UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCT MOBILE (US), INC.; TCT MOBILE (US) HOLDINGS, INC.;
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD.; AND TCL
`COMMUNICATION, INC.,
`Petitioners
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner
`
`U.S. Patent No. 7,834,586
`Issue Date: November 16, 2010
`Title: MULTIFUNCTIONAL CHARGER SYSTEM AND METHOD
`
`Case No. IPR2021-_____
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT 7,834,586
`CHALLENGING CLAIMS 1-2 AND 8-9 UNDER 35 U.S.C. §312 AND
`37 C.F.R. §42.104
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`

`

`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`Page
`INTRODUCTION .......................................................................................... 1
`SUMMARY OF CHALLENGE 37 C.F.R. §42.104(B) ................................ 2
`INSTITUTION SHOULD BE GRANTED; DISCRETIONARY
`DENIAL IS NOT APPROPRIATE ................................................................ 3
`A.
`The Apple/Fintiv Factors Support Institution ....................................... 3
`B.
`The General Plastics Factors Support Institution ................................. 7
`C.
`The Factors Under 35 U.S.C. §325(d) Support Institution .................. 8
`IV. OVERVIEW OF THE ’586 PATENT ......................................................... 10
`A. Disclosure of the ’586 Patent (Ex. 1001) ........................................... 10
`B.
`Prosecution History of the ’586 Patent (Ex. 1002) ............................ 12
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 13
`V.
`VI. SUMMARY OF THE PRIOR ART ............................................................. 14
`A.
`Background of USB Technology and USB Specification Prior
`Art ....................................................................................................... 14
`B. Use of SE1 State in Various Contexts ................................................ 25
`1.
`US Patent 6,531,845 (“Kerai”) (Ex. 1010) .............................. 26
`2.
`US Patent 6,625,738 (“Shiga”) (Ex. 1011) .............................. 27
`3.
`US Patent Application Publication US20030135766
`(“Zyskowski”) (Ex. 1012) ........................................................ 28
`US Patent 6,625,790 (“Casebolt”) (Ex. 1013) ......................... 29
`Cypress Semiconductor enCoReUSB Datasheet (Ex.
`1014) ........................................................................................ 30
`C. Overview of Morita (Ex. 1015) .......................................................... 31
`VII. CLAIM CONSTRUCTION ......................................................................... 33
`VIII. ANALYSIS ................................................................................................... 34
`A.
`CLAIMS 1-2 AND 8-9 ARE UNPATENTABLE AS
`OBVIOUS UNDER 35 U.S.C. §103 OVER MORITA AND
`THE KNOWLEDGE OF A POSITA ................................................ 34
`1.
`Claim 1 ..................................................................................... 34
`
`4.
`5.
`
`i
`
`

`

`a.
`
`b.
`
`c.
`
`d.
`
`1[Pre]: A mobile device, the mobile device
`configurable for use in a wireless
`telecommunications network, comprising: .................... 34
`1[a]: a Universal Serial Bus (“USB”) interface
`configured to allow reception of a USB cable; ............. 35
`1[b]: a charging subsystem, the charging
`subsystem operably connected to the USB
`interface V-bus power line; ........................................... 39
`1[c]: the charging subsystem operably connectable
`to a battery, and configured to charge a battery if a
`battery is operably connected; ....................................... 42
`1[d]: the charging system further configured to use
`power from the V-bus power line for the charging
`of a battery; and ............................................................. 43
`1[e] 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. .............. 45
`Claim 2 ..................................................................................... 56
`a.
`The mobile device of claim 1 wherein the
`identification signal comprises a voltage level that
`is applied to at least one data line in the USB
`connector. ....................................................................... 56
`Claim 8 ..................................................................................... 56
`a.
`8[Pre]: A method of charging a battery in a mobile
`device, the mobile device configurable for use in a
`wireless telecommunications network, comprising: ..... 56
`8[a] providing a Universal Serial Bus (“USB”)
`interface configured to allow reception of a USB
`cable, and, receiving power on a V-bus power line
`at the USB interface; ...................................................... 58
`8[b] providing an operable connection between the
`power received at the USB interface on the V-bus
`power line and a charging subsystem; ........................... 59
`
`e.
`
`f.
`
`b.
`
`c.
`
`2.
`
`3.
`
`ii
`
`

`

`e.
`
`f.
`
`d.
`
`8[c] having a battery in operable connection to the
`charging subsystem; ...................................................... 59
`8[d] providing power to the battery using the
`charger subsystem; and, ................................................. 60
`8[e] detecting an identification signal at a D+ and a
`D− data line of the USB interface, the
`identification signal being different than USB
`enumeration. .................................................................. 60
`Claim 9 ..................................................................................... 61
`a.
`The method claim 8 wherein the identification
`signal comprises a voltage level at least one data
`line in the USB connector. ............................................. 61
`IX. CONCLUSION ............................................................................................. 61
`X. MANDATORY NOTICES – 37 C.F.R. §42.8 ............................................... 1
`A.
`Real Party-in-Interest (37 C.F.R. §42.8(b)(1)) ..................................... 1
`B.
`Related Matters (37 C.F.R. §42.8(b)(2)) .............................................. 1
`C.
`Lead/Back-up Counsel (37 C.F.R. §42.8(b)(3)) .................................. 2
`D.
`Service Information (37 C.F.R. §42.8(b)(4)) ....................................... 3
`XI. GROUNDS FOR STANDING – 37 C.F.R. §42.104(A) ............................... 3
`XII. FEES – 37 C.F.R. §42.15(A) .......................................................................... 3
`
`4.
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allergen USA, Inc. v. Prollenium US Inc.,
`No. 1:20-cv-00104, Dkt. No. 34 (D. Del. July 16, 2020) ..................................... 4
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ............................................... 3
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00156, Paper 10, 11–12 (PTAB June 15, 2020) ................................... 5
`
`Fundamental Systems International LLC v. Samsung Electronics Co.,
`LTD,
`2:17-cv-00145, 22 (E.D. Tex. 2018) ................................................................... 33
`HP Inc. v. Neodron LTD,
`IPR2020-00459, Paper 17, 40 (PTAB Sept. 14, 2020) ........................................ 5
`LG Electronics, Inc. v. Bell Northern Research, LLC,
`IPR 2020-00319 .................................................................................................... 7
`
`Microsoft Corp. v. Uniloc
`2017, LLC, IPR 2019-01252 ................................................................................ 7
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 33
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 33
`Sand Revolution II, LLC v. Continental Intermodal Group5 Trucking
`LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ............................................... 4
`Thryv, Inc. v. Click-To-Call Techs., LP,
`140 S. Ct. 1367 (2020) .......................................................................................... 7
`Uniloc 2017 LLC v. Vudu, Inc.,
`No. 1:19-cv-00183, Dkt. No. 72 (D. Del. Mar. 26, 2020) .................................... 4
`
`iv
`
`

`

`Statutes
`35 U.S.C. §102(a) .................................................................................................... 20
`35 U.S.C. §102(b) .............................................................................................. 14, 31
`35 U.S.C. §103 ..................................................................................................... 1, 34
`35 U.S.C. § 103(a) ..................................................................................................... 3
`35 U.S.C. §§ 314(a), 325(d) ....................................................................................... 3
`35 U.S.C. §315(e)(2) .................................................................................................. 6
`35 U.S.C. §325(d) ...................................................................................................... 8
`Other Authorities
`37 C.F.R. §42.104(B) ................................................................................................. 2
`157 Cong. Rec. S1363 (Mar. 8, 2011) ....................................................................... 4
`83 Fed. Reg. 51340, 51340-44 (Oct. 11, 2018) ....................................................... 33
`
`v
`
`

`

`Petitioners’ Exhibit List
`
`Description
`U.S. Patent No. 7,834,586 to Fischer et al., “Multifunctional
`Charger System and Method,” filed Feb. 26, 2010 (the “’586
`Patent”)
`U.S. Patent File History of the ’586 Patent (the “’586 File
`History”)
`Declaration of Dr. Jacob Baker regarding U.S. Patent No.
`7,834,586 (“Baker”)
`Curriculum Vitae of Dr. Jacob Baker
`U.S. Patent No. 7,239,111 (“Fischer”)
`U.S. Provisional Application No. 60/273,021 (the “’021
`provisional”)
`U.S. Provisional Application No. 60/330,486 (the “’486
`provisional”)
`Universal Serial Bus Specification, Revision 1.1, September 23,
`1998 (“USB 1.1”)
`Universal Serial Bus Specification, Revision 2.0, April 27, 2000
`(“USB 2.0”)
`U.S. Patent No. 6,531,845 (“Kerai”)
`U.S. Patent No. 6,625,738 (“Shiga”)
`U.S. Patent Application Publication No. 2003/0135766
`(“Zyskowski”)
`U.S. Patent No. 6,625,790 (“Casebolt”)
`Cypress CY7C63722/23 CY7C63742/43 enCoRe™ USB
`Combination Low-Speed USB & PS/2 Peripheral Controller, by
`Cypress Semiconductor Corporation, published May 25, 2000
`(“Cypress enCoRe” or “Cypress Datasheet”)
`Japanese Patent Application No. 2000-165513A (“Morita”)
`Amended Complaint, Fundamental Innovation Systems Int’l LLC
`v. TCT Mobile (US) Inc. et al., No. 1-20-cv-00552-CFC (D. Del.
`Sep. 11, 2020) (“Complaint”)
`U.S. Patent No. 6,668,296 (“Dougherty”)
`U.S. Patent No. 5,923,146 (“Martensson”)
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`
`1013
`1014
`
`1015
`1016
`
`1017
`1018
`
`vi
`
`

`

`I.
`
`INTRODUCTION
`
`TCT Mobile (US), Inc., TCT Mobile (US) Holdings, Inc., Huizhou TCL
`
`Mobile Communication Co. Ltd., and TCL Communication, Inc. (“Petitioners”) file
`
`this Petition for inter partes review of claims 1-2 and 8-9 (the “Challenged Claims”)
`
`of U.S. Patent No. 7,834,586 (the “’586 Patent”) on the grounds that they are
`
`unpatentable under 35 U.S.C. §103.
`
`The Challenged Claims relate to a mobile device (and method for using the
`
`same) that uses industry standard Universal Serial Bus (“USB”) ports and connectors
`
`to receive power and charge a battery. Receiving power through USB ports and
`
`connectors was well understood and routine by the earliest possible priority date of
`
`the ’586 Patent, but the Challenged Claims purport to “invent” a mobile device that
`
`detects “an identification signal” that is “different than USB enumeration” (USB
`
`enumeration is a handshaking protocol). For example, the mobile device detects an
`
`“identification signal” that comprises a logic high value on the two data lines of an
`
`USB connection (a logic high value on the two data lines was known as a SE1
`
`signal). The Challenged Claims essentially do nothing more than allow a mobile
`
`device to conventionally receive power through a USB interface without
`
`appropriately following the USB Specification (i.e., the enumeration protocol).
`
`Notably, the Applicant did not tell the Examiner that (nor disclose the art in
`
`this Petition that establishes that) this “identification signal” was a well-known
`
`1
`
`

`

`signal—known as a SE1 signal. Indeed, because the SE1 signal is “not a standard
`
`USB state,” it was also known to use the SE1 signal in various contexts, including
`
`to identify a wake-up condition, identify a full power state, and identify the presence
`
`of a PS/2 adapter. What’s more, the Examiner was not made aware that this SE1
`
`signal was known to “be easily distinguished from USB standard data signals,”
`
`making it an ideal identification signal because the ease in which a device, such as a
`
`mobile device, can detect it. Again, the Examiner was not made aware of this prior
`
`art. This Petition establishes that a mobile device that detects an identification
`
`signal, such as a SE1 signal, was painfully obvious.
`
`Because there is a reasonable likelihood that Petitioners will prevail with
`
`respect to these claims, Petitioners respectfully request that the Board institute inter
`
`partes review.
`
`II.
`
`SUMMARY OF CHALLENGE 37 C.F.R. §42.104(B)
`
`Petitioners requests that the Board review and cancel claims 1-2 and 8-9 of
`
`the ’586 Patent based on the following ground.
`
`2
`
`

`

`Ground Claims
`1
`1-2 and 8-9
`
`References
`Basis
`pre-AIA 35 U.S.C. § 103(a) Morita and the
`knowledge of a
`POSITA
`INSTITUTION SHOULD BE GRANTED; DISCRETIONARY
`DENIAL IS NOT APPROPRIATE
`As the below explains, the Board should not exercise its discretion to deny
`
`III.
`
`institution under 35 U.S.C. §§ 314(a), 325(d). If the Board considers exercising its
`
`discretion to deny institution, however, Petitioner respectfully requests leave to file
`
`a reply to address any discretionary denial arguments made by Patent Owner in its
`
`preliminary response.
`
`A.
`
`The Apple/Fintiv Factors Support Institution
`
`The Apple/Fintiv factors support institution despite existence of a parallel
`
`district court litigation.
`
`There is a parallel district court proceeding involving the ’586 Patent (Ex.
`
`1005) before Judge Connolly in the District of Delaware. Amended Complaint (Ex.
`
`1016). The complaint was filed in April 23, 2020. However, the Apple/Fintiv factors
`
`support institution despite the existence of the Delaware litigation. Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).
`
`3
`
`

`

`First, potential for a district court stay is neutral or weighs in favor of
`
`institution. Neither party has requested a stay,1 so at worst this factor is neutral
`
`because the Board “will not attempt to predict” how the district court will proceed.
`
`Sand Revolution II, LLC v. Continental Intermodal Group5 Trucking LLC, IPR2019-
`
`01393, Paper 24 at 7 (PTAB June 16, 2020) (informative). Congress, however,
`
`intended for district courts to be liberal in granting stays pending PTAB proceedings,
`
`especially in cases where petitioners moved quickly after service of a complaint. 157
`
`Cong. Rec. S1363 (Mar. 8, 2011) (Sen. Schumer) (Congress placed “a very heavy
`
`thumb on the scale in favor of a stay being granted”). Given that Petitioners have
`
`moved expeditiously (see factor 2 discussion below), this factor favors institution.
`
`Furthermore, Judge Connolly has consistently granted stays in similar patent
`
`litigation cases, especially those where the petitions are instituted. See, e.g., Allergen
`
`USA, Inc. v. Prollenium US Inc., No. 1:20-cv-00104, Dkt. No. 34 (D. Del. July 16,
`
`2020); Uniloc 2017 LLC v. Vudu, Inc., No. 1:19-cv-00183, Dkt. No. 72 (D. Del.
`
`Mar. 26, 2020).
`
`Second, the proximity of the trial date to the final written decision weighs in
`
`favor of institution. In the unlikely case that Judge Connolly does not grant a stay,
`
`the trial date is scheduled for October 17, 2022. This is after the PTAB’s expected
`
`final written decision based on this Petition’s filing in February 2021, which would
`
`1 Petitioner does intend to move for a stay of the Delaware case.
`
`4
`
`

`

`tentatively calendar an institution date in August, 2021 and final written decision
`
`date of approximately August, 2022 (depending on the accorded filing date).
`
`Third, investment in the parallel proceeding, weighs in favor of institution.
`
`Discovery will still be in the early stages, with the deadline not until December 17,
`
`2021. It is unlikely that any fact depositions will have taken place before the
`
`institution decision. Further, it is unlikely that the district court will have issued a
`
`Markman ruling by the time of the institution decision, and little to no Court
`
`resources will have been devoted to analyzing prior art invalidity issues. Again, the
`
`parallel district court litigation is likely to be stayed once the present Petition is
`
`instituted.
`
`Furthermore, as part of a holistic analysis, the Board considers the speed with
`
`which the petitioner acted. Apple Inc. v. Seven Networks, LLC, IPR2020-00156,
`
`Paper 10, 11–12 (PTAB June 15, 2020). In cases where the petitioner acted
`
`diligently and without meaningful delay, as here, any investment of the parties in the
`
`parallel district court litigation is mitigated. HP Inc. v. Neodron LTD, IPR2020-
`
`00459, Paper 17, 40 (PTAB Sept. 14, 2020). Here, Petitioners filed this Petition
`
`within about five months of the Answer date, and roughly three months after Patent
`
`Owner served preliminary infringement contentions. Such diligence favors
`
`institution.
`
`5
`
`

`

`Fourth, overlap of issues, weighs in favor of institution. The Petition
`
`challenges claims that are not asserted in the district court action. And while the
`
`petition also challenges the same claims as the parallel district court proceeding,
`
`there is a high likelihood that Judge Connolly grants a stay upon institution. In the
`
`unlikely instance where a stay is not granted, a final written decision will still issue
`
`before the beginning of trial. The final written decision, once issued, will trigger
`
`estoppel for in the district court litigation for grounds that were raised or reasonably
`
`could have been raised. See 35 U.S.C. §315(e)(2).
`
`Fifth, whether the parties are the same, weighs in favor of institution. The
`
`parties with respect to this Petition are the same as those engaged in the parallel
`
`district court case.
`
`Finally, other circumstances strongly favor institution. Petitioners advance a
`
`targeted Petition with one ground centered on a prior art reference that has never
`
`been submitted to the Board previously. The strength of the present Petition strongly
`
`weighs in favor of institution. The ’586 Patent has been asserted against several
`
`large electronics companies such as Coolpad, Lenovo, and Petitioners. Patent
`
`Owners assert that USB adapters, which are ubiquitous, and the mobile devices they
`
`charge infringe the ’586 Patent and related patents. Given the substantial impact
`
`that the ’586 Patent and related patents could have on the mobile device industry, it
`
`is in the public interest to address invalidity, especially under new prior art never
`
`6
`
`

`

`before submitted to the Board. And as the Supreme Court recently explained, there
`
`is a significant public interest against “leaving bad patents enforceable.” Thryv, Inc.
`
`v. Click-To-Call Techs., LP, 140 S. Ct. 1367, 1374 (2020).
`
`B.
`
`The General Plastics Factors Support Institution
`
`The General Plastics factors support institution despite earlier IPRs being
`
`filed by other, unrelated entities. Section X.B (Related Matters). First, the current
`
`Petitioner (and the real parties-in-interest) are different from the prior petitioners;
`
`nor is there any relation between the current and prior petitioners. Id. Second,
`
`because when the earlier petitions were filed the current Petitioner had not been sued
`
`or provided notice of alleged infringement, the current Petitioner did not know of
`
`the prior art in this Petition when the earlier petitions were filed (nor did it have any
`
`reason to search for the prior art). Id. Third, while the preliminary responses
`
`decisions from the earlier IPRs did issue before the filing of the current Petition, this
`
`timing is the result of Patent Owner not suing the current Petitioner until after said
`
`issuance and is thus not the result of current Petitioner’s delay. Id.; Microsoft Corp.
`
`v. Uniloc 2017, LLC, IPR 2019-01252, Paper 7, 8-9 (PTAB Dec. 20, 2019). Fourth,
`
`Petitioner was diligent in filing the current petition, promptly moving to file this
`
`Petition after receiving Patent Owner’s selection of claims. Section X.B; LG
`
`Electronics, Inc. v. Bell Northern Research, LLC, IPR 2020-00319, Paper 15, 13
`
`(PTAB June 23, 2020).
`
`7
`
`

`

`C.
`
`The Factors Under 35 U.S.C. §325(d) Support Institution
`
`The factors under 35 U.S.C. §325(d) also support institution. The primary
`
`reference, Morita, was not before the Examiner during prosecution and was not
`
`asserted in any of the previous IPRs involving the ’586 Patent. And the prior art
`
`establishing that using a logic high value on the USB data lines was a known
`
`identification signal, see Sections VI.A-B, was also not before the Examiner.
`
`The previous IPRs do not present the same or substantially the same
`
`arguments as this Petition.
`
`In IPR2018-00485, petitioner relied on Theobald as a primary reference,
`
`arguing that it would be obvious to change Theobald’s 8-pin J3 connection to an
`
`USB connection. IPR2018-00485, Paper 8 (ID), 9, 11-14. Because Morita already
`
`employs an USB connection, these arguments are irrelevant to this Petition. See
`
`Section VI.C. In that proceeding, petitioner also relied on Dougherty as a primary
`
`reference. Its arguments were found unpersuasive because petitioner did not explain
`
`how using SE1 was compatible with Dougherty’s operation, i.e., Dougherty
`
`allegedly requires the data lines to communicate to various devices. Id., 18-19.
`
`Because Morita employs a charger (known as an adapter) and one of its express
`
`purposes is to merely charge a mobile phone by placing the phone on the convenient
`
`docking station, it discloses a scenario in which communication is irrelevant over
`
`8
`
`

`

`the USB lines, and thus the Dougherty arguments are irrelevant to this Petition. See
`
`Sections VI.C, VIII.A.1.f.
`
`In IPR2018-00493, petitioner relied on Dougherty as its primary reference.
`
`PR2018-00493, Paper 10 (ID), 8-9. That petitioner’s arguments were found
`
`unpersuasive because it did not articulate persuasive reasons to replace Dougherty’s
`
`USB enumeration with a SE1 signal and abandon Dougherty’s USB communication
`
`with the devices. Id., 19-21. These shortcomings are similar to the above and are
`
`irrelevant to this Petition. Because Morita employs a charger (known as an adapter)
`
`and one of its express purposes is to merely charge a mobile phone, it discloses a
`
`scenario in which standard USB communication is irrelevant (and not possible) over
`
`the USB data lines, and thus these Dougherty arguments are irrelevant to this
`
`Petition. See Sections VI.C, VIII.A.1.f. Further, this Petition explains that the SE1
`
`signal identifies, and enables charging from, a High-power port. See Section
`
`VIII.A.1.f.
`
`In IPR2018-00274, petitioner relied on Theobald as its primary reference.
`
`PR2018-00493, Paper 10 (ID), 8-9. The petitioner’s arguments were found
`
`unpersuasive for similar reasons as in IPR2018-00485 (see above). Because Morita
`
`already employs an USB connection, these arguments are irrelevant to this Petition.
`
`See Section VI.C.
`
`9
`
`

`

`IV. OVERVIEW OF THE ’586 PATENT
`
`A.
`
`Disclosure of the ’586 Patent (Ex. 1001)
`
`The ’586 Patent has 13 claims that focus on the mobile device in the context
`
`of an “[a]n adapter for providing a source of power to a mobile device through an
`
`industry standard port.” ’586 Patent, 2:7-11. An “adapter” simply refers to a device
`
`that receives a power source (e.g., from a wall socket) and delivers the power to
`
`another device (e.g., a mobile device). E.g., Abstract, 1:34-35.
`
`At its heart, the ’586 Patent relates to a standard USB adapter and mobile
`
`device that simply ignores certain initiation protocols (i.e., enumeration) or limits
`
`that are required and defined in the USB Specification. E.g., id., 1:48-63, 8:1-6,
`
`8:60-9:4. To ignore these USB protocols or limits, the adapter sends an
`
`identification signal to inform the mobile device that the adapter is not a typical USB
`
`host or hub (which further indicates that it is not acting in compliance with the USB
`
`Specification). Id., 8:60-9:4, 9:15-32. The ’586 Patent discloses several variations
`
`of the identification signal, such as “a logic high signal” on the USB data lines
`
`(known as a SE1 condition, see Section VI.A). Id., 8:21-23; 9:21-25. The adapter
`
`is made of conventional components like a plug unit that attaches to a power socket,
`
`a power converter (e.g., that down-converts a standard AC wall voltage), and
`
`standard USB components. See id., 7:3-56.
`
`10
`
`

`

`The ’586 Patent discloses that a mobile device detects the identification signal
`
`(e.g., “detects the presence of a voltage on the Vbus line of the USB connector”),
`
`determines that the adapter is not a typical USB host or hub (e.g., “determines that
`
`the device connected to the USB connector 54 is not a typical USB host or hub and
`
`that a USB adapter”), and proceeds to immediately charge without undergoing the
`
`enumeration process. Id., 9:18-34. The ’586 Patent discloses that the mobile device
`
`includes a “charging subsystem” and “power distribution subsystem” that distributes
`
`power, e.g., from the adapter connection, to the battery to charge the battery. Id.,
`
`6:17-33.
`
`The Challenged Claims are directed to the mobile device that detects the
`
`identification signal.
`
`Figure 2, reproduced below, is a schematic diagram of the disclosed mobile
`
`device (10) coupled to an exemplary adapter (100). Id., 3:23-24.
`
`11
`
`

`

`B.
`
`Prosecution History of the ’586 Patent (Ex. 1002)
`
`There was not substantive prosecution on the merits in the file history of the
`
`’586 patent. There was only a terminal disclaimer rejection, a filed terminal
`
`disclaimer, and allowance with no statement as to the reason or allowance. Ex. 1002,
`
`119, 124, 135, 138-139, 177, 183, 184.
`
`12
`
`

`

`The ’586 Patent claims priority through a series of continuations to two pro-
`
`visional applications: (1) the ’021 provisional (Ex. 1006), filed March 1, 2001; and
`
`(2) the ’486 provisional (Ex. 1007), filed October 23, 2001. Thus, the earliest
`
`potential priority date is March 1, 2001. The prior art in this Petition is prior art even
`
`assuming the priority date of the ’586 Patent is March 1, 2001.2
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) of the subject matter of the
`
`’586 Patent would have 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 specifications, 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 specifications at the
`
`time of the ’586 patent’s priority date. Along with this petition, Petitioner submits
`
`the declaration of Dr. Jacob Baker, who has been a POSITA since at least the ’586
`
`Patent’s claimed priority date. Baker (Ex. 1003) (“Baker”), ¶ 68.
`
`2 The Patent Owner in the district court case has asserted that the claims are entitled
`
`to the October 23, 2001 priority date. Regardless, the prior art cited herein is prior
`
`art to either date.
`
`13
`
`

`

`VI.
`
`SUMMARY OF THE PRIOR ART
`
`All elements of the challenged claims were well-known in the prior art before
`
`the priority date. As this Petition explains, it would have been obvious, and a
`
`POSITA would have been motivated with a high expectation of success, to combine
`
`these well-known elements to arrive at the Challenged Claims. The below first
`
`provides background on the USB specification and then details that using the signal,
`
`known as SE1 in the USB specification, to provide various indications—and to
`
`detect the SE1 signal—was well known. The below then summarizes the Morita
`
`reference that discloses a mobile phone in which it would be obvious, and a POSITA
`
`would have been motivated with a high expectation of success, to detect the SE1
`
`signal sent by the Morita USB adapter, with the SE1 signal identifying that the
`
`Morita adapter is not a typical USB host or hub (instead, it is an adapter that a has a
`
`high current source available for charging) so that the mobile device may draw a
`
`high current source to charge its battery.
`
`A.
`
`Background of USB Technology and USB Specification Prior Art
`
`The Universal Serial Bus Specification, Revision 1.1 was published by the
`
`USB Implementers Forum, Inc. on September 23, 1998 and therefore is prior art to
`
`the ’586 Patent under at least 35 U.S.C. §102(b). Ex. 1008, (“USB 1.1”), Cover Page,
`
`2 (copyright and revision history); Baker ¶ 69.
`
`14
`
`

`

`Figure 4-1, below, shows the bus topology for a USB system. “There is only
`
`one host in any USB system. The USB interface to the host computer system is
`
`referred to as the Host Controller. The Host Controller may be implemented in a
`
`combination of hardware, firmware, or software. A root hub is integrated within the
`
`host system to provide one or more attachment points.” USB 1.1, 16. In other words,
`
`a host, with a root hub, is required in a functioning USB system (i.e., one in which
`
`communication occurs). Baker, ¶ 70. Connecting, for example as seen below, Hub
`
`1 to a node (a node is a connected device, also called a “function”) or Hub 2 without
`
`connecting Hub 1 to the Host via the Root Hub will not result in a function, and
`
`communicating, USB system. Id.
`
`USB 1.1, 16 (annotated).
`
`15
`
`

`

`USB 1.1 instructs that a USB device (i.e., node or function) is plugged into a
`
`port on a hub using a cable. “A function is a USB device that is able to transmit or
`
`receive data or control information over the bus. A function is typically implemented
`
`as a separate peripheral device with a cable that plugs into a port on a hub.” USB
`
`1.1, 23. The cable is connected between a USB connector on a USB device and a
`
`USB connector on a host or hub.
`
`USB 1.1, 23 (annotated).
`
`USB 1.1 teaches a POSITA how to implement a USB plug and that a USB
`
`connector includes four contacts: VBUS, D+, D-, and GND:
`
`16
`
`

`

`Top View
`
`A‘—
`
`Dptional Top
`"Locator Detail"
`
`CC
`
`
`anator
`
`Height
`Approximately
`0.6mm
`{0.03"}
`Manufacturer’s
`
`I‘
`’ T
`r“
`'r/P—F\
`
`"
`
`“‘
`
`1
`
`
`
`_
`
`
`K.
`
`|‘_
`
`__|
`
`Engraved USB
`Icon
`
`a!
`
`Ovennolding —~-
`(1.6mm 10.024":
`
`Max
`USB Icon
`Engfil'fiflg Recess
`
`Section A - A
`{Plug Cmaa-Secfian}
`
`Engraved Logo
`
`
`
`i
`
`[cantor Width
`Approximately
`0.5mm
`{11020-1
`{1.5mm [ll.flZIl-"} Matt
`Illanufacturer‘s
`Logo
`Engraving Recess
`
`
`
`Ir
`
`."l
`
`I
`a
`
`p'l
`._/
`M
`.-
`
`-—-r"/
`.I'
`_
`.l
`— Optional Top
`"Lo-cater Detail"
`
`Figure 6—6. Typit'al USE Plug Orientation
`
`Table 6-1. USB Cnnnectnr Termination Assignment
`
`Signal Name
`Assignment
`
`
`Typical Wiring
`
`
`
`
`VBUS
`
`D-
`
`Red
`
`White
`
`Green
`
`Black
`
`Drain Wire
`
`USB 1.1, 81-82.
`USB1.1, 81-82.
`
`17
`
`17
`
`

`

`USB 1.1 “describes the bus attributes, the protocol definition, types of
`
`transactions, bus management, and the programming interface required to design
`
`and build systems and peripherals that are compliant with this standard.” USB 1.1,
`
`1. The standard also describes that power is supplied on the VBUS line and the
`
`associated current limits and minimums:
`
`USB 1.1, 142.
`
`To determine if a connected device is either a “High-power Function (in)” that
`
`may draw up to 500 mA or a “Low-power Function (in)” that may draw up to 100
`
`mA a process called “bus enumeration” or simply “enumeration”