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`Paper No. 42
`Filed November 21, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA) Inc.,
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`Petitioner,
`
`v.
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`Fundamental Innovation Systems International LLC,
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`Patent Owner.
`
`
`Case IPR2018-00111
`Patent 8,624,550
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`
`
`
`Before RAE LYNN P. GUEST, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Patent 8,624,550
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`Table of Contents
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`
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`Introduction .................................................................................................................... 1
`I.
`Claim Construction ....................................................................................................... 3
`II.
`III. Ground 1: The Rogers Patent Renders Obvious Claims 1–3, 9–12, and 18 ........ 4
`A.
`The Rogers Patent Taught Supplying Current at a Voltage in
`Excess of the 5.25V Voltage Limit Specified in the USB 2.0
`Specification (Claims 1 and 10)........................................................................ 5
`The Rogers Patent Taught Supplying Current in Excess of the
`500mA and 100mA Current Limits Specified in the USB 2.0
`Specification (Claims 1, 2, 9–11, and 18) ....................................................... 6
`The Rogers Patent Specifically Teaches Departing From the USB
`Specification ............................................................................................ 7
`The Rogers Patent Should Be Read for All It Teaches, Unlimited
`By Mr. Rogers’ Specific Commercial Embodiment .......................... 8
`The Rogers Patent Suggests Exceeding the USB Current Limits ............ 10
`The Rogers Patent Teaches Supplying Current Without
`Enumeration (Claims 1, 3, 10, and 12) ......................................................... 12
`IV. Ground 2: The Rogers and Shiga Patents In Combination Render Obvious
`Claims 4–8 and 13–17 ............................................................................................................. 14
`A.
`A Person Skilled in the Art Would Have Been Motivated to
`Combine the Rogers and Shiga Patents ....................................................... 15
`Shiga Is Analogous Art ................................................................................... 17
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`B.
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`C.
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`B.
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`Cases
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`Table of Authorities
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`In re Heck,
`699 F.2d 1331 (Fed. Cir. 1983) ................................................................................ 8, 9, 14
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .................................................................................. 8, 9, 14
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................................... 10, 14
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ............................................................................................. 4
`Merck & Co. v. Biocraft Labs., Inc.,
`874 F.2d 804 (Fed. Cir. 1989) .................................................................................. 8, 9, 14
`Other Authorities
`
`Manual of Patent Examination Procedure § 2123
`(8th ed. 8th rev. 2012) ............................................................................................... 8, 9, 14
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`Statement of Material Facts
`Patent Owner did not submit a statement of material facts in its Patent
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`
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`Owner’s Response. Therefore, this reply need not provide a response pursuant to 37
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`C.F.R. § 42.23(a), and no facts are admitted.
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`I.
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`Introduction
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`The challenged ’550 patent broadly claims an adaptor that departs from the
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`USB specification by supplying VBUS current without regard to conditions set forth
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`in the USB specification. The prior art Rogers patent teaches exactly that—for the
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`specific purpose of providing more power than USB-compliant devices were intended
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`to provide. Patent Owner argues that Rogers taught only departing from the USB
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`voltage limits, not the USB current limits, and that a person of skill in the art would have
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`otherwise felt rigidly restricted by the USB specification. Neither the teachings of the
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`Rogers patent nor the established standards of obviousness are so restrictive.
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`The Rogers patent specifically described a “modified USB for interconnection of
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`telephone accessories to the disclosed LAN telephone,” distinguishing this “modified
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`USB” from standard USB. Nothing in the Rogers patent suggests that its departure
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`from the USB specification was limited to a higher voltage. Indeed, the Rogers patent
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`specifically criticized the USB current limits and provided examples that would result
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`in higher currents. Likewise, Rogers taught a 48V-compatible query and response
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`protocol that departed from the strict USB specification. In light of these teachings,
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`one skilled in the art would not have felt rigidly bound by the USB specification.
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`Patent Owner responds by changing the teachings of the Rogers patent. With
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`testimony from Dr. Fernald and Mr. Rogers himself, Patent Owner seeks to limit the
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`teachings of the Rogers patent to the specific commercial embodiment that
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`1
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`Mr. Rogers apparently chose to employ. However, the prior art at issue here is the
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`Rogers patent, and its teachings are much broader. For example, nothing in the Rogers
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`patent suggests rigid adherence to then-existing USB current limits or enumeration
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`requirements. Rather, the Rogers patent teaches, or at the very least suggests, departing
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`from these requirements to provide a system with more flexible power supply.
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`Indeed, rather than disclosing the specific implementation that Mr. Rogers now
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`describes in his declaration, the Rogers patent left such details to the discretion of the
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`implementer. For example, the Rogers patent generally taught using a query and
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`response to identify devices that could accept power at 48V—without limiting the
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`query and response to any particular implementation. Nothing in the Rogers patent
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`suggests restricting this query and response to the specific implementation Mr. Rogers
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`now describes in his declaration. Rather, one skilled in the art reading the Rogers
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`patent would have been motivated to consider and try alternative solutions, such as
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`the signaling described in Shiga—which also taught departing from the rigid
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`requirements of the USB specification.
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`The key feature of the ’550 patent was to depart from the USB specification to
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`provide more flexible power supply. The Rogers patent had previously suggested
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`exactly the same thing. Reading the Rogers and Shiga patents for the full breadth of
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`what they taught and suggested to those of skill in the art, every claim of the ’550
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`patent would have been obvious and should be canceled.
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`II. Claim Construction
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`Petitioner respectfully submits that the Board too narrowly interpreted claim 1
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`and the phrase “to supply current . . . without regard to at least one associated
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`condition in a USB Specification.”1 The Board correctly noted that the word
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`“associated” refers back to the supply of current, but the Board overlooked the fact
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`that current is supplied at a particular voltage. All other things being equal, Ohm’s
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`law would have told those of skill in the art that limiting the supply voltage necessarily
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`would also limit the current. Accordingly, a voltage limit is a condition “associated”
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`with the supply of current.
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`Patent Owner argues that the “condition” and “limit” recited in claims 1 and
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`10 should both be interpreted narrowly as limited to current conditions because, for
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`example, a USB device communicates power need in units of current.”2 These
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`extrinsic arguments are both irrelevant and miss the point that a voltage limit also
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`serves to limit the current, all other things being equal, and therefore is a condition
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`“associated” with the supply of current. Indeed, the Board’s analysis of the intrinsic
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`evidence in its construction of claim 10 is more on point and supports the broader
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`interpretation of claim 1 as well.3
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`1 See Paper No. 16 at 7.
`2 Paper No. 33 at 17.
`3 Paper No. 16 at 10 (“The ’550 patent written description indicates, instead, that the
`USB specification imposes multiple ‘limits’ with respect to how a USB host provides
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`Moreover, the doctrine of claim differentiation suggests that the “associated
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`condition” recited in claim 1 is broader than just a current limit because claim 2
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`requires that “said associated condition is a current limit.”4 The Board’s interpretation
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`of claim 1 would render claim 2 superfluous. See Liebel-Flarsheim Co. v. Medrad, Inc.,
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`358 F.3d 898, 910 (Fed. Cir. 2004) (“As this court has frequently stated, the presence
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`of a dependent claim that adds a particular limitation raises a presumption that the
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`limitation in question is not found in the independent claim.”). Accordingly,
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`Petitioner respectfully requests that the Board reconsider its construction of this
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`limitation to include supplying current without regard to a voltage limit in the USB
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`Specification, particularly under the broadest reasonable interpretation standard.
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`For the same reasons, Petitioner submits that the Board correctly interpreted
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`claim 10 and the phrase “to supply current . . . without regard to at least one USB
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`Specification imposed limit.” As the Board concluded, a voltage limit is a “USB
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`Specification imposed limit” that affects the supply of current.5
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`III. Ground 1: The Rogers Patent Renders Obvious Claims 1–3, 9–12, and 18
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`Patent Owner does not dispute that the Rogers patent taught both “a USB
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`VBUS line and a USB communication path,” as recited in claim 1 of the ’550 patent.
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`Patent Owner’s only arguments regarding independent claim 1 go to the only other
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`‘power’ (current x voltage) over a USB interface.”).
`4 Ex. 1001 (“’550 patent”) at 12:13-14.
`5 Paper No. 16 at 9-10.
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`substantive limitation in the claim: “said adapter configured to supply current on the
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`VBUS line without regard to at least one associated condition specified in a USB
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`specification.”6 With respect to independent claim 10, Patent Owner similarly argues
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`that the Rogers patent did not teach an adapter “configured to supply current on the
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`VBUS line without regard to at least one USB Specification imposed limit.”7 Patent
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`Owner’s arguments rest on an improperly narrow read of the Rogers patent’s
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`teachings, and those arguments fail for the same three reasons set forth in the
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`Petition.
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`A.
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`The Rogers Patent Taught Supplying Current at a Voltage in
`Excess of the 5.25V Voltage Limit Specified in the USB 2.0
`Specification (Claims 1 and 10)
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`As Petitioner argues above, the “associated condition specified in a USB
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`Specification” recited in claim 1 should be interpreted to include the 5.25V voltage
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`limit set forth in the USB 2.0 specification. It is undisputed that the Rogers Patent
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`taught supplying current on VBUS at a supply voltage of 48V, which greatly exceeds
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`the USB 2.0 specification’s voltage limit.8 Accordingly, if the Board reconsiders its
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`construction of the “associated condition” to include a voltage limitation, then the
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`Rogers patent’s teaching of supplying current on VBUS at 48V satisfies the
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`6 See Paper No. 33 at 20-39.
`7 See Paper No. 33 at 39.
`8 Ex. 1005 (“Rogers patent”) at 11:34-36, FIGS. 7(a), 7(b); Paper No. 16 at 11; Paper
`No. 33 at 9; Ex. 1009 (“Geier Decl.”) at ¶ 64; Ex. 2011 (“Fernald Decl.”) at ¶ 70.
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`requirement in claim 1 of supplying current “without regard to at least one associated
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`condition specified in a USB specification.9
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`Likewise, under its construction of claim 10, the Board correctly concluded that
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`the Rogers patent taught the limitations of that claim, including supplying current
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`“without regard to at least one USB Specification imposed limit.” 10
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`B. The Rogers Patent Taught Supplying Current in Excess of the
`500mA and 100mA Current Limits Specified in the USB 2.0
`Specification (Claims 1, 2, 9–11, and 18)
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`The second reason the Rogers patent taught supplying current without regard
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`to an “associated condition” is that the Rogers patent provided examples that exceed
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`the current limits set forth in the USB 2.0 specification.11 Patent Owner argues that
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`the Rogers patent should be read as strictly adhering to the USB specification’s
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`current limits, but this argument rests on multiple flaws. First, Patent Owner’s
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`suggestion that one skilled in the art would have felt bound by the USB specification
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`runs contrary to the specific teaching in the Rogers patent to depart from the USB
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`specification. Second, Patent Owner seeks to improperly limit the teaching of the
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`Rogers patent to a specific commercial embodiment that Mr. Rogers described in his
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`declaration—but not in his patent. Third, the Rogers patent specifically criticized the
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`USB current limits and suggested examples that would depart from those limits.
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`9 Paper No. 1 at 26-27.
`10 Paper No. 16 at 14, 17; See also Paper No. 1 at 34.
`11 Paper No. 1 at 28-29.
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`The Rogers Patent Specifically Teaches Departing From the USB
`Specification
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`Throughout its Response, Patent Owner assumes that one skilled in the art
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`necessarily would have hewed closely to the current limits and other restrictions
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`provided in the USB specification. For example, Patent Owner quotes Mr. Rogers
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`himself as stating that “to ensure maximum compatibility with accessories and
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`associated cables, the power supply system in the Rogers system was limited to the
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`500 mA of supply current.”12 This quote comes from Mr. Rogers’ declaration, not
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`from his patent. The Rogers patent provided no such teaching. Similarly, Patent
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`Owner and Dr. Fernald assume that the Rogers patent’s operator console is a USB-
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`compliant bus-powered hub, even though the Rogers patent never describes it as
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`such.13
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`What the Rogers patent actually describes is a “modified USB interface” that is
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`specifically intended to provide more power than would normally be permitted by the
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`USB specification. In describing this modified USB interface, the Rogers patent
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`expressly criticized the strict current limits imposed by the USB specification.14 The
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`Rogers patent distinguished its disclosed system, describing its system as “in contrast”
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`to standard USB. In other words, the Rogers patent specifically taught away from
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`12 Paper No. 33 at 25.
`13 Paper No. 33 at 31, n.11; Fernald Decl. at ¶ 80, n.7.
`14 Rogers patent at 11:2-11.
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`using standard USB. Patent Owner’s assertions that one skilled in the art reading the
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`Rogers patent would have felt constrained by the USB specification are misplaced.
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`Yes,
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`the Rogers patent emphasizes
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`its dual-voltage solution, which
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`undisputedly would have violated the USB specification’s voltage limits. But the
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`broader teaching of the Rogers patent is that one may depart from the USB
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`specification to provide increased power, and this may include exceeding the strict
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`current limits. Moreover, nothing in the Rogers patent suggests an otherwise rigid
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`adherence to USB current limits.
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`The Rogers Patent Should Be Read for All It Teaches, Unlimited
`By Mr. Rogers’ Specific Commercial Embodiment
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`A prior art reference should be read for its full and broad disclosure, not just its
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`preferred embodiments. See Manual of Patent Examination Procedure § 2123 (8th ed.
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`8th rev. 2012) (hereinafter “M.P.E.P.”) (“A reference may be relied upon for all that it
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`would have reasonably suggested to one having ordinary skill in the art, including
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`nonpreferred embodiments.”) (citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
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`807 (Fed. Cir. 1989) (instructing “the fact that a specific [embodiment] is taught to be
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`preferred is not controlling, since all disclosures of the prior art, including unpreferred
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`embodiments, must be considered.”); see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
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`2006) (quoting In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (“The use of
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`patents as references is not limited to what the patentees describe as their own
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`inventions or to the problems with which they are concerned. They are part of the
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`literature of the art, relevant for all they contain.”)). Rather than acknowledging the
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`broad disclosure of the Rogers patent, Patent Owner interprets the reference as
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`limited to a single embodiment. Even worse, Patent Owner would limit the Rogers
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`patent’s teachings to an undisclosed, commercial embodiment developed by the patent’s
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`author, Mr. Rogers.
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`Much of Patent Owner’s Response rests on the declaration of Mr. Rogers
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`himself. Mr. Rogers goes to great lengths to describe a commercial telephone system
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`he developed for Cetacean Networks, Inc.15 In his declaration, Mr. Rogers includes
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`many details that he did not disclose in the Rogers patent, including his decision that
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`the commercial embodiment should strictly adhere to the current limits of the USB
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`specification.16 Even if Mr. Rogers had disclosed his specific embodiment in the
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`Rogers patent (which he clearly did not), use of the Rogers patent as prior art still
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`would not be limited to that preferred embodiment. See M.P.E.P. § 2123; Kahn, 441
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`F.3d at 990 ("[T]he teaching of [a reference] is not limited to the specific invention
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`disclosed."); .Merck, 874 F.2d at 807; Heck, 699 F.2d at 1332-33.
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`Perhaps some of those skilled in the art would have made the same
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`implementation decisions as Mr. Rogers, depending on the specific requirements of
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`their project designs. But that does not negate the broader teaching of the Rogers
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`15 Rogers Decl. at ¶¶ 4, 7-30.
`16 Rogers Decl. at ¶ 9.
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`patent, which suggests departing from the USB specification’s strict limits to provide
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`higher power. Based on the teachings in the Rogers patent, it would have been
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`obvious to one of ordinary skill in the art that they could supply current without
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`regarding to the USB current limits. In other words, it would have been obvious to try,
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`which is all the law requires in a predictable field with a finite number of solutions.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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`The Rogers Patent Suggests Exceeding the USB Current Limits
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`The examples described in the Rogers patent provide a suggestion to depart
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`from the strict current limits of the USB specification.17 The Rogers patent describes
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`a number of examples of telephone accessories that can be used with the system
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`described in the patent. The Petition highlighted one such example, which is an
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`operator console including up to 100 LED indicators associated with different
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`telephone lines. The Rogers patent teaches that each of these LEDs would require
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`20mA of current, resulting in a potential combined draw of up to 2A, which far
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`exceeds the USB VBUS current limits of 100mA and 500mA.
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`Patent Owner criticizes this example on the basis that it rests on the current
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`necessary to drive the LEDs, not necessarily the current required on VBUS.18 Patent
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`17 To be clear, Petitioner is relying on obviousness, not inherency. It would have been
`obvious to one skilled in the art reading the Rogers patent to supply current without
`regard to the USB specification’s current limits.
`18 Paper No. 33 at 26-28.
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`Owner also unfairly criticized Mr. Geier’s testimony on this subject, citing his
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`testimony far out of context.19
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`The problem with Patent Owner’s analysis is that Patent Owner again assumes
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`the operator console works only in 48V mode. Thus, according to Patent Owner’s
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`calculations, driving all 100 LEDs in 48V mode would require only 225mA of current
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`on VBUS.20 However, the Rogers patent never states that the operator console works
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`only in 48V mode. The patent simply states that the operator console is one type of
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`accessory that would require more than the 500mA of current permitted by the USB
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`specification.21 Indeed, using Patent Owner’s own calculations from the annotated
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`version of FIG. 7(b), if the operator console were connected in 5V mode, it would
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`require up to 1.73A of current on VBUS just to drive the LEDs.22 This would far
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`exceed the USB specification’s current limit of 500mA.
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`The Rogers patent also provides another example in the form of a
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`speakerphone accessory, which the Rogers patent taught could exceed 2.5W of power
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`19 Patent Owner repeatedly mischaracterizes and cites out of context Mr. Geier’s
`testimony. Patent Owner also dedicates an entire section of its Response to a
`criticism of Mr. Geier’s testimony. Reading Mr. Geier’s testimony in context, it is
`clear that Patent Owner’s criticisms are misplaced and that Mr. Geier’s so-called
`“admissions” were based on the proper distinction between USB-compliant devices
`and the non-compliant devices taught in the Rogers patent.
`20 Paper No. 33 at 27 (annotated version of FIG. 7(b) from the Rogers patent).
`21 Rogers patent at 12:56-59.
`22 Paper No. 33 at 27 (1.73A at 5V required to drive 2.1A at 3.3V to LEDs, as shown
`in annotated version of FIG. 7(b) from the Rogers patent).
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`draw all by itself.23 Like the operator console, the Rogers patent does not limit the
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`speakerphone accessory to operating in the 48V mode. During cross examination,
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`Dr. Fernald conceded that the speakerphone accessory may operate in either the 5V
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`or the 48V mode.24 In the 5V mode, the speakerphone would thus require 500mA or
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`more all by itself, which would require a clear disregard for the USB specification’s
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`current limits.
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`Moreover, the Rogers patent expressly teaches that multiple accessories may be
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`“daisy-chained.”25 As a result, the VBUS line would need to carry enough current to
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`drive all of the daisy-chained accessories.26
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`Thus, the Rogers patent teaches, or at least suggests, supplying current on VBUS
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`without regard for the USB current limits. This teaching or suggestion renders
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`obvious independent claims 1 and 10, as well as dependent claims 2, 9, 11, and 18.
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`C. The Rogers Patent Teaches Supplying Current Without
`Enumeration (Claims 1, 3, 10, and 12)
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`As with the current limits, Patent Owner assumes that the system described in
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`the Rogers patent would be fully USB-compliant (except for the 48V supply voltage)
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`and therefore would necessarily require USB enumeration for all devices.27 The
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`23 Rogers patent at 11:23-24.
`24 Ex. 1015 (“Fernald transcript”), at 27:15-20, 28:4-11, 60:16-61:6.
`25 Rogers patent at 12:41-45.
`26 Fernald transcript at 35:9-12.
`27 Paper No. 33 at 34-39.
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`Rogers patent includes no such requirement.
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`In its Institution Decision, the Board also assumed that the Rogers patent
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`required enumeration, noting that “both parties agree that under the USB
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`specification a USB device must be configured (the last step in the enumeration
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`process) before its functions may be accessed.”28 However, this agreement between
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`the parties is limited to USB-compliant devices. The Rogers patent specifically
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`teaches that the LAN telephone system and accessories are not USB-compliant.
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`Instead, Rogers teaches using a modified USB, and there is nothing in the Rogers patent
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`to suggest that this modified USB uses enumeration. As the Board noted, the Rogers
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`patent explains that the console is designed to communicate with both the base unit
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`and downstream accessories, but again, Rogers does not require that such
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`communications follow enumeration or otherwise be strictly USB-compliant. On the
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`contrary, the only communications described in the Rogers patent that even resemble
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`enumeration are the query and response used to identify 48V-compatible devices.29
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`But the 48V supply voltage most certainly departs from the USB specification, and
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`the associated query and response described in the Rogers patent is definitely not part
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`of the USB enumeration process.30
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`Patent Owner also relies on Mr. Rogers’ extremely detailed recitation in his
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`28 Paper No. 16 at 16.
`29 Rogers patent at 11:48-53.
`30 See Paper No. 1 at 30-31.
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`Declaration of how he apparently would have implemented USB enumeration in his
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`previously undisclosed commercial embodiment.31 Again, the Rogers patent teaches
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`none of this. But even if Mr. Rogers had described his preferred embodiment in the
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`Rogers patent, it still would be improper to limit its teaching to that embodiment. A
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`prior art reference must be read for the full and broad scope of its teachings, not just
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`a specific embodiment. See M.P.E.P. § 2123; Kahn, 441 F.3d at 990; Merck, 874 F.2d at
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`807; Heck, 699 F.2d at 1332-33.
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`The broad disclosure in the Rogers patent teaches departing from the USB
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`specification, including using a query and response protocol to identify devices that is
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`like enumeration but is not enumeration. These teachings would have at least
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`suggested to one of skill in the art that current could be supplied on VBUS, just as the
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`Rogers patent describes, without enumeration. In a predictable field with a finite
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`number of solutions, it certainly would have been obvious to try. KSR, 550 U.S. at
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`421. Accordingly, the Rogers patent renders claims 1, 3, 10, and 12 obvious, and
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`those claims should be canceled.
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`IV. Ground 2: The Rogers and Shiga Patents In Combination Render
`Obvious Claims 4–8 and 13–17
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`The crux of Patent Owner’s argument regarding Ground 2 overlaps almost
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`exactly with the flaws in its Ground 1 analysis. Patent Owner assumes that the Rogers
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`31 Paper No. 33 at 35-38; Rogers Decl. at ¶¶ 25-26.
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`patent teaches only full USB compliance (but for the 48V supply voltage) and then
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`assumes that use of Shiga’s “fourth mode” or “SE1” signal would interfere with the
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`standardized USB communications described in the Rogers patent. For the same
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`reasons explained above, this is simply not the case.
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`A.
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`A Person Skilled in the Art Would Have Been Motivated to
`Combine the Rogers and Shiga Patents
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`In relevant part, the Rogers patent begins by criticizing the USB specification
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`for its inflexibility and then specifically teaches departing from the standard.32 The
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`Rogers patent describes a “modified USB” that stands “in contrast” to the
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`“standardized” USB.33 At the very least, the Rogers patent suggests departing from
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`standardized USB communications. Indeed, the very suggestion of a query and
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`response protocol to identify 48V-compatibile devices is a direct departure from the
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`standardized USB communications.
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`Given that the USB specification provides no standardized protocol for
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`identifying 48V-compatible devices, it is natural to think that one skilled in the art
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`would look beyond the USB specification for a mechanism to implement the query
`
`and response of the Rogers patent while still using the physical USB interface. There
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`would have been a particular motivation to consider other references because the
`
`
`32 Rogers patent at 10:67-11:10.
`33 Rogers patent at 10:62-67 (emphasis added).
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`15
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`Case IPR2018-00111
`Patent 8,624,550
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`Rogers patent did not specify the precise format of the signaling.34 Shiga’s SE1
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`signaling, which uses the D+ and D- lines of a USB connector, would have been a
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`natural fit.35
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`Patent Owner and the Board both noted that in traditional USB-compliant
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`devices, use of the SE1 signal would be an “abnormal condition” that would disable a
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`standard USB port. Again, the Rogers patent specifically suggests a modified USB that
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`departs from standardized USB. Accordingly, one skilled in the art looking for a
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`specific signaling solution to implement the Rogers patent’s “query and response”
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`would not have felt unduly constrained by the USB specification and could easily have
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`designed the system to react differently to the SE1 signal (i.e., recognize the device as
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`48V-compliant, rather than disabling the port).
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`Patent Owner argues that Shiga provides no advantage over the system in the
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`Rogers patent, which “already conveys 48VDC configuration.”36 This argument
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`seems to assume the teaching of details from the Fernald and Rogers declarations—
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`details that are not taught in the Rogers patent. Indeed, Dr. Fernald acknowledges that
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`one skilled in the art would need to reach beyond the Rogers patent for a specific
`
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`34 Paper No. 1 at 40-41.
`35 Paper No. 1 at 37-46.
`36 Paper No. 33 at 53.
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`16
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`Patent 8,624,550
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`signaling format. Dr. Fernald suggests the prior art Amoni reference, but that does
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`not mean one skilled in the art might not also have considered Shiga.37
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`Patent Owner’s argument also once again improperly assumes that the Rogers
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`patent requires USB enumeration.38 Setting aside this improperly narrow assumption,
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`one skilled in the art would have been motivated to combine the broad teachings of
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`the Rogers patent with the SE1 signaling in Shiga, and claims 4–8 and 13–17 would
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`have been obvious in view of this combination.
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`B.
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`Shiga Is Analogous Art
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`Patent Owner argues that Shiga does not relate to power adaptors and
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`therefore is disqualified as analogous prior art. This argument fails for two reasons.
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`First, Shiga does relate to power adaptors, as explained in the Petition.39 Second, the
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`more pertinent question is to what field one skilled in the art would have looked for a
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`signaling protocol that could be used to implement the “query and response”
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`described in the Rogers patent. For that, one skilled in the art would have looked
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`more generally to teachings of signaling using the four lines provided in a physical
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`USB interface. Shiga falls squarely into that field.40
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`
`
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`37 Paper No. 33 at 53; Fernald Decl. at ¶ 94.
`38 Paper No. 33 at 53.
`39 Paper No. 1 at 39-40.
`40 Paper No. 1 at 40.
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`17
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`Case IPR2018-00111
`Patent 8,624,550
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`November 21, 2018
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`Respectfully submitted,
`/Charles M. McMahon/
`Charles M. McMahon (Reg. 44,926)
`MCDERMOTT WILL & EMERY LLP
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`18
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`Case IPR2018-00111
`Patent 8,624,550
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`Certificate of Compliance with Word Count
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`Pursuant to 37 C.F.R. § 42.24(d), I certify this reply complies with the type-
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`volume limits of 37 C.F.R. § 42.24(c)(1) because it contains 4,118 words, excluding the
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`parts of this reply that are exempted by 37 C.F.R. 42.24(c), according to the word-
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`processing system used to prepare this petition.
`
`
`
`
`
`
`
`/Charles M. McMahon/
`Charles M. McMahon (Reg. 44,926)
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`
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`
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`Case IPR2018-00111
`Patent 8,624,550
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`Certificate of Service
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`I certify that I sent a copy of the foregoing PETITIONER’S REPLY TO PATENT
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`OWNER’S RESPONSE on November 21, 2018 by electronic mail to the attorneys of
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`record for the Patent Owner at the following e-mail addresses:
`
`Hong Annita Zhong (Reg. No. 66,530)
`hzhong@irell.com
`
`Jason Sheasby (pro hac vice)
`jsheasby@irell.com
`
`FundamentalIPRs@irell.com
`
`
`
`
`
`
`/Brian A. Jones/
`Brian A. Jones (Reg. 68,770)
`
`
`
`
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