Fundamental Innovation Systems International LLC

Patent Trials and Appeals Board

Aug 4, 2021

IPR2021-00428 (P.T.A.B. Aug. 4, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Entered: August 4, 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 COMMUNICATIONS CO. LTD., and
TCL COMMUNICATION, INC.,
Petitioner,

v.

FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,,
Patent Owner.
____________

Case IPR2021-00428
Patent 8,624,550 B2

____________

Before, RAE LYNN P. GUEST, MIRIAM L. QUINN, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)
IPR2021-00428
Patent 8,624, 550 B2

2
I. INTRODUCTION
On July 8, 2021, we issued a Decision Denying Institution of Inter
Partes Review. Paper 8 (“Dec.”). We concluded that Petitioner failed to
show a reasonable likelihood of prevailing on its contentions of obviousness
for two reasons. First, we determined that Morita1 would not disregard the
standard USB enumeration process, as argued by Petitioner, and that the
Petition failed to show Morita behaving in a “charger only” configuration.
Dec. 11−12. Second, we determined that Petitioner’s theory of using an SE1
signal would render Morita’s adapter incapable of working for its intended
purpose, and that, consequently, a person of ordinary skill in the art would
not have been motivated to implement an SE1 signal in Morita. Dec. 13−15.
Petitioner filed a Request for Rehearing challenging several aspects of
our Decision. Paper 9 (Req. Reh’g). In particular, Petitioner contends that
we misapprehended or overlooked that the Petition asserted a theory of
obviousness, not anticipation.” Id. at 4−8. Second, Petitioner argues that we
misapprehended the evidence presented that Morita’s mobile device, in the
“‘charging’ configuration,” cannot engage in communication or enumeration
and, therefore, “must use other ‘non-standard’ means to signal a high-power
charging mode.” Id. at 8−9.
According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
decision should be modified lies with the party challenging the decision,”
and the “request must specifically identify all matters the party believes the
Board misapprehended or overlooked.” The burden here, therefore, lies with

1 “Morita” refers to Japanese Patent Application Publication No. 2000-
165513, filed in the record as Ex. 1015.
IPR2021-00428
Patent 8,624, 550 B2

3
Petitioner to show we misapprehended or overlooked the matters it requests
that we review. We are not persuaded that Petitioner has shown that we
misapprehended or overlooked the matters raised in the Request for
Rehearing.
A. MORITA’ CHARGING CONFIGURATION
Petitioner argues that we overlooked or misapprehended its reliance
on a theory of obviousness because in our Decision we agreed with Patent
Owner’s argument that “Morita does not provide a charger for the sake of
charging alone.” Req. Reh’g 5−6. The argument takes a statement in our
Decision out of context. Our Decision addresses Petitioner’s argument that
a person of ordinary skill in the art “would have understood that, in some
circumstances, the charger of Morita would not be connected to a computer
and thus, would act only as a charging device.” See Pet. 46−47 (emphasis
added). Our Decision, however, finds persuasive Patent Owner’s argument
that Morita would not “act only as a charging device.” Dec. 14 (addressing
this issue in the context of the limitation requiring an “abnormal data
condition” in the form of an SE1 signal). In the context of Petitioner’s
arguments regarding the “enumeration” limitations of the claims, the
contention of Morita acting “only as a charging device” is one of many
contentions we determined were factually unsupported in Petitioner’s
obviousness analysis. See Dec. 12 (stating that “Petitioner’s assertion that
Morita behaves in a ‘charger only’ mode of operation is not supported by the
present record.”). For instance, we determined that Petitioner’s contention
that Morita would supply more than 100 mA to a device without performing
USB enumeration was not factually supported. Dec. 11−12. Rather, we
IPR2021-00428
Patent 8,624, 550 B2

4
determined that the opinion of Dr. Kenneth Fernald persuasively set forth
facts showing that a person of ordinary skill in the art would not design a
USB port to work as Petitioner contends Morita would have worked. Id. at
12 (citing Ex. 2009 ¶ 29). Our Decision concludes that Petitioner had not
shown sufficiently that Morita would disregard enumeration merely because
it would be desirable to supply a higher current. Id. at 12. The Decision
also finds persuasive the evidence that to supply a higher current, the USB
Specification provides USB enumeration. Id. at 12. This analysis addressed
the understanding of a person of ordinary skill in the art as proffered by
Petitioner, together with the evidence of the USB Specification, Morita, and
the parties’ competing expert testimony. Accordingly, we did not overlook
or misapprehend that Petitioner was relying on an obviousness theory.
Petitioner argues also that it would have been “common sense” that
Morita would be used as a charger only device. Req. Reh’g 6. According to
Petitioner, “often users just need to charge their mobile device,” and “an
obvious use would certainly be to just charge the phone.” Id. at 7.
Petitioner also argues that a person of ordinary skill in the art would have
found it obvious to “disconnect those peripheral devices, like taking pieces
off a puzzle.” Id. Based on these arguments, Petitioner urges our
reconsideration of whether it would be obvious to use Morita’s adapter as
only a charger. Id. at 8. These arguments do not show that we overlooked
or misapprehended the Petition. They show a mere disagreement with our
analysis and determination.
Furthermore, arguing this “common sense” approach to the use of
Morita does not cure the deficiencies noted in our Decision that Morita
expressly states that the “mobile device ‘always accesses the external device
IPR2021-00428
Patent 8,624, 550 B2

5
while receiving the supply of power from the charger.’” Dec. 14 (citing
Morita ¶ 22). As we determined in our Decision, “The change that
Petitioner proposes, using the SE1 signal, would render Morita’s charger
incapable of sending and receiving USB communication data to and from
the external peripheral devices that Morita purposely seeks to keep in
communication with the mobile device, even when no PC is connected.”
Dec. 14. “Common sense,” as argued by Petitioner here, is not a reasonable
explanation or rationale for an obviousness analysis that requires using a
device contrary to the intended purpose of that device. In re Zurko, 258 F.3d
1379, 1385 (Fed. Cir. 2001) (“[T]he Board cannot simply reach conclusions
based on its own understanding or experience—or on its assessment of what
would be basic knowledge or common sense. Rather, the Board must point
to some concrete evidence in the record in support of these findings.”);
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326
(Fed. Cir. 2009) (holding that, under KSR, the “predictable results” refer also
to the expectation that the alleged combination would have worked for its
intended purpose).
Consequently, we are not persuaded that Petitioner has shown that we
misapprehended or overlooked its contentions regarding the obviousness of
Morita’s operation as a charger-only adapter.
B. ENUMERATION ARGUMENTS AND SE1 SIGNALING
Petitioner argues that because the Board “did not consider the obvious
‘charging only’ configuration . . . , Petitioner asserts that the Board
overlooked or misapprehended Petitioner’s evidence regarding that
configuration.” Req. Reh’g 8. More specifically, Petitioner argues that we
overlooked Petitioner’s evidence that, in the “charging” configuration, there
IPR2021-00428
Patent 8,624, 550 B2

6
is no host, and the mobile device cannot engage in communication or
enumeration.” Id. at 8 (citing Pet. 16−17, 47). For this reason, Petitioner
argues that the device must use some other “non-standard” means to signal a
high-power charging mode. Id. We are not persuaded by these arguments.
These “enumeration” arguments build on the argument that Morita
would operate in a charger-only mode, with no other means for USB
communication with external peripherals—and we found the “charger-only”
argument unpersuasive. Thus, like a house of cards, the “enumeration”
arguments Petitioner built on the “charger-only” premise lose their
foundation, and also are unpersuasive. What we have here is not evidence or
arguments that we overlooked or misapprehended, but, rather, a repetition of
the Petition with an urging that we reconsider our determination that
Petitioner’s arguments were unpersuasive.
Notwithstanding, we reiterate what we said in our Decision: “we find
that Petitioner has not shown that Morita would disregard the standard USB
enumeration process.” Dec. 12. We noted Petitioner’s contention that
Morita’s adapter would not engage in typical USB communication, and, that
therefore, Morita would have to signal that it can be used for charging. Id. at
13 (citing Pet. 48−49 and Baker Decl. ¶¶ 122, 126). Instead we were
persuaded by Patent Owner’s argument that Morita would continue to use
USB communication between the mobile device and the USB hub or charger
because Morita is designed to continue to charge and use USB
communication with the external peripherals, even when there is no PC
present. Id. at 13−14 (citing Prelim. Resp. 52, 54−55; Morita ¶¶ 15, 18, 19,
22, Fig. 4). We further agreed with Patent Owner that Morita explains the
need for the charging function to work in conjunction with the mobile device
IPR2021-00428
Patent 8,624, 550 B2

7
operating as a host and communicating with other devices. Id. at 14 (citing
Morita ¶¶ 19, 22; Ex. 2009 ¶ 109). Our Decision also describes our
assessments of Morita’s host switching operation to maintain USB
communication, and how Petitioner’s contentions that Morita would need an
SE1 signal was at odds with Morita’s expectation of maintaining those USB
communications. Id. at 15. In short, our Decision explains that we
considered Petitioner’s argument that enumeration would not occur in the
alleged “charger only” mode, and that, instead, we were persuaded by Patent
Owner’s arguments and factually supported evidence to the contrary. Thus,
we are not persuaded that we overlooked or misapprehended any matter
asserted in the Petition as alleged in Petitioner’s Request for Rehearing.
II. ORDER
Petitioner’s Request for Rehearing is denied.

IPR2021-00428
Patent 8,624, 550 B2

8
PETITIONER:

Jeffrey Johnson (Lead Counsel)
ORRICK, HERRINGTON & SUTCLIFFE, LLP
3j6ptabdocket@orrick.com

FOR PATENT OWNER:

H. Annita Zhong (Lead Counsel)
IRELL & MANELLA LLP
hzhong@irell.com