IPR2015-01879
`U.S. Patent No. 8,492,933
`
`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
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`U.S. Patent No. 8,492,933
`
`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
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`IPR2015-01879
`U.S. Patent No. 8,492,933
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`Page
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`I.
`II.
`
`b.
`
`INTRODUCTION ...........................................................................................1
`THE COMBINATION OF ALLEN, BREEN, AND CASTLEMAN
`RENDERS THE CLAIMS OF THE ’933 PATENT OBVIOUS ...................2
`A.
`The Instituted Combination Teaches Limitation 1(b)...........................2
`1.
`Allen............................................................................................3
`a.
`Allen’s Disclosure Encompasses Analog and
`Digital Implementations ...................................................3
`Allen’s Signal Disclosure Cannot Be Limited By
`An Embodiment’s Circuitry Designs ...............................6
`Breen ...........................................................................................9
`2.
`A Person of Ordinary Skill In The Art Would Have Several
`Reasons To Combine Allen, Breen, and Castleman ...........................11
`1.
`Combining Commonly-Assigned Allen and Breen..................11
`2.
`A Person Of Ordinary Skill In The Art Would Have Been
`Motivated to Combine the Teachings of Castleman With
`Allen and Breen ........................................................................17
`Comarco’s Own Assertions Regarding Breen and
`Castleman Demonstrate Why One Would Have Been
`Motivated to Combine Their Teachings with Allen.................20
`III. CONCLUSION..............................................................................................21
`(cid:3)
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`B.
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`3.
`
`i
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`
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`TABLE OF AUTHORITIES
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`IPR2015-01879
`U.S. Patent No. 8,492,933
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`Page(s)
`
`Cases
`Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments,
`LLC,
`2016 WL 33440093 (Fed. Cir. 2016) ...........................................................19, 20
`
`Arthrocare Corp. v. Smith & Nephew, Inc.,
`406 F.3d 1365 (Fed. Circ. 2005)...........................................................................6
`
`Ex Parte Larry G. Fischer,
`2016 WL 74927 (PTAB Jan. 4, 2016)..................................................................5
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ..........................................................2, 13, 15, 18
`
`Power Integrations, Inc. v. Fairchild Semiconductor Intern. Inc.,
`2009 WL 4928029 (D.Del. Dec. 18, 2009) ..........................................................6
`
`Quantum Corp. v. Mountain Computer, Inc.,
`1987 WL 45645 (N.D. Cal. Oct. 8, 1987) ............................................................6
`
`RCA Corp. v. Applied Digital Data Sys., Inc.,
`730 F.2d 1440 (Fed. Cir. 1984) ............................................................................5
`
`Ex Parte Roger P. Jackson,
`2012 WL 1225981 (BPAI Apr. 6, 2012)............................................................12
`
`Thomson Lic’g SAS v. International Trade Commission,
`527 Fed. Appx. 884 (Fed. Cir. 2013)..................................................................12
`
`Ultradent Products, Inc. v. Life-Like Cosmetics, Inc.,
`127 F.3d 1065 (Fed. Cir. 1997) ........................................................................6, 7
`
`Winner Int’l Royalty Corp. v Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ..........................................................................16
`
`Regulations
`
`37 C.F.R. § 42.23 .......................................................................................................1
`
`i
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`IPR2015-01879
`U.S. Patent No. 8,492,933
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`I.
`
`INTRODUCTION
`
`Petitioner Apple Inc. (“Apple”) submits this reply under 37 C.F.R. § 42.23
`
`in response to Comarco Wireless Technologies, Inc.’s (“Comarco”) Response to
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`Petition filed on May 31, 2016. Paper No. 17 (“Resp.”). Comarco did not submit
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`a motion to amend. The Board instituted inter partes review of U.S. Patent No.
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`8,492,933 (the “’933 Patent”) based on a reasonable likelihood that Apple would
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`prevail in showing that all claims are obvious over the combination of U.S. Patent
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`No. 7,243,246 to Allen, et al. (Apple 1003, “Allen”) U.S. Patent No. 7,296,164 to
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`Breen et al. (Apple 1004, “Breen”), and U.S. Patent No. 6,054,846 to Castleman
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`(Apple 1005, “Castleman”). Paper No. 15 (“Inst. Dec.”) at 15.
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`In its preliminary response, Comarco contested only whether this
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`combination of references disclosed the final element of the ’933 Patent’s Claim 1,
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`element 1(e), and whether one of ordinary skill in the art would have combined the
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`references. Paper No. 13 at 10. In its Patent Owner Response, however, Comarco
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`concedes the combination of Allen, Breen, and Castleman disclose element 1(e),
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`and thus as to that element Comarco only continues to argue a lack of motivation
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`to combine. In addition, Comarco now argues that the instituted grounds do not
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`disclose Claim 1’s element 1(b), an “adapter including circuitry for producing an
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`analog data signal for use by the electronic device to control an amount of power
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`drawn by the electronic device.” Resp. at 15.
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`1
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`IPR2015-01879
`U.S. Patent No. 8,492,933
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`As shown by the evidence and argument in the petition and further discussed
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`below, both Allen and Breen disclose element 1(b). Comarco’s arguments to the
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`contrary are based on mischaracterizations of the references and an attempt to limit
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`the references’ disclosures by improperly focusing only on certain disclosed
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`embodiments. Furthermore, as set forth in detail in the Petition (and as recognized
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`in the Board’s Institution Decision), a person of ordinary skill in the art reviewing
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`the teachings of Allen, Breen, and Castleman would have several reasons to
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`combine them into the ’933 Patent’s claimed invention, including element 1(e).
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`Comarco fails to rebut these reasons in any legally relevant or factually supported
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`way, instead asserting various alleged physical incompatibilities associated with
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`“redesigning” the references. Resp. at 24-33. But “[i]t is well established that a
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`determination of obviousness based on teachings from multiple references does not
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`require an actual physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
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`1332 (Fed. Cir. 2012). For these reasons and those stated in the petition and its
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`supporting evidence, the challenged claims should be canceled as unpatentable.
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`II.
`
`THE COMBINATION OF ALLEN, BREEN, AND CASTLEMAN
`RENDERS THE CLAIMS OF THE ’933 PATENT OBVIOUS
`
`The Instituted Combination Teaches Limitation 1(b).
`A.
`Both Allen and Breen individually (and a fortiori in combination) teach an
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`“adapter including circuitry for producing an analog data signal for use by the
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`electronic device to control an amount of power drawn by the electronic device.”
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`IPR2015-01879
`U.S. Patent No. 8,492,933
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`1.
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`Allen
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`a.
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`Allen’s Disclosure Encompasses Analog and Digital
`Implementations
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`Allen discloses power supply equipment for managing power supplied to a
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`portable “information handling system” (“IHS”). Apple 1010 at ¶ 69. Allen’s
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`system includes an adapter that can accept AC or DC power and convert it to an
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`appropriate DC voltage and current level for the IHS. Apple 1003 at 2:23-27.
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`Additionally, Allen discloses an adapter that generates and transmits a data signal
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`indicating the type of power source or other identifying information over a data
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`line to a subsystem manager in the IHS that can be used to control power
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`consumption levels or other parameters. Apple 1010 at ¶69.
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`Apple 1003 Fig. 3
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`3
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`U.S. Patent No. 8,492,933
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`Allen further discloses use of a power detection circuit and two power
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`identification circuits to generate that data signal. Apple 1003 at 2:33-51. Allen
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`describes and illustrates these power identification circuits, the data signal, and the
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`subsystem manager without limiting them to either an analog or digital
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`implementation. See Apple 1003 at 5:17-33; 2:34-46; 4:6-29; Fig. 3. Nor does
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`Allen require these circuits or components to be digital or analog in its claims. Id.
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`at 6:31-59. Comarco’s expert, Dr. Massoud Pedram, testified that a person of
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`ordinary skill in the art reviewing Allen’s general disclosure and figures would not
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`view the subsystem manager, data signal, or power identification circuits as only
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`digital. See Apple 1021, Deposition Transcript of Dr. Massoud Pedram at 89:15-
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`90:9; 97:15-98:7 (“So one of ordinary skill in the art reading this would not
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`conclude that no other possibilities exist.”).
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`A person of ordinary skill in the art would have understood that when
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`electric circuits and signals are disclosed in general terms, as Allen’s are, they can
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`be implemented in digital or analog variations and inherently disclose both options.
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`The parties’ experts agree that analog and digital are the only two design options
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`available. Apple 1010 at ¶71; Apple 1021 at 40:11-41:4. One of skill in the art as
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`of the ’933 Patent’s priority date would have understood how to implement these
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`circuits and signals in either digital or analog form. For example, Allen’s external
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`power state machine, which receives the data signal, functions by comparing prior
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`U.S. Patent No. 8,492,933
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`and current states. Apple 1003 at 5:55-6:24. Comarco’s expert, Dr. Pedram,
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`admitted that one of ordinary skill in the art would know how to implement a
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`comparator circuit in either analog or digital, see Apple 1021 at 56:14-57:4; 57:16-
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`58:8, especially since the particular data signal claimed in element 1(b) as “analog”
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`is described in the specification of the ‘933 Patent such that it “could be analog or
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`could be digital.” Id. at 57:5-13; Apple 1001 at 4:50-52; 6:27-31.
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`Indeed, substituting digital for analog components has been identified as the
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`epitome of obviousness, representing a finite number of identified, predictable
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`solutions for one of ordinary skill in the art to choose from with a reasonable
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`expectation of success. See Ex Parte Larry G. Fischer, 2016 WL 74927 at *6-7
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`(PTAB Jan. 4, 2016) (agreeing with examiner’s conclusion that use of analog
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`communication with certain digital systems was “‘obvious to try’ to choose from a
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`finite number of identified, predictable solutions (analog or digital) with a
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`reasonable expectation of success”); see also RCA Corp. v. Applied Digital Data
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`Sys., Inc., 730 F.2d 1440, 1446 (Fed. Cir. 1984) (rejecting proposed obviousness
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`combination because the change was “not a mere substitution of a digital for an
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`analog component.”).
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`Courts have thus agreed that a person of ordinary skill in the art reviewing
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`diagrams or descriptions of circuits such as those in Allen that lack restrictive
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`language “would understand that the depicted circuitry could be implemented
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`IPR2015-01879
`U.S. Patent No. 8,492,933
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`using digital or analog circuit techniques, or some combination thereof.” See
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`Power Integrations, Inc. v. Fairchild Semiconductor Intern. Inc., 2009 WL
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`4928029 at *15-16 (D.Del. Dec. 18, 2009) (refusing to limit a patent claim to
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`analog or digital signals where block diagram and claims did not specify analog or
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`digital); Quantum Corp. v. Mountain Computer, Inc., 1987 WL 45645 at *3 (N.D.
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`Cal. Oct. 8, 1987) (“To one of ordinary skill in the art, the phrase ‘a sample and
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`hold circuit’ of claim 2 means either an analog circuit, a digital circuit, or a
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`combination of an analog and digital circuit capable of performing the functions of
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`sampling and holding.”).
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`b.
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`Allen’s Signal Disclosure Cannot Be Limited By An
`Embodiment’s Circuitry Designs
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`Allen’s disclosure of particular embodiments cannot be used to limit its
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`broad disclosure to digital implementations only. To do so would be reversible
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`error. Arthrocare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365, 1371-72 (Fed.
`
`Circ. 2005) (finding district court analysis of a prior art reference’s disclosure
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`“fail[ed] because it address[ed] only a single embodiment” and further holding that
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`“there is no requirement that an anticipating reference [] provide specific
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`examples”). For instance, in Ultradent Products, Inc. v. Life-Like Cosmetics, Inc.,
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`the Federal Circuit found that the district court erred in interpreting a prior art
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`patent to disclose only a neutralized salt of a substance; the prior art referred to the
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`substance in general and then stated the neutralized salt was the preferred form of
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`U.S. Patent No. 8,492,933
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`the substance. 127 F.3d 1065, 1068 (Fed. Cir. 1997). The Federal Circuit held that
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`this disclosure encompassed all forms of the substance. Id.
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`Yet Comarco repeatedly argues that Allen’s general references to power
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`identification circuits and a subsystem manager should be ignored, and its
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`disclosure limited by subsequent descriptions of sample embodiments that
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`Comarco claims are “entirely” or “exclusively” digital. See Resp. at 15-16. First,
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`Comarco points to Allen’s disclosure of an embodiment using a Dallas
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`Semiconductor DS2501 chip for the power identification circuits. Resp. at 17. But
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`Allen makes clear this is only one embodiment of the generally described circuits.
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`Apple 1003 at 5:43-46; 5:17-33. Allen even refers to its earlier description as an
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`embodiment. Id. at 2:33-51. Second, Comarco attempts to argue that the data
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`signal must be received by a software module in the subsystem manager. Resp. at
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`17-18. Yet, Allen’s language makes clear the use of a software module and a
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`digital processor was only an example embodiment. See, e.g., Apple 1003 at 4:30-
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`40 (“Subsystem manager 56 is, for instance, a Super I/O processor that manages
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`information subsystem operation, such as a Super I/O processor . . . For instance,
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`external power state machine 60 operates as a software module . . . .”).
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`Third, Comarco argues that power identification circuit 74 can only be
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`digital. Resp. at 16. This claim finds no basis in Allen’s specification, and instead
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`relies solely on Dr. Pedram’s opinion that there would be “no need” to use
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`U.S. Patent No. 8,492,933
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`anything other than a digital circuit. Resp. at 16 (citing Comarco 2001 at ¶41).
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`Whether one would see the “need” to use an analog circuit has no relevance to
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`whether one of ordinary skill in the art would recognize the reference as disclosing
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`such a circuit.
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`Finally, even in the embodiments referenced by Comarco, Allen never
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`specifies the form of the data signal. That is, even if the various circuits could
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`“only” be digital, the signal could still be implemented by one of ordinary skill in
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`the art as analog or digital. As Dr. Pedram agreed, analog-to-digital and digital-to-
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`analog converters were well-known and readily available at the time of the ’933
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`Patent’s invention. Apple 1021 at 42:11-14. Dr. Pedram conceded that one of
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`ordinary skill in the art reading a patent would have been able to implement a
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`circuit for receiving analog or a circuit for receiving a digital signal, without any
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`explanation. Id. at 60:9-61:17. Comarco and Dr. Pedram even concede that
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`Allen’s embodiment that uses a DS2501 as a power identification circuit could be
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`implemented with an analog signal. Response at 18-19; Apple 1021 at 69:11-70:4.
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`Comarco’s argument that using an analog signal would necessarily mean
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`greater complexity is also baseless. Analog and digital signals are known design
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`choices with different benefits and costs, including complexities. For example, an
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`analog signal does not require synchronizing between the transmitter and receiver
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`while digital does. See Apple 1010 at ¶72.
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`IPR2015-01879
`U.S. Patent No. 8,492,933
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`Accordingly, Comarco’s attempt to improperly narrow Allen to only digital
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`embodiments is improper. Allen discloses element 1(b).
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`2.
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`Breen
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`Breen also discloses element 1(b). Specifically, Breen’s power peripherals
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`generate signals when power events occur, disclosing an “adapter including
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`circuitry for producing an analog data signal for use by the electronic device to
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`control an amount of power drawn by the electronic device.”
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`Breen discloses a system where one or more power peripherals are
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`connected to an information handling system (“IHS”), such as a computer, and
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`each includes power supply identification data. Apple 1004 at 1:15-19; 6:10-39.
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`The IHS monitors for power events, such as a change in the power source
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`parameters, change to the peripheral configuration, or plugging or unplugging of
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`an adapter. Id. at 5:48-53. The IHS determines a power event occurred by
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`comparing a value received from the peripheral to another value received a certain
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`amount of time later. Id. at 2:56-64. If the IHS determines a power event occurred
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`it will request PSID information from any attached peripheral to determine if it
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`may need to change its use of power. Id. at 2:56-64; 3:6-9. In one embodiment, an
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`adapter peripheral receives power from a wall socket, converts it, and outputs the
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`power as an “intermediate signal 220.” Id. at 4:42-62. In embodiments of Breen’s
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`system using a second power peripheral, the second power peripheral receives the
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`intermediate signal and passes it through to the IHS as signal 225. Id.
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`IPR2015-01879
`U.S. Patent No. 8,492,933
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`Apple 1004, Fig. 2.
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`In this system a power event is signaled to the IHS by changing the voltage
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`value along the power input line for a long enough time that the IHS takes a second
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`measurement. Id. at 5:53-56. Breen discloses inserting a “pulse” in the power
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`input line as one way to generate the signal. Id. at 6:40-42. In embodiments with
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`two power peripherals, the power event trigger circuit in the second peripheral
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`inserts the pulse in its output signal line 225 when it detects a change in the
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`intermediate signal 220 from the first peripheral. Id. at 6:35-40, 42-64.
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`Breen also describes embodiments where a single power adapter peripheral
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`is connected with the IHS. Id. at 6:10-15. In that embodiment, the adapter and its
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`circuitry signals a power event directly to the IHS. Id. at 6:10-18. What was
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`previously intermediate signal 220 is now output directly to the IHS on the same
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`line that received signal 225, since that signal is what provides power. Id. at Fig. 3.
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`Disconnecting or connecting the adapter from/to the wall socket will cause the
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`voltage of signal 220, now connected directly to the IHS, to change. That change
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`will be for a long enough time period that it indicates to the IHS that a power event
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`has occurred, triggering a PSID query. Id.at 5:53-65.
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`As Comarco’s expert admits, the received voltage signal and pulse is an
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`analog signal. Apple 1021 at 116:22-25. That analog signal is used by the IHS to
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`change the amount of power drawn, because it triggers a query for PSID data,
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`which is then used to change the power drawn. Accordingly, Breen also
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`independently discloses limitation 1(b).
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`To the extent Comarco contends that either Allen or Breen is missing an
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`aspect of limitation 1(b) (such as the location of the circuitry, an explicitly analog
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`signal, or use of the signal to control power drawn), as shown above these aspects
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`are included in the other reference and thus the teachings of the two can also be
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`combined to disclose all aspects of this element.
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`B.
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`A Person of Ordinary Skill In The Art Would Have Several
`Reasons To Combine Allen, Breen, and Castleman
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`1.
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`Combining Commonly-Assigned Allen and Breen
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`As Apple showed in its Petition and supporting evidence, there are a number
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`of reasons why one of ordinary skill in the art would combine the teachings of
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`Allen and Breen to achieve the ’933 Patent’s claimed invention. See Paper No. 1,
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`Petition at 36-37. Comarco’s Patent Owner response fails to address several of
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`those reasons (including that Allen and Breen are both owned by Dell, both
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`address the same problem, and both offer similar solutions to that problem), all of
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`which can support a finding of obviousness. See, e.g., Thomson Lic’g SAS v.
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`International Trade Commission, 527 Fed. Appx. 884 (Fed. Cir. 2013) (“one
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`having ordinary skill in the art would have been motivated to combine the
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`references” because “[t]hey share [a] common goal”); Ex Parte Roger P. Jackson,
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`2012 WL 1225981 (BPAI Apr. 6, 2012) (there was “ample reason to combine the
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`known elements in the fashion claimed” because “[b]oth references describe
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`solutions for solving the [same] problem”). As described in the Petition, a person
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`of skill in the art also would have been motivated to combine Allen and Breen to
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`save power, to provide power supply identification information at critical states,
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`and to render Allen’s adapter compatible with PSID enabled devices. Pet. at 37.
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`While Comarco attempts to rely upon the opinions of Dr. Pedram to rebut
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`these reasons, it fails to do so. First, Comarco agrees that there would be a power
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`savings from combining Allen and Breen’s teachings.1 Resp. at 25-26. Comarco’s
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`1 Even accepting Dr. Pedram’s later assertion that Allen’s existing power
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`identification circuitry would remain in place and need to be energized constantly
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`to respond to any query, power savings would still be achieved because the output
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`signal would not be transmitted. Comarco 2001 at ¶ 56 (noting that chip has zero
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`only argument against this reason to combine the references is that the power
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`savings would be small and that one of ordinary skill in the art would not have
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`“redesign[ed] Allen” to obtain this benefit. Resp. at 25-26. Notably, neither
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`Comarco nor its expert offers any opinion on what would be involved in such a
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`redesign, or why avoiding doing so would outweigh the benefit of power savings.
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`See Comarco 2001 at ¶ 55. Regardless, however, such considerations are
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`irrelevant. Obviousness looks to “what the combined teachings of [the asserted
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`prior art] references would have suggested to those having ordinary skill in the
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`art,” and not the logistics of physically substituting elements from one reference
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`into another. See In re Mouttet, 686 F.3d at 1332 (“It is well established that a
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`determination of obviousness based on teachings from multiple references does not
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`require an actual physical substitution of elements.”) Rather than requiring
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`evidence that a physical combination of the references would be possible,
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`obviousness examines whether a person of ordinary skill in the art with knowledge
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`of both references would have a reason to use the teachings from each in
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`developing a solution to the same problem addressed by the claimed patent. It is
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`undisputed that combining Allen and Breen results in a power savings benefit and
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`standby power dissipation and consumes “microwatts of power during its active
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`transmission state.”).
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`Comarco identifies no drawback that is either legally relevant or factually
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`supported.
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`One of ordinary skill in the art would have also been motivated to combine
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`Allen and Breen’s teachings of query and response circuitry so Allen’s adapter
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`would provide PSID information at critical states, such as when batteries are
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`inserted into the device. Apple 1010 at ¶ 96. Contrary to Comarco’s arguments,
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`nothing in the combined teaching of Breen and Allen obviates the benefit of so
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`doing. Comarco contends that one would not have been motivated to include
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`Breen’s PSID query in Allen’s circuitry because Allen’s circuitry sends
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`identification information upon connection. Resp. at 26-27. But this incorrectly
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`assumes that Allen’s circuits provide the same information as Breen’s PSID
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`circuits, that Allen’s circuits automatically and always transmit identification data,
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`and that connecting and disconnecting the adapter are the only states when power
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`supply identification information would be beneficial. Allen and Breen describe
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`transmitting overlapping but different potential identification information.
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`Compare Apple 1003 at 5:46-51 with Apple 1004 at 5:3-7.
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`There are other critical states where incorporating Breen’s PSID query and
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`response into Allen would allow the system to ensure it had up to date information,
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`such as upon complete battery charging or a fluctuation in power source voltage.
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`Apple 1010 at ¶ 96. Further, nothing in the case law requires that the combination
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`of Allen and Breen preserve Allen’s disclosure of identification circuitry that is
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`always and automatically transmitting data. See In re Mouttet, 686 F.3d at 1332
`
`(rejecting as an “incorrect assumption” patentee’s argument that because one
`
`reference was designated the “base reference,” an aspect of its implementation was
`
`“a controlling principle that any prior art combination must preserve”).
`
`Finally, a person of ordinary skill in the art would have been motivated to
`
`combined Breen’s teachings on PSID circuitry and operating scheme with Allen to
`
`make an existing Dell adapter design compatible with other Dell devices using the
`
`PSID scheme described by Breen. Both patents were assigned to Dell, and Breen
`
`even discusses how a legacy adapter operates in a PSID enabled system and how
`
`PSID compatibility would allow the adapter to perform better in the system. Apple
`
`1004 at 5:12-25.
`
`Comarco never disputes this benefit. Instead, it again argues that combining
`
`these references requires a “nontrivial” effort and would be “antithetical to Allen’s
`
`invention and change[] the basic principles under which Allen was designed to
`
`operate.” Apple 1021 at 148:2-4; Resp. at 27-28 (internal quotations omitted). But
`
`as the panel has already acknowledged, “[t]he fact that the 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.”
`
`Inst. Dec. at 13-14 citing Winner Int’l Royalty Corp. v Wang, 202 F.3d 1340, 1349
`
`15
`
`
`
`IPR2015-01879
`U.S. Patent No. 8,492,933
`
`n.8 (Fed. Cir. 2000) (finding that “[i]nstead the benefits, both lost and gained,
`
`should be weighed against one another.”) The evidence shows there are no lost
`
`benefits to weigh against the benefit of PSID compatibility. The supposed burden
`
`of achieving PSID compatibility cited by Comarco improperly focuses on a
`
`hypothetical “redesigning” of Allen by physically substituting Breen’s elements
`
`into Allen.2 Allen’s stated purpose is providing a system and method “for
`
`determining the type of power source supplying electrical power to a power
`
`2 Comarco alleges that part of the burden of combining the teachings of Allen and
`
`Breen to render the power supply compatible with a PSID scheme is modifying
`
`Allen’s electronic device to request PSID information. Resp. at 27-28. But there
`
`is no need to add PSID circuitry to Allen’s electronic device as the end device is
`
`not part of the ’933 Patent’s claims nor the asserted combination. As Dr. Davis
`
`stated in his declaration, the benefit being examined is “render[ing] the power
`
`supply compatible with electronic devices and peripherals that had incorporated
`
`the PSID scheme described in Breen.” Apple 1010 at ¶ 96 (emphasis added).
`
`Further, even Comarco assumes that Allen’s circuits may remain in place to
`
`interface with Allen’s electronic device, ensuring the adapter could interact with
`
`the device without a transmitter. See Resp. at 27 (“Again, there is no need for
`
`Allen’s electronic device to transmit a PSID request to Allen’s adapter.”)
`
`16
`
`
`
`IPR2015-01879
`U.S. Patent No. 8,492,933
`
`adapter for a portable computer.” Apple 1003 at 2:21-23. Its combination with
`
`Breen would enhance its ability to perform this function. Comarco and Dr. Pedram
`
`never articulate how Allen would not be able to accomplish its intended purpose
`
`once combined with Breen, nor do they identify any legally relevant or factually
`
`supported argument against the benefit of compatibility with PSID scheme devices.
`
`2.
`
`A Person Of Ordinary Skill In The Art Would Have Been
`Motivated to Combine the Teachings of Castleman With
`Allen and Breen
`
`Apple’s Petition and it’s expert’s declaration also detailed multiple reasons
`
`why one of skill in the art would have been motivated to combine Castleman’s
`
`teachings with Allen and Breen, including that they are in the same field of
`
`endeavor, address the same problem, apply similar solutions (use of an
`
`identification signal line), and include embodiments using Dallas Semiconductor
`
`EPROM chips. Pet. at 37. Further, and contrary to Comarco’s arguments,
`
`Castleman teaches cost benefits in locating in the output connector of a cable the
`
`query and response identification circuitry like that taught in Breen.
`
`For example, Castleman states that placing the identification circuitry in the
`
`connector furthest from the identified device “may avoid including an additional
`
`conductor along the length of the cable.” Apple 1005 at 10:4-6. Similarly,
`
`Castleman teaches generally that placement of the identification circuitry is subject
`
`to significant variation and that placing the device in the cable can be the most
`
`17
`
`
`
`IPR2015-01879
`U.S. Patent No. 8,492,933
`
`economical where a device may already exist. Id. at 5:4-18. Comarco argues that
`
`there would be no cost benefit to placing PSID circuitry in the output connector
`
`because it is “already built into a circuit board in an adapter or peripheral battery,”
`
`and that placing the chip in this position is not trivial. Resp. at 30-31. But Dr.
`
`Pedram could not identify any support for his assertion that Breen’s circuitry was
`
`already built into a circuit board in an adapter or peripheral battery. See Apple
`
`1021 at 127:17-130:17 (“as I look through this now, I don’t find any explicit
`
`reference to saying yeah, that PSID information is stored in a particular form and
`
`place where [sic] inside the Breen’s block diagram.”). He also acknowledged that
`
`there were likely non-surface mount versions of these chips, which would not be
`
`mounted to any circuit board. Id. at 140:9-21. Furthermore, such an argument is
`
`again predicated on the improper analysis of substitutions in a physical
`
`embodiment, in this case one apparently created after placing Breen’s circuitry into
`
`Allen, instead of analyzing whether one of ordinary skill in the art would be
`
`motivated to combine the teachings of the references to achieve the claimed
`
`invention. See In re Mouttet, 686 F.3d at 1332.
`
`Comarco also argues that Castleman doesn’t teach placing a query and
`
`response circuit. Resp. at 29. In his deposition, however, Dr. Pedram admitted
`
`that Castleman’s embodiments do in fact use circuits
`
`that first require
`
`communications from the receiving “master” device before the identification data
`
`18
`
`
`
`IPR2015-01879
`U.S. Patent No. 8,492,933
`
`is sent by the slave device. Apple 1021 at 136:11-139:12; see also Apple 1005 at
`
`21:21-26; Apple 1009.
`
`Comarco’s related argument that combining Castleman’s teaching with
`
`Breen would render Breen “inoperable” is inapposite and incorrect. Resp. at 29.
`
`Comarco alleges that if detachable cables are used, then PSID data can potentially
`
`be mismatched with a power adapter it does not represent. Id. at 31-32. But as
`
`Comarco acknowledges, this situation would only be present with detachable
`
`cables, and only if the different mechanical configurations for various cable
`
`connections discussed in Castleman (see Apple 1005 at 16:58-67) were omitted.
`
`Resp. at 30.
`
`Comarco’s assertion about the non-trivial nature of placing the chip in the
`
`connector also does not stand up to scrutiny. As Dr. Pedram admitted, the ’933
`
`Patent itself does not teach how to place a chip in the connector, but one of
`
`ordinary skill in the art would know how to do so. Apple 1021 at 77:17-78:7.
`
`Further, Castleman itself actually includes a discussion of how these chips are
`
`housed to accomplish this. See Apple 1005 at 4:6-27. The Federal Circuit’s
`
`holding in Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC,
`
`2016 WL 334
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