PTAB

IPR2021-00599

TCT Mobile US Inc v. Fundamental Innovation Systems Intl LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Multifunctional Charger System and Method
  • Brief Description: The ’586 patent describes a system where a mobile device can charge from a USB power adapter without performing the standard USB enumeration protocol. The adapter sends a non-standard "identification signal," such as a logic high voltage on the D+ and D- data lines, to inform the mobile device that it is a power source and not a typical USB host, thereby enabling immediate charging.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 8-9 are obvious over Morita and the knowledge of a POSITA.

  • Prior Art Relied Upon: Morita (Japanese Patent Application No. 2000-165513A) and the general knowledge of a POSITA, including knowledge of the USB 1.1 Specification and the well-known use of the "SE1" signal state.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Morita, which was not considered during prosecution, discloses a mobile videophone (a mobile device) with a USB port, a charger with a USB port, and a charging subsystem (USB controller 14) that receives power from the USB V-bus to charge a battery (15). This combination was alleged to disclose all elements of independent claims 1 and 8 except for the detection of a specific identification signal. Specifically, Morita teaches a "hub-controllable charger" for a mobile phone, fulfilling the structural requirements of a USB interface, a charging subsystem operably connected to the V-bus power line, and a connection to a battery.
    • Motivation to Combine: Petitioner contended that Morita discloses that its charger can be used solely to charge the mobile phone from a wall outlet, without being connected to a computer (USB host). In this common scenario, a POSITA would have been motivated to enable the mobile device to draw current at a high-power level (e.g., 500 mA) for faster charging, rather than the default low-power level (100 mA) it would otherwise be limited to without enumeration. To achieve this, a POSITA would combine Morita’s charger with a known method for signaling the presence of a dedicated high-power source. The obvious choice for this signal was the well-known SE1 state (holding both D+ and D- lines high), which indicates a non-standard connection where data communication is not possible, but power can still be drawn.
    • Expectation of Success: A POSITA would have had a high expectation of success because using the SE1 signal as an identifier was a known technique documented in other prior art (e.g., Kerai, Shiga, Zyskowski) for various signaling purposes. The SE1 state was understood to be an "abnormal" condition outside of standard USB communication, making it an ideal, non-interfering signal to identify a dedicated charger. Implementing this would involve simple, predictable modifications, such as connecting pull-down resistors to a high voltage source instead of ground. The result—enabling the mobile device to detect the charger and draw more power—was a direct and predictable outcome. Dependent claims 2 and 9, which specify the identification signal comprises a voltage level on a data line, were argued to be obvious for the same reasons, as the SE1 signal is inherently a high voltage level on both data lines.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate because the parallel district court litigation trial date (October 17, 2022) was scheduled after the projected Final Written Decision (FWD) date for the inter partes review (IPR). Furthermore, Petitioner asserted that minimal investment had been made in the parallel case, with discovery in early stages and no Markman ruling issued, and that Petitioner had acted diligently in filing the IPR petition.
  • Petitioner also argued that denial under §325(d) was unwarranted because the primary reference, Morita, was neither before the Examiner during prosecution nor raised in any previous IPRs challenging the ’586 patent. Petitioner contended that the arguments presented in this petition were substantially different from those in prior IPRs, which relied on different primary references (e.g., Theobald, Dougherty) and failed for reasons not applicable to the combination of Morita and the knowledge of a POSITA.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-2 and 8-9 of the ’586 patent as unpatentable under 35 U.S.C. §103.