Trials@uspto.gov
`571-272-7822
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` Paper No. 15
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` Entered: March 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01879
`Patent 8,492,933 B2
`____________
`
`Before BRIAN J. MCNAMARA, PATRICK M. BOUCHER, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
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` Paper No. 15
`
`
` Entered: March 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01879
`Patent 8,492,933 B2
`____________
`
`Before BRIAN J. MCNAMARA, PATRICK M. BOUCHER, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2015-01879
`Patent 8,492,933 B2
`
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1 and 2 (the “challenged claims”) of U.S.
`Patent No. 8,492,933 B2 (Ex. 1001, “the ’933 patent”). Patent Owner,
`Comarco Wireless Technologies, Inc. (“Patent Owner”), filed a Preliminary
`Response. Paper 13 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons set forth below, we conclude that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of the challenged claims. Therefore, we institute inter partes
`review of the challenged claims.
`
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`The parties 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 equipment for electronic
`devices. Ex. 1001, Abstract. Figure 3 of the’933 patent is reproduced
`below:
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`Figure 3 depicts a power supply system for use with either AC or DC power
`source 300 or 305, which is connected to adapter 340, which is then
`connected via cable 350 to tip 330, which provides power to electronic
`device 335. Id. at 3:37–57, 4:19–54. According to the ’933 patent, circuitry
`in adapter 340 may output a signal based on information about the power
`source, and that signal may be sent via cable 350 to tip 330 and then on to
`electronic device 335. Id. at 4:43–54. Based on the signal, the electronic
`device may control the amount of power drawn to prevent overheating. Id.
`at 3:26–28, 4:54–63. The ’933 patent explains also that tips “may be
`removable from the cable 350” and “may have different shapes and sizes,
`depending [on] the shape and sizes of the power input openings of the
`respective electronic devices 335 being powered.” Id. at 3:55–60.
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`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 power source, external to
`the adapter, to DC power for 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 signal to 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 equipment to 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. ASSERTED PRIOR ART
`The Petition relies on the following prior art references, as well as a
`supporting Declaration from Nathaniel J. Davis IV, Ph.D. (Ex. 1010): 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”); U.S.
`Patent No. 6,054,846 (issued Apr. 25, 2000) (Ex. 1005, “Castleman”);
`European Patent Application Publication No. EP 1487081 (published Dec.
`15, 2004) (Ex. 1006, “Veselic”); U.S. Patent No. 5,649,001 (issued July 15,
`1997) (Ex. 1007, “Thomas”).
`
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`E. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 3.
`Reference(s)
`Basis
`Challenged Claims
`§ 103(a) 1 and 2
`Allen
`Allen, Breen, and Castleman § 103(a) 1 and 2
`Veselic and Thomas
`§ 103(a) 1 and 2
`
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`Based on the current record, we conclude that no express claim
`construction is necessary for our determination of whether to institute inter
`partes review of the challenged claims. 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.”).
`
`B. ASSERTED PRIOR ART
`
`1. Allen (Ex. 1003)
`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:
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`Figure 4 is a block diagram of the system components in Allen’s Power
`Adapter. Id. at 5:6–7. Allen describes that the power adapter includes “[a]
`power detection circuit . . . operable to detect whether the power source is
`AC or DC.” Id. at 5:17–18. The power detection circuit transmits the
`information via a data signal to the electronic device’s power management
`components, which then use the information to “implement various power
`management functions.” Id. at 5:21–34.
`2. Breen (Ex. 1004)
`Breen discloses power supply equipment for managing power
`supplied to an electrical device—what Breen refers to as an “Information
`Handling System” or “IHS”—such as a notebook computer or cellular
`phone. Ex. 1004, 1:6–19, 4:13–15. Breen’s “power supply system includes
`one or more power peripherals, devices or components, which are inter-
`connected in an arrangement to provide power to a load device such as the
`portable IHS device.” Id. at 4:15–19 (reference numerals omitted). Breen
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`describes that some power peripherals may “receive and convert power from
`one form or type to another,” while others “may pass through a signal
`received as an input to generate an output signal, which is substantially the
`same as the input signal.” Id. at 4:19–25. Breen discloses further “a power
`supply identification (PSID) scheme to identify the various types of power
`supply sources present.” Id. at 5:1–3. Particularly relevant to this case,
`Breen explains that “to determine its power source and optimize its
`performance, a controller included within the portable IHS device sends a
`request signal to one or more power peripherals over a bi-directional PSID
`line to request PSID information. Each power peripheral, which is queried,
`sends a response signal over the PSID line.” Id. at 5:31–37 (reference
`numerals omitted).
`3. Castleman (Ex. 1005)
`Castleman teaches a single power supply for multiple electronic
`devices with different power requirements. Ex. 1005, 4:44–50. 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. Id. at 4:60–65. The
`power supply “accepts and analyzes information from the individual-device
`memory chips,” and controls the power supply to provide power to the
`electronic device at the appropriate level. Id. at 4:51–5:2. Particularly
`important to this case, Castleman includes an embodiment in which the
`output connector of a cable that plugs into the electronic device contains the
`memory chip that identifies that individual electronic device to the power
`supply. Id. at 9:31–35, 16:58–68.
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`4. Veselic (Ex. 1006)
`Veselic describes a system “for charging a rechargeable power source
`in a mobile device through a USB port.” Ex. 1006, Abstract. Veselic’s USB
`charger includes a power converter that receives an input voltage from an
`external power source and generates a regulated voltage charger output. Id.
`at 1:35–37, Fig. 1. In addition, the charger generates a charger configuration
`signal to identify operating characteristics of the charging apparatus to the
`mobile device. Id. at 1:37–41, Fig. 1. Veselic teaches using a USB
`connector to couple the charger output and charger configuration signal to
`the USB port on the mobile device. Id. at 1:41–44.
`5. Thomas (Ex. 1007)
`Thomas discloses a reconfigurable communication interface system
`including a communication interface device and a communication adapter
`cable. Ex. 1007, Abstract. Of relevance to this case, Thomas describes that
`the communication adapter cable “contains an identification code that can be
`read by a reconfigurable communication interface device in order to
`determine which configuration parameters should be used to configure the
`interface device software.” Id. at 5:31–35.
`
`C. ASSERTED GROUNDS
`1. Ground 1: Obviousness Based on Allen
`Petitioner contends that, at the time of the invention, claims 1 and 2
`would have been obvious over Allen. Pet. 13–29. On the record before us,
`we determine that Petitioner has not set forth a reasonable likelihood of
`succeeding on this challenge, as outlined below.
`The challenged claims require a cable with a “distal end terminating
`in an output connector, the output connector including: circuitry to receive a
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`data request from the electronic device and in response transmit a data
`output to the electronic device.” Petitioner recognizes that Allen does not
`teach a cable with the claimed request/response circuitry in the output
`connector, but discloses instead the circuitry “as being located in the ‘power
`adapter,’” and does so “without requiring a particular positioning of it within
`the body of the adapter or cable.” Pet. 23. To account for the difference,
`Petitioner characterizes positioning identification circuitry in the output
`connector as obvious because it is a “predictable and commonsense design
`choice” that “permits the circuitry to operate identically to how it would
`operate if positioned in the body of the power supply or elsewhere in the
`cable.” Id. at 24 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
`(2007)). Petitioner asserts also that the disputed feature would have been
`obvious because the ’933 patent’s specification acknowledges a prior-art
`output connector with “circuitry”—albeit not the claimed identification
`circuitry—and never suggests that positioning the claimed circuitry in the
`output connector would have been difficult or critical. Pet. 22–23 (citing Ex.
`1001, 2:11–28, Fig. 2A).
`We are not persuaded by Petitioner’s argument. Although KSR “set
`forth an expansive and flexible approach” to obviousness, the Court
`emphasized the importance of “identify[ing] a reason that would have
`prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.
`Here, instead of identifying a reason for placing the claimed circuitry in the
`output connector, Petitioner’s proffered rationale suggests doing so would be
`no worse than placing it anywhere else in the adapter or cable. Even if
`correct, that is not “a reason that would have prompted” one skilled in the art
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`to make the modification. See id. Petitioner’s criticality and difficulty
`arguments also are not persuasive. The “claimed invention must be
`considered as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
`1540, 1548 (Fed. Cir. 1983). Here, the challenged claims require
`positioning identification circuitry in the output connector. Regardless
`whether the specification calls out that particular feature as critical or
`difficult to implement, Petitioner may not demonstrate obviousness simply
`by “re-tracing the path of the inventor with hindsight.” See Shire LLC v.
`Amneal Pharms., LLC, 802 F.3d 1301, 1308 (Fed. Cir. 2015). In addition,
`we are not persuaded that moving Allen’s identification circuitry into the
`output connector would be merely a “design choice” because the
`modification could clearly impact the claimed adapter’s function, i.e., by
`facilitating power adapters and/or cables not specific to each electrical
`device. See In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (holding that a
`“finding of ‘obvious design choice’ [is] precluded where the claimed
`structure and the function it performs are different from the prior art”)
`(citing In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)). We find, on the
`current record, Petitioner has not set forth a reasonable likelihood of
`succeeding on its obviousness challenge based on Allen.
`
`2. Ground 2: Obviousness Based on Allen, Breen, and Castleman
`Petitioner contends the challenged claims would have been obvious
`over Allen in combination with Breen and Castleman. Pet. 30–41. On the
`current record, we determine that Petitioner has set forth a reasonable
`likelihood of succeeding on this challenge, as outlined below.
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`a. “[an] output connector including: circuitry to receive a data request
`from the electronic device and in response transmit a data output to
`the electronic device”
`Challenged claims 1 and 2 require “a cable . . . terminating in an
`output connector, the output connector including: circuitry to receive a data
`request from the electronic device and in response transmit a data output to
`the electronic device.” Petitioner explains, and on this record we agree, that
`Breen discloses the claimed request/response circuitry because “Breen states
`that ‘to determine its power source and optimize its performance, a
`controller 260 included within the portable IHS device 101 sends a request
`signal to one or more power peripherals over a bi-directional PSID line 250
`to request PSID information.’” Id. at 35 (quoting Ex. 1004, 5:31–37).
`Petitioner explains further that, in Breen, “[e]ach power peripheral then
`‘sends a response signal over the PSID line 250’” with the information. Pet.
`35 (quoting Ex. 1004, 5:37–33). Petitioner explains also, with relevant
`support from its Declarant, that one skilled in the art would combine Allen’s
`power supply equipment with Breen’s request/response circuitry because
`“transmitting a signal 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 is a known, predictable alternative to
`Allen’s identification process because “both lead to the same, predictable
`result—whether triggered by a request by the electronic device or not, the
`power supply equipment sends the electronic device a signal that identifies
`the power supply equipment to the electronic device, which the electronic
`device can use to adjust power use settings.” Pet. 36–37. Based on those
`arguments, Petitioner has made an adequate showing that Breen discloses
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`the disputed request/response circuitry limitation, and has provided
`sufficient rationale explaining why it would have been obvious to combine
`that teaching with Allen’s power supply equipment.
`In addition, Petitioner asserts Castleman teaches not only placing
`identification circuitry in the output connector of the distal end of a power
`supply cable, Pet. 35–36 (citing Ex. 1005, 5:9–11, 9:26–30, 18:11–13, Figs.
`1, 2), but also reasons why one would want to do so, including cost benefit
`and flexibility, Pet. 36 (citing Ex. 1005, 16:61–67, 10:3–6, Fig. 2).
`Petitioner explains also that both Allen and Castleman teach known methods
`of using an identification line linking the power supply to the electronic
`device to address the same problem, i.e., potential damage caused by
`supplying power to a device in an incorrect form. Pet. 37–38. Based on
`Petitioner’s arguments, Petitioner has made an adequate showing that
`Castleman discloses placing identification circuitry in the output connector
`at the distal end of a power supply cable. Petitioner also has provided
`sufficient rationale explaining why it would have been obvious to combine
`that teaching with Allen’s power supply equipment.
`Patent Owner raises three arguments to dispute obviousness. First,
`Patent Owner asserts that “Breen cannot be modified to employ a circuit in a
`cable output connector to respond to a signal request from an electronic
`device . . . without rendering Breen unsuitable for its intended purpose.”
`Prelim. Resp. 10. According to Patent Owner, moving Breen’s PSID chip
`from its associated peripheral to a cable output connector would introduce
`risk “that peripherals would be used with the wrong cables,” or add cost by
`“multiply[ing] the number of cables needed” so that each peripheral could
`have its own dedicated cable. Id. at 12–13. Second, Patent Owner asserts
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`that moving Breen’s PSID chip to a cable output connector would “increase
`cost and complexity” because “a circuit board for the PSID chip would have
`to be placed in the cable.” Id. at 13. Third, Patent Owner challenges
`obviousness because Castleman’s “chip transmits nothing, and does not
`receive and respond to a request from an electronic device.” Id. at 15.
`Patent Owner’s first argument is not persuasive because it does not
`address Petitioner’s proposed combination of Allen’s power supply
`equipment with Breen’s request/response circuitry and Castleman’s teaching
`of placing a memory chip in the cable’s output connector. See Pet. 37
`(explaining “motivations to combine the power supply equipment of Allen
`with Breen’s circuitry to receive a request from the electronic device and in
`response transmit a data output to the electronic device”); 38 (explaining
`Castleman’s “motivation to place the memory chip in the output connector at
`the distal end of the cable”). Patent Owner’s reasoning, even if correct,
`would only undermine modifying Breen’s power supply equipment, not
`Allen’s.
`Although Patent Owner’s second argument related to increased cost
`and complexity could potentially apply to moving Allen’s circuit from a
`power adapter to an output connector, Patent Owner offers no explanation
`why putting a circuit board in the cable would be more costly or complex
`than putting it in a power adapter. See Prelim. Resp. 13. In addition, even if
`there were additional costs or complexities, that tradeoff does not necessarily
`undermine Petitioner’s proffered combination given Petitioner’s articulated
`benefits, including overall cost reduction and increased flexibility. See Pet.
`36 (citing Ex. 1005, 16:61–67, 10:3–6, Fig. 2); Winner Int’l Royalty Corp. v.
`Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
`
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`motivating benefit comes at 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.”).
`As for Patent Owner’s third argument that Castleman fails to teach
`request/response circuitry, it too does not undermine Petitioner’s
`obviousness challenge because Petitioner relies on Breen—not Castleman—
`for teaching the claimed request/response circuitry. See Pet. 35–37.
`b. Unchallenged Limitations
`On this record and for purposes of this Decision, Petitioner has made
`an adequate showing that the combination of Allen, Breen, and Castleman
`discloses the remaining, unchallenged limitations of claims 1 and 2, and, has
`identified an adequate rationale for combining the relevant teachings from
`each reference. For example, Petitioner has made an adequate showing that
`Allen discloses the claimed adapter to convert power from an external
`source to DC power for powering an electronic device. See Pet. 39 (citing
`Ex. 1003, 4:1–3, 1:10–13, 2:24–33, 3:65–67, 5:6–17, Figs. 3, 4). Petitioner
`has made an adequate showing that the asserted prior art teaches or renders
`obvious an adapter with circuitry for producing an analog data signal for use
`by the electronic device to control an amount of power drawn by the
`electronic device. See Pet. 16–18, 33–34. In addition, Petitioner has made
`an adequate showing that the asserted prior art teaches or renders obvious a
`cable with proximal and distal ends, that the proximal end is electrically
`coupled to the adapter, that the distal end terminates in an output connector,
`and that the output connector includes a plurality of conductors to transfer
`the DC power and the analog data signal to the electronic device. See id. at
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`18–20, 34. Petitioner has made an adequate showing also that the asserted
`prior art teaches or suggests the detachable output connector feature recited
`in dependent claim 2. Id. at 25–27, 38–39. Patent Owner does not challenge
`Petitioner’s showings as to these limitations in its Preliminary Response.
`On this record, and for purposes of this Decision, Petitioner has
`shown a reasonable likelihood that it would prevail in establishing claims 1
`and 2 would have been obvious over Allen in combination with Breen, and
`Castleman.
`
`3. Ground 3: Obviousness Based on Veselic and Thomas
`For Ground 3, Petitioner contends that claims 1 and 2 would have
`been obvious over Veselic in combination with Thomas. Pet. 52–59. On the
`record before us, we determine that Petitioner has not set forth a reasonable
`likelihood of succeeding on this challenge.
`Addressing Ground 3, Petitioner recognizes that Thomas has the same
`shortcomings as noted above for Allen in Ground 1, i.e., “Thomas does not
`teach a cable with the claimed request/response circuitry in the output
`connector, but instead discloses the circuitry in the ‘communication adapter
`cable’ without requiring a specific positioning within the body of the cable.”
`Pet. 52 (citing Ex. 1007, 9:1–2). To account for the difference, Petitioner
`reiterates its obvious “design choice” argument from Ground 1. Pet. 51–53.
`We disagree with Petitioner’s argument for the same reasons outlined above.
`We find Petitioner has not set forth a reasonable likelihood of succeeding on
`its obviousness challenge based on Veselic and Thomas.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
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`would prevail in showing the challenged claims unpatentable. Any
`discussion of facts in this Decision is made only for the purposes of
`institution of inter partes review and is not dispositive of any issue related to
`any ground on which we institute review. The Board’s final determination
`will be based on the record as fully developed during trial.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1 and 2 of the ’933 patent is instituted, commencing on the
`entry date of this Decision;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the following
`ground of unpatentability: claims 1 and 2 are unpatentable under 35 U.S.C.
`§ 103(a) over Allen, Breen, and Castleman; and
`FURTHER ORDERED that no other grounds are authorized for inter
`partes review.
`
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`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
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