LG Electronics Inc v. Fundamental Innovation Systems Intl LLC

1. Case Identification

• Case #: IPR2018-00495
• Patent #: 7,239,111
• 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, and LG Electronics Alabama, Inc.
• Patent Owner(s): Fundamental Innovation Systems Int'l, LLC
• Challenged Claims: 1-3, 6-8, 12, 14, 16-18

2. Patent Overview

• Title: Universal Serial Bus Adapter for a Mobile Device
• Brief Description: The ’111 patent discloses a Universal Serial Bus (USB) adapter for providing power to a mobile device. The adapter transmits an "identification signal" to the mobile device, indicating that the power source is not limited by standard USB power specifications, preferably by applying a voltage greater than 2 volts to the D+ and D- data lines.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6, 8, 16, and 17 are obvious over Dougherty in view of DeJaco, Hahn, and Shiga.

• Prior Art Relied Upon: Dougherty (Patent 7,360,004), DeJaco (Patent 6,745,024), Hahn (Patent 5,973,948), and Shiga (Patent 6,625,738).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Dougherty, discloses a USB docking station adapted to supply power to a laptop computer, meeting the basic limitations of a "USB adapter for providing power." The secondary references were used to supply missing elements. Hahn was cited for its teaching of a universal power supply with interchangeable plugs and power conversion circuitry (transformer, rectifier, buck converter) to create a regulated DC output from various AC wall sockets. DeJaco was used to render the term "mobile device" obvious, as it teaches incorporating wireless modems into laptops. Critically, Shiga was cited for teaching a simpler method of identification than Dougherty's complex handshaking protocol by applying a voltage (e.g., 3 volts) to both D+ and D- data lines (an SE1 state) to signal a non-standard USB function.
  • Motivation to Combine: Petitioner contended a POSITA would combine Dougherty and Hahn to provide Dougherty’s docking station with a versatile, low-cost power supply suitable for international use, a detail Dougherty lacks. A POSITA would add DeJaco's wireless modem to Dougherty's laptop to provide the desirable and well-known benefit of wireless communication. A POSITA would replace Dougherty’s complex handshaking protocol with Shiga’s simpler SE1 signaling to achieve Dougherty’s own stated goal of reducing the time and complexity of coupling the laptop to the docking station.
  • Expectation of Success: Petitioner asserted that combining these known elements—a power supply, a wireless modem, and a signaling method—with a docking station would have been a straightforward application of known techniques to improve a similar device, yielding predictable results.

Ground 2: Claims 12 and 14 are obvious over Dougherty in view of DeJaco, Hahn, Shiga, and Amoni.

• Prior Art Relied Upon: Dougherty (Patent 7,360,004), DeJaco (Patent 6,745,024), Hahn (Patent 5,973,948), Shiga (Patent 6,625,738), and Amoni (Patent 5,884,086).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1 to address claims 12 and 14, which add limitations for an "auxiliary USB connector" and a "second power output" for that connector. Petitioner relied on Amoni, which discloses a USB hub with multiple auxiliary powered USB ports and a power supply capable of generating multiple voltages for those ports.
  • Motivation to Combine: Petitioner argued that since Dougherty discloses that docking stations were known to function as port replicators, a POSITA would be motivated to incorporate Amoni's teachings to add desirable functionality. Adding auxiliary USB ports would provide the benefit of easy peripheral expansion (e.g., for printers, scanners), and providing a second power output to those ports would allow for powering those peripherals.
  • Expectation of Success: Integrating a known USB hub (Amoni) into a docking station (Dougherty) was presented as a predictable modification to enhance functionality.

Ground 3: Claims 7 and 18 are obvious over Dougherty in view of DeJaco, Hahn, Shiga, and USB 2.0.

• Prior Art Relied Upon: Dougherty (Patent 7,360,004), DeJaco (Patent 6,745,024), Hahn (Patent 5,973,948), Shiga (Patent 6,625,738), and the Universal Serial Bus Specification, Revision 2.0 (USB 2.0).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claims 7 and 18, which require the identification subsystem to comprise a "hard-wired connection." While Shiga teaches the concept of SE1 signaling, Petitioner argued that the USB 2.0 specification provides the explicit motivation for a hard-wired implementation. The USB 2.0 standard discloses using a hard-wired connection of a data line to a voltage via a pull-up resistor to detect device connection and speed.
  • Motivation to Combine: A POSITA would be motivated to implement the identification signal taught by Shiga using the hard-wired connection taught by the USB 2.0 standard itself. This approach would further Dougherty's express goal of conforming to the standard USB protocol and would ensure interoperability with various laptops, a key benefit of the USB standard.
  • Expectation of Success: Implementing a standard-defined connection method (from USB 2.0) in a USB device (Dougherty's docking station) to perform a signaling function would have a high expectation of success.

4. Key Claim Construction Positions

• Petitioner argued that four means-plus-function limitations in claim 18 should be construed based on structures disclosed in the ’111 patent's specification. These constructions were central to mapping the prior art to the claim.
• "means for receiving energy from a power socket": The corresponding structure was argued to be a "plug unit," a "plug adapter used with a plug unit," or a "power converter."
• "means for regulating the received energy...": The corresponding structure was argued to be a "power converter."
• "means for generating an identification signal...": The corresponding structure was argued to be an "identification subsystem" which could be a "hard-wired connection" or a "USB controller."
• "means for coupling the power output and identification signal...": The corresponding structure was argued to be a "USB connector of a USB adapter."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d). It was contended that none of the asserted grounds present the same or substantially the same prior art or arguments as were previously presented during prosecution, as the examiner did not consider the specific combinations of Dougherty, DeJaco, Hahn, Shiga, Amoni, or the USB 2.0 specification.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 6-8, 12, 14, and 16-18 of the ’111 patent as unpatentable.