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. IPR2021-00428
`U.S. Patent 8,624,550
`
`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. IPR2021-00428
`U.S. Patent 8,624,550
`
`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 Morita’s charger, in a charger only
`configuration, would supply high-power without enumeration. .......... 8
`
`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, 4
`PNY Techs., Inc. v. Phison Electronics Corp.,
`IPR2013-00472, Paper 16 (Apr. 23, 2014) ........................................................... 4
`Other Authorities
`37 C.F.R. § 42.71(c) ................................................................................................... 3
`37 C.F.R. § 42.71(d) .................................................................................................. 3
`
`ii
`
`
`
`Exhibits List
`
`Description
`U.S. Patent No. 8,624,550 to Fischer et al., “Multifunctional
`Charger System and Method,” filed June 28, 2012 (the “’550
`Patent”)
`U.S. Patent File History of the ’550 Patent Excerpts (the “’550
`File History”)
`Declaration of Dr. Jacob Baker regarding U.S. Patent No.
`8,624,550 (“Baker”)
`Curriculum Vitae of Dr. Jacob Baker
`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”)
`U.S. Patent No. 7,360,004 (“Dougherty”)
`Japanese Patent Application No. 2000-165513A (“Morita”)
`U.S. Provisional Application No. 60/273,021
`U.S. Provisional Application No. 60/330,486
`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 enCoRe™ USB
`Combination Low-Speed USB & PS/2 Peripheral Controller, by
`Cypress Semiconductor Corporation, published May 25, 2000
`(“Cypress”)
`U.S. Patent No. 5,923,146 (“Martensson”)
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
`1005
`
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`1013
`1014
`
`1015
`1016
`
`1017
`
`iii
`
`
`
`Exhibit
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`
`2010
`
`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”)
`U.S. Patent No. 6,556,564 (“Rogers”)
`Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Preliminary Response
`Statutory Disclaimer of Claims 1, 2, 9, 10, 11 and 18 of the '550
`patent
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`On July 8, 2021, the Board issued a Decision denying institution of Inter
`
`Partes Review of U.S. Pat. No. 8,624,550 (the “’550 Patent”). IPR2021-00428,
`
`Paper 8, 2 (“ID”). The remaining claims1 of the ’550 Patent recite elements of “an
`
`adapter” that supplies power (1) “without enumeration” (Claims 2 and 13) and/or
`
`(2) “in response to an abnormal data condition on said USB communication path.”
`
`(claims 4 and 13). See ID at 9.
`
`The ID addresses a single ground from the Petition: the challenged claims
`
`are obvious in view of Morita and the knowledge of a person of ordinary skill in
`
`the art. Id. Morita discloses a charger with an opening to place a phone on it for
`
`charging:
`
`1 Patent Owner disclaimed claims 1, 2, 9, 10, 11, and 18. ID at 6.
`
`1
`
`
`
`Ex. 1007 (“Morita”) at Figure 2; see also IPR2021-00428, Paper 1 (“Petition”) at
`
`31-33. Morita also discloses that the charger has ports that can be connected to
`
`other devices, such as a personal computer and other peripheral devices (e.g., a
`
`keyboard and mouse). Petition, 32-33. The ports that can connect to 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 charge a phone
`
`without connecting other devices, such as a personal computer and a keyboard.
`
`Petition, 33, 48. A person of ordinary skill in the art would have understood that
`
`configuration would occur in at least some circumstances (e.g., if the connected
`
`computer was turned off or simply if no such devices were connected). Id. The
`
`Petition further explained that, in this configuration, enumeration would not be
`
`possible and, accordingly, a person of ordinary skill in the art would have found it
`
`obvious to use the known SE1 signal (an abnormal data signal) to enable high-
`
`power charging without enumeration. Petition, 46-53.
`
`The Board, however, found that Morita does not “provide” a charger that
`
`will only charge the phone without being connected to other peripheral devices.
`
`ID, 14 (“As Patent Owner explains, and we agree, ‘Morita does not provide a
`
`charger for the sake of charging alone.’”) Respectfully, Petitioner asserts that the
`
`Board overlooked or misapprehended Petitioner’s argument and evidence, because
`
`2
`
`
`
`Petitioner argued that such a use would be obvious, not that Morita expressly
`
`discloses this use. See e.g., Petition at 46-47.
`
`Because the Board did not consider a charging only configuration, it found
`
`that the mobile device would always operate as a host that must use enumeration to
`
`communicate with the peripheral devices controlled by the mobile device. ID 11-
`
`12. Respectfully, Petitioner asserts that the Board overlooked or misapprehended
`
`Petitioner’s evidence because, in the charging only configuration (no connected
`
`peripherals), there is no host, and the mobile device cannot engage in
`
`communication or enumeration. Petition, 16-17 and 47. In this case, a POSITA
`
`would have found it obvious to send the SE1 signal (an abnormal data condition)
`
`to allow the phone to charge without enumeration. Petition at 47-52.
`
`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
`
`3
`
`
`
`(Apr. 15, 2015), or (2) misapplies the law, see PNY Techs., Inc. v. Phison
`
`Electronics Corp., IPR2013-00472, Paper 16 at 3 (Apr. 23, 2014).
`
`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 supply more than current “without
`
`enumeration” and “in response to an abnormal data condition on said USB
`
`communication path” (namely, an SE1 signal). E.g., Petition at 43-53.
`
`Specifically, the Petition argued that (1) it would be obvious to use Morita’s
`
`charger to only charge Morita’s mobile phone and (2) in that scenario, it would be
`
`obvious for the charger to send an SE1 signal to indicate the charging capacity of a
`
`high-power port. Id., 41-43. As the below explains, it appears that the Board was
`
`misled by Patent Owner’s citations and arguments, causing it to overlook or
`
`misapprehend 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 a person of ordinary skill in the art would
`
`have understood that, in at least some circumstances, the mobile phone would be
`
`the only device connected to the charger and, in those circumstances, the charger
`
`would act only to charge the phone:
`
`4
`
`
`
`A POSITA would have understood that, although the charger of Morita
`can be simultaneously connected to an external computer, there will be
`situations in which no such active device is connected. In such
`situations the device acts merely as a charger for the phone. Baker,
`¶ 122.
`
`Petition, 33. This likely and obvious situation may occur, for example, if the
`
`charger is connected to both a computer and the mobile device when the computer
`
`is turned off or, alternatively, when the charger is connected only to the mobile
`
`device:
`
`Specifically, a POSITA would understand that while the charger may
`be connected to an external device (e.g., a computer) and a mobile
`device at the same time, a typical and common use would involve
`connecting the charger to a mobile device only (e.g., when the computer
`is off or the charge is being used for charging purposes only).
`
`Ex. 1003 (“Baker, Decl.”), ¶ 122.
`
`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., 41. In view of these disclosures, the Petitioner argued that it
`
`would be obvious to use the charger as only a charger with no connections to other
`
`devices (which Morita depicts in Figure 2). Id.
`
`5
`
`
`
`Respectfully, Petitioner believes that the Board overlooked Petitioner’s
`
`obviousness argument and supporting evidence. Specifically, the Board
`
`determined that Morita does not disclose or “provide” a charger that only charges
`
`the phone.
`
`As Patent Owner explains, and we agree, ‘Morita does not provide a
`charger for the sake of charging alone.’ Prelim. Resp. 56. Morita
`addresses the problem of limited battery life when a mobile device
`serves as a host to operate other peripherals. Id. (citing Morita ¶ 8).
`Thus, we agree with Patent Owner that Morita explains the need for the
`charging function to work with the mobile device operating as a host
`and communicating with other devices.”
`
`ID at 14.
`
`That Morita does not expressly disclose or “provide” that the charger may
`
`act only as a charger is of no moment. The Board appears to have overlooked or
`
`misapprehended that Petitioner’s argument was obviousness, not anticipation. 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
`
`6
`
`
`
`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, 33; Baker Decl., ¶ 122. 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:
`
`Morita, Figure 2; Petition, 33. Thus, a POSITA certainly would find it obvious to
`
`disconnect those peripheral devices, like taking pieces off a puzzle.
`
`7
`
`
`
`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 Morita’s charger, in a charger only
`configuration, would supply high-power without enumeration.
`The Board’s misapprehension of Petitioner’s argument above affected the
`
`Board’s other findings. Specifically, the Board further found that with the
`
`peripherals connected, the mobile device would operate as a host and would
`
`engage in standard communication and enumeration. ID 11-12. The Board further
`
`found that the charger must then use enumeration to determine how much power to
`
`supply to the phone. Id.
`
`Respectfully, because the board did not consider the obvious “charging
`
`only” configuration (i.e., when the computer is turned off or nothing else is
`
`connected to the phone), Petitioner asserts that the Board overlooked or
`
`misapprehended Petitioner’s evidence regarding that configuration. Specifically,
`
`the Board overlooked Petitioner’s evidence that in the “charging” configuration,
`
`there is no host, and the mobile device cannot engage in communication or
`
`enumeration. Petition, 16-17 and 47. Accordingly, the device must use other
`
`“non-standard” means to signal a high-power charging mode. Id. As explained in
`
`the petition, such non-standard means—including using an SE1 signal for this
`
`8
`
`
`
`purpose—were known and obvious in the prior art. Id. at 48-52; see also id. at 26-
`
`30 (describing various known uses for SE1 signal; which is a non-standard signal);
`
`Ex. 1012 (“Kerai”) at 5:45-48 (describe a battery charging circuit and noting that
`
`“[a]s is well known, the data lines of a serial connection (D+ and D- in the USB
`
`interface) are held high when the connection is inactive . . .”); see also Ex. 1006
`
`(Dougherty) at 6:1 (disclosing a system that “breaks with the standard USB
`
`protocol” for purposes of charging a device).
`
`The Board similarly relies on Patent Owner’s argument that a person of
`
`ordinary skill in the art would not design a USB to supply more current than what a
`
`device would actually require. ID, 12. But Morita does not limit the type or
`
`design of the mobile device employed by the system, and it was known (and
`
`obvious) that using 600mA-1000mA would result in fast charging for such
`
`devices. Petition at 45. And the USB Specification itself states that such ports
`
`should supply a minimum of 500mA. Id. 43-46. Accordingly, it would have been
`
`obvious to design the charger to capable of supplying such current in response to
`
`the SE1 signal.
`
`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 that supplies current in response to an SE1
`
`signal (i.e., without enumeration).
`
`9
`
`
`
`Dated: July 16, 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
`
`10
`
`
`
`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 16, 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
`
`11
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned certifies that on July 16, 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
`
`12
`
`
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