Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: July 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCT MOBILE (US), INC., TCT MOBILE (US) HOLDINGS, INC.,
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD., and
`TCL COMMUNICATION, INC.,
`Petitioner,
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`IPR2021-00395
`Patent 7,239,111 B2
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`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JO-ANNE M. KOKOSKI, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Entered: July 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCT MOBILE (US), INC., TCT MOBILE (US) HOLDINGS, INC.,
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD., and
`TCL COMMUNICATION, INC.,
`Petitioner,
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`IPR2021-00395
`Patent 7,239,111 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JO-ANNE M. KOKOSKI, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
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`IPR2021-00395
`Patent 7,239,111 B2
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`
`INTRODUCTION
`I.
`TCT Mobile (US), Inc.; TCT Mobile (US) Holdings, Inc.; Huizhou
`TCL Mobile Communication Co. Ltd.; and TCL Communication, Inc.
`(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1–14 and 16–18 (the “challenged claims”) of
`U.S. Patent No. 7,239,111 B2 (Ex. 1001, “the ’111 patent”). Patent Owner,
`Fundamental Innovation Systems International LLC, timely filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
` We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C.
`§ 314(a). See also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial
`on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes
`review may not be instituted unless the information presented in the Petition
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Taking into
`account the Petition, the arguments presented in the Preliminary Response,
`and all supporting evidence, we conclude that the information presented in
`the Petition does not establish a reasonable likelihood that Petitioner would
`prevail in showing that at least one claim of the ’111 patent is unpatentable.
`Pursuant to 35 U.S.C. § 314, and for the reasons stated below, we do not
`institute an inter partes review of the challenged claims of the ’111 patent.
`A. Related Matters
`The parties state that the ’111 patent is asserted in Fundamental
`Innovation Systems International LLC v. Coolpad Group Limited, et al., No.
`2:20-cv-00117 (E.D. Tex.); Fundamental Innovation Systems International
`LLC v. Belkin, Inc., et al., No. 1:20-cv-00550 (D. Del.); Fundamental
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`Innovation Systems International LLC v. Lenovo (United States) Inc., et al.,
`No. 1:20-cv-00551 (D. Del.); and Fundamental Innovation Systems
`International LLC v. TCT Mobile (US) Inc., et al., No. 1:20-cv-00552 (D.
`Del.). Pet. 70; Paper 4, 2. In addition, Patent Owner states that the ’111
`patent was the subject of IPR2018-00276, IPR2018-00495, and IPR2018-
`00487. Paper 4, 3.
`
`B. Real Parties-in-Interest
`Petitioner identifies TCT Mobile (US), Inc., TCT Mobile (US)
`Holdings, Inc., Huizhou TCL Mobile Communication Co. Ltd., and TCL
`Communication, Inc. as real parties-in-interest. Pet. 69. Patent Owner
`identifies Fundamental Innovation Systems International LLC and
`Fundamental Innovation Systems International Holdings LLC as real
`parties-in-interest. Paper 4, 1.
`C. Technology Background
`An overview of USB1 cables and the standard USB specification is
`helpful in understanding the technology involved in the ’111 Patent, which
`relates to charging a mobile device through a USB connector. See Ex. 1001,
`Fig. 3. Cables compliant with the USB 2.0 standard have four conductors:
`VBUS, D+, D-, and GND. Ex. 1011, 17–18, 862. The VBUS and GND
`conductors of the USB cable are used to deliver power to devices and the D+
`and D- conductors carry communication signals between a USB host and a
`connected device. Id. at 17–18; Ex. 1001, 7:4–11. Figure 4–2 of the USB
`2.0 specification, reproduced below, depicts these four conductors within a
`USB cable:
`
`
`1 “USB” is an acronym for “Universal Serial Bus.” Ex. 1010, 1.
`2 We refer to the original printed page numbers in this Exhibit.
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`Ex. 1011, 17. Figure 4–2 illustrates the arrangement of conductors in a USB
`cable.
`The USB 2.0 specification designates “SE1” as a state in which D+
`and D− conductors are both high (i.e., at a voltage greater than 0.8 V). See
`id. at 123, 145. The USB 2.0 specification states that “[l]ow-speed and full-
`speed USB drivers must never ‘intentionally’ generate an SE1 on the bus.”
`Id. at 123; see also id. at 148 n.4 (“A high-speed driver must never
`‘intentionally’ generate a signal in which both D+ and D− are driven to a
`level above 200 mV. The current-steering design of a high-speed driver
`should naturally preclude this possibility.”).
`D. The ’111 Patent
`The ’111 patent is titled “Universal Serial Bus Adapter for a Mobile
`Device.” Ex. 1001, code (54). The ’111 patent issued on July 3, 2007 from
`an application filed on July 6, 2005. Id. at codes (45), (22). The patent
`claims priority through a chain of related applications to Provisional
`Application No. 60/273,021, filed on March 1, 2001, and to Provisional
`Application No. 60/330,486, filed on October 23, 2001. Id. at codes (63),
`(60); see also id. at 1:8–20.
`The ’111 patent “relates generally to power adapters. More
`particularly, the invention relates to power adapters for use with mobile
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`devices.” Id. at 1:26–28. The ’111 patent explains that “[a]lthough the USB
`interface can be used as a power interface, the USB is typically not used for
`that purpose by mobile devices.” Id. at 1:52–54. According to the ’111
`patent, the USB specification requires “that a USB device participate in a
`host-initiated process called enumeration in order to be compliant with the
`current USB specification in drawing power from the USB interface.” Id. at
`1:54–59. The ’111 patent states that it would be preferable “to be able to
`utilize alternate power sources such as conventional AC outlets and DC car
`sockets that are not capable of participating in enumeration to supply power
`to the mobile device via a USB interface.” Id. at 1:59–67.
`Figure 2, reproduced below, shows a USB adapter coupled to an
`exemplary mobile device.
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`Figure 2 depicts a USB adapter 100 that includes a primary USB connector
`102, a power converter 104, a plug unit 106, and an identification subsystem
`108. Id. at 6:57–60. The ’111 patent discloses that “the plug unit 106 can be
`a two prong or three prong plug of the type used in North America that can
`couple to a North American AC power socket 110N that provides 115
`VAC.” Id. at 7:14–17. Plug unit 106 can also accept one or more types of
`plug adapters 114N, 114B, 114D, and 114 that are configured to directly
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`mate with one or more types of power sockets 110N, 110D, 110B, 110. Id.
`at 7:17–22, Fig. 2.
`The ’111 patent explains that “[t]ypically when a mobile device 10
`receives power over the USB from a USB host, it is required to draw power
`in accordance with the USB specification,” which requires the enumeration
`process that limits the electrical current that can flow across the USB. Id. at
`8:11–16. However, the ’111 patent discloses that “[t]he identification
`subsystem 108 provides an identification signal to the mobile device 10 that
`the power source is not a USB limited source” and mobile device 10 “can
`now draw power without regard to the USB specification and the USB
`specification imposed limits.” Id. at 8:17–25.
`The ’111 patent describes a preferred embodiment in which the
`identification signal is “the application of voltage signals greater than 2 volts
`to both the D+ and D− lines in the USB connector.” Id. at 9:21–23. The
`’111 patent provides a further example of applying “a logic high signal, such
`as +5V reference, to both the D+ and D- lines.” Id. at 9:31–34. If mobile
`device 10 detects this identification signal, the mobile device 10 determines
`that the device connected to its USB connector 54 “is not a typical USB host
`or hub and that a USB adapter 100 has been detected.” Id. at 9:35–39. The
`’111 patent explains that “the mobile device 10 can forego the enumeration
`process and charge negotiation process and immediately draw energy from
`the USB power adapter 100 at a desired rate and “can then charge the battery
`or otherwise use power provided via the Vbus and Gnd lines in the USB
`connector 54.” Id. at 9:39–42, 9:60–65. Otherwise, if mobile device 10
`detects that both D+ and D− lines are not greater than 2 volts, mobile device
`10 determines that it is connected to a USB host or hub, and signals the
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`connected host or hub to initiate the enumeration process, and it can power
`or charge battery 60 according to the power limits imposed by the USB
`specification. Id. at 9:43–55, 10:1–6. “The enumeration process is typically
`initiated after mobile device 10 applies approximately zero volts to the D-
`line and approximately 5 volts to the D+ line to inform the host of the
`mobile device’s 10 presence and communication speed.” Id. at 9:55–59.
`E. Illustrative Claim
`Claims 1, 17, and 18 are independent claims. Claim 1 is reproduced
`below with italics added:
`1. A Universal Serial Bus (“USB”) adapter for providing
`power to a mobile device through a USB port, comprising:
`a plug unit configured to receive energy from a power socket;
`a power converter coupled to the plug unit, the power
`converter being configured to regulate the received energy from
`the power socket to generate a power output;
`an identification subsystem configured to generate an
`identification signal, wherein the identification signal is
`configured to indicate to the mobile device that the power socket
`is not a USB host or hub;[3] and
`a USB connector coupled to the power converter and the
`identification subsystem, the USB connector being configured to
`couple the power output and the identification signal to the
`mobile device.
`Ex. 1001, 11:60–12:8.
`
`
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–14 and 16–18 would have been
`unpatentable on the following ground (Pet. 2):
`
`
`
`3 For ease of reference, we refer to this limitation as the “identification
`subsystem” limitation in this Decision.
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`
`Claim(s) Challenged
`1–14, 16–18
`
`
`35 U.S.C. §
`103(a)4
`
`Reference(s)/Basis
`Morita5 and the knowledge of a
`skilled artisan
`
`II. ANALYSIS
`A. Overview
`A petition must show how the construed claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`Petitioner bears the burden of demonstrating a reasonable likelihood that it
`would prevail with respect to at least one challenged claim for a petition to
`be granted. 35 U.S.C. § 314(a).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`
`
`4The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became
`effective on March 16, 2013. Because the ’111 patent claims priority to a
`chain of U.S. Non-Provisional and Provisional Applications filed prior to
`March 16, 2013, we apply the pre-AIA version of 35 U.S.C. § 103.
`5 Japanese Unexamined Patent Application Publication No. 2000-165513 A,
`published June 16, 2000 (Ex. 1017, “Morita”).
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`(i.e., secondary considerations).6 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`We analyze the asserted ground with these principles in mind.
`B. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” Id. (internal quotation marks and citation omitted).
`Petitioner contends:
`A person of ordinary skill in the art (“POSITA”) of the subject
`matter of the ’111 Patent would have had either (i) a bachelor’s
`degree in electrical engineering, computer science, or a related
`field, plus 3-5 years of experience in design of systems with
`Universal Serial Bus (“USB”) or equivalent buses that follow the
`USB 2.0 and earlier specification, or (ii) a master’s degree in
`electrical engineering, computer science, or a related field, plus
`1-2 years of experience in design of systems with USB or
`equivalent buses that follow the USB 2.0 and earlier specification
`at the time of the ’111 Patent’s priority date.
`Pet. 12.
`
`
`6 No evidence of objective indicia has been presented by the parties.
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`Patent Owner states that “[f]or purposes of this preliminary response
`only, Patent Owner applies the skill level proposed by Petitioner.” Prelim.
`Resp. 18.
`For the purposes of this Decision, we apply Petitioner’s proffered
`level of skill in the art because it appears consistent with the problems
`addressed in the ’111 patent and the prior art.
`C. Claim Construction
`We apply the same claim construction standard used by Article III
`federal courts and the International Trade Commission, both of which follow
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its
`progeny. 37 C.F.R. § 42.100(b) (2019). Accordingly, we construe each
`challenged claim of the ’111 patent to generally be “the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
`1. Identification Signal Limitation
`Petitioner submits that “[c]laims 1 and 17 both recite an ‘identification
`signal . . . configured to indicate to the mobile device that the power socket
`is not a USB host or hub’” but contends that an express construction of this
`limitation is not necessary. Pet. 31. Petitioner asserts that “the Board need
`determine only that a SE1 signal (i.e., a logic high signal on both the D+ and
`D- USB lines) sent from a USB adapter, wherein the USB adapter is
`connected to a power socket (e.g., ‘North American Power Socket’)”
`satisfies the limitation. Id. at 31–32 (citing Ex. 1001, 9:31–38).
`Patent Owner argues that Petitioner’s request regarding an SE1 signal
`“is a request for applying the proper claim interpretation to facts, and not a
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`request for claim construction,” and “[t]here is thus no need for the Board to
`construe the term.” Prelim. Resp. 18–19.
`We agree with Patent Owner that Petitioner is not offering a
`construction of this term but rather arguing that we should find that an SE1
`signal satisfies this limitation.
`2. Means-Plus-Function Terms
`Petitioner argues that claim 18 includes four limitations that contain
`the words “means for” and thus are presumed to invoke 35 U.S.C. § 112,
`¶ 6. Pet. 33 (citing Williamson v. Citrix Online, LLC, 792 F.3d, 1339, 1349
`(Fed. Cir. 2015) (en banc)).
`For the limitation “means for receiving energy from a power socket,”
`Petitioner contends the ’111 patent discloses three distinct corresponding
`structure to perform the function of “receiving energy from a power socket.”
`Id. at 33–34 (citing Ex. 1001, 7:12–14; Ex. 1003 ¶ 102, fn. 1).
`For the limitation “means for regulating the received energy from the
`power socket to generate a power output,” Petitioner asserts that “the
`corresponding structure encompasses a power converter or an equivalent
`thereof.” Id. at 34 (citing Ex. 1001, 2:9–13, 7:27–37, 11:10–14). Petitioner
`contends that the corresponding structure for the limitation “means for
`generating an identification signal that indicates to the mobile device that the
`power socket is not a USB hub or host” is an identification subsystem or an
`equivalent thereof. Id. at 34–35 (citing Ex. 1001, 8:23–25, 8:31–36, 9:3–8).
`For the limitation “means for coupling the power output and
`identification signal to the mobile device,” Petitioner asserts that “the
`corresponding structure encompasses a USB connector of a USB adapter or
`an equivalent thereof.” Id. at 35–36 (citing Ex. 1001, 7:4–11, 7:41–43).
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`Patent Owner states that “[f]or the purpose of this preliminary
`response only, Patent Owner will use the structures identified by Petitioner.”
`Prelim. Resp. 20.
`After reviewing the evidence and argument presented by the parties,
`we determine that it is not necessary to our decision to construe any claim
`terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999))).
`D. Alleged Obviousness of Claims 1–14 and 16–18 over Morita and/or the
`Knowledge of One of Ordinary Skill in the Art
`Petitioner contends claims 1–14 and 16–18 would have been obvious
`over Morita and/or the knowledge of one of ordinary skill in the art. Pet.
`36–69. Petitioner supports its contentions with the Declaration of R. Jacob
`Baker, Ph.D. (Ex. 1003). Patent Owner disputes Petitioner’s contentions.
`Prelim. Resp. 30–64. Patent Owner supports its arguments with the
`Declaration of Dr. Kenneth Fernald (Ex. 2009).
`We begin with a brief summary of Morita and then address the
`parties’ respective contentions.
`1. Morita (Ex. 1017)7
`Morita is titled “Charger.” Ex. 1017, code (54). Morita relates to “a
`hub-controllable charger capable of accessing a plurality of external devices
`
`
`7 Patent Owner contends that the translation of Morita submitted by
`Petitioner lacks the affidavit required by 37 C.F.R. § 42.63(b). Prelim. Resp.
`29. As explained below, we evaluate the Petition based on the translation
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`in a state wherein a mobile phone is coupled to the charger, and capable of
`managing transmission and branching of signals between each.” Id. at code
`(57). More specifically, Morita is directed “to a charger capable of charging
`a mobile phone and coupling to an external device and more specifically
`relates to a USB format charger provided with a HUB function capable of
`connecting a plurality of external devices.” Id. ¶ 1.
`Morita discloses that the USB format “is often used for the interfaces
`of current personal computers.” Id. ¶ 4. Further, providing the mobile
`phone with “a USB port enables easy use of personal computers . . . to
`read/write image data, audio data, phone directory data, and other internal
`program data stored in memory on the mobile videophone device.” Id. In
`addition, “when the mobile videophone device operates as a personal
`computer, it is possible to easily access hard disk data by simply connecting
`to an external peripheral . . . such as a hard disk.” Id. But, “it is not
`desirable to operate the mobile videophone device as the host end from the
`viewpoint of the battery.” Id. ¶ 8.
`
`
`provided and are not persuaded to institute a trial. Therefore, we need not
`address this issue.
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`Morita’s Figure 1 is reproduced below, and depicts a charger.
`
`
`Figure 1 is a block diagram of an embodiment of Morita’s charger. Id. ¶ 12.
`Morita discloses a mobile videophone device 100 and a charger 110
`for charging the mobile videophone device 100. Id. Mobile videophone
`device 100 includes a USB port 13 “for transmitting and receiving data to
`and from an external device and supplying power,” a USB controller 14 for
`controlling the USB port 13, and a battery 15. Id. Charger 110 includes a
`first USB port 20 “for coupling a host-controllable external device such as a
`personal computer,” a second USB port 21 “for coupling the mobile
`videophone device 100,” a power supply connection unit 22, “such as an
`outlet,” a charging control unit 23, and a third USB port 24 “for coupling
`devices such as a mouse, keyboard, and monitor,” a connection switching
`port 26 “for performing connection switching of the first USB port and the
`second USB port,” and a USB hub control unit 27 “having functions for
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`branching and transmitting signals, attaching and removing external devices,
`determining low speed devices and high speed devices, and supplying and
`managing power.” Id.
`Morita explains that “[t]he power supply of the mobile videophone
`device 100 is supplied from the USB controller 14 to the battery 15 by
`coupling to a charger via a USB format capable of supplying data and
`power.” Id. ¶ 13. For instance, Morita discloses that “[t]he power supply
`cable 22 is connected to an outlet or the like connected to a commercial
`power supply, and the supplied power supply voltage is supplied to the
`mobile videophone device 100 via the USB port 21 to charge an internal
`battery.” Id. ¶ 16. According to Morita, “charger 110 thus performs, as one
`device, a charging operation of the mobile videophone device 100 and an
`operation as a USB hub to which the first USB port 20 and the second USB
`port 24 are connected.” Id.
`Morita further explains that when a personal computer is connected,
`the “personal computer is connected to the first USB port 20 via a USB
`cable, the connection switching unit 26 connects the connection destination
`of the first USB port 20 to the USB hub control unit 27” and “the mobile
`videophone device 100 connected to the second USB port 21 is connected to
`the USB hub control unit 27 as a device.” Id. ¶ 15. Conversely, “when the
`mobile videophone device 100 is used as the host personal computer,” the
`second USB port 21 is connected to the USB hub control unit 27 by the
`connection switching unit 26 “and the first USB port 20 is not connected to
`the USB hub control unit 27 and is in disconnected state.” Id. Morita also
`discloses that “external peripherals (devices) connected to the third USB
`port 24 are connected as peripherals of the mobile videophone device 100.”
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`Id. Morita further discloses that “the mobile phone always accesses the
`external device while receiving the supply of power from the charger, and
`thus, the mobile phone can be used without worrying about battery
`consumption due to long-term and continuous use.” Id. ¶ 22.
`2. Claim 1
`Patent Owner’s contentions are all directed to the identification
`subsystem limitation. See Prelim. Resp. 30–64. We focus on the parties’
`respective contentions with respect to this limitation.
`Petitioner contends that “Morita renders the [identification subsystem]
`limitation[] . . . obvious in view of the knowledge of a” skilled artisan.
`Pet. 41 (citing Ex. 1003 ¶¶ 114–124). Petitioner further contends that
`Morita “expressly disclose[s] a USB hub control unit, as well as USB
`connectors and architecture, which a [skilled artisan] would have understood
`included components for the claimed identification subsystem to generate an
`identification signal, e.g., an SE1 signal or a high logic signal of greater that
`2V on the D+ and D- lines as taught by the ’111 Patent.” Id. at 41–42
`(citing Ex. 1001, 9:21–42, Fig. 3; Ex. 1003 ¶¶ 69–90, 114)8. According to
`Petitioner, it would have been obvious “to use Morita’s USB hub control
`unit/USB port 21 as an identification subsystem ‘to indicate to the mobile
`
`
`8 Patent Owner asserts Petitioner incorporates by reference excessive
`amounts of expert testimony without explanation and that we should decline
`to consider the incorporated arguments. Cisco Sys., Inc. v. C-Cation Techs.,
`LLC, IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) (informative).
`Prelim. Resp. 28–29. In paragraphs 69–90 of his testimony, Dr. Baker
`discusses a number of prior art references apparently in support of his
`assertions concerning the knowledge of one of ordinary skill in the art. See
`Ex. 1003 ¶¶ 69–90.
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`device that the power socket is not a USB host or hub’ and the identification
`signal would be a SE1 signal state.” Id. at 42 (citing Ex. 1003 ¶¶ 114–124).
`Petitioner further contends that a skilled artisan “would have found it
`obvious that although Morita’s charger was capable of handling a ‘plurality
`of external devices,’ one possibility would have been that the charger was
`merely plugged into the power socket (outlet) to charge the mobile device
`without any other external device (e.g., USB host or hub).” Pet. 42 (citing
`Ex. 1003 ¶¶ 116-118) (emphasis added). Petitioner further contends that
`“although Morita discloses that a USB host or hub (e.g., personal computer)
`is optionally connectable to the adapter via USB port 20, it also discloses its
`device is acting as a charger without the operational USB host or hub
`connection.” Id. at 43 (citing Ex. 1003 ¶ 118; Ex. 1017 ¶ 14). According to
`Petitioner, “[w]ithout this optional connection: 1) normal USB
`communications through the USB adapter with a connected mobile device
`would not have been possible . . . and 2) powering the USB adapter from the
`absent, and unconnected, USB host or hub would not have been possible.”
`Id. (citing Ex. 1003 ¶ 115). Petitioner contends that “Morita embraces this
`scenario, because it discloses that the adapter can provide power to the
`phone via USB connector 21 using the power from the outlet” and “the sole
`source of power to the connected device through Morita’s adapter would
`have to come from the power socket (outlet) via the plug unit.” Id. (citing
`Ex. 1003 ¶ 115; Ex. 1017 ¶ 16). Based on the foregoing, Petitioner contends
`that a skilled artisan “would have found it obvious to provide an
`identification signal via USB port 21 to indicate that the adapter is not a
`USB host or hub, i.e., is capable of charging via a power socket.” Id.
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`Petitioner next contends that the SE1 signal state “is an abnormal
`condition . . . since normal USB communications are not possible” and a
`skilled artisan would have known because SE1 “is an abnormal condition
`and thus does not fall within normal USB operation, that it could have been
`used as an identification signal . . . to a connected mobile device to indicate
`to the device that the power socket was not a USB host or hub.” Pet. 46
`(citing Ex. 1003 ¶¶ 69–90, 119) (emphasis added).
`Petitioner further contends that “[h]olding D+ and D- high (SE1) in
`this situation (for charging a battery and no communications) was known
`before the priority date of the ’111 Patent.” Pet. 46. In support of this
`contention, Petitioner relies on Ex. 1014 (“Zyskowski”) and Ex. 1012
`(“Kerai”). Id. at 46–47. According to Petitioner, Zyskowski discloses that
`“When the host 104 is in a full power state, data lines D1 and D2 may be
`raised to a predefined DC voltage level, for example, 5 volts (systems
`operating at lower voltages might raise the data paths to 3 volts, 2 volts, or
`even less).” Id. at 46–47 (citing Ex. 1014 ¶ 19). According to Petitioner,
`Kerai discloses providing power to a rechargeable battery through a USB
`port and provides: “As is well known, the data lines of a serial connection
`(D+ and D- in the USB interface) are held high when the connection is
`inactive and will vary between a high and low state whilst communication
`over the ports take place.” Id. at 47 (citing Ex. 1012, 5:45–48). Petitioner
`also points to Exhibit 1013 (“Shiga”) for using SE1 as a “wake up signal”
`and Exhibit 1015 (“Casebolt”) for using SE1 to indicate the “presence of
`PS/2 adpater.” Id.
`Patent Owner provides several contentions that when considered
`together persuade us that Petitioner has not sufficiently shown that Morita
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`and/or the knowledge of a skilled artisan discloses the identification
`subsystem limitation.
`First, Patent Owner contends that “Petitioner bases its entire
`obviousness theory on a charging-only mode that Morita neither discloses
`nor suggests.” Prelim. Resp. 30 (citing Pet. 42–43). Patent Owner further
`contends that “Petitioner presupposes that if no PC is connected to Morita’s
`charger as a host, ‘normal USB communications through the USB adapter
`with a connected mobile device would not have been possible” but,
`according to Patent Owner, “Morita is clear . . . when a PC is disconnected
`from Morita’s charger, the mobile device receives a connection state update
`and ‘is set to operate as a device for host controlling in a connected device.’”
`Id. (citing Pet. 43; Ex. 1017 ¶¶ 15, 18, Fig. 4). Patent Owner further
`contends that “[w]hen Morita operates as the host end, external peripherals
`such as monitor and keyboards continue to communicate with the device.”
`Id. at 30–31 (citing Ex. 1018 ¶ 18). According to Patent Owner, “[f]or the
`phone to receive input from the connected keyboard via a USB hub control
`unit, mobile phone and keyboard are communicating via USB with each
`other.” Id. at 31 (citing Ex. 1011, 243–244; Ex. 2009 ¶ 100). Patent Owner
`further contends that Petitioner “circularly assumes a charge-only operating
`mode with no USB communications to justify the use of SE1 signal” but
`according to Patent Owner, “this hypothetical operating mode directly
`contradicts Morita’s express disclosure that the mobile device would either
`connect . . . to a PC or operate as a host end when the PC is disconnected.”
`Id. at 33 (citing Ex. 1017 ¶ 15).
`Second, Patent Owner notes that “Petitioner does not assert that
`Morita discloses a claimed identification signal” but rather asserts that a
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`skilled artisan “would have used Morita’s USB hub control unit 27 and USB
`port 21 to generate an SE1 identification signal ‘to indicate to the mobile
`device that the power socket is not a USB host or hub.’” Prelim. Resp. 35–
`36 (citing Pet. 42). Patent Owner contends Petitioner provides “no
`competent evidence that any identification signal generated by Morita’s
`charger would indicate to the mobile device that the power socket is not a
`USB host or hub.” Id. at 36. According to Patent Owner, “[t]his is because
`in either of Morita’s configurations, the mobile device is charged from a
`USB port 21 of a USB hub charger 110 and any associated ‘signal that
`identifies a power source type’ would therefore indicate the power source
`type is a USB hub.” Id.
`In further support of its second contention, Patent Owner asserts
`Petitioner fails to provide evidence to support its assertion “that SE1 was
`used in the prior art in the manner recited by the claim, i.e., identification
`signal that is configured to or that indicates to a USB mobile device that the
`power socket (the connected power source) is not a USB host or hub.”
`Prelim. Resp. 41 (citing Pet. 24–27, 46–47). Patent Owner argues that the
`portion of Zyskowski cited by Petitioner “do
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