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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
`___________________
`
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC’s
`PATENT OWNER PRELIMINARY RESPONSE
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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
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`Case IPR2021-00599
`Patent No. 7,834,586
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`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`Introduction ................................................................................................... 1
`Background on the USB Communication Protocol ..................................... 3
`A. USB Hubs ........................................................................................... 4
`B.
`USB Signal and Power Connections .................................................. 5
`C.
`Power Supply to USB Devices and Hubs .......................................... 6
`D.
`Enumeration to Establish Communication Between Host and
`Device ................................................................................................. 7
`Single Ended 1 (“SE1”) Line State .................................................... 7
`E.
`Summary of the ’586 Patent ....................................................................... 10
`III.
`IV. Summary of the Asserted Prior Art ............................................................ 12
`A. Morita ............................................................................................... 12
`B.
`SE1 References ................................................................................. 17
`Skill Level of a POSITA ............................................................................ 20
`V.
`VI. The Board Should Deny the Petition under §325(d) .................................. 20
`A.
`The Same or Substantially the Same Art and Arguments
`were Previously Presented to the Board ........................................... 20
`Petitioner Does Not Assert that the Office Erred in a Manner
`Material to the Patentability of Challenged Claims ......................... 26
`VII. The Petition’s Translation of Morita Does Not Comply With Patent
`Office Rules ................................................................................................ 27
`VIII. Petitioner Has Not Shown A Reasonable Likelihood Of Success To
`Prevail On At Least One Challenged Claims On Ground 1 ....................... 27
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`B.
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`A.
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`2.
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`Case IPR2021-00599
`Patent No. 7,834,586
`Because SE1 Would Disrupt USB Communication And
`Enumeration, Petitioner’s Proposed Combination Would
`Render Morita Inoperable for Its Intended Purpose ......................... 29
`1. Morita does not provide a charger for the sake of
`charging alone ........................................................................ 33
`2. Morita’s mobile device engages in USB
`communication when connected to the charger ..................... 36
`3. Morita’s mobile device needs to maintain
`communication with USB hub charger to learn of
`device attachment or detachment ........................................... 38
`Petitioner Has Presented No Competent Evidence That A
`POSITA Would Have Found It Obvious To Provide An SE1
`Identification Signal To Indicate A High-Powered Port .................. 42
`1. Morita’s USB port 21 would act as a high-power hub
`port even when a PC is connected ......................................... 43
`The USB specification already provides means to
`identify self-powered hubs to the host ................................... 47
`3. Morita’s USB port 21 of the hub charger would not
`indicate to the mobile device that communication will
`not occur ................................................................................. 51
`Petitioner’s Reason for Using SE1 Signaling Is Infected with
`Hindsight .......................................................................................... 52
`IX. Conclusion .................................................................................................. 58
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`B.
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`C.
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`TABLE OF AUTHORITIES
`
`Case IPR2021-00599
`Patent No. 7,834,586
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerate
`GmbH,
`Case No. IPR2019-01469, Paper 6 (February 13, 2020) .............................. 20, 26
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 41
`
`Huawei Device Co., Ltd. v. Fundamental Innovation Systems Int’l
`LLC,
`IPR2018-00485, Paper 8 (PTAB, Sept. 4, 2018) .........................................passim
`LG Electronics, Inc. v. Fundamental Innovation Systems Int’l LLC,
`IPR2018-00493, Paper 10 (PTAB Aug. 30, 2018) ......................................passim
`South-Tek Sys., LLC v. Engineered Corrosion Solutions, LLC,
`748 Fed. Appx. 1003 (Fed. Cir. 2018) ................................................................ 48
`Statutes
`18 U.S.C. §1001 ....................................................................................................... 27
`28 U.S.C. §1746 ....................................................................................................... 27
`35 U.S.C. §325(d) .............................................................................................. 16, 20
`Rules
`37 C.F.R. §1.68 ........................................................................................................ 27
`37 C.F.R. §42.63(b) ................................................................................................. 27
`37 C.F.R. §42.65(a) .................................................................................................. 47
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`EXHIBIT LIST
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`Case IPR2021-00599
`Patent No. 7,834,586
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`Ex. 2010
`
`
`Ex. 2001 Telephonic Hearing Transcript dated March 25, 2021
`Ex. 2002 U.S. Patent No. 7,360,004 (“Dougherty”)
`Ex. 2003
`Jan Axelson, USB Complete (1999), excerpt
`Ex. 2004 U.S. Patent No. 5,884,086 (“Amoni”)
`Ex. 2005 U.S. Patent No. 6,904,488 (“Matusmoto”)
`Ex. 2006
`Jan Axelson, USB Complete (2d ed. 2001), excerpt
`Ex. 2007 U.S. Patent No. 5,859,522 (“Theobald”)
`Ex. 2008 U.S. Patent No. 6,556,564 (“Rogers”)
`Ex. 2009 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)
`
`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)
`Ex. 2013 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)
`
`Ex. 2011
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`
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`Ex. 2012
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`Introduction1
`The USB charging technology at issue in U.S. Pat. No. 7,834,586 to Fischer
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`Case IPR2021-00599
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`I.
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`et al. (“the ‘586 patent”) and its sibling patents (collectively, the “Fischer family
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`patents”) was the product of research and development at Research in Motion
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`(“RIM,” now Blackberry Ltd.). As of this filing, more than 50 entities—including
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`Samsung, LGE, Huawei and ZTE—have entered into licensing deals with Patent
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`Owner on the Fischer family patents. Petitioner is one of the few holdouts, even
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`though the Fischer family patents have undergone extreme scrutiny, including by
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`the Board.
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`In 2017-2018, eighteen (18) petitions were filed against the Fischer family
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`patents. In that first wave of petitions, the Board denied institution in 13 instances
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`(including IPR2018-00274, -00485 and -00493 filed against the ‘586 patent),
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`reached a final written decision in favor of Patent Owner in IPR2018-00111, and
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`terminated the remaining four (one being the same as IPR2018-00111).
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`The earlier challenges against the ‘586 patent involved combining SE1
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`signaling with Theobald or Dougherty. See Section VI.A. In this wave of
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`petitions, Petitioner relies primarily on a different reference, Morita, but again in
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`combination with SE1 signaling. The Petition suffers from the same deficiency as
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`1 All added emphasis shown in bold and italicized text.
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`earlier petitions.
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`Morita is substantially the same as Dougherty as both involve a USB hub
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`charger whose primary function is to expand a portable device’s accessibility to
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`USB peripherals while providing power to the portable device. As with previous
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`attempts to combine SE1 with Dougherty, “Petitioner has not explained
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`sufficiently why using [] SE1 signal to replace [USB enumeration] would not
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`render [Morita’s USB hub charger] inoperable for the intended purpose of
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`replicating USB ports given the proscription in the USB specification against
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`intentionally generating an SE1 signal.” LG Electronics, Inc. v. Fundamental
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`Innovation Systems Int’l LLC, IPR2018-00493, Paper 10 at 22-23 (PTAB Aug. 30,
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`2018) (“IPR2018-00493”); Huawei Device Co., Ltd. v. Fundamental Innovation
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`Systems Int’l LLC, IPR2018-00485, Paper 8 at 20 (PTAB, Sept. 4, 2018)
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`(“IPR2018-00485, Paper 8”) (“With respect to Petitioner’s alternative [charge-
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`only] embodiment, we are directed to no disclosure in Dougherty or Shiga of a
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`docking station that is designed to provide only power to a laptop. Nor does
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`Petitioner persuasively explain why one of ordinary skill in the art, seeking only to
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`fast-charge a laptop computer, would use such a docking station, as opposed to a
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`single power plug. Thus, we do not find persuasive Petitioner’s arguments with
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`respect to the [alleged charge-only] embodiment of Dougherty”). Thus, as the
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`earlier petitions, Petitioner’s proposal results from hindsight.
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`Consequently, institution should be denied because Petitioner has not
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`sufficiently explained why a POSITA would have modified Morita to depart from
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`the USB current limit, to eliminate USB enumeration, or to use SE1 that would
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`disrupt normal USB communication.
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`II. Background on the USB Communication Protocol
`The Universal Serial Bus (“USB”) architecture is a “cable bus that supports
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`data exchange between a host computer and a wide range of simultaneously
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`accessible peripherals.” Ex. 1008 (“USB 1.1”) at 15; Ex. 1009 (“USB 2.0”), at
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`15.2 A schematic illustration of the tiered USB bus topology is shown below.
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`USB 1.1 at 16; see also USB 2.0 at 16 (up to 7 tiers allowed in USB 2.0).
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`2 Citations to USB specifications are to the original page numbers rather than
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`stamped page numbers, to be consistent with the Petition.
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`The above “tiered star topology,” “connects USB devices with the USB
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`host.” USB 1.1 at 16; USB 2.0 at 16. A USB device can be either a hub or a
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`function. USB 1.1 at 16-17, § 4.1.1.2; USB 2.0 at 17, § 4.1.1.2. A hub “provide[s]
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`additional attachment points to the USB”; and a function—”such as an ISDN
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`connection, a digital joystick, or [a] speaker[]”—”provide[s] capabilities to the
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`system.” Id.
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`A. USB Hubs
`As shown in the USB topology above, “[a] hub is at the center of each star.”
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`USB 1.1 at 16; USB 2.0 at 16. “Each wire segment is a point-to-point connection
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`between the host and a hub or function, or a hub connected to another hub or
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`function.” Id. An architecture for a USB 1.1-compliant hub is shown below. USB
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`1.1 at 230. A hub includes a hub repeater and a hub controller section. Id. “The
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`Hub Repeater is responsible for managing connectivity on a per-packet basis,
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`while the Hub Controller provides status and control and permits host access to the
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`hub.” Id.
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`As shown above, each hub has one upstream port facing “towards the host,”
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`and one or more downstream ports each facing towards a device. USB 1.1 at 231;
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`USB 2.0 at 298-99, § 11.1.2.1. “Hubs are the essential USB component for
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`establishing connectivity between the host and other devices” and must have fault
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`detection and recovery mechanisms. USB 1.1 at 232; USB 2.0 at 300, § 11.1.2.3.
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`B. USB Signal and Power Connections
`“The USB transfers signal and power over a four-wire cable,” as shown
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`below. USB 1.1 at 17; USB 2.0 at 17, § 4.2.1. In the configuration below, VBUS
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`and GND are power wires and D+ and D- are signal wires. Id.
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`C.
`Power Supply to USB Devices and Hubs
`A USB device can be bus-powered or self-powered. A USB host or hub can
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`provide power to a USB device connected to it via a cable. USB 1.1 at 18; USB
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`2.0 at 18. “USB devices that rely totally on power from the cable are called bus-
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`powered devices. In contrast, those that have an alternative source of power are
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`called self-powered devices.” Id.
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`A hub can also be bus-powered or self-powered. An example of a self-
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`powered hub is Morita’s “hub-controllable charger” in which a power supply
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`connection unit 22 supplies voltage “to the mobile videophone device 100 via the
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`USB port 21” to “external peripheral[s]” from USB port 24. Ex. 1015 (“Morita”),
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`Abstract, Figs. 1-2, [0016], [0014]; Ex. 2009 (“Fernald”), ¶30. In contrast to bus-
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`powered hubs that can “supply only one unit load [i.e., 100mA] per port,” self-
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`powered hubs can “supply five unit loads [500 mA] to each port.” USB 1.1 at 135-
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`36, Figs. 7-32 & 7-33; USB 2.0 at 172-73, Figs. 7-42 & 7-43, § 7.2.1.2. A
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`schematic of a self-powered hub is shown below. USB 1.1 at 136, Fig. 7-33. As
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`shown in the schematics, a local power supply (i.e., a power source other than that
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`from the upstream VBUS) provides power to downstream ports as well as internal
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`(“non-removable”) functions. Id.; Fernald, ¶90. The hub controller can be
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`powered by the local power supply or power from the upstream VBUS (up to
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`100mA). USB 1.1 at 136, Fig. 7-33; Fernald, ¶24.
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`D. Enumeration to Establish Communication Between Host and
`Device
`USB enumeration is a handshaking protocol by which the host can identify,
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`address and configure each peripheral device. USB 1.1 at 179; USB 2.0 at 243-44,
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`§ 9.1.2 (describing steps of enumeration process). Before enumeration, the host
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`can perform only basic control communications with the device to get the
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`information necessary to configure the device. USB 1.1 at 180-81; USB 2.0 at
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`244-45; Fernald, ¶¶42-43. Once configured, the device is “enumerated” and
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`“ready for use.” USB 1.1 at 179; USB 2.0 at 244. “A USB device must be
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`configured before its function(s) may be used.” USB 1.1 at 180; USB 2.0 at 244,
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`§ 9.2.3.
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`E.
`Single Ended 1 (“SE1”) Line State
`“SE1 is a state in which both the D+ and D- lines are at a voltage above …
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`0.8 V.” USB 2.0 at 123. As Petitioner acknowledges, the USB specification warns
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`that “[l]ow-speed and full-speed USB drivers must never ‘intentionally’ generate
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`an SE1 on the bus.” Id. (cited on Pet. 23-24). Petitioner also argues that SE1
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`signaling puts a port into the Disabled state and disables USB communication. Pet.
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`24-25 (discussing how SE1 supposedly disables port). Petitioner further argues
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`that with the port disabled, the connected device “cannot [even] receive a reset
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`command and thus can’t receive or process commands ….” Pet. 24-25.
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`Nevertheless, Petitioner proposes sending an SE1 signal to Morita’s mobile
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`device when it is connected to a USB “hub-controllable charger” without a PC
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`host. Pet. 45-46; Morita, Abstract. Petitioner does not explain how it is possible to
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`completely disable USB communications in this situation and still allow the mobile
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`device to “operate as a device for host controlling a connected device” such as a
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`keyboard or monitor that is connected to it via the USB-hub charger when a PC is
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`disconnected. Morita, [0018], Fig. 4 (showing in the absence of a PC, “the monitor
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`and keyboard [] are connected as external peripherals of the mobile videophone
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`device 100 via the USB hub control unit 27 in the charger 110”); [0019] (“[T]he
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`mobile videophone device 100 on the host end can be continuously used for a
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`long time”); [0022] (“the mobile phone always accesses the external device while
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`receiving the supply of power from the charger, ….”).
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`The Board has repeatedly held at both the institution stage and at the final
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`written decision stage that there is no motivation in the art to put a USB device
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`Case IPR2021-00599
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`engaged in normal USB communication in the SE1 state because of the
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`unpredictable impact on the device’s USB communication. See e.g., IPR2018-
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`00493, Paper 10 at 21 (“Petitioner … fails to sufficiently explain how Dougherty’s
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`laptop would be able to utilize peripheral devices attached to the docking station in
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`the absence of USB enumeration.”); id. at 22 (“[T]he statement in the USB
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`Specification that an SE1 signal should never be intentionally generated ([USB
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`2.0], 123) suggests that the combination of Dougherty and Shiga proposed by
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`Petitioner is not a ‘trivial alternative’ and would not produce “operable and
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`predictable results.’”); IPR2018-00485, Paper 8 at 19 (“Petitioner does not
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`persuasively explain how the docking station and laptop computer of Dougherty
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`could communicate if the required USB handshaking protocols are replaced with
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`an SE1 signal. …we do not find persuasive Petitioner’s argument that the proposed
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`‘trivial’ changes to Dougherty’s system would have constituted the use of a known
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`technique to improve a similar device in the same way.”).
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`Given Petitioner’s acknowledgement that SE1 disables USB communication
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`and given the need for USB communication in order for Morita’s mobile device to
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`access the connected peripherals, Petitioner’s proposal that a POSITA would
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`implement SE1 in Morita amounts to arguing that the POSITA would have desired
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`to render Morita inoperable as intended.3 That is impermissible hindsight and
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`contrary to the fundamental tenets of the obviousness doctrine.
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`III. Summary of the ’586 Patent
`The ’586 patent stems from pioneering research performed by the power
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`supply and distribution group at Blackberry, as part of Blackberry’s effort to build
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`the world’s first mobile phone with a combined USB data and charging port. In
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`the early 2000s, Blackberry launched a project to design a mobile phone with a
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`combined power and data interface to reduce the number of external connections
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`and simplify printed circuit board designs for a smaller and thinner phone.
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`The inventors noted that “[a]lthough the USB interface can be used as a
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`power interface, the USB is typically not used for that purpose by mobile devices.”
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`’586 patent, at 1:56-58. This was in part due to the incompatibility between
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`common power sources such as a power socket and the USB specification’s
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`requirement that “a USB device participate in a host-initiated process called
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`enumeration in order to be compliant with the current USB specification in
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`drawing power from the USB interface.” Id., at 1:60-63. A mobile phone attached
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`to such a power socket via the phone’s USB port would be unaware, for example,
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`that the attached charger was not limited by the power limits imposed by the USB
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`3 See, e.g., Section VIII.A.
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`specification. Id., at 2:52-65.
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`In light of these challenges, the inventors designed a new “powering system
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`comprises a power distribution subsystem in the mobile device that is operable to
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`receive energy through the USB connector and to distribute the energy to at least
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`one component in the mobile device” as well as “a USB adapter … for providing a
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`power requirement to the power distribution subsystem, and an identification
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`subsystem … to identify the USB adapter as not being limited by the power limits
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`imposed by the USB specification.” Id., at 2:67-3:4, 3:5-13.
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`The mobile device of the invention is informed by the identification signal
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`from the adaptor that the connected power source “is not a USB limited source,”
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`and/or that the device “can now draw power without regard to the USB
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`specification and the USB specification imposed limits.” Id., at 8:9-17. In one
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`embodiment, the identification signal is a signal with voltages above 2V on both
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`D+ and D- lines. E.g., id., Figure 3. “If the voltages on both the D+ and D- lines
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`of the USB connector are greater than 2 Volts …, then the mobile device []
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`determines that the device connected to the USB connector 54 is not a typical USB
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`host or hub and that a USB adapter [] has been detected (step 230).” Id., 9:26-31.
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`The mobile device can then proceed to charge the battery without enumeration.
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`Id., 9:31-34.
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`IV. Summary of the Asserted Prior Art
`A. Morita
`Morita “provide[s] a hub-controllable charger capable of accessing a
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`plurality of external devices in a state wherein a mobile phone is coupled to the
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`charger, and capable of managing transmission and branching of signaling between
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`each.” Ex. 1015 (“Morita”) at 6, Abstract; see also [0001] (Morita “relates to a
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`charger capable of charging a mobile phone and coupling to an external device and
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`more specifically relates to a USB format charger provided with a HUB function
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`capable of connecting a plurality of external devices.”). The problems that Morita
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`purports to solve with its “hub-controllable charger” include:
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`(1) “increase[d]” “number of USB hubs” with increasing number of external
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`peripherals, id. at 7, [0005]-[0006];
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`(2) a single connectable peripheral at a given time for the mobile device
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`because the device is configured with a single USB port for space, id. [0007]; and
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`(3) limited use time of the mobile device when operating as a host due to
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`limited battery capacity and no power source for simultaneous charging, id. [0008].
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`Morita’s hub-controllable “charger 110” addresses the above problems by
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`providing connections between a host end (a first port 20 or, when port 20 is
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`disconnected, a second USB port 21) and a device end (USB ports 24 and also
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`USB port 21 when port 20 is disconnected), as illustrated in Figure 2:
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`Case IPR2021-00599
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`Morita, Fig. 2; see also id., [0016] (“FIG. 2 is one embodiment of the charger of
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`the present invention and a diagram illustrating coupling of a mobile phone and a
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`charger.”). As shown above, the charger’s USB port 21 connects to the USB port
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`of the mobile phone.
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`The back of the charger 110 includes a power supply cable 22, USB type-B
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`port 20 for connecting to a host PC, and USB type-A ports 24 for connecting to
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`external peripherals (such as monitors and keyboards) controlled by either the PC
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`or the mobile device depending on which serves as the host. See Fig. 2 above;
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`[0012], [0015], [0016].
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`Morita’s functional block diagram, Figure 1, shows that power supply 22 is
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`connected to a “charging control unit 23”, which supplies power to the USB port
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`21, the hub control unit 27 and the peripherals connected to the hub control unit 27.
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`Id., [0014] (“A power supply voltage supplied from a power supply source [22] is
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`supplied from the charging control unit 23 to the USB hub control unit 27 and the
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`second USB port 21.”).
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`“[T]he supplied power supply voltage is supplied to the mobile videophone
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`device 100 via the USB port 21 to charge an internal battery ….” Id., [0016].
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`Specifically, “[t]he power supply of the mobile videophone device 100 is supplied
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`from the USB controller 14 [on the device side] to the battery 15 by coupling to a
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`charger via a USB format capable of supplying data and power.” Id., [0013].
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`In Morita, “the mobile phone always accesses the external device while
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`receiving the supply of power from the charger, and thus the mobile phone can be
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`used without worrying about battery consumption due to long-term and continuous
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`use.” Id., [0022]. Like Theobald (Ex. 1017), Morita does not disclose or suggest
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`deviating from USB Specification’s current draw limit for its mobile device.
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`The USB hub control unit 27 in the charger has “functions for branching and
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`transmitting signals, attaching and removing external devices, determining low
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`speed devices and high speed devices, and supplying and managing power.”
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`Morita, [0012]. The hub-controllable charger 110 also includes a switch 25 on the
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`front of the charger. Id., Fig. 2. Switch 25 is “for switching each connection
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`destination of the third USB port [24],” that is, connecting the peripherals to a PC
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`as shown in Figure 3 or connecting them to the mobile phone as shown in Figure 4.
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`Id., [0012], [0017] & [0019] (“the connection destination can be switched from the
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`charger 110, and the operation setting of the mobile videophone device 100 can be
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`performed by only the connection switching switch 25”). Switch 26 also
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`participates in the switching of the host end from a PC to the mobile phone 100
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`(and vice versa). Id., [0012].
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`Morita has two configurations. In the first configuration, a PC is connected
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`to port 20 and serves as a host. In this case, if a mobile device is connected to port
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`21, it “is connected to the USB hub control unit 27 as a device” to the host. Id.,
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`[0015]. In the second configuration, no PC is connected to port 20, and the mobile
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`device “is used as the host personal computer.” Id. Petitioner’s unpatentability
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`theory relies on this second configuration where Petitioner contends, without any
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`competent evidence, that there is no USB communication or enumeration. Pet. 46-
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`48, 50-51. This theory flatly contradicts the express disclosure of Morita: in the
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`no-PC mode, the mobile device is “set to operate as a device for host controlling”
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`external peripherals such as keyboards and monitors, for example, by accepting
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`input from the keyboard. Morita, [0018], Fig. 4:
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`In FIG. 4, the mobile videophone device 100 is set to operate as a device
`for host controlling a connected device. Also, the monitor and the
`keyboard 140 are connected as external peripherals of the mobile
`videophone device 100 via the USB hub control unit 27 in the charger
`110. Thus, the operation input of the mobile videophone device 100
`can be inputted using the keyboard 140 connected as an external
`peripheral without using the keyboard of the mobile videophone device
`100 itself.
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`Morita’s second configuration—where the mobile phone serves as a host
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`“controlling a connected device”—is cumulative of Dougherty (Ex. 1017) that was
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`asserted in multiple prior proceedings, including IPR2018-00110, -00460, -00465,
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`-00487, -00495, -00485, -00493, -00214, -00472, -00508, -00605, -00606 and -
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`00607. In Dougherty, a USB docking station for a laptop, not only connects
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`external peripherals to the laptop that acts as a USB host, but also provides power
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`to the laptop. See Dougherty at Abstract, 1:61-67. As discussed in the Section
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`VI.A regarding §325(d), Petitioner’s arguments regarding Morita closely follow
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`those for the Dougherty ground in prior IPRs, which the Board has rejected. See,
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`e.g., IPR2018-00493, Paper 10 at 14-16 & IPR2018-00485, Paper 8 at 16-18 (the
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`Board summarizing prior petitioner’s argument on reasons to incorporate SE1 in
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`Dougherty).
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`B.
`SE1 References
`Petitioner asserts that a POSITA would use SE1 for purposes not specified
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`by the USB specification. Pet. 23, 50. Petitioner provides no example, however,
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`where SE1 would be purposefully used in a system where normal USB
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`communication needs to be maintained or used for signaling USB charging.
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`For example, Petitioner asserts that Kerai (Ex. 1010) “discloses that the logic
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`detectors detect if each line is high (i.e., a SE1 state) and configures its circuitry to
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`charge a battery in response to the detection of the SE1 signal.” Pet. 27, 51. But
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`Kerai is actually describing an embodiment where a capacitor connected to a
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`mobile device harvests excess power from a USB data line during the periods
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`when the voltage on the data line is held high. See Kerai, 5:45-51 (“[T]he data
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`lines of a serial connection are held high when the connection is inactive and will
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`vary between a high and low state whilst communication over the ports take place.
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`Thus, each logic detector 50 detects the state of a corresponding [data] line 25, 26
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`and, where the state is found to be high, permits current to flow into a
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`corresponding capacitor 51.”); Fernald, ¶¶60-61.
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`Petitioner also asserts that Shiga (Ex. 1011) disclosed the use of SE1
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`signaling because it can “be easily distinguished from USB standard signals.” Pet.
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`28, 51. But in Shiga, this “SE1” state is provided not to a USB device, or as part of
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`USB communication at all, but rather to a separate “wake-up means” circuit used
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`to toggle the power switch on a computer’s power supply. See, e.g., Shiga, 3:1-9,
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`6:8-12, 7:16-30 (the signal lines used to send SE1 are “not connected” to the signal
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`lines of the USB host when SE1 is sent); Fernald, ¶¶64-65.
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`Petitioner describes Zyskowski (Ex. 1012) as disclosing the use of SE1 by a
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`host “device (e.g., computer) … to signal its full power state to a different device.”
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`Pet. 28-29. Instead, Zyskowski merely discloses that a USB device may observe
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`voltage levels on the USB data paths to determine whether the host computer is
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`powered on (e.g., in a “full power state”) or in standby mode (“reduced power
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`state”). Zyskowski, [0019]. Specifically, Zyskowski explains that a USB device
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`may “detect that the host 104 is in a reduced power state by monitoring the state of
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`one or both of the [USB] data paths D1 and D2.” Id.; Fernald, ¶56. In other
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`words, because in normal operation a USB host will pull one of the D1 and D2
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`data lines “high” at various times, observing a high state on either line would
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`indicate that “the host is in a ‘full power’ or normal operation state.” Fernald, ¶57.
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`As Dr. Fernald explains, Zyskowski is not teaching that both of the USB data paths
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`will be “high” simultaneously (i.e., an SE1 state); nor would it, as such a state
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`would be invalid and would not indicate that the host is operating normally. Id.
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`Petitioner also asserts that Casebolt (Ex. 1013) taught that “SE1 condition
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`could be used as a special signaling mode.” Pet. 29. But Casebolt uses SE1 only
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`for PS/2 devices and expressly states that an SE1 signal “causes USB functions to
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`be terminated.” Casebolt, 7:40-46; Fernald, ¶67. Finally, Petitioner asserts that
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`Cypress Semiconductor (Ex. 1014) “integrated [SE1] into its enCoReUSB product
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`in 2000” without further explanation. Pet. 30. Yet, in Cypress’ system, the SE1
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`state only occurred when USB was “disabled.” Cypress at 24; Fernald, ¶66.
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`In each example that Petitioner identifies as purportedly teaching SE1
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`“signaling” by USB devices “without interfering with US