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’ NOTICE OF FILING DEMONSTRATIVES
`
`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’ NOTICE OF FILING DEMONSTRATIVES
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`
`
`TCT Mobile (US), Inc. et al.
`Petitioner
`v.
`Fundamental Innovation Sys. Inter. LLC
`Patent Owner
`
`Case No. IPR2021-00599
`
`TCT Mobile's Hearing Demonstratives
`
`June 7, 2022
`
`IPR2021-00599
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
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`IPR2021-00599IPR2021-00599
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`2
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
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`3
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`
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`Unpatentability Ground and Remaining Issue
`
`• The Petition advances single obviousness ground:
`
`• PO argues only that Morita and the knowledge of a POSITA does not render obvious a
`single limitation—“configured to detect an identification signal.”
`
`Paper 1 (Petition), 3.
`
`Paper 19 (Reply), 4.
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`
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`IPR2021-00599IPR2021-00599
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`4
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
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`IPR2021-00599IPR2021-00599
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`5
`
`
`
`586 Patent: Identification Signal That Identifies a Power Source Type
`
`• The specification describes an USB adapter that sends an identification signal, and a
`mobile device that detects the identification signal.
`
`Adapter Sends Identification Signal
`
`Mobile Device Detects Identification Signal
`
`Ex. 1001 (586 patent) at 8:60-67 (Paper 1 (Petition) at 10).
`
`Ex. 1001 (586 patent) at 9:18-23 (Paper 1 (Petition) at 11).
`
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`6
`
`
`
`586 Patent: The Specification Broadly Describes What the Identification
`Signal May Identify
`• The Board adopted the parties' agreed district court construction: "identification signal"
`means "a signal that identifies a power source type."
`
`Paper 8 (ID) at 11.
`
`• For example, the identification signal may simply indicate that the adapter is, or is not, an
`available USB power source type:
`
`
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`7
`
`Ex. 1001 (586 patent) at 8:60-67 (Paper 1 (Petition) at 10); Paper 19 (Reply) at 10-11.
`
`
`
`586 Patent: The Specification Describes That the Identification May Be a
`SE1 Signal
`• There is no dispute that the identification may be a SE1 signal, i.e., both data lines of the
`USB connection being logic high:
`
`
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`8
`
`Ex. 1001 (586 patent) at 9:18-35 (Paper 1 (Petition) at 46, n. 1).
`
`
`
`586 Patent: Representative Claim 1 Relates to Only a Mobile Device and
`Detecting the Identification Signal (Not Sending an Identification Signal)
`• Claim 1 recites a mobile device that detects an identification signal—and is silent to as to
`any sending of an identification signal:
`
`
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`9
`
`Ex. 1001 (586 patent) at Claim 1 (Paper 1 (Petition) at 53); Paper 19 (Reply) at 4.
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
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`10
`
`
`
`The Petition Demonstrated That Morita Is Configured To Detect the SE1
`Signal
`• USB mobile devices, like Morita, are configured to detect SE1 signals:
`
`
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`11
`
`Paper 1 (Petition) at 24; Paper 19 (Reply) at 2.
`
`
`
`The Petition Demonstrated That SE1 Signals Were Known To Identify a
`Power Source Type
`• For example:
`
`Casebolt
`
`Paper 1 (Petition) at 29; Paper 19 (Reply) at 2.
`
`Kerai
`
`
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`Paper 1 (Petition) at 27; Paper 19 (Reply) at 2.
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`12
`
`
`
`The Petition Demonstrated That Even if Morita's Adapter Generating a SE1
`Signal Were Required (It Is Not), It Would Have Been Obvious
`
`• The Petition states generating the SE1 is not a claim requirement:
`
`
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`13
`
`Paper 1 (Petition) at 53; Paper 19 (Reply) at 2.
`
`
`
`The Petition Demonstrated That Even if Morita's Adapter Generating a SE1
`Signal Were Required (It Is Not), It Would Have Been Obvious
`
`• But the Petition further explained that when there is no host in the Morita system, it would
`have been obvious for the Morita adapter to generate the SE1 signal to indicate high-
`power charging functionality
`
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`14
`
`Paper 1 (Petition) at 48; Paper 19 (Reply) at 2.
`
`
`
`The POPR Raised Arguments Relating to Unclaimed Elements
`
`• PO argued that Morita's adapter sending a SE1 signal would render it inoperable because
`Morita does not disclose a charge-only mode.
`• PO argued that Morita's adapter sending a SE1 signal would render it inoperable because
`Morita's phone engages in USB communications.
`• PO argued that there would be no reason for Morita's adapter to send a SE1 signal
`because Morita provides other options.
`• PO argued that the Petition uses hindsight to argue Morita's adapter sends a SE1 signal.
`
`Paper 19 (Reply) at 2-3 (citing Paper 7 (POPR) at 29-58).
`
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`15
`
`
`
`The Institution Decision Properly Focused on the Actual Claim
`Requirements
`• As an initial matter, the Board pointed out the critical and dispositive tacit admissions by
`PO:
`
`Claim 1 only requires detecting—
`not sending an identification
`signal (e.g., a SE1 signal)
`
`Claim 1 does not require taking
`any action upon detection
`
`Paper 8 (ID) at 21.
`
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`16
`
`
`
`The Institution Decision Properly Focused on the Actual Claim
`Requirements
`• As an initial matter, the Board pointed out the critical and dispositive tacit admissions by
`PO:
`
`Morita is already configured to
`detect a SE1 signal
`
`Paper 8 (ID) at 21.
`
`• PO does not currently dispute either of these critical points.
`
`Paper 19 (Reply) at 4.
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`17
`
`
`
`The Institution Decision Properly Focused on the Actual Claim
`Requirements
`
`• The Board found that it was known that SE1 signals are "identification signals":
`
`• This is all that the claim requires, and thus institution was granted.
`Paper 19 (Reply) at 1.
`
`Paper 8 (ID) at 22.
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`
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`18
`
`
`
`The Institution Decision Found that POPR's Arguments Relate to
`Unclaimed Elements
`
`• The Board found that PO's arguments related to unclaimed elements:
`
`
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`19
`
`Paper 8 (ID) at 22-23; Paper 19 (Reply) at 3.
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
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`IPR2021-00599IPR2021-00599
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`20
`
`
`
`It Is Undisputed That The Claims Do Not Require Sending an Identification
`Signal (e.g., SE1 signal)
`
`• PO's expert, Dr. Fernald, agrees that the claims require only detecting—if it is even sent—
`an identification signal:
`
`
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`Ex. 1021 (Fernald Trans.) at 118:15-23 (Paper 19 (Reply) at 1).
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`21
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`
`
`It Is Undisputed That Morita Is Already Configured to Detect An SE1 Signal
`
`• Dr. Fernald admits that standard USB devices, such as Morita, are configured to detect
`SE1 signals:
`
`Ex. 1021 (Fernald Trans.) at 188:16-23
`(Paper 19 (Reply) at 5); see also Ex. 2023 ¶ 52.
`
`Ex. 2023 (Fernald Decl.) ¶ 52
`(Paper 19 (Reply) at 5).
`
`
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`22
`
`
`
`PO Concedes That SE1 Was a Known Prior Art Identification Signal:
`Casebolt and Cypress
`
`• PO squarely admits that Casebolt and Cypress use SE1 signals "for telling PS/2 and USB
`interfaces apart."
`
`Paper 17 (POR) at 23, 63 (Paper 19 (Reply) at 7).
`
`• "[T]elling PS/2 and USB interfaces apart" identifies a power source type:
`
`PS/2 power type
`
`USB power type
`
`
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`23
`
`Ex. 1027 at 18 (Paper 19 (Reply) at 7).
`
`Ex. 1008 at 142 (Paper 19 (Reply) at 7).
`
`
`
`There Can Be No Reasonable Dispute That Kerai Also Discloses Using SE1
`As An Identification Signal
`
`• Kerai discloses harvesting power from one or more USB data lines with logic detectors 50
`and capacitors 51:
`
`“The USB interface
`P comprises a
`connector 22 having
`data 23 …. [P]air of
`conductors 25,26
`carry differential
`data signals”
`
`Ex. 1010 (Kerai) at 3:26-31
`
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`24
`
`Ex. 1010 (Kerai) at Fig. 3; Paper 1 (Petition) at 26-27; Paper 19 (Reply) at 8).
`
`
`
`There Can Be No Reasonable Dispute Kerai Also Discloses Using SE1 As
`An Identification Signal
`
`• Kerai discloses using a SE1 signal such that both logic detectors would harvest power from
`both lines (i.e., a power source type):
`
`SE1 signal
`
`Detects each
`high signal and
`harvests power
`from both lines
`
`Ex. 1010 (Kerai) at 5:43-53 (Paper 1 (Petition) at 26-27).
`• The Board should disregard PO's and Dr. Fernald's disagreement with this express text,
`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).
`Paper 19 (Reply) at 8.
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`25
`
`
`
`Kerai Expressly Rejects PO's Argument
`
`• PO argues that there can be no SE1 signal in Kerai for charging because power harvesting
`occurs only during active USB communications ("differential signaling"):
`
`• This is non-sensical, because Kerai expressly says that power harvesting may occur
`before communication (e.g., when applying SE1):
`
`Paper 17 (POR) at 22
`(Paper 19 (Reply) at 8).
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`26
`
`Ex. 1010 (Kerai) at 1:41-52
`(Paper 19 (Reply) at 8).
`
`
`
`PO Admits That Kerai's System Detects Both Lines, and Harvests Power
`From Both Lines, If Both Are High (SE1 Signal)
`
`• Kerai discloses using SE1 as an identification signal, because—as Dr. Fernald admits—
`when the data lines are in the SE1 state, the logic detectors detect each high line and
`harvests power from both lines:
`
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`27
`
`Ex. 1021 (Fernald Trans.) at 240:4-11 (Paper 19 (Reply) at 9).
`
`
`
`Zyskowski Also Discloses Uses SE1 As An Identification Signal
`
`• Zyskowski discloses detecting the power source type (e.g., "power state") by detecting whether both
`lines are high:
`
`• The Board should disregard PO's and Dr. Fernald's disagreement with this express text, 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).
`
`Paper 19 (Reply) at 9.
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`28
`
`Ex. 1012 (Zyskowski) ¶¶ 19, 27
`(Paper 1 (Petition) at 28-29); Paper
`19 (Reply) at 9-10.
`
`
`
`Zyskowski Expressly Rejects PO's Argument
`
`• PO assumes that Zyskowski only uses its signaling during "normal operation," i.e.,
`differential signaling during data communications:
`
`• Zyskowski, however, expressly recognizes that the data lines might not even be in use for
`data communication:
`
`Paper 17 (POR) at 22-23
`(Paper 19 (Reply) at 9-10).
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`29
`
`Ex. 1012 (Zyskowski) ¶ 20
`(Paper 19 (Reply) at 10).
`
`
`
`That Is All That The Claims Require
`
`• There is no dispute that the claims do not require sending an identification signal—but only
`detecting an identification signal.
`
`• There is no dispute that SE1 is described as an identification signal in the 586 patent.
`
`• There is no dispute that Morita is already configured to receive an identification signal.
`
`• Casebolt, Cypress, Kerai, and Zyskowski disclose using SE1 as an identification signal.
`
`• This is all that the claims require: 35 U.S.C. § 103 assesses the differences between the
`“claimed invention and the prior art”—not unclaimed elements.
`
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`30
`
`Paper 19 (Reply) at 1, 4, 7.
`
`
`
`PO's Argument Number 1: A POSITA Would Not Have Modified Morita's
`Phone
`
`• PO argues that a POSA would not have modified Morita’s phone to detect (and take action
`upon receiving) a SE1 signal unless Morita’s charger sent a SE1 signal.
`
`Paper 17 (POR) at 25-28; Paper 24 (Sur-reply) at 4-16; Paper 19 (Reply) at 5.
`
`• No modification is necessary: it is undisputed that Morita is already configured to detect a
`SE1 signal.
`
`• And the Board correctly found in the ID that the claims do not require that Morita's adapter
`send a SE1 signal or take action upon receiving a SE1 signal.
`
`Paper 19 (Reply) at 5.
`
`Paper 8 (ID) at 21 (Paper 19 (Reply) at 5).
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`31
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`
`
`PO's Argument Number 2: Alleged Disruption of USB Communications
`
`• PO argues that Morita's charger sending a SE1 signal would disrupt Morita's USB
`communications and render it inoperable.
`
`Paper 17 (POR) at 28-44; Paper 19 (Reply) at 5.
`• The Board correctly found that such arguments relate to the unclaimed element of sending
`an identification signal:
`
`* * *
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`32
`
`Paper 8 (ID) at 22-23
`(Paper 19 (Reply) at 6).
`
`
`
`PO's Argument Number 3: No Reason to Indicate Morita's Adapter is High-
`Power Port
`
`• PO argues that Morita's charger sending a SE1 signal is unnecessary to indicate the
`charger is a high-power charger.
`
`Paper 17 (POR) at 48-56; Paper 19 (Reply) at 6.
`
`• The claims do not require the Morita charger to send a SE1 signal in the first place.
`
`Paper 19 (Reply) at 6.
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`33
`
`
`
`PO's Argument Number 4: Hindsight
`
`• PO argues that the Petition improperly uses hindsight because it does not address
`complications in the Morita adapter sending a SE1 signal.
`
`Paper 17 (POR) at 64-65; Paper 19 (Reply) at 6.
`
`• The claims do not require the Morita charger to send a SE1 signal in the first place.
`
`Paper 19 (Reply) at 6-7.
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`34
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
`
`IPR2021-00599IPR2021-00599
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`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`35
`
`
`
`If Required (It Is Not), It Would Have Been Obvious for Morita's Charger to Send an
`Identification Signal To Indicate High-Power Charging When the System Lacks a Host
`
`• The Petition demonstrated that all USB devices, such as Morita, default to low-power
`charging.
`
`Paper 1 (Petition) at 49; Ex. 1008 at 134; Paper 19 (Reply) at 13.
`
`• Dr. Fernald admitted that Morita's phone would default to low power charging.
`
`
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`36
`
`Ex. 1021 (Fernald Trans.) at 57:13-23
`(Paper 19 (Reply) at 13).
`
`
`
`The SE1 Signal Is the Optimal Option, and at Least an Obvious Option, To Serve as an
`Identification Signal To Indicate High-Power Charging Functionality
`
`• The Petition demonstrated that the SE1 signal was optimal in this situation:
`- When there is no host, enumeration is not possible.
`
`- The SE1 was well known and could be “easily distinguished”:
`
`Paper 1 (Petition) at 46-50; Paper 19 (Reply) at 12.
`
`Paper 1 (Petition) at 46-50; Paper 19 (Reply) at 12.
`
`
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`37
`
`Ex. 1011 (Shiga) at 6:48-58
`(Paper 1 (Petition) at 52).
`
`
`
`PO Admits SE1 Is an "Option" For Identifying High-Power Charging Functionality
`
`• PO identifies other "options" in addition to using a SE1 to identify high-power charging
`functionality:
`
`• PO alleges that the Petitioner does not explain why a POSITA would have chosen the SE1
`option:
`
`Paper 17 (POR) at 66 (Paper 19 (Reply) at 12.
`
`
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`Paper 24 (Sur-reply) at 16-17.
`
`38
`
`
`
`PO Admits SE1 Is an "Option" For Identifying High-Power Charging Functionality
`
`• PO, however, does not dispute that the benefit of the SE1 signal being "easily
`distinguished."
`Ex. 1011 (Shiga) at 6:48-58 (Paper 1 (Petition) at 52);
`Paper 19 (Reply) at 9.
`• Nor does PO dispute that Morita already figured out how to deviate from the USB
`specification.
`
`Paper 19 (Reply) at 15.
`
`• Instead, PO highlights another option, the USB enumeration option, to exit the default low-
`power functionality:
`
`
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`Paper 17 (POR) at 57 (Paper 19 (Reply) at 12).
`
`39
`
`
`
`Morita Does Not Teach Away From the Most Obvious Option: the SE1 Signal
`
`• Morita cannot be said to teach away from using SE1 when it is undisputed that Morita does
`not disclose using any option—much less the USB enumeration—to signal high-power
`charging functionality.
`• Dr. Fernald testified:
`
`* * *
`
`Ex. 1021 (Fernald Trans.) at 52:16-53:6
`(Paper 19 (Reply) at 13).
`
`
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`40
`
`
`
`PO's Enumeration "Option" Had Known Drawbacks
`
`• SE1 avoids the well-known problem of power-intensive USB functionality:
`
`• Morita is optimal for SE1 signaling because the phone can optionally be set as host:
`
`Ex. 1025 (Howard) at 2:47-54
`(Paper 19 (Reply) at 14).
`
`
`
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`41
`
`Ex. 1020 (Morita) ¶ 18
`(Paper 19 (Reply) at 14).
`
`
`
`PO's Other Arguments Ignore Morita's Express Disclosures and the Collective Teachings
`of the Prior Art: Disrupting USB Communications Is Not an Issue
`
`• PO argues that sending a SE1 signal would disrupt normal USB communications and
`would render Morita inoperable.
`
`Paper 17 (POR) at 31-51 (Paper 19 (Reply) at 15).
`
`• This makes little sense, because Morita already discloses disrupting USB
`communications—and it is not inoperable:
`
`
`
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`42
`
`Ex. 1020 (Morita) ¶ 16 (Paper 19 (Reply) at 15).
`
`
`
`PO's Other Arguments Ignore Morita's Express Disclosures and the Collective Teachings
`of the Prior Art: Disrupting USB Communications Is Not an Issue
`
`• Dr. Fernald admits that it was well known how to restart USB communications when
`necessary:
`
`• Dr. Fernald also admits that it was known how to restart USB communications after
`applying the SE1 signal:
`
`Ex. 1021 (Fernald Trans.) at 151:1-10
`(Paper 19 (Reply) at 16).
`
`
`
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`43
`
`Ex. 1021 (Fernald Trans.) at 171:20-25
`(Paper 19 (Reply) at 17).
`
`
`
`PO's Other Arguments Ignore Morita's Express Disclosures and the Collective Teachings
`of the Prior Art: Learning of Attachments Is Not an Issue
`
`• PO argues that a SE1 signal would prevent learning of attachments.
`
`• Dr. Fernald admits, whenever normal USB communications commence, the host will learn
`of the attachment information (just like when placing Morita's phone on the charger after a
`call):
`
`Paper 17 (POR) at 46-51 (Paper 19 (Reply) at 18).
`
`
`
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`44
`
`Ex. 1021 (Fernald Trans.) at 153:8-15 (Paper 19 (Reply) at 19, 19, n. 6).
`
`
`
`PO's Other Arguments Ignore Morita's Express Disclosures and the Collective Teachings
`of the Prior Art: Learning of Attachments Is Not an Issue
`
`• The prior art is replete with examples of restarting USB communications:
`
`
`
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`45
`
`Ex. 1010 (Kerai) at 1:43-50 (Paper 19 (Reply) at 8, 16, n. 4, 19).
`
`
`
`PO New Sur-Reply Argument (1): Morita Must Be Modified To Use PS/2 or USB
`
`• In sur-reply, PO argues (a new, untimely argument) that Morita's phone must be modified
`to include the same functionality (e.g., "smart circuitry") of the SE1 references to use the
`SE1 signal.
`Paper 24 (Sur-reply) at 5-15.
`• First, the Board already rejected this argument:
`
`Claim 1 only requires detecting—
`not sending an identification
`signal (e.g., a SE1 signal)
`
`Claim 1 does not require taking
`any action upon detection
`
`Paper 8 (ID) at 21.
`• Second, PO is improperly requiring bodily incorporation.
`Paper 19 (Reply) at 6, 12.
`
`
`
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`46
`
`
`
`PO New Sur-Reply Argument (2): Morita Must Use the USB Option
`
`• In sur-reply, PO implies (a new, untimely argument) that a POSITA would only look to USB
`for how Morita would operate.
`
`• This is non-sense, because PO admits that Morita already deviates from the USB
`specification.
`
`Paper 24 (Sur-reply) at 17.
`
`
`
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`47
`
`Ex. 1021 (Fernald Trans.) at 124:16-23
`(Paper 19 (Reply) at 15).
`
`
`
`If Required (It Is Not), It Would Have Been Obvious for Morita's Charger to Send an
`Identification Signal To Indicate High-Power Charging When the System Lacks a Host
`
`• PO admits an option to signal high-power charging functionality is SE1.
`Paper 17 (POR) at 66-67 (Paper 19 (Reply) at 20).
`
`• PO admits that Morita does not disclose any option to signal high-power charging
`functionality.
`
`Ex. 1021 (Fernald Trans.) at 52:16-53:6 (Paper 19 (Reply) at 13).
`
`• SE1 was "easily distinguishable" and optimal to use given Morita's ability to set the phone
`as a host.
`
`Ex. 1011 (Shiga) at 6:48-58 (Paper 1 (Petition) at 52).
`
`• At bottom, PO's complaints amount to improper bodily incorporation and ignoring of the
`collective teachings of the prior art.
`
`
`
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`48
`
`In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012) (holding that test of obvious considers "what the combined
`teachings of the references would have suggested to those having ordinary skill in the art") (Paper 20 (Reply) at 6, 15)
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
`
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`49
`
`
`
`If Required (It Is Not), It Would Be Obvious for Morita's Charger to Send an Identification
`Signal To Indicate High-Power Charging When Acting As Only a Charger
`
`• At the institution phase, the Board did not find that Morita discloses a "charging only
`mode."
`
`Paper 8 (ID) at 23; (Paper 19 (Reply) at 20).
`
`• A full record demonstrates that Morita would have been understood to disclose, or at least
`render obvious, a charge-only mode.
`
`• To start, this mode was so well known that Dr. Fernald refers to the configuration as a
`"normal charger":
`
`
`
`IPR2021-00599IPR2021-00599
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`50
`
`Ex. 2023 (Fernald Decl.) ¶ 101; (Paper 19 (Reply) at 21).
`
`
`
`Morita Discloses, or at Least Renders Obvious, a Charge-Only Mode: Morita's Express
`Disclosures
`
`• Morita says over and over that connections to the Morita charger are for connecting
`devices:
`
`Ex. 1020 (Morita) ¶ 12;
`(Paper 19 (Reply) at 21).
`
`Ex. 1020 (Morita) ¶ 21;
`(Paper 19 (Reply) at 21).
`
`
`
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`51
`
`
`
`Morita Discloses, or at Least Renders Obvious, a Charge-Only Mode: Morita's Express
`Disclosures
`
`• Morita actually depicts a charge-only mode:
`
`
`
`IPR2021-00599IPR2021-00599
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`52
`
`Ex. 1020 (Morita) at Figure 2; (Paper 19 (Reply) at 21).
`
`
`
`Morita Discloses, or at Least Renders Obvious, a Charge-Only Mode: Morita's Express
`Disclosures In View of the Knowledge of a POSITA
`
`• Morita's express disclosure of an easy connection is consistent with charge-only
`functionality:
`
`Ex. 1020 (Morita) ¶ 16;
`(Paper 19 (Reply) at 21).
`
`Ex. 1022; Ex. 1023;
`Ex. 1024 ( (Paper
`19 (Reply) at 21).
`
`53
`
`
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`
`
`Summary: Morita Discloses, or at Least Renders Obvious, a Charge-Only Mode
`
`• Morita “must be considered not only for what it expressly teaches, but also for what it fairly
`suggests.” In re Aslanian, 590 F.2d 911, 914 (CCPA 1979).
`
`Paper 19 (Reply) at 22.
`
`• Morita discloses:
`- Connections "for coupling" devices.
`- A charger that allows easy attachment and removal of a phone for charging.
`- A figure with no connections.
`
`• The knowledge of a POSITA indicates this mode is "normal."
`
`• Morita at least "fairly suggests" a charge-only mode.
`
`
`
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`54
`
`Paper 19 (Reply) at 20-22.
`
`
`
`PO's Arguments All Fail Against Morita's Charge-Only Mode
`
`• PO argues that SE1 disrupts USB communications.
`
`Paper 17 (POR) at 39-44 (Paper 19 (Reply) at 22).
`• With no connections, there is no need for USB communication, and it is desirable to
`shutdown normal USB communication:
`
`• It was routine to restart communications when necessary, e.g., Kerai.
`
`
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`55
`
`Ex. 1010 (Kerai) at 1:43-50 (Paper 19 (Reply) at 8, 16, n. 4, 19).
`
`Ex. 1025 (Howard) at 2:50-57
`(Paper 19 (Reply) at 22).
`
`
`
`Roadmap
`
`1. Unpatentability Ground and Remaining Issue
`2. The 586 Patent and Claim 1
`3. The Petition, Preliminary Response, and Institution Decision
`4. PO's Arguments Are Irrelevant, Because Claim 1 Does Not Require Sending an
`Identification Signal
`5. Even if Claim 1 Did Require Sending an Identification Signal, PO's Arguments Fail For
`Two Separate Reasons:
`A.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Lacks a Host
`B.
`It Would Have Been Obvious to Send an Identification Signal When the Morita System Is Acting as a
`Normal Charger
`6. The Petition Does Not Use Hindsight
`
`
`
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`56
`
`
`
`The Petition Does Not Use Hindsight
`
`• Morita "fairly discloses" a charge-only mode.
`- Regardless, the Board is correct, a charge-only mode is not necessary for an unpatentability finding.
`Paper 8 (ID) at 24; Paper 19 (Reply) at 20-23.
`• SE1 signals as identification signals were well known, e.g., Casebolt, Cypress, and Kerai.
`
`Paper 19 (Reply) at 23.
`
`• Handling unintentional SE1 signals and restarting communications was all known in the art.
`
`• That other options in addition to SE1 exist is of no moment, because Morit
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