UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`BLACKBERRY CORP.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`
`
`
`__________________
`
`
`
`DECLARATION OF ANDREW WOLFE PH.D.
`in Support of Petition for Inter Partes Review of
`U.S. Patent No. 6,493,770
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`BLACKBERRY EX. 1012, pg. 1
`
`

`
`
`
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1 
`
`QUALIFICATIONS ....................................................................................... 1 
`
`III.  MATERIALS CONSIDERED AND PREPARED ........................................ 7 
`
`IV. 
`
`V. 
`
`SUMMARY OF OPINIONS .......................................................................... 8 
`
`LEGAL PRINCIPLES USED IN ANALYSIS .............................................. 9 
`
`A. 
`
`B. 
`
`C. 
`
`Patent Claims in General ..................................................................... 10 
`
`Prior Art ............................................................................................... 11 
`
`Unpatentability - Anticipation ............................................................. 12 
`
`D.  Unpatentability - Obviousness ............................................................ 13 
`
`VI. 
`
`BACKGROUND OF THE PATENT AND RELEVANT
`TECHNOLOGY ........................................................................................... 15 
`
`VII.  THE ’770 PATENT ...................................................................................... 19 
`
`VIII.  CLAIM CONSTRUCTION ......................................................................... 25 
`
`IX.  OVERVIEW OF THE PRIOR ART ............................................................ 27 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`Patent Owner’s Admitted Prior Art (“APA”) ..................................... 27 
`
`U.S. Patent No. 6,073,193 to Yap (“Yap”) ......................................... 31 
`
`U.S. Patent No. 5,628,028 to Michelson (“Michelson”) ..................... 36 
`
`PCCextend 100 User’s Manual (“PCCextend”) ................................. 38 
`
`U.S. Patent No. 5,862,393 to Davis (“Davis”) .................................... 40 
`
`X. 
`
`UNPATENTABILITY ANALYSIS ............................................................ 45 
`
`A. 
`
`The Claims of the ’770 Patent ............................................................. 45 
`
`ii
`
`BLACKBERRY EX. 1012, pg. 2
`
`

`
`
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`Claim 11 is unpatentable under 35 U.S.C. § 102(b) as being
`anticipated by the USB Specification V1.0......................................... 48 
`
`Claims 1, 5, 7, 10, 11, and 15–17 are unpatentable under 35
`U.S.C. § 103(a) as being obvious over the APA in view of
`Yap ...................................................................................................... 62 
`
`Claims 2, 3, 12, and 13 are unpatentable under 35 U.S.C. §
`103(a) as being obvious over APA in view of Yap and
`Michelson ............................................................................................ 80 
`
`Claims 1–3, 10, 11–13, 16–18, and 20 are unpatentable under
`35 U.S.C. § 103(a) as being obvious over Michelson in view
`of PCCextend and Davis ..................................................................... 86 
`
`Claims 5, 7, 15, 19 are unpatentable under 35 U.S.C. § 103(a)
`as being obvious over Michelson in view of PCCextend,
`Davis, and the APA ...........................................................................108 
`
`Claims 18–20 are unpatentable under 35 U.S.C. § 102(e) as
`being anticipated by Yap ...................................................................114 
`
`XI. 
`
`CONCLUDING STATEMENTS ............................................................... 118 
`
`
`
`iii
`
`BLACKBERRY EX. 1012, pg. 3
`
`

`
`
`
`I, Andrew Wolfe, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`
`I am currently a consultant at Wolfe Consulting.
`
`2.
`
`I have been retained in this matter to provide various opinions
`
`regarding U.S. Patent No. 6,493,770 (the “’770 patent”). I am being compensated
`
`for my work in this matter at my ordinary hourly consulting rate. My compensation
`
`in no way depends upon the outcome of this proceeding.
`
`3.
`
`I have been advised that Cypress Semiconductor Corp. owns the ’770
`
`Patent. I have no financial interest in the ’770 patent.
`
`II. QUALIFICATIONS
`4.
`I have more than 30 years of experience as a computer architect,
`
`computer system designer, personal computer graphics designer, educator, and as an
`
`executive in the electronics industry.
`
`5.
`
`In 1985, I earned a B.S.E.E. degree in Electrical Engineering and
`
`Computer Science from The Johns Hopkins University. In 1987, I received an
`
`M.S. degree in Electrical and Computer Engineering from Carnegie Mellon
`
`University. In 1992, I received a Ph.D. in Computer Engineering from Carnegie
`
`Mellon University. My doctoral dissertation proposed a new approach for the
`
`architecture of a computer processor.
`
`1
`
`BLACKBERRY EX. 1012, pg. 4
`
`

`
`
`
`6.
`
`In 1983, I began designing touch sensors, microprocessor-based
`
`computer systems, and I/O (input/output) cards for personal computers as a senior
`
`design engineer for Touch Technology, Inc. During the course of my design
`
`projects with Touch technology, I designed I/O cards for PC-compatible computer
`
`systems, including the IBM PC-AT, to interface with interactive touch-based
`
`computer terminals that I designed for use in public information systems. I
`
`continued designing and developing related technology as a consultant to the Carroll
`
`Touch division of AMP, Inc., where in 1986 I designed one of the first custom
`
`touchscreen integrated circuits.
`
`7.
`
`From 1986 through 1987, I designed and built a high-performance
`
`computer system as a student at Carnegie Mellon University. From 1986 through
`
`early 1988, I also developed the curriculum, and supervised the teaching laboratory,
`
`for processor design courses.
`
`8.
`
`In the latter part of 1989, I worked as a senior design engineer for
`
`ESL-TRW Advanced Technology Division. While at ESL-TRW, I designed and
`
`built a bus interface and memory controller for a workstation-based computer
`
`system, and also worked on the design of a multiprocessor system.
`
`9.
`
`At the end of 1989, I (along with some partners) reacquired the rights to
`
`the technology I had developed at Touch Technology and at AMP, and founded The
`
`Graphics Technology Company. Over the next seven years, as an officer and a
`
`2
`
`BLACKBERRY EX. 1012, pg. 5
`
`

`
`
`
`consultant for The Graphics Technology Company, I managed the company's
`
`engineering development activities and personally developed dozens of touchscreen
`
`sensors, controllers, and interactive touch-based computer systems.
`
`10.
`
`I have consulted, formally and informally, for a number of fabless
`
`semiconductor companies. In particular, I have served on the technical advisory
`
`boards for two processor design companies: BOPS, Inc., where I chaired the board,
`
`and Siroyan Ltd., where I served in a similar role for three networking chip
`
`companies—Intellon, Inc., Comsilica, Inc, and Entridia, Inc.—and one 3D game
`
`accelerator company, Ageia, Inc.
`
`11.
`
`I have also served as a technology advisor to Motorola and to several
`
`venture capital funds in the U.S. and Europe. Currently, I am a director of Turtle
`
`Beach Corporation, providing guidance in its development of premium audio
`
`peripheral devices for a variety of commercial electronic products.
`
`12. From 1991 through 1997, I served on the Faculty of Princeton
`
`University as an Assistant Professor of Electrical Engineering. At Princeton, I
`
`taught undergraduate and graduate-level courses in Computer Architecture,
`
`Advanced Computer Architecture, Display Technology, and Microprocessor
`
`Systems, and conducted sponsored research in the area of computer systems and
`
`related topics. I was also a principal investigator for DOD research in video
`
`technology and a principal investigator for the New Jersey Center for Multimedia
`
`3
`
`BLACKBERRY EX. 1012, pg. 6
`
`

`
`
`
`Research. From 1999 through 2002, I taught the Computer Architecture course to
`
`both undergraduate and graduate students at Stanford University multiple times as a
`
`Consulting Professor. At Princeton, I received several teaching awards, both from
`
`students and from the School of Engineering. I have also taught advanced
`
`microprocessor architecture to industry professionals in IEEE and ACM sponsored
`
`seminars. I am currently a lecturer at Santa Clara University teaching graduate
`
`courses on Computer Organization and Architecture and undergraduate courses on
`
`electronics and embedded computing.
`
`13. From 1997 through 2002, I held a variety of executive positions at a
`
`publicly-held fabless semiconductor company originally called S3, Inc. and later
`
`called Sonicblue Inc. For example, I held the positions of Chief Technology
`
`Officer, Vice President of Systems Integration Products, Senior Vice President of
`
`Business Development, and Director of Technology. At the time I joined S3, the
`
`company supplied graphics accelerators for more than 50% of the PCs sold in the
`
`United States.
`
`14. Beginning in 1998, I began to work closely with S3’s largest customer,
`
`Diamond Multimedia, to explore possible opportunities for a merger. My
`
`investigation included evaluating the technology, market, and business model
`
`related to the “Diamond Rio PMP300,” the first commercially viable flash-memory
`
`MP3 player. In 1999, I led the merger negotiations between the two companies,
`
`4
`
`BLACKBERRY EX. 1012, pg. 7
`
`

`
`
`
`managed significant parts of company integration, and, after the merger was
`
`complete, worked on new product development. Soon after the merger with
`
`Diamond, we introduced the “Diamond Rio PMP500,” a portable music player that
`
`included Universal Serial Bus (“USB”) capability and also the ability to play
`
`downloaded files purchased from the Audible.com website. We also developed
`
`relationships with MP3 music vendors, including eMusic and MP3.com.
`
`15. While at Diamond, we also developed the Rio 600 and 800 MP3
`
`players, which included support for digital rights management (“DRM”) protected
`
`music using protocols from Microsoft. During the development of the PMP500
`
`and the Rio 600, we also developed a music delivery platform and webstore backend
`
`service for selling DRM-protected music. In 1999, this business segment was spun
`
`out as a separate company called RioPort.com. I served on the RioPort.com board
`
`of directors and became involved in their product and technology strategy. I also
`
`managed engineering and marketing for the Rio product line for a period of time as
`
`an interim general manager.
`
`16.
`
`I served as a board member and technical advisor at KBGear Inc. from
`
`1999-2001. KBGear Inc. designed and produced digital cameras and music players
`
`that included USB ports and flash memory.
`
`17.
`
`I have published more than 50 peer-reviewed papers in computer
`
`architecture and computer systems and IC design.
`
`5
`
`BLACKBERRY EX. 1012, pg. 8
`
`

`
`
`
`18.
`
`I also have chaired IEEE and ACM conferences in microarchitecture
`
`and integrated circuit design and served as an associate editor for IEEE and ACM
`
`journals.
`
`19.
`
`20.
`
`I am a named inventor on 36 U.S. patents and 24 foreign patents.
`
`In 2002, I was the invited keynote speaker at the ACM/IEEE
`
`International Symposium on Microarchitecture and at the International Conference
`
`on Multimedia. From 1990 through 2005, I have also been an invited speaker on
`
`various aspects of technology and the PC industry at numerous industry events
`
`including the Intel Developer’s Forum, Microsoft Windows Hardware Engineering
`
`Conference, Microprocessor Forum, Embedded Systems Conference, Comdex, and
`
`Consumer Electronics Show, as well as at the Harvard Business School and the
`
`University of Illinois Law School. I have been interviewed on subjects related to
`
`computer graphics and video technology and the electronics industry by
`
`publications such as the Wall Street Journal, New York Times, Los Angeles Times,
`
`Time, Newsweek, Forbes, and Fortune as well as CNN, NPR, and the BBC. I have
`
`also spoken at dozens of universities including MIT, Stanford, University of Texas,
`
`Carnegie Mellon, UCLA, University of Michigan, Rice, and Duke.
`
`21. Based on my technical education, and my years of professional
`
`experience as both an engineer and as an educator, I consider myself to be an expert
`
`in the field of computer architecture and computer system design, consumer
`
`6
`
`BLACKBERRY EX. 1012, pg. 9
`
`

`
`
`
`electronics, and computer programming, including computer busses, interfaces, and
`
`input/output ports. Moreover, I am very familiar with the operation and functional
`
`capabilities and limitations of commercial computers and computer peripherals
`
`existing during the late 1990s.
`
`22. My professional experience with computer peripheral device interface
`
`design and with USB technology, as well as my educational background, is
`
`summarized in more detail in my C.V., which is included as Exhibit 1021 to the
`
`petition.
`
`III. MATERIALS CONSIDERED AND PREPARED
`23.
`In forming the opinions expressed below, I considered the ’770 patent
`
`and the other patents in its family (U.S. Patent Nos. 6,012,103 and 6,249,825)
`
`(collectively the “USB Patents”) and their file histories as well as the prior art
`
`references and related documentation discussed herein. I have also relied upon my
`
`education, background, and experience.
`
`24.
`
` In addition, I have reviewed the declaration of Geert Knapen that was
`
`presented with respect to a prior IPR petition related to the ’770 patent. In most
`
`cases, I found the presentation of pertinent facts and the accompanying analysis in
`
`that declaration to be both accurate and well written. Furthermore, in many cases,
`
`my relevant opinions are identical to Mr. Knapen’s. In these cases, I have
`
`duplicated Mr. Knapen’s language in this declaration to simplify the presentation to
`
`7
`
`BLACKBERRY EX. 1012, pg. 10
`
`

`
`
`
`the PTAB. Where my opinions differ from Mr. Knapen’s or I felt that a different
`
`form of presentation is preferable, I have written new text.
`
`IV. SUMMARY OF OPINIONS
`25. Based on my investigation and analysis, and for the reasons set forth
`
`below, it is my opinion that all of the elements and steps recited in claims 1–3, 5, 7,
`
`10–13, and 15–20 of the ’770 patent are disclosed in prior art references and that
`
`those claims are anticipated and/or rendered obvious in view of these references. In
`
`particular, I have relied primarily on the six prior art references identified below in
`
`support of my opinions:
`
`(1)
`
`Patent Owner’s Admitted Prior Art (“APA”) (Ex. 1001);
`
`(2) U.S. Patent No. 6,073,193 to Yap (“Yap”) (Ex. 1002);
`
`(3) U.S. Patent No. 5,628,928 to Michelson (“Michelson”) (Ex. 1003);
`
`(4)
`
`PCCextend100 User’s Manual (“PCCextend”) (Ex. 1004);
`
`(5) U.S. Patent No. 5,862,393 to Davis (“Davis”) (Ex. 1005);
`
`(6) Univeral Serial Bus Specification v1.0, January 15, 1996, Copyright
`
`1996, Compaq Computer Corporation, Digital Equipment Corporation, IBM PC
`
`Company, Intel Corporation, Microsoft Corporation, NEC, Northern Telecom
`
`(“USB 1.0 Specification”) (Ex. 1013);
`
`26. Besides the above documents, I have also considered the following
`
`references in preparing my declaration:
`
`8
`
`BLACKBERRY EX. 1012, pg. 11
`
`

`
`
`
`(1)
`
`(2)
`
`(3)
`
`Prosecution History of U.S. Patent 6,012,103 (Ex. 1006);
`
`Prosecution History of U.S. Patent 6,249,825 (Ex. 1007);
`
`Prosecution History of U.S. Patent 6,493,770 (Ex. 1008);
`
`(4) U.S. Patent No. 5,590,273 to Balbinot (Ex. 1014)
`
`(5) U.S. Patent No. 6,338,109 to Snyder (Ex. 1015)
`
`(6) Quinnell, Richard A., “USB: A Neat Package with a Few Loose Ends,”
`
`EDN Magazine (October 24, 1996) (Ex. 1016).
`
`(7) Levine, Larry. PCMCIA Primer, pp. 117-130 (M&T Books 1995)
`
`(Ex. 1017).
`
`(8)
`
`PCMCIA PC Card Standard Release 2.01, pp. 3-2 to 3-5; 4-2 to 4-7;
`
`4-10 to 4-19; 4-28 to 4-31; 4-34 to 4-37; 5-2 to 5-5; 5-12 to 5-21; 5-23; 5-48 to 5- 51;
`
`6-6 to 6-17 (published 1992) (Ex. 1018)
`
`(9)
`
`PCMCIA Card Services Specification Release 2.0, pp. 3-2 to 3-7; 3- 14
`
`to 3-17; 3-20 to 3-25; 3-28 to 3-29; 5-78 to 5-79 (published 1992) (Ex. 1019)
`
`(10) U.S. Patent No. 5,537,654 to Bedingfield (Ex. 1020)
`
`27. The bases for my opinions are set forth in greater detail below and in
`
`the claim charts attached as Appendix A.
`
`V. LEGAL PRINCIPLES USED IN ANALYSIS
`28.
`I am not a patent attorney and I am presenting no opinions on the law
`
`related to patent validity. BlackBerry’s attorneys have explained certain legal
`
`9
`
`BLACKBERRY EX. 1012, pg. 12
`
`

`
`
`
`principles to me that I have relied on in forming my opinions set forth in this
`
`declaration.
`
`29.
`
`I was informed that my assessment and determination of whether or not
`
`claims 1–3, 5, 7, 10–13, and 15–20 of the ’770 patent are unpatentable must be
`
`undertaken from the perspective of what would have been known or understood by
`
`someone of ordinary skill in the art as of the earliest priority filing date of the USB
`
`Patents—July 2, 1997. From analyzing the USB Patents and the relevant prior art,
`
`it is my opinion that a person of ordinary skill in the relevant art for the ’770 patent
`
`(“PHOSITA”) would be sufficiently skilled in the design of peripheral devices used
`
`in connection with computer systems to understand and practice the prior art
`
`discussed in this declaration. Unless otherwise specified, when I state that
`
`something would be known to or understood by one skilled in the art or possessing
`
`ordinary skill in the art, I am referring to someone with this level of knowledge and
`
`understanding.
`
`A.
`30.
`
`Patent Claims in General
`
`I have been informed that patent claims are the numbered sentences at
`
`the end of each patent. I have been informed that the claims are important because
`
`the words of the claims define what a patent covers. I have also been informed that
`
`the figures and text in the rest of the patent provide a description and/or examples
`
`10
`
`BLACKBERRY EX. 1012, pg. 13
`
`

`
`
`
`and help explain the scope of the claims, but that the claims define the breadth of the
`
`patent’s coverage.
`
`31.
`
`I have also been informed that an “independent claim” expressly sets
`
`forth all of the elements that must be met in order for something to be covered by
`
`that claim. I have also been informed that a “dependent claim” does not itself recite
`
`all of the elements of the claim but refers to another claim for some of its elements.
`
`In this way, the claim “depends” on another claim and incorporates all of the
`
`elements of the claim(s) from which it depends. I also have been informed that
`
`dependent claims add additional elements. I have been informed that, to determine
`
`all the elements of a dependent claim, it is necessary to look at the recitations of the
`
`dependent claim and any other claim(s) on which it depends.
`
`32.
`
`I have also been informed that patent claims may be expressed as
`
`“methods” or “apparatuses/devices/systems.” That is, I have been informed that a
`
`patent may claim the steps of a “method,” such as a particular way to perform a
`
`process in a series of ordered steps, or may claim a combination of various elements
`
`in an “apparatus,” “device,” or “system.”
`
`B.
`33.
`
`Prior Art
`
`I have been informed that the law provides categories of information
`
`(known as “prior art”) that may anticipate or render obvious patent claims. I have
`
`been informed that, to be prior art with respect to a particular patent in this
`
`11
`
`BLACKBERRY EX. 1012, pg. 14
`
`

`
`
`
`proceeding, a reference must have been published, or patented, or be the subject of a
`
`patent application by another, before the priority date of the patent. I have also
`
`been informed that a person of ordinary skill in the art is presumed to have
`
`knowledge of all prior art. I have been asked to presume that the reference
`
`materials that I opine on, i.e., the APA; U.S. Patent No. 6,073,193 to Yap; U.S.
`
`Patent No. 5,628,028 to Michelson; PCCextend 100 User’s Manual; U.S. Patent No.
`
`5,862,393 to Davis; and USB 1.0 Specification, are prior art from a technical
`
`perspective – that is, all were available to a person of ordinary skill in the art on or
`
`before the priority date of the patent.
`
`C. Unpatentability - Anticipation
`34.
`I have been informed and understand that determination of whether a
`
`patent claim is “anticipated” is a two-step process. First, the language of the claim
`
`is construed as it would be understood by one of ordinary skill in the art at the time
`
`of the filing of the patent application. Reference is made to the intrinsic evidence of
`
`record, which includes the language of the claim itself and other issued claims, the
`
`patent specification, and the prosecution history. Words in a claim will be given
`
`their ordinary or accustomed meaning unless it appears that the inventor used them
`
`differently. The prosecution history may limit the interpretation of the claim,
`
`especially if the applicant disavowed or disclaimed any coverage in order to obtain
`
`allowance of the claim.
`
`12
`
`BLACKBERRY EX. 1012, pg. 15
`
`

`
`
`
`35. Second, I understand that after the patent claim has been construed,
`
`determining anticipation of the patent claim requires a comparison of the properly
`
`construed claim language to the prior art on an element-by-element basis.
`
`36.
`
`I understand that a claimed invention is “anticipated” if each and every
`
`element of the claim has been disclosed in a single prior art reference, or has been
`
`embodied in a single prior art device or practice, either explicitly or inherently (i.e.,
`
`necessarily present or implied).
`
`37.
`
`I understand that although anticipation cannot be established by
`
`combining references, additional references may be used to interpret the anticipating
`
`reference by, for example, indicating what the anticipating reference would have
`
`meant to one having ordinary skill in the art.
`
`D. Unpatentability - Obviousness
`38.
`I have been informed that, even if every element of a claim is not found
`
`explicitly or implicitly in a single prior art reference, the claim may still be
`
`unpatentable if the differences between the claimed elements 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 of ordinary skill in the art. That is, the invention
`
`may be obvious to a person having ordinary skill in the art when seen in light of one
`
`or more prior art references. I have been informed that a patent is obvious when it
`
`is only a combination of old and known elements, with no change in their respective
`
`13
`
`BLACKBERRY EX. 1012, pg. 16
`
`

`
`
`
`functions, and that these familiar elements are combined according to known
`
`methods to obtain predictable results. I have been informed that the following four
`
`factors are considered when determining whether a patent claim is obvious: (1) the
`
`scope and content of the prior art; (2) the differences between the prior art and the
`
`claim; (3) the level of ordinary skill in the art; and (4) secondary considerations
`
`tending to prove obviousness or nonobviousness. I have also been informed that
`
`the courts have established a collection of secondary factors of nonobviousness,
`
`which include: unexpected, surprising, or unusual results; prior art that teaches away
`
`from the alleged invention; substantially superior results; synergistic results;
`
`long-standing need; commercial success; and copying by others. I have also been
`
`informed that there must be a connection, or nexus, between these secondary factors
`
`and the scope of the claim language.
`
`39.
`
`I have also been informed that some examples of rationales that may
`
`support a conclusion of obviousness include:
`
`a) Combining prior art elements according to known methods to yield
`
`predictable results;
`
`b) Simply substituting one known element for another to obtain
`
`predictable results;
`
`c) Using known techniques to improve similar devices (or product) in
`
`the same way (e.g. obvious design choices);
`
`14
`
`BLACKBERRY EX. 1012, pg. 17
`
`

`
`
`
`d) Applying a known technique to a known device (or product) ready
`
`for improvement to yield predictable results;
`
`e) Choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success-in other words, whether
`
`something is “obvious to try”;
`
`f) Using work in one field of endeavor to prompt variations of that
`
`work for use in either the same field or a different one based on
`
`design incentives or other market forces if the variations are
`
`predictable to one of ordinary skill in the art; and
`
`g) Arriving at a claimed invention as a result of some teaching,
`
`suggestion, or motivation in the prior art that would have led one of
`
`ordinary skill to modify the prior art reference or to combine prior
`
`art reference teachings.
`
`40.
`
`I have also been informed that other rationales to support a conclusion
`
`of obviousness may be relied upon, for instance, that common sense (where
`
`substantiated) may be a reason to combine or modify prior art to achieve the claimed
`
`invention.
`
`VI. BACKGROUND OF THE PATENT AND RELEVANT
`TECHNOLOGY
`41. The ’770 patent relates to a system and method for interfacing a
`
`computer system to a peripheral device. A wide variety of peripheral devices were
`
`15
`
`BLACKBERRY EX. 1012, pg. 18
`
`

`
`
`
`common at the time of the ’770 patent’s priority date, examples of which included a
`
`computer mouse, keyboard, printer, network adapter, modem, data storage device,
`
`and computer monitor. Often these peripherals, particularly a network adapter,
`
`modem, or data storage device, were in the form of a PC card (also referred to as a
`
`PCMCIA card). Various specifications have been developed to facilitate
`
`interaction between a computer and a peripheral device. These specifications have
`
`included the Personal Computer Memory Card International Association
`
`(PCMCIA) Specification and the Universal Serial Bus (USB) Specification.
`
`42.
`
`In the Background of the ’770 Patent (“Background”), the patentee
`
`admits that it was known to connect a peripheral device to a computer using a USB
`
`connection. Ex. 1001, 1:50–2:4; 4:15–34; Fig. 1. The patentee also admits in the
`
`Background that, when the USB connector of a peripheral is inserted into a
`
`powered-up host computer or inserted into a powered-down host computer which is
`
`then powered up, the host computer detects the peripheral device and a configuration
`
`process known as “enumeration” begins which causes the peripheral device to be
`
`recognized by the host computer’s operating system. Id. at 1:66–2:19.1
`
`1 The USB 1.0 Specification actually explained that enumeration is an ongoing
`
`activity for the bus and that it is only done at startup time for some busses. “4.6.3
`
`Bus Enumeration Bus enumeration is the activity that identifies and addresses
`
`devices attached to a bus. For many buses, this is done at startup time and the
`
`16
`
`BLACKBERRY EX. 1012, pg. 19
`
`

`
`
`
`43. The Background further alleges that the only opportunity for
`
`associating a software device driver with a peripheral device is at the time when the
`
`enumeration process occurs. Ex. 1001, 2:20–28. “Thus, to alter the configuration
`
`or personality of a peripheral device, such as downloading new code or
`
`configuration information into the memory of the peripheral device, the host
`
`computer system must detect a peripheral device connection or a disconnection and
`
`then a reconnection.” Id. at 2:24–28.
`
`44. This was admitted to be one of the “problems of known systems and
`
`methods. . . .” Id. at 2:37–40. Accordingly, it was admitted to be known that a
`
`peripheral device could have a first configuration and that a second configuration
`
`could be downloaded into the peripheral device over a computer bus. All of these
`
`features are also found in one or more of the prior art references discussed herein.
`
`45. The Background describes that the problem that the host computer
`
`system must detect a physical disconnection and reconnection is solved by a switch
`
`which is connected to one of the USB data lines D+ and D-. Ex. 1001, 6:59–65;
`
`information collected is static. Since the USB allows USB devices to attach to or
`
`detach from the USB at any time, bus enumeration for this bus is an on-going
`
`activity. Additionally, bus enumeration for the USB also includes detection and
`
`processing of removals.” Ex. 1013 at 32. “enumerating the USB is an on-going
`
`activity” Ex. 1013 at 31.
`
`17
`
`BLACKBERRY EX. 1012, pg. 20
`
`

`
`
`
`7:9–30. It was known that a host detects the connection of a peripheral device by
`
`monitoring voltage levels on one of the two USB data lines. Id. at 6:28–31; Ex.
`
`1013 at 114. Thus, by changing the state of the data lines, the switch is
`
`“electronically simulating a physical disconnection or reconnection of the peripheral
`
`device,” as recited in independent claims 1, 11, and 18. However, as discussed in
`
`more detail below, it was well known in the prior art (e.g., in U.S. Patent No.
`
`6,073,193 to Yap; PCCextend 100 User’s Manual, and U.S. Patent No. 5,862,393 to
`
`Davis) to position a switch in the lines of a bus between a peripheral device and host
`
`computer which can be opened and closed to simulate a physical disconnection and
`
`reconnection and cause reconfiguration. The method of resetting a USB port after
`
`configuration was also well known. Ex. 1013 at 115–117, 119, 14, 29, 165–169,
`
`221–222, 263. Also, the USB specification explained that certain devices had
`
`“hardware support for reset and suspend/resume signaling.” Ex. 1013 at 35. A
`
`reset on such a device sets the port state to “Disconnected.” Ex. 1013 at 223.
`
`Coming out of reset, attached devices are redetected. “Upon coming out of reset, a
`
`hub must detect which downstream ports have devices connected to them.” Ex.
`
`1013 at 224. A reset that switches power on and off to simulate a disconnect was
`
`also part of the USB specification. Ex. 1013 at 132, 242. In fact, the USB
`
`specification discloses the existence of non-removable devices that can only be reset
`
`using this simulation process. Ex. 1013 at 264. Thus, the problem that a host
`
`18
`
`BLACKBERRY EX. 1012, pg. 21
`
`

`
`
`
`needs to detect a disconnection and reconnection to cause reconfiguration had a
`
`well-known solution in the prior art.
`
`VII. THE ’770 PATENT
`46. The background admits that physically disconnecting and reconnecting
`
`a peripheral device to reconfigure the peripheral device was known at the time of the
`
`invention. See supra, Section VI. This physical disconnection and reconnection
`
`caused a host computer to perform an enumeration process to recognize the
`
`requirements and capabilities of the device and select an appropriate device driver
`
`with which to use the peripheral device. See, e.g., Ex. 1001, 1:66–2:18.
`
`47. The ’770 Patent relates to using an electronic circuit to simulate the
`
`disconnection and reconnection to take the place of an actual physical disconnection
`
`and reconnection. Id. at 2:62–3:8; 5:36–43.
`
`48. Figure 2 of the ’770 Patent (reproduced below) illustrates a USB
`
`system “in accordance with the invention.” Ex. 1001, 3:52–53; 4:64–65. The
`
`USB system includes a host computer with an operating system that stores “one or
`
`more peripheral device drivers, such as a first peripheral device driver 68” and a
`
`“plurality of different configuration information sets 70.” Id. at 5:2–13.
`
`19
`
`BLACKBERRY EX. 1012, pg. 22
`
`

`
`
`
`
`49. The host computer selects one of the plurality of configuration
`
`
`
`information sets, such as an updated configuration information set, to download to
`
`the peripheral device. Ex. 1001, 5:36–54. Instead of relying on a physical
`
`disconnection and reconnection of the peripheral device to reconfigure the
`
`peripheral device based on the updated configuration information set, the host uses
`
`an “electronic disconnect and reconnect method in accordance with the invention.”
`
`Id. at 5: 36–43. In other words,