`
`PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`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
`
`OF PATENT OWNER COMARCO WIRELESS TECHNOLOGIES, INC.
`
`FOR THE FEDERAL CIRCUIT
`
`
`
`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 US. Patent No. 8,492,933
`
`("‘933 patent") are unpatentable. A copy of the Final Written Decision is 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 and its 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
`
`Appeal is 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, RA.
`
`4 Headquarters Plaza
`Morristown, New Jersey 07962-1991
`Tel: 973-292-1700
`
`hwolin
`
`rahamcurtin.com
`
`Attorneys for Patent Owner,
`Comarco Wireless Technologies, Inc.
`
`
`
`Case No. IPR2015-01879
`
`U. S. Patent No. 8,492,933
`
`CERTIFICATE OF FILING
`
`I hereby certify that, in addition to being filed electronically through
`
`PRPS system 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
`
`PO. Box 1450
`
`Alexandria, Virginia 223 1 3- 1450
`
`CERTIFICATE OF FILING
`
`I hereby certify that on this day I caused the attached Notice of
`
`Appeal to 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, DC. 20439.
`
`
`
`Case No. IPR2015-01879
`
`U. S. Patent No. 8,492,933
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`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. 42.6, that on this day I caused
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`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, NJ.
`
`
`
`Charles Qu' n
`
`
`
`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
`
`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.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 318(a) and 37 CFR. § 42. 73
`
`
`
`IPR2015-01879
`
`Patent 8,492,933 B2
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`
`inter partes review of claims 1 and 2 of US. 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
`
`Owner filed 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.
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 CPR. § 42.73. Having considered the record before us, we
`
`determine Petitioner has shown by a preponderance of the evidence that
`
`claims 1 and 2 of the ’933 patent are unpatentable. See 35 U.S.C. § 316(6).
`
`11. 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:
`
`
`
`IPR2015-01879
`
`Patent 8,492,933 B2
`
`Power supply system 30]
`
`Cable 342
`
`Cable 345
`
`36°
`
`P05"
`
`circuitry 33
`
`Comm]
`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, 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
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`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 335 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,
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`depending [on] the shape and sizes of the power input openings of the
`
`respective electronic devices 335 being powered.” Id. 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 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. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`We instituted inter partes review of claims 1 and 2 to determine
`
`whether they are unpatentable under 35 U.S.C. § 103(a) over the combined
`
`teachings of US. Patent No. 7,243,246 B2 (issued July 10, 2007) (Ex. 1003,
`
`“Allen”), US. Patent No. 7,296,164 B2 (issued Nov. 13, 2007) (Ex. 1004,
`
`“Breen”), and US. Patent No. 6,054,846 (issued Apr. 25, 2000) (Ex. 1005,
`
`“Castleman”). Inst. Dec. 16.
`
`III. 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
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`Patent 8,492,933 B2
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`Drinkware, LLC v. Nat ’1 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 the prior art are such
`
`that the subject matter as a whole would have been obvious to a person of
`
`ordinary skill in the art at the time of the invention. KSR Int ’1 Co. v. Teleflex
`
`Inc., 550 US. 398, 406 (2007). Obviousness is resolved based on
`
`underlying factual determinations, including (1) the scope and content of the
`
`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 C0., 383 US. 1, 17—18 (1966).
`
`B. CLAIM CONSTRUCTION
`
`We conclude 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, 1110.,
`
`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”).
`
`1. 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:
`
`
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`IPR2015-01879
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`Patent 8,492,933 B2
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`AC Voltage In
`
`00 Voltage In
`
`DataOut
`
`Figure 4
`
`Figure 4 is a block diagram of the system components in Allen’s power
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`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
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`AC or DC.” Id. at 5: 17—1 8. The power detection circuit transmits the
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`information Via a data signal to the electronic device’s power management
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`components, which then use the information to “implement various power
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`management functions.” Id. at 5:21—34.
`
`2. Breen (Ex. 10042
`
`Breen discloses power supply equipment for managing power
`
`supplied to an electrical device—what Breen refers to as an “Information
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`Handling System” or “IHS”—such as a notebook computer or cellular
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`phone. Ex. 1004, 126—19, 4:13—15. Breen’s “power supply system includes
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`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
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`portable IHS device.” Id. at 4:15—19 (reference numerals omitted). Breen
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`
`
`IPR201 5—01879
`
`Patent 8,492,93 3 B2
`
`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
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`supply identification (PSID) scheme to identify the various types of power
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`supply sources present.” Id. at 521—3. Particularly relevant to this case,
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`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,
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`sends a response signal over the PSID line.” Id. at 5:31—37 (reference
`
`numerals omitted). Breen notes “[i]n one embodiment, the PSID may be a
`
`certain current or voltage level present on a sense line.” Id. at 622—4
`
`3. Castleman (Ex. 1005)
`
`Castleman teaches a single power supply for multiple electronic
`
`devices with different power requirements. Ex. 1005, 4:44—50. Information
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`about an individual electronic device is encoded in a memory chip
`
`associated with that device, and is provided to the power supply when the
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`electronic device is connected to the power supply. Id. 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 power to the
`
`electronic device at the appropriate level. Id. at 4:51—522. Particularly
`
`important to this case, Castleman includes an embodiment in which an
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`output connector of 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. Id. at 9:31—35, 16:58—68.
`
`
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`IPR2015-01879
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`Patent 8,492,933 B2
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`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 Breen fails 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 by the electronic
`
`device,” as claims 1 and 2 require. PO Resp. 15—23. Patent Owner
`
`challenges also Petitioner’s proffered reason for combining Allen’s, Breen’s,
`
`and Castleman’s teachings. Id. at 24—33. Based on our review of the
`
`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.
`
`I . The Combination of Allen and Breen Teaches the Disputed Limitation
`“the adapter including circuitpp for producing an analog data sigal [or
`use by the electronic device to control an amount 01 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 by the electronic device.” We agree
`
`with Petitioner that the combination of Allen and Breen teaches this
`
`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 teaches also 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,
`
`
`
`IPR201 5-01 879
`
`Patent 8,492,933 B2
`
`thereby controlling the amount of power drawn by the electronic device
`
`from the adapter.” Id. (citing Ex. 1003, Fig. 4, 5:21—42; Ex. 1010 11 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 power event signal
`
`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 sense line,” id. at 622—4. See Ex. 1010
`
`11 89.
`
`Patent Owner raises two arguments in challenging whether the
`
`combination of Allen and Breen teaches the 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 by the electronic
`
`device”). Patent Owner does not dispute that Breen teaches circuity 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 event signal to control the amount of power drawn by the electronic
`
`device because that signal prompts another signal—a PSID
`
`request/response—that the electronic device uses to adjust power parameters
`
`and device performance. PO Resp. 23.
`
`We disagree with Patent Owner’s first argument because, although
`
`Breen teaches an embodiment in which an external battery generates the
`
`power event signal, see Ex. 1004, 6:35—40, Breen teaches another
`
`embodiment without an external battery, in which the first power peripheral
`
`
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`IPR2015-01879
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`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 power event is generated in the power adapter periphery,
`
`not the battery. See Pet. Reply 10—1 1; Ex. 1004, 5:53—65, 6:10—18. We
`
`disagree with Patent Owner’s second argument because it 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 by the electronic device. See PO Resp. 23. Breen’s electronic device
`
`uses both the power event signal and PSID signal to control an amount of
`
`power drawn by the electronic device. As Petitioner explains, Breen’s
`
`power event trigger “is used by the IHS to change the amount of power
`
`drawn, because it triggers a query for PSID data, which is 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 Owner were correct in its
`
`characterization of Breen, those arguments would not ultimately undermine
`
`obviousness because it is undisputed that Allen teaches both features Patent
`
`Owner alleges are missing from Breen: (1) an output signal that controls the
`
`amount of power drawn by an electric device and (2) an adapter that
`
`includes the circuitry for producing the output signal. See PO Resp. 15—22
`
`(challenging only whether Allen’s signal is analog, not whether it is
`
`produced in a power adapter or 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 11 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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`IPR2015-01879
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`Patent 8,492,933 B2
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`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 by the electronic device,” as claims 1 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 Owner does not address the merits of Petitioner’s assertions
`
`regarding the asserted prior art’s disclosure of those limitations. See PO
`
`Resp. 15—33. We are persuaded by Petitioner’s assertions, as explained
`
`below.
`
`
`a. Claim 1
`
`Petitioner has shown Allen discloses “an adapter to convert power
`
`from a power source, 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 11 70). Petitioner has
`
`shown Allen discloses “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.” See Pet. 34; see also id. at 28 (citing
`
`Ex. 1003, 3:20—22, 423—6, 4:11—13, Figs. 1, 3, 4; Ex. 1010 1111 73—74).
`
`Petitioner has shown Allen discloses “the output connector including: a
`
`plurality of conductors to transfer the DC power and the analog data signal
`
`to the electronic device.” See Pet. 34; see also id. at 28 (citing Ex. 1003,
`
`423—6, 4:11—13, Figs. 3, 4; Ex. 1010 11 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
`
`11
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`
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`IPR2015-01879
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`Patent 8,492,933 B2
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`and in response transmit a data output to the electronic device to identify the
`
`power supply equipment to the electronic device” because Allen teaches the
`
`claimed identification circuitry (see Pet. 20—21 (citing Ex. 1003, 4:33—3 5,
`
`5:21—51, 5:60—6:3; Ex. 1010 11 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 11 93)), and Castleman teaches placing
`
`identification circuitry in an output connector at 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 1[ 94)).
`
`b. Claim 2
`
`Petitioner has shown Castleman discloses the additional limitation in
`
`dependent claim 2: “wherein the output connector can be detached from the
`
`cable.” See Pet. 38 (citing Ex. 1005, 8:15—18; Ex. 1010 11 98).
`
`3. Rationale for Combining Allen, Breen, and Castleman
`
`As explained below, we find Petitioner articulated sufficient reasoning
`
`with some rational underpinning to support the legal conclusion that its
`
`proffered combination would have been obvious to one of ordinary skill in
`
`the art, as explained below. See KSR, 550 US. at 418.
`
`i. Combining Allen and Breen
`
`To the extent Allen does not teach request/response circuitry 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
`
`obvious to 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/response circuitry with Allen’s power supply equipment
`
`because “Breen offers a more efficient design choice—transmitting a signal
`
`12
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`IPR2015-01879
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`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 11 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
`
`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 (citing Ex. 1010 11 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 comparable circuitry 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/response circuitry)
`
`according to known methods, yielding only the predictable result of
`
`identifying power supply equipment to facilitate controlling power use
`
`settings based on the identification. See KSR, 550 US. at 416.
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`Petitioner has sufficiently explained also why it would have been
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`obvious to employ an analog output signal with Allen’s power supply
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`equipment, in light of Breen’s disclosure of such analog signals. As
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`Petitioner explains, “a person ordinary skill in the art would have had only
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`two options in implementing the circuit illustrated in [Allen’s] Figure 4: an
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`analog signal or a digital signal.” Pet. 17 (citing Ex. 1010 11 72). Because,
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`as Breen makes clear, analog identification signals were known, we agree
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`with Petitioner that “[a] person of ordinary skill in the art would have
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`understood that either an analog signal or a digital signal can contain data for
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`use by an electronic device in performing power management functions.”
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`See id.; see also KSR, 550 US. at 402 (explaining that “[w]hen there is a
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`design need or market pressure to solve a problem and there are a finite
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`number of identified, predictable solutions, a person of ordinary skill has
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`good reason to pursue the known options within his or her technical grasp”).
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`Patent Owner asserts one skilled in the art would not combine Breen
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`and Allen because the resulting power savings are too small to motivate one
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`skilled in the art to redesign Allen to include Breen’s request/response
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`circuitry. PO Resp. 25—26. We disagree. First, “the test for obviousness is
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`what the combined teachings of the references would have suggested to
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`those having ordinary skill in the art,” not the logistics of physically
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`redesigning one reference to include elements from another. See In re
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`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“a determination of
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`obviousness based on teachings from multiple references does not require an
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`actual physical substitution of elements”). So long as Breen’s
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`request/response circuitry could improve efficiency, it is irrelevant whether
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`that improvement would be enough to justify modifying a physical
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`embodiment of Allen’s power supply equipment. In addition, even without
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`power savings, the proffered combination would still be an obvious
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`combination of familiar elements according to known methods that does no
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`more than yield predictable results, as explained above. See KSR, 550 US.
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`at 402.
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`ii. Combining Castleman with Allen, as Modified by Breen
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`Petitioner also has articulated sufficient reasoning with some rational
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`underpinning to support the legal conclusion that it would have been obvious
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`to one of ordinary skill in the art to combine Castleman’s teaching related to
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`placing the identification circuitry in the output connector of the distal end
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`of a power supply with Allen’s power supply equipment, as modified by
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`Breen. See KSR, 550 US. at 418. Petitioner explains, with relevant support
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`from its Declarant and the prior art, that one skilled in the art would have
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`been motivated to combine Castleman’s circuit placement for cost benefits
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`(i.e., avoiding an additional conductor along the length of the cable) and
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`flexibility (i.e., “solving the ‘multiple—power—supply problems’ addressed in
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`the patent”). Pet. 38 (citing Ex. 1005, 4:22—27, 1023—6); see also Reply 17.
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`Thus, we find one skilled in the art would have had reason to combine
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`Castleman’s teachings with Allen, as modified by Breen, in the manner
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`advanced by Petitioner.
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`Patent Owner does not contest that placing a PSID chip in a cable’s
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`output connector (as taught in Castleman) has cost and flexibility benefits
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`over housing it in the adapter itself (as taught in Breen and Allen). Instead,
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`Patent Owner argues that one skilled in the art would not combine
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`Castleman with Allen because “[i]n Allen and Breen .
`
`.
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`. the PSID
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`identification circuit or chip is already built into a circuit board in an adapter
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`or peripheral battery” and “a person of ordinary skill would have no need or
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`desire to incur the expense and complications of moving a PSID chip from
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`an adapter or a battery to a cable output connector.” PO Resp. 29—30.
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`Patent Owner asserts also that applying Castleman’s teaching to detachable
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`cables would be problematic because PSID data could be mismatched with a
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`power adapter it does not represent. Id. at 31—32.
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`We disagree with Patent Owner’s first argument because it relates to
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`the logistics of physically redesigning one reference to include elements
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`from the other, rather than looking to what the combined references’
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`teachings would have suggested to one with ordinary skill in the art. See
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`Mouttet, 686 F.3d at 1332. We disagree with Patent Owner’s second
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`argument because even if the proposed modification taught in Castleman
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`introduces the potential for mismatched PSID data and power adapters for
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`detachable cables, that tradeoff does not necessarily undermine Petitioner’s
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`proffered combination given Petitioner’s articulated benefits, including
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`reduced cost and increased flexibility. See Winner Int ’1 Royalty Corp. v.
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`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
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`not nullify its use as a basis to modify the disclosure of one reference with
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`the teachings of another. Instead, the benefits, both lost and gained, should
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`be weighed against one another.”).
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`IV. CONCLUSION
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`For the reasons explained above, having considered the parties’
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`contentions and supporting evidence, we determine Petitioner has shown by
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`a preponderance of the evidence the subject matter of claims 1 and 2 would
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`have been obvious over Allen, Breen, and Castleman and that those claims
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`are therefore unpatentable under 35 U.S.C. § 103(a).
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`V. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner has shown by a preponderance of the
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`evidence that claims 1 and 2 of the ’933 patent are unpatentable; and
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`FURTHER ORDERED that, because this is a Final Written Decision,
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`the parties to the proceeding seeking judicial review of the decision must
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`comply with the notice and service requirements of 37 CPR. § 90.2.
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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:
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`Harris Wolin
`
`GRAHAM CURTIN, PA
`hwolin
`rahamcurtin.com
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`l7
`
`