Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 4, 2018
`
`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 IPR2018-00485
`Patent 7,834,586 B2
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 4, 2018
`
`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 IPR2018-00485
`Patent 7,834,586 B2
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`IPR2018-00485
`Patent 7,834,586 B2
`
`I.
`
`INTRODUCTION
`
`Huawei Device Co., Ltd. (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.”) requesting inter partes review of claims 1–3 and 8–13 of U.S. Patent
`
`No. 7,834,586 B2 (Ex. 1001, “the ’586 patent”). Fundamental Innovation
`
`Systems International LLC (“Patent Owner”) filed a Preliminary Response
`
`to the Petition (Paper 7, “Prelim. Resp.”).
`
`On June 8, 2018, Patent Owner disclaimed claims 3, 7, 10, and 13 of
`
`the ’586 patent. Ex. 2016, 3.
`
`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 not demonstrated a
`
`reasonable likelihood that it would prevail with respect to at least one claim
`
`challenged in the Petition. Accordingly, we do not institute 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, as well as 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. 4; Paper 4, 1. Patent Owner notes
`
`that the ’586 patent is also the subject of IPR2018-00493. Paper 4, 3.
`
`2
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`
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`IPR2018-00485
`Patent 7,834,586 B2
`
`B. The ’586 Patent
`
`The ’586 patent discloses “a USB adapter for providing a source of
`
`power to a mobile device through a USB port.” Ex. 1001, 2:22–24.
`
`The ’586 patent explains that, although it was understood in the art that a
`
`USB interface could be used as a power interface, it was typically not used
`
`for that purpose by mobile devices. Id. at 1:56–58. 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 1:58–2:3.
`
`To permit the recharging of mobile devices using a broader range of
`
`power sources, the ’586 patent provides a USB adapter that is capable of
`
`providing power to a mobile device without first participating in
`
`enumeration. Id. at 8:9–14. Figure 2 of the ’586 patent, reproduced below,
`
`is a schematic diagram of the disclosed USB adapter coupled to an
`
`exemplary mobile device (id. at 3:23–25, 6:48–50):
`
`
`
`3
`
`
`
`IPR2018-00485
`Patent 7,834,586 B2
`
`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 6:50–53, 6:59–62. The ’586
`
`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 8:15–17, 8:62–67. This identification
`
`signal “could be the communication of a single voltage on one or more of
`
`the USB data lines, different voltages on the two data lines, a series of pulses
`
`or voltage level changes, or other types of electrical signals.” Id. at 8:15–21.
`
`“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 9:13–15. The ’586 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 9:52–57.
`
`C. Illustrative Claims
`
`Petitioner challenges claims 1–3 and 8–13 of the ’586 patent.
`
`Claims 1, 8, and 11 are independent. Claims 1 and 8 are illustrative of the
`
`challenged claims and are reproduced below:
`
`1. A mobile device, the mobile device configurable for use in a
`wireless telecommunications network, comprising:
`
`a Universal Serial Bus (“USB”) interface configured to allow
`reception of a USB cable;
`
`4
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`
`
`IPR2018-00485
`Patent 7,834,586 B2
`
`a charging subsystem, the charging subsystem operably connected to
`the USB interface V-bus power line;
`
`the charging subsystem operably connectable to a battery, and
`configured to charge a battery if a battery is operably connected;
`
`the charging system further configured to use power from the V-bus
`power line for the charging of a battery; and
`
`where the mobile device is configured to detect an identification
`signal at a D+ and a D− data line of the USB interface, the
`identification signal being different than USB enumeration.
`
`Ex. 1001, 11:50–64.
`
`8. A method of charging a battery in a mobile device, the mobile
`device configurable for use in a wireless telecommunications network,
`comprising:
`
`providing a Universal Serial Bus (“USB”) interface configured to
`allow reception of a USB cable, and, receiving power on a V-bus
`power line at the USB interface;
`
`providing an operable connection between the power received at the
`USB interface on the V-bus power line and a charging subsystem;
`
`having a battery in operable connection to the charging subsystem;
`
`providing power to the battery using the charger subsystem; and,
`
`detecting an identification signal at a D+ and a D− data line of the
`USB interface, the identification signal being different than USB
`enumeration.
`
`Id. at 12:31–46.
`
`5
`
`
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`IPR2018-00485
`Patent 7,834,586 B2
`
`D. The Asserted Grounds of Unpatentability
`
`Petitioner contends claims 1–3 and 8–13 of the ’586 patent are
`
`unpatentable based on the following grounds (Pet. 6):1
`
`References
`
`Basis Claims Challenged
`
`Theobald2, USB 2.03, and Shiga4
`
`§ 103 1–3 and 8–13
`
`Dougherty5 and Shiga
`
`§ 103 1, 2, 8, 9, 11, and 12
`
`Dougherty, Shiga, and TIA/EIA-6446 § 103 3, 10, and 13
`
`As noted above, Patent Owner has disclaimed claims 3, 7, 10, and 13
`
`of the ’586 patent. Ex. 2016, 3. Thus, we do not address these claims in the
`
`recited grounds, or address Petitioner’s ground based on Dougherty, Shiga,
`
`and TIA/EIA-644 (Ex. 1025), which is directed solely to disclaimed
`
`claims 3, 10, and 13. Pet. 6.
`
`A. Claim Construction
`
`II. ANALYSIS
`
`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).
`
`
`1 Petitioner also relies on a declaration from Dr. John Levy (Ex. 1005).
`2 US 5,859,522, issued Jan. 12, 1999 (Ex. 1006).
`3 Universal Serial Bus Specification Revision 2.0, April 27, 2000.
`4 US 6,625,738 B1, issued Sept. 23, 2003 (Ex. 1009).
`5 US 7,360,004 B2, issued Apr. 15, 2008 (Ex. 1010).
`6 TIA/EIA Standard, Electrical Characteristics of Low Voltage Differential
`Signaling (LVDS) Interface Circuits, March 1996 (Ex. 1025).
`
`6
`
`
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`IPR2018-00485
`Patent 7,834,586 B2
`
`Petitioner contends the preambles of the independent claims are not
`
`limiting and provides a proposed construction for the term “USB
`
`enumeration.” Pet. 27–29. Patent Owner contends the preambles of the
`
`claims are limiting, but does not contest Petitioner’s proposed construction
`
`of “USB enumeration,” or contend that any additional claim terms of
`
`the ’586 patent require express construction. Prelim. Resp. 9–11.
`
`Upon review of the parties’ arguments and supporting evidence, we
`
`determine that no claim terms of the ’586 patent require express construction
`
`for purposes of this Decision. 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.”)).
`
`B. Claims 1, 2, 8, 9, 11, and 12 over Theobald and USB 2.0
`
`Petitioner contends the subject matter of claims 1, 2, 8, 9, 11, and 127
`
`would have been obvious over the combined disclosures of Theobald and
`
`USB 2.0. Pet. 30–50.
`
`1. Theobald
`
`Theobald discloses “an apparatus and method used to identify an
`
`accessory to an electronic device.” Ex. 1006, 1:7–9. Theobald explains that
`
`it is commercially advantageous for electronic devices to be compatible with
`
`a large number of accessories, which serve to increase the functionality of
`
`the electronic device. Id. at 1:13–16. Theobald further explains that when
`
`
`7 As noted above, we do not address the challenged claims that were
`subsequently disclaimed by Patent Owner. Ex. 2016, 3.
`
`7
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`
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`IPR2018-00485
`Patent 7,834,586 B2
`
`one of these accessories is connected to an electronic device via an
`
`accessory connector it must be able to identify itself to the electronic device.
`
`Id. at 1:15–17, 1:30–33.
`
`Identification of an accessory is typically accomplished using a logic
`
`circuit or microcontroller within the accessory that is capable of driving high
`
`speed data communications. Id. at 1:30–33. “[S]uch logic circuits or
`
`microcontrollers,” however, “are expensive and oftentimes double the cost
`
`of the accessory.” Id. at 1:34–35. Thus, Theobald indicates a need for “a
`
`low cost apparatus and method of identifying an accessory to a device that
`
`maintains backward compatibility with existing accessories that use the
`
`accessory connector.” Id. at 1:36–39.
`
`Figure 1 of Theobald is reproduced below and is a partial block and
`
`partial schematic diagram of the accessory identification system (id. at 1:42–
`
`45):
`
`Figure 1 illustrates accessory identification system 100 of Theobald, which
`
`includes electronic device 102, battery 103, and accessory 104. Id. at 1:42–
`
`
`
`8
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`
`
`IPR2018-00485
`Patent 7,834,586 B2
`
`45, 2:5–6. Connector 122 of electronic device 102 and connector 173 of the
`
`accessory have eight pins and serve to “physically and electrically” connect
`
`electronic device 102 to accessory 104. Id. at 2:47–48, 4:41–42, Fig. 1.
`
`Identification element 174 is employed to identify accessory 104 to
`
`electronic device 102, and “is selected to have a different electrical value for
`
`each different type of accessory.” Id. at 4:55–62. For example,
`
`identification element 174 for a mid-rate charger accessory may have a
`
`120 kΩ resistor, whereas the same element for a fast-rate charger may have
`
`a 36 kΩ resistor. Id. at 4:62–67. When an accessory is attached to
`
`electronic device 102, the external supply voltage of the accessory drives
`
`identification element 174 and identification network 150 to generate a
`
`voltage level on audio in line 132 of electronic device 102. Id. at 5:57–62.
`
`Controller 108 then identifies the accessory by comparing the voltage level
`
`on audio in line 132 to voltage level ranges stored in an accessory lookup
`
`table. Id. at 6:14–20.
`
`In the charger embodiments of Theobald, depending on whether a
`
`mid-rate or fast-rate charger is identified using the accessory lookup table,
`
`either 340 mA of current (mid-rate charger) or 850 mA of current (fast-rate
`
`charger) are provided to electronic device 102. Id. at 4:29–33.
`
`Theobald explains that, although connector 122 is depicted as a
`
`standardized eight pin J3-type accessory connector, “any other suitable
`
`multiple pin accessory connector having an external power supply pin and at
`
`least one information pin” may be used. Id. at 3:5–10. Theobald further
`
`explains that, although accessory circuitry 170 may be included in certain
`
`accessory embodiments, in the illustrated embodiment accessory 104 is a
`
`9
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`IPR2018-00485
`Patent 7,834,586 B2
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`mid-rate or fast-rate charger that does not include accessory circuitry 170
`
`“and, thus, is low cost.” Id. at 4:10–17.
`
`2. USB 2.0
`
`The USB 2.0 specification8 describes an architecture and method for
`
`connecting a USB host to one or more USB devices through USB
`
`connectors and cables. Ex. 1007, 15–18, 148. In general, the USB cable has
`
`four wires: VBUS, GND, D+, and D-. Id. at 17–18, 85–89. The VBUS and
`
`GND lines provide power and the D+ and D- lines carry communication
`
`signals. Id.
`
`The USB 2.0 standard limits the voltage and current that may be used
`
`over the USB connectors and cables. Id. at 178. In particular, the USB 2.0
`
`standard limits the current that may be provided to a single device to
`
`500 mA and the voltage to 5.25 volts. Id. at 171 (noting that a device can
`
`draw up to five unit loads, or 500 mA, which is “an absolute maximum, not
`
`an average over time”), 178 (setting a 500 mA maximum for supply current
`
`and a 5.25 V maximum for supply voltage).
`
`3. Shiga
`
`Shiga discloses a USB-connected keyboard that allows a host
`
`computer “to be started by a key input operation” at the keyboard. Ex. 1009,
`
`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
`
`
`8 We alternately refer to the USB 2.0 Specification as the “USB 2.0
`standard” or “USB 2.0.”
`
`10
`
`
`
`IPR2018-00485
`Patent 7,834,586 B2
`
`Shiga explains that, “according to the USB standards, there are three
`
`signal line state modes.” Id. at 5:46–47. 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 5:55–58.
`
`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 the 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
`
`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.
`
`4. Analysis
`
`Petitioner contends one of ordinary skill in the art would have sought
`
`to implement USB 2.0 connectors—which have an external VBUS power
`
`supply pin and D+ and D- information pins—in Theobald, because the USB
`
`standard was being widely adopted in the consumer electronics industry and
`
`Theobald expressly teaches that the mobile device’s connector “may be any
`
`11
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`IPR2018-00485
`Patent 7,834,586 B2
`
`other suitable multiple pin accessory connector having an external power
`
`supply pin and at least one information pin.” Pet. 44.
`
`In implementing USB 2.0 connectors in Theobald, Petitioner contends
`
`one of ordinary skill in the art would have sought to maintain Theobald’s
`
`850 mA charging current, as fast charging capability “is a desirable feature.”
`
`Id. at 45. Petitioner contends “the 500 mA current or power limitation of
`
`USB 2.0 would not have been a deterrent” to using Theobald’s 850 mA
`
`charging current over a USB 2.0 connector, because “SE1 signaling over the
`
`USB connector had already been done in the prior art (Shiga, Zyskowski,
`
`Casebolt, and Cypress) and was well known, as was the problem of the
`
`current draw limitation associated with USB 2.0 (e.g., Rogers and Amoni).”
`
`Id.
`
`Patent Owner asserts the Petition should be denied because, among
`
`other things, Petitioner fails to present competent evidence demonstrating
`
`that one of ordinary skill in the art would have sought to combine Theobald,
`
`USB 2.0, and Shiga in the manner proposed in the Petition. Prelim. Resp.
`
`31–33.
`
`In the proposed combination of Theobald, USB 2.0, and Shiga, the
`
`fast-rate charger would exceed the 500 mA current limit set forth in the
`
`USB 2.0 specification. Ex. 1007, 171, 178. As noted above, Petitioner
`
`contends this violation of the USB 2.0 standard “would not have been a
`
`deterrent” to using 850 mA over a USB connector,” because SE1 signaling
`
`over a USB connector is disclosed in “Shiga, Zyskowski, Casebolt, and
`
`Cypress,” and the “problem of the current draw limitation associated with
`
`USB 2.0” was known in the art, as evidenced by Rogers and Amoni.
`
`Pet. 45.
`
`12
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`IPR2018-00485
`Patent 7,834,586 B2
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`Shiga, Zyskowski, Casebolt, and Cypress are directed to the use of an
`
`SE1 signal, which is prohibited under the USB 2.0 standard. Id. at 12–17;
`
`Ex. 1007, 123 (“Low-Speed and full-speed USB drivers must never
`
`‘intentionally’ generate an SE1 on the bus.”). Petitioner does not adequately
`
`explain, however, why a violation of one USB restriction or limit, such as
`
`providing an SE1 signal over a USB connector, would teach or suggest to
`
`one of ordinary skill in the art that any other restriction or limit specified in
`
`the USB 2.0 specification could or should be violated.
`
`Rogers discloses increasing voltage, and not current, and indicates a
`
`desire to keep current as low as possible for a particular power level.
`
`Ex. 1019, 10:29–33 (“The voltage is high so that the current required is as
`
`low as possible, for a given power level.”), 11:15–18 (disclosing a “dual-
`
`voltage accessory power system” that may “supply power at 48 VDC,
`
`instead of 5 VDC”), 11:51–55 (drawing 48 VDC from station input power
`
`86, as shown in Figure 6 of Rogers). Amoni discloses increasing both
`
`voltage and current, but does so using an “auxiliary (or non-standard)” USB
`
`cable having additional conductors to carry the additional power to the
`
`device. Ex. 1018, 2:36–39, 3:66–4:4, Fig. 8, Abstract. Thus, Rogers avoids
`
`violating the 500 mA current limit set forth in USB 2.0 and Amoni relies on
`
`a modified USB connector to provide increased power.
`
`Petitioner does not explain adequately why the disclosures of Rogers
`
`and Amoni, either alone or in combination with those of Shiga, Zyskowski,
`
`Casebolt, and Cypress, would teach or suggests providing greater than
`
`500 mA of current over a standard USB 2.0 connector. Nor does Petitioner
`
`assert that one of ordinary skill in the art would have sought to use Amoni’s
`
`non-standard cables and connectors in Theobald. Thus, on this record,
`
`13
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`IPR2018-00485
`Patent 7,834,586 B2
`
`Petitioner has not demonstrated sufficiently that one of ordinary skill in the
`
`art would have sought to provide 850 mA of current over a USB 2.0
`
`connector in Theobald’s mobile device, in violation of the USB 2.0 standard.
`
`In view of the foregoing, Petitioner has not demonstrated a reasonable
`
`likelihood that claims 1, 2, 8, 9, 11, and 12 of the ’586 patent would have
`
`been obvious over the combined disclosures of Theobald, USB 2.0, and
`
`Shiga.
`
`C. Claims 1, 2, 8, 9, 11, and 12 over Dougherty and Shiga
`
`Petitioner contends the subject matter of claims 1, 2, 8, 9, 11, and 12
`
`would have been obvious over the combined disclosures of Dougherty and
`
`Shiga. Pet. 50–64.
`
`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. 1010,
`
`1:21–26. Figure 1 of Dougherty, reproduced below with Petitioner’s color
`
`annotations, is a schematic of a preferred embodiment of the disclosed
`
`system (Pet. 23):
`
`
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`14
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`IPR2018-00485
`Patent 7,834,586 B2
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`As shown in Figure 1, the system of Dougherty includes laptop
`
`computer 100 (beige) and docking station 200 (blue), which are connected
`
`via serial communication conductors 1269, power rail 138, USB connector
`
`136 (of laptop computer 100), and USB connector 236 (of docking station
`
`200) (all in green). Ex. 1010, 3:44–5:7.
`
`Figure 2 of Dougherty, reproduced below, 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. 52.
`
`
`
`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. 1010, 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.
`
`
`9 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. 1010, 4:51, 5:2–3, 5:51, 9:1.
`
`15
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`IPR2018-00485
`Patent 7,834,586 B2
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`
`
`Dougherty explains that, “[u]nder normal USB protocol, coupling of
`
`USB devices requires a series of USB handshaking protocols to identify both
`
`the host or master device, which would be the laptop computer 100, and any
`
`downstream device, which in this exemplary case is the docking station
`
`200.” Id. at 5:39–43. In Dougherty, this handshaking protocol reveals to
`
`software running in laptop computer 100 that docking station 200 is capable
`
`of providing power across power rails 138. Id. at 5:43–48. Operating
`
`system software in laptop computer 100 then loads a driver specifically used
`
`with docking station 200 to turn “off the laptop computer’s ability to provide
`
`five volts to the power rails 138.” Id. at 5:53–58.
`
`
`
`Once the 5 volt power supply of the laptop is turned off, “docking
`
`station dock logic 234 must establish that the laptop computer to which it is
`
`docked is capable of receiving power.” Id. at 6:9–18. This is accomplished
`
`over power rails 138, 144, and 244. Id. at 6:16–18. Once it is established
`
`that the laptop computer can receive power from the docking station, the
`
`voltage on positive power rails 244 and 144 may then be ramped up to 18
`
`volts and the current increased to 2.5 amps. Id. at 6:19–7:19, 7:47–51.
`
`2. The Parties’ Arguments
`
`As noted above, to provide power from the docking station to the
`
`laptop computer, Dougherty requires a four-step process that includes: (1) a
`
`handshaking protocol between the laptop and the docking station;
`
`(2) loading a driver on the laptop that shuts off the laptop computer’s power
`
`supply; (3) signaling between the laptop computer and the docking station
`
`over the power rails that the laptop can receive power from the docking
`
`station; and (4) providing power from the docking station to the laptop
`
`computer. Pet. 60. Petitioner contends one of ordinary skill in the art would
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`IPR2018-00485
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`have sought to replace this allegedly “elaborate four-step” docking
`
`procedure with a simpler and faster alternative that utilizes Shiga’s SE1
`
`signals. Id.
`
`In its proposed combination of Dougherty and Shiga, Petitioner
`
`replaces Dougherty’s handshaking protocols, the loading of the device driver
`
`by the laptop computer, and the signaling over the power rails, with an SE1
`
`signal provided over the D+ and D- lines of the USB connector. Id. at 60–
`
`61. According to Petitioner, in this configuration Shiga’s SE1 signal would
`
`“(i) notify laptop 100 that the docking station 200 can power the laptop 100
`
`across USB; and (ii) command the laptop to turn off its ability to power
`
`devices across USB.” Id. (citing Ex. 1005 ¶¶ 179–180). Then, “in response
`
`to receiving the fourth mode signal, the CPU 102” of laptop computer 100
`
`would respond by transmitting a fourth mode signal to docking station 200
`
`to notify it that docked laptop computer 100 can receive USB power. Id. at
`
`62. In response to this fourth mode signal, docking station 200 would
`
`supply power to laptop computer 100 over the USB connector at 18 V and
`
`up to 2.5 A. Id.
`
`Petitioner contends one of ordinary skill in the art would have sought
`
`to make this proposed combination of Dougherty and Shiga, as well as the
`
`proposed modifications to Dougherty’s system, because “Dougherty
`
`expressly indicates the desirability of reducing complexity and latency,” and
`
`substituting Shiga’s fourth mode signals for steps 1–3 of Dougherty
`
`identified above would achieve these goals in a predictable fashion. Id. at
`
`62. Petitioner further contends that the proposed modifications would have
`
`involved “trivial changes to Dougherty’s system,” that Shiga’s fourth mode
`
`signal would have been a logical choice for signaling as it is “easily
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`distinguished from standard USB signals” and would not interfere with
`
`standard USB signaling, and that implementation of “non-USB standard
`
`signals in the Dougherty system” would constitute “the use of a known
`
`technique to improve a similar device in the same way.” Id. at 62–63.
`
`In the alternative, Petitioner asserts that one of ordinary skill in the art
`
`could have implemented “a less sophisticated docking station which
`
`provides only fast-charging capability.” Id. at 61. In this embodiment,
`
`Petitioner contends a single SE1 signal from the docking station to the
`
`laptop computer could replace steps 1–3 of Dougherty identified above.
`
`Id. at 62.
`
`In response, Patent Owner contends, among other things, that
`
`“Petitioner provides no explanation for why a [person of ordinary skill in the
`
`art] would eliminate Dougherty’s ‘handshaking protocol’ when doing so
`
`would eliminate Dougherty’s core functionality as a docking station with
`
`USB port replication.” Prelim. Resp. 50; see id. at 57–59.
`
`3. Analysis
`
`Dougherty discloses “a USB based docking station” that generates a
`
`plurality of communication ports for use with “printers, scanners, full size
`
`display devices, serial or parallel pointing devices and the like.” Ex. 1010,
`
`2:12–20, 2:24–28, 2:45–51; see also id. at 1:43–67 (discussing the limited
`
`number of communications ports on laptop computers, and noting this issue
`
`is addressed through the use of “some form of docking station”). Patent
`
`Owner presents persuasive evidence that Dougherty’s USB handshaking
`
`protocols are required before the laptop computer can communicate with the
`
`docking station and access the functionality of the peripheral devices. Ex.
`
`2001 ¶ 101 (citing Ex. 1010, 5:39–48); Ex. 1010, 5:39–43 (noting in
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`Patent 7,834,586 B2
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`Dougherty that “[u]nder normal USB protocol, coupling of USB devices
`
`requires a series of USB handshaking protocols”); Ex. 1007, 243 (“Before a
`
`USB device’s function may be used, the device must be configured.”);
`
`Ex. 2010 ¶ 48; Ex. 2006, 41 (noting that application communications under
`
`USB protocol occur “[a]fter the host has exchanged enumeration
`
`information with the device and a device driver has been assigned and
`
`loaded”); Ex. 2003, 74 (“Enumeration is the initial exchange of information
`
`that enables the host’s device driver to communicate with the device.”).
`
`As noted by Patent Owner, Petitioner does not persuasively explain
`
`how the docking station and laptop computer of Dougherty could
`
`communicate if the required USB handshaking protocols are replaced with
`
`an SE1 signal. Prelim. Resp. 50; Ex. 2001 ¶ 101 (“Without enumeration,
`
`Dougherty’s docking station could not fulfill its primary purpose of
`
`expanding the laptop’s functionality.”). Thus, we do not find persuasive
`
`Petitioner’s argument that one of ordinary skill in the art would have been
`
`motivated to make the proposed modification based on the disclosures of
`
`Dougherty and Shiga. Likewise, we do not find persuasive Petitioner’s
`
`argument that the proposed “trivial” changes to Dougherty’s system would
`
`have constituted the use of a known technique to improve a similar device in
`
`the same way. Pet. 62–63.
`
`Moreover, to the extent Petitioner contends the docking station of
`
`Dougherty would both provide an SE1 signal and then later perform
`
`enumeration to allow communication between the laptop computer and the
`
`docking station, it does not persuasively explain how this configuration
`
`would reduce complexity or latency in Dougherty’s system. Thus, on this
`
`record, we are not persuaded that one of ordinary skill in the art would have
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`IPR2018-00485
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`sought to combine the disclosures of Dougherty and Shiga in the manner
`
`proposed in the Petition.
`
`With respect to Petitioner’s alternative embodiment, we are directed
`
`to no disclosure in Dougherty or Shiga of a docking station that is designed
`
`to provide only power to a laptop. Nor does Petitioner persuasively explain
`
`why one of ordinary skill in the art, seeking only to fast-charge a laptop
`
`computer, would use such a docking station, as opposed to a single power
`
`plug. Thus, we do not find persuasive Petitioner’s arguments with respect to
`
`the possible alternate embodiment of Dougherty.
`
`In view of the foregoing, Petitioner has not demonstrated sufficiently
`
`that one of ordinary skill in the art would have sought to combine the
`
`disclosures of Dougherty and Shiga to arrive at the subject matter of
`
`challenged claims 1, 2, 8, 9, 11, and 12 with a reasonable expectation of
`
`success. Accordingly, Petitioner has not demonstrated a reasonable
`
`likelihood that the subject matter of challenged claims 1, 2, 8, 9, 11, and 12
`
`would have been obvious over the combined disclosures of Dougherty and
`
`Shiga.
`
`III. CONCLUSION
`
`For the forgoing reasons, Petitioner has not demonstrated a reasonable
`
`likelihood that at least one challenged claim of the ’586 patent would have
`
`been obvious over the prior art of record. Accordingly, we do not institute
`
`inter partes review.
`
`It is hereby,
`
`IV. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied
`
`and no inter partes review is instituted.
`
`
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`IPR2018-00485
`Patent 7,834,586 B2
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`PETITIONER:
`
`David Garr
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`dgarr@cov.com
`
`
`BACK-UP COUNSEL:
`
`Anupam Sharma
`COVINGTON & BURLING LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`asharma@cov.com
`
`
`PATENT OWNER:
`
`Hong Annita Zhong
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`hzhong@irell.com
`
`
`BACK-UP COUNSEL:
`
`Michael Fleming
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`mfleming@irell.com
`
`
`
`
`
`
`21
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