IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`BLACKBERRY CORP.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`__________________
`
`Case IPR2014-_____
`Patent U.S. 6,493,770
`__________________
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 1–3, 5, 7, 10–13, AND 15–20 OF U.S. PATENT NO. 6,493,770
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`

`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`MANDATORY NOTICES ............................................................................. 1 
`
`CERTIFICATION OF GROUNDS FOR STANDING .................................. 3 
`
`III.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3 
`
`A. 
`
`B. 
`
`Prior Art Patents and Printed Publications ............................................ 3 
`
`Grounds for Challenge .......................................................................... 4 
`
`IV.  OVERVIEW OF THE ’770 PATENT ............................................................ 5 
`
`V. 
`
`CLAIM CONSTRUCTION .......................................................................... 12 
`
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 14 
`
`VII. 
`
`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS
`ARE UNPATENTABLE ............................................................................... 14 
`
`A.  Admitted Prior Art............................................................................... 14 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`Claims 1, 5, 7, 10, 11, 15–17 of the ’770 Patent Are Obvious
`under 35 U.S.C. § 103(a) over the APA and Yap ............................... 18 
`
`Claims 2, 3, 12, and 13 of the ’770 Patent Are Obvious under
`35 U.S.C. § 103(a) over the APA, Yap, and Michelson ..................... 31 
`
`Claims 1–3, 10–13, 16–18, and 20 of the ’770 Patent Are
`Obvious under 35 U.S.C. § 103(a) over Michelson,
`PCCextend, and Davis ......................................................................... 35 
`
`Claims 5, 7, 15, and 19 of the ’770 Patent Are Obvious under
`35 U.S.C. § 103(a) over Michelson, PCCextend, Davis, and
`the APA ............................................................................................... 51 
`
`Claims 18–20 of the ’770 Patent Are Anticipated under 35
`U.S.C. § 102(e) over Yap .................................................................... 54 
`
`Claim 11 of the ’770 Patent Is Anticipated under 35 U.S.C. §
`102(b) over the USB Spec. .................................................................. 57 
`
`VIII.  CONCLUSION .............................................................................................. 59 
`i
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`

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`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`
`
`EXHIBIT LIST
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`
`
`U.S. Patent No. 6,493,770 to Sartore et al.
`
`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
`
`Prosecution History of U.S. Patent 6,012,103
`
`Prosecution History of U.S. Patent 6,249,825
`
`Prosecution History of U.S. Patent 6,493,770
`
`Prosecution History of European Patent Application No. 98931675.7
`
`European Patent Convention (EPC) Rule 43 (2007) and 29 (1973)
`
`Patent Assignment Records of the ‘103, ‘825, and ‘770 patents
`
`Declaration of Dr. Andrew Wolfe
`
`USB Specification v 1.0
`
`U.S. Patent No. 5,590,273 to Balbinot
`
`U.S. Patent No. 6,338,109 to Snyder
`
`Quinnell, Richard A., “USB: A Neat Package with a Few Loose Ends,”
`EDN Magazine
`
`Levine, Larry. PCMCIA Primer, pp. 117-130
`
`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
`
`ii
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`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`1019
`
`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
`
`1020
`
`1021
`
` 
`
`U.S. Patent No. 5,537,654 to Bedingfield
`
`C.V. of Dr. Andrew Wolfe
`
`   
`
` 
`
` 
`
`
`
`iii
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`

`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`I. MANDATORY NOTICES
`Pursuant to 37 C.F.R. § 42.8(a)(1), BlackBerry Corp. (“BlackBerry” or
`
`“Petitioner”) provides the following mandatory disclosures.
`
`Real Party-in-Interest: Blackberry Corp. and Blackberry Ltd. are the real
`
`parties-in-interest.
`
`Related Matters: Petitioner states that U.S. Patent No. 6,493,770 (“the ’770
`
`patent,” Ex. 1001) is asserted in co-pending litigation captioned Cypress
`
`Semiconductor Corp. v. Blackberry Ltd. et al., Case No. 5:13-cv-04183-HRL
`
`(N.D. Cal.), complaint filed on September 10, 2013 and served September 12,
`
`2013. The ’770 patent is also involved in co-pending litigation captioned Cypress
`
`Semiconductor Corp. v. LG Electronics, Inc. et al., No. 4:13-cv-04034-SBA (N.D.
`
`Cal.).
`
`On August 27, 2014, LG Electronics, Inc., LG Electronics U.S.A., Inc., and
`
`LG Electronics MobileComm U.S.A., Inc (collectively, “LGE”) filed a petition for
`
`inter partes review against claims 1–3, 5, 7, 10–13, and 15–20 of the ’770 patent.
`
`(IPR2014-01405.) The ’770 patent claims priority to U.S. Patent No. 6,249,825
`
`(“the ’825 patent”) and U.S. Patent No. 6,012,103 (“the ’103 patent”). On August
`
`26, 2014, LGE filed a petition for inter partes review against claims 14–16, 18–20,
`
`and 23–27 of the ’103 patent. (IPR2014-01386.) On August 27, 2014, LGE filed a
`
`
`
`1
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`

`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`petition for inter partes review against claims 1–3, 5, 7, 10–13, and 15–20 of the
`
`’825 patent. (IPR2014-01396.)
`
`Petitioner is filing a petition for inter partes review of the ’103 and ’825
`
`patents concurrently with this petition.
`
`Counsel: Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the
`
`following designation of counsel:
`
`Lead Counsel:
`
`Robert C. Mattson (Registration No. 42,850)
`
`Backup Counsel: John S. Kern (Registration No. 42,719) and Thomas C.
`
`Yebernetsky (Registration No. 70,418)
`
`Service Information: Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning
`
`this matter should be served on the following:
`
`
`
`Address: Oblon Spivak, 1940 Duke Street, Alexandria, VA 22314
`
`Email:
`
`cpdocketmattson@oblon.com;
`
`cpdocketkern@oblon.com; cpdocketyebernetsky@oblon.com
`
`Telephone: 703-412-6466
`
`Facsimile: 703-413-2220
`
`Petitioner consents to electronic service at the above email addresses.
`
`Fees: The undersigned authorizes the Office to charge the fee required by 37
`
`
`
`
`C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account No.
`
`15-0030 and any additional fees that might be due in connection with this Petition.
`
`
`
`2
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`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review, and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claim on the grounds identified in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104 (b)(1)–(2), Petitioner
`
`challenges claim 1–3, 5, 7, 10–13, and 15–20 of the ’770 patent. The ’770 patent
`
`is subject to pre-AIA 35 U.S.C. §§ 102 and 103.
`
`A.
`Prior Art Patents and Printed Publications
`Inter partes review of the ’770 patent is requested in view of the following
`
`references, none of which was considered by the Office during the original
`
`prosecution of the ’770 patent:
`
`Exhibit 1002 – U.S. Patent No. 6,073,193, issued on June 5, 2000 from an
`
`application filed on April 24, 1997 and, therefore, is available as prior art under 35
`
`U.S.C. § 102(e) (“Yap”).
`
`Exhibit 1003 – U.S. Patent No. 5,628,028, issued on May 6, 1997 from an
`
`application filed on March 2, 1995 and, therefore, is available as prior art under 35
`
`U.S.C. § 102(e) (“Michelson”).
`
`
`
`3
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`

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`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`Exhibit 1004 – PCCextend 100 User’s Manual is dated April 3, 1995 and
`
`contains a “1994-95” copyright date and, therefore, is available as prior art under
`
`35 U.S.C. § 102(b) (“PCCextend”).
`
`Exhibit 1005 – U.S. Patent No. 5,862,393, issued on January 19, 1999 from
`
`an application filed on October 7, 1996 and, therefore, is available as prior art
`
`under 35 U.S.C. § 102(e) (“Davis”).
`
`Exhibit 1013 – Universal Serial Bus Specification Revision 1.0 has a
`
`publication date of January 15, 1996 and, therefore, is available as prior art under
`
`35 U.S.C. § 102(b) (“USB Spec.”). Additionally, Yap incorporates by reference
`
`the USB Spec. (Ex. 1002, 1:39–42.)
`
`B. Grounds for Challenge
`Petitioner requests cancelation of the challenged claims under the following
`
`statutory grounds:
`
`1.
`
`Claims 1, 5, 7, 10, 11, 15–17 are obvious over the Admitted Prior Art
`
`(“APA”) in view of Yap under 35 U.S.C. § 103(a);
`
`2.
`
`Claims 2, 3, 12, and 13 are obvious over the APA in view of Yap and
`
`Michelson under 35 U.S.C. § 103(a);
`
`3.
`
`Claims 1–3, 10–13, 16–18, and 20 are obvious over Michelson in
`
`view of PCCextend and Davis under 35 U.S.C. § 103(a);
`
`
`
`4
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`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`4.
`
`Claims 5, 7, 15, and 19 are obvious over Michelson in view of
`
`PCCextend, Davis, and the APA under 35 U.S.C. § 103(a);
`
`5.
`
`6.
`
`Claims 18–20 are anticipated by Yap under 35 U.S.C. § 102(e);
`
`Claim 11 is anticipated by the USB Spec. under 35 U.S.C. § 102(b).
`
`
`
`Section VII below demonstrates, for each of the statutory grounds, that there
`
`is a reasonable likelihood that Petitioner will prevail. See 35 U.S.C. § 314(a).
`
`IV. OVERVIEW OF THE ’770 PATENT
`The ’770 patent relates to using an electronic circuit to simulate a physical
`
`disconnection and reconnection of a peripheral device while it is connected to a
`
`host computer in order to reconfigure the peripheral device. (Ex. 1001, 2:59–3:6;
`
`5:25–32.)
`
`Figure 2 (reproduced below) of the ’770 patent illustrates a USB system “in
`
`accordance with the invention.” (Ex. 1001, 3:51–52, 4:64–65.) The USB system
`
`includes a host computer with an operating system that stores “[o]ne or more
`
`peripheral device drivers, such as a first peripheral device driver 68” and a
`
`“plurality of different configuration information sets 70.” (Ex. 1001, 4:67–5:6.)
`
`
`
`5
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`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`
`
`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.”
`
`(Ex. 1001, 5:36–43.) In other words, the “disconnect/connect cycle may be
`
`electrically simulated” so that “a change in the configuration information for a
`
`particular peripheral device may be implemented.” (Ex. 1001, 2:62–3:1.)
`
`According to the ’770 patent, a conventional host computer USB interface
`
`circuit monitors the two USB data leads, labeled D+ and D-, to detect a
`
`disconnection and reconnection. (Ex. 1001, 3:53–54, 6:17–43, Fig. 3.) As shown
`
`
`
`6
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`

`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`in Fig. 3 (reproduced below), when the host device and the peripheral device are
`
`connected, 3.3 V from a power bus is supplied to the D+ line. (Ex. 1001, 6:26–27,
`
`6:36–43.) “In operation, the host computer detects the connection of a peripheral
`
`device by monitoring the voltage levels of one of the two USB data leads.” (Ex.
`
`1001, 6:28–31.) When the peripheral device is physically disconnected from the
`
`host computer, the connection from the 3.3 V supply voltage to the D+ line is
`
`broken as well, causing the host to measure zero volts on the D+ line. (Ex. 1001,
`
`6:20–24.) Based on this measurement, the host computer “determines that no
`
`peripheral device is connected to the USB port.” (Ex. 1001, 6:31–36.) When that
`
`peripheral device or another peripheral device is connected to the host computer,
`
`“the 1.5 kΩ resistor 110 connected to a supply voltage of the peripheral device
`
`USB interface 101 adds a voltage to the D+ line and the D+ line at the host
`
`computer is pulled to above 3 volts which is detected as a connected peripheral
`
`device by the host computer and the host computer begins the enumeration
`
`process.” (Ex. 1001, 6:36–43.)
`
`
`
`7
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`

`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`
`
`The ’770 patent describes simulating the disconnection/reconnection cycle
`
`by using a switch to break the connection between a supply voltage and the D+
`
`line. (Ex. 1001, 7:9–25, Fig. 4 reproduced below.)
`
`
`
`The switch 130 “may be a semiconductor switch such as a field effect
`
`transistor (FET),” and “may have a control lead 132 which may control the
`
`operation of the electrical switch.” (Ex. 1001, 6:61–67.) By opening the switch,
`
`“the D+ data lead is no longer connected to the supply voltage and the host
`8
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`

`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`computer determines that the peripheral device has been disconnected even though
`
`the peripheral device is still physically connected to the USB.” (Ex. 1001, 7:12–
`
`18.) “Similarly, when the electrical switch is closed again, the D+ data lead is
`
`again connected to the supply voltage and the host computer will detect that the
`
`peripheral device has been reconnected to the USB.” (Ex. 1001, 7:18–22.)
`
`According to the ’770 patent, the “electronic disconnection and reconnection
`
`of the peripheral device, as described above, in combination with the storage of the
`
`configuration information sets on the host computer permits the configuration of
`
`the peripheral devices to be changed easily without requiring the physical
`
`disconnection and reconnection of a peripheral device.” (Ex. 1001, 7:25–30.)
`
`According to the ’770 patent, the USB interface system and method may be
`
`a single semiconductor chip which may be incorporated into a plurality of
`
`peripheral devices. (Ex. 1001, 3:12–15.) “The chip may initially have a generic
`
`configuration (e.g., not specific to a particular peripheral device).” (Ex. 1001,
`
`3:15–17.) “Then, the appropriate configuration information for a particular
`
`peripheral device and manufacturer may be downloaded to the chip, an electronic
`
`simulation of the disconnection and reconnection of the peripheral device occurs,
`
`the peripheral device is recognized as a new, manufacturer specific peripheral
`
`device and the appropriate software device driver is loaded into the memory of the
`
`host computer.” (Ex. 1001, 3:17–24.)
`
`
`
`9
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`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`“For example, a plurality of different peripheral devices manufactured by
`
`different companies may each include a USB interface system.” (Ex. 1001, 5:63–
`
`66.) “The USB interface system for each peripheral device is identical (e.g., has a
`
`USB interface circuit and a memory) except that each memory may contain an
`
`identification code that is unique to, for example, a particular manufacturer.” (Ex.
`
`1001, 5:66–6:3.) “When one of the peripheral devices is connected to the USB and
`
`the host computer, the appropriate configuration information for the peripheral
`
`device, based on the identification code, is downloaded over the USB to the
`
`memory of the peripheral device and the appropriate software device driver is
`
`loaded into the memory of the host computer.” (Ex. 1001, 6:3–9.)
`
`According to the ’770 patent, one advantage of the electrical disconnection
`
`and reconnection is that “since the peripheral device is physically connected to the
`
`bus during the electrical simulation, the peripheral device may utilize the electrical
`
`power supplied by the bus to operate the peripheral device.” (Ex. 1001, 3:1–6.)
`
`During prosecution of the ’770 patent, the Examiner relied upon the
`
`background section in the ’770 patent to show that the features of downloading
`
`information relating to a new configuration and reconfiguring the device with the
`
`new configuration by physically disconnecting and reconnecting the device were
`
`admitted prior art. (Ex. 1008 p. 70.) The Examiner also took official notice that
`
`“it is obvious to select a configuration based on id code,” and that “configuration
`
`
`
`10
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`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`information consists of information such as logic configuration information,
`
`configuration data and executable code.” (Ex. 1008 p. 71.)
`
`In response, the Applicant made claim amendments and argued that the
`
`admitted prior art and the cited references did not teach the “electronically
`
`simulating” feature. (Ex. 1008 p. 90.) The Applicant also argued that the admitted
`
`prior art and the cited references did not teach “supplying electrical power to said
`
`peripheral device.” (Ex. 1008 p. 90.) The Applicant did not traverse the official
`
`notice taken by the Examiner. After the response was filed, the Examiner issued a
`
`notice of allowance.
`
`Claims 1, 11, and 18, the three independent claims at issue in this Petition,
`
`are reproduced below:
`
`Claim 1[preamble] A system for reconfiguring a peripheral device
`having a first configuration connected by a computer bus to a host
`computer, the system comprising:
`[a] a first circuit configured to download information for a second
`configuration from the host computer into the peripheral device over
`the computer bus; and
`[b] a second circuit configured to electronically simulate a physical
`disconnection and reconnection of the peripheral device to
`reconfigure the peripheral device to said second configuration while
`supplying electrical power to said peripheral device.
`
`
`
`
`11
`
`

`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`Claim 11[preamble] A method for reconfiguring a peripheral device
`having a first configuration connected by a computer bus to a host
`computer, the method comprising the steps of:
`(A) downloading information for a second configuration from the
`host computer into the peripheral device over the computer bus; and
`(B) electronically simulating a physical disconnection and
`reconnection of the peripheral device to reconfigure the peripheral
`device to said second configuration while supplying electrical power
`to said peripheral device.
`
`Claim 18[preamble] A system for reconfiguring a peripheral device
`having a configuration connected by a computer bus to a host
`computer, the system comprising:
`[a] a first circuit configured to detect the peripheral device connected
`to the computer bus; and
`[b] a second circuit configured to electronically simulate a physical
`disconnection and reconnection of the peripheral device to reset said
`configuration of said peripheral device while supplying electrical
`power to said peripheral device.
`
`V. CLAIM CONSTRUCTION
`The claim terms are presumed to take on their ordinary and customary
`
`meaning. This Petition shows that the challenged claims are unpatentable when
`
`given their broadest reasonable interpretation in light of the specification. See 37
`
`C.F.R. § 42.100(b).
`
`
`
`12
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`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`The term “electronically simulate/simulating a physical disconnection and
`
`reconnection of the peripheral device” appears in claim 1[b], 11[b], and 18[b]. The
`
`broadest reasonable interpretation of that term is “using an electronic circuit to
`
`perform an action, such as an electronic reset, associated with physical
`
`disconnection and reconnection of a peripheral device.” (Ex. 1012 ¶ 62.)
`
`This interpretation is the broadest reasonable interpretation that is consistent
`
`with the claims of the ’770 patent and the rest of the specification. (Ex. 1012 ¶ 62;
`
`Ex. 1001, 3:25–35, claims 1, 10, 11, 17, and 18.) For example, independent claim
`
`1 recites “a second circuit configured to electronically simulate the physical
`
`disconnection and reconnection of a peripheral device,” and dependent claim 10
`
`recites “wherein said second circuit comprises a reset circuit configured to reset
`
`the first or second configuration of the peripheral device.” Similarly, independent
`
`claim 11 recites “(B) electronically simulating a physical disconnection and
`
`reconnection of the peripheral device,” and dependent claim 17 recites “wherein
`
`step (B) comprises electronically resetting the configuration of the peripheral
`
`device.” Thus, the interpretation of the “electronically simulating” language must
`
`be broad enough so as not to exclude the reset circuit and resetting operation in the
`
`dependent claims. The interpretation of the “electronically simulating” language
`
`proposed herein encompasses the claimed reset circuit and resetting operation in
`
`the dependent claims, as well as the other aspects of electronically simulating (such
`
`
`
`13
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`

`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`as simulating with a switch) described in the patent (see, e.g., Ex. 1001, 6:59–7:8),
`
`and is therefore the broadest reasonable interpretation consistent with the claims.
`
`(Ex. 1012 ¶ 62.)
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`The level of ordinary skill in the art is evidenced by the prior art. See
`
`
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board
`
`did not err in adopting the approach that the level of skill in the art was best
`
`determined by the references of record). The prior art references relied upon show
`
`that one of ordinary skill in the art was sufficiently skilled in the design of
`
`peripheral devices used in connection with computer systems. (See, e.g., Ex.
`
`1002–1005.)
`
`VII. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
`
`Pursuant to Rule 42.104(b)(4)–(5), this section demonstrates that the
`
`challenged claims are unpatentable.
`
`A. Admitted Prior Art
`Inter Partes Review permits the consideration of an admission by a patent
`
`owner of record. See Intri-Plex Technologies Inc. v. Saint-Gobain Perf. Plastics
`
`Rencol Ltd., Case No. IPR 2014-00309, 2014 WL 2623456, at *5 (P.T.A.B. June
`
`10, 2014).
`
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`14
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`U.S. Patent 6,493,770
`Petition for Inter Partes Review
`
`
`In this case, the “Background of the Invention” section (“Background”) of
`
`the ’770 patent includes a discussion of a “new emerging technology called the
`
`Universal Serial Bus (USB)” for connecting peripheral devices to computers. (Ex.
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`1001, 1:50–2:12.) The Background describes how, when a peripheral device is
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`connected to a computer via a conventional USB port, the presence of the
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`connected peripheral device is detected and a configuration process known as
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`device enumeration is performed to, among other things, determine the device’s
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`requirements and capabilities by reading configuration information stored in the
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`device. (Ex. 1001, 1:66–2:18.) The Background also describes, in connection
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`with known serial bus systems, that to “alter the configuration or personality of a
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`peripheral device, such as downloading new code or configuration information
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`into the memory of the peripheral device, the host computer system must detect a
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`peripheral device connection or a disconnection and then a reconnection.” (Ex.
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`1001, 2:20–28.)
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`The Background suggests that the requirement for a disconnection and
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`reconnection is a problem because it does not allow for “easily altering the
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`configuration data for a peripheral device” or “easily changing the software device
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`driver associated with a particular peripheral device. (Ex. 1001, 2:30–36.)
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`According to the Background, the invention “avoids these and other problems of
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`known systems and methods, and it is to this end that the present invention is
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`directed.” (Ex. 1001, 2:36–40, emphasis added.) Thus, it is clear from the
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`Background section that the Applicant considered the above features to be known
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`in the prior art. (Ex. 1012 ¶¶ 63–69.)
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`Moreover, the totality of the circumstances indicates that the Applicant
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`considered the above features to be in the prior art. (Ex. 1012 ¶¶ 63–69.) For
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`example, the Applicant did not challenge the PTO’s characterization of the detecting
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`and downloading features to be Admitted Prior Art during prosecution. (Ex. 1007
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`pp. 53–53, 62–63; Ex. 1008 pp. 70–71, 90–91; Ex. 1012 ¶ 68.) When the
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`Examiner relied on “Applicant’s Admitted Prior Art” to teach the detection and
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`downloading features of the claims, Applicant did not challenge this
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`characterization. (Ex. 1007 pp. 62–63; Ex. 1008 pp. 90–91; Ex. 1012 ¶ 68.) It
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`instead argued that the feature of electronically simulating a physical
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`disconnection and reconnection was not taught in the art. (Ex. 1012 ¶ 68.) Also,
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`Applicant did not challenge or traverse the official notice taken by the Examiner
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`during prosecution that (1) an electrical switch and a solid state transistor are both
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`well-known in the art, (2) selecting a configuration based on id code was well-
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`known in the art, and (3) configuration information consisting of logic
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`configuration information, configuration data and executable code was well
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`known in the art.
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`The Applicant exhibited this belief in prosecuting not only the U.S.
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`applications, but in prosecuting the counterpart, European Patent Application No.
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`98931675.7. In September 2005, it filed a set of claims which recited:
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`1. A system (50) for reconfiguring a peripheral device (54)
`having a first configuration . . . comprising:
`means configured to download a second set of configuration
`information from the host computer into the peripheral device over
`the computer bus (60); and
`means (120) configured to reset the configuration of the
`peripheral device (54) from said first configuration to a second
`configuration based on the second set of configuration information;
`characterized in that said reset means (120) is configured to
`electronically simulate a physical disconnection and reconnection
`of the peripheral device (54) from said first configuration to said
`second configuration.
`(Ex. 1009 p. 136, emphasis added.)
`This is a standard two-part claim format under the European Patent
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`Convention (EPC) in which the features preceding the “characterized in” language
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`are admitted by the claim drafter to be prior art. (Ex. 1010, Rule 29(1) EPC,
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`effective until 12/07.) Thus, much of the features recited in the claims of the ’770
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`patent, as detailed below, should be treated as Admitted Prior Art (“APA”).
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`B. Claims 1, 5, 7, 10, 11, 15–17 of the ’770 Patent Are Obvious under
`35 U.S.C. § 103(a) over the APA and Yap
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`The following subsections explain how the APA in combination with Yap
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`renders obvious the subject matter encompassed by claims 1, 5, 7, 10, 11, 15–17 of
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`the ’770 patent.
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`Claim 1[preamble]: “A system for reconfiguring a peripheral device
`having a first configuration connected by a computer bus to a host
`computer, the system comprising:”
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`The ’770 patent admits that it was known in the prior art to connect a
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`peripheral device to a host computer through a standard USB computer bus. (Ex.
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`1001, 1:50–2:14, 4:15–34, Fig. 1; Ex. 1012 ¶¶ 119–121.)
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`The ’770 patent further admits that it was known that the peripheral device
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`in the prior art can have a first configuration. (Ex. 1001, 1:66–2:19; Ex. 1012 ¶
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`120.) It specifically states that “[d]uring the [enumeration process] query, a data
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`table stored in the peripheral device, which contains the particular peripheral
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`device’s configuration information, is read from the peripheral device into the host
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`computer’s memory.” (Ex. 1001, 2:10–14; Ex. 1012 ¶ 120.) The disclosure of a
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`data table containing the peripheral device’s configuration information is an
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`example of a first configuration. (Ex. 1012 ¶ 120.) Thus, it was admitted to be
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`known in the prior art for a peripheral device to have a first configuration and to be
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`connected by a computer bus and a port to a host computer. (Ex. 1012 ¶ 120.)
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`The ’770 patent further admits that it was known in the USB prior art “to
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`alter the configuration or personality of a peripheral device, such as downloading
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`new code or configuration information into the memory of the peripheral device.”
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`(Ex. 1001, 2:24–28, 2:36–40 (stating that invention “avoids these and other
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`problems of known systems and methods”); Ex. 1012 ¶ 121.) Altering the
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`configuration or personality of a peripheral device is an example of reconfiguring
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`the peripheral device. (Ex. 1012 ¶ 121.) Thus, the APA teaches reconfiguring a
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`peripheral device having a first configuration connected by a computer bus to a
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`host computer. (Ex. 1012 ¶ 121.)
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`Claim 1[a]: “a first circuit configured to download information for a
`second configuration from the host computer into the peripheral device
`over the computer bus; and”
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`The ’770 patent admits that it was known in the USB prior art for a system
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`to download new code or configuration information into the peripheral device over
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`the computer bus, but a problem with known systems and methods was that this
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`required the host computer system to detect a peripheral device connection or a
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`disconnection and then a reconnection:
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`In a serial bus system, such as the USB, the only opportunity
`for associating software device drivers with a peripheral device is at
`the time when the peripheral device is plugged into the USB and the
`enumeration process occurs. Thus, to alter the configuration or
`personality of a peripheral device, such as downloading new code
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`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.
`. . .
`Thus, there is a need for a system and method for interfacing to
`a universal serial bus which avoids these and other problems of
`known systems and methods, and it is to this end that the present
`invention is directed.
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`(Ex. 1001, 2:20–40; Ex. 1012 ¶ 123.) Such downloading requires a “circuit
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`configured to download information.” (Ex. 1012 ¶ 124.)
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`The disclosure of “new code or configuration information” in the APA is an
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`example of “information for a second configuration” which is downloaded from the
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`host computer into the peripheral device over the computer bus. (Ex. 1012 ¶ 124.)
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`The new code or configuration information can alter the personality of the
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`peripheral device to change its requirements or capabilities. (Ex. 1012 ¶ 124.) The
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`device with the altered requirements and capabilities has a second configuration.
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`(Ex. 1012 ¶ 124.) Further, the one of ordinary skill in the art would understand
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`from the Background that the downloading can take place over the computer bus
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`because it states that a host computer must detect a “peripheral device connection
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`or a disconnection and then a reconnection” to alter the device’s personality by
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`downloading new code or configuration information. (Ex. 1012 ¶ 124.) This
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`language suggests that the peripheral device was connected to the host for
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`downloading and subsequently disconnected and reconnected. (Ex. 1012 ¶ 124.)
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`Further, because the prior art Fig. 1 shows only a single computer bus 26, it would
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`have been obvious to one of ordinary skill in the art for the downloading in the
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`Background to occur over the computer bus. (Ex. 1012 ¶ 124.) Thus, the APA
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`discloses the first circuit of claim 1[a]. (Ex. 1012 ¶ 124.)
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`Claim 1[b]: “a second circuit configured to electronically simulate a
`physical disconnection and reconnection of the peripheral device to
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