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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`___________________
`
`Case IPR2018-00487
`Patent No. 7,239,111
`___________________
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC’s
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2018-00487
`Patent No. 7,239,111
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`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`Introduction ................................................................................................... 1
`Background On The USB Communication Protocol ................................... 5
`A.
`Enumeration to Establish Communication Between Host And
`Device ................................................................................................. 6
`Single Ended 1 (“SE1”) Line State .................................................... 6
`B.
`Summary Of The ’111 Patent ..................................................................... 10
`III.
`IV. The Prior Art References Differ From The ’111 Inventions ...................... 11
`A.
`Theobald Overview .......................................................................... 12
`B.
`Dougherty Overview ........................................................................ 13
`1.
`Dougherty’s Docking Station ................................................ 13
`2.
`Dougherty’s Alleged Improvement Over Prior Art ............... 15
`3.
`Dougherty’s Docking Station Logic ...................................... 16
`(a) Docking When Laptop Is Operational ......................... 16
`(b) Docking When Laptop Is Non-Operational
`(Dead Battery Or No Battery) ..................................... 18
`Shiga Overview ................................................................................ 19
`C.
`Skill Level Of A POSA .............................................................................. 20
`V.
`VI. The Board Should Deny The Petition Under 325(d) .................................. 20
`VII. Ground 1: Claims 1-3, 6-8, and 16-18 Are Not Obvious Over
`Theobald In View Of USB 2.0 and Shiga .................................................. 21
`A.
`Petitioner Fails To Present Competent Evidence That The
`Proposed Combination Discloses An Identification Signal
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`B.
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`“Configured To Indicate To The Mobile Device That The
`Power Socket Is Not A USB Host Or Hub” ..................................... 22
`Petitioner Fails To Provide Any Competent Factual Basis For
`Its Assertion Of A Motivation To Combine Theobald, USB
`2.0, and Shiga ................................................................................... 27
`1.
`The Petition Relies On The Conclusory Premise That
`Theobald Operates Outside Of Standard Power Limits ........ 30
`The Petition Fails To Explain Why A POSA Would
`Have Used The Non-Standard SE1 Signal In
`Theobald’s System ................................................................. 32
`The Petition Fails To Identify Any Teaching In The
`Prior Art Supporting Its Proposed Use Of SE1 In
`Theobald ................................................................................. 35
`The Petition Fails To Establish That Shiga Is
`Analogous Art To The ’111 Patent ........................................ 38
`VIII. Ground 2: Claims 1-3, 6-8, and 16-18 Are Not Obvious Over
`Dougherty In View of Shiga ....................................................................... 40
`A.
`Petitioner Fails To Specifically Point Out The Existence Of
`“Plug Unit” Or “Power Converter” In The Combination ................ 40
`Petitioner Fails To Present Competent Evidence That The
`Proposed Combination Discloses An Identification Signal
`“Configured To Indicate To The Mobile Device That The
`Power Socket Is Not A USB Host Or Hub” ..................................... 41
`Petitioner Fails To Provide Any Competent Factual Basis For
`Its Assertion Of A Motivation To Combine Dougherty and
`Shiga ................................................................................................. 45
`1.
`The Prior Art Does Not Teach Using SE1 As An
`“Identification Signal” ........................................................... 47
`
`2.
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`3.
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`4.
`
`B.
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`C.
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`(b)
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`2.
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`3.
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`4.
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`5.
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`A POSA Would Conclude That Petitioner’s Proposed
`Combination Had No Reasonable Expectation of
`Success ................................................................................... 51
`(a) A POSA Would Believe That Dougherty’s
`Laptop Would Not Be Able To Receive SE1
`Signals While Maintaining Normal USB
`Communications .......................................................... 51
`Even If The Laptop Were Programmed To
`Respond To An SE1 Identification Signal, A
`POSA Would Conclude That The Proposed
`Combination Is Still Inoperative ................................. 53
`A POSA Would Believe That Making The Suggested
`Modifications Would Disable The Dougherty Docking
`Station’s Primary Functionality ............................................. 55
`A POSA Could Not Use Petitioner’s Proposed
`Modification In Dougherty’s “Dead Battery” Scenario ........ 57
`The Petition Fails To Establish That Shiga Is
`Analogous Art To The ’111 Patent ........................................ 59
`IX. Conclusion .................................................................................................. 59
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`TABLE OF AUTHORITIES
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`Case IPR2018-00487
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`
` Page(s)
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`Cases
`Apple Inc. v. Immersion Corp.,
`IPR2016-01371, Paper 7 (Jan. 11, 2017) ...................................................... 24, 42
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .................................................................... 23, 37
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 39
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .................................................................... 51, 55
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 39
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................ 44, 57, 59
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .................................................................... 39, 40
`Par Pharm. v. TWI Pharm.
`773 F.3d 1186 (Fed. Cir. 2014) ................................................................ 2, 29, 35
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ............................................................................ 35
`Sensonics Inc. v. Aerosonic Corp.,
`81 F.3d 1566 (Fed. Cir 1996) ............................................................................. 30
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .............................................................. 47, 51, 54
`Univ. of Md. Biotechnology Inst. v. Presens Precision Sensing GmbH,
`711 Fed. Appx. 1007 ........................................................................................... 35
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`Regulations
`37 C.F.R. § 42.65 ............................................................................................... 24, 42
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 41
`Statutes
`35 U.S.C. § 325(d) ............................................................................................. 20, 21
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`EXHIBIT LIST
`
`
`Ex. 2001 Declaration of Robert Baranowski in Support of Fundamental
`Innovation Systems International LLC’s Patent Owner
`Preliminary Response
`Ex. 2002 Declaration of Mr. Steven Rogers (Case No. IPR2018-00111,
`Ex. 2002)
`Ex. 2003 Excerpts from the deposition transcript of John Irving Garney in
`Fundamental Innovation Systems International LLC v. Samsung
`Electronics Co., Ltd. et al., Civil Action No. 2:17-cv-00145-JRG
`(U.S. District Court in the Eastern District of Texas)
`[intentionally omitted]
`Ex. 2004
`Ex. 2005 Robert Baranowski Curriculum Vitae
`Ex. 2006 Excerpts from USB Complete (2d. Edition), Jan Axelson, 2001
`Ex. 2007
`[intentionally omitted]
`Ex. 2008
`J3 Connector in Motorola Micro TAC 5200, 7200 Flip Phones
`Ex. 2009 U.S. Patent No. 5,214,774 (Welsch)
`Ex. 2010 Motorola Users and Programming Guides, Mike Larsen, Version
`3.0, 1/14/97, Downloaded from
`http://qsl.net/n9zia/cell2900/motorola.txt
`Ex. 2011
`[intentionally omitted]
`Ex. 2012
`[intentionally omitted]
`Ex. 2013
`[intentionally omitted]
`Ex. 2014 Excerpts from USB Complete, Jan Axelson, 1999
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner did not submit a statement of material facts in this Petition.
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`Accordingly, no response is due pursuant to 37 C.F.R. § 42.23(a), and no facts are
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`admitted.
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`I.
`
`Introduction
`U.S. Patent No. 7,239,111, entitled “Universal Serial Bus Adapter For A
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`Mobile Device” (the “’111 patent”), is directed to a novel USB adapter that, among
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`other things, uses an “identification signal” to inform a connected mobile device
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`about the nature of the USB adapter and its charging capabilities.
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`Huawei Device Co., Ltd. (“Petitioner”) requested inter partes review (“IPR”)
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`of claims 1-3, 6-8, and 16-18 (the “Challenged Claims”) of the ’111 patent on two
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`grounds. Pet., 5. Petitioner challenges the validity of the Challenged Claims based
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`on a combination of Theobald, the Universal Serial Bus Specification, Revision 2.0
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`(“USB 2.0”), and Shiga (Ground 1) and a combination of Dougherty and Shiga
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`(Ground 2). This Petition is an essential mirror image of the Petitions presented by
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`LG in IPR2018-00495 and ZTE/Samsung in IPR2018-00276.
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`Petition fails to establish a reasonable likelihood of prevailing for several
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`reasons. At the outset, the Petition fails to explain how the identified prior art
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`references, singly or in combination, disclose an identification signal “configured to
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`indicate to the mobile device that the power socket is not a USB host or hub,” as
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`required by all of the Challenged Claims. The Petition argues that “common sense”
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`dictates that the “SE1” state, being a “non-standard” signal disallowed under the
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`USB specification, necessarily “indicate[s] that the USB adapter is not a USB host
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`or hub.” See, e.g., Pet., 29-30. But the Petition itself contends that USB host devices
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`in the prior art could intentionally generate SE1 signals. See, e.g., Pet., 14
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`(discussing Zyskowski reference’s purported teaching that “SE1 (with D+ and D-
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`being set at 5V) could be used by a host device (e.g., computer) to signal that it is
`
`in a full power state”).1 Moreover, the Petition does not even consider the possibility
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`that a USB host or hub might unintentionally generate an SE1 signal – a possibility
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`that the USB specification expressly accounts for, specifying exactly how USB
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`devices must respond when receiving an SE1 signal. Ex. 1007, 316 (§ 11.5.2.2)
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`(describing required response to SE0 and SE1 signals on the bus in order to avoid
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`“errors that are very difficult to isolate and correct”); Ex. 2003, 260:2-13 (if USB
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`data lines are at “SE1 voltage level for more than 2-1/2 microseconds,” an “attached
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`devices would interpret that as a reset event, or reset condition, and a hub would be
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`required to disconnect its port to isolate that device from the rest of the bus”); Ex.
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`2001, ¶¶49-51. Thus, the Petition fails to provide any evidence – for either asserted
`
`Ground – that the proposed combination would generate an identification signal of
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`the type claimed in the ’111 patent. See Par Pharm. v. TWI Pharm. 773 F.3d 1186,
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`1195-96 (Fed. Cir. 2014) (“[T]o establish the existence of a claim limitation in the
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`prior art in an obviousness analysis—the limitation at issue necessarily must be
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`1 Fundamental disagrees that Zyskowski’s host transmits SE1 to identify its
`power state.
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`present, or the natural result of the combination of elements explicitly disclosed by
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`the prior art.”).
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`The Petition also fails to provide factual support for its contention that a
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`person of ordinary skill in the art at the time of the invention (“POSA”) would have
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`been motivated to combine the asserted references in the manner that Petitioner
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`contends.
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`In Ground 1, the Petition suggests that a POSA would have replaced the “J3”
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`communications interface of the Theobald apparatus entirely in order to convert
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`Theobald’s adapter into a USB adapter. But the Petition fails to explain why a
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`POSA, having converted Theobald’s J3 adapter to a USB adapter, and following
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`Theobald’s teaching that communication should occur “according to” the applicable
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`data communication protocol (i.e., USB, here), would then choose to modify
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`Theobald’s adapter to generate an “SE1” signal that Petitioner itself describes as
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`“non-standard” signal that “the USB 2.0 specification provides that USB hubs and
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`hosts must not intentionally transmit.” Pet., 29-30. Petitioner fails to present any
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`competent evidence that a POSA would have ignored the express teachings of
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`Theobald and the USB 2.0 specification in order to arrive at the claimed inventions.
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`Indeed, the Petition suggests the exact opposite – that a POSA would have been
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`motivated to “change the connector on Theobald’s charging adapter from a J3
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`connector to a USB connector” because USB was a “widely-adopted standard ... to
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`connect devices and their accessories,” Pet., 29, using an “industry standard port,”
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`Pet., 47. If a POSA desired to adopt any “industry standard,” the Petition nowhere
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`explains why that same POSA would then design a system that violated the
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`communication protocol of this standard. After all, USB 2.0’s interoperability
`
`assumes compliance with its communication protocols (Ex. 1007-45):
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`
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`The Petition also fails to identify any use of “SE1” as an identification signal
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`“configured to indicate to the mobile device that the power socket is not a USB host
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`or hub” as recited in the claims. The Petition relies solely on Shiga, which describes
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`the use of SE1 for an entirely different purpose that is totally unrelated to device
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`identification or even USB communication. Indeed, Shiga is so different from the
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`’111 patent that it does not even legally qualify as analogous art.
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`In Ground 2, the Petition suggests that a POSA would have taken the laptop
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`docking station described in Dougherty and made extensive modifications, including
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`replacing essentially all of Dougherty’s docking and enumeration protocol with the
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`transmission of an “SE1” signal from the docking station to the laptop. Pet., 60-61.
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`Petitioner’s proposed modifications not only lack suggestion by the prior art, but if
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`implemented in Dougherty’s system would eliminate the docking station’s primary
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`functionality and, in certain scenarios (such as when the connected laptop’s battery
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`is dead), render the docking station completely inoperable.
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`For these and further reasons stated below, Patent Owner Fundamental
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`Innovation Systems International LLC (“Fundamental”) respectfully requests that
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`the Patent Trial and Appeal Board (the “Board”) deny the Petition because it does
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`not present a reasonable likelihood that Petitioner will prevail as to any challenged
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`claim under any of the two asserted grounds.
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`II. Background On The USB Communication Protocol
`The Universal Serial Bus (“USB”) architecture is a “cable bus that supports
`
`data exchange between a host computer and a wide range of simultaneously
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`accessible peripherals.” Ex. 10072, 43. Up to 127 USB devices can be directly or
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`indirectly connected to a single host. Id. at 44.
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`When a USB device is plugged into a USB host or hub, power can be provided
`
`by the host or the hub. The USB host and connected device negotiate power
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`allocation so that sufficient power can be directed to each connected device without
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`overdrawing power from the host. Ex. 1007, 44-47. At the time of the inventions,
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`the USB specifications limited the amount of current that a device may draw to 500
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`2 Patent Owner’s citations are to the page numbers (1-650) that Petitioner
`has added to the filed Exhibit 1007 documents.
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`milliamps (mA) after configuration and 100 mA before configuration. Ex. 1007,
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`271-72.
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`A. Enumeration to Establish Communication Between Host And
`Device
`USB enumeration is a handshaking protocol by which the host can identify,
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`address and configure each peripheral device. Ex. 1007, 271-72 (describing steps of
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`enumeration process). Before enumeration, the host can perform only basic control
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`communications with the device to get the information necessary to configure the
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`device. Ex. 1007, 271-273. Once configured, the device is “enumerated” and “ready
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`for use.” Id. After enumeration and configuration, the device may send/receive data
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`over the D+ and D- data lines in accordance with the USB specification. Ex. 1007,
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`46-48.
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`B.
`Single Ended 1 (“SE1”) Line State
`One of the four possible states that the USB data lines can be in is the “SE1
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`state,” “in which both the D+ and D- lines are held at high voltage. Ex. 1007, 151.
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`The USB specification warns that “USB drivers must never ‘intentionally’ generate
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`an SE1 on the bus.” Ex. 1007, 151.
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`Petitioner suggests that at the time of the invention “the SE1 state would be a
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`logical choice for signaling information about a device without interfering with USB
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`signaling” and purports to identify several prior art examples of such use of SE1
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`signaling in USB communication. Pet., 13. To the contrary, SE1 was not used when
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`normal USB communication was in progress, precisely because SE1 could interfere
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`with USB communications. Ex. 2001, ¶¶33-51.3
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`Indeed, in the litigation regarding infringement of the ’111 patent, Samsung’s
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`expert James Garney correctly acknowledged that an SE1 condition interferes with
`
`USB signaling because a USB port enters a “disconnect state” upon observing SE1.
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`Ex. 2003, 261:6-22 (“[N]o more data signaling would be delivered across that
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`communication—across that connection between the hub and the attached device or
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`hub that might be connected to it.”); Ex. 2001, ¶¶49-51. The testimony of Samsung’s
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`expert is highly relevant because this Petition simply adapts various IPRs already
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`filed by Samsung in the instant petition. See, e.g., IPR2018-00110; IPR2018-00111;
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`IPR2018-00214; IPR2018-00215; IPR2018-00274; IPR2018-00276; IPR2018-
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`00605; IPR2018-00606; IPR2018-00606.
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`Samsung’s expert’s understanding is further confirmed by Petitioner’s
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`identified examples from prior art references, none of which discloses transmitting
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`3 Unlike the prior art, the ’111 patent inventors developed specific
`techniques, including sending identification signals at a particular time, that ensure
`the identification signal correctly indicates that the USB adapter is not a USB hub
`or host. See, e.g., Ex. 1001, 9:60-10:6 (USB adapter “identified” before
`“enumeration process and charge negotiation process”). Petitioner identifies no
`such teaching in the prior art, nor does Petitioner even attempt to explain how or
`why a POSA would incorporate such techniques into the proposed combination
`with Theobald or Dougherty.
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`an SE1 signal on USB data lines that were transmitting or would continue to transmit
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`standard USB communications. Ex. 2001, ¶¶42-48. Rather, each of the prior art
`
`references describes the use of SE1 states solely in situations where normal USB
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`communications are not possible (and thus cannot be interfered with).
`
`For example, Petitioner asserts that Shiga (Ex. 1009) disclosed the use of SE1
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`signaling “in a manner that does not interfere with ordinary USB data transfer.” Pet.,
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`13-14. But Petitioners ignore that in Shiga, this “SE1” state is provided not to a USB
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`device, or as part of USB communication at all, but rather to a separate “wake-up
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`means” circuit used to toggle the power switch on a computer’s power supply. See,
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`e.g., Ex. 1009, 3:1-9, 6:8-12, 7:16-30 (the signal lines used to send SE1 are “not
`
`connected” to the signal lines of the USB host when SE1 is sent).
`
`Petitioner also asserts that Zyskowski (Ex. 1012) taught the use of SE1 by a
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`“host device (e.g., computer) to signal that it is in a full power state to a connected
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`device.” Pet., 14. To the contrary, Zyskowski merely discloses that a USB device
`
`may observe normal USB communication on the USB data paths – not an abnormal
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`SE1 signal – to determine whether the host computer is powered on (e.g., in a “full
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`power state”) or in standby mode (“reduced power state”). Ex. 1012, [0019].
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`Specifically, Zyskowski explains that a USB device may “detect that the host 104 is
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`in a reduced power state by monitoring the state of one or both of the [USB] data
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`paths D1 and D2.” Id. In other words, a USB host will, in normal operation, pull
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`the D1 and D2 data lines “high” at various times, which indicates that the host must
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`be powered on and operating. Id. Zyskowski is not teaching that both of the USB
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`data paths will be “high” simultaneously (i.e., an SE1 state), nor would it, as such a
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`state would be invalid and would not indicate that the host is operating normally.
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`Ex. 2001, ¶45.
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`Petitioner also asserts that Casebolt (Ex. 1013) taught that “SE1 could be used
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`as a special signaling mode.” Pet., 14. But Casebolt uses SE1 only for PS/2 devices
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`and expressly states that an SE1 signal “causes USB functions to be terminated.”
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`Ex. 1013, 7:40-46.
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`Finally, Petitioner asserts that Cypress Semiconductor (Ex. 1014) “used the
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`SE1 state in their enCoRe product,” without further explanation. Pet., 16. What
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`Petitioners fail to explain is that in Cypress’ system, the SE1 state only occurred
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`when USB was “disabled.” Ex. 1014 at 24.
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`In each example Petitioner identifies as purportedly teaching SE1 “signaling”
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`by USB devices “without interfering with USB signaling,” SE1 is used solely in
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`contexts where normal USB communication is either not possible (Shiga), disabled
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`(Cypress), to be disabled (Casebolt), or not disclosed at all (Zyskowski). Further,
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`none of the examples uses SE1 as an identification signal for the specific purpose in
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`Petitioner’s proposed obviousness combinations.
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`III. Summary Of The ’111 Patent
`The ’111 patent stems from pioneering research performed by the power
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`supply and distribution group at Research in Motion Ltd. (“RIM,” now Blackberry
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`Ltd.), as part of RIM’s effort to build the world’s first mobile device with a combined
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`USB data and charging port. In the early 2000s, Blackberry launched a project to
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`design a mobile device with a combined power and data interface. A combined
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`charging and data interface would reduce the number of external connections and
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`simplify printed circuit board designs for a smaller and thinner phone.
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`The inventors noted that “[a]lthough the USB interface can be used as a power
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`interface, the USB is typically not used for that purpose by mobile devices.” Ex.
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`1001, 1:52-54. This was, in part, because common power sources such as AC outlets
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`and DC car sockets were incompatible with the USB specification’s requirement that
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`“a USB device participate in a host initiated process called enumeration in order to
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`be compliant with the current USB specification in drawing power from the USB
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`interface.” Id., 1:53-59. Moreover, a mobile device attached to such a power socket
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`via the mobile device’s USB port would be unaware, for example, that the attached
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`USB adapter was not limited by the power limits imposed by the USB specification.
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`Ex. 1001, 1:52-67.
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`Faced with these challenges, the inventors designed a new “USB adapter for
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`providing a source of power to a mobile device through a USB port,” including
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`Patent No. 7,239,111
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`systems and methods that, among other things, may “provid[e] an identification
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`signal to the mobile device ... that is operative to inform the mobile device that the
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`USB adapter is not limited by the power limits imposed by the USB specification”
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`as a USB host or hub would be. Ex. 1001, 2:19-21, 2:50-64.
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`The identification signal serves to inform a mobile device, for example, that
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`it is coupled to a USB adapter of the inventions, that the connected power source “is
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`not a USB limited source,” and/or that the device “can now draw power without
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`regard to the USB specification and the USB specification imposed limits.” Id.,
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`8:17-23. One example of such disregard of the USB specification imposed limits is
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`allowing the device to draw more than 100 mA of current (e.g., 500 mA) from a non-
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`USB power source (such as an AC outlet or a DC car socket) without enumeration.
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`E.g., id.. at 9:60-65.
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`The patent also teaches that an identification signal may be observed “by
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`detecting the presence of an abnormal data line condition at the USB port,” and that
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`one preferred identification signal “results from the application of voltage signals
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`greater than 2 volts to both the D+ and D- lines in [a] USB connector.” Id. at 9:15-
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`23. Certain dependent claims of the ’111 patent claim these specific examples. E.g.,
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`claims 6-8.
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`IV. The Prior Art References Differ From The ’111 Inventions
`The Petition proposes that a POSA would have arrived at the inventions set
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`forth in the ’111 patent by either starting with the power adapter of Theobald and
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`making numerous modifications purportedly taught by USB 2.0 and Shiga (Ground
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`1) or starting with the docking station of Dougherty and making numerous
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`modifications purportedly taught by Shiga (Ground 2). The Petition does not
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`propose any other means of combining Theobald or Dougherty with the above-
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`named references and does not identify any other references that would have been
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`used in the asserted obviousness combinations. Pet., 5.
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`Even in combination, the asserted references differ greatly from the inventions
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`claimed in the ’111 patent. An overview of Petitioner’s primary references,
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`Theobald, Dougherty and Shiga, is provided below, as background for the numerous
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`problems with Petitioner’s proposed combination of these and other references
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`addressed in Sections VI-VII.
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`A. Theobald Overview
`U.S. Patent No. 5,859,522 (“Theobald”) is directed to “a low cost apparatus
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`and method of identifying an accessory to a device that maintains backward
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`compatibility with existing accessories that use the accessory connector.” Ex. 1006,
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`1:36-39. The embodiments relied on by Petitioner in Theobald relate to the “eight
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`pin J3-type accessory connector used in MicroTAC™ cellular telephones
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`manufactured and sold by Motorola, Inc.” Id., 1:18-21, 3:5-10. Theobald’s
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`charging accessory identifies itself, via an analog audio line, as either a “mid rate”
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`charger (capable of supplying 350 mA current) or a “fast rate” charger (capable of
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`supplying 850 mA current). Id., 4:25-40. Both current ranges(350 mA or 850
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`mA)are within the power limits of the J3 three-wire bus protocol used in Theobald.
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`Ex. 2001, ¶61. The use of the audio line for identification enables Theobald’s goal
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`of backward compatibility. 7:14-19. Theobald states that other “suitable” connectors
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`could also be used. Ex. 1006, 1:18-21, 3:5-10 The reference, however, emphasis the
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`need to comply with whatever standard is adopted: “data is communicated ...
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`according to the three-wire bus protocol ... or other suitable high speed data
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`communication protocol.” Ex. 1006, 6:4-14, 7:14-19. Nothing in Theobald suggests
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`that the accessory should deviate from the applicable standard (J3 or otherwise). Ex.
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`2001, ¶¶64-73.
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`B. Dougherty Overview
`1.
`Dougherty’s Docking Station
`Dougherty’s docking station is used to “expand the capabilities of a laptop
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`computer to include a full size keyboard, a full size monitor, more serial ports, and
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`other functionality typically associated only with desktop computing devices.” Ex.
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`1010, 1:61-67. For example, this expansion can be via “port replication across a USB
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`port.” Id., 2:24-25. Port expansion means “by plugging the laptop into [a] docking
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`station, more serial ... ports are available for connection to printers, scanners, full
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`size display devices, ... pointing devices and the like.” Id., 2:16-20. Hence, docking
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`a laptop in a docking station via a USB connection generates “plurality of
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`communication ports” for access to printers, scanners, displays, mice and other
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`peripheral devices. Id., 2:25-28.
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`USB-based docking stations allegedly had the drawback of “requir[ing] the
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`user to separately apply power to the laptop” with a power adapter such as an AC/DC
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`power converter connected to the laptop. Id., 2:43-45. Dougherty’s docking station
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`allegedly overcame this shortcoming and presented “a USB based docking station
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`that has the capability of both operating the laptop computer and charging the battery
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`in the laptop computer while docked without the need to plug in a separate power
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`connection ...” Id., 2:45-50.
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`Dougherty teaches that the primary reason for docking a laptop is to allow it
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`to access the full functionality available to a desktop computer. E.g., id., 1:61-67,
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`2:9-17 (using port replication to make more ports “available for connection to
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`printers, scanners, full size display devices ... and the like”).
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`Dougherty also acknowledges that to support USB-based port expansion, the
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`laptop and docking station must be able to communicate with each other via USB
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`protocols in order to operate peripheral USB devices connected to the USB based
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`docking station. Id., 2:23-32 (“[a] user connects a laptop, via a USB connection, to
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`a port replication device which generates plurality of communication ports,” and
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`“port replication is accomplished across the USB connector”), 2:38-39 (“USB
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`expansion connection”); Ex. 2001, ¶¶82-87. For this reason, Dougherty’s “laptop
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`computer 100 of the preferred embodiment does not modify operation of the serial
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`communication conductors 126 of the USB protocol” (i.e., the D+ and D- data lines).
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`Id. at 4:67-5:3.
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`2.
`Dougherty’s Alleged Improvement Over Prior Art
`As noted above, Dougherty allegedly improves prior art USB-based docking
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`stations by allowing the docking station to provide power to the laptop using the
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`USB connection, rather than a separate power adapter, while at the same time
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`maintaining the ability to communicate over USB that is the purpose of the USB
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`docking station. Ex. 1010, 2:45-50 (“it would be desirable to have a USB based
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`docking station that has the capability of both operating the laptop computer and
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`charging the batteries in the laptop computer while docked without the need to plug
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`in a
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