PTAB

IPR2013-00472

PNY Technologies Inc v. Phison Electronics Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: UNIVERSAL SERIAL BUS (USB) MEMORY PLUG
  • Brief Description: The ’879 patent relates to a universal serial bus (USB) memory plug. The invention includes a housing containing a printed circuit board assembly (PCBA), where the housing features "orientated indentations" to facilitate connection and "concave props" that press against the PCBA to fix it in place.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4, 8-12, and 16 over Minneman

  • Prior Art Relied Upon: Minneman (Patent 7,352,601).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Minneman disclosed every limitation of the challenged claims. Minneman taught a USB memory device with a housing containing a plurality of openings that function as the claimed "orientated indentations" for retention in a USB port. The housing also included a plurality of stand-offs that function as the claimed "props." Petitioner asserted that Minneman’s disclosure of these props as "captivating indentations" inherently taught a concave shape. Finally, Minneman disclosed that its PCBA is disposed within the housing and fixed by these props through means such as press fit, friction fit, or mechanical interference, thereby meeting the "fixed by means of pressing" limitation.

Ground 2: Obviousness of Claims 1-4, 8-12, and 16 over Minneman in view of Takahashi

  • Prior Art Relied Upon: Minneman (Patent 7,352,601), Takahashi (Application # 2004/0027809).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Minneman provided the base USB memory device, including a housing, orientated indentations (openings), a PCBA, and props (stand-offs) for securing the PCBA. To the extent Minneman's props were not explicitly concave, Takahashi was cited for its teaching of a housing with inwardly extending, curved protrusions that support a circuit board. Petitioner argued Takahashi supplied the express teaching of a "concave" shape for the props.
    • Motivation to Combine: A POSITA would combine these references as a matter of simple design choice. Petitioner contended it would have been obvious to modify the shape of the stand-offs in Minneman to be curved (concave) as taught by Takahashi to achieve a known method of supporting a circuit board.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination only involved applying a known, simple structural shape (a curve) to a known component (a support prop) for its intended purpose.

Ground 3: Obviousness of Claims 1-4, 8, and 10 over Wang in view of AAPA

  • Prior Art Relied Upon: Wang (Application # 2006/0002096), Applicant Admitted Prior Art (AAPA) from the ’879 patent.

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Wang disclosed a USB flash memory assembly that met most limitations of the independent claims. Wang taught a housing with a top and bottom cover, a PCBA disposed inside, and inwardly extending alignment pins that are curved in shape, functioning as the claimed "concave props" to fix the PCBA and create a space between the PCBA and the housing. Petitioner relied on the AAPA from the ’879 patent’s own specification, which acknowledged that providing a USB connector with a housing having a "plurality of orientated indentations" was known in the art prior to the invention.
    • Motivation to Combine: A POSITA would combine Wang with the known feature described in the AAPA to enhance the connection between the USB connector plug and a host receptacle. Adding known retention features (orientated indentations) to Wang’s USB device was argued to be a predictable and desirable improvement.
    • Expectation of Success: The combination involved adding a well-understood, conventional feature (orientated indentations for retention) to an existing USB device design (Wang), and a POSITA would have reasonably expected the combination to function as intended.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 1-4 and 8 are obvious over Minneman in view of AAPA; claims 1-4, 8-12, and 16 are obvious over Ni (Patent 7,074,052) alone; and that claims 1-4, 8-12, and 16 are obvious over Ni in view of Takahashi. These grounds relied on similar design choice and combination-of-known-elements rationales.

4. Key Claim Construction Positions

  • Petitioner argued that the term "concave" should be construed to "encompass a prop that extends inwardly from a housing." This construction was asserted to be consistent with the patent’s figures and specification. Petitioner contended this construction was critical because prior art references like Minneman and Wang disclosed inwardly extending props or stand-offs which, by their function of captivating or aligning a PCBA, would necessarily have a concave nature relative to the PCBA they secure.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 8-12, and 16 of the ’879 patent as unpatentable.