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 RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`11037802
`
`
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`

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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 ..................................... 6
`A. USB Hubs ........................................................................................... 7
`B.
`Power Supply to USB Devices and Hubs .......................................... 8
`C.
`Enumeration to Establish Communication Between Host and
`Device ............................................................................................... 10
`Single Ended 1 (“SE1”) Line State .................................................. 10
`D.
`III. The ‘586 Patent Relates To USB Charging In A Mobile Device .............. 12
`IV. Summary of the Asserted Prior Art ............................................................ 14
`A. Morita ............................................................................................... 14
`B.
`SE1 References ................................................................................. 19
`Skill Level of a POSITA ............................................................................ 21
`V.
`VI. Claim Construction ..................................................................................... 21
`VII. The Challenged Claims Are Not Obvious Over Morita ............................. 22
`A. A POSITA Would Not Have Modified Morita’s Videophone
`To Detect A Signal That Identifies A Power Source Type
`Unless They Anticipate That Such A Signal Would Be Sent
`To The Videophone .......................................................................... 22
`The Challenged Claims Are Directed To Battery Charging In
`a Mobile Device ............................................................................... 25
`Because SE1 Would Disrupt USB Communication And
`Enumeration, Petitioner’s Proposed Combination Would
`Render Morita Inoperable for Its Intended Purpose ......................... 28
`
`B.
`
`C.
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`1. Morita does not provide a charger for the sake of
`charging alone ........................................................................ 37
`2. Morita’s mobile device engages in USB
`communication when connected to the charger ..................... 41
`3. Morita’s mobile device needs to maintain
`communication with USB hub charger to learn of
`device attachment or detachment ........................................... 44
`There Is No Reason To Use SE1 To Indicate That Morita’s
`Charger Is A High-Powered Port ..................................................... 48
`1. Morita’s USB port 21 would act as a high-power hub
`port even when a PC is connected ......................................... 49
`The USB specification already provides means to
`identify self-powered hubs to the host ................................... 53
`Petitioner Used The ‘586 Patent As A Roadmap To Cull
`Elements From Prior Art .................................................................. 56
`1.
`Prior Art Did Not Teach Using SE1 As The Claimed
`Identification Signal ............................................................... 58
`Petitioner Has Not Addressed Complications
`Associated With Using SE1 In Morita’s USB System .......... 61
`Dr. Baker Incorrectly Assumed That SE1 Is The Only
`Option For Charge-Only Mode .............................................. 63
`VIII. Conclusion .................................................................................................. 65
`
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`D.
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`E.
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`2.
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`2.
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`3.
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`TABLE OF AUTHORITIES
`
`Case IPR2021-00599
`Patent No. 7,834,586
`
`
` Page(s)
`
`Cases
`Arendi S.A.R.L v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ...................................................................passim
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................ 57
`Catalina Marketing Intern. v. Coolsavings. com,
`289 F.3d 801 (Fed. Cir. 2002) ............................................................................ 22
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 48
`In re Gorman,
`983 F.2d 982 (Fed. Cir. 1991) ............................................................................ 57
`
`Huawei Device Co., Ltd. v. Fundamental Innovation Systems Int’l
`LLC,
`IPR2018-00485, Paper 8 (PTAB, Sept. 4, 2018) ................................................ 62
`LG Electronics, Inc. v. Fundamental Innovation Systems Int’l LLC,
`IPR2018-00493, Paper 10 (PTAB Aug. 30, 2018) ............................................. 61
`Monarch Knitting Machinery v. Sulzer Morat GmbH,
`139 F.3d 877 (Fed. Cir. 1998) ............................................................................ 36
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 26
`South-Tek Sys., LLC v. Engineered Corrosion Solutions, LLC,
`748 Fed. Appx. 1003 (Fed. Cir. 2018) ................................................................ 55
`TCT Mobile (US), Inc. v. Fundamental Innovation Systems Int’l LLC,
`IPR2021-00597, Paper 8 (PTAB, Aug. 25, 2021) .......................................... 2, 18
`TCT Mobile (US), Inc. v. Fundamental Innovation Systems Int’l LLC,
`IPR2021-00598, Paper 8 (PTAB, Aug. 30, 2021) ...................................... 2, 5, 18
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`W. L. Gore & Assocs., Inc. v. Garlock, Inc.,
` 721 F.2d 1540 (Fed. Cir. 1983) ......................................................................... 61
`Regulations
`37 C.F.R. §42.65(a); ................................................................................................. 53
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`Case IPR2021-00599
`Patent No. 7,834,586
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`EXHIBIT LIST
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`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)
`
`Ex. 2010
`
`
`Ex. 2011
`
`
`Ex. 2012
`
`
`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. 2014 USB 2.0 Specification
`Ex. 2015 USB 2.0 Specification Engineering Change Notice (ECN) #1:
`Mini-B connector dated Oct. 20, 2000
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`Case IPR2021-00599
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`Ex. 2016 History of Cell Phone Batteries and Advances in Technology,
`downloaded from https://medium.com/@diamondlitty62/history-
`of-cell-phone-batteries-and-advances-in-technology-
`9303f6cddd69 on December 13, 2021
`Ex. 2017 Battery University, “BU-107: Comparison Table of Secondary
`Batteries,” downloaded from
`https://batteryuniversity.com/article/bu-107-comparison-table-
`of-secondary-batteries, on December 13, 2021
`Ex. 2018 Battery Charging Specification v. 1.2 with errata, dated March
`15, 2012
`Ex. 2019 Deposition transcript of Mr. John Garney in Fundamental
`Innovation Systems International LLC v. Samsung Electronics
`Co., Ltd., Case No. 2:17-cv-145-JRG-RSP, E.D. Tex., dated
`November 20, 2017
`Jan Axelson, USB Complete (2d ed. 2001), additional excerpt
`Ex. 2020
`Ex. 2021 Hyde, J., “USB Design by Example: A Practical Guide to
`Building I/O Devices,” Wiley Computer Publishing (1999)
`“Universal Serial Bus on-the-Go for Portable Device” dated Feb.
`29, 2000
`Ex. 2023 Declaration of Kenneth Fernald, Ph.D. in Support of
`Fundamental Innovation Systems International LLC’s Patent
`Owner Response
`Ex. 2024 Deposition transcript of Dr. R. Jacob Baker, dated November 23,
`2021
`
`Ex. 2022
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`Introduction1
`Petitioner argues that the challenged claims are obvious in light of Morita
`
`
`
`I.
`
`and a POSITA’s knowledge. That theory is based on two interrelated but
`
`unjustified assumptions:
`
`(1) The analysis is based on a situation where “a USB host or hub is not
`
`connected to Morita’s charger” and “where [Morita’s] mobile videophone is [not]
`
`used as the ‘host personal computer.’” EX1003, ¶118 & n.2. That is, Petitioner’s
`
`expert, Dr. Baker assumes that Morita has a charge-only mode in which USB
`
`communication is not possible. Id.; see also Baker Tr. at 87:3-88:12, 88:13-89:7.
`
`(2) Dr. Baker alleges that it was “common sense that it would be desirable to
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`charge [a] phone faster and that a person of ordinary skill in the art knowing that
`
`nothing else is connected to the charger would only have one choice to identify to
`
`the phone that the charger can charge at high current.” Baker Tr. at 88:25-89:7;
`
`see also id., 84:5-88:12. That alleged common sense choice is SE1. Id., 87:11-24.
`
`Regarding the first assumption, the Board has found that “Petitioner’s
`
`contention that Morita would operate as a charger only, without USB
`
`
`1 All emphasis added and all objections omitted, unless otherwise noted.
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`communication with the peripherals, is unsupported by Morita” and that “Morita
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`does not provide a charger for the sake of charging alone.” E.g., TCT Mobile (US),
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`Inc. v. Fundamental Innovation Systems Int’l LLC, IPR2021-00598, Paper 8
`
`(PTAB, Aug. 30, 2021) at 11; TCT Mobile (US), Inc. v. Fundamental Innovation
`
`Systems Int’l LLC, IPR2021-00597, Paper 8 at 15-16 (PTAB, Aug. 25, 2021). Yet
`
`without the “charge-only” mode, Dr. Baker and Petitioner’s obviousness theory
`
`would collapse because a POSITA would not have been motivated to generate an
`
`SE1 signal when USB communications were possible:
`
`Q: Okay but if the USB communication enumeration is possible, would
`a person of ordinary skill in the art still be motivated to generate the
`SE1 signal to indicate that the charger is a higher power port charger?
`
`A: You are talking about two things that are exclusive. If you can
`communicate to perform enumeration on the connected phone, then it's
`not possible to provide an SE1 to the phone. You are providing an SE1
`to the phone, both data lines are high and you can't communicate. So it
`isn't possible to do enumeration.
`
`Baker Tr. (Ex2024) at 87:25-88:12.
`
`In its institution decision, the Board observed that the claims are directed to
`
`detecting an identification signal by a mobile device and not generating an
`
`identification signal. Institution Decision (“ID”) at 20-24. But as Dr. Baker
`
`acknowledges, a POSITA would not have modified Morita’s phone to detect SE1
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`if Morita’s charger had not first generated and sent such a signal:
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`Q: My question is, would a POSITA modify Morita's handset to detect
`the SE1 signal if Morita's charger is not modified to send the SE1
`signal to it?
`
`A: If I understand what you're asking, you’re asking if the obvious
`identification signal from Morita’s charger wasn’t there, then would a
`POSITA modify the phone to detect something that’s not there, and I
`don't think they would.
`
`Baker Tr. at 85:25-86:8; see also 90:16-91:16, 104:11-107:20. That is, there would
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`have been no reason for Morita’s phone to detect an SE1 signal (or other
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`identification signal) unless the signal was first sent to it from somewhere.
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`The only source of the SE1 signal identified in the Petition is Morita’s
`
`charger; and the only reason identified for generating and detecting this SE1 signal
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`was to identify the charger as a high-power port for fast charging in a charge-only
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`mode. Pet. 45-49; Baker Tr. at 86:9-17 (“Q: So your reasoning that a person of
`
`ordinary skill in the art would modify Morita's mobile device to detect the SE1
`
`signal is connected with their motivation to modify the charge[r] [with] the SE1
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`signal to identify the high-power port status in the first instance; is that right? A:
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`Motivation is to charge a mobile device from a high-power port.”), 96:7-9 (“I
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`focused on a situation where it would be desirable just to put the phone or the
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`mobile device on the charger and charge at the faster rate”), 102:18-21 (“Q: So for
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`claim 1[e] the specific reason you stated for using SE1 is for fast charging; is that
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`correct? A From what I can remember, yes.”), 170:4-171:8 (“Q: And so the
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`reason for the modification to consider [sic, configure] the mobile device to detect
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`the SE1 is for the purpose of fast charging; correct? A: Yes … Q: And the phone
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`is configured to identify the identification signal so that it knows that it's connected
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`to a high power port and so it can utilize the port to charge battery fast; is that
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`correct? A: Yes.”).2
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`Simply put, under the Petition’s stated reason for modification, motivation
`
`for detecting an identification signal by Morita’s mobile device is intertwined with
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`the motivation for generating the identification signal by Morita’s charger to
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`identify the charger as a high-power port for fast charging. Pet. 45-46 (“a POSITA
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`would have been motivated with a high expectation of success, to use the Morita’s
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`2 The Board appears of the opinion that the identification signal in the ‘586
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`patent does not relate to battery charging. Patent Owner respectfully disagrees.
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`But even if true, because Petitioner’s sole reason for modifying Morita is to
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`identify the charger as a high-power port for fast charging in a charge-only mode,
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`battery charging is highly relevant to Petitioner’s obviousness theory.
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`adapter to send an identification signal, namely, a SE1 signal … to identify that the
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`Morita charger has available the charging capability of a High-power port and for
`
`the mobile device to detect the identification signal so that it can utilize the High-
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`power source to charge battery”); EX1003, ¶¶115-121.
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`As Dr. Baker admits, if Morita’s charger does not generate an SE1 signal,
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`then a POSITA would not have modified Morita’s mobile phone to detect that
`
`identification signal. Baker Tr. at 85:25-86:8. Yet, as the Board has found,
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`“Morita does not support the premise that the adapter would need a signal to
`
`indicate the so-called ‘charge-only’ mode.” E.g., IPR2021-00598 Paper 8 at 11.
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`With that premise gone, Petitioner’s obviousness theory that a POSITA would
`
`have modified Morita’s videophone to detect SE1 also falls.
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`Petitioner’s obviousness theory also fails because the prior art does not teach
`
`using SE1 in an active USB system for identifying a power source type, as
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`construed by the Board. ID at 11. Casebolt’s SE1, for example, was for indicating
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`a PS/2 interface, and not for identifying a power source type. Baker Tr. at 66:6-10
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`(“Q: … does the identification signal in the ‘586 patent relate to identifying a PS/2
`
`adapter or the presence of a PS/2 adapter? A: Not that I recall.”).
`
`The salient question here is not whether Morita’s mobile phone could detect
`
`SE1 in the abstract, but whether prior art discloses or suggests using SE1 as a
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`signal to identify a power source type in a system like Morita. See Arendi S.A.R.L
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`Case IPR2021-00599
`Patent No. 7,834,586
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`v. Apple Inc., 832 F.3d 1355, 1365 (Fed. Cir. 2016) (improper to extrapolate from
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`the general knowledge of searching for data in a database to the specific patented
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`feature of searching based on phone numbers). The answer is an emphatic no; and
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`the challenged claims are not obvious.
`
`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
`
`accessible peripherals.” EX1008 (“USB 1.1”) at 15; EX2014 (“USB 2.0”), at 15.3
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`A schematic illustration of the tiered USB bus topology is shown below. USB 1.1
`
`at 16; see also USB 2.0 at 16 (up to 7 tiers allowed in USB 2.0).
`
`
`3 Citations to USB specifications and USB handbooks (EX2003, EX2006 &
`
`EX2021) are to the original page numbers rather than stamped page numbers.
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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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`
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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.
`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. EX1020 (“Morita”),
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`Abstract, Figs. 1-2, [0016], [0014]; EX2023 (“Fernald”), ¶¶30-31. In contrast to
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`bus-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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`C. 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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`D.
`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 acknowledges that
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`SE1 signaling puts a port into the Disabled state and disables USB communication.
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`Pet. 24-25 (discussing how SE1 supposedly disables port). Petitioner further states
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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. That is,
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`Petitioner agrees that SE1 disables USB communication. Id.
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`Morita, however, discloses that its mobile device is to operate as a host in
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`the second operating mode. E.g., Morita, [0018], Fig. 4, 0019] (“[T]he mobile
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`videophone device 100 on the host end can be continuously used for a long
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`time”); [0022] (“the mobile phone always accesses the external device while
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`receiving the supply of power from the charger”). Petitioner’s proposal that a
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`POSITA would implement SE1 in Morita therefore amounts to arguing that the
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`POSITA would have desired to render Morita inoperable as intended. See, e.g.,
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`Section VII.C. That is impermissible hindsight and contrary to the fundamental
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`tenets of the obviousness doctrine.
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`Moreover, when Morita’s mobile videophone operates as a peripheral device
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`as Petitioner proposes, SE1 would also make it impractical to charge the mobile
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`device. Petitioner agrees that SE1 would disable USB communication and USB
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`bus activity. Pet. 24-25. Under the USB specification, a USB device is required to
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`transition into a suspended state after not observing bus activity for 3 ms. USB 2.0
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`at 241; Fernald, ¶50; EX2021 at 55. In the suspended stated, a USB device would
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`draw no more than 2.5 mA, which is too low to sustain a device’s minimal power
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`need and have meaningful current left for charging. USB 2.0 at 178; Fernald, ¶50.
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`III. The ‘586 Patent Relates To USB Charging In A Mobile Device
`The ’586 patent stems from pioneering research performed by the power
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`supply and distribution group at Blackberry. In the early 2000s, Blackberry
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`launched a project to design a mobile phone with a combined power and data
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`interface to reduce the number of external connections and simplify printed circuit
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`board designs for a smaller and thinner phone. The ‘586 inventions were part of
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`that R&D effort.
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`At the time of the inventions, USB was typically not used for charging a
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`mobile device. ’586 patent, at 1:56-58. This was due largely to the incompatibility
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`between common power sources such as a power socket and the USB
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`specification’s requirement that “a USB device participate in a host-initiated
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`process called enumeration in order to be compliant with the current USB
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`specification in drawing power from the USB interface.” Id., at 1:60-63. Without
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`enumeration, the mobile device was unable to undergo charging and was unaware,
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`for example, that the attached charger was not limited by the power limits imposed
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`by the USB specification. Id., at 2:52-65.
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`In light of these challenges, the inventors designed “a [new] USB adapter …
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`for providing a power requirement to the power distribution subsystem, and an
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`identification subsystem … to identify the USB adapter as not being limited by the
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`power limits imposed by the USB specification” and a mobile device that could
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`detect such identification signal from the USB adapter for battery charging. Id., at
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`2:67-3:4, 3:5-13, 8:15-17, 8:62-67, 9:3-6, 9:26-34, 9:35-47.
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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. Examples
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`of identification signals include “a single voltage on one or more of the USB data
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`lines, different voltages on the two data lines, [and] a series of pulses or voltage
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`level changes.” Id., at 8:17-21.
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`In one embodiment, the identification signal comprises voltages above 2V
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`on both D+ and D- lines. E.g., id., Figure 3. When 2V voltages are detected, “the
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`mobile device [] determines that the device connected to the USB connector 54 is
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`not a typical USB host or hub and that a USB adapter [] has been detected (step
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`230).” Id., 9:26-31. The mobile device can then proceed to charge the battery
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`without enumeration. Id., 9:31-34. If 2V voltages are not detected, then the
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`mobile device would determine that it is connected to a typical USB host or hub
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`and undergoes charging after enumeration. Id., 9:35-51. The ‘586 patent’s
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`claimed identification signal therefore identifies a power source type, and the
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`mobile device draws power accordingly.
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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.” Morita at 6, Abstract; see also [0001] (Morita “relates to a charger capable
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`of charging a mobile phone and coupling to an external device and more
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`specifically relates to a USB format charger provided with a HUB function capable
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`of connecting a plurality of external devices.”). The problems that Morita purports
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`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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`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). See Fig. 2 above; [0012],
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`[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].
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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]. Switch 26 also participates in the switching of the
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`host end from a PC to the mobile phone 100 (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. In this no-PC mode, the mobile device
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`is “set to operate as a device for host controlling” external peripherals such as
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`keyboards and monitors, for example, by accepting input from the keyboard:
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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, [0018], Fig. 4.
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`Conceding that USB communication and hence enumeration would be
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`required when the mobile device serves as a host, Petitioner conjured up a charge-
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