UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2015-01879
`US. Patent No. 8,492,933
`
`NOTICE OF APPEAL TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`OF PATENT OWNER COMARCO WIRELESS TECHNOLOGIES,INC.
`
`
`
`PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2015-01879
`US. Patent No. 8,492,933
`
`NOTICE OF APPEAL TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`OF PATENT OWNER COMARCO WIRELESS TECHNOLOGIES,INC.
`
`
`
`Case No. IPR2015-01879
`U. S. Patent No. 8,492,933
`
`Pursuant to 37 C.F.R. § 90.2(a) and 35 U.S.C. §§ 141(c) and 142, Patent
`
`Owner Comarco Wireless Technologies, Inc., hereby appeals to the United States
`
`Court of Appeals for the Federal Circuit from the Final Written Decision of the
`
`Patent Trial and Appeal Board ("Board"), entered in Case No. IPR2015-01879 on
`
`February 22, 2017 (Paper No. 28), that claims 1 and 2 of U.S. Patent No. 8,492,933
`
`("933 patent") are unpatentable. A copy of the Final Written Decisionis attached.
`
`For the limited purpose of providing the Director with the information
`
`requested by 37 C.F.R. § 90.2(a)(3)(ii),
`
`the issues on appeal may include, but are
`
`not limited to, the Board's determination that claims 1 and 2 of the '933 patent are
`
`invalid as obvious under 35 U.S.C. § 103, the Board's failure to consider properly
`
`evidence of record andits findings that conflict with the evidence of record and are
`
`not supported by substantial evidence,
`
`legal errors in the Board's obviousness
`
`analysis, and any other issue decided adversely to Patent Owner.
`
`This Notice of Appeal is being filed electronically with the Board and
`
`by Express Mail with the Office of the General Counsel. In addition, this Notice of
`
`Appealis being filed, together with the required filing fee, with the United States
`
`Court of Appeals for the Federal Circuit.
`
`
`
`Case No. IPR2015-01879
`U.S. Patent No. 8,492,933
`
`Respectfully submitted,
`
`Dated: April 18, 2017
`
`By:
`
`/s/Harris A. Wolin/
`Harris A. Wolin,
`Reg. No. 39,432
`
`GRAHAM CURTIN,P.A.
`4 Headquarters Plaza
`Morristown, New Jersey 07962-1991
`Tel: 973-292-1700
`hwolin@grahamcurtin.com
`
`Attorneys for Patent Owner,
`Comarco Wireless Technologies,Inc.
`
`
`
`Case No. IPR2015-01879
`U.S. Patent No. 8,492,933
`
`CERTIFICATE OF FILING
`
`I herebycertify that, in addition to being filed electronically through
`
`PRPSsystem of the Patent Trial and Appeal Board, on this I caused the attached
`
`Notice of Appeal to be filed by Express Mail with the Director of the United States
`
`Patent and Trademark Office at the following address:
`
`Director, United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`CERTIFICATE OF FILING
`
`I hereby certify that on this day I caused the attached Notice of
`
`Appealto be filed electronically by CM/ECF with the Clerk of the United States
`
`Court of Appeals for the Federal Circuit, 717 Madison Place, N.W., Suite 401,
`
`Washington, D.C. 20439.
`
`
`
`Case No. IPR2015-01879
`U.S. Patent No. 8,492,933
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. 42.6, that on this day I caused
`
`the attached Notice of Appeal to be served by Express Mail or an equivalent
`
`service and by electronic mail upon the following attorneys for Apple Inc.:
`
`Cameron W. Westin
`Brett J. Williamson
`O'Melveny & Myers
`610 Newport Center Drive
`Newport Beach, California 92660
`cwestin@omm.com
`bwilliamson@omm.com
`
`Dated: April 18, 2017
`Morristown, N.J.
`
` 1S
`
`
`Charles Quin
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper No. 28
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`COMARCO WIRELESS TECHNOLOGIES,INC.,
`Patent Owner.
`
`Case IPR2015-01879
`Patent 8,492,933 B2
`
`Before BRIAN J. MCNAMARA, PATRICK M. BOUCHER,and
`GARTHD. BAER,Administrative Patent Judges.
`
`BAER,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.E-R. § 42.73
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`I.
`
`INTRODUCTION
`
`AppleInc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`
`inter partes review of claims 1 and 2 of U.S. Patent No. 8,492,933 B2 (Ex.
`
`1001, “the ’933 patent”). Comarco Wireless Technologies, Inc. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 13. Pursuant to 35 U.S.C.
`
`§ 314(a), we determined the Petition showed a reasonable likelihood that
`
`Petitioner would prevail in establishing the unpatentability of claims 1 and 2
`
`and instituted an inter partes review of those claims. Paper 15, 16. Patent
`
`Ownerfiled a Patent Owner Response (Paper 17, “PO Resp.”) and Petitioner
`
`filed a Reply to Patent Owner’s Response (Paper 18, “Reply”). An oral
`
`hearing was held before the Board. Paper 26.
`
`Weissue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. Having considered the record before us, we
`
`determine Petitioner has shown bya preponderance ofthe evidence that
`
`claims 1 and 2 of the ’933 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`Il. BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`Theparties assert the °933 patent is involved in Comarco Wireless
`
`Technologies, Inc. v. Apple Inc., Case No. 8:15-cv-00145-AG,currently
`
`pending in the United States District Court for the Central District of
`
`California. Pet. 2; Paper 5, 1.
`
`B. THE 933 PATENT
`
`The ’933 patent is directed to power supply equipmentfor electronic
`
`devices. Ex. 1001, Abstract. Figure 3 of the ’933 patent is reproduced
`
`below:
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`Power supply system 301
`
`DC/DC
`
`A
`4
`adapter 310
`Cable 345
`
`Post-
`ee
`circuitry 325
`
`: Control |
`
`circuitry
`=
`
`FIG. 3
`
`Figure 3 depicts a power supply system for use with either AC or DC power
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`source 300 or 305, which is connected to adapter 340, whichis then
`
`connected via cable 350 to tip 330, which provides powerto electronic
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`device 335. Id. at 3:37—-57, 4:19-54. According to the ’933 patent, circuitry
`
`in adapter 340 may outputa signal based on information about the power
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`source, and that signal may besent via cable 350 to tip 330 and then on to
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`electronic device 335. Jd. at 4:43—54. Based onthesignal, the electronic
`
`device 335 may control the amount of power drawnto prevent overheating.
`
`Id. at 3:26—28, 4:54-63. The ’933 patent explainsalso that tips ““may be
`
`removable from the cable 350” and “may have different shapes andsizes,
`
`depending[on] the shape andsizes of the powerinput openings of the
`
`respective electronic devices 335 being powered.” Jd. at 3:55—60.
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`C. CHALLENGED CLAIMS
`
`Challenged claims 1 and 2 of the ’933 patent recite as follows:
`
`1. Power supply equipment comprising:
`
`an adapter to convert power from a powersource, external to
`the adapter, to DC powerfor powering an electronic device, the
`adapter including circuitry for producing an analog data signal
`for use by the electronic device to control an amount of power
`drawn by the electronic device; and
`
`a cable having proximal and distal ends, the proximal end being
`electrically coupled to the adapter and the distal end terminating
`in an output connector, the output connector including:
`
`a plurality of conductors to transfer the DC power and the
`analog data signalto the electronic device; and
`
`circuitry to receive a data request from the electronic device and
`in response transmit a data output to the electronic device to
`identify the power supply equipmentto the electronic device.
`
`2. The power supply equipment of claim 1 wherein the output
`connector can be detached from the cable.
`
`Ex. 1001, 10:34—52.
`
`D. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`Weinstituted inter partes review of claims 1 and 2 to determine
`
`whetherthey are unpatentable under 35 U.S.C. § 103(a) over the combined
`
`teachings of U.S. Patent No. 7,243,246 B2 (issued July 10, 2007) (Ex. 1003,
`
`“Allen”), U.S. Patent No. 7,296,164 B2 (issued Nov. 13, 2007) (Ex. 1004,
`
`“Breen”), and U.S. Patent No. 6,054,846 (issued Apr. 25, 2000) (Ex. 1005,
`
`“Castleman”). Inst. Dec. 16.
`
`Ill. ANALYSIS
`
`A. PRINCIPLES OF LAW
`
`Petitioner bears the burden of proving unpatentability of the
`
`challenged claims, and that burden never shifts to Patent Owner. Dynamic
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). To prevail, Petitioner must establish the facts supporting its
`
`challenge by a preponderance of the evidence. 35 U.S.C. § 316(e);
`
`37 C.F.R. § 42.1(d).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the subject matter sought to be patented and theprior art are such
`
`that the subject matter as a whole would have been obviousto a person of
`
`ordinary skill in the art at the time of the invention. KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on
`
`underlying factual determinations, including (1) the scope and content ofthe
`
`prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`
`of nonobviousness,i.e., secondary considerations. See Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18 (1966).
`
`B. CLAIM CONSTRUCTION
`
`Weconclude that no express claim construction is necessary to
`
`resolve whether Petitioner has demonstrated claims 1 and 2 of the ’933
`
`patent are unpatentable. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`
`that are in controversy, and only to the extent necessary to resolve the
`
`controversy.”).
`
`I. Allen (Ex. 1003)
`
`C. ASSERTED PRIOR ART
`
`Allen discloses power supply equipment for managing power to an
`
`electronic device. Ex. 1003, Abstract, 1:10-18. Allen’s Figure 4 is
`
`reproduced below:
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`Converter
`
`AC Voitage In AC to DC
`
`DC Level
`PTF Converter [TF
`72
`q
`
`DC Voltage in Data Out
`
`Figure 4
`
`Figure 4 is a block diagram of the system components in Allen’s power
`
`adapter. /d. at 5:6—7. Allen describes that the power adapter includes “[a]
`
`powerdetection circuit .. . operable to detect whether the power sourceis
`
`AC or DC.” Jd. at 5:17-18. The powerdetection circuit transmits the
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`information via a data signal to the electronic device’s power management
`
`components, which then use the information to “implement various power
`
`management functions.” /d. at 5:21—34.
`
`2. Breen (Ex. 1004)
`
`Breen discloses power supply equipment for managing power
`
`supplied to an electrical device—whatBreenrefers to as an “Information
`
`Handling System”or “IHS”—suchas a notebook computerorcellular
`
`phone. Ex. 1004, 1:6—19, 4:13-15. Breen’s “power supply system includes
`
`one or more powerperipherals, devices or components, whichare inter-
`
`connected in an arrangementto provide powerto a load device such as the
`
`portable IHS device.” Jd. at 4:15—19 (reference numerals omitted). Breen
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`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`describes that some powerperipherals may “receive and convert power from
`
`one form ortype to another,” while others “may pass througha signal
`
`received as an input to generate an output signal, whichis substantially the
`
`same as the input signal.” /d. at 4:19-25. Breen discloses further “a power
`
`supply identification (PSID) schemeto identify the various types of power
`
`supply sources present.” /d. at 5:1—3. Particularly relevantto this case,
`
`Breen explainsthat “to determine its power source and optimizeits
`
`performance, a controller included within the portable [HS device sends a
`
`request signal to one or more powerperipherals over a bi-directional PSID
`
`line to request PSID information. Each powerperipheral, which is queried,
`
`sends a responsesignal over the PSID line.” Jd. at 5:31-37 (reference
`
`numerals omitted). Breen notes “[i]n one embodiment, the PSID maybe a
`
`certain current or voltage level present on a sense line.” Jd. at 6:2—-4
`
`3. Castleman (Ex. 1005)
`
`Castleman teaches a single power supply for multiple electronic
`
`devices with different power requirements. Ex. 1005, 4:44—S0. Information
`
`about an individual electronic device is encoded in a memory chip
`
`associated with that device, and is provided to the power supply when the
`
`electronic device is connected to the power supply. Jd. at 4:60-65. The
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`power supply “accepts and analyzes information from the individual-device
`
`memory chips,” and controls the power supply to provide powerto the
`
`electronic device at the appropriate level. /d. at 4:51-5:2. Particularly
`
`importantto this case, Castleman includes an embodiment in which an
`
`output connectorof a cable that plugs into an electronic device contains the
`
`memory chip that identifies the individual electronic device to the power
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`supply. Jd. at 9:31-35, 16:58-68.
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`D. OBVIOUSNESS OF CLAIMS 1 AND 2 BASED ON ALLEN, BREEN, AND
`CASTLEMAN
`
`Petitioner asserts the challenged claims would have been obvious over
`
`Allen in combination with Breen and Castleman. Pet. 30-41. Patent Owner
`
`responds, arguing the combination of Allen and Breenfails to teach “the
`
`adapter including circuitry for producing an analog data signal for use by the
`
`electronic device to control an amount of power drawn bythe electronic
`
`device,” as claims 1 and 2 require. PO Resp. 15—23. Patent Owner
`
`challengesalso Petitioner’s proffered reason for combining Allen’s, Breen’s,
`
`and Castleman’s teachings. Jd. at 24—33. Based on our review ofthe
`
`arguments and evidence in the Petition, Response, and Reply, we determine
`
`Petitioner has demonstrated, by a preponderance of evidence, the subject
`
`matter of claims 1 and 2 would have been obvious over Allen, Breen, and
`
`Castleman, as explained below.
`
`1. The Combination of Allen and Breen Teaches the Disputed Limitation
`“the adapter including circuitry for producing an analog data signalfor
`use by the electronic device to control an amount of power drawn by the
`electronic device”’
`
`Claim 1 (and, by dependence,claim 2) requires “the adapter including
`
`circuitry for producing an analog data signal for use by the electronic device
`
`to control an amount of power drawn bythe electronic device.” Weagree
`
`with Petitioner that the combination of Allen and Breen teachesthis
`
`limitation. See Pet. 16-18, 27, 33-34, 39-40. In particular, as Petitioner
`
`explains, Allen teaches an adapter with identification circuits that produce
`
`data signals, which are transmitted to an electronic device. Pet. 16 (citing
`
`Ex. 1003, Fig. 4, 5:21-42). Allen teachesalso that the electronic device uses
`
`those transmitted data signals “to implement various power management
`
`functions,” including “reduc[ing] the total power drawn by the device,
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`thereby controlling the amount of power drawnbythe electronic device
`
`from the adapter.” Jd. (citing Ex. 1003, Fig. 4, 5:21-42; Ex. 1010 ¢ 71).
`
`Although Allen does not teach explicitly that the outgoing signal from the
`
`adapter to the electronic device is analog, we agree with Petitioner that
`
`Breen discloses circuitry for producing an outgoing analog signal. Pet. 33—
`
`34. In particular, Breen teaches generating an analog powereventsignal
`
`that is “a pulse signal having a predetermined width,” Ex. 1004, 6:35-42, as
`
`well as an analog output signal transmitting PSID information through a
`
`“current or voltage level present on a senseline,” id. at 6:2-4. See Ex. 1010
`
`q 89.
`
`Patent Ownerraises two arguments in challenging whetherthe
`
`combination of Allen and Breen teachesthe disputed limitation(i.e., “an
`
`adapter including circuitry for producing an analog data signal for use by the
`
`electronic device to control an amount of power drawn bytheelectronic
`
`device”). Patent Ownerdoesnotdispute that Breen teachescircuity for
`
`producing an analog signal. See PO Resp. 22—26; Ex. 1021, 116:22-25.
`
`Instead, Patent Owner argues (1) Breen’s output signal is not generated by
`
`circuitry in an adapter and (2) Breen’s electronic device does not use the
`
`power eventsignal to control the amount of power drawn bythe electronic
`
`device because that signal prompts another signal—a PSID
`
`request/response—thatthe electronic device uses to adjust power parameters
`
`and device performance. PO Resp.23.
`
`Wedisagree with Patent Owner’s first argument because, although
`
`Breen teaches an embodiment in which an external battery generates the
`
`powerevent signal, see Ex. 1004, 6:35—40, Breen teaches another
`
`embodimentwithout an external battery, in which the first power peripheral
`
`
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`IPR2015-01879
`Patent 8,492,933 B2
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`(i.e. the power adapter) connects directly to the electronic device, see id. at
`
`6:10—18. We agree with Petitioner that in Breen’s single power-peripheral
`
`embodiment, the powerevent is generated in the power adapter periphery,
`
`not the battery. See Pet. Reply 10-11; Ex. 1004, 5:53-65, 6:10-18. We
`
`disagree with Patent Owner’s second argument becauseit requires reading
`
`into claim 1 a limitation not present in the claim’s plain language—that only
`
`one signal(i.e., the PSID signal) can be used to control an amount of power
`
`drawn bythe electronic device. See PO Resp. 23. Breen’s electronic device
`
`uses both the power event signal and PSID signal to control an amount of
`
`powerdrawn by the electronic device. As Petitioner explains, Breen’s
`
`powereventtrigger “is used by the IHS to change the amount of power
`
`drawn,becauseit triggers a query for PSID data, whichis then used to
`
`change the power drawn.” Reply 11; see Pet. 33-34.
`
`In addition, we are not persuaded by Patent Owner’s two arguments
`
`challenging Breen because even if Patent Ownerwerecorrectin its
`
`characterization of Breen, those arguments would not ultimately undermine
`
`obviousnessbecauseit is undisputed that Allen teaches both features Patent
`
`Owneralleges are missing from Breen: (1) an output signal that controls the
`
`amount of power drawn byan electric device and (2) an adapter that
`
`includesthe circuitry for producing the output signal. See PO Resp. 15—22
`
`(challenging only whether Allen’s signal is analog, not whetherit is
`
`producedin a poweradapteror used by the electronic device to control the
`
`amount of power drawn); see also Pet. 16; Ex. 1003, 5:21-42, Fig. 4; Ex.
`
`1010 4 71. In short, Patent Owner’s arguments are not persuasive because
`
`they attack Breen individually, rather than the combined teachings of Allen
`
`and Breen. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
`
`10
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`
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`IPR2015-01879
`Patent 8,492,933 B2
`
`For the reasons explained above, we find Petitioner has shown the
`
`combination of Allen and Breen teaches “the adapter including circuitry for
`
`producing an analog data signal for use by the electronic device to control an
`
`amount of power drawn bytheelectronic device,” as claims | and 2 require.
`
`2. Undisputed Limitations
`
`Petitioner contends the combination of Allen, Breen, and Castleman
`
`discloses the remaining, unchallenged limitations of claims 1 and 2. See Pet.
`
`30-41. Patent Ownerdoes not address the merits of Petitioner’s assertions
`
`regarding the asserted priorart’s disclosure of those limitations. See PO
`
`Resp. 15—33. We are persuaded by Petitioner’s assertions, as explained
`
`below.
`
`a. Claim1
`
`Petitioner has shown Allen discloses “an adapter to convert power
`
`from a powersource, external to the adapter, to DC power for powering an
`
`electronic device.” See Pet. 39; see also id. at 27 (citing Ex. 1003, 1:10—13,
`
`2:24—33, 3:65-67, 4:1-3, 5:6-17, Figs. 3, 4; Ex. 1010 J 70). Petitioner has
`
`shown Allen discloses “‘a cable having proximal anddistal ends, the
`
`proximal end beingelectrically coupled to the adapter and the distal end
`
`terminating in an output connector.” See Pet. 34; see also id. at 28 (citing
`
`Ex. 1003, 3:20-22, 4:3-6, 4:11—13, Figs. 1, 3, 4; Ex. 1010 ff 73-74).
`
`Petitioner has shown Allen discloses “the output connector including: a
`
`plurality of conductors to transfer the DC powerand the analog data signal
`
`to the electronic device.” See Pet. 34; see also id. at 28 (citing Ex. 1003,
`
`4:36, 4:11-13, Figs. 3, 4; Ex. 1010 J 75). Petitioner has shown also the
`
`combination of Allen, Breen, and Castleman teaches “the output connecter
`
`including .
`
`.
`
`. circuitry to receive a data request from the electronic device
`
`
`
`IPR2015-01879
`Patent 8,492,933 B2
`
`and in response transmit a data outputto the electronic device to identify the
`
`powersupply equipmentto the electronic device” because Allen teaches the
`
`claimed identification circuitry (see Pet. 20-21 (citing Ex. 1003, 4:33-35,
`
`5:21-51, 5:60—-6:3; Ex. 1010 4 77 ), 35-36), Breen teaches sending an
`
`identification signal in response to a data request (see Pet. 35 (citing Ex.
`
`1004, 5:31-43; Ex. 1010 J 93)), and Castleman teaches placing
`
`identification circuitry in an output connectorat the distal end of an
`
`adapter’s cable (see Pet. 35—36 (citing Ex. 1005, Abstract, 3:54-6:27, 9:26—
`
`35, 10:1—11, 18:11—-13, Figs. 1, 2; Ex. 1010 § 94)).
`
`b. Claim2
`
`Petitioner has shown Castleman discloses the additional limitation in
`
`dependentclaim 2: “wherein the output connector can be detached from the
`
`cable.” See Pet. 38 (citing Ex. 1005, 8:15—18; Ex. 1010 4 98).
`
`3. Rationale for Combining Allen, Breen, and Castleman
`
`Asexplained below, we find Petitioner articulated sufficient reasoning
`
`with somerational underpinning to support the legal conclusionthat its
`
`proffered combination would have been obviousto one of ordinary skill in
`
`the art, as explained below. See KSR, 550 U.S. at 418.
`
`i. Combining Allen and Breen
`
`To the extent Allen does not teach request/responsecircuitry or
`
`producing an analog data signal, we find Petitioner explains not only how
`
`Breen teaches those features, but also why including them would have been
`
`obviousto one skilled in the art. See Pet. 36-38. Petitioner explains, with
`
`relevant support from its Declarant, that one skilled in the art would combine
`
`Breen’s request/responsecircuitry with Allen’s power supply equipment
`
`because “Breen offers a moreefficient design choice—transmitting a signal
`
`12
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`IPR2015-01879
`Patent 8,492,933 B2
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`only in response to a request from the electronic device requires less power
`
`and creates less heat waste than transmitting a constant signal.” Pet. 37
`
`(citing Ex. 1010 § 96). Petitioner asserts also that Breen’s request/response
`
`circuitry was a known,predictable alternative to Allen’s identification
`
`circuitry because “both lead to the same, predictable result—whether
`
`triggered by a request by the electronic device or not, the power supply
`
`equipmentsendsthe electronic device a signal that identifies the power
`
`supply equipmentto the electronic device, which the electronic device can
`
`use to adjust powerusesettings.” Pet. 36-37 (citing Ex. 1010 4 95). We
`
`agree with Petitioner that Breen’s request/response circuitry combined with
`
`Allen’s power supply equipment would provide a more power-efficient
`
`design over comparablecircuitry that continuously broadcasts an
`
`identification signal. We agree further that Petitioner’s proposed
`
`combination amounts to an obvious combination of familiar elements(i.e.,
`
`Allen’s power supply equipment and Breen’s request/responsecircuitry)
`
`according to known methods, yielding only the predictable result of
`
`identifying power supply equipmentto facilitate controlling power use
`
`settings based on the identification. See KSR, 550 U.S. at 416.
`
`Petitioner has sufficiently explained also why it would have been
`
`obvious to employ an analog output signal with Allen’s power supply
`
`equipment, in light of Breen’s disclosure of such analog signals. As
`
`Petitioner explains, “a person ordinary skill in the art would have had only
`
`two options in implementing the circuit illustrated in [Allen’s] Figure 4: an
`
`analog signalor a digital signal.” Pet. 17 (citing Ex. 1010
`
`72). Because,
`
`as Breen makesclear, analog identification signals were known, we agree
`
`with Petitioner that “[a] person of ordinary skill in the art would have
`
`13
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`
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`IPR2015-01879
`Patent 8,492,933 B2
`
`understoodthat either an analog signal or a digital signal can contain data for
`
`use by an electronic device in performing power managementfunctions.”
`
`See id.; see also KSR, 550 U.S. at 402 (explaining that “[w]henthere is a
`
`design need or market pressure to solve a problem andthere areafinite
`
`numberofidentified, predictable solutions, a person of ordinary skill has
`
`good reason to pursue the known options within his or her technical grasp”).
`
`Patent Ownerasserts one skilled in the art would not combine Breen
`
`and Allen because the resulting power savings are too small to motivate one
`
`skilled in the art to redesign Allen to include Breen’s request/response
`
`circuitry. PO Resp. 25-26. We disagree. First, “the test for obviousnessis
`
`what the combinedteachingsof the references would have suggested to
`
`those having ordinary skill in theart,” not the logistics of physically
`
`redesigning one reference to include elements from another. See In re
`
`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“a determination of
`
`obviousness based on teachings from multiple references does not require an
`
`actual physical substitution of elements”). So long as Breen’s
`
`request/response circuitry could improveefficiency,it is irrelevant whether
`
`that improvement would be enoughto justify modifying a physical
`
`embodiment of Allen’s power supply equipment. In addition, even without
`
`powersavings, the proffered combination would still be an obvious
`
`combination of familiar elements according to known methodsthat does no
`
`more than yield predictable results, as explained above. See KSR, 550 U.S.
`
`at 402.
`
`ii. Combining Castleman with Allen, as Modified by Breen
`
`Petitioner also has articulated sufficient reasoning with somerational
`
`underpinning to support the legal conclusion that it would have been obvious
`
`
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`IPR2015-01879
`Patent 8,492,933 B2
`
`to one of ordinary skill in the art to combine Castleman’s teaching related to
`
`placing the identification circuitry in the output connectorof the distal end
`
`of a power supply with Allen’s power supply equipment, as modified by
`
`Breen. See KSR, 550 U.S. at 418. Petitioner explains, with relevant support
`
`from its Declarant and the priorart, that one skilled in the art would have
`
`been motivated to combine Castleman’s circuit placement for cost benefits
`
`(i.e., avoiding an additional conductor along the length of the cable) and
`
`flexibility (i.e., “solving the ‘multiple-power-supply problems’ addressed in
`
`the patent.”). Pet. 38 (citing Ex. 1005, 4:22—27, 10:3-6); see also Reply 17.
`
`Thus, we find one skilled in the art would have had reason to combine
`
`Castleman’s teachings with Allen, as modified by Breen, in the manner
`
`advancedbyPetitioner.
`
`Patent Ownerdoes not contest that placing a PSID chip in a cable’s
`
`output connector (as taught in Castleman) hascost andflexibility benefits
`
`over housingit in the adapteritself (as taught in Breen and Allen). Instead,
`
`Patent Ownerarguesthat one skilled in the art would not combine
`
`Castleman with Allen because “[iJn Allen and Breen .
`
`.
`
`. the PSID
`
`identification circuit or chip is already built into a circuit board in an adapter
`
`or peripheral battery” and “a person of ordinary skill would have no need or
`
`desire to incur the expense and complications of moving a PSID chip from
`
`an adapteror a battery to a cable output connector.” PO Resp. 29-30.
`
`Patent Ownerasserts also that applying Castleman’s teaching to detachable
`
`cables would be problematic because PSID data could be mismatched with a
`
`poweradapterit does not represent. /d. at 31-32.
`
`Wedisagree with Patent Owner’s first argument becauseit relates to
`
`the logistics of physically redesigning one reference to include elements
`
`15
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`
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`IPR2015-01879
`Patent 8,492,933 B2
`
`from the other, rather than looking to what the combined references’
`
`teachings would have suggested to one with ordinary skill in the art. See
`
`Mouttet, 686 F.3d at 1332. We disagree with Patent Owner’s second
`
`argument because even if the proposed modification taught in Castleman
`
`introduces the potential for mismatched PSID data and poweradapters for
`
`detachable cables, that tradeoff does not necessarily undermine Petitioner’s
`
`proffered combination given Petitioner’s articulated benefits, including
`
`reduced cost and increasedflexibility. See Winner Int’l Royalty Corp.v.
`
`Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
`
`motivating benefit comesat the expense of another benefit, however, should
`
`not nullify its use as a basis to modify the disclosure of one reference with
`
`the teachings of another. Instead, the benefits, both lost and gained, should
`
`be weighed against one another.”).
`
`IV. CONCLUSION
`
`For the reasons explained above, having consideredthe parties’
`
`contentions and supporting evidence, we determine Petitioner has shown by
`
`a preponderance ofthe evidence the subject matter of claims 1 and 2 would
`
`have been obvious over Allen, Breen, and Castleman andthat those claims
`
`are therefore unpatentable under 35 U.S.C. § 103(a).
`
`In consideration of the foregoing, it is hereby:
`
`V. ORDER
`
`ORDEREDthatPetitioner has shown by a preponderanceofthe
`
`evidence that claims 1 and 2 of the ’933 patent are unpatentable; and
`
`
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`IPR2015-01879
`Patent 8,492,933 B2
`
`FURTHER ORDEREDthat, because this is a Final Written Decision,
`
`the parties to the proceeding seeking judicial review of the decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`PETITIONER:
`
`Xin-Yi Zhou
`Cameron Westin
`Scot Rives
`O’MELVENY & MYERS LLP
`vzhou@omm.com
`cwestin@omm.com
`srives@omm.com
`
`PATENT OWNER:
`
`Harris Wolin
`GRAHAM CURTIN,PA
`hwolin@grahamcurtin.com
`
`l¥
`
`
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