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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 IPR2021-00428
`Patent No. 8,624,550
`___________________
`
`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 IPR2021-00428
`Patent No. 8,624,550
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`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`Introduction ................................................................................................... 1
`Background on the USB Communication Protocol ..................................... 3
`A. USB Hubs ........................................................................................... 4
`B.
`USB Signal and Power Connections .................................................. 5
`C.
`Power Supply to USB Devices and Hubs .......................................... 6
`D.
`Enumeration to Establish Communication Between Host and
`Device ................................................................................................. 7
`Single Ended 1 (“SE1”) Line State .................................................... 8
`E.
`Summary of the ’550 Patent ....................................................................... 10
`III.
`IV. Summary of the Asserted Prior Art ............................................................ 12
`A. Morita ............................................................................................... 12
`B.
`SE1 References ................................................................................. 17
`Skill Level of a POSITA ............................................................................ 20
`V.
`VI. The Board Should Deny the Petition under § 325(d) ................................. 20
`A.
`The Same or Substantially the Same Art and Arguments
`were Previously Presented to the Board ........................................... 20
`1.
`Theobald (for the theory based on allegedly supplying
`more than 500mA of current) ................................................ 21
`Dougherty and Rogers (for theories based on
`supplying more than 100mA of current without
`enumeration or using SE1 to indicate abnormal
`conditions) .............................................................................. 24
`(a) Rogers-based petitions ................................................. 25
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`2.
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`B.
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`B.
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`Case IPR2021-00395
`Patent No. 7,239,111
`(b) Dougherty-based petitions ........................................... 28
`Petitioner Does Not Assert that the Office Erred in a Manner
`Material to the Patentability of Challenged Claims ......................... 33
`VII. The Board Should Decline to Consider Incorporated-By-Reference
`Expert Testimony ........................................................................................ 34
`VIII. The Petition’s Translation of Morita Does Not Comply With Patent
`Office Rules ................................................................................................ 34
`IX. Ground 2 Is Moot ........................................................................................ 35
`X.
`There Is No Showing Of A Reasonable Likelihood Of Success To
`Prevail On At Least One Challenged Claims On Ground 1 ....................... 35
`A.
`Petitioner Provides No Competent Evidence That the
`Proposed Combination Discloses All The Limitations .................... 39
`1.
`Petitioner presents no competent evidence that
`Morita’s charger supplies more than the amount of
`current permitted by the USB specification ........................... 39
`Petitioner presents no competent evidence that
`Morita’s charger supplies more than 100mA of current
`without enumeration without regard to the USB
`specification ........................................................................... 46
`Analysis of the other claims does not cure the above
`deficiencies ............................................................................. 51
`Petitioner Provides No Competent Evidence That a POSITA
`Would Have Used SE1 In Morita’s System ..................................... 52
`1.
`Petitioner’s Proposed Combination Would Render
`Morita Inoperable for Its Intended Purpose ........................... 52
`SE1 Does Not Afford A Predictable Solution ....................... 61
`2.
`XI. Conclusion .................................................................................................. 64
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`2.
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`3.
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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, 33
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) ............................................ 34
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 60
`Halliburton Energy Servs., Inc. v. Schlumberger Tech. Corp.,
`IPR2017-01777, Paper 13, 3 (PTAB Jan. 31, 2018) .......................................... 35
`
`Huawei Device Co., Ltd., Inc. v. Fundamental Innovation Systems
`Int’l LLC,
`IPR2018-00472, Paper 12 (PTAB Aug. 3, 2018) ........................................passim
`
`Huawei Device Co., Ltd. v. Fundamental Innovation Systems
`International LLC,
`IPR2018-00465, Paper 11 (PTAB Aug. 20, 2018) ......................................passim
`
`Huawei Device Co., Ltd. v. Fundamental Innovation Systems
`International LLC,
`IPR2021-00485, Paper 8 (PTAB, Sept. 4, 2018) ................................................ 63
`LG Electronics, Inc. v. Fundamental Innovation Systems Int’l LLC,
`IPR2018-00493, Paper 10 (PTAB Aug. 30, 2018) ......................................passim
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ................................................................................ 54
`Systems Int’l, Inc.,
`IPR2018-00495, Paper 10 (PTAB Aug. 9, 2018) ............................................... 62
`ZTE (USA) Inc. v. Fundamental Innovation Sys. Int’l LLC.
`IPR2018-00111, Paper 62 (May 3, 2019) ....................................................passim
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`Case IPR2021-00395
`Patent No. 7,239,111
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`Statutes
`18 U.S.C. 1001 ......................................................................................................... 34
`28 U.S.C. §1746 ....................................................................................................... 34
`35 U.S.C. §253(a) .................................................................................................... 35
`35 U.S.C. § 325(d) ....................................................................................... 20, 33, 35
`Other Authorities
`37 C.F.R. §1.68 ........................................................................................................ 34
`37 C.F.R. §1.321(a) .................................................................................................. 35
`37 C.F.R. §42.63(b) ................................................................................................. 34
`37 CFR 1.321(a) ....................................................................................................... 35
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`EXHIBIT LIST
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`
`Case IPR2021-00428
`Patent No. 8,624,550
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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 U.S. Patent No. 5,859,522 (“Theobald”)
`Ex. 2008 U.S. Patent No. 6,556,564 (“Rogers”)
`Ex. 2009 Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Preliminary Response
`Ex. 2010 Statutory Disclaimer of Claims 1, 2, 9, 10, 11 and 18 of the '550
`patent
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`I.
`
`Introduction
`The USB charging technology at issue in U.S. Pat. No. 8,624,550 to Fischer
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`et al. (“the ’550 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 the first wave of petitions, the Board denied institution in 13 instances
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`(including 3 petitions against the ’550 patent), reached a final written decision in
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`favor of the ’550 patent in IPR2018-00111, and terminated the remaining four (one
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`of which being the same as IPR2018-00111). The earlier challenges against the
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`Fischer family patents involved combining SE1 signaling with at least one of three
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`primary references (Theobald, Dougherty or Rogers). See Section VI below.
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`In this wave of petitions, Petitioner relies primarily on a different reference,
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`Morita (Ex. 1007), but again in combination with SE1 signaling. The Petition
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`suffers from the same deficiency as earlier petitions. For example, like Theobald-
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`based challenges, for Ground 1, Petitioner provides no evidence that Morita or its
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`cited references “teach or suggest violating a current limit set forth in an applicable
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`protocol, much less violating the 500 mA current limit set forth in USB 2.0.” Cf.
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`Huawei Device Co., Ltd. v. Fundamental Innovation Systems International LLC,
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`IPR2018-00465, Paper 11 at 11-14 (PTAB Aug. 20, 2018) (“IPR2018-00465,
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`Paper 11”). Indeed, Petitioner points to a USB specification to argue that Morita’s
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`USB port 21 at issue is a high-powered hub port as specified. Pet. 43-44. That is
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`evidence of compliance with USB specification, and not “without regard to” its
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`current limit.
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`Morita is also substantially the same as Dougherty as both involve a USB
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`hub charger that expands a portable device’s accessibility to USB peripherals while
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`providing power to the portable device. As with previous attempts to combine SE1
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`with Dougherty, “Petitioner has not explained sufficiently why using [] SE1 signal
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`to replace [USB enumeration] would not render [Morita’s USB hub charger]
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`inoperable for the intended purpose of replicating USB ports given the proscription
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`in the USB specification against intentionally generating an SE1 signal.” LG
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`Electronics, Inc. v. Fundamental Innovation Systems Int’l LLC, IPR2018-00493,
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`Paper 10 at 22-23 (PTAB Aug. 30, 2018) (“IPR2018-00493”); see also Huawei
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`Device Co., Ltd., Inc. v. Fundamental Innovation Systems Int’l LLC, IPR2018-
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`00472, Paper 12 at 22-23 (PTAB Aug. 3, 2018) (“IPR2018-00472”) (rejecting the
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`proposed combination of Dougherty with SE1 because the primary function of the
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`docking station requires it maintain USB communication with the laptop and given
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`this fact, petitioner has not explained why a POSITA would have used SE1). Thus,
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`the proposal could only have resulted from hindsight. Id. at 19.
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`Consequently, for reasons the Board previously found and for reasons stated
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`below, institution should be denied because here, Petitioner has also not
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`sufficiently explained why a POSITA would have modified Morita to depart from
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`the USB current limit, to eliminate USB enumeration, or to use SE1 that would
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`admittedly disrupt normal USB communication.
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`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
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`accessible peripherals.” Ex. 1010 (“USB 1.1”) at 15; Ex. 1011 (“USB 2.0”), at
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`15.1 A schematic illustration of the tiered USB bus topology is shown below.
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`USB 1.1 at 16; see also USB 2.0 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 rather than
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`stamped page numbers, to be consistent with the Petition.
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`The above “tiered star topology,” “connects USB devices with the USB
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`host.” USB 1.1 at 16; USB 2.0 at 16. A USB device can be either a hub or a
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`function. USB 1.1 at 16-17, § 4.1.1.2; USB 2.0 at 17, § 4.1.1.2. A hub “provide[s]
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`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.
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`A. USB Hubs
`As shown in the USB topology above, “[a] hub is at the center of each star.”
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`USB 1.1 at 16; USB 2.0 at 16. “Each wire segment is a point-to-point connection
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`between the host and a hub or function, or a hub connected to another hub or
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`function.” Id. An architecture for a USB 1.1-compliant hub is shown below. USB
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`1.1 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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`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. USB 1.1 at 231;
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`USB 2.0 at 298-99, § 11.1.2.1. “Hubs are the essential USB component for
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`establishing connectivity between the host and other devices” and must have fault
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`detection and recovery mechanisms. USB 1.1 at 232; USB 2.0 at 300, § 11.1.2.3.
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`B. USB Signal and Power Connections
`“The USB transfers signal and power over a four-wire cable,” as shown
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`below. USB 1.1 at 17; USB 2.0 at 17, § 4.2.1. In the configuration below, VBUS
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`and 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
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`provide power to a USB device connected to it via a cable. USB 1.1 at 18; USB
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`2.0 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
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`called self-powered devices.” Id.
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`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
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`connection unit 22 supplies voltage “to the mobile videophone device 100 via the
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`USB port 21” to “external peripheral[s]” from USB port 24. Morita, Abstract,
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`Figs. 1-2, [0016], [0014]; Fernald (Ex. 2009), ¶30. In contrast to bus-powered
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`hubs that can “supply only one unit load [i.e., 100mA] per port,” self-powered
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`hubs can “supply five unit loads [500 mA] to each port.” USB 1.1 at 135-36, Figs.
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`7-32 & 7-33; USB 2.0 at 172-73, Figs. 7-42 & 7-43, § 7.2.1.2. A schematic of a
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`self-powered hub is shown below. USB 1.1 at 136, Fig. 7-33. As shown in the
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`schematics, a local power supply (i.e., a power source other than that from the
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`upstream VBUS) provides power to downstream ports as well as internal (“non-
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`removable”) functions. Id.; Fernald, ¶90. The hub controller can be powered by
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`the local power supply or power from the upstream VBUS (up to 100mA). USB 1.1
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`at 136, Fig. 7-33; Fernald, ¶24.
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`
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`D. Enumeration to Establish Communication Between Host and
`Device
`USB enumeration is a handshaking protocol by which the host can identify,
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`address and configure each peripheral device. USB 1.1 at 179; USB 2.0 at 243-44,
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`§ 9.1.2 (describing steps of enumeration process). Before enumeration, the host
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`can perform only basic control communications with the device to get the
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`information necessary to configure the device. USB 1.1 at 180-81; USB 2.0 at
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`244-45; Fernald, ¶¶42-43. Once configured, the device is “enumerated” and
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`“ready for use.” USB 1.1 at 179; USB 2.0 at 244. “A USB device must be
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`configured before its function(s) may be used.” USB 1.1 at 180; USB 2.0 at 244,
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`§ 9.2.3.
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`E.
`Single Ended 1 (“SE1”) Line State
`“SE1 is a state in which both the D+ and D- lines are at a voltage above …
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`0.8 V.” USB 2.0 at 123. As Petitioner acknowledges, the USB specification warns
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`that “[l]ow-speed and full-speed USB drivers must never ‘intentionally’ generate
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`an SE1 on the bus.” Id. (cited on Pet. 31). Petitioner also argues that SE1
`
`signaling puts a port into the Disabled state and disables USB communication. Pet.
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`25-26 (discussing how SE1 supposedly disables port). Petitioner further argues
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`that with the port disabled, the connected device “can’t [even] receive a reset
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`command and thus can’t receive or process commands ….” Pet. 26.
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`Nevertheless, Petitioner proposes sending an SE1 signal to Morita’s mobile
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`device when it is connected to a USB “hub-controllable charger” that does not
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`have a PC host. Pet. 48-49; Morita, Abstract. Petitioner does not explain how it is
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`possible to completely disable USB communications in this situation and still
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`allow the mobile device to “operate as a device for host controlling a connected
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`device” such as a keyboard or monitor that is connected to it via the USB-hub
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`charger when a PC is disconnected. Morita, [0018], Fig. 4 (showing in the absence
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`of a PC, “the monitor and keyboard [] are connected as external peripherals of the
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`mobile videophone device 100 via the UB hub control unit 27 in the charger 110”);
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`[0022] (“the mobile phone always accesses the external device while receiving the
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`supply of 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 in 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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`00493, Paper 10 at 21 (“Petitioner … fails to sufficiently explain how Dougherty’s
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`laptop would be able to utilize peripheral devices attached to the docking station in
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`the absence of USB enumeration.”); id. at 22 (“[T]he statement in the USB
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`Specification that an SE1 signal should never be intentionally generated ([USB
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`2.0], 123) suggests that the combination of Dougherty and Shiga proposed by
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`Petitioner is not a “trivial alternative” and would not produce “operable and
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`predictable results.””); ZTE (USA) Inc. v. Fundamental Innovation Sys. Int’l LLC.
`
`IPR2018-00111, Paper 62 at 30 (May 3, 2019) (“IPR2018-00111”) (“Petitioner
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`provides no persuasive evidence to support its proposed sweeping change to the
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`USB protocol, much less an explanation of how this new USB communication
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`protocol would work in Rogers”).
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`Given Petitioner’s acknowledgement that SE1 disables USB
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`communications and given the need for USB communication in order for Morita’s
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`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
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`would have desired to render Morita inoperable as intended.2 That is
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`impermissible hindsight and contrary to the fundamental tenets of the obviousness
`
`doctrine.
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`III. Summary of the ’550 Patent
`The ’550 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 devices.”
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`’550 patent, at 2:1-3. This was in part due to the incompatibility between common
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`power sources such as a power socket and the USB specification’s requirement
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`that “a USB device participate in a host-initiated process called enumeration in
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`order to be compliant with the current USB specification in drawing power from
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`2 See Sections IV.A and X.B.1 below.
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`the USB interface.” Id., at 2:5-7. A mobile phone attached to such a power socket
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`via the phone’s USB port would be unaware, for example, that the attached charger
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`was not limited by the power limits imposed by the USB specification. ’550
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`patent, at 2:64-3:10.
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`Faced with these challenges, the inventors designed a new “USB adapter for
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`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. ’550 patent, at 2:34-36, 2:64-3:10.
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`The identification signal serves to inform a mobile phone, for example, that
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`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
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`8:21-29. In one embodiment, the identification signal is a signal with voltages
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`above 2V on both D+ and D- lines. E.g., id., Figure 3. “If the voltages on both the
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`D+ and D- lines of the USB connector are greater than 2 Volts …, then the mobile
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`device [] determines that the device connected to the USB connector 54 is not a
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`typical USB host or hub and that a USB adapter [] has been detected (step 230).”
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`Id., 9:39-44. The mobile device can then proceed to charge the battery without
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`enumeration. Id., 9:44:47.
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`IV. Summary of the Asserted Prior Art
`A. Morita
`Morita “provide[s] a hub-controllable charger capable of accessing a
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`plurality of external devices in a state wherein a mobile phone is coupled to the
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`charger, and capable of managing transmission and branching of signaling between
`
`each.” Ex. 1017 at 6, Abstract; see also [0001] (Morita “relates to a charger
`
`capable 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
`
`of connecting a plurality of external devices.”). The problems that Morita purports
`
`to solve with its “hub-controllable charger” include:
`
`(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
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`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; see also id., ¶ [0016] (“FIG. 2 is one embodiment of the charger of
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`the present invention and a diagram illustrating coupling of a mobile phone and a
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`charger.”). As shown above, the charger’s USB port 21 connects to the USB port
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`of the mobile phone.
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`The back of the charger 110 includes a power supply cable 22, USB type-B
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`port 20 for connecting to a host PC, and USB type-A ports 24 for connecting to
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`external peripherals (such as monitors and keyboards) controlled by either the PC
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`or the mobile device depending on which serves as the host. See Fig. 2 above;
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`[0012], [0015], [0016].
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`Morita’s functional block diagram, Figure 1, shows that power supply 22 is
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`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
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`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]. Morita further explains that “[t]he
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`power supply of the mobile videophone device 100 is supplied from the USB
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`controller 14 [on the device side] to the battery 15 by coupling to a charger via a
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`USB format capable of supplying data and power.” Id., [0013]. Like Theobald
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`(Ex. 2007), Morita does not disclose or suggest deviating from USB
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`Specification’s current supply limit, or a need for a faster charging rate than what a
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`USB port can provide.
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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 also includes a switch 25 on the front of
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`the charger. Id., Fig. 2. Switch 25 is “for switching each connection destination of
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`the third USB port [24],” that is, connecting the peripherals to a PC as shown in
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`Figure 3 or connecting them to the mobile phone as shown in Figure 4. Id., [0012],
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`[0017] & [0019] (“the connection destination can be switched from the charger
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`110, and the operation setting of the mobile videophone device 100 can be
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`performed by only the connection switching switch 25”). Switch 26 also
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`participates in the switching of the host end from a PC to the mobile phone 100
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`(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 2 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. 46-
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`47, 48-49. This theory flatly contradicts the express disclosure of Morita: in the
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`no-PC mode, the mobile device is “set to operate as a device for host controlling”
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`external peripherals such as keyboards and monitors, for example, by accepting
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`input from 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
`peripheral without using the keyboard of the mobile videophone device
`100 itself.
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`Morita’s second configuration—where the mobile phone serves as a host
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`“controlling a connected device”—is cumulative of Dougherty (Ex. 1006) that was
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`asserted in multiple prior proceedings, including IPR2018-00110, -00460, -00465,
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`00607. In Dougherty (Ex. 1006), a USB docking station for a laptop, not only
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`connects external peripherals to the laptop that acts as a USB host, but also
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`provides power to the laptop. See Dougherty at Abstract, 1:61-67. As discussed in
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`the 325(d) Section, Petitioner’s arguments re Morita closely follow those for the
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`Dougherty ground in prior IPRs. See, e.g., IPR2018-00493, Paper 10 at 14-16 (the
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`Board summarizing the Petition’s argument on reasons to incorporate SE1 in
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`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. 27. 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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`28. 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. 29. 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”)