UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2015-01879
`
`U.S. Patent No. 8,492,933
`
`RESPONSE OF PATENT OWNER,
`
`COMARCO WIRELESS TECHNOLOGIES, INC.
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 223 13-1450
`
`

`
`IPR20l5—0l879
`
`U. S. Patent No. 8,492,933
`
`TABLE OF CONTENTS
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`figs
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`Comarco's Exhibits .
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`iii
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`iii
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`Table of Authorities .
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`INTRODUCTION ......................................................................................... .. 1
`
`I.
`
`THE '933 PATENT, ALLEN, BREEN, AND CASTLEMAN ........... ..4
`
`A.
`
`The '933 Patent .......................................................................... ..4
`
`B.
`
`Allen .......................................................................................... ..9
`
`C.
`
`Breen ....................................................................................... .. 1 1
`
`D.
`
`Castleman ................................................................................ .. 14
`
`II.
`
`ALLEN AND BREEN DO NOT
`
`DISCLOSE LIMITATION l(b) ........................................................ .. 15
`
`A.
`
`Allen ....................................................................................... ..15
`
`B.
`
`Breen ....................................................................................... ..22
`
`III.
`
`ALLEN, BREEN, AND CASTLEMAN CANNOT BE
`COMBINED TO FORESHADOW LIMITATION 1(E) ................. ..24
`
`A.
`
`B.
`
`A Person of Ordinary Skill Would Not Combine
`Breen with Allen .................................................................... ..24
`
`A Person of Ordinary Skill Would Not Combine
`Castleman with Allen as Modified by Breen ........................ ..28
`
`CONCLUSION ........................................................................................... ..34
`
`CERTIFICATE OF SERVICE .................................................................... ..35
`
`

`
`1PR2015—01879
`
`U. S. PatentNo. 8,492,933
`
`COMARCO'S EXHIBITS
`
`Comarco 2001 ———— —- Declaration of Massoud Pedram, Ph. D.
`
`Comarco 2002 —————— Deposition of Dr. Nathaniel J. Davis, IV
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .................................................................... ..20, 31
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ ..4
`
`In re Orneprazole Patent Litig. v. Apotex Corp,
`536 F.3d 1361 (Fed. Cir. 2008) ........................................................................ .. 19
`
`Innogenetics, N. V. v. Abbott LabS.,
`512 F.3d 1363 (Fed. Cir. 2008) ........................................................................ ..33
`
`KSR Int 7 Co. v. Teleflex, Inc.,
`550 US. 398 (2007) ............................................................................................. ..4
`
`Otsuka Pnarma. Co. v. Sandoz, Inc.,
`
`678 F.3d 1280 (Fed. Cir. 2012) ........................................................................ ..22
`
`Par Pharm, Inc. v. TWI P/1arms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... ..3
`
`Other Authorities
`
`M.P.E.P. § 2143.01 .
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`. .. 28
`
`iii
`
`

`
`INTRODUCTION
`
`For many years, patentee Comarco Wireless Technologies,
`
`Inc.
`
`("Comarco") designed and sold power supply equipment to consumers under its
`
`own Charge Source brand and to companies for use or resale under their private
`
`label brands (e.g., Dell). Comarco pioneered the development of power converters,
`
`cables, and connectors or "tips." It has obtained 49 patents covering inventions in
`
`the field, including the patent in issue, U.S. Patent No. 8,492,933 (the ‘"933 patent")
`
`(Apple 1001).
`
`Apple sought inter partes review of claims 1 and 2 of the '933 patent
`
`(the "challenged claims") on three grounds. The Board has allowed only one to
`
`proceed to trial, namely: whether the challenged claims are obvious in light of U.S.
`
`Patent No. 7,243,246 to Allen, et al. (Ex. 1003, "Allen"), in combination with U.S.
`
`Patent No. 7,296,164 to Breen, et al. (Ex. 1004, "Breen") and U.S. Patent No.
`
`6,054,846 to Castleman, et al. (Ex. 1005, "Castleman").
`
`Comarco demonstrates below, with the assistance of the expert
`
`Declaration of Dr. Massoud Pedram (Comarco Ex. 2001) and the deposition
`
`testimony of Apple's expert, Dr. Nathaniel J. Davis (Comarco Ex. 2002), that the
`
`trial should be resolved in its favor because Allen, Breen, and Castleman do not
`
`foreshadow the unique combination of two features that distinguish the challenged
`
`claims from the prior art.
`
`

`
`IPR20l5-01879
`
`U. S. Patent No. 8,492,933
`
`The first feature is recited in limitation l(b).
`
`It requires that an
`
`adapter that converts power drawn from an AC or a DC source into regulated DC
`
`power for an electronic device, such as a laptop or a cellphone, "includ[e] circuitry
`
`for producing an analog data signal for use by the electronic device to control an
`
`amount of power drawn by the electronic device." Apple 1001 at 10:38-40. This
`
`is an important feature of the claimed invention because an adapter may have
`
`different power output capabilities depending on its structure or the AC or DC
`
`source from which it draws and converts power. The analog data signal of
`
`limitation l(b) notifies an electronic device of the amount of power available from
`
`the adapter. That information enables the electronic device to control its power
`
`consumption from the adapter and/or charge or disable charging of its battery to
`
`ensure safe operation and avoid overheating and other malfunctions.
`
`In section II, Comarco refutes Apple's contention that each of Allen
`
`and Breen disclose an adapter that produces an analog data signal that enables an
`
`electronic device to control an amount of power drawn by the electronic device, as
`
`required by limitation l(b). The specifications of Allen and Breen establish that
`
`they do no such thing. The absence of any such disclosure in Allen or Breen,
`
`standing alone, compels resolution of the trial in Comarco's favor. Par Pharm., Inc.
`
`v. TWI P/1arms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014) (Obviousness, like
`
`

`
`IPR20l5-01879
`
`U. S. Patent No. 8,492,933
`
`anticipation, requires a showing "that all claimed limitations are disclosed in the
`
`prior art.").
`
`The second feature of the unique combination of the challenged
`
`claims is found in limitation l(e). It requires that the output connector or tip of the
`
`adapter cable contain a circuit that receives a data request from an electronic
`
`device and transmits a data output in response that identifies the power supply
`
`equipment, including the adapter and the cable output connector, to the electronic
`
`device. Apple 1001 at 10:43-50. This feature of the challenged claims ensures
`
`that an electronic device operates with only approved power supply equipment,
`
`including the adapter and the cable output connector. This prevents malfunctions
`
`in an electronic device that may result from inappropriate or poorly made knock-
`
`off power supply equipment.
`
`As shown in section III, Apple proposes a combination of Allen with
`
`Breen, and then a combination of Allen as modified by Breen with Castleman, in a
`
`vain effort to replicate a cable output connector with circuitry that responds to an
`
`identification inquiry from an electronic device, as required by limitation l(e). It is
`
`a vain effort because the motivations Apple ascribes to a person of ordinary skill to
`
`make the proposed two—step obviousness combinations are easily unfounded as
`
`they find no support in fact or the prior art.
`
`

`
`IPR2015-01879
`
`U. S. Patent No. 8,492,933
`
`Apple has in essence merely picked elements from the prior art and
`
`cobbled them together in an attempt to replicate limitation l(e).
`
`It has utterly
`
`defaulted its burden of articulating specific
`
`reasoning with a
`
`"'rational
`
`underpinning” that explains why a person of ordinary skill would combine Allen,
`
`Breen, and Castleman in the way Petitioner suggests. KSR Int’! Co. v. Teleflex,
`
`Inc., 550 US. 398, 418 (2007), quoting In re Kalm, 441 F.3d 977, 988 (Fed. Cir.
`
`2006) (Obviousness "cannot be sustained by mere conclusory statements; instead,
`
`there must be some articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness.").
`
`The Board should affirrn the patentability of the challenged claims,
`
`accordingly.
`
`I.
`
`THE '933 PATENT, ALLEN, BREEN, AND CASTLEMAN
`
`A.
`
`The '933 Patent
`
`The '933 patent discloses power supply equipment that provide DC
`
`power to an electronic device 335, such as a laptop computer or cell phone. As
`
`illustrated in Figure 11, for example, the equipment includes an adapter 340 that
`
`converts different levels of power drawn from either an AC source 300 or a DC
`
`source 305 into an appropriate level of DC power to operate and/or charge the
`
`batteries of an electronic device safely
`
`

`
`IPR20l5—01879
`
`U. S. Patent No. 8,492,933
`
`Power supply system 301
`
`Electronic
`
`370
`
`C_ont_rol
`circuitry
`365
`
`Micro -
`controller 950
`
`d°Vt°°
`335
`
`Controller
`360
`
`Ballcry
`charging
`circuitry
`600
`
`Cable 342
`
`Ac/Dc
`adapter 310
`
`DC/DC
`adapwr 315
`
`Compafison
`circuitry 320
`
`P ‘
`°‘ '.
`rcgulatton
`_
`.
`circuitry 325
`
`Comm]
`circuitry
`
`FIG. I I
`
`A cable 350 running from the adapter has an output connector or tip 330 at its
`
`distal end that plugs into the electronic device and carries converted DC power
`
`from the adapter to the device. Because electronic devices usually have power
`
`input ports of different shapes and sizes, the output connector or tip 330 may be
`
`detachable from the cable and replaced with a differently configured connector that
`
`fits the power port of a particular electronic device. Apple 1001 at 3:57-60. Thus,
`
`the power supply system of the '933 patent can provide power drawn from either
`
`AC or DC sources to a variety of electronic devices with differing power
`
`requirements and power input configurations. Apple 1001 at 3:57-60; 4:15-18.
`
`

`
`IPR20l5-01879
`
`U. S. Patent No. 8,492,933
`
`Of particular relevance here, the '933 patent discloses comparison
`
`circuitry 320 in a power adapter that transmits an analog data signal -- Vdata,
`
`identified as 980 in Figure 9A -- through an output connector to an electronic
`
`device.
`
`Id. at 6:65-68 and 7:7-12; 9:8-10. Vdata generally indicates the maximum
`
`amount of power the adapter can provide to the electronic device.
`
`Id. at 7:7-12;
`
`9:8-20.
`
`Conductor 995
`
`
`
`. . . .
`
`. . _,____-._.... __......-.
`
`Output Connector 990
`
`To
`electronic
`device
`935
`
`: _._._. ...... ..
`Digital or analog
`ci
`control muitry 902
`
`"mm Cannecmr 9&5
`Value or character
`string 980
`
`V. . (from adapter 940)
`
`GND (from ndaptcr 940)
`
`
`Cl
`
`
`
`=
`Control :1’ :
`(to adapter 940)
`
`Contxullcr 950
`
`FIG. 9A
`
`Vdata may be based on the differing levels of power capability of a
`
`standard AC source, such as a wall socket, or DC sources, such as those provided
`
`in motor vehicles or airplanes.
`
`Id. at 9:10-14. Alternatively, or in addition, Vdata
`
`may be based on the output power capacity of an adapter. For example, Vdata "may
`
`

`
`IPR2015-01879
`
`U. S. Patent No. 8,492,933
`
`represent that only 70 watts of power are available from the power adapter because
`
`the power adapter has been limited to that output power." Apple 1001 at 717-13;
`
`9:14-20.
`
`Vdata enables an electronic device to manage power drawn from the
`
`adapter to, for example, prevent recharging of its battery if the amount of power is
`
`insufficient, or to charge its battery and operate its other functions if there is
`
`sufficient power. Id. at 4:54-64, 5:46-54, 614-18.
`
`The '933 patent also discloses a cable output connector or tip (330)
`
`with components that can communicate with an electronic device. For example,
`
`Figure 9B and the associated text depict and describe a tip that contains a
`
`controller comprising a receiver 952, a memory 954, and a transmitter 956.
`
`Id. at
`
`7:26-34. This circuitry is capable of receiving a data request signal from an
`
`To
`electronic
`device
`935
`
` 1
`
`V... (from adaptcr 940)
`
`
`
`GND (from adapter 910)
`
`-I;i‘gi-ml o—r analog
`control circuitry 902
`
`
`Control signal“ ‘ '
`(m adapter 940)
`
`, ----
`
`I
`
`—,
`
`T“elecuonic
`dcficc 93$
`
`Mumory
`9$4
`
`1-‘
`Tnllnmlter
`o
`
`956
`.
`l
`
`'
`
`
`
`" ('.'¢-Introllc; 536‘
`
`FIG. 9B
`
`

`
`IPR20l5-01879
`
`U. S. Patent No. 8,492,933
`
`electronic device and transmitting a signal in response that identifies the power
`
`supply equipment providing power to the electronic device. Id. at 7: 34-42 and 47-
`
`49. The ability of the tip to respond to an identification inquiry from an electronic
`
`device enables purveyors of electronic devices to ensure that only approved power
`
`supply equipment, including adapters and tips, are used to operate or charge a
`
`particular device.
`
`As noted, the distinguishing features of the challenged claims -— the
`
`analog data signal limitation and the output connector receiver/response circuit
`
`limitation —— are recited in limitations l(b) and l(e). The challenged claims read in
`
`full:
`
`1. Power supply equipment comprising:
`
`an adapter to convert power from a
`[a]
`power source, external to the adapter, to DC
`power for powering an electronic device,
`
`including circuitry for
`adapter
`the
`[b]
`producing an analog data signal for use by
`the electronic device to control an
`amount
`
`of power drawn by the electronic device;
`and
`
`[C] 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:
`
`

`
`IPR20l5—0l879
`
`U. S. Patent No. 8,492,933
`
`the
`[d] a plurality of conductors to transfer
`DC power and the analog data signal to the
`electronic device; and
`
`[e] 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.
`
`B.
`
`Allen
`
`Allen discloses a power adapter that converts power from either an
`
`AC or DC source and outputs DC power to an electronic device. As depicted in
`
`Figure 4, Allen's adapter 12 contains a power detection circuit 74 that determines
`
`whether the adapter is drawing AC or DC power. Detection circuit 74 then causes
`
`
`
`

`
`IPR2015-01879
`
`U. S. Patent No. 8,492,933
`
`either AC identification circuit 77 or DC identification circuit 78 to be activated,
`
`"thereby transmitting a data signal" to an electronic device that indicates whether
`
`the adapter is drawing power from an AC or DC source. Apple 1003 at 5:17-30.
`
`Allen discloses that AC and DC identification circuits 77 and 78 can be
`
`implemented with a memory circuit or chip that "is capable of generating" a 64-bit
`
`data word containing information about the adapter, such as its model and revision
`
`number, output capabilities, and error checking data. Id. at 5:43-51.
`
`The external power identification signal produced by either AC or DC
`
`identification circuit 77 or 78 is transmitted to a subsystem manager 56 in an
`
`electronic device "to allow the identification of the type of power source by
`
`subsystem manager 56." Id. at 4:25-29 and Figure 3. Subsystem manager 56 is a
`
`super I/O processor that manages the operations of the electronic device.
`
`Id. at
`
`4:30-33, 4:56-66. An external power state machine 60 operates as a software
`
`module running on subsystem manager 56 and executes instructions to determine
`
`the status of external power for the electronic device. Id. at 4:33-40.
`
`Allen's subsystem manager 56 and power state machine 60 do not
`
`send a data request to the adapter and the adapter does not contain circuitry that
`
`responds to such a request. Comarco 2001, 1] 30. This is confirmed by the flow
`
`diagram of Allen's Figure 5 and the associated text, which depict and describe the
`
`process
`
`the power
`
`state machine
`
`follows
`
`to determine the power
`
`state
`
`10
`
`

`
`IPR20l5-01879
`
`U. S. Patent No. 8,492,933
`
`corresponding to an AC or DC power source. Precisely, the power state machine
`
`polls the identification chip of the power adapter to obtain the power identification
`
`signal while also reading a power available status signal generated by charger 50.
`
`Apple 1003 at 4:21-24; 4:33-40. These signals are subsequently used by the power
`
`state machine to determine whether the external power is available, not available,
`
`or faulty.
`
`Id. at 4:35-55. If an external power source is available, the power state
`
`machine can determine an external power state corresponding to an AC power
`
`source or DC power source.
`
`Id. at 5:52-6:24.
`
`The subsystem manager 56 in the electronic device uses the AC or DC
`
`power source signal "to implement various power management functions." Id. at
`
`5:30-42.
`
`"For example, if the data signal .
`
`.
`
`. indicates that the external power
`
`source is AC, the power management components may allow the battery to be fully
`
`charged .
`
`.
`
`.
`
`.
`
`If, on the other hand, the data signal .
`
`.
`
`. indicates that the external
`
`power is from a DC source, the power management components may limit the
`
`charging of the battery and also limit the power consumption of the various system
`
`components." Id. at 5:33-42.
`
`C.
`
`Breen
`
`Entitled "Power Management Scheme for External Batteries," Breen
`
`discloses a power supply system in which "power peripherals," such as adapters
`
`and external batteries, are "mixed-and-matched" in connections with an electronic
`
`l1
`
`

`
`IPR20l5-01879
`
`U. S. Patent No. 8,492,933
`
`device (or Information Handling System ("IHS") in the parlance of Breen). Apple
`
`1004 at 1:52-2:2; 2:9-14; 319-11.
`
`In this system, each peripheral adapter or
`
`external battery contains a semiconductor chip with power supply identification
`
`information ("PSID") for the peripheral} Id. at 5:67-6:2.
`
`The IHS or electronic device 101 in Breen's system contains a
`
`controller 260 that "sends a request signal to one or more power peripherals over a
`
`bi-directional PSID line [250] to request PSID information" whenever there is a
`
`power event, such as "when power peripherals are attached or detached."
`
`Id. at
`
`5:31-37; 3:3-12; 5:47-53; 725-9. The controller makes such a request because a
`
`peripheral battery or adapter may provide power at different levels and create a
`
`danger that "a mismatch of component specifications such as wattage, voltage and
`
`current may result in unsafe operation" of an electronic device.
`
`Id. at 2:12-28;
`
`2:67-3:12. Thus, the controller uses the PSID transmitted by each peripheral to
`
`ensure "compatibility and co-ordination of operation between various mix-n-match
`
`components of the power supply system 100." Id. at 2:9-11; 2:67-3:12; 3:57-67.
`
`"Information included in a PSID for each power peripheral may include
`1
`attributes such as power type (e.g., AC or DC), wattage/voltage/current rating,
`peripheral manufacturer, part number, country of origin and similar others." Apple
`1004 at 523-7.
`
`12
`
`

`
`lPR20l5-01879
`
`U. S. Patent No. 8,492,933
`
`Breen's system is illustrated in Figure 2, reproduced below:
`
`AC/DC converter 230
`
`Power Lines 220 and 225
`
`/1
`
`-
`
`:u_1
`
`Power Event Trigger Component 270
`
`2oo
`
`7
`
`eeee
`.
`\
`
`1
`
`’
`—
`
`\
`
`\
`
`~.
`
`\
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`PSID line 250
`
`Fl
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`. 2
`
`External Battery 240
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`As shown, power peripheral 230 is an AC/DC converter that is connected by a
`
`cable to external battery 240, which, in turn, is connected by a cable to IHS or
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`electronic device 101. The cable conveys DC power along lines 220 and 225 and
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`PSID information along PSID line 250.
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`The external battery 240 contains a power event trigger component
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`270.
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`Id. at 6:35-40. When an AC/DC converter is plugged or unplugged from the
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`wall socket (which in turn causes a change in the intermediate voltage line 220),
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`the power event trigger component 270 in the battery causes a switch in the battery
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`to momentarily interrupt power supplied on line 225 and a pulse or trigger signal to
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`be sent to the electronic device.
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`Id. at Abstract; 2:51-55; 4:7-12, 6:40-46, 7:54-63.
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`The pulse or trigger signal, in turn, causes controller 260 in the electronic device to
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`transmit a PSID request to peripheral devices. Apple 1004 at 5:31-36. Each power
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`U. S. Patent No. 8,492,933
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`peripheral, which is queried, sends a response signal over the PSID line 250. Apple
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`1004 at 5:36-37.
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`With this arrangement, when any peripheral is attached or detached,
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`the controller 260 in the electronic device is automatically triggered to send a PSID
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`request to peripherals 230 and 240 along PSID line 250, and read/update the PSID
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`information to adjust power parameters and device performance accordingly.
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`Apple 1004 at 5:32-37; 7:5-9.
`
`D.
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`Castleman
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`Castleman discloses a multi-user power supply that can deliver
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`different levels of power to a multitude of different electronic devices at the same
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`time. Apple 1005 at 4:44-48; 5:19-24.
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`In Castleman's system each electronic
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`device preferably contains a memory chip with information concerning the device's
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`precise power requirements. 2 A microprocessor in Castleman's multiple port
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`adapter "read[s]" the memory and causes the power supply to provide power to the
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`electronic device at the appropriate level. Id. at Abstract; 16:4-8; 19:1-3.
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`Castleman also recognizes that some electronic devices may not
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`contain memory chips and that it would be expensive to retrofit such devices to
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`Castleman explains, "information about each device can be encoded in a
`2
`memory chip and provided to the power-supply apparatus whenever that device
`respectively is connected to receive power from the supply apparatus. In other
`words each device can be caused to have an associated respective memory chip
`which provides the needed identification." Apple 1005 at 4:60-65.
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`14
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`U. S. Patent No. 8,492,933
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`include one. Apple 1005 at 16:58-67. Hence, Castleman teaches placing an
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`EPROM with power requirement information for a particular electronic device in a
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`cable dedicated to that device as a less costly alternative to placing an EPROM in
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`an existing electronic device. Id.
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`II.
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`ALLEN AND BREEN DO NOT DISCLOSE LIMITATION lgbg
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`Limitation 1(b) of the challenged claims requires an adapter with
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`circuitry that produces an analog data signal that enables an electronic device to
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`control the amount of power drawn from an adapter. Petitioner's contentions that
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`Allen and Breen disclose this limitation are refuted by the terms of the
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`specifications of each reference.
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`a.
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`Allen
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`Petitioner urges that a person of ordinary skill would understand that
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`Allen's AC/DC identification circuits could output or transmit an analog data signal
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`because a signal can only be produced in either a digital or an analog form, and
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`because an analog implementation would be "simpler" and "more convenient" than
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`a digital implementation. Apple Brief at 17; Apple 1010, 11 72.
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`The argument flies in the face of Allen's descriptions of the operation
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`of the AC/DC identification circuits and the subsystem manager 56 and external
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`power state machine 60 in an electronic device that uses the output of either the
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`AC or DC identification circuit to control power drawn from the adapter. Allen, in
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`short, teaches and discloses that the AC and DC identification circuits are entirely
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`digital and that the subsystem manager and external power state machine operates
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`on exclusively digital data. Comarco 2001, 11 40, et seq.
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`Indeed, the word analog
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`does not appear anywhere in Allen.
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`Allen employs a "power source detector 74" in the adapter to
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`determine whether the adapter is drawing power from an AC source or a DC
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`source. A person of ordinary skill would understand that detection circuit 74
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`generates a digital signal (e.g., on/off; one/zero) indicating whether an AC or DC
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`source is providing power to the adapter.
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`Id., 11 41. This is confirmed, in part, by
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`the fact that the complete absence of AC and DC power sources is identified to the
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`electronic device by the external power source available signal 54, which is
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`produced by charger 50 acting on external power bus lines 48 that correspond to
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`DC power lines 38 conveying power from the adapter. Id.; Apple 1003 at Figure 3,
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`423-24. Furthermore, when present, the type of power source (AC or DC) is
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`reported to the electronic device by proper activation of either AC identification
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`circuit 77 or DC identification circuit 78 and subsequent generation of a digital
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`power source identification signal on Data Out 42. Comarco 2001, 1141, and Apple
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`1003 at 5:17-30. Hence, there is no need for power detection circuit 74 to produce
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`anything other than a simple binary-value logic signal
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`indicating whether the
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`adapter is drawing power from an AC or DC source. Comarco 2001, 11 41.
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`That Allen's AC/DC identification circuits output a digital signal is
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`confirmed by Allen's disclosure that "in an embodiment .
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`.
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`. the AC identification
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`circuit 77 and the DC identification circuit 78 are implemented using DS2501
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`circuits." Apple 1003 at 5:43-50. A DS2501 circuit is a standard EPROM
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`(Erasable Programmable Read Only Memory) semiconductor chip, which,
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`in
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`Allen's system, stores information indicative of the power source and "data relating
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`to numerous parameters of the adapter" such as model and revision number, output
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`voltage, and current output. Id.; Comarco 2001 , 1] 42.
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`A DS2501 chip produces a digital output, as Apple's expert readily
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`acknowledged. Comarco 2002 at 63:23-24; 75:20-22; Comarco 2001, W 42-43.
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`As such, a person of ordinary skill would understand that Allen's AC identification
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`circuit 77 or DC identification circuit 78 transmits a digital data signal indicative of
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`the power source, together with information relating to the identity of the adapter
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`and/or its capabilities. Comarco 2001,
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`11 43. Allen would not have disclosed
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`implementing the AC/DC identification circuits with DS2501 chips if the output of
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`the identification circuits were analog. Id.
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`Further evidence that Allen discloses and contemplates a digital
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`output from the AC and DC identification circuits is found in Allen's disclosure
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`that the external power state machine (a software module) in the electronic device
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`first "ping[s]" the external power identification signal transmitted by either AC or
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`DC identification circuit 77 or 78 for connection (by polling the identification
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`chips of the power adapter) and takes the power available status signal provided by
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`the adapter. Comarco 2001, 11 44. Next, the external power state machine 60
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`proceeds to check whether either the AC identification circuit 77 or the DC
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`identification circuit 78 is active.
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`Id. If the AC or DC power source identification
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`signals were analog, a person of ordinary skill would expect Allen to explain that
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`the power state machine software evaluated the output of an analog to digital
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`converter that converted the analog signal coming from the adapter. Id.
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`Despite acknowledging that the output of a DS2501 chip is digital,
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`Apple's expert, Dr. Davis, asserted during his deposition that the output of Allen's
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`identification circuits 76 and 77 could be transmitted to an electronic device in
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`H
`analog form after "run[ning] it through a digital to analog converter. Comarco
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`2002 at 73:14-17; 17:13-21. Almost anything, of course, is possible. But it is
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`highly unlikely that a person of ordinary skill have any motivation to adopt Dr.
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`Davis's digital to analog speculations for the following reasons.
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`For a start, Dr. Davis's notion might be possible if consecutive bit
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`outputs of DS2501 were bundled into, say, eight-bit digital data, which is
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`subsequently converted into analog data using an eight-bit digital—to—analog
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`converter and transmitted as an analog signal to the electronic device. Comarco
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`2001, 1] 45. On the electronic device side, the eight-bit digital data would have to
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`be reconstructed by applying an eight-bit analog—to—digital converter to each
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`received analog signal. 3 Comarco 2001, 1] 45. Considering that the filll output of
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`the DS2501 in Allen’s design is a 64-bit digital word, the receiver must repeatedly
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`apply the aforesaid procedure to the consecutively received analog signals and
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`assemble the corresponding eight-bit digital data into a 64-bit digital word. Id.
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`This approach would add significant complexity and cost for no
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`apparent gain. It would be far more practical and less costly to simply transmit the
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`output of the DS2501 in its original, digital form, just as Allen discloses.
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`Id. For
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`that reason alone it is exceedingly unlikely that a person of ordinary skill would
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`interpret Allen's disclosure to imply that the digital output of the DS2501 is
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`converted to an analog signal, transmitted, and reconverted in the electronic device
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`to a digital signal. Cf In re Omeprazole Patent Litig. v. Apotex Corp, 536 F.3d
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`1361, 1380-81 (Fed. Cir. 2008) (There is no motivation to modify the prior art
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`when there is no need or any benefit to be gained.).
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`Next,
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`in another possible scenario, which appears to be what Dr.
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`Davis has in mind (Comarco 2002 at 73:12-17), the full 64-bit digital word output
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`of DS2501 could theoretically be directly converted into analog data and
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`Any analog data signal would, of course, have to be converted to digital
`3
`form because the external power state machine 60 in the electronic device which
`receives information from the adapter is a software module that can process only
`binary data.
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`transmitted to the electronic device. Comarco 2001, 11 46. This would result in
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`unavoidable loss of information because the only possible output from a 64-bit
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`digital to analog converter would be a voltage value that is the sum of all of the
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`discrete bits of the 64-bit word generated by the DS2501 (multiplied by their
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`respective weights); that is, a voltage with 1.845 x 1019 distinct values. Comarco
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`2001, 1] 46. No digital to analog converter exists with that degree of resolution.
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`Under this scenario, the digital to analog conversion that Dr. Davis proposes would
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`render Allen inoperable.
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`Id. That result would surely dissuade one of ordinary
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`skill from adopting Dr. Davis's digital to analog theory.
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`In re Gordon, 733 F.2d
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`900, 902 (Fed. Cir. 1984) (inoperable modification teaches away).
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`Indeed, Dr. Davis's only justification for his ‘digital
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`to analog to
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`digital’ treatment of the output of the AC or DC identification circuits is based on
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`his misunderstanding of the '933 patent, as reflected by the following testimony:
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`I would also point out that the '933 patent uses the same
`DS2501
`or
`2
`chip,
`and they very clearly claim
`transmission of that information in analog form. So to
`the extent that you say Allen or Breen can't do it, then
`you are also, by extension, saying your own patent can't
`do it, which I don't think you want to do."
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`Comarco 2002 at 76:9—16. That is simply not so.
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`Figures 9A and 11 of the '933 patent show that Vdata (signal 980) is
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`produced by comparison circuit 320 in the adapter and that it may be an analog
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`U. S. Patent No. 8,492,933
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`signal. Supra at 6. There is no mention of a DS2502 device generating the analog
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`data signal of limitation 1(b).
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`In fact, the '933 patent mentions a DS2502 device
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`only in connection with controller 950 in a cable output connector or tip, which
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`responds to a power equipment identification inquiry from an electronic device.
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`Apple 1001 at 7:30.
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`In View of the foregoing, it is inconceivable that a person of ordinary
`
`skill would conclude that Allen's AC/DC identification circuits output an analog
`
`signal or transmit an analog signal. Nor would a person of ordinary skill have any
`
`motivation to transform Allen's digital circuits into analog circuits on