Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 16
`Entered: May 9, 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 IPR2018-00111
`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 TO INSTITUTE
`35 U.S.C. § 314(a)
`
`
`
`
`
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`FISI Ex 2011-p 1
`Huawei v FISI
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`Tel: 571-272-7822
`
`Paper No. 16
`Entered: May 9, 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 IPR2018-00111
`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 TO INSTITUTE
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`FISI Ex 2011-p 1
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`Patent 8,624,550 B2
`
`INTRODUCTION
`I.
`ZTE (USA) Inc., Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc. (collectively, “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 12, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314. 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 demonstrated a
`reasonable likelihood that it would prevail with respect to at least 1 claim
`challenged in the Petition. Accordingly, we institute an inter partes review
`on all challenged claims and on all grounds set forth in the Petition.
`
`A. Related Proceedings
`The parties identify Civil Action Nos. 2:17-cv-00145-JRG, 2:16-cv-
`1424-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 in the U.S. District Court for the Northern District of
`Texas, as related matters. Pet. 1; Paper 10, 1. The parties further note that
`the ’550 patent is the subject of IPR2018-00110. Pet. 1; Paper 10, 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 ¶¶ 34–35;
`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 comprises primary USB
`connector 102, power converter 104, plug unit 106, identification subsystem
`108, and auxiliary USB connector 112. Id. at 6:63–66, 7:5–8. The ’550
`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 7:9–11, 8:21–29. This identification signal
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`“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 8:29–33.
`“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 the 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.
`
`Auxiliary USB connector 112 allows the adapter “to create a
`communication path between the mobile device 10 and some other device
`capable of communicating over the USB.” Id. at 8:46–53. 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 Claims
`Petitioner challenges claims 1–18 of the ’550 patent. Independent
`claims 1 and 10 are illustrative of the challenged claims and are 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.
`Ex. 1001, 12:8–12.
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`10. 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 USB Specification imposed limit.
`Id. at 12:32–36.
`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
`Rogers2
`§ 103
`1–3, 9–12, and 18
`
`Rogers 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 provides proposed constructions
`for the phrases “to supply current . . . without regard to at least one
`associated condition specified in a USB specification” and “to supply
`current . . . without regard to at least one USB specification imposed limit.”
`Prelim. Resp. 15–18.
`
`
`1 Petitioner also relies on a declaration from Mr. James T. Geier (Ex. 1009).
`2 U.S. Patent No. 6,556,564 B2, issued April 29, 2003 (Ex. 1005).
`3 U.S. Patent No. 6,625,738 B1, issued September 23, 2003 (Ex. 1006).
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`Upon review of the parties’ arguments and supporting evidence, we
`determine that only the claim phrases identified by Patent Owner require
`express construction. 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 need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”)).
`to supply current . . . without regard to at least
`one associated condition in a USB Specification
`Claim 1 requires that the adapter is “configured to supply current on
`the VBUS line without regard to at least one associated condition specified
`in a USB specification.” Ex. 1001, 12:10–12. Petitioner does not provide an
`express construction for this claim phrase, but its obviousness arguments
`implicitly construe the phrase to require that current be provided on the
`VBUS line when any condition set forth in the USB specification has not
`been met, including the 5.25 voltage limit set forth in the USB specification.
`Pet. 26–31, 34. Patent Owner contends that because the phrase “without
`regard to at least one associated condition” in claim 1 refers back to the
`phrase “supply current on the VBUS line,” this claim phrase “means a
`condition associated with the supply of current on the VBUS line.” Prelim.
`Resp. 15.
`
`The ’550 patent provides the following disclosure regarding the
`transfer of energy over USB “without regard to” the USB specification and
`its imposed limits:
`Typically when a mobile device 10 receives power over
`the USB from a USB host, it is required to draw power in
`accordance with the USB specification. The USB specification
`specifies a process for transferring energy across the USB called
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`enumeration and limits the electrical current that can flow across
`the USB.
`The USB adapter 100 contributes to a system wherein a
`device 10 that follows the USB specification when coupled to a
`typical USB host via its USB port can be informed that the USB
`adapter 100 has been coupled to the device 10 and that the device
`10 can now draw power without regard to the USB specification
`and the USB specification imposed limits.
`Ex. 1001, 8:15–26.
`
`“Power” is equal to current multiplied by voltage. Ex. 1005, 10:31–
`32 (“P=I*V where P=Power, I=Current and V=Voltage.”); Ex. 2001 ¶¶ 54–
`55. Drawing “power without regard to the USB specification” and its
`“imposed limits,” therefore, arguably invokes the limitations regarding both
`current and voltage. Ex. 1001, 8:21–26. The term “associated” in claim 1,
`however, refers specifically to the supply of “current on the VBUS line.”
`Accordingly, on this record, and absent any persuasive reasoning from
`Petitioner or Mr. Geier on this point,4 we construe the “associated condition”
`limitation of claim 1 to be a condition associated with the supply of current
`of the VBUS line, and not a condition associated with, for example, voltage.
`to supply current . . . without regard to at
`least one USB Specification imposed limit
`Claim 10 requires that “said adapter [is] configured to supply current
`on the VBUS line without regard to at least one USB Specification imposed
`limit.” Ex. 1001, 12:34–36. Again, Petitioner does not provide an express
`construction for this claim phrase, but its obviousness arguments implicitly
`construe the phrase to require that current be provided on the VBUS line
`
`
`4 Under 37 C.F.R. § 42.104(b)(3), it is incumbent upon the Petitioner to
`explain in the Petition how each challenged claim is to be construed.
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`when any USB specification imposed limit has been exceeded, including a
`limit related to voltage. Pet. 26–31, 34.
`Patent Owner contends claim 10’s phrase “without regard to at least
`one USB Specification imposed limit” refers back to the supply of “current
`on the VBUS line,” “making clear that the clause is describing the supply of
`current on the VBUS line without regard to a current supply limit in the
`USB specification.” Prelim. Resp. 17–18. According to Patent Owner, “[i]f
`limits unrelated to current supply were intended to be encompassed” by the
`language of claim 10, “the language ‘without regard to’ would become
`superfluous and the claim would become ‘supply current on the VBUS line
`without regard to [while violating] at least one USB Specification imposed
`limit.” Id. at 18.
`
` In contrast to the language of claim 1, claim 10 does not expressly
`require a limit or condition “associated” with the supply of current on the
`VBUS line. In addition, claim 11 depends from claim 10 and further
`requires that the limit imposed by the USB specification is a “current limit.”
`Ex. 1001, 12:37–38. This raises a presumption that the “USB Specification
`imposed limit” of claim 10 includes additional limits beyond those related to
`current. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.
`Cir. 2004) (“As this court has frequently stated, the presence of a dependent
`claim that adds a particular limitation raises a presumption that the limitation
`in question is not found in the independent claim.”). Thus, the claims of
`the ’550 patent do not support narrowly construing claim 10 as being
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`directed only to a “current supply limit,” as asserted by Patent Owner.
`Prelim. Resp. 17–18.
`The written description of the ’550 patent also does not clearly and
`unambiguously define a “USB Specification imposed limit” as a “current
`supply limit.” The ’550 patent written description indicates, instead, that the
`USB specification imposes multiple “limits” with respect to how a USB host
`provides “power” (current x voltage) over a USB interface. Ex. 1001, 3:9–
`10 (“[T]he USB adapter is not limited by the power limits imposed by the
`USB specification.”), 8:25–26 (“[T]he device 10 can now draw power
`without regard to the USB specification and the USB specification imposed
`limits.”).
`Based on the foregoing, we preliminarily construe the term “to supply
`current . . . without regard to at least one USB Specification imposed limit”
`to include any limit set forth in a USB specification, including limits related
`to voltage.
`
`B. Alleged Obviousness over Rogers
`Petitioner contends the subject matter of claims 1–3, 9–12, and 18
`would have been obvious over the disclosure of Rogers. Pet. 22–36.
`
`1. Rogers
`Rogers discloses a Local Area Network (LAN) phone that, “unlike
`most other telephones, is capable of supporting a variety of accessories.”
`Ex. 1005, 10:56–57. Rogers provides this expanded accessory support by
`utilizing USB to both power and communicate with attached accessories. Id.
`at 10:59–11:19.
`Rogers notes that one difficulty with using a USB interface to power
`an accessory was that the USB interface is limited to 5 volts (or 5 VDC) and
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`0.5 amps of current. Id. at 10:67–11:3. “This means that the maximum
`power available is 2.5 Watts, with 0.5 Watt for each device,” which Rogers
`explains is “too little for many potential devices.” Id. at 11:4–8. As an
`example of the insufficient power provided over USB, Rogers notes that an
`accessory console might require 100 LEDs that draw 20 mA of current each,
`yet the power provided over the USB interface is sufficient to power only
`five of these LEDs. Id. at 11:8–13.
`To overcome the power limitations of existing USB systems, Rogers
`discloses “a unique dual voltage accessory power system” that allows the
`LAN telephone to alternatively supply power at 5 VDC or 48 VDC, thereby
`increasing available power “by a factor of 10.” Id. at 11:14–19. Figures
`7(a) and 7(b) depict the LAN telephone source power system and the
`accessory power system of Rogers, respectively (id. at 3:53–54):
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`
`Figure 7(a) shows a source power system that is used to provide power to an
`accessory and Figure 7(b) depicts an illustrative embodiment of the
`accessory internal power system. Id. at 11:20–25. As shown in Figure 7(a),
`source power is provided via accessory connector 104 of the source power
`system, which may be a USB “A” connector. Id. at 11:28–31. Pins 1 and 4
`of accessory connector 104 provide power and pins 2 and 3 represent the D-
`and D+ lines of the standard USB cable. Id. at 11:31–36, Fig. 7(a), 7(b).
`Accessory connector 105 (Figure 7(b)) is a standard USB “B” connector
`having connection points for pins 1, 2, 3, and 4 of connector 104. Id. at
`12:14–17, Fig. 7(b).
` “When an accessory is connected” in Rogers, “the accessory is
`queried by the base unit microprocessor” via the USB interface to determine
`whether the accessory uses 5 VDC or 48 VDC. Id. at 11:45–48. This query
`may be provided over data lines 101 (D-) and 102 (D+) of the USB interface
`and, if the response to the query is in the affirmative, the microprocessor
`switches the voltage to 48 VDC. Id. at 11:48–54.
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`2. Analysis—Independent Claims 1 and 10
`Petitioner contends the subject matter of independent claims 1 and 10
`would have been obvious in view of the disclosure of Rogers. Pet. 22–31,
`34. Specifically, Petitioner contends the LAN telephone base unit
`containing the power system shown in Figure 7(a) of Rogers is an “adapter,”
`pin 1 of the adapter is a USB VBUS line, and data pins 101 and 102 of the
`adapter constitute a USB communication path. Id. at 22–26. Petitioner
`further contends that the adapter is configured to supply current on the
`VBUS line without regard to an associated condition and/or limit specified
`in the USB specification, because Rogers’ base unit: (1) may exceed the
`5.25 V limit specified in the USB 2.0 specification; (2) may provide current
`at levels greater than the 500 mA current limit specified in the USB 2.0
`specification; and (3) may supply current without complying with the
`enumeration requirements specified in the USB 2.0 specification. Id. at 26–
`31.
`
`Patent Owner contends the subject matter of claims 1 and 10 would
`not have been obvious in view of Rogers because (a) the 5.25 V limit set
`forth in the USB 2.0 specification is not a condition associated with, or that
`limits, the supply of current; (b) there is no persuasive evidence
`demonstrating that the “adapter” of Rogers provides more than 500 mA of
`current; and (c) Petitioner has not demonstrated that Rogers fails to perform
`the enumeration procedure set forth in the USB 2.0 specification. Prelim.
`Resp. 19–36. We address these arguments below.
`
`a. 5.25 Volts
`Both parties agree that the USB 2.0 specification limits the voltage
`provided over USB to 5.25 VDC. Pet. 26; Prelim. Resp. 21. The parties
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`also agree that the base station of Rogers is configured to supply current on
`the VBUS line at 48 VDC, which exceeds the voltage limit specified in the
`USB 2.0 specification. Pet. 27; Prelim. Resp. 19. Petitioner has not
`demonstrated, however, that the voltage limits set forth in the USB 2.0
`specification represent a condition associated with the supply of current, as
`recited in claim 1. Thus, on this record, we are not persuaded that the use of
`48 VDC in Rogers satisfies the “associated condition” limitation of claim 1.
`In contrast to claim 1, and for the reasons discussed above, claim 10
`does not require that the recited “limit” be associated with the supply of
`current. Accordingly, Petitioner has explained sufficiently why Rogers’
`disclosure of using 48 VDC teaches or suggests supplying current “on the
`VBUS line without regard to at least one USB Specification imposed limit,”
`as recited in claim 10.
`
`b. 500 mA Current Limit
`Petitioner contends that Rogers is configured to supply current well in
`excess of the 500 mA limit set forth in the USB specification. Pet. 29.
`Although Petitioner directs our attention to no express disclosure in Rogers
`of the base station, or “adapter,” providing greater than 500 mA of current
`on the VBUS line, it contends 2.0 amps of current must be provided to the
`accessory console to power its 100 LEDs. Id. (“100 LEDs x 20 mA/LED =
`2A.”); Ex. 1009 ¶ 66.
`Petitioner’s inherency argument directly conflicts with Rogers’
`disclosure that the power necessary to operate its accessories is provided by
`increasing voltage from 5 VDC to 48 VDC. Ex. 1005, 11:16–19 (“The
`disclosed dual-voltage accessory power system allows the LAN telephone to
`alternatively supply power at 48 VDC, instead of 5 VDC, thus increasing the
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`power consumption by a factor of 10.”). Moreover, Patent Owner
`persuasively explains that the current required to power the accessory would
`be generated within the console during the process of down-converting from
`48 VDC to 3.3 VDC. Prelim. Resp. 26–27; Ex. 1005, 12:19–45 (discussing
`the use of a 48 VDC to 5 VDC converter and a 5 VDC to 3.3 VDC converter
`in the accessory power system shown in Figure 7(b)). Thus, on this record,
`we are not persuaded that Rogers expressly or inherently discloses an
`adapter configured to supply greater than 500 mA of current on the VBUS
`line.5 See Par Pharm. v. TWi Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir.
`2014) (a party must “meet a high standard in order to rely on inherency to
`establish the existence of a claim limitation in the prior art in an obviousness
`analysis—the limitation at issue necessarily must be present”).
`
`c. Enumeration
`Rogers discloses that the base unit and accessory perform the
`following procedure when an accessory is connected:
`When an accessory is connected, the accessory is queried by the
`base unit microprocessor 74, via the USB interface 55, to
`determine if the accessory uses 48 VDC. Such a query may, for
`example, be provided to the accessory over the data lines of the
`modified USB interface. A 48 VDC-capable accessory will
`respond to such a query in the affirmative. If the
`microprocessor 74 determines that the accessory uses 48 VDC,
`then the microprocessor 74 switches the voltage to 48 VDC.
`
`
`5 In its argument related to current supply in Rogers, Petitioner notes that
`devices may not consume more than 100 mA of current until they are
`configured. Pet. 28. To the extent Petitioner contends that Rogers draws
`more than 100 mA of current before configuration, it provides no persuasive
`evidence to support such a finding. See, e.g., id. at 28–29.
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`Ex. 1005, 11:45–54. Petitioner contends that, because Rogers does not
`expressly disclose performing the enumeration procedure set forth in the
`USB specification, and because the query and affirmative response
`procedure set forth above is not part of the standard enumeration process, it
`has “establishe[d] that the base unit 6 (i.e., said adapter) [of Rogers] is
`configured to supply current on the VCC/VDC line 100 (i.e., the VBUS line)
`without regard to the bus enumeration conditions specified in the USB 2.0
`specification.” Pet. 31; see also Ex. 1008, 243–244 (specifying the eight
`steps required for enumeration under the USB 2.0 specification).
`We agree that Rogers does not expressly disclose performing the
`enumeration process set forth in the USB 2.0 specification. Rogers does
`disclose, however, that its console is designed to communicate with both the
`base unit and additional “downstream” accessories, and both parties agree
`that under the USB specification a USB device must be configured (the last
`step in the enumeration process) before its functions may be accessed.
`Ex. 1005, 10:60–62 (“In order to facilitate the expansion selection, the LAN
`telephone uses the Universal Serial Bus (USB) to communicate with the
`accessories.”), 12:60–13:1 (disclosing that the accessory of Rogers
`communicates with both the base station and downstream accessories);
`Pet. 15 (Petitioner explaining that “a USB device must undergo”
`enumeration “before it can communicate data over the USB interface”);
`Prelim. Resp. 3–4; Ex. 1008, 244 (“A USB device must be configured
`before its function(s) may be used.”). Thus, we are not persuaded that the
`lack of express disclosure in Rogers of its phone and accessories performing
`the enumeration steps outlined in the USB 2.0 specification demonstrates
`that enumeration is not performed in the reference.
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`IPR2018-00111
`Patent 8,624,550 B2
`d. Conclusion—Independent Claims 1 and 10
`Petitioner has not explained sufficiently where Rogers discloses an
`adapter configured to supply current “on the VBUS line without regard to at
`least one associated condition specified in the USB specification.” Thus, it
`has not demonstrated a reasonable likelihood of showing that the subject
`matter of claim 1 would have been obvious over Rogers.
`For the reasons set forth above, Petitioner does explain sufficiently
`where Rogers discloses an “adapter” having a USB VBUS line and a USB
`communication path, as well as an “adapter” that is configured to supply
`current “on the VBUS line without regard to at least one USB Specification
`imposed limit.” Accordingly, Petitioner demonstrates a reasonable
`likelihood of showing that the subject matter of claim 10 would have been
`obvious over Rogers.
`
`3. Analysis—Dependent Claims 2, 3, 9, 11, 12, and 18
`Dependent claims 2, 3, and 9 depend from claim 1. Petitioner does
`not provide arguments or supporting evidence with respect to these claims
`that would remedy the defects noted above for claim 1. Accordingly,
`Petitioner has not demonstrated a reasonable likelihood of showing that the
`subject matter of claims 2, 3, and 9 would have been obvious over Rogers.
`Claims 11, 12, and 18 depend, directly or indirectly, from independent
`claim 10. Claim 11 requires that the adapter is configured to supply current
`on the VBUS line without regard to a current limit set forth in a USB
`specification, and claim 18 further specifies that the current limit of claim 11
`is 500 mA. Ex. 1001, 12:37–38, 12:54–55. Claim 12 requires that the
`adapter of claim 10 is configured to supply current on the VBUS line
`“without USB enumeration.” Id. at 12:39–40. For the reasons set forth
`
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`above, Petitioner has not demonstrated that Rogers teaches or suggests an
`adapter configured to exceed a current limit set forth in the USB
`specification or an adapter configured to provide current on the VBUS line
`without USB enumeration. Accordingly, Petitioner has not demonstrated a
`reasonable likelihood of showing that the subject matter of claims 11, 12,
`and 18 would have been obvious over Rogers.
`
`C. Alleged Obviousness of Claims 4–8 and 13-17 over Rogers and
`Shiga
`Petitioner contends the subject matter of dependent claims 4–8 and
`13–17 would have been obvious over the combined disclosures of Rogers
`and Shiga. Pet. 36–61.
`
`1. Shiga
`Shiga discloses a USB-connected keyboard that allows a host
`computer “to be started by a key input operation at a keyboard.” Ex. 1006,
`2:4–8, Abstract. To accomplish this task, Shiga provides a signal to a
`“wake-up means” in the computer when a power-on key is pressed. 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. Table 1 of Shiga, reproduced below, shows these standard
`signal line states:
`
`
`Id. at Table 1. 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.
`
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`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 “wake-
`up 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.
`
`2. Analysis
`Dependent claims 4 and 13 depend from claims 1 and 10,
`respectively, and require that “current is supplied in response to an abnormal
`data condition on said USB communication path.” Ex. 1001, 12:17–19,
`12:41–43. Dependent claims 7, 8, and 14–17 each depend, directly or
`indirectly, from claims 4 or 13. Id. at 12:25–29, 12:44–53.
`Petitioner concedes that Rogers does not disclose providing current in
`response to an abnormal data condition on the USB communication path, but
`contends one of ordinary skill in the art would have found it obvious to use
`Shiga’s “fourth mode,” or SE16 signal, in Rogers’ system to signal that the
`accessory is capable of handling 48 VDC. Pet. 41. Petitioner asserts one of
`
`6 SE1 is “a state in which both the D+ and D- lines are at a voltage above
`VOSE1 (min), which is 0.8 V.” Pet. 11 (citing Ex. 1009 ¶ 40). Both parties
`agree that the “fourth mode” signal of Shiga is an SE1 signal. Id.; Prelim.
`Resp. 54.
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`ordinary skill in the art would have sought to make this combination because
`Shiga and Rogers are in the same field of endeavor, Rogers leaves the
`implementation specifics for providing the affirmative response to one of
`ordinary skill in the art, and one of ordinary skill in the art would have
`understood that Shiga’s SE1 signals are suitable for use in Rogers’ system,
`as they are “easily distinguished from USB standard data signals” and would
`not interfere with standard USB signaling. Id. at 5–14, 42–43, 45. Upon
`review of Petitioner’s and Patent Owner’s arguments and supporting
`evidence, we determine that Petitioner has not sufficiently explained why
`one of ordinary skill in the art would have sought to utilize Shiga’s SE1
`signal in Rogers’ system with a reasonable expectation of success.
`The USB specification instructs that low- and full-speed USB drivers
`“must never ‘intentionally’ generate an SE1 on the bus.” Pet. 11 (citing Ex.
`1008, 123); Ex. 1009 ¶ 40. Despite this seemingly clear directive, Petitioner
`provides several prior art references in which an SE1 signal is provided over
`USB to signal information about the device or to signal that the host should
`take some action. Pet. 11–14 (citing Ex. 1010, 7:41–54, Table 1 (disclosing
`the use of an SE1 signal to signal a PS/2 adapter), Ex. 1011, 21, 22, 24, 25,
`41 (disclosing a Cypress Semiconductor enCoRe product that places D+ and
`D- lines in a high impedance state “[w]ith USB disabled”), Ex. 1012, Fig. 3
`(using a high state on USB D+ and D- for charging)). Petitioner contends
`one of ordinary skill in the art would have understood from these disclosures
`that Shiga’s SE1 signal could be used in Rogers’ system to signal that the
`device is capable of handling 48 VDC. Pet. 11–14, 43–44.
`In response, Patent Owner provides deposition testimony from the
`parties’ district court proceeding (Case No. 2:17-cv-00145-JRG) in which
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`Petitioner’s expert concedes that generating an SE1 condition “for more than
`two-1/2 milliseconds” “would put the port into a disco
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