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
`Issue Date: November 16, 2010
`Title: MULTIFUNCTIONAL CHARGER SYSTEM AND METHOD
`
`Case No. IPR2021-00599
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`
`
`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
`Issue Date: November 16, 2010
`Title: MULTIFUNCTIONAL CHARGER SYSTEM AND METHOD
`
`Case No. IPR2021-00599
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`
`
`I.
`II.
`
`Page
`INTRODUCTION .......................................................................................... 1
`PATENT OWNER’S ARGUMENTS FAIL FOR THREE
`INDEPENDENT REASONS ......................................................................... 2
`A.
`Patent Owner’s Arguments Are Legally Irrelevant Because The
`Challenged Claims Do Not Require Generating a SE1 Signal ............ 4
`1.
`Patent Owner’s Arguments Relate to Unclaimed Features ....... 5
`2.
`The Prior Art Is Replete With Examples of Sending SE1
`Signals To Identify a Power Source .......................................... 7
`Even if the Claims Did Require Sending a SE1 Signal, It Would
`Be Obvious, and Patent Owner’s Arguments to the Contrary
`Apply Legally Erroneous Standards for Obviousness ....................... 12
`1. Morita Does Not Teach Away From Employing The SE1
`Signal “Option” ........................................................................ 12
`PO Improperly Ignores The Collective Teachings of The
`Prior Art ................................................................................... 15
`It Would Have Been Additionally Obvious for Morita’s
`Charger to Send Morita’s Phone a SE1 Signal in The Charge-
`Only Mode .......................................................................................... 20
`III. THE PETITION DOES NOT USE THE 586 PATENT AS A
`“ROADMAP” TO ARRIVE AT THE SUBJECT MATTER OF THE
`CLAIMS ....................................................................................................... 23
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`
`2.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allergan, Inc. v. Sandoz Inc.,
`796 F.3d 1293 (Fed. Cir. 2015) .......................................................................... 13
`Arendi S.A.R.L v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 11
`In re Aslanian,
`590 F.2d 911 (CCPA 1979) ................................................................................ 22
`Beckman Instruments, Inc. v. LKB Produkter AB,
`892 F.2d 1547 (Fed. Cir. 1989) ............................................................................ 9
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) .............................................................................. 13
`Homeland Housewares, LLC v. Whirlpool Corp.,
`865 F.3d 1372 (Fed. Cir. 2017) ........................................................................ 8, 9
`KSR v. Teleflex,
`550 U.S. 398 (2007) ............................................................................................ 20
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 15
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 4
`
`iv
`
`
`
`Petitioners’ Exhibit List
`
`Description
`U.S. Patent No. 7,834,586 to Fischer et al., “Multifunctional
`Charger System and Method,” filed Feb. 26, 2010 (the “’586
`Patent”)
`U.S. Patent File History of the ’586 Patent (the “’586 File
`History”)
`Declaration of Dr. Jacob Baker regarding U.S. Patent No.
`7,834,586 (“Baker”)
`Curriculum Vitae of Dr. Jacob Baker
`U.S. Patent No. 7,239,111 (“Fischer”)
`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 enCoRe™ USB
`Combination Low-Speed USB & PS/2 Peripheral Controller, by
`Cypress Semiconductor Corporation, published May 25, 2000
`(“Cypress enCoRe” or “Cypress Datasheet”)
`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”)
`U.S. Patent No. 6,668,296 (“Dougherty”)
`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
`1018
`
`vi
`
`
`
`Exhibit
`1019
`
`1020
`
`1021
`
`1022
`1023
`1024
`1025
`1026
`
`1027
`
`Description
`Japanese Patent Application No. 2000-165513A (“Morita”) with
`updated Certificate of Accuracy
`Japanese Patent Application No. 2000-165513A (“Morita”) with
`corrected Certificate of Accuracy
`Deposition Transcript of Dr. Kenneth Fernald, taken on February
`18, 2022
`U.S. Des. Patent No. 353,371 (“Delhaes”)
`U.S. Des. Patent No. 335,861 (“Tattari”)
`U.S. Des. Patent No. 349, 899 (“Siddoway”)
`U.S. Patent No. 6,708,278 (“Howard”)
`Reply Declaration of Dr. Jacob Baker regarding U.S. Patent No.
`7,834,586 (“Baker Reply”)
`IBM, Personal System/2, Model 95 XP 486, Technical Reference
`(1990)
`
`vii
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner (“PO”) argues that the Morita ground does not disclose a single
`
`limitation: a mobile device that is “configured to detect an identification signal.”
`
`This argument fails for three independent reasons.
`
`First, PO’s arguments are legally irrelevant, because they all relate to the
`
`unclaimed element of Morita’s charger sending a SE1 signal. But PO concedes that
`
`the claims do not require sending a SE1 signal and that Morita’s phone, which is an
`
`USB device, is configured to detect a SE1 signal. Ex. 1021, 118:13-23, 160:25-
`
`161:11, 188:16-189:2. The prior art, e.g., Casebolt, demonstrates that a SE1 signal
`
`is an identification signal, namely, a signal that identifies either a PS/2 or USB power
`
`source type. This is all that the claims require.
`
`Second, even if the claims did require sending an identification signal (e.g.,
`
`an SE1 signal), it would be obvious for Morita’s charger to do so to indicate its
`
`charging characteristics. PO admits that a SE1 signal is one signaling “option” for
`
`this purpose. POR, 66-67. Critically, PO does not contend that Morita teaches away
`
`from this option. Instead, PO argues that using a SE1 signal would lead to Morita
`
`being inoperable, e.g., because USB communications would not be possible—if no
`
`changes were made to the Morita system. But it is blackletter patent law that an
`
`obviousness analysis considers the combined teachings of the prior art, and PO
`
`ignores that the prior art teaches using a SE1 signal with USB communications. As
`
`1
`
`
`
`such, under the correct obviousness standard, the Morita ground renders obvious the
`
`Morita charger sending an identification signal.
`
`Third, in the scenario where Morita’s charger was in a charge-only mode,
`
`there would be no reason for any USB communications, rendering PO’s arguments
`
`factually irrelevant.
`
`Relatedly, PO argues that the Petition uses the 586 patent as a roadmap. Not
`
`so. It is undisputed that Morita is already configured to detect a SE1 signal. And
`
`the prior art, e.g., Casebolt, demonstrates that SE1 signals are identification signals.
`
`II.
`
`PATENT OWNER’S ARGUMENTS
`INDEPENDENT REASONS
`The Petition demonstrated that the Challenged Claims require that the claimed
`
`FOR THREE
`
`FAIL
`
`mobile device be configured to detect—not generate—an “identification signal,” and
`
`that one type of identification signal is a SE1 signal. Paper 1 (“Petition”), 46-53.
`
`Next, the Petition demonstrated that Morita’s phone is configured to detect a SE1
`
`signal. Petition, 24-25, 52-53. The Petition then demonstrated that the prior art is
`
`replete with examples of detecting a SE1 signal that identifies a power source type.
`
`Petition, 25-31, 45-56. Finally, the Petition demonstrated that it would be obvious
`
`for Morita’s phone to detect a SE1 signal (an identification signal) when the phone
`
`is not acting as the host to identify high-power charging functionality. Id.
`
`In its Preliminary Patent Owner Response, PO argued, inter alia, that
`
`providing a SE1 signal to Morita’s phone would render it inoperable, because (1)
`
`2
`
`
`
`Morita does not provide a phone for the sake of charging only, and (2) Morita’s
`
`phone engages in USB communications. Paper 7 (“POPR”), 29-42. PO further
`
`argued that that there would be no reason to send Morita’s phone a SE1 signal,
`
`because Morita provides other options. Id., 42-52. Finally, PO argued that the
`
`Petition improperly uses hindsight. Id., 52-58.
`
`At the institution phase, the Board rejected PO’s arguments. Importantly, the
`
`Board noted that PO does not contend that the claims require sending an
`
`identification signal and that PO does not contest that Morita is configured to detect
`
`a SE1 signal (a type of identification signal). Paper 8 (“ID”), 21. Next, the Board
`
`found that PO’s inoperable contentions were “not sufficiently connected to the
`
`language” of the claims, “which is directed to a mobile device,” i.e., claim 1 is not
`
`directed to sending a SE1 signal. Id., 23. The Board then rejected PO’s arguments
`
`relating to an alleged lack of reasons for sending a SE1 signal, because “this
`
`contention does not directly address Petitioner’s contention that” the claim language
`
`“does not require that a SE1 signal be generated.” Id. The Board also rejected PO’s
`
`hindsight argument because it relies on a “charge-only operating mode” of Morita,
`
`which is not required by the claims. Id., 24. Finally, the Board found that “Petitioner
`
`sufficiently demonstrates on this record that Casebolt uses a SE1 condition as an
`
`identification signal.” Id., 22.
`
`3
`
`
`
`In its Patent Owner Response (“POR”), PO largely advances the same
`
`arguments, arguing only that the Morita ground does not render obvious the
`
`“configured to detect an identification signal” limitation. These arguments fail for
`
`three independent reasons. First, the arguments are legally irrelevant, because the
`
`claims do not require sending an identification signal (e.g., a SE1 signal). Second,
`
`even if the claims did require sending a SE1 signal, PO’s arguments to the contrary
`
`apply a legally erroneous obviousness standard. Third, in a charge-only mode, PO’s
`
`arguments are factually irrelevant because its premise of the need for USB
`
`communications does not exist.
`
`A.
`
`Patent Owner’s Arguments Are Legally Irrelevant Because The
`Challenged Claims Do Not Require Generating a SE1 Signal
`PO does not (nor could it) dispute that the claims do not require generating a
`
`SE1 signal. This fact is dispositive because PO’s arguments relate only to the
`
`unclaimed requirement of sending an SE1 signal. It is uncontested that Morita’s
`
`phone is configured to detect a SE1 signal, and the prior art demonstrates that SE1
`
`signals were known to indicate a power source type (an “identification signal”). As
`
`the claims require only a device configured to detect an identification signal (not
`
`send one), the Morita ground renders obvious the Challenged Claims. 35 U.S.C. §
`
`103 (the test for obviousness requires assessing the differences between the “claimed
`
`invention and the prior art,” not unclaimed elements).
`
`4
`
`
`
`Patent Owner’s Arguments Relate to Unclaimed Features
`1.
`First, PO argues that a POSA would not have modified Morita’s phone to
`
`detect a SE1 signal unless Morita’s charger sent a SE1 signal. POR, 25-28. The
`
`Board already found this argument irrelevant because the claims require only a
`
`device that is configured to detect an identification signal (not send a SE1 signal),
`
`and PO did not dispute that Morita’s phone is already configured to detect a SE1
`
`signal. ID, 21. The Board was correct. To start, there is no dispute that the claims
`
`do not require sending an identification signal. Ex. 1021, 118:13-23. Next, even
`
`standard USB devices at the time of the alleged invention were configured to detect
`
`SE1 signals (an identification signal) because, for example, it was a known error
`
`condition; as such, Dr. Fernald admitted that Morita’s phone is already configured
`
`to detect a SE1 signal. Ex. 1021, 8:18-9:8, 10:19-25, 160:25-161:11, 188:16-189:2;
`
`Ex. 2023, ¶¶ 49, 52; Ex. 1009, 145, 179; Ex. 1026 (“Baker Reply”), ¶ 34. And as
`
`Section II.A.2 demonstrates, detecting SE1 signals1 to distinguish between USB and
`
`PS/2 power source types was also known. None of this is disputed, and this all that
`
`the claims require.
`
`1 While PO cites Dr. Baker’s testimony to argue that it would not be obvious to detect
`
`what is not sent (POR, 25), this is irrelevant, because Morita’s phone is configured
`
`to detect SE1 signals.
`
`5
`
`
`
`Second, PO argues that sending a SE1 signal to Morita would “disrupt USB
`
`communications” and would “render it inoperable.” POR, 28-44. The Board
`
`already found this argument irrelevant because the claims do not recite an
`
`“identification signal” that does not disrupt USB communications. Id., 22-23.
`
`Regardless, as Section II.B.2 demonstrates, sending a SE1 signal to Morita’s phone
`
`does not render it inoperable for USB communications. Indeed, this argument makes
`
`little sense: the Morita phone is already configured to detect a SE1 signal and the
`
`phone, nonetheless, communicates using USB communications.
`
`Third, PO argues that there would be no reason to indicate that Morita’s
`
`charger is a high-power port. POR, 48-56. Again, the claims do not recite any
`
`requirements of a charger, and thus this argument is legally irrelevant. Regardless,
`
`as Section II.B.2 demonstrates, there was good reason for the Morita charger to use
`
`a SE1 signal to indicate charging characteristics (e.g., otherwise the phone would
`
`“default” to drawing low-power current).
`
`Fourth, PO argues that the Petition improperly uses “hindsight” because it
`
`does not address “complications” relating to sending a SE1 signal in Morita’s phone,
`
`e.g., distinguishing between “unintentional” SE1 signals and learning of attachment
`
`of devices. POR, 64-65. Yet again, these alleged complications do not relate to any
`
`claim requirement. Regardless, as Section II.B.2 demonstrates, PO’s alleged
`
`complications stem from improperly applying a bodily incorporation standard. And
`
`6
`
`
`
`there is no hindsight here: the prior art already overcame these alleged
`
`“complications.” See Section II.B.2.
`
`At bottom, PO’s arguments should be rejected because they are not
`
`“sufficiently connected to the language” of the claims. ID, 23.
`
`2.
`
`The Prior Art Is Replete With Examples of Sending SE1
`Signals To Identify a Power Source
`Because the claims require only detecting an identification signal, and it is
`
`undisputed that Morita’s phone is configured to detect a SE1 signal, the only
`
`remaining question is whether the prior art renders obvious a SE1 signal that
`
`identifies a power source (i.e., an “identification signal”). There is no reasonable
`
`dispute that the prior art discloses exactly this (and SE1 signals were routine to use).
`
`Casebolt and Cypress: PO alleges that Casebolt and Cypress’s use of SE1
`
`signals has “nothing to do with identifying power source types,” because these
`
`references use SE1 signals “for telling PS/2 and USB interfaces apart.” POR, 23,
`
`63. But by conceding that Casebolt and Cypress use a SE1 signal to distinguish
`
`between “PS/2 and USB interfaces,” PO concedes that Casebolt and Cypress use
`
`SE1 signals to identify a power source type. On the one hand, PS/2 provides a power
`
`line that provides 275mA of power. Ex. 1027, 19 (pdf) (maximum current for PS/2
`
`keyboard is “275 mA”); Baker Reply, ¶ 16; Ex. 1021, 40:17-41:1. On the other
`
`hand, USB provides a power line that may supply either 100mA or up to 500mA.
`
`Ex. 1008, 142. Thus, the identification of PS/2 or USB identifies the corresponding
`
`7
`
`
`
`power source type, which provides different current output. Ex. 1021, 41:16-23;
`
`Baker Reply, ¶¶ 12-16.
`
`Kerai: PO alleges that Kerai has nothing to do with a SE1 signal at all. POR,
`
`22. PO goes so far to state that Kerai discloses power harvesting from the data lines
`
`only during data communication (“during differential signaling”), and thus Kerai
`
`cannot be disclosing a SE1 signal. Id. The Board should reject this argument and
`
`give no weight to Dr. Fernald’s testimony, because it “must disregard the testimony
`
`of an expert that is plainly inconsistent with the record.” Homeland Housewares,
`
`LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017). To start, Kerai
`
`discloses that its power harvesting may occur and then terminate with the “onset of
`
`a communication over the data line.” Ex. 1010, 1:41-52. This directly contradicts
`
`PO’s position: Kerai discloses harvesting power from the data lines before the
`
`“onset” of data communications. Next, Kerai discloses “detect[ing] the state” of
`
`lines 25-26, which are lines that “are held high when the connection is inactive,” and
`
`harvesting power from these lines. Id., 5:45-59. Kerai discloses that lines 25-26 are
`
`the data lines of an USB interface. Id., 3:25-33. The experts agree that both USB
`
`data lines being “held high” is a SE1 state. Ex. 1021, 83:22-84:1. As such, there
`
`8
`
`
`
`can be no reasonable dispute2 that Kerai is disclosing using a SE1 signal (i.e., the
`
`USB data lines being “held high”) to signal a power source type (i.e., the state of
`
`both high data lines being available for power harvesting). Ex. 1010, 5:43-59
`
`(detecting each line and harvesting power from both lines if both are high, i.e., a
`
`SE1 signal); Baker Reply, ¶¶ 17-26. Indeed, Dr. Fernald admits that Kerai utilizes
`
`both power lines for harvesting if both are high, i.e., a SE1 signal, and that Kerai’s
`
`logic detectors separately detect each line being high. Ex. 1021, 238:11-240:11.
`
`Shiga: PO does not contest that Shiga uses the SE1 signal as a wake-up
`
`means, nor that Shiga demonstrates that a SE1 signal “can easily be distinguished
`
`from USB standard signals.” POR, 23. As the Petition demonstrated, this provides
`
`motivation with an expectation of success to use the SE1 signal. Petition, 52.
`
`Zyskowski: PO alleges that Zyskowski does not disclose a SE1 signal to
`
`identify the host’s power state because Zyskowski needs the data lines for data
`
`communication. POR, 22-23. The Board should again reject PO’s interpretation
`
`because it directly contradicts Zyskowski’s disclosures. Homeland Housewares,
`
`2 PO’s criticisms of the prior art fail for another reason. Express disclosures in the
`
`prior art, even if inoperable (which is not the case here), is “prior art for all that it
`
`teaches.” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551
`
`(Fed. Cir. 1989).
`
`9
`
`
`
`865 F.3d at 1378. To start, Zyskowski states that the data lines only “become usable”
`
`once Zyskowski’s host “is awake,” i.e., the data lines are not necessarily in use even
`
`in the awake state (they only “become usable”). Ex. 1012, ¶ 20. This contradicts
`
`any notion that Zyskowski cannot use a SE1 signal because active communications
`
`must be occurring. Next, Zyskowski states that “[w]hen the host 104 is in a full
`
`power state, data lines D1 and D2 may be raised.” Id., ¶ 19 (emphasis added).
`
`Finally, Zyskowski states that the USB device may detect whether the host is in a
`
`reduced power state by monitoring the voltage of “one or both of the data paths D2
`
`and D1.” Id., ¶ 27 (emphasis added). From this, there can be no reasonable dispute
`
`that Zyskowski discloses the option of raising both data lines (a SE1 signal) before
`
`USB data communication is in “use.” Baker Reply, ¶¶ 27-31.
`
`In sum, the above prior art demonstrates that employing SE1 signaling was
`
`well known, including to identify a power source.
`
`To distinguish the above disclosures, it appears that PO may be attempting to
`
`improperly read into “identification signal” some special requirement that the
`
`“identification signal” need to do more than “identif[y] a power source type,” e.g.,
`
`identify some sort of specific battery charging state. POR, 24-25, 28-31; Baker
`
`Reply, ¶ 32-33. The Board should reject this argument. To start, PO does not dispute
`
`the agreed construction. What’s more, when the patentee sought to define exactly
`
`what the “identification signal” would indicate, it did so: claim 11 recites: “such that
`
`10
`
`
`
`an identification signal received at the D+ and D− lines indicating a charging
`
`connection is available is recognized by the device.” Indeed, claim 11 affirms that
`
`the “power source type” may just be that a charging connection is available, e.g.,
`
`like Kerai’s SE1 signal that identifies two data lines being available for power
`
`harvesting. And the specification discloses: “The identification subsystem 108
`
`provides an identification signal to the mobile device 10 that the power source is not
`
`a USB limited source.” Ex. 1001, 9:15-17. This is precisely the type of signal that
`
`Casebolt and Cypress use, i.e., a signal that identifies whether or not the power
`
`source is USB. As such, the above prior art discloses “identification signals” under
`
`any reasonable interpretation.3
`
`3 Arendi is irrelevant to the issues at hand for two independent reasons. POR, 7-8,
`
`61-62. First, the prior art at issue there did not disclose a claim element (searching
`
`with phone numbers), whereas here, the prior art discloses the claim element (SE1
`
`signals that identify a power source type). Arendi S.A.R.L v. Apple Inc., 832 F.3d
`
`1355 (Fed. Cir. 2016). Second, the petitioner there did not establish any “benefit”
`
`of employing a general technique (searching) to the claim element (search by phone
`
`number), whereas here, the petition and this reply explain the “benefit” of using SE1
`
`as an identification signal (indicate high-power charging, easy SE1 detection, and
`
`avoiding power consumption from host operation). Id.
`
`11
`
`
`
`B.
`
`Even if the Claims Did Require Sending a SE1 Signal, It Would Be
`Obvious, and Patent Owner’s Arguments to the Contrary Apply
`Legally Erroneous Standards for Obviousness
`PO’s arguments fail for a second, independent reason: even if Morita’s
`
`charger was required to send a SE1 signal (it is not), it would be obvious to do so
`
`when there is no active USB host. As the Petition explains, when there is no host,
`
`USB communications are not possible—a fact that PO does not contest. Petition,
`
`46-48. The Petition demonstrated that a SE1 signal is optimal as an “identification
`
`signal” when there is no active host. Id., 48-56. PO’s arguments to the contrary
`
`improperly apply (1) a legally erroneous teaching away standard and (2) a legally
`
`erroneous bodily incorporation standard.
`
`1. Morita Does Not Teach Away From Employing The SE1
`Signal “Option”
`PO makes a critical concession: a SE1 signal is one “option” to indicate
`
`charging functionality of the charger. POR, 66-67 (arguing that it is not “the only
`
`option”). PO, for example, argues that the USB specification provides an alternative
`
`means to identify the charging capability, namely, USB enumeration. POR, 56-58.
`
`Accordingly, the relevant legal inquiry is whether Morita teaches away from the SE1
`
`“option” in view of PO’s alleged other “options.” PO, however, ignores the correct
`
`standard for teaching away. A prior art reference only teaches away when “a person
`
`of ordinary skill, upon reading the reference, would be discouraged from following
`
`the path set out in the reference, or would be led in a direction divergent from the
`
`12
`
`
`
`path that was taken by the applicant.” Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293,
`
`1305 (Fed. Cir. 2015). A reference does not teach away just because it describes the
`
`advantages of its invention over another prior art approach. See In re Gurley, 27
`
`F.3d 551, 553 (Fed. Cir. 1994).
`
`As Dr. Fernald admits, Morita does not disclose that its charger actually
`
`employs the USB enumeration option—or any option—to inform the phone of the
`
`charging capability of the charger or to configure the phone to draw 500mA. Ex.
`
`1021, 49:15-25, 52:16-53:6. As such, Morita cannot be said to teach away from
`
`using the SE1 signal option. Baker Reply, ¶ 37.
`
`Similarly, regarding the SE1 option, PO argues that there is “no reason to use
`
`SE1 to indicate that Morita’s charger is a high-powered port.” POR, 51-58. The full
`
`record demonstrates that PO is wrong. PO’s premise is that: “A self-powered hub
`
`port is a high-powered hub port that ‘must supply at least five unit loads [500mA]
`
`to each port.’” POR, 53. It is true that such a hub must be able to supply 500mA.
`
`But all USB devices “default to low-power” and draw only 100mA (and as a result,
`
`the hub supplies only 100mA). Ex. 1008, 134. Thus, for Morita’s phone to draw
`
`more than the 100mA default, it must communicate with the charger. Id. Dr. Fernald
`
`now concedes this. Ex. 1021, 57:13-23, 122:23-123:14. One “option” for the phone
`
`to draw 500mA, which PO apparently suggests, is that the phone could become the
`
`host and configure itself to draw 500mA. POR, 56-58. But as Dr. Fernald further
`
`13
`
`
`
`admits, Morita does not even disclose that it uses this “option.” Ex. 1021, 49:15-25,
`
`52:16-53:6; Baker Reply, ¶¶ 35-37.
`
`What’s more, the USB enumeration option had a known drawback relative to
`
`the SE1 option: it would unnecessary consume power and computational resources.
`
`Dr. Fernald admits that requiring Morita’s phone to become the host and use the
`
`USB enumeration option would expend power and resources of the phone. Ex. 1021,
`
`228:10-230:11 (describing host requirements); Ex. 1008, 207-229. When possible,
`
`it was known that “especially in portable computers or other battery-powered
`
`devices, it is desirable to shut down the USB circuitry … to reduce the host
`
`computer's power consumption.” Ex. 1025 (“Howard”), 2:50-54. Because
`
`becoming a host consumes power and resources, the USB specification allows a
`
`device to decide to become host. Ex. 1008, 20. And Morita provides the
`
`functionality to optionally “set” the phone as the host. Ex. 1020, ¶ 18. This is
`
`consistent with the prior art that allows for the USB host controller to be “shut
`
`down.” Ex. 1025, 5:36-51. Thus, the SE1 signal option obviates the need for host
`
`functionality, which advantageously allows
`
`the phone
`
`to charge without
`
`unnecessarily consuming power performing unnecessary host functions. Baker
`
`Reply, ¶¶ 38-41.
`
`In sum, (1) Morita does not expressly disclose any option to signal the phone
`
`to charge at 500mA (instead of the default 100mA), (2) the SE1 signal provides such
`
`14
`
`
`
`an option, (3) the SE1 signal avoids unnecessary power consumption, and (4) Morita
`
`discloses the functionality to use this option (i.e., optionally setting the phone as
`
`host).
`
`2.
`
`PO Improperly Ignores The Collective Teachings of The
`Prior Art
`The remaining of PO’s arguments are legally irrelevant because they assume
`
`that a POSA would have made no modifications to Morita’s system, i.e., PO fails to
`
`consider the collective teachings of the prior art. This is at odds with the test for
`
`obviousness, which is “what the combined teachings of the references would have
`
`suggested to those having ordinary skill in the art.” In re Mouttet, 686 F.3d 1322,
`
`1332–33 (Fed. Cir. 2012). It is also at odds with Dr. Fernald’s admission that Morita
`
`“already figured out how to -- how to modify and deviate from the USB
`
`specification.” Ex. 1021, 124:16-23.
`
`PO argues that sending a SE1 signal to Morita’s phone would disrupt USB
`
`communications, and thus Petitioner’s combination would render Morita inoperable.
`
`POR, 31-51. This is incorrect for at least two reasons.
`
`First, Morita directly contradicts PO’s argument. Morita discloses picking up
`
`the phone for a call. Ex. 1020, ¶ 16. This terminates USB communications with the
`
`phone altogether—“disrupting” USB communications. Ex. 1021, 34:16-23. Yet it
`
`does not render Morita’s phone “inoperable” because USB communications will
`
`restart when necessary. Baker Reply, ¶ 43.
`
`15
`
`
`
`Second, after applying the SE1 signal, a system would merely revert to regular
`
`USB communications. Indeed, PO recognizes that this is how the Morita
`
`obviousness ground is to be understood, stating that Petitioner might argue that
`
`toggling switches would restart USB communications. POR, 50.4 This is correct.
`
`Baker Reply, ¶ 44. As Dr. Fernald admits, all that is necessary to restart
`
`communications is for the charger to hold one line high to indicate its speed and
`
`await a reset. Ex. 1021, 150:16-151:10; Ex. 2023, ¶¶ 32-34; Ex. 1025, 2:37-42.
`
`In fact, it was known in the prior art to transition between applying a SE1
`
`signal (which prevents USB data communications only during application of the SE1
`
`4 PO states that the charger (adapter) would not know when to restart USB
`
`communications. POR, 50. Not so. The prior art teaches the charger would do so
`
`whenever it desires an “onset” or “start” of normal USB communications (as Kerai
`
`and Shiga discloses, see infra). As the below explains, one example of this may be
`
`the attachment of new USB device. Another example might be upon initially placing
`
`the phone on the charger and waiting an initial period to determine whether the user
`
`intends to use the phone as a host. Baker Reply, ¶ 48. The prior art, e.g., Howard,
`
`expressly discloses techniques to “shut down” an “USB host controller” and restart
`
`the controller when necessary for these events. Ex. 1025, Abstract, 2:17-62, 5:28-
`
`55.
`
`16
`
`
`
`signal) and then restarting USB communications. Dr. Fernald admits that Shiga
`
`discloses the “start [of] regular USB communications” after “using the SE1 signal.”
`
`Ex. 1021, 171:1-172:13; Ex. 1011, 6:47-7:35. And Dr. Fernald admits that Kerai
`
`discloses “disconnect[ing]” the “charging circuit,” which may use a SE1 signal, “if
`
`communications commence.” Id., 234:12-235:10; Ex. 1010, 1:41-53, 5:43-59.
`
`Thus, it was known that Morita’s system could still use the data lines for regular
`
`USB data communication by the charger disengaging the SE1 signal state upon
`
`desiring a “start” or “commence[ment]” of normal USB data communications.5
`
`Baker Reply, ¶¶ 43-50. And notably, Morita already discloses the functionality of
`
`setting the phone as the host. Ex. 1020, ¶ 18 (“set to operate” as host). In other
`
`5 PO also argues that Morita’s phone would not be able to distinguish between an
`
`SE1 power identification signal and SE1 error condition. This makes little sense,
`
`given that Casebolt, Cypress, Karai, Shiga, and Zyskowski all clearly discriminate
`
`between intentional SE1 signals and error conditions (see above descriptions).
`
`Indeed, Casebolt expressly discloses detecting the SE1 condition “for a sufficient
`
`time period (such as in excess of three milliseconds)” for this very purpose. Ex.
`
`1013, 7:18-28. Likewise, PO’s argument regarding Morita entering suspend mode
`
`(POR, 37-38) ignores that the prior art already demonstrates using SE1 signals
`
`without entering suspend mode. E.g., Ex. 1013, 7:30-43; Baker Reply, ¶ 51.
`
`17
`
`
`
`words, Morita already suggests this functionality because, after terminating the SE1
`
`signal, the phone may then be “set” as the host. Id.
`
`The Petition demonstrated that one reason for the phone to receive the SE1
`
`signal (when it is not the host) is to signal high-power charging functionality.
`
`Petition, 44-55. The rebuttal to PO’s argument that there is no reason to disrupt
`
`Morita’s USB communications establishes another motivation to not initially “set”
`
`the phone as the host. Specifically, as the above discusses, the prior art (e.g.,
`
`Howard) demonstrates that “[i]n many cases, especially in portable computers or
`
`other battery-powered devices, it is desirable to shut down the USB circuitry … to
`
`reduce
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