`
`
`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 INT’L, LLC
`Patent Owner
`
`_______________
`
`IPR2018-00495
`U.S. Patent No. 7,239,111
`_______________
`
`DECLARATION OF JONATHAN R. WOOD, PH.D.
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`LGE-1003 / Page 1 of 127
`LGE v. Fundamental
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`
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` Declaration of Jonathan R. Wood, Ph.D.
`
`Inter Partes Review of 7,239,111
`TABLE OF CONTENTS
`
`C.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. QUALIFICATIONS ........................................................................................ 2
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 6
`IV. RELEVANT LEGAL STANDARDS ............................................................. 8
`V.
`SUMMARY OF THE TECHNOLOGY .......................................................10
`VI. THE ’111 PATENT .......................................................................................17
`A.
`Summary of the Patent ........................................................................17
`B.
`Prosecution History .............................................................................20
`VII. CLAIM CONSTRUCTION ..........................................................................22
`“means for receiving energy from a power socket” ...........................22
`A.
`“means for regulating the received energy from the power socket to
`B.
`generate a power output” ...................................................................25
`“means for generating an identification signal that indicates to the
`mobile device that the power socket is not a USB hub or host” .........27
`“means for coupling the power output and identification signal to the
`mobile device” .....................................................................................29
`VIII. GROUNDS ....................................................................................................32
`A.
`Challenge 1: Claims 1-3, 6, 8, 16, and 17 are unpatentable under 35
`U.S.C. § 103(a) over Dougherty in view of DeJaco, Hahn, and Shiga
` .............................................................................................................32
`1.
`Summary of Dougherty .............................................................32
`2.
`Summary of DeJaco ..................................................................36
`3.
`Reasons to Combine Dougherty and DeJaco ............................37
`4.
`Summary of Hahn .....................................................................41
`5.
`Reasons to Combine Dougherty and Hahn ...............................43
`6.
`Summary of Shiga .....................................................................51
`7.
`Reasons to Combine Dougherty and Shiga ..............................53
`8.
`Claim 1 ......................................................................................57
`
`D.
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` Declaration of Jonathan R. Wood, Ph.D.
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`Inter Partes Review of 7,239,111
`9.
`Claim 2 ......................................................................................83
`10. Claim 3 ......................................................................................84
`11. Claim 6 ......................................................................................86
`12. Claim 8 ......................................................................................87
`13. Claim 16 ....................................................................................88
`14. Claim 17 ....................................................................................90
`Challenge 2: Claims 12 and 14 are unpatentable under 35 U.S.C. §
`103(a) over Dougherty in view of DeJaco, Hahn, Shiga, and Amoni
` ...........................................................................................................100
`1.
`Summary of Amoni .................................................................100
`2.
`Reasons to Combine Dougherty, Hahn, and Amoni...............101
`3.
`Claim 12 ..................................................................................105
`4.
`Claim 14 ..................................................................................107
`Challenge 3: Claims 7 and 18 are unpatentable under 35 U.S.C. §
`103(a) over Dougherty in view of DeJaco, Hahn, Shiga, and USB 2.0
` ...........................................................................................................110
`1.
`Summary of USB 2.0 ..............................................................110
`2.
`Reasons to Combine Dougherty and USB 2.0 ........................112
`3.
`Claim 7 ....................................................................................116
`4.
`Claim 18 ..................................................................................119
`IX. DECLARATION .........................................................................................124
`
`
`B.
`
`C.
`
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`I.
`
`INTRODUCTION
`
` Declaration of Jonathan R. Wood, Ph.D.
`
`Inter Partes Review of 7,239,111
`
`1.
`
`I, Jonathan R. Wood, have been retained by counsel for 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. (collectively “LGE” or “Petitioner”) as a technical expert in connection with
`
`the proceeding identified above. I submit this declaration in support of LGE’s
`
`Petition for Inter Partes Review of U.S. Patent No. 7,239,111 (“the ’111 Patent”).
`
`2.
`
`Compensation for my work in this matter is based on an hourly rate.
`
`In addition, reasonable and customary expenses associated with my work and
`
`testimony in this matter are reimbursed. This compensation is not contingent on
`
`the outcome of this matter, nor is it contingent on the specifics of my testimony. I
`
`have no personal or financial stake, nor any interest in the outcome of the present
`
`proceeding.
`
`3.
`
`In the preparation of this declaration, I have studied:
`
`(1) The ’111 Patent, LGE-1001;
`
`(2) The prosecution history of the ’111 Patent, LGE-1002;
`
`(3) U.S. Patent No. 7,360,004 to Dougherty, et al. (“Dougherty”), LGE-
`
`1005;
`
`(4) U.S. Patent No. 6,745,024 to DeJaco, et al. (“DeJaco”), LGE-1006;
`
`(5) U.S. Patent No. 5,973,948 to Hahn, et al. (“Hahn”), LGE-1007;
`
`
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` Declaration of Jonathan R. Wood, Ph.D.
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`Inter Partes Review of 7,239,111
`(6) U.S. Patent No. 6,625,738 to Shiga (“Shiga”), LGE-1008;
`
`(7) U.S. Patent No. 5,884,086 to Amoni, et al. (“Amoni”), LGE-1009;
`
`and
`
`(8) Universal Serial Bus Specification, Revision 2.0, April 27, 2000 (USB
`
`2.0”), LGE-1010.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`(1) The documents listed above;
`
`(2) Any additional documents discussed below; and
`
`(3) My own knowledge and experience based upon my work in the fields
`
`of communication and power electronics.
`
`II. QUALIFICATIONS
`
`5. My qualifications and professional experience are described in my
`
`Curriculum Vitae, a copy of which can be found in exhibit LGE-1004. The
`
`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`6.
`
`I earned my Bachelor of Engineering degree in Electrical Engineering
`
`from the University of Auckland, New Zealand, in 1968. In 1969, I earned my
`
`Master of Engineering degree in Electrical Engineering, also from the University
`
`of Auckland. I earned my Doctorate in Electrical Engineering from the
`
`Massachusetts Institute of Technology in 1973. My doctoral thesis focused on
`
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` Declaration of Jonathan R. Wood, Ph.D.
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`Inter Partes Review of 7,239,111
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`switched-mode DC-to-DC (Direct Current to Direct Current) power converters,
`
`specifically switching buck regulators.
`
`7.
`
`I have over 51 years’ engineering experience, including analyzing,
`
`designing, and implementing power supply and battery charging systems. In 1965,
`
`while an undergraduate at the University of Auckland, New Zealand, I worked for
`
`Plessey Limited, an international manufacturer of telecommunications electronics,
`
`on the construction of VHF (very high frequency) transceivers, primarily for use
`
`on police vehicles.
`
`8.
`
`In 1970, I was a Research Engineer in the Advanced Equipment
`
`Development Group for the General Electric Company in Lynn, Massachusetts.
`
`As part of this work, I developed a host-scheduled, token-based, two-wire, analog-
`
`and-digital communication system for communicating between a host computer
`
`and distributed peripheral devices.
`
`9.
`
`In 1973, as a Senior Engineer at Texas Instruments, Inc., in Dallas,
`
`Texas, I designed a digital tuning system for high-frequency communication
`
`receivers.
`
`10. From 1974 through 1977, I worked as a consultant for the New
`
`Zealand Government. In this capacity, I evaluated the integration of wind and
`
`other intermittent energy sources into the electricity grid, and I developed 50-year
`
`energy scenarios to match energy production to projected growth in demand. In
`
`
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`Inter Partes Review of 7,239,111
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`the course of this work, I investigated the use of DC signals on AC (Alternating
`
`Current) power lines for control of street lighting.
`
`11.
`
`In 1976 and 1977, I served as a Senior Lecturer in Electrical
`
`Engineering at the University of Auckland in New Zealand. I taught Basic
`
`Electronics, Power Electronics, and Control Theory.
`
`12. Building on my experience in renewable power, I worked from 1977
`
`through 1981, for Mobil Tyco Solar Energy Corporation in Waltham,
`
`Massachusetts, where I designed and built solar photovoltaic power systems and
`
`served as head of the Systems Engineering Group. In the course of one project, I
`
`identified and refined an algorithm for maintaining battery charge in a
`
`photovoltaic-powered system.
`
`13. From 1981 through 1986, I worked for Data General Corporation in
`
`Westborough, Massachusetts on all aspects of the design of computer power
`
`supplies, including linear-mode and switched-mode power supplies. Fundamental
`
`to this work was a clear understanding of the distinction between common mode
`
`and differential mode signals. As part of this work, I presented technical papers on
`
`various aspects of power conversion at three conferences.
`
`14. From 1986 through 1999, I founded and worked for Altor, Inc.,
`
`serving as president of the company. My research, design, and analysis were
`
`integral to the company’s manufactured products, which incorporated both linear-
`
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`Inter Partes Review of 7,239,111
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`mode and switched-mode power supplies, including DC-to-DC converters. These
`
`power supplies were used in handheld systems, in computers, in
`
`telecommunication systems, in medical systems, in industrial systems, and in other
`
`systems. Some of such products involved devices that ran on rechargeable
`
`batteries.
`
`15. A number of these power supplies included a serial bus connection for
`
`communicating between the power supply and the system to which it provided
`
`power. Development of such power supplies involved designing circuits that used
`
`various power sources conforming to serial-bus power specifications. Such power
`
`supplies provided power to charge batteries and to power devices. One such serial-
`
`bus-defined power specification is included in the Universal Serial Bus (“USB”)
`
`Specification.
`
`16. After Altor, Inc. merged with Acumentrics, I served as Vice President
`
`of Engineering from 1999 through 2004. I oversaw engineering teams, one of
`
`which developed rugged Uninterruptible Power Supplies (UPSs). I continued to be
`
`involved in the design of these power supplies, some of which contained a serial
`
`bus interface. My teams also developed systems in emerging technologies such as
`
`flywheel-based UPSs and fuel cell systems, including custom handheld controls for
`
`these systems. Multiple serial protocols for communicating between the systems
`
`and the handheld controls were evaluated, tested, and implemented, including
`
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` Declaration of Jonathan R. Wood, Ph.D.
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`Inter Partes Review of 7,239,111
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`USB. Specifically, my direct reports evaluated the suitability of USB for this
`
`purpose, and in performing my work, it was essential for me to understand this and
`
`other technologies being evaluated by those in my organization.
`
`17.
`
`I have remained active in the electronics industry through my
`
`consulting work. From 2004 through the present, I have been consulting via Altor
`
`Limited LC on matters of mobile communications and power electronics including
`
`battery charging and power delivery to hand-held devices. Here as well, I have
`
`been designing both linear and switched-mode power supplies.
`
`18.
`
`I have authored and co-authored over 20 journal publications,
`
`conference proceedings, technical papers, and technical presentations in a broad
`
`array of electrical power conversion technologies including power converters and
`
`power supplies. In addition, I am an inventor on 16 patents in the U.S., Germany,
`
`Korea, China, and Canada.
`
`19. A list of my publications and patents is contained in my CV at exhibit
`
`LGE-1004. A list of cases in which I have testified at trial, hearing, or by
`
`deposition is also provided in my CV. In the listed cases, I have been retained both
`
`by patent owners and by petitioners.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`20.
`
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a Person of Ordinary Skill In The Art (“POSITA”) to
`
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`Inter Partes Review of 7,239,111
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`which the claimed subject matter pertains would understand the basic engineering
`
`principles applicable to the pertinent art. I understand that a POSITA is deemed to
`
`have ordinary creativity, and is not an automaton.
`
`21.
`
`I understand that there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`22.
`
`I am familiar with the communication, power supply, and battery
`
`charging art pertinent to the ’111 Patent. I am also aware of the state of the art at
`
`the time of the earliest possible priority date for the ’111 Patent. I have been
`
`informed by counsel that the earliest possible priority date for the ’111 Patent is
`
`March 1, 2001, although the ’111 Patent may not be entitled to the earliest claimed
`
`date.
`
`23. Based on the technology disclosed in the ’111 Patent, I believe that a
`
`POSITA would include someone who had, as of the claimed priority date of the
`
`’111 Patent, a master’s degree in electrical engineering, computer science, or a
`
`related field, plus two to three years of power electronics design experience
`
`including experience with serial communication systems such as USB. In addition,
`
`I recognize that someone with less technical education but more experience, or
`
`
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`Inter Partes Review of 7,239,111
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`more technical education but less experience could also have met the relevant
`
`standard for a POSITA. I believe that I am at least a POSITA and, furthermore, I
`
`have supervised numerous engineers who were also POSITAs. Accordingly, I
`
`consider that I am qualified to opine on the ’111 Patent.
`
`24. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my opinions and statements, such as those regarding the understanding of a
`
`POSITA (and specifically related to the references I consulted herein), reflect the
`
`knowledge that existed in the art before the earliest claimed priority date of the
`
`’111 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`25.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`3, 6-8, 12, 14, and 16-18 (the “Challenged Claims”) of the ’111 Patent would have
`
`been obvious to a POSITA at the time of the alleged invention in light of the prior
`
`art.
`
`26.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’111 Patent, I am relying on certain legal
`
`principles explained to me by counsel.
`
`27.
`
`I have been informed and I understand that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
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`Inter Partes Review of 7,239,111
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`would have been obvious at the time the invention was made to a POSITA. I
`
`understand that the appropriate analysis for determining obviousness of a claimed
`
`invention takes into account factual inquiries, including the level of ordinary skill
`
`in the art, the scope and content of the prior art, and the differences between the
`
`prior art and the claimed subject matter as a whole.
`
`28.
`
`I have been informed and I understand that the United States Supreme
`
`Court has recognized several rationales for combining references or modifying a
`
`reference to show obviousness of claimed subject matter. Some of these rationales
`
`include the following: (a) combining prior art elements according to known
`
`methods to yield predictable results; (b) simple substitution of one known element
`
`for another to obtain predictable results; (c) use of a known technique to improve a
`
`similar device (method, or product) in the same way; (d) applying a known
`
`technique to a known device (method, or product) ready for improvement to yield
`
`predictable results; (e) choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success; and (f) some teaching,
`
`suggestion, or motivation in the prior art that would have led a POSITA to modify
`
`the prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`29.
`
`I have also been informed and I understand that a demonstration of
`
`obviousness does not require a physical combination or bodily incorporation, but
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`Inter Partes Review of 7,239,111
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`rather requires consideration of what the combined teachings would have
`
`suggested to a POSITA at the time of the alleged invention.
`
`V.
`
`SUMMARY OF THE TECHNOLOGY
`
`30.
`
`“The USB is a cable bus that supports data exchange between a host
`
`computer and a wide range of simultaneously accessible peripherals.” (LGE-
`
`1010), USB 2.0 at 15.1 “The attached peripherals share USB bandwidth through a
`
`host- scheduled, token-based protocol.” Id. “The bus allows peripherals to be
`
`attached, configured, used, and detached while the host and other peripherals are in
`
`operation.” Id.
`
`31. USB is a “fast, bi-directional, isochronous, low-cost, dynamically
`
`attachable serial interface.” (LGE-1010), USB 2.0 at 1. USB was well-known to a
`
`POSITA at the earliest possible priority date for the ’111 Patent. For example, on
`
`September 23, 1998, the USB Implementers Forum (USB-IF) released Universal
`
`Serial Bus Specification Revision 1.1 (“USB 1.1”). Id. at ii. On April 27, 2000,
`
`USB-IF released USB Revision 2.0 (“USB 2.0”). Id.; see also (LGE-1015), U.S.
`
`Patent No. 6,859,645 at 1:41-43 (“According to the ‘USB Specification Revision
`
`2.0’ (Apr. 27, 2000)...”); (LGE-1016), U.S. Patent No. 7,260,835 at 5:29-49 (“USB
`
`
`
`1 The following analysis will cite to the page numbers provided in the above-listed
`
`exhibits, if available.
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`Specification, Revision 2.0 as set forth by the USB Special Interest Group (SIG) on
`
`Apr. 27, 2000”).
`
`32. A device such as a laptop computer system is a USB host. The host
`
`connects to USB functions, devices that provide a capability to the host, such as
`
`interface devices, imaging devices, and mass storage devices. (LGE-1010), USB
`
`2.0 at 24. The host may connect to the functions through one or more USB hubs,
`
`devices that provide additional USB connections. Id. at 22-23. In some examples,
`
`the host system (e.g., the laptop computer) includes a root hub for coupling to other
`
`USB devices. Id. at 16.
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`(LGE-1010), USB 2.0, FIG. 4-4
`
`
`
`33.
`
`In accordance with the USB 2.0 Specification, the USB host (e.g., a
`
`desktop computer or laptop) may have its own power management system for
`
`supplying current to power the host and to charge the host’s battery. (LGE-1010),
`
`USB 2.0 at 18. The host power management system interacts with the USB system
`
`software to handle system power events. Id.
`
`34. According to the USB 2.0 Specification, the host is responsible for
`
`tasks such as: (i) “[d]etecting the attachment and removal of USB devices”; (ii)
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`managing control and data flow between the host and USB devices; (iii)
`
`“[c]ollecting status and activity statistics”; and (iv) “[p]roviding power to attached
`
`USB devices.” (LGE-1010), USB 2.0 at 24. These devices may include: (i) hubs,
`
`which provide additional USB attachment points, and (ii) functions, which transmit
`
`or receive data or control information over the USB bus (e.g., peripheral devices,
`
`such as a keyboard, mouse, or mobile phone). Id. at 17, 22-24.
`
`35. A USB cable provides “a point-to-point connection between the host
`
`and a hub or function, or a hub connected to another hub or function.” (LGE-
`
`1010), USB 2.0 at 16. “The [USB] cable has four conductors: a twisted signal pair
`
`... and a power pair,” as shown in Figure 4-2 below. Id. at 18; see also id. at 17,
`
`86.
`
`(LGE-1010), USB 2.0, FIG. 4-2
`
`
`
`36. A USB cable terminates in a USB plug connector that mates with a
`
`corresponding USB receptacle connector. (LGE-1010), USB 2.0 at 85-86. The
`
`USB 2.0 Standard includes Series “A” and Series “B” connectors, which are keyed
`
`differently to “insure[] proper end user connectivity.” Id. at 85.
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`(LGE-1010), USB 2.0, FIG. 6-1
`
`
`
`37. The electrical connections between the contacts (e.g., pins) in the
`
`connector and the conductors in the cable are shown in the following table:
`
`(LGE-1010), USB 2.0, Table 6-1
`
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`Inter Partes Review of 7,239,111
`38. When a USB cable is connected between a host and a device, the host
`
`initializes and manages the device. Specifically, “[w]hen a USB device is attached
`
`to or removed from the USB, the host uses a process known as bus enumeration to
`
`identify and manage the device state changes necessary.” (LGE-1010), USB 2.0 at
`
`243. Under “Bus Enumeration,” the USB 2.0 Specification specifies eight actions
`
`taken to enumerate a USB device when the device is attached. Id. at 243-44.
`
`39. USB allows a downstream device to draw current on the VBUS line
`
`from an upstream port but does not permit the device to provide it on VBUS of an
`
`upstream port. (LGE-1010), USB 2.0 at 171. When drawing power, the USB 2.0
`
`Specification imposes a current limit on USB devices. Id. Specifically, “[a]
`
`device may be either low-power at one unit load [100 mA] or high-power,
`
`consuming up to five unit loads [500mA].” Id. The USB 2.0 Specification further
`
`limits the power a device may draw by also imposing a voltage limit on the VBUS
`
`line of 5.25V. Id. at 175, 178.
`
`
`
`(LGE-1010), USB 2.0, Table 7-7
`
`40.
`
`In addition to power, USB provides two data lines, D+ and D-, as
`
`noted above. (LGE-1010), USB 2.0 at 17. USB 2.0 defines a number of signaling
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`states for the data lines. Some of these states (e.g., Differential 0, Differential 1,
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`Data J State, and Data K State) are used to transmit data while others (e.g., Single-
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`Ended 0, Single-Ended 1) are used as specific signaling conditions. (LGE-1010),
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`USB 2.0 at 144-146, Table 7-2. Relevant here is the Single-Ended 1 (“SE1”)
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`condition. The USB 2.0 Specification defines “SE1” as “a state in which both the
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`D+ and D- lines are at a voltage above VOSE1 (min), which is 0.8 V.” Id. at 123.
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`The USB 2.0 Specification teaches that USB drivers “must never ‘intentionally’
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`generate an SE1 on the bus.” Id. In other words, according to the USB 2.0
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`Specification, an abnormal data condition would occur if both the D+ and D- lines
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`were intentionally set in a high state (i.e., above 0.8 V).
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`41. However, as of the claimed priority date of the ’111 Patent, it was also
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`known for USB devices to use the reserved SE1 state (i.e., D+ and D- high) for
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`signaling information about a device without interfering with other USB signaling.
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`For example, Shiga discloses a USB apparatus that sends an instruction to a host
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`using the SE1 state. (LGE-1008), Shiga at 6:43-45. Shiga relies on the SE1 state
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`being a non-standard USB mode because such a signal is easily distinguished from
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`USB standard data signals. Id. at 6:48-58. In a further example, Casebolt teaches
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`using the SE1 state as a special signaling mode to indicate that the attached device
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`is behaving as a PS/2 adapter. (LGE-1011), Casebolt at 7:31-54, Table 1, FIG. 3.
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`As yet another example, Sonoda likewise teaches using the SE1 state to indicate to
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`the host computer the nature of the apparatus attached to the port. (LGE-1017),
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`Sonoda at Abstract, FIGS. 1 and 2. Further, Cypress enCoRe teaches placing the
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`USB D+ and D- data lines into a high impedance state pulled up to VCC (i.e., what
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`the USB 2.0 Specification defines as the SE1 state). (LGE-1020), Cypress enCoRe
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`at 24. Zyskowski provides yet another example that teaches the use of both data
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`lines being driven high (i.e., what the USB 2.0 Specification defines as the SE1
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`state) to signal that a device is in a full power state. (LGE-1021), Zyskowski at ¶
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`[0019].
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`VI. THE ’111 PATENT
`
`A.
`
`Summary of the Patent
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`42. The ’111 Patent is directed to “power adapters for use with mobile
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`devices.” (LGE-1001), ’111 Patent at 1:26-28. Such mobile devices may include
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`“a data messaging device, a two-way pager, a cellular telephone with data
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`messaging capabilities, a wireless Internet appliance, a data communication device
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`(with or without telephony capabilities), a personal digital assistants [sic] (‘PDA’),
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`a wireless two-way e-mail communication device, and others.” Id. at 3:42-49.
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`43. According to the ’111 Patent, it was known in the art for mobile
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`devices to combine data and power interfaces “us[ing] non-standard and
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`sometimes proprietary interfaces.” (LGE-1001), ’111 Patent at 1:44-47. The ’111
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`Patent, however, states that such non-standard interfaces “may not be compatible
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`with combined interfaces for mobile devices provided by other manufacturers.” Id.
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`at 1:47-50.
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`44. To address the above-noted problem, the ’111 Patent discloses “[a]n
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`adapter for providing a source of power to a mobile device through an industry
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`standard port.” (LGE-1001), ’111 Patent at 2:3-4. In an example, the adapter
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`“provid[es] a source of power to a mobile device through a USB port.” Id. at 2:19-
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`21.
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`(LGE-1001), ’111 Patent, FIG. 2
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`45. As illustrated above at Figure 2, the “USB adapter 100 ... comprises a
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`primary USB connector 102, a power converter 104, a plug unit 106, and an
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`identification subsystem 108.” (LGE-1001), ’111 Patent at 6:57-60, FIG. 2.
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`According to the ’111 Patent, “[t]he power converter is a known element in the art”
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`and the “plug unit 106 is preferably a conventional plug unit that can be used to
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`couple with a conventional power socket to receive power therefrom.” Id. at 6:60-
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`64, 7:12-14.
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`46. The ’111 Patent recognizes that it was typical for a mobile device to
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`“receive[] power over the USB ... in accordance with the USB specification.”
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`(LGE-1001), ’111 Patent at 8:11-13. For example, according to the ’111 Patent,
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`the USB Specification “specifies a process for transferring energy across the USB
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`called enumeration and limits the electrical current that can flow across the USB.”
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`(LGE-1001), ’111 Patent at 8:13-16. The ’111 Patent purports to overcome certain
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`limits of the USB Specification with a USB adapter that transmits an
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`“identification signal” to the mobile device 10, indicating that the adapter 100 “is
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`not a USB limited source.” (LGE-1001), ’111 Patent at 8:23-25. In one
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`embodiment, the mobile device 10 detects the identification signal and then
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`“charge[s] the battery or otherwise use[s] power provided via the Vbus and Gnd
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`lines in the USB connector … without waiting for enumeration.” Id. at 9:26-42.
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`Inter Partes Review of 7,239,111
`47. The ’111 Patent states that the identification signal “could be the
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`communication of a single voltage on one or more of the USB data lines, different
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`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 8:25-29. “The preferred identification signal
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`results from the application of voltage signals greater than 2 volts to both the D+
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`and D- lines in the USB connector.” Id. at 9:21-23. The identification subsystem
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`generating the signals may do so with a “hard-wired connection of a single voltage
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`level to both data lines” or with a “USB controller.” Id. at 8:29-37.
`
`B.
`
`Prosecution History
`
`48. U.S. Patent Application No. 11/175,885, which ultimately issued as
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`the ’111 Patent, was filed on July 6, 2005, and contained 18 claims. (LGE-1002),
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`’111 Prosecution History at 122-52.
`
`49. A first non-final Office Action was issued on October 20, 2005 that
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`rejected all claims as unpatentable over U.S. Patent No. 6,130,518 to Gabehart, et
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`al. (“Gabehart”). Id. at 112-16. In response, the Applicants argued that:
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`[T]he Gabehart reference does not disclose or suggest the generation
`of an identification signal which is configured to indicate to the
`mobile device that the power socket is not a USB host or hub, as
`claimed in independent claims 1, 17 and 18. That is, the Gabehart
`reference does not determine if an attached power source is a USB
`source.
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`Id. at 110. The Applicants further argued that dependent claim 7 was not shown.
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`Id. at 111. No claims were amended, cancelled, or added. See id. at 108-11.
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`50. A second non-final Office Action was issued on April 4, 2006 that
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`withdrew the rejections in view of Gabehart but rejected all claims as unpatentable
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`over U.S. Patent Publication No. 2004/0251878 to Veselic (“Veselic”). (LGE-
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`1002), ’111 Prosecution History