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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 IPR2021-00599
`Patent No. 7,834,586
`___________________
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`
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`PATENT OWNER’S SUR-REPLY
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`11037802
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`Case IPR2021-00599
`Patent No. 7,834,586
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`
`TABLE OF CONTENTS
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`
`
`Page
`Introduction ................................................................................................... 1
`Petitioner’s Untimely New Arguments Still Fail To Show
`Obviousness .................................................................................................. 3
`A.
`The Board Should Not Consider Untimely New Arguments ............ 3
`B.
`Petitioner’s New Characterization Of The SE1 References
`Still Fails To Show Obviousness ....................................................... 4
`1.
`POSITAs would not have modified Morita’s phone to
`differentiate between PS/2 and USB ....................................... 5
`Kerai does not disclose or suggest using SE1 for
`charging or identifying power source type .............................. 6
`(a)
`SE1 was not a “well known” signal for USB
`inactive communication ................................................. 6
`Little current is available from data lines during
`inactive USB communications .................................... 10
`(c) Kerai’s voltages does not identify a power
`source type ................................................................... 12
`Zyskowski does not disclose or suggest using SE1 for
`charging or identifying power source type ............................ 13
`Shiga does not disclose a claimed identification signal ......... 15
`4.
`Petitioner’s New Argument Regarding Morita’s Operation
`Fails .................................................................................................. 15
`1.
`The inventors’ disclosure of SE1 does not render the
`claims obvious ........................................................................ 16
`2. Morita’s silence on certain details does not justify
`Petitioner’s injection of hypotheticals incompatible
`with USB or Morita’s express disclosures ............................. 16
`- i -
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`2.
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`3.
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`(b)
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`I.
`II.
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`C.
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`3.
`4.
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`Petitioner’s New Power Saving Reasoning Fails .................. 19
`Petitioner’s New Proposal on Switching Between SE1
`And Normal Communication Fails ........................................ 21
`Petitioner’s New Argument Regarding Morita’s Charge-Only
`Mode Fails ........................................................................................ 23
`Petitioner’s Analysis Is Infected With Hindsight ............................ 26
`E.
`III. Conclusion .................................................................................................. 28
`
`
`D.
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`TABLE OF AUTHORITIES
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`Case IPR2021-00599
`Patent No. 7,834,586
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`
` Page(s)
`
`Cases
`Apple Inc. v. Samsung Elecs. Co., Ltd.,
`839 F.3d 1034 (Fed. Cir. 2016) (en banc) .......................................................... 17
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ........................................................................ 1, 3
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 28
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) ........................................................................................ 28
`Otsuka Pharm. Co. v. Sandoz, Inc.,
`678 F. 3d 1280 (Fed. Cir. 2012) ......................................................................... 16
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. Ltd.,
`853 F.3d 1370 (Fed. Cir. 2017) .......................................................................... 17
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................ 3
`Regulations
`37 C.F.R. §42.65 ...................................................................................................... 28
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`EXHIBIT LIST
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`Telephonic Hearing Transcript dated March 25, 2021
`EX2001
`EX2002 U.S. Patent No. 7,360,004 (“Dougherty”)
`EX2003
`Jan Axelson, USB Complete (1999), excerpt
`EX2004 U.S. Patent No. 5,884,086 (“Amoni”)
`EX2005 U.S. Patent No. 6,904,488 (“Matusmoto”)
`EX2006
`Jan Axelson, USB Complete (2d ed. 2001), excerpt
`EX2007 U.S. Patent No. 5,859,522 (“Theobald”)
`EX2008 U.S. Patent No. 6,556,564 (“Rogers”)
`EX2009 Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Preliminary Response
`Claim construction order in Fundamental Innovation Systems
`International LLC v. Samsung Electronics Co., Ltd., Case No.
`2:17-cv-145-JRG-RSP, Dkt. No. 140 (E.D. Tex. Jan. 31, 2018)
`Claim construction order in Fundamental Innovation Systems
`International LLC v. LG Electronics Inc., Case No. 2:16-cv-
`1425-JRG-RSP, Dkt. No. 146 (E.D. Tex. April 2, 2018)
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`EX2010
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`EX2011
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`EX2012
`
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`Claim construction order in Fundamental Innovation Systems
`International LLC v. ZTE Corp. et al., Case No. 3:17-cv-1827-
`N, Dkt. No. 135 (N.D. Tex. Dec. 21, 2018)
`EX2013 Claim construction order in Fundamental Innovation Systems
`International LLC v. TCT Mobile (US), Inc., Case No. 20-cv-
`552-CFC-CJB, Dkt. No. 41 (D. Del. Feb. 12, 2021)
`EX2014 USB 2.0 Specification
`EX2015 USB 2.0 Specification Engineering Change Notice (ECN) #1:
`Mini-B connector dated Oct. 20, 2000
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`EX2017
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`EX2018
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`EX2016 History of Cell Phone Batteries and Advances in Technology,
`downloaded from https://medium.com/@diamondlitty62/history-
`of-cell-phone-batteries-and-advances-in-technology-
`9303f6cddd69 on December 13, 2021
`Battery University, “BU-107: Comparison Table of Secondary
`Batteries,” downloaded from
`https://batteryuniversity.com/article/bu-107-comparison-table-
`of-secondary-batteries, on December 13, 2021
`Battery Charging Specification v. 1.2 with errata, dated March
`15, 2012
`EX2019 Deposition transcript of Mr. John Garney in Fundamental
`Innovation Systems International LLC v. Samsung Electronics
`Co., Ltd., Case No. 2:17-cv-145-JRG-RSP, E.D. Tex., dated
`November 20, 2017
`Jan Axelson, USB Complete (2d ed. 2001), additional excerpt
`EX2020
`EX2021 Hyde, J., “USB Design by Example: A Practical Guide to
`Building I/O Devices,” Wiley Computer Publishing (1999)
`“Universal Serial Bus on-the-Go for Portable Device” dated Feb.
`29, 2000
`EX2023 Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Response
`EX2024 Deposition transcript of Dr. R. Jacob Baker, dated November 23,
`2021
`EX2025 Deposition transcript of Dr. R. Jacob Baker, dated April 4, 2022
`EX2026
`Errata for Deposition transcript of Dr. Fernald dated February
`18, 2022 (EX1021)
`Reserved
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`EX2022
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`Exs.
`2027-
`2029
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`EX2030 Dr. Baker’s expert report in the Fundamental Innovation
`Systems Int’l LLC v. TCT Mobile (US), Inc. et al., No. 1:20-cv-
`00552-CFC (D. Del.) dated March 15, 2022, used at Dr. Baker’s
`deposition on April 4, 2022
`EX2031 Demonstrative created by Dr. Baker on April 4, 2022
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`I.
`
`Introduction1
`The Petition argued that, absent a PC host, “it would have been obvious …
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`to use the Morita’s adapter [charger] to send … SE1 … to identify that the Morita
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`charger has available the charging capability of a High-power port and for the
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`mobile device to detect the identification signal so that it can utilize the High-
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`power source to charge battery 15.” Pet. 45-46. The Reply largely abandoned that
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`theory,2 arguing instead that, because the claims recite only detecting an
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`identification signal, the challenged claims are obvious given detection of PS/2
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`adapters by some prior art dual USB-PS/2 devices. Reply 1.
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`This midstream change in theory is procedurally improper. Intelligent Bio-
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`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
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`(“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make
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`their case in the petition to institute.”). The Petition contained no such theory, (see
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`Pet. 25-30, 51-52); and Petitioner’s expert denied that the recited identification
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`1 All emphasis added and all objections omitted, unless otherwise noted.
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`Citations to EX1008, EX1009, and EX2022 are to the original page numbers.
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`2 Petitioner no longer asserts Morita, Casebolt, Cypress and Zyskowski
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`against the ‘586 patent in the district court. EX2025, 46:17-47:9; EX2030-pp. 71-
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`72.
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`signal related to identifying a PS/2 adapter. EX2024, 66:6-10 (“Q: [D]oes the
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`identification signal in the ‘586 patent relate to identifying a PS/2 adapter or the
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`presence of a PS/2 adapter? A: Not that I recall”).
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`But even if considered, the new theory still does not show obviousness,
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`because: Morita did not involve the use of PS/2, there is no evidence that a mobile
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`phone with a PS/2 interface was known at the time of the invention, and Casebolt’s
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`PS/2 detection circuitry was not a standard one in mobile devices. EX2024 at
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`125:7-10; EX2025, 198:3-4, 150:21-151:3, 192:24-193:2; see also Section II.B.1.
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`There is no evidence that a special circuitry like Casebolt’s was either inherently
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`included or would have been included in Morita’s phone for detecting an irrelevant
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`PS/2 interface. Contrast EX1013, 2:49-59, Fig. 1 (Casebolt’s devices—mice and
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`keyboards—had dual USB-PS/2 interfaces). Petitioner’s untimely arguments
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`concerning other SE1 references fail for similar reasons. See Sections II.B.2-
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`II.B.4; IPR2021-00395, Paper 8 at 25-26.
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`The Reply further backtracks from Petitioner’s original theory that SE1 was
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`necessary because no USB communication was available, arguing instead that “the
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`prior art teaches using a SE1 signal with USB communications.” Reply 1; contra
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`Pet. 24-25, 46-49. Yet, if Morita’s system without a PC host could support normal
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`USB enumeration and communications, there would be no reason to use SE1.
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`E.g., EX2024 at 87:25-88:12 (Dr. Baker testifying that SE1 and USB
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`communication/enumeration are mutually “exclusive”); see also Section II.C
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`(addressing Petitioner’s new arguments such as teaching away, power saving, and
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`alternating between SE1 and enumeration, and rebutting mischaracterizations).
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`This leaves Petitioner with its original theory, rested on a hypothetical
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`charge-only mode. Reply 2. The Board has repeatedly rejected that hypothetical
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`operating mode, and should again do so here. E.g., IPR2021-00597, Paper 8 at 12-
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`13; IPR2021-00598, Paper 8 at 10-11.
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`For reasons stated in the POR and herein, the Board should confirm the
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`patentability of the challenged claims.
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`II.
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`Petitioner’s Untimely New Arguments Still Fail To Show Obviousness
`A. The Board Should Not Consider Untimely New Arguments
`Allowing Petitioner to switch its theories midstream is unfair and prejudicial
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`to Fundamental, given the limited scope of the sur-reply and rebuttal exhibits, the
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`unavailability of rebuttal expert declaration, and word limits. Consequently, the
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`Board should not consider arguments raised for the first time in the Reply, a
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`practice that is “foreclosed by statute, [the Federal Circuit’s] precedent, and Board
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`guidelines.” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286–87
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`(Fed. Cir. 2017) (citing Illumina, 821 F.3d at 1369).
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`Patent No. 7,834,586
`Petitioner’s New Characterization Of The SE1 References Still
`Fails To Show Obviousness
`In the POR, Fundamental explained that a POSITA would not have modified
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`Morita’s phone to detect an SE1 signal unless they anticipated that Morita’s hub
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`would send such a signal to the phone. POR 25-28. Dr. Baker agreed. POR 25-26
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`(citing EX2024 at 85:25-86:8, 90:16-91:16, 105:12-22). The Reply does not
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`address this argument. See Reply generally. The Reply argues instead that “SE1
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`signals were known to indicate a power source type.” Reply 4.3 The Petition
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`never raised that theory. There, Petitioner only asserted that SE1 was used as a
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`“wake up signal” (Shiga) or for indicating “full power state” (Zyskowski) or
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`“presence of PS/2 adapter” (Casebolt). Pet. 51-52, 24-31. The Petition never
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`alleged, however, that any such usage involved identifying a power source type.
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`Id.; see also EX2025, 14:19-24 (“power source type” does not appear anywhere in
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`Baker’s original declaration). Indeed, when asked whether “the identification
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`signal in the ‘586 patent relate[s] to identifying a PS/2 adapter or the presence of a
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`PS/2 adapter,” Dr. Baker replied “Not that I recall.” EX2024, 66:6-10; contra
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`Reply 1. The Board should not consider Petitioner’s new arguments. But even if
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`3 Petitioner does not argue that an errant SE1 would qualify as a claimed
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`identification signal that identifies a power source type. Reply 5-7 & n.1.
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`considered, the new arguments fail.
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`1.
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`POSITAs would not have modified Morita’s phone to
`differentiate between PS/2 and USB
`Petitioner argues that because “PS/2 provides a power line that provides
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`275mA of power,” a signal that distinguishes PS/2 from USB is a signal that
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`identifies a power source type. Reply 7-8. Casebolt and Cypress, however, are
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`silent on charging or supplying power to connected devices.4 EX1013, EX1014.
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`Moreover, Petitioner’s expert conceded that for USB device required a special
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`“smart circuitry” to detect PS/2: for example, a device connected to a host with a
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`Cypress chip would “not [be] trying to determine the type of port that it’s
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`connected to” because unlike Casebolt, “[t]here is no smart circuitry in a connected
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`peripheral device that identifies the type of port.” EX2025, 184:20-185:13,
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`188:10-192:23, 194:9-22; see also id., 192:24-193:2 (not aware of any mobile
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`phone at the time of the invention that had Casebolt’s detection circuitry).
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`Because it is not inherent or even likely that Morita’s phone had a circuitry
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`that identified PS/2 versus USB, Petitioner must, but did not, show that a POSITA
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`would have had a reason to modify Morita’s phone to include a PS/2 detection
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`4 There is also no evidence on when a device could draw power from a PS/2
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`port or whether a USB device could draw power from a PS/2 port.
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`circuit. This is unsurprising because Morita had nothing to do with a PS/2
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`connection. EX2024, 125:7-10 (“Q: Does Morita involve the use of PS/2
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`connection? A: … Not that I recall.”); EX2025, 198:3-4 (“Q: Does [] Morita’s hub
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`have a PS/2 port? A: I don’t believe so.”); 150:22-151:3 (“Q: [A]re you aware of
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`any mobile phones that ha[d] a PS/2 interface at the time of the invention, around
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`2002/ 2003 time period? A: Not that I recall. I -- I wouldn’t expect it….”).
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`If Morita’s phone was not configured to operate with a PS/2 interface, there
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`would be no reason for a POSITA to incur additional cost and complexity to
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`include a special PS/2 detection circuit in Morita’s USB phone. Contra EX1013,
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`2:38-60 (Casebolt’s peripheral device could operate with either interface);
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`EX1020, [0004]; EX2023, ¶123.
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`2. Kerai does not disclose or suggest using SE1 for charging or
`identifying power source type
`Dr. Baker acknowledged that Morita does not disclose a charging circuit as
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`in Kerai. EX2024, 126:25-127:4. Thus, to argue that Morita’s phone could detect
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`SE1 as (allegedly) in Kerai, Petitioner must, but does not, show that a POSITA
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`would have included a circuit like Kerai’s and used SE1 signaling for charging.
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`(a)
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`SE1 was not a “well known” signal for USB inactive
`communication
`Petitioner assumes incorrectly that Kerai signaled SE1 during inactive
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`communication. Reply 8-9. Yet, the relied-on disclosure in 5:45-48 characterizes
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`having data lines high during inactive communication as “well known.” EX1010,
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`5:45-48. The USB warns instead that “[l]ow-speed and full-speed USB drivers
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`must never ‘intentionally’ generate an SE1 on the bus.” EX1009 at 123.
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`Consequently, it would not have been “well known” to POSITAs that inactive
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`USB communications involved SE1 signaling.
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`Dr. Baker’s testimony is in accord. Dr. Baker acknowledged that, when a
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`USB port is disabled, the port is in a “high Z” or high-impedance state. EX2025,
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`148:2-149:25, 157:21-158:8; USB 2.0 at 310, Fig. 11-10; USB 1.1 at 255, Fig. 11-
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`6; Pet. 24 (SE1 disables a USB port). Dr. Baker further testified that, when USB
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`ports are in high-impedance, the data lines are connected to a voltage source,
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`VTERM, via pull-up resistors. Id. However, because “[y]ou can’t have two pull-up
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`resistors,” “only one of the data line[s] is pulled high in the disabled state.” Id.
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`That is, even with disabled USB communication, the data lines are not held both
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`high, but one high and one low. Id.5
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`5 Being also in “HiZ,” disconnected USB ports also do not have both lines
`high. USB 2.0 at 310, Fig. 11-10; USB 1.1 at 255, Fig. 11-6. Further, no traffic
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`propagates through a disconnected or disabled USB port. Id. After observing no
`bus activity for 3ms, however, an attached USB device must transition to a
`suspended state, during which the device can draw no more than 0.5mA if
`unconfigured. USB 2.0 at 176, § 7.2.3; id., 240-241, Fig. 9-1 & Table 9-1;
`EX2023, ¶50. Thus, SE1, by disabling USB ports, also disables sustained charging
`via USB. Id.
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`Inactive USB communication may also occur as an idle state between
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`packets, during which again only one USB data line is held high. EX1021, 241:19-
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`244:2; USB 2.0 at 152, Fig. 7-30 (USB packet voltage levels, including the voltage
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`levels for idle state before Start-of-Packet and after End-of-Packet).
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`In the idle state, the bus is left “float[ing]” with D+ or D- (but not both
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`simultaneously) held high. EX2025, 80:4-15 (bus floating means “there’s no
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`active communication on the data lines”). USB’s idle state indisputably does not
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`involve SE1. EX2025, 78:2-79:19.
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`(b) Little current is available from data lines during
`inactive USB communications
`Dr. Baker testified that, in the idle state, D+ or D- would be connected to a
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`voltage source (VTERM between 3.0-3.6V) through a 1.5K-ohm pull-up resistor. Id.,
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`69:25-73:12; USB 2.0 at Tables 7-2 & 7-7 (in idle state, D+ or D- has a voltage
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`greater than VIHZ(min) or 2.7V). In this state, at most 0.42mA of current is available
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`to a load connected to the data line that is pulled high. EX2025, 125:12-127:11.
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`0.42mA of current “would not provide sufficient power to maintain the minimal
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`power demand for a typical USB mobile device and provide meaningful amounts
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`of current to charge a battery in a mobile device.” EX2023, ¶50.
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`A POSITA would also not expect any meaningful amounts of current for
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`charging, if the modification is as Dr. Baker described in EX1003, ¶127, where the
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`lines are allegedly pulled high through the 15Kohm pull-down resistors, Rpd, and
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`even if two data lines could provide twice as much current as a single data line as
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`Petitioner assumes. See EX2025 at 84:5-9, 85:22-86:8, 125:12-127:11 (Dr. Baker
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`explaining how to estimate the amount of current flowing into a load connected to
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`a data line that is pulled high); EX1021, 167:1-168:1.
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`
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`This differs from active communication, during which USB drivers drive
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`voltages on the data lines and supposedly allow a load to draw “whatever the
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`driver supplies up to the limitations of the wires and the USB cable and the driver
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`and what the load wants.” EX2025, 127:12-22. But no active drivers are used
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`during inactive communication. USB 2.0 at 123 (must not intentionally drive both
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`data lines high), 179 (data drivers put in high impedance in idle state), 310, Fig.
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`11-10 (high impedance for disconnected or disabled ports); EX2025, 107:8-109:5,
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`148:12-149:25, 157:21-158:8 (no active drivers when a port is disabled and placed
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`in high impedance); EX1003, ¶127. Hence, during inactive communications, a
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`POSITA would expect little current available for charging from the data lines and
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`there is no evidence that they would have violated the USB Specification just to
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`draw less than an amount even less than the suspend current and less than 0.084%
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`of the 500mA available from Morita’s self-powered port.6
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`(c) Kerai’s voltages does not identify a power source type
`Kerai also does not use voltages on the data lines for identification purposes,
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`as the Petition tacitly acknowledged. Pet. 51-52 (not asserting that Kerai identified
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`any states). Detecting “the state of both high data lines [versus the state of only
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`one high data line] being available for power harvesting” provides no information
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`on the type of power source; and Petitioner does not so contend. Reply 9-10.
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`Indeed, Kerai itself states, “[i]t is immaterial with respect to the charge control
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`circuit 19, what source of power is being used.” EX1010, 3:66-67. Thus, Kerai
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`does not disclose or suggest identifying a power source type.
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`Petitioner’s argument to the contrary assumes that an identification signal
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`only needs to identify “that a charging connection is available.” Reply 10-11
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`(referencing unchallenged claim 11). That interpretation is untimely and incorrect:
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`6 Even that amount likely came from the device itself. EX2025, 104:23-106:1.
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`Case IPR2021-00599
`Patent No. 7,834,586
`the identification signal in claim 11 identifies a power source type as well as that a
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`charging connection is available. This accords with Dr. Baker’s interpretation of
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`the related ‘111 patent (EX1005), for which he stated that the requirement that the
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`identification signal indicate that a power socket is not a USB host or hub was
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`“[i]n addition to identifying a power source type.” EX2030-p. 231 n.3.
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`3.
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`Zyskowski does not disclose or suggest using SE1 for
`charging or identifying power source type
`Petitioner argues that because Zyskowski’s data lines “become usable to
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`communicate with the host” after the host is awaken from the reduced power state
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`(EX1012, [0020]), Zyskowski disclosed SE1 state. Reply 9-10. Monitoring two
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`data lines, however, is consistent with the USB, where the D+ or D- data line is
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`connected to VTERM through a pull-up resistor during the idle state, and they
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`alternate between high and low during differential signaling. USB 2.0 at 151-52,
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`§ 7.1.7.4.1 & Fig. 7-30 (“[t]he bus termination resistors hold the bus in the Idle
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`state); id. at 141, Figs. 7-20 & 7-21 (on the device side, only showing one pull-up
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`resistor for one data line). One, however, “do[es]n’t know which of the two lines
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`is supposed to be high and idle” and “may have to check them both and say,
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`‘Okay, is either [] one high.’” EX1021, 246:1-249:7, 245:10-21; EX2025, 77:19-
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`78:25 (no SE1 shown in Fig. 7-30, but in the idle state, one unidentified data line is
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`held high and the other low). Thus, Zyskowski’s disclosures of driving the data
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`Case IPR2021-00599
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`lines high during a full power state (with the lines alternating between high and
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`low for differential signaling during active communications) and leaving the lines
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`floating during reduced power state (e.g., when the bus line is idle) are fully
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`consistent with USB 2.0. Compare EX1012, [0019]-[0020]. Nothing in
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`Zyskowski suggests a USB signaling scheme that deviates from the USB protocol
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`or ignores the USB’s warning against SE1; and it does not disclose holding D+ and
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`D- high simultaneously.
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`Furthermore, Zyskowski does not disclose or suggest that its peripheral
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`devices would receive less power in the reduced power state than in the full power
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`state, because the same standby power circuit provides the power in either state.
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`EX2023, ¶58; EX1026, ¶¶27-31 (Dr. Baker not disputing Dr. Fernald’s testimony
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`in ¶58). Because the same power source was used in either state, Zyskowski does
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`not suggest configuring USB devices to identify a power source type. Nor would a
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`POSITA equate a “power state” to a “power source type.”
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`Petitioner has also not given any reason for why a POSITA would have
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`modified Morita’s phone to detect different power states as in Zyskowski. E.g.,
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`EX2024, 126:22-24 (Morita did not disclose full versus reduced power state).
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`In sum, Zyskowski also does not disclose or suggest a signal for identifying
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`a power source type.
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`4.
`Shiga does not disclose a claimed identification signal
`Petitioner does not assert that Shiga’s wake-up signal identifies a power
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`source type. Reply 9. Thus, even if a POSITA were to combined Morita and
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`Shiga—they would not— the resulting combination would not involve detecting a
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`signal that identifies a power source type (i.e., a claimed “identification signal”).
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`C.
`Petitioner’s New Argument Regarding Morita’s Operation Fails
`As explained above, Petitioner has not shown that a POSITA would have
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`modified a mobile phone to detect SE1 in general. Petitioner has also failed to
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`show why a POSITA would have modified Morita’s hub to send SE1 to Morita’s
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`phone, because the argument assumes an operating mode in which “there is no
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`active USB host.” Reply 12. Morita makes clear, however, Morita’s phone would
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`act as a host if a PC host is absent. Morita, [0015], [0018]-[0019], [0021]-[0022].
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`Premised on a wrong assumption, Petitioner’s argument fails.7 Moreover,
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`Fundamental has neither applied an erroneous teaching-away standard nor a
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`bodily-incorporation analysis.
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`7 Petitioner argues that no host existed if Morita’s phone was removed from
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`the charger; but the removal also discontinues charging. EX2025, 43:18-25. Thus,
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`this scenario cannot support Petitioner’s reason for using SE1. Re-enumeration in
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`a USB-compliant system also does not show that the same would occur with SE1.
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`The inventors’ disclosure of SE1 does not render the claims
`obvious
`Contrary to Petitioner’s mischaracterization, (Reply 12), Fundamental did
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`1.
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`not concede that a POSITA would have regarded SE1 as an option. See POR 61-
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`64 (“Prior Art Did Not Teach Using SE1 As The Claimed Identification Signal”).
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`Instead, Fundamental rebutted Dr. Baker’s argument that a POSITA would not
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`have known how to generate other possibilities taught by the inventors. POR 66.
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`In that rebuttal, Fundamental made clear that a POSITA would not have thought of
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`using SE1 (or any of the disclosed signals) in Morita. Id.; EX2023, ¶126 (Dr.
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`Fernald opining that the signaling schemes in the ‘586 patent “do not evidence
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`what a person of ordinary skill in the art would have conceived”). It is settled law
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`that “the inventor’s own path itself never leads to a conclusion of obviousness.”
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`Otsuka Pharm. Co. v. Sandoz, Inc., 678 F. 3d 1280, 1296 (Fed. Cir. 2012).
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`2. Morita’s silence on certain details does not justify
`Petitioner’s injection of hypotheticals incompatible with
`USB or Morita’s express disclosures
`Petitioner argues that the proper obviousness analysis “is whether Morita
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`teaches away from the SE1 ‘option’ in view of PO’s alleged other ‘options’.”
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`Reply 13. There arguments fail for multiple reasons.
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`First, the Reply ignores the many alternatives discussed in the POR,
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`addressing instead only the enumeration option and without explaining why a
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`POSITA would have chosen SE1 over those other options. Compare Reply 13-20
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`with POR 66-68 (e.g., signaling via power lines as in Matsumoto or ID pins);
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`EX1017, 6:4-17 (using power lines in dead battery scenario).
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`Second, the absence of teaching away “does not automatically establish a
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`motivation to combine [a reference] with another reference in the same field.”
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`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. Ltd., 853 F.3d 1370, 1379-
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`80 (Fed. Cir. 2017); Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1051
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`n.15 (Fed. Cir. 2016) (en banc) (“[E]ven if [the reference] does not teach away, its
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`statements … are relevant to a finding regarding whether a skilled artisan would be
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`motivated to combine….”). In considering how Morita might operate, a POSITA,
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`who would be familiar with the USB Specification (EX2025, 198:5-11), would be
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`cognizant of the Specifications’ express warning against SE1 and that SE1 would
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`disable USB communication and discontinue power delivery. Cf., EX2025, 90:3-
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`14; supra n.5. A POSITA would also recognize that Morita expressly disclosed
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`that Morita’s phone would serve as a host when a PC was absent and that it would
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`be used when charged. Morita, [0015], [0018]-[0019], [0021]-[0022].
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`It is further undisputed that enumeration would be necessary for Morita’s
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`phone to serve as a host, and that as a host, Morita’s phone would learn through
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`enumeration, and potentially subsequent USB communications, whether the
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`connected hub is self-powered (and hence its power capability). See POR 20-21,
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`57-58; Reply generally, EX2025, 200:9-201:11. Dr. Fernald also testified—
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`without rebuttal—that a USB host determines the maximum amount of current to
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`be drawn from a hub/host and that a POSITA would understand how Morita could
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`reconfigure itself to draw power for charging. EX1021, 54:13-29, 55:11-56:8,
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`52:1-15, 37:4-39:9, 33:12-24; see also Reply 18-19 (admitting that enumeration is
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`needed in order to learn of attachment or detachment of peripheral devices); POR
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`41-42, 56-57, 66-67.
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`Dr. Baker argues, however, when a PC is absent, there would be no host
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`when the phone was first connected and SE1 was needed to cause the phone to
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`configure itself as a host. That contradicts Morita’s disclosure that the phone
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`configures itself as a host in response to a connection state signal it receives when
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`connecting to the charger. EX1020, [0015]. Both parties only proposed USB as
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`the signaling mechanism for sending the connection state. EX1026, ¶50; EX2023,
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`¶87; EX2024, 101:1-102:1. Because Morita’s phone would be engaged in USB
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`communications with the charger when connected and because the phone could
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`already learn of the hub’s power capability through USB protocol,8 there would be
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`8 Cf., EX2025, 200:9-201:11; EX1021, 52:1-56:8, 37:4-39:9; POR 56-58).
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`Case IPR2021-00599
`Patent No. 7,834,586
`no reason for the hub to send the phone an invalid SE1 signal to cause the phone to
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`charge at 500mA or configure itself as a host.
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`Furthermore, Dr. Baker agreed that Morita’s phone also needed to be first
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`informed to operate as a host when a peripheral device w
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