`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZTE (USA) Inc.,
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.,
`
`Petitioner
`
`v.
`
`Fundamental Innovation Systems International LLC,
`
`Patent Owner
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,624,550 B2
`
`Case No. IPR2018-00111
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`
`
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`

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`
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`TABLE OF CONTENTS
`
`I.
`
`Mandatory Notices (37 C.F.R. § 42.8) ............................................................ 1
`
`A.
`
`B.
`
`C.
`
`Real Parties-in-Interest (§ 42.8(B)(1)) .................................................. 1
`
`Related Matters (§ 42.8(B)(2)) .............................................................. 1
`
`Counsel Information (§ 42.8(b)(3)) ....................................................... 2
`
`II.
`
`Payment of Fees (§ 42.15(A)) ......................................................................... 2
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`III. Grounds for Standing (§ 42.104(A)) ............................................................... 2
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`IV.
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`’550 Patent Background .................................................................................. 2
`
`A.
`
`B.
`
`C.
`
`Summary ............................................................................................... 2
`
`Prosecution History ............................................................................... 3
`
`Priority Date .......................................................................................... 4
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`V.
`
`Technology Background .................................................................................. 5
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art ....................................................... 5
`
`State of the Art ...................................................................................... 5
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`VI. Claim Construction (§ 42.104(B)(3)) ............................................................14
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`VII. Grounds of Rejection (§ 42.104(B)(1)-(2), (4)) ............................................15
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`A. Ground 1: Rogers renders obvious claims 1-3, 9-12, and 18. .............16
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`1.
`
`2.
`
`Rogers .......................................................................................16
`
`Application of Rogers to claims 1-3, 9-12, and 18 ...................22
`
`B.
`
`Ground 2: Rogers and Shiga render obvious claims 4-8 and 13-17. ..36
`
`1.
`
`2.
`
`Shiga ..........................................................................................36
`
`The Rogers/Shiga combination .................................................40
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`3.
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`Application of the Rogers/Shiga combination to
`claims 4-8 and 13-17 .................................................................46
`
`C.
`
`Neither ground is redundant. ...............................................................54
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`VIII. Conclusion .....................................................................................................55
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`EXHIBIT LIST
`
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`Exhibit Description
`
`1001 U.S. Patent 8,624,550 B2
`
`Short Name
`
`’550 patent
`
`1002
`
`File History of U.S. Patent 8,624,550
`
`’550 file history
`
`1003 U.S. Provisional Application 60/273,021
`
`’021 provisional
`
`1004 U.S. Provisional Application 60/330,486
`
`’486 provisional
`
`1005 U.S. Patent 6,556,564 B2
`
`1006 U.S. Patent 6,625,738 B1
`
`1007 Universal Serial Bus Specification,
`Revision 1.1, September 23, 1998
`
`1008 Universal Serial Bus Specification,
`Revision 2.0, April 27, 2000
`
`1009 Declaration of Mr. James Geier in Support
`of the Petition for Inter Partes Review of
`U.S. Patent No. 8,624,550
`
`1010 U.S. Patent 6,625,790
`
`1011 Cypress CY7C63722/23 CY7C63742/43
`enCoRe™ USB Combination Low-Speed
`USB & PS/2 Peripheral Controller
`(Cypress enCoRe or Cypress Datasheet),
`by Cypress Semiconductor Corporation,
`published May 25, 2000
`
`1012 U.S. Patent 6,531,845
`
`1013 U.S. Provisional Application 60/181,099
`
`
`Rogers
`
`Shiga
`
`USB 1.1
`
`USB 2.0
`
`Geier
`
`Casebolt
`
`Cypress datasheet
`
`Kerai
`
`Rogers provisional
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`Patent 8,624,550 B2
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`Petitioner, ZTE (USA) Inc., Samsung Electronics Co., Ltd., and Samsung
`
`Electronics America, Inc., requests inter partes review (“IPR”) of claims 1-18 of
`
`U.S. Patent No. 8,624,550 B2 (“the ’550 patent”). As explained below, there is a
`
`reasonable likelihood that Petitioner will prevail on at least one claim challenged in
`
`this petition.
`
`I. Mandatory Notices (37 C.F.R. § 42.8)
`
`A. Real Parties-in-Interest (§ 42.8(B)(1))
`
`ZTE Corporation, ZTE (USA) Inc., Samsung Electronics Co., Ltd., and
`
`Samsung Electronics America, Inc., are the real parties-in-interest.
`
`B. Related Matters (§ 42.8(B)(2))
`
`The ’550 patent is the subject of Civil Action Nos. 2:17-cv-00145-JRG,
`
`2:16-cv-01424-JRG-RSP, and 2:16-cv-01425-JRG-RSP, which are pending in the
`
`U.S. District Court for the Eastern District of Texas, and Civil Action No. 3:17-cv-
`
`01827-N, which is pending in the U.S. District Court for the Northern District of
`
`Texas.1 The ’550 patent is also subject to IPR2018-00110, filed by the same
`
`Petitioner and pending institution. Petitioner is unaware of any other pending
`
`matter that would affect, or by affected by, a decision in this proceeding.
`
`
`1 The unpatentability positons herein take into account Patent Owner’s
`infringement positions in the co-pending litigation and in some instances are based
`in-part on these positions.
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`C. Counsel Information (§ 42.8(b)(3))
`
`Lead counsel is Charles M. McMahon. Back-up counsel are Hersh H.
`
`Mehta, Gregory S. Arovas, Robert A. Appleby, Todd M. Friedman, Eugene
`
`Goryunov, and Alan Rabinowitz. Petitioner consents to e-mail service. The service
`
`information is identified in the signature block of this petition.
`
`II.
`
`Payment of Fees (§ 42.15(A))
`
`Petitioner authorizes the Office to charge the filing fee and any other
`
`necessary fee to Deposit Account 50-0417.
`
`III. Grounds for Standing (§ 42.104(A))
`
`Petitioner certifies that: (i) the ’550 patent is available for IPR and
`
`(ii) Petitioner is not barred or estopped from requesting an IPR challenging the
`
`’550 patent’s claims.
`
`IV.
`
`’550 Patent Background
`
`A.
`
`Summary
`
`The ’550 patent relates to “[a]n adapter for providing a source of power to a
`
`mobile device through an industry standard port.”2 The ’550 patent has 18 claims.
`
`Independent claims 1 and 10 are provided below.
`
`
`2 Ex. 1001 (“’550 patent”) at 2:19-20.
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`1. An adapter comprising:
`a USB VBUS line and a USB communication path,
`said adapter configured to supply current on the VBUS line
`
`without regard to at least one associated condition speci-
`
`fied in a USB specification.
`
`10. An adapter comprising:
`a USB VBUS line and a USB communication path,
`said adapter configured to supply current on the VBUS line
`
`without regard to at least one USB Specification
`
`imposed limit.
`
`B.
`
`Prosecution History
`
`The ’550 patent issued from U.S. Patent Application No. 13/536,767, which
`
`was filed on June 28, 2012. That same day, the applicant cancelled all pending
`
`claims and added 18 new claims.3
`
`On May 28, 2013, the examiner rejected all pending claims based upon
`
`obviousness-type double patenting over claims 1-12 of U.S. Patent No. 7,986,127.4
`
`In response, on August 7, 2013, the applicant filed a terminal disclaimer.5
`
`On September 5, 2013, the examiner issued a notice of allowance.6 Before
`
`the patent issued, the applicant requested an amendment after allowance on
`
`November 19, 2013, to “correct minor clerical errors” and to “correct a
`
`
`3 Ex. 1002 (“’550 file history”) at 216.
`4 ’550 file history at 103-107.
`5 ’550 file history at 95-98.
`6 ’550 file history at 81-84.
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`typographical error” made to claim 27.7 The examiner approved the amendments,
`
`and the ’550 patent issued on January 7, 2014.8
`
`C.
`
`Priority Date
`
`The ’550 patent claims priority through a series of continuations to two
`
`provisional applications: (1) U.S. Provisional Application No. 60/273,021 (“the
`
`’021 provisional”) (Ex. 1003), filed March 1, 2001; and (2) U.S. Provisional
`
`Application No. 60/330,486 (“the ’486 provisional”) (Ex. 1004), filed October 23,
`
`2001. However, at least claims 4-8 and 13-17 of the ’550 patent are not entitled to
`
`the ’021 provisional’s filing date because the ’021 provisional does not provide
`
`written description support for the following claim elements:
`
`(i)
`
`said current is supplied in response to an abnormal data condition on
`
`said USB communication path (claims 4 and 13);
`
`(ii)
`
`said abnormal data condition is an abnormal data line condition on
`
`said D+ line and said D- line (claims 6 and 15);
`
`(iii)
`
`said abnormal data line condition is a logic high signal on each of said
`
`D+ and D- lines (claims 7 and 16); and
`
`(iv) each said logic high signal is greater than 2V (claims 8 and 17).9
`
`The later-filed ’486 provisional is the first application in the priority chain that
`
`7 ’550 file history at 50-60.
`8 ’550 file history at 41.
`9 Geier at ¶¶ 28-30.
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`potentially provides written description for these claim elements.10 Thus, October
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`23, 2001 is the earliest potential priority date for claims 4-8 and 13-17.11
`
`V. Technology Background
`
`A.
`
`Person of Ordinary Skill in the Art
`
`The person of ordinary skill in the art (POSITA) of the subject matter of the
`
`’550 patent would have had a master’s degree in electrical engineering, computer
`
`science, or a related field, plus 2-3 years of experience with Universal Serial Bus
`
`(“USB”).12 Along with this petition, Petitioner submits the declaration of James T.
`
`Geier, who has been a POSITA since at least the ’550 patent’s claimed priority
`
`date.
`
`B.
`
`State of the Art
`
`As of March 2001, POSITAs would have been familiar with the USB
`
`Implementers Forum, Inc. (“USB-IF”), which has been responsible for the
`
`advancement and adoption of USB technology since its inception in 1995.13 As of
`
`December 2000, USB-IF had more than 900 member companies that helped
`
`
`10 ’486 provisional at 14:11-15:17.
`11 The analysis in this petition remains the same regardless of whether the ’550
`patent’s claims are entitled to a priority date of March 1, 2001 or October 23, 2001.
`Both grounds in this petition apply even if the claims are entitled to the March 1,
`2001 filing date.
`12 Ex. 1009 (“Geier”) at ¶¶ 3-6, 23.
`13 Geier at ¶ 31.
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`facilitate the development of USB.14
`
`POSITAs would have also been familiar with the USB specification and its
`
`various revisions.15 On September 23, 1998, USB-IF released Universal Serial Bus
`
`Specification, Revision 1.1 (“USB 1.1”), which was widely adopted by industry
`
`leaders and consumers.16 On April 27, 2000, USB-IF released USB Revision 2.0
`
`(“USB 2.0”).17 Among USB 2.0’s improvements were faster speeds and additional
`
`functionality.18
`
`POSITAs would have also understood the architecture for a USB system.19
`
`Generally, a USB system includes a USB host, one or more USB devices, and a
`
`USB interconnect.20 A USB host (e.g., a laptop computer system) interacts with
`
`USB devices and is responsible for tasks such as (i) detecting the attachment and
`
`removal of USB devices; (ii) managing control and data flow between the host and
`
`USB devices; (iii) collecting status and activity statistics; and (iv) providing power
`
`to attached USB devices.21 A USB device connects to the USB host, and falls into
`
`one of two categories: (i) a hub, which has the ability to provide additional USB
`
`
`14 Id.
`15 Geier at ¶ 32.
`16 Geier at ¶ 32 (citing Ex. 1007 (“USB 1.1”) at 1).
`17 Geier at ¶ 32 (citing Ex. 1008 (“USB 2.0”) at 1).
`18 Geier at ¶ 32.
`19 Geier at ¶¶ 33-36.
`20 Geier at ¶ 33 (citing USB 2.0 at 15; USB 1.1 at 15).
`21 Geier at ¶ 33 (citing USB 2.0 at 24; USB 1.1 at 24).
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`attachment points, or (ii) a function, which is a device that is able to transmit or
`
`receive data or control information over the USB bus (e.g., a peripheral device,
`
`such as a keyboard, mouse, or mobile phone).22 A USB interconnect is the manner
`
`in which USB devices are connected and communicate with the host.23 The
`
`following figure from USB 2.0 depicts a typical configuration of a USB host,
`
`interconnect, and device(s):24
`
`
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`From the USB specifications, POSITAs would have also understood the
`
`USB cable structure. As of the claimed priority date, the “USB cable consist[ed] of
`
`
`
`
`22 Geier at ¶ 33 (citing USB 2.0 at 22-24; USB 1.1 at 21-24).
`23 Geier at ¶ 33 (citing USB 2.0 at 15; USB 1.1 at 15).
`24 Geier at ¶ 33 (citing USB 2.0 at Figure 4-4).
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`four conductors, two power conductors, and two signal conductors.”25 The
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`following figure from USB 2.0 depicts the four wires within a USB cable.26
`
`
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`VBUS and GND deliver power, and D+ and D- carry signals for communication
`
`between a USB host and the connected device.27
`
`POSITAs would have also understood the USB connector structure.28 USB
`
`1.1 and USB 2.0 specified Series “A” and Series “B” connectors.29 “Table 6-1
`
`provides the standardized contact terminating assignments by numbers and
`
`electrical value for Series ‘A’ and Series ‘B’ connectors.”30
`
`
`25 Geier at ¶ 34 (citing USB 2.0 at 86; USB 1.1 at 74).
`26 Geier at ¶ 34 (citing USB 2.0 at Figure 4-2).
`27 Geier at ¶ 35 (citing USB 2.0 at 17-18; USB 1.1 at 17).
`28 Geier at ¶ 36 (citing USB 2.0 at 85, 94; USB 1.1 at 73, 82).
`29 Id.
`30 Geier at ¶ 36 (citing USB 2.0 at 94; USB 1.1 at 83).
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`According to USB 1.1 and USB 2.0, “[a]ll USB devices must have an ‘A’
`
`connector.”31 “The ‘B’ connector allows device vendors to provide a standard
`
`detachable cable.”32
`
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`
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`31 USB 2.0 at 85; USB 1.1 at 73.
`32 Id.
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`POSITAs would have also understood how the USB host configured a USB
`
`device. For example, USB 2.0 stated that “[w]hen a USB device is attached to or
`
`removed from the USB, the host uses a process known as bus enumeration to
`
`identify and manage the device state changes necessary.”33 In its “Bus
`
`Enumeration” section, USB 2.0 specified the bus-enumeration requirements,
`
`including eight actions taken “[w]hen a USB device is attached to a powered
`
`port.”34
`
`POSITAs would have also understood that USB 2.0 imposed current limits
`
`on VBUS. For example, USB 2.0 limited a USB device’s current draw on VBUS
`
`to “one unit load [i.e., 100 mA] or less until configured.”35 USB 2.0 also stated that
`
`“[d]epending on the power capabilities of the port to which the device is attached,
`
`a USB device may be able to draw up to five unit loads [i.e., 500 mA] from VBUS
`
`after configuration.”36
`
`POSITAs would have also understood that USB 2.0 imposed voltage limits
`
`on VBUS.37 For example, USB 2.0 imposed a 5.25 V limit on the VBUS line.38
`
`
`33 Geier at ¶ 37 (citing USB 2.0 at 243).
`34 Id.
`35 Geier at ¶ 38 (citing USB 2.0 at 245).
`36 Id.
`37 Geier at ¶ 39.
`38 Geier at ¶ 39 (citing USB 2.0 at 175, 178).
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`POSITAs would have also known about the different signaling states on the
`
`D+ and D- lines.39 Some of these states (e.g., Differential 0, Differential 1, Data J
`
`State, and Data K State) transmit data while others (e.g., Single-ended 0, Single-
`
`Ended 1) are used as specific signaling conditions.40 Relevant to this petition is the
`
`Single-Ended 1 (“SE1”) condition.41 USB 2.0 defined “SE1” as “a state in which
`
`both the D+ and D- lines are at a voltage above VOSE1 (min), which is 0.8 V.”42
`
`USB 2.0 also taught that the low- and full-speed USB drivers “must never
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`‘intentionally’ generate an SE1 on the bus.”43 In other words, according to USB
`
`2.0, an abnormal data condition would occur if D+ and D- were intentionally set in
`
`a high state above 0.8 V.44
`
`Finally, POSITAs would have also known that the SE1 condition would be a
`
`logical choice for signaling information about a device without interfering with
`
`
`39 Geier at ¶ 40 (citing USB 2.0 at 123).
`40 Geier at ¶ 40 (citing USB 2.0 at 144-146, Table 7-2).
`41 Id.
`42 Geier at ¶ 40 (citing USB 2.0 at 123).
`43 Id.
`44 Geier at ¶ 40.
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`USB signaling. For example, Casebolt taught that SE1 could be used as a special
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`signaling mode.45 Specifically, as shown below, the D+ and D- data lines would be
`
`connected to Vcc (+5V) to signal a PS/2 adapter.46
`
`
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`
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`45 Under pre-AIA § 102(e), Ex. 1010, U.S. Patent No. 6,625,790 (“Casebolt”) is
`prior art to every claim of the ’550 patent. Casebolt’s filing date, October 1, 1999,
`predates the ’550 patent’s earliest claimed priority date, March 1, 2001.
`46 Ex. 1010 (“Casebolt”) at FIG. 2C (annotated), 7:41-54, Table 1.
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`Indeed, knowledge of SE1 was so common that Cypress Semiconductor integrated
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`it into their enCoRe product, stating “USB D+ and D- lines can also be used for
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`PS/2 SCLK and SDATA pins, respectively. With USB disabled, these lines can be
`
`placed in a high impedance state that will pull up to VCC.”47 As yet another
`
`example, Kerai used a high state on USB D+ and D- for charging.48 As shown
`
`below, both USB D+ and D- (yellow) are brought to a high state in cooperation
`
`with the charging system (green) for a special charging mode.
`
`
`
`Therefore, a POSITA would have understood that a high state on USB D+ and D-
`
`47 Ex. 1011 (Cypress datasheet) at 21, 22, 24, 25, 41. Under pre-AIA § 102(b), Ex.
`1011, the Cypress datasheet is prior art to every claim of the ’550 patent. The
`Cypress datasheet’s publication date, May 25, 2000, predates the ’550 patent’s
`earliest claimed priority date, March 1, 2001.
`48 Ex. 1012 (“Kerai”) at FIG. 3 (annotated). Under pre-AIA § 102(e), Kerai is prior
`art to every claim of the ’550 patent. Kerai’s filing date, November 23, 1999,
`predates the ’550 patent’s earliest claimed priority date, March 1, 2001.
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`lines could be used in a variety of contexts, including PS/2 (e.g., Casebolt’s PS/2
`
`adapter), standard USB (e.g., the keyboard in Shiga49), and others (e.g., Kerai’s
`
`charging scheme) and was not restricted to a single application.50
`
`VI. Claim Construction (§ 42.104(B)(3))
`
`The challenged claims receive the broadest reasonable interpretation (BRI)
`
`in light of the specification of the ’550 patent. 37 C.F.R. § 42.100(b). Under the
`
`BRI standard, the Board should construe USB enumeration51 (which appears in
`
`claims 3 and 12) as “the bus-enumeration procedure specified in the USB 2.0
`
`specification or an earlier specification” at the time of the alleged invention.
`
`The “USB” modifier in USB enumeration indicates that USB enumeration
`
`refers to an enumeration procedure specified in a USB specification.
`
`The ’550 patent repeatedly refers to enumeration as a procedure specified in
`
`a then-existing USB specification (i.e., USB 2.0 or earlier). For example, the ’550
`
`patent states that “[i]n accordance with the USB specification, typical USB power
`
`source devices, such as hubs and hosts, require that a USB device participate in a
`
`host-initiated process called enumeration in order to be compliant with the current
`
`USB specification in drawing power from the USB interface.”52 As another
`
`
`49 See Section VII.B.1.b (pp. 37-40).
`50 Geier at ¶ 40.
`51 This petition uses italics to refer to claim language in the ’550 patent.
`52 ’550 patent at 2:3-7.
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`example, the ’550 patent states that “[t]he USB specifies a process for transferring
`
`energy across the USB called enumeration and limits the electrical current that can
`
`flow across the USB.”53
`
`From this disclosure, POSITAs would have understood that when the ’550
`
`patent’s specification refers to “enumeration,” it is referring to a specific bus-
`
`enumeration procedure in the USB 2.0 specification or an earlier USB
`
`specification at the time of the alleged invention.54 For example, the ’550 patent
`
`describes enumeration as a “host-initiated process” needed “to be compliant with
`
`the current USB specification in drawing power from the USB interface.”55
`
`Consistent with the ’550 patent’s description at column 2, lines 3-7, the USB 2.0
`
`specification describes bus enumeration as a host-initiated process that a USB
`
`device must undergo before it can communicate data over the USB interface.56 See
`
`Section V.B (pp. 5-14). Thus, in the context of the ’550 patent, POSITAs would
`
`have immediately recognized that “enumeration” refers to the bus-enumeration
`
`procedure in the USB 2.0 specification or an earlier USB specification.57
`
`VII. Grounds of Rejection (§ 42.104(B)(1)-(2), (4))
`
`Petitioner requests that the Board review and cancel claims 1-18 of the ’550
`
`53 ’550 patent at 8:17-20.
`54 Geier at ¶ 42.
`55 ’550 patent at 2:3-7.
`56 Geier at ¶ 37 (citing USB 2.0 at 243).
`57 Geier at ¶¶ 37, 42.
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`patent on the following grounds.
`
`Ground Claims
`1
`1-3, 9-12, 18
`2
`4-8, 13-17
`
`Basis
`pre-AIA 35 U.S.C. § 103(a)
`pre-AIA 35 U.S.C. § 103(a)
`
`Reference(s)
`Rogers
`Rogers and Shiga
`
`A. Ground 1: Rogers renders obvious claims 1-3, 9-12, and 18.
`
`1.
`
`Rogers
`
`In this petition, “Rogers” refers to Exhibit 1005, which is U.S. Patent
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`6,556,564 B2, naming Steven A. Rogers as its inventor. Rogers was not cited to the
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`Patent Office or considered by the examiner during the prosecution of the
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`application that issued as the ’550 patent.
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`a.
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`Prior art status
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`Under pre-AIA 35 U.S.C. § 102(e), Rogers is prior art for two independent
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`reasons: (1) Rogers’ February 8, 2001 filing date predates the ’550 patent’s earliest
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`claimed priority date, March 1, 2001; and (2) the February 8, 2000 filing date of
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`the provisional application to which Rogers claims priority (“Rogers provisional”)
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`predates the ’550 patent’s earliest claimed priority date.
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`Rogers is entitled to the Rogers provisional filing date because the Rogers
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`provisional fully supports at least one claim of Rogers. See Benitec Biopharma Ltd.
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`v. Cold Spring Harbor Laboratory, IPR2016-00017, Paper 7 at 7 (P.T.A.B. Apr. 6,
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`2016) (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1381 (Fed. Cir. 2015)) (To show a challenged patent is entitled to the earlier filing
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`date of its priority provisional application, “Petitioner must demonstrate that the
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`provisional application provides written description support for at least one claim
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`of the [challenged] patent.”). Appendix A to this petition contains a claim chart
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`demonstrating that the Rogers provisional fully supports claim 1 of Rogers.58
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`b.
`Rogers taught a local area network (“LAN”) telephone.59 An embodiment of
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`Rogers overview
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`the LAN telephone appears in Rogers’ Figure 1, reproduced below.60
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`In Figure 1, the LAN telephone has a base unit 6 and an operator console 7.61 The
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`base unit 6 receives power from a LAN cable 1 and delivers power via an
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`accessory connector, such as connector 4, to the operator console 7.62
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`58 This petition focuses on Rogers’ Figures 1, 6, 7a, and 7b, plus Rogers’
`description of those figures. The Rogers provisional (Ex. 1013) also contains those
`figures and the accompanying description. Geier at ¶ 141.
`59 Rogers at 4:7-8.
`60 Rogers at 3:39-41, 4:7-9, FIG. 1.
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`To connect the base unit 6 to telephone accessories, Rogers uses “a modified
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`USB” (also called an “enhanced USB”),63 which stands “[i]n contrast” to
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`conventional USB specification limits.64 Rogers recognized that “[o]ne difficulty
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`with the existing USB is that it has only a limited capability to provide power to a
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`connected device.”65 To overcome the maximum 2.5 Watts of power available to
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`peripheral devices in existing USB applications, Rogers’ telephone utilizes a “dual-
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`voltage accessory power system” to “alternatively supply power at 48 VDC,
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`instead of 5 VDC, thus increasing power consumption by a factor of 10.”66
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`
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`An embodiment of Rogers’ telephone accessory power system appears in
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`Rogers’ Figures 7(a) and (b), reproduced below.67
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`61 Rogers at 4:8-12, 4:20-23.
`62 Rogers at Rogers at 4:15-16, 10:21-24, 11:20-24, FIGS. 6, 7(a) & 7(b).
`63 Rogers at 10:64-67, 16:38-41.
`64 Rogers at 10:62-67.
`65 Rogers at 10:67-11:2.
`66 Rogers at 11:5-19.
`67 Rogers at 11:20-21, FIGS. 7(a) & 7(b).
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`Figure 7(a) shows a source power system of the base unit 6.68 Figure 7(b) shows an
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`internal power system of the accessory (e.g., the console 7).69 The source power
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`system provides power to the accessory unit via an accessory connector 104 (e.g.,
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`“a USB ‘A’ connector”).70 Power enters the accessory “via a standard USB ‘B’
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`connector 105.”71 Each connector has four pins. Power pin 1 and ground pin 4 are
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`used for power “at either 5VDC or at 48 VDC,”72 and pins 3 and 4 are “used for
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`data transfers.”73
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`In operation, “when an accessory is connected, the accessory is queried by
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`the base unit microprocessor 74, via the USB interface 55, to determine if the
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`accessory uses 48 VDC.”74 “Such a query may, for example, be provided to the
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`accessory over the data lines of the modified USB interface.”75 “If the
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`microprocessor 74 determines that the accessory uses 48 VDC, then the
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`microprocessor 74 switches the voltage to 48 VDC.”76
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`68 Rogers at 11:22-24.
`69 Rogers at 11:24-25.
`70 Rogers at 11:28-31.
`71 Rogers at 12:14-15.
`72 Rogers at 11:32-36.
`73 Rogers at 11:33-34.
`74 Rogers at 11:44-48.
`75 Rogers at 11:48-50.
`76 Rogers at 11:51-54.
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`An embodiment of the operator console 7 appears in Rogers’ Figure 8,
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`reproduced below.77
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`In Figure 8, the console includes “100 small buttons and 100 LED indicators.”78
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`“[A] typical LED indicator uses 20 milli-Amps.”79 “One of the USB Interfaces 123
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`is used for ‘Upstream’ communications, to the base unit, and another one is used
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`for ‘Downstream’ communications, to additional accessories.”80 “The console
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`accessory of FIG. 8 is an example of a device that generally needs more power
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`than 0.5 Watts.”81
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`77 Rogers at 12:46-47.
`78 Rogers at 12:47-48.
`79 Rogers at 11:8-9.
`80 Rogers at 12:65-13:13
`81 Rogers at 12:57-59.
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`c.
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`Analogous art
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`For obviousness purposes, “[t]wo separate tests define the scope of
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`analogous prior art: (1) whether the art is from the same field of endeavor,
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`regardless of the problem addresses, and (2) if the reference is not within the field
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`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved.” In re Bigio, 381 F.3d
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`1320, 1325 (Fed. Cir. 2004). A reference is analogous art if it meets either of these
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`tests. See id. Rogers is analogous art to the ’550 patent under either test.
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`First, Rogers is from the same field of endeavor as the ’550 patent. For
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`example, the ’550 patent states its “invention relates generally to power
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`adapters.”82 Rogers also relates to power adapters. For example, Rogers taught a
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`telephone base unit 6 that receives power, adapts the received power, and supplies
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`power at either 48 VDC or 5 VDC.83
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`Second, Rogers is at least reasonably pertinent to the particular problem with
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`which the named inventors of the ’550 patent were involved. The ’550 patent
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`specification described departures from the USB specification in order to signal
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`with and power a device via USB.84 Similarly, Rogers departed from USB
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`82 ’550 patent at 1:46.
`83 Rogers at 10:26-28, 11:14-21.
`84 ’550 patent at 9:65-10:11.
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`enumeration and USB voltage and current limits in order to signal with and power
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`a device via USB.85
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`For each of these two independent reasons, Rogers is analogous art to the
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`’550 patent.
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`2.
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`Application of Rogers to claims 1-3, 9-12, and 18
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`Rogers renders obvious claims 1-3, 9-12, and 18 as explained below.
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`a.
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`Claim 1
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`Rogers renders obvious claim 1 as explained below.
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`An adapter
`i.
`Rogers taught an adapter.86 Rogers’ base unit 6, shown in Figure 1, meets
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`the adapter element. Rogers’ Figure 7(a) is also shown below for context.
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`In particular, the base unit 6 “obtains its operating power from the LAN
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`cable 1 shown in FIG. 1, through the Lan Connector 67.”87 In one embodiment, the
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`
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`85 Rogers at 10:67-11:56, FIGS. 7(a) & 7(b).
`86 Geier at ¶¶ 55-57.
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`LAN cable 1 delivers power “as 48VDC.”88 “Alternatively, the delivered power [to
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`the base unit 6] could be other voltages, or even AC [alternating current].”89 The
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`base unit 6 utilizes a “dual-voltage accessory power system,” also called a “source
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`power system,” which is shown in Figure 7(a).90 The source power system “allows
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`the LAN telephone to alternatively supply power at 48VDC, instead of 5 VDC,
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`thus increasing the power consumption by a factor of 10.”91 Thus, the base unit 6
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`receives power (“as 48VDC,” “other voltages, or even AC”) and its source power
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`system adapts the received power and supplies power at either 48 VDC or 5
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`VDC.92 Therefore, the base unit 6, including its source power system, meets the
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`adapter claim element.
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`To be sure, Rogers’ base unit 6 is within the scope of examples of adapters
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`described in the ’550 patent’s specification. The ’550 patent’s specification
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`provides the following examples of adapters: (i) a wall adapter;93 (ii) a pass-
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`through device that creates a communication path between a USB hub or host and
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`a mobile device;94 and (iii) something that “may be embodied in a USB host or
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`87 Rogers at 5:43-45.
`88 Rogers at 10:26-27.
`89 Rogers at 10:27-28.
`90 Rogers at 11:14-15, 11:20-21.
`91 Rogers at 11:16-19.
`92 Rogers at 10:26-28, 11:14-21.
`93 ’550 patent at 2:19-33.
`94 ’550 patent at 8:60-62.
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`hub.”95 In each example, the adapter is a device adapted to provide power. As
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`discussed above, Rogers’ base unit 6 is adapted to provide power.
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`ii.
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`a USB VBUS line and a USB communication
`path
`Rogers taught that the base unit 6 (i.e., the adapter) comprises a USB VBUS
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`line and a USB communication path. For example, Rogers’ base unit 6 has a USB
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`A connector 104, which is shown in Figure 7(a), reproduced below with
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`annotations.96 The red line represents the USB VBUS line. The USB
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`communication path comprises the D+ and D- lines plus USB connector 104
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`(annotated in blue below).
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`95 ’550 patent at 8:46-62, 11:41-43.
`96 Geier at ¶¶ 58-59.
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