Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
`
`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.
`Petitioners
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner
`
`U.S. Patent No. 7,834,586
`
`REPLY DECLARATION OF R. JACOB BAKER, PH.D., P.E.,
`REGARDING U.S. PATENT NO. 7,834,586
`
`Petitioners Ex. 1026
` IPR USP 7,834,586
`
`
`
`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.
`Petitioners
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner
`
`U.S. Patent No. 7,834,586
`
`REPLY DECLARATION OF R. JACOB BAKER, PH.D., P.E.,
`REGARDING U.S. PATENT NO. 7,834,586
`
`Petitioners Ex. 1026
` IPR USP 7,834,586
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`EDUCATION BACKGROUND, PROFESSIONAL EXPERIENCE,
`AND OTHER QUALIFICATIONS ............................................................... 1
`III. ASSIGNMENT AND MATERIALS CONSIDERED .................................. 1
`IV. UNDERSTANDING OF THE LAW ............................................................. 3
`V.
`LEVEL OF SKILL IN THE ART .................................................................. 3
`VI. THE ’586 PATENT’S EFFECTIVE FILING DATE .................................... 3
`VII. THE SE1 PRIOR ART ................................................................................... 4
`VIII. MORITA AND THE USB SPECIFICATION ............................................ 13
`IX. DECLARATION .......................................................................................... 26
`
`-i-
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`Petitioners Ex. 1026
` IPR USP 7,834,586
`
`
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`I.
`
`INTRODUCTION
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`Page 1 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`ordinary skill in the art would have known as of the effective filing date of the ’586
`
`Patent.
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`Page 2 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`Exhibit
`1027
`
`2023
`
`Description
`IBM, Personal System/2, Model 95 XP 486, Technical Reference
`(1990)
`Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Response
`
`And materials cited in Ex. 2023
`
`IV. UNDERSTANDING OF THE LAW
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`Page 3 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`VII. THE SE1 PRIOR ART
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`Page 4 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`signal does not appear on the data lines (instead, pulling one line high to indicate
`
`low-speed), this indicates USB functionality; if an SE1 signal appears on the data
`
`lines, this indicates PS/2 functionality.
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`Page 5 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`identifying either the PS/2 or USB interface, the SE1 signal in these references
`
`indicates a different power source type. In particular, Casebolt discloses connecting
`
`peripherals, such as keyboards, to either PS/2 or USB. Ex. 1013 at 1:22-57. Cypress
`
`more generally provides a peripheral controller for either USB or PS/2. Ex. 1014 at
`
`1. Thus, depending on the interface that the SE1 signal identifies, the SE1 signal
`
`likewise identifies the power type, e.g., 275 mA (PS/2) or 100/500 mA (USB).
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`Page 6 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`has a setup that stores excess voltage on either data line in an
`
`associated capacitor whose output is connected to a charging
`
`circuitry. Kerai, 5:45-53, Fig. 3. Kerai therefore does not
`
`disclose using SE1 as an identification signal, but at most
`
`suggests that charges on the data lines can also be harvested for
`
`battery charging.” Ex. 2023 ¶ 96.
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`Page 7 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`Page 8 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`signal on those lines. It is true that communications cannot occur while the data
`
`lines are in an SE1 signal state. However, as Kerai discloses, the charging
`
`connection can be broken upon the “onset of a communication over the data line.”
`
`Id. at 1:44-53. That is, Kerai is disclosing that its charging feature is applicable when
`
`there are no data communications (before the “onset of a communication”), such as
`
`during an SE1 signal state.
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`Page 9 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`Page 10 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`powered on (e.g., in a ‘full power state’) or in standby mode (‘reduced power
`
`state’).” Ex. 2023 ¶ 54. I disagree with Dr. Fernald’s interpretation of Zyskowski
`
`and, in my opinion, his interpretation directly contradicts Zyskowski’s disclosures.
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`Page 11 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`express disclosures. By Zyskowski referring to “at various times,” this would have
`
`been understood to refer to the times in which data communication is actually
`
`occurring, which as Zyskowski discloses, is not necessarily always (i.e., after the
`
`data lines become “usable,” they may actually be in use when data communications
`
`is desirable).
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`Page 12 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`that no communications may be occurring (Ex. 1012 ¶ 20), which is an ideal time to
`
`use an SE1 signal.
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`Page 13 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`2023 ¶¶ 49, 52. I agree with Dr. Fernald in this regard, i.e., Morita’s phone, as an
`
`USB device, was already configured to detect an SE1 signal.
`
`Page 14 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`Dr. Fernald that “downstream ports 21 and 24 can each draw up to 500mA of current
`
`under the USB specification.” But as I explained above, “can” is different than
`
`actually drawing 500 mA. Because the devices will default to draw only 100 mA,
`
`the devices on these ports will only draw 100 mA until communications that would
`
`configure the device to draw 500 mA, e.g., enumeration or an SE1 signal.
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`Page 15 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`host, it must decide to attach to the USB network, learn of the network, and
`
`enumerate all of the attachments. Ex. 1008 at 20 (“the USB allows USB devices to
`
`attach to or detach from the USB at any time”), 24 (responsibilities of host controller
`
`if host present).
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`Page 16 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`Ex. 1025 (U.S. Pat. No. 6,708,278) (“Howard”) at 2:47-64.
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`Page 17 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`known to be advantageous to “shut down the USB circuitry” for regular USB
`
`communications. Ex. 1025 (U.S. Pat. No. 6,708,278) at 2:47-64. Thus, using an
`
`SE1 signal to signal high-power charging capability instead of the phone becoming
`
`host would beneficially save power and computation resources. This would be
`
`particularly advantageous when the battery of the phone has little charge left.
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`Page 18 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`to learn of the attachments. This is no different than if power is lost and the system
`
`must restart upon powering up. In short, the idea that USB communication must be
`
`kept at all times to learn of attachments is plainly incorrect, because the phone can
`
`learn of attachments whenever it desires (e.g., after reconnecting to the charger, after
`
`power-up, or at any time it desires to query the charger for attachment information).
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`Page 19 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`Page 20 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`Page 21 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`is consistent with the USB specification because the host “enables the port and
`
`addresses the USB device through the device’s control pipe at the default address.”
`
`Ex. 1008 at 19. In other words, the host, if it chooses, may seek to enable the
`
`peripherals port, assign it an address, and use it. Id. Another example is that upon
`
`placing the host down onto the charger, the phone may be given a period of time to
`
`become host. The prior art (e.g., Howard), for example, refers to “events” that may
`
`cause a host to wake up. Ex. 2015 at 5:36-51. It was known to have a “wake-up
`
`circuit” to reenable the host, e.g., upon attachments. Id. at 3:31-51. Thus, it was
`
`known to optionally awaken a host and selectively decide whether the host should
`
`assume the responsibilities of being an active host. Thus, it was well known to
`
`account for “events” that may justify triggering the phone to become the active USB
`
`host.
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`Page 22 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`communication or the attachment of devices, may provide reason to allow regular
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`USB communications.
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`Page 23 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`1011 at 6:57-58. Because of this, it was known in the prior art to take certain action
`
`upon receiving the SE1 signal. Ex. 1013 at 7:40-46 (“However, if the SE1 condition
`
`is maintained for the necessary time period, and the terminal count is reached,
`
`controller 144 determines that it has detected a PS2 interface and moves to state 180.
`
`This causes USB functions to be terminated, and PS2 communications controller
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`148 takes over communication between peripheral device 142 and computer 20.”).
`
`Here, the Morita phone would act on the SE1 signal by drawing power as a high-
`
`power function to charge its battery. And it would make no sense that a POSA would
`
`design Morita’s phone to enter suspend mode that does not draw 500 mA, because
`
`the point of the SE1 signal is so that Morita phone draws 500 mA.
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`Page 24 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`that a POSA would have understood the charger would still provide its basic function
`
`as a “normal charger.” This is consistent with a host of design patents that illustrate
`
`such “normal charger[s]” for convenient charging. Ex. 1022 (Des. 353,371); Ex.
`
`1023 (Des. 335,861); Ex. 1024 (Des. 349, 899). In my experience, it would not be
`
`customary to design the Morita system without accounting for the normal charging
`
`scenario, because there would be at expectation that certain users may, at least at
`
`some time, use the charger to only charge the phone.
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`Page 25 of 26
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`Reply Declaration in Support of Petition for IPR of U.S. Patent No. 7,834,586
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`IX. DECLARATION
`
`54.
`
`I declare that all statements made herein of my own knowledge are true
`
`and that all statements made on information and belief are believed to be true, and
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`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`By: ~ G.?,~ ~
`
`R. Jacob ~er, Ph.D., P.E.
`
`Date:
`
`ltf/ a f" C ~
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`Page 26 of26
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`Petitioners Ex. 1026
` IPR USP 7,834,586
`
`
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