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`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.
`___________________
`
`Case IPR2018-00274
`Patent No. 7,834,586
`___________________
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC's
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`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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`

`

`Case IPR2018-00274
`Patent No. 7,834,586
`
`
`TABLE OF CONTENTS
`
`2.
`
`INTRODUCTION ........................................................................................ 1
`I.
`SUMMARY OF THE '586 PATENT........................................................... 7
`II.
`III. THE PRIOR ART REFERENCES DIFFER FROM THE '586
`INVENTIONS ............................................................................................ 11
`A.
`Theobald Overview .......................................................................... 11
`B.
`Shiga Overview ................................................................................ 13
`IV. LEVEL OF ORDINARY SKILL ............................................................... 15
`V.
`Claim Construction ..................................................................................... 15
`VI. GROUND 1: CLAIMS 8-13 ARE NOT RENDERED OBVIOUS
`BY THE PROPOSED COMBINATION OF THEOBALD AND
`SHIGA ........................................................................................................ 16
`A.
`The Petition Should Be Denied Because, As In IPR2018-
`00111, It Fails To Present Any Competent Evidence That
`The SE1 Signal Would Not Interfere With USB Signaling
`And That A POSA Would Have Had a Reasonable
`Expectation of Success In Using SE1. ............................................. 16
`1.
`This Petition Presents the Same Theory and Evidence
`Regarding the Shiga Combination As in IPR2018-
`00111. ..................................................................................... 17
`Petitioners' Evidence Fails To Demonstrate That A
`POSA Would Have Had a Reasonable Expectation of
`Success in Using the SE1 Signaling ...................................... 21
`The Board's Finding in IPR2018-00111 Is Based On
`Petitioners' Failure to Present Competent Evidence on
`the Use of SE1 Signals ........................................................... 25
`Petitioner's New Theory Raised At IPR2018-00215's
`Teleconference Still Does Not Address Why a POSA
`
`3.
`
`4.
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`Case IPR2018-00274
`Patent No. 7,834,586
`
`2.
`
`Would Have Had a Reasonable Expectation of
`Success. .................................................................................. 27
`The Petition Fails To Establish That Shiga Is Analogous Art
`To The '586 Patent ............................................................................ 31
`Petitioners Fail To Explain Why A POSA Would Have Sent
`A Forbidden SE1 Signal Across Theobald's Data Lines When
`Theobald Teaches Data Transfer "According to" A "Suitable
`High Speed Data Communication Protocol" (All Challenged
`Claims) ............................................................................................. 34
`1.
`The Petition's Reliance On The SE1 Signal Has
`Already Been Rejected By The Board And That
`Rejection Should Resolve The Issues Here. .......................... 35
`The Petition Has Presented No Competent Evidence
`That SE1 Is Compatible With Theobald's Teaching
`To Use A "Suitable High Speed Data Communications
`Protocol."................................................................................ 35
`Petitioner Ignores Other Methods For Identifying
`Accessories That Would Allow For Identification
`Without Violating The USB Standard. .................................. 36
`Petitioner Fails To Address Why Shiga's S1 Signal on
`D+ and D- Would Be Preferable To Other Non-
`standard Identification Signals. .............................................. 40
`Petitioner Fails To Establish That The Theobald/Shiga
`Combination Renders Obvious Having An "Identification
`Signal Being Different Than USB Enumeration" (Claims 8-
`9) ....................................................................................................... 43
`A "Mode That Does Not Permit Charging" Is Not One Of A
`"Plurality Of Charge Modes" (Claims 11-12) .................................. 47
`The Theobald/Shiga Combination Does Not Disclose or
`Render Obvious The Claims Using "A Microprocessor And
`Memory To Process The Signals Received On The USB
`Interface Lines (Claims 11-12). ....................................................... 49
`
`3.
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`4.
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`- ii -
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`B.
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`C.
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`D.
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`E.
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`F.
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`Case IPR2018-00274
`Patent No. 7,834,586
`
`2.
`
`
`
`G.
`
`Petitioner Fails To Present Competent Evidence Suggesting
`A Motivation Would Have Regarded A USB Connector As
`A "Suitable" Replacement of Theobald's J3 Connector And
`Would Have Used Both D+ and D- Lines for Signaling
`(Claims 8-9 & 11-12) ....................................................................... 51
`1.
`Petitioner Failed To Present Competent Evidence That
`A USB Connector Would Have Been A Suitable
`Replacement Of Theobald's J3 Connector. ............................ 51
`Petitioner's Arguments For Combining Theobald And
`Shiga Do Not Withstand Scrutiny. ........................................ 53
`VII. THE PETITION SHOULD BE DENIED UNDER §§ 325(d) and
`315(d). ......................................................................................................... 59
`VIII. CONCLUSION ........................................................................................... 62
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`TABLE OF AUTHORITIES
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`
` Page(s)
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 45
`Asetek Danmark A/S v. Coolit Systems, Inc.,
`IPR2015-01276, Paper 17 (PTAB Dec. 8, 2016) ............................................... 55
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 31
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 33
`In re Deters,
`515 F.2d 1152 (Ct. of Customs and Patent Appeals 1975) ................................ 47
`DSS Tech. Mgmt. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) .......................................................................... 45
`Fox Factory, Inc. v. SRAM, LLC,
`IPR2017-01439, Paper 7 (PTAB Dec. 8, 2017) ................................................. 61
`Google, LLC v. Uniloc Luxembourg S.A.,
`IPR2017-01665, Paper 10 (PTAB Jan. 11, 2018) .............................................. 61
`Halliburton Energy Servs., Inc. v. Schlumberger Tech. Corp.,
`IPR2017-01777, Paper 13 (PTAB Jan. 31, 2018) ................................................ 1
`Initiative for Responsibility in Drug Pricing LLC v. Wyeth LLC,
`IPR2014-01259, Paper 8 (PTAB Feb. 13, 2015) ................................................ 60
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F. 3d 1359 (Fed. Cir. 2016) ......................................................................... 28
`In re Japikse,
`181 F. 2d 1019 (CCPA 1950) ............................................................................. 55
`
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`Case IPR2018-00274
`Patent No. 7,834,586
`
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .......................................................................... 31
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003, Paper 8 (PTAB Oct. 25, 2012) ............................................. 29
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F. 3d 1364 (Fed. Cir. 2016) ......................................................................... 55
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F.3d 1358 (Fed. Cir. 2017) .......................................................................... 53
`In re Nouvel,
`493 F. App’x 85 (Fed. Cir. 2012) ....................................................................... 46
`Parrot SA v. Drone Techs.,
`IPR2014-00372, Paper 29 (PTAB Oct. 20, 2015) .............................................. 31
`Toyota Motor Corp. v. Cellport Systems, Inc.,
`IPR2015-01423, Paper 7 (PTAB Oct. 28, 2015) ................................................ 61
`Tyco Fire Prods. LP v. Victaulic Co.,
`IPR2016-00278, Paper 13 (PTAB Sept. 7, 2016) ............................................... 31
`Wasica Fin. GmbH v. Continental Automotive Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) .................................................................... 28, 31
`ZTE (USA) Inc. v. Fundamental Innovation Systems Int’l LLC,
`2018-00111 ............................................................................................... 3, 18, 27
`ZTE (USA) Inc., v. Fundamental Innovation Systems Int’l LLC,
`IPR2018-00111, Paper 16 (PTAB May 9, 2018) ........................................passim
`Statutes
`35 U.S.C. § 253(a) ..................................................................................................... 1
`35 U.S.C. § 315(d) ............................................................................................. 59, 61
`35 U.S.C. §325(d) .................................................................................... 6, 59, 60, 61
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`

`Case IPR2018-00274
`Patent No. 7,834,586
`
`
`Other Authorities
`37 C.F.R. 42.107(e) .................................................................................................. 59
`37 C.F.R. § 1.321(a) ................................................................................................... 1
`37 C.F.R. § 42.65 ..................................................................................................... 57
`37 C.F.R. § 42.65(a) ................................................................................................... 6
`
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`
`EXHIBIT LIST
`
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`
`Ex. 2001 Declaration of Dr. Kenneth Fernald in Support of Fundamental
`Innovation Systems International LLC's Patent Owner
`Preliminary Response
`Ex. 2002 Excerpts from the USB 2.0 Specification Engineering Change
`Notice (ECN) #1: Mini-B connector, Date: 10/20/2000
`Ex. 2003 Excerpts from USB Complete, Jan Axelson, 1999
`Ex. 2004
`[Intentionally Omitted]
`Ex. 2005 Excerpts from the deposition transcript of John Irving Garney in
`Fundamental Innovation Systems International LLC v. Samsung
`Electronics Co., Ltd. et al., Civil Action No. 2:17-cv-00145-JRG
`(U.S. District Court in the Eastern District of Texas)
`Ex. 2006 Excerpts from USB Complete (2d. Edition), Jan Axelson, 2001
`Ex. 2007 U.S. Patent Publication No. 20050268000A1 (Carlson)
`Ex. 2008
`J3 Connector in Motorola Micro TAC 5200, 7200 Flip Phones
`Ex. 2009
`[Intentionally Omitted]
`Ex. 2010
`[Intentionally Omitted]
`Ex. 2011
`[Intentionally Omitted]
`Ex. 2012 Excerpts from claim construction order in Fundamental
`Innovation Systems Int'l LLC v. Samsung Electronics Co., Ltd.,
`Case No. 2:17-cv-145-JRG-RSP (E.D. Tex., Jan 31, 2018).
`Statutory Disclaimer of Claims 3, 7, 10 and 13 of the '586 patent
`IPR2018-00215 Hearing Transcript dated May 31, 2018
`
`Ex. 2013
`Ex. 2014
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`Case IPR2018-00274
`Patent No. 7,834,586
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner did not submit a statement of material facts. Accordingly, no
`
`response is due pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
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`- viii -
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`

`
`I.
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`INTRODUCTION
`The Petition should be denied because it fails to demonstrate a reasonable
`
`likelihood of prevailing as to any of the challenged claims.
`
`Of note, only the first ground and only claims 8-9 and 11-12 of U.S. Patent
`
`No. 7,834,586 (the "'586 Patent") remain at issue. The second ground was directed
`
`only to claims 10 and 13. Because of a drafting error in the claims, a statutory
`
`disclaimer disclaiming claims 10 and 13 from the Patent has been filed and
`
`recorded in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex.
`
`2013. "'No inter partes review will be instituted based on disclaimed claims.'"
`
`Halliburton Energy Servs., Inc. v. Schlumberger Tech. Corp., IPR2017-01777,
`
`Paper 13 at 3 (PTAB Jan. 31, 2018) (quoting 37 C.F.R. § 42.107(e)).
`
`Consequently, the second ground cannot possibly be a basis for institution.
`
`The remaining ground is centered on the combination of Theobald and
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`Shiga. Petitioner contends it would have been obvious to replace Theobald's J3
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`connector with a USB and employ Shiga's SE1 signal as an "identification signal"
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`allegedly because "POSITAs also would have known that the SE1 condition would
`
`be a logical choice for conveying information about a device without interfering
`
`with USB signaling." Pet. 43.
`
`The Board has already rejected this conclusory assertion that the use of SE1
`
`would be obvious because it does not "interfer[e] with USB signaling." ZTE (USA)
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`Inc., v. Fundamental Innovation Systems Int'l LLC, IPR2018-00111, Paper 16 at
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`Case IPR2018-00274
`Patent No. 7,834,586
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`21-22 (PTAB May 9, 2018). In IPR2018-00111, the same Petitioners supported by
`
`the same expert and the same evidence alleged that a patent from the same family
`
`as the '586, with the same disclosure, was obvious over the combination of Rogers
`
`and Shiga. There, as here, Petitioners argued that it was obvious to utilize Shiga's
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`SE1 (or "fourth mode") signals in combination with another reference (Rogers
`
`there in the place of Theobald) for the same alleged reason. The evidence and
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`rationale presented in the two petitions in support of the combinations are
`
`essentially identical. See Ex. 2001, ¶13 (chart comparing nearly identical
`
`paragraphs in the two petitions).
`
`In both petitions, Petitioners failed to account for what a POSA would
`
`believe were the deleterious consequences of the SE1 signal which the USB
`
`specification states must "never" be "intentionally" sent. Ex. 1008, 123. As the
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`USB specification makes clear and as Samsung's own litigation expert has
`
`confirmed, an SE1 signal lasting longer than 2.5 micro-seconds will cause the
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`attached device to reset and the port to disconnect. Ex. 1008, 316. Shiga's signal
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`lasts "50 ms." Ex. 1006, 6:43-45. Thus, under Petitioners' proposal, the modified
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`Theobald charger with a USB controller would "interfere with USB data
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`communication between Theobald's accessory and adapter," because "sending an
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`SE1 signal repeatedly would place the device into a timed out/suspend state in a
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`continual loop, and, thereby interfere with the operation of the port." Ex. 2001,
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`Case IPR2018-00274
`Patent No. 7,834,586
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`¶33, 37.
`
`The Board in the -00111 case, faced with this evidence, found that,
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`"Petitioner has not sufficiently explained why one of ordinary skill in the art would
`
`have sought to utilize Shiga's SE1 signal in Rogers' system with a reasonable
`
`expectation of success." ZTE (USA) Inc. v. Fundamental Innovation Systems Int'l
`
`LLC, 2018-00111, Paper 16 at 20 (PTAB Oct. 26, 2017). As the Board explained,
`
`"Petitioner and Mr. Geier do not explain how a port-disabling SE1 signal could be
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`used in Rogers' system without interfering with standard USB signaling." Id., 21.
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`Additionally, here, as there, Petitioners identify the same ancillary references—
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`Casebolt, Cypress and Kerai—that, in Petitioners' account, suggest the
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`appropriateness of using an SE1 signal. But the Board rejected that as well,
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`finding that "Patent Owner also provides persuasive analysis demonstrating that in
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`the prior art references relied upon by Petitioner, continued USB communication
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`between the device and the host is not contemplated after the SE1 signal is sent."
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`Id.
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`While Theobald stands in Rogers's place here, that is a distinction without a
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`difference because the Board's reasons for rejecting the combination focused
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`exclusively on the Petitioners' failure to account for the "port-disabling" nature of
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`Shiga's SE1 signal. Because this Petition presents substantively the same theory as
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`supported by the same evidence, this Petition should be denied. See Section VI.A.
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`Case IPR2018-00274
`Patent No. 7,834,586
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`In IPR2018-00215, to salvage that petition, Petitioners improperly argued at
`
`a teleconference that the ability to conduct USB communication is unimportant.
`
`Ex. 2014 at 6:22-7:14. It's only the ability to charge that matters. Id. But as Dr.
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`Fernald explains, upon observing an SE1 signal, Theobald's modified mobile
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`device would reset, revert to "default" state and be unable to draw more than
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`100mA of current. Ex. 2001, ¶¶42-44. Moreover, if no further bus activity is
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`observed within 3ms, the 100mA of current draw drops to no more than 2.5mA.
`
`Id. Hence, SE1 interrupts both USB communication and charging in the modified
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`Theobald device.
`
`Compared with the Rogers-Shiga combination in IPR2018-00111, a POSA
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`would have had even more reason not to use SE1 with Theobald. Petitioners argue
`
`that a POSA would have used SE1 as the "identification information" that
`
`Theobald transmits over the data lines. But Theobald explicitly teaches
`
`transmitting information on the data lines "according to" a "suitable high speed
`
`communication protocol." Ex. 1005 at 6:9-19. A POSA would have known USB
`
`enumeration process is the USB communication protocol that identifies non-
`
`standard and standard USB power sources alike. Given this knowledge,
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`Theobald's explicit teaching of using normal "communication protocol," and the
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`knowledge that SE1 would disrupt USB communication, a POSA would not have
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`made the modification suggested by Petitioners. Petitioners therefore have failed
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`Case IPR2018-00274
`Patent No. 7,834,586
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`to make a prima facie case of obviousness. See Section VI.C.
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`Multiple other flaws exist. The Petition fails to even attempt to satisfy its
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`burden of proving Shiga is analogous art. The Petition never alleges, much less
`
`proves, that Shiga is from the same field of endeavor as the '586 patent or
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`reasonably pertinent to the problem faced by its inventors. See Section VI.B.
`
`In light of SE1's known interference with USB signaling and Theobald's
`
`express teaching that data transmission should be "according to" a "high speed data
`
`communication protocol," the Petition also fails to provide competent evidence that
`
`Theobald and Shiga would render obvious the claim 8 limitation of "detecting an
`
`identification signal" that is "different than USB enumeration" or claim 11's
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`limitation of "using a microprocessor and memory to process the signals received
`
`on the USB interface data lines." See Sections VI.D and VI.F.
`
`Similarly, the Petition fails to show a reasonable likelihood of success that
`
`claim 11's limitation of "providing power to the battery using the charger
`
`subsystem in one of a plurality of charge modes" is obvious. The Petition alleges
`
`that the "plurality of charge modes" are charging and not charging. Not charging
`
`is not a charge mode, it is the lack of one. The specification consistently teaches
`
`charging by the use of multiple charging modes. See Section VI.E.
`
`The Petition also substitutes considered analysis with vague assurances (that
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`its combination is "trivial" and a "design choice"), but fails to provide evidence to
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`Case IPR2018-00274
`Patent No. 7,834,586
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`substantiate any of those assurances, supporting them with only an equally
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`conclusory mirror image expert declaration. An obviousness analysis must be
`
`supported by evidence and reasoned analysis, and it is well-settled that conclusory,
`
`mirroring expert testimony such as this is "entitled to little or no weight." 37
`
`C.F.R. § 42.65(a).
`
`Institution should also be denied under 35 U.S.C. §325(d). The same
`
`Theobald/Shiga combination appears in ten other petitions filed against either the
`
`'586 or a related patent, including IPR2018-00215, -00276, -00465, -00472, -
`
`00485, -00487, -00508, -00605, -00606 and -00607. Moreover, the Board has
`
`already considered and rejected the same purported reason for applying Shiga's
`
`SE1 signal. IPR2018-00111, Paper 16. Because the Petition raises the "same or
`
`substantially the same prior art or arguments," Patent Owner respectfully requests
`
`that the Board deny this cumulative petition under 35 U.S.C. § 325(d) to conserve
`
`the Board's and Fundamental's resources.1 See Section VII.
`
`For the foregoing reasons, which are elaborated upon below, the Patent
`
`
`1 Petitioners suggest that the effect of three IPRs against the same patent will
`not "affect the Board's resources." Pet. 4. Petitioners are mistaken. Already, the
`Board has spent resources to review multiple petitions and responses instead of a
`single consolidated petition. Even more resources will be wasted if all three
`proceedings are allowed to go forward.
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`Owner respectfully submits that the Petition should be denied institution.
`
`Case IPR2018-00274
`Patent No. 7,834,586
`
`II.
`
`SUMMARY OF THE '586 PATENT
`The '586 Patent discloses methods and apparatuses that allow a mobile
`
`device to draw current at higher rates than permitted by the USB Specification.
`
`See, e.g., Ex. 1001, 2:57-65, 8:9-14. This allows a mobile device to recharge
`
`faster. The '586 Patent teaches that this higher current draw is in response to an
`
`identification signal on USB data lines. See, e.g., id. at 8:15-18.
`
`The '586 Patent explains that at the time of the invention, devices with a
`
`USB data interface typically did not use the USB interface as a power interface.
`
`Id., 1:45-48. The Patent explains that "most mobile devices provide a distinct
`
`power interface for receiving power from a power source, for instance to recharge
`
`a battery, and a separate data interface for communicating. For example, many
`
`mobile devices presently use USB (Universal Serial Bus) interfaces for
`
`communicating and use a separate power interface, such as a barrel connector, for
`
`receiving power." Id., 1:43-48.
`
`The '586 Patent further explains that a USB interface can also be used as a
`
`power interface. Id., 1:56-58. A constraint on using a USB interface as a power
`
`interface, however, is that it requires enumeration between the power source and
`
`device. Id., 1:56-62 ("[while] the USB interface can be used as a power interface,
`
`the USB is typically not used for that purpose by mobile devices. In accordance
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`with the USB specification, typical USB power source devices, such as hubs and
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`Case IPR2018-00274
`Patent No. 7,834,586
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`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.").
`
`The methods and apparatuses disclosed in the '586 Patent refer to use of "an
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`identification signal." See, e.g., id., 2:19-21, 2:57-65; 3:5-13; 8:15-34. In the USB
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`2.0 Specification data is typically sent as differential pairs. Ex. 1008, 122, 128.
`
`The USB 2.0 specification also defines other allowable signals for use under
`
`specified conditions. Id., 119-120; see generally id., Chapter 7. But not all signals
`
`are allowable under the USB specification. "SE1 is a state in which both the D+
`
`and D- lines are at a voltage above VOSE1 (min), which is 0.8 V." Id., 123. The
`
`detection of SE1 indicates an error condition, and the USB specification stipulates
`
`that "USB drivers must never 'intentionally' generate an SE1 on the bus." Id.
`
`One objective of the USB specifications "is to enable [] devices from
`
`different vendors to interoperate in an open architecture," since the group of
`
`industry partners that drafted the USB specifications recognized that "[t]he lack of
`
`flexibility in reconfiguring the PC has been acknowledged as the Achilles' heel to
`
`its further deployment" and that "from the end user's point of view, the PC's I/O
`
`interfaces, such as serial/parallel ports, keyboard/mouse/joystick interfaces, etc., do
`
`not have the attributes of plug-and-play." Id., 1. Compliance with the common
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`communication protocols set forth in the USB Specification was critical for
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`Case IPR2018-00274
`Patent No. 7,834,586
`
`achieving these goals, and the communication protocols set forth in the USB
`
`Specification define how devices should connect to the USB, including "issues of
`
`how USB devices consume power provided by the host over the USB." Id., 18.
`
`Despite the perceived importance of compliance with communications
`
`protocols in the USB Specification, the inventors of the '586 Patent recognized that
`
`this SE1 state could, contrary to this dogma of the time, be used carefully to signal
`
`that a device was connected to a specially-configured USB power supply, such as a
`
`USB adapter, instead of a USB host or hub. Ex. 1001, 9:8-52. In this case, the
`
`device could charge its battery without waiting for USB enumeration, as seen in
`
`Figure 3 of the '586 Patent, which is described as "a flow chart illustrating an
`
`exemplary use of a USB adapter with a mobile device":
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`Case IPR2018-00274
`Patent No. 7,834,586
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`Id., 3:25-26, Fig. 3.
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`This use of an SE1 data condition allows the mobile device to draw current
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`unrestricted by the USB Specification limit. This could include drawing more than
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`100 mA of current without enumeration or more than 500 mA, the maximally
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`allowed current under USB 2.0. The '586 Patent explains that "[t]he USB adapter
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`100 contributes to a system wherein a device 10 that follows the USB specification
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`when coupled to a typical USB host via its USB port can be informed that the USB
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`adapter 100 has been coupled to the device 10 and that the device 10 can now draw
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`power without regard to the USB specification and the USB specification imposed
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`limits." Id., 8:9-14.
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`III. THE PRIOR ART REFERENCES DIFFER FROM THE '586
`INVENTIONS
`Petitioner proposes that a POSA would have arrived at the inventions set
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`Case IPR2018-00274
`Patent No. 7,834,586
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`forth in the '586 Patent through a particular combination of Theobald and Shiga.
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`These references, however, differ greatly from the inventions claimed by the '586
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`Patent.
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`A. Theobald Overview
`U.S. Patent No. 5,925,942 to Theobald et al. is titled "Power Supply Control
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`Apparatus and Method Suitable for use in an Electronic Device." Theobald is
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`directed to an "apparatus and method that permits charging of the battery by the
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`device and maintains backward compatibility with past accessories that mate with
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`the accessory connector of the device." Ex. 1005, 1:53-57, 7:64-8:9. Theobald
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`relate to the "eight pin J3-type accessory connector used in MicroTAC™ cellular
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`telephones manufactured and sold by Motorola, Inc." Id., 1:23-32, 3:21-27. In the
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`disclosed embodiments, accessory 104 comprises either a mid-rate or fast rate
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`charger with an 8-pin J3 connector. Id., 4:44-48. Theobald states that other
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`"suitable" connectors could also practice the invention. Id., 3:21-27.
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`Theobald states as one of its principal goals, the maintaining of backwards
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`compatibility with past accessories that "mate with the accessory connector of the
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`device." Id., 1:53-57. Theobald ensures backwards compatibility by using the J3
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`connector's audio pins to communicate the identity of the accessory. Id., 7:29-34.
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`Pet. 29 (annotated Ex. 1005, Fig. 1)
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`The petition relies exclusively on Theobald's so-called "controller"
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`embodiment (as defined by Petitioner). In this embodiment, Theobald's charger
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`communicates with device controller 108 using accessory circuitry 170 and data
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`lines 190-192. Pet. 27 ("In this embodiment Theobald's accessory 104 uses the
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`accessory circuitry 170 but does not use the resistor 174 or its associated lines").
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`In connection with this "controller" embodiment relied upon by Petitioner,
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`Theobald explains that "the mid or fast rate chargers could be implemented with a
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`logic circuit or a microcontroller that communicates predefined identification
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`information to the controller 108 via the data lines 190-192[.]" Ex. 1005, 6:60-65.
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`Theobald explains that its predefined identification information is sent via
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`the data lines 190-192 "without altering the connectors 122 and 173." Id., 6:55-60
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`(emphasis added). Theobald further teaches that "data is communicated between
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`the accessory circuitry 170 and the controller 108 via [data pins 190-192]
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`according to the three-wire bus protocol utilized in radiotelephone products
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`manufactured and sold by Motorola, Inc. or other suitable high speed data
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`communication protocol." Id., 6:14-18 (emphasis added); see also, 1:23-32, 3:21-
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`27, 6:55-65. In other words, unlike the '586 patent, Theobald contemplates
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`sending identification signals that are described in the communication protocol, not
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`identification signals that are contrary to or not already defined by the protocol.
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`B.
`Shiga Overview
`U.S. Patent No. 6,625,738 to Shiga is titled "USB Apparatus that Turns on
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`Computer Power Supply Using Signals Substantially Longer than Information
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`Conveying Pulse Widths when Predetermined Operation is Performed on Input
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`Device." Shiga teaches an apparatus for waking up a host computer from an "off
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`state," wherein the main power supply of the host computer is turned off. Ex.
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`1006, 1:12-19, 2:18-30. When Shiga's host computer is in the "off state" and
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`buttons are pressed on an input device, such as a keyboard, the keyboard sends a
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`wake-up signal to a wake-up means in the host computer, which turns on the host
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`computer's main power supply. Id., 3:41-56, 5:66-6:3, 6:34-47.
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`Shiga explains that when the keyboard sends the wake-up signal upstream to
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`the computer, USB communication with the computer under normal USB protocol
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`is impossible. Id., 6:4-24. Shiga explains that this is because the computer's USB
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`host is powered off and the data lines between the USB host and the keyboard "are
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`not connected to each other." Id. In the system described in Shiga, the keyboard's
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`data lines are connected to a pair of comparators (3A and 3B) in the wake-up
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`means (3). Id., 6:12-24; 6:65-7:8. The wake-up means is not a microprocessor,
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`and cannot process signals. See id., 5:63-6:24.
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`Shiga teaches that its keyboard generates an upstream signal by setting the
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`two data lines to the H state. Id., 6:35-47, 7:9-15. These signals are not received
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`by any microprocessor. Rather, certain analog comparators are specifically
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`configured to detect this signal:
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`• The comparators compare the voltage on the keyboard's data lines to a
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`threshold voltage and output the determination to an AND circuit. Id.,
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`7:9-15.
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`• When the output from both the comparators are high (because the
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`voltage on the data lines of the keyboard exceeded 1.5V), the AND
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`circuit output turns on the main power supply. Id.
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`Only after Shiga's host computer receives the wake-up signal and the main
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`power supply is turned on are the data lines between the host computer and USB
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`keyboard reconnected. Id., 7:16-30. Hence, when the USB keyboard transmits the
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`signal to the wake-up means, there is no risk of interfering with the host's normal
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`USB operation, because the keyboard's data lines are disconnected from the host at
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`the time. Id., 6:4-24, 6:65-7:15. Thus, Shiga does not suggest that SE1 could, or
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`should, be used when a computer is conducting normal USB operation, or to
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`identify the keyboard. See id., 6:3.
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`IV. LEVEL OF ORDINARY SKILL
`For purpose of this response only, Fundamental applies Petitioner's stated
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`skill level.
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`V. CLAIM CONSTRUCTION
`In the parallel district