Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: August 31, 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 Petitioner’s Request for Rehearing of Decision
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Entered: August 31, 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 Petitioner’s Request for Rehearing of Decision
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2021-00395
`Patent 7,239,111 B2
`
`
`INTRODUCTION
`I.
`On July 6, 2021, we entered a Decision Denying Institution of Inter
`Partes Review. Paper 8 (“Decision” or “Dec.”). The basis for our Decision
`was Petitioner’s failure to sufficiently show that the prior art relied on by
`Petitioner, i.e., Morita (Ex. 1017) and/or the knowledge of an ordinarily
`skilled artisan, “discloses or suggests the identification subsystem
`limitation” recited in the challenged independent claims. Dec. 26.
`Petitioner timely filed a Request for Rehearing on July 20, 2021.
`Paper 9 (“Request” or “Req.”). Petitioner contends that we “overlooked or
`misapprehended its arguments that “in view of Morita and the knowledge of
`a POSITA, it would be obvious for Morita’s charger to send an
`‘identification signal’ . . . to Morita’s mobile phone, thereby rendering
`obvious the ‘identification signal’ limitations.” Req. 4.
`For the reasons explained below, we discern no reason to modify the
`Decision. Consequently, we deny the Request.
`II. STANDARD OF REVIEW
`Petitioner bears the burden to show that our Decision should be
`modified. 42 C.F.R. § 42.71(d). Our rules provide that a request for
`rehearing “must specifically identify all matters the party believes the Board
`misapprehended or overlooked and the place where each matter was
`previously addressed.” Id. We review a request for rehearing of the
`Decision “for an abuse of discretion.” 42 C.F.R. § 42.71 (c). “An abuse of
`discretion may be indicated if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors.” Huawei Device Co., LTD., v. Optis Cellular Tech., LLC,
`
`2
`
`
`
`IPR2021-00395
`Patent 7,239,111 B2
`
`IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations
`omitted).
`
`III. ANALYSIS
`Petitioner contends that we “overlooked or misapprehended that
`Petitioner’s argument was obviousness, not anticipation.” Req. 6; see also
`id. at 4–5 (arguing we overlooked argument “that it would be obvious to use
`Morita’s charger as only a charger to charge the Morita videotelephone.”).
`The underlying basis for this contention is that “[n]otably, Petitioner did not
`argue that Morita ‘discloses’ that Morita’s charger acts only as a charger.”
`Req. 6 (citing Pet. 42–43). This statement in the Request is absolutely false.
`The Petition states “although Morita discloses that a USB host or hub
`. . . is optionally connectable to the adapter via USB port 20, it also discloses
`its device acting as a charger without the operational USB host or hub
`connection.” Pet. 43 (citing Ex. 1003 ¶ 118 (“Baker Decl.”); Ex. 1017 ¶ 14
`(second italics added). Patent Owner disputed that Morita discloses this
`mode of operation. See Paper 7, 30. Due to the dispute created by
`Petitioner’s statement, we addressed the question of whether Morita
`discloses such a mode of operation. See Dec. 22–24. In particular, we noted
`that neither the cited portion of Morita nor Dr. Baker’s testimony supports
`Petitioner’s contention that Morita discloses its device acting only as a
`charger. Id. at 23. Further, we noted that the contention flew in the face of
`other portions of Morita not addressed by Petitioner. Id. at 23–24
`(discussing Ex. 1017 ¶¶ 16, 22).1
`
`
`1 Petitioner argues “the Petition demonstrates that it would be ‘common
`sense’ to use Morita’s charger to simply charge Morita’s mobile device.”
`Req. 6 (citing KSR Int;l Co. v. Teleflex, Inc., 520 U.S. 398, 420 (2007)).
`
`3
`
`
`
`IPR2021-00395
`Patent 7,239,111 B2
`
`
`Petitioner has not even attempted, let alone carried its burden to show,
`that our factual finding that Morita does not explicitly disclose a charging
`only mode is not supported by substantial evidence. See generally Req.
`Therefore, Petitioner has not shown an abuse of discretion in our resolution
`of this factual dispute.
`We did not overlook Petitioner’s obviousness arguments or in some
`unstated manner apply the law of anticipation. Rather, we analyzed the
`arguments in the Petition and determined that Petitioner did not show how
`Morita or any other cited prior art was “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,” as required by claim 1 of the challenged patent. Dec. 24–26. In the
`Decision, we explained “Petitioner, at best, shows that Morita is capable of
`generating an SE1 signal, not that it is configured to generate the recited
`identification signal.” Id. at 25 (citing Pet. 46). We also found that other
`prior art referenced in the Petition failed to disclose an identification signal
`configured as recited in claim 1. Id. at 25–26. Petitioner does not address
`these findings. See generally Req.
`Petitioner rephrases its arguments from the Petition and now contends
`that we should have determined “whether it would have been obvious to
`configure Morita to” generate the recited identification signal. Req. 8. We
`note that Petitioner does not direct us to any part of the Petition where it
`framed its obviousness argument in this particular way and our review of the
`Petition does not reveal that particular phrasing appearing in the Petition.
`
`
`Petitioner did not make this argument in the Petition and, thus, we could not
`have overlooked or misapprehended it.
`
`4
`
`
`
`IPR2021-00395
`Patent 7,239,111 B2
`
`Nonetheless, the Federal Circuit directs us that the phrase “configured to” is
`generally equivalent to the phrases “made to” or “designed to” and,
`therefore, requires more than what Petitioner argues. See In re Gianelli, 739
`F. 3d 1375, 1379 (Fed. Cir. 2014 ) (explaining that the phrase “‘adapted to’
`is frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to’” but
`“can also mean ‘capable of’ or ‘suitable for.’”); Belden Inc. v. Berk-Tek
`LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether
`a skilled artisan not only could have made but would have been motivated to
`make the combinations or modifications of prior art to arrive at the claimed
`invention”). Again, showing that Morita could have generated an SE1 signal
`is not equivalent to showing that Morita would have been configured to do
`so. See Dec. 25.
`In the Request, Petitioner does not argue that our finding Morita is, at
`best, capable of generating an SE1 signal is not supported by substantial
`evidence. Further, Petitioner does not argue that our determination that
`Morita is not “configured to” generate an SE1 signal is based on an
`erroneous interpretation of the law stated by the Federal Circuit in Gianelli.
`Therefore, Petitioner has not shown that we abused our discretion.
`We have considered all of Petitioner’s arguments in the Request and
`determine that Petitioner has not met its burden to show that we overlooked
`or misapprehended any matter in the Petition or otherwise abused our
`discretion. Consequently, we deny Petitioner’s Request for Rehearing and do
`not modify our Decision.
`IT IS HEREBY ORDERED that the Request is denied.
`
`
`
`
`
`
`5
`
`
`
`IPR2021-00395
`Patent 7,239,111 B2
`
`FOR PETITIONER:
`Jeffrey Johnson
`ORRICK, HERRINGTON, & SUTCLIFFE, LLP
`3j6ptabdocket@orrick.com
`
`
`
`FOR PATENT OWNER:
`
`Hong Zhong
`IRELL & MANELLA LLP
`hzhong@irell.com
`
`6
`
`
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