throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 062446-02002
`
`In re Inter Partes Review of:
`US. Patent No. 7,518,879
`
`Patent Issued: April 14, 2009
`
`Named Inventors: Chung et al.
`
`:
`:
`:
`:
`
`:
`
`that
`
`this
`certify
`hereby
`I
`being
`is
`correspondence .
`electronically filed per 37 CFR
`§ 42.6(b)(1) with the US. Patent and
`Trademark Office Via PRPS on
`u z 1 g [g {2/3
`-
`
`Patentee: Phison Electronics Corp.
`
`: Typed or printed name of person
`signing this certificate
`
`App. No.: 11/384,371
`
`App. Filed: March 21, 2006
`
`Title: UNIVERSAL SERIAL BUS
`(USB) MEMORY PLUG
`
`K_____
`
`Janelle Fava
`
`. :
`
`(, Signature
`f
`,, '
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`PETITION FOR INTER PARTES REVIEW OF US. PATENT NO. 7,518,879
`
`MEI 16752385V.1
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`List of Exhibits ............................................................................... iv
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Real Party in Interest........................................................................................ 1
`
`III.
`
`Related Proceedings ......................................................................................... 1
`
`IV. Grounds for Standing and Eligibility ............................................................... 1
`
`V.
`
`Lead and Back—up Counsel .............................................................................. 2
`
`VI.
`
`Service Information ......................................................................................... 2
`
`VII. Fee Information ................................................................................................ 2
`
`VIII. Specific Identification of Challenges............................................................... 3
`
`IX. Overview of the Chung ‘879 Patent ................................................................ 4
`
`X.
`
`Claim Construction .......................................................................................... 5
`
`XI.
`
`The Patent Claims are Invalid Under 35 U.S.C. §§ 102—103 ......................... 6
`
`A.
`
`B.
`
`C.
`
`Claims 1, 8, 9, and 16 of the Chung ‘879 Patent are
`unpatentable as anticipated under 35 U.S.C. § 102(b)
`by Elbaz et al. ........................................................................................ 6
`
`Claims I, 2, 8—10, and 16 ofthe Chung “879 Patent are
`unpatentable as obvious under 35 U.S.C. § 103 over
`Elbaz et al. in view of AAPA ............................................................. 11
`
`Claims 1, 3—9, and 11—21 of the Chung ‘879 Patent are
`unpatentable as obvious under 35 U.S.C. § 103 over
`Elbaz et al. in View of Deng et al. ...................................................... 20
`
`ME1 16752385V.1
`
`

`

`D.
`
`Claims 2 and 10 of the Chung ‘879 Patent are unpatentable
`as obvious under 35 U.S.C. § 103 over Elbaz et al.
`in View of Deng et 211., and further in View of AAPA ........................ 38
`
`XII. Conclusion .................................................................................................... 4O
`
`XIII. Certificate of Service .............................................................................. Cert. 1
`
`ME1 16752385v.1
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`iii
`
`

`

`LIST OF EXHIBITS
`
`PNY Exhibit 1001:
`
`, US. Patent No. 7,518,879 to Chung et 211., issued
`April 14, 2009
`
`PNY Exhibit 1002:
`
`Power of Attorney
`
`PNY Exhibit 1003:
`
`US. Patent Publication No. 2004/0259423 to Elbaz et
`
`ELL, published on December 23, 2004
`
`PNY Exhibit 1004:
`
`US. Patent No. 6,829,672 to Deng et 211., issued
`
`December 7, 2004
`
`ME1 16752385v.1
`
`iv
`
`

`

`I.
`
`Introduction
`
`PNY Technologies,
`
`Inc.
`
`(“PNY”) respectfully petitions for inter partes
`
`review of United States Patent No. 7,518,879, which issued April 14, 2009, to
`
`Chung et al., (the “Chung ‘879 Patent”). A copy of the Chung ‘879 Patent is
`
`attached hereto and made a part hereof as PNY Exhibit 1001.
`
`11.
`
`Real Party in Interest
`
`The real party in interest is PNY Technologies, Inc.
`
`111. Related Proceedings
`
`A patent infringement lawsuit involving the Chung ‘879 Patent was filed in
`
`the United States District Court for the District of Delaware, and is captioned
`
`Phison
`
`Electronics
`
`Corp.
`
`v.
`
`PNY Technologies
`
`Inc,
`
`Case No.
`
`1:12—cv—01478—GMS (hereinafter the “Patent Lawsuit”). The Patent Lawsuit was
`filed on November
`15, 2012, wherein Phison Electronics Corp.
`alleged
`
`infringement of the Chung ‘879 Patent and US. Patent No. 8,176,267. Currently,
`
`the Patent Lawsuit has been stayed.
`
`On July 29, 2013, PNY filed a petition for inter partes review of Claims 1—4,
`
`8—12, and 16 of the Chung ‘879 Patent, now entitled PNY Technologies, Inc. v.
`
`Phison Electronics Corp, Case No. IPR2013—00472.
`
`IV. Grounds for Standing and Eligibilifl
`
`PNY certifies that the Chung ‘879 Patent is eligible for inter partes review,
`
`and that PNY is not barred or estopped from requesting an inter partes review
`
`MEl 16752385V.1
`
`1
`
`

`

`challenging the patent claims on the grounds identified herein.
`
`PNY further
`
`certifies that it has not filed a civil action challenging the validity of any claim of
`
`the Chung ‘879 Patent. PNY certifies that this inter partes review petition is not
`
`being filed more than one year after being served with a complaint alleging
`
`infringement of the Chung ‘879 Patent. PNY certifies that estoppel does not
`
`prohibit this review.
`
`V.
`
`Lead and Back-up Counsel
`
`PNY notes that the lead counsel is designated as Mark E. Nikolsky (Reg.
`
`No. 48,319) and the back—up counsel is designated as Sanjiv M. Chokshi (Reg. No.
`
`44,080). A Power of Attorney (PNY Exhibit 1002) is attached.
`
`VI.
`
`Service Information
`
`Service information is provided as follows: Mark E. Nikolsky (McCarter &
`
`English, LLP, Four Gateway Center, 100 Mulberry St., Newark, NJ 07102; Phone:
`
`973-639—6987;
`
`Fax:
`
`973—297-6624;
`
`mnikolsky@mccarter.com
`
`and
`
`schokshi@mccarter.com).
`
`PNY consents
`
`to
`
`electronic
`
`service
`
`to
`
`mnikolsky@mccarter.com, with a copy to schokshi@mccarter.com.
`
`VII. Fee Information
`
`The Commissioner is authorized to charge all fees due to Deposit Account
`
`No. 503571, including but not limited to $9,000 upon the filing of this petition and,
`
`if institution is ordered, an additional $14,000 upon institution.
`
`If any additional
`
`and/or other fees are due in connection with the submission of this Petition, or if
`
`ME 16752385v.1
`
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`
`

`

`any credit is due, the Commissioner is hereby authorized to charge and/or credit
`
`them to Deposit Account No. 503571.
`
`VIII. Specific Identification of Challenges
`
`PNY respectfully petitions for inter partes review of all claims of the Chung
`
`‘879 Patent, i.e., Claims 1-21. PNY identifies the challenged claims, the grounds
`
`on which the challenge to each claim is based, and the evidence that supports each
`
`ground in Section XI, herein, noting where each limitation of the claim is found in
`
`the prior art. PNY includes the appropriate construction for the challenged claims
`
`in Section X, herein.
`
`A.
`
`Claims 1, 8, 9, and 16 of the Chung ‘879 Patent are unpatentable as
`
`anticipated under 35 U.S.C. § 102(b) by Elbaz et al. (PNY Exhibit
`
`1003).
`
`B,
`
`Claims 1, 2, 8—10, and 16 of the Chung ‘879 Patent are unpatentable
`
`as obvious under 35 U.S.C. § 103 over Elbaz et al.
`
`in view of
`
`Applicant—Admitted Prior Art (A__A_l_’_A).
`
`C.
`
`Claims 1, 3-9, and 11-21 of the Chung ‘879 Patent are unpatentable as
`
`obvious under 35 U.S.C. § 103 over Elbaz et al. in view of Deng et al.
`
`(PNY Exhibit 1004).
`
`I
`
`D.
`
`Claims 2 and 10 of the Chung ‘879 Patent are unpatentable as
`
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`

`

`obvious under 35 U.S.C. § 103 over Elbaz et al. in view of Qeng_e_t
`
`_a_l., and further in view of AABA
`
`Elbaz et al. and Deng et al. are prior art to the Chung ‘879 Patent under 35
`
`U.S.C. § 102(b) because each was published or issued more than 1 year prior to the
`
`filing date of the Chung ‘879 Patent.
`
`IX. Overview of the Chung ‘879 Patent
`
`The Chung ‘879 Patent relates to a universal serial bus (USB) memory plug.
`
`The memory plug includes a housing with a plurality of orientated indentations and
`
`
`a plurality of concave props. See, gg_., 4:17—27. A print circuit board assembly is
`
`positioned in the housing.
`
`~S_@ i_c_l. The orientated indentations facilitate the
`
`memory plug to be connected when the memory plug is inserted into a female USB
`
`socket.
`
`§_e_e_ i_d_. The printed circuit board assembly is “fixed by means of pressing”
`
`of the concave props.
`
`_S_e_e i_d.
`
`The disclosure of the Chung ’879 Patent admits that certain limitations
`
`recited in the asserted claims were well known at the time of the alleged invention.
`
`For example, the Chung ‘879 Patent admits that the orientated indentations were
`
`known prior to the filing date of the Chung ‘879 Patent. SE, fig” FIG. 1; 1:41-52.
`
`The Chung ‘879 Patent also admits that it
`
`is known in the art for the USB
`
`connector to be configured to be plugged into a USB connector on a personal
`
`
`computer or other hosting device. See, gg, 1:32—40. Further, the Chung ‘879
`
`ME1 16752385V.1
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`

`

`Patent admits that it is known in the art to provide a printed circuit board assembly
`
`(PCBA) 12 disposed in the housing 11. $3, gag” FIG. 1; 1:41—52. Still further,
`
`the Chung ‘879 Patent admits that the housing can be a metallic conductive
`
`housing.
`
`_S_ee, eg, 1:41-52. These admiSsions are referred to herein as Applicant
`
`Admitted Prior Art (AfiA).
`
`X.
`
`Claim Construction
`
`PNY respectfully notes that all of the claim terms are to be construed in
`
`accordance with their plain and ordinary meaning under a broadest reasonable
`
`interpretation standard in light of the specification of the patent and from the
`
`perspective of one of ordinary skill in the art.
`
`_S_§e_ 37 CPR. § 42.100(b).
`
`To meet the broadest reasonable interpretation standard, the term “concave”
`
`should be construed herein to encompass a prop that extends inwardly from a
`
`housing. This is consistent with the Patentee’s use of the term in the Chung ‘879
`
`Patent.
`
`For example, with reference to FIG. 6 of the Chung ‘879 Patent
`
`reproduced below, the concave props 512 extend inwardly from the housing 51.
`
`ME1 1675238511
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`

`

`
`
`Fig. 6
`
`Further, nothing in the file history of the Chung ‘879 Patent contradicts the
`
`foregoing construction.
`
`XI.
`
`The Patent Claims are Invalid Under 35 U.S.C. §§ 102—103
`
`PNY respectfully submits that Claims 1-21 are unpatentable under 35 U.S.C.
`
`§§ 102 and/or 103 as specifically demonstrated in the following claim charts.
`
`A.
`
`Claims 1, 8, 9, and 16 0f the Chung ‘879 Patent are unpatentable
`as anticipated under 35 U.S.C. § 102(b) by Elbaz et al.
`
`Elbaz et al. is prior art under 35 U.S.C. § 102(b) because it was published on
`
`December 23, 2004, which is more than 1 year prior to the filing date of the Chung
`
`‘879 Patent. 'Elbaz et a1. anticipates Claims 1, 8, 9, and 16, as follows:
`
`
`Claim 1
`Elbaz et al.
`gPNY Exhibit 1003)
`
`
`
`
`
`ME1 16752385V.1
`
`
`
`
`1. A Universal Serial Bus I Elbaz et al. discloses a USB memory device that
`(USB) memory plug,
`includes a plug. In the embodiment shown in FIGS.
`comprising:
`10a-10c, the device comprises an adaptor 514 that can
`
`be plugged into a USB port of a computer. See, gg_.,
`FIGS. lOa—lOc; andfi 3,16, 25, and 43. An
`
` 6
`
`

`

`
`
`integrated circuit module 5 is provided in the adaptor
`514, and complies with Subscriber Identity Module
`(SIM) or International Organization for
`Standardization (ISO) 7816 specifications. See 11 66.
`The module 5 is thus a memory since it stores
`information for identification purposes.
`
`
`The adaptor 514 is a housing for the module 5. S_ee_,
`gg, FIGS. 10a-10c (reproduced below).
`
`
`
`
`
`Egg.10A Eig.10B
`
`Egg.10C
`
`The adaptor 514 includes openings 512 that are
`orientated indentations that cooperate with locking
`blades 33a, 33b to lock the adaptor 514 into a USB
`
`port. See, gg, FIGS. 7a—7c and lOa—lOb; and W 48,
`49, 54, and 63.
`
`The adaptor 514 also includes means 516 for raising
`the module 5, which contact and support the module
`5. See, gg, FIGS. 10a—10c; and 11 61. As can be seen
`in FIGS. 10a and ICC, the means 516 are concave in
`cross—section, and are thus concave props. See FIGS.
`
`10a, 10c.
`
`Elbaz et a1. discloses that the adaptor 514 includes
`openings 512 that are intended to receive locking
`blades 33a, 33b of the USB port when the adaptor 514
`is inserted into the USB port 3. SE, e_.g_., W 47, 48,
`and 63. Further, the USB port 3 is a female USB
`socket as it receives the adaptor 514.
`
`J
`
`
` wherein said plurality of
`
`
`
`a housing having a
`plurality of orientated
`indentations and a
`
`plurality of concave
`
`Pmps,
`
`orientated indentation
`
`facilitates said USB
`
`memory plug to be
`connected while said USB
`
`memory plug is inserted
`into a female USB socket;
`
`and
`
`ME1 16752385v.1
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`

`a print circuit board
`.
`assembly (PCBA)
`disposed in said housing,
`
`
`The module 5 is an integrated circuit (printed circuit
`board assembly). 532, g, 111] 11 and 15. The module
`
`5 is positioned within the adaptor (housing) 514. See,
`§Lg_., FIGS. 10a— 1 Oc.
`
`
`The module 5 (PCBA) is held (fixed) in position
`between the means 516 and the guidance means 515.
`S_ee_, gg, FIGS. 10a—10c; and 11 60.
`
`wherein said PCBA is
`
`and a space is formed
`between said housing and
`said PCBA.
`
`fixed by means of
`pressing of said plurality
`of concave props,
`
`Spaces are formed between the module 5 (PCBA) and
`the adaptor (housing) 514.
`_S_e_e, ggg FIG. 10c
`(reproduced below with annotations and
`magnification).
`
`515
`
`
`
`
`
` The means 516 support the module 5 (PCBA) such
`
`
`
`
`
`Claim 8
`
`Elbaz et al.
`
`gPNY Exhibit 1003 )
`
`
`8. The USB memory plug
`according to claim 1,
`wherein the plurality of
`concave props are used to
`support said PCBA so that
`a space is formed between
`said housing and said
`PCBA.
`
`
`that spaces are formed between the adaptor 514 and
`the module 5. §;e_e_, gg, FIG. 100 (reproduced in the
`chart for Claim 1 above with annotations and
`
`magnification).
`
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`
`
`Claim 9
`
`Elbaz et al.
`
`(PNY Exhibit 1003)
`
`9. A USB memory plug,
`comprising:
`
`
`Elbaz et a1. discloses a USB memory device that
`includes a plug. In the embodiment shown in FIGS.
`lOa—lOc, the device comprises an adaptor 514 that can
`be plugged into a Universal Serial Bus (USB) port of a
`computer. See, eg, FIGS. 10a-10c; and 1H] 3, 16, 25,
`and 43. An integrated circuit module 5 is provided in
`the adaptor 514, and complies with Subscriber Identity
`Module (SIM) or International Organization for
`Standardization (ISO) 7816 specifications. Se; 1] 66.
`The module 5 is thus a memory since it stores
`information for identification purposes.
`
`The module 5 is an integrated circuit (printed circuit
`a print circuit board
`board assembly). See, gg, W 11 and 15.
`assembly (PCBA); and
`
`The adaptor 514 is a housing for the module 5. SEE,
`_e_.g;, FIGS. 10a-100 (reproduced below).
`
`a housing having a
`plurality of concave
`
`
` The module 5 (PCBA) is positioned within the adaptor
` wherein said PCBA is
`
`props,
`
`
`
`gig. 10A
`
`
`gig. 10B
`
`Egg. 10C
`
`The adaptor 514 also includes means 516 for raising
`the module 5, which contact and support the module
`5. SE, gg, FIGS. 10a—10c; and 11 61. As can be seen
`in FIGS. 10a and ICC, the means 516 are concave in
`cross—section, and are thus concave props. _S_e§ FIGS.
`
`10a, IOc.
`
`_S__ee_, 59g, FIGS. lOa—lOc.
`(housing) 514.
`disposed in said housing;
`
`
`ME1 16752385V.1
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`
`
`said plurality of concave
`props protrude inward to
`fix said PCBA, and a
`space is formed between
`said housing and said
`PCBA.
`
`Elbaz et al. discloses that the means 516 (concave
`props) protrude inward, and the module 5 (PCBA) is
`held (fixed) in position between the means 516 and
`the guidance means 515. 533, 9g, FIGS. 10a—10c;
`and 1] 60. Spaces are formed between the module 5
`(PCBA) and the adaptor (housing) 514. &, ggg
`FIG. 10c (reproduced below with annotations and
`magnification).
`
`515
`
`
`
`gig... 10C
`
`
`
`
`
`Claim 16
`
`Elbaz et a].
`
`(PNY Exhibit 1003)
`
`
`J
` 16. The USB memory
` F The means 516 (concave props) support the module 5
`
`so that it is positioned between and only contacts the
`
`means 516 and the guidance means 515. See, eg,
`FIG. 100.
`
`plug according to claim 9,
`wherein the plurality of
`concave props are used to
`support said PCBA so that
`said PCBA is not in direct
`
`contact with said housing,
`
`and a space is formed
`between said housing and
`said PCBA.
`
`Spaces are formed between the module 5 (PCBA) and
`the adaptor (housing) 514. fig, ggm FIG. 10c
`(reproduced in the chart for Claim 9 above with
`. annotations and magnification).
`
`
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`

`B.
`
`the Chung ‘879 Patent are
`Claims 1, 2, 8-10, and 16 of
`unpatentable as obvious under 35 U.S.C. § 103 over Elbaz et al. in
`
`view of AAPA
`
`While PNY submits that Elbaz et al. anticipates Claims 1, 8, 9, and 16 as set
`
`forth above in Section XI (A), PNY also submits that Claims 1, 2, 8-10, and 16 are
`
`obvious over Elbaz et al. in View of _A_A_P;4.
`
`AA_P_A_ can be relied upon for at least two teachings: (i) explicit use of the
`
`exact terminology “printed circuit board assembly”; and (ii) that it was known in
`
`the art prior to the filing of the Chung ‘879 Patent for the housing to be formed of a
`
`metallic conductive material. See, e_.g;, Chung ‘879 Patent at 1:41—52. While the
`
`claim charts include teachings of AAEA for other claimed limitations,
`
`these
`
`teachings are provided in the event that the Board finds that a limitation is not
`
`present in Elbaz et al., and to provide context for the teachings of AALA.
`
`PNY submits that it would have been obvious to a person of ordinary skill in
`
`the art to combine the teachings of Elbaz et al. with the teachings of A_A_lfl, so that
`
`(i) the USB device of Elbaz et al. includes a printed circuit board assembly as
`
`
`expressly taught by AAPA; and (ii) the USB memory device of Elbaz et al.
`
`includes a metallic housing, as also taught by AAPA.
`
`With respect to point (i) above, the USB device of Elbaz et al. comprises an
`
`adaptor that is plugged into a USB port of a computer.
`
`fies; ggw FIGS.
`
`lOa—lOc;
`
`and W 3, 16, 25, and 43. An integrated circuit module 5 is provided in the adaptor
`
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`514, and complies with Subscriber
`
`Identity Module (SIM) or
`
`International
`
`Organization for Standardization (ISO) 7816 specifications. SE 11 66. By virtue of
`
`being a card that stores identification information, Elbaz et a1. discloses that the
`
`module includes memory, and it would have been obvious to a person of ordinary
`
`skill in the art to fashion the module 5 as a printed circuit board assembly, as
`
`taught by 6&5.-
`
`Specifically,
`
`the AfiA of the Chung ‘879 Patent discloses that it was
`
`known in the art prior to the filing of the Chung ‘879 Patent to provide a USB
`
`connector with a housing 11 having a PCBA 12 for providing memory storage.
`
`_S_e_:_e, ggn FIG. 1; 1:41-52.
`
`PCBAs were thus clearly well-known at the time of
`
`filing of the Chung ‘879 Patent, and particularly in connection with USB flash
`
`drives. Modifying the USB device of Elbaz et al. to include the printed circuit
`
`board assembly of A_A_P_A_ is nothing more than combining prior art elements
`
`according to known methods to yield predictable results. SQ M.P.E.P. § 2143(a).
`
`Moreover, one of ordinary skill in the art would understand that the printed circuit
`
`board assembly of AM could be used with USB memory devices, and that doing
`
`so is nothing more than a mere substitution of a well—known type of circuit
`
`configuration (PCBA) for the module 5 of Elbaz et a1. Se_e_ M.P.EP. § 2143(b).
`
`With respect to point (ii) above, AEQA teaches that it is known in the art for
`
`a housing to be made of a metallic conductive material. See, gg_., 1:41—52.
`
`It
`
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`
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`

`would be obvious to one of ordinary skill in the art to employ any known material
`
`for the housing as this is a mere matter of design choice. Specifically, PNY
`
`submits that it would have been obvious to a person of ordinary skill in the art to
`
`combine the teachings of AAEA with the teachings of Elbaz et al., so that the
`
`housing is made from a metallic conductive material. See M.P.E.P. § 2143 (a).
`
`Such would be a simple substitution to yield predictable results.
`
`_S_e_e M.P.E.P. §
`
`2143 (b). Still further, AAEA explicitly teaches the use of metallic components
`
`with a USB flash drive connector, and thus one of ordinary skill in the art would be
`
`motivated to provide such a connector in the device of Elbaz et a1. 5% M.P.E.P. §
`
`2143(g).
`
`Claim charts illustrating the combination of these two references are
`
`provided below for the Board’s consideration.
`_,
`
`Claim 1
`Elbaz et al. [Block Type]
`(PNY Exhibit 1003)
`in View of AAPA [Italics Type]
`
`1. A Universal Serial Bus Elbaz et a1. discloses a USB memory device that
`(USB) memory plug,
`includes a plug. In the embodiment shown in FIGS.
`comprising:
`10a-10c, the device comprises an adaptor 514 that can
`be plugged into a Universal Serial Bus (USB) port of a
`computer. See, _e_.g,, FIGS. 10a—100; and W 3, 16, 25,
`and 43. An integrated circuit module 5 is provided in
`the adaptor 514, and complies with Subscriber Identity
`Module (SIM) or International Organization for
`Standardization (ISO) 7816 specifications. SE 11 66.
`The module 5 is thus a memory since it stores
`information for identification purposes.
`
`
`
`
`
`
`
`
`
`ME1 1675238511
`
`13
`
`

`

`
`The AAPA ofthe Chung ‘8 79 Patent discloses that
`USB memory plugs were known in the art prior to the
`filing of the Chung ‘879 Patent. 5.19; fig: FIG. 1;
`1:10—2:26.
`
`plurality of orientated
`indentations and a
`
`plurality of concave
`
`props,
`
`The adaptor 514 is a housing for the module 5. SE,
`_e_.g_., FIGS. lOa—IOC (reproduced below).
`
`
`
`gig. 10A
`
`fig. 103
`
`Egg» 10c
`
`The adaptor 514 includes openings 512 that are
`orientated indentations that cooperate with locking
`blades 33a, 33b to lock the adaptor 514 into a USB
`port. _S_e§, _e_.g;, FIGS. 7a—7c and 10a—10b; and W 48,
`49, 54, and 63.
`
`The adaptor 514 also includes means 516 for raising
`the module 5, which contact and support the module
`5. See, 1g” FIGS. 10a—1OC; and ‘fi 61. As can be seen
`in FIGS. 10a and 100, the means 516 are concave in
`cross-section, and are thus concave props. S_ee_ FIGS.
`10a, 100.
`
`
` Elbaz et al. discloses that the adaptor 514 includes
` a housing having a
`
`The AAPA of the Chung ‘8 79 Patent discloses that it
`was known in the art prior to the filing of the Chung
`‘8 79 Patent to provide a USB connector with a
`housing 11 having a plurality oforientated
`indentations 1]].
`_S_e§, ggu FIG. 1; 1:41—52.
`
`
`wherein said plurality of
`orientated indentation
`
`facilitates said USB
`
`memory plug to be
`connected while said USB
`
`ME1 16752385V.1
`
`openings 512 that are intended to receive locking
`blades 33a, 33b of the USB port when the adaptor 514
`is inserted into the USB port 3. See, gg, W 47, 48,
`and 63. Further, the USB port 3 is a female USB
`
`14
`
`

`

`
`socket as it receives the adaptor 514.
`memory plug is inserted
`into a female USB socket;
`
`and
`
`The AAPA of the Chung ‘8 79 Patent discloses that it
`was known in the art prior to the filing of the Chung
`‘8 79 Patent to provide a USB connector with a
`housing I 1 having a plurality oforientated
`indentations 11]. See; eLgu FIG. I; 1:41-52. The
`
`AAPA of the Chung ‘879 Patent discloses that it was
`known in the art prior to the filing of the Chung ‘8 79
`Patentfor the USB connector to be configured to be
`plugged into a USB connector on a personal computer
`or other hosting device.
`§_e_eJ egg; 1:32—40.
`
`The module 5 is an integrated circuit (printed circuit
`a print circuit board
`board assembly). §_e_e, gg, W 11 and 15. The module
`assembly (PCBA)
`5 is positioned within the adaptor (housing) 514.
`_S_e_e_,
`disposed in said housing,
`gg, FIGS. lOa—loc.
`
` Spaces are formed between the module 5 (PCBA) and
`
`
`
`
`
`The AAPA ofthe Chung ‘8 79 Patent discloses that it
`was known in the art prior to the filing of the Chung
`‘8 79 Patent to provide a USB connector with a
`housing I 1 having a PCBA 12 for providing memory
`storage.
`§__e_e, ggg FIG. 1; 1:41—52.
`
`The module 5 (PCBA) is held (fixed) in position
`l wherein said PGBA is
`between the means 516 and the guidance means 515.
`
`See, eg, FIGS. 10a—10c; and 11 60.
`
`fixed by means of
`pressing of said plurality
`of concave props,
`
`and a space is formed
`between said housing and
`said PCBA.
`
`the adaptor (housing) 514. fiee, gg, FIG. 100
`(reproduced below with annotations and
`magnification).
`
`
`MEl 16752385V.1
`
`15
`
`

`

`
`
`516
`
`fig 100
`
`Claim 2
`
`
`Elbaz et al. [Block Type]
`(PNY Exhibit 1003)
`in view of AAPA [Italics Type]
`
`The AAPA of the Chung ‘8 79 Patent discloses that it
`was known in the art prior to the filing of the Chung
`‘8 79 Patent to provide a USB connector with a
`housing I I that is a “metallic conductive” housing.
`§_e_e, 2g” FIG. I; 1:41-52.
`conductive material.
`
`
`2. The USB memory plug
`according to claim 1,
`wherein said housing is
`made from a metallic
`
`
` The means 516 support the module 5 (PCBA) such
` 8. The USB memory plug
`
`
`
`Claim 8
`
`Elbaz et al. [Block Type]
`(PNY Exhibit 1003)
`in view of AAPA [Italics Type]
`
`that spaces are formed between the adaptor 514 and
`the module 5.
`_S;c_e, Egg FIG. lOc (reproduced in the
`chart for Claim 1 above with annotations and
`
`according toclaim 1,
`wherein the plurality of
`concave props are used to
`support said PCBA so that
`a space is formed between
`said housing and said
`PCBA.
`
`
`magnification).
`
`ME1 16752385V.1
`
`16
`
`

`

`
`Elbaz et al. [Block Type]
`(PNY Exhibit 1003)
`in view of AAPA [Italics Type]
`
`Claim 9
`
`9. A USB memory plug,
`comprising:
`
`1_
`Elbaz et al. discloses a USB memory device that
`includes a plug. In the embodiment shown in FIGS.
`10a—10c, the device comprises an adaptor 514 that can
`be plugged into a Universal Serial Bus (USB) port of a
`computer. _S__ee,e__g_., FIGS. 10a-1OC; and W 3 16,25,
`and 43. An integrated circuit module 5is provided1n
`the adaptor 514, and complies with Subscriber Identity
`Module (SIM) or International Organization for
`Standardization (ISO) 7816 specifications _S___ee 11 66.
`The module 5 is thus a memory since it stores
`information for identification purposes.
`
`The AAPA of the Chang ‘8 79 Patent discloses that
`USB memory plugs were known in the art prior to the
`filing ofthe Chung ‘879 Patent. See, _e_.gL, FIG. 1;
`1:10-2:26.
`
`
`
`
`
`
`The module 5 is an integrated circuit (printed circuit
`board assembly).
`_S_e_e_, _e_.g;, 1111 11 and 15.
`
`a print circuit board
`assembly (PCBA); and
`
`The AAPA of the Chang ‘8 79 Patent discloses that it
`was known in the art prior to the filing of the Chang
`‘8 79 Patent to provide a USB connector with a
`housing I I having a PCBA 12 for providing memory
`storage. Sig egg FIG. I; 1:41-52.
`
`The adaptor 514 is a housing for the module 5. S_ee_,
`cg, FIGS. 10a—1OC (reproduced below).
`
`a housing having a
`plurality of concave
`
`pmps,
`
`L
`
`ME1 16752385V.1
`
`17
`
`

`

`
`
`
`
`Egg. 10A
`
`
`fig. 108
`
`Egg. 10C
`
`The adaptor 514 also includes means 516 for raising
`the module 5, which contact and support the module
`5. See, e_.g_., FIGS. lOa—lOC; and ‘ll 61. As can be seen
`in FIGS. 10a and 100, the means 516 are concave in
`cross—section, and are thus concave props. See FIGS.
`
`10a, 10c.
`
`The module 5 (PCBA) is positioned within the adaptor
`(housing) 514.
`_S_e_e, gg, FIGS. lOa—lOC.
`
`wherein said PCBA is
`
`
`
` said plurality of concave
`
`disposed in said housing;
`
`The AAPA ofthe Chang ’8 79 Patent discloses that it
`was known in the art prior to the filing of the Chang
`‘8 79 Patent to provide a USB connector with a
`housing 11 having a PCBA 12 for providing memory
`storage. See, ggu FIG. I; 1:41—52.
`
`props protrude inward to
`fix said PCBA, and a
`space is formed between
`said housing and said
`PCBA.
`
`r“Elbaz et al. discloses that the means 516 (concave
`props) protrude inward, and the module 5 (PCBA) is
`held (fixed) in position between the means 516 and
`the guidance means 515. See, gg, FIGS. 1031—100;
`and 1] 60. Spaces are formed between the module 5
`(PCBA) and the adaptor (housing) 514. fig, egg”
`FIG. 10c (reproduced below with annotations and
`magnification).
`
`
`ME1 16752385v.1
`
`18
`
`

`

`
`
`
`
`
`
`Claim 10
`
` 16. The USB memory
`
` Spaces are formed between the module 5 (PCBA) and
`
`Elbaz et al. [Block Type]
`(PNY Exhibit 1003)
`in view of AAPA [Italics Type]
`
`
`The AAPA of the Chung ‘8 79 Patent discloses that it
`was known in the art prior to thefiling of the Chung
`‘8 79 Patent to provide a USB connector with a
`housing 11 that is a “metallic conductive ” housing.
`§eg fig} FIG. 1; 1:41-52.
`\ conductive material.
`
`
`10. The USB memory
`plug according to claim 9,
`wherein said housing is
`made from a metallic
`
`
`
`Claim 16
`
`Elbaz et 211. [Block Type]
`(PNY Exhibit 1003)
`in View of AAPA [Italics Type]
`
`plug according to claim 9,
`wherein the plurality of
`concave props are used to
`support said PCBA so that
`said PCBA is not in direct
`
`The means 516 (concave props) support the module 5
`so that it is positioned between and only contacts the
`
`means 516 and the guidance means 515. See, ggm
`FIG. 100.
`
`contact with said housing,
`
`
`and a space is formed
`between said housing and
`said PCBA.
`
`_S_ee_, _e_.g;, FIG. 10c
`the adaptor (housing) 514.
`(reproduced in the chart for Claim 9 above with
`annotations and magnification).
`
`
`ME1 16752385V.1
`
`19
`
`

`

`C.
`
`the Chung ‘879 Patent are
`3—9, and 11-21 of
`1,
`Claims
`unpatentable as obvious under 35 U.S.C. § 103 over Elbaz et al. in
`view of Deng et al.
`
`PNY submits that it would have been obvious to a person of ordinary skill
`
`in the art to combine the teachings of Elbaz et a1. with the teachings of Deng et al.,
`
`so that (i) the USB device of Elbaz et a1.
`
`includes a printed circuit board as
`
`expressly taught by Deng et al.; (ii) the USB device of Elbaz et a1. includes a light—
`
`emitting diode (LED), as also taught by Deng et al.; and (iii) the integrated circuit
`
`of Elbaz et al. includes a flash memory, a microcontroller (memory controller), and
`
`a USB interface controller, as further taught by Deng et a1.
`
`Deng et a1. discloses an electronic flash memory external storage device for
`
`
`interconnection with a USB port of a computer. See, 9g, Abstract; FIGS.
`
`l—3;
`
`6166-7237. Deng et a1. discloses a printed circuit board 51 that is contained in a
`
`
`casing (housing) 5. See, gg, FIG, 2; and 6:66—7z5. The printed circuit board of
`
`Deng et a1. includes a flash memory 1, a microcontroller (memory controller) 21,
`
`and a USB interface controller 22. SE, _e_.g;, FIG. 3; and 7:9—31. Deng et al. also
`
`discloses an LED V3 for indicating the operating state of the device. m, FIG.
`
`6; 825—8; and 13:49—52. Deng et a1. is prior art under 35 U.S.C. § 102(b) because it
`
`was issued on December 7, 2004, which is more than 1 year prior to the filing date
`
`of the Chung ‘879 Patent.
`
`ME1 16752385V.1
`
`20
`
`

`

`With respect to point (i) above, the USB drive of Elbaz et al. comprises an
`
`adaptor that is plugged into a USB port of a computer. See, gg, FIGS. 10a—100;
`
`and W 3, 16, 25, and 43. An integrated circuit module 5 is provided in the adaptor
`
`514, and complies with Subscriber
`
`Identity Module (SIM) or
`
`International
`
`Organization for Standardization (ISO) 7816 specifications. See 11 66. By virtue of
`
`being a card that stores identification information, Elbaz et a1. discloses that the
`
`module includes memory, and it would have been obvious to a person of ordinary
`
`skill in the art to fashion the module 5 as a printed circuit board, as taught by D_eng
`
`et a1.
`
`Specifically, Deng et a1. discloses a printed circuit board 51 that is contained
`
`in a casing (housing) 5. fig, gg, FIG. 2; and 6:66-7:5. PCBs were thus clearly
`
`well—known at the time of filing of the Chung ‘879 Patent, and particularly in
`
`connection with USB flash drives. Modifying the USB device of Elbaz et al. to
`
`include the printed circuit board of Deng et a1. is nothing more than combining
`
`prior art elements according to known methods to yield predictable results. See
`
`M.P.E.P. § 2143(a). Moreover, one of ordinary skill in the art would understand
`
`that the printed circuit board of Deng et a1. could be used with USB memory
`
`devices, and that doing so is nothing more than a mere substitution of a well—
`
`known type of circuit configuration (PCB) for the module 5 of Elbaz et a1. Se;
`
`M.P.E.P. § 2143(b).
`
`ME1 16752385v.1
`
`21
`
`

`

`With respect to point (ii) above, Deng et al. discloses an LED V3 for
`
`indicating the operating state of the device. See, gg, FIG. 6; 825—8; and 13:49—52.
`
`Modifying the USB device of Elbaz et al. to include the LED of Deng et al.
`
`is
`
`nothing more than combining prior art elements according to known methods to
`
`yield predictable results. gee M.P.E.P. § 2143(a); One of ordinary skill in the art
`
`would understand that the LED of Deng et al. could be used with USB devices.
`
`Further, adding an LED to the USB device

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