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`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
`___________________
`
`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 IPR2018-00493
`Patent No. 7,834,586
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`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................ 1
`I.
`SUMMARY OF THE '586 PATENT........................................................... 6
`II.
`III. THE PRIOR ART REFERENCES DIFFER FROM THE '586
`INVENTIONS .............................................................................................. 8
`A. Dougherty Overview .......................................................................... 8
`1.
`Dougherty's Docking Station ................................................... 8
`2.
`Dougherty's Alleged Improvement Over Prior Art ............... 10
`3.
`Dougherty's Docking Station Logic ....................................... 11
`(a) Docking When Laptop Is Operational ......................... 12
`(b) Docking When Laptop Is Non-Operational
`(Dead Battery Or No Battery) ..................................... 13
`Shiga Overview ................................................................................ 14
`B.
`IV. SKILL LEVEL OF A POSA ...................................................................... 15
`V.
`CLAIM CONSTRUCTION ....................................................................... 16
`VI. THE BOARD SHOULD DENY INSTITUTION BECAUSE LG
`HAS FAILED TO NAME ALL REAL PARTIES-IN-INTEREST .......... 16
`VII. GROUNDS 1&3: CLAIMS 8-9, AND 11-12 ARE NOT OBVIOUS
`OVER DOUGHERTY IN VIEW OF SHIGA, DEJACO AND/OR
`KALOGEROPOULOS. .............................................................................. 23
`A.
`The Petition Should Be Denied Because, As In IPR2018-
`00111, It Fails To Present Any Competent Evidence That A
`POSA Would Have Had a Reasonable Expectation of
`Success In Using SE1 In The Manner Proposed .............................. 23
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`C.
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`D.
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`1.
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`This Petition Presents the Same Theory and Evidence
`Regarding the Shiga Combinations As in IPR2018-
`00111. ..................................................................................... 24
`Petitioner's Evidence Fails To Demonstrate That A
`POSA Would Have Had A Reasonable Expectation of
`Success In Using SE1 Signaling. ........................................... 28
`The Board's Finding in IPR2018-00111 Is Based On
`Petitioner's Failure to Present Competent Evidence on
`the Use of SE1 Signals ........................................................... 34
`Petition Fails To Establish That Its References Are
`Analogous Art To The '586 Patent ................................................... 36
`Petitioner Fails To Present Any Competent Evidence That
`The Dougherty/Shiga Combination Renders Obvious
`Detecting "An Identification Signal" That Is "Different Than
`USB enumeration" (Claims 8 & 9) .................................................. 40
`The Dougherty/Shiga Combination Would Not Use A
`"Microprocessor And Memory To Process" … "An
`Identification Signal Received At The D+ And D- Lines"
`(Claims 11 & 12). ............................................................................. 42
`Petitioner Fails To Provide Any Competent Factual Basis For
`Its Assertion Of A Motivation To Combine Dougherty and
`Shiga ................................................................................................. 43
`1.
`The Petition's Reliance On The SE1 Signal Has
`Already Been Rejected By the Board. ................................... 45
`The Petition Fails To Establish That Shiga Is
`Analogous Art. ....................................................................... 45
`The Prior Art Does Not Teach Using An SE1 Signal
`As An "Identification Signal." ............................................... 45
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`2.
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`3.
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`2.
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`3.
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`A POSA Would Conclude That Petitioner's Proposed
`Combination Had No Reasonable Expectation of
`Success ................................................................................... 47
`(a) A POSA Would Believe That Dougherty's
`Laptop Would Not Be Able To Receive SE1
`Signals While Maintaining Normal USB
`Communications .......................................................... 48
`Even If The Laptop Were Programmed To
`Respond To An SE1 Identification Signal, The
`Proposed Combination Is Still Inoperative. ................ 49
`A POSA Would Believe The Suggested Modifications
`Would Disable Dougherty's Primary Functionality ............... 50
`(a) Dougherty's Docking Station Expands Ports
`And Requires Normal USB Communication. ............. 50
`(b) Dougherty's Handshaking Process Is Necessary
`To Establish Communication. ..................................... 51
`Petitioner Ignores Other Methods For Identification
`Without Violating The USB Standard. .................................. 52
`(a)
`Petitioners Fail To Explain Why A POSA
`Would Have Ignored Identification Via Well-
`Established Enumeration Procedure. ........................... 53
`Petitioner Fail To Explain Why A POSA Would
`Have Ignored Identification Via Non-Data
`Lines. ........................................................................... 54
`A POSA Could Not Use Petitioner's Proposed
`Modification In Dougherty's "Dead Battery" Scenario ......... 56
`VIII. THE PETITION SHOULD BE DENIED UNDER §§ 325(d) and
`315(d). ......................................................................................................... 57
`IX. CONCLUSION ........................................................................................... 60
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`(b)
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`(b)
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`5.
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`6.
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`7.
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`TABLE OF AUTHORITIES
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`Case IPR2018-00493
`Patent No. 7,834,586
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`
` Page(s)
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`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 41
`Atlanta Gas Light Co. v. Bennett Regulatory Guards, Inc.,
`IPR2013-00453, Paper 88, 8 (PTAB Jan. 6, 2015) .....................................passim
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .................................................................... 48, 50
`In re Clay,
`866 F.2d 656 (Fed. Cir. 1992) ...................................................................... 37, 39
`DSS Tech. Mgmt. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) .......................................................................... 41
`Fox Factory, Inc. v. SRAM, LLC,
`IPR2017-01439, Paper 7 (PTAB Dec. 8, 2017) ................................................. 59
`Google, LLC v. Uniloc Luxembourg S.A.,
`IPR2017-01665, Paper 10 (PTAB Jan. 11, 2018) ........................................ 58, 59
`Halliburton Energy Servs., Inc. v. Schlumberger Tech. Corp.,
`IPR2017-01777, Paper 13, 3 (PTAB Jan. 31, 2018) ............................................ 1
`Initiative for Responsibility in Drug Pricing LLC v. Wyeth LLC,
`IPR2014-01259, Paper 8 (PTAB Feb. 13, 2015) ................................................ 59
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .......................................................................... 37
`Parrot SA v. Drone Techs.,
`IPR2014-00732, Paper 29, 12 (PTAB Oct. 20, 2015) ........................................ 37
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .................................................................... 44, 48
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`Taylor v. Sturgell,
`553 U.S. 880 (2008) .......................................................................... 17, 18, 19, 20
`Toyota Motor Corp. v. Cellport Systems, Inc.,
`IPR2015-01423, Paper 7 (PTAB Oct. 28, 2015) ................................................ 59
`Tyco Fire Prods. LP v. Victaulic Co.,
`IPR2016-00278, Paper 13, 12 (PTAB Sept. 7, 2016)......................................... 38
`Wasica Fin. GmbH v. Continental Automotive Sys., Inc.,
`853 F. 3d 1272 (Fed. Cir. 2017) ......................................................................... 38
`ZOLL Lifecor Corp. v. Philips Elec. N. Am. Corp.,
`IPR2013-00606, Paper 13, 10 (PTAB Mar. 10, 2014) ....................................... 17
`ZTE (USA) Inc., v. Fundamental Innovation Systems Int’l LLC,
`IPR2018-00111, Paper 16, 19-22 (PTAB May 9, 2018). IPR2018-
`00111 ............................................................................................................passim
`Statutes
`35 U.S.C. § 253(a) ..................................................................................................... 1
`35 U.S.C. § 312(a)(2) ............................................................................................... 16
`35 U.S.C. § 315(b) ................................................................................................... 17
`35 U.S.C. § 315(d) ............................................................................................. 57, 59
`35 U.S.C. §325(d) .............................................................................................passim
`Other Authorities
`37 C.F.R. § 1.321(a). .................................................................................................. 1
`37 C.F.R. § 42.106(b) .............................................................................................. 17
`37 C.F.R. § 42.107(e) ................................................................................................. 1
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`EXHIBIT LIST
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`
`Ex. 2001 Declaration of Dr. Kenneth Fernald in Support of Fundamental
`Innovation Systems International LLC's Patent Owner
`Preliminary Response
`Ex. 2002 Excerpts from the USB 2.0 Specification Engineering Change
`Notice (ECN) #1: Mini-B connector, Date: 10/20/2000
`Ex. 2003 Excerpts from USB Complete, Jan Axelson, 1999
`Ex. 2004 U.S. 5,884,086 (Amoni)
`Ex. 2005 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)
`Ex. 2006 Excerpts from USB Complete (2d. Edition), Jan Axelson, 2001
`Ex. 2007 LG Corporation Annual Report (2016)
`Ex. 2008 LG Electronics Inc. Corporate Structure Tree
`Ex. 2009
`2016-2017 LG Electronics Sustainability Report
`Ex. 2010 Excerpts from LG Corporation Annual Report (2017) (translated
`from Korean)
`Ex. 2011 LG Corporation Key Developments Report
`Ex. 2012 Excerpts from claim construction order in Fundamental
`Innovation Systems Int'l LLC v. Samsung Electronics Co., Ltd.,
`Case No. 2:17-cv-145-JRG-RSP (E.D. Tex., Jan 31, 2018)
`Ex. 2013 Excerpts from claim construction order in Fundamental
`Innovation Systems Int'l LLC v. LG Electronics Inc., Case No.
`2:16-cv-1425-JRG-RSP (E.D. Tex., April 2, 2018)
`Ex. 2014 Excerpts from LG objections claim construction order in
`Fundamental Innovation Systems Int'l LLC v. LG Electronics
`Inc., Case No. 2:16-cv-1425-JRG-RSP (E.D. Tex., April 2,
`2018)
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`Case IPR2015-00592
`Patent 7,075,585
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`Ex. 2015 U.S. 6,531,845 (Kerai)
`Ex. 2016 U.S. 2005/0268000 (Carlson)
`Ex. 2017 USB 1.1
`Ex. 2018
`Statutory Disclaimer of Claims 3, 7, 10 and 13 of the '586 patent
`Ex. 2019 U.S. 6,904,488 (Matsumoto)
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioners 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.
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`INTRODUCTION
`The Petition should be denied because it fails to demonstrate a reasonable
`
`likelihood that any of the challenged claims are unpatentable.
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`As an initial matter, only the Grounds 1 and 3 and only claims 8-9 and 11-12
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`remain at issue. Grounds 2 and 4-6 are directed only to claims 10 and 13. Because
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`of a drafting error in the claims, a statutory disclaimer disclaiming claims 10 and
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`13 from the Patent has been filed and recorded in compliance with 35 U.S.C.
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`§ 253(a) and 37 C.F.R. § 1.321(a). Ex. 2018. "'No inter partes review will be
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`instituted based on disclaimed claims.'" Halliburton Energy Servs., Inc. v.
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`Schlumberger Tech. Corp., IPR2017-01777, Paper 13, 3 (PTAB Jan. 31, 2018)
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`(quoting 37 C.F.R. § 42.107(e)). Consequently, Grounds 2 and 4-6 cannot
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`possibly be a basis for institution.
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`The remaining grounds are centered on the combination of Dougherty, DeJaco
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`and Shiga. Petitioner contends it would have been obvious to replace Dougherty's
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`handshaking protocols with Shiga's SE1 signal as an "identification signal."
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`The Board has already rejected the same assertion that a POSA would have
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`used SE1 state instead of USB enumeration for identification purposes. ZTE (USA)
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`Inc., v. Fundamental Innovation Systems Int'l LLC, IPR2018-00111, Paper 16, 19-
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`22 (PTAB May 9, 2018). IPR2018-00111 concerned whether a patent from the same
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`family, with the same disclosure, was obvious over the combination of Rogers and
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`Shiga. There, as here, the petitioner argued that it was obvious to utilize Shiga's SE1
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`signal to indicate to a USB device that it is connected to a non-traditional USB power
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`source. Both there and here, the petitioners alleged that an SE1 signal was desirable
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`because it could be "easily distinguishable from USB standard signaling." Compare
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`IPR2018-00111, Paper 1, 43-44with Pet., 24. In both petitions, the petitioners
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`alleged that an SE1 signal would be a "logical" and "trivial" choice over the allegedly
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`more "complex and time-consuming" USB enumeration. Compare IPR2018-00111,
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`Paper 1, 44 with Pet., 24.
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`In both petitions, Petitioners failed to account for what a POSA would believe
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`were the deleterious consequences of the SE1 signal which the USB specification
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`states must "never" be "intentionally" sent. Ex. 1010, 123. 1 As the USB
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`specification makes clear and as the -00111 petitioner's litigation expert has
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`confirmed, an SE1 signal lasting longer than 2.5 micro-seconds will disable a USB
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`port of a USB host (such as Dougherty's laptop). Ex. 2005, 259-61; Ex. 1010, 316.
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`Shiga's signal lasts "50 ms." Ex. 1008, 6:43-47. Under Petitioner's proposal, an SE1
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`signal from Dougherty's docking station would cause Dougherty's laptop to
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`"disconnect its USB port to isolate the device from the rest of the bus." Ex. 2005,
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`1 Citations to Exs. 1010, 2005, 2006, and 2016 are to the original page
`numbers.
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`260:5-13. SE1 thus interrupts the USB communication. This interruption lasts until
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`the host and the attached device complete a new USB enumeration. Id., 261:25-
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`262:4. But because Petitioner proposes that the docking station should continue to
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`send SE1 signals, Dougherty's USB port would undergo a "continual loop" of
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`disconnecting and attempting to reconnect, "interfering with the operation of the
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`port." Ex. 2001, ¶37.
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`Programming Dougherty's USB host to treat an SE1 signal as an identification
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`signal for a docking station also has high risk: if the USB host does not timely
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`disconnect the port, it "can cause system errors that are very difficult to isolate and
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`correct." Ex. 1010, 316.
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`The Board in the -00111 case, faced with substantially the same evidence and
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`arguments, found that, "Petitioner has not sufficiently explained why one of ordinary
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`skill in the art would have sought to utilize Shiga's SE1 signal in Rogers' system with
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`a reasonable expectation of success." IPR2018-00111, Paper 16, 20. As the Board
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`explained, "Petitioner and [its expert] do not explain how a port-disabling SE1 signal
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`could be used in Rogers' system without interfering with standard USB signaling."
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`Id., 21. Additionally, here, as there, Petitioners identify mostly the same ancillary
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`references—Casebolt, Cypress and Shiga—to support their proposal of using an SE1
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`signal. Ex. 2001, ¶¶48-49. The additional ancillary references are cumulative of the
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`SE1 references raised in IPR2018-00111: (1) Sonoda, like Casebolt and Cypress,
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`use SE1 in connection with a PS/2 device that cannot undergo USB communications;
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`and (2) Zyskowski, like Kerai (Ex. 2015, 5:45-51), do not even involve detecting for
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`logic highs on both data lines (Ex. 1021 [0019]); Ex. 2001, ¶¶44-47. The Board
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`rejected that as well, finding that "Patent Owner also provides persuasive analysis
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`demonstrating that in the prior art references relied upon by Petitioner, continued
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`USB communication between the device and the host is not contemplated after the
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`SE1 signal is sent." IPR2018-00111, Paper 16, 21.
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`Replacing Rogers with Dougherty is a distinction without a difference
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`because the Board's reasons for rejecting the combination focused exclusively on the
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`Petitioners' failure to account for the "port-disabling" nature of Shiga's SE1 signal.
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`Because this Petition presents substantively the same theory as supported by
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`substantially the same evidence, this Petition should be denied. See Section VII.A.
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`Other fatal flaws exist. As an initial matter, the Petition fails to properly
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`identify its parent corporation, LG Corporation, as a real party-in-interest. See
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`Section VI.
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`The Petition also fails to establish that Shiga and Kalogeropoulos are
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`analogous art to the challenged '586 patent. Instead, the Petition merely alleges that
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`they are analogous art to Dougherty, the primary reference. See Section VII.B.
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`As to claims 8 and 9, the Petition fails to adequately explain how the
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`Dougherty/Shiga combination discloses the use of an SE1 signal as an "identification
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`signal" of any sort much less a "signal that identifies a power source type" as that
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`term is properly construed. Shiga employs an SE1 signal to wake up a dormant
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`computer, not as an identification signal. Additionally, Shiga sends the SE1 signals
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`to analog comparators at a time when signaling to the USB chip is disconnected,
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`which would indicate to a POSA that Shiga would not commend sending an SE1
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`signal to a "microprocessor and memory" for processing as required by claims 11
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`and 12.
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`Furthermore, the Petition falls well short of demonstrating prima facie
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`obviousness. Even beyond the fatal deficiencies found by the Board already in
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`IPR2018-00111, the Petition fails to adequately explain why a POSA would
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`eliminate Dougherty's USB-standard handshaking (enumeration) protocol in favor
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`of the forbidden SE1, when such modification would frustrate Dougherty docking
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`station's core port replication functionality because Dougherty's laptop would not be
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`able to access any USB function of the docking station without USB enumeration.
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`LGE-1010, 243, § 9.1.1.5 ("Before a USB device's function may be used, the device
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`must be configured); 243-44 (configuration that last step of enumeration). The
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`Petition also fails to colorably explain why a POSA would take such an approach
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`while ignoring the many other known options for establishing identification.
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`Moreover, given the large number of duplicative petitions, the Board should
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`exercise its discretion to deny institution under 35 U.S.C. §325(d). Thirteen petitions
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`have been filed based on the Dougherty-Shiga combination, including in IPR2018-
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`00485 also directed towards the '586 patent. No good reason exists for the Board to
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`consider a Dougherty/Shiga combination thirteen separate times and twice against
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`the '586 patent.
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`II.
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`SUMMARY OF THE '586 PATENT
`The '586 Patent discloses methods and apparatuses that allow a mobile device
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`to draw current at higher rates than permitted by the USB Specification to permit
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`faster recharging. See, e.g., Ex. 1001, 2:57-65, 8:9-14. The '586 Patent teaches that
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`this higher current draw is in response to an identification signal on USB data lines.
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`See, e.g., id. at 8:15-18.
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`At the time of the invention, devices with a USB data interface typically did
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`not use the USB interface as a power interface. Id., 1:45-48. A problem with using
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`a USB interface as a power interface is that it requires enumeration between the
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`power source and device. Id., 1:56-62.
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`The methods and apparatuses disclosed in the '586 Patent refer to use of "an
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`identification signal." See, e.g., id. at 2:19-21, 2:57-65; 3:5-13; 8:15-34. In the USB
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`2.0 Specification, data is typically sent as differential pairs. Ex. 1010, 19, 123. The
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`USB 2.0 specification also defines other allowable signals for use under specified
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`conditions. Id., 119-120; see generally id., Chapter 7. One signal that is expressly
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`not allowable is Single-Ended 1, or "SE1." Id., 123. "SE1 is a state in which both
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`the D+ and D- lines are at a voltage above VOSE1 (min), which is 0.8 V." Id. The
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`detection of SE1 indicates an error condition, and the USB specification stipulates
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`that "USB drivers must never 'intentionally' generate an SE1 on the bus." Id.
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`Despite the perceived importance of compliance with communications
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`protocols in the USB Specification, the inventors of the '586 Patent recognized that
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`this SE1 state could, contrary to the dogma of the time, be used carefully to signal
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`that a device was connected to a specially-configured USB power supply, such as a
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`USB Adapter, instead of a USB Host or Hub. Ex. 1001, 9:8-52. In this case, the
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`device could charge its battery without waiting for USB enumeration, as seen in
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`Figure 3 of the '586 Patent, which is described as "a flow chart illustrating an
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`exemplary use of a USB adapter with a mobile device":
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`Id., 3:25-26, Fig. 3.
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`This use of an abnormal USB data condition allows the mobile device to draw
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`current unrestricted by the USB Specification limit. This could include drawing
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`more than 100 mA of current without enumeration or more than 500 mA, the
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`maximally allowed current under USB 2.0. Id., 8:9-14.
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`III. THE PRIOR ART REFERENCES DIFFER FROM THE '586
`INVENTIONS
`The Petition proposes that a POSA would have arrived at the inventions set
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`forth in the '586 patent by starting with the docking station of Dougherty and
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`employing Shiga's SE1 signal as an "identification signal." To that combination, the
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`Petition adds ancillary references DeJaco and Kalogeropoulos for particular
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`limitations. Even in combination, the asserted references differ greatly from the
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`inventions claimed in the '586 patent. An overview of Petitioners' primary
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`references, Dougherty and Shiga, is provided below.
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`A. Dougherty Overview
`1.
`Dougherty's Docking Station
`Dougherty's docking station is used to "expand the capabilities of the 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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`1005, 1:63-67. One way to achieve this expansion is via "port replication across a
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`USB port." Id., 2:25. 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., 2:17-20. 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
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`batteries in the laptop computer while docked without the need to plug in a separate
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`power connection . . . ." Id., 2:45-49 (emphasis added).
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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., 1:64-67
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`("Docking . . . may expand the capabilities of the laptop computer to include . . .
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`functionality typically associated only with desktop computing devices."), 2:18-20
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`(using port replication to make more ports "available for connection to printers,
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`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., 2:25-30 ("[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, ¶58. For this reason, Dougherty's "laptop
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`computer 100 of the preferred embodiment does not modify operation of the serial
`
`communication conductors 126 of the USB protocol" (i.e., the D+ and D- data lines).
`
`Ex. 1005, 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. Id., 2:45-49 ("it would be desirable to have a USB based docking
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`station that has the capability of both operating the laptop computer and charging
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`the batteries in the laptop computer while docked without the need to plug in a
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`separate power connection"); see also, e.g., id., 2:55-58 ("The problems noted above
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`are solved in large part by a laptop computer and related docking station adapted to
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`supply power from the docking station to the laptop computer across the USB
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`connection.").
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`Dougherty's docking station is designed to supply power at up to 18V and
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`2.5A when the laptop is in full operation over the VBUS and GND power lines. Id.,
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`7:20-55. Dougherty teaches the use of the VBUS and GND lines to send the
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`communications necessary "to establish whether laptop computer [] is capable of
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`receiving power from the docking station." Id., 5:3-7. This communication takes
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`place after a handshaking (or enumeration) process under "normal USB protocols."
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`Id., 5:39-6:17; Ex. 2001, ¶69. Dougherty teaches that the USB communication lines
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`maintain their standard operation:
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`Referring to FIG. 1, the laptop computer 100 of the preferred
`embodiment does not modify operation of the serial communication
`conductors 126 of the USB protocol.
`Ex. 1005, 4:67-5-7 (emphasis added); see also id. at 6:13-18, Fig. 1 (explaining that
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`docking logic 134 is coupled to the power lines 138, not the communication lines
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`126).
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`There is no disclosure or discussion of using the USB communication lines
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`(D+ and D-) to send an identification signal being different than USB enumeration.
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`This is not an accident. Those lines need to be used for normal USB communication.
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`Ex. 2001, ¶58.
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`3.
`Dougherty's Docking Station Logic
`Dougherty applies docking station logic in two separate scenarios: (1) where
`
`the laptop is already operational before connection to the docking station, and (2)
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`where the laptop is non-operational upon connection to the docking station (for
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`example, because the laptop's battery is dead or removed).
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`(a) Docking When Laptop Is Operational
`In the "operational" scenario, Dougherty teaches a multi-step process when
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`the docking station is connected to the laptop via a USB cable. The first step is to
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`engage in a "normal USB protocol," which "requires a series of USB handshaking
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`protocols to identify both the . . . laptop computer 100, and . . . the docking station
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`200." Ex. 1005, 5:38-43. The handshaking protocol to "identify" the host and the
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`docking station is enumeration as described in the USB specification, which is a
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`process used by the host to "to identify and manage the device state changes
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`necessary." Ex. 1010, 243; Ex. 2001, ¶16. Notably, if Dougherty were to skip this
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`handshaking protocol and thus not perform USB enumeration, it would render the
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`docking station unable to perform its primary role as a USB hub expander, because
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`enumeration is the basic threshold element to allow a hub to communicate with
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`additional USB devices. Ex. 1010, 243 ("Before a USB device's function may be
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`used, the device must be configured"); Id., 243-44 (configuration is the last step of
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`enumeration); Ex. 2001, ¶28. A detailed description of the steps involved in the
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`enumeration process, per the USB 2.0 specification, is described in Section II.A of
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`Dr. Fernald's declaration. Ex. 2001, ¶¶16-29.
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`Dougherty's docking station then uses the USB enumeration protocol to
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`command the laptop to load a USB device driver and shut off the laptop's VBUS
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`supply voltage to the docking station. Ex. 1005, 5:53-58. The driver loaded by the
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`operating system "may provide many functions," such as enabling access to
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`peripheral devices through port replication. Id., 5:55-56; Ex. 2001, ¶27. This is not
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`surprising given that the docking station's primary function is port replication. Id.,
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`1:61-67, 2:24-28. The driver also contains code that "preferably turns off the laptop
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`computer's ability to provide five volts to the power rails 138." Id., 5:57-58. This is
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`because normally the host (laptop) supplies power to the peripherals, but in this case,
`
`the docking station will supply power when the laptop is docked. Id., 5:15-18, 4:55-
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`58.
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`Finally, upon detecting no voltage on the USB VBUS line (e.g., when the
`
`laptop has turned off its supply voltage on the VBUS line as commanded), the
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`docking station logic 234 attempts to "establish that the laptop computer to which it
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`is docked is capable of receiving power," which is "done by attempting to establish
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`communications across the power rails 138 of the USB connector." Id., 6:4-36. After
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`confirming that the laptop is capable of receiving power, the docking station
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`increases the voltage supply to the laptop to as much as 18 volts and 2.5 amps. Id.,
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`7:10-41.
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`If the laptop is nonoperational at the time it is connected to the docking station,
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`Dougherty skips the USB standard handshaking protocol and Dougherty's docking
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`logic communicates with the laptop to establish that it can receive power and
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`supplies power accordingly. Id., 6:4-11. This communication occurs over the power
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`lines and is the same as the last two steps of the operational mode descr
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