PTAB

IPR2014-00150

PNY Technologies Inc v. Phison Electronics Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: UNIVERSAL SERIAL BUS (USB) MEMORY PLUG
  • Brief Description: The ’879 patent discloses a USB memory plug comprising a housing that contains a printed circuit board assembly (PCBA). The patent’s asserted novelty relates to the internal structure, where the housing includes a plurality of “concave props” that protrude inward to fix the PCBA in place, creating a space between the PCBA and the housing wall.

3. Grounds for Unpatentability

Ground 1: Anticipation by Elbaz - Claims 1, 8, 9, and 16 are anticipated by Elbaz

  • Prior Art Relied Upon: Elbaz (Application # 2004/0259423).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Elbaz discloses a USB memory device adapter that meets every limitation of the challenged independent claims. Specifically, Elbaz’s adapter 514 was identified as the claimed “housing,” its openings 512 for engaging with a USB port were mapped to the “plurality of orientated indentations,” and its internal support means 516 were identified as the “plurality of concave props.” Petitioner asserted that Elbaz’s props (516) are shown to be concave, press against an integrated circuit module 5 (the “PCBA”) to fix it in place, and create a space between the module and the housing, thus anticipating the core features of claims 1 and 9. The limitations of dependent claims 8 and 16 were also argued to be expressly disclosed.

Ground 2: Obviousness over Elbaz and Deng - Claims 1, 3-9, and 11-21 are obvious over Elbaz in view of Deng

  • Prior Art Relied Upon: Elbaz (Application # 2004/0259423) and Deng (Patent 6,829,672).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Elbaz teaches the fundamental mechanical structure of the USB plug, including the housing with internal concave props for securing a circuit board. Deng was asserted to teach the conventional electronic components of a USB flash drive that are absent from Elbaz but recited in the dependent claims of the ’879 patent. These components included a PCBA with a flash memory, a microcontroller (memory controller), a USB interface controller, and an LED status indicator. Petitioner argued that combining Deng’s standard electronics with Elbaz’s housing structure renders all challenged claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Elbaz and Deng to create a complete, functional USB memory device. Petitioner argued that Elbaz provides a base product—a memory card adapter—and Deng provides well-known, standard components and features (like flash memory and an LED indicator) that would have been obvious to integrate into Elbaz's device to make it a self-contained flash drive. The motivation for adding an LED, for example, was to provide a consumer with a useful indication of the device's operational status, a known technique for improving such products.
    • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success in this combination because it involved the integration of conventional electronic components into a compatible mechanical housing. The combination was characterized as the assembly of known elements according to established methods to achieve a predictable result.

  • Additional Grounds: Petitioner asserted alternative obviousness challenges to ensure all claims were addressed under various theories. Claims 1, 2, 8-10, and 16 were challenged as obvious over Elbaz in view of Applicant-Admitted Prior Art (AAPA), with AAPA supplying the teaching for a metallic housing or clarifying the use of a "printed circuit board assembly." A final ground asserted claims 2 and 10 were obvious over Elbaz, Deng, and AAPA combined, specifically to address the “metallic conductive material” limitation for the housing.

4. Key Claim Construction Positions

  • Petitioner argued that the term “concave” as used in “concave props” required construction under the broadest reasonable interpretation standard.
  • Proposed Construction: "a prop that extends inwardly from a housing."
  • Rationale: Petitioner asserted this construction was consistent with the patent’s specification and figures, such as Figure 6, where the props (512) are shown extending inward from the housing wall (51). This interpretation was critical for mapping the "means 516" of Elbaz, which also extend inwardly to support the circuit module, to the claim language.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of the ’879 patent as unpatentable under 35 U.S.C. §§ 102 and 103.