UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No.
`
`IPR2015—0I879
`
`U.S. Patent No. 8,492,933
`
`PRELIMINARY 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 22313-1450
`
`
`
`PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No.
`
`IPR2015—0I879
`
`U.S. Patent No. 8,492,933
`
`PRELIMINARY 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 22313-1450
`
`
`
`lPR2015—01879
`
`Patent No. 8,492,933
`
`TABLE OF CONTENTS
`
`Bags
`
`Introduction .......................................................................... .. 1
`
`1.
`
`Limitation IE Is Not Obvious in View of Allen and
`
`the Knowledge of a Person of Ordinary Skill in the Art ................. ..2
`
`II. The Combination of Allen, Breen, and Castleman
`Does Not Disclose or Render Obvious Limitation lE .................. ..lO
`
`HI. Veselic and Thomas Do Not Render Limitation IE Obvious .......... .. l 6
`
`Conclusion .......................................................................... ..19
`
`Certificate of Service .............................................................. ..2O
`
`
`
`1PR20l5-01879
`Patent No. 8,492,933
`
`TABLE OF AUTHORITIES
`
`Bage
`
`Innogenetics, N. V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) ......................................... ..17
`
`In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) ............................................................................... .. 18
`
`In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) .............................................................................. .. 12
`
`In re Omeprazole Patent Litig. v. Apotex Corp, 536 F.3d 1361 (Fed. Cir. 2008) ................ .. 10, 14
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) ...................... .. 17
`
`Otsuka Pharma. Co. v. Sandoz, Inc, 678 F .3d 1280 (Fed. Cir. 2012) ................................... ..7, 17
`
`Par Pharm, Inc. v. TWI Pharms., Inc., 773 F.3d 1186 (Fed. Cir. 2014). ..................................... ..1
`
`iii
`
`
`
`INTRODUCTION
`
`For many years, patentee Comarco Wireless Technologies,
`
`Inc.
`
`("Comarco") designed and commissioned the manufacture of power supplies and
`
`related components.
`
`It sold these products directly to consumers under its own
`
`Charge Source brand as well as to retailers of consumer electronic products under
`
`their private label brands (e.g., Lenovo, Targus, Best Buy, Dell). Comarco
`
`pioneered the development of power supplies, cables, and connector adapters.
`
`It
`
`has obtained 48 patents covering inventions in the field, including the patent in
`
`issue, U.S. Patent No. 8,492,933 (the "'933 patent").
`
`Obviousness,
`
`like anticipation, requires a showing "that all claimed
`
`limitations are disclosed in the prior art." Par Pharn/1., Inc. v. TWI P//zarms, Inc,
`
`773 F.3d 1186, 1194 (Fed. Cir. 2014). That settled principal frames Comarco's
`
`opposition to Petitioner's request for inter partes review of claims 1 and 2 of the
`
`'933 patent.
`
`Claim limitation 113 of the ’933 patent requires an output comiector for
`
`a cable that transfers DC power from an AC/DC or DC/DC power adapter to an
`
`electronic device with:
`
`from the
`circuitry to receive a data request
`electronic device and in response transmit a data
`output
`to the electronic device to identify the
`power supply equipment to the electronic device.
`
`
`
`IPR2O 1 5-01 879
`
`Patent No. 8,492,933
`
`None of the combinations of references on which Petitioner relies render the
`
`requirements of limitation lE obvious, as we demonstrate below. The Petition
`
`should be denied, accordingly.
`
`I.
`
`The Claims Are Not Obvious in View of Allen and
`
`the Knowledge of a Person of Ordinary Skill in the Art
`
`The core of Petitioner's argument that Allen in combination with the
`
`knowledge of a person with ordinary skill foreshadows limitation IE is that the
`
`power state machine 60 in Allen's electronic device sends a data request by
`
`"ping[ing]" a power identification signal in the adapter 12 and receives a response
`
`by "polling the identification chip of the adapter l2." Petitioner's Brief ("PB") at
`
`21; Apple 1003 at 5:60—6:3. That interpretation of Allen is utterly wrong.
`
`In fact, as shown below, Allen discloses that the power state machine
`
`merely receives and senses the presence of a power identification signal that was
`
`transmitted by either an AC or DC identification circuit within Allen's adapter to
`
`the power state machine in the electronic device. The power state machine does
`
`not send a data request to the adapter and the adapter does not contain circuitry that
`
`responds to a data request.
`
`As depicted in Figure 4 of Allen, the adapter 12 contains a power
`
`detection circuit 74, an AC identification circuit 77, and a DC identification circuit
`
`78.
`
`
`
`IPR20l5-01879
`
`Patent No. 8,492,933
`
`None of the combinations of references on which Petitioner relies render the
`
`requirements of imitation lE Obvious, as we demonstrate below. The Petition
`
`should be denied, accordingly.
`
`I.
`
`The Claims Are Not Obvious in View of Allen and
`
`the Knowledge ofa Person of Ordinafl Skill in the Art
`
`The core of Petitioner's argument that Allen in combination with the
`
`knowledge of a person with ordinary skill foreshadows limitation 1E is that the
`
`power state machine 60 in Allen's electronic device sends a data request by
`
`"ping[ing]" a power identification signal in the adapter 12 and receives a response
`
`by "polling the identification chip of the adapter 12." Petitioner's Brief ("PB") at
`
`21; Apple 1003 at 5:60—6:3. That interpretation of Allen is utterly wrong.
`
`In fact, as shown below, Allen discloses that the power state machine
`
`merely receives and senses the presence of a power identification signal that was
`
`transmitted by either an AC or DC identification circuit within Allen's adapter to
`
`the power state machine in the electronic device. The power state machine does
`
`not send a data request to the adapter and the adapter does not contain circuitry that
`
`responds to a data request.
`
`As depicted in Figure 4 of Allen, the adapter 12 contains a power
`
`detection circuit 74, an AC identification circuit 77, and a DC identification circuit
`
`78.
`
`
`
`IPR20l5—01879
`
`Patent No. 8,492,933
`
`AC Voltage in
`
`0CVc=1taagefn
`
`D313 Out
`
`Figure 4
`
`Upon determining that adapter 12 is drawing power from an AC source, power
`
`detection circuit 74 closes switch 75 and AC identification circuit 77 transmits an
`
`AC power identification signal via Data Out pin 42 to the electronic device.
`
`Elsewise, if power detection circuit 74 detects that a DC source is providing power
`
`to adapter 12, detection circuit 74 causes DC identification circuit 78 to send a DC
`
`power identification signal to the electronic device.
`
`In addition to generating
`
`either an AC or DC power identification signal, Allen discloses an embodiment in
`
`which AC and DC identification circuits 77 and 78 may also be implemented with
`
`a memory circuit or chip that "is capable of generating" a data signal containing
`
`information about the adapter, such as its model number and output capabilities.
`
`Apple 1003 at 5:43-51.
`
`
`
`IPR20 l 5~O l 879
`Patent No. 8,492,933
`
`Allen is quite explicit in explaining that power identification circuits
`
`77 and 78 automatically transmit either an AC or DC power identification signal
`
`(and adapter information) to an electronic device: "If the power detection circuit
`
`74 detects incoming AC power,
`
`.
`
`.
`
`. AC identification circuit 77 is activated,
`
`thereby transmitting a data signal on line 42 indicating that the DC power carried
`
`on DC power lines 38 is generated from an AC power source." Apple 1003 at
`
`5:l7—25 (emphasis added). Alternatively, Allen continues, when "the power
`
`detection circuit 74 detects incoming DC power, .
`
`.
`
`. the DC identification circuit
`
`78 is activated, thereby transmitting a data signal on line 42 indicating that the
`
`DC power carried on DC power lines 38 originates from a DC power source." Id.
`
`at 5:25-30 (emphasis added).
`
`Consistently with that disclosure, the arrow on Data Out pin 42 in
`
`Figure 4 points toward the electronic device, thus indicating that the external
`
`power identification signal (and adapter information signal) generated by either
`
`identification circuit 77 or 78 is transmitted from adapter 12 to power state
`
`machine 60 in the electronic device.’
`
`As explained in more detail in the specification and as shown in Figure 3 of
`1
`Allen, the external power identification signal output through line 42 connects to
`signal line 44 that "carries" the identification signal "to an external power source
`identification signal connector pin 40 integrated with information handling system
`10 [i.e., an electronic device]." Apple 1003 at 427-10. Thereafter, "[e]xternal
`power connector 46 provides external power and identification signals
`to
`
`4
`
`
`
`IPR2O l5-01879
`
`Patent No. 8,492,933
`
`For these reasons, Allen does not contain any disclosure, whether
`
`depicted by an arrow or described in words that would indicate that the power state
`
`machine in the electronic device generates and transmits a data request to the
`
`adapter. Nor does Allen disclose any circuit in the adapter that is capable of
`
`receiving and responding to a data request from the power state machine.
`
`In fact,
`
`neither the word request, nor any synonym of it, appears in Allen.
`
`In view of the foregoing, Petitioner misleads this Board in urging that:
`
`Allen’s power identification circuits 77 and 78
`comprise circuitry to receive a data request
`from the electronic device (i.e., the ping from
`the electronic device's external power state
`machine) and in response transmit a data output
`(i.e.,
`the
`"identification
`signal")
`to
`the
`electronic device to identify the power supply
`equipment to the electronic device. PB at 21.
`
`Indeed, in order to make this argument, Petitioner cropped a sentence from Allen's
`
`description of the operation of external power state machine 60 as depicted in the
`
`flow chart of Figure 5. The full sentence reads (cropped material in emphasis):
`
`"At step 84, the external power identification signal is pinged for connection by
`
`polling the identification chip of the power adapter 12 and the power available
`
`status signal provided by the power adapter 12 is taken."
`
`information handling system 10 bus lines" and ultimately to the power state
`machine in the electronic device.
`Id. at 4:11-12; 4:25-29; 4:34-40.
`
`5
`
`
`
`IPR2OI5-01879
`
`Patent No. 8,492,933
`
`source identification signal
`
`line 44 to the power supply equipment," and that
`
`"identification circuits 77 and 78 could be configured to send a signal in response
`
`to receiving a request via signal line 44." PB at 22 (emphasis added).
`
`The argument is founded on impermissible hindsight, for Petitioner
`
`fails to identify anything in the prior art that would lead or motivate a person of
`
`ordinary skill to redesign Allen's power state machine 60 or power identification
`
`circuits 77 and 78 in the wholesale manner Petitioner suggests. Petitioner is thus
`
`using the disclosure and claims of the '933 patent as a road map for the proposed
`
`reconfigurations of Allen. That
`
`is contrary to the law of obviousness.
`
`"The
`
`inventor's own path itself never leads to a conclusion of obviousness;
`
`that
`
`is
`
`hindsight. What matters is the path that the person of ordinary skill in the art
`
`would have followed, as evidenced by the pertinent prior art." Orsuka Pharma.
`
`Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (emphasis added).
`
`Because Allen does not disclose an electronic device that sends a data
`
`request to an adapter and receives an adapter identification signal in response, and
`
`would not be modified by a person of ordinary skill to do so, the central premise of
`
`Petitioner's reliance on Allen is bankrupt. Petitioner's request to institute inter
`
`parles review on the basis of Allen should be rejected for that reason alone.
`
`Although unnecessary,
`
`for
`
`sake of completeness, we briefly
`
`demonstrate that Petitioner's remaining argument —— that a person of ordinary skill
`
`
`
`IPR20l5»01879
`
`Patent No. 8,492,933
`
`Note that, as illustrated in Figure 5, at step 84,
`
`the power state
`
`machine "Sense[s] ID and Power Available."
`
`Plainly,
`
`a person of ordinary skill would
`
`understand that "Sense ID and Power Available" am‘
`
`means that the power state machine is looking for
`
`and reading the adapter
`
`identification (e.g.,
`
`model number) and power identification signal
`
`(ie, either AC or DC) provided by either AC or
`
`
`
`3
`\
`Sm“
`DC identification circuit 77 or 78 in power 92»\ W,
`Pa§:m:;::?‘:'
`ra:§d§§'?;m ‘
`
`
`adapter 12. As such, a person of ordinary skill
`would interpret "pinging" and "polling" to mean
`
`95 ..___\\\ W...
`
`l
`
`rS~=°i='»‘C3a‘7'f=.«él3
`
`taking a sample of or reading the identification
`
`Figure 5
`
`signal. Nothing,
`
`in short,
`
`in Allen supports petitioner's faulty argument that
`
`"pinging" and "polling" are synonymous with a data request transmitted by the
`
`power state machine to identification circuits 77 or 78 in the adapter.
`
`Petitioner actually admits that Allen's power state machine does not
`
`transmit a data request to power identification circuits 77 and 78 and that the latter
`
`do not respond to such a request. This is so because Petitioner offers the fallback
`
`argument that a person of ordinary skill "would understand" that Allen's "internal
`
`[sic] power state machine could be configured to send a request via external power
`
`
`
`IPR2015—O1879
`
`Patent No. 8,492,933
`
`would relocate Allen's AC and DC identification circuits 77 and 78 from the
`
`adapter to an output connector at the distal end of the cable ——
`
`is equally without
`
`merit.
`
`The first problem with Petitioner's relocation theory is that
`
`it
`
`is
`
`predicated on the already refuted premise that Allen's power identification circuits
`
`77 and 78 respond to an inquiry from power state machine 60. PB at 24.
`
`Beyond that, Petitioner urges that the location of identification circuits
`
`77 and 78 is a simple matter of "design choice" because the '933 patent discloses a
`
`prior art output connector with a circuit} and because the '933 patent does not
`
`emphasize the "criticality" of locating the circuit of limitation 1B in the output
`
`connector of a cable. PB at 22-23. Petitioner's reference to the prior art connector
`
`is irrelevant because Petitioner does not articulate any reason why such a connector
`
`would motivate a person of ordinary skill to move Allen '5 power identification
`
`circuits 77 and 78 from the adapter to a cable output connector. The "criticality"
`
`argument is likewise frivolous. Passing that few patents state that something is
`
`Specifically, in the background section, the '933 patent discloses, as prior art,
`2
`a detachable cable connector with a preprogrammed circuit
`to signal
`to an
`electronic device whether an adapter is drawing power from an airplane or an
`automobile DC power source to enable the device to prevent charging of its battery
`if power was being drawn from the wrong source. Apple 1001 at 2:l—29. This
`preprogrammed connector was not ideal because users would forget to change the
`connector for an automobile source when drawing power from an airplane
`Empower source. Apple 1001 at 2:29-35.
`
`
`
`IPR2015—0 1 879
`
`Patent No. 8,492,933
`
`"critical," Petitioner cites no authority, and Cornarco knows of none, for the
`
`proposition that the absence of any mention of "criticality" in the '933 patent
`
`establishes that the location of Allen's power identification circuits 77 and 78 is a
`
`matter of "simple design choice."
`
`In fact, a person of ordinary skill would have no incentive or
`
`motivation to relocate Allen's power identification circuits from the adapter to a
`
`cable output connector. As shown in Figure 4, supra, power identification circuits
`
`77 and 78 are logically located in the power adapter near power detection circuit
`
`74 which activates either identification circuit depending on the source of power
`
`drawn by the adapter. Nothing would be gained in terms of function or
`
`performance by moving Allen's power identification circuits 77 and 78 to the
`
`output connector at the distal end of the cable —- far away from the incoming AC
`
`or DC power and power detector circuit 74.
`
`It would also be more costly to effectuate such a redesign. As shown
`
`in Figure 4, Supra, Allen's AC and DC identification circuits are connected to
`
`power detection circuit 74 by separate wires. Hence, additional wires would have
`
`to be installed and run through the cable to connect power detection circuit 74 to
`
`each power identification circuit 77 and 78, if they were relocated to an output
`
`connector.
`
`It would also be necessary to place an additional circuit board for the
`
`power identification circuits in the output connector.
`
`
`
`IPRZO 1 5-0 l 879
`Patent No. 8,492,933
`
`Considering the absence of any benefit, and the extra cost, of moving
`
`Allen's power identification circuits from the adapter (where they logically belong)
`
`to an output connector, a person of ordinary skill would not do so. Cf
`
`In re
`
`Omepmzole Patent Litig. v. Apotex Corp, 536 F.3d 1361, 1380-81 (Fed. Cir. 2008)
`
`(There is no motivation to modify the prior art when there is no need or any benefit
`
`to be gained).
`
`In sum, neither Allen nor the knowledge of a person of ordinary skill
`
`provide for instituting inter partes review.
`
`II.
`
`The Combination of Allen, Breen, and Castleman
`Does Not Disclose or Render Obvious Limitation 1E
`
`Petitioner's combination of Allen with Breen and Castleman also fails.
`
`Breen cannot be modified to employ a circuit in a cable output connector to
`
`respond to a signal request from an electronic device, as required by limitation IE,
`
`without rendering Breen unsuitable for its intended purpose. Moreover, a person
`
`of ordinary skill would be dissuaded from modifying Breen, as Petitioner proposes,
`
`because it would require extra work and expense for no apparent reason or benefit.
`
`Breen discloses a power supply system in which "power peripherals,“
`
`such as adapters and external batteries, contain semiconductors with power supply
`
`10
`
`
`
`IPR2015-01879
`Patent No. 8,492,933
`
`identification information ("PSID") that
`
`is unique to each peripheral.3
`
`"[A]
`
`controller 260 [is]
`
`included within the portable IHS 101 device [that] sends a
`
`request signal to one or more power peripherals over a bi—directional PSID line to
`
`request PSID information." Apple 1004 at 5:31—37 (emphasis added). Breen's
`
`purpose in assigning a unique PSID to each peripheral is to ensure "compatibility
`
`and co—ordination of operation between various mix—n—match components of the
`
`power supply system 100." Id. at 219-11.
`
`Breen’s system is illustrated in Figure 2, reproduced below:
`
`
`
`FIG. 2
`
`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
`
`electronic device 101. The cable conveys DC power along lines 220 and 225 and
`
`PSID signals along line 250. The cable is "a standard 3—pin coaxial connector" that
`
`"is used for inputs and outputs, with the center pin being used as the PSID line
`
`"Information included in a PSID for each power peripheral may include
`3
`attributes such as power type (eg, AC or DC), wattage/voltage/current rating,
`peripheral manufacturer, part number, country of origin and similar others." Apple
`1004 at 5:3—7.
`
`11
`
`
`
`IPR20l5-01879
`
`Patent No. 8,492,933
`
`250." Apple l0O4 at 7:29~3l. The controller 260 in the electronic device 101
`
`automatically generates a PSID request whenever there is a power event, such as
`
`"when power peripherals are attached or detached." Id. at 725-9; see also 5:32-36;
`
`5:47-49. Thus, multiple peripheral devices can be swapped in and out of Breen's
`
`system.
`
`It would not have been obvious to a person of ordinary skill in the art
`
`to move Breen's PSID chip or circuit from its associated peripheral to a cable
`
`output connector. Breen's cables merely carry PSID signals and may, therefore, be
`
`attached to different peripherals and electronic devices as they are "mix[ed]-n-
`
`match[ed]."
`
`Id. at 2:9~ll; 3:49-55.
`
`If the PSID chips were moved from the
`
`peripherals to cable output connectors,
`
`it would be very likely that peripherals
`
`would be used with the wrong cables as various peripherals were "mix[ed]—n—
`
`match[ed]." That would defeat Breen's goal of compatibility and safety through
`
`the exchange of PSID signals among an electronic device and one or more
`
`peripherals. Where, as here, a "proposed modification would render the prior art
`
`invention being modified unsatisfactory for its intended purpose, then there is no
`
`suggestion or motivation to make the proposed modification." MPEP 2143.01
`
`(citing In re Gordon, 733 F.2d 900 (Fed. Cir. l984)).
`
`Even if Breen‘s disclosure were viewed as requiring one dedicated
`
`cable per peripheral -— instead of disclosing the use of one cable for many different
`
`12
`
`
`
`IPR20l5-01879
`
`Patent No. 8,492,933
`
`peripherals —— there would still be no incentive for one of ordinary skill to modify
`
`Breen by moving the PSID chip from the peripheral
`
`to a cable connector as
`
`Petitioner proposes. To do so would multiply the number of cables needed for
`
`Breen's system as each peripheral would require its own dedicated cable. More
`
`cables equals more expense.
`
`In addition, the costs of making a dedicated cable
`
`with a PSID chip in the output connecter would increase as well because control
`
`wires would have to be added to the cables to connect the PSID chips with the
`
`peripheral. Moreover, as with Allen, a circuit board for the PSID chip would have
`
`to be placed in the cable and thus increase cost and complexity.
`
`All the foregoing modifications would be necessary if Breen's PSID
`
`were relocated to a cable because the PSID circuitry must be able to communicate
`
`with its associated peripheral. Consider, for example, Breen’s disclosure of the
`
`operation of the system when AC/DC converter 230 and external battery 240 are
`
`connected in series to IHS device 101, as illustrated in Figure 2, supra. As Breen
`
`explains, the external battery's power trigger event component 270 allows the PSID
`
`for AC/DC converter 230 and converted DC power to pass through battery 240 to
`
`IHS device 101 when the AC/DC converter is operational. However, when the
`
`AC/DC converter is disconnected from the battery,
`
`the power trigger event
`
`component 270 sends a signal to a switch in the battery 240 to enable IHS 101 to
`
`13
`
`
`
`IPR20 l 5-0 1 879
`
`Patent No. 8,492,933
`
`draw power from the battery; it also sends a signal to another switch that enables
`
`the battery to respond to a PSID request from IHS 101. Apple 1004 at 7:24-53.
`
`As such,
`
`it
`
`is quite unlikely that a person of ordinary skill would
`
`modify Breen as Petitioner proposes because the extra work and expense of more
`
`cables and adding control wires to and circuit boards to the cables would not
`
`improve the system disclosed in the Breen patent or provide any other apparent
`
`benefit. Put another way, where there is no need to modify the prior art, or there is
`
`no benefit to be realized from doing so, a person of ordinary skill would have no
`
`reason or motivation to make such a modification. Cf.
`
`In re Omeprazole Patent
`
`Litig. v. Apotex Corp, 536 F.3d 1361, 1380-81 (Fed. Cir. 2008).
`
`Although unnecessary in view of the unsuitability of Breen as an
`
`obviousness reference, it is worth pointing out that Castleman is unsuitable as well.
`
`Castleman discloses a single power supply that can deliver power at different
`
`levels to a multitude of devices at
`
`the same time.
`
`In one of Castleman's
`
`embodiments, the output connector of a cable that plugs into an electronic device
`
`contains a memory chip with information as to the power requirements of the
`
`device. A microprocessor in the Castleman's multiple port adapter "reads" the
`
`l4
`
`
`
`IPR20l5-01879
`Patent No. 8,492,933
`
`memory and causes the power supply to provide power to the electronic device at
`
`the appropriate levelf’
`
`Thus, Castleman does not disclose a circuit
`
`in a cable output
`
`connector that receives an inquiry from an electronic device and transmits a
`
`response identifying the power supply equipment
`
`to an electronic device.
`
`Castleman merely discloses a memory chip in a cable that is read by the adapter.
`
`The chip transmits nothing, and does not receive and respond to a request from an
`
`electronic device.
`
`As such,
`
`it
`
`is unlikely that a person of ordinary skill would even
`
`consider using Castleman to modify Breen as Castleman would have to be
`
`redesigned, with different components, to perform the function of the circuit of
`
`limitation IE.
`
`This is confirmed by the fact
`
`that, contrary to Petitioners
`
`representation (PB at 10), Castleman was considered during prosecution of the ‘933
`
`patent application as stated on the face of the patent in the References Cited section.
`
`Apple 1001, Page 2, column one.
`
`The Board should decline to institute inter partes review based on
`
`Allen in combination with Breen and Castleman.
`
`Castleman explains, "information about each device can be encoded in a
`4
`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.
`
`15
`
`
`
`IPR20 1 5-0 1 879
`Patent No. 8,492,933
`
`III. Veselic and Thomas Do Not Render Limitation IE Obvious
`
`Petitioner's arguments that Veselic in combination with Thomas
`
`render the claims obvious is easily refuted.
`
`First, Veselic does not disclose a circuit,
`
`let alone a circuit in an
`
`output connector, that receives and responds to a data request from an electronic
`
`device to identify the power supply equipment to the electronic device. Rather,
`
`Veselic describes a system where a "signal generator may be used to generate a
`
`charge configuration signal having pre—selected waveform characteristics that are
`
`selected to identify operating characteristic of the charging apparatus." Apple
`
`1006, Abstract.
`
`Indeed, Figure 3 of Vaselic and the associated text depict and
`
`describe an adapter with a multi—vibrator signal generator using an LM 555 timer.
`
`Id. at 4335-51-3. This is a free~running signal generator that starts operating or
`
`oscillating when external power is supplied to the adapter. There is no "request"
`
`from the electronic device to initiate the signal generator.
`
`Petitioner's attempt to tum Vaselic's disclosure that the electronic
`
`device "send[s] a signal to initiate USB enumeration" into the request signal of
`
`limitation IE is unfounded.
`
`PB at 49. A reading of the numerous citations
`
`following that assertion reveals that Veselic merely states that a mobile device
`
`"may first attempt to establish a connection with a USB host using a standard USB
`
`enumeration process," and that,
`
`if a USB host
`
`is not detected,
`
`the device
`
`16
`
`
`
`IPR2015—Ol 879
`Patent No. 8,492,933
`
`"monit0r[s]" the data lines "for the presence of a charger configuration signal."
`
`Apple 1006 at 3:50—55. There is no mention of a data request for identifying
`
`information, nor can a data request be implied by an "attempt to establish a
`
`connection."
`
`Indeed, there is no need for such a request because the electronic
`
`device monitors the data line for the identification signal that the adapter of Vaselic
`
`generates automatically and continuously.
`
`Given the structure and operation of Vaselic’s "charging device,"
`
`Petitioner's proposed combination of Vaselic and Thomas must fail. This is so
`
`because a person of ordinary skill would first have to be motivated to redesign
`
`Vaselic’s adapter to include a circuit that receives and responds to an inquiry from
`
`an electronic device. Petitioner fails to cite anything in the prior art that would
`
`lead a person of ordinary skill to do so. That is fatal to the proposed combination.
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366—67 (Fed. Cir.
`
`2012); Innogenetics, NV 12. Abbott Labs, 512 F.3d 1363, 1374 (Fed. Cir. 2008)
`
`("some motivation must be shown from some source, so that
`
`the jury can
`
`understand why a person of ordinary skill would have thought of either combining
`
`two or more references or modifying one to achieve the patented [invention]").
`
`Again, Petitioner is using the disclosure and claims of the '933 patent
`
`as the blueprint it proposes for the complete makeover of Veselic. That resort to
`
`hindsight should be rejected. Otsuka Pharma. C0., supra, 678 F.3d at 1296 ("The
`
`17
`
`
`
`IPR2O 15-0 1 879
`
`Patent No. 8,492,933
`
`inventor's own path itself never leads to a conclusion of obviousness;
`
`that
`
`is
`
`hindsight. What matters is the path that the person of ordinary skill in the art
`
`would have followed, as evidenced by the pertinent prior art").
`
`In any event, even if Vaselic did not suffer from the foregoing fatal
`
`deficiencies,
`
`it could not be combined with Thomas because Thomas is not
`
`analogous art.
`
`Thomas discloses a communication adapter cable with an
`
`identification code that can enable a computer
`
`to connect
`
`to a variety of
`
`communication networks (e.g., telephone, cell, Ethernet, LAN or WAN networks,
`
`among others) by using the appropriate adapter cable for a particular network.
`
`Thomas is plainly not relevant prior art as the structure and function of the
`
`components of power supply equipment have nothing in common with computer
`
`communications with a network. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
`
`In sum, the Board should decline to institute inter partes review based
`
`on Vaselic and Thomas.
`
`18
`
`
`
`IPRZO l 5-01 879
`Patent No. 8,492,933
`
`CONCLUSION
`
`For
`
`all
`
`the
`
`foregoing
`
`reasons,
`
`patentee Comarco Wireless
`
`Technologies, Inc, respectfully submits that the Petition for inter partes review of
`
`Apple Inc. should be denied in all respects.
`
`Respectfully submitted,
`
`GRAHAM CURTIN, P.A.
`
`Attorneys for Patentee
`
`By:
`
`/s/Harris A. Wolin/
`Harris A. Wolin,
`
`Reg. No. 39,432
`
`On the Brief:
`
`Charles Quinn
`
`
`
`IPR2015—0l879
`
`Patent No. 8,492,933
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. 42.6, that on this day I caused a
`
`copy of the attached document to be served by Express Mail or an equivalent
`
`service and by electronic mail upon the following attorneys for petitioner Apple
`
`Inc.:
`
`*»
`
`Xin—Yi Zhou
`
`O'Melveny & Myers
`400 South Hope Street
`Los Angeles, California 90071
`vzhou@omni.com
`
`Brett J . Williamson
`
`O'Melveny & Myers
`610 Newport Center Drive
`Newport Beach, California 92660
`bwilliarnson@omm.corn
`
`Scott Rives
`
`O'Melveny & Myers
`610 Newport Center Drive
`Newport Beach, California 92660
`srives@omm.corn
`
`Dated: December’? ,20l5
`Morristown, N.J.
`
`Charles
`
`u’
`
`20
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
