Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: May 8, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA) INC.,
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`Case IPR2018-00110
`Patent 8,624,550 B2
`
`
`Before RAE LYNN P. GUEST, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`FISI Ex 2009-p 1
`Huawei v FISI
`IPR2018-00465
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: May 8, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZTE (USA) INC.,
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`Case IPR2018-00110
`Patent 8,624,550 B2
`
`
`Before RAE LYNN P. GUEST, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`FISI Ex 2009-p 1
`Huawei v FISI
`IPR2018-00465
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`
`
`IPR2018-00110
`Patent 8,624,550 B2
`
`INTRODUCTION
`I.
`ZTE (USA) Inc., Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–18 of U.S. Patent
`No. 8,624,550 B2 (Ex. 1001, “the ’550 patent”). Fundamental Innovation
`Systems International LLC (“Patent Owner”) filed a Preliminary Response
`to the Petition (Paper 11, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting
`an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless the Director
`determines . . . there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`After considering the Petition, the Preliminary Response, and the
`evidence of record, we determine that Petitioner has not demonstrated a
`reasonable likelihood of prevailing with respect to any challenged claim of
`the ’550 patent. Accordingly, we do not institute an inter partes review.
`
`A. Related Proceedings
`The parties identify Civil Action Nos. 2:17-cv-00145-JRG, 2:16-cv-
`01424-JRG-RSP, and 2:16-cv-01425-JRG-RSP, pending before the U.S.
`District Court for the Eastern District of Texas, and Civil Action No. 3:17-
`cv-01827-N, pending before the U.S. District Court for the Northern District
`of Texas, as related matters. Pet. 1; Paper 9, 1. The parties note that
`the ’550 patent is also the subject of IPR2018-00111. Pet. 1; Paper 9, 2.
`
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`B. USB 2.0 Compliant Cables
`Cables compliant with the USB 2.0 standard have four conductors:
`VBUS, D+, D-, and GND. Ex. 1008, 17–18, 86; Ex. 1009 ¶ 34. 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. Ex. 1008, 17–18; Ex. 1009 ¶ 34; Ex. 1001,
`7:11–16. Figure 4-2 of the USB 2.0 specification, reproduced below, depicts
`these four conductors within a USB cable:
`
`
`
`Ex. 1008, 17.
`C. The ’550 Patent
`The ’550 patent discloses “a USB adapter for providing a source of
`power to a mobile device through a USB port.” Ex. 1001, 2:34–36.
`The ’550 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 2:1–3. This is because a USB
`device must “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 2:3–15.
`To permit the recharging of mobile devices using a broader range of
`power sources, the ’550 patent provides a USB adapter that is capable of
`
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`providing power to a mobile device without first participating in
`enumeration. Id. at 8:21–26. Figure 2 of the ’550 patent, reproduced below,
`is a schematic diagram of the disclosed USB adapter coupled to an
`exemplary mobile device (id. at 3:35–36):
`
`
`As shown in Figure 2, USB adapter 100 contains primary USB
`connector 102, power converter 104, plug unit 106, and identification
`subsystem 108. Id. at 6:63–66. The ’550 patent explains 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 7:9–11,
`8:27–29. This identification signal “could be the communication of a single
`
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`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 8:29–33. “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 9:26–28. The
`’550 patent explains that by providing an appropriate identification signal,
`mobile device 10 can “forego the enumeration process and charge
`negotiation process” set forth in the USB specification “and immediately
`draw energy from the USB power adapter” at a desired rate. Id. at 9:65–
`10:3.
`
`In addition to USB connector 102, USB adapter 100 also contains
`auxiliary USB connector 112, which allows the adapter “to create a
`communication path between the mobile device 10 and some other device
`capable of communicating over the USB such as a personal computer,
`another mobile device or some other type of device.” Id. at 8:46–53. The
`’550 patent explains that this communication path preferably extends
`“between the D+ and D- pins of the Primary USB connector 102 and the D+
`and D- pins of the auxiliary USB connector 112.” Id. at 8:54–57.
`
`D. Illustrative Claim
`Petitioner challenges claims 1–18 of the ’550 patent. Claims 1 and 10
`are independent. Claim 1 is illustrative of the challenged claims and is
`reproduced below:
`1. An adapter comprising:
`a USB VBUS line and a USB communication path,
`said adapter configured to supply current on the VBUS line
`without regard to at least one associated condition specified in a
`USB specification.
`
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`IPR2018-00110
`Patent 8,624,550 B2
`Ex. 1001, 12:8–12.
`E. The Asserted Grounds of Unpatentability
`Petitioner contends claims 1–18 of the ’550 patent are unpatentable
`based on the following grounds (Pet. 16):1
`Reference(s)
`Basis
`Claims Challenged
`Dougherty2
`§ 102
`1–3, 9–12, and 18
`Dougherty and Shiga3
`§ 103
`4–8 and 13–17
`
`II.
`
`ANALYSIS
`
`A. 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).
`Petitioner provides a proposed construction for the term “USB
`enumeration.” Pet. 14–15. Patent Owner does not propose any express
`constructions for terms of the ’550 patent.
`Upon review of the parties’ arguments and supporting evidence, we
`determine that no claim terms require express construction for purposes of
`this Decision. 4 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
`
`1 Petitioner also relies on a declaration from Mr. James T. Geier (Ex. 1009).
`2 U.S. Patent No. 7,360,004 B2, issued April 15, 2008 (Ex. 1005).
`3 U.S. Patent No. 6,625,738 B1, issued September 23, 2003 (Ex. 1006).
`4 We address below the meaning of “an adapter comprising . . . a USB
`communication path” in the context of Petitioner’s anticipation arguments.
`
`6
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`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”)).
`
`B. Alleged Anticipation by Dougherty
`Petitioner contends claims 1–3, 9–12, and 18 are anticipated by
`Dougherty. Pet. 23–39.
`
`1. Dougherty
`Dougherty discloses a method and system for powering a laptop
`across a USB interface when it is docked with a docking station. Ex. 1005,
`1:21–26. Figure 1 of Dougherty, reproduced below with Petitioner’s color
`annotations, is a schematic of the disclosed system (Pet. 17):
`
`
`As shown in Figure 1, the system of Dougherty includes laptop computer
`100 (red) and docking station 200 (blue), which are connected via serial
`
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`communication conductors 1265, power rail 138, USB connector 136 (of
`laptop computer 100), and USB connector 236 (of docking station 200) (all
`in yellow). Ex. 1005, 3:44–5:7.
`
`Figure 2 of Dougherty, reproduced below with Petitioner’s color
`annotations, shows in more detail the coupling of docking logic 134 of
`laptop computer 100 and docking logic 234 of docking station 200. Id. at
`5:8–10; Pet. 24.
`
`
`As shown in Figure 2, connection of docking logic 134 of laptop computer
`100 and docking logic 234 of docking station 200 is via USB connector 136
`of laptop computer 100 and USB connector 236 of docking station 200. Ex.
`1005, 5:11–14. In this configuration, “[p]ositive power rail 244 couples to
`the power rail 144 on the laptop side of the connection and therefore also
`couples to the reactive signaling circuit 150.” Id. at 6:25–27.
`
`5 Structural element 126 in Dougherty is alternatively identified as “USB bus
`126,” “serial communication conductors 126,” “serial communication lines
`126,” and “signal lines 126.” Ex. 1005, 4:51, 5:2–3, 5:51, 9:1.
`
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`2. Independent Claims 1 and 10
`Petitioner contends docking station 200 of Dougherty is “an adapter,”
`positive power rail 244 is a USB VBUS line, and serial communication lines
`126 and mating USB connector 236 together constitute a USB
`communication path, as recited in claims 1 and 10. Pet. 23–28. Petitioner
`further contends that Dougherty’s docking station is configured to provide
`current on VBUS line 244 without regard to several conditions and/or
`limitations specified in the USB specification, including the condition that
`no device may draw greater than 500 mA of current via USB. Id. at 28–33.
`In support of its argument that the docking station, or “adapter,” of
`Dougherty “comprises . . . a USB communication path,” Petitioner provides
`the following annotated version of Figure 1 of Dougherty (Id. at 26):
`
`As shown in this annotated figure, serial communication conductors 126
`(blue) extend from input/output controller hub 120 of laptop computer 100
`to USB connector 236 of docking station 200 (via USB connector 136 of
`laptop 100). Id.; Ex. 1005, Fig. 1. Petitioner contends one of ordinary skill
`in the art would have understood that serial communication conductors 126
`
`
`
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`of Dougherty are the D+ and D- lines of the standard USB cable and that
`these lines are connected to the D+ and D- pins of USB connector 236,
`thereby providing “a USB communication path by which the docking station
`200 can communicate with the laptop 100.” Pet. 26 (citing Ex. 1009 ¶ 60),
`28 (identifying “serial communication lines 126 and mating USB connector
`236” as the claimed USB communication path).
`Patent Owner contends claims 1 and 10 require not just a USB
`communication path, but a USB communication path that is part of the
`claimed “adapter.” Prelim. Resp. 29–30, 33. Patent Owner further contends
`that, because serial communication conductors 126 of Dougherty are part of
`the laptop computer and not the identified “adapter,” and because Petitioner
`relies on serial communication conductors 126 as defining the
`communication path, Petitioner has not shown that Dougherty discloses
`“[a]n adapter comprising . . . a USB communication path,” as recited in
`independent claims 1 and 10. Id. at 29–30, 32–33.
`We agree with Patent Owner that the claim phrase “[a]n adapter
`comprising . . . a USB communication path” requires a communication path
`that is part of the “adapter.” This understanding is consistent with both the
`claim language requiring that the adapter comprise a USB communication
`path, and with the written description of the ’550 patent, which discloses
`various USB communication paths that extend through the disclosed adapter
`to provide a communication path between the mobile device and another
`device capable of communicating over USB. See, e.g., Ex. 1001, 8:46–53
`(explaining that the adapter may “create a communication path between the
`mobile device 10 and some other device capable of communicating over the
`USB such as a personal computer, another mobile device or some other type
`
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`of device” capable of communicating over the USB), 8:54–57 (“The USB
`adapter 100 preferably provides a communication path between the D+ and
`D- pins of the Primary USB connector 102 and the D+ and D- pins of the
`auxiliary USB connector 112.”).
`Petitioner and Mr. Geier present evidence that the D+ and D- pins of
`USB connector 236 are connected to a USB communication path (serial
`connectors 126, USB connector 136, and USB connector 236) that includes
`parts that are not only outside the “adapter,” but are entirely contained
`within the laptop. Pet. 26; see Ex. 1005, 5:11–13 (“Docking of these two
`logic circuits is preferably through USB connector 136 of the laptop
`computer 100 . . . .”), Fig. 1 (showing serial communication conductors 126
`connected to Input/Output Controller Hub 120 and USB connector 136 of
`the laptop computer). Petitioner and Mr. Geier do not persuasively explain,
`however, why one of ordinary skill in the art would have considered these
`elements, in combination, to constitute a USB communication path that is
`part of the “adapter.”6 Thus, on this record, and absent persuasive
`arguments from Petitioner addressing this issue, we are not persuaded that
`Dougherty expressly discloses an “adapter comprising . . . a USB
`communication path,” as recited in claims 1 and 10.
`We acknowledge that Dougherty discloses that laptop computer 100
`and docking station 200 perform a USB handshaking protocol over serial
`
`
`6 We note that power rail 138, like serial communication conductors 126, is
`coupled to USB connector 236 of docking station 200. Pet. 17 (annotated
`Figure 1 of Dougherty). Tellingly, Petitioner does not identify power rail
`138 as the claimed “USB VBUS line,” but instead identifies positive power
`rail 244 within docking station 200 as reading upon this claim element. Id.
`at 27–28.
`
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`communication lines 126, and that the docking station may act as a port
`replication device that provides additional connection points for peripheral
`devices. Ex. 1005, 2:12–28, 5:39–52. It is possible, if not highly probable,
`that docking station 200 contains an internal USB communication path that
`is utilized for these purposes. Petitioner and Mr. Geier present insufficient
`credible arguments or evidence, however, to establish that a USB
`communication path is necessarily present in the Dougherty docking station.
`See Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed.
`Cir. 1991) (explaining that inherent anticipation must be supported by
`evidence that makes “clear that the missing descriptive matter is necessarily
`present in the thing described in the reference”). Thus, on the current
`record, we are not persuaded that Dougherty expressly or inherently
`discloses “an adapter comprising . . . a USB communication path,” as recited
`in claims 1 and 10.
`In view of the foregoing, we determine that Petitioner has not
`demonstrated a reasonable likelihood that independent claims 1 and 10 of
`the ’550 patent are anticipated by Dougherty. And, because challenged
`claims 2, 3, 9, 11, 12, and 18 each depend, directly or indirectly, from either
`of claims 1 or 10, and the deficiencies identified with respect to claims 1 and
`10 are not remedied by Petitioner’s arguments and evidence with respect to
`these dependent claims, Petitioner has likewise not demonstrated a
`reasonable likelihood that dependent claims 2, 3, 9, 11, 12, and 18 are
`anticipated by Dougherty.
`
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`C. Alleged Obviousness of Claims 4–8 and 13–17 over Dougherty
`and Shiga
`Claims 4–8 depend, directly or indirectly, from claim 1. Ex. 1001,
`12:17–29. Claims 13–17 depend, directly or indirectly, from claim 10. Id.
`at 12:41–53. Petitioner contends the subject matter of these claims would
`have been obvious over the combined disclosures of Dougherty and Shiga.
`Pet. 39–61.
`In its proposed combination of Dougherty and Shiga, Petitioner again
`relies upon Dougherty as disclosing “an adapter comprising . . . a USB
`communication path.” Id. at 54 (“As explained in Section VII.A.2.a (pp. 23-
`33), Dougherty anticipates claim 1, from which claim 4 depends. For the
`same reasons, each Dougherty/Shiga combination, which uses Dougherty’s
`system, also taught every element of claim 1.”). For the reasons set forth
`above, Petitioner has not demonstrated sufficiently that Dougherty discloses
`this claim limitation. Accordingly, Petitioner has not demonstrated a
`reasonable likelihood that claims 4–8 and 13–17 would have been obvious
`over Dougherty and Shiga.
`III. 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 claims 1–18 of the ’550 patent are unpatentable.
`Accordingly, we do not institute an inter partes review.
`
`IV. ORDER
`
`It is hereby,
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
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`IPR2018-00110
`Patent 8,624,550 B2
`PETITIONER:
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY LLP
`cmcmahon@mwe.com
`hmehta@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 Annita Zhong
`Michael Fleming
`IRELL & MANELLA LLP
`hzhong@irell.com
`mfleming@irell.com
`patents@irell.com
`
`14
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`
`
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