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
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,239,111
`Case IPR No.: To Be Assigned
`
`DECLARATION OF DR. JOHN LEVY.
`
`

`

`Declaration of Dr. John
`Levy
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`I.
`QUALIFICATIONS ....................................................................................... 2
`II.
`SCOPE OF OPINION .................................................................................... 6
`III.
`IV. MATERIALS REVIEWED AND CONSIDERED ....................................... 7
`LEVEL OF ORDINARY SKILL IN THE ART ............................................ 7
`V.
`LEGAL PRINCIPLES OF VALIDITY ......................................................... 8
`VI.
`VII. OVERVIEW OF U.S. PATENT NO. 7,239,111 (“’111 patent”) (Ex.
`1001) ............................................................................................................. 12
`Prosecution History ............................................................................ 13
`Priority Date ....................................................................................... 15
`Claim Construction ............................................................................ 15
`1.
`Means-Plus-Function Terms (claim 18) .................................. 16
`VIII. OVERVIEW OF THE PRIOR ART REFERENCES .................................. 18
`Background and History of USB Technology ................................... 18
`USB 2.0 (Ex. 1007) ............................................................................ 20
`Use of SE1 State in Various Contexts ................................................ 26
`1.
`Shiga (Ex. 1009) ...................................................................... 26
`Zyskowski (Ex. 1012) .............................................................. 29
`2.
`Casebolt (Ex. 1013) ................................................................. 29
`3.
`Cypress Semiconductor ........................................................... 31
`4.
`Theobald (Ex. 1006) ........................................................................... 31
`Dougherty (Ex. 1010) ......................................................................... 35
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`– i –
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`

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`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`
`
`“charged battery scenario” ....................................................... 37
`1.
`“dead battery scenario” ............................................................ 38
`2.
`IX. SPECIFIC GROUNDS OF CHALLENGE .................................................. 39
`A. Ground 1: Theobald, USB 2.0, and Shiga, in combination,
`renders obvious claims 1-3, 6-8, and 16-18 ....................................... 39
`1.
`Application of the Combination of Theobald, USB 2.0,
`and Shiga to Claims 1-3, 6-8, and 16-18 ................................. 41
`The Theobald/USB 2.0/Shiga Combination ............................ 54
`2.
`Ground 2: Dougherty and Shiga, in combination, renders
`obvious claims 1-3, 6-8, and 16-18 .................................................... 60
`1.
`Application of the Combination of Dougherty and Shiga
`to Claims 1-3, 6-8, and 16-18 .................................................. 61
`The Dougherty/Shiga Combination ......................................... 74
`2.
`CONCLUSION ............................................................................................. 79
`
`B.
`
`X.
`
`
`– ii –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`
`I.
`
`INTRODUCTION
`
`1. My name is John Levy, and I have been retained by counsel for
`
`Huawei Device Co., Ltd. (“Huawei” or “Petitioner”) as an expert witness in
`
`support of Huawei’s petition for Inter Partes Review (“IPR”) and cancellation of
`
`claims 1-3, 6-8, and 16-18 of U.S. Patent No. 7,239,111 (“’111 patent”) (Ex.
`
`1001), which I understand has been assigned to Fundamental Innovation Systems
`
`International LLC (“FISI” or “Patent Owner”).
`
`2. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials. The
`
`materials that I studied for this declaration include all exhibits of the petition.
`
`3.
`
`I may rely upon these materials, my knowledge and experience,
`
`and/or additional materials to rebut arguments raised by the patent owner. Further,
`
`I may also consider additional documents and information in forming any
`
`necessary opinions, including documents that may not yet have been provided to
`
`me.
`
`4. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
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`– 1 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
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`supplement, and/or amend my opinions stated herein based on new information
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`and on my continuing analysis of the materials already provided.
`
`5.
`
`I am being compensated $575 per hour for my time spent working on
`
`issues in this case. I have no financial interest in, or affiliation with, the Petitioner,
`
`real parties-in-interest, or the Patent Owner. My compensation is not dependent
`
`upon the outcome of, or my testimony in, the present IPR or any litigation
`
`proceedings.
`
`II. QUALIFICATIONS
`
`6.
`
`I am an expert in the field of computer systems and software,
`
`including computer bus design. I have studied, taught, practiced, and researched
`
`this field for over 40 years. I summarize in this section my educational
`
`background, work experience, and other relevant qualifications. A true and
`
`accurate copy of my curriculum vitae is attached as Exhibit 1016 to this petition.
`
`7.
`
`I have a Bachelor of Engineering Physics degree from Cornell
`
`University, a Master of Science degree in Electrical Engineering from California
`
`Institute of Technology (“Caltech”), and a Ph.D. in Computer Science from
`
`Stanford University.
`
`8.
`
`From 1965 to 1966 at Caltech, my field of study was information
`
`processing systems. My coursework included systems programming such as the
`
`– 2 –
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`

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`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`
`construction of compilers and assemblers. From 1966 to 1972, during my graduate
`
`study at Stanford, my field of study was computer architecture and operating
`
`systems. My coursework included computer systems design, programming, and
`
`operating systems. While I was a graduate student at Stanford, I worked in the
`
`Stanford Linear Accelerator Center, where I was a programmer and participated in
`
`the design and implementation of a real-time operating system for use in data
`
`acquisition, storage, and display. My Ph.D. thesis research related to computer
`
`systems organization and the programming of multi-processor computers. I
`
`developed and measured the performance of several parallel programs on a
`
`simulated 16-processor system with a shared memory bus. I also studied file
`
`systems, disk and tape storage subsystems, and input/output.
`
`9.
`
`I have been an employee and a consultant for over thirty years in the
`
`computer systems, software, and storage industry. After earning my doctorate in
`
`Computer Science from Stanford University, I worked as an engineer for a number
`
`of leading companies in the computer industry, including Digital Equipment
`
`Corporation, Tandem Computer, Inc., Apple Computer, Inc., and Quantum
`
`Corporation.
`
`10. During my years working for Digital Equipment Corporation, I
`
`worked on many different design-and-development projects. From 1972 to 1974, I
`
`supervised the development of an input/output channel for high-speed mass storage
`
`– 3 –
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`

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`Declaration of Dr. John
`Levy
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`
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`(disk, drum, and tape) and its implementation on seven different peripheral units
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`and three different computer systems. From 1974 to 1975, I was a project engineer
`
`leading the development of a new computer system. From 1975 to 1976, I
`
`supervised an operating system development group; I routinely reviewed design
`
`changes and bug reports and fixes for two operating systems. While working for
`
`Digital Equipment Corporation, I wrote a long-term strategic plan for input/output
`
`buses, controllers, and operating systems, including the conversion of most I/O
`
`buses to serial implementations. I am the author of a chapter on computer bus
`
`design in the book Computer Engineering, published by Digital Press in 1978.
`
`11. From 1977 to 1979, I was employed at Tandem Computer, Inc., where
`
`I worked on the design of future multiprocessor systems. I also worked to address
`
`problems related to distributed (networked) systems, including rollback and
`
`recovery of distributed databases.
`
`12. From 1979 to 1982, I was employed by Apple Computer, Inc., where I
`
`worked on the design of a new computer system called “Lisa,” which was a
`
`precursor to the Macintosh. I also supervised hardware and software engineers in
`
`the development of a new serial-bus local-area network technology.
`
`13.
`
`In 1980-81, I taught a course at San Francisco State University titled
`
`“Input/Output Architecture” that dealt with the design of I/O channels (buses),
`
`controllers, storage devices, and the associated software.
`
`– 4 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`14. From 1982 to 1992, I consulted for a variety of client companies,
`
`
`
`including Apple Computer, Quantum Corporation, and Ricoh Co., Ltd. on project
`
`management and product development. Consulting for Quantum included working
`
`as a temporary supervisor of a firmware development team for a new hard disk
`
`drive. During this time, I co-authored a paper—cited in my attached CV—on the
`
`design of a file system for write-once optical disk drives.
`
`15. From 1993 to 1998, I was employed by Quantum Corporation, a
`
`manufacturer of hard-disk drives, where I formed and managed a new group called
`
`Systems Engineering. While in this role, my responsibilities included managing
`
`software and systems engineers who developed input/output drivers for hard disks
`
`in personal computers, as well as disk performance analysis and simulation
`
`software. I also led the definition and implementation efforts for speed
`
`improvements to the ATA disk interface (bus) standard (called Ultra-ATA/33 and
`
`Ultra-ATA/66), which subsequently led to improvements in the SCSI interface
`
`(bus) standard. I was also involved in the design of file systems for hard disks, data
`
`compression schemes for disk data, and Ethernet-connected disk drives. In
`
`addition, I served as Quantum’s representative to the Audio/Video Working Group
`
`of the 1394 (FireWire) Trade Association, a Consumer Electronics industry
`
`standards group, and I participated in Quantum’s efforts to design disks that could
`
`– 5 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
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`record and play video and audio streams without requiring an intervening computer
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`system.
`
`16.
`
`I regularly teach courses such as “Computers – the Inside Story” and
`
`“The Digital Revolution in the Home” at the Fromm Institute for Lifelong
`
`Learning at the University of San Francisco.
`
`17.
`
`I am a named inventor on seven United States patents, including
`
`several related to input/output buses and storage subsystems. I have been disclosed
`
`as an expert in over 60 cases and have testified at trial and in depositions. I also
`
`have served as a technical advisor to two United States District Court Judges.
`
`III. SCOPE OF OPINION
`
`18.
`
`I have been asked to provide my opinions regarding whether:
`
`• Claims 1-3, 6-8, 16-18 of the ’111 Patent would have been obvious to one of
`
`ordinary skill in the art at the time of the alleged invention in view of U.S.
`
`Patent No. 5,859,522 (“Theobald”) (Ex. 1006) in view of Universal Serial Bus
`
`Specification, Revision 2.0, April 27, 2000 (“USB 2.0”) (Ex. 1007), in further
`
`view of U.S. Patent No. 6,625,738 (“Shiga”) (Ex. 1009) (Ground I);
`
`• Claims 1-3, 6-8, 16-18 of the ’111 Patent would have been obvious over U.S.
`
`Patent No. 7,360,004 (“Dougherty”) (Ex. 1010), in view of Shiga (Ground II);
`
`– 6 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`19. This declaration, including the exhibits hereto, sets forth my opinion
`
`
`
`on this topic.
`
`IV. MATERIALS REVIEWED AND CONSIDERED
`
`20. The materials I considered and relied upon in preparing my
`
`declaration and forming my opinion include all exhibits to the Petition, including
`
`the ’111 patent, the ’111 file history, and all of the relevant prior art. This includes
`
`Exhibits 1001-1004, 1006-1015, 1017-1024 to the Petition.
`
`21.
`
`I also have relied on my academic and professional experience in
`
`reaching the opinions expressed in this declaration.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`22.
`
`In rendering the opinions set forth in this declaration, I was asked to
`
`consider the patent claims and the prior art through the eyes of a person of ordinary
`
`skill in the art (“POSITA”). The “art” is the field of technology to which a patent
`
`is related. I understand that the purpose of using the viewpoint of a POSITA is for
`
`objectivity.
`
`23.
`
`I considered factors such as the educational level and years of
`
`experience of those working in the pertinent art; the types of problems encountered
`
`in the art; the teachings of the prior art; patents and publications of other persons or
`
`companies; and the sophistication of the technology. I understand that a POSITA is
`
`– 7 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
`
`not a specific real individual, but rather a hypothetical individual having the
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`qualities reflected by the factors discussed above.
`
`24. Taking these factors into consideration, it is my opinion that a
`
`POSITA as of the time of the ’111 patent would have had either (i) a bachelor’s
`
`degree in electrical engineering, computer science, or a related field, plus 2-4 years
`
`of experience in design of systems with Universal Serial Bus (“USB”) or
`
`equivalent buses, or (ii) a master’s degree in electrical engineering, computer
`
`science, or a related field, plus 1-2 years of experience in design of systems with
`
`USB or equivalent buses at the time of the ’111 patent’s priority date. Individuals
`
`with additional education or additional industrial experience could still be of
`
`ordinary skill in the art if that additional aspect compensates for a deficit in one of
`
`the other aspects of the requirements stated above. I have been a POSITA since at
`
`least the ’111 patent’s claim priority date.
`
`VI. LEGAL PRINCIPLES OF VALIDITY
`
`25. Several legal standards have been explained to me that I should
`
`consider as part of my validity analysis.
`
`26.
`
`I understand that Petitioner bears the burden of proving grounds of
`
`invalidity by a preponderance of the evidence. I understand that a “preponderance”
`
`means “more likely than not.” I understand that general and conclusory assertions,
`
`– 8 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`
`without underlying factual evidence, may not support a conclusion that something
`
`is “more likely than not.”
`
`27. Rather, the preponderance of the evidence standard requires that a
`
`reasonable finder of fact be convinced that the existence of a specific material fact
`
`is more probable than the non-existence of that fact. The preponderance of the
`
`evidence standard does not support speculation regarding specific facts, and is
`
`instead focused on whether the evidence more likely than not demonstrates the
`
`existence or non-existence of specific material facts. For Huawei’s Petition, I
`
`understand that Huawei has argued that the claims at issue are obvious in view of
`
`certain prior art references.
`
`28.
`
`I have been informed that a reference may qualify as prior art as to the
`
`patents-in-suit if it was known or used by others in this country, or patented or
`
`described in a printed publication in this or a foreign country, before the invention
`
`by the patent holder.
`
`29.
`
`I have also been informed that a reference may qualify as prior art to
`
`the patents-in-suit if the invention was patented or described in a printed
`
`publication in this or a foreign country or in public use or on sale in this country,
`
`more than one year before the effective filing date.
`
`– 9 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`30. For a printed publication to qualify as prior art, I understand that the
`
`
`
`Petitioner must demonstrate that the publication was disseminated or otherwise
`
`sufficiently accessible to the public.
`
`31.
`
`It is my understanding that there are two ways in which prior art may
`
`render a patent claim unpatentable. First, the prior art can be shown to “anticipate”
`
`the claim. Second, the prior art can be shown to have made the claim “obvious” to
`
`a POSITA.
`
`32.
`
`It is my understanding that a patent claim is unpatentable as being
`
`obvious in view of prior art if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious to a POSITA to which said subject matter pertains at the time the
`
`alleged invention was made. I further understand that an obviousness analysis
`
`takes into consideration factual inquiries such as the level of ordinary skill in the
`
`art, the scope and content of the prior art, and the differences between the prior art
`
`and the patent claim.
`
`33.
`
`I understand that the U.S. Supreme Court has recognized several
`
`rationales for combining references and for modifying a reference as part of an
`
`obviousness analysis. These rationales include combining prior art elements
`
`according to known methods to yield predictable results, simple substitution of a
`
`known element for another to obtain predictable results, a predictable use of prior
`
`– 10 –
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`

`

`Declaration of Dr. John
`Levy
`
`
`
`
`art elements in accordance with their established functions, applying a known
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`technique to improve a known device (or process) and yield predictable results,
`
`and choosing from a finite number of known predictable solutions with a
`
`reasonable expectation of success. It is further my understanding that an
`
`obviousness analysis takes into consideration whether the prior art provides a
`
`teaching, suggestion, or motivation to combine teachings of multiple prior art
`
`references to arrive at the patent claim. I also understand that it may be appropriate
`
`to consider whether there is evidence of a “teaching, suggestion, or motivation” to
`
`combine the prior art teachings in the prior art, the nature of the problem or the
`
`knowledge of a person having ordinary skill in the art. I further understand that
`
`techniques available in one field of endeavor, design incentives, and other market
`
`forces can prompt a POSITA to make variations in the same field or other fields.
`
`34.
`
`I have also been informed that the claimed invention must be
`
`considered as a whole in analyzing obviousness or nonobviousness. In determining
`
`the differences between the prior art and the claims, the question under the
`
`obviousness inquiry is not whether the differences themselves would have been
`
`obvious, but whether the claimed invention as a whole would have been obvious.
`
`35.
`
`I further understand that certain objective indicia can be important
`
`evidence regarding whether a patent is obvious or nonobvious, including the
`
`existence of a long-felt but unsolved need, unexpected results, commercial success,
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`– 11 –
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`

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`Declaration of Dr. John
`Levy
`
`
`
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`copying, and industry acceptance or praise. Evidence of such objective indicia
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`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`must be considered when present.
`
`VII. OVERVIEW OF U.S. PATENT NO. 7,239,111 (“’111 patent”) (Ex.
`1001)
`36. The ’111 patent (Ex. 1001) generally relates to “[a]n adapter for
`
`providing a source of power to a mobile device through an industry standard port.”
`
`’111 patent (Ex. 1001), 2:3-4. The ’111 patent states that this can be achieved by
`
`the transmission of an identification signal from the adapter to the mobile device.
`
`’111 patent (Ex.1001), 6:23-42, 9:3-8. Specifically, the ’111 patent discloses that
`
`by transmitting the identification signal, such as an identification signal in which
`
`the “voltages on both the D+ and D- lines of the USB connector are greater than 2
`
`Volts (step 220), then mobile device 10 determines that the device connected to the
`
`USB connector 54 is not a typical USB host or hub and that a USB adapter 100 has
`
`been detected.” ’111 patent (Ex. 1001), 9:35-38. In this way, the ’111 patent
`
`discloses that the mobile device can charge the battery or otherwise use the power
`
`from the USB connector, while bypassing the USB handshaking process, i.e.,
`
`enumeration,. ’111 patent (Ex. 1001), 9:39-42. The ’111 patent claims that an
`
`adapter configured in such a manner is allegedly a new and non-obvious
`
`improvement over prior art.
`
`37. The ’111 patent has 18 claims. Claim 1 is provided below.
`
`– 12 –
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`

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`
`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`1. A Universal Serial Bus (“USB”) adapter for providing power
`a plug unit configured to receive energy from a power socket;
`a power converter coupled to the plug unit, the power converter
`being configured to regulate the received energy from the power
`socket to generate a power output;
`to generate an
`an
`identification subsystem configured
`identification signal, wherein
`the
`identification signal
`is
`configured to indicate to the mobile device that the power socket
`is not a USB host or hub; and
`a USB connector coupled to the power converter and the
`identification subsystem, the USB connector being configured to
`couple the power output and the identification signal to the
`mobile device.
`
`
`Prosecution History
`38. The ’111 patent issued from U.S. Patent Application No. 11/175,885,
`
`which was filed on July 6, 2005. ’111 file history (Ex. 1002), 96. The applicant’s
`
`patent attorney filed a 2002 petition and affidavit relating to filing by other than all
`
`the inventors of the original application under 37 C.F.R. § 1.47. ’111 file history
`
`(Ex. 1002), 131-34. In particular, inventor Dan G. Radut had refused to sign the
`
`Declaration and Power of Attorney for the application. Id.
`
`39. On October 20, 2005, the examiner rejected claims 1, 2, 4 and 6-18
`
`under 35 U.S.C. § 102(b) as being anticipated by U.S. patent no. 6,130,518
`
`– 13 –
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`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
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`
`(“Gabehart”), and rejected claims 3 and 5 as being obvious over Gabehart under 35
`
`U.S.C. § 103(a). ’111 file history (Ex. 1002), 85-89.
`
`40.
`
`In the response filed on January 20, 2006, the applicants traversed the
`
`rejections, without making any amendments to the claims. The applicants argued
`
`that Gabehart does not disclose transmitting an identification signal that is
`
`configured to indicate that the power source is not a USB host or hub. Id., 81-84.
`
`41.
`
`In the non-final rejection dated April 4, 2004, the Examiner rejected
`
`claims 1, 2, 4 and 6-18 under 35 U.S.C. § 102(a) as being anticipated by Veselic
`
`(U.S. Patent Application 2004/0251878), and rejected claims 3 and 5 as being
`
`obvious over Veselic under 35 U.S.C. § 103(a). ’111 file history (Ex. 1002), 74-
`
`77.
`
`42.
`
`In the response dated June 15, 2006, the applicants submitted a
`
`response in which they noted that the application claims priority to two provisional
`
`applications, the latest of which is dated October 23, 2001. They argued that
`
`because Veselic has an earliest possible priority date of June 11, 2003, Veselic is
`
`not prior art. ’111 file history (Ex. 1002), 54-55.
`
`43.
`
`In the non-final rejection dated August 24, 2006, the examiner
`
`provisionally rejected claims 1-18 on the ground of nonstatutory obviousness-type
`
`double patenting as being unpatentable over the claims of co-pending Application
`
`No. 10/087,629 (now US 6,936,936). ’111 file history (Ex. 1002), 44-47.
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`– 14 –
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`Declaration of Dr. John
`Levy
`
`
`
`
`Applicants subsequently filed a terminal disclaimer on November 22, 2006. Id.,
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`42. The terminal disclaimer was approved on February 20, 2007. Notices of
`
`Allowances and Allowability followed on March 8, 2007. ’111 file history (Ex.
`
`1002), 26-29. No reasons for allowance were indicated.
`
`
`Priority Date
`44. The ’111 patent claims priority through a series of continuations to
`
`two provisional applications: (1) the ’021 provisional (Ex. 1003), filed March 1,
`
`2001; and (2) the ’486 provisional (Ex. 1004), filed October 23, 2001. Thus, I
`
`understand that the earliest potential priority date is March 1, 2001.
`
` Claim Construction
`45.
`I understand that the terms of the ’111 Patent are to be given their
`
`broadest reasonable interpretation as understood by a POSITA at the time of the
`
`invention in view of the specification.
`
`46. Claims 1 and 17 both recite an “identification signal . . . configured to
`
`indicate to the mobile device that the power socket is not a USB host or hub.”
`
`USB power adapters, like other USB devices, could be capable of transmitting
`
`signals regarding their own USB characteristics. I have been asked to interpret
`
`“power socket” as used in this element in claims 1 and 17 to refer to the USB
`
`adapter itself, i.e., the USB adapter that generates the identification signal.
`
`– 15 –
`
`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`47. Similarly, I have been asked to apply the interpretation of
`
`
`
`“identification signal . . . configured to indicate to the mobile device that the power
`
`socket is not a USB host or hub” (recited in claims 1 and 17 of the ’111 patent) to
`
`mean “identification signal . . . configured to indicate to the mobile device that the
`
`USB adapter is not a USB host or hub.”
`
`48.
`
`I also have been asked to apply the interpretation of “USB controller”
`
`in claim 7 as “an apparatus responsible for controlling communications across
`
`USB data lines or power delivery across USB power lines.”
`
`1. Means-Plus-Function Terms (claim 18)
`49.
`I understand that claim terms may be expressed as a means or step for
`
`performing a specified function and such claim shall be construed to cover the
`
`corresponding structure, material, or acts described in the specification and
`
`equivalents thereof (“means-plus-function” terms).
`
`50.
`
`I understand that understanding a means-plus-function term is a two-
`
`step process.
`
`51. First, an identification of the claimed function. Second, a
`
`determination of what structure, if any, disclosed in the specification corresponds
`
`to the claimed function.
`
`52.
`
`I have also been asked to apply the interpretation of “means for
`
`receiving energy from a power socket” (recited in claim 18 of the ’111 patent), as
`
`– 16 –
`
`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`
`having a function of “receiving energy from a power socket” and a corresponding
`
`structure of “[a] plug unit and/or plug adapter compatible with a North American
`
`power socket, a UK power socket, a European power socket, or a car power socket;
`
`and the equivalents thereof.”
`
`53.
`
`I have also been asked to apply the interpretation of “means for
`
`regulating the received energy from the power socket to generate a power output”
`
`(recited in claim 18 of the ’111 patent), as having a function of “regulating the
`
`received energy from the power socket to generate a power output” and a
`
`corresponding structure of “power converter 104/304 including at least one of a
`
`switching converter, a transformer, a DC source, a voltage regulator, a linear
`
`regulator, or rectifier; and the equivalents thereof.”
`
`54.
`
`I have also been asked to apply the interpretation of “means for
`
`generating an identification signal that indicates to the mobile device that the
`
`power socket is not a USB hub or host” (recited in claim 18 of the ’111 patent), as
`
`having a function of “generating an identification signal that indicates to the
`
`mobile device that the power socket is not a USB hub or host.” I have been asked
`
`to interpret “the power socket” in this element of claim 18 as meaning “the USB
`
`adapter,” as explained above in connection with claims 1 and 17. I have been
`
`asked to apply the interpretation that the corresponding structure is “an
`
`identification subsystem such as one that includes a hardwired connection or a
`
`– 17 –
`
`

`

`Declaration of Dr. John
`Levy
`
`
`
`
`USB controller, or one that can electrically connect or disconnect power or data
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`lines from the USB connector; and the equivalents thereof.”
`
`55.
`
`I have also been asked to apply the interpretation of “means for
`
`coupling the power output and identification signal to the mobile device” (recited
`
`in claim 18 of the ’111 patent), as having a function of “coupling the power output
`
`and identification signal to the mobile device” and a corresponding structure of “a
`
`USB connector; and the equivalents thereof.”
`
`VIII. OVERVIEW OF THE PRIOR ART REFERENCES
`
`56. As I show below, all of the elements of the challenged claims were
`
`already well-known in the prior art before the priority date of the ’111 patent.
`
`Therefore I conclude that there is nothing novel or non-obvious about the alleged
`
`invention of the ’111 patent’s claims.
`
` Background and History of USB Technology
`57. Universal Serial Bus (“USB”) is an industry standard interface bus.
`
`As stated, for example, in the Introduction section of the USB 2.0 Specification,
`
`“This document defines an industry-standard USB. The specification
`
`describes the bus attributes, the protocol definition, types of transactions, bus
`
`management, and the programming interface required to design and build
`
`systems and peripherals that are compliant with this standard.
`
`– 18 –
`
`

`

`Declaration of Dr. John
`Levy
`
`
`
`Petition for Inter Partes Review of U.S.
`Patent No. 7,239,111
`
`The goal is to enable such devices from different vendors to interoperate in
`
`
`
`an open architecture.” USB 2.0 (Ex. 1007), 1.
`
`58. As an initial matter, as of March 1, 2001, a POSITA would have been
`
`familiar with USB Implementers Forum, Inc. (“USB-IF”), which consists of
`
`representatives of industry leading companies that have been and continue to be
`
`responsible for the development, adoption, and advancement of USB technology
`
`since 1995. Similarly, a POSITA would have also had access to and been familiar
`
`with the published USB Specification, which has been publicly available online at
`
`the USB website (see, e.g., Ex. 1022), in its various revisions, including Revision
`
`2.0 (“USB 2.0”) and Revision 1.1 (“USB 1.1”).
`
`59. USB 1.1 was first released on September 23, 1998, and was widely
`
`adopted by industry leaders and consumers. USB 2.0 was subsequently released
`
`on April 27, 2000, and has been publicly available since then to POSITAs in the
`
`USB technology field (at the USB website, and at many other websites, of
`
`universities, companies, and industry analysts and participants), and provided
`
`faster speeds (40 times faster than USB 1.1) and additional functionality, among
`
`other improvements. Moreover, the USB specifications define an industry-standard
`
`bus, including the bus attributes, the protocol, types of transactions, bus
`
`management, and the programming interface required to design and build systems
`
`and peripherals that are comp