UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`HTC AMERICA, INC.,
`Petitioner
`
`v.
`
`VIRGINIA INNOVATION SCIENCES, INC.,
`Patent Owner
`
`____________________
`
`Case IPR2017-00879
`Patent No. 9,118,794
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`IPR2017-00879
`Patent No. 9,118,794
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`
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`I.
`
`TABLE OF CONTENTS
`
`
`Introduction ...................................................................................................... 5
`
`II.
`
`Claim Construction .......................................................................................... 5
`
`A.
`
`“Interface” ............................................................................................. 5
`
`B.
`
`“Processing Unit Configured To” ....................................................... 10
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`III. PO’s Arguments Do Not Overcome the Evidence Demonstrating That
`Independent Claim 1 is Unpatentable ............................................................ 10
`
`A.
`
`The Combined Teachings of Nam, Seaman, and Takeda
`Disclose the Claimed “High Definition Digital Output
`Interface” ............................................................................................. 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`PO’s Attacks Are Inapplicable to the Instituted Prior Art
`Combination and Rely on PO’s Improper Construction ........... 11
`
`Nam Is Not Limited to an Analog Output Interface ................. 12
`
`The Combined Teachings of Nam and Seaman Disclose
`Transmission of an “Encoded Digital Signal” .......................... 13
`
`Takeda in Combination with Nam and Seaman, Disclose
`the Features of Claim 1 ............................................................. 15
`
`B.
`
`Nam, Seaman, and Takeda Are Properly Combined .......................... 21
`
`IV. Claims 2-5, 8, 9, 11-14, 19-22, 26, 28, 30 and 31 Are Unpatentable ........... 23
`
`A.
`
`B.
`
`Nam, Seaman, and Takeda Render Dependent Claims 2-5, 8, 9,
`and 11-13 Obvious .............................................................................. 23
`
`The Combinations Involving Matsubara and Hardacker Render
`Claims 14, 19-22, 26, 28, 30, and 31 Obvious .................................... 25
`
`V.
`
`PO’s Assertions Regarding Legal Standards Is a Smoke Screen .................. 26
`
`VI. PO’s Secondary Considerations Fail to Overcome the Evidence of
`Obviousness ................................................................................................... 27
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`IPR2017-00879
`Patent No. 9,118,794
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`A.
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`PO Has Not Shown Commercial Success ........................................... 27
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`B.
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`PO Fails to Show Industry Praise ........................................................ 29
`
`C.
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`PO Presents No Probative Evidence of Licensing .............................. 30
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`VII. Conclusion ..................................................................................................... 32
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`TABLE OF AUTHORITIES
`
`IPR2017-00879
`Patent No. 9,118,794
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` Page(s)
`
`
`
`Cases
`
`Ethicon Endo-Surgery, Inc. v. Covidien LP,
`812 F.3d 1023 (Fed. Cir. 2016) .......................................................................... 28
`
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .......................................................................... 27
`
`In re Keller,
`642 F.2d 413 (C.C.P.A. 1981) ............................................................................ 11
`
`Merck & Cie v. Gnosis S.p.A.,
`808 F.3d 829 (Fed. Cir. 2015) ............................................................................ 30
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 11
`
`Oracle Corp. v. Crossroads Sys., Inc.,
`IPR2014-01207, Paper No. 78 (P.T.A.B. Jan. 29, 2016) ................................... 31
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .......................................................................... 27
`
`Power-One, Inc. v. Artesyn Techs., Inc.,
`599 F.3d 1343 (Fed. Cir. 2010) .......................................................................... 29
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013) .......................................................................... 27
`
`S. Ala. Med. Sci. Found. v. Gnosis S.p.A.,
`808 F.3d 823 (Fed. Cir. 2015) ............................................................................ 30
`
`Virginia Innovation Sciences, Inc. v. HTC Corp. et al.,
`2018 WL 1737020 (Fed. Cir. 2018) ..................................................................... 5
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................ 10
`
`
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` 3
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`IPR2017-00879
`IPR2017-00879
`Patent No. 9,118,794
`Patent No. 9,118,794
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`
`Statutes
`Statutes
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`35 U.S.C. § 101 .......................................................................................................... 5
`35 U.S.C. § 101 .......................................................................................................... 5
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`IPR2017-00879
`Patent No. 9,118,794
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`I.
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`Introduction
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`Petitioner submits this reply to Patent Owner’s (“PO”) Response (Paper No.
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`19, “Resp.”) regarding the ’794 patent, which the Federal Circuit recently found
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`invalid under 35 U.S.C. § 101.1 PO’s arguments should be rejected and the
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`challenged claims found unpatentable and cancelled for the reasons set forth in the
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`Petition (Paper No. 1, “Pet.”) and accompanying exhibits, the Board’s decision to
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`institute inter partes review (Paper No. 11, “Decision” or “Dec.”), and the reasons
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`below.
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`II. Claim Construction
`
`A.
`
`“Interface”
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`In addressing the prior art, PO argues that “interface” in the “high definition
`
`digital output interface” recited in claim 1 must be limited to an interface that only
`
`contains a single port. (Resp., 11, 16-19.) However, this construction is
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`inconsistent with the claims, specification, and the opinions of PO’s expert2, and
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`should be rejected.3
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`
`
` 1
`
` See Virginia Innovation Sciences, Inc. v. HTC Corp. et al., 2018 WL 1737020
`
`(Fed. Cir. 2018) (non-precedential).
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`2 Mr. Wong’s credentials call into question his qualification as an expert and thus
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`the weight of his direct testimony. (Ex. 2023.) He did not qualify as a POSITA in
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`First, claim 1 does not require the claimed “interface” to have only a single
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`port. (Ex. 1001, 8:55-58.) And no other claim defines how many ports the
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`claimed “interface” can or cannot have. (Id., 8:59-12:27.) This is consistent with
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`the specification, which describes output interfaces in connection with “standards”
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`as being “simple” or “conventional,” and never as having only a single port. (Id.,
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`2:7-8, 4:15-16, 5:7-12, 6:54-57, 7:14-18, 7:35-40, 8:1-4.)4
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`While PO asserts that each of the HDMI, DVI-D, DVI, and IEEE 1394 lines
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`shown in Figure 3 is “one example of a transmission ‘interface’” (Resp., 16-18),
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`the specification describes “interfaces 306a-b” collectively. (Ex. 1001, Fig. 3,
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`
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`2004 under PO’s definition, which he applied without consideration of a specific
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`timeframe and was based on information obtained from “lawyers.” (Ex. 1039,
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`35:23-39:20, 40:2-41:5, 44:6-47:7, 111:14-114:7; Ex. 2007, ¶5.)
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`3 PO’s implicit construction is not dispositive, given that, as explained below, the
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`prior art discloses the claimed “interface” under PO’s interpretation.
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`4 PO’s reliance on Figure 5 is unavailing. While the specification teaches that
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`power may be provided to mobile terminal 508 through a cable connection, which
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`“may require modification to the mobile terminal 508” (Ex. 1001, 7:49-54), this
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`says nothing about what that modification is, how it would be implemented, or that
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`mobile terminal 508 may be limited to a single port interface.
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`6:54-57.) This is consistent with the depiction of interface 306b in Fig. 3 as having
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`multiple connections to HDMI, DVI-D, DVI, and IEEE 1394 paths. (Id., Fig. 3).
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`The “conventional interfaces 306a-b” also encompasses analog “interface” 306a,
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`which includes a conventional RGB-type connection (Ex. 1001, 6:51-7:8) that was
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`known to include multiple ports (Ex. 2035, 15). Indeed, Mr. Wong’s argument
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`that “the pins or components of the [analog] interface cannot be separated” (Ex.
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`20075, ¶83) is at odds with cited Exhibit 2035 that shows a plug connecting to one
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`port (VGA) on one side and three plugs connecting to three ports (RGB (Red,
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`Green, Blue)) on the other (id., ¶103).
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`
`
` 5
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` PO states that its Response is “supported” by the declaration of Mr. Wong (Ex.
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`2007) (Resp., 2), but fails to cite to the majority of the paragraphs in his
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`declaration. (See generally Resp.) This is improper incorporation by reference,
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`and the Board should give no weight to paragraphs of the declaration that are not
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`cited and relied on in PO’s Response.
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`(Ex. 2035, 15 (annotated); see also Ex. 1039, 91:6-93:24 (describing the three
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`plugs collectively as a “component interface”), 138:9-13, 64:6-65:4.)
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`Further,
`
`the specification explains
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`that
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`the DAVE 304b (encoder)
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`functionality may be embodied as a video card, such as the “ASUS 9400-X.” (Ex.
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`1001, 6:57-61.) As confirmed by Mr. Wong, the ASUS 9400-X included a DVI
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`(digital) connector and a VGA (analog) connector. (Ex. 1039, 84:14-87:16; Ex.
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`1032.) Thus, as shown below, the ASUS 9400-X video card implemented in the
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`configuration of Figure 3 included an interface that had a DVI (digital) port and a
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`VGA (analog) port.6
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`
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`Additionally, Mr. Wong testified that a Micro B SuperSpeed USB interface would
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`be a “high-definition digital output interface like that recited in claim 1 of the ’853
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`patent.” (Ex. 1039, 99:17-101:21.) Such a connector is depicted in the Wikipedia
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`
`
` 6
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` When discussing a conventional S-video interface (also shown in Figure 3), Mr.
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`Wong considered a driving circuit board with a D/A converter as “part of the S-
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`video interface.” (Ex. 1039, 151:16-25.) Thus, the ASUS 9400-X card with its
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`multiple ports would have been known as an “interface.”
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`page Mr. Wong relied on in his declaration (Ex. 1039, 96:11-97:21; Ex. 2007,
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`¶163; Ex. 1033, 10 (top, second from right)), and includes two separate
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`connections or ports.
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`Thus, the Board should reject PO’s interpretation of “interface” and the term
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`should be accorded its ordinary and customary meaning, as determined by the
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`Board (Dec., 8-15, 28) and applied in the Petition (Pet., 11).
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`B.
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`“Processing Unit Configured To”
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`The parties do not dispute that the term “processing unit” in claims 1 and 19
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`is not a means-plus-function term.7 Thus, for purposes of this proceeding, the
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`majority panel’s finding should be maintained. See, e.g., Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`III. PO’s Arguments Do Not Overcome the Evidence Demonstrating That
`Independent Claim 1 is Unpatentable
`
`PO’s arguments regarding claim 1 rely on its unreasonable construction of
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`“interface,” improperly focus on individual teachings of the combined prior art,
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`and ignore evidence identified in the Petition and relied upon by the Board that
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`demonstrates that the combination of Nam, Seaman, and Takeda renders claim 1
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`
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` 7
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` PO represented in district court that the term is not a means-plus-function term.
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`(Ex. 1037, 77.)
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`10
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`obvious. (See, e.g., Resp., 2-3, 11, 16-25.) Thus, PO’s arguments should be
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`Patent No. 9,118,794
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`rejected and the claim found unpatentable.
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`A. The Combined Teachings of Nam, Seaman, and Takeda Disclose
`the Claimed “High Definition Digital Output Interface”
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`1.
`
`PO’s Attacks Are Inapplicable to the Instituted Prior Art
`Combination and Rely on PO’s Improper Construction
`
`To begin, PO’s argument that Nam, Seaman, and Takeda fail to disclose a
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`“high definition digital output interface” not only relies on PO’s improper
`
`interpretation of “interface,” but also on the misconception that this limitation must
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`be found in a single reference. (Resp., 16-25.) However, “the test for obviousness
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`is what the combined teachings of the references would have suggested to [a
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`PHOSITA].” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (emphasis
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`added)8; see also In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981).
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`As demonstrated in the Petition and recognized by the Board, the combined
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`teachings of Nam, Seaman, and Takeda disclose this limitation. (Pet., 23-36; Ex.
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`1003, ¶¶150-167; Dec., 25-31, 30-31.) PO’s piecemeal arguments against the
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`references are misplaced given that the Petition demonstrates how Nam discloses a
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`“digital output interface” and how the combination of Nam and Seaman discloses a
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`“high definition digital output interface.” (Pet. 23-36.) Thus, PO’s argument that
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` 8
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` All emphasis added hereinafter unless otherwise indicated.
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`11
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`Nam alone does not disclose a “high definition digital output interface” is
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`Patent No. 9,118,794
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`inapposite. (Resp., 8-9, 16-20.)
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`PO also faults the Board’s construction of “interface.” (Resp., 16.)
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`However, as discussed above, PO’s interpretation is unreasonably narrow and
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`inconsistent with the specification. Accordingly, PO’s arguments, which rely on
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`its misplaced construction, should be rejected. PO has no response to the adopted
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`combination’s disclosures under the interpretations applied by Petitioner and the
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`Board.
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`2.
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`Nam Is Not Limited to an Analog Output Interface
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`PO contends that Nam only discloses an S-video port, which is analog.
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`(Resp., 8, 19, 33, 35; Ex. 1039, 94:13-15.) But, Nam is not limited to an analog S-
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`video port—it discloses a digital video output. (Ex. 1005, 2:21-24, 4:1-9, 4:28-40;
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`Pet., 13, 17, 19-20, 24; Ex. 1003, ¶¶113, 137-138, 142, 151; Dec. 17, 23-25, 31.)
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`While PO suggests that Nam teaches transmitting a digital video format over an
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`analog connection (Resp., 8-9, 19, 33), this attack ignores that Nam describes an S-
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`video port as one example and teaches “that the output signals from the display
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`interface 102 . . . can be analog or digital.” (Ex. 1005, 2:21-24; see also id., 4:1-9,
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`4:28-40; Pet., 13, 16-20; Ex. 1003, ¶¶113, 137-143.) As PO and Mr. Wong
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`confirm, analog ports such as S-video cannot be used to transmit digital signals
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`12
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`unless the signals are “converted to analog.” (Resp., 19; Ex. 2007, ¶¶52, 106; Ex.
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`Patent No. 9,118,794
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`1039, 151:16-25.)
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`PO’s argument that “Nam includes no description of any type of port (S-
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`video or otherwise) that receives power in addition to sending the recited signals”
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`(Resp., 16, 19) ignores Nam’s application in the instituted grounds, which is in
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`combination with Seaman and Takeda (Pet., 23-36; Ex. 1003, ¶¶150-167). Nam
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`also does not teach away from providing power through the line that transmits a
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`signal as PO suggests (Resp., 9, 19, 35, 39) because Nam is not so limited and
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`discusses composite signals in one example. (Ex. 1005, 2:21-26, 3:64-4:9, 4:28-
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`40; see also Ex. 2008, 162:2-21.) Thus, the combined teachings of Nam, Seaman,
`
`and Takeda disclose a “high definition digital output interface” configured to
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`transmit the encoded digital signal and to receive power. (Pet., 23-36; Ex. 1003,
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`¶¶150-167.)
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`3.
`
`The Combined Teachings of Nam and Seaman Disclose
`Transmission of an “Encoded Digital Signal”
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`PO doubles down on its position by also arguing that Nam does not disclose
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`transmitting an “encoded digital signal” through a “high definition digital output
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`interface.” (Resp., 2, 9, 16, 19-20.) But again, PO’s piecemeal attack is misplaced
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`as the Petition relies on the combination of Nam and Seaman for such features.
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`(Pet., 19-28; Ex. 1003, ¶¶142-154; Dec., 30.)
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`13
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`Patent No. 9,118,794
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`PO does not and cannot dispute that Nam’s disclosure “is broad enough to
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`encompass the high definition television (‘HDTV’) format” or that “Seaman’s
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`disclosure, which lists HDTV as a digital video format for television, indicates that
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`a skilled artisan would have understood that Nam’s external display 120 could be a
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`television that is compatible with the HDTV format.” (Dec., 24-25, 31.) Nor does
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`PO address Dr. Almeroth’s testimony that “NAM describes digital video,”
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`“[w]ithin the set of digital video, it includes things like high definition,” and that
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`while Nam does not specifically reference HDTV or HDMI, “it definitely
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`references it to a degree that [POSITA] would have understood what would be
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`encompassed within that list as, for example, demonstrated in Seaman.” (Ex.
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`2008, 162:2-21; Ex. 1003, ¶¶144-154.)9 Moreover, PO does not meaningfully
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`address Petitioner’s showings that the video signals in Nam are converted to a
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`format appropriate for display terminal 120, which are decompressed encoded
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`digital video signals. (Pet., 16-20; Ex. 1003, ¶¶137-143.) PO’s individual attacks
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`on Nam and Seaman do nothing to overcome Petitioner’s evidence which
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`establishes how the combination of Nam and Seaman discloses a “high definition
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` 9
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` PO’s argument that Nam contradicts the instituted combination because Nam
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`does not list HD formats even though such formats existed at the time of Nam
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`should be rejected for the reasons articulated by Dr. Almeroth. (Resp., 32-33.)
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`digital interface” that transmits “high definition” digital video as an “encoded
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`digital signal.” (Pet., 19-28; Ex. 1003, ¶¶142-154; Dec., 30.)
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`4.
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`Takeda in Combination with Nam and Seaman, Disclose the
`Features of Claim 1
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`PO again individually attacks Takeda by alleging it does not disclose the
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`claimed “high definition digital output interface” and the transmission of the
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`recited “encoded digital signal” from a cellular phone. (Resp., 2, 10-12, 20-24,
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`35.)10 But the Board already rejected this argument, explaining that the ground
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`relies on Nam and Seaman for disclosure of a “high definition digital output
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`interface” and the teachings of Takeda to modify that combination to include an
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`interface that transmits the encoded digital signal and receives power. (Dec., 26-
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`27, 30; Pet., 16-36; Ex. 1003, ¶¶137-167.)11
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`
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`10 Despite PO’s attacks (Resp., 22-25), Dr. Almeroth’s cross-examination was
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`consistent with his direct testimony and the Petition’s positions regarding Takeda.
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`(Id., 24 (citing Ex. 2008, 305:21-307:21).)
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`11 PO’s argument concerning the “encoded” signal and “processed signal” in
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`Takeda (Resp., 10, 23-24, 35) is premised on a misreading of the ground set forth
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`in the Petition. (Pet., 16-20; Ex. 1003, ¶¶137-143; Dec., 25-26, 29-30.)
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`15
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`PO does not dispute that Takeda’s portable phone transmits data and
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`receives power from an external source. (Resp., 10-11.) Instead, PO argues that
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`Takeda’s phone does not have a single output interface for sending data and
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`receiving power. (Id., 11, 22-23, 20.) Not true. Even under PO’s mistaken
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`construction, Takeda’s portable phone has “a connector” or “a contact” (and thus
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`one interface) through which data is transmitted and power is received. (Ex. 1006,
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`5:41-61; Pet., 31, 28-30; Ex. 1003, ¶¶159-160, 155-158; see also Ex. 2008, 228:3-
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`231:10.) Takeda explains that “a connector or a contact” on phone 20 “electrically
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`connects internal circuits of the portable phone 20 and the conversion adaptor
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`40.” (Ex. 1006, 5:50-55, 5:41-61, Figs. 2, 11-13; Pet., 31, 28-30; Ex. 1003, ¶¶159-
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`160, 155-158; Ex. 2008, 228:3-231:1013, 133:8-136:5, 124:18-133:6.) Mr. Wong
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`confirmed that Takeda’s Figure 2 shows that the internal circuits of the portable
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`phone 20 include power mode switching circuit 25 and battery 24. (Ex. 1006,
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`5:50-55, 5:41-61, Figs. 2, 11-13; Ex. 1039, 142:22-143:16.) Thus, the same
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`“connector” or “contact” of phone 20 that “electrically connects” power switching
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`circuit 25 and battery 24 to supply circuit 43 of adaptor 40 also “electrically
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`connects” CPU 23 to other circuits of adaptor 40. (Ex. 1006, 5:50-55, 5:41-61,
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`Figs. 2, 11-13; Ex. 2008, 228:3-231:13; Ex. 2007, ¶¶88-89; Resp., 11; Ex. 1039,
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`86:22-87:10.)12 Moreover, a POSITA would have understood that connector types
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`that provided IEEE 1394, USB, and HDMI functionalities could have been used on
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`a portable phone. (Ex. 2008, 121:7-15; Ex. 1003, ¶¶152, 152 n.7-8, 165; see also
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`Pet., 25-26, 25 n.8-9, 34-35.)13
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`
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`12 Dr. Almeroth also explained that a POSITA would have understood that separate
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`lines for video signals and power depicted in Takeda’s “Figures 9 and 8 and 2” can
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`be implemented in “[a] variety of ways” and “it becomes a design choice of
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`whether you have them together as a single interface or whether you separate them
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`out,” but “in the context of column 5 around line 55, [and] Figure 1, it is teaching
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`to a [POSITA] the idea that you can have an interface with all of the lines
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`integrated into a single output interface or connector.” (Ex. 2008, 133:8-136:5,
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`124:18-133:6.)
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`13 Despite Mr. Wong’s testimony (Ex. 2007, ¶58; Ex. 1039, 82:5-83:15), IEEE
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`1394 and USB interfaces were known in 2004 to transmit data and receive power,
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`including HD signals (IEEE 1394). (Ex. 1027, 1:13-31; Ex. 1021, 1:30-36, 3:20-
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`40; Ex. 1003, ¶¶152, 165; Ex. 1035, 1, 6-7, 8, 3 (6-pin connector for data and
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`power), Fig. 2; Ex. 1036, 51, 54-55.) Mr. Wong is wrong about the limited
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`applications of IEEE 1394 “[u]p to now.” (Compare Ex. 2007, ¶170 with Ex.
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`1035, 7-11.)
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`Contrary to PO’s assertions (Resp. 11-12), Takeda does not discuss a
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`wireless connection between the portable phone and the conversion adaptor, but
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`instead describes a potential wireless connection between a component that exists
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`separately from the portable phone and the conversion adaptor. (Ex. 1006, 3:55-
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`4:7, Figs. 1, 2, 8-13.) Also, PO’s assertion that Takeda does not disclose an
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`interface that can transmit both a video signal and power (Resp., 11, 40-41) is
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`misplaced because elements 40a and 40b are components of the same conversion
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`adaptor 40 to which the portable phone connects using “a connector or a contact”
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`on the phone. (Ex. 1006, Figs. 1, 2, 5:41-63, 7:39-58; see also Ex. 2008, 228:3-
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`231:10.)
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`PO’s single port “interface” arguments also ignore that the Petition and its
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`supporting evidence demonstrate that the combined teachings of Nam, Seaman,
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`and Takeda would have motivated a POSITA to include a high definition digital
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`output interface that provides an encoded digital signal and receives power, which
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`is not limited in number of ports. (Pet., 31, 34-35; Ex. 1003, ¶161; Exs. 1018,
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`1020, 1021, 1027). The Petition and supporting evidence demonstrate that the
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`“interface” of the Nam-Seaman-Takeda combination could transmit the encoded
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`digital signal and receive power via two paths that may connect to separate ports of
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`an interface, and thus meets the claim limitation under the Board’s interpretation.
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`The evidence also demonstrates that the resulting “interface” of the Nam-Seaman-
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`Takeda combination could transmit the encoded digital signal and receive power
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`via a single port interface (e.g., Takeda’s single “contact” or “connection”), which
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`meets the claim limitation under PO’s mistaken single port interpretation.14
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`PO’s suggestion that such an interface was not known in the prior art (Resp.,
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`37-38, 12; Ex. 2007, ¶¶57-59) is contradicted by the teachings of Yoo (Ex. 1020).
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`As explained by Dr. Almeroth, Yoo demonstrates that a POSITA would have been
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`aware of technology involving a cellphone that includes a multi-pin interface that
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`transmits converted video signals to a HD external display and receives power.
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`(Ex. 1003, ¶¶94, 147-148, 152, 152 n.8, 165, 165 n.10-12; Ex. 1020, 6-7, 9-11,
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`Abstract, Fig. 1, Table 1; Pet., 25, 26 n.9, 34, 35; Ex. 2008, 122:19-123:18,
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`200:16-201:5; Ex. 1039, 143:17-147:5.)
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`PO also offers a conclusory argument that the Nam-Seaman-Takeda
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`combination fails to disclose transmitting an encoded digital signal through a cable
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`and receiving power through the cable. (Resp., 2-3.) However, the limitation that
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`14 Moreover, Mr. Wong’s explanation that the DVI interface in Figure 3 of the
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`patent could receive power merely by using unused pins further supports that the
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`combination involving the teachings of Seaman (which teaches DVI) would have
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`provided similar features in the Nam-Seaman-Takeda combination. (Ex. 1039,
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`76:9-78:12.)
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`PO identifies is not a limitation of claim 1 of the ’794 patent.15 Nonetheless, using
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`a cable to include separate paths for data and power was not innovative—the
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`Petition and its supporting evidence demonstrate how and why a POSITA would
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`have been motivated to configure the interface of the combined prior art
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`configuration to connect to a cable to receive power and transmit the encoded
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`digital signals. (Pet., 23-36; Ex. 1003, ¶¶150-167; Ex. 1020; Ex. 1027; Ex.
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`1021.)16
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`Nor does Nam teach away from “the provision of power through a line that
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`transmits a signal.” (Resp., 39.) First, PO confuses a “line” with a “cable,” which
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`is different, but even so, a cable, like those known in the prior art and described in
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`the ’794 patent (e.g., IEEE 1394), were known to include separate wires that each
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`connected to respective pins / contacts in an interface. (Ex. 1035, 3, 8; Ex. 1036,
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`51, 54-55.) Likewise, Takeda is not limited to separate “cables” for power and
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`data as suggested by PO. (Resp., 39-40, 11.) The portion of Takeda referenced by
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`PO (e.g., Figure 1) describes connections with the conversion adaptor and does not
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`15 Likewise, the other limitation PO points to is not a limitation of claim 1. (Resp.,
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`3 (“Fourth…”).)
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`16 Even Mr. Wong acknowledged that at least IEEE 1394 and USB type ports
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`could be connected using cables. (See Ex. 2007, ¶¶169, 172-174, 176-177, 178.)
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`teach away from the use of a cable to connect the portable phone to an external
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`device. PO simply ignores the knowledge of a POSITA (detailed in the Petition) in
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`connection with the combination of Nam, Seaman, and Takeda for this feature.
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`(Pet., 23-36; Ex. 1003, ¶¶150-167.)
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`B. Nam, Seaman, and Takeda Are Properly Combined
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`The Board should reject PO’s arguments that the references teach away from
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`the combination. (See Resp., 12-16, 26-38.)
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`For example, PO’s focus on the alleged difference in form factor between
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`the Nam and Seaman devices (Resp., 9-10, 28-29) misses the mark because, as the
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`Board acknowledged, Petitioner relies on Seaman for its disclosure of well-known
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`HD technologies (e.g., HDTV, HDMI, DVI) and not the physical structure of
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`Seaman’s device.17 18 (Dec., 30-31, 25; Pet., 21, 19-28, 9-10; Ex. 1003, ¶¶142-
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`154; Resp., 20-21.) To the extent PO is alleging that connecting the mobile
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`device/cellular phone of Nam or Takeda using HDMI or DVI with an external
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`device would have “undermine[d] the operation of the cellular phone” (Resp., 29),
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`17 Dr. Almeroth explained on cross-examination that the combination does not rely
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`on Seaman for its form factor. (Ex. 2008, 146:16-147:10.)
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`18 PO’s other arguments about Seaman and that Takeda teaches away from the
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`combination can be dismissed for similar reasons. (Resp., 20-21, 30, 35-36.)
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`such an argument is at odds with the ’794 patent’s generic description of using
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`conventional HDMI and DVI to connect a cellphone with an external display. (Ex.
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`1001, Figs. 3, 5, 6:51-64, 7:21-35, 4:50-52.)19
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`PO is also wrong to rely on Seaman’s discussion of a telephone service to
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`allege that Seaman teaches away from using a wired or wireless telephone device
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`like Nam’s device because a service is not a device. (Resp., 10, 28-29.) PO’s
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`assertion that Seaman and Matsubara discourage the use of a cellphone to process
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`video signals is also misplaced as Matsubara is not relied on for this ground and it
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`does not discourage the use of a cellphone to process video signals. (Resp., 10,
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`30.) Further, Seaman’s discussion of a potential benefit of using a dedicated
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`device as opposed to a PC does not pertain to using a cellphone to process video
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`signals. (Ex. 1015, ¶¶12-13) Finally, PO’s assertion that “Seaman [] disparages
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`telephonic networks” (Resp., 29) is incorrect given Seaman contemplates
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`telephonic networks, such as cellular networks (Ex. 1015, ¶¶22, 23, 47, 53, 55; Ex.
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`1003, ¶123; Ex. 2008, 149:1-150:15).
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`19 Given the ’794 patent lacks any other details as to this type of connection, if it is
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`PO’s position that the prior art would not work using HDMI on a cellphone, PO
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`cannot dispute that the ’794 patent could not either.
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`PO’s argument that Nam and Takeda are not compatible (Resp., 10, 23-24,
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`35) ignores that Takeda discloses a portable phone having an output interface and
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`that the Petition relies on the combination of Nam and Seaman for disclosure of a
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`HD digital output interface that transmits the encoded digital signal. (Pet., 16-28;
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`Ex. 1003, ¶¶137-154; Dec., 30; Ex. 2008, 302:20-309:19.) PO’s attack on Takeda
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`because it allegedly only discloses analog video signals (Resp. 36-37) is similarly
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`inapposite. Moreover, not only does PO not point to anything in Takeda that
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`suggests that its phone’s interface is incompatible with digital signals, PO
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`acknowledges that Takeda can use digital audio signals, which are “supplied from
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`the CPU 23” of the portable phone. (Resp., 37 n.2; Ex. 1006, 7:63-8:2, 5:50-63,
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`7:9-11, 7:20-23, Figs. 2, 11-13; Ex. 1039, 142:22-143:9.)
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`IV. Claims 2-5, 8, 9, 11-14, 19-22, 26, 28, 30 and 31 Are Unpatentable
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`A. Nam, Seaman, and Takeda Render Dependent Claims 2-5, 8, 9,
`and 11-13 Obvious
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`PO offers no new argument regarding claims 2, 4, 5, 8, and 11-13 beyond
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`what it presented for claim 1. (Resp., 3-4, 38-42.) PO’s arguments regarding
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`claims 3, 9, 10, and 14 focus on limitations that do not appear in these claims and
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`can be ignored. (Resp., 38-42.) To the extent any of PO’s arguments relate to
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`limitations of claim 1, those arguments are addressed above. (Supra Section III.)
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`Moreover, to the extent PO’s arguments regarding “claim 9” relate to claim
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`2, 3, 5, or 8, Takeda does not expressly teach away from providing power to a
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`battery through the same interface that transmits signals. (Resp., 11, 40-41.) The
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`combination of Nam, Seaman, and Takeda renders this concept obvious for the
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`reasons stated in the Petition and discussed above for claim 1. (See supra Section
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`III.A.)20
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`To the extent that PO’s arguments regarding “claim 10” relate to claims 4
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`and 9 or any other challenged claim (Resp., 41-42), those arguments are also at
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`odds with the positions in the Petition, which demonstrate that Takeda discloses in
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`Figures 8-9 receiving power from the tel