Paper 10
`Trials@uspto.gov
`Entered: August 30, 2018
`Tel: 571-272-7822
`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.,
`Petitioner
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`
`IPR2018-00493
`Patent 7,834,586 B2
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: August 30, 2018
`Tel: 571-272-7822
`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.,
`Petitioner
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`
`IPR2018-00493
`Patent 7,834,586 B2
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`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
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`IPR2018-00493
`Patent 7,834,586 B2
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`
`I.
`
`INTRODUCTION
`
`LG Electronics, Inc. et al. (“Petitioner”), filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 8–13 of U.S. Patent
`7,834,586 B2 (Ex. 1001, “the ’586 Patent”). Petitioner supports its Petition
`with the Declaration of Jonathan R. Wood, Ph.D. (Ex. 1003). Fundamental
`Innovation Systems International LLC (“Patent Owner”), timely filed a
`Preliminary Response (Paper 6, “Prelim. Resp.”). Patent Owner supports its
`Preliminary Response with the Declaration of Dr. Kenneth Fernald (Ex.
`2001).
`Petitioner’s asserted grounds of unpatentability numbered 2 and 4–6
`are directed to claims 10 and 13 of the ’586 Patent. Pet. 12. Subsequent to
`the filing of the Petition, on June 8, 2018, Patent Owner filed a Statutory
`Disclaimer, in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a),
`of claims 3, 7, 10, and 13. Ex. 2018, 3. 37 C.F.R. § 42.107(e) provides that
`“[n]o inter partes review will be instituted based on disclaimed claims.”
`Consequently, we do not consider Petitioner’s grounds numbered 2 and 4–6
`herein.
` We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Taking into account the evidence and arguments presented in the Petition
`and the Preliminary Response, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing with respect to any
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`challenged claim of the ’586 Patent. Therefore, we do not institute an inter
`partes review.
`
`A. Related Matters
`The parties identify Civil Actions No. 2:17-cv-00145, No. 2:16-cv-
`01424, and No. 2:16-cv-01425, in the Eastern District of Texas and Civil
`Action No. 3:17-cv-01827 in the Northern District of Texas as involving the
`’586 Patent. Pet. 1–2, Paper 4, 1. The parties also identify IPR2018-00485
`as having been filed against the ’586 Patent. Pet. 2, Paper 4, 3.
`B. Technology Background:
`USB 2.0 Compliant Cables
`An overview of Universal Serial Bus (“USB”) cables is helpful in
`understanding the technology involved in the ’586 Patent which relates to
`charging a mobile device through a USB connector. See Ex. 1001, Fig. 3.
`Cables compliant with the USB 2.0 standard have four conductors: VBUS,
`D+, D-, and GND. Ex. 1010, 17–18, 86. The VBUS and GND conductors
`of the USB cable are used to deliver power to devices and the D+ and D-
`conductors carry communication signals between a USB host and a
`connected device. Ex. 1010, 17–18; Ex. 1001, 6:65–7:3; Ex. 1005, 4:62–66.
`Figure 4–2 of the USB 2.0 specification, reproduced below, depicts these
`four conductors within a USB cable:
`
`Ex. 1008, 17.
`Figure 4–2 depicts conductors within a USB cable.
`
`
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`C. The ’586 Patent
`
`The ’586 Patent is titled “Multifunctional Charger System and
`Method.” Ex. 1001, Title. The ’586 Patent discloses “a USB adapter for
`providing a source of power to a mobile device through a USB port.” Id. at
`2:21–22. The ’586 Patent explains that although it was understood in the art
`that a USB interface could be used as a power interface, it was typically not
`used for that purpose by mobile devices. Id. at 1:55–56. This is because
`USB hubs and hosts require USB devices “to participate in a host-initiated
`process called enumeration in order to be compliant” with the USB
`specification in drawing power from the USB interface, and “alternate power
`sources such as conventional AC outlets and DC car sockets” were “not
`capable of participating in enumeration.” Id. at 1:58–2:3. Additionally, “the
`power limits imposed by the USB Specification” limit the amount of power
`available to charge a battery. Id. at 2:64–65.
`
`In order to, inter alia, avoid the power limits imposed by the USB
`Specification, the ’586 Patent discloses a USB adapter and a method for
`charging that is capable of providing power to a mobile device without first
`participating in USB enumeration. Id. at 9:18–34. Figure 2 of the ’586
`Patent, reproduced below, is a schematic diagram of the disclosed USB
`adapter coupled to an exemplary mobile device (id. at 3:25–26):
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`As shown in Figure 2, USB adapter 100 comprises primary USB connector
`102, power converter 104, plug unit 106, identification subsystem 108, and
`auxiliary USB connector 112. Id. at 6:49–60. The ’586 Patent discloses that
`when USB adapter 100 is connected to mobile device 10 via USB connector
`54 of mobile device 10 and USB connector 102 of USB adapter 100,
`identification subsystem 108 provides an identification signal to mobile
`device 10 indicating that the power source is not a USB limited source. Id.
`at 6:63–65, 8:15–17. This identification signal “could be the communication
`of a single voltage on one or more of the USB data lines, different voltages
`on the two data lines, a series of pulses or voltage level changes, or other
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`types of electrical signals.” Id. at 8:17–21. “The preferred identification
`signal,” however, “results from the application of voltage signals greater
`than 2 volts to both the D+ and D- lines in the USB connector.” Id. at
`9:13–15.
`
`An example of the method of identification is shown in Figure 3 of
`the ’586 Patent. Ex. 1001, 9:15–17. Figure 3, reproduced below is “a flow
`chart illustrating an exemplary use of a USB adapter with a mobile device.”
`Id. at 3:35–26.
`
`
`As shown in Figure 3, the first step 210 in the method is detection of voltage
`on the Vbus line of the USB connector 54. Id. at 9:18–20. At step 220,
`mobile device 10 “checks the state of the D+ and D- lines of the USB
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`connector.” Id. at 9:20–21. If the voltage on both the D+ and D- lines is
`greater than 2 volts, “the mobile device 10 determines that the device
`connected to the USB connector 54 is not a typical USB host or hub and that
`a USB adapter 100 has been detected (step 230).” Id. at 9:28–31.
`Thereafter, mobile device 10 can charge its battery without USB
`enumeration at step 260. Id. at 9:31–34. If the voltage on the D+ and D-
`lines are both less than 2V at step 220, mobile device 10 determines that a
`USB host or hub is detected at step 240, undergoes enumeration at step 250,
`and after enumeration charges the battery in accordance with the power
`limits imposed by the USB specification. Id. at 9:35–47. If mobile device
`10 charges its battery by means of USB adapter 100 without enumeration,
`“mobile device 10 can disable its typical USB functions.” Id. at 9:57–59.
`D. Illustrative Claims
`
`Independent claims 8 and 11 are illustrative of the challenged claims
`and are reproduced below:
`8. A method of charging a battery in a mobile device, the
`mobile device
`configurable
`for use
`in
`a wireless
`telecommunications network, comprising:
`providing a Universal Serial Bus (“USB”) interface
`configured to allow reception of a USB cable, and, receiving
`power on a V-bus power line at the USB interface;
`providing an operable connection between the power
`received at the USB interface on the V-bus power line and a
`charging subsystem;
`having a battery in operable connection to the charging
`subsystem;
`providing power to the battery using the charger
`subsystem; and
`detecting an identification signal at a D+ and D- data line
`of the USB interface, the identification signal being different
`than USB enumeration.
`
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`Ex. 1001, 12:31–46.
`11. A method of charging a battery in a mobile device, the
`mobile device
`configurable
`for use
`in
`a wireless
`telecommunications network, comprising:
`providing a Universal Serial Bus (“Bus”) interface configured to
`allow reception of a USB cable, and, receiving power on a V-bus
`power line at the USB interface;
`providing an operable connection between the power received
`at the USB interface on the V-bus power line and a charging
`subsystem;
`having a battery in operable connection to the charging
`subsystem;
`providing power to the battery using the charger subsystem in
`one of a plurality of charge modes;
`using a microprocessor and memory to process the signals
`received on the USB interface data lines, such that an
`identification signal received at the D+ and D- lines indicating a
`charging connection is available is recognized by the device.
`Id. at 12:53–13:3.
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 8, 9, 11, and 12 of the ’586 Patent based
`on the asserted grounds of unpatentability set forth in the following table.
`Pet. 15–44, 52–62.
`
`Reference[s]
`Dougherty,1 DeJaco2,
`and Shiga3
`
`1 US Patent No. 7,360,004 B2, issued Apr. 15, 2008 (Ex. 1005,
`“Dougherty”).
`2 US Patent No. 6,745,024 B1, issued June 1, 2004 (Ex. 1006, “DeJaco”).
`3 US Patent No. 6,625,738 B1, issued Sept. 23, 2003 (Ex. 1008, “Shiga”).
`
`Claims challenged
`8 and 9
`
`Basis
`§ 103
`
`8
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`
`Dougherty, DeJaco,
`Shiga and
`Kalogeropoulos4
`
`
`
`§ 103
`
`11 and 12
`
`II. ANALYSIS
`A. Overview
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) when in evidence, objective indicia of non-
`obviousness (i.e., secondary considerations). Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). We analyze the asserted obviousness grounds
`with these principles in mind.
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`
`
`4 US Patent No. 6,337,560 B1, issued Jan. 8, 2002 (Ex. 1012,
`“Kalogeropoulos”).
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`
`Petitioner provides a proposed construction for the term “USB
`enumeration.” Pet. 10–11. Patent Owner does not propose a construction
`for “USB enumeration,” but offers a construction of the claim term
`“identification signal.” Prelim. Resp. 16. Upon review of the parties’
`arguments and supporting evidence, we determine that no claim terms
`require express construction for purposes of this Decision. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”)).
`C. Claims 8 and 9
`Petitioner contends that claims 8 and 9 are unpatentable under 35
`U.S.C. § 103(a) over the combined teachings of Dougherty, DeJaco, and
`Shiga. Pet. 15–44. We begin our analysis with brief overviews of
`Dougherty, DeJaco, and Shiga. We then address the parties’ respective
`contentions with respect to the challenged claims.
`1. Dougherty
`Dougherty is directed to using a docking station to provide power to a
`laptop computer. Ex. 1005, Abstract. Figure 1 of Dougherty, reproduced
`below with Petitioner’s annotations5 (Pet. 16), illustrates a preferred
`embodiment of Dougherty’s computer system. Ex. 1005, 3:17–18.
`
`
`5 Petitioner’s annotations are not contested by the parties and illustrate
`unlabeled portions of the figure.
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`As shown in Figure 1, above, Dougherty’s laptop computer 100 and
`docking station 200 are operatively coupled by their respective USB
`connectors 136 and 236 respectively. Id. at 5:11–14. Laptop computer 100
`utilizes docking station 200 to provide a plurality of USB ports for attaching
`peripheral devices to laptop computer 100.6 See id. 1:61–67, 2:24–28.
`Recognizing that laptop computers require a source of power, which was
`previously provided by a connector separate from the docking station,
`
`
`6 In the USB Specification, a computer, such as Douhherty’s laptop, is
`referred to as the USB host and a docking station is referred to as a USB
`hub. Ex. 1010, 6, 22–23; Ex. 1005 5:38–42; Ex. 1003 ¶ 32; Ex. 2001 ¶ 15.
`Further, the hub, which is a USB device, undergoes enumeration. Ex. 1010,
`3
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`Dougherty’s invention relates to supplying “power from the docking station
`to the laptop computer across the USB connection.” Id. at 2:55–58.
`In order to charge the laptop battery 132, Dougherty discloses using
`the USB power lines (Vbus and Ground) to communicate with the laptop.
`Dougherty discloses that, under USB protocol, power lines 138 carry five
`volts. Id. at 4:66–47. Dougherty explains:
`Referring to Figure 1, the laptop computer 100 of the preferred
`embodiment does not modify operation of the serial communication
`conductors 126 of the USB protocol. Preferably all communications
`to establish whether laptop computer 100 is capable of receiving
`power from the docking station 200 take place over the power
`conductors or power rails 138 of the USB cable connector.
`
`Id. at 4:67–5:7; see also id. at 6:14–18.
`Dougherty discloses that “coupling of USB devices requires a series
`of handshaking protocols to identify the host . . . which would be the laptop
`computer 100, and any downstream, device, which in this exemplary case is
`the docking station 200.” Id. at 5:39–43. Dougherty further discloses that
`the laptop engages in standard USB enumeration over the USB serial
`communication lines (D+ and D-) with the docking station to determine that
`the docking station is capable of providing power to the laptop. Id. at 5:38–
`52.
`
`2. DeJaco
`De Jaco discloses “wireless modems connected to laptop computers.”
`Ex. 1006, 4:59–60.
`3. Shiga
`
`Shiga discloses turning on a computer power supply by means of
`signals transmitted over signal lines “of a USB chip provided in a
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`keyboard.” Ex. 1008, Abstract. Figure 1 of Shiga, reproduced with
`Petitioner’s annotations7 (Pet. 21), “is a structural view of an embodiment of
`the apparatus for turning on a computer power supply.” Ex. 1008 at 4:6–8.
`
`
`
`
`As shown in Figure 1, above, Shiga’s USB connected keyboard 11
`
`starts the host computer “by a key input operation at a keyboard.” Id. at 2:4–
`8. Shiga’s keyboard signals “a wake-up means” in the computer when a
`power-on key is pressed on the keyboard. Id. at 3:1–7.
`
`Shiga explains that pursuant to the USB specification, when a host
`computer is in a suspended mode there are three standard signal line states.
`
`
`7 Petitioner’s annotations are not contested by the parties and illustrate
`unlabeled portions of the figure.
`
`13
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`Id. at 5:46–54. Table 1 of Shiga, reproduced below, shows these standard
`signal line states:
`
`
`
`Id. at Table 1. As shown in Table 1, in the first, or low speed state, signal
`line D+ is in an L (Hi-Z or high impedance) state and D- is in an H (high
`level) state. Id. at 5:55–57. In the second, or high speed state, signal line
`D+ is in the H state and signal line D- is in the L state. Id. at 5:58–59. In
`the third, or unconnected state, both D- and D+ signal lines are in the L state.
`Id. at 5:59–60. In addition to these three standard signal line states, Shiga
`discloses that the signal lines may also be placed into a fourth, non-standard
`state, wherein both the D+ and D- signal lines are in the H state. Id. at 5:60–
`62, 6:48–58. Shiga provides this non-standard, or “fourth mode” signal, to a
`“wakeup means” in response to a user pressing the keyboard’s power-on
`key. Id. at 3:1–3, 4:33–53, 6:59–65. Shiga explains that, because this line
`state is not a standard USB state and is provided as a 50 ms pulse at 3 volts,
`it is “easily distinguished from USB standard data signals.” Id. at 6:48–58.
`4. Analysis
`i.
`Petitioner’s Contentions
`
`Petitioner contends that claims 8 and 9 of the ’586 Patent are
`unpatentable over the combined teachings of Dougherty, DeJaco, and Shiga.
`Pet. 15–44. Specifically, Petitioner contends that Dougherty in combination
`with Shiga renders obvious the claim 8 limitation “detecting an
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`identification signal at a D+ and a D- data line of the USB interface.” Id. at
`40 (citing Ex. 1003 ¶¶ 133–139).
`Petitioner contends that one of ordinary skill in the art would
`understand that Dougherty’s “‘signal communication conductors 126,’ part
`of its ‘standard USB communication cable,’ are ‘a D+ and a D- data line.’”
`Id. at 40–41 (citing Ex. 1003 ¶¶ 134–135; Ex. 1005, 4:61–65, 8:66–9:4; Ex.
`1010, 18, Fig. 4–2). Petitioner then contends that Dougherty discloses “that
`a handshake protocol provides an identification signal over serial conductors
`126, indicating to the laptop that the docking station can provide power” and
`that “Shiga teaches a signaling technique by which Dougherty’s
`handshaking would be reduced to a single identification signal (e.g., the SE1
`state where 3 volts is applied on the D+ and D- lines).” Id. at 41 (citing Ex.
`1001, 5:43-48; Ex. 1003, ¶¶ 136–137; Ex. 1008, 6:34–40). Petitioner
`contends that
`[i]t would have been obvious to a POSITA to generate an
`identification signal (i.e., SE1 state) in Dougherty’s system, as Shiga
`teaches, because it would allow the docking station of Dougherty to
`identify itself to the laptop without using a “series of USB handshake
`protocols,” thereby furthering Dougherty’s goal of “reducing the time
`and complexity to couple the laptop to the docking station.” . . .
`A POSITA would have understood that by combining Shiga’s
`teaching with Dougherty, one would replace the handshake procedure
`in Dougherty with the SE1 state, so as to reduce latency and
`complexity.
`
`Id. at 42 (citing Ex. 1005, 2:49–51, 5:39–42; Ex. 1003 ¶ 138); see also id. at
`24 (“using an SE1 state, as Shiga teaches, would have been a logical and
`trivial alternative for signaling between Dougherty’s laptop and docking
`station, rather than the complex and time-consuming handshake protocol of
`Dougherty”). Petitioner further contends that “[m]odifying Dougherty’s
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`handshaking based on Shiga would have produced operable and predictable
`results” and any required modifications to Dougherty “would have been
`within the level of [one of] ordinary skill in the art.” Id. at 25.
`
`Petitioner also contends that Dougherty in combination with Shiga
`establishes the claim 8 limitation “the identification signal being different
`than USB enumeration.” Id. at 43. Petitioner contends that because the
`proposed combination of “Dougherty/Shiga replaces the USB handshaking
`protocol by the identification signal (i.e., SE1 state), which is ‘not a USB
`standard mode,’ enumeration steps would not occur in order to charge the
`laptop’s battery.” Id. (citing Ex. 1003 ¶ 141, Ex. 1008, 6:48–58, Ex. 1010,
`243–44). Petitioner concludes that “the identification signal (i.e., SE1 state)
`of the proposed combination is ‘different than USB enumeration,’ as
`claimed.” Id. (citing Ex. 1003 ¶ 142).
`ii.
`Patent Owner’s Contentions
`
`Patent Owner contends, inter alia, that Petitioner fails to provide
`
`sufficient evidence to support its assertion of a motivation to combine
`Dougherty and Shiga (Prelim. Resp. 43–55). Specifically, in this Decision,
`we focus on Patent Owner’s arguments regarding replacing Dougherty’s
`USB enumeration with Shiga’s SE1 signal. See id.
`Patent Owner, relying on the USB Specification and Declaration
`Testimony from its expert, contends that “the USB specification warns that
`an SE1 state should never be intentionally generated.” Prelim. Resp. 28
`(citing Ex. 1010, 123, Ex. 2001 ¶ 34.); see also Ex. 1003 ¶ 40. Patent
`Owner further contends that the USB “specification provides that an SE1
`signal lasting more than 2.5 microseconds or more can cause the attached
`device to reset, and if the hub does not disconnect the port, ‘system errors
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`that are very difficult to isolate and correct’ may result.” Prelim. Resp. 28
`(citing Ex. 1010, 316; Ex. 2001 ¶ 36). In that regard, Patent Owner notes
`that Shiga’s SE1 signal lasts 50 milliseconds. Id. at 30 (citing Ex. 1008,
`6:48–58).
`Patent Owner contends the Petition fails to explain how or why one of
`ordinary skill in the art would “abandon ‘normal USB communication’ in
`favor of a prohibited SE1 signal” in light of Dougherty’s disclosure that
`“normal USB protocol” should “be observed across the USB communication
`port, because normal USB communication is the primary purpose of the
`laptop/docking station interaction.” Id. at 49 (citing Ex. 1005, 5:1–3, 5:39–
`43). Patent Owner additionally contends that even if Dougherty’s laptop
`were able to “recognize and respond to the SE1 signal (as opposed to
`shutting down communication as taught by the USB specification), a POSA
`would still not believe that the combination would work because the laptop
`would then be unable to respond to appropriate ‘true’ SE1 signals [error
`signals] generated by connected USB devices” as required by the USB
`specification. Id. (citing Ex. 1010, 316; Ex. 2001 ¶ 78). According to Patent
`Owner, this would lead one of ordinary skill in the art to conclude that
`Petitioner’s proposed combination is unworkable or, at a minimum, lacks a
`reasonable expectation of success. Id. at 50 (citing Ex. 1010, 316; Ex. 2001
`¶ 79).
`Patent Owner next contends that one of ordinary skill in the art would
`believe that Petitioner’s modification of Dougherty would disable
`Dougherty’s primary functionality of using the docking station to “expand
`the ports available for attaching USB peripherals to the laptop.” Id. at 50–
`51. According to Patent Owner, Dougherty’s “handshaking protocol is
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`‘require[d]’ for USB communications between the laptop and peripheral
`devices (such as a USB printer, mouse, or display) attached to the docking
`station.” Id. at 51 (citing Ex. 1005, 5:38–52). Patent Owner then contends
`that “[w]ithout handshaking, per Dougherty, the laptop cannot couple to or
`use any of the peripheral USB devices” and therefore one of ordinary skill in
`the art “would believe that Petitioner’s suggested modification would render
`the docking station’s primary port expansion functionality unusable.” Id. at
`52.
`
`Patent Owner next contends that Petitioner fails to explain why one of
`ordinary skill in the art would have chosen an SE1 signal as the
`identification signal over other known alternatives. Id. at 53–55. Most
`pertinently, Patent Owner submits that Petitioner fails to explain why one of
`ordinary skill in the art would not have used non-data lines for the
`identification signal when Dougherty specifically discloses using USB
`power lines for signaling. Id. (citing Ex. 1005, 5:3–7).
`iii. Conclusion re Claims 8 and 9
`
`We are mindful that “[t]he test for obviousness is not whether the
`features of a secondary reference may be bodily incorporated into the
`structure of the primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA
`1981); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re
`Keller, 642 F.2d at 425), but rather whether “a skilled artisan would have
`been motivated to combine the teachings of the prior art references to
`achieve the claimed invention,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
`1361 (Fed. Cir. 2007). In order to show sufficient motivation to combine
`references, Petitioner must present “articulated reasoning with some rational
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`underpinning” for combining Dougherty and Shiga. See In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006).
`In that regard, Petitioner fails to “explain why a person of ordinary
`skill in the art would have combined elements from specific references in the
`way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon
`Comms., Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Hyundai
`Motor Co. v. Blitzsafe Texas, LLC, Case IPR2016–01476, slip op. at 32
`(PTAB Jan. 24, 2017) (Paper 12) (“A determination of obviousness cannot
`be reached where the record lacks ‘explanation as to how or why the
`references would be combined to produce the claimed invention.’” (quoting
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)
`(emphasis added))). Specifically, neither Petitioner nor its declarant
`explains sufficiently why one would seek to replace Dougherty’s USB
`enumeration process with an SE1 signal as taught by Shiga except by
`hindsight and/or how that replacement would be accomplished. See W.L.
`Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)
`(“To imbue one of ordinary skill in the art with knowledge of the invention
`in suit, when no prior art reference or references of record convey or suggest
`that knowledge, is to fall victim to the insidious effect of a hindsight
`syndrome wherein that which only the inventor taught is used against its
`teacher.”).
`As to why the combination would be made, Petitioner’s explanation is
`not sufficient to establish the requisite “articulated reasoning with some
`rational underpinning” for combining Dougherty and Shiga. Petitioner’s
`reasoning that replacing Dougherty’s handshaking protocol with Shiga’s
`SE1 signal would “reduce latency and complexity” is insufficient for the
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`following reasons. First, according to Petitioner, it is based on an alleged
`goal of Dougherty of “reducing the time and complexity to couple the laptop
`to the docking station.” Pet. 42 (quoting Ex. 1005, 2:49–51). However, this
`parsed quotation mischaracterizes the disclosure of Dougherty. The entire
`quote is “it would be desirable to have a USB based docking station that has
`the capability of both operating the laptop computer while docked without
`the need to plug in a separate power connection, thus reducing the time and
`complexity to couple the laptop to the docking unit.” Ex. 1005, 2:45–50.
`Thus, the “complexity” in Dougherty refers to using two separate connectors
`and associated circuitry, i.e., one for a power connection and one for the
`USB connector for the docking station. Petitioner fails to sufficiently
`explain why Dougherty’s desire to reduce complexity by adopting a single
`connection for power and coupling the laptop to the docking station would
`have led a person of ordinary skill in the art to modify Dougherty’s USB
`signaling, which entails communicating between the laptop and the docking
`station over the power rails 138 in a manner that does not disturb the normal
`USB enumeration process over the serial communication conductors. Ex.
`1005, 4:67–5:3. Additionally, Petitioner’s expert fails to provide sufficient
`evidence concerning the time required for USB enumeration relative to
`Shiga’s 50 millisecond SE1 signal to support his opinion that Shiga’s SE1
`signal consumes less time than USB enumeration and thereby reduces
`latency. See Ex. 1003 ¶ 86.
`As to how the combination would be made, we note that the purpose
`of Dougherty’s laptop/docking station combination is to provide additional
`USB ports so the laptop can utilize various USB peripheral devices such as a
`full size keyboard or a full size monitor. Ex. 1005, 1:61–67, 2:24–28. The
`
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`USB host undergoes the USB enumeration process with connected USB
`devices to enable “normal operation of the USB device, because ‘[a] USB
`device must be configured before its function(s) may be used.’” See Ex.
`2001 ¶ 28 (citing Ex. 1010, 244). Specifically, Dougherty’s laptop, the USB
`host, must engage in USB enumeration, to operatively couple to any of the
`peripheral USB devices coupled to ports on the docking station. See Prelim.
`Resp. 52 (citing Ex. 1010, 243–44; Ex. 2001 ¶¶ 26–28, 70.) Petitioner’s
`proposed combination of Dougherty and Shiga specifically eliminates
`Dougherty’s USB enumeration process and replaces it with an SE1 signal as
`taught by Shiga. Pet. 42, 44. Petitioner, however, fails to sufficiently
`explain how Dougherty’s laptop would be able to utilize peripheral devices
`attached to the docking station in the absence of USB enumeration.8 Id. at
`26–44; Ex. 1003, 23–61.
`A rationale to support a conclusion that a claim would have been
`obvious can be supported by a showing that all the claimed elements were
`known in the prior art and one skilled in the art would have combined the
`elements as claimed by known methods with no change in their respective
`functions, to yield nothing more than predictable results. KSR, 550 US at
`416; see also Kahn, 441 F. 3d at 988. The Federal Circuit explains,
`“[a]lthough predictability is a touchstone of obviousness, the ‘predictable
`result’ discussed in KSR refers not only to the expectation that prior art
`elements are capable of being physically combined, but also that the
`combination would have worked for its intended purpose.” DePuy Spine,
`Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir.
`
`8 Petitioner also fails to sufficiently explain how Dougherty’s laptop would
`be able to responds to SE1 error signals. See Prelim. Resp. 49.
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`2009) (citing KSR, 550 US at 398); In re Gordon, 733 F.2d 900, 902 (Fed.
`Cir. 1984).
`Petitioner argues that “using an SE1 state, as Shiga teaches, would
`have been a logical and trivial alternative for signaling.” Pet. 24. Petitioner
`fails to support, with objective evidence, the conclusory statements in the
`Petition and offered by its expert that replacing Dougherty’s USB
`enumeration with Shiga’s SE1 signal is “a logical and trivial alternative”
`(Ex. 1003 ¶ 86) that “would have produced operable and predictable results”
`(id. ¶ 89). In fact, the statement in the USB Specification that an SE1 signal
`should never be intentionally generated (Ex. 1010, 123) suggests that the
`combination of Dougherty and Shiga proposed by Petitioner is not a “trivial
`alternative” and would not produce “operable and predictable results.” Due
`to the lack of objective evidence in support of these opinions, we accord
`little weight to these statements by Dr. Wood. See Velander v. Garner, 348
`F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the [PTAB] consistently did was
`accord little weight to broad conclusory statements that it determined were
`unsupported by corroborating references. It is within the discretion of the
`trier of fact to give each item of evidence su
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