LG Electronics Inc v. Fundamental Innovation Systems Intl LLC

1. Case Identification

• Case #: IPR2018-00493
• Patent #: 7,834,586
• Filed: January 15, 2018
• Petitioner(s): LG Electronics, Inc.; LG Electronics U.S.A., Inc.; LG Electronics Mobilecomm U.S.A. Inc.; LG Electronics Mobile Research U.S.A. LLC; LG Electronics Alabama, Inc.
• Patent Owner(s): Fundamental Innovation Systems Int'l, LLC
• Challenged Claims: 8-13

2. Patent Overview

• Title: Multifunctional Charger System and Method
• Brief Description: The ’586 patent discloses a USB power adapter that transmits a non-standard "identification signal" to a mobile device. This signal, preferably a voltage greater than two volts on both the D+ and D- data lines, informs the device that the adapter can supply power beyond standard USB specification limits, thereby allowing the device to charge without performing a standard USB enumeration process.

3. Grounds for Unpatentability

Ground 1: Claims 8 and 9 are obvious over Dougherty in view of DeJaco and Shiga.

• Prior Art Relied Upon: Dougherty (Patent 7,360,004), DeJaco (Patent 6,745,024), and Shiga (Patent 6,625,738).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dougherty taught a docking station for powering a laptop computer via a USB interface, using a complex handshaking protocol to communicate its power capabilities. DeJaco taught equipping laptops with wireless modems, making Dougherty’s laptop a “mobile device configurable for use in a wireless telecommunications network” as claimed. Shiga taught using a non-standard USB signal known as the SE1 state (both D+ and D- lines held high) for custom signaling purposes, noting it is easily distinguished from standard USB data signals.
  • Motivation to Combine: A POSITA would combine Dougherty and DeJaco to create a modern, wirelessly-connected portable computing device. Petitioner asserted a POSITA would be motivated to replace Dougherty’s complex and time-consuming handshaking protocol with Shiga’s simpler and more efficient SE1 signal. This modification directly addresses Dougherty's stated goal of reducing the time and complexity required to couple a laptop to its docking station.
  • Expectation of Success: The combination involved applying a known signaling technique (Shiga) to improve a known device (Dougherty’s laptop) for the predictable result of simpler and faster power-capability identification.

Ground 2: Claim 10 is obvious over Dougherty in view of DeJaco, Shiga, and Casebolt.

• Prior Art Relied Upon: Dougherty (’004 patent), DeJaco (’024 patent), Shiga (’738 patent), and Casebolt (Patent 6,625,790).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address the additional limitation in claim 10, wherein the identification signal results from "using a resistance between the D+ and D- data lines." Petitioner argued that Casebolt taught a method for generating an SE1 state by using a pair of pull-up resistors to connect both the D+ and D- lines to a common voltage node. This configuration, Petitioner contended, creates an effective resistance between the two data lines.
  • Motivation to Combine: A POSITA implementing the SE1 signaling taught by Shiga would look to known methods for generating such a state. Casebolt provided an efficient, low-cost method using simple pull-up resistors instead of requiring a microprocessor to actively drive the lines. This approach would be desirable because it saves firmware code space, reduces the necessary pin count on a microprocessor, and provides significant cost savings, all predictable benefits.
  • Expectation of Success: Using pull-up resistors is a fundamental and predictable technique in digital electronics for setting signal lines to a logic high state.

Ground 5: Claim 10 is obvious over Kanamori.

• Prior Art Relied Upon: Kanamori (Application # 2008/0272741).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Kanamori alone disclosed all elements of claim 10. Kanamori described a system for detecting different power sources for a mobile electronic device (e.g., a cellular phone) via a USB interface. It explicitly taught that a dedicated charging power source can be identified when a detection circuit senses that the D+ and D- data terminals are coupled together "through a resistor." This condition creates an SE1 state, which is "not an intended state in USB," signaling to the mobile device that it can draw current beyond standard USB limits without enumeration.
  • Motivation to Combine: As a single reference, no motivation to combine was required. Petitioner asserted that Kanamori taught a complete method of charging a battery in a mobile device where an identification signal, resulting from a resistance between the D+ and D- lines, is detected to enable charging.
  • Expectation of Success: Kanamori described a fully functioning system, providing a POSITA with a clear expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that combined the Dougherty/DeJaco/Shiga combination with Kalogeropoulos (Patent 6,337,560) for its teachings on using a plurality of charging modes to extend battery life (Claims 11-13) and a ground combining Kanamori with Richard (Application # 2007/0239019) for its teachings on implementing a USB controller with an integrated microprocessor and memory (Claim 13).

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: Petitioner contended that claims 10 and 13, which recite a "resistance" between the D+ and D- data lines, were not entitled to the priority date of the '586 patent’s provisional applications (filed in 2001). Petitioner argued this limitation lacked written description support in the provisional filings. Therefore, the effective filing date for these specific claims was argued to be the actual filing date of the non-provisional application in 2010, making art like Kanamori (2008) and Richard (2007) valid prior art against them under 35 U.S.C. § 102(b).

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. The argument was based on the assertion that the grounds presented relied on prior art references and combinations that were not considered by the USPTO examiner during the original prosecution. Furthermore, the petition was supported by new expert declaration testimony that was not previously before the Office.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 8-13 of Patent 7,834,586 as unpatentable.