LG ELECTRONICS, INC. v. Fundamental Innovation Systems International 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, and 16-18

2. Patent Overview

• Title: Universal Serial Bus Adapter for a Mobile Device
• Brief Description: The ’111 patent describes a USB adapter for powering a mobile device. The adapter transmits a non-standard "identification signal" to the mobile device to indicate that the power source is not a standard, power-limited USB host or hub, thereby allowing the device to draw more power than the USB specification typically permits. The preferred identification signal involves applying a voltage greater than 2 volts to both the D+ and D- data lines (an SE1 state).

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 Dougherty disclosed a docking station adapted to supply high power (e.g., 18V) to a laptop across a USB connection, which meets the "USB adapter" limitation. The combination with DeJaco, which taught equipping laptops with wireless modems, rendered the laptop a "mobile device" as recited in the claims. Hahn taught a universal power supply with interchangeable AC plugs and power conversion circuitry (transformer, rectifier, buck converter), satisfying the "plug unit" and "power converter" limitations. Finally, Shiga taught using a non-standard SE1 signal state (applying a voltage to both D+ and D- lines) to provide a function not available in standard USB, which Petitioner asserted made the claimed "identification subsystem" obvious.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Dougherty's high-power docking station with Hahn's universal power supply to create a versatile, internationally compatible, and low-cost product. A POSITA would replace Dougherty's complex handshaking protocol with Shiga's simpler SE1 signaling to achieve Dougherty's stated goal of reducing the time and complexity required to couple the laptop and docking station. Combining with DeJaco was a predictable extension to add wireless functionality to the portable device.
  • Expectation of Success: The combination involved applying known techniques (universal power supplies, non-standard signaling) to a known device (a docking station) to achieve 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 built upon the combination in Ground 1. Petitioner argued that Amoni taught a USB hub with multiple auxiliary powered USB ports for connecting and powering peripheral devices. Adding Amoni's teachings to the docking station from the primary combination would render obvious the "auxiliary USB connector" of claim 12 and the capability of the power converter to generate a "second power output" for that connector as recited in claim 14.
  • Motivation to Combine: A POSITA would be motivated to incorporate Amoni's auxiliary USB ports into the Dougherty/Hahn docking station to add desirable functionality, such as connecting printers, scanners, or other peripherals, which was a known purpose for docking stations. This would create a more feature-rich and useful device.
  • Expectation of Success: Adding auxiliary USB ports to a docking station was a well-known technique for expanding peripheral connectivity, and a POSITA would expect this modification to be operable and successful.

Ground 3: Claims 7 and 18 are unpatentable as 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 USB 2.0 (Universal Serial Bus Specification, Rev. 2.0, Apr. 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring a "hard-wired connection" (claim 7) or a means-plus-function "identification subsystem" (claim 18). While Shiga taught the general concept of using an SE1 state for non-standard signaling, Petitioner argued that the USB 2.0 specification provided an explicit teaching of a hard-wired connection for device identification. Specifically, USB 2.0 disclosed hard-wiring a data line to a voltage source via a pull-up resistor to signal device connection and speed. This teaching, combined with the other references, allegedly rendered the specific identification subsystem embodiments of claims 7 and 18 obvious.
  • Motivation to Combine: A POSITA would be motivated to use the hard-wiring technique from the USB 2.0 specification to implement the non-standard signaling taught by Shiga. This would allow the docking station to interoperate with standard USB devices while also providing a simple, low-cost method for the special identification required for high-power delivery.
  • Expectation of Success: Using a hard-wired connection for signaling was a standard, well-documented technique in the USB 2.0 specification, ensuring a high expectation of success.

4. Key Claim Construction Positions

• Petitioner argued that claim 18 included four distinct means-plus-function limitations under 35 U.S.C. §112, ¶ 6, and proposed constructions for the corresponding structures disclosed in the ’111 patent.
• "means for generating an identification signal that indicates...the power socket is not a USB hub or host": Petitioner contended the corresponding structure was an "identification subsystem," which the patent described as having two embodiments: (1) a hard-wired connection of a voltage level to both data lines, or (2) a USB controller. This construction was central to the argument in Ground 3.
• "means for receiving energy from a power socket": The proposed corresponding structure was a plug unit, a plug adapter used with a plug unit, or a power converter.

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).
• The core reason asserted was that the grounds presented in the petition relied on new combinations of prior art and arguments that were not presented to or considered by the Examiner during the original prosecution of the ’111 patent. The petition also relied on new expert declaration testimony that was not previously available to the Examiner.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review (IPR) of claims 1-3, 6-8, 12, 14, and 16-18 of the ’111 patent and cancel those claims as unpatentable.