Trials@uspto.gov
`571-272-7822
`
`Paper 17
`
` Entered: August 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`
`
`
`
` FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00274
`Patent No. 7,834,586 B2
`____________
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822
`
`Paper 17
`
` Entered: August 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`
`
`
`
` FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00274
`Patent No. 7,834,586 B2
`____________
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2018-00274
`Patent 7,834,586 B2
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`
`I. INTRODUCTION
` ZTE (USA) Inc. (“Petitioner”), filed a Petition (Paper 5, “Pet’”)
`requesting an inter partes review of claims 8–13 of U.S. Patent 7,834,586
`B2 (Ex. 1001, “the ’586 Patent”).1 Petitioner supports its Petition with the
`Declaration of Mr. James Geier. Ex. 1009. Fundamental Innovation
`Systems International LLC (“Patent Owner”), timely filed a Preliminary
`Response (Paper 9, “Prel. Resp.”). Patent Owner supports its Preliminary
`Response with the Declaration of Dr. Kenneth Fernald. Ex. 2001.
`Subsequent to the filing of the Petition, on June 8, 2018, Patent Owner
`filed a Statutory Disclaimer, in compliance with 35 U.S.C. § 253(a) and
`37 C.F.R. § 1.321(a), of claims 3, 7, 10 and 13 of the ’586 Patent. Ex. 2013,
`3. 37 C.F.R. § 42.107(e) provides that “[n]o inter partes review will be
`instituted based on disclaimed claims.” Petitioner’s Ground 1 includes
`challenges to claims 10 and 13. Pet. 3. Petitioner’s Ground 2 is directed to
`only claims 10 and 13. Consequently, we do not consider Petitioner’s
`challenge to claims 10 and 13 in Ground 1 nor do we consider Petitioner’s
`Ground 2 herein.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Taking into account the evidence and arguments presented in the Petition
`
`
`1 Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`were dismissed from this proceeding by Order entered July 18, 2018. Paper
`13.
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`and the Preliminary Response, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing with respect to any
`challenged claim of the ’586 Patent. Therefore, we do not institute an inter
`partes review.
`
`A. Related Matters
`The parties identify Civil Action No. 2:17-cv-00145, No. 2:16-cv-
`01424, and No. 2:16-cv-01425, pending in the Eastern District of Texas and
`Civil Action No. 3:17-cv-01827 pending in the Northern District of Texas as
`involving the ’586 Patent. Pet. 1, Paper 6, 1. The parties also identify
`IPR2018-00485 and IPR2018-00493 as having been filed against the ’586
`Patent. Pet. 1, Paper 6, 3.
`
`B. Technology Background
`An overview of Universal Serial Bus (“USB”) cables is helpful in
`understanding the technology involved in the ’586 Patent which relates to
`charging a mobile device through a USB connector. See Ex. 1001, Fig. 3.
`Cables compliant with the USB 2.0 standard have four conductors: VBUS,
`D+, D-, and GND. Ex. 1008, 17–18, 86. The VBUS and GND conductors
`of the USB cable are used to deliver power to devices and the D+ and D-
`conductors carry communication signals between a USB host and a
`connected device. Id. at 17–18; Ex. 1001, 6:65–7:3; Ex. 1005, 4:62–66.
`Figure 4–2 of the USB 2.0 Specification, reproduced below, depicts these
`four conductors within a USB cable:
`
`Ex. 1008, 17.
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`Figure 4–2 depicts the conductors within a USB cable.
`
`
`C. The ’586 Patent
`The ’586 Patent is directed to a Multifunctional Charger System and
`Method. Ex. 1001, Title. The ’586 Patent discloses “a USB adapter for
`providing a source of power to a mobile device through a USB port.” Id. at
`2:21–22. The ’586 Patent explains that although it was understood in the art
`that a USB interface could be used as a power interface, it was typically not
`used for that purpose by mobile devices. Id. at 1:55–56. This is because
`USB hubs and hosts require USB devices to “participate in a host-initiated
`process called enumeration in order to be compliant” with the USB
`specification in drawing power from the USB interface, and “alternate power
`sources such as conventional AC outlets and DC car sockets” were “not
`capable of participating in enumeration.” Id. at 1:58–2:3. Additionally, “the
`power limits imposed by the USB specification” limit the amount of power
`available to charge a battery. Id. at 2:64–65.
`
`In order to, inter alia, avoid the power limits imposed by the USB
`Specification, the ’586 Patent discloses a USB adapter and a method for
`charging that is capable of providing power to a mobile device without first
`participating in USB enumeration. Id. at 9:18–34. Figure 2 of the ’586
`Patent, reproduced below, is a schematic diagram of the disclosed USB
`adapter coupled to an exemplary mobile device (id. at 3:25–26):
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`As shown in Figure 2, USB adapter 100 comprises primary USB
`connector 102, power converter 104, plug unit 106, identification
`subsystem 108, and auxiliary USB connector 112. Id. at 6:49–60. The ’586
`Patent discloses that when USB adapter 100 is connected to mobile
`device 10 via USB connector 54 of mobile device 10 and USB
`connector 102 of USB adapter 100, identification subsystem 108 provides an
`identification signal to mobile device 10 indicating that the power source is
`not a USB limited source. Id. at 6:63–65, 8:15–17. In one embodiment,
`“identification subsystem 108 comprises a USB controller that is operable to
`communicate an identification signal to the mobile device.” Id. 8:25–27.
`The identification signal “could be the communication of a single voltage on
`one or more of the USB data lines, different voltages on the two data lines, a
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`series of pulses or voltage level changes, or other types of electrical signals.”
`Id. at 8:17–21. “The preferred identification signal,” however, “results from
`the application of voltage signals greater than 2 volts to both the D+ and D-
`lines in the USB connector.” Id. at 9:13–15.
`
`An example of the method of identification is shown in Figure 3 of
`the ’586 Patent. Id. 9:15–17. Figure 3, reproduced below is “a flow chart
`illustrating an exemplary use of a USB adapter with a mobile device.” Id. at
`3:25–26.
`
`
`As shown in Figure 3, first step 210 in the method is detection of voltage on
`the Vbus line of USB connector 54. Id. at 9:18–20. At step 220, mobile
`device 10 “checks the state of the D+ and D- lines of the USB connector.”
`Id. at 9:20–21. If the voltage on both the D+ and D- lines is greater than 2
`volts, “mobile device 10 determines that the device connected to the USB
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`connector 54 is not a typical USB host or hub and that a USB adapter 100
`has been detected (step 230).” Id. at 9:28–31. Thereafter, mobile device 10
`can charge its battery without USB enumeration at step 260. Id. at 9:31–34.
`If the voltage on the D+ and D- lines are both less than 2V at step 220,
`mobile device 10 determines that a USB host or hub is detected at step 240,
`undergoes enumeration at step 250, and after enumeration charges the
`battery in accordance with the power limits imposed by the USB
`specification. Id. at 9:35–47. If mobile device 10 charges its battery by
`means of USB adapter 100 without enumeration, “mobile device 10 can
`disable its typical USB functions.” Id. at 9:57–59.
`D. Illustrative Claims
`Independent claims 8 and 11 are illustrative of the challenged claims
`and are reproduced below:
`8. A method of charging a battery in a mobile device, the
`mobile device
`configurable
`for use
`in
`a wireless
`telecommunications network, comprising:
`providing a Universal Serial Bus (“USB”) interface
`configured to allow reception of a USB cable, and, receiving
`power on a V-bus power line at the USB interface;
`providing an operable connection between the power
`received at the USB interface on the V-bus power line and a
`charging subsystem;
`having a battery in operable connection to the charging
`subsystem;
`providing power to the battery using the charger
`subsystem; and
`detecting an identification signal at a D+ and D- data line
`of the USB interface, the identification signal being different
`than USB enumeration.
`Ex. 1001, 12:31–46.
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`11. A method of charging a battery in a mobile device,
`the mobile device configurable for use
`in a wireless
`telecommunications network, comprising:
`providing a Universal Serial Bus (“USB”) interface
`configured to allow reception of a USB cable, and, receiving
`power on a V-bus power line at the USB interface;
`providing an operable connection between the power
`received at the USB interface on the V-bus power line and a
`charging subsystem;
`having a battery in operable connection to the charging
`subsystem;
`providing power to the battery using the charger
`subsystem in one of a plurality of charge modes;
`using a microprocessor and memory to process the
`signals received on the USB interface data lines, such that an
`identification signal received at the D+ and D- lines indicating a
`charging connection is available is recognized by the device.
`Id. at 12:53–13:3.
`
`
`E. Asserted Ground of Unpatentability
`Petitioner challenges claims 8, 9, 11, and 12 of the ’586 Patent as
`upatentable under 35 U.S.C. § 103(a) based on the combined teachings of
`Theobald (United States Patent No. 5,925,942, issued July 20, 1999)(Ex.
`1005) and Shiga (United States Patent No. 6,625,738 B1, issued Sept. 23,
`2003)(Ex. 1006). Pet. 3.
`
`
`II. ANALYSIS
`A. Overview
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`
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`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) when in evidence, objective indicia of non-
`obviousness (i.e., secondary considerations). Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). We analyze the asserted grounds based on
`obviousness with these principles in mind.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Petitioner provides a proposed construction for the term “USB
`enumeration.” Pet. 5–7. Patent Owner does not propose a construction for
`“USB enumeration” but offers a construction of the claim term
`“identification signal.” Prel. Resp. 15–16. Upon review of the parties’
`arguments and supporting evidence, we determine that no claim terms
`require express construction for purposes of this Decision. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”)).
`
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`C. Claims 8 and 9
`
`Petitioner contends that independent claim 8 and claim 9 which
`depends therefrom are unpatentable under 35 U.S.C. § 103(a) over the
`combined teachings of Theobald and Shiga. Pet. 22–56. We begin our
`analysis with brief overviews of Theobald and Shiga. We then address the
`parties’ respective contentions with respect to the challenged claims.
`1. Theobald
`Theobald is directed to a method and apparatus for charging the
`battery in a cellular telephone using a charger coupled to the cellular
`telephone by a standard J3-type accessory connector. Ex. 1005, 1:53–57,
`3:21–27. Figure 1 of Theobald, reproduced with Petitioner’s annotations
`(Pet. 29), illustrates “a charging system including an electronic device
`having a power supply control apparatus, a battery, and an accessory.” Ex.
`1005, 1:62–65.2
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`
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`2 Petitioner’s annotations are not contested by the parties and illustrate
`unlabeled portions of the figure.
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`Theobald’s system 100 comprises a cellular telephone 102, a battery 103,
`and an accessory 104. Id. at 2:17–19, 28–29. Accessory 104 is “a low cost
`mid rate charger or fast rate charger.” Id. at 4:30–32. Charger 104 is
`coupled to cellular telephone 102 by connector 122 which “is preferably the
`standardized eight pin J3-type accessory connector . . . but may be any other
`suitable multiple pin accessory connector having an external power supply
`pin and at least one information pin.” Id. at 3:21–27.”
`The connector 122 shown in Figure 1 has “information pins 124, 125,
`127, 128, and 129 designated as AUD IN, AUD OUT, and R, C, and T
`DATA, respectively; grounding pins 126 and 131 designated ANL GND and
`LOG GND; and an external power supply pin 130.” Ex. 1005, 2:65–3:2.
`Information pin 124 “is coupled to the controller 108 via audio in line 132
`and an identification network 150 . . . to identify accessory 104.” Id. 3:2–5.
`The charger includes an “identification element 174 . . . to identify” the
`charger to the cellular telephone 102. Id. at 5:3–4. Identification element
`174 “is selected to have a different electrical value for each different type of
`the accessory 104.” Id. at 5:6–8. Theobald discloses that identification
`element 174 for a mid rate charger would be a 120 kΩ resistor and for a fast
`rate charger would be a 36 kΩ resistor. Id. at 5: 9–12. When cellular
`telephone 102 and charger 104 are coupled through connector 122,
`identification element 174 in charger 104 is electrically connected to
`identification network 150 in cellular telephone 102 and the external supply
`voltage of charger 104 generates a voltage level on audio in line 132 of the
`cellular telephone 102 of 1.72 V for a mid rate charger or 3.91 V for a fast
`rate charger. Id. at 5:59–6:6. The “controller 108 measures the voltage on
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`the audio in line 132” and from the measured voltage “identifies the
`accessory 104 from the accessory look-up table” as either the mid rate
`charger or the fast rate charger. Id. at 6:19–42.
`
`Theobald discloses an alternate embodiment for identifying the mid
`rate or fast rate charger to the cellular telephone. Id at 6:55–65. In the
`“controller embodiment,” the mid rate or fast rate chargers “could be
`implemented with a logic circuit or a microcontroller that communicates
`predefined identification information to the controller 108 via the data lines
`190-192 and pins 182-184 upon attachment” of the charger 104. Id. at 6:60–
`65.
`
`2. Shiga
`Shiga discloses turning on a computer power supply by means of
`signals transmitted over signal lines “of a USB chip provided in a
`keyboard.” Ex. 1006, Abstract. Figure 1 of Shiga, reproduced with
`Petitioner’s annotations (Pet. 31), “is a structural view of an embodiment of
`the apparatus for turning on a computer power supply.” Id. at 4:6–8.3
`
`
`3 Petitioner’s annotations are not contested by the parties and illustrate
`unlabeled portions of the figure.
`
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`As shown in Figure 1, above, Shiga’s USB connected keyboard 11 starts the
`host computer “by a key input operation at a keyboard.” Id. at 2:4–8.
`Shiga’s keyboard signals a “wake-up means” in the computer when a power-
`on key is pressed on the keyboard. Id. at 3:1–7.
`
`Shiga explains that pursuant to the USB specification, when a host
`computer is in a suspended mode there are three standard signal line states.
`Id. at 5:46–54. In the first, or low speed state, signal line D+ is in an L (Hi-
`Z or high impedance) state and D- is in an H (high level) state. Id. at 5:55–
`57. In the second, or high speed state, signal line D+ is in the H state and
`signal line D- is in the L state. Id. at 5:58–59. In the third, or unconnected
`state, both D- and D+ signal lines are in the L state. Id. at 5:59–60. In
`addition to these three standard signal line states, Shiga discloses that the
`signal lines may also be placed into a fourth, non-standard state, wherein
`both the D+ and D- signal lines are in the H state.4 Id. at 5:60–62, 6:48–58.
`Shiga provides this non-standard, or “fourth mode” signal, to a “wakeup
`
`4 Shiga’s “fourth mode” state corresponds to the “SE1” state defined in the
`USB 2.0 Specification. See Ex. 1009 ¶40 (citing Ex. 1008, 123).
`
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`means” in response to a user pressing the keyboard’s power-on key. Id. at
`3:1–3, 4:33–53, 6:59–65. Shiga explains that, because this line state is not a
`standard USB state and is provided as a 50 ms pulse at 3 volts, it is “easily
`distinguished from USB standard data signals.” Id. at 6:48–58.
`
`Shiga’s keyboard contains USB chip 12 with “first signal line D+ and
`. . . second signal line D-.” Id. at 6:38–39. Shiga’s fourth mode signals “are
`generated by the aforementioned 8-bit microcontroller (not shown), which is
`a controlling means (or signal-generating means) at the keyboard 11 side.”
`Id. at 6:40-43.
`3. Analysis
`Petitioner contends that USB standard architecture is “widely adopted
`by the industry” to provide “faster speeds and additional functionality.” Pet.
`11. The standard architecture of “a USB system includes a USB host, one or
`more USB devices, and a USB interconnect.” Id. at 11–12. The USB host is
`responsible for various tasks such as controlling data flow between the host
`and USB devices and providing power to USB devices. Id. at 12. A mobile
`phone falls into one of the two categories of USB devices known as “a
`function.” Id. Under the USB Specification, a function such as a mobile
`phone is “connected and communicate[s] with the host” by means of a USB
`interconnect. Id.
`Petitioner contends that it would have been obvious to one of ordinary
`skill in the art to modify Theobald’s alternative embodiment for identifying
`the charger with “a few trivial modifications.” Pet. 33.5 The “trivial
`modifications” are replacing Theobald’s J3 connector with a USB connector
`
`
`5 Petitioner refers to Theobald’s alternative embodiment as the “controller
`embodiment.” Pet. 27.
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`as disclosed in Shiga, using Shiga’s fourth mode signals as the “predefined
`identification information” that Theobald calls for, and implementing
`“routine programming into circuitry 170 and controller 108 in order to
`communicate the fourth-mode signals.” Id. at 33–34. Petitioner submits the
`following modified version of Theobald’s Figure 1 to illustrate the proposed
`modification to Theobald in light of Shiga:
`
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`
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`Id. at 33.
`Petitioner explains that in this combination,
`USB connectors replace the J3 connectors, USB data lines (D+, D-)
`replace the J3 data lines (R,C,T), the USB power line (Vbus) replaces
`the J3 power line (Ext B+), and the USB ground line (Gnd) replaces
`the J3 ground (Log Gnd). Theobald’s controller embodiment does not
`need or use the resistor 174 and its associated connections, so those
`elements are not part of the Theobald/Shiga combination. The
`Theobald/Shiga combination’s remaining structural elements and
`their connections are identical to those in Theobald’s controller
`embodiment.
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`Id. at 34–35 (emphasis added) (citing Ex. 1009 ¶¶ 60–62).
`Petitioner further explains that this combination follows the same
`steps as Theobald’s controller embodiment to identify the charger but uses
`“Shiga’s fourth mode signals (as an implementation of Theobald’s
`‘identification information’).” Id. at 35. Petitioner contends that selecting
`Shiga’s fourth mode signals for identification would “avoid interfering with
`standard USB signaling (id. at 42),” “USB was a commonplace interface that
`was widely known, used, and accepted in the industry” and therefore, one of
`ordinary skill in the art “would have been motivated to combine Theobald’s
`system with a USB interface to achieve a system with a broader industrial
`application.” Id. at 38.
`
`In connection with the limitation in claim 8 “detecting an
`identification signal at a D+ and a D- data line of the USB interface,”
`Petitioner argues that Theobald’s “accessory 104 identifies itself to the
`electronic device 102 by sending Shiga’s fourth-mode signals from the
`accessory circuitry 170 to the controller 108 over the D+ and D- lines of the
`USB interface.” Pet. 53. Theobald describes accessory circuitry 170 as “a
`logic circuit or a microcontroller.” Ex. 1005, 6:61–64. Petitioner submits
`that implementing “routine programming into circuitry 170” would result in
`the ability of accessory circuitry 170 to communicate Shiga’s fourth mode
`signals to Theobald’s controller 108. Pet. 33–34.6
`
`
`6 As noted above, Shiga discloses that fourth mode signals are generated by
`a signal generator in combination with USB chip 12 located in Shiga’s
`keyboard. See Ex. 1006, 6:35–47. Likewise, the ’586 Patent discloses that
`“identification subsystem 108 comprises a USB controller that is operable to
`communicate an identification signal to the mobile device.” Ex. 1001, 8:25–
`27.
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`Patent Owner contends, based on a number of theories, that Petitioner
`
`fails to state an adequate motivation for combining Theobald and Shiga. See
`Prelim. Resp. 16–46. Most pertinent to our Decision is the contention that
`Petitioner fails to establish that the Theobald/Shiga combination renders
`obvious the limitation in claim 8 of “an identification signal being different
`than USB enumeration” because, inter alia, the combination deviates from
`standard USB signaling, thus, contradicting Petitioner’s reasoning that one
`of ordinary skill in the art “would be motivated by reason of a desire to
`‘achieve a system with broader industrical application.’” Id. at 45 (citing Pet.
`38.).
`Although Petitioner contends that “USB was a common place
`interface that was widely known, used and accepted in the industry” and
`would result in “a broader industrial application” than a J3 connector (Pet.
`38), it does not incorporate a USB interface with the standard architecture
`set forth in the USB 2.0 Specification into Theobald’s device. See Pet. 33–
`34. Rather, it selectively chooses only the USB connector from Shiga
`without a standard USB controller chip. Petitioner fails to adequately
`explain, however, why one of ordinary skill in the art, contemplating the use
`of a USB interface in Theobald, would not simply use a standard USB
`controller chip, as opposed to retaining Theobald’s original accessory
`circuitry 170 and controller 108 and attempting to reprogram Theobold’s
`accessory circuitry to imitate a USB-based system. For example, Petitioner
`does not adequately explain how the functions of a USB host can be
`achieved in the proposed combination without a USB controller chip, or why
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`one of ordinary skill in the art would have sought to implement a USB
`interface without providing for full USB functionality. Id.
`The Supreme Court’s directs that “[a] factfinder should be aware . . .
`of the distortion caused by hindsight bias and must be cautious of arguments
`reliant upon ex post reasoning.” KSR,. 550 U.S. at 421 (citing Graham v
`John Deere Co., 383 U.S. 1, 36 (1966)). In order to “reach a non-hindsight
`driven conclusion . . . [Petitioner] must provide some rationale, articulation
`or reasoned basis to explain why the conclusion of obviousness is correct.”
`In re Kahn, 441 F. 3d 977, 987 (Fed. Cir. 2006).
`Because Petitioner has not provided a sufficient rationale to add a
`USB interface in Theobald without a USB controller chip, we are not
`persuaded that Petitioner has demonstrated that one of ordinary skill in the
`art would have sought to combine Theobald and Shiga in the manner
`proposed in the Petition absent resort to impermissible hindsight reasoning.
`See In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir. 2016). Accordingly,
`Petitioner has not demonstrated a reasonable likelihood that independent
`claim 8 would have been obvous over Theobald and Shiga.
`Petitioner’s contentions concerning claim 9 which depends from claim
`8 fail to add any additional evidence or arguments that would cure the
`deficiencies in Petitioner’s claim 8 contentions. See Pet. 56. Therefore, for
`the same reasons, we conclude that Petitioner fails to establish a reasonable
`likelihood that claim 9 is unpatentable.
`D. Claims 11 and 12
`Petitioner contends that independent claim 11 is unpatentable based
`on the combination of Theobald and Shiga. Pet. 59–64 (citing Ex. 1009
`¶¶ 93–103). We have reviewed Petitioner’s evidence and arguments relied
`
`
`
`18
`
`
`
`IPR2018-00274
`Patent 7,834,586 B2
`
`on in connection with its contention that claim 11 is unpatentable. We
`determine, for the same reasons stated in connection with claim 8, that
`Petitioner fails to establish a reasonable likelihood that claim 11 is
`unpatentable.
`Petitioner’s contentions concerning claim 12 which depends from
`claim 11 fails to add any additional evidence or arguments that would cure
`the deficiencies in the claim 11 contentions. See Pet. 64. Therefore, for the
`same reasons, we conclude that Petitioner fails to establish a reasonable
`likelihood that claim 12 is unpatentable.
`III. CONCLUSION
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence of record, we conclude that Petitioner has not demonstrated a
`reasonable likelihood that any of claims 8, 9, 11, or 12 of the ’586 Patent are
`unpatentable. Accordingly, we do not institute an inter partes review.
`IV. ORDER
`
`It is hereby, ORDERED that the Petition is denied and no trial is
`instituted.
`
`
`
`19
`
`
`
`
`
`IPR2018-00274
`Patent 7,834,586 B2
`
`
`PETITIONER:
`
`Charles M. McMahon
`Brian A. Jones
`Thomas DaMario
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`bajones@mwe.com
`tdamario@mwe.com
`
`
`
`PATENT OWNER:
`
`Hong Zhong
`Michael Fleming
`IRELL & MANELLA LLP
`hzhong@irell.com
`mfleming@irell.com
`
`
`
`
`
`
`
`20
`
`
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