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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`TCT MOBILE (US), INC.; TCT MOBILE (US) HOLDINGS, INC.;
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD.; AND
`TCL COMMUNICATION, INC.,
`Petitioner,
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`___________________
`
`Case IPR2021-00395
`Patent No. 7,239,111
`___________________
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC’s
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2021-00395
`Patent No. 7,239,111
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`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`Introduction ................................................................................................... 1
`Background on the USB Communication Protocol ..................................... 2
`A. USB Hubs ........................................................................................... 3
`B.
`USB Signal and Power Connections .................................................. 4
`C.
`Power Supply to USB Devices and Hubs .......................................... 5
`D.
`Single Ended 1 (“SE1”) Line State .................................................... 6
`Summary of the ’111 Patent ......................................................................... 9
`III.
`IV. Summary of the Asserted Prior Art ............................................................ 10
`A. Morita ............................................................................................... 10
`B.
`SE1 References ................................................................................. 15
`Skill Level of a POSITA ............................................................................ 18
`V.
`VI. Claim Construction ..................................................................................... 18
`VII. The Board Should Deny the Petition under §325(d) .................................. 20
`A.
`Prosecution History Justifies Discretionary Denial Under
`§325(d) ............................................................................................. 20
`The Prior IPR Proceedings Justify Discretionary Denial
`Under §325(d) .................................................................................. 23
`1.
`The Same or Substantially the Same Art and
`Arguments were Previously Presented to the Board ............. 23
`Petitioner Fails to Demonstrate that the Office Erred in
`a Manner Material to the Patentability of Challenged
`Claims .................................................................................... 28
`
`B.
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`2.
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`X.
`
`
`VIII. The Board Should Decline to Consider Incorporated-By-Reference
`Expert Testimony ........................................................................................ 28
`IX. The Petition’s Translation of Morita Does Not Comply With Patent
`Office Rules ................................................................................................ 29
`Petitioner Has Not Shown A Reasonable Likelihood Of Success To
`Prevail On At Least One Challenged Claims ............................................. 30
`A.
`Petitioner Provides No Competent Evidence That the
`Proposed Combination Discloses A Claimed Identification
`Signal ................................................................................................ 35
`1.
`Because Morita’s mobile phone receives energy from
`a USB hub-controllable charger, any identification
`signal generated by the charger would indicate to the
`mobile phone that it is connected to a USB hub or host ........ 35
`The prior art does not teach using SE1 as a recited
`“identification signal” for identifying a power source
`type to a USB device .............................................................. 41
`Petitioner Provides No Competent Evidence That a POSITA
`Would Have Used SE1 In Morita’s System ..................................... 46
`1.
`Petitioner’s Proposed Combination Would Render
`Morita Inoperable for Its Intended Purpose ........................... 46
`Contrary to Petitioner’s assumption, Morita’s USB
`port 21 is a high-powered port even when a PC is
`connected and USB already has commands for
`identifying this capacity ......................................................... 54
`3. Morita’s Hub-Controllable Charger 110 Operates As A
`USB Hub And Would Not Generate A Signal That
`Misidentifies Itself As “Not A USB Host Or Hub” ............... 60
`Petitioner Does Not Explain Why A POSITA Would
`Use The Forbidden SE1 Signal In A USB System Or
`
`2.
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`B.
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`2.
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`4.
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`How Problems Arising From Its Use Could Be
`Addressed ............................................................................... 62
`XI. Conclusion .................................................................................................. 65
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`TABLE OF AUTHORITIES
`
`Case IPR2021-00395
`Patent No. 7,239,111
`
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerate
`GmbH,
`Case No. IPR2019-01469, Paper 6 (February 13, 2020) .............................. 20, 28
`Arendi SARL v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 43
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 54
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) ............................................ 29
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 53
`
`Huawei Device Co., Ltd. v. Fundamental Innovation Systems
`International LLC,
`IPR2021-00485, Paper 8 (PTAB, Sept. 4, 2018) ................................................ 64
`LG Electronics, Inc. v. Fundamental Innovation Systems Int’l LLC,
`IPR2018-00495, Paper 10 (PTAB Aug. 9, 2018) ........................................passim
`LG Electronics, Inc. v. Fundamental Innovation Systems Int’l LLC,
`IPR2018-00508, Paper 10 (PTAB Sept. 5, 2018) ......................................... 26, 53
`South-Tek Sys., LLC v. Engineered Corrosion Solutions, LLC,
`748 Fed. Appx. 1003 (Fed. Cir. 2018) ................................................................ 59
`W. L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .................................................................... 45, 62
`Statutes
`18 U.S.C. 1001 ......................................................................................................... 29
`28 U.S.C. §1746 ....................................................................................................... 29
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`Patent No. 7,239,111
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`35 U.S.C. §325(d) .............................................................................................. 20, 23
`Other Authorities
`37 C.F.R. §1.68 ........................................................................................................ 29
`37 C.F.R. §42.63(b) ................................................................................................. 29
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`EXHIBIT LIST
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`Case IPR2021-00395
`Patent No. 7,239,111
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`Ex. 2001 Telephonic Hearing Transcript dated March 25, 2021
`Ex. 2002 U.S. Patent No. 7,360,004 (“Dougherty”)
`Ex. 2003
`Jan Axelson, USB Complete (1999), excerpt
`Ex. 2004 U.S. Patent No. 5,884,086 (“Amoni”)
`Ex. 2005 U.S. Patent No. 6,904,488 (“Matusmoto”)
`Ex. 2006
`Jan Axelson, USB Complete (2d ed. 2001), excerpt
`Ex. 2007 Reserved
`Ex. 2008 Reserved
`Ex. 2009 Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Preliminary Response
`Ex. 2010 Claim construction order in Fundamental Innovation Systems
`International LLC v. Samsung Electronics Co., Ltd., Case No.
`2:17-cv-145-JRG-RSP, Dkt. No. 140 (E.D. Tex. Jan. 31, 2018)
`Ex. 2011 Claim construction order in Fundamental Innovation Systems
`International LLC v. LG Electronics Inc., Case No. 2:16-cv-
`1425-JRG-RSP, Dkt. No. 146 (E.D. Tex. April 2, 2018)
`Ex. 2012 Claim construction order in Fundamental Innovation Systems
`International LLC v. ZTE Corp. et al., Case No. 3:17-cv-1827-
`N, Dkt. No. 135 (N.D. Tex. Dec. 21, 2018)
`Ex. 2013 Claim construction order in Fundamental Innovation Systems
`International LLC v. TCT Mobile (US), Inc., Case No. 20-cv-
`552-CFC-CJB, Dkt. No. 41 (D. Del. Feb. 12, 2021)
`IPR2018-00495 Petition
`IPR2021-00428 Petition
`
`Ex. 2014
`Ex. 2015
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`I.
`
`Introduction
`The USB charging technology at issue in U.S. Pat. No. 7,239,111 to Fischer
`
`et al. (“the ’111 patent”) and its sibling patents (collectively, the “Fischer family
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`patents”) was the product of research and development at Research in Motion
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`(“RIM,” now Blackberry Ltd.). As of this filing, more than 50 entities—including
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`Samsung, LGE, Huawei and ZTE—have entered into licensing deals with Patent
`
`Owner on the Fischer family patents. Petitioner is one of the few holdouts, even
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`though the Fischer family patents have undergone extreme scrutiny, including by
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`the Board.
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`In 2017-2018, eighteen (18) petitions were filed against the Fischer family
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`patents. In that wave of petitions, the Board denied institution in 13 instances
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`(including the three against the ’111 patent), reached a final written decision in
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`favor of Patent Owner in one instance (IPR2018-00111), and terminated the
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`remaining four (one of which being the same as IPR2018-00111). Many of the
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`earlier challenges were based on a patent to Dougherty in combination with SE1
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`signaling.
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`In this wave of six petitions, Petitioner relies primarily on a different
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`reference, Morita, but again in combination with SE1 signaling. As discussed in
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`Section VII, Morita is also substantially the same as Dougherty in that both involve
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`a USB hub charger that expands a portable device’s accessibility to USB
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`peripherals while supplies power to the device. Thus, in both, USB
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`communications were necessary for the portable device to access the connected
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`peripherals. Consequently, as in prior proceedings, “Petitioner has not shown how
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`modified [portable device] and [the USB hub charger] would predictably handle
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`SE1 signals in the course of normal USB communication.” LG Electronics, Inc. v.
`
`Fundamental Innovation Systems Int’l LLC, IPR2018-00495, Paper 10 at 15
`
`(PTAB Aug. 9, 2018) (“IPR2018-00495”). The Board should deny the petition.
`
`II. Background on the USB Communication Protocol
`The Universal Serial Bus (“USB”) architecture is a “cable bus that supports
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`data exchange between a host computer and a wide range of simultaneously
`
`accessible peripherals.” Ex. 1010 (“USB 1.1”) at 15; Ex. 1011 (“USB 2.0”), at
`
`15.1 A schematic illustration of the tiered USB bus topology is shown below. Ex.
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`1010 at 16; see also Ex. 1011 at 16 (up to 7 tiers allowed in USB 2.0).
`
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`1 Citations to USB specifications are to the original page numbers for
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`consistency with the Petition.
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`The above “tiered star topology,” “connects USB devices with the USB
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`host.” Ex. 1010 at 16; Ex. 1011 at 16. A USB device can be either a hub or a
`
`function. Ex. 1010 at 16, §4.1.1.2; Ex. 1011 at 17, §4.1.1.2. A hub “provide[s]
`
`additional attachment points to the USB”; and a function—”such as an ISDN
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`connection, a digital joystick, or [a] speaker[]”—”provide[s] capabilities to the
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`system.” Id.
`
`A. USB Hubs
`As shown in the USB topology above, “[a] hub is at the center of each star.”
`
`Ex. 1010 at 16; Ex. 1011 at 16. “Each wire segment is a point-to-point connection
`
`between the host and a hub or function, or a hub connected to another hub or
`
`function.” Id. An architecture for a USB 1.1-compliant hub is shown below. Ex.
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`1010 at 230. A hub includes a hub repeater and a hub controller section. Id. “The
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`Hub Repeater is responsible for managing connectivity on a per-packet basis,
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`while the Hub controller provides status and control and permits host access to the
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`hub.” Id.
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`
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`As shown above, each hub has one upstream port facing “towards the host,”
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`and one or more downstream ports each facing towards a device. Ex. 1010 at 231;
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`Ex. 1011 at 298, §11.1.2.1. “Hubs are the essential USB component for
`
`establishing connectivity between the host and other devices” and must have fault
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`detection and recovery mechanisms. Ex. 1010 at 232; Ex. 1011 at 300, §11.1.2.3.
`
`B. USB Signal and Power Connections
`“The USB transfers signal and power over a four-wire cable,” as shown
`
`below. Ex. 1010 at 17; Ex. 1011 at 17. In the configuration below, VBUS and
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`GND are power wires and D+ and D- are signal wires. Id.
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`C.
`Power Supply to USB Devices and Hubs
`A USB device can be bus-powered or self-powered. A USB host or hub can
`
`provide power to a USB device connected to it via a cable. Ex. 1010 at 18; Ex.
`
`1011 at 18. “USB devices that rely totally on power from the cable are called bus-
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`powered devices. In contrast, those that have an alternative source of power are
`
`called self-powered devices.” Id.
`
`A hub can also be bus-powered or self-powered. An example of a self-
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`powered hub is Morita’s “hub-controllable charger” in which a power supply
`
`connection unit 22, connected to an outlet, supplies power “to the mobile
`
`videophone device 100 via the USB port 21” and to “external peripheral[s]” via
`
`USB port 24. Morita, Abstract, Figs. 1-2, [0016], [0014]; Fernald, ¶30. In contrast
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`to bus-powered hubs that can “supply only one unit load [i.e., 100mA] per port,”
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`self-powered hubs can “supply five unit loads [500 mA] to each port.” Ex. 1010 at
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`135-36, Figs. 7-32 & 7-33; Ex. 1011 at 172-73, §7.2.1.2.
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`A schematic of a self-powered hub is shown below. USB 1.1 at 136, Fig. 7-
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`33.
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`As shown in the schematics, a local power supply (i.e., a power source other
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`than that from the upstream Vbus) provides power to downstream ports as well as
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`internal (“non-removable”) functions. Id.; Fernald, ¶90. The upstream VBUS may
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`provide up to 100mA of current to the hub controller, but it does not provide any
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`power to the hub’s internal functions or other ports. Id.; Fernald, ¶24.
`
`D.
`Single Ended 1 (“SE1”) Line State
`“SE1 is a state in which both the D+ and D- lines are at a voltage above …
`
`0.8 V.” Ex. 1011 at 123. As Petitioner acknowledges, the USB specification
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`warns that “[l]ow-speed and full-speed USB drivers must never ‘intentionally’
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`generate an SE1 on the bus.” Id. (cited on Pet. 22). Petitioner asserts that at the
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`time of the invention “a POSITA would have understood that the SE1 condition
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`would be a logical choice for signaling information about a device without
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`interfering with USB signaling because the SE1 is an abnormal condition outside
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`the USB specification’s teaching on USB communications.” Pet. 24.
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`Petitioner admits, however, SE1 signaling puts a port into the Disabled state
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`and disables USB communication. Pet. 22-23 (discussing how SE1 supposedly
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`disables port). Petitioner also argues that with the port disabled, the connected
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`device “can’t receive or process commands ….” Pet. 23. Petitioner does not
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`explain how it is possible to completely disable USB communications and not
`
`interfere with normal USB signaling. Petitioner also does not explain how its
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`proposed signaling of SE1 to Morita’s mobile device when a PC is disconnected
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`from Morita’s USB hub charger would have allowed the mobile device to “operate
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`[as intended] as a device for host controlling” peripherals connected to the mobile
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`device via the USB-hub charger. Morita, [0018], Fig. 4 (showing in the absence of
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`a PC, “the monitor and keyboard [] are connected as external peripherals of the
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`mobile videophone device 100 via the USB hub control unit 27 in the charger 110 .
`
`. . . Thus, the operation input of the mobile videophone device 100 can be inputted
`
`using the keyboard 140 connected as an external peripheral ….”); [0022] (“the
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`mobile phone always accesses the external device while receiving the supply of
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`power from the charger….”).
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`The Board has repeatedly held at both the institution stage and at the final
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`written decision stage that there is no motivation in the art to put a USB device
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`engaged in normal USB communication into the SE1 state because of the
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`unpredictable impact on the device’s USB communication. See, e.g., IPR2018-
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`00495, Paper 10 at 15-16 (agreeing that “Petitioner has not shown how the
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`modified laptop and docking station of Dougherty would predictably handle SE1
`
`signals in the course of normal USB communication” such as “unintentional” SE1
`
`signals or “distinguish them from sE1 signals from the USB chip”), id. at 16
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`(“Petitioner does not explain how the laptop and docking station would …
`
`correctly route USB transmissions to attached USB devices, if one removes the
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`handshaking protocols required for USB enumeration from Dougherty”) (citing
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`USB 2.0 at 244 (“A USB device must be configured before its function(s) may be
`
`used.”)).
`
`Given Petitioner’s acknowledgement that SE1 disables USB
`
`communications and given the need for USB communication in order for Morita’s
`
`mobile device to access the connected peripherals, Petitioner’s proposal that a
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`POSITA would implement SE1 in Morita amounts to arguing that the POSITA
`
`would have desired to render Morita inoperable as understood in the art at the time
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`of the invention. That is impermissible hindsight and contrary to the fundamental
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`tenets of the obviousness doctrine.
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`III. Summary of the ’111 Patent
`The ’111 patent stems from pioneering research performed by the power
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`supply and distribution group at Blackberry, as part of Blackberry’s effort to build
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`the world’s first mobile phone with a combined USB data and charging port. In
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`the early 2000s, Blackberry launched a project to design a mobile phone with a
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`combined power and data interface to reduce the number of external connections
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`and simplify printed circuit board designs for a smaller and thinner phone.
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`The inventors noted that “[a]lthough the USB interface can be used as a
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`power interface, the USB is typically not used for that purpose by mobile phones.”
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`’111 patent, at 1:52-54. This was in large part due to the incompatibility between
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`common power sources such as a power socket and the USB specification’s
`
`requirement that “a USB device participate in a host initiated process called
`
`enumeration in order to be compliant with the current USB specification in
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`drawing power from the USB interface.” Id., at 1:53-59. A mobile phone attached
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`to such a power socket via the phone’s USB port would be unaware, for example,
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`that the attached charger was not limited by the power limits imposed by the USB
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`specification. ’111 patent, at 1:52-67.
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`Faced with these challenges, the inventors designed a new “USB adapter for
`
`providing a source of power to a mobile phone through a USB port,” including
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`systems and methods that, among other things, may “provid[e] an identification
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`signal to the mobile phone ... that is operative to inform the mobile phone that the
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`USB adapter is not limited by the power limits imposed by the USB specification”
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`as a USB host or hub would be. ’111 patent, at 2:19-21, 2:50-64.
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`The identification signal serves to inform a mobile phone, for example, that
`
`it is coupled to a USB adapter of the inventions, that the connected power source
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`“is not a USB limited source,” and/or that the device “can now draw power without
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`regard to the USB specification and the USB specification imposed limits.” Id., at
`
`8:17-23. “If the voltages on both the D+ and D- lines of the USB connector are
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`greater than 2 Volts …, then the mobile device [] determines that the device
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`connected to the USB connector 54 is not a typical USB host or hub and that a
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`USB adapter [] has been detected (step 230).” Id., 9:35-39. The mobile device can
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`then proceed to charge the battery without enumeration. Id., 9:39-42.
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`IV. Summary of the Asserted Prior Art
`A. Morita
`Morita “provide[s] a hub-controllable charger capable of accessing a
`
`plurality of external devices in a state wherein a mobile phone is coupled to the
`
`charger, and capable of managing transmission and branching of signaling between
`
`each.” Morita at 6, Abstract; see also [0001] (Morita “relates to a charger capable
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`of charging a mobile phone and coupling to an external device and more
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`specifically relates to a USB format charger provided with a HUB function capable
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`of connecting a plurality of external devices.”). The problems that Morita purports
`
`to solve with its “hub-controllable charger” include:
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`(1) “increase[d]” “number of USB hubs” with increasing number of external
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`peripherals, id. at 7, [0005]-[0006];
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`(2) a single connectable peripheral at a given time for the mobile device
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`because the device is configured with a single USB port for space, id. [0007]; and
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`(3) limited use time of the mobile device when operating as a host due to
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`limited battery capacity and no power source for simultaneous charging, id. [0008].
`
`Morita’s hub-controllable “charger 110” addresses the above problems by
`
`providing connections between a host end (a first port 20 or, when port 20 is
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`disconnected, a second USB port 21) and a device end (USB ports 24 and also
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`USB port 21 when port 20 is disconnected), as illustrated in Figure 2:
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`Morita, Fig. 2. As shown above, the charger’s USB port 21 connects to the USB
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`port of the mobile phone.
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`The back of the charger 110 includes a power supply cable 22, USB port 20
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`for connecting to a host PC, and USB ports 24 for connecting to external
`
`peripherals (such as monitors and keyboards) controlled by either the PC or the
`
`mobile device depending on which serves as the host. See Fig. 2 above; [0012],
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`[0015], [0016].
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`Morita’s functional block diagram, Figure 1, shows that power supply 22 is
`
`connected to a “charging control unit 23”, which supplies power to the USB port
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`21, the hub control unit 27 and the peripherals connected to the hub control unit 27.
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`Id., [0014] (“A power supply voltage supplied from a power supply source [22] is
`
`supplied from the charging control unit 23 to the USB hub control unit 27 and the
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`second USB port 21.”); [0016] (“the supplied power supply voltage is supplied to
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`the mobile videophone device 100 via the USB port 21 to charge an internal
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`battery and supply power supply voltage from the USB port 24 to an external
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`peripheral”).
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`With this power supply configuration, “the mobile phone always accesses
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`the external device while receiving the supply of power from the charger, and thus
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`the mobile phone can be used without worrying about battery consumption due to
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`long-term and continuous use.” Id., [0022].
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`The USB hub control unit 27 in the charger has “functions for branching and
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`transmitting signals, attaching and removing external devices, determining low
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`speed devices and high speed devices, and supplying and managing power.” Id.,
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`[0012]. The hub-controllable charger 110 includes a switch 25 on the front of the
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`charger “for switching each connection destination of the third USB port [24],”
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`that is, connecting the peripherals to a PC as shown in Figure 3 or connecting them
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`to the mobile phone as shown in Figure 4. Id., Fig. 2, [0012], [0017] & [0019].
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`Switch 26 also participates in the switching of the host end from a PC to the
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`mobile phone 100 (and vice versa). Id., [0012].
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`Morita has two configurations. In the first configuration, a PC is connected
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`to port 20 and serves as a host. In this case, if a mobile device is connected to port
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`21, it “is connected to the USB hub control unit 27 as a device” to the host. Id.,
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`[0015]. In the second configuration, no PC is connected to port 20, and the mobile
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`device “is used as the host personal computer.” Id. Petitioner’s unpatentability
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`theory relies on this second configuration where it contends, without any
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`competent evidence, that there is no USB communication or enumeration. Pet. 42-
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`44. This theory flatly contradicts the express disclosure of Morita: in the no-PC
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`mode, the mobile device is “set to operate as a device for host controlling” external
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`peripherals such as keyboards and monitors, for example, by accepting input from
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`the keyboard. Morita, [0018], Fig. 4:
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`In FIG. 4, the mobile videophone device 100 is set to operate as a device
`for host controlling a connected device. Also, the monitor and the
`keyboard 140 are connected as external peripherals of the mobile
`videophone device 100 via the USB hub control unit 27 in the charger
`110. Thus, the operation input of the mobile videophone device 100
`can be inputted using the keyboard 140 connected as an external
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`peripheral without using the keyboard of the mobile videophone device
`100 itself.
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`Morita’s second configuration—where a PC is absent and the mobile phone
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`serves as a host “controlling a connected device”—is cumulative of Dougherty
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`(Ex. 2002) that was asserted in multiple prior proceedings, including IPR2018-
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`00110, -00460, -00465, -00487, -00495, -00485, -00493, -00214, -00472, -00508, -
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`00605, -00606 and -00607. In Dougherty (Ex. 2002), a USB docking station for a
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`laptop, not only connects external peripherals to the laptop that acts as a USB host,
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`but also provides power to the laptop. See Dougherty at Abstract, 1:61-67, 2:45-
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`51. As discussed in the 325(d) Section, Petitioner’s arguments re Morita closely
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`follow those for the Dougherty ground in prior IPRs. See, e.g., IPR2018-00495,
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`Paper 10 at 13-15 (the Board summarizing the Petition’s argument on reasons to
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`incorporate SE1 in Dougherty).
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`B.
`SE1 References
`Petitioner asserts that the use of SE1 was well known in the prior art.
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`However, none of the identified references discloses transmitting an SE1 signal on
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`USB data lines that were transmitting or would continue to transmit standard USB
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`communications, as would be the case with Morita’s USB hub/charger. Rather,
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`each of the prior art references describes the use of SE1 in situations where normal
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`USB communications are not possible (and thus cannot be interfered with).
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`For example, Petitioner asserts that Kerai (Ex. 1012) “used a high state on
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`USB D+ and D- for charging with a charging system.” Pet., 24-25. But Kerai is
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`actually describing an embodiment where a capacitor connected to a mobile device
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`harvests excess power from a USB data line during the periods when the voltage
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`on the data line is held high. See Kerai, at 5:45-51 (“[T]he data lines of a serial
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`connection are held high when the connection is inactive and will vary between a
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`high and low state whilst communication over the ports take place. Thus, each
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`logic detector 50 detects the state of a corresponding [data] line 25, 26 and, where
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`the state is found to be high, permits current to flow into a corresponding capacitor
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`51.”); Fernald, ¶¶60-61.
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`Petitioner also asserts that Shiga (Ex. 1013) disclosed the use of SE1
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`signaling because it can “be easily distinguished from USB standard signals.” Pet.,
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`25-26. But in Shiga, this “SE1” state is provided not to a USB device, or as part of
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`USB communication at all, but rather to a separate “wake-up means” circuit used
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`to toggle the power switch on a computer’s power supply. See, e.g., Shiga, 3:1-9,
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`6:8-12, 7:16-30 (the signal lines used to send SE1 are “not connected” to the signal
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`lines of the USB host when SE1 is sent); Fernald, ¶¶64-65.
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`Petitioner describes Zyskowski (Ex. 1014) as disclosing the use of SE1 by a
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`“host device (e.g., computer) to signal its full power state to a connected device.”
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`Pet. 26. To the contrary, Zyskowski merely discloses that a USB device may
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`observe normal USB communication on the USB data paths – not an abnormal
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`SE1 signal – to determine whether the host computer is powered on (e.g., in a “full
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`power state”) or in standby mode (“reduced power state”). Zyskowski, [0019].
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`Specifically, Zyskowski explains that a USB device may “detect that the host 104
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`is in a reduced power state by monitoring the state of one or both of the [USB] data
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`paths D1 and D2.” Id.; Fernald, ¶56. In other words, because in normal operation
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`a USB host will pull one of the D1 and D2 data lines “high” at various times,
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`observing a high state on either line would indicate that “the host is in a ‘full
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`power’ or normal operation state.” Fernald, ¶57. Zyskowski is not teaching that
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`both of the USB data paths will be “high” simultaneously (i.e., an SE1 state); nor
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`would it, as such a state would be invalid and would not indicate that the host is
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`operating normally. Id.
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`Petitioner also asserts that Casebolt (Ex. 1015) taught that “SE1 could be
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`used as a special signaling mode.” Pet. 26-27. But Casebolt uses SE1 only for
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`PS/2 devices and expressly states that an SE1 signal “causes USB functions to be
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`terminated.” Casebolt, 7:40-46; Fernald, ¶67. Finally, Petitioner asserts that
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`Cypress Semiconductor (Ex. 1016) “integrated [the SE1 state] into its enCoReUSB
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`product in 2000” without further explanation. Pet. 27. Yet, in Cypress’ system,
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`the SE1 state only occurred when USB was “disabled.” Cypress at 24; Fernald,
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`¶66.
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`In each example that Petitioner identifies as purportedly teaching SE1
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`“signaling” by USB devices “without interfering with USB signaling,” SE1 is
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`either not disclosed at all (Zyskowski and Kerai) or used solely in contexts where
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`normal USB communication is either not possible (Shiga), disabled (Cypress) or to
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`be disabled (Casebolt). Fernald, ¶¶56-58 (Zyskowski), 61 (Kerai), 64 (Shiga), 66
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`(Casebolt), 67 (Cypress). Further, none of the examples uses SE1 as an
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`identification signal for the specific purpose used in Petitioner’s proposed
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`obviousness combination. Id., ¶68.
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`All these references have been before the Board in previous proceedings as
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`background art for SE1 signaling. See IPR2018-00465, Paper 11 at 13-14
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`(“Petitioner does not persuasively explain, however, why these [SE1] disclosures
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`would have taught or suggested violating the 500 mA current limit of USB 2.0.”).
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`V.
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`Skill Level of a POSITA
`For purposes of this preliminary response only, Patent Owner applies the
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`skill level proposed by Petitioner.
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`VI. Claim Construction
`Petitioner argues that the Board need not provide an express construction of
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`the term “identification signal . . . configured to indicate to the mobile device that
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`the power socket is not a USB host or hub” for the purposes of this IPR
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`proceeding. Pet. 31. Instead, it requests that the Board find that SE1 signal
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`satisfies the limitation. Id. That is a request for a