Paper No. 21
`Filed: October 18, 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
`
`DECLARATION OF CHARLES M. MCMAHON IN SUPPORT OF
`PETITIONER'S RESPONSE TO ORDER TO SHOW CAUSE
`
`Case No. IPR2018-00274
`Patent 7,834,586 B2
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, AND
`ARTHUR M. PESLAK, Administrative Patent Judges
`
`
`Filed: October 18, 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
`
`DECLARATION OF CHARLES M. MCMAHON IN SUPPORT OF
`PETITIONER'S RESPONSE TO ORDER TO SHOW CAUSE
`
`Case No. IPR2018-00274
`Patent 7,834,586 B2
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, AND
`ARTHUR M. PESLAK, Administrative Patent Judges
`
`
`
`I, Charles M. McMahon, declare as follows:
`
`1.
`
`I am an attorney admitted to this Court in the above captioned matter.
`
`I am a partner at McDermott Will and Emery, and I represent ZTE (USA) Inc.
`
`("ZTE") in this matter.
`
`2.
`
`If called as a witness, I could and would competently testify to all
`
`facts within my personal knowledge except where stated upon information and
`
`belief.
`
`3.
`
`This declaration is submitted in support of Petitioner's Response to
`
`Order to Show Cause.
`
`4.
`
`Petitioner's counsel filed a Request for Rehearing (Paper No. 18) in
`
`this case via the E2E filing portal on September 28, 2018.
`
`5.
`
`Petitioner's counsel received a confirmation email indicating that the
`
`Request for Rehearing had been successfully filed on September 28, 2018.
`
`6.
`
`Attached as Exhibit A is a true and correct copy of Petitioner's
`
`Request for Rehearing Filing Confirmation dated September 28, 2018.
`
`7.
`
`Petitioner's counsel served a copy of the Request for Rehearing
`
`(Paper No. 18) in this case on Patent Owner's counsel via email on September 28,
`
`2018.
`
`8.
`
`Attached as Exhibit Bis a true and correct copy of the Service Email
`
`of Petitioner's Request for Rehearing, served upon Patent Owner's counsel on
`
`2 of 4
`
`
`
`September 28, 2018.
`
`9.
`
`Petitioner's counsel subsequently received a telephone message from
`
`the Board indicating that the September 28, 2018 submission was missing an
`
`attachment.
`
`10.
`
`Petitioner's counsel re-filed the Request for Rehearing originally
`
`submitted on September 28, 2018 on October 10, 2018, except that the caption was
`
`updated to: "Petitioner's Request for Rehearing (originally submitted on
`
`9/28/18)".
`
`11. Attached as Exhibit C is a true and correct copy of Petitioner's
`
`Request for Rehearing Re-Filing Confirmation dated October 10, 2018.
`
`12. Attached as Exhibit Dis a true and correct copy of Petitioner's
`
`Request for Rehearing filed on September 28, 2018.
`
`13. Attached as Exhibit Eis a true and correct copy of Petitioner's
`
`Request for Rehearing re-filed on October 10, 2018.
`
`14. The Request for Rehearing filed on September 28, 2018 is identical in
`
`all respects to the Request for Rehearing filed on October 10, 2018, with the
`
`exception of the updated caption indicated in paragraph 10 above.
`
`3 of 4
`
`
`
`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct.
`
`Executed: October 18, 2018 at Chicago, IL W---
`
`--=--------------
`Charles M. McMahon
`Reg. No. 44,926
`
`4 of4
`
`
`
`
`
`
`
`Exhibit A
`
`Exhibit A
`
`
`
`McMahon, Charlie
`Baker, Jodi
`FW: IPR2018-00274: Rehearing Request Filed - ZTE (USA) Inc. v. Fundamental Innovation Systems International
`LLC
`Friday, September 28, 2018 7:18:14 PM
`
`From:
`To:
`Subject:
`
`Date:
`
`
`
`From: PTABE2E_System@uspto.gov
`Sent: Friday, September 28, 2018 7:18:08 PM (UTC-06:00) Central Time (US & Canada)
`To: McMahon, Charlie; hzhong@irell.com; mfleming@irell.com
`Cc: alan.rabinowitz@kirkland.com; egoryunov@kirkland.com; greg.arovas@kirkland.com;
`robert.appleby@kirkland.com; todd.friedman@kirkland.com
`Subject: IPR2018-00274: Rehearing Request Filed - ZTE (USA) Inc. v. Fundamental Innovation Systems
`International LLC
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`Rehearing Request Filed Notice
`
`THERE WERE NO DOCUMENTS SUBMITTED WITH THIS REQUEST
`
`Patent Owner:
`
`AIA Review No.:
`Petitioner:
`
`IPR2018-00274
`ZTE (USA) Inc. et al. of Richardson, TX
`Fundamental Innovation Systems International LLC et al. of
`Flower Mound, TX
`Patent No.:
`7834586
`Rehearing Filing Party: Petitioner
`Rehearing Type:
`Institution Decision
`Submitted Date:
`09/28/2018
`Submitted By:
`Charles McMahon, cmcmahon@mwe.com
`
`A Rehearing Request has been filed.
`
`Questions regarding this receipt should be directed to the Patent Trial and Appeal Board at
`571-272-7822 or e-mail to Trials@uspto.gov.
`
`This e-mail is computer-generated. Do not reply to this e-mail because the e-mail box is not
`monitored.
`
`
`
`
`
`
`
`Exhibit B
`
`Exhibit B
`
`
`
`From:
`To:
`
`Cc:
`Subject:
`Date:
`Attachments:
`
`Baker, Jodi
`"hzhong@irell.com"; "mfleming@irell.com"; "jsheasby@irell.com"; "jmilkey@irell.com";
`"FundamentalIPRs@irell.com"
`McMahon, Charlie; Jones, Brian; DaMario, Thomas
`IPR2018-00274
`Friday, September 28, 2018 7:20:56 PM
`2018-09-28 Petitioner Request for Rehearing.pdf
`
`Counsel:
`
`Attached please find Petitioner’s Request for Rehearing on Order Denying Institution, as filed today
`in the above-identified IPR proceeding with the Patent Trial and Appeal Board.
`
`Best regards,
`Jodi
`
`
`Jodi R. Baker
`IP Litigation Paralegal
`McDermott Will & Emery LLP | 444 West Lake Street, Suite 4000 | Chicago, IL 60606-0029
`Tel +1 312 984 7558 | Fax +1 312 984 7700
`Website | vCard | Email | Twitter | LinkedIn | Blog
`
`
`
`
`
`
`
`
`
`Exhibit C
`
`Exhibit C
`
`
`
`McMahon, Charlie
`Baker, Jodi
`FW: IPR2018-00274: Rehearing Request Filed - ZTE (USA) Inc. v. Fundamental Innovation Systems International
`LLC
`Wednesday, October 10, 2018 9:33:50 AM
`
`From:
`To:
`Subject:
`
`Date:
`
`
`
`From: PTABE2E_System@uspto.gov
`Sent: Wednesday, October 10, 2018 9:33:43 AM (UTC-06:00) Central Time (US & Canada)
`To: McMahon, Charlie; hzhong@irell.com; mfleming@irell.com
`Cc: alan.rabinowitz@kirkland.com; egoryunov@kirkland.com; greg.arovas@kirkland.com;
`robert.appleby@kirkland.com; todd.friedman@kirkland.com
`Subject: IPR2018-00274: Rehearing Request Filed - ZTE (USA) Inc. v. Fundamental Innovation Systems
`International LLC
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`Rehearing Request Filed Notice
`
`Patent Owner:
`
`AIA Review No.:
`Petitioner:
`
`IPR2018-00274
`ZTE (USA) Inc. et al. of Richardson, TX
`Fundamental Innovation Systems International LLC et al. of
`Flower Mound, TX
`Patent No.:
`7834586
`Rehearing Filing Party: Petitioner
`Rehearing Type:
`Institution Decision
`Submitted Date:
`10/10/2018
`Submitted By:
`Charles McMahon, cmcmahon@mwe.com
`
`A Rehearing Request has been filed.
`
`The following document(s) has/have been filed.
`
`Document(s) List
`
`No. Document
`No.
`
`1
`
`18
`
`Document Type
`
`Document Name
`
`Filing
`Party
`
`Availability
`
`Rehearing Request -
`in re Petition
`Institution Decision
`Denied
`
`Petitioner's Request for
`Rehearing (originally
`submitted on 9/28/18)
`
`Petitioner
`
`Available
`for
`everyone.
`
`
`
`Questions regarding this receipt should be directed to the Patent Trial and Appeal Board at
`571-272-7822 or e-mail to Trials@uspto.gov.
`
`This e-mail is computer-generated. Do not reply to this e-mail because the e-mail box is not
`monitored.
`
`
`
`
`
`
`
`Exhibit D
`
`Exhibit D
`
`
`
`Paper No. 18
`Filed: September 28, 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
`
`
`
`REQUEST FOR REHEARING ON ORDER DENYING INSTITUTION
`
`Case No. IPR2018-00274
`Patent 7,834,586 B2
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, AND
`ARTHUR M. PESLAK, Administrative Patent Judges
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`I. Introduction
`
`Petitioner ZTE (USA) Inc. (“Petitioner”) respectfully requests rehearing on
`
`the Board’s decision denying institution of an inter partes review of claims 8, 9,
`
`11, and 13 of U.S. Patent No. 7,834,586 (Ex. 1001, “the ’586 patent”). See Paper
`
`20 (“Denial Order”) at 19. The Board declined to institute review based solely on
`
`a determination “that Petitioner fail[ed] to adequately explain . . . why one of
`
`ordinary skill in the art . . . would not simply use a standard USB controller chip
`
`. . . .” and therefore determined that Petitioners arguments rely on improper
`
`hindsight. Denial Order at 17-18. In arriving at this erroneous conclusion, the
`
`Board misapprehended Petitioner’s actual combination and faulted Petitioner for
`
`failing to explain a combination that it never presented, thus imposing a legally
`
`improper burden on Petitioner. Under a correct understanding of Petitioner’s
`
`combination, the Petition presented a sufficient rationale, and the combination was
`
`not the result of hindsight. For the reasons that follow, Petitioner respectfully
`
`requests rehearing and that the Board institute review.
`
`
`
`1
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`II. Argument
`
`Respectfully, the Board misunderstood Petitioner’s two-reference
`
`obviousness combination and erroneously expected Petitioner to provide reasons
`
`for making a combination that Petitioner never asserted. The Petition identified
`
`U.S. Patent No. 5,925,942 (Ex. 1005, “Theobald”) as the primary reference and
`
`explained how it would have been obvious to make minor modifications to
`
`Theobald in view of teachings in U.S. Patent No. 6,625,738 (Ex. 1006, “Shiga”).
`
`Petitioner explained why it would have been obvious to replace Theobald’s J3-
`
`style connector with the well-known USB-style connector, as was explicitly taught
`
`in Shiga. The Board faulted Petitioner for failing to explain why a physical
`
`connector would be replaced with a USB connector without also replacing the
`
`software signaling protocols from the USB 2.0 Specification, typically
`
`implemented in a standard USB controller chip. Denial Order at 17-18. But this
`
`explanation was unnecessary because using a USB-style hardware connector does
`
`not dictate what software signaling interface must be used, and Petitioner never
`
`argued as much. Indeed, the hardware requirements of a USB connector
`
`(dimensions, number of pins, etc) are independent from the software requirements
`
`(i.e., the signaling protocols). As Petitioner explained, Theobald itself provides a
`
`motivation for replacing its physical connector with other known connector styles,
`
`
`
`2
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`and the USB-connector style was an obvious choice because of its broad industrial
`
`application.
`
`A. The Board Misapprehended Which Combination of Prior Art
`Teachings Were Presented in the Petition
`
`The Board appears to have misunderstood Petitioner’s combination of
`
`Theobald and Shiga by assuming that Petitioner intended to wholesale replace
`
`Theobald’s system with the entire USB specification. This was not Petitioner’s
`
`combination. The Petition combined Theobald with two teachings from Shiga: (1)
`
`the physical USB connector and (2) Shiga’s “fourth mode” signaling protocol,
`
`which itself departed from the USB specification. Pet. at 33. The Petition
`
`explained it would have been obvious for a POSITA to modify Theobald with
`
`Shiga’s teachings by: (1) replacing the physical J3-style connector with a USB-
`
`style connector and (2) replacing the “predefined identification information” with
`
`Shiga’s “forth mode” signaling protocol. The combination’s “remaining structural
`
`elements and their connections are identical to those in Theobald’s controller
`
`embodiment.” Pet. at 35.
`
`Nothing in the Petition indicates the combination intended to incorporate
`
`into Theobald anything more from the then-existing USB 2.0 specification than a
`
`
`
`3
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`physical USB connector.1 The Petition is clear that one of skill in the art would
`
`have been motivated to replace the J3 connector of Theobald with the USB
`
`connector taught in Shiga, and that this substitution was a modification to the
`
`physical style of the connector, nothing more. As shown in Petitioner’s illustration
`
`of the Theobald/Shiga combination, only the USB-style connector was swapped in
`
`for the J3-style connector, and Theobald’s logic circuitry remains:
`
`
`
`J3 connector
`interface
`
`
`
`USB connector
`interface
`
`
`
`Theobald, Fig. 1
`
`Theobald/Shiga Combination, Pet. at 34
`
`
`1 The USB 2.0 standard describes both the shape/style of the physical connector
`and the logical signaling requirements (Pet. at 11-21), but the Petition only
`combines USB’s physical connector, not all of its signaling requirements. The
`Petition uses the term “connector” and “interface” to describe the physical
`connections between the electrical device 102 and accessory 104. Pet. at 33-43.
`Had the Petition intended to refer to incorporating all of the logical signaling
`requirements from the USB specification, it would have used the term “USB
`standard” or “USB specification,” as it did elsewhere. See, e.g., Pet. at 11-21
`(describing the history of the USB standards).
`
`
`
`4
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`
`Changing the physical style of the connector from J3 to USB does not imply
`
`a change to the Theobald’s charging protocol or a requirement to comply with the
`
`entirety of the USB specification. Theobald describes the J3 connector as a
`
`physical connector, and there is no signaling protocol or voltage/current
`
`requirements associated with it. Ex. 1005 (Theobald) 1:32-35; 2:63-64, 4:48-51;
`
`Pet. at 23-24. Instead, the J3 connector simply provides a physical interface (i.e.,
`
`an organized series of pins and wires) to mate the electronic device 102 with
`
`accessory device 104. Ex. 1005 (Theobald) 2:63-64 (“The connector 122 [J3] is
`
`for physically and electrically connecting to the accessory 104.”); Pet. at 23-24.
`
`The signaling requirements, including the voltage and the current, of Theobald’s
`
`system are governed by other logic circuitry, wholly independent from the J3
`
`connector. This is exactly why Theobald states that “the standardized eight pin J3-
`
`type accessory connector” could be replaced by “any other suitable multiple pin
`
`accessory connector . . . .” Ex. 1005 (Theobald) 3:21-26; Pet. at 39 (“replacing the
`
`J3 interface with the USB interface merely involves replacing the J3 power,
`
`ground, and data wires with the corresponding USB power, ground, and data
`
`wires”).
`
`Further, the heart of Theobald’s invention is a unique signaling protocol for
`
`“selectively control[ling] the switch circuit . . . to charge the battery from the
`
`external power supply.” Petitioner’s combination starts with Theobald for this
`
`
`
`5
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`very reason, and Petitioner should not be required to explain reasons why it would
`
`be appropriate to not modify Theobald’s controller and signaling protocol. This
`
`would flip the obviousness inquiry on its head and create a burden that no
`
`Petitioner could meet.
`
`In short, it was unnecessary for the Petition to explain reasons for deviating
`
`from the USB signaling set forth in the USB specification because the Petition only
`
`combined Theobald with a USB connector—without importing any other
`
`requirements from the then-existing USB specification.
`
`B. Even If It Were Necessary to Show a Reason Not to Modify
`Theobald, the Petition Provided Reasons Why a POSITA Would
`Have Deviated from the Signaling Protocol in the USB 2.0
`Specification
`
`The Board suggests that Petitioner failed to show why one of skill in the art
`
`“contemplating the use of a USB interface in Theobald, would not simply use a
`
`standard USB controller chip.” Denial Order at 17. But Petitioner did address this
`
`question because the Petition’s combination is with Shiga, not the USB 2.0
`
`Specification. And as Shiga makes clear, his “fourth mode signals” are
`
`specifically designed to deviate from the then-existing USB standard. Ex. 1006
`
`(Shiga), Abstract (“[T]his signal combination is not a USB standard signal
`
`combination.”), 6:53-58); Pet. at 30, 32. Shiga’s motivation for deviating from the
`
`USB standard was to satisfy “a demand for adding value to such computers
`
`
`
`6
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`connected with the USB interface by providing a function that the USB [standard]
`
`does not have.” Ex. 1006 (Shiga), 2:4-8. Thus, Petitioner made clear that Shiga
`
`provided explicit reasons for not “simply using a standard USB controller chip.”
`
`Accordingly, Petitioner’s reasoning is not improper hindsight because the
`
`prior art already provided a reason why a POSITA would have used a USB
`
`connector with a non-USB signaling protocol instead of a standard USB chip.
`
`III. Conclusion
`
`The Board erroneously read Petitioner’s argument to require compatibility
`
`with the entire USB specification. On the contrary, Petitioner’s combination
`
`started with Theobald and combined it with a modified version of USB taught by
`
`Shiga—a USB-style connector and a modified “fourth mode” version of standard
`
`USB signaling. Moreover, even if Petitioner was required to justify why a
`
`POSITA would not have used a standard USB chip, the Petition provided this
`
`motivation. Shiga explicitly taught departing from the standard USB signaling in
`
`order to achieve a specific objective. Read in combination with Theobald, it would
`
`have been obvious that a POSITA would use the physical USB connector and
`
`Shiga’s “fourth mode” signals. For these reasons, Petitioner respectfully requests
`
`rehearing on the Board’s order denying institution and requests that the Board
`
`institute inter partes review under the ground as set forth in the Petition.
`
`
`
`7
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`Date: September 28, 2018
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Charles M. McMahon/
`Charles M. McMahon (Reg. 44,926)
`cmcmahon@mwe.com
`Brian A. Jones (Reg. No. 68,770)
`bajones@mwe.com
`Thomas DaMario (Reg. No. 77,142)
`tdamario@mwe.com
`MCDERMOTT WILL & EMERY
`444 West Lake Street
`Chicago, IL 60606-0029
`T: 312-372-2000
`F: 312-984-7700
`
`Attorneys for Petitioner
`
`
`
`8
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`
`CERTIFICATE OF SERVICE
`
`I certify that I sent a copy of Petitioner’s Request for Rehearing on Order
`
`Denying Institution on September 28, 2018 to:
`
`Hong Annita Zhong at hzhong@irell.com;
`
`Michael Fleming at mfleming@irell.com;
`
`Jason Sheasby at jsheasby@irell.com;
`
`James Milkey at jmilkey@irell.com; and
`
`Patent Owner’s e-mail distribution list at FundamentalIPRs@irell.com.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Brian A. Jones/
`Brian A. Jones
`
`9
`
`
`
`
`
`
`
`Exhibit E
`
`Exhibit E
`
`
`
`Paper No. 18
`Filed: September 28, 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
`
`
`
`REQUEST FOR REHEARING ON ORDER DENYING INSTITUTION
`
`Case No. IPR2018-00274
`Patent 7,834,586 B2
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, AND
`ARTHUR M. PESLAK, Administrative Patent Judges
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`I. Introduction
`
`Petitioner ZTE (USA) Inc. (“Petitioner”) respectfully requests rehearing on
`
`the Board’s decision denying institution of an inter partes review of claims 8, 9,
`
`11, and 13 of U.S. Patent No. 7,834,586 (Ex. 1001, “the ’586 patent”). See Paper
`
`20 (“Denial Order”) at 19. The Board declined to institute review based solely on
`
`a determination “that Petitioner fail[ed] to adequately explain . . . why one of
`
`ordinary skill in the art . . . would not simply use a standard USB controller chip
`
`. . . .” and therefore determined that Petitioners arguments rely on improper
`
`hindsight. Denial Order at 17-18. In arriving at this erroneous conclusion, the
`
`Board misapprehended Petitioner’s actual combination and faulted Petitioner for
`
`failing to explain a combination that it never presented, thus imposing a legally
`
`improper burden on Petitioner. Under a correct understanding of Petitioner’s
`
`combination, the Petition presented a sufficient rationale, and the combination was
`
`not the result of hindsight. For the reasons that follow, Petitioner respectfully
`
`requests rehearing and that the Board institute review.
`
`
`
`1
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`II. Argument
`
`Respectfully, the Board misunderstood Petitioner’s two-reference
`
`obviousness combination and erroneously expected Petitioner to provide reasons
`
`for making a combination that Petitioner never asserted. The Petition identified
`
`U.S. Patent No. 5,925,942 (Ex. 1005, “Theobald”) as the primary reference and
`
`explained how it would have been obvious to make minor modifications to
`
`Theobald in view of teachings in U.S. Patent No. 6,625,738 (Ex. 1006, “Shiga”).
`
`Petitioner explained why it would have been obvious to replace Theobald’s J3-
`
`style connector with the well-known USB-style connector, as was explicitly taught
`
`in Shiga. The Board faulted Petitioner for failing to explain why a physical
`
`connector would be replaced with a USB connector without also replacing the
`
`software signaling protocols from the USB 2.0 Specification, typically
`
`implemented in a standard USB controller chip. Denial Order at 17-18. But this
`
`explanation was unnecessary because using a USB-style hardware connector does
`
`not dictate what software signaling interface must be used, and Petitioner never
`
`argued as much. Indeed, the hardware requirements of a USB connector
`
`(dimensions, number of pins, etc) are independent from the software requirements
`
`(i.e., the signaling protocols). As Petitioner explained, Theobald itself provides a
`
`motivation for replacing its physical connector with other known connector styles,
`
`
`
`2
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`and the USB-connector style was an obvious choice because of its broad industrial
`
`application.
`
`A. The Board Misapprehended Which Combination of Prior Art
`Teachings Were Presented in the Petition
`
`The Board appears to have misunderstood Petitioner’s combination of
`
`Theobald and Shiga by assuming that Petitioner intended to wholesale replace
`
`Theobald’s system with the entire USB specification. This was not Petitioner’s
`
`combination. The Petition combined Theobald with two teachings from Shiga: (1)
`
`the physical USB connector and (2) Shiga’s “fourth mode” signaling protocol,
`
`which itself departed from the USB specification. Pet. at 33. The Petition
`
`explained it would have been obvious for a POSITA to modify Theobald with
`
`Shiga’s teachings by: (1) replacing the physical J3-style connector with a USB-
`
`style connector and (2) replacing the “predefined identification information” with
`
`Shiga’s “forth mode” signaling protocol. The combination’s “remaining structural
`
`elements and their connections are identical to those in Theobald’s controller
`
`embodiment.” Pet. at 35.
`
`Nothing in the Petition indicates the combination intended to incorporate
`
`into Theobald anything more from the then-existing USB 2.0 specification than a
`
`
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`3
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`
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`IPR2018-00274
`Request for Rehearing on Order Denying Institution
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`physical USB connector.1 The Petition is clear that one of skill in the art would
`
`have been motivated to replace the J3 connector of Theobald with the USB
`
`connector taught in Shiga, and that this substitution was a modification to the
`
`physical style of the connector, nothing more. As shown in Petitioner’s illustration
`
`of the Theobald/Shiga combination, only the USB-style connector was swapped in
`
`for the J3-style connector, and Theobald’s logic circuitry remains:
`
`
`
`J3 connector
`interface
`
`
`
`USB connector
`interface
`
`
`
`Theobald, Fig. 1
`
`Theobald/Shiga Combination, Pet. at 34
`
`
`1 The USB 2.0 standard describes both the shape/style of the physical connector
`and the logical signaling requirements (Pet. at 11-21), but the Petition only
`combines USB’s physical connector, not all of its signaling requirements. The
`Petition uses the term “connector” and “interface” to describe the physical
`connections between the electrical device 102 and accessory 104. Pet. at 33-43.
`Had the Petition intended to refer to incorporating all of the logical signaling
`requirements from the USB specification, it would have used the term “USB
`standard” or “USB specification,” as it did elsewhere. See, e.g., Pet. at 11-21
`(describing the history of the USB standards).
`
`
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`4
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`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`
`Changing the physical style of the connector from J3 to USB does not imply
`
`a change to the Theobald’s charging protocol or a requirement to comply with the
`
`entirety of the USB specification. Theobald describes the J3 connector as a
`
`physical connector, and there is no signaling protocol or voltage/current
`
`requirements associated with it. Ex. 1005 (Theobald) 1:32-35; 2:63-64, 4:48-51;
`
`Pet. at 23-24. Instead, the J3 connector simply provides a physical interface (i.e.,
`
`an organized series of pins and wires) to mate the electronic device 102 with
`
`accessory device 104. Ex. 1005 (Theobald) 2:63-64 (“The connector 122 [J3] is
`
`for physically and electrically connecting to the accessory 104.”); Pet. at 23-24.
`
`The signaling requirements, including the voltage and the current, of Theobald’s
`
`system are governed by other logic circuitry, wholly independent from the J3
`
`connector. This is exactly why Theobald states that “the standardized eight pin J3-
`
`type accessory connector” could be replaced by “any other suitable multiple pin
`
`accessory connector . . . .” Ex. 1005 (Theobald) 3:21-26; Pet. at 39 (“replacing the
`
`J3 interface with the USB interface merely involves replacing the J3 power,
`
`ground, and data wires with the corresponding USB power, ground, and data
`
`wires”).
`
`Further, the heart of Theobald’s invention is a unique signaling protocol for
`
`“selectively control[ling] the switch circuit . . . to charge the battery from the
`
`external power supply.” Petitioner’s combination starts with Theobald for this
`
`
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`5
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`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`very reason, and Petitioner should not be required to explain reasons why it would
`
`be appropriate to not modify Theobald’s controller and signaling protocol. This
`
`would flip the obviousness inquiry on its head and create a burden that no
`
`Petitioner could meet.
`
`In short, it was unnecessary for the Petition to explain reasons for deviating
`
`from the USB signaling set forth in the USB specification because the Petition only
`
`combined Theobald with a USB connector—without importing any other
`
`requirements from the then-existing USB specification.
`
`B. Even If It Were Necessary to Show a Reason Not to Modify
`Theobald, the Petition Provided Reasons Why a POSITA Would
`Have Deviated from the Signaling Protocol in the USB 2.0
`Specification
`
`The Board suggests that Petitioner failed to show why one of skill in the art
`
`“contemplating the use of a USB interface in Theobald, would not simply use a
`
`standard USB controller chip.” Denial Order at 17. But Petitioner did address this
`
`question because the Petition’s combination is with Shiga, not the USB 2.0
`
`Specification. And as Shiga makes clear, his “fourth mode signals” are
`
`specifically designed to deviate from the then-existing USB standard. Ex. 1006
`
`(Shiga), Abstract (“[T]his signal combination is not a USB standard signal
`
`combination.”), 6:53-58); Pet. at 30, 32. Shiga’s motivation for deviating from the
`
`USB standard was to satisfy “a demand for adding value to such computers
`
`
`
`6
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`
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`IPR2018-00274
`Request for Rehearing on Order Denying Institution
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`connected with the USB interface by providing a function that the USB [standard]
`
`does not have.” Ex. 1006 (Shiga), 2:4-8. Thus, Petitioner made clear that Shiga
`
`provided explicit reasons for not “simply using a standard USB controller chip.”
`
`Accordingly, Petitioner’s reasoning is not improper hindsight because the
`
`prior art already provided a reason why a POSITA would have used a USB
`
`connector with a non-USB signaling protocol instead of a standard USB chip.
`
`III. Conclusion
`
`The Board erroneously read Petitioner’s argument to require compatibility
`
`with the entire USB specification. On the contrary, Petitioner’s combination
`
`started with Theobald and combined it with a modified version of USB taught by
`
`Shiga—a USB-style connector and a modified “fourth mode” version of standard
`
`USB signaling. Moreover, even if Petitioner was required to justify why a
`
`POSITA would not have used a standard USB chip, the Petition provided this
`
`motivation. Shiga explicitly taught departing from the standard USB signaling in
`
`order to achieve a specific objective. Read in combination with Theobald, it would
`
`have been obvious that a POSITA would use the physical USB connector and
`
`Shiga’s “fourth mode” signals. For these reasons, Petitioner respectfully requests
`
`rehearing on the Board’s order denying institution and requests that the Board
`
`institute inter partes review under the ground as set forth in the Petition.
`
`
`
`7
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`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`Date: September 28, 2018
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Charles M. McMahon/
`Charles M. McMahon (Reg. 44,926)
`cmcmahon@mwe.com
`Brian A. Jones (Reg. No. 68,770)
`bajones@mwe.com
`Thomas DaMario (Reg. No. 77,142)
`tdamario@mwe.com
`MCDERMOTT WILL & EMERY
`444 West Lake Street
`Chicago, IL 60606-0029
`T: 312-372-2000
`F: 312-984-7700
`
`Attorneys for Petitioner
`
`
`
`8
`
`
`
`IPR2018-00274
`Request for Rehearing on Order Denying Institution
`
`
`CERTIFICATE OF SERVICE
`
`I certify that I sent a copy of Petitioner’s Request for Rehearing on Order
`
`Denying Institution on September 28, 2018 to:
`
`Hong Annita Zhong at hzhong@irell.com;
`
`Michael Fleming at mfleming@irell.com;
`
`Jason Sheasby at jsheasby@irell.com;
`
`James Milkey at jmilkey@irell.com; and
`
`Patent Owner’s e-mail distribution list at FundamentalIPRs@irell.com.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Brian A. Jones/
`Brian A. Jones
`
`9
`
`
`
`
`
`
`
`Exhibit A
`
`Exhibit A
`
`
`
`McMahon, Charlie
`Baker, Jodi
`FW: IPR2018-00274: Rehearing Request Filed - ZTE (USA) Inc. v. Fundamental Innovation Systems International
`LLC
`Friday, September 28, 2018 7:18:14 PM
`
`From:
`To:
`Subject:
`
`Date:
`
`
`
`From: PTABE2E_System@uspto.gov
`Sent: Friday, September 28, 2018 7:18:08 PM (UTC-06:00) Central Time (US & Canada)
`To: McMahon, Charlie; hzhong@irell.com; mfleming@irell.com
`Cc: alan.rabinowitz@kirkland.com; egoryunov@kirkland.com; greg.arovas@kirkland.com;
`robert.appleby@kirkland.com; todd.friedman@kirkland.com
`Subject: IPR2018-00274: Rehearing Request Filed - ZTE (USA) Inc. v. Fundamental Innovation Systems
`International LLC
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`Rehearing Request Filed Notice
`
`THERE WERE NO DOCUMENTS SUBMITTED WITH THIS REQUEST
`
`Patent Owner:
`
`AIA Review No.:
`Petitioner:
`
`IPR2018-00274
`ZTE (USA) Inc. et al. of Richardson, TX
`Fundamental Innovation Systems International LLC et al. of
`Flower Mound, TX
`Patent No.:
`7834586
`Rehearing Filing Party: Petitioner
`Rehearing Type:
`Institution Decision
`Submitted Date:
`09/28/2018
`Submitted By:
`Charles McMahon, cmcmahon@mwe.com
`
`A Rehearing Request has been filed.
`
`Questions regarding this receipt should be directed to the Patent Trial and Appeal Board at
`571-272-7822 or e-mail to Trials@uspto.gov.
`
`This e-mail is computer-generated. Do not reply to this e-mail because the e-mail box is not
`monitored.
`
`
`
`
`
`
`
`Exhibit B
`
`Exhibit B
`
`
`
`From:
`To:
`
`Cc:
`Subject:
`Date:
`Attachments:
`
`Baker, Jodi
`"hzhong@irell.com"; "mfleming@irell.com"; "jsheasby@irell.com"; "jmilkey@irell.com";
`"FundamentalIPRs@irell.com"
`McMahon, Charlie; Jones, Brian; DaMario, Thomas
`IPR2018-00274
`Friday, September 28, 2018 7:20:56 PM
`2018-09-28 Petitioner Request for Rehearing.pdf
`
`Counsel:
`
`Attached please find Petitioner’s Request for Rehearing on Order Denying Institution, as filed today
`in the above-identified IPR proceeding with the Patent Trial and Appeal Board.
`
`Best regards,
`Jodi
`
`
`Jodi R. Baker
`IP Litigation Paralegal
`McDermott Will & Emery LLP | 444 West Lake Street, Suite 4000 | Chicago, IL 60606-0029
`Tel +1 312 984 7558 | Fax +1 312 984 7700
`Website
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