Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: August 27, 2021
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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.
`
`IPR2021-00599
`Patent 7,834,586 B2
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`
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`
`
`
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Date: August 27, 2021
`
` 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.
`
`IPR2021-00599
`Patent 7,834,586 B2
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, JON B. TORNQUIST, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00599
`Patent 7,834,586 B2
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`
`INTRODUCTION
`I.
`TCT Mobile (US), Inc.; TCT Mobile (US) Holdings, Inc.; Huizhou
`TCL Mobile Communication Co. Ltd.; and TCL Communication, Inc.
`(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1, 2, 8, and 9 (the “challenged claims”) of U.S.
`Patent No. 7,834,586 B2 (Ex. 1001, “the ’586 patent”). Patent Owner,
`Fundamental Innovation Systems International LLC, timely filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
` We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C.
`§ 314(a). See also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial
`on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes
`review may not be instituted unless the information presented in the Petition
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Taking into
`account the Petition, the arguments presented in the Preliminary Response,
`and all supporting evidence, we conclude that the information presented in
`the Petition establishes a reasonable likelihood that Petitioner would prevail
`in showing that at least one claim of the ’586 patent is unpatentable.
`Pursuant to 35 U.S.C. § 314, and for the reasons stated below, we hereby
`institute an inter partes review of the challenged claims of the ’586 patent on
`the ground stated in the Petition.
`Our factual findings and legal conclusions at this stage of the
`proceeding are based on the evidentiary record developed thus far. This
`decision to institute trial is not a final decision as to the unpatentability of
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`the claims for which inter partes review is instituted. Our final decision will
`be based on the full record developed during trial.
`
`A. Related Matters
`The parties state that the ’586 patent is asserted in Fundamental
`Innovation Systems International LLC v. Coolpad Group Limited, et al., No.
`2:20-cv-00117 (E.D. Tex.); Fundamental Innovation Systems International
`LLC v. Lenovo (United States) Inc., et al., No. 1:20-cv-00551 (D. Del.); and
`Fundamental Innovation Systems International LLC v. TCT Mobile (US)
`Inc., et al., No. 1:20-cv-00552 (D. Del.). Mandatory Notices, 11; Paper 5, 2.
`In addition, the parties state that the ’586 patent was the subject of IPR2018-
`00276, IPR2018-00495, and IPR2018-00487. Mandatory Notices 1; Paper
`5, 4.
`
`B. Real Parties-in-Interest
`Petitioner identifies TCT Mobile (US), Inc., TCT Mobile (US)
`Holdings, Inc., Huizhou TCL Mobile Communication Co. Ltd., and TCL
`Communication, Inc. as real parties-in-interest. Mandatory Notices, 1.
`Patent Owner identifies Fundamental Innovation Systems International LLC
`and Fundamental Innovation Systems International Holdings LLC as real
`parties-in-interest. Paper 5, 1.
`C. Technology Background
`An overview of USB2 cables and the standard USB specification is
`helpful in understanding the technology involved in the ’586 patent, which
`relates to charging a mobile device through a USB connector. See Ex. 1001,
`Fig. 3. Cables compliant with the USB standard have four conductors:
`
`
`1 Petitioner appended its Mandatory Notices to the Petition. Pet., iii.
`2 “USB” is an acronym for “Universal Serial Bus.” Ex. 1010, 1.
`
`3
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`VBUS, D+, D-, and GND. Ex. 1008, 17–18, 863. The VBUS and GND
`conductors of the USB cable are used to deliver power to devices and the D+
`and D- conductors carry communication signals between a USB host and a
`connected device. Id. at 17–18; Ex. 1001, 6:63–7:3. Figure 4–2 of the USB
`specification, reproduced below, depicts these four conductors within a USB
`cable:
`
`
`Ex. 1008, 17. Figure 4–2 illustrates the arrangement of conductors in a USB
`cable.
`The USB 2.0 specification designates “SE1” as a state in which D+
`and D− conductors are both high (i.e., at a voltage greater than 0.8 V). See
`Ex. 1009 at 123, 145. The USB 2.0 specification states that “[l]ow-speed
`and full-speed USB drivers must never ‘intentionally’ generate an SE1 on
`the bus.” Id. at 123; see also id. at 148 n.4 (“A high-speed driver must never
`‘intentionally’ generate a signal in which both D+ and D− are driven to a
`level above 200 mV. The current-steering design of a high-speed driver
`should naturally preclude this possibility.”).
`
`
`3 We refer to the original printed page numbers in this Exhibit.
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`4
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`D. The ’586 Patent
`The ’586 patent is titled “Multifunctional Charger System and
`Method.” Ex. 1001, code (54). The ’586 patent issued on November 16,
`2010, from an application filed on February 26, 2010. Id. at codes (45),
`(22). The patent claims priority through a chain of related applications to
`Provisional Application No. 60/273,021, filed on March 1, 2001, and to
`Provisional Application No. 60/330,486, filed on October 23, 2001. Id. at
`codes (63), (60); see also id. at 1:7–30.
`The ’586 patent “relates generally to power adapters. More
`particularly, the invention relates to power adapters for use with mobile
`devices.” Id. at 1:34–36. The ’586 patent explains that “[a]lthough the USB
`interface can be used as a power interface, the USB is typically not used for
`that purpose by mobile devices.” Id. at 1:56–58. According to the ’586
`patent, the USB specification requires “that a USB device participate in a
`host-initiated process called enumeration in order to be compliant with the
`current USB specification in drawing power from the USB interface.” Id. at
`1:60–62. The ’586 patent states that it would be preferable “to be able to
`utilize alternate power sources such as conventional AC outlets and DC car
`sockets that are not capable of participating in enumeration to supply power
`to the mobile device via a USB interface.” Id. at 1:65–2:3.
`Figure 2, reproduced below, shows a USB adapter coupled to an
`exemplary mobile device.
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`Figure 2 depicts a USB adapter 100 that includes a primary USB connector
`102, a power converter 104, a plug unit 106, and an identification subsystem
`108. Id. at 6:50–53. The ’586 patent discloses that “plug unit 106 can be a
`two prong or three prong plug of the type used in North America that can
`couple to a North American AC power socket 110N that provides 115
`VAC.” Id. at 7:6–9. Plug unit 106 can also accept one or more types of
`plug adapters 114N, 114B, 114D, and 114 that are configured to directly
`mate with one or more types of power sockets 110N, 110D, 110B, 110. Id.
`at 7:10–14, Fig. 2.
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`The ’586 patent explains that “[t]ypically when a mobile device 10
`receives power over the USB from a USB host, it is required to draw power
`in accordance with the USB specification,” which requires the enumeration
`process and limits the electrical current that can flow across the USB. Id. at
`8:3–8. However, the ’586 patent discloses that “[t]he identification
`subsystem 108 provides an identification signal to the mobile device 10 that
`the power source is not a USB limited source” and mobile device 10 “can
`now draw power without regard to the USB specification and the USB
`specification imposed limits.” Id. at 8:13–17.
`The ’586 patent describes a preferred embodiment in which the
`identification signal is “the application of voltage signals greater than 2 volts
`to both the D+ and D− lines of the USB connector.” Id. at 9:13–15. The
`’586 patent provides a further example of applying “a logic high signal, such
`as +5V reference, to both the D+ and D- lines.” Id. at 9:23–26. If mobile
`device 10 detects this identification signal, the mobile device 10 determines
`that the device connected to its USB connector 54 “is not a typical USB host
`or hub and that a USB adapter 100 has been detected.” Id. at 9:26–31. The
`’586 patent explains that “the mobile device 10 can forego the enumeration
`process and charge negotiation process and immediately draw energy from
`the USB power adapter 100 at a desired rate” and “can then charge the
`battery or otherwise use power provided via the Vbus and Gnd lines in the
`USB connector 54.” Id. at 9:31–34, 9:52–57. Otherwise, if mobile device
`10 detects that both D+ and D− lines are not greater than 2 volts, mobile
`device 10 determines that it is connected to a USB host or hub, and signals
`the connected host or hub to initiate the enumeration process, and it can
`power or charge battery 60 according to the power limits imposed by the
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`USB specification. Id. at 9:35–47. “The enumeration process is typically
`initiated after mobile device 10 applies approximately zero volts to the D-
`line and approximately 5 volts to the D+ line to inform the host of the
`mobile device’s 10 presence and communication speed.” Id. at 9:47–51.
`E. Illustrative Claim
`Claims 1 and 8 are independent. Claim 1 is reproduced below, with
`italics added:
`1. A mobile device configurable for use in a wireless
`telecommunications network, comprising:
`a Universal Serial Bus (“USB”) interface configured to allow
`reception of a USB cable;
`a charging subsystem, the charging subsystem operably
`connected to the USB interface V-bus power line;
`the charging subsystem operably connected to a battery, and
`configured to charge a battery if a battery is operably connected;
`the charging subsystem further configured to use power from the
`V-bus power line for the charging of a battery; and,
`where the mobile device is configured to detect an
`identification signal at a D+ and D- data line of the USB
`interface, the identification signal being different than USB
`enumeration.
`Ex. 1001, 11:49–64.
`
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`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 11, 2, 8, and 9 would have been
`unpatentable on the following ground (Pet. 2–3):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`Morita5 and the knowledge of a
`1, 2, 8, 9
`103(a)4
`skilled artisan
`
`
`II. ANALYSIS
`A. Overview
`A petition must show how the construed claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`Petitioner bears the burden of demonstrating a reasonable likelihood that it
`would prevail with respect to at least one challenged claim for a petition to
`be granted. 35 U.S.C. § 314(a).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`
`4The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became
`effective on March 16, 2013. Because the ’586 patent claims priority to a
`chain of U.S. Non-Provisional and Provisional Applications filed prior to
`March 16, 2013, we apply the pre-AIA version of 35 U.S.C. § 103.
`5 Japanese Unexamined Patent Application Publication No. 2000-165513 A,
`published June 16, 2000 (Ex. 1015, “Morita”).
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`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations).6 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`We analyze the asserted ground with these principles in mind.
`B. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” Id. (internal quotation marks and citation omitted).
`Petitioner contends:
`A person of ordinary skill in the art (“POSITA”) of the subject
`matter of the ’586 Patent would have had either a bachelor’s
`degree in electrical engineering, computer science, or a related
`field, plus 3-5 years of experience in design of systems with
`Universal Serial Bus (“USB”) or equivalent buses that follow the
`USB 2.0 and earlier specification, or a master’s degree in
`electrical engineering, computer science, or a related field, plus
`1-2 years of experience in design of systems with USB or
`equivalent buses that follow the USB 2.0 and earlier specification
`at the time of the ’586 Patent’s priority date.
`Pet. 13.
`
`
`6 No evidence of objective indicia has been presented by the parties.
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`Patent Owner states that “[f]or purposes of this preliminary response
`only, Patent Owner applies the skill level proposed by Petitioner.” Prelim.
`Resp. 20.
`For the purposes of this Decision, we apply Petitioner’s proffered
`level of skill in the art because it appears consistent with the problems
`addressed in the ’586 patent and the prior art.
`C. Claim Construction
`We apply the same claim construction standard used by Article III
`federal courts and the International Trade Commission, both of which follow
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its
`progeny. 37 C.F.R. § 42.100(b) (2019). Accordingly, we construe each
`challenged claim of the ’586 patent to generally be “the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
`Petitioner submits “that no terms need to be construed to resolve the
`issues presented by this Petition.” Pet. 33.
`Patent Owner submits that “Petitioner admits in the parallel district
`court case that a POSITA would interpret the recited ‘identification signal’
`as ‘signal that identifies a power source type.’” Prelim. Resp. 20 (citing Ex.
`2010, 40–41; Ex. 2011, 34; Ex. 2012; Ex. 2013, 5).
`To the extent necessary, we will apply the District Court construction
`of “identification signal” as it is undisputed and appears consistent with the
`intrinsic evidence. After reviewing the evidence and argument presented by
`the parties, we determine that it is not necessary to our decision to construe
`any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1015 (Fed. Cir. 2017) (noting that “we need only
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`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999))).
`The parties are not precluded from arguing proposed constructions of
`any claim terms in subsequent briefing during the proceedings. Claim
`construction, in general, is an issue to be addressed during the proceedings.
`Our final claim construction, if any, will be determined at upon entry of the
`final written decision.
`D. Alleged Obviousness of Claims 1, 2, 8, and 9 over Morita and/or the
`Knowledge of One of Ordinary Skill in the Art
`Petitioner contends claims 1, 2, 8, and 9 would have been obvious
`over Morita and/or the knowledge of one of ordinary skill in the art. Pet.
`34–61. Petitioner supports its contentions with the Declaration of R. Jacob
`Baker, Ph.D. (Ex. 1003). Patent Owner disputes Petitioner’s contentions.
`Prelim. Resp. 27–58. Patent Owner supports its arguments with the
`Declaration of Dr. Kenneth Fernald (Ex. 2009).
`We begin with a brief summary of Morita and then address the
`parties’ respective contentions.
`1. Morita (Ex. 1015)7
`Morita is titled “Charger.” Ex. 1015, code (54). Morita relates to “a
`hub-controllable charger capable of accessing a plurality of external devices
`in a state wherein a mobile phone is coupled to the charger, and capable of
`
`
`7 Patent Owner contends that the translation of Morita submitted by
`Petitioner lacks the affidavit required by 37 C.F.R. § 42.63(b). Prelim. Resp.
`27. We note the translation is provided with a document titled “Certificate
`of Accuracy.” Ex. 1015, 11. For the purposes of this Decision, we evaluate
`the Petition based on the translation provided. The issue raised by Patent
`Owner, however, will be resolved at trial based on a full evidentiary record.
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`managing transmission and branching of signals between each.” Id. at code
`(57). More specifically, Morita is directed “to a charger capable of charging
`a mobile phone and coupling to an external device and more specifically
`relates to a USB format charger provided with a HUB function capable of
`connecting a plurality of external devices.” Id. ¶ 1.
`Morita discloses that the USB format “is often used for the interfaces
`of current personal computers.” Id. ¶ 4. Further, providing the mobile
`phone with “a USB port enables easy use of personal computers . . . to
`read/write image data, audio data, phone directory data, and other internal
`program data stored in memory on the mobile videophone device.” Id. In
`addition, “when the mobile videophone device operates as a personal
`computer, it is possible to easily access hard disk data by simply connecting
`to an external peripheral . . . such as a hard disk.” Id. But, “it is not
`desirable to operate the mobile videophone device as the host end from the
`viewpoint of the battery.” Id. ¶ 8.
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`Morita’s Figure 1 is reproduced below, and depicts a charger.
`
`
`Figure 1 is a block diagram of an embodiment of Morita’s charger. Id. ¶ 12.
`Morita discloses mobile videophone device 100 and charger 110 for
`charging mobile videophone device 100. Id. Mobile videophone device 100
`includes USB port 13 “for transmitting and receiving data to and from an
`external device and supplying power,” USB controller 14 for controlling
`USB port 13, and battery 15. Id. Charger 110 includes first USB port 20
`“for coupling a host-controllable external device such as a personal
`computer,” second USB port 21 “for coupling the mobile videophone device
`100,” power supply connection unit 22, “such as an outlet,” charging control
`unit 23, and third USB port 24 “for coupling devices such as a mouse,
`keyboard, and monitor.” Id. Charger 110 further comprises connection
`switching port 26 “for performing connection switching of the first USB port
`and the second USB port,” and USB hub control unit 27 “having functions
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`for branching and transmitting signals, attaching and removing external
`devices, determining low speed devices and high speed devices, and
`supplying and managing power.” Id.
`Morita explains that “[t]he power supply of the mobile videophone
`device 100 is supplied from the USB controller 14 to the battery 15 by
`coupling to a charger via a USB format capable of supplying data and
`power.” Id. ¶ 13. For instance, Morita discloses that “[t]he power supply
`cable 22 is connected to an outlet or the like connected to a commercial
`power supply, and the supplied power supply voltage is supplied to the
`mobile videophone device 100 via the USB port 21 to charge an internal
`battery.” Id. ¶ 16. According to Morita, “charger 110 thus performs, as one
`device, a charging operation of the mobile videophone device 100 and an
`operation as a USB hub to which the first USB port 20 and the second USB
`port 24 are connected.” Id.
`Morita further explains that the “personal computer is connected to
`the first USB port 20 via a USB cable, the connection switching unit 26
`connects the connection destination of the first USB port 20 to the USB hub
`control unit 27” and “the mobile videophone device 100 connected to the
`second USB port 21 is connected to the USB hub control unit 27 as a
`device.” Id. ¶ 15. Conversely, “when the mobile videophone device 100 is
`used as the host personal computer,” the second USB port 21 is connected to
`the USB hub control unit 27 by the connection switching unit 26 “and the
`first USB port 20 is not connected to the USB hub control unit 27 and is in
`disconnected state.” Id. Morita also discloses that “external peripherals
`(devices) connected to the third USB port 24 are connected as peripherals of
`the mobile videophone device 100.” Id. Morita further discloses that “the
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`mobile phone always accesses the external device while receiving the supply
`of power from the charger, and thus the mobile phone can be used without
`worrying about battery consumption due to long-term and continuous use.”
`Id. ¶ 22.
`
`2. Claim 1
`a. Preamble: A mobile device, the mobile device configurable
`for use in a wireless telecommunications network,
`comprising:
`Petitioner contends that, to the extent the preamble is limiting,
`“Morita discloses a ‘mobile videophone device 100 . . . that includes a
`‘wireless unit for transmitting and receiving data’ (5) and ‘antenna’
`(6).” Pet. 34 (citing Ex. 1015 ¶ 12). Therefore, according to
`Petitioner, “Morita discloses a mobile device that is ‘configurable for
`use in a wireless telecommunications network.” Id. at 34–35 (citing
`Ex. 1003 ¶ 99). Patent Owner does not directly address Petitioner’s
`contentions. See Prelim. Resp. 27–58.
`
`Based on the present record, Petitioner sufficiently establishes Morita
`discloses the subject matter of the preamble.8
`b. a Universal Serial Bus (“USB”) interface configured to allow
`reception of a USB cable;
`Petitioner contends that “Morita discloses, and at a minimum
`renders obvious, this limitation.” Pet. 35. Petitioner contends that
`Morita’s “mobile videophone device 100 includes ‘USB port [13] for
`transmitting and receiving data to and from an external device and
`supplying power.” Id. (citing Ex. 1015 ¶ 12, Figs. 1, 2). Petitioner
`
`8 Because we find preliminarily that Petitioner has shown Morita discloses
`the preamble, we do not address, at this time, whether the preamble is
`limiting.
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`further contends that “it would be understood that [the] USB port is
`‘configured to allow reception of a USB cable.’” Id. at 36. Petitioner
`further contends that USB port 13 on mobile videophone 100 “couples
`to USB port 21” and that port 13 “refers to ‘the point where the USB
`device is attached.’” Id. at 37 (citing Ex. 1008, 8). According to
`Petitioner, “Morita’s USB port 13 is ‘configured to allow reception of
`a USB cable’ because a USB cable is attachable to it.” Id. (citing
`Ex. 1004 ¶ 104). Petitioner further contends that “USB port 21 would
`include a cable of 4 wires that connects it to switching unit 26 of the
`Morita charger, and thus USB port 21 is the end-point connector of a
`USB cable.” Id. (citing Ex. 1004 ¶¶ 105–106).
`Patent Owner does not directly address Petitioner’s contentions.
`See Prelim. Resp. 27–58.
`
`Based on the present record, Petitioner sufficiently establishes Morita
`discloses this limitation.
`c. a charging subsystem, the charging subsystem operably
`connected to the USB interface V-bus power line;
`Petitioner contends that “Morita discloses ‘a charging
`subsystem,’[] namely, USB controller 14” and “that ‘the power supply
`of the mobile videophone device 100 is supplied from the USB
`controller 14 to the battery 15 by coupling to a charger via a USB
`format capable of supplying data and power.’” Pet. 39 (citing
`Ex. 1003 ¶ 108; Ex. 1015 ¶¶ 12, 13). Petitioner further contends “that
`‘the charging subsystem [Morita’s USB controller 14] [is] operably
`connected to the USB interface V-bus power line.’” Id. at 40 (citing
`Ex. 1003 ¶ 109; Ex. 1008, 17, Fig. 4-2). According to Petitioner,
`power is received on “USB port 13’s VBUS connection from the
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`adapter USB port 21 VBUS line” and the power is used by USB
`controller 14 to charge the battery in Morita’s mobile videophone. Id.
`at 41 (citing Ex. 1003 ¶ 110; Ex. 1015 ¶ 13).
`Patent Owner does not directly address Petitioner’s contentions.
`See Prelim. Resp. 27–58.
`
`Based on the present record, Petitioner sufficiently establishes Morita
`discloses this limitation.
`d. The charging subsystem operably connectable to a battery, and
`configured to charge a battery if a battery is operably connected:
`Petitioner contends that “Morita discloses that ‘the power supply of
`the mobile videophone device 100 is supplied from the USB controller 14 to
`the battery 15 by coupling to a charger via a USB format capable of
`supplying data and power.’” Pet. 42 (citing Ex. 1003 ¶ 111; Ex. 1015 ¶¶ 12,
`13).
`
`Patent Owner does not directly address Petitioner’s contentions. See
`Prelim. Resp. 27–58.
`
`Based on the present record, Petitioner sufficiently establishes Morita
`discloses this limitation.
`e. the charging system further configured to use power from the V-
`bus power line for the charging of a battery; and
`Petitioner contends that “Morita discloses that ‘the power supply of
`the mobile videophone 100 is supplied from the USB controller 14 to the
`battery 15 by coupling to a charger via a USB format capable of supplying
`data and power.” Pet. 43–44 (citing Ex. 103 ¶ 114; Ex. 1015 ¶¶ 12, 13).
`Patent Owner does not directly address Petitioner’s contentions. See
`Prelim. Resp. 27–58.
`
`18
`
`
`
`IPR2021-00599
`Patent 7,834,586 B2
`
`Based on the present record, Petitioner sufficiently establishes Morita
`
`discloses this limitation.
`f. where the mobile device is configured to detect an identification
`signal at a D+ and a D- data line of the USB interface, the
`identification signal being different than USB enumeration.
` Petitioner contends that Morita renders this limitation obvious in
`view of the knowledge of a skilled artisan. Pet. 45–55. Petitioner contends
`that although “Morita does not expressly disclose this limitation, it does
`disclose that a USB host or hub (e.g., a personal computer) is optionally
`connectable to the charger . . . and that the charger charges a mobile
`videophone.” Id. (citing Ex. 1015 ¶¶ 14–15). Petitioner further contends
`that a skilled artisan “would have found it obvious that although Morita’s
`charger was capable of handling a ‘plurality of external devices,’ one
`possibility would have been that the charger was merely plugged into the
`power socket (e.g., wall outlet) to charge the mobile device without any
`other external device (e.g., USB host or hub).” Id. at 46. Petitioner further
`contends that “although Morita discloses that a USB host or hub (e.g.,
`personal computer) is optionally connectable to the adapter via USB port 20,
`it also discloses its device merely acting as a charger.” Id. at 47 (citing
`Ex. 1015 ¶¶ 14–15). According to Petitioner, “[w]ithout this optional
`connection: 1) normal USB communications through the USB adapter with a
`connected mobile device are not possible . . . and 2) powering the USB
`adapter from the absent, and unconnected, USB host or hub is not possible.”
`Id. (citing Ex. 1003 ¶ 118). Petitioner contends that “Morita embraces this
`scenario, because it discloses that the adapter can provide power to the
`phone via USB connector 21 using the power from a wall outlet” and “the
`sole source of power to the connected device through Morita’s adapter
`
`19
`
`
`
`IPR2021-00599
`Patent 7,834,586 B2
`
`would have to come from the power socket (outlet) via the plug unit.” Id.
`(citing Ex. 1003 ¶ 115; Ex. 1015 ¶ 16). Based on the foregoing, Petitioner
`contends that an ordinarily skilled artisan “would have found it obvious to
`provide an identification signal via USB port 21 to indicate that the adapter
`is not . . . a USB host or hub, and for Morita’s videophone to detect it so that
`it can draw current at a High-power level.” Id. at 48.
`Petitioner further contends that it would have been obvious to use the
`SE1 signal because “[t]he data lines were already used to signal connection
`states.” Pet. 49. In addition, “because normal USB communications . . . are
`not possible when a USB host or hub is not connected to the USB adapter,
`and there is a mobile device connected to the USB adapter” an ordinarily
`skilled artisan “would have logically looked to the only other possible state
`of the data lines, that is, both D+ and D- being high.” Id. at 49–50.
`According to Petitioner, an ordinarily skilled artisan would know that the
`mobile device “cannot communicate via normal USB communications” and
`“it is connected to a ‘High-power Hub Port.’” Id. at 50 (citing Ex. 1003 ¶
`120). Petitioner further contends that the SE1 signal has been used for
`identification purposes and directs us to, inter alia, U.S. Patent 6,625,790 B1
`(“Casebolt”) (Ex. 1013, 6:6–16, 7:40–54) in support of this contention. Id.
`at 52 (citing Ex. 1003 ¶ 125).
`Petitioner further contends that claim 1 “require[s] only detecting the
`SE1 signal –– not generating it.” Pet. 53. Petitioner provides two reasons
`why any Patent Owner argument–– that it would not be obvious to generate
`the SE1 signal with Morita’s adapter––would fail. Id. Petitioner first
`contends that “the claims do not recite any component that generates the
`SE1 signal.” Id. Petitioner then contends “that it was routine to generate the
`
`20
`
`
`
`IPR2021-00599
`Patent 7,834,586 B2
`
`SE1 as an identifying signal” and that an ordinarily skilled artisan “would
`have understood how to pull D+ and D- high to provide the SE1 identifying
`signal.” Id. (citing Ex. 1003 ¶¶ 127–129). Petitioner then proposes a way
`that an ordinarily skilled artisan would modify Morita’s charger to do so.
`See id. at 53–55.
`Turning to Patent Owner’s contentions, we make several initial
`observations. Patent Owner does not directly dispute Petitioner’s contention
`that claim 1 only requires detecting an identification signal and does not
`recite any component that generates an identification signal. See Prelim.
`Resp. 20, 27–58. Nor does Patent Owner contend that claim 1 requires the
`mobile device to be configured to take any action upon receiving the
`identification signal. In the absence of persuasive argument to the contrary,
`based on the current record, Petitioner’s reading of the claim is consistent
`with the language of claim 1 which recites that “the mobile device is
`configured to detect an identification signal at a D+ and a D- data line.”
`Patent Owner also does not dispute Petitioner’s contention that
`Morita’s mobile videophone is configured to detect an SE1 signal. Rather,
`Patent Owner contends that Petitioner’s assertion that SE1 could be used as
`the identification signal is based on improper hindsight. Prelim. Resp. 52.
`In support of that contention, Patent Owner identifies other signals that
`could be detected at the D+ and D+ data lines in
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