertainly
`when the module in Elbaz is introduced between the guiding means 515 or ribs, it
`
`2
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`Case IPR2013-00472
`Patent 7,518,879
`
`is fastened securely in a position between the sides of the adaptor. The ribs secure
`its lateral position, and hold it securely in place.” Dec. 14. Phison says that the
`opposite is true, since the module is beneath the guiding means, and Fig. 10C of
`Elbaz shows that the module is not held from the side, having gaps on both sides.
`Reh’g Req. 4. We do not agree.
`Claims 1 and 9 recite, in part, “wherein said PCBA is fixed by means of
`pressing of said plurality of concave props,” and the “plurality of concave props
`protrude inward to fix said PCBA,” respectively. As we provided in the Decision,
`we stated that Elbaz “discloses that the adaptor receives module 5 through guiding
`means 515 that may be ribs and work in concert with a locking means to maintain
`the module in the inserted position. Dec. 10, citing Elbaz ¶ [0060]. While Phison
`argues that “Elbaz is silent how the lateral position of the module is secured, or
`even if the position, lateral, vertical or otherwise, is secured” (Reh’g Req. 4), the
`above cited section of Elbaz shows that to be incorrect. The guiding means do “fix
`the PCBA,” per claim 9, and any friction between the guiding means and the
`module would also act, through those ribs, to fasten the module securely in
`position, per claim 1.
`It is not mere speculation to understand that insertion of a module in Elbaz
`through the guiding means would involve contact and friction, for that is one
`purpose of the guiding means. “A person of ordinary skill is also a person of
`ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 421 (2007). Experience with physical objects need not be jettisoned from an
`obviousness analysis, even if not expressly cited in a reference. Additionally,
`while Phison asserts that Fig. 10C of Elbaz shows gaps on the sides of the module
`
`3
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`Case IPR2013-00472
`Patent 7,518,879
`
`(Reh’g Req. 4-5), we disagree with Phison that the totality of the disclosure therein
`suggests that the module is not constrained into its inserted position. We also do
`not agree that one of ordinary skill in the art, in view of Elbaz’s disclosure, would
`view Fig. 10C as suggesting that the module is not “fixed.” As such, we cannot
`agree with Phison that our analysis in the Decision, in response to Phison’s
`arguments in the Preliminary Response, is not supported by substantial evidence.
`Phison also argues that our Decision failed to adhere to the correct legal
`standard for claim construction and improperly asserted that the patentee acted as
`its own lexicographer. Reh’g Req. 6-11. Phison also argues that because the ’879
`Patent provides no express intent to impart a novel meaning to the term “concave,”
`we improperly indicated that patentee acted as its own lexicographer by applying
`the wrong legal standard. Reh’g Req. 7-8. We do not agree.
`Phison acknowledges that“[t]he ‘879 Patent clearly shows a prop that is both
`concave and that has a non-concave surface propping the PCBA. In other words,
`the term ‘concave’ describes a different aspect of the props than their propping
`surface.” Reh’g Req. 10 (emphasis added). As discussed above, claim 1 recites, in
`part, that the “PCBA is fixed by means of pressing of said plurality of concave
`props,” such that the form recited in that claim requires that its “propping surface”
`is what exerts the pressure. Phison’s position acknowledges that the “concave”
`aspect of the prop is merely a nonfunctional descriptive aspect of the prop. See
`M.P.E.P. § 2111.05.
`While this does not imply that the “concave” aspect should be given no
`patentable weight, see, e.g., In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983), it
`does run counter to Phison’s assertion that “the ‘879 Patent shows and describes
`
`4
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`Case IPR2013-00472
`Patent 7,518,879
`
`the concave props in a manner comporting with the ordinary meaning of the term
`[concave].” Reh’g Req. 10. To refer to a prop as a concave prop when no
`functional part of the “prop” is concave would not comport with its plain, ordinary
`meaning.
`[T]he PTO applies to the verbiage of the proposed claims the broadest
`reasonable meaning of the words in their ordinary usage as they
`would be understood by one of ordinary skill in the art, taking into
`account whatever enlightenment by way of definitions or otherwise
`that may be afforded by the written description contained in the
`applicant's specification.
`In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We acknowledge that the
`Decision construed “concave” not according to its customary and ordinary
`meaning, but rather according to how it is used in the specification and claims of
`the ’879 Patent. We adopted a portion of Phison’s proposed interpretation of
`“concave” as “curving inwards,” such that the claimed prop may not have any
`topology, like a cube, for example, and needs to have a curving aspect. Dec. 6.
`Additionally, as we discussed in the Decision, it would be improper to incorporate
`the method of making such props into a claim directed to an article of manufacture,
`i.e., a USB memory plug. Dec. 7. As such, we do not agree with Phison that our
`Decision failed to adhere to the correct legal standard for claim construction.
`For the forgoing reasons, Phison has not shown that the Board abused its
`discretion in instituting the ground of claims 1-21 as unpatentable under 35 U.S.C.
`§ 103 over combinations of Elbaz, Deng and Admitted Art.
`
`
`
`
`
`
`5
`
`
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`Case IPR2013-00472
`Patent 7,518,879
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that Phison’s request for rehearing is denied.
`
`
`
`
`6
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`For PETITIONER:
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`For PATENT OWNER:
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`
`
`
`
`7
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