Trials@uspto.gov
`571-272-7822
`
`Paper 17
`
` Entered: October 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`
`
`
`
` FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00276
`Patent 7,239,111 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822
`
`Paper 17
`
` Entered: October 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`
`
`
`
` FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00276
`Patent 7,239,111 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2018-00276
`Patent 7,239,111 B2
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`I. INTRODUCTION
`ZTE (USA) Inc. (“Petitioner”), filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–3, 6–8, 12, and 14–18 of U.S.
`Patent 7,239,111 B2 (Ex. 1001, “the ’111 Patent”).1 Petitioner supports its
`Petition with the Declaration of Mr. James Geier. Ex. 1009. Fundamental
`Innovation Systems International LLC (“Patent Owner”) timely filed a
`Preliminary Response (Paper 8, “Prelim. Resp.”). Patent Owner supports its
`Preliminary Response with the Declaration of Robert Baranowski and the
`Declaration of Dr. Kenneth Fernald. Exs. 2001, 2002.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Taking into account the evidence and arguments presented in the Petition
`and the Preliminary Response, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing with respect to any
`challenged claim of the ’111 Patent. Therefore, we do not institute an inter
`partes review.
`
`A. Related Matters
`The parties identify Civil Actions No. 2:17-cv-00145, No. 2:16-cv-
`01424, and No. 2:16-cv-01425 in the Eastern District of Texas and Civil
`Action No. 3:17-cv-01827 in the Northern District of Texas as involving the
`
`
`1 Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`were dismissed from this proceeding by Order entered July 18, 2018. Paper
`12.
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`’111 Patent. Pet. 1, Paper 6, 1. The parties also identify IPR2018-00487
`and IPR2018-00495 as having been filed against the ’111 Patent. Pet. 1,
`Paper 6, 3.
`
`B. Technology Background
`An overview of USB cables is helpful in understanding the
`technology involved in the ’111 Patent which relates to charging a mobile
`device through a USB connector. See Ex. 1001, Fig. 3. Cables compliant
`with the USB 2.0 standard have four conductors: VBUS, D+, D-, and GND.
`Ex. 1008, 17–18, 86. The VBUS and GND conductors of the USB cable are
`used to deliver power to devices and the D+ and D- conductors carry
`communication signals between a USB host and a connected device. Id. at
`17–18; Ex. 1001, 7:4–11. Figure 4–2 of the USB 2.0 specification,
`reproduced below, depicts these four conductors within a USB cable:
`
`
`Ex. 1008, 17. Figure 4–2 illustrates the arrangement of conductors in a USB
`cable.
`
`C. The ’111 Patent
`The ’111 Patent is directed to a Universal Serial Bus Adapter for a
`Mobile Device. Ex. 1001, at [54]. The ’111 Patent discloses “a USB
`adapter for providing a source of power to a mobile device through a USB
`port.” Id. at 2:19–21. The ’111 Patent explains that although it was
`understood in the art that a USB interface could be used as a power
`interface, it was typically not used for that purpose by mobile devices. Id. at
`1:52–54. This is because USB hubs and hosts require USB devices to
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`“participate in a host-initiated process called enumeration in order to be
`compliant” with the USB specification in drawing power from the USB
`interface, and “alternate power sources such as conventional AC outlets and
`DC car sockets” were “not capable of participating in enumeration.” Id. at
`1:56–66. Additionally, “the power limits imposed by the USB
`specification” limit the amount of power available to charge a battery. Id. at
`2:63–64.
`
`In order to, inter alia, avoid the power limits imposed by the USB
`Specification, the ’111 Patent discloses a USB adapter that is capable of
`providing power to a mobile device without first participating in USB
`enumeration. Id. at 9:15–41. Figure 2 of the ’111 Patent, reproduced below,
`is a schematic diagram of the disclosed USB adapter coupled to an
`exemplary mobile device (id. at 3:23–24):
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`As shown in Figure 2, USB adapter 100 comprises primary USB
`connector 102, power converter 104, plug unit 106, identification
`subsystem 108, and auxiliary USB connector 112. Id. at 6:57–7:1. The ’111
`Patent discloses that when USB adapter 100 is connected to mobile
`device 10 via USB connector 54 of mobile device 10 and USB
`connector 102 of USB adapter 100, identification subsystem 108 provides an
`identification signal to mobile device 10 indicating that the power source is
`not a USB limited source. Id. at 6:57–7:1, 8:23–25. The identification
`signal “could be the communication of a single voltage on one or more of
`the USB data lines, different voltages on the two data lines, a series of pulses
`or voltage level changes, or other types of electrical signals.” Id. at 8:25–29.
`“The preferred identification signal,” however, “results from the application
`of voltage signals greater than 2 volts to both the D+ and D- lines in the
`USB connector.” Id. at 9:21–23.
`D. Illustrative Claim
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below:
`1. A Universal Serial Bus (“USB”) adapter for providing
`power to a mobile device through a USB port comprising:
`
`a plug unit configured to receive energy from a power socket;
`
`a power converter coupled to the plug unit, the power converter
`being configured to regulate the received energy from the power
`socket to generate a power output;
`
`an identification subsystem configured to generate an
`identification signal, wherein the identification signal is configured to
`indicate to the mobile device that the power socket is not a USB host
`or hub; and
`
`a USB connector coupled to the power converter and the
`identification subsystem, the USB connector being configured to
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`couple the power output and the identification signal to the mobile
`device.
`Ex. 1001, 11:60–12:8.
`E. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–3, 6–8, 12, and 14–18 of the ’111
`Patent as upatentable under 35 U.S.C. § 103(a) based on the grounds set
`forth in the following table. Pet. 3–4.
`
`References
`Theobald2 and Shiga3
`
`Basis
`§ 103
`
`Claim(s) Challenged
`1–3, 6–8, and 16–18
`
`Theobald, Shiga, and Kfoury4
`
`§ 103
`
`15
`
`Dougherty,5 Hahn,6 and Amoni7 § 103
`
`12 and 14
`
`
`
`I. ANALYSIS
`A. Overview
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`
`2 U.S. Patent No. 5,925,942, issued July 20, 1999 (Ex. 1005, “Theobald”).
`3 U.S. Patent No. 6,625,738 B1, issued Sept. 23, 2003 (Ex. 1006, “Shiga”).
`4 U.S. Patent No. 6,049,192, issued Apr. 11, 2000 (Ex. 1016, “Kfoury”).
`5 U.S. Patent No. 7,360,004 B2, issued Apr. 15, 2008 (Ex. 1013,
`“Dougherty”).
`6 U.S. Patent No. 5,973,948, issued Oct. 16, 1999 (Ex. 1014, “Hahn”).
`7 U.S. Patent No. 5,884,086, issued Mar. 16, 1999 (Ex. 1015, “Amoni”).
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`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) when in evidence, objective indicia of non-
`obviousness (i.e., secondary considerations). Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). We analyze the asserted grounds based on
`obviousness with these principles in mind.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard). We
`construe claim terms “that are in controversy, and only to the extent
`necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)).
`The Board previously construed the claim term “identification
`signal . . . configured to indicate to the mobile device that the power socket
`is not a USB host or hub” in independent claims 1, 17, and 18. Ex. 1001,
`12:2–4, 13:7–9, 14:7–9; see Huawei Dev. Co., Ltd. v. Fund. Innov. Sys. Intl.
`LLC, IPR2018-00487, slip op. at 9–11 (Aug. 10, 2018) (Paper 11). In that
`case, the Board determined that “a person of ordinary skill in the art at the
`time of invention would have understood that ‘the power socket’ and ‘the
`USB adapter’ are distinct elements in claims 1, 17, and 18, and would not
`have interpreted ‘the power socket’ to mean ‘the USB adapter.’” Huawei,
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`slip op. at 11. In support of this construction, the Board relied on intrinsic
`evidence from the ’111 Patent. Id. at 10. In particular the Board found that
`the ’111 patent consistently discloses USB adapters that are distinct
`from associated power sockets. Claim 1 itself is directed to a USB
`adapter, which comprises a plug unit configured to receive energy
`from a power socket. See Ex. 1001, 11:60–63. The power socket,
`therefore, is something other than the claimed USB adapter itself. In
`Figure 2, “power sockets” 110N, 110D, 110B, and 110 are depicted
`outside the box identified as USB adapter 100. See id., Fig. 2, 6:64–
`67. Likewise, passages in the specification consistently treat USB
`adapters and power sockets as distinct. See, e.g., id. at 2:38–40 (“The
`plug unit is operative to couple the USB adapter to a power socket.”),
`7:46–47 (“[T]he USB adapter . . . can be adapted to receive energy
`from various types of power sockets.”), 7:63–65 (plug adapters
`“allow[] the USB power adapter . . . to connect to a local power
`supply via the local power socket”).
`Id. After reviewing the evidence relied on in the claim construction analysis
`in IPR2018-00487, we adopt the prior claim construction stated above for
`the purposes of this Decision.
`C. Alleged Obviousness over Theobald and Shiga
`
`Petitioner contends that claims 1–3, 6–8, and 16–18 are unpatentable
`under 35 U.S.C. § 103(a) over the combined teachings of Theobald and
`Shiga. Pet. 18–56. We begin our analysis with brief overviews of Theobald
`and Shiga. We then address the parties’ respective contentions with respect
`to the challenged claims.
`1. Theobald
`
`Theobald is directed to a method and apparatus for charging the
`battery in a cellular telephone using a charger coupled to the cellular
`telephone by a standard J3-type accessory connector. Ex. 1005, 1:53–57,
`3:21–27. Figure 1 of Theobald illustrates “a charging system including an
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`electronic device having a power supply control apparatus, a battery, and an
`accessory.” Id. at 1:62–64.
`
`
`As shown in Figure 1, Theobald’s system 100 comprises a cellular telephone
`102, a battery 103, and an accessory 104. Id. at 2:17–19, 28–29. Accessory
`104 is “a low cost mid rate charger or fast rate charger.” Id. at 4:31–33.
`Charger 104 is coupled to cellular telephone 102 by connector 122 which “is
`preferably the standardized eight pin J3-type accessory connector . . . but
`may be any other suitable multiple pin accessory connector having an
`external power supply pin and at least one information pin.” Id. at 2:63–64,
`3:21–27.
`Connector 122 shown in Figure 1 has “information pins 124, 125,
`127, 128, and 129 designated as AUD IN, AUD OUT, and R, C, and T
`DATA, respectively; grounding pins 126 and 131 designated ANL GND and
`LOG GND; and an external power supply pin 130.” Id. at 2:64–3:2.
`Information pin 124 “is coupled to the controller 108 via audio in line 132
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`and an identification network 150 . . . to identify accessory 104.” Id. at 3:2–
`5. The charger includes an “identification element 174 . . . to identify” the
`charger to the cellular telephone 102. Id. at 5:3–4. Identification element
`174 “is selected to have a different electrical value for each different type of
`the accessory 104.” Id. at 5:6–8. Theobald discloses that identification
`element 174 for a mid rate charger would be a 120 kΩ resistor and for a fast
`rate charger would be a 36 kΩ resistor. Id. at 5:9–12. When cellular
`telephone 102 and charger 104 are coupled through connector 122,
`identification element 174 in charger 104 is electrically connected to
`identification network 150 in cellular telephone 102 and the external supply
`voltage of charger 104 generates a voltage level on audio in line 132 of the
`cellular telephone 102 of 1.72 V for a mid rate charger or 3.91 V for a fast
`rate charger. Id. at 5:59–6:6. “[C]ontroller 108 measures the voltage on the
`audio in line 132” and from the measured voltage “identifies the accessory
`104 from the accessory look-up table” as either the mid rate charger or the
`fast rate charger. Id. at 6:19–42.
`
`Theobald discloses an alternate embodiment for identifying the mid
`rate or fast rate charger to the cellular telephone. Id. 6:55–65. In this
`embodiment, the mid rate or fast rate chargers “could be implemented with a
`logic circuit or a microcontroller that communicates predefined
`identification information to the controller 108 via the data lines 190-192
`and pins 182-184 upon attachment” of charger 104. Id. at 6:60–65.
`2. Shiga
`
`Shiga discloses turning on a computer power supply by means of
`signals transmitted over signal lines “of a USB chip provided in a
`keyboard.” Ex. 1006, Abstract. Shiga’s USB connected keyboard 11 starts
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`the host computer “by a key input operation at a keyboard.” Id. at 2:4–8.
`Shiga’s keyboard signals a “wake-up means” in the computer when a power-
`on key is pressed on the keyboard. Id. at 3:1–7.
`
`Shiga explains that pursuant to the USB specification, when a host
`computer is in a suspended mode there are three standard signal line states.
`Id. at 5:46–54. In the first, or low speed state, signal line D+ is in an L (Hi-
`Z or high impedance) state and D- is in an H (high level) state. Id. at 5:55–
`57. In the second, or high speed state, signal line D+ is in the H state and
`signal line D- is in the L state. Id. at 5:58–59. In the third, or unconnected
`state, both D- and D+ signal lines are in the L state. Id. at 5:59–60. In
`addition to these three standard signal line states, Shiga discloses that the
`signal lines may also be placed into a fourth, non-standard state, wherein
`both the D+ and D- signal lines are in the H state. Id. at 5:60–62, 6:48–58.
`Shiga provides this non-standard, or “fourth mode” signal, to a “wakeup
`means” in response to a user pressing the keyboard’s power-on key. Id. at
`3:1–3, 4:33–53, 6:59–65. Shiga explains that, because this line state is not a
`standard USB state and is provided as a 50 ms pulse at 3 volts, it is “easily
`distinguished from USB standard data signals.” Id. at 6:48–58.
`3. Analysis
`
`Claim 1 recites, inter alia, “an identification signal . . . configured to
`indicate to the mobile device that the power socket is not a USB host or
`hub.” Ex. 1001, 12:1–4. Independent claims 17 and 18 contain substantially
`similar limitations.
`Petitioner, relying on the Declaration testimony of Mr. Geier,
`contends that it would have been obvious to one of ordinary skill in the art to
`modify Theobald’s alternative embodiment for identifying the charger with
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`“a few trivial modifications.” Pet. 29.8 The “trivial modifications” are
`replacing Theobald’s J3 connector with a USB connector as disclosed in
`Shiga, using Shiga’s fourth mode signals as the “predefined identification
`information” that Theobald calls for, and implementing “routine
`programming into circuitry 170 and controller 108 in order to communicate
`the fourth-mode signals.” Id. at 29–30. Petitioner submits the following
`modified version of Theobald’s Figure 1 to illustrate the proposed
`modification to Theobald in light of Shiga:
`
`
`Id. at 30.
`Petitioner’s modified version of Theobald’s Figure 1 illustrates the
`replacement of Theobald’s J3 connector with a USB connector as well as
`other modifications to the circuitry of Theobald.
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`8 Petitioner refers to Theobald’s alternative embodiment as the “controller
`embodiment.” Pet. 27.
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`Petitioner states that “[t]he Theobald/Shiga embodiment uses Shiga’a fourth-
`mode signals as the predefined identification information for a fast-rate
`charger.” Id. at 32–33.
`
`Petitioner contends that “[a]ccessory circuitry 170 constitutes the
`identification subsystem by which an identification signal is generated,” as
`required by claim 1. Id. at 44. With respect to the configuration of the
`identification signal, Petitioner argues that mobile phone 102 could be
`disconnected from fast rate charger 104 “and then connected to a USB-
`compliant host such as a computer,” which according to the USB 2.0
`Specification must never intentionally generate Shiga’s fourth mode signals.
`Id. at 43–44. Based on this, Petitioner contends that in
`the fast-rate charger situation . . . the accessory circuitry 170 (i.e.,
`identification subsystem) is configured to indicate to the mobile
`device that the power socket is not a USB host or hub through use of
`Shiga’s fourth mode identification signals. In other words, the
`accessory 104 is configured to tell the electronic device 102 that the
`accessory 104 is not a USB host or hub so that it may be allowed to
`provide power to the electronic device 102.
`Id. at 45.
`
`Patent Owner contends, for a number of reasons, that Petitioner fails
`to present competent evidence to establish this claim limitation. See Prelim.
`Resp. 24–28.
`Claim 1 requires that “the identification signal is configured to
`indicate to the mobile device that the power socket is not a USB host or
`hub.” Ex. 1001, 12:2–4 (emphasis added). Theobald discloses that
`“accessory circuitry 170” can be used to “identif[y] the accessory 104 to the
`electronic device 102.” Ex. 1005, 6:57–59. Petitioner’s proposed
`combination of Theobald and Shiga starts from the premise that the
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`combination uses “Shiga’s fourth-mode signals as the predefined
`identification information for a fast-rate charger.” Pet. 32–33. Petitioner
`does not direct us to any disclosure in Theobald where the identification
`information in Theobald is configured to indicate to the mobile device that a
`power socket, from which plug 171 of accessory 104 is configured to receive
`energy, is not a USB host or hub, nor do we discern any such disclosure.
`See id. at 18–24. Further, Petitioner, in effect, concedes that this claim
`limitation is not established in the proposed combination with the statement
`that “[i]n other words, the accessory 104 is configured to tell the electronic
`device 102 that the accessory 104 is not a USB host or hub.” Id. at 45
`(emphasis added). As discussed above in our claim construction section, the
`“power socket” in claim 1 is a separate element from the USB adapter.
`Petitioner, thus, fails to provide sufficient evidence or argument establishing
`that the combination of Theobald and Shiga teaches “the identification
`signal is configured to indicate to the mobile device that the power socket is
`not a USB host or hub,” as recited in independent claims 1, 17, and 18.
`Therefore, we determine that Petitioner has not demonstrated a reasonable
`likelihood that it would prevail in showing that any of the challenged claims
`1–3, 6–8, or 16–18 would have been obvious over the combined teachings of
`Theobald and Shiga.
`D. Alleged Obviousness over Theobald, Shiga, and Kfoury
`
`This ground is directed only to claim 15, which depends from claim 1.
`Pet. 57; Ex. 1001, 12:56–63. Petitioner contends that claim 15 is
`unpatentable based on the same combination of Theobald and Shiga as for
`claim 1 with additional disclosure from Kfoury. Pet. 57–65. Petitioner does
`not rely on Kfoury in any way that would cure the deficiencies in the
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`combination of Theobald and Shiga discussed above. Id. Therefore, we
`determine that Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in showing that claim 15 would have been obvious over the
`combined teachings of Theobald, Shiga, and Kfoury.
`E. Alleged Obviousness over Dougherty, Hahn, and Amoni
`
`Petitioner contends that claims 12 and 14 are unpatentable based on
`the combination of Dougherty, Hahn, and Amoni. Pet. 65–86. Claim 12
`depends from claim 1 and claim 14 depends from claim 12. Ex. 1001,
`12:46–47, 52–54. Petitioner relies on Dougherty to teach the limitation in
`claim 1 of “an identification subsystem configured to generate an
`identification signal . . . configured to indicate to the mobile device that the
`power socket is not a USB host or hub.” Pet. 81–83.
`1. Dougherty
`
`Dougherty is directed to using a docking station to provide power to a
`laptop computer. Ex. 1013, Abstract. Figure 1 of Dougherty, reproduced
`below, illustrates a preferred embodiment of Dougherty’s computer system.
`Id. at 3:17–18.
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`As shown in Figure 1, Dougherty’s laptop computer 100 and docking
`station 200 are operatively coupled by USB connectors 136 and 236
`respectively. Id. 5:11–14. Laptop computer 100 utilizes docking station 200
`to provide a plurality of USB ports for attaching peripheral devices to laptop
`computer 100. See id. 1:61–67, 2:24–28. Recognizing that laptop
`computers require a source of power, which was previously provided by a
`connector separate from the docking station, Dougherty’s invention relates
`to supplying “power from the docking station to the laptop computer across
`the USB connection.” Id. 2:55–58.
`Dougherty discloses that “coupling of USB devices requires a series
`of USB handshaking protocols to identify the host . . . which would be the
`laptop computer 100, and any downstream, device, which in this exemplary
`case is the docking station 200.” Id. at 5:39–43. During the handshaking
`protocol, a “driver loaded by the operating system of the laptop computer
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`100 preferably commands the Super I/O controller 130 to issue a five volt
`shutoff command signal 148.” Id. at 5:59–61. As a result of five volt
`shutoff command signal 148, power rails 138 of laptop computer 100 “are
`no longer capable of providing power to downstream devices,” which
`Dougherty indicates “breaks with standard USB protocol.” Id. at 5:64–6:3.
`2. Analysis
`
`Petitioner, relying on the declaration testimony of Mr. Geier, contends
`that when Dougherty’s “docking station 200 is connected to a laptop 100,
`the docking station has to identify itself to the laptop in order to indicate to
`the laptop that the docking station is not a USB host or hub, but rather is
`capable of providing upstream power to the laptop.” Pet. 81 (citing Ex.
`1009 ¶ 151). Petitioner further contends that a person of ordinary skill in the
`art “would understand that as part of the ‘handshaking protocol’ between the
`docking station and laptop computer, an identification signal is configured
`to indicate to the mobile device (i.e. laptop) that the docking station
`connected to a power socket is not a USB host or hub.” Id.
`Petitioner’s contention is based on a theory that because Dougherty’s
`docking station 200 informs laptop 100 that it “is capable of providing
`upstream power to the laptop,” one of ordinary skill in the art would
`understand this to be equivalent to informing laptop 100 that docking station
`200 is not a USB host or hub. Id. The only evidentiary basis cited by
`Petitioner for this alleged understanding by one of ordinary skill in the art is
`Paragraph 151 of the Declaration of Mr. Geier. See id. Mr. Geier’s
`Declaration cites to Dougherty at column 5, lines 44–48. Ex. 1009 ¶ 51.
`The cited portion of Dougherty does not provide sufficient support for the
`proposition that one of ordinary skill in the art would understand that the
`
`
`
`17
`
`
`
`IPR2018-00276
`Patent 7,239,111 B2
`
`ability of Dougherty’s docking station to provide power to the laptop is
`equivalent to an identification signal configured to indicate to the mobile
`device that the docking station is not a USB host or hub. Because this
`opinion by Mr. Geier is conclusory and not sufficiently supported by
`objective corroborating evidence, we accord the opinion little or no weight.
`See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the
`[PTAB] consistently did was accord little weight to broad conclusory
`statements that it determined were unsupported by corroborating references.
`It is within the discretion of the trier of fact to give each item of evidence
`such weight as it feels appropriate.” (citation omitted)); see also In re Am.
`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
`[PTAB] is entitled to weigh the declarations and conclude that the lack of
`factual corroboration warrants discounting the opinions expressed in the
`declarations . . . .” (citations omitted)); 37 C.F.R. § 42.65(a).
`Even if Mr. Geier’s opinion concerning the understanding of one of
`ordinary skill in the art were sufficiently supported by objective
`corroborating evidence, Petitioner’s contention is still not sufficient to
`establish that Dougherty teaches the claim limitation of “the identification
`signal is configured to indicate to the mobile device that the power socket is
`not a USB host or hub,” because Mr. Geier’s opinion would only establish
`that Dougherty discloses identification information that the docking station,
`not the power socket, is not a USB host or hub. Petitioner, thus, has not
`provided sufficient evidence or argument to establish that Dougherty teaches
`this claim limitation. Therefore, we determine that Petitioner has not
`demonstrated a reasonable likelihood it would prevail in showing that either
`
`
`
`18
`
`
`
`IPR2018-00276
`Patent 7,239,111 B2
`
`claim 12 or 14 is unpatentable based on the combined teachings of
`Dougherty, Hahn, and Amoni.
`II. CONCLUSION
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence of record, we conclude that Petitioner has not demonstrated a
`reasonable likelihood that it would prevail in showing that any of claims 1–
`3, 6–8, 12, or 14–18 of the ’111 Patent are unpatentable. Accordingly, we do
`not institute an inter partes review.
`III. ORDER
`
`It is hereby, ORDERED that the Petition is denied and no trial is
`instituted.
`
`
`
`19
`
`
`
`IPR2018-00276
`Patent 7,239,111 B2
`
`PETITIONER:
`Charles M. McMahon
`Brian A. Jones
`MCDERMOTT WILL & EMERY LLP
`cmcmahon@mwe.com
`bajones@mwe.com
`
`Gregory S. Arovas
`Robert A. Appleby
`Todd M. Friedman
`Eugene Goryunov
`Alan Rabinowitz
`KIRKLAND & ELLIS LLP
`greg.arovas@kirkland.com
`robert.appleby@kirkland.com
`todd.friedman@kirkland.com
`eugene.goryunov@kirkland.com
`arabinowitz@kirkland.com
`
`PATENT OWNER:
`
`Hong Zhong
`Michael Fleming
`IRELL & MANELLA LLP
`hzhong@irell.com
`mfleming@irell.com
`
`
`
`
`
`
`20
`
`
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