UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics Mobilecomm
`U.S.A. Inc., LG Electronics Mobile
`Research U.S.A. LLC, And LG Electronics Alabama, Inc.,
`Petitioners,
`
`v.
`
`Fundamental Innovation Systems International LLC,
`Patent Owner.
`___________________
`
`Case IPR2018-00493
`Patent No. 7,834,586
`___________________
`
`DECLARATION OF DR. KENNETH FERNALD IN SUPPORT OF
`PATENT OWNER'S 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
`
`Fundamental Ex 2001-1
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`IPR2018-00493
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics Mobilecomm
`U.S.A. Inc., LG Electronics Mobile
`Research U.S.A. LLC, And LG Electronics Alabama, Inc.,
`Petitioners,
`
`v.
`
`Fundamental Innovation Systems International LLC,
`Patent Owner.
`___________________
`
`Case IPR2018-00493
`Patent No. 7,834,586
`___________________
`
`DECLARATION OF DR. KENNETH FERNALD IN SUPPORT OF
`PATENT OWNER'S 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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`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................. 1
`
`USB 2.0 .................................................................................................. 6
`
`A.
`
`USB Enumeration ........................................................................ 7
`
`III.
`
`THE ROLE OF THE SE1 SIGNAL .................................................... 15
`
`A.
`
`SE1 Disables USB Communications ......................................... 16
`
`1.
`
`2.
`
`Samsung Expert's Testimony ........................................... 17
`
`The Panel Decision In IPR2018-00111 ........................... 19
`
`B.
`
`Use Of SE1 In Cited References ................................................ 20
`
`IV. ANALOGOUS ART ............................................................................ 26
`
`A.
`
`B.
`
`Shiga Is Not Analogous Art ....................................................... 27
`
`Kalogeropoulos Is Not Analogous Art ...................................... 27
`
`V.
`
`DOUGHERTY AND SHIGA DO NOT RENDER THE
`CLAIMS OBVIOUS ............................................................................ 29
`
`A.
`
`B.
`
`C.
`
`Petitioner's Combination Does Not Render Obvious
`"Having An Identification Signal Being Different Than
`USB Enumeration" (Claims 8-9) ............................................... 29
`
`Petitioner's Combination Does Not Render Obvious "A
`Microprocessor And Memory To Process The Signals
`Received On The USB Interface Lines (Claims 11-12) ............ 31
`
`It Would Not Be Obvious To Combine Shiga With
`Dougherty And The Other References. ..................................... 33
`
`1.
`
`There Would Have Been No Reasonable
`Expectation That Using A SE1 Signal On USB
`Data Lines Would Succeed .............................................. 33
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`2.
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`3.
`
`4.
`
`5.
`
`Enumeration Can Be Used For Identification Of
`Non-Standard Power Sources .......................................... 37
`
`Petitioner Ignores Alternative Means Of
`Identification .................................................................... 40
`
`Petitioner's Proposal Does Not Account For
`Unintentionally-Generated SE1 Signals. ......................... 43
`
`Petitioner's Modification Would Not Function In
`Dougherty's "Dead Battery" Scenario ............................. 45
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`I.
`
`INTRODUCTION
`1. My name is Kenneth Fernald, Ph.D. My qualifications are
`
`summarized below and are addressed more fully in my CV attached as
`
`EXHIBIT A.
`
`2.
`
`For 30-years I have been involved in the design of integrated
`
`circuits. A large portion of my work has involved the design of integrated
`
`circuits that involve power management, battery charging and USB control.
`
`I have designed USB controllers that have sold in the hundreds of millions of
`
`units, and I was intimately involved in this field during the time of the patents
`
`at issue in this case.
`
`3.
`
`I earned my Bachelor of Science and Master of Science degrees in
`
`Electrical Engineering from North Carolina State University (NCSU) in 1985
`
`and 1987. During this period I worked for the Space Electronics Group
`
`developing software for predicting the effects of radiation environments on
`
`integrated circuits. I also consulted for the Naval Research Laboratory (NRL).
`
`My services to NRL included the design of dosimetry instrumentation and the
`
`execution of radiation studies on electronic devices at various facilities around
`
`the United States. I joined NASA Langley Research Center in 1987 where I
`
`designed motor control instruments and firmware for ground and space station
`
`experiments.
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`I returned to NCSU in 1988 to earn my Ph.D. in Electrical
`
`Engineering. My doctoral research efforts were funded by the National
`
`Science Foundation and focused on the development of medical systems
`
`utilizing wireless digital telemetry. My work included a thorough investigation
`
`of medical telemetry technology and design of a microprocessor-based system
`
`for the fast prototyping of implantable medical instruments. I also completed
`
`the design and testing of various components of this system, including a
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`bidirectional digital telemetry integrated circuit (IC) and a general-purpose
`
`sensor interface and conversion IC. I completed my Ph.D. in 1992, after which
`
`I joined Intermedics Inc. in Angleton, Texas.
`
`5.
`
`My responsibilities at Intermedics included system and circuit
`
`design of telemetry, signal-processing, and control ICs for medical devices.
`
`Examples include the design of a sensor acquisition, compression, and storage
`
`IC for implantable pacemakers and defibrillators. I also worked on advanced
`
`wireless digital telemetry technology, control ICs for therapy delivery in
`
`defibrillators, and software development for sensor waveform compression and
`
`recovery. I left Intermedics in 1998 to join Analog Devices Inc. in Greensboro,
`
`NC.
`
`6.
`
`My work at Analog Devices included the design of advanced ICs
`
`for wireless digital communication devices. Specific projects included the
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`design, debug, and testing of a base-band receiver IC for digital satellite
`
`systems. This IC performed QPSK demodulation, symbol recovery, and
`
`forward-error correction for high-bandwidth wireless video signals. I also
`
`performed system design for a CDMA base-band transceiver IC for personal
`
`communication devices.
`
`7.
`
`I rejoined Intermedics in 1998 as the first employee of an IC
`
`design group in Austin, Texas. I continued to work on next-generation medical
`
`telemetry ICs until Intermedics was acquired by Guidant in 1999. At that time
`
`I joined Cygnal Integrated Products, a startup company in Austin, Texas. My
`
`responsibilities at Cygnal included the design and development of mixed-signal
`
`embedded products for industrial and instrumentation applications. Specific
`
`projects included the design of a proprietary communication system for in-
`
`system debug, a proprietary clock recovery method for USB devices, and the
`
`design of numerous analog and digital circuits and systems. I remained at
`
`Cygnal until its acquisition by Silicon Laboratories Inc. in 2003, at which time
`
`I joined Zilker Labs, a start-up company in Austin, Texas, as their first VP of
`
`Engineering and later became their Chief Technical Officer.
`
`8. My responsibilities at Zilker Labs included the development of
`
`advanced IC technologies for power management and delivery for board-level
`
`electronic systems. Specific duties included architecture design and firmware
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`development for all Zilker Labs products. I left Zilker Labs in 2006 to join
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`Keterex as their first VP of Engineering. My responsibilities at Keterex
`
`included management of engineering resources, design and layout of
`
`application-specific integrated circuits, and development of software and
`
`firmware for Keterex products. I joined Silicon Laboratories in 2010 as a
`
`Principal Design Engineer and now hold the title of Fellow. My
`
`responsibilities include architecture development and design of 8-bit and 32-bit
`
`microcontrollers. Projects have included microcontrollers for metrology,
`
`motor control, and low-power and USB applications.
`
`9.
`
`I hold over 60 patents on technologies such as wireless telemetry
`
`for medical devices, low-power analog-to-digital converters, security in
`
`embedded systems, clock recovery in communication systems, serial
`
`communication protocols, and power management and conversion. I have
`
`authored or co-authored over 25 articles, presentations, and seminars on topics
`
`including radiation effects in microelectronics, wireless medical devices, low-
`
`power circuit design, circuit design for digital communications,
`
`microcontrollers and embedded systems, and power management. I am also a
`
`co-author of the PMBus™ Power System Management Protocol Specification.
`
`10.
`
`I have been asked by Fundamental Innovation Systems
`
`International LLC to explain the technologies involved in U.S.7,834,586, (the
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`"'586 Patent") the technologies described in the cited references, the knowledge
`
`of a person of ordinary skill in the art at the time of the invention, and other
`
`pertinent facts and opinions regarding IPR2018-00493. For the purpose of this
`
`declaration, I apply the same skill level as proposed in the Petition, although I
`
`reserve the right to explain why this level is too high. I am being compensated
`
`for my work on this case at a fixed, hourly rate, plus reimbursement for
`
`expenses. My compensation does not depend on the outcome of this case or
`
`any issue in it, and I have no interest in this proceeding.
`
`11.
`
`I have submitted (or will soon submit) declarations on the '586
`
`Patent in IPR2018-00274 and IPR2018-00493 and related patents in IPR2018-
`
`00110, IPR2018-00111, IPR2018-00425, IPR2018-00426 and IPR2018-00479.
`
`In addition, I have submitted expert reports in the related case of Fundamental
`
`Innovations Systems, Int. LLC v. Samsung Elec. Co., Ltd., Case No. 2:17-cv-
`
`145-JRG-RSP (E.D. Tex).
`
`12.
`
`13.
`
`[intentionally omitted]
`
`In Ground 1, Petitioners have asserted that claims 8-9 of the '586
`
`Patent are obvious in light of U.S. Patent No. 7,360,004 (Exhibit 1005,
`
`"Dougherty"), U.S. Patent No. 6,745,024 (exhibit 1006 "DeJaco") and U.S.
`
`Patent No. 6,625,738 (Exhibit 1008, "Shiga"). In Ground 2, Petitioners have
`
`asserted that claim 10 of the '586 Patent is obvious in light of Dougherty,
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`DeJaco, Shiga, and U.S. Patent No. 6,625,790 (Exhibit 1011, "Casebolt"). In
`
`Ground 3, Petitioners have asserted that claims 11-12 of the '586 Patent is
`
`obvious in light of Dougherty, DeJaco, Shiga, and U.S. Patent No. 6,337,560
`
`(Exhibit 1012, "Kalogeropoulos"). In Ground 4, Petitioners have asserted that
`
`claim 13 of the '586 Patent is obvious in light of Dougherty, DeJaco, Shiga,
`
`Kalogeropoulos, and Casebolt. In Ground 5, Petitioners have asserted that
`
`claim 10 of the '586 Patent is obvious in light of U.S. Patent Pub. No.
`
`2008/0272741 (Exhibit 1013, "Kanamori"). In Ground 6, Petitioners have
`
`asserted that claim 13 of the '586 Patent is obvious in light of Kanamori and
`
`U.S. Patent Pub. No. 2007/0239019 (Exhibit 1019, "Richard"). I understand
`
`that claims 10 and 13 are no longer at issue, however, due to the Patent
`
`Owner's disclaimer of those claims. Thus, only claims 8-9 and 11-12 (the
`
`"claims at issue") and Grounds 1 and 3 remain in this Petition.
`
`II. USB 2.0
`14. The Universal Serial Bus ("USB") architecture is a "cable bus that
`
`supports data exchange between a host computer and a wide range of
`
`simultaneously accessible peripherals." Ex. 1010 at 15. Up to 127 USB
`
`devices can be directly or indirectly connected to a single host. Ex. 1010 at 13.
`
`15. 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
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`negotiate power allocation so that sufficient power can be directed to each
`
`connected device without overdrawing power from the host. Ex. 1010 at 16-
`
`19. At the time of the inventions, the USB specifications limited the amount of
`
`current that a device may draw to 500 milliamps (mA) after configuration and
`
`100 mA before configuration. Ex. 1010 at 178, 243-44.
`
`A. USB Enumeration
`16. When a USB device is plugged into a host's USB port, the host
`
`and the device undergo a series of handshakes in order for the host to access
`
`the device's functions. This process—which involves "initial exchange of
`
`information that enables the host's device driver to communicate with the
`
`device"—is called enumeration. Ex. 2003 at 74.
`
`17. The enumeration process involves a series of steps. First, when a
`
`user plugs the device in to the powered port of a USB hub, the device enters
`
`the "powered" state. Ex. 2003 at 76; Ex. 2006 at 96. In this state, the device
`
`may receive power from the USB hub—however, it may not draw more than
`
`100 mA from VBUS until it is configured. Ex. 1010 at 242-43. Furthermore,
`
`the USB port to which the device is attached is disabled (Ex. 1010 at 243), and
`
`the USB device cannot respond to any requests from the USB bus until it
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`receives a "reset" command from the bus. Ex. 1010 at 242.
`
`18. Next, the hub detects the device by "monitor[ing] the voltages on
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`the signal lines of each of its ports." Ex. 2014 at 76; Ex. 2006 at 96. In this
`
`step, the USB device sends a high voltage on either the D+ or D- line. Id. The
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`USB hub detects the voltage and determines that the device is either a full-
`
`speed device (if D+ is high) or a low-speed device (if D- is high). Ex. 2003 at
`
`76, 77; Ex. 2006 at 96, 97 (detecting whether full-speed device supports high
`
`speed); Ex. 1010 at 243. Upon detecting the device, the hub "continues to
`
`provide power but doesn't transmit USB traffic to the device." Ex. 2003 at 76;
`
`Ex. 2006 at 96. The hub then reports to the host that one of its ports (and
`
`indicates which port) has experienced an event. Id.
`
`19.
`
`The host learns of the nature of the event, and of the attachment of
`
`the new device, by sending a "Get_Port_Status" request. Ex. 2003 at 76; Ex.
`
`2006 at 96.
`
`20.
`
`Then, the host issues a port enable and reset command to the port,
`
`which puts the port into the "enabled" state. Ex. 1010 at 243; Ex. 2003 at 76;
`
`Ex. 2006 at 97. In an enabled state, the host can now signal the connected
`
`USB device with control packets.
`
`21. After the reset, the USB device enters the "default" state and can
`
`still draw no more than 100 mA from the VBUS line. Id. In this stage, the
`
`USB device uses the "default address" of 0 to receive control requests. Ex.
`
`1010 at 243; Ex. 2003 at 77; Ex. 2006 at 97.
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`22.
`
`The USB host then reads the device's device descriptor to
`
`determine the maximum data payload the USB device can use. Id. Maximum
`
`data payload refers to the maximum packet size. Id. Either before or after the
`
`USB host requests the device's device descriptor to determine the maximum
`
`payload, the host assigns a unique address to the USB device, such that it is in
`
`the "Address" state. Ex. 1010 at 243; Ex. 2003 at 77-78; Ex. 2006 at 98.
`
`23.
`
`The host then "sends a Get_Descriptor" request to the new address
`
`to learn about the device's abilities. Ex. 2003 at 78; Ex. 2006 at 98. The
`
`standard USB descriptors include the following fields (see Ex. 1010 at 262-
`
`263, Table 9-8):
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`24. The descriptor description above matches that listed in U.S.
`
`5,884,086 (Ex. 2004, "Amoni"), Table II. As noted by Amoni, the descriptors
`
`can include information unique to a device, including its nonstandard voltage
`
`or current configurations. For example, such information can be encoded by
`
`"assign[ing] a vendor specific Device Class . . . and designat[ing] a unique
`
`device sub-class assignment with unique encoded voltage and power
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`requirements." Ex. 2004 [Amoni] at 7:16-19. Alternatively, the information
`
`can be encoded with "a Product String Index [iProduct] pointing to a string
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`containing voltage and current requirements." Id. at 7:27-29.
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`25. The host continues to learn about the device "by requesting the
`
`one or more configuration descriptors specified in the device descriptor." Ex.
`
`2003 at 78. The configuration descriptor has the following fields (Ex. 1010 at
`
`264-65, Table 9-10). As Amoni noted, the iConfiguration field can also be
`
`used to encode a device's nonstandard voltage or current configuration, e.g.,
`
`with the index "point[ing] to the location of a text string of UNICODE format"
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`as specified in section 9.6.7 of USB 2.0. Ex. 2004, at 7:37-44.
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`26. The host then reads the "configuration" information from the
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`device, which contains information about the device's capabilities. Ex. 1010 at
`
`245; Ex. 2003 at 77; Ex. 2006 at 98-99. Finally, the host assigns a
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`configuration value to the USB device, which puts the device into the
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`"configured" state. Ex. 1010 at 244; Ex. 2003 at 79; Ex. 2006 at 99-100.
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`Before this step, since the host does not yet know what additional functionality
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`the device can support, the host will only issue standard device requests, and
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`hence the device will only respond to standard device requests. See Ex. 1010
`
`at 250-251 (describing the various standard device requests and noting that
`
`"USB devices must respond to standard device requests, even if the device has
`
`not yet been assigned an address or has not been configured"); Ex. 2003 at 37
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`(application communications began after enumeration); Ex. 2006 at 41 (same).
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`After it is configured, however, the device can participate in additional USB
`
`communications, and draw an amount of power across the VBUS according to
`
`its configuration. Ex. 1010 at 244; Ex. 2003 at 79; Ex. 2006 at 99-100.
`
`27. Either shortly before, or shortly after, the USB device enters the
`
`"configured" state, the host assigns and loads a device driver. See Ex. 2003 at
`
`78-79; Ex. 2006 at 99. While the USB 2.0 specification does not explicitly
`
`describe loading the device driver as being part of the enumeration process (see
`
`Ex. 1010 at 243-244), the process of loading the device driver is closely related
`
`to enumeration and depends on information obtained during the enumeration
`
`process, particularly in the Windows operating system. See Ex. 2003 at 78-79
`
`("In selecting a driver, Windows tries to match the Vendor and Product IDs,
`
`Release Number, and or class information retrieved from the device with the
`
`information stored in the system's INF files."); Ex. 2006 at 99 (same); see also
`
`Ex. 1010 at 283-285 (during device configuration, "[t]he configuring software
`
`first reads the device descriptor, then requests the description for each possible
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`configuration. It may use the information provided to load a particular client,
`
`such as a device driver, which initially interacts with the device. The
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`configuring software, perhaps with input from that device driver, chooses a
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`configuration for the device."). Thus, regardless of whether loading a driver is
`
`explicitly part of enumeration, loading the driver cannot occur in the absence
`
`of enumeration.
`
`28. Shortly after the enumeration process has been completed, the
`
`device has transitioned from being unrecognized by the USB host, to being
`
`identified, configured, and ready for operation. This configuration is critical to
`
`normal operation of the USB device, because "[a] USB device must be
`
`configured before its function(s) may be used." Ex. 1010 at 244. The USB
`
`device may now also draw power over the VBUS line according to the
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`configuration information set by the USB host. Id.
`
`29. When a hub instead of a device is connected to a host, the host
`
`also undergoes enumeration with the hub (as well as any devices attached to
`
`the hub) using the same procedures as described above. Ex. 2003 at 79-80; Ex.
`
`2006 at 100.
`
`III. THE ROLE OF THE SE1 SIGNAL
`30. One of the states that the USB data lines can be in is the "SE1
`
`state," "in which both the D+ and D- lines are held at high voltage. Ex. 1010 at
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`123. In Shiga SE1 is described as a "fourth-mode." Ex. 1008 at 6:42-44 ("The
`
`first signal line D+ and the second line D- are in a fourth mode in which both
`
`signal lines D+ and D- are in the H state.").
`
`31.
`
`Petitioners allege that a POSA "would have known that the SE1
`
`condition would be a logical choice for conveying information about a device
`
`without interfering with USB signaling." Pet. at 43.
`
`32.
`
`I disagree with Petitioners' conclusions. It is of course possible to
`
`use an SE1 signal effectively, as established by the '586 patent. But a POSA
`
`would conclude that the attempt to fit it into the Dougherty system is not
`
`viable.
`
`A.
`
`33.
`
`SE1 Disables USB Communications
`
`Petitioner's combination relies on a SE1 signal to act as an
`
`identification signal. Pet. at 40-44, 61-62. However, a person of ordinary skill
`
`in the art would also understand that using SE1 at D+ and D- lines, as
`
`Petitioner suggests, would interfere with USB data communication between
`
`Dougherty's laptop and docking station.
`
`34.
`
`The USB specification warns that "USB drivers must never
`
`'intentionally' generate an SE1 on the bus." Ex. 1010 at 123. As described
`
`below, the USB 2.0 specification then describes some of the negative
`
`consequences of using SE1 on the bus. Id. at 316.
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`Samsung Expert's Testimony
`
`35.
`
`Indeed, Petitioners' assertions contradict the knowledge of a
`
`POSA. Samsung's expert correctly testified in a related litigation that SE1
`
`signaling interferes with, and indeed terminates, USB communication. Ex.
`
`2005 at 260:17-262:10:
`
`Q.
`
`So if an SE1 condition is detected, what are the two events
`that will occur?
`
`A. What this is saying is if an SE1 is detected by a hub, then
`it's required to disconnect the device, and if an SE1 is
`detected by an attached device it would detect as a reset --
`just a minute.· Let me read this more carefully.
`
`The SE1 condition has to exist for more than two-1/2
`microseconds, which is the definition of a reset condition.
`
`Q.
`
`A.
`
`And when you have 2.5 microseconds of the SE1 condition,
`the hub will disconnect itself from the device, correct?
`
`If a hub sees an SE1 condition for more than 2-1/2
`microseconds, it would put the port into a disconnect state.
`
`Q: And what does that mean, being in a disconnect state?
`
`A.
`
`The things that are attached to that -- to that hub at that port
`would be -- another word that's used is a disabled port.· No
`more signalling -- no more data signalling would be
`delivered across that communication -- across that
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`connection between the hub and the attached device or
`hub that might be connected to it.
`
`. . .
`
`Q: How long would the device and the hub be disconnected
`after the SE1 signal was received?
`
`A: Until the enumeration is repeated.
`
`Q: And if the SE1 signal occurs again?
`
`A:
`
`I mean, this describes what needs to happen.· Any time the
`hub puts the port into disconnect state, the enumeration
`would have to be repeated.
`
`36. Mr. Garney's description above comports with the USB
`
`specification's description that a USB hub disable the USB port when SE1
`
`signaling is observed to avoid "errors that are very difficult to isolate and
`
`correct":
`
`Each port is required to have a timer used for detecting disconnect
`when a full-/low-speed device is attached to the port. This timer is
`used to constantly monitor the port's single-ended receivers to
`detect a disconnect event. The reason for constant monitoring is
`that a noise event on the bus can cause the attached device to
`detect a reset condition on the bus after 2.5 µs of SE0 or SE1 on
`the bus. If the hub does not place the port in the disconnect state
`before the device resets, then the device can be at the Default
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`Address state with the port enabled. This can cause errors that
`are very difficult to isolate and correct.
`
`Ex. 1010 at 316.
`
`37.
`
`I also agree with Mr. Garney that sending an SE1 signal
`
`repeatedly would place the device into a timed out/suspend state in a continual
`
`loop, and, thereby, interfering with the operation of the port.
`
`2.
`
`The Panel Decision In IPR2018-00111
`
`38.
`
`In IPR 2018-00111 Samsung and ZTE challenged a related patent
`
`using Shiga as part of its combination.
`
`39.
`
`I submitted a declaration in IPR 2018-00111 and, just as in that
`
`case, the Petitioners here seek to use the SE1 signal from Shiga as part of a
`
`combination with another reference in order to introduce an identification
`
`signal. Thus, although the -00111 IPR concerned a different primary reference
`
`(US Patent No. 6,556,564, "Rogers"), the argument to add SE1 to a USB-based
`
`reference is essentially the same.
`
`40.
`
`I have reviewed the Panel's decision denying institution, ZTE
`
`(USA) Inc. v. Fundamental Innovation Systems Int'l LLC, 2018-00111, Paper
`
`16 (PTAB Oct. 26, 2017). The Panel found that, "Upon review of Petitioner's
`
`and Patent Owner's arguments and supporting evidence, we determine that
`
`Petitioner has not sufficiently explained why one of ordinary skill in the art
`
`would have sought to utilize Shiga's SE1 signal in Rogers' system with a
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`reasonable expectation of success." Id. at 20. In addition, the Panel found that,
`
`"Petitioner and Mr. Geier do not explain how a port-disabling SE1 signal could
`
`be used in Rogers' system without interfering with standard USB signaling …
`
`Nor do they explain persuasively how or why one of ordinary skill in the art
`
`would have modified Rogers' system to successfully operate." Id. at 21-22.
`
`Finally, the Panel concluded that, " we are not persuaded that one of ordinary
`
`skill in the art would have found it obvious to combine Rogers and Shiga in the
`
`manner proposed in the Petition." Id.at 22.
`
`41.
`
`In reviewing the Decision in the -00111 IPR and the Petition in
`
`this IPR, I believe that the same reasons for rejecting a combination of Rogers
`
`and Shiga also apply here to Petitioner's combination of Dougherty and Shiga
`
`because the Decision addresses the consequences of combining the SE1 signal
`
`from Shiga with any USB 2.0 device or hub.
`
`B.
`
`42.
`
`Use Of SE1 In Cited References
`
`Petitioners cite a number of references that they contend establish
`
`that "Using the SE1 state (i.e., D+ and D- high) for signaling over the USB
`
`data lines was well-known in the art." Pet. at 6-7. For example, Petitioners
`
`rely on Shiga as the basis for combination with Dougherty. But in Shiga, a
`
`SE1 signal is sent by a USB keyboard as a wake-up signal to a host computer
`
`when the host computer's power supply is turned off. Ex. 1008 at 6:8-15, 6:59-
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`65, 7:4-8, 7:24-29. When the power supply is turned off, the D+ and D- lines
`
`of the USB keyboard and D+ and D- lines of the USB host "are not connected
`
`to each other." Id. at 6:8-12. Instead, the D+ and D- lines of the USB
`
`keyboard are connected to input terminals of the comparators in the wake-up
`
`means 3. Id. at 6:12-15, 6:59-65, 7:4-8.
`
`43.
`
`The wake-up means of Shiga contains only two comparators and
`
`an "AND" circuit that takes as input the outputs of the two comparators. Ex.
`
`1008 at Fig. 1, 7:9-15. When the output from both the comparators are high
`
`(because the voltage on the D+ and D- lines of the USB keyboard exceeded
`
`1.5V), the AND circuit output turns on the main power supply. Id. But the
`
`wake-up means does not perform USB communications. Accordingly, Shiga
`
`does not teach using SE1 signaling under circumstances where USB
`
`communication would be possible. Indeed, the data lines of the USB keyboard
`
`in Shiga is only reconnected with the data lines of the host after the main
`
`power supply is turned on, that is, after the SE1 signaling and processing has
`
`taken place. Id. at 7:16-31.
`
`44.
`
`Petitioners also cite U.S. Patent Pub. 2001/0016890 (Exhibit 1017,
`
`"Sonoda") as using "the SE1 state to indicate to the host computer the nature of
`
`the apparatus attached to the port." Pet. at 6. Sonoda describes a computer or
`
`mainframe monitoring the state of signal lines of a PS/2 port to determine
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`whether the attached device is a PS/2 device or a USB device connected via a
`
`conversion cable. Ex. 1017 at [0014] ("[E]ven where, for instance, only a
`
`dedicated PS/2 input/output port is provided, inputting/outputting of standard
`
`USB signals is made possible by using a conversation cable, and it is possible
`
`to determine whether a PS/2 interface is connected by a dedicated PS/2 cable
`
`or a USB interface is connected via a conversion cable"). In this context, "the
`
`interface is determined to be one for PS/2 use if the states are (H,H)." Id. at
`
`Abstract. This means Sonoda only discusses the SE1 (H,H) state in the context
`
`of PS/2 devices, not when communicating with USB devices at all. Id.at
`
`[0004]-[0005].
`
`45.
`
`Petitioners also cite to Casebolt and a Cypress datasheet (Ex.
`
`1020, "Cypress") as supposedly teaching the desirability of SE1 signaling in
`
`USB communication. Pet. at 18-20. However, in both Casebolt and Cypress,
`
`the SE1 signaling state is used in situations where some communications
`
`protocol other than USB is desired. For example, Cypress relates to a
`
`peripheral controller that is capable of either USB protocol or PS/2 protocol
`
`communications. Ex. 1020 at 6 ("The CY7C637xx features up to 16 general
`
`purpose I/O (GPIO) pins to support USB, PS/2 and other applications.").
`
`Cypress teaches that its SE1 signaling state occurs under "PS/2 Operation," and
`
`only "[w]ith USB disabled." Id at 24. Accordingly, Cypress would provide no
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`indication to a POSA that SE1 signaling should be used on a channel where
`
`USB is desired.
`
`46. Casebolt likewise teaches a peripheral device that is capable of
`
`using either the USB or PS/2 protocol. Ex. 1011 at 2:27-41. In Casebolt, SE1
`
`indicates that USB communication is not desired—the SE1 state "causes USB
`
`functions to be terminated" so that PS/2 communications can begin. Casebolt
`
`at 7:40-46. Thus, contrary to Petitioners' assertion, a POSA would not
`
`understand Casebolt as teaching the use of an SE1 state "without interfering
`
`with USB signaling," as Petitioner contends, because the purpose of the SE1
`
`state in Casebolt is to terminate USB functionality.
`
`47. Petitioner suggests that U.S. Pub. No. 2003/0135766 (Exhibit
`
`1021, "Zyskowski") discloses a USB host that transmits an SE1 signal to
`
`indicate that it is in full power state. Pet. at 7. That is an incorrect reading of
`
`the Zyskowski disclosure. Ex. 1021 at [0019]. Like Kerai (Ex. 2015, 5:45-51)
`
`raised in IPR2018-00111, a person of ordinary skill in the art would understand
`
`that Zyskowski monitors whether either D+ or D-
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