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 No. IPR2021-00395
`U.S. Patent 7,239,111
`
`Petitioner’s Request For Rehearing
`Under 37 C.F.R. § 42.71(d)
`
`
`
`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 No. IPR2021-00395
`U.S. Patent 7,239,111
`
`Petitioner’s Request For Rehearing
`Under 37 C.F.R. § 42.71(d)
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. APPLICABLE LEGAL STANDARDS ......................................................... 3
`III. BASIS FOR RELIEF REQUESTED ............................................................. 4
`A.
`The Board overlooked or misapprehended Petitioner’s
`argument and evidence that it would be obvious to use Morita’s
`charger as only a charger. ..................................................................... 4
`The Board overlooked or misapprehended Petitioner’s
`argument and evidence that it would be obvious to use
`components of Morita to generate an “identification signal”
`such as an SE1 signal. .......................................................................... 7
`
`B.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 6
`Merial Ltd. v. Virbac,
`IPR2014-01279, Paper 18 (Apr. 15, 2015) ........................................................... 3
`PNY Techs., Inc. v. Phison Electronics Corp.,
`IPR2013-00472, Paper 16 (April 23, 2014) ......................................................... 3
`Other Authorities
`37 C.F.R. § 42.71(c) ................................................................................................... 3
`37 C.F.R. § 42.71(d) .................................................................................................. 3
`
`ii
`
`
`
`Exhibit
`1001
`1002
`
`1003
`
`1004
`1005
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`1013
`1014
`
`1015
`1016
`
`1017
`1018
`
`Exhibits List
`
`Description
`U.S. Patent No. 7,239,111 (the “’111 Patent”)
`U.S. Patent File History of the ’111 Patent (the “’111 File
`History”)
`Declaration of Dr. Jacob Baker regarding U.S. Patent No.
`7,239,111 (“Baker”)
`Curriculum Vitae of Dr. Jacob Baker
`U.S. Patent No. 6,130,518 (“Gabeheart”)
`U.S. Patent Application Publication No. 2004/1215878
`(“Veselic”)
`U.S. Patent No. 6,936,936 (the “’936 Patent”)
`U.S. Provisional Application No. 60/273,021 (the “’021
`provisional”)
`U.S. Provisional Application No. 60/330,486 (the “’486
`provisional”)
`Universal Serial Bus Specification, Revision 1.1, September 23,
`1998 (“USB 1.1”)
`Universal Serial Bus Specification, Revision 2.0, April 27, 2000
`(“USB 2.0”)
`U.S. Patent No. 6,531,845 (“Kerai”)
`U.S. Patent No. 6,625,738 (“Shiga”)
`U.S. Patent Application Publication No. 2003/0135766
`(“Zyskowski”)
`U.S. Patent No. 6,625,790 (“Casebolt”)
`Cypress CY7C63722/23 CY7C63742/43 enCoReTM USB
`Combination Low-Speed USB & PS/2 Peripheral Controller, by
`Cypress Semiconductor Corporation, published May 25, 2000
`(“Cypress”)
`Japanese Patent Application No. 2000-165513A (“Morita”)
`Amended Complaint, Fundamental Innovation Systems Int’l LLC
`v. TCT Mobile (US) Inc. et al., No. 1:20-cv-00552-CFC (D. Del.
`Sep. 11, 2020) (“Complaint”)
`
`iii
`
`
`
`Exhibit
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`2015
`
`Description
`Telephonic Hearing Transcript dated March 25, 2021
`U.S. Patent No. 7,360,004 (“Dougherty”)
`Jan Axelson, USB Complete (1999), excerpt
`U.S. Patent No. 5,884,086 (“Amoni”)
`U.S. Patent No. 6,904,488 (“Matusmoto”)
`Jan Axelson, USB Complete (2d ed. 2001), excerpt
`U.S. Patent No. 5,859,522 (“Theobald”)
`Reserved
`Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Preliminary Response (“Fernald”)
`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)
`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)
`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)
`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
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`On July 8, 2021, the Board issued a Decision denying institution of Inter
`
`Partes Review of U.S. Pat. No. 7,239,111 (the “’111 Patent”). IPR2021-00395,
`
`Paper 8, 2 (“ID”). The claims of the ’111 Patent recite elements of an “USB
`
`adapter” with an identification subsystem that is “configured to generate and
`
`identification signal.” ID at 8. IPR2021-00385, Paper 1, 8-10 (“Petition”).
`
`The Petition included a single ground: the challenged claims are obvious in
`
`view of Morita and the knowledge of a person of ordinary skill in the art. ID, 8-9.
`
`Morita discloses a charger with an opening to place a phone on it for charging.
`
`IPR2021-00385, Paper 1 (“Petition”), 37. Morita also discloses that the charger
`
`has ports to connect to other devices, such as a personal computer and other
`
`peripheral devices (e.g., a keyboard and mouse). Id., 37-39, 41-43. These ports to
`
`1
`
`
`
`connect such devices are shown on the back of the charger base unit in the above
`
`figure.
`
`The Petition argued that it would be obvious to use Morita to only charge a
`
`phone (without connecting other devices, such as a personal computer and a
`
`keyboard) and in this case, it would be obvious for the charger to send an
`
`“identification signal” to indicate that the charger can charge the phone in a high-
`
`power mode. Petition, 42-43.
`
`The Board, however, found that Morita does not “disclose” only charging
`
`the phone without the phone being connected to other peripheral devices. ID, 22
`
`(“We agree with Patent Owner that Morita does not disclose an operating mode
`
`wherein ‘the charger was merely plugged into the power socket (outlet) to charge
`
`the mobile devices without any other external device (e.g., USB host or hub).”).
`
`The Board further found that Morita does not disclose a subsystem that is
`
`configured to generate the required identification signal. ID at 25 (“Petitioner, at
`
`best, shows that Morita is capable of generating an SE1 signal, not that it is
`
`configured to generate the recited identification signal.”). Again, however,
`
`Petitioner’s argument is that would be obvious to use the subsystem or Morita in
`
`this way, not that that Morita specifically discloses it. And the Board’s finding that
`
`Morita does not disclose this was based in part on its earlier finding that Morita
`
`does not expressly disclose a charging mode. ID at 25 (“As discussed above,
`
`2
`
`
`
`Petitioner fails to sufficiently establish that Morita discloses a charging only mode
`
`where the mobile phone is not connected to a personal computer and/or does not
`
`function as a host computer.”).
`
`Respectfully, Petitioner asserts that the Board overlooked or
`
`misapprehended Petitioner’s argument and evidence, because Petitioner argued
`
`that (1) it would be obvious to use the “charger” of Morita as only a charger and
`
`(2) it would have been obvious in that situation to configure the subsystem of
`
`Morita to send the requisite “identification signal,” not that either of those
`
`elements are expressly disclosed. Petition, 42-46.
`
`II.
`
`APPLICABLE LEGAL STANDARDS
`This Request is authorized under 37 C.F.R. § 42.71(d) because it is being
`
`filed within 30 days of the entry of a decision not to institute a trial. Under 37
`
`C.F.R. § 42.71(d), the Request “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`
`§ 42.71(c) provides that a panel will review the decision for an abuse of discretion.
`
`An abuse of discretion exists when the Board (1) overlooks relevant disclosures in
`
`a prior art reference, see Merial Ltd. v. Virbac, IPR2014-01279, Paper 18 at 7
`
`(Apr. 15, 2015), or (2) misapplies the law, see PNY Techs., Inc. v. Phison
`
`Electronics Corp., IPR2013-00472, Paper 16 at 3 (April 23, 2014).
`
`3
`
`
`
`III. BASIS FOR RELIEF REQUESTED
`Petitioner argued that in view of Morita and the knowledge of a POSITA, it
`
`would be obvious for Morita’s charger to send an “identification signal” (namely,
`
`an SE1 signal) to Morita’s mobile phone, thereby rendering obvious the
`
`“identification signal” limitations. E.g., Petition, 41-50. Specifically, the Petition
`
`argued that (1) it would be obvious to use Morita’s charger to only charge Morita’s
`
`mobile phone and in this situation, (2) it would be obvious for the charger to send
`
`an SE1 signal to indicate charging capacity of a high-power port. Id. As the below
`
`explains, it appears that the Board overlooked or misapprehended Petitioner’s
`
`arguments and evidence with respect to these two arguments.
`
`A.
`
`The Board overlooked or misapprehended Petitioner’s argument
`and evidence that it would be obvious to use Morita’s charger as
`only a charger.
`Importantly, Petitioner argued that it would be obvious to use Morita’s
`
`charger as only a charger to charge the Morita videotelephone:
`
`Morita’s device is a “charger” and at least one of its stated objectives
`was to charge a connected mobile device. Morita, Abstract; Baer, ¶94.
`A POSITA would have found it obvious that although Morita’s charger
`was capable of handling a “plurality of external devices,” one
`possibility would have been that the charger was merely plugged into
`the power socket (outlet) to charge the mobile device without any other
`external device (e.g., USB host or hub). Baker, ¶¶116-118. Indeed,
`often users just need to charger their mobile device.
`
`4
`
`
`
`Petition, 42-43 (emphasis added).
`
`As shown above, with supporting expert testimony, Petitioner explained that
`
`Morita discloses that one of its objectives is to charge the mobile phone and
`
`discloses that other devices, e.g., a personal computer, are optionally connectable
`
`to the charger. Id. In view of these disclosures, the Petitioner argued that it would
`
`be obvious to use the charger as only a charger for the mobile phone with no
`
`connections to other devices (which Morita depicts in Figure 2). Id.
`
`Respectfully, Petitioner believes that the Board overlooked Petitioner’s
`
`obviousness argument and supporting evidence. Specifically, the Board
`
`determined that Morita does not disclose only “acting as a charger.” ID at 19-20
`
`(“Patent Owner provides several contentions that when considered together
`
`persuade us that Petitioner has not sufficiently shown that Morita and/or the
`
`knowledge of a skilled artisan discloses the identification subsystem.”); ID at 22
`
`(“We agree with Patent Owner that Morita does not disclose an operating mode
`
`wherein ‘the charger was merely plugged into the power socket (outlet) to charge
`
`the mobile devices without any other external device (e.g., USB host or hub).”); ID
`
`at 23 (“Petitioner’s reliance on paragraph 118 of Dr. Baker’s Declaration (Pet. 42)
`
`is unavailing because it does not direct us to disclosure of a charging only mode in
`
`Morita.”).
`
`5
`
`
`
`That Morita does not “disclose” acting only as a charger is of no moment.
`
`The Board appears to have overlooked or misapprehended that Petitioner’s
`
`argument was obviousness, not anticipation. Notably, Petitioner did not argue that
`
`Morita “discloses” that Morita’s charger acts only as a charger. Petition, 42-43. A
`
`proper obviousness analysis requires looking at not what Morita discloses, but also
`
`what in view of Morita, would be, for example, “common sense.” KSR Int’l Co. v.
`
`Teleflex, Inc., 550 U.S. 398, 420 (2007). Indeed, “familiar items may have obvious
`
`uses beyond their primary purposes, and in many cases a person of ordinary skill
`
`will be able to fit the teachings of multiple patents together like pieces of a
`
`puzzle.” Id. In this regard, the Petition demonstrates that it would be “common
`
`sense” to use Morita’s charger to simply charge Morita’s mobile device. It goes
`
`without saying (but the Petition did) that often users just need to charge their
`
`mobile device. Petition, 42-43. Indeed, even if the primary purpose was to both
`
`charge the Morita phone and connect the phone to, e.g., a mouse and keyboard, an
`
`obvious use would certainly be to just charge the phone. In fact, Morita discloses
`
`the peripheral devices, e.g., a mouse and keyboard, are like puzzle pieces in that
`
`they connect to the charger with a simple plug. Petition, 37. Thus, a POSITA
`
`certainly would find it obvious to disconnect those peripheral devices, like taking
`
`pieces off a puzzle.
`
`6
`
`
`
`Petitioner respectfully requests that the Board grant Petitioner’s rehearing
`
`request and conduct an obviousness analysis as to whether it would be obvious to
`
`use Morita’s charger as only a charger.
`
`B.
`
`The Board overlooked or misapprehended Petitioner’s argument
`and evidence that it would be obvious to use components of
`Morita to generate an “identification signal” such as an SE1
`signal.
`Petitioner argued that in the case of Morita’s charger only charging a phone
`
`(without connections to a host and other peripheral devices), it would be obvious to
`
`configure the components of Morita to generate an “identification signal” to
`
`“indicate to the mobile device that that the power socket is not a USB host or hub.”
`
`Without this connection to a USB host or hub via USB port 20, a
`POSITA would have found it obvious to provide an identification
`signal via USB port 21 to indicate that the adapter is not a USB host or
`hub, i.e., is capable of charging via a power socket. A POSITA would
`have known that the benefit of an adapter powered by a power socket—
`i.e., which does not have the current limitations of a USB host or hub—
`is that in all cases the adapter’s USB port connected to the mobile phone
`can operate as a “High-power Hub Port” that can supply at least 500
`mA of current as seen below in Table 7-5 from USB 1.1. Baker, ¶ 116.
`A POSITA would have also known that if the USB adapter were
`powered by a USB host or hub instead of a power socket then the
`connection powering the USB adapter could be a “Low-power Hub
`Port” that can supply at least 100 mA of current to a connected mobile
`device. Id.
`
`7
`
`
`
`…
`A POSITA would have been motivated, in this common situation where
`the power socket is not a USB host or hub (i.e., Morita’s adapter
`without a connection via USB port 20), to identify this to the mobile
`device so that the mobile device could always know to charge from a
`“High-power Hub Port.” Baker, ¶117.
`
`Petition, 43-44.
`
`It appears that the Board overlooked or misapprehended critical evidence.
`
`In particular, the Board again found that Morita does not disclose generating this
`
`signal, instead of determining whether it would have been obvious to configure
`
`Morita to do so.
`
`Regardless of whether Morita discloses a charging only mode,
`Petitioner must sufficiently establish that the prior art discloses ‘an
`identification subsystem configured to generate an identification signal
`wherein the identification signal is configured to indicate to the mobile
`device that eh power socket is not a USB host or hub.”
`
`ID at 24 (emphasis added); see also ID at 25 (“Petitioner, at best, shows that
`
`Morita is capable of generating an SE1 signal, not that it is configured to generate
`
`the recited identification signal.”). And, this finding was, at least in part, based on
`
`the finding above that Morita does not disclose a charging only mode. Id. (“As
`
`discussed above, Petitioner fails to sufficiently establish that Morita discloses a
`
`8
`
`
`
`charging only mode where ethe mobile phone is not connected to a personal
`
`computer and/or does not function as a host computer.”)
`
`Petitioner respectfully requests that the Board conduct an obviousness
`
`analysis on whether it would be obvious to configure Morita’s charger to generate
`
`an identification signal.
`
`Dated: July 20, 2021
`
`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`By:
`/Jeffrey Johnson/
`
`Jeffrey Johnson, Reg. No. 53,078
`Email: 3J6PTABDocket@orrick.com
`609 Main Street, 40th Floor
`Houston, TX 77002-3106
`Main: (713) 658-6400
`Fax: (713) 658-6401
`
`Robert J. Benson (to be admitted pro hac vice)
`Email: R75PTABDocket@orrick.com
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Main: (949) 567-6700
`Fax: (949) 567-6710
`
`Attorneys for Petitioners
`
`9
`
`
`
`CERTIFICATION PURSUANT TO 37 C.F.R § 42.11
`
`Pursuant to 37 C.F.R. § 42.11, the undersigned hereby certifies that this
`
`Request for Rehearing is not being presented for an improper purpose and that all
`
`legal contentions, allegations, and denials are warranted and have evidentiary
`
`support.
`
`Dated: July 20, 2021
`
` /Jeffrey Johnson/
`Jeffrey Johnson, Reg. No. 53,078
`Email: 3J6PTABDocket@orrick.com
`609 Main Street, 40th Floor
`Houston, TX 77002-3106
`Attorney for Petitioners
`
`10
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned certifies that on July 20, 2021, a copy of Petitioner’s
`
`Request For Rehearing Under 37 C.F.R. § 42.71(d) was served in its entirety by
`
`filing through the Patent Trial and Appeal Board End to End System, as well as via
`
`electronic mail, upon the following attorneys of record for the Patent Owner:
`
`Hong Annita Zhong
`Jason Sheasby
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`
`hzhong@irell.com
`jsheasby@irell.com
`fundamentalIPRs@irell.com
`
`Attorneys for Patent Owner Fundamental Innovation Systems International LLC
`
` /Karen Johnson/
` Karen Johnson
`
`11
`
`
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