WSOU Investments, LLC D/B/A Brazos Licensing and Development

Patent Trials and Appeals Board

Mar 8, 2022

IPR2021-01400 (P.T.A.B. Mar. 8, 2022)

Trials@uspto.gov Paper 8 571-272-7822 Entered: March 8, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD., Petitioner, v. WSOU INVESTMENTS, LLC d/b/a BRAZOS LICENSING AND DEVELOPMENT, Patent Owner. ____________ IPR2021-01400 Patent 8,712,708 B2 _______________ Before THU A. DANG, ROBERT J. WEINSCHENK, and JOHN A. HUDALLA, Administrative Patent Judges. WEINSCHENK, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-01400 Patent 8,712,708 B2 2 I. INTRODUCTION A. Background and Summary OnePlus Technology (Shenzhen) Co., Ltd. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1, 2, 4-7, and 13-16 (“the challenged claims”) of U.S. Patent No. 8,712,708 B2 (Ex. 1001, “the ’708 patent”). WSOU Investments, LLC d/b/a Brazos Licensing and Development (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’708 patent is unpatentable. Accordingly, the Petition is denied, and no trial is instituted. B. Real Parties in Interest The parties identify themselves as the only real parties in interest. Pet. 1; Paper 3, 1. C. Related Matters The parties indicate that the ’708 patent is the subject of the following district court case: WSOU Investments, LLC v. OnePlus Technology (Shenzhen) Co., Ltd., No. 6:20-cv-00957 (W.D. Tex.).1 Pet. 1; Paper 3, 2. 1 Petitioner incorrectly identifies the district court case number as No. 6:20- cv-00952. Pet. 1. IPR2021-01400 Patent 8,712,708 B2 3 D. The ’708 Patent The ’708 patent relates to “estimating the remaining charging time of a rechargeable battery.” Ex. 1001, 1:7-8. Figure 2 is reproduced below. Id. at Fig. 2. Figure 2 shows the general principles of operation for constant current/constant voltage (“CC/CV”) charger integrated circuit (“IC”) 154. Id. at 2:22-24. If the voltage across a variable resistance load (“R(load)”) is below a maximum value, the current through R(load) is constant and CC/CV charger IC 154 operates in the constant current phase. Id. at 4:53-64. If R(load) increases until the voltage across R(load) reaches a maximum allowable value, then the voltage across R(load) is limited and CC/CV charger IC 154 operates in the constant voltage phase. Id. at 4:64-5:8. According to the ’708 patent, “[t]he remaining charging time estimation is done differently in the CC and the CV phases.” Id. at 8:43-45. Figure 5 is reproduced below. IPR2021-01400 Patent 8,712,708 B2 4 Id. at Fig. 5. Figure 5 shows a flow diagram of a method for estimating the remaining charging time of a rechargeable battery. Id. at 2:44-46. Specifically, the method determines whether a battery charging point is in a constant current phase or a constant voltage phase based on pre-determined battery charging characteristics. Id. at 10:51-56. If the battery charging point is in the constant current phase, the method calculates a time remaining to charge in the constant current phase based on constant current phase charging characteristics. Id. at 10:57-64. If the battery charging point is in the constant voltage phase, the method calculates a time remaining to charge in the constant voltage phase based on constant voltage phase charging characteristics. Id. at 10:65-11:2. IPR2021-01400 Patent 8,712,708 B2 5 E. Illustrative Claim Of the challenged claims, claims 1, 14, and 15 are independent. Claim 1 is reproduced below. 1. A method, comprising: detecting, by an apparatus, an availability of a charger adapter; determining, by the apparatus, whether a battery charging point is in a constant current phase or in a constant voltage phase, based on pre-determined battery charging characteristics, wherein the pre-determined battery charging characteristics comprise constant current phase charging characteristics and constant voltage phase charging characteristics; calculating, by the apparatus, a time remaining to charge in the constant current phase based on the constant current phase charging characteristics, if the battery charging point is in the constant current phase; and calculating, by the apparatus, a time remaining to charge in the constant voltage phase based on the constant voltage phase charging characteristics, if the battery charging point is in the constant voltage phase; wherein the time remaining to charge in the constant current phase is based on stored charge characteristics in the constant current phase, when the battery charging point is in the constant current phase and wherein battery stored charge characteristics comprises a battery stored charge value based on monitored tracking of battery charging and discharging. Ex. 1001, 11:58-12:15. F. Evidence Petitioner submits the following evidence: Evidence Exhibit No. Kao, US 8,319,479 B2, issued Nov. 27, 2012 (“Kao”) 1003 USB Implementers Forum, Inc., Battery Charging Specification, Rev. 1.0 (Mar. 8, 2007) (“USB Specification”) 1004 IPR2021-01400 Patent 8,712,708 B2 6 Evidence Exhibit No. J. Phinney Declaration (“Phinney Declaration”) 1005 Dallas Semiconductor, MAXIM Application Note 3883 (July 11, 2006) (“MAXIM”) 1015 G. Asserted Grounds Petitioner asserts that the challenged claims are unpatentable on the following grounds: Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis 1, 4, 7, 13-152 102 Kao 1, 2, 4-7, 13-16 103 Kao, USB Specification 1, 2, 4-7, 13-16 103 Kao, USB Specification, MAXIM II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least an undergraduate degree in electrical engineering, or equivalent education, and two years of work experience in the field of battery charging systems, or equivalent work experience or training.” Pet. 18-19 (citing Ex. 1005 ¶ 38). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Joshua Phinney. Ex. 1005 ¶ 38. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. Prelim. Resp. 10. We adopt Petitioner’s description for purposes of this Decision. 2 Petitioner’s summary of the asserted grounds does not state that claim 13 is anticipated by Kao, but Petitioner’s analysis specifically alleges that claim 13 is anticipated by Kao. Compare Pet. 4, with id. at 57-59. IPR2021-01400 Patent 8,712,708 B2 7 B. Claim Construction In an inter partes review proceeding, a claim of a patent is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner proposes construing the phrase “detecting, by an apparatus, an availability of a charger adapter” in claim 1, and similar phrases in claims 14 and 15, to mean “detecting charging energy (e.g., voltage and/or current) from an adaptor.” Pet. 19-21 (emphasis omitted). Patent Owner does not propose an express construction for any claim terms. Prelim. Resp. 11. We determine that no claim terms require express construction for purposes of this Decision. C. Anticipation of Claims 1, 4, 7, and 13-15 by Kao Petitioner argues that claims 1, 4, 7, and 13-15 are anticipated by Kao. Pet. 21-68. For the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 1, 4, 7, and 13-15 are anticipated by Kao. 1. Independent Claim 1 Claim 1 recites “determining . . . whether a battery charging point is in a constant current phase or in a constant voltage phrase,” “calculating . . . a time remaining to charge in the constant current phase . . . if the battery charging point is in the constant current phase,” and “calculating . . . a time remaining to charge in the constant voltage phase . . . if the battery charging point is in the constant voltage phase.” Ex. 1001, 11:61-12:8. IPR2021-01400 Patent 8,712,708 B2 8 Petitioner argues that Kao discloses calculating a constant current time tCC if the battery charging point is in the constant current phase, and calculating a constant voltage time tCV if the battery charging point is in the constant voltage phase. Pet. 35-42. Patent Owner responds that claim 1 requires “a check to determine if the battery charging point is in the constant current phase” or “the constant voltage phase.” Prelim. Resp. 12-13. According to Patent Owner, Petitioner does not “show that Kao first checks to determine whether the battery charging point is in the constant current phase” or “the constant voltage phase” and “then calculat[es] a time remaining.” Id. at 12, 14. On this record, Petitioner does not show sufficiently that Kao discloses calculating a constant current time tCC if the battery charging point is in the constant current phase. Petitioner relies on the annotated version of Kao’s Figure 4 reproduced below. IPR2021-01400 Patent 8,712,708 B2 9 Pet. 37-38. Kao’s Figure 4 shows a graph illustrating a charge profile, and Petitioner’s annotations point to tCC with a red arrow indicating “remaining time to charge in constant-current phase.” Id.; Ex. 1003, 4:49-50. Petitioner asserts that Kao’s Figure 4 shows that the tCC calculation “is performed in the constant-current stage.” Pet. 37-38; Ex. 1005 ¶ 87. Petitioner does not support that assertion sufficiently. The evidence of record indicates that Kao’s Figure 4 is a graph that shows what tCC “represent[s],” namely, that tCC is the time for a battery pack “to go from the pre-charge voltage to the charged voltage.” Ex. 1003, 4:49-50, 4:61-63, Fig. 4. But Petitioner does not explain specifically how Figure 4 discloses calculating tCC if the battery charging point is in the constant current phase. See Pet. 37-38; Ex. 1003, 4:49-5:8, Fig. 4; Ex. 1005 ¶ 87. Thus, on this record, Petitioner does not show sufficiently that Kao discloses calculating tCC if the battery charging point is in the constant current phase. On this record, Petitioner also does not show sufficiently that Kao discloses calculating constant voltage time tCV if the battery charging point is in the constant voltage phase. Petitioner relies on the equations from Kao reproduced below. Pet. 40 (citing Ex. 1003, 5:33-49). The above equations from Kao can be used to calculate a constant voltage current ICV and a constant voltage time tCV. Ex. 1003, 5:33-49. Petitioner contends that because the “interval[s] i” in the above equations “are in the constant-voltage stage,” “Kao’s process for IPR2021-01400 Patent 8,712,708 B2 10 determining the remaining time in the constant-voltage stage is in the constant-voltage stage.” Pet. 41-42; Ex. 1005 ¶ 95. Petitioner does not support that contention sufficiently. The evidence of record indicates that the above equations from Kao disclose how to calculate tCV. Ex. 1003, 5:33-49 (“may be calculated as”). But Petitioner does not explain specifically how the above equations disclose calculating tCV if the battery charging point is in the constant voltage phase. See Pet. 41-42; Ex. 1003, 5:24-63; Ex. 1005 ¶ 95. In fact, Petitioner’s declarant, Dr. Phinney, acknowledges that “tCV can be calculated whether the battery charging point is in the constant current phase or the constant voltage phase.” Ex. 1005 ¶ 95. Thus, on this record, Petitioner does not show sufficiently that Kao discloses calculating tCV if the battery charging point is in the constant voltage phase. Claim 1 also recites “wherein battery stored charge characteristics comprises a battery stored charge value based on monitored tracking of battery charging and discharging.” Ex. 1001, 12:12-15. Petitioner argues that Kao discloses a Coulomb counter that detects a voltage drop across a sense resistor, integrates it over time, and digitizes it into a battery charge signal. Pet. 49 (citing Ex. 1003, 3:59-61). Petitioner also argues that Kao discloses storing charging characteristics and battery use information that may affect a time-to-charge calculation. Id. (citing Ex. 1003, 3:63-65, 4:29- 32). Patent Owner responds that Petitioner “fails to show that Kao discloses any battery stored charge value that is based on monitored tracking of battery charging and discharging (i.e. Kao’s Coulomb counter).” Prelim. Resp. 15. IPR2021-01400 Patent 8,712,708 B2 11 On this record, Petitioner does not show sufficiently that Kao discloses a battery stored charge value based on monitored tracking of battery charging and discharging. Petitioner relies on the portions of Kao reproduced below. A voltage drop across the sense resistor 250 may be detected by the Coulomb counter 232, integrated over time, and digitized into a battery charge signal sent to the microprocessor 213 through an output of the Coulomb counter 232 electrically connected to the microprocessor 213. The embedded flash memory 212 may store charging characteristics, use history, firmware, and a database. The use history may include aging information. . . . The final state of charge SOCf, may be affected by the preferred charge level, and may also be affected by battery use history information and/or battery aging information stored in the embedded flash memory 212. Ex. 1003, 3:58-65, 4:29-32 (emphases added). The above portions of Kao disclose a Coulomb counter that sends a battery charge signal to a microprocessor, and a flash memory that stores charging characteristics and use history. Id. But the cited portions do not state that the information stored in the flash memory is based on the battery charge signal from the Coulomb counter. See id. And Petitioner does not explain specifically how the cited portions of Kao disclose such a relationship. See Pet. 47-49; Ex. 1005 ¶¶ 105-109. Thus, Petitioner does not show sufficiently that Kao discloses a battery stored charge value based on monitored tracking of battery charging and discharging. 2. Independent Claims 14 and 15 Claims 14 and 15 recite limitations similar to those discussed above for claim 1. Ex. 1001, 13:35-42, 14:4-7, 14:22-29, 14:33-36. Petitioner asserts that claims 14 and 15 are anticipated by Kao based on the same arguments and evidence discussed above for claim 1. Pet. 62-63, 67-68. IPR2021-01400 Patent 8,712,708 B2 12 Thus, for the same reasons discussed above, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 14 and 15 are anticipated by Kao. 3. Dependent Claims 4, 7, and 13 Claims 4, 7, and 13 depend from claim 1. Petitioner’s arguments and evidence regarding these dependent claims do not compensate for the deficiencies discussed above for claim 1. See Pet. 50-59. Thus, for the same reasons discussed above, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 4, 7, and 13 are anticipated by Kao. 4. Summary For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 1, 4, 7, and 13-15 are anticipated by Kao. D. Other Asserted Grounds Petitioner argues that claims 1, 2, 4-7, and 13-16 would have been obvious over Kao and USB Specification, and over Kao, USB Specification, and MAXIM. Pet. 68-86. Petitioner’s arguments and evidence regarding these asserted grounds do not compensate for the deficiencies discussed above for the asserted ground based on Kao alone.3 See id. Specifically, Petitioner asserts that to the extent Kao does not disclose that its Coulomb counter tracks battery charging and discharging, it would have been obvious based on Kao or MAXIM. Id. at 71-72, 83-86. Nonetheless, Petitioner does not assert that it would have been obvious for the information stored in 3 Petitioner’s obviousness grounds do not address the limitations of claim 1 that require calculating a time remaining to charge. See id. IPR2021-01400 Patent 8,712,708 B2 13 Kao’s flash memory to be based on the monitored tracking of battery charging and discharging. See id. Thus, for the same reasons discussed above, Petitioner does not demonstrate a reasonable likelihood of prevailing on these asserted grounds. III. CONCLUSION Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’708 patent is unpatentable. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted. IPR2021-01400 Patent 8,712,708 B2 14 PETITIONER: Dion Bregman Michael J. Lyons MORGAN, LEWIS & BOCKIUS LLP dion.bregman@morganlewis.com michael.lyons@morganlewis.com PATENT OWNER: Ryan Loveless James Etheridge Brett Mangrum Brian Koide Jeffrey Huang ETHERIDGE LAW GROUP ryan@etheridgelaw.com ipteam@etheridgelaw.com brett@etheridgelaw.com brian@etheridgelaw.com jeff@etheridgelaw.com