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`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 IPR2018-00465
`Patent No. 8,624,550
`___________________
`
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC’s
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2018-00465
`Patent No. 8,624,550
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................ 9
`
`II.
`
`SUMMARY OF THE ’550 PATENT ........................................................ 10
`
`A. Need For Enumeration Limits Power Sources Suitable For
`Charging A USB Device .................................................................. 10
`
`B.
`
`Parts Of The ’550 Patent Solution.................................................... 11
`
`III. THE PRIOR ART REFERENCES DIFFER FROM THE ’550
`INVENTIONS ............................................................................................ 13
`
`A. USB 2.0 ............................................................................................ 13
`
`1.
`
`2.
`
`Enumeration ........................................................................... 14
`
`SE1 ......................................................................................... 14
`
`B.
`
`Theobald ........................................................................................... 17
`
`C. Matsumoto ........................................................................................ 19
`
`D.
`
`Shiga ................................................................................................. 20
`
`E.
`
`Dougherty ......................................................................................... 21
`
`IV. LEVEL OF ORDINARY SKILL ............................................................... 23
`
`V. GROUND 1: CLAIMS 1, 2, 9-11 AND 18 ARE NOT RENDERED
`OBVIOUS BY USB 2.0 AND THEOBALD ............................................. 23
`
`A.
`
`B.
`
`Petitioner Fails To Establish The Existence Of A “USB
`communication path” Contained Within An Adapter (All
`Claims) ............................................................................................. 23
`
`The Petition Fails To Establish That Either Theobald Or
`USB 2.0 Discloses “supply[ing] current without regard to”
`Any Limit Specified In A USB Specification. ................................. 27
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`C.
`
`Petitioner Fails To Present Competent Evidence That It
`Would Have Been Obvious To Combine Theobald With
`USB 2.0 ............................................................................................ 32
`
`1.
`
`2.
`
`Petitioner Fails To Explain Why A USB Connector Is
`A Suitable Connector Given That The Proposed
`Combination Cannot Perform Basic Functions Of
`Theobald’s J3 Connector ....................................................... 33
`
`The Petition Does Not Explain How The Proposed 4-
`pin USB Connector Could Transmit Identification
`Information While Remaining Backwards Compatible ........ 34
`
`VI. GROUND 2: CLAIMS 3 AND 12 ARE NOT RENDERED
`OBVIOUS BY USB 2.0, THEOBALD AND MATSUMOTO ................. 35
`
`VII. GROUND 3: CLAIMS 4-8 AND 13-17 ARE NOT RENDERED
`OBVIOUS BY USB 2.0, THEOBALD AND SHIGA .............................. 36
`
`A.
`
`B.
`
`C.
`
`Shiga Does Not Cure The Defects In Ground 1 (All Ground
`3 Claims) .......................................................................................... 36
`
`The Petition Does Not Attempt To Lay A Proper Foundation
`That The References Disclose Exceeding Current Draw
`Limits In Response To “Abnormal” Data Conditions (All
`Ground 3 Claims) ............................................................................. 36
`
`Petitioner Fails To Present Competent Evidence That It
`Would Have Been Obvious To Combine Theobald, USB 2.0,
`And Shiga ......................................................................................... 39
`
`1.
`
`2.
`
`Petitioner Fails To Address Why A POSITA Would
`Have Used Abnormal Data Conditions In Light Of
`Theobald’s Explicit Teaching Of Using Standard
`Communication Protocol ....................................................... 39
`
`Petitioner Fails To Address Why A POSITA Desiring
`The Improvement And Compatibility Offered By USB
`Specification Would Ignore Existing USB Algorithms
`For Identifying Accessories ................................................... 43
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`3.
`
`4.
`
`Petitioner Fails To Present Any Competent Evidence
`That A POSITA Would Have Had A Reasonable
`Expectation Of Success When Using SE1 As Proposed
`By Petitioner .......................................................................... 46
`
`Petitioner Fails To Address Why A POSITA Would
`Have Used D+ and D- Lines For Transmitting
`Identification Signals ............................................................. 49
`
`VIII. GROUND 4: CLAIMS 1-3, 9-12 AND 18 ARE NOT RENDERED
`OBVIOUS BY DOUGHERTY .................................................................. 54
`
`A.
`
`Petitioner Fails To Present Competent Evidence That
`Dougherty Discloses “An Adapter Comprising . . . A USB
`Communication Path” (All Claims) ................................................. 54
`
`IX. GROUND 5: CLAIMS 4-8 AND 13-17 ARE NOT RENDERED
`OBVIOUS BY DOUGHERTY AND SHIGA ........................................... 57
`
`A.
`
`B.
`
`The Proposed Combination Suffers From The Same Defect
`As The Analysis Presented In Ground 4 .......................................... 57
`
`The Petition Fails To Provide Any Competent Factual Basis
`For Its Assertion Of A Motivation To Combine Dougherty
`And Shiga ......................................................................................... 58
`
`1.
`
`2.
`
`Petitioner Fails To Present Competent Evidence That
`A POSITA Would Recognize SE1 As An Appropriate
`Signal When Normal USB Communication Is
`Involved ................................................................................. 59
`
`The Petition Does Not Present Any Competent
`Evidence As To Whether A POSITA Would Conclude
`That The Proposed Combination Had A Reasonable
`Expectation of Success .......................................................... 62
`
`(a) A POSITA Would Believe That Dougherty’s
`Laptop Would Not Be Able To Send SE1
`Signaling Under Normal USB Protocol ...................... 62
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`(b) A POSITA Would Conclude That The Petition’s
`Proposed Combinations Are Still Inoperative If
`The Laptop Is Programed To Respond To An
`SE1 Signal ................................................................... 64
`
`3.
`
`4.
`
`Petitioner Fails to Provide A Reasoned Explanation As
`To Why A POSITA Would Have Chosen SE1 Over
`Other Alternatives In The Dougherty System ....................... 67
`
`A POSITA Would Believe That Making The
`Suggested Modifications Would Disable The
`Dougherty Docking Station’s Primary Functionality ............ 69
`
`(a) Dougherty’s Docking Station Expands Ports
`And Requires Normal USB Communication
`With The Laptop .......................................................... 69
`
`(b) Dougherty’s Handshaking Process Is Necessary
`To Establish Communication ...................................... 71
`
`X.
`
`CONCLUSION ........................................................................................... 72
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`TABLE OF AUTHORITIES
`
`Case IPR2018-00465
`Patent No. 8,624,550
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`
` Page(s)
`
`Cases
`
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .................................................. 28, 31, 38
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .............................................................. 57
`
`CIAS, Inc. v. Alliance Gaming Corp.,
`504 F.3d 1356 (Fed. Cir. 2007) .............................................................. 23
`
`Cutsforth, Inc. v. MotivePower, Inc.,\
`636 Fed. Appx. 575 (Fed. Cir. 2016) ..................................................... 33
`
`Eaton Corp. v. Rockwell Int’l. Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) .............................................................. 23
`
`Icon Health & Fitness, Inc. v. Nautilus, Inc.,
`IPR2017-00495, Paper No. 9 (July 6, 2017) .......................................... 32
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .......................................................... 30, 72
`
`In re Nouvel,
`493 F. App’x 85 (Fed. Cir. 2012) ........................................................... 38
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .................................................. 47, 62, 65
`
`Insite Vision Inc. v. Sandoz, Inc.,
`783 F.3d 853 (Fed. Cir. 2015) ................................................................ 30
`
`Polaris Industries, Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .............................................................. 32
`
`Regulations
`
`37 C.F.R. §42.23(a) ............................................................................................. 8
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`37 C.F.R. §42.65 ............................................................................................... 41
`37 C.F.R. §42.65 ............................................................................................... 41
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`EXHIBIT LIST
`
`
`Ex. 2001 Declaration of Robert Baranowski in Support of Fundamental
`Innovation Systems International LLC’s Patent Owner
`Preliminary Response
`
`Ex. 2002 Robert Baranowski CV
`
`Ex. 2003 USB Complete, Jan Axelson (1999)
`
`Ex. 2004 USB 2.0 Engineering Change Notice USB Mini-B Connector
`
`Ex. 2005 Excerpt from deposition transcript of John Irving Garney,
`November 20, 2017 in Fundamental Innovation Systems
`International LLC v. Samsung Electronics Co., Ltd., Civil
`Action No. 2:17-cv-00145-JRG
`
`Ex. 2006 USB Complete, Jan Axelson, Second Edition (2001)
`
`Ex. 2007 U.S. Patent Application Pub. No. US20050268000A1 (Carlson)
`
`Ex. 2008
`
`Petition for inter partes review in IPR2018-00110
`
`Ex. 2009
`
`Institution Decision, Denying Institution of inter partes review
`in IPR2018-00110, Paper 12
`
`Ex. 2010
`
`Petition for inter partes review in IPR2018-00111
`
`Ex. 2011
`
`Institution Decision in IPR2018-00111, Paper 16
`
`Ex. 2012 Declaration of Mr. Steven Rogers (Ex. 2002) in IPR2018-00111
`
`Ex. 2013 Motorola Users and Programming Guides, Mike Larsen, Version
`3.0, January 14, 1997
`
`Ex. 2014 Motorola Micro TAC 5200 7200
`
`Ex. 2015 U.S. Patent No. 5214774 (Welsch)
`
`Ex. 2016 Corrected Declaration of Robert Baranowski in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Preliminary Response in IPR2018-00472
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioner did not submit a statement of material facts. Accordingly, no
`
`response is due pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
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`I.
`
`INTRODUCTION
`
`Petitioner asks the Board to invalidate U.S. Patent No. 8,624,550, entitled
`
`“Multifunctional Charger System and Method,” (the “’550 patent”) on five
`
`different grounds, based on two primary references—Theobald and Dougherty.
`
`The ’550 patent concerns a novel USB adapter. For the same reasons that the
`
`Board has stated in IPR2018-00110 and IPR2018-00111, this petition should be
`
`denied. First, all claims require “[a]n adapter comprising . . . a USB
`
`communication path.” The petition, however, points only to a path that is outside
`
`the identified adapter.1 The Board has found that such a mapping is insufficient to
`
`show a likelihood of success. Cf. Ex. 2009, 10. Second, Petitioner argues that a
`
`POSITA would have modified Theobald and Dougherty so that Theobald’s
`
`modified USB mobile phone and Dougherty’s laptop would each respond to an
`
`SE1 signal that is expressly forbidden by the USB specification. Like Petitioners
`
`in IPR2018-00111, Petitioner here fails to present any competent evidence that
`
`SE1 would not have interfered with normal USB signaling and that a POSITA
`
`would have had a reasonable expectation of success in the proposed modification.
`
`Ex. 2011, 19-22; Ex. 2010, 11-14.
`
`
`1 Petitioner likely took such a position to maintain non-infringement
`
`defenses in the district court action.
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`Because the Petition does not present a reasonable likelihood that Petitioner
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`will prevail as to any challenged claim, the Board should dismiss the Petition and
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`Patent No. 8,624,550
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`deny institution of inter partes review.
`
`II.
`
`SUMMARY OF THE ’550 PATENT
`
`The ’550 patent stems from pioneering research performed by the power
`
`supply and distribution group at Research in Motion Ltd. (“RIM,” now Blackberry
`
`Ltd.), as part of RIM’s effort to build the world’s first mobile device with a
`
`combined USB data and charging port. The sections below will first describe
`
`problems faced by the RIM researchers and then the elegant solutions they offered.
`
`A. Need For Enumeration Limits Power Sources Suitable For
`Charging A USB Device
`
`In the early 2000s, Blackberry launched a project to design a mobile device
`
`with a combined power and data interface. A combined charging and data
`
`interface would reduce the number of external connections and simplify printed
`
`circuit board designs for a smaller and thinner phone.
`
`The inventors noted, “[a]lthough the USB interface can be used as a power
`
`interface, the USB is typically not used for that purpose by mobile devices.” Ex.
`
`1001, 2:1-3. This was because the USB specification requires that “a USB device
`
`participate in a host-initiated process called enumeration in order to be compliant
`
`with the current USB specification in drawing power from the USB interface.” Id.,
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`2:3-15. But common power sources such as AC outlets and DC car sockets,
`
`having no required software or hardware, simply could not participate in such
`
`enumeration processes. Id. Moreover, under the USB specification, a device
`
`would go into a Suspended state and draw negligible amount of current after
`
`observing no bus activity for three milliseconds, such as when a USB device was
`
`connected to an AC outlet or a car socket. Id., 10:11-15; Ex. 1007-3, 182, 206; Ex.
`
`1007-4, 271.
`
`B.
`
`Parts Of The ’550 Patent Solution
`
`Faced with this challenge, the inventors designed a new “USB power
`
`adapter that [could] provide power to a USB device without necessarily requiring
`
`that the USB device participate in enumeration . . . .” and “a method that [could]
`
`allow a USB device to differentiate between the provided USB power adapter and
`
`traditional USB power sources such as hosts and hubs.” Ex. 1004-0006, 3:9-14.
`
`In certain embodiments, to achieve the above results, the inventors
`
`incorporated an identification subsystem into the adapter to output an identification
`
`signal. An “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.” Ex.
`
`1001, 8:29-33.
`
`The identification signal serves to inform a mobile device, for example, that
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`it is coupled to a USB adapter of the inventions, that the connected power source
`
`“is not a USB limited source,” and/or that the device “can now draw power without
`
`regard to the USB specification and the USB specification imposed limits.” Id.,
`
`8:21-29. One example of such disregard of the USB specification imposed limits
`
`is allowing the device to draw more than 100 mA of current (e.g., 500 mA) from a
`
`non-USB power source (such as an AC outlet or a DC car socket) without
`
`enumeration. E.g., id., 9:65-10:3.
`
`The patent also teaches that an identification signal may be observed “by
`
`detecting the presence of an abnormal data line condition at the USB port,” and
`
`that one preferred identification signal “results from the application of voltage
`
`signals greater than 2 volts to both the D+ and D- lines in [a] USB connector.” Id.,
`
`9:20-28. Certain dependent claims of the ’550 patent claim these specific
`
`examples. E.g., Ex. 1001, Claims 4-8, 13-17.
`
`Annotated Figure 2 below illustrates a USB communication path (colored
`
`green) in the adapter that allows for the identification subsystem (108) to pass
`
`identification signals, such as abnormal data conditions or signals, to the USB
`
`connector 102 on the adapter side.
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`III. THE PRIOR ART REFERENCES DIFFER FROM THE ’550
`INVENTIONS
`
`A. USB 2.0
`
`USB was designed to allow for plug-and-play and expandable bidirectional
`
`communication channels and ports (that is, multiple devices can communicate with
`
`a host through a single port). Ex. 1007-1, 43, Chapter 4. Up to 127 USB devices
`
`can be directly or indirectly connected to a USB host. Id., 41. A USB host and
`
`connected device negotiate power allocation so that sufficient power can be
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`directed to each connected device without overdrawing power from the host. Ex.
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`Patent No. 8,624,550
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`1007-3, 199-202, Ex. 1007-4, 271-273.
`
`1.
`
`Enumeration
`
`USB enumeration is a handshaking protocol allowing a host to identify,
`
`address and configure peripheral devices. Ex. 2001, ¶¶20-22; Ex. 2006, 9-13; Ex.
`
`1007-1, 48; 1007-3, 199-202; Ex. 1007-4, 271-273; Ex. 1007-5, 303, 316. A
`
`device may only respond to standard requests before completing enumeration. Ex.
`
`1007-1, 52; Ex. 2001, ¶18; Ex. 2006, 4-5. After enumeration and configuration,
`
`the device may send and receive operational data over the D+ and D- lines in
`
`accordance with the USB specification. Ex. 1007-4, 271-273; Ex. 2001, ¶31; Ex.
`
`2006, 12-13. USB enumeration involves exchange of normal USB data. Petitioner
`
`acknowledges that enumeration is the process specified by USB to configure a
`
`USB device when it is attached to a powered port. Ex. 2001, ¶21; Pet. 9.
`
`2.
`
`SE1
`
`Petitioner suggests that SE1 was well-known in the prior art for signaling
`
`without interfering with USB communications. Pet. 12, 46, 47, 65; Ex. 2001, ¶37.
`
`To the contrary, SE1 was not used when normal USB communication was in
`
`progress, precisely because SE1 could interfere with USB communications. Ex.
`
`2001, ¶¶40-57.
`
`For example, in District Court litigation regarding infringement of the ’550
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`patent, Samsung’s expert James Garney correctly acknowledged that an SE1
`
`condition interferes with USB signaling because a USB port enters a “disconnect
`
`state” upon observing SE1. Ex. 2005, 261:6-22 (“. . . no more data signaling
`
`would be delivered across that communication—across that connection between
`
`the hub and the attached device or hub that might be connected to it.”); Ex. 2001,
`
`¶¶52-54. The testimony of Samsung’s expert is highly relevant because Huawei
`
`has simply adapted various IPRs already filed by Samsung in the instant petition.
`
`See, e.g., IPR2018-00110; IPR2018-00111; IPR2018-00214; IPR2018-00215;
`
`IPR2018-00274; IPR2018-00276; IPR2018-00605; IPR2018-00606; IPR2018-
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`00607.
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`Samsung’s expert’s understanding is further confirmed by Petitioner’s prior
`
`art references, none of which discloses transmitting an SE1 signal on USB data
`
`lines that were transmitting or would continue to transmit standard USB
`
`communications. Ex. 2001, ¶¶44-51. For example, in Shiga, SE1 is sent as a
`
`wake-up signal to a wake-up means and not to the USB lines on the host computer.
`
`Ex. 1009, 3:1-9, 5:66-6:24, 7:1-30 (the signal lines of the USB keyboard that sends
`
`SE1 are “not connected” to the signal lines of the host when SE1 is sent). Ex.
`
`2001, ¶46. Likewise, Cypress expressly states that an SE1 signal is only sent when
`
`USB is “disabled.” Ex. 1014, 24; Ex. 2001, ¶48. Casebolt’s SE1 signal likewise
`
`“causes USB functions to be terminated.” Ex. 1013, 7:40-46; Ex. 2001, ¶¶48-49.
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`Kerai’s FIG 3 cited by the Petitioner is showing a serial port interface to the laptop,
`
`not a USB interface. Ex. 2001, ¶50. Even if the disclosures relied on by Petitioner
`
`were to be interpreted as involving USB data lines, Kerai teaches that both data
`
`lines would be in logic high (purported SE1 state) only when the data connection is
`
`“inactive.” Ex. 1015, 5:43-48; Ex. 2001, ¶50. Petitioner contends that Kerai uses
`
`SE1 to signal USB charging. Pet. 15. But Kerai merely monitors data lines to
`
`harvest power whenever a data line has a positive voltage. See Ex. 1015, 5:47-53;
`
`Ex. 2001, ¶ 50. In other words, Kerai’s battery receives power whenever either
`
`data line (line 25 or 26) is held high. Id. Kerai never suggests generating an SE1
`
`signal when USB connection is active. Ex. 1015, 5:43-48. In fact, Kerai warns
`
`that drawing power whenever the data line has a positive voltage could “hav[e] a
`
`detrimental effect on the data rate of the [serial] port.” Ex. 1015, 5:56-59.
`
`Zyskowski is no different. Like Kerai, Zyskowski monitors one or both D+
`
`or D- line to see when one of the data lines is pulled high, indicative of the full
`
`power state associated with data communication. Ex. 1012, ¶19; Ex. 2001, ¶47.
`
`This is because, as Petitioner acknowledges, “a USB device attached to a USB hub
`
`or host sets either the D+ or the D- line to a high logic voltage level . . . .” Pet. 10.
`
`Dr. Baranowski explains that a POSITA would therefore understand that
`
`Zyskowski’s statement of “monitoring the state [i.e., voltage] of one or both of the
`
`data paths D1 and D2” refers to detecting whether a pull-up event on one of the
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`data lines has occurred, and not to detecting an SE1 condition. Ex. 1012, ¶19; Ex.
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`2001, ¶ 47.
`
`Thus, in each example, SE1 is used in a context where normal USB function
`
`is not possible (Shiga and Kerai), disabled (Cypress), to be disabled (Casebolt),2 or
`
`not used at all (Kerai and Zyskowski). Moreover, Petitioner does not assert any of
`
`the above references disclose that USB power limit should be disregarded. Ex.
`
`1009, Ex. 1012-1015; Ex. 2001, ¶¶44-51. Hence, none of the literature cited by
`
`Petitioner suggests that SE1, or any other abnormal USB data condition on D+ and
`
`D- lines, is a proper signal to trigger current draw in excess of an applicable limit.
`
`B.
`
`Theobald
`
`U.S. Patent No. 5,859,522 (“Theobald”) is entitled “Accessory Identification
`
`Apparatus and Method.” Theobald is directed to “a low cost apparatus and method
`
`of identifying an accessory to a device that maintains backward compatibility with
`
`
`2 Unlike the prior art, the ’550 patent inventors developed specific
`
`techniques, including sending identification signals at a particular time, that ensure
`
`the identification signal correctly indicates that the USB adapter is not a USB hub
`
`or host. See, e.g., Ex. 1001, 9:60-10:6 (USB adapter “identified” before
`
`“enumeration process and charge negotiation process”). Petitioner identifies no
`
`such teaching in the prior art, nor does Petitioner even attempt to explain how or
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`why a POSITA would incorporate such techniques into the proposed combination
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`with Theobald or Dougherty.
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`Case IPR2018-00465
`Patent No. 8,624,550
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`existing accessories that use the accessory connector.” Ex. 1006, 1:36-39, 1:67-2:3,
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`7:14-19, 8:11-15. The embodiments disclosed in Theobald relate to the “eight pin
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`J3-type accessory connector used in MicroTAC™ cellular telephones
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`manufactured and sold by Motorola, Inc.” Id., 1:18-21, 3:5-10. Theobald states
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`that other “suitable” connectors could also practice its methods. Id., 3:5-10.
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`Nothing in Theobald suggests drawing current or power in excess of any
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`applicable limit or that Theobald’s current/power draw was in response to
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`“abnormal” data conditions. Ex. 2001, ¶58-84. To the contrary, Theobold
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`expressly instructed that all requirements of the relevant protocol should be
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`observed. Ex. 1006, 6:4-13 (Information “is communicated . . . according to the
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`three-wire bus protocol utilized in radiotelephone products manufactured and sold
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`by Motorola, Inc. or other suitable high speed data communication protocol[.]”);
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`Ex. 2001, ¶61, 73-74.
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`Case IPR2018-00465
`Patent No. 8,624,550
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`C. Matsumoto
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`U.S. Patent No. 6,904,488 (“Matsumoto”) is directed “to portable electronic
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`devices comprising a common serial bus connector compliant with a common
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`serial bus standard, such as a USB connector conforming to the USB (Universal
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`Serial Bus) standard, for connecting a plurality of peripheral devices.” Ex. 1008,
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`1:7-14. Matsumoto discloses that a computer or power adapter generates a voltage
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`on the power line when attached to a portable electronic device. The power
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`adapter generates a “low” voltage, and computer generates a “high” voltage
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`Case IPR2018-00465
`Patent No. 8,624,550
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`between 4.4 V – 5.25 V.3 Alternatively, Matsumoto teaches differentiating
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`between a computer and power adapter by observing the absence of normal USB
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`signals for a predetermined amount of time. Id., 2:64-3:9, 3:13-20. Petitioner does
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`not assert that Matsumoto discloses using the USB communication lines (D+ and
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`D-) to send an abnormal USB data signal. Nor does it assert that Matsumoto
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`discloses supplying current without regard to at least one associated condition in a
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`USB specification or at least one USB Specification imposed limit.
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`D.
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`Shiga
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`Shiga teaches a USB keyboard connected to a wake-up means that can wake
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`the host computer up from an “off state,” where the primary power supply of the
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`computer is turned off. Ex. 1009, 1:11-19, 2:18-30. The keyboard receives power
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`from a supplemental power supply inside the computer when the main power
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`supply is off. Id., 2:31-42. When certain buttons on the keyboard are pressed, the
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`keyboard sends an SE1 signal to the wake-up means, causing the main power
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`supply of the computer to turn on. Id., 3:1-9, 6:35-7:30.
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`In particular, at the time Shiga’s keyboard signals the SE1 state to the
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`computer, USB communication with the computer through the standard USB
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`3 The USB specification limits supply voltage to 5.25 V. Thus, Matsumoto
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`discloses using USB-compliant supply voltage.
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`Case IPR2018-00465
`Patent No. 8,624,550
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`protocol is impossible because the data lines between the host and the USB
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`keyboard “are not connected to each other.” Id., 6:4-12. Instead, the USB
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`keyboard’s data lines are connected to a pair of comparators in the wake-up means
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`3. Id., 6:65-7:8. The comparators compare the voltage on the D+ and D- lines to a
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`threshold voltage and output the determination to an AND circuit, which then
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`outputs a signal to turn on the main power supply. Id., 7:1-15. Only then are the
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`data lines between the host computer and USB keyboard reconnected. Id., 7:16-
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`30. Hence, at the time that USB keyboard transmits the SE1 signal, there is no risk
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`of interfering with the host’s normal USB communication, because the keyboard’s
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`data lines are disconnected from the host at the time. Id., 6:4-12, 6:65-7:15; Ex.
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`2001, ¶¶44-46, 51.
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`Thus, Shiga never suggests that SE1 should be used when a computer is
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`conducting normal USB communication. Indeed, the USB specification cautions
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`that “[l]ow-speed and full-speed USB drivers must never ‘intentionally’ generate
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`an SE1 on the bus.” Ex. 1007-2, 151.
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`E. Dougherty
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`Dougherty’s docking station is used to “expand the capabilities of a laptop
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`computer to include a full size keyboard, a full size monitor, more serial ports, and
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`other functionality typically associated only with desktop computing devices.” Ex.
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`1010, 1:61-67. One way to achieve this expansion is via “port replication across a
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`Case IPR2018-00465
`Patent No. 8,624,550
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`USB port.” Id., 2:24-25. Port expansion means “by plugging the laptop into [a]
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`docking station, more serial . . . ports are available for connection to printers,
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`scanners, full size display devices . . . pointing devices and the like.” Id., 2:16-20.
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`Hence, docking a laptop in a docking station via a USB connection generates
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`“plurality of communication ports” for access to printers, scanners, displays, mice
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`and other peripheral devices. Id., 2:25-28.
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`USB-based docking stations allegedly had the drawback of “requir[ing] the
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`user to separately apply power to the laptop” with a power adapter such as an
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`AC/DC power converter connected to the laptop. Id., 2:43-44. Dougherty’s
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`docking station allegedly overcame this shortcoming and presented “a USB based
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`docking station that has the capability of both operating the laptop computer and
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`charging the battery in the laptop computer while docked without the need to plug
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`in a separate power connection . . . .” Id., 2:45-50.
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`Dougherty also acknowledges that to support USB-based port expansion, the
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`laptop and docking station must be able to communicate with each other via USB
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`protocols in order to operate peripheral USB devices connected to the USB based
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`docking station. Id., 2:25-32 (“[a] user connects a laptop, via a USB connection,
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`to a port replication device which generates plurality of communication ports,”
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`and “port replication is accomplished across the USB connector”), 2:38-39 (“USB
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`expansion connection”); Ex. 2001, ¶85-90. For this reason, Dougherty’s “laptop
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`Case IPR2018-00465
`Patent No. 8,624,550
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`computer 100 of the preferred embodiment does not modify operation of the serial
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`communication conductors 126 of the USB protocol.” Ex. 1010, 4:67-5:3.
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`Petitioner states that Dougherty’s serial communication conductors 126 correspond
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`to “D+ and D- lines of a standard USB cable.” Pet. 50.
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`IV. LEVEL OF ORDINARY SKILL
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`For purpose of this response only, Fundamental applies Petitioner’s stated
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`skill level.
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`V. GROUND 1: CLAIMS 1, 2, 9-11 AND 18 ARE NOT RENDERED
`OBVIOUS BY USB 2.0 AND THEOBALD
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`A.
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`Petitioner Fails To Establish The Existence Of A “USB
`communication path” Contained Within An Adapter (All Claims)
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`All claims of the ’550 Patent require “[a]n adapter comprising . . . a USB
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`communication path.” The claim later recites “said adapter configured to supply
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`current . . . .” Hence, the preamble “[a]n adapter” is limiting in this instance.
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`Eaton Corp. v. Rockwell Int’l. Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
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`The limitation “[a]n adapter comprising . . . a USB communication path”
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`requires that the identified adapter include at least the identified USB
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`communication path and other explicitly recited components. CIAS, Inc. v.
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`Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“comprising”
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`means “including but not limited to”); see also, ’550 Fig. 2 (reproduced on page 13
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`of this POPR: a USB communication path exists within an adapter, e.g., between
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`Case IPR2018-00465
`Patent No. 8,624,550
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`the identification subsystem 108 and the USB connector 102). In contrast, the
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`USB communication path identified by Petitioner is not part of the identified
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`adapter;4 and the Petition should be denied on this ground alone.
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`Specifically, Petitioner identifies Theobald’s charger(s) as the claimed
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`adapter. Pet. 29. Petitioner points to “USB connectors and cables” between a USB
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`host and USB device as the claimed “USB communication path.” Pet. 29-30. By
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`“USB connectors and cables,” Petitioner apparently refers to USB cable assemblies
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`ref