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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`ZTE (USA) Inc.,
`Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc.,
`Petitioner,
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`___________________
`
`Case IPR2018-00276
`Patent No. 7,239,111
`___________________
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC’s
`PATENT OWNER PRELIMINARY RESPONSE
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`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2018-00276
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`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`Introduction ................................................................................................... 1
`Background On The USB Communication Protocol ................................... 8
`A.
`Enumeration to Establish Communication Between Host And
`Device ................................................................................................. 8
`Single Ended 1 (“SE1”) Line State .................................................... 9
`B.
`Summary Of The ’111 Patent ..................................................................... 11
`III.
`IV. The Prior Art References Differ From The ’111 Inventions ...................... 13
`A.
`Theobald Overview .......................................................................... 13
`B.
`Dougherty Overview ........................................................................ 15
`1.
`Dougherty’s Docking Station ................................................ 15
`2.
`Dougherty’s Alleged Improvement Over Prior Art ............... 16
`3.
`Dougherty’s Docking Station Logic ...................................... 18
`(a) Docking When Laptop Is Operational ......................... 18
`(b) Docking When Laptop Is Non-Operational
`(Dead Battery Or No Battery) ..................................... 20
`Shiga Overview ................................................................................ 20
`C.
`Skill Level Of A POSA .............................................................................. 22
`V.
`VI. Claim Construction ..................................................................................... 22
`VII. The Board Should Deny The Petition Under 325(d) .................................. 23
`VIII. Grounds 1 and 2: Claims 1-3, 6-8, and 16-18 Are Not Obvious
`Over Theobald In View Of Shiga (And Optionally Kfoury) ..................... 24
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`B.
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`C.
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`D.
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`2.
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`3.
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`4.
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`5.
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`Petitioner Fails To Present Any Competent Evidence That
`The Proposed Combination Discloses An Identification
`Signal “Configured To Indicate To The Mobile Device That
`The Power Socket Is Not A USB Host Or Hub” (All Claims) ........ 24
`Petitioner Fails To Present Any Competent Evidence That
`The Proposed Combination Would Be Operable ............................. 28
`Petitioner Fails To Provide Any Competent Factual Basis For
`Its Assertion Of A Motivation To Combine Theobald And
`Shiga ................................................................................................. 35
`1.
`The Petition Fails To Explain Why USB Would Be A
`Suitable Replacement For J3 In Theobald ............................. 36
`The Petition Fails To Explain Why A POSA Would
`Have Used The Non-Standard SE1 Signal In
`Theobald’s System ................................................................. 39
`The Petition Fails To Explain Why A POSA Would
`Have Been Motivated To Modify Theobald’s System
`To Identify Itself As Not Being A USB Host/Hub ................ 42
`The Petition Fails To Explain Why A POSA Would
`Have Ignored USB-Standard Identification Techniques
`In Favor Of Shiga’s SE1 Signals ........................................... 45
`The Petition Ignores Significant Problems That Would
`Be Caused By The Use Of SE1 Signaling In
`Theobald’s System ................................................................. 47
`Petitioner Fails To Establish That Shiga Is Analogous Art To
`The ’111 Patent ................................................................................ 48
`IX. Ground 3: Claims 12 and 14 Are Not Obvious Over Dougherty In
`View Of Hahn And Amoni ......................................................................... 50
`A.
`Petitioner Fails To Present Any Competent Evidence That
`The Proposed Combination Discloses An Identification
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`B.
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`Signal “Configured To Indicate To The Mobile Device That
`The Power Socket Is Not A USB Host Or Hub” (All Claims) ........ 50
`Petitioner Fails To Present Any Competent Evidence That A
`POSA Would Have Had A Reason To Combine Dougherty
`with Hahn ......................................................................................... 54
`Conclusion .................................................................................................. 58
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`X.
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`TABLE OF AUTHORITIES
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`Case IPR2018-00276
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`
` Page(s)
`
`Cases
`Apple Inc. v. Immersion Corp.,
`No. IPR2016-01371, 2017 WL 379664 (P.T.A.B. Jan. 11, 2017) ......... 29, 43, 51
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................... 7, 25, 28, 51
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .................................................................... 48, 49
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .................................................................... 35, 57
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 49
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F. 3d 1359 (Fed. Cir. 2016) ......................................................................... 34
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .................................................................... 48, 50
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F.3d 1358 (2017) .......................................................................................... 32
`Nichia Corp. v. Everlight Americas, Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) .......................................................................... 57
`Par Pharm. Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ...................................................................... 3, 28
`Parrot SA v. Drone Techs.,
`No. 2914-00732, 2015 WL 6180973 (P.T.A.B. Oct. 20, 2015) ......................... 48
`In re Ratti,
`270 F.2d 810 (CCPA 1959) (en banc) .................................................... 30, 38, 41
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`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................ 33
`Sensonics Inc. v. Aerosonic Corp.,
`81 F.3d 1566 (Fed. Cir 1996) ................................................................. 44, 46, 54
`Univ. of Md. Biotechnology Inst. v. Presens Precision Sensing Gmbh,
`711 Fed. Appx. 1007 (Fed. Cir. 2017) .......................................................... 30, 41
`ZTE (USA) Inc. v. Fundamental Innovation Sys. Int’l LLC,
`No. IPR2018-00111, 2018 WL 2164351 (P.T.A.B. May 9, 2018) .............passim
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 49
`35 U.S.C. § 325(d) ................................................................................................... 23
`Regulations
`37 C.F.R. § 42.65 ......................................................................................... 29, 43, 51
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`EXHIBIT LIST
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`
`Ex. 2001 Declaration of Robert Baranowski, submitted in IPR2018-00487
`as Exhibit 2001 (May 16, 2018)
`Ex. 2002 Declaration of Kenneth Fernald, submitted in IPR2018-00274 as
`Exhibit 2001 (June 8, 2018)
`Ex. 2003 Deposition transcript of John Irving Garney in
`Fundamental Innovation Systems International LLC v. Samsung
`Electronics Co., Ltd. et al., Civil Action No. 2:17-cv-00145-JRG
`(U.S. District Court in the Eastern District of Texas)
`Ex. 2004 Declaration of Robert Baranowski, submitted in IPR2018-00495
`as Exhibit 2001 (May 15, 2018)
`Ex. 2005 Robert Baranowski Curriculum Vitae
`Ex. 2006 Excerpts from USB Complete (2d. Edition), Jan Axelson, 2001
`Ex. 2007 Claim Construction Memorandum and Order, Fundamental
`Innovation Sys. Int’l LLC v. Samsung Elecs. Co., Ltd. et al., Case
`No. 2:17-cv-145-JRG-RSP, Dkt. 140 (January 31, 2018)
`Ex. 2008
`J3 Connector in Motorola Micro TAC 5200, 7200 Flip Phones
`Ex. 2009 U.S. Patent No. 5,214,774 (Welsch)
`Ex. 2010 Motorola Users and Programming Guides, Mike Larsen, Version
`3.0, 1/14/97, Downloaded from
`http://qsl.net/n9zia/cell2900/motorola.txt
`Ex. 2011
`[intentionally omitted]
`Ex. 2012
`[intentionally omitted]
`Ex. 2013
`[intentionally omitted]
`Ex. 2014 Excerpts from USB Complete, Jan Axelson, 1999
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner did not submit a statement of material facts in this Petition.
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`Accordingly, no response is due pursuant to 37 C.F.R. § 42.23(a), and no facts are
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`admitted.
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`I.
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`Introduction
`U.S. Patent No. 7,239,111, entitled “Universal Serial Bus Adapter For A
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`Mobile Device” (the “’111 patent”), is directed to a novel USB adapter that, among
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`other things, uses an “identification signal” to inform a connected mobile device
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`about the nature of the USB adapter and its charging capabilities.
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`ZTE (USA) Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
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`America, Inc. (collectively, “Petitioner”) requested inter partes review (“IPR”) of
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`claims 1-3, 6-8, 12, and 14-18 (the “Challenged Claims”) of the ’111 patent on three
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`grounds. Pet. 3-4. Petitioner challenges the validity of the Challenged Claims based
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`on a combination of Theobald and Shiga (Ground 1), Theobald, Shiga, and Kfoury
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`(Ground 2), and Dougherty, Hahn, and Amoni (Ground 3, claims 12 and 14 only).
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`This Petition is an essential mirror image of the Petitions presented by LG in
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`IPR2018-00495 and Huawei in IPR2018-00487.
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`The basic premise of this Petition is that a POSA would be motivated to
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`modify USB devices to intentionally send an SE1 signal. The Board has already
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`rejected this premise as lacking any proper factual foundation. ZTE (USA) Inc. v.
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`Fundamental Innovation Sys. Int’l LLC, No. IPR2018-00111, 2018 WL 2164351, at
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`*8 (P.T.A.B. May 9, 2018) (“[W]e determine that Petitioner has not sufficiently
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`explained why one of ordinary skill in the art would have sought to utilize Shiga’s
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`SE1 signal in Rogers’ [USB] system with a reasonable expectation of success.”).
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`The Petition fails to establish a reasonable likelihood of prevailing for several
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`reasons. At the outset, the Petition fails to explain how the identified prior art
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`references, singly or in combination, disclose an identification signal “configured to
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`indicate to the mobile device that the power socket is not a USB host or hub,” as
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`required by all of the Challenged Claims. The Petition simply assumes that, because
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`the USB specification states that USB-compliant devices should not intentionally
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`send “SE1” signals, the proposed combinations need only send such an “SE1” signal
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`in order to indicate to the receiving mobile device that the sending accessory is “not
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`a USB host or hub.” See, e.g., Pet. 44-45. But the Petition completely ignores that
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`USB systems, including “USB hosts or hubs,” may nonetheless generate SE1
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`signals, either intentionally or unintentionally. E.g., Ex. 1008-0344, § 11.5.2.2
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`("noise event on the bus can cause the attached device to detect a reset condition
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`after 2.5 μs of . . . SE1 on the bus"). Indeed, the very reference Petitioner relies on
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`to supposedly teach the use of the “SE1” signaling (Shiga) describes sending an SE1
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`signal intentionally over the USB bus, in apparent violation of the USB specification.
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`The Petition also fails to consider an undisputed fact: it was known by a POSA that
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`SE1 signals are generated unintentionally by USB hubs or hosts – a situation that
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`the USB specification expressly accounts for, prescribing particular actions in
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`response to detection of an SE1 signal (whether originating from a USB host or hub
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`or other device). Ex. 1008 (USB 2.0), 316 (§ 11.5.2.2) 1 (describing required
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`response to SE0 and SE1 signals on the bus in order to avoid “errors that are very
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`difficult to isolate and correct”); Ex. 2003, 260:2-13 (if USB data lines are at “SE1
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`voltage level for more than 2-1/2 microseconds,” an “attached devices would
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`interpret that as a reset event, or reset condition, and a hub would be required to
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`disconnect its port to isolate that device from the rest of the bus”); Ex. 2001, ¶¶49-
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`51. In short, Petitioner fails to provide any competent evidence supporting its
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`unfounded assertion that its proposed combinations would, merely by sending an
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`“SE1” signal, satisfy the claim limitation requiring an identification signal
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`configured to indicate that the power socket is not a USB host or hub, and thus cannot
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`prevail. See Par Pharm. Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195-96 (Fed.
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`Cir. 2014) (“[T]o establish the existence of a claim limitation in the prior art in an
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`obviousness analysis—the limitation at issue necessarily must be present, or the
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`natural result of the combination of elements explicitly disclosed by the prior art.”).
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`The Petition also fails to provide factual support for its assertion that a POSA
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`would have been motivated to combine the asserted references in the manner that
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`Petitioner contends, including generating the “SE1” signal in the first place.
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`In Grounds 1 and 2, the Petition suggests that a POSA would have replaced
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`1 Citations to Exhibits 1008 and 2003 is to its original page numbers.
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`the “J3” communications interface of the Theobald apparatus entirely in order to
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`convert Theobald’s adapter into a USB adapter. But the Petition fails to explain why
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`a POSA, having converted Theobald’s J3 adapter to a USB adapter, and following
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`Theobald’s teaching that communication should occur “according to” the applicable
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`data communication protocol (i.e., USB, here), would then choose to modify
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`Theobald’s adapter to generate an “SE1” signal that Petitioner itself describes as
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`“non-standard” signal that “USB drivers must never intentionally generate.” Pet.
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`29, 45. Petitioner fails to present any competent evidence that a POSA would have
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`ignored the express teachings of Theobald and the USB 2.0 specification in order to
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`arrive at the claimed inventions.
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`Indeed, the Petition suggests the exact opposite – that a POSA would have
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`been motivated to “change the connector on Theobald’s charging adapter from a J3
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`connector to a USB connector” because USB was a “commonplace interface that
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`was widely known, used, and accepted in the industry” and would allow a POSA to
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`“achieve a system with a broader industrial application.” Pet. 34. If a POSA desired
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`to bring Theobald’s accessory in line with the widely accepted USB standard, the
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`Petition nowhere explains why that same POSA would then design a system that
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`violated the communication protocol of this standard by intentionally sending an
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`SE1 signal. After all, USB 2.0’s interoperability assumes compliance with its
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`communication protocols (Ex. 1008 (USB 2.0), 45):
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`In fact, with respect to the Theobald/Shiga combination, the Petition does not
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`even explain how a POSA would have made the necessary modifications in order
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`for the combination to be operable. The Petition concedes that a POSA would need
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`to implement special “programming” in order to allow the mobile device of
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`Theobald to receive SE1 signals over a USB connection and initiate device charging
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`in response. Pet. 29-30. But the Petition never explains what this “programming”
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`would entail or how it would work, much less why it would be obvious to a POSA
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`to implement. It is clear from the testimony of Petitioner Samsung’s own expert,
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`Mr. Garney, that implementing SE1 signaling into a USB system would be far from
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`“routine programming” but rather rife with serious technical challenges. Ex. 2003,
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`257:25-258:10 ("Within the context of the USB 2 revision, April 2000, it's clear that
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`low-speed and full-speed drivers must not generate [SE1], which at least suggest that
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`there is some problem if they do . . . ."). The Petition offers no explanation for how
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`or why a POSA would overcome these technical challenges to implement the
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`proposed combination. The Board, in related proceedings, has already found that a
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`POSA would not be motivated to send an SE1 signal in the context of a USB system.
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`The Petition also fails to identify any use of “SE1” as an identification signal
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`“configured to indicate to the mobile device that the power socket is not a USB host
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`or hub” as recited in the claims. The Petition relies solely on Shiga, which describes
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`the use of SE1 for an entirely different purpose that is totally unrelated to device
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`identification or even USB communication. Indeed, Shiga is so different from the
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`’111 patent that it does not even legally qualify as analogous art.
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`In Ground 3, the Petition suggests that the laptop docking station described in
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`Dougherty somehow teaches providing an identification signal that indicates that the
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`docking station is “not a USB host or hub” as part of a “handshaking protocol.” Pet.
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`81. Petitioner’s analysis is conclusory – it simply states, without evidentiary
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`support, that the docking station “has to” identify itself to the laptop in this way, and
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`points to a “handshaking protocol” that includes no such description. Id. To the
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`contrary, it is clear from Dougherty that its “handshaking protocol” would involve
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`standard USB enumeration that would identify Dougherty as a USB hub providing
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`connections to additional USB device ports (referred to as “port replication”). Ex.
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`2001, ¶¶ 82-85, 88-89. Petitioner’s expert declarant, Mr. Geier, provides no further
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`explanation, as his declaration in this regard is simply a mirror image of the
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`unsupported attorney argument in the Petition. Compare Pet. 81 with Ex. 1009, ¶
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`151. Even viewed in the best light, the Petition falls well short of the reasoned
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`analysis and evidence required to make a prima facie showing of obviousness for a
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`key claim limitation. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir.
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`2016) (“common sense” cannot “substitute for reasoned analysis and evidentiary
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`support, especially when dealing with a limitation missing from the prior art
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`references specified”).
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`In fact, Petitioner’s arguments are not just conclusory – they are directly
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`contradictory to other statements in the Petition concerning other limitations of the
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`same claim. Petitioner contends that Dougherty sends an identification signal
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`indicating that the docking station is “not a USB host or hub.” Pet. 81. Yet, when
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`arguing other limitations of the same claim, Petitioner contends that a POSA would
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`have modified Dougherty to be a USB hub by incorporating the teachings of Amoni
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`(which, by Petitioner’s own admission, “describes a USB-connected hub” with
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`“three auxiliarty powered USB ports.” Pet. 16-17. It is nonsensical to think that a
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`POSA would modify Dougherty to be a USB hub while signaling to a connected
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`laptop that it is not a USB hub, and the Petition offers no explanation whatsoever
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`for why a POSA would do so.
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`For these and further reasons stated below, Patent Owner Fundamental
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`Innovation Systems International LLC (“Fundamental”) respectfully requests that
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`the Patent Trial and Appeal Board (the “Board”) deny the Petition because it does
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`not present a reasonable likelihood that Petitioner will prevail as to any challenged
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`claim under any of the three asserted grounds.
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`II. Background On The USB Communication Protocol
`The Universal Serial Bus (“USB”) architecture is a “cable bus that supports
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`data exchange between a host computer and a wide range of simultaneously
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`accessible peripherals.” Ex. 10082, 43. Up to 127 USB devices can be directly or
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`indirectly connected to a single host. Id. at 44.
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`When a USB device is plugged into a USB host or hub, power can be provided
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`by the host or the hub. The USB host and connected device negotiate power
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`allocation so that sufficient power can be directed to each connected device without
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`overdrawing power from the host. Ex. 1008, 44-47. At the time of the inventions,
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`the USB specifications limited the amount of current that a device may draw to 500
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`milliamps (mA) after configuration and 100 mA before configuration. Ex. 1008,
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`271-72.
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`A. Enumeration to Establish Communication Between Host And
`Device
`USB enumeration is a handshaking protocol by which the host can identify,
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`address and configure each peripheral device. Ex. 1008, 271-72 (describing steps of
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`2 Patent Owner’s citations are to the page numbers (1-650) that Petitioner has
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`added to the filed Exhibit 1008 document.
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`enumeration process). Before enumeration, the host can perform only basic control
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`communications with the device to get the information necessary to configure the
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`device. Ex. 1008, 271-273. Once configured, the device is “enumerated” and “ready
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`for use.” Id. After enumeration and configuration, the device may send/receive data
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`over the D+ and D- data lines in accordance with the USB specification. Ex. 1008,
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`46-48.
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`B.
`Single Ended 1 (“SE1”) Line State
`One of the four possible 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, 151.
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`The USB specification warns that “USB drivers must never ‘intentionally’ generate
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`an SE1 on the bus.” Ex. 1008, 151.
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`Petitioner suggests that at the time of the invention “the SE1 state would be a
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`logical choice for signaling information about a device without interfering with USB
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`signaling” and purports to identify several prior art examples of such use of SE1
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`signaling in USB communication. Pet. 13. To the contrary, SE1 was not used when
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`normal USB communication was in progress, precisely because SE1 could interfere
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`with USB communications. Ex. 2001, ¶¶33-51.3
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`3 Unlike the prior art, the ’111 patent inventors developed specific techniques,
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`Indeed, in the litigation regarding infringement of the ’111 patent, Petitioner
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`Samsung’s expert James Garney correctly acknowledged that an SE1 condition
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`interferes with USB signaling because a USB port enters a “disconnect state” upon
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`observing SE1. Ex. 2003, 261:6-22 (“[N]o more data signaling would be delivered
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`across that communication—across that connection between the hub and the
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`attached device or hub that might be connected to it.”); Ex. 2001, ¶¶49-51.
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`Samsung’s expert’s understanding is further confirmed by Petitioner’s
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`identified prior art, which does not disclose transmitting an SE1 signal on USB data
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`lines that were transmitting or would continue to transmit standard USB
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`communications. Ex. 2001, ¶¶42-48. Although Petitioner asserts that Shiga (Ex.
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`1006) disclosed the use of SE1 signaling in a manner that would “avoid interfering
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`with standard USB signaling” (Pet. 37), Petitioner ignores that in Shiga, this “SE1”
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`including sending identification signals at a particular time, that ensure the
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`identification signal correctly indicates that the USB adapter is not a USB hub or
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`host. See, e.g., Ex. 1001, 9:60-10:6 (USB adapter “identified” before “enumeration
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`process and charge negotiation process”). Petitioner identifies no such teaching in
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`the prior art, nor does Petitioner even attempt to explain how or why a POSA would
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`incorporate such techniques into the proposed combination with Theobald or
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`Dougherty.
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`state is provided not to a USB device, or as part of USB communication at all, but
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`rather to a separate “wake-up means” circuit used to toggle the power switch on a
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`computer’s power supply. See, e.g., Ex. 1006, 3:1-9, 6:8-12, 7:16-30 (the signal
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`lines used to send SE1 are “not connected” to the signal lines of the USB host when
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`SE1 is sent). In other words, the only evidence Petitioner provides of SE1 usage in
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`the prior art is in contexts where normal USB communication is not possible.
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`III. Summary Of The ’111 Patent
`The ’111 patent stems from pioneering research performed by the power
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`supply and distribution group at Research in Motion Ltd. (“RIM,” now Blackberry
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`Ltd.), as part of RIM’s effort to build the world’s first mobile device with a combined
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`USB data and charging port. In the early 2000s, Blackberry launched a project to
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`design a mobile device with a combined power and data interface. A combined
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`charging and data interface would reduce the number of external connections and
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`simplify printed circuit board designs for a smaller and thinner phone.
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`The inventors noted that “[a]lthough the USB interface can be used as a power
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`interface, the USB is typically not used for that purpose by mobile devices.” Ex.
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`1001, 1:52-54. This was, in part, because common power sources such as AC outlets
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`and DC car sockets were incompatible with the USB specification’s requirement that
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`“a USB device participate in a host initiated process called enumeration in order to
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`be compliant with the current USB specification in drawing power from the USB
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`interface.” Id., 1:53-59. Moreover, a mobile device attached to such a power socket
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`via the mobile device’s USB port would be unaware, for example, that the attached
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`USB adapter was not limited by the power limits imposed by the USB specification.
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`Ex. 1001, 1:52-67.
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`Faced with these challenges, the inventors designed a new “USB adapter for
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`providing a source of power to a mobile device through a USB port,” including
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`systems and methods that, among other things, may “provid[e] an identification
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`signal to the mobile device ... that is operative to inform the mobile device that the
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`USB adapter is not limited by the power limits imposed by the USB specification”
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`as a USB host or hub would be. Ex. 1001, 2:19-21, 2:50-64.
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`The identification signal serves to inform a mobile device, for example, that
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`it is coupled to a USB adapter of the inventions, that the connected power source “is
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`not a USB limited source,” and/or that the device “can now draw power without
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`regard to the USB specification and the USB specification imposed limits.” Id.,
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`8:17-23. One example of such disregard of the USB specification imposed limits is
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`allowing the device to draw more than 100 mA of current (e.g., 500 mA) from a non-
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`USB power source (such as an AC outlet or a DC car socket) without enumeration.
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`E.g., id. at 9:60-65.
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`The patent also teaches that an identification signal may be observed “by
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`detecting the presence of an abnormal data line condition at the USB port,” and that
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`one preferred identification signal “results from the application of voltage signals
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`greater than 2 volts to both the D+ and D- lines in [a] USB connector.” Id. at 9:15-
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`23. Certain dependent claims of the ’111 patent claim these specific examples. E.g.,
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`claims 6-8.
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`IV. The Prior Art References Differ From The ’111 Inventions
`The Petition proposes that a POSA would have arrived at the inventions set
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`forth in the ’111 patent by either starting with the power adapter of Theobald and
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`making numerous modifications purportedly taught by USB 2.0 and Shiga (Ground
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`1) or starting with the docking station of Dougherty and making numerous
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`modifications purportedly taught by Shiga (Ground 2). The Petition does not
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`propose any other means of combining Theobald or Dougherty with the above-
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`named references and does not identify any other references that would have been
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`used in the asserted obviousness combinations. Pet. 5.
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`Even in combination, the asserted references differ greatly from the inventions
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`claimed in the ’111 patent. An overview of Petitioner’s primary references,
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`Theobald, Dougherty and Shiga, is provided below, as background for the numerous
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`problems with Petitioner’s proposed combination of these and other references
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`addressed in Section VIII.
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`A. Theobald Overview
`U.S. Patent No. 5,925,942 (“Theobald”) is directed to “a low cost apparatus
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`and method that permits charging of the battery by the device and maintains
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`backward compatibility with past accessories that mate with the accessory
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`connector.” Ex. 1005, 1:53-57. The embodiments relied on by Petitioner in
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`Theobald relate to the “eight pin J3-type accessory connector used in MicroTAC™
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`cellular telephones manufactured and sold by Motorola, Inc.” Id., 1:23-27. The J3
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`connector has 8 lines, including two audio lines and three data lines. Id., 1:27-32.
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`In the specific embodiment relied on by Petitioner—the so-called controller
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`embodiment, Theobald’s chargers supposedly use “a
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`logic circuit or a
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`microcontroller that communicates predefined identification information” to the
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`mobile device “via the data lines 190-192 and [data] pins 182-184 upon attachment
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`of the accessory 104 [i.e., the charger],” Theobald at 6:60-65; Pet. 24-25, 29 (arguing
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`to start with “Theobald’s controller embodiment”). Theobald makes clear, however,
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`the need to comply with whatever standard is adopted: “data is communicated ...
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`according to the three-wire bus protocol ... or other suitable high speed data
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`communication protocol.” Ex. 1005, 6:10-184. Nothing in Theobald suggests that
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`the accessory should deviate from the applicable standard (J3 or otherwise). Ex.
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`2001, ¶¶61-69.
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`4 All emphasis added unless otherwise noted.
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`B. Dougherty Overview
`1.
`Dougherty’s Docking Station
`U.S. 7,360,004 (“Dougherty”) describes a docking station used to “expand the
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`capabilities of a laptop computer to include a full size keyboard, a full size monitor,
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`more serial ports, and other functionality typically associated only with desktop
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`computing devices.” Ex. 1013, 1:61-67. For example, this expansion can be via “port
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`replication across a USB port.” Id., 2:24-25. Port expansion means “by plugging the
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`laptop into [a] docking station, more serial ... ports are available for connection to
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`printers, scanners, full size display devices, ... pointing devices and the like.” Id.,
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`2:16-20. Hence, docking a laptop in a docking station via a USB connection
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`generates “plurality of communication ports” for access to printers, scanners,
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`displays, mice and other peripheral devices. Id., 2:25-28.
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`USB-based docking stations allegedly had the drawback of “requir[ing] the
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`user to separately apply power to the laptop” with a power adapter such as an AC/DC
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