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
`___________________
`
`DECLARATION OF DR. KENNETH FERNALD IN SUPPORT OF
`PATENT OWNER'S 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
`
`10520564
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION.................................................................................. 4
`
`USB 2.0 ................................................................................................ 11
`
`A.
`
`USB Enumeration ...................................................................... 12
`
`III.
`
`THE ROLE OF THE SE1 SIGNAL .................................................... 20
`
`A.
`
`SE1 Disables USB Communications......................................... 21
`
`1.
`
`2.
`
`3.
`
`Samsung Expert's Testimony........................................... 21
`
`The Panel Decision In IPR2018-00111........................... 24
`
`Effect of SE1 On Power .................................................. 25
`
`B.
`
`Use Of SE1 In Cited References................................................ 27
`
`IV. ANALOGOUS ART ............................................................................ 32
`
`A.
`
`Shiga Is Not Analogous Art....................................................... 32
`
`V.
`
`THEOBALD AND SHIGA DO NOT RENDER THE CLAIMS
`OBVIOUS ............................................................................................ 33
`
`A.
`
`B.
`
`C.
`
`D.
`
`Petitioner's Combination Does Not Render Obvious
`"Having An Identification Signal Being Different Than
`USB Enumeration" (Claims 8-9) ............................................... 33
`
`Petitioner's Combination Does Not Render Obvious "A
`Microprocessor And Memory To Process The Signals
`Received On The USB Interface Lines (Claims 11-12) ............ 36
`
`Petitioner's Combination Does Not Render Obvious A
`"Plurality Of Charge Modes" (Claims 11-12) ........................... 38
`
`It Would Not Be Obvious To Combine Theobald And
`Shiga........................................................................................... 40
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`Page
`
`1.
`
`2.
`
`3.
`
`4.
`
`There Would Have Been No Reasonable
`Expectation That Using A SE1 Signal On USB
`Data Lines Would Succeed.............................................. 40
`
`Petitioner Ignores Theobald's Instruction To Use
`"A Suitable High Speed Data Communication
`Protocol." ......................................................................... 45
`
`Enumeration Can Be Used For Identification Of
`Non-Standard Power Sources.......................................... 45
`
`Petitioner Ignores Alternative Means Of
`Identification.................................................................... 48
`
`a)
`
`b)
`
`c)
`
`Petitioner Ignores Embodiment Where
`Information Is Sent Over A Single Line ............... 49
`
`Petitioner Ignores Identification Pin ..................... 49
`
`Petitioner Ignores Signaling Over Power
`Lines ...................................................................... 51
`
`5.
`
`Theobald Would Not Consider A USB Interface
`To Be A "Suitable" Replacement .................................... 51
`
`a)
`
`b)
`
`USB Does Not Replicate The Functions Of
`A J3 Connector...................................................... 52
`
`USB Does Not Allow For Backwards
`Compatibility with Theobald's Accessories.......... 53
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`I.
`
`INTRODUCTION
`
`1.
`
`My name is Kenneth Fernald, Ph.D. My qualifications are
`
`summarized below and are addressed more fully in my CV attached as
`
`EXHIBIT A.
`
`2.
`
`For 30-years I have been involved in the design of integrated
`
`circuits. A large portion of my work has involved the design of integrated
`
`circuits that involve power management, battery charging, and USB control.
`
`I have designed USB controllers that have sold in the hundreds of millions of
`
`units, and I was intimately involved in this field during the time of the patents
`
`at issue in this case.
`
`3.
`
`I earned my Bachelor of Science and Master of Science degrees in
`
`Electrical Engineering from North Carolina State University (NCSU) in 1985
`
`and 1987. During this period I worked for the Space Electronics Group
`
`developing software for predicting the effects of radiation environments on
`
`integrated circuits. I also consulted for the Naval Research Laboratory (NRL).
`
`My services to NRL included the design of dosimetry instrumentation and the
`
`execution of radiation studies on electronic devices at various facilities around
`
`the United States. I joined NASA Langley Research Center in 1987 where I
`
`designed motor control instruments and firmware for ground and space station
`
`experiments.
`
`4.
`
`I returned to NCSU in 1988 to earn my Ph.D. in Electrical
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`Engineering. My doctoral research efforts were funded by the National
`
`Science Foundation and focused on the development of medical systems
`
`utilizing wireless digital telemetry. My work included a thorough investigation
`
`of medical telemetry technology and design of a microprocessor-based system
`
`for the fast prototyping of implantable medical instruments. I also completed
`
`the design and testing of various components of this system, including a
`
`bidirectional digital telemetry integrated circuit (IC) and a general-purpose
`
`sensor interface and conversion IC. I completed my Ph.D. in 1992, after which
`
`I joined Intermedics Inc. in Angleton, Texas.
`
`5.
`
`My responsibilities at Intermedics included system and circuit
`
`design of telemetry, signal-processing, and control ICs for medical devices.
`
`Examples include the design of a sensor acquisition, compression, and storage
`
`IC for implantable pacemakers and defibrillators. I also worked on advanced
`
`wireless digital telemetry technology, control ICs for therapy delivery in
`
`defibrillators, and software development for sensor waveform compression and
`
`recovery. I left Intermedics in 1998 to join Analog Devices Inc. in Greensboro,
`
`NC.
`
`6.
`
`My work at Analog Devices included the design of advanced ICs
`
`for wireless digital communication devices. Specific projects included the
`
`design, debug, and testing of a base-band receiver IC for digital satellite
`
`systems. This IC performed QPSK demodulation, symbol recovery, and
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`forward-error correction for high-bandwidth wireless video signals. I also
`
`performed system design for a CDMA base-band transceiver IC for personal
`
`communication devices.
`
`7.
`
`I rejoined Intermedics in 1998 as the first employee of an IC
`
`design group in Austin, Texas. I continued to work on next-generation medical
`
`telemetry ICs until Intermedics was acquired by Guidant in 1999. At that time
`
`I joined Cygnal Integrated Products, a startup company in Austin, Texas. My
`
`responsibilities at Cygnal included the design and development of mixed-signal
`
`embedded products for industrial and instrumentation applications. Specific
`
`projects included the design of a proprietary communication system for in-
`
`system debug, a proprietary clock recovery method for USB devices, and the
`
`design of numerous analog and digital circuits and systems. I remained at
`
`Cygnal until its acquisition by Silicon Laboratories Inc. in 2003, at which time
`
`I joined Zilker Labs, a start-up company in Austin, Texas, as their first VP of
`
`Engineering and later became their Chief Technical Officer.
`
`8.
`
`My responsibilities at Zilker Labs included the development of
`
`advanced IC technologies for power management and delivery for board-level
`
`electronic systems. Specific duties included architecture design and firmware
`
`development for all Zilker Labs products. I left Zilker Labs in 2006 to join
`
`Keterex as their first VP of Engineering. My responsibilities at Keterex
`
`included management of engineering resources, design and layout of
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`application-specific integrated circuits, and development of software and
`
`firmware for Keterex products. I joined Silicon Laboratories in 2010 as a
`
`Principal Design Engineer and now hold the title of Fellow. My
`
`responsibilities include architecture development and design of 8-bit and 32-bit
`
`microcontrollers. Projects have included microcontrollers for metrology,
`
`motor control, and low-power and USB applications.
`
`9.
`
`I hold over 60 patents on technologies such as wireless telemetry
`
`for medical devices, low-power analog-to-digital converters, security in
`
`embedded systems, clock recovery in communication systems, serial
`
`communication protocols, and power management and conversion. I have
`
`authored or co-authored over 25 articles, presentations, and seminars on topics
`
`including radiation effects in microelectronics, wireless medical devices, low-
`
`power circuit design, circuit design for digital communications,
`
`microcontrollers and embedded systems, and power management. I am also a
`
`co-author of the PMBus™ Power System Management Protocol Specification.
`
`10.
`
`I have been asked by Fundamental Innovation Systems
`
`International LLC to explain the technologies involved in U.S.7,834,586, (the
`
`"'586 Patent") the technologies described in the cited references, the knowledge
`
`of a person of ordinary skill in the art at the time of the invention, and other
`
`pertinent facts and opinions regarding IPR2018-00274. For the purpose of this
`
`declaration, I apply the same skill level as proposed in the Petition, although I
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`reserve the right to explain why this level is too high. I am being compensated
`
`for my work on this case at a fixed, hourly rate, plus reimbursement for
`
`expenses. My compensation does not depend on the outcome of this case or
`
`any issue in it, and I have no interest in this proceeding.
`
`11.
`
`I have submitted (or will soon submit) declarations on the '586
`
`Patent in IPR2018-00493 and related patents in IPR2018-00110, and IPR2018-
`
`00111. In addition, I have submitted expert reports in the related case of
`
`Fundamental Innovations Systems, Int. LLC v. Samsung Elec. Co., Ltd., Case
`
`No. 2:17-cv-145-JRG-RSP (E.D. Tex).
`
`12.
`
`13.
`
`[intentionally left blank]
`
`Petitioners have asserted that claims 8-10 and 11-13 (the
`
`"challenged claims") of the '586 Patent are obvious in light of U.S. Patent No.
`
`5,925,942 (Theobald, Exhibit 1005), and U.S. Patent No. 6,625,738 (Shiga,
`
`Exhibit 1006). I understand that claims 10 and 13 are no longer at issue,
`
`however, due to the Patent Owner's disclaimer of those claims. I have
`
`compared the petition from IPR2018-00111 with this Petition and created a
`
`chart that juxtaposes language from the two petitions describing the
`
`obviousness of combining Shiga with either Rogers (the primary reference in
`
`the -00111 Petition) or Theobald. This chart is attached below:
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`The Petitions' Identical Justifications For Combining
`Shiga's SE1 Signal With Rogers Or Theobald
`-00111 Petition
`-00274 Petition
`Shiga's teachings provide a
`Shiga discloses a suitable, and
`suitable, and logical, choice: the
`logical, choice …: the "fourth mode"
`"fourth mode" signals. As Shiga
`signals. As Shiga discloses, there were
`taught, there were only four signaling
`only four signaling combinations over
`combinations over D+ and D-, and
`D+ and D-, and three of them (i.e.,
`three of them (i.e., LH, HL, and LL)
`LH, HL, and LL) were reserved for
`were reserved for standard data
`standard data signaling in the low-
`signaling in the low-speed, full-speed,
`speed, full-speed, and unconnected
`and unconnected states. The
`states. The remaining signaling
`remaining signaling combination, the
`combination, the "fourth mode"
`"fourth mode" signals, was not
`signals, was not reserved for standard
`reserved for standard data signaling
`data signaling and therefore could "be
`and therefore could "be easily
`easily distinguished from USB
`distinguished from USB standard data
`standard data signals." This would
`signals." This would have been a
`have been a logical signaling
`logical signaling combination for
`combination for POSITAs looking for
`POSITAs looking for a suitable
`a suitable signaling combination from
`signaling combination from the
`the accessory circuitry to the
`controller 108. See Unwired Planet,
`telephone accessory to the telephone
`base unit in Rogers. See Unwired
`LLC v. Google Inc., 841 F.3d 995,
`Planet, LLC v. Google Inc., 841 F.3d
`1003 (Fed. Cir. 2016) ("[I]f a
`995, 1003 (Fed. Cir. 2016) ("[I]f a
`technique has been used to improve
`technique has been used to improve
`one device, and a person of ordinary
`one device, and a person of ordinary
`skill in the art would recognize that it
`skill in the art would recognize that it
`would improve similar devices in the
`would improve similar devices in the
`same way, using the technique is
`same way, using the technique is
`obvious unless its actual application is
`obvious unless its actual application is
`beyond his or her skill."). As
`beyond his or her skill.") As discussed
`discussed above, applying Shiga's
`above, applying Shiga's fourth mode
`fourth mode signals to Theobald's
`signals to Rogers' system is not
`system is not beyond a POSITA's
`beyond a POSITA's skill; it is a trivial
`skill; it is a trivial implementation.
`implementation.
`
`Pet. at 41
`
`-00111 Pet. at 43
`Further motivation comes from
`Shiga's teaching that its "fourth mode"
`
`Third, Shiga discloses that its
`"fourth mode" signals are "not USB
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`signals are "not USB standard
`signals," and can therefore "be easily
`distinguished from USB standard data
`signals." To avoid interfering with
`standard USB signaling, POSITAs
`would not have selected USB standard
`signals in the procedure for powering
`the telephone accessory over the USB
`interface. Shiga's "fourth mode"
`signals were a logical choice because
`they could "be easily distinguished
`from USB standard data signals."
`
`-00111 Pet. at 43-44
`
`standard signals," and can therefore
`"be easily distinguished from USB
`standard data signals." To avoid
`interfering with standard USB
`signaling, POSITAs would not have
`selected USB standard signals in the
`procedure for identifying the
`accessory 104 to the device 102 over
`the USB interface. Shiga's "fourth
`mode" signals were a logical choice
`because they could "be easily
`distinguished from USB standard data
`signals."
`
`Pet. at 42
`
`The background knowledge of
`POSITAs confirmed that Shiga's
`"fourth mode" signals would have
`been a logical, and trivial, choice for
`the affirmative response in Rogers'
`system. "[A] prior art reference must
`be considered together with the
`knowledge of one of ordinary skill in
`the art." In re Paulsen, 30 F.3d 1475,
`1480 (Fed. Cir. 1994); see Unwired
`Planet, 841 F.3d at 1003 (The
`rationale to combine can come from
`"the background knowledge possessed
`by a person of ordinary skill in the
`art."); see also KSR Int'l v. Teleflex
`Inc., 550 U.S. 398, 421 (2007).
`POSITAs would have known the USB
`standard and its different signaling
`states, including the SE1 condition
`(i.e., logic high on D+ and D-). See
`Section V.B (pp. 5-14). POSITAs also
`would have known that the SE1
`condition would be a logical choice
`for conveying information about a
`device without interfering with USB
`
`[T]he background knowledge of
`POSITAs confirmed that Shiga's
`"fourth mode" signals would have
`been a logical, and trivial, choice for
`the predefined identification
`information. "[A] prior art reference
`must be considered together with the
`knowledge of one of ordinary skill in
`the art." In re Paulsen, 30 F.3d 1475,
`1480 (Fed. Cir. 1994); see Unwired
`Planet, 841 F.3d at 1003 (The
`rationale to combine can come from
`"the background knowledge possessed
`by a person of ordinary skill in the
`art."); see also KSR Int'l v. Teleflex
`Inc., 550 U.S. 398, 421 (2007).
`POSITAs would have known the USB
`standard and its different signaling
`states, including the SE1 condition
`(i.e., logic high on D+ and D-). See
`Section IV.B. POSITAs also would
`have known that the SE1 condition
`would be a logical choice for
`conveying information about a device
`without interfering with USB
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`signaling. See Section V.B (pp. 5-14).
`Reading the Rogers and Shiga
`references in light of their knowledge,
`POSITAs would have immediately
`appreciated that Shiga's "fourth mode"
`signals (which implement the SE1
`condition) are a common sense choice
`for Rogers' affirmative response.
`Thus, based on their background
`knowledge, POSITAs would have
`recognized that Shiga's "fourth mode"
`signals would accomplish Rogers'
`objective and improve Rogers' system
`without interfering with USB
`signaling. See Unwired Planet, 841
`F.3d at 1003 (Fed. Cir. 2016) ("For
`the technique's use to be obvious, the
`skilled artisan need only be able to
`recognize, based on her background
`knowledge, its potential to improve
`the device and be able to apply the
`technique.").
`
`signaling. See Section IV.B. Reading
`Theobald and Shiga in light of their
`knowledge, POSITAs would have
`immediately appreciated that Shiga's
`"fourth mode" signals (which
`implement the SE1 condition) are a
`common sense choice for Theobald's
`predefined identification information.
`Thus, based on their background
`knowledge, POSITAs would have
`recognized that Shiga's "fourth mode"
`signals would accomplish Theobald's
`objective and improve Theobald's
`system without interfering with USB
`signaling. See Unwired Planet, 841
`F.3d at 1003 (Fed. Cir. 2016) ("For
`the technique's use to be obvious, the
`skilled artisan need only be able to
`recognize, based on her background
`knowledge, its potential to improve
`the device and be able to apply the
`technique.").
`
`-00111 Pet. at 44-45
`
`Pet. at 42-43
`
`II.
`
`USB 2.0
`
`14.
`
`The Universal Serial Bus ("USB") architecture is a "cable bus that
`
`supports data exchange between a host computer and a wide range of
`
`simultaneously accessible peripherals." Ex. 1007 at 15; Ex. 1008 at 15. Up to
`
`127 USB devices can be directly or indirectly connected to a single host. Ex.
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`1007 at 13; Ex. 1008 at 13.1
`
`15. When a USB device is plugged into a USB host or hub, power can
`
`be provided by the host or the hub. The USB host and connected device
`
`negotiate power allocation so that sufficient power can be directed to each
`
`connected device without overdrawing power from the host. Ex. 1008 at 16-
`
`19; Ex. 1007 at 18. At the time of the inventions, the USB specifications
`
`limited the amount of current that a device may draw to 500 milliamps (mA)
`
`after configuration and 100 mA before configuration. Ex. 1008 at 178, 243-44;
`
`Ex. 1007 at 142, 179.
`
`A.
`
`USB Enumeration
`
`16. When a USB device is plugged into a host's USB port, the host
`
`and the device undergo a series of handshakes in order for the host to access
`
`the device's functions. This process—which involves "initial exchange of
`
`information that enables the host's device driver to communicate with the
`
`device"—is called enumeration. Ex. 2003 ["USB Complete"] at 74.
`
`17.
`
`The enumeration process involves a series of steps. First, when a
`
`user plugs the device in to the powered port of a USB hub, the device enters
`
`the "powered" state. Ex. 2003 at 76; Ex. 2006 at 96. In this state, the device
`
`may receive power from the USB hub—however, it may not draw more than
`
`1 The citations to Exhibits 1007, 1008, 2002, 2003 and 2006 are to the
`original page numbers.
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`100 mA from VBUS until it is configured. Ex. 1008 at 242-43. Furthermore,
`
`the USB port to which the device is attached is disabled (Ex. 1008 at 243), and
`
`the USB device cannot respond to any requests from the USB bus until it
`
`receives a "reset" command from the bus. Ex. 1008 at 242.
`
`18. Next, the hub detects the device by "monitor[ing] the voltages on
`
`the signal lines of each of its ports." Ex. 2003 at 76; Ex. 2006 at 96. In this
`
`step, the USB device sends a high voltage on either the D+ or D- line. Id. The
`
`USB hub detects the voltage and determines that the device is either a full-
`
`speed device (if D+ is high) or a low-speed device (if D- is high). Ex. 2003 at
`
`76, 77; Ex. 2006 at 96, 97 (detecting whether full-speed device supports high
`
`speed); Ex. 1008 at 243. Upon detecting the device, the hub "continues to
`
`provide power but doesn't transmit USB traffic to the device." Ex. 2003 at 76;
`
`Ex. 2006 at 96. The hub then reports to the host that one of its ports (and
`
`indicates which port) has experienced an event. Id.
`
`19.
`
`The host learns of the nature of the event, and of the attachment of
`
`the new device, by sending a "Get_Port_Status" request. Ex. 2003 at 76; Ex.
`
`2006 at 96.
`
`20.
`
`Then, the host issues a port enable and reset command to the port,
`
`which puts the port into the "enabled" state. Ex. 1008 at 243; Ex. 2003 at 76-
`
`77; Ex. 2006 at 97-99. In an enabled state, the host can now signal the
`
`connected USB device with control packets.
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`21. After the reset, the USB device enters the "default" state and can
`
`still draw no more than 100 mA from the VBUS line. Id. In this stage, the
`
`USB device uses the "default address" of 0 to receive control requests. Ex.
`
`1008 at 243; Ex. 2003 at 77; Ex. 2006 at 97.
`
`22.
`
`The USB host then reads the device's device descriptor to
`
`determine the maximum data payload the USB device can use. Id. Maximum
`
`data payload refers to the maximum packet size. Id. Either before or after the
`
`USB host requests the device's device descriptor to determine the maximum
`
`payload, the host assigns a unique address to the USB device, such that it is in
`
`the "Address" state. Ex. 1008 at 243; Ex. 2003 at 77-78; Ex. 2006 at 98.
`
`23.
`
`The host then "sends a Get_Descriptor" request to the new address
`
`to learn about the device's abilities. Ex. 2003 at 78; Ex. 2006 at 98. The
`
`standard USB descriptors include the following fields (see Ex. 1008 at 262-63,
`
`Table 9-8):
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`24.
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`The descriptor description above matches that listed in U.S.
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`5,884,086 ("Amoni"), Table II. As noted by Amoni, the descriptors can
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`include information unique to a device, including its nonstandard voltage or
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`current configurations. For example, such information can be encoded by
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`"assign[ing] a vendor specific Device Class . . . and designat[ing] a unique
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`device sub-class assignment with unique encoded voltage and power
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`requirements." Ex. 1019 [Amoni] at 7:16-19. Alternatively, the information
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`can be encoded with "a Product String Index [iProduct] pointing to a string
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`containing voltage and current requirements." Id. at 7:27-29.
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`25.
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`The host continues to learn about the device "by requesting the
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`one or more configuration descriptors specified in the device descriptor." Ex.
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`2003 at 78. The configuration descriptor has the following fields (Ex. 1008 at
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`265-66, Table 9-10). As Amoni noted, the iConfiguration field can also be
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`used to encode a device's nonstandard voltage or current configuration, e.g.,
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`with the index "point[ing] to the location of a text string of UNICODE format"
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`as specified in section 9.6.7 of USB 2.0. Ex. 1019 [Amoni] at 7:37-44.
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`26.
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`The host then reads the "configuration" information from the
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`device, which contains information about the device's capabilities. Ex. 1008 at
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`243; Ex. 2003 at 77-78; Ex. 2006 at 98-99. Finally, the host assigns a
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`configuration value to the USB device, which puts the device into the
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`"configured" state. Ex. 1008 at 244; Ex. 2003 at 79; Ex. 2006 at 99-100.
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`Before this step, since the host does not yet know what additional functionality
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`the device can support, the host will only issue standard device requests, and
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`hence the device will only respond to standard device requests. See Ex. 1008
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`at 250-51 (describing the various standard device requests and noting that
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`"USB devices must respond to standard device requests, even if the device has
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`not yet been assigned an address or has not been configured"); Ex. 2003 at 37
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`(application communications began after enumeration); Ex. 2006 at 41 (same).
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`After it is configured, however, the device can participate in additional USB
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`communications, and draw an amount of power across the VBUS according to
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`its configuration. Ex. 1008 at 243-44; Ex. 2003 at 79; Ex. 2006 at 99-100.
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`27.
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`Either shortly before, or shortly after, the USB device enters the
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`"configured" state, the host assigns and loads a device driver. See Ex. 2003 at
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`78-79; Ex. 2003 at 99. While the USB 2.0 specification does not explicitly
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`describe loading the device driver as being part of the enumeration process (see
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`Ex. 1008 at 243-44), the process of loading the device driver is closely related
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`to enumeration and depends on information obtained during the enumeration
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`process, particularly in the Windows operating system. See Ex. 2003 at 78-79
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`("In selecting a driver, Windows tries to match the Vendor and Product IDs,
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`Release Number, and or class information retrieved from the device with the
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`information stored in the system's INF files."); Ex. 2006 at 99 (same); see also
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`Ex. 1008 at 285 (during device configuration, "[t]he configuring software first
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`reads the device descriptor, then requests the description for each possible
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`configuration. It may use the information provided to load a particular client,
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`such as a device driver, which initially interacts with the device. The
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`configuring software, perhaps with input from that device driver, chooses a
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`configuration for the device."). Thus, regardless of whether loading a driver is
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`explicitly part of enumeration, loading the driver cannot occur in the absence
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`of enumeration.
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`28.
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`Shortly after the enumeration process has been completed, the
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`device has transitioned from being unrecognized by the USB host, to being
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`identified, configured, and ready for operation. This configuration is critical to
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`normal operation of the USB device, because "[a] USB device must be
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`configured before its function(s) may be used." Ex. 1008 at 244. The USB
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`device may now also draw power over the VBUS line according to the
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`configuration information set by the USB host. Id.
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`29. When a hub instead of a device is connected to a host, the host
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`also undergoes enumeration with the hub (as well as any devices attached to
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`the hub) using the same procedures as described above. Ex. 2003 at 79-80; Ex.
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`2006 at 100.
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`III. THE ROLE OF THE SE1 SIGNAL
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`30. One of the states that the USB data lines can be in is the "SE1"
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`state, "in which both the D+ and D- lines are held at high voltage. Ex. 1008 at
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`123. In Shiga, SE1 is described as a "fourth-mode." Ex. 1006 at 6:42-44 ("The
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`first signal line D+ and the second line D- are in a fourth mode in which both
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`signal lines D+ and D- are in the H state.").
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`31.
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`Petitioners allege that a POSA "would have known that the SE1
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`condition would be a logical choice for conveying information about a device
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`without interfering with USB signaling." Pet. at 18, 43.
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`32.
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`I disagree with Petitioners' conclusions. It is of course possible to
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`use an SE1 signal effectively, as established by the '586 patent. But a POSA
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`would conclude that the attempt to fit it into the Theobald system is not viable.
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`A.
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`33.
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`SE1 Disables USB Communications
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`Petitioner's combination relies on a SE1 signal to act as an
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`identification signal. However, a person of ordinary skill in the art would also
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`understand that providing identification signals (such as voltages in excess of
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`0.8V, i.e. an SE1 signal, as Petitioner suggests) at D+ and D- lines would
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`interfere with USB data communication between Theobald's accessory and
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`adapter.
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`34.
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`The USB specification warns that "USB drivers must never
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`'intentionally' generate an SE1 on the bus." Ex. 1008 at 123. As described
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`below, the USB 2.0 specification then describes some of the negative
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`consequences of using SE1 on the bus. Id. at 316, Section 11.5.2.2.
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`1.
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`Samsung Expert's Testimony
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`35.
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`Indeed, Petitioners' assertions contradict the knowledge of a
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`POSA, as Samsung's expert correctly testified that SE1 signaling interferes
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`with, and indeed terminates, USB communication (Ex. 2005 [Garney] at
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`260:17-262:10):
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`Q. So if an SE1 condition is detected, what are the two events
`that will occur?
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`A. What this is saying is if an SE1 is detected by a hub, then
`it's required to disconnect the device, and if an SE1 is
`detected by an attached device it would detect as a reset --
`just a minute. Let me read this more carefully.
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`The SE1 condition has to exist for more than two-1/2
`microseconds, which is the definition of a reset condition.
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`Q. And when you have 2.5 microseconds of the SE1 condition,
`the hub will disconnect itself from the device, correct?
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`A.
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`If a hub sees an SE1 condition for more than 2-1/2
`microseconds, it would put the port into a disconnect state.
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`Q: And what does that mean, being in a disconnect state?
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`A. The things that are attached to that -- to that hub at that port
`would be -- another word that's used is a disabled port.· No
`more signalling -- no more data signalling would be
`delivered across that communication -- across that
`connection between the hub and the attached device or
`hub that might be connected to it.
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`. . .
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`Q