Trials@uspto.gov Paper 16
`571-272-7822 Entered: August 23, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`BATTERY-BIZ, INC.,
`Petitioner,
`
`v.
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner
`____________
`
`
`
`
`
`Case IPR2016-00632
`Patent 7,460,381 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822 Entered: August 23, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`BATTERY-BIZ, INC.,
`Petitioner,
`
`v.
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner
`____________
`
`
`
`
`
`Case IPR2016-00632
`Patent 7,460,381 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00632
`Patent 7,460,381 B2
`
`
`I. INTRODUCTION
`
`Battery-Biz, Inc. (“Petitioner”) filed a Petition for inter partes review
`
`of claims 1–4, 6–8, 11, 12, 14, and 171 (“the challenged claims”) of U.S.
`
`Patent No. 7,460,381 B2 (Ex. 1001, “the ’381 Patent”). Paper 1 (“Pet.”).
`
`Patent Owner, Comarco Wireless Technologies, Inc., filed a Preliminary
`
`Response. Paper 12 (“Prelim. Resp.”). We have jurisdiction under 35
`
`U.S.C. § 314(a), which provides that an inter partes review may not be
`
`instituted “unless . . . the information presented in the petition . . . and any
`
`response . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented shows there is a reasonable likelihood
`
`that Petitioner would prevail in establishing the unpatentability of claims 1–
`
`4, 6–8, 11, 12, 14, and 17.
`
`A. Related Matters
`
`The parties acknowledge that the ’381 Patent was asserted against real
`
`parties-in-interest Best Buy Stores, L.P. and BestBuy.com, LLC in Comarco
`
`Wireless Technologies, Inc. v. Best Buy Stores, L.P., Civil Action No. 8:15-
`
`cv-00256 (C.D. Cal. 2015), along with U.S. Patent No. 7,863,770, also
`
`
`
`1 We note that the Petition is inconsistent in its listing of the challenged
`claims. Compare Pet. 1 and 39, with Pet. 9. Based on the discussion of the
`grounds and the claim charts, we determine that the former listing is the
`intended listing of the challenged claims.
`2
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`IPR2016-00632
`Patent 7,460,381 B2
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`assigned to Patent Owner. Pet. 7; Paper 5. The latter patent is also subject
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`to inter partes review in related proceeding IPR2016-00630.
`
`B. The ’381 Patent
`
`Petitioner acknowledges that the ’381 Patent has expired. Pet. 1. For
`
`purposes of this proceeding, Petitioner accepts that the challenged claims
`
`have a priority date of December 19, 1997. Id. at 16. The ’381 Patent
`
`relates to power supply equipment for simultaneously providing power to
`
`multiple electronic devices. Ex. 1001, 2:46–48. Figures 41(a), 34(a)–(c)
`
`and 37(a)–(c) of the ’381 Patent illustrate such a power supply and its
`
`connectors to other electronic devices, where those figures are reproduced
`
`below.
`
`
`
`Figs. 41(a), 34(a)–(c) and 37(a)–(c) illustrate a power supply system and
`connectors.
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`
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`3
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`IPR2016-00632
`Patent 7,460,381 B2
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`Power supply 2000 includes circuitry that provides first voltage V1
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`and second voltage V2 through interface 2004. Id. at 21:30–43. Cable 1530
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`connects with the power supply 2000 through proximal end 1500, where the
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`cable also includes connector 1532 that detachably mates with connector
`
`adapter 1544 through first plurality of contacts 1536. Id. at 20:11–18, 21:8–
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`16. Connector adapter 1544 includes first connector 1536, mateable with the
`
`cable connector 1532, and second connector 1546, with a pair of wires
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`extending between the first and second connectors 1536 and 1546. Id. at
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`21:16–19. The connector adapter 1544 may connect to an electronic device
`
`through the second connector 1546. Id.
`
`C. Illustrative Claims
`
`Claims 1, 8, 11, and 17 of the ’381 Patent are independent, with
`
`challenged claims 2–4, 6, 7, 12, and 14 being dependent on those claims.
`
`Claims 1 and 8 are illustrative of the claimed subject matter:
`
`1. Power supply equipment comprising:
`a power supply for producing DC output power at a cable
`connector disposed on a distal end of a cable, a proximal end
`of the cable originating at the power supply; and
`a connector adapter including:
`a first plurality of contacts to mate with the cable connector;
`a second plurality of contacts to mate with contacts of an
`electronic device; and
`a conductor that forms a portion of a divider circuit with
`circuitry within the power supply, the divider circuit
`programming a parameter of the DC output power
`produced by the power supply, wherein
`the conductor, the first plurality of contacts, and the second
`plurality of contacts are disposed in a single housing, and
`at least two contacts in the first plurality of contacts are
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`4
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`IPR2016-00632
`Patent 7,460,381 B2
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`electrically connected to at least two contacts in the second
`plurality of contacts without a cable disposed between the
`first plurality of contacts and the second plurality of
`contacts.
`
`
`8. Power supply equipment comprising:
`a power supply for producing output power at a cable connector
`disposed on a distal end of a cable, a proximal end of the
`cable originating at the power supply; and
`first and second connector adapters, each connector adapter
`including:
`a first plurality of contacts to mate with the cable connector;
`and
`a second plurality of contacts to mate with contacts of an
`electronic device, wherein
`the first plurality of contacts and the second plurality of
`contacts are disposed in a single housing, and at least two
`contacts in the first plurality of contacts are electrically
`connected to at least two contacts in the second plurality
`of contacts without a cable disposed between the first
`plurality of contacts and the second plurality of contacts,
`and wherein
`the power supply produces the output power at a first voltage
`when the first connector adapter is mated with the cable
`connector and at a second voltage, different than the first
`voltage, when the second connector adapter is mated with
`the cable connector.
`
`Ex. 1001, 25:31–50, 26:5–26.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–4, 6–8, 11, 12, 14, and 17 of the
`
`’381 Patent are unpatentable based on the following specific grounds (Pet. 1,
`
`23–39):
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`5
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`IPR2016-00632
`Patent 7,460,381 B2
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`Challenged Claims
`
`Basis References
`
`1–4, 6–8, 11, 12, 14, and 17
`
`§ 103 SMK2 and Chen3
`
`1–4, 6–8, 11, 12, 14, and 17
`
`§ 103 SMK and Radio Shack4
`
`1–4, 6–8, 11, 12, 14, and 17
`
`1–4, 6–8, 11, 12, 14, and 17
`
`§ 103 SMK, Braitberg5, and
`Chen
`§ 103 SMK, Braitberg, and
`Radio Shack
`
`We also note that Petitioner filed a Motion to Correct a Clerical Error
`
`
`
`relating to a translation error in a paragraph of SMK. Paper 15, 1. Because
`
`this error arose without deceptive intent and appears to have no substantial
`
`substantive effect on the proceeding, we accept the replacement Exhibit
`
`1007 and refer to that replacement herein.
`
`
`
`II. DISCUSSION
`
`A. Claim Construction
`
`The claims of an unexpired patent are interpreted using the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`
`
`
`2 Certified English translation of Japanese Patent Publication H5-184064,
`published July 23, 1993 (Ex. 1007, “SMK”).
`3 US Patent No. 5,783,927, filed September 28, 1995, issued July 21, 1998
`(Ex. 1008, “Chen”).
`4 Catalogs, published by Radio Shack in 1992, 1993, 1994, 1995, and 1996
`(Ex. 1010, “Radio Shack”).
`5 US Patent No. 5,333,177, filed October 19, 1991, issued July 26, 1994
`(Ex. 1009, “Braitberg”).
`
`6
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`IPR2016-00632
`Patent 7,460,381 B2
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`136 S. Ct. 2131 (2016). In the instant proceeding, as discussed above,
`
`Petitioner has acknowledged that the ’381 Patent has expired. Pet. 1.
`
`Nonetheless, Petitioner applies the “broadest reasonable interpretation in
`
`light of the specification and the file history” in its claim construction
`
`section. Pet. 17. This is a contradiction, and it is clear that we must apply a
`
`district-court type claim construction approach for claims that have expired.
`
`See 37 C.F.R. § 42.100(b). As such, for patents that cannot be amended, we
`
`apply the claim construction standard enunciated in Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`Petitioner asserts that “cable” should be construed as “an assembly of
`
`one or more insulated conductors, or optical fibers, or a combination of both,
`
`within an enveloping jacket,” and “adapter” should be construed as “a
`
`component which provides the necessary accommodations to electrically
`
`connect two or more items whose design or function will not normally
`
`permit their connection; an adapter may also provide mechanical
`
`connection,” relying on a dictionary of electronic and engineering terms.
`
`Pet. 17 (citing Ex. 1013 1, 3).
`
`Patent Owner argues that Petitioner’s construction of “adapter” is
`
`wrong for two reasons. Prelim. Resp. 5. First, Patent Owner points out that
`
`Petitioner is asserting a construction under the “broadest reasonable
`
`construction,” inapplicable to the instant claims. Id. at 5–6. We agree, as
`
`discussed above. Patent Owner also argues that Petitioner’s construction “is
`
`contrary to other terms of the challenged claims that fully describe
`
`‘connector adapter.’” Id. at 6. Patent Owner continues that the independent
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`Patent 7,460,381 B2
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`claims require “connector adapter” to program a parameter of the DC output
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`power produced by the power supply. Id. (citing Ex. 1001, 25:35–43;
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`26:50–51; 27:10–12). Patent Owner also argues that “connector adapter”
`
`must be construed to be a “single housing.” Id. at 7.
`
`With respect to Patent Owner’s second contentions, we do not agree.
`
`The aspects of the “connector adapter” referenced by Patent Owner are
`
`already recited in the claims, such that there is no need to construe “adapter”
`
`to have the claimed attributes. Packing such requirements into a single
`
`claim term is not needed, when those requirements will be required when
`
`comparing the claim to the prior art. Additionally, per claim differentiation,
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`claim 8 does not contain the same limitations as claims 1, 11, and 17, as
`
`acknowledged by Patent Owner (id. at 6), and, thus, requiring the specifics
`
`of the latter claims to be found in an element of claim 8 would alter its
`
`scope.
`
`Therefore, for purposes of this Decision, we are persuaded that
`
`Petitioner’s constructions comport with a district-court type claim
`
`construction and properly define the cited claim terms in the context of the
`
`claims, and we apply those constructions in the analysis provided below.
`
`B. Asserted Ground of Obviousness over Combinations of SMK, Chen,
`Radio Shack, and Braitberg
`
`Petitioner asserts that claims 1–4, 6–8, 11, 12, 14, and 17 are
`
`unpatentable under 35 U.S.C. § 103 as obvious over combinations of SMK,
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`Chen, Radio Shack, and Braitberg. To support its contentions and relying on
`
`the declaration testimony of Dr. Yuval Tamir, Petitioner provides analysis
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`8
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`Patent 7,460,381 B2
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`purportedly explaining what the combination would have conveyed to one of
`
`ordinary skill in the art with respect to the claim limitations and provides
`
`reasons why one of ordinary skill in the art would have combined the
`
`teachings of the references. Pet. 23–39 (citing Ex. 1011). Although
`
`Petitioner addresses what appear to be multiple grounds as one, we address
`
`them individually below.
`
`1.
`
`SMK
`
`SMK is directed to a method of supplying power from a converter to
`
`an electronic device, whereby the needed power voltage is automatically
`
`determined after connecting the converter to the electronic device.
`
`Ex. 1007, Abs. As illustrated in figures 2 and 3, reproduced below, the
`
`power supply equipment includes a power supply and DC/DC converter 2,
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`which produces power at first, second, and third connection points 21, 22,
`
`and 23. Id. at 4–5; Figs. 2–3. The system also includes multiple power
`
`cords 7, each having a proximal end connected to the power supply and a
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`distal end having power connector 8, illustrated in Fig. 2, where the
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`embodiment illustrated in Fig. 3 denotes the power cords as 9, 10, and 11.
`
`Id.
`
`9
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`Patent 7,460,381 B2
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`Figs. 2 and 3 of SMK illustrate block diagrams of power supplies.
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`As illustrated in Fig. 2, each cord has a 3-pin connector, i.e., 12a, 12b,
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`12c, for example, coupled with connectors 18, 19, and 20, where the latter
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`are detachably mateable with particular electronic devices. Id. SMK further
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`discloses the system can supply power simultaneously to multiple electronic
`
`devices. Id. As well, SMK indicates that electronic device 4B may be a
`
`laptop computer. Id. at 4.
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`Petitioner acknowledges that SMK does not disclose that the first and
`
`second plurality of contacts are “in a single housing,” or that at least two of
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`the first and second plurality of contacts are electrically coupled with each
`
`other “without a cable,” per the challenged claims. Pet. 20 (citing Ex. 1011
`
`¶¶ 30, 44). Petitioner also asserts that Patent Owner has admitted in an
`
`interrogatory response that all elements of claim 8 are disclosed by SMK
`
`except for “‘the use of connector adapters as required by the asserted
`
`claims.’” Id. (citing Ex. 1013, 7).
`
`2. Chen
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`Chen discloses a power supply unit which provides DC power to
`
`portable electronic devices. Ex. 1008, Abs. The supply includes output line
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`335 with universal output socket 338 at a distal end, whereby output jack
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`340 has electrodes 342 that mate with the universal output socket. Id. at
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`5:53–67. The output jack 340 also has computer plug 344, having a shape
`
`and size to compatibly plug into a computer socket. Id. Chen discloses that
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`the computer plug is made with different sizes and shapes to plug into
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`different computer DC sockets. Id. Petitioner identifies that the output jacks
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`10
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`Patent 7,460,381 B2
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`have small form factors, with first and second pluralities of contacts in a
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`single housing, with interconnections without a cable disposed
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`therebetween. Pet. 21.
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`3. Radio Shack
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`With respect to Radio Shack, Petitioner asserts that those published
`
`catalogs disclose a power supply for use in automobiles. Id. The
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`“Adaptaplugs” are asserted to each have a small form factor, with first and
`
`second pluralities of contacts in a single housing, with interconnections
`
`without a cable disposed therebetween. Id. (citing Ex. 1010, 2, 4, 6, 8, 11,
`
`12, 14).
`
`4. Braitberg
`
`Braitberg is directed to a universal connector for a cellular telephone
`
`interface. Ex. 1009, Abs. Braitberg discloses a cable with a connector
`
`adapted for presenting a coding signal that correlates to the identity of the
`
`type of cellular phone attached thereto. Id. at 2:18–26, 5:43–6:65. Braitberg
`
`also discloses that its system utilizes a voltage divider circuit to program a
`
`parameter of the DC output power provided by the assembly. Id. at 8:61–
`
`9:14, Fig. 4. Therein, A/D converter 80 converts an analog voltage
`
`produced by the divider circuit to a digital signal which represents a binary
`
`code identifying the particular cellular phone. Id.
`
`5. Petitioner’s Contentions
`
`As discussed above, Petitioner addresses the multiple proffered
`
`grounds as one, but the analysis provided is not made applicable to all of the
`
`challenged claims. Upon review of Petitioner’s claim charts (Pet. 23–34),
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`11
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`Patent 7,460,381 B2
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`we note that Petitioner cites to Braitberg only with respect to claims 1 and 7.
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`Additionally, Petitioner cites to Braitberg in its obviousness arguments only
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`with respect to claims 1, 4, and 12. Pet. 35–36, 38. It is clear that Petitioner
`
`is relying on the disclosure of Braitberg to teach or render obvious elements
`
`of claims 1–4, 6, 7, and 12, such that the grounds addressing those claims
`
`without Braitberg appear to be incomplete. As such, we do not consider the
`
`grounds applying only SMK, Chen, and Radio Shack to be applicable to
`
`claims 1–4, 6, 7, and 12, as discussed below.
`
`Petitioner may dispute that applicability because Petitioner argues that
`
`one of ordinary skill in the art “would recognize that the only way for
`
`different resistors 15 to cause different voltages to be transmitted to the
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`DC/DC converter is for resistor 15 and conductor 12c in the adapter cable to
`
`be part of a voltage divider circuit.” Pet. 28, 35. However, that assertion is
`
`not supported, and Petitioner goes on to cite Braitberg for its divider circuit.
`
`Id. Although Petitioner also cites to the testimony of Dr. Tamir (Ex. 1011
`
`¶ 35), that testimony is merely a recitation of the entire claim chart and does
`
`not provide support that the use of a voltage divider was well-known or
`
`obvious in view of SMK, Chen, and Radio Shack. We are not persuaded
`
`that Petitioner has demonstrated the obviousness of employing a voltage
`
`divider, apart from the citations to Braitberg. As such, we only consider the
`
`patentability of claims 1–4, 6, 7, and 12 in view of the ground containing
`
`Braitberg.
`
`With respect to claims 1 and 4, Petitioner does cite to Braitberg and
`
`argues that one of ordinary skill in the art would have understood that
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`12
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`Braitberg’s voltage divider could have been used with SMK and could have
`
`been used to program the host assembly to operate with a particular device.
`
`Pet. 35–36.
`
`With respect to claims 1, 8, 11, and 17, Petitioner argues that a person
`
`of ordinary skill in the art would have recognized that coaxial connector 19
`
`of SMK has at least two contacts that mate with contacts of an electronic
`
`device, such as electronic device 4B illustrated in SMK’s Fig. 2. Id. at 34–
`
`35. Also with respect to claims 1, 8, 11, and 17, Petitioner argues that a
`
`person of ordinary skill in the art would have recognized that two connectors
`
`electrically connected within one housing perform the same function as
`
`those same two connectors, disposed in separate housings, connected via
`
`wires in a cable or cord. Id. at 36 (citing Ex. 1011 ¶ 38).
`
`In addition, Petitioner asserts that a person of ordinary skill in the art
`
`would have been motivated to modify SMK to use connector adapters
`
`instead of adapter cables because the connector adapters would be smaller,
`
`less costly to manufacture, and more durable. Id. at 37. Petitioner also
`
`argues that such a modification would have been made in view of both Chen
`
`and Radio Shack. Id. (citing Ex. 1011 ¶ 39).
`
`With respect to claim 2, Petitioner asserts that a person of ordinary
`
`skill in the art would have recognized that it is standard practice to use a
`
`connector on a cable to detachably mate the cable with a connector on a
`
`power supply or any other electrical/electronic device. Id. at 38 (citing Ex.
`
`1011 ¶ 40). With respect to claim 3, Petitioner argues that a person of
`
`ordinary skill in the art would have recognized that the shape and
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`13
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`dimensions of the connector must match those on the electronic device to
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`promote connection, and that Radio Shack discloses connectors having
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`different shapes and pin out configurations. Id. (citing Ex. 1011 ¶ 41).
`
`With respect to claim 12, Petitioner asserts that Braitberg discloses a
`
`wide variety of battery types and voltages that can be accommodated and
`
`that the voltage divider is used for programming the host assembly to
`
`operate with a particular device. Id. (citing Ex. 1009, 4:53–56, 8:61–9:14;
`
`Ex. 1011 ¶ 42).
`
`Lastly, Petitioner argues that the “single housing” and “without a
`
`cable” limitations of claims 1, 8, 11, 17 are disclosed by Chen and Radio
`
`Shack, and a person of ordinary skill in the art would have been motivated to
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`utilize a single housing connector adapter, without a cable, for the reasons
`
`provided. Id. at 38–39.
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`6. Patent Owner’s Contentions
`
`Patent Owner argues that Petitioner’s grounds must fail because SMK
`
`details that the electronic device programs the output of the DC/DC
`
`converter and not the cable connector adapter as required by the challenged
`
`claims. Prelim. Resp. 8. Patent Owner continues that SMK recites, in part,
`
`that “‘the electronic device . . . transmits a signal indicating the required
`
`voltage,’” so that the adapter cannot program the output. Id. at 8–9 (citing
`
`Ex. 1007, 3–4). We do not agree.
`
`Claim 11, for example, recites that “the connector adapter has a
`
`configuration to program a parameter of the output power.” As Petitioner
`
`has identified, SMK discloses that its extending power cord 9 includes
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`resistor 1, such that when current flows through the resistor, the voltage is
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`transmitted to the DC/DC converter to signal the proper voltage to be
`
`supplied. Pet. 30–31. On the present record, we are persuaded that the
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`resistor is the claimed configuration of the power cord that sends a signal to
`
`determine the proper voltage output. That disclosure is equally applicable to
`
`the similar recitations in independent claims 1, 8, and 17.
`
`Patent Owner also argues that SMK’s power cords are not detachably
`
`mateable connector housings, i.e., are not in a single housing, so that even in
`
`view of Petitioner’s obviousness arguments, one of ordinary skill in the art
`
`would not have modified SMK in view of the output plug of Chen or the
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`Adaptaplugs of Radioshack. Id. at 9. Patent Owner continues that the
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`adapters of Chen and Radio Shack are merely pass through connectors and
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`do not allow for the programing of the output of the power supply. Id. at 9–
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`10. Patent Owner also argues that the plugs of Chen and Radio Shack would
`
`constitute extra, unnecessary parts that would not improve the operation of
`
`the system in SMK. Id. at 10. We do not agree.
`
`We are persuaded by Petitioner’s arguments and evidence that one of
`
`ordinary skill in the art would have been motivated to modify SMK to use
`
`connector adapters instead of adapter cables because the connector adapters
`
`would be smaller, less costly to manufacture, and more durable. Pet. 37.
`
`Although the plugs in Chen and Radio Shack are pass through connectors,
`
`Petitioner’s grounds do not depend on those references as teaching the
`
`programming of the output. As discussed above, we are persuaded that
`
`SMK provides for such programming and that the modification from power
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`cords to adapters would have been obvious in view of Chen and Radio
`
`Shack.
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`Patent Owner also argues that Braitberg is nonanalogous art when
`
`compared to the claimed invention, and that it is not from the same field of
`
`endeavor as the claimed invention and is not reasonably pertinent to the
`
`particular problem solved by the claimed invention. Prelim. Resp. 10–12
`
`(citing In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)). Patent Owner
`
`continues that the structure and function of subject matter of the instant
`
`invention and Braitberg are entirely different in that Braitberg does not
`
`disclose a power supply, programming the output of a power supply, or a
`
`compact connector adapter in a single housing. Id. at 12–13. Patent Owner
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`also argues that “[n]othing in [Braitberg] has the ‘same purpose’ as the
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`challenged claims,” and that Braitberg would not logically lead the inventor
`
`to the invented solution. Id. at 14. We do not agree.
`
`Patent Owner has stated the correct criteria to consider for
`
`determining whether art is analogous, but constrained those criteria in its
`
`analysis. Analogous art need not have all of the same elements. Similarly,
`
`analogous art need not have the same function or provide the same
`
`inspiration to an inventor. In the instant case, the system of Braitberg is
`
`concerned with charging and powering mobile devices, the same as the
`
`instant invention, as well as SMK, Chen, and Radio Shack. Although one
`
`might not be able to substitute one for another, that does not mean they are
`
`not analogous or related.
`
`16
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`IPR2016-00632
`Patent 7,460,381 B2
`
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`Additionally, Patent Owner argues that Braitberg does not program
`
`the voltage of the DC power output, but acknowledges that the divider
`
`circuit in Braitberg identifies “a particular cell phone model,” and then “uses
`
`stored programs to operate with the phone.” Id. at 15 (citing Ex. 1009,
`
`8:35–41). However, claim 1, for example, recites in part that “the divider
`
`circuit program[s] a parameter of the DC output power produced by the
`
`power supply,” and we are unpersuaded that determining the particular
`
`model and using the correct program is outside the meaning of
`
`programming. Although the process described in the Specification of the
`
`’381 Patent is different than that described in Braitberg, we are not
`
`persuaded that each would not fall within the scope the cited claim
`
`limitation.
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`7. Conclusion
`
`On the present record and for purposes of institution, Petitioner has
`
`made a sufficient showing that the combinations of SMK and Chen, and
`
`SMK and Radio Shack, would have conveyed to one of ordinary skill in the
`
`art the limitations of claims 8, 11, 14, and 17, and has provided a sufficient
`
`reason one of ordinary skill in the art would have combined the references.
`
`For the foregoing reasons, we determine that the information presented by
`
`Petitioner establishes a reasonable likelihood that it would prevail in
`
`showing claims 8, 11, 14, and 17 are unpatentable for obviousness over
`
`SMK and Chen, as well as SMK and Radio Shack.
`
`Additionally, Petitioner has made a sufficient showing that the
`
`combinations of SMK, Braitberg, and Chen, and SMK, Braitberg, and Radio
`
`17
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`IPR2016-00632
`Patent 7,460,381 B2
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`Shack, would have conveyed to one of ordinary skill in the art the
`
`limitations of claims 1–4, 6, 7, and 12, and has provided a sufficient reason
`
`one of ordinary skill in the art would have combined the references. For the
`
`foregoing reasons, we determine that the information presented by Petitioner
`
`establishes a reasonable likelihood that it would prevail in showing claims
`
`1–4, 6, 7, and 12 are unpatentable for obviousness over SMK, Braitberg, and
`
`Chen, as well as SMK, Braitberg, and Radio Shack.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we conclude that there is a reasonable
`
`likelihood that Petitioner would prevail in showing that claims 1–4, 6–8, 11,
`
`12, 14, and 17 of the ’381 Patent are unpatentable. The Board has not made
`
`a final determination with respect to the patentability of these claims. The
`
`Board’s final determination will be based on the record as developed fully
`
`during trial.
`
`
`
`IV. ORDER
`
`After due consideration of the record before us, and for the foregoing
`
`reasons, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to claims 1–4, 6–8, 11, 12, 14, and 17 of the ’381 Patent
`
`on the following grounds of unpatentability:
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`18
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`IPR2016-00632
`Patent 7,460,381 B2
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`Claims 8, 11, 14, and 17 under 35 U.S.C. § 103 as being unpatentable
`
`over SMK and Chen;
`
`Claims 8, 11, 14, and 17 under 35 U.S.C. § 103 as being unpatentable
`
`over SMK and Radio Shack;
`
`Claims 1–4, 6, 7, and 12 under 35 U.S.C. § 103 as being unpatentable
`
`over SMK, Braitberg, and Chen;
`
`Claims 1–4, 6, 7, and 12 under 35 U.S.C. § 103 as being unpatentable
`
`over SMK, Braitberg, and Radio Shack;
`
`FURTHER ORDERED that no other grounds set forth in the Petition
`
`are authorized for inter partes review as to the claims of the ’381 Patent;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
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`C.F.R. § 42.4 notice is hereby given of the institution of a trial, which
`
`commences on the entry date of this Order; and
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`FURTHER ORDERED that replacement Exhibit 1007 is entered into
`
`the record in place of the original Exhibit 1007.
`
`
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`19
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`
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`IPR2016-00632
`Patent 7,460,381 B2
`
`PETITIONER:
`
`David A. Dillard
`Sami I. Schilly
`LEWIS ROCA ROTHGERBER CHRISTIE, LLP
`ddillard@lrrc.com
`pto@lrrc.com
`
`
`
`PATENT OWNER:
`
`Harris A. Wolin
`GRAHAM CURTIN, PA
`hwolin@grahamcurtin.com
`
`
`20
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