IN THE 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 No. To Be Assigned
`Patent No. 7,239,111
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,239,111
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
` DC: 6622049-1
`
`

`

`LIST OF EXHIBITS
`
`
`Exhibit Description
`Ex. 1001 U.S. Patent No. 7,239,111
`Ex. 1002 File History for U.S. Patent No. 7,239,111
`Ex. 1003 U.S. Provisional Application 60/273,021
`Ex. 1004 U.S. Provisional Application 60/330,486
`Ex. 1005 Declaration of Dr. John Levy in Support of the
`Petition for Inter Partes Review of U.S. Patent
`7,239,111
`Ex. 1006 U.S. Patent 5,859,522
`Ex. 1007 Universal Serial Bus Specification, Revision 2.0,
`April 27, 2000
`Ex. 1008 Petitioner’s P.R. 3-3 and 3-4 Disclosures, served
`by Petitioner on Aug. 31, 2017 in connection
`with Fundamental Innovation Systems Int’l LLC
`v. LG Electronics, Inc., 2:16-cv-01425-JRG-RSP
`(E.D. Tex.)
`Ex. 1009 U.S. Patent 6,625,738
`Ex. 1010 U.S. Patent 7,360,004
`Ex. 1011 Universal Serial Bus Specification, Revision 1.1,
`September 23, 1998
`Ex. 1012 U.S. Patent Application Publication
`2003/0135766
`Ex. 1013 U.S. Patent 6,625,790
`Ex. 1014 Cypress CY7C63722/23 CY7C63742/43
`enCoRe™ USB Combination Low-Speed USB
`& PS/2 Peripheral Controller (Cypress enCoRe
`or Cypress Datasheet), by Cypress
`Semiconductor Corporation, published May 25,
`2000
`Ex. 1015 P.R. 4-3 Joint Claim Construction and
`Prehearing Statement, Ex. B1, Fundamental
`Innovation Systems Int’l LLC v. LG Electronics,
`Inc., 2:16-cv-01425-JRG-RSP (E.D. Tex. Dec.
`29, 2017) (Dkt. 103-5)
`Ex. 1016 Curriculum Vitae of Dr. John Levy
`Ex. 1017 U.S. Patent 6,178,514
`Ex. 1018 U.S. Patent 5,884,086
`
`- i -
`
`
`
`Short Name
`’111 patent
`’111 file history
`’021 provisional
`’486 provisional
`Levy
`
`Theobald
`USB 2.0
`
`Invalidity
`Contentions
`
`Shiga
`Dougherty
`USB 1.1
`
`Zyskowski
`
`Casebolt
`Cypress datasheet
`
`JCC, Ex. B1
`
`Levy CV
`Wood
`Amoni
`
`

`

`Exhibit Description
`Ex. 1019 U.S. Patent 6,556,564
`Ex. 1020 U.S. Patent 6,936,936
`Ex. 1021 Prosecution History of U.S. Patent 6,936,936
`Ex. 1022 USB 2.0 Documents Index,
`http://www.usb.org/developers/docs/usb20_docs/
`Ex. 1023 P.R. 4-3 Joint Claim Construction and
`Prehearing Statement, Ex. A1, Fundamental
`Innovation Systems Int’l LLC v. LG Electronics,
`Inc., 2:16-cv-01425-JRG-RSP (E.D. Tex. Dec.
`29, 2017) (Dkt. 103-1)
`Ex. 1024 Complaint, Fundamental Innovation Systems
`Int’l LLC v. Huawei Investment & Holding Co.,
`Ltd., et al., 2:16-cv-01424-JRG-RSP (E.D. Tex.
`Dec. 16, 2016)
`
`
`
`
`
`
`Short Name
`Rogers
`’936 patent
`’936 file history
`USB Doc
`
`JCC, Ex. A1
`
`Complaint
`
`- ii -
`
`

`

`
`
`TABLE OF CONTENTS
`I. Mandatory Notices (37 C.F.R. § 42.8) ............................................................... 4
`A.
`Real Parties-in-Interest (§ 42.8(B)(1)) ..................................................... 4
`B.
`Related Matters (§ 42.8(B)(2)) ................................................................. 4
`C.
`Counsel and Service Information (§§ 42.8(B)(3), 42.8(B)(4)) ................ 4
`II.
`Fees (§ 42.15(A)) ................................................................................................ 5
`III. Grounds for Standing (§ 42.104(A)) ................................................................... 5
`IV. Summary of Challenge (§ 42.104(B)(1)-(2), (4)) ............................................... 5
`V. Overview of the ’111 Patent (Ex. 1001) ............................................................. 5
`A.
`Prosecution History .................................................................................. 6
`B.
`Priority Date .............................................................................................. 7
`VI. Person of Ordinary Skill in the Art ..................................................................... 8
`VII. Summary of the Prior Art .................................................................................... 8
`A.
`Background and History of USB Technology ......................................... 8
`B.
`USB 2.0 (Ex. 1007) .................................................................................. 9
`C. Use of SE1 State in Various Contexts .................................................... 13
`1.
`Shiga (Ex 1009) ........................................................................... 13
`2.
`Zyskowski (Ex. 1012) .................................................................. 14
`3.
`Casebolt (Ex. 1013) ..................................................................... 14
`4.
`Cypress Semiconductor (Ex. 1014) ............................................. 16
`Theobald (Ex. 1006) ............................................................................... 16
`Dougherty (Ex. 1010) ............................................................................. 18
`1.
`“charged battery scenario” ........................................................... 20
`
`D.
`E.
`
`- iii -
`
`

`

`
`
`3.
`
`4.
`
`2.
`“dead battery scenario” ................................................................ 20
`VIII. Claim Construction (§ 42.104(B)(3)) ............................................................... 21
`A.
`“identification signal . . . configured to indicate to the mobile
`device that the power socket is not a USB host or hub” (Claims 1
`and 17) .................................................................................................... 21
`B.
`“USB controller” (Claim 7) .................................................................... 23
`C. Means-Plus-Function Terms (Claim 18) ............................................... 23
`1.
`“means for receiving energy from a power socket” .................... 24
`2.
`“means for regulating the received energy from the power socket
`to generate a power output” ......................................................... 25
`“means for generating an identification signal that indicates to the
`mobile device that the power socket is not a USB hub or host” . 26
`“means for coupling the power output and identification signal to
`the mobile device” ....................................................................... 27
`IX. Application of the Prior Art to the Challenged Claims .................................... 28
`A. Ground 1: Theobald, USB 2.0, and Shiga, in combination,
`renders obvious claims 1-3, 6-8, and 16-18. .......................................... 28
`1.
`Application of the Combination of Theobald, USB 2.0, and Shiga
`to Claims 1-3, 6-8, and 16-18 ...................................................... 30
`2.
`The Theobald/USB 2.0/Shiga Combination ............................... 42
`Ground 2: Dougherty and Shiga, in combination, renders obvious
`claims 1-3, 6-8, and 16-18. ..................................................................... 47
`1.
`Application of the Combination of Dougherty and Shiga to
`Claims 1-3, 6-8, and 16-18 .......................................................... 48
`2.
`The Dougherty/Shiga Combination............................................. 60
`Conclusion ......................................................................................................... 64
`
`B.
`
`X.
`
`- iv -
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 21
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 21
`Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`IPR2016-00422, Institution Decision (P.T.A.B. July 6, 2016) ...................passim
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 21
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ...................................................................... 27, 28
`Wendt Corp. v. IQASR, LLC,
`Institution Decision, IPR2017-01080 ........................................................... 23, 27
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) (en banc) .......................................................... 24
`Statutes
`35 U.S.C. § 102(a) ................................................................................................. 7, 9
`35 U.S.C. § 102(b) ............................................................................................... 6, 16
`35 U.S.C. § 103(a) ............................................................................................. 5, 6, 7
`35 U.S.C. §112, ¶ 6 ............................................................................................ 23, 24
`35 U.S.C. § 325(d) ....................................................................................... 28, 29, 30
`
`- v -
`
`

`

`Other Authorities
`
`Other Authorities
`37 C.F.R. § 42.100 ................................................................................................... 21
`37 C.F.R. § 42.100 ................................................................................................... 21
`
`
`
`- vi -
`
`-vi-
`
`

`

`
`
`Huawei Device Co., Ltd. (“Petitioner”) requests inter partes review (“IPR”) of
`
`claims 1-3, 6-8, and 16-18 of U.S. Patent No. 7,239,111 (“’111 patent”). As explained
`
`below, there is a reasonable likelihood that Petitioner will prevail on at least one claim
`
`challenged in this petition.
`
`The alleged invention of the ’111 patent consists principally of a USB power
`
`adapter that both (i) couples power from a power socket to a mobile device, and (ii)
`
`generates an identification signal that is output to the mobile device and indicates that
`
`the power socket is not a USB host or hub. As explained below in Section VIII, Patent
`
`Owner appears to construe the second feature to mean that the USB adapter generates
`
`an identification signal indicating that the USB adapter is not a USB host or hub.
`
`Based on Patent Owner’s litigation interpretation of this term, the prior art renders
`
`obvious claims 1-3, 6-8, and 16-18 of the ’111 patent.
`
`Universal Serial Bus (“USB”) technology was widely adopted as a bus and
`
`device connection standard by industry leaders and consumers after it was first released
`
`in 1998. As such, the USB technical attributes, including the use of the four signal
`
`lines in a USB cable (i.e., VBUS and GND (ground) lines that provide power, and D+
`
`and D- lines that carry signals for communication), were well known before 2001. One
`
`shortcoming of USB standards (e.g., USB 1.1/2.0), however, was the imposition of a
`
`500 mA current draw limit on a USB device connected to a USB hub or host.
`
`Practitioners in the USB technology field quickly and widely recognized that this limit
`
`- 1 -
`
`

`

`
`
`posed problems in many contexts requiring more power. Amoni (Ex. 1018), 2:19-26;
`
`Rogers (Ex. 1019), 11:2-8; Levy, ¶64.
`
`Given these constraints, practitioners sought to implement systems in which a
`
`device connected through USB to a second device could draw power from the latter in
`
`excess of the USB limit of 500 mA. Levy, ¶65. For example, Dougherty discloses
`
`that a laptop connected to a docking station through USB could draw up to 2.5
`
`Amperes of current from the latter. Dougherty (Ex. 1010), 7:42-46. Similarly, Amoni
`
`discloses that two devices connected through USB could negotiate the amount of
`
`current to be drawn by one of the devices from the other, and that through such
`
`negotiation, the one device could draw more than 3 Amperes of current from the other.
`
`Amoni, 7:16-26.
`
`Drawing that amount of current from a device through USB connectors,
`
`however, was not compliant with the USB specification because it was over the USB
`
`standard limit. Accordingly, it was apparent to a practitioner that the devices needed
`
`to signal one another regarding their ability to enable the draw of current that did not
`
`comply with the USB standard. E.g., Dougherty, 5:48-67; Amoni, 6:33-7:26. There
`
`was also a need to signal in a way so as to not have the signal be confused with USB
`
`signals used for purposes set forth in the USB standard.
`
`But this signaling technique (of signaling non-USB compliant features when
`
`two devices are connected by a USB connector) was also well known in the art before
`
`- 2 -
`
`

`

`
`
`the ’111 patent’s alleged invention. Indeed, a simple signaling mechanism is even
`
`suggested by the USB 2.0 specification itself. For example, USB 2.0 indicates that the
`
`SE1 signal (i.e., when both the D+ and D- data lines are at a high level) must never be
`
`intentionally generated within USB. E.g., USB 2.0 (Ex. 1007), 123, 148 (citations to
`
`USB 2.0 refer to native numbers, not stamped numbers). This SE1 signal, which must
`
`not be intentionally generated by a USB-compliant host or hub, was used for the very
`
`purpose of signaling a non-USB compliant feature when two devices were connected
`
`through a USB connector. E.g., Shiga (Ex. 1009), 6:34-58 (disclosing use of “fourth-
`
`mode” signaling, in which both D+ and D- are set high, for waking up a computer that
`
`is in sleep mode); Zyskowski (Ex. 1012), ¶ 19 (disclosing use of D+ and D- set to high
`
`levels to signal a full power state of the host device); Casebolt (Ex. 1013), 7:30-46
`
`(disclosing SE1 to signal the connected device that a PS/2 interface is being used
`
`instead of USB interface).
`
`In short, all of the key concepts of the ’111 patent’s alleged invention were
`
`already known in the art, and there is no inventive concept with the ’111 patent. In
`
`order to signal that current in excess of the 500 mA USB standard limit was to be
`
`drawn, it would have been obvious to a practitioner to use the SE1 signal state. This
`
`is particularly true because of (i) the need to signal a non-USB compliant feature (e.g.,
`
`drawing current in excess of 500 mA), and (ii) the widespread knowledge that the SE1
`
`signal could be used for such a signaling purpose, despite the fact that the USB
`
`- 3 -
`
`

`

`
`
`specification requires that USB hosts and hubs never intentionally generate this signal.
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
`A. Real Parties-in-Interest (§ 42.8(B)(1))
`Huawei Device Co., Ltd., Huawei Technologies Co., Ltd., Huawei Device USA
`
`Inc., Huawei Investment & Holding Co., Ltd., Huawei Device (Dongguan) Co., Ltd.,
`
`Huawei Tech. Investment Co., Ltd., and Huawei Device (Hong Kong) Co., Ltd. are
`
`the real parties-in-interest.
`
`B. Related Matters (§ 42.8(B)(2))
`The ’111 patent is the subject of Civil Action Nos. 2:17-cv-00145-JRG, 2:16-
`
`cv-01424-JRG-RSP, and 2:16-cv-01425-JRG-RSP (the “Litigation”), which are
`
`pending in the U.S. District Court for the Eastern District of Texas, and Civil Action
`
`No. 3:17-cv-01827-N, which is pending in the U.S. District Court for the Northern
`
`District of Texas. Petitioner is unaware of any other pending matter that would affect,
`
`or by affected by, a decision in this proceeding.
`
`C. Counsel and Service Information (§§ 42.8(B)(3), 42.8(B)(4))
`Petitioner designates as lead counsel David A. Garr (Reg. No. 74,932,
`
`dgarr@cov.com) of Covington & Burling LLP, One CityCenter, 850 Tenth Street,
`
`NW, Washington, DC 20001 (postal and hand delivery), telephone: 202-662-6000,
`
`facsimile: 202-662-6291. Back-up counsel is Anupam Sharma (Reg. No. 55,609,
`
`asharma@cov.com) of Covington & Burling LLP, 333 Twin Dolphin Dr # 700,
`
`Redwood City, CA 94065, telephone: 650-632-4700. Petitioner consents to electronic
`
`- 4 -
`
`

`

`
`
`service by email provided in the designation of counsel above, as well as in the
`
`signature block of this petition.
`
`II.
`
`FEES (§ 42.15(A))
`The Office is authorized to charge the filing fee and, and any other necessary
`
`fees that might be due in connection with this Petition, to Deposit Account No. 50-
`
`0740 for the fees set forth in 37 C.F.R. § 42.15(a).
`
`III. GROUNDS FOR STANDING (§ 42.104(A))
`Petitioner certifies that the ’111 patent is available for IPR and that Petitioner is
`
`not barred or estopped from requesting an IPR challenging the ’111 patent on the
`
`grounds identified in this petition.
`
`IV. SUMMARY OF CHALLENGE (§ 42.104(B)(1)-(2), (4))
`Petitioner requests that the Board review and cancel claims 1-3, 6-8, and 16-18
`
`(“challenged claims”) of the ’111 patent based on the following grounds.
`
`2
`
`References
`Basis
`pre-AIA 35 U.S.C. § 103(a)1 Theobald, USB 2.0, and
`Shiga
`pre-AIA 35 U.S.C. § 103(a) Dougherty and Shiga
`
`Ground Claims
`1
`1-3, 6-8, 16-
`18
`1-3, 6-8, 16-
`18
`V. OVERVIEW OF THE ’111 PATENT (EX. 1001)
`The ’111 patent (Ex. 1001) generally relates to “[a]n adapter for providing a
`
`
`1 Because the application for the ’111 patent was filed prior to March 16, 2013, the
`
`pre-AIA conditions for patentability apply.
`
`- 5 -
`
`

`

`
`
`source of power to a mobile device through an industry standard port.” ’111 patent,
`
`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. Id., 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.” Id., 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,. Id., 9:39-42.
`
`Prosecution History
`A.
`The ’111 patent issued from U.S. Patent Application No. 11/175,885, filed on
`
`July 6, 2005. ’111 file history (Ex. 1002), 96.
`
`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 (“Gabehart”), and
`
`rejected claims 3 and 5 as being obvious over Gabehart under 35 U.S.C. § 103(a). Id.,
`
`85-89.
`
`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
`
`- 6 -
`
`

`

`
`
`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.
`
`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). Id., 74-77.
`
`In the response dated June 15, 2006, the applicants 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. Id., 54-55.
`
`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). Id., 44-47. Applicants subsequently filed a terminal disclaimer on
`
`November 22, 2006. Id., 42. The terminal disclaimer was approved on February 20,
`
`2007. Notices of Allowances and Allowability followed on March 8, 2007. Id., 26-
`
`29. No reasons for allowance were indicated.
`
`Priority Date
`B.
`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
`
`- 7 -
`
`

`

`
`
`(2) the ’486 provisional (Ex. 1004), filed October 23, 2001. Thus, the earliest potential
`
`priority date is March 1, 2001.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`The person of ordinary skill in the art (“POSITA”) of the subject matter 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. Along with this petition, Petitioner submits the declaration of
`
`John Levy, who has been a POSITA since at least the ’111 patent’s claimed priority
`
`date. Levy, ¶¶22-24.
`
`VII. SUMMARY OF THE PRIOR ART
`All elements of the challenged claims were well-known in the prior art before
`
`the priority date of the ’111 patent. Levy, ¶56. Indeed, there is nothing novel or
`
`non-obvious about the alleged invention of the challenged claims. Id.
`
`A. Background and History of USB Technology
`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. Levy, ¶¶57-59. Similarly,
`
`- 8 -
`
`

`

`
`
`a POSITA would have had access to and been familiar with the USB Specification
`
`(which describes technical details to enable design of USB compatible products) in its
`
`various revisions, including Revision 1.1 (“USB 1.1”) (Ex. 1011), which was first
`
`released on September 23, 1998, and Revision 2.0 (“USB 2.0”) (Ex. 1007), which was
`
`released on April 27, 2000. Id..
`
`USB-IF continued to improve upon USB technology and continues to do so
`
`even today. Levy, ¶60. For example, the USB 2.0 Documents Index of the USB 2.0
`
`web page (Ex. 1022) lists 36 available documents, including the original USB 2.0
`
`Specification, representing evolution and modifications of USB 2.0 from April 27,
`
`2000 through February 2, 2017. Id.
`
`B. USB 2.0 (Ex. 1007)
`USB 2.0 was published on April 27, 2000, and bears a copyright date of 2000,
`
`and was disseminated and available to POSITAs in the USB technology field. Levy,
`
`¶¶58-59. Thus, USB 2.0 is prior art to the ’111 patent under at least pre-AIA §102(a).
`
`USB 2.0 describes an architecture in which a USB host is connected to one or
`
`more USB devices through USB connectors and USB cables. USB 2.0, 15-18
`(citations to USB 2.0 refer to native numbers, not stamped numbers); Levy, ¶61. A
`
`USB host includes a USB host controller, and a USB device may be a hub (that
`
`provides additional USB connections to other USB devices and includes a hub
`
`controller) or a function (that provides a capability to a host, e.g., keyboard or mouse,
`
`- 9 -
`
`

`

`
`
`and that includes a function controller). USB 2.0, 15-18, 173-175, 336-339; Levy,
`
`¶61. In general, the USB cable has four wires: VBUS and GND (ground) lines that
`
`provide power, and D+ and D- lines that carry signals for communication, as shown
`
`in Figure 4-2 from USB 2.0 below. USB 2.0, 17-18, 85-89; Levy, ¶61. Each USB
`
`connector has corresponding pins that each connect to the corresponding line in a
`
`USB cable. USB 2.0, 17-18, 85-89; Levy, ¶61.
`
`
`USB 2.0 also describes how a USB host configures a USB device when they
`
`are connected. Levy, ¶62. For example, USB 2.0 states that “[w]hen a USB device
`
`is attached to or removed from the USB, the host uses a process known as bus
`
`enumeration to identify and manage the device state changes necessary.” USB 2.0,
`
`243.
`
`USB 2.0 further specifies limits on the current a device may draw from a host
`
`or another device. USB 2.0, 171, 178, 245. Specifically, USB 2.0 provides that a
`
`- 10 -
`
`

`

`
`
`device may not draw more than 500 mA from USB via VBUS. Levy, ¶63.2
`
`Moreover, a POSITA would have known about the different signaling states
`
`on the D+ and D- lines in USB based on the USB 2.0 specification, as USB 2.0
`
`defines a number of such signaling states that are used for various purposes. USB
`
`2.0, Table 7-2; Levy, ¶66. For example, some states (e.g., Differential 0, Differential
`
`1, Data J State, Data K State) are associated with transmission of data while others
`
`(e.g., Single-ended 0, Single-Ended 1) are used as non-data signaling conditions.
`
`USB 2.0, 144-45; Levy, ¶67. Additionally, USB 2.0 discloses that a USB device
`
`attached to a USB hub or host sets either the D+ or the D- line to a high logical
`
`voltage level to signal the USB hub or host regarding the connection. USB 2.0, 149-
`
`51; Levy, ¶68. This is also shown below in Figures 7-27 and 7-28 of USB 2.0.
`
`
`2 As discussed, POSITAs recognized that this limit was a problem in contexts requiring
`
`more power. E.g., Amoni, 2:19-26; Rogers, 11:2-8. Amoni and Rogers are prior art
`
`to the ’111 patent under pre-AIA §§102(b) and 102(e), respectively, as Amoni’s
`
`issuance date is March 16, 1999 and Roger’s filing date is February 8, 2001.
`
`- 11 -
`
`

`

`
`
`
`
`
`
`This connection-detection signaling takes place before USB enumeration. USB 2.0,
`
`243-44; Levy, ¶69. Thus, USB 2.0 itself discloses an identification signal that
`
`comprises a voltage level on at least one data line in the USB connector.
`
`USB 2.0 also discloses a SE1 state, which is of particular relevance for this
`
`petition. “SE1 is a state in which both the D+ and D- lines are at a voltage above
`
`VOSE1 (min), which is 0.8 V.” USB 2.0, 123. USB 2.0 also teaches that the low, full,
`
`and high-speed USB drivers “must never ‘intentionally’ generate an SE1 on the
`
`bus.” USB 2.0, 123, 148. In other words, according to USB 2.0, an abnormal data
`
`condition would occur if D+ and D- were both intentionally set in a high state above
`
`0.8 V by a connected USB host or device. Levy, ¶70.
`
`- 12 -
`
`

`

`
`
`C. Use of SE1 State in Various Contexts
`A POSITA at the time of the alleged invention of the ’111 patent would have
`
`understood that the SE1 state would be a logical choice for signaling information
`
`about a device without interfering with USB signaling. Levy, ¶71. Numerous prior
`
`art references disclose using SE1 for this purpose.
`
`Shiga (Ex 1009)
`1.
`U.S. Patent No. 6,625,738 (“Shiga”) was filed on December 6, 1999, and thus,
`
`is prior art to the ’111 patent under at least pre-AIA § 102(e).
`
`Shiga recognizes that, according to USB standards at the time, there are three
`
`(D+, D-) signal line states representing three modes: (1) low-speed mode (D+ signal
`
`line is set to a low level ( “L”) and D- line is set to a high level (“H”)); (2) full-speed
`
`mode (D+ is high and D- is low); and (3) unconnected mode (both D+ and D- are low),
`
`as shown in Shiga’s Table 1, below. Shiga, 5:38-60; Levy, ¶¶72-73.
`
`
`
`In contrast to these three USB standard modes, Shiga also explains that the
`
`“fourth mode” signal, which is when both D+ and D- are in the H level state, is “not a
`
`USB standard state” and can therefore “be easily distinguished from USB standard
`
`data signals.” Shiga, 5:60-62, 6:48-58; Levy, ¶74. Furthermore, Shiga teaches that
`
`this signal can be used for “providing a function that USB does not have” in a manner
`
`- 13 -
`
`

`

`
`
`that does not interfere with ordinary USB data transfer. Shiga, 2:5-6; 8:48-58. This
`
`fourth mode signal is transmitted by a USB apparatus (e.g., keyboard) to wake up a
`
`host computer when the computer is in an off state. Shiga, Abstract, 6:35-47; Levy,
`
`¶¶74-76. Accordingly, in 1999, using the signal state that it is not a USB standard
`
`mode (i.e., in which both D+ and D- are in the H state) was well-known. Shiga, 5:60-
`
`62; 6:48-50; Levy, ¶74.
`
`Zyskowski (Ex. 1012)
`2.
`As another example, Zyskowski teaches that SE1 (with D+ and D- being set
`
`at 5 V) could be used by a host device (e.g., computer) to signal that it is in a full
`
`power state to a connected device (e.g., mass storage device, consumer electronic
`
`device). Zyskowski, ¶¶17, 19; Levy, ¶77.3
`
`Casebolt (Ex. 1013)
`3.
`Casebolt also teaches that SE1 could be used as a special signaling mode in
`
`which the D+ and D- data lines would be connected to Vcc (+5V) to signal the
`
`presence of a PS/2 adapter,4 as shown below. Casebolt, Fig. 2C, 7:41-54, Table 1;
`
`
`3 Under pre-AIA §102(e), Zyskowski is prior art to the ’111 patent, as Zyskowski’s
`
`filing date is December 3, 1999.
`
`4 A PS/2 port is a now-obsolete 6-pin mini-DIN connector that was used for connecting
`
`keyboards and mice to an IBM PS/2 computer system. Levy, ¶78.
`
`- 14 -
`
`

`

`Levy, ¶78.5
`
`
`
`
`Indeed, the SE1 state for USB (i.e., when both the D+ and D- data lines are
`
`both at H level) is shown in Casebolt’s Table 1 below. Levy, ¶79.
`
`
`
`
`5 Under pre-AIA §102(e), Casebolt is prior art to the ’111 patent, as Casebolt’s filing
`
`date is October 1, 1999.
`
`- 15 -
`
`

`

`
`
`Cypress Semiconductor (Ex. 1014)
`4.
`Knowledge regarding the use of a state in which D+ and D- are both high was
`
`so common that Cypress Semiconductor integrated it into their enCoRe product.
`
`Cypress datasheet, 21-22, 24-25, 41; Levy, ¶80.6
`
`In short, a POSITA would have understood that a high state on USB D+ and
`
`D- lines could be used in a variety of contexts, and was not restricted to a single
`
`application. Levy, ¶81.
`
`D. Theobald (Ex. 1006)
`U.S. Patent No. 5,859,522 (“Theobald”) was granted on January 12, 1999, and
`
`thus, is prior art to the ’111 patent under at least pre-AIA § 102(b).
`
`Theobald discloses accessories for an electronic device (e.g., cell phone).
`
`Theobald, 1:12-13, 1:53-55, 3:5-10, 3:52-58; Levy, ¶82. These accessories may be
`
`connected to the electronic device, and include two types of chargers: (1) fast-rate
`
`charger that provides 850 mA of current, and (2) mid-rate charger that provides 340
`
`mA of current. Theobald, 4:29-33; Levy, ¶82. As shown below, the electronic device
`
`in Theobald determines which accessory (e.g., fast-rate charger or mid-rate charger) is
`
`connected by measuring the voltage on the audio in pin of its connector (e.g., voltage
`
`
`6 Under pre-AIA §102(b), Cypress datasheet is prior art to the ’111 patent, as Cypress
`
`datasheet’s publication date is May 25, 2000.
`
`- 16 -
`
`

`

`range of 1.6-1.9 V means connected to a mid-rate charger, range of 3.6-4.2 V means
`
`connected to a fast-rate charger). Theobald, Fig. 2, 4:55-67, 6:14-41; Levy, ¶¶82-84.
`
`
`
`
`
`Theobald also teaches that an electronic device may be connected to the
`
`accessory using, for example, a J3 connector. Theobald, 3:5-10; Levy, ¶85. More
`
`importantly, Theobald expressly teaches that any connector having an external supply
`
`pin and at least one information pin may be used, for example, instead of the J3
`
`connector. Theobald, 3:5-10; Levy, ¶85. Accordingly, a POSITA would have known
`
`- 17 -
`
`

`

`
`
`that the Theobald invention could be used with USB 2.0. Theobald, 3:5-10; Levy,
`
`¶¶85-86.
`
`E. Dougherty (Ex. 1010)
`U.S. Patent No. 7,360,004 (“Dougherty”)7 has an effective filing date of June
`
`30, 2000, and thus, is prior art to the ’111 patent under at least pre-AIA § 102(e).
`
`Dougherty teaches a docking station that powers a laptop over the power rails
`
`of a USB interface. Dougherty’s Figure 1, annotated below, depicts a system in which
`
`a docking station (blue) 200 powers a laptop computer (beige) 100 via a USB cable
`
`
`7 During prosecution, the applicant cited Dougherty’s parent patent, U.S. Patent No.
`
`6,668,296 (“’296 patent”), along with 28 other documents, in an Information
`
`Disclosure Statement. ’111 file history, 90-92. The examiner, however, did not apply
`
`the ’296 patent in any claim rejection, and there is no substantive discussion of the
`
`’296 patent anywhere in the ’111 file history. Additionally, Dougherty was used in a
`
`rejection in the prosecution history of U.S. Patent No. 6,936,936 patent (Exs. 1020,
`
`1021), which issued from the parent application of the application that led to the ’111
`
`patent. However, Doug