PNY Technologies, Inc.v.Phison Electronics Corp.

Patent Trial and Appeal Board

Feb 4, 2015

11384371 (P.T.A.B. Feb. 4, 2015)

Trials@uspto.gov Paper 36
571-272-7822 Entered: February 4, 2015

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 B2
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and RAMA G. ELLURU,
Administrative Patent Judges.

TURNER, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 Case IPR2014-00150 has been joined with this proceeding.
IPR2013-00472
Patent 7,518,879 B2
2
I. INTRODUCTION
PNY Technologies, Inc. (“PNY”) filed a Petition (“1st Pet.,” Paper 2)
requesting inter partes review of claims 1–4, 8–12, and 16 of U.S. Patent
No. 7,518,879 B2 (“the ’879 Patent”). Patent Owner Phison Electronics
Corp. (“Phison”) filed a Preliminary Response thereto ( Paper 7). On
February 4, 2014, we instituted an inter partes review of claims 1–4, 8–12,
and 16 on multiple grounds of unpatentability alleged in the Petition. Paper
10 (“1st Dec.”). PNY also filed a second Petition (“2nd Pet.,” Paper 1,
IPR2014-00150), alleging other grounds, and Phison filed a Preliminary
Response thereto (Paper 6, IPR2014-00150). On April 28, 2014, we
instituted an inter partes review of claims 1–21 on multiple grounds of
unpatentability alleged in the second Petition. (“2nd Dec.,” Paper 8,
IPR2014-00150). We granted a joint motion for joinder (Paper 7, IPR2014-
00150), joining the IPR2014-00150 case with the IPR2013-00472 case
(Paper 9, IPR2014-00150).
After institution of trial, Phison filed a Patent Owner Response (PO
Resp.,” Paper 24) and PNY filed a Reply thereto (“Reply,” Paper 29). An
oral argument was held on November 12, 2014. The transcript of the
consolidated hearing has been entered into the record. “Tr.,” Paper 36.
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
PNY has shown by a preponderance of the evidence that claims 1–21
of the ’879 Patent are unpatentable.
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IPR2013-00472
Patent 7,518,879 B2
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B. Illustrative Claim
The ’879 Patent includes claims 1–21, and a trial was instituted on all
of those claims. Claims 1, and 9, and 17 are independent claims.
Independent claim 1 is reproduced below (with emphases):
1. A Universal Serial Bus (USB) memory plug,
comprising:
a housing having a plurality of orientated indentations
and a plurality of concave props, wherein said plurality of
orientated indentation facilitates said USB memory plug to be
connected while said USB memory plug is inserted into a
female USB socket; and a print circuit board assembly (PCBA)
disposed in said housing, wherein said PCBA is fixed by means
of pressing of said plurality of concave props, and a space is
formed between said housing and said PCBA.

C. Prior Art Relied Upon
PNY relies upon the following prior art references in its alleged
grounds of unpatentability:
Takahashi US 2004/0027809 A1 June 13, 2007 Ex. 1006
Minneman US 7,352,601 B1 Apr. 1, 2008 Ex. 1003
Elbaz US 2004/0259423 A1 Dec. 23, 2004 Ex. 10032
Deng US 6,829,672 B1 Dec. 7, 2004 Ex. 10042
Admitted Art – the Background of the Invention section of the ’879
Patent (Ex. 1001, 1:41–52; Fig. 1; 1:10–2:26).

2 The cited exhibit numbers come from exhibits in the IPR2014-00150
proceeding.
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Patent 7,518,879 B2
5
D. Grounds of Unpatentability Instituted for Trial
The following table summarizes the challenges to patentability that
were instituted for inter partes review3:
References Basis Claims challenged
Minneman and Takahashi § 103 1–4, 8–12, and 16
Elbaz and Deng § 103 1, 3–9, and 11–21
Elbaz, Deng, and Admitted Art. § 103 2 and 10

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Claim terms also are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech, Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Concave Prop
The claim term “concave prop” is recited in independent claims 1, 9,
and 17. We determined, in the Decision to Institute, that “concave prop”
means “a structure curving inwards from a housing providing support.” 2nd
Dec. 8. Phison disputes this construction, arguing that “concave” must

3 An anticipation ground over Minneman was also part of the instituted
grounds (1st Dec. 16), but was later removed as a ground of the trial. Paper
16, 3.
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Patent 7,518,879 B2
6
include the aspect of forming a recess and that it must be understood that a
“prop” must also support one thing apart from another. PO Resp. 8–23.
PNY counters that the construction espoused in the Decision to Institute is
correct. Reply 1–6. We are persuaded partially by Phison’s arguments and
amend our construction as discussed below.
With respect to the “concave” aspect of “concave prop,” we are
persuaded that construing “concave” as only “curving inwards from a
housing” does not conform to the ordinary meaning of the term. We stated
in the second Decision to Institute that a recess “cannot act as a prop, . . .
[t]he portion that acts as a prop is the portion that extends inwardly from the
housing,” and “that ‘concave’ need not require the formation of a recess.”
2nd Dec. 7. We are now persuaded that construing “concave” such that a
convex protrusion that acts as a prop, without a concave portion,
impermissibly “reads out” the concave aspect of “concave prop.” We also
are persuaded that there is not sufficient evidence in the instant record that
shows that Phison acted as its own lexicographer, redefining the term
“concave prop.”
PNY argues that the ’879 Patent fails to describe the term “concave”
as including a recess and that Phison should not be allowed “to impart the
‘recess’ limitation into its construction of concave.” Reply 2. We do not
agree that including the recess aspect can only be proper if explicitly recited
in the Specification. The plain, ordinary meaning of “concave,” in the
context of the claim language, includes the meaning of having a recess, thus,
one of ordinary skill in the art would have included that aspect in any
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Patent 7,518,879 B2
7
possible construction of “concave.” Equally, we are unpersuaded that a lack
of illustration in the drawings of the ’879 Patent showing curvature is
dispositive. Reply 3–4. As PNY has pointed out, both parties agree that the
term “concave” includes the concept of “curving inwards” (Reply 1) – a lack
of illustrated curvature does not undermine that construction where the plain,
ordinary meaning of “concave” would imply curvature.
In addition, Phison has effectively disclaimed the claims covering
embodiments where the recess has been filled-in or covered:
JUDGE ELLURU: Say I take that product from figure 6 and I
want to have a smooth housing. So I fill in those indentations
with rubber, okay, because I want a smooth outer surface.
What is the shape of that prop at that point?
MR. BARKAN: If it is completely filled in, it is no longer
concave. It is also not the invention of the claims because we
are no longer being oriented indentations.
Tr. 38. Based on the plain meaning of “concave,” consistent with the claim
language and the ’879 Patent Specification, we construe “concave” to mean
“curving inwards from a housing to form a recess.”
With respect to Phison’s arguments regarding the “prop” portion of
“concave prop,” we are not persuaded. Phison argues that the construction
for “prop” is incomplete because it encompasses structures that cannot be
props because they fail to maintain one structure apart from another. PO
Resp. 19–20. Phison continues that in the context of the ’879 Patent, the
concave props supplant the flake spacer which provides separation, and the
separation function of the props is essential to meeting the explicit objects of
the invention. PO Resp. 20–21. We do not agree. Claim 1 recites, for
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8
example, “a space is formed between said housing and said PCBA,” such
that ascribing the “separation” to the claim term “prop” is unnecessary.
Requiring that a prop also provides for separation of elements creates an
unduly narrow construction. We find no explicit recitation in the
Specification of the ’879 Patent that requires a prop to provide separation for
one thing apart from another.
Phison also argues that the claims use both words, “prop” and
“support,” such that defining “prop” synonymously with “support” is
impermissible since it would provide different claim terms with the same
meanings. PO Resp. 21–22. We are persuaded, however, by PNY’s
arguments that claims 8, 16, and 19 recite “support” not as a noun, per the
independent claims, but as an infinitive, such as the “concave props are used
to support said PCBA.” Reply 5. If dependent claims recited “a support,” it
could be error to equate “support” and “prop,” but that is not the instant
circumstance.
As such, we amend our construction of “concave prop” to mean “a
structure curving inwards from a housing to form a recess providing
support.”
Fixed, to Fix
The claim terms “fixed” and “to fix” are recited in independent claims
1, 9, and 17, where we found that the meaning of “fixed” is “fastened
securely in position.” 2nd Dec. 8. This was a construction suggested by
Phison, but Phison argues that the construction used in the Decisions to
Institute “is broader than the plain meaning of the term ‘fixed’ as a skilled
IPR2013-00472
Patent 7,518,879 B2
9
artisan would have understood it at the time of the ’879 Patent, and thus, is
improper under the broadest reasonable interpretation standard.” PO Resp.
24. Phison argues that it is unclear how an object could be fastened securely
in position and yet unsecured in certain directions. Id. PNY counters that
the adopted construction need not be constrained to a single position such
that the object can never move. Reply 6–7.
We agree with PNY. It is not necessary for an object to be
constrained in all directions and along every degree of freedom to be
fastened securely in position. To the extent that Phison is arguing that
“fixed” should be equivalent to immovable or immobile, we conclude that
that is a different construction. We continue to find that the meaning of
“fixed” is “fastened securely in position.”

B. Principles of Law
To prevail in its challenges to the patentability of the claims, PNY
must prove unpatentability by a preponderance of the evidence. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
§ 103(a) if the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). To establish obviousness of a claimed
invention, all the claim limitations must be taught or suggested by the prior
art. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
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Patent 7,518,879 B2
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2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974).
A patent claim composed of several elements, however, is not proved
obvious merely by demonstrating that each of its elements was known,
independently, in the prior art. KSR, 550 U.S. at 419. In that regard, for an
obviousness analysis it is important to identify a reason that would have
prompted one of skill in the art to combine prior art elements in the way the
claimed invention does. Id. However, a precise teaching directed to the
specific subject matter of a challenged claim is not necessary to establish
obviousness. Id. Rather, obviousness must be gauged in view of common
sense and the creativity of an ordinarily skilled artisan. Id. Moreover,
obviousness can be established when the prior art itself would have
suggested the claimed subject matter to a person of ordinary skill in the art.
In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.

C. Claims 1–4, 8–12, and 16
– Alleged Obviousness Over Minneman and Takahashi
PNY asserts that claims 1–4, 8–12, and 16 of the '879 Patent are
unpatentable over Minneman and Takahashi under 35 U.S.C. § 103.
Independent claims 1 and 9 recite “concave props.” Phison argues that this
ground is defective because neither the protrusions of Takahashi nor the
captivating indentations of Minneman are concave according to the broadest
reasonable interpretation of the term. PO Resp. 25–34. PNY counters that
IPR2013-00472
Patent 7,518,879 B2
11
substantial evidence supports the conclusion that one of ordinary skill in the
art would shape the props of Minneman so that they are concave. Reply. 8–
10. Based on the our construction of “concave prop,” discussed above, we
are not persuaded that Minneman and Takahashi render claims 1–4, 8–12,
and 16 obvious under 35 U.S.C. § 103.
We have determined previously that Minneman does not disclose that
the captivating indentations are curving or that it would have been inherent
for them to have curvature based on their formation process. Paper 16, 3.
The rationale for altering the stand-offs of Minneman to have curvature
comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We
have acknowledged as well that protrusions in Takahashi do not disclose a
recess as a part thereof. Id. Based on our construction of “concave prop,”
we are not persuaded that one of ordinary skill in the art would have
modified Minneman’s stand-offs to be curved and have recesses based on
the disclosure of Takahashi.
PNY argues that Mr. Steven Visser, Phison’s expert, admitted during
his deposition that the “props” of Minneman could be shaped so that they are
concave, and that this is clear evidence that one of ordinary skill in the art
would have viewed shaping the structures of Minneman so that they are
concave as an obvious design choice. Reply 8; Ex. 1008, 90:11–16, 98:23–
99:1. Mr. Visser’s testimony is not persuasive, however, because he merely
acknowledges that Minneman’s stand-offs could be formed by forming a
recess in the housing, and that they could be curved in shape. This does not
address why the combination would have props which are concave with a
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recess when Takahashi’s elements are solid and it is not clear that
Minneman’s stand-offs have a recess. We find neither statement by Mr.
Visser to be persuasive.
As such, we are not persuaded that PNY has shown by a
preponderance of the evidence that independent claims 1 and 9, and for the
same reasons, dependent claims 2–4, 8, 10–12, and 16 of the ’879 Patent are
unpatentable over Minneman and Takahashi under 35 U.S.C. § 103.

D. Claims 1, 3–9, and 11–21
– Alleged Obviousness Over Elbaz and Deng
PNY asserts that claims 1, 3–9, and 11–21 of the ’879 Patent are
unpatentable over Elbaz and Deng under 35 U.S.C. § 103. Phison argues
that this ground is defective for several reasons. PO Resp. 42–56. PNY
counters those arguments. Reply 12–15. We are persuaded that PNY has
shown by a preponderance of the evidence that claims 1, 3–9, and 11–21 of
the ’879 Patent are unpatentable over Elbaz and Deng under 35 U.S.C.
§ 103.
Elbaz is directed to a dongle having a module with an integrated
circuit chip connected to a contact area flush with the module. Ex. 10034
¶ 1. Figures 10A, 10B, and 10C of Elbaz are reproduced below:

4 The cited exhibit numbers for Elbaz and Deng come from exhibits in the
IPR2014-00150 proceeding.
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IPR2013-00472
Patent 7,518,879 B2
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plus module assembly is inserted in the port 3: these means 516
can be ribs situated at the base of the connector 514 or on the
sides and thus cooperate with the guidance means 515. The
guidance means 515 of the module then also ensure the
positioning of the module at the correct height.
Id. ¶ 61 (emphasis added). Figure 10C of Elbaz illustrates that a space is
formed between the module and the adaptor housing, both above and below
the housing, as illustrated by PNY. 2nd Pet. 8.
We note that Elbaz also provides that:
The module 5 obtained using a method of manufacturing a chip
card 29 and depicted in FIG. 1 is composed of a plastic module
body 27 in which there is embedded an integrated circuit chip
connected to contact areas 28 flush with the surface of the said
module 5 and comprising at least four contact areas for
supplying current to the chip, communicating digital data and
earthing.
Ex. 1003 ¶ 11. The module, however, is not necessarily the same as the
claimed “printed circuit board assembly.” As illustrated in Figure 1 of
Elbaz, the integrated circuit chip is integrated into the chip card material and
there does not appear to be any printed circuit board.
Deng is directed to an electronic flash memory external storage device
having an access control circuit that, in cooperation with firmware, allows
for data transfer through a USB port. Ex. 1004, Abstract. Deng teaches
printed circuit board 51, with components mounted thereon, that is contained
within casing 5 with a USB connector 23. Id. at 6:66–7:5; Fig. 2. The
access control circuit 2 has microprocessor 21, USB interface controller 221,
and USB interface 231. Id. at 7:16–31; Fig. 3. The device also includes an
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LED, where various light states of the LED represent various operating
states. Id. at 13:49–52.
PNY argues that it would have been obvious to a person of ordinary
skill in the art to fashion the module of Elbaz as a printed circuit board, as
taught by Deng, per the independent claims. 2nd Pet. 21. PNY further
argues that such a modification would be nothing more than a mere
substitution of a well-known type of circuit configuration for the module
used in Elbaz. Based on the instant record, we agree. In addition, PNY also
argues that since Deng includes an LED for indicating the operating state of
the device, ordinarily skilled artisans would have incorporated such an LED
into the device of Elbaz, in view of its use in Deng, per claims 3–7, 13–15,
and 17–21. Id. at 22. We agree that the use of an LED in one device renders
its use obvious in the other device. Lastly, PNY argues that the use of a
flash memory, memory controller and USB interface controller, all disclosed
in Deng, in the device of Elbaz would have been obvious. Id. at 22–23.
PNY argues that such components are well-known, standard electrical
components, and that one of ordinary skill in the art would recognize their
utility to the device in Elbaz. Phison raises various arguments why this
combination fails to meet all of the claim limitations and would not be
obvious. We find Phison’s arguments, however, unpersuasive. Therefore,
we agree and are persuaded by Petitioner’s contentions that the combination
of Elbaz and Deng renders claims 1, 3–9, and 11–21 obvious.
Phison begins by arguing that the combination of Elbaz and Deng is
defective because the combination fails to teach or suggest that the “PCBA
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is fixed” by the concave props. PO Resp. 42–48. Phison argues that Elbaz’s
means for raising (516) does not fasten Elbaz’s module securely in any
position. Id. at 43. Phison continues that it is a means of locking the
module that fixes the module in place and not the means for raising or the
guidance means. Id. at 44. We do not agree. First, independent claims 1, 9,
and 17 do not require that the concave props act alone to fix the PCBA,
because of the use of “comprising” language in those claims, and merely
require that the concave props act to fix the PCBA.
Second, although Phison expounds on the lack of clarity in Elbaz’s
description of the interface between the module and adaptor, alleging that it
is unclear whether there is overlap, edge contact, or how tightly the module
is constrained (PO Resp. 45–47), the most obvious formulation is that the
guiding means and the raising means allow for the module to be placed in its
proper position. Elbaz details that the adaptor receives the module through
guiding means to place the module in the inserted, proper position. Ex. 1003
¶ 60. Although Phison focuses on the disclosure of Elbaz as providing for
“‘probabilities and possibilities’” (PO Resp. 47), we determine that one of
ordinary skill in the art would have read Elbaz as having the module touch
the guiding means and the raising means and being fixed, at least partially,
by that contact.
Phison also relies on the testimony of Mr. Visser. PO Resp. 45–47;
Ex. 2008 ¶¶ 44–48. Although Mr. Visser argues that the “guiding means
515 could loosely receive the module, allowing some movement of the
module 5 between the guiding means 515 and between the guiding means
IPR2013-00472
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515 and means for raising 516, yet still provide guidance to the module 5,”
(Ex. 2008 ¶ 48), for example, we do not find this testimony persuasive.
Although the Elbaz drawings and specification do not provide tolerances or
dimensions, we are persuaded that one of ordinary skill in the art would have
arrived at the conclusion that the module was received in the adaptor
through the guiding means and the raising means and maintained securely
such that vertical movement would not occur. Further, Mr. Visser
acknowledges that the guiding means and the raising means act to properly
position the module (Ex. 1008, 133:8–19), so that those aspects of the
adaptor would need to at least touch and come in contact with the module.
As such, we are not persuaded by Mr. Visser’s testimony that one of
ordinary skill in the art would not have understood that the module in Elbaz
would have been inserted and secured in position through the guiding means
and the raising means.
Phison also argues that the combination of Elbaz and Deng fails to
teach or suggest that the PCBA is fixed by means of pressing of the concave
props. PO Resp. 48–49. Phison argues that, at most, the means for raising
touch the module in certain circumstances and that touching cannot
constitute a disclosure of concave props that fix by pressing. Id. at 48.
Phison also cites to declarant Mr. Visser who opines that “[o]ne of skill in
the art would thus have understood pressing implies more than merely
touching or contacting.” Ex. 2008 ¶ 51. PNY counters that there is
frictional engagement between the module and the means for raising in
Elbaz when the module is inserted into the adaptor, which implies pressing
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of some kind. Reply 14–15. Additionally, PNY argues that the friction
between elements would not prevent insertion or removal of the module,
which was agreed to by Mr. Visser. Id. at 15; Ex. 1008, 139:1–3.
We agree with PNY. Similar to the discussion above with respect to
fixing of the module in the adaptor, there must be some sort of frictional
engagement to maintain the position of the module. If the module is
maintained in position by the ribs of the means for raising and the guidance
means, as discussed above, it must be pressed by the adaptor to achieve that
end. Such pressure need not be of the sort that would disallow removal of
the module or cause fracturing of the module, but be sufficient to maintain
the position. As pointed out by PNY, this position is critical so that when
the adaptor is inserted into the USB socket the contacts on the module would
be aligned properly. Reply 14. As such, we are persuaded that it would
have been obvious for one of ordinary skill in the art to have inserted the
PCBA of Deng into the adaptor of Elbaz to achieve a working memory plug,
such that the ribs of the means for raising would press and fix the PCBA into
its proper position and alignment.
Phison also argues that the combination of Elbaz and Deng is
defective because Elbaz teaches away from a combination that includes a
PCBA. PO Resp. 49–52. Phison argues that Elbaz teaches away because it
seeks to create a dongle which is less expensive to manufacture, and
discloses that chip cards provide the benefit of increased attack resistance
and the omission of certain elements. Id. at 50–51. Phison continues that a
PCBA would not provide the same attack resistance as chip cards and would
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require the inclusion of shielding elements, and would increase
manufacturing costs. Id. Phison also takes exception to our characterization
that “Elbaz provides a preference for the use of an integrated circuit chip
card [that] does not rise to the level of teaching away.” 2nd Dec. 15. We do
not agree.
Phison provides no evidence of the relative costs of PCBAs and chip
cards, such that an increase in manufacturing costs has not been
demonstrated. Although the use of a PCBA may require shielding and not
provide the same attack resistance, such disadvantages may be offset by the
lower relative cost of the PCBA. We also do not agree that Elbaz teaches
away, as a reference must criticize, discredit, or otherwise discourage the
solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not
teachings that disparage or discourage the use of alternate electronic
components.
Phison disputes that it would have been obvious to one of ordinary
skill in the art to have included an LED in the housing of Elbaz. PO Resp.
53–54. Phison argues that Elbaz teaches away because it seeks to create a
dongle which is less expensive to manufacture, and the inclusion of the LED
would increase cost and complexity. Id. at 53. We do not agree that Elbaz
teaches away, as a reference must criticize, discredit, or otherwise
discourage the solution to constitute a teaching away. In re Fulton at 1201.
The aspirational objective of Elbaz can be countered by the benefits of
knowing the operational status of the user. See 2nd Dec. 17. Thus, we are
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not persuaded that Elbaz teaches away from the incorporation of the LED
into its system.
Phison continues that the second Petition fails to provide explicit
analysis required for the obviousness determination and that Elbaz’s housing
fails to provide sufficient space for the inclusion of an LED. PO Resp. 53–
54. We disagree that the analysis is insufficient merely because it is general;
rather, we are concerned with what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In addition, the
“test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference.” In
re Keller, 642 F.2d 413, 425 (CCPA 1981). The fact that Elbaz’s dongle, as
disclosed, cannot accommodate an LED in its physical structure does not
refute what the combination would have suggested to ordinarily skilled
artisans.
Phison also argues that the rationale supplied in the second Petition to
render the elements of claims 3, 11, and 20 obvious is insufficient. PO
Resp. 54–56. Phison argues that no reason is provided by PNY for finding
the memory controller, the storage memory, and the interface circuit to be
well-known, standard electrical components recognized by ordinarily skilled
artisans. Id. We do not agree. As provided in the second Decision, Deng
discloses a microprocessor, a USB interface controller, and a USB interface.
2nd Dec. 13. As such, Deng discloses the elements of claims 3, 11, and 20,
so that Phison’s argument is directed merely to the efficacy of the
combination of Elbaz and Deng, as discussed above. Because we are not
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persuaded as to defects in the combination with respect to the independent
claims, we are also unpersuaded with respect to the dependent claims.
Thus, we are persuaded that PNY has shown by a preponderance of
the evidence that claims 1, 3–9, and 11–21 of the ’879 Patent are
unpatentable over Elbaz and Deng under 35 U.S.C. § 103.

E. Claims 2 and 10
– Alleged Obviousness Over Elbaz, Deng, and Admitted Art
With respect to claims 2 and 10, PNY argues that the Admitted Art
establishes that it was known for a housing to be made of a metallic
conductive material. 2nd Pet. 38; Ex. 1001 1:41–52. PNY also argues that
forming the housing of Elbaz from such a metallic conductive material
would have been a simple substitution to yield predictable results. Id.
Phison addresses this ground based on supposed defects in the
combinations of Elbaz and Deng. PO Resp. 42–56. As discussed above, we
are not persuaded that Elbaz and Deng fail to teach or suggest all of the
elements of the independent claims. We are further persuaded that it would
have been obvious to form the housing from a metallic conductive material,
per Admitted Art. Ex. 1001 1:41–52. Thus, we also are persuaded that PNY
has shown by a preponderance of the evidence that claims 2 and 10 of the
’879 Patent are unpatentable over Elbaz, Deng, and Admitted Art under 35
U.S.C. § 103.

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III. CONCLUSION
We conclude PNY has shown by a preponderance of the evidence that
claims 1–21 of the ’879 Patent are unpatentable under 35 U.S.C. § 103(a) as
obvious over combinations of Elbaz, Deng, and Admitted Art, as discussed
above.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–21 of the ’879 Patent are held unpatentable;
and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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23

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
IPR23490-0009IP1@fr.com
PTABInbound@fr.com