IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HUAWEI DEVICE CO., LTD.
`Petitioner,
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. To Be Assigned
`Patent No. 8,624,550
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,624,550
`UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §42.100 et seq.
`
`
`
` DC: 6620665-2
`
`

`

`
`
`LIST OF EXHIBITS
`
`
`Description
`Exhibit
`Ex. 1001 U.S. Patent No. 8,624,550
`Ex. 1002
`File History for U.S. Patent No. 8,624,550
`Ex. 1003 U.S. Provisional Application 60/273,021
`Ex. 1004 U.S. Provisional Application 60/330,486
`Ex. 1005 Declaration of Dr. John Levy in Support of the
`Petition for Inter Partes Review of U.S. Patent
`8,624,550
`Ex. 1006 U.S. Patent 5,859,522
`Ex. 1007 Universal Serial Bus Specification, Revision 2.0,
`April 27, 2000
`Ex. 1008 U.S. Patent 6,904,488
`Ex. 1009 U.S. Patent 6,625,738
`Ex. 1010 U.S. Patent 7,360,004
`Ex. 1011 Universal Serial Bus Specification, Revision 1.1,
`September 23, 1998
`Ex. 1012 U.S. Patent Application Publication
`2003/0135766
`Ex. 1013 U.S. Patent 6,625,790
`Ex. 1014 Cypress CY7C63722/23 CY7C63742/43
`enCoRe™ USB Combination Low-Speed USB
`& PS/2 Peripheral Controller (Cypress enCoRe
`or Cypress Datasheet), by Cypress
`Semiconductor Corporation, published May 25,
`2000
`Ex. 1015 U.S. Patent 6,531,845
`Ex. 1016
`File History for U.S. Patent No. 6,904,488
`(“Matsumoto”)
`Ex. 1017 U.S. Patent 6,178,514
`Ex. 1018 U.S. Patent 5,884,086
`Ex. 1019 U.S. Patent 6,556,564
`Ex. 1020 U.S. Patent 6,936,936
`Ex. 1021
`Prosecution History of U.S. Patent 6,936,936
`Ex. 1022 USB 2.0 Documents Index,
`http://www.usb.org/developers/docs/usb20_docs/
`P.R. 4-3 Joint Claim Construction and
`Prehearing Statement, Ex. A1, Fundamental
`
`Ex. 1023
`
`Short Name
`’550 patent
`’550 file history
`’021 provisional
`’486 provisional
`Levy
`
`Theobald
`USB 2.0
`
`Matsumoto
`Shiga
`Dougherty
`USB 1.1
`
`Zyskowski
`
`Casebolt
`Cypress datasheet
`
`Kerai
`Matsumoto file
`history
`Wood
`Amoni
`Rogers
`’936 patent
`’936 file history
`USB Doc
`
`JCC, Ex. A1
`
`- i -
`
`

`

`
`
`Exhibit
`
`Description
`Innovation Systems Int’l LLC v. LG Electronics,
`Inc., 2:16-cv-01425-JRG-RSP (E.D. Tex. Dec.
`29, 2017) (Dkt. 103-1)
`Ex. 1024 Complaint, Fundamental Innovation Systems
`Int’l LLC v. Huawei Investment & Holding Co.,
`Ltd., et al., 2:16-cv-01424-JRG-RSP (E.D. Tex.
`Dec. 16, 2016)
`Ex. 1025 Curriculum vitae of Dr. John Levy
`
`Short Name
`
`Complaint
`
`Levy CV
`
`- ii -
`
`

`

`
`
`TABLE OF CONTENTS
`I. Mandatory Notices (37 C.F.R. §42.8) ................................................................ 3
`A.
`Real Parties-in-Interest (§42.8(B)(1)) ...................................................... 3
`B.
`Related Matters (§42.8(B)(2)) .................................................................. 3
`C.
`Counsel and Service Information (§§42.8(B)(3), 42.8(B)(4)) ................. 3
`II.
`Fees (§42.15(A)) ................................................................................................. 4
`III. Grounds for Standing (§42.104(A)) .................................................................... 4
`IV. Summary of Challenge (§42.104(B)(1)-(2), (4)) ................................................ 4
`V. Overview of the ’550 Patent (Ex. 1001) ............................................................. 5
`A.
`Prosecution History .................................................................................. 6
`B.
`Priority Date .............................................................................................. 7
`VI. Person of Ordinary Skill in the Art ..................................................................... 7
`VII. Summary of the Prior Art .................................................................................... 7
`A.
`Background and History of USB Technology ......................................... 8
`B.
`USB 2.0 ..................................................................................................... 8
`C. Use of SE1 State in Various Contexts .................................................... 12
`1.
`Shiga (Ex 1009) ........................................................................... 12
`2.
`Zyskowski (Ex. 1012) .................................................................. 13
`3.
`Casebolt (Ex. 1013) ..................................................................... 13
`4.
`Cypress Semiconductor ............................................................... 14
`5.
`Kerai (Ex. 1015) ........................................................................... 15
`D.
`Theobald (Ex. 1006) ............................................................................... 16
`E. Matsumoto (Ex. 1008) ............................................................................ 18
`
`- iii -
`
`

`

`
`
`F.
`
`Dougherty (Ex. 1010) ............................................................................. 20
`1.
`“charged battery scenario” ........................................................... 22
`2.
`“dead battery scenario” ................................................................ 23
`VIII. Claim Construction (§42.104(B)(3)) ................................................................ 24
`A.
`“configured to supply current on the VBUS line without regard to
`at least one associated condition specified in a USB
`specification” (claim 1) and “configured to supply current on the
`VBUS line without regard to at least one USB Specification
`imposed limit” (claim 10) ....................................................................... 24
`B.
`“USB enumeration” (claims 3 and 12) .................................................. 26
`C.
`“abnormal data condition” (claims 4, 6, 7, 13, 15 and 16) .................... 27
`IX. Application of the Prior Art to the Challenged Claims .................................... 27
`A. Ground 1: Theobald and USB 2.0, in Combination, Renders
`Claims 1-2, 9-11, and 18 Obvious ......................................................... 28
`1.
`Application of the Combination of Theobald and USB 2.0 to
`Claims 1-2, 9-11, and 18 .............................................................. 28
`2.
`The Theobald/USB 2.0 Combination .......................................... 33
`Ground 2: Theobald, USB 2.0, and Matsumoto, in Combination,
`Render Claims 3 and 12 Obvious ........................................................... 36
`1.
`Application of the Combination of Theobald, USB 2.0, and
`Matsumoto to Claims 3 and 12 .................................................... 37
`2.
`The Theobald/USB 2.0/Matsumoto Combination ...................... 38
`C. Ground 3: Theobald, USB 2.0 and Shiga, in Combination,
`Render Claims 4-8 and 13-17 Obvious .................................................. 39
`1.
`Application of the Combination of Theobald, USB 2.0, and Shiga
`to Claims 4-8 and 13-17 .............................................................. 40
`The Theobald/USB 2.0/Shiga Combination ............................... 45
`
`B.
`
`2.
`
`- iv -
`
`

`

`
`
`X.
`
`E.
`
`D. Ground 4: Dougherty Renders Claims 1-3, 9-12, and 18 Obvious ....... 47
`1.
`Application of Dougherty to Claims 1-3, 9-12, and 18. ............. 48
`Ground 5: Dougherty and Shiga, in Combination, Render Claims
`4-8 and 13-17 Obvious ........................................................................... 56
`1.
`Application of the Combination of Dougherty and Shiga to
`Claims 4-8 and 13-17 ................................................................... 56
`2.
`The Dougherty/Shiga Combination............................................. 62
`Conclusion ......................................................................................................... 66
`
`
`
`- v -
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`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 24
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`Torrent Pharms. Ltd. v. Novartis AG & Mitsubishi Pharma Corp.,
`IPR2014-00784 & IPR2015-00518, Final Written Decision
`(P.T.A.B. Sept. 24, 2015) ................................................................................... 25
`
`Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`IPR2016-00422, Institution Decision (P.T.A.B. Jul. 6, 2016) ..................... 25, 27
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 24
`Wendt Corp. v. IQASR, LLC,
`IPR2017-01080, Institution Decision (P.T.A.B. Sept. 28, 2017) ....................... 26
`Statutes
`35 U.S.C. §102 ..................................................................................................passim
`35 U.S.C. §103 ........................................................................................................... 5
`35 U.S.C. §325 ................................................................................................... 27, 28
`Other Authorities
`37 C.F.R. §42.100 .................................................................................................... 24
`
`
`- vi -
`
`

`

`
`
`Huawei Device Co., Ltd. (“Petitioner”) requests inter partes review (“IPR”) of
`
`claims 1-18 of U.S. Patent No. 8,624,550 (“’550 patent”). As explained below, there
`
`is a reasonable likelihood that Petitioner will prevail on at least one claim challenged
`
`in this petition.
`
`The ’550 patent’s claims generally recite an adapter comprising Universal
`
`Serial Bus (“USB”) technology, in which the adapter supplies current to an electronic
`
`device without regard for at least one limit specified or imposed in the USB
`
`specifications (e.g., supplying current in excess of the current limit). USB, however,
`
`was widely adopted as a bus and device connection standard by industry leaders and
`
`consumers after it was first released in 1998. As such, the USB technical attributes,
`
`including the use of the four signal lines in a USB cable (i.e., VBUS and GND
`
`(ground) lines that provide power, and D+ and D- lines that carry signals for
`
`communication), were well known before 2001. One shortcoming of USB standards
`
`(e.g., USB 1.1/2.0), however, was the imposition of a 500 mA current draw limit on a
`
`USB device connected to a USB hub or host. The USB technology field quickly and
`
`widely recognized that this limit posed problems in many contexts requiring more
`
`power. Amoni, 2:19-26; Rogers, 11:2-8; Levy, ¶58. Systems were implemented in
`
`which a device connected through USB to a second device could draw power from
`
`the latter in excess of the USB limit of 500 mA. Dougherty, 7:42-51; Amoni, 7:16-
`
`26; Levy, ¶58.
`
`- 1 -
`
`

`

`
`
`Drawing current in excess of 500 mA from a device through USB connectors,
`
`however, was not compliant with the USB specification because it was over the USB
`
`standard limit. Accordingly, it was apparent that the devices needed to signal one
`
`another regarding their intention or capability to make such an excess current draw.
`
`E.g., Dougherty, 5:48-65; Amoni, 6:33-7:26. There was also a need for the signal to
`
`not be confused with USB signals.
`
`This signaling technique (of signaling non-USB compliant features when two
`
`devices are connected by a USB connector), however, was also well known in the art
`
`before the ’550 patent’s alleged invention. Indeed, such a simple signaling
`
`mechanism is even suggested by the USB 2.0 specification itself. For example, the
`
`USB 2.0 Specification indicates that the Single Ended (SE)1 signal (i.e., when both
`
`the D+ and D- data lines are at a high voltage level) must never be intentionally
`
`generated within USB. E.g., USB 2.0, 123, 148 (citations to USB 2.0 refer to native
`
`numbers, not stamped numbers). This SE1 signal, which was not used by the USB
`
`standard, was already known to be used for the very purpose of signaling a non-USB
`
`compliant feature when two devices were connected through a USB connector. E.g.,
`
`Shiga, 6:34-58 (disclosing use of “fourth-mode” signaling, in which both D+ and D-
`
`are set high, for waking up a computer that is in sleep mode); Zyskowski, ¶19
`
`(disclosing use of D+ and D- set to high levels to signal a full power state of the host
`
`device); Casebolt, 7:30-46 (disclosing SE1 to signal the connected device that a PS/2
`
`- 2 -
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`

`

`
`
`interface is being used instead of USB interface).
`
`In short, all of the key concepts of the ’550 patent’s alleged invention were
`
`already known in the art, and there is no inventive concept with the ’550 patent. It
`
`was merely using existing technology in an ordinary way.
`
`I. MANDATORY NOTICES (37 C.F.R. §42.8)
`A. Real Parties-in-Interest (§42.8(B)(1))
`Huawei Device Co., Ltd., Huawei Technologies Co., Ltd., Huawei Device
`
`USA Inc., Huawei Investment & Holding Co., Ltd., Huawei Device (Dongguan) Co.,
`
`Ltd., Huawei Tech. Investment Co., Ltd., and Huawei Device (Hong Kong) Co., Ltd.
`
`are the real parties-in-interest.
`
`B. Related Matters (§42.8(B)(2))
`The ’550 patent is the subject of Civil Action Nos. 2:17-cv-00145-JRG,
`
`2:16-cv-01424-JRG-RSP, and 2:16-cv-01425-JRG-RSP (the “Litigation”), pending
`
`in the U.S. District Court for the Eastern District of Texas, and Civil Action No.
`
`3:17-cv-01827-N, pending in the U.S. District Court for the Northern District of
`
`Texas. The ’550 patent is also subject to IPR2018-00110 and IPR2018-00111,
`
`filed by ZTE (USA) Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`
`America, Inc., and pending institution. Petitioner is unaware of any other pending
`
`matter that would affect, or by affected by, a decision in this proceeding.
`
`C. Counsel and Service Information (§§42.8(B)(3), 42.8(B)(4))
`Petitioner designates as lead counsel David A. Garr (Reg. No. 74,932,
`
`- 3 -
`
`

`

`
`
`dgarr@cov.com) of Covington & Burling LLP, One CityCenter, 850 Tenth Street,
`
`NW, Washington, DC 20001 (postal and hand delivery), telephone: 202-662-6000,
`
`facsimile: 202-662-6291. Back-up counsel is Anupam Sharma (Reg. No. 55,609,
`
`asharma@cov.com) of Covington & Burling LLP, 333 Twin Dolphin Dr. # 700,
`
`Redwood City, CA 94065, telephone: 650-632-4700. Petitioner consents to
`
`electronic service by email provided in the designation of counsel above, as well as in
`
`the signature block of this petition.
`
`II.
`
`FEES (§42.15(A))
`The Office is authorized to charge the filing fee and, and any other necessary
`
`fees that might be due in connection with this Petition, to Deposit Account No. 50-
`
`0740 for the fees set forth in 37 C.F.R. §42.15(a).
`
`III. GROUNDS FOR STANDING (§42.104(A))
`Petitioner certifies that the ’550 patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting an IPR challenging the ’550 patent on the
`
`grounds identified in this petition.
`
`IV. SUMMARY OF CHALLENGE (§42.104(B)(1)-(2), (4))
`Petitioner requests that the Board review and cancel claims 1-18 (“challenged
`
`claims”) of the ’550 patent based on the following grounds.
`
`
`
`
`
`
`
`- 4 -
`
`

`

`
`
`Ground Claims
`
`Basis
`
`Reference(s)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`1, 2, 9-11, 18 pre-AIA 35 U.S.C. §103(a)1 Theobald and USB 2.0
`
`3, 12
`
`pre-AIA 35 U.S.C. §103(a)
`
`Theobald, USB 2.0,
`
`and Matsumoto
`
`4-8, 13-17
`
`pre-AIA 35 U.S.C. §103(a)
`
`Theobald, USB 2.0,
`
`and Shiga
`
`1-3, 9-12, 18 pre-AIA 35 U.S.C. §103(a) Dougherty
`
`4-8, 13-17
`
`pre-AIA 35 U.S.C. §103(a) Dougherty and Shiga
`
`
`V. OVERVIEW OF THE ’550 PATENT (EX. 1001)
`The ’550 patent has 18 claims and generally relates to “[a]n adapter for
`
`providing a source of power to a mobile device through an industry standard port.”
`
`’550 patent, 2:19-20. This can be achieved by “detecting the presence of an
`
`abnormal data line condition at the USB port 18.” Id., 9:21-24. Specifically, the
`
`’550 patent discloses that if there is detection of an abnormal condition in which the
`
`“voltages on both the D+ and D- lines of the USB connector are greater than 2 Volts
`
`(step 220), then the mobile device 10 determines that the device connected to the
`
`1 Because the application for the ’550 patent was filed prior to March 16, 2013, the
`
`pre-AIA conditions for patentability apply. All citations to the applicable statutes in
`
`this petition refer to the pre-AIA versions.
`
`- 5 -
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`

`

`
`
`USB connector 54 is not a typical USB host or hub and that a USB adapter 100 has
`
`been detected.” Id., 9:39-44. In such a scenario, the mobile device can charge the
`
`battery or otherwise use the power from the USB connector, without waiting for
`
`enumeration, id., 9:44-47, which is a process used in USB “to identify and manage
`
`the device state changes necessary.” USB 2.0, 243. The ’550 patent further discloses
`
`that the mobile device may “draw power without regard to the USB specification and
`
`the USB specification imposed limits.” ’550 patent, 8:21-26. The ’550 patent claims
`
`that an adapter configured in such a manner is allegedly new and non-obvious over
`
`prior art.
`
`Prosecution History
`A.
`The ’550 patent issued from U.S. Patent Application 13/536,767, which was
`
`filed on June 28, 2012. That same day, the applicant cancelled all pending claims
`
`and added 18 new claims. ’550 file history (Ex. 1002), 177-79.
`
`On May 28, 2013, the examiner rejected all pending claims based upon
`
`obviousness-type double patenting over claims 1-12 of U.S. Patent 7,986,127. Id.,
`
`68-70. On August 7, 2013, the applicant responded by filing a terminal disclaimer.
`
`Id., 60-61.
`
`The examiner then issued a notice of allowance on September 5, 2013. Id., 50.
`
`On November 19, 2013, before the patent issued, the applicant requested an
`
`amendment after allowance to correct “minor clerical errors” and “a typographical
`
`- 6 -
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`

`

`
`
`error” made to pending claim 27. Id., 24. The examiner approved the amendments,
`
`id., 14-15, and the ’550 patent issued on January 7, 2014.
`
`Priority Date
`B.
`The ’550 patent claims priority through a series of continuations to two
`
`provisional applications: (1) the ’021 provisional (Ex. 1003), filed March 1, 2001;
`
`and (2) the ’486 provisional (Ex. 1004), filed October 23, 2001. Thus, the earliest
`
`potential priority date is March 1, 2001.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`The person of ordinary skill in the art (“POSITA”) of the subject matter of
`
`the ’550 patent would have had either (i) a bachelor’s degree in electrical
`
`engineering, computer science, or a related field, plus 2-4 years of experience in
`
`design of systems with USB or equivalent buses, or (ii) a master’s degree in
`
`electrical engineering, computer science, or a related field, plus 1-2 years of
`
`experience in design of systems with USB or equivalent buses at the time of the
`
`’550 patent’s priority date. Petitioner also submits the declaration of Dr. John
`
`Levy, who has been a POSITA since at least the ’550 patent’s claim priority date.
`
`Levy, ¶¶22-24; Levy CV (Ex. 1025).
`
`VII. SUMMARY OF THE PRIOR ART
`All elements of the ’550 patent’s claims were well-known in the prior art
`
`before the priority date of the ’550 patent. Levy, ¶49. Indeed, there is nothing
`
`novel or non-obvious about the alleged invention of the ’550 patent’s claims. Id.
`
`- 7 -
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`

`

`
`
`A. Background and History of USB Technology
`As of March 1, 2001, a POSITA would have been familiar with USB
`
`Implementers Forum, Inc. (“USB-IF”), which consists of representatives of
`
`industry leading companies that have been and continue to be responsible for the
`
`development, adoption, and advancement of USB technology since 1995. Levy,
`
`¶¶51-53. Similarly, a POSITA would have had access to and been familiar with
`
`the USB Specification (which describes technical details to enable design of USB
`
`compatible products) in its various revisions, including Revision 1.1 (“USB 1.1”)
`
`(Ex. 1011), which was first released on September 23, 1998, and Revision 2.0
`
`(“USB 2.0”) (Ex. 1007), which was released on April 27, 2000. Id.
`
`USB-IF continued to improve upon USB technology and continues to do so.
`
`Levy, ¶53. For example, the USB 2.0 Documents Index of the USB 2.0 web page
`
`(Ex. 1022) lists 36 available documents, including the original USB 2.0
`
`Specification, representing evolution and modifications of USB 2.0 from April 27,
`
`2000 through February 2, 2017. Id.
`
`B. USB 2.0
`USB 2.0 was published on April 27, 2000, bears a copyright date of 2000 on
`
`its face, and was disseminated and available to POSITAs in the USB technology
`
`field. Levy, ¶¶51-52. Thus, USB 2.0 is prior art to the ’550 patent under at least
`
`pre-AIA §102(a).
`
`- 8 -
`
`

`

`
`
`USB 2.0 describes an architecture in which a USB host is connected to one
`
`or more USB devices through USB connectors and USB cables. USB 2.0, 15-18,
`
`148 (citations to USB 2.0 refer to native numbers, not stamped numbers); Levy,
`
`¶54. A USB host includes a USB controller, and a USB device may be a hub (that
`
`provides additional USB connections to other USB devices) or a function (that
`
`provides a capability to a host, e.g., ISDN connection, microphone, speakers,
`
`keyboard, mouse). Levy, ¶54. In general, the USB cable has four wires: VBUS
`
`and GND (ground) lines that provide power, and D+ and D- lines that carry signals
`
`for communication, as shown in Figure 4-2 from USB 2.0 below. USB 2.0, 17-18,
`
`85-89; Levy, ¶54. Each USB connector has corresponding pins that each connect
`
`to the corresponding line in a USB cable. Levy, ¶54.
`
`
`
`USB 2.0 also describes how a USB host configures a USB device when they
`
`are connected. Levy, ¶55. For example, USB 2.0 states that “[w]hen a USB
`
`device is attached to or removed from the USB, the host uses a process known as
`
`bus enumeration to identify and manage the device state changes necessary.” USB
`
`2.0, 243. USB 2.0 specifies these bus-enumeration requirements, including eight
`
`- 9 -
`
`

`

`
`
`actions taken “[w]hen a USB device is attached to a powered port.” Id., 243-44.
`
`USB 2.0 further specifies limits on the current a device may draw from a host
`
`or another device. Id., 171, 178, 245. Specifically, USB 2.0 specifies that a device
`
`may not draw more than 500mA from USB via VBUS. Levy, ¶57.2
`
`Moreover, a POSITA would have known about the different signaling states
`
`on the D+ and D- lines in USB based on the USB 2.0 specification, as USB 2.0
`
`defines a number of such signaling states that are used for various purposes. USB
`
`2.0, Table 7-2; Levy, ¶¶60-61. For example, some states (e.g., Differential 0,
`
`Differential 1, Data J State, Data K State) are associated with transmission of data
`
`while others (e.g., Single-Ended (SE) 0, Single-Ended 1) are used as non-data
`
`signaling conditions. USB 2.0, 144-45; Levy, ¶60. Additionally, USB 2.0
`
`discloses that a USB device attached to a USB hub or host sets either the D+ or the
`
`D- line to a high logical voltage level to signal the USB hub or host regarding the
`
`connection. USB 2.0, 149-51; Levy, ¶61. This is also shown below in Figures 7-
`
`
`2 As discussed, however, POSITAs quickly and widely recognized that this limit was
`
`a problem in many contexts requiring more power, as Amoni and Rogers have noted.
`
`E.g., Amoni, 2:19-26; Rogers, 11:2-8. Indeed, Amoni and Rogers are prior art to
`
`every claim of the ’550 patent under pre-AIA §§102(b) and 102(e), respectively, as
`
`Amoni’s issuance date is March 16, 1999 and Rogers’ filing date is February 8, 2001.
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`
`
`27 (D+ is high) and 7-28 (D- is high) of USB 2.0.
`
`
`
`
`
`This connection-detection signaling takes place before USB enumeration. USB
`
`2.0, 243-44; Levy, ¶62. Thus, USB 2.0 itself discloses that the identification signal
`
`comprises a voltage level on at least one data line in the USB connector.
`
`USB 2.0 also discloses the SE1 state, which is of particular relevance for this
`
`petition. “SE1 is a state in which both the D+ and D- lines are at a voltage above
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`VOSE1 (min), which is 0.8 V.” USB 2.0, 123. USB 2.0 also teaches that the low
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`and full-speed USB drivers “must never ‘intentionally’ generate an SE1 on the
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`bus.” Id., 123, 148. In other words, according to USB 2.0, an abnormal data
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`condition would occur if D+ and D- were both intentionally set in a high state
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`above 0.8 V from a connected USB host or device. Levy, ¶63.
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`C. Use of SE1 State in Various Contexts
`A POSITA at the time of the alleged invention of the ’550 patent would
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`have understood that the SE1 condition would be a logical choice for signaling
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`information about a device without interfering with USB signaling. Levy, ¶64.
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`Tellingly, numerous prior art references disclose using SE1 for this purpose.
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`Shiga (Ex 1009)
`1.
`U.S. Patent No. 6,625,738 (“Shiga”) was filed on December 6, 1999, and
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`thus, is prior art to the ’550 patent under at least pre-AIA §102(e).
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`Shiga recognizes that, according to USB standards at the time, there are three
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`(D+, D-) signal line states representing three modes: (1) low-speed mode (D+ signal
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`line is set to a low level ( “L”) and D- line is set to a high level (“H”)); (2) full-speed
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`mode (D+ is high and D- is low); and (3) unconnected mode (both D+ and D- are
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`low), as shown in Shiga’s Table 1, below. Shiga, 5:38-60; Levy, ¶¶65-66.
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`
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`In contrast to these three USB standard modes, Shiga also explains that the
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`“fourth mode” signal, which is when both D+ and D- are in the H level state, is “not a
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`USB standard state” and can therefore “be easily distinguished from USB standard
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`data signals.” Shiga, 5:60-62, 6:48-58; Levy, ¶67. This fourth mode signal is
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`transmitted by a USB apparatus (e.g., keyboard) to wake up a host computer. Shiga,
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`Abstract, 6:35-47; Levy, ¶67. Accordingly, in 1999, using the signal state that it is
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`not a USB standard mode (i.e., in which both D+ and D- are in the H state) was well-
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`known. Shiga, 5:60-62; 6:48-50; Levy, ¶¶67-69.
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`Zyskowski (Ex. 1012)
`2.
`As another example, Zyskowski teaches that SE1 (with D+ and D- being set
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`at 5 V) could be used by a host device (e.g., computer) to signal its full power state
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`to a connected device (e.g., mass storage device, consumer electronic device).
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`Zyskowski, ¶¶17, 19; Levy, ¶70.3
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`Casebolt (Ex. 1013)
`3.
`Casebolt also teaches that SE1 could be used as a special signaling mode in
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`which the D+ and D- data lines would be connected to Vcc (+5V) to signal the
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`presence of a PS/2 adapter,4 as shown below. Casebolt, Fig. 2C, 7:41-54, Table 1;
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`Levy, ¶71.5
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`3 Under pre-AIA §102(e), Zyskowski is prior art to every claim of the ’550 patent, as
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`Zyskowski’s filing date is December 3, 1999.
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`4 A PS/2 port is a now-obsolete 6-pin mini-DIN connector that was used for
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`connecting keyboards and mice to an IBM PS/2 computer system. Levy, ¶71.
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`5 Under pre-AIA §102(e), Casebolt is prior art to every claim of the ’550 patent, as
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`Casebolt’s filing date is October 1, 1999.
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`Indeed, the SE1 state for USB (i.e., when both the D+ and D- data lines are
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`both at H level) is shown in Casebolt’s Table 1 below. Levy, ¶72.
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`
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`Cypress Semiconductor
`4.
`Knowledge regarding the use of a state in which D+ and D- are both high
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`was so common that Cypress Semiconductor integrated it into its enCoRe product
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`in 2000. Cypress datasheet (Ex. 1014), 21-22, 24-25, 41; Levy, ¶73.6
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`5. Kerai (Ex. 1015)
`Kerai also used a high state on USB D+ and D- (yellow) for charging with
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`the charging system (green), as shown below. Kerai, Fig 3, 5:43-51; Levy, ¶74.7
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`
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`In short, a POSITA would have understood that the SE1 state could be used
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`in a variety of contexts, including PS/2 (e.g., Casebolt’s adapter), standard USB
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`(e.g., Shiga’s keyboard), and others (e.g., Zyskowski’s full power state signaling,
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`Kerai’s charging scheme) and was not restricted to a single application. Levy, ¶75.
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`6 Under pre-AIA §102(b), Cypress datasheet is prior art to every claim of the ’550
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`patent, as Cypress datasheet’s publication date is May 25, 2000.
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`7 Kerai is contemporaneous art to the ’550 patent, as Kerai’s filing date is May 25,
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`2001.
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`D. Theobald (Ex. 1006)
`U.S. Patent No. 5,859,522 (“Theobald”) was granted on January 12, 1999,
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`and thus, is prior art to the ’550 patent under at least pre-AIA §102(b).
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`Theobald discloses accessories in an electronic device (e.g., cell phone).
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`Theobald, 1:12-13, 1:53-55, 3:5-10, 3:52-58; Levy, ¶76. These accessories may be
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`connected to the electronic device, and include two types of chargers: (1) fast-rate
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`charger that provides 850 mA of current, and (2) mid-rate charger that provides 340
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`mA of current. Theobald, 4:29-33; Levy, ¶76. As shown below, the electronic
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`device in Theobald determines which accessory (e.g., fast-rate charger or mid-rate
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`charger) is connected by measuring the voltage on the audio in pin of its connector
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`(e.g., voltage range of 1.6-1.9 V means connected to a mid-rate charger, range of 3.6-
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`4.2 V means connected to a fast-rate charger). Theobald, Fig. 2, 4:55-67, 6:14-41;
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`Levy, ¶¶77-78.
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`Theobald also teaches that an electronic device may be connected to the
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`accessory using, for example, a J3 connector. Theobald, 3:5-10; Levy, ¶¶79-80.
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`More importantly, Theobald expressly teaches that any connector having an external
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`supply pin and at least one information pin may be used. Levy, ¶¶79-80.
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`Accordingly, a POSITA would have known that the Theobald invention could be
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`used with USB 2.0. Id.
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`E. Matsumoto (Ex. 1008)
`U.S. Patent No. 6,904,488 (“Matsumoto”) was filed on December 21, 2000,
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`and thus, is prior art to the ’550 patent under at least pre-AIA §102(e).
`
`Matsumoto teaches distinguishing between devices connected (via USB) to the
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`portable electronic device. Matsumoto, 1:7-44, 2:47-31; Levy, ¶81. For example,
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`the portable electronic device embodying Matsumoto’s invention is depicted in its
`
`Figure 1 (below) in which the portable electronic device 1 can be connected via USB
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`connection 4 to personal computer 2 and an external power source 3, and so must
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`distinguish between the two.
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`Moreover, Matsumoto teaches: (1) undergoing a predetermined data
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`communication processing in accordance with the USB standard when portable
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`electronic devices are connected through USB connectors to a host device (e.g.,
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`personal computer); and (2) avoiding such processing when an external power
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`source (e.g., AC adapter) is connected to the portable electronic device because no
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`such processing is needed in this scenario. Matsumoto, 1:37-64, 2:26-57; Levy,
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`¶82. A POSITA would know that, although not explicitly disclosed in Matsumoto,
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`this predetermined data communication processing includes USB enumeration.8
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`Matsumoto explains that undergoing USB enumeration causes a delay in
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`execution by the portable electronic device of any processing requested by the
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`user. Matsumoto, 1:46-64; Levy, ¶83. Accordingly, if the determination indicates
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`that an adapter, rather than a personal computer, is connected to the portable
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`device, enumeration is skipped to ensure simplified processing at higher speed.
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`
`8 In an office action dated March 31, 2003 of Matsumoto file history (Ex. 1016), the
`
`examiner found that “predetermined data communication processing” was disclosed
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`in Wood, 28:66-29:4 (Ex. 1017). This section refers to Wood, 28:22-37 and Figs.
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`22-23, which indicate that the examiner found that “predetermined data processing
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`communication” corresponds to the “handshake routine” carried out between two
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`connected USB devices. This handshake routine is USB enumeration. Levy, ¶82.
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`The applicant did not object to or overcome this aspect of the examiner’s findings.
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`Id.
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`Matsumoto, 2:33-57, 3:26-30; Levy, ¶83.
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`In short, even as of 2000, a practice of avoiding USB enumeration, and the
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`related benefits, was also well-known to a POSITA. Levy, ¶84.
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`F. Dougherty (Ex. 1010)
`U.S. Patent No. 7,360,004 (“Dougherty”) 9 has an effective filing date of
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`
`9 During prosecution, the ’550 applicant cited Dougherty’s parent patent, U.S. Patent
`
`No. 6,668,296 (“’296 patent”), alo