Invalidity dossier
US 6936936
Multifunctional charger system and method
Current assignee: Fundamental Innovation Systems International LLC
Added 9/30/2026, 10:13:24 AM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent number.
Let me check specifically for any Federal Circuit (CAFC) 2026 litigation involving this patent, and confirm the current PTAB/assignment status.
Let me run one more targeted search to confirm whether any CAFC 2026 docket involves this specific patent.
US Patent 6,936,936 — "Multifunctional Charger System and Method"
Source basis and scope caveat
The following is drawn from the USPTO/Google Patents full text of US 6,936,936 (https://patents.google.com/patent/US6936936/en), cross-checked against Justia (https://patents.justia.com/patent/6936936), uspto.report (https://uspto.report/patent/grant/6936936), and PTAB/docket records. I interpret the number 6936936 / 6,936,936 literally and found no results for any other number.
Bibliographic data
| Field | Value |
|---|---|
| Title | Multifunctional Charger System and Method |
| Patent number | US 6,936,936 B2 |
| Application no. | 10/087,629 |
| Filing date | March 1, 2002 |
| Issue (grant) date | August 30, 2005 |
| Priority | March 1, 2001 (provisional 60/273,021); also provisional 60/330,486 filed October 23, 2001 |
| Inventors | Daniel M. Fischer (Waterloo, CA); Dan G. Radut (Waterloo, CA); Michael F. Habicher (Cambridge, CA); Quang A. Luong (Kitchener, CA); Jonathan T. Malton (Kitchener, CA) |
| Original assignee | Research In Motion Limited (BlackBerry), Waterloo, Ontario, CA |
| Current assignee (per Google Patents) | Fundamental Innovation Systems International LLC (assignment recorded Dec. 17, 2015, via change of name from RIM → BlackBerry Limited in 2013) |
| Status | Expired – Lifetime; adjusted expiration June 8, 2023 |
| Claim count | 104 claims |
Note on assignee: the patent face lists Research In Motion Limited, but the current recorded owner is Fundamental Innovation Systems International LLC. Both are accurate for their respective points in time.
Abstract (verbatim)
"An adapter for providing a source of power to a mobile device through an industry standard port is provided. In accordance with one aspect of the invention, the adapter comprises a plug unit, a power converter, a primary connector, and an identification subsystem. The plug unit is operative to coupled the adapter to a power socket and operative to receive energy from the power socket. The power converter is electrically coupled to the plug unit and is operable to regulate the received energy from the power socket and to output a power requirement to the mobile device. The primary connector is electrically coupled to the power converter and is operative to couple to the mobile device and to deliver the outputted power requirement to the mobile device. The identification subsystem is electrically coupled to the primary connector and is operative to provide an identification signal."
Core technical idea (plain language)
The patent solves the problem that USB devices normally must wait for enumeration by a USB host before they may draw more than minimal current. The inventors describe a USB wall/car charger adapter that:
- Plugs into an ordinary power socket (AC mains, car socket, airplane socket, via optional interchangeable plug adapters);
- Converts that energy to USB-compatible power;
- Delivers it through a standard primary USB connector to the mobile device's Vbus/Gnd pins; and
- Uses an identification subsystem to signal the mobile device (e.g., logic high on both D+ and D−, or a hardwired voltage, a USB controller, or a switched connection) that the source is not a USB-limited host/hub.
On seeing that identification signal, the mobile device can skip enumeration/charge negotiation and draw power immediately at a higher rate (the spec gives 5 unit loads ≈ 500 mA as an example). Optional features include an auxiliary USB connector (data pass-through and/or additional power out), an external battery receptacle for charging a spare battery, and integration into a USB hub or host.
Independent claims — plain-language overview
The 104 claims group into several families of independents, distinguished mainly by how the identification subsystem is implemented and whether an auxiliary connector/system context is present.
Adapter claims (apparatus):
- Claim 1 — A USB adapter with: plug unit (receives socket energy), power converter (regulates/outputs a "power requirement"), primary USB connector (connects to and powers the mobile device), and an identification subsystem providing an identification signal on the data line(s). The signal is a voltage level applied to at least one data line, specifically logic high on D+ and logic high on D−.
- Claim 13 — Same adapter architecture, but the identification subsystem is a hard-wired connection of a voltage level to one or more data lines.
- Claim 25 — Same architecture, but the identification subsystem is a USB controller that provides a voltage level to one or more data lines.
- Claim 37 — Same architecture, but the identification subsystem includes a switch that electrically couples the converter's power output to the primary USB connector (claims 38–39 add disconnecting/reconnecting the output — the periodic on/off charging workaround for devices that don't recognize the adapter).
- Claim 59 — The claim-1-style adapter plus an auxiliary USB connector whose data lines couple to the primary connector's data lines; identification subsystem is a hard-wired voltage connection.
- Claim 65 — Auxiliary-connector adapter; identification signal comprises logic high on D+ and D−.
- Claim 74 — Auxiliary-connector adapter; identification subsystem is a USB controller.
- Claim 78 — Auxiliary-connector adapter; identification subsystem includes a switch to couple the converter output to the primary connector.
- Claim 84 — The basic adapter (no auxiliary connector recited) where the identification signal comprises logic high on D+ and D−. (Claims 85–94 depend from it.)
Method claims:
- Claim 51 — Method of powering a mobile device with such a USB adapter (identification subsystem = hard-wired voltage connection): couple connector to device, couple plug to socket, output power, and provide an identification signal informing the device that the adapter is not limited by USB-spec power limits.
- Claim 55 — Same method steps, but identification subsystem = USB controller.
- Claim 70 — Same method steps, with the identification signal being logic high on D+ and D−.
- Claim 95 — Method where the identification subsystem includes a switch that couples the converter output to the primary USB connector.
System claims:
- Claim 63 — A powering system: a power distribution subsystem inside the mobile device (receives/distributes energy via the USB connector), plus a USB adapter (plug unit, power converter, identification subsystem) that transmits an identification signal identifying itself as not USB-limited; the signal is logic high on D+ and D−.
- Claim 99 / 101 / 103 — Additional "powering system for a mobile device having a USB connector" claims. ⚠️ Uncertainty: the authoritative full text I retrieved is truncated after claim 91, so I have only fragmentary text for claims 99–104 (from uspto.report). Claims 99 and 103 appear to be substantial system claims and claims 100/102 add a charging subsystem for directly charging a rechargeable battery at a battery receptacle. I cannot state their exact complete wording with high confidence.
Dependent-claim themes (recurring across families): direct-coupling socket types (North American, UK, European, Australian, airplane, automobile); detachable plug adapters; auxiliary USB connector and its data-line coupling via (or bypassing) the identification subsystem; power output to the auxiliary connector; integration with a USB hub/host; external battery receptacle + battery charging subsystem (claims 11, 23, 27, 49, 61, 64, 68, 76, 82, 93, 100, 102); and converter component alternatives (switching converter, transformer, DC source, voltage regulator, linear regulator, rectifier).
PTAB and U.S. litigation history found
PTAB (IPR):
- IPR2021-00410 — TCT Mobile (US), Inc.; TCT Mobile (US) Holdings, Inc.; Huizhou TCL Mobile Communication Co. Ltd.; TCL Communication, Inc. v. Fundamental Innovation Systems International LLC, challenging claims 1–3, 6, 12–18, 25, 26, 28–29, 32, 63, 84–86, 99, and 101 over Morita + POSITA knowledge. Institution DENIED (July 2, 2021); request for rehearing denied August 2, 2021; post-institution fees refunded September 30, 2021. Status: "Not Instituted – Merits." (Petition: https://www.docketalarm.com/cases/PTAB/IPR2021-00410/ ; institution decision summary at https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2021-00410)
- IPR2018-00605, IPR2018-00606, IPR2018-00607 — listed on the Google Patents "Family has litigation" record for this patent as filed and terminated by Settlement (petitioner identified as Unified Patents).
District court matters (per Google Patents litigation panel and related reporting):
- D. Del. 1:21-cv-00339 (plus 1:20-cv-00550, -00551, -00552), E.D. Tex. 2:17-cv-00145, 2:19-cv-00048, 2:20-cv-00116, -00118, 2:21-cv-00281, -00282, N.D. Cal. 3:19-cv-00638, 3:19-cv-03144.
- Notably, on March 5, 2021, Fundamental Innovation sued Anker HK and Fantasia USA (as affiliates of Anker Innovations) in the District of Delaware asserting US 7,239,111, US 8,624,550, US 7,453,233, and US 6,936,936 over charging products; reporting indicates the patents have since expired and the parties have been negotiating settlement (http://www2.iprdaily.cn/news_38407.html).
CAFC 2026 docket — result of the search
I found no Federal Circuit docket in 2026 (or any year) involving US 6,936,936. Targeted queries for "6936936" + Federal Circuit/2026 returned either empty results or unrelated 2026 Fed. Cir. matters (e.g., Spero v. Mercedes-Benz, Contour IP Holding v. GoPro, ironSource v. Digital Turbine) that do not involve this patent.
Stated uncertainty: It is possible an appeal exists that is not surfaced by these searches. However, this result is consistent with the record: the only IPR reaching a merits decision on this patent was denied institution in IPR2021-00410, and a denial of institution does not produce a final written decision from which a party may appeal under 35 U.S.C. § 1295(a)(4)(A). The 2018 IPRs settled. Combined with the patent's expiration on June 8, 2023, a pending 2026 Federal Circuit appeal on this specific patent is unlikely — but I cannot rule it out with certainty, and I did not locate an authoritative CAFC docket confirming one.
Key uncertainty flags
- Full text of claims 92–104 is not available in the retrieved authoritative copy (truncated at claim 91); the characterization of claims 99–103 is inferred from secondary fragments only.
- Federal Circuit 2026 involvement: none found — stated as a negative search result, not a guarantee of non-existence.
- The abstract contains a typo ("operative to coupled the adapter") in the granted text; I have quoted it verbatim rather than corrected it.
- Assignee depends on the date: original grantee Research In Motion Limited; current owner per Google Patents Fundamental Innovation Systems International LLC.
Generated 9/30/2026, 10:32:09 AM
Cases on file (8)
Group view →Specific litigation cases in our database that name US patent 6936936. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Fundamental Innovation Systems International LLC v. Anker HK et al.filed Mar 5, 20211:21-cv-00339U.S. District Court, D. Del.pending
Defendants: Anker HK, Fantasia USA
- IPR2021-00410USPTO Patent Trial and Appeal Boardterminated Jul 2, 2021institution denied
Defendants: Fundamental Innovation Systems International LLC
- 2:20-cv-00116E.D. Tex.
Defendants: Aukey Technology Co., Ltd.
- Fundamental Innovation Systems International LLC v. Belkin Inc. et al.filed Apr 23, 20201:20-cv-00550U.S. District Court for the District of Delawaresettled
Defendants: Belkin Inc., Belkin International, Inc.
- Fundamental Innovation Systems International LLC v. Apple, Inc.filed Feb 11, 20192:19-cv-00048; 3:19-cv-03144E.D. Tex.; transferred to N.D. Cal.terminated Oct 31, 2019dismissed
Defendants: Apple, Inc.
- Samsung Electronics Co., Ltd. et al. v. Fundamental Innovation Systems International LLCfiled Feb 9, 2018IPR2018-00605USPTO Patent Trial and Appeal Boardterminated Jul 16, 2018terminated
Defendants: Fundamental Innovation Systems International LLC
- Fundamental Innovation Systems International LLC v. Samsung Electronics Co., Ltd. et al.filed Feb 21, 20172:17-cv-00145U.S. District Court, E.D. Tex. (Marshall)settled
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
- 3:19-cv-00638U.S. District Court, N.D. Cal.unknown
Defendants: Fundamental Innovation Systems International LLC
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 6936936 across patent litigation databases.
I found several leads. Let me search for the specific case numbers and parties identified.
Litigation involving U.S. Patent No. 6,936,936
Bottom line: Yes — the '936 patent ("Multifunctional Charger System and Method," originally Research In Motion / BlackBerry, now owned by Fundamental Innovation Systems International LLC ("FISI")) has been asserted extensively. FISI is the plaintiff in every identified district-court action, and the patent was also the subject of several PTAB proceedings. No Federal Circuit appeal specifically directed to the '936 patent was identified.
Legal status of the patent: Expired – Lifetime (adjusted expiration June 8, 2023), per the Google Patents record. Source: https://patents.google.com/patent/[US6936936](/patent/US6936936)/en
District Court Cases (confirmed as asserting the '936 patent)
| # | Plaintiff(s) | Defendant(s) | Jurisdiction / Case No. | Filing Date | Outcome / Status |
|---|---|---|---|---|---|
| 1 | Fundamental Innovation Systems International LLC | Samsung Electronics Co., Ltd.; [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) | U.S. District Court, E.D. Tex. (Marshall) — 2:17-cv-00145 (a/k/a 2:17-cv-145-JRG-RSP) | Feb. 21, 2017 | Claim construction proceeded before Judge J. Rodney Gilstrap; the '936 patent was among the patents-in-suit. Reported to have resolved via license/settlement (FISI reportedly licensed Samsung, Huawei and LG in 2018). Docket reflects activity into 2019. |
| 2 | Fundamental Innovation Systems International LLC | Apple Inc. | U.S. District Court, E.D. Tex. — 2:19-cv-00048 | Feb. 11, 2019 | Asserted five patents: 6,936,936; 7,239,111; 7,834,586; 8,232,766; 8,624,550. Status not fully verifiable from the sources located; no public final judgment identified. |
| 3 | Apple Inc. (declaratory judgment) | Fundamental Innovation Systems International LLC | U.S. District Court, N.D. Cal. — 3:19-cv-00638 | Feb. 2019 | Apple's preemptive DJ action of non-infringement (arguing use of its proprietary Lightning signaling). Related to the E.D. Tex. action at #2. |
| 4 | Fundamental Innovation Systems International, LLC | Aukey Technology Co., Ltd. | U.S. District Court, E.D. Tex. (Marshall) — 2:20-cv-00116 | Apr. 23, 2020 | Docket flags CLOSED; patents asserted: 6,936,936; 7,239,111; 8,330,422; 8,624,550. |
| 5 | Fundamental Innovation Systems International LLC | Anker (Anker HK / Fantasia USA) | U.S. District Court, D. Del. — 1:21-cv-00339 / 1:21-cv-00340 (exact mapping to defendants not independently confirmed) | Mar. 5, 2021 | Reported as still pending, with the parties in settlement discussions; all asserted patents (7,239,111; 8,624,550; 7,453,233; 6,936,936) had expired. |
Sources: Docket Alarm (2:20-cv-00116); vlex case report for Fundamental Innovation Sys. Int'l LLC v. Samsung Elecs. Co., 2:17-cv-145-JRG-RSP; reporting on FISI's Apple suit (patents listed as 6,936,936 / 7,239,111 / 7,834,586 / 8,232,766 / 8,624,550); IPRDAILY report on the Anker/Fantasia Delaware action.
Additional filings listed on the '936 patent's litigation-family record (parties not independently verified)
The Google Patents record for US 6,936,936 lists the following additional cases in the patent family, but the party identities could not be matched with confidence from the sources retrieved: E.D. Tex. 2:20-cv-00118, E.D. Tex. 2:21-cv-00281, E.D. Tex. 2:21-cv-00282; D. Del. 1:20-cv-00550, 1:20-cv-00551, 1:20-cv-00552; N.D. Cal. 3:19-cv-03144. I am flagging these rather than assigning defendants, because the family listing does not by itself confirm that the '936 patent (as opposed to a sibling patent in the same family) was asserted in each. Source: https://patents.google.com/patent/US6936936/en (Litigation section).
PTAB Proceedings (specifically on the '936 patent)
| Proceeding | Petitioner | Patent Owner | Filed | Outcome |
|---|---|---|---|---|
| IPR2018-00605, IPR2018-00606, IPR2018-00607 | Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc. | Fundamental Innovation Systems International LLC | Feb. 9, 2018 | Terminated (July 16, 2018) — terminated before institution (docket reflects settlement). |
| IPR2021-00410 | TCT Mobile (US), Inc. et al. | Fundamental Innovation Systems International LLC | Jan. 11, 2021 | Institution Denied (decision July 2, 2021). |
Sources: Docket Alarm (IPR2018-00606 track docket); USPTO PTAB Petition documents for IPR2021-00410 (identifying U.S. Patent 6,936,936 and listing the Samsung IPRs as related); GreyB/IPVerse case detail for IPR2021-00410.
Federal Circuit
No CAFC appeal specifically directed to the '936 patent was identified in the sources searched. (Related appeals existed for sibling patents, but those involved different patent numbers and are therefore excluded here per your instruction.)
Important caveats
- I was able to confirm the '936 patent specifically for cases #1–#5 and the two PTAB matters; several other family-record entries could not be confirmed as '936 assertions and are presented as unverified leads only.
- Outcome/status fields for #2 (Apple) and #5 (Anker) are the least well-documented in the public sources retrieved; I did not find a final judgment or termination document for those. Treat those statuses as provisional.
- Case-number formatting follows the sources literally (e.g., 2:17-cv-00145 vs. 2:17-cv-145). Note that the trial-level dockets often drop leading zeros; I have not auto-corrected or merged any identifiers.
- I did not have direct PACER or CAFC docket access in this session; where a primary docket was unavailable I relied on litigation trackers (Docket Alarm, Unified Patents portal, Patexia, IPVerse/GreyB) and secondary reporting, which can lag or contain errors.
If you need, I can attempt to verify the unconfirmed family-record case numbers and the outcomes for the Apple and Anker matters against PACER/Unified Patents directly.
Generated 9/30/2026, 10:32:32 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Fundamental Innovation Systems International LLC
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by pulling together what the structured block says and then search for the PTAB proceedings that the Google Patents litigation metadata references (IPR2018-00605/606/607 and IPR2021-00410).
Let me pull the details on the 2018 proceedings (605/607 petitioners) and confirm the 2021 denial specifics.
PTAB proceedings overview
Flag before anything else: the structured "PTAB proceedings on file" block (USPTO ODP) returns zero AIA trial proceedings for US 6,936,936 as of the most recent ingest — but that is a data gap, not the truth. Google Patents' own litigation metadata for this patent (fetched with the patent text above) lists four PTAB cases, and third‑party PTAB dockets confirm them. Treat the ODP "no proceedings" result as an indexing lag/harvest miss, and correct it with the record below.
Bottom line: four AIA petitions were filed against the '936 patent — IPR2018‑00605, IPR2018‑00606, IPR2018‑00607 (all Samsung, filed 2018‑02‑09, all terminated before institution per settlement) and IPR2021‑00410 (TCT Mobile / TCL, filed 2021‑01‑11, institution denied on the merits 2021‑07‑02, rehearing denied 2021‑08‑02). No Final Written Decision has ever issued on this patent; no claim has been canceled and no claim has been sustained at the Board. The patent is therefore untested at the PTAB, not "hardened" — the single merits ruling that exists went for the Patent Owner, which is a real headwind for a defendant, but there is no estoppel and no claim‑level adjudication to lean on.
IPR2021-00410 — TCT Mobile (US), Inc., et al. v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2021-01-11
- Status: Institution Denied (Google Patents: "Not Instituted - Merits"); rehearing denied; case closed with a fee refund in 2021
- Judge panel: Arthur Peslak, Jo‑Anne Kokoski, Miriam Quinn (PTAB docket, IPR2021‑00410)
- Petition grounds: § 103 obviousness over Morita as the primary reference (with the "SE1" signal condition / pull‑up resistor implementation relied on as the identification signal), challenging claims 1–3, 6, 12–18, 25, 26, 28–29, 32, 63, 84–86, 99, and 101. Real parties‑in‑interest: TCT Mobile (US), Inc.; TCT Mobile (US) Holdings, Inc.; Huizhou TCL Mobile Communication Co.; TCL Communication, Inc. Petition filed with Orrick; timely under § 315(b) (district‑court complaint served 2020‑04‑23 on FISI v. TCT Mobile, No. 1:20‑cv‑00552 (D. Del.)).
- Institution decision: Denied 2021‑07‑02. The panel found the Petition failed to show a reasonable likelihood of prevailing. On the merits: Petitioner's theory that Morita's adapter could operate as a "charger‑only" device (so that an SE1 identification signal would be useful) was contradicted by Morita's own disclosure, which describes the mobile device charging while functioning as USB host with peripherals attached — "[t]he mobile phone always accesses the external device while receiving the supply of power from the charger." Because injecting the SE1 signal would kill USB communication, Petitioner's combination "requires using a device contrary to the intended purpose of that device," citing In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001). (Institution decision)
- Final Written Decision: none — never instituted.
- Settlement / termination: no settlement; denial + denial of rehearing. Petitioner requested a refund 2021‑09‑24; refund approved 2021‑10‑01.
- Rehearing: Requested 2021‑07‑13; denied 2021‑08‑02 ("We are not persuaded that Petitioner has shown that we misapprehended or overlooked the matters raised in the Request for Rehearing."). (Rehearing decision)
- Appeal: none found. A denial of institution is not appealable under § 314(d) in the ordinary case, and I found no Director Review request and no Federal Circuit docket for this proceeding.
- Defensive value: This is the only merits ruling ever issued on the '936 patent, and it favors the Patent Owner. A defendant re‑running the Morita/"charger‑only" obviousness theory faces a documented, reasoned rejection — and the Board's rationale (you can't combine art in a way that defeats the reference's intended purpose) will be quoted back at you. Conversely, because institution was denied, no § 315(e)(2) estoppel attaches to TCT/TCL, so this ruling binds nobody but is persuasive only.
IPR2018-00605 — Samsung Electronics Co., Ltd. and [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2018-02-09
- Status: Terminated before institution (Google Patents: "Settlement")
- Judge panel: not substantively constituted — the case ended pre‑institution, so no merits panel is publicly designated.
- Petition grounds: § 102/§ 103 challenge to the '936 patent. The 00605 record's exhibit list is the clearest window into the Samsung art set: Theobald (US 5,925,942), Dougherty (US 7,360,004), Shiga (US 6,625,738), Kfoury (US 6,049,192), Helot (US 6,160,378), plus the USB Specification Rev. 1.1 (1998) and Rev. 2.0 (2000), and the Geier declaration — with the file history of the '936 patent. (Treat the specific claim mapping as unverified; no institution decision was ever written, so there is no Board‑sanctioned ground list.)
- Institution decision: none. Accorded filing date 2018‑03‑14; Patent Owner Preliminary Response filed 2018‑06‑14.
- Final Written Decision: none.
- Settlement / termination: Patent Owner sued Samsung on the '936 patent in FISI v. Samsung, No. 2:17‑cv‑00145 (E.D. Tex.). The parties entered a settlement agreement on 2018‑07‑06 (Ex. 2015, confidential) agreeing to dismiss the district‑court action with prejudice and to terminate this IPR. Joint Motion for Termination filed 2018‑07‑12 (35 U.S.C. § 317(a)); Board terminated 2018‑07‑16. Terms are confidential. (Joint Motion for Termination)
- Appeal: none — nothing appealable.
- Defensive value: Zero precedential value. It does tell you FISI litigates and settles early (Samsung took a license), and it tells you the entire IPR‑as‑leverage playbook for this patent has historically resolved at the license table, not the Board.
IPR2018-00606 — Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2018-02-09
- Status: Terminated before institution (Google Patents: "Settlement")
- Judge panel: docket lists Christopher L. Ogden, Rae Lynn P. Guest, Bryan F. Moore, Jon B. Tornquist, Jacqueline T. Harlow, and Paul J. Korniczky; no FWD was written, so any "judge writing the final decision" field attached to this case is a commercial‑database artifact, not a real merits authorship.
- Petition grounds: challenge to claims 13, 14, 15, 18, 19, 21, 22, 24, 51–58, and 70–73 (as reported in the case's claim listing). Statutory basis per the Petition; no Board ground designation exists because no institution decision issued.
- Institution decision: none. Filing date accorded 2018‑03‑14; POPR 2018‑06‑14.
- Final Written Decision: none.
- Settlement / termination: same Samsung global settlement (2018‑07‑06), same joint motion (2018‑07‑12), termination 2018‑07‑16. Confidential. (IPR2018‑00606 docket)
- Appeal: none.
- Defensive value: Same as 00605. Note the claim set is the method claims (51–58, 70–73) and various dependent claims — i.e., Samsung was positioning to strip the dependent‑claim fallback positions, then settled before the Board could rule.
IPR2018-00607 — Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2018-02-09
- Status: Terminated before institution (Google Patents: "Settlement")
- Judge panel: none designated (pre‑institution termination).
- Petition grounds: The third parallel Samsung petition on the '936 patent. FISI's own mandatory notices and the IPR2021‑00410 petition describe 2018‑00605, ‑00606, and ‑00607 collectively as "filed on February 9, 2018" and "terminated before an institution decision." I could not retrieve a per‑claim mapping for 00607 specifically, and no institution decision exists to supply one — I am not going to invent it.
- Institution decision: none.
- Final Written Decision: none.
- Settlement / termination: same Samsung settlement (2018‑07‑06); joint motion 2018‑07‑12; terminated 2018‑07‑16. Confidential.
- Appeal: none.
- Defensive value: Same — no estoppel, no adjudication. The three‑petition footprint shows a well‑funded defendant spread a full merits attack across claim families and still chose settlement.
Strategic summary
Claim status. There is no claim‑level PTAB adjudication of the '936 patent. Claims 1–3, 6, 12–18, 25, 26, 28–29, 32, 63, 84–86, 99, and 101 were challenged in IPR2021‑00410 and the challenge was denied institution; claims 13–24 and 51–58, 70–73 were among the claims challenged by Samsung in IPR2018‑00606, which died pre‑institution. Nothing is CANCELED. Nothing is SUSTAINED by a FWD. Effectively all 104 claims are UNTESTED at the Board. The only merits reasoning on record is the 2021 panel's conclusion that the Morita‑based obviousness theory fails because it would defeat Morita's intended purpose.
Estoppel landscape. § 315(e)(2) estoppel requires an instituted IPR that reaches a final written decision. Neither condition is met in any of the four proceedings, so no petitioner — Samsung or TCT/TCL — is estopped, and neither are their privies. For a defendant today being asserted against, that cuts both ways: FISI cannot point to an estoppel to shut down your invalidity case, and you cannot free‑ride on a prior petitioner's work product in a way that binds anyone. Practically, the Morita/SE1 ground is the ground that has already been tried and rejected — it is available to you but carries a documented adverse ruling you must distinguish (e.g., a different primary reference, a different secondary teaching, or a claim set the 2021 panel did not reach because institution was denied on the threshold claim). The Samsung art set (Theobald, Dougherty, Shiga, Kfoury, Helot, USB 1.1/2.0 specs) was never adjudicated and is unencumbered by any Board finding.
Pattern signals. Three IPRs in one day by one petitioner (Samsung, 2018) followed by an early global settlement and dismissal with prejudice of the parallel E.D. Tex. case, plus a later single IPR by TCT/TCL (2021) that lost on the merits and was not appealed. No defensive aggregator (Unified Patents or similar) appears anywhere in the '936 record — the Google Patents "Petitioner" fields are blank and the four petitions trace to operating companies (Samsung; TCL). FISI acquired the portfolio from BlackBerry (assignment recorded 2015‑12‑17) and has monetized it broadly (Samsung 2017; Belkin/Lenovo/TCT/Motorola 2020; Apple 2020). Separately, note that the '936 patent is the parent of US 7,239,111, 7,834,586, 8,232,766, and 8,624,550 — those continuations were hit with their own IPRs (e.g., IPR2018‑00276 on the '111 patent), so the family, not just this patent, is the real battleground.
Recommended next steps
- Correct the record. Do not tell a client or a court that there is "no PTAB activity on this patent" based on the ODP feed. The ODP structured block returned zero AIA trials, but four public proceedings exist. Pull the PTAB E2E docket for IPR2018‑00605 / ‑00606 / ‑00607 and IPR2021‑00410 from PTAB E2E and rely on that as the authoritative list; use the mirrors cited above only as a convenience.
- Do not represent a claim as canceled. Nothing was invalidated. Quote the denial, not a verdict: "[B]ased on the present record, we do not find persuasive Petitioner's contention that Morita would operate in a 'charger‑only' configuration…" (IPR2021‑00410, Decision, 2021‑07‑02). The patent expired (adjusted expiration 2023‑06‑08), which is itself a key damages‑window fact to run alongside any infringement theory.
- If you are the defendant and FISI is asserting the '936 patent, your realistic invalidity lanes are: (a) the un‑adjudicated Samsung art (Theobald / Dougherty / Shiga / Kfoury / Helot + USB specs), and (b) a materially better Morita theory — and you should not assume an IPR is even economical given expiry. If a live demand letter cites claim 1 or the '63 system claim, treat them as live but never Board‑tested; there is no FWD to cite for or against you.
- Check the continuations before you budget a defense. The '111, '586, '766, and '550 patents (all continuations of the '936 disclosure) carried their own IPR activity. The estate‑level picture — not just '936 — determines FISI's leverage, and it may be the continuations, not '936, that drive any current assertion.
- No appeal watching required. No FWD was appealed to the Federal Circuit on this patent, and the 2021 institution denial found no appellate path.
Caveat: the specific judge panels, exhibit lists, and claim mappings above come from third‑party PTAB docket mirrors (Docket Alarm / Patexia / Google Patents litigation metadata) because the official ODP feed is silent and no institution decision exists for the three 2018 proceedings. The IPR2021‑00410 panel composition, filing date, challenged‑claim list, denial, and rehearing denial are corroborated across multiple sources; the 2018 proceedings' internal details should be re‑verified against PTAB E2E before being cited in any filing.
Generated 9/30/2026, 10:32:51 AM
Ownership chain (4)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2002-07-29 · recorded 2002-08-05 · Assignment
Daniel M. Fischer; Michael F. Habicher; Quang A. Luong; Jonathan T. Malton; Dan G. RadutResearch In Motion Limited
employment assignment
2013-11-03 · Change of Name
Research In Motion LimitedBlackBerry Limited
change of name only
? · recorded 2015-12-17 · Assignment
BlackBerry LimitedFundamental Innovation Systems International LLC
transfer-to-asserter
2016-12-01 · Assignment
BlackBerry LimitedFundamental Innovation Systems International LLC
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for this patent, focusing on the ownership chain and any NPE patterns.
Let me dig for the specific reel/frame and correspondent details.
Let me look for the actual USPTO assignment records (reel/frame and correspondent).
Assignment Record Reconstruction — US Patent 6,936,936
Source and access caveat (read first). I was able to corroborate the ownership chain from Google Patents legal events, RPX Insight, IAM/Mondaq, and the District of Delaware opinion in Fundamental Innovation v. Lenovo (C.A. No. 20-551-RGA-CJB, Apr. 7, 2022). I was not able to directly pull the USPTO Assignment Center reels/frames or the recorded correspondent name for this patent within this session. Specific reel/frame numbers and the recording correspondent are therefore marked "not retrieved" rather than fabricated. Verify by searching patent number 6936936 at https://assignmentcenter.uspto.gov/ or https://assignment.uspto.gov/patent/index.html.
Inventors
| Inventor | Home city at filing | Employer at filing |
|---|---|---|
| Daniel M. Fischer | Waterloo, Ontario, CA | Research In Motion Limited |
| Dan G. Radut | Waterloo, Ontario, CA | Research In Motion Limited |
| Michael F. Habicher | Cambridge, Ontario, CA | Research In Motion Limited |
| Quang A. Luong | Kitchener, Ontario, CA | Research In Motion Limited |
| Jonathan T. Malton | Kitchener, Ontario, CA | Research In Motion Limited |
All five are listed as assignors on the original 2002-08-05 assignment of interest to Research In Motion Limited, all at RIM's Waterloo-region addresses — an in-house development team, not independent inventors. I found no evidence of inventors departing RIM within 12 months of filing, and no inventor holds any recorded subsequent assignment. That "inventor flight precedes fire-sale" pattern is not present here.
Original assignee
- Entity on the issued patent: Research In Motion Limited (RIM), 295 Phillip Street, Waterloo, Ontario N2L 3W8, CA.
- Business: Designer/manufacturer of the BlackBerry line of wireless handheld devices, servers, and software — the dominant smartphone maker of the pre-iPhone era. RIM shipped products embodying the claims (BlackBerry handhelds and their USB charging accessories used the USB power/adapter charging scheme described in the specification).
- Status / corporate history: Renamed BlackBerry Limited (change of name recorded 2013-11-03). Still an operating company (enterprise software / IoT / cybersecurity) but its hardware era ended; it sold this patent family in late 2015 as part of a large IP monetization transaction. BlackBerry has not filed for bankruptcy.
Assignment timeline
⚠️ Reel/frame and correspondent below are marked not retrieved for the reasons stated in the caveat. Dates and parties are corroborated by Google Patents legal events and by the D. Del. record.
2002-07-29 (execution date per Google Patents record dated 2002-08-05) / recorded 2002-08-05 — Reel/Frame not retrieved
- Conveyance: Assignment of Assignors' Interest (inventors → company)
- Assignor: Daniel M. Fischer; Michael F. Habicher; Quang A. Luong; Jonathan T. Malton; Dan G. Radut (individually)
- Assignee: Research In Motion Limited
- Correspondent: not retrieved
- Context: Original inventor-to-employer assignment — standard employment capture, not a monetization event.
2013-11-03 / recorded 2013-11-03 — Reel/Frame not retrieved
- Conveyance: Change of Name
- Assignor: Research In Motion Limited
- Assignee: BlackBerry Limited
- Correspondent: not retrieved
- Context: Internal corporate reorganization — RIM legally renamed to BlackBerry Limited; no change in beneficial ownership.
November 2015 (executed; per RPX / D. Del. record, "acquired … in November 2015") / recorded 2015-12-17 — Reel/Frame not retrieved
- Conveyance: Assignment of Assignors' Interest
- Assignor: BlackBerry Limited
- Assignee: Fundamental Innovation Systems International LLC (FISI)
- Correspondent: not retrieved
- Context: Transfer-to-asserter / privateering — part of a multi-million-dollar deal between BlackBerry and PE firm Centerbridge Partners; FISI acquired ~55–56 US assets (this patent among them) plus Australian, European, and Asian counterparts; terms not publicly disclosed.
2016-12-01 / recorded 2016-12-01 — Reel/Frame not retrieved
- Conveyance: Assignment of Assignors' Interest (second FISI recording)
- Assignor: BlackBerry Limited
- Assignee: Fundamental Innovation Systems International LLC
- Correspondent: not retrieved
- Context: Confirmatory / portfolio-completion recording of the same BlackBerry→FISI transaction. (A Korean IP-Navi litigation record independently lists this patent's "ownership transfer date" as 2016-12-01, consistent with Google Patents.) No separate arm's-length purchaser appears — the same assignee is named twice, roughly 12 months apart.
Minor cross-source discrepancy (flagged): RPX describes the transaction as "over 55 US assets," while one Mondaq/RPX account and the RPX Apple-DJ article describe the broader BlackBerry→FISI deal as "roughly 200 patent assets," with a separate figure of "158 patent assets … 56 US assets" for the FISI acquisition specifically. These counts are not fully reconciled across sources; none affects the ownership chain above.
Timeline diagram
timeline
title Ownership of US 6936936
2001 : RIM files provisional 60 273 021
2002 : Filed by Research In Motion
: Inventors assign to RIM
2005 : Issued as US 6936936
2013 : Change of name to BlackBerry Limited
2015 : BlackBerry sells to FISI
: Centerbridge-backed deal
2016 : Second FISI recording
: First suits vs Huawei and LG
2023 : Patent expired
NPE / troll-pattern signals
1. Shell-entity transfer — PRESENT.
BlackBerry Limited (operating company) moved this patent to Fundamental Innovation Systems International LLC, an entity formed in Delaware in October 2015 — one month before the asset transfer — with a "Holdings" parent (Fundamental Innovation Systems International Holdings LLC). RPX describes FISI as a licensing-only NPE with "no products in commerce," registered in Texas in November 2016. Name suffix "International LLC"/"Holdings LLC," single-purpose formation, and a PE backer are the concrete tells. (Google Patents legal event 2015-12-17; RPX Insight, Mar. 5, 2021.)
2. Known asserter in the chain — PRESENT.
FISI is a repeat high-frequency plaintiff: ~20 suits since late 2016 against Apple, Aukey, Anker/Fantasia, BBK/OnePlus, BLU, Cyber Power, Belkin/Hon Hai, Huawei, Jasco, Lenovo/Motorola, LG, Samsung, TCL/TCT, Coolpad, ZTE, and automakers (GM/Aptiv, Toyota/Denso, Hyundai). It is tracked in RPX litigation reporting. Not one of the legacy names listed (Acacia, Marathon, IV, Wi-LAN, etc.), but matches the RPX/Unified public NPE-directory category as a Centerbridge-backed assertion vehicle. Additionally, its first monetization managers were TnT IP LLC (Craig Thompson, Ozer Teitelbaum) and later IPVALUE alumni organized as JASPAR – IP Consultants — patent-monetization specialists, not operating staff.
3. Repeat correspondent across the chain — UNRESOLVED / not retrieved.
The recorded correspondent of each assignment could not be obtained from the Assignment Center in this session. No finding either way — I will not infer a repeat recorder without the reel/frame entries. This is the single most valuable field still to verify and should be pulled directly from the Assignment Center.
4. Cascading transfers — NOT PRESENT (borderline).
The chain is short: inventors → RIM → (change of name) BlackBerry → FISI → FISI (confirmatory). There are two FISI recordings within ~12 months (2015-12-17 and 2016-12-01), but to the same assignee, not through chained differently-named LLCs sharing a correspondent. No multi-LLC cascade with common principals is documented for this patent.
5. Pre-litigation transfer — PARTIAL / WEAK.
Assignment executed in November 2015, first suit (Huawei, LG) filed December 16, 2016 — roughly 12–13 months, outside the 6-month window of this criterion. So the transfer was pre-litigation but not immediately pre-litigation. It is a clean-standing/portfolio-assembly transfer rather than a last-minute venue-setup transfer. Mark as not present under the strict 6-month test.
6. Bankruptcy fire-sale — NOT PRESENT.
BlackBerry was a solvent operating company; this was a negotiated monetization sale to a Centerbridge-backed NPE, not a Chapter 7/11 disposition.
7. Privateering — PRESENT.
The strongest qualitative signal. BlackBerry sold its own R&D portfolio to FISI, which then asserted those former-BlackBerry USB charging patents against BlackBerry's competitors (Apple, Samsung, LG, Huawei, Lenovo/Motorola, ZTE, TCL, and later automakers). Reporting explicitly frames it as a PE-backed monetization campaign over "former BlackBerry patents," with BlackBerry collecting proceeds and avoiding direct litigation. This is the textbook privateering structure.
8. Defensive aggregator — NOT PRESENT.
The chain terminates at an asserting NPE (FISI), not at RPX, AST, LOT, Unified, or OIN. No neutralization signal.
Verdict
NPE — high confidence.
The chain shows an operating company (BlackBerry Limited, successor to Research In Motion Limited) transferring this patent and ~55 other US assets to Fundamental Innovation Systems International LLC, a Delaware-formed, Centerbridge-backed licensing vehicle with no products (Google Patents legal events 2015-12-17 and 2016-12-01; RPX Insight, Mar. 5, 2021). FISI then launched ~20 infringement suits against BlackBerry's own competitors beginning December 16, 2016, and is tracked in public NPE litigation reporting — satisfying both the "shell-entity / transfer-to-asserter" and "privateering" signals. Two strong signals (plus a documented PE backer and monetization consultancies) support high confidence; the only unresolved check is the recorded correspondent, which should be pulled from the Assignment Center to confirm recurrence.
Verification links: USPTO Assignment Center — search patent 6936936 at https://assignmentcenter.uspto.gov/ (mirror: https://assignment.uspto.gov/patent/index.html). Corroborating litigation/ownership reporting: https://litigation.rpxcorp.com/news/65626-two-well-heeled-npes-both-holding-large-opco-portfolios-open-up-march-with-fresh-suits and https://www.ded.uscourts.gov/sites/ded/files/opinions/20-551_0.pdf.
Generated 9/30/2026, 10:32:37 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll search for the USPTO record and the prior-art citations for this specific patent.
The searches returned mostly forward citations (patents citing '936). I need the backward citations — the references cited against '936 during prosecution. Let me target that specifically.
I found the key prosecution-history source. Let me pull the IPR2021-00410 petition and the Justia "Referenced Cited" list for '936 to get the exact examiner citations.
Prior Art for US 6,936,936 — Examiner Citations and Post-Grant Asserted References
1. Scope and source basis (and a methodology caveat)
I searched uspto.report / Google Patents / Justia records under the exact number 6,936,936 and did not rely on look-alike numbers (e.g., 6,936,935, 6,936,937). The patent is the one previously analyzed: US 6,936,936 B2, app. 10/087,629, filed 2002‑03‑01, granted 2005‑08‑30 (https://patents.google.com/patent/US6936936/en ; https://patents.justia.com/patent/6936936).
⚠️ Important limitation on this deliverable. The authoritative full text I retrieved (the Google Patents copy) does not include the printed Box (56) “References Cited” list, and my targeted searches returned the patent’s forward citations (later patents citing ’936 — e.g., US 8,943,770, 9,496,726, 8,541,983) rather than a complete backward citation list. I therefore reconstructed the prior-art of record from the two places where ’936’s citations are actually documented and testable:
- The ’936 prosecution history, as recounted in the IPR2021‑00410 expert report/petition (Exhibit‑grade discussion of the file history), and
- The institutions’ own prior art in the post-grant proceedings.
Where I could not independently verify a detail (e.g., a reference’s title or filing date), I say so rather than fill the gap.
2. The citation that actually mattered during prosecution — US 6,668,296 (Dougherty)
This is the single most important prior-art reference for ’936, and it is not mentioned in the previously generated section — that section captured the litigation/PTAB history but omitted the examiner’s § 102 rejection. I flag this as an addition, not a contradiction.
| Item | Value |
|---|---|
| Citation | US 6,668,296 (“Dougherty” / Dougherty et al.) |
| Grant date | December 23, 2003 (confirmed via Justia citation lists, e.g. https://patents.justia.com/patent/[10605418](/patent/10605418)) |
| Filing / priority date | Not confirmed from the sources retrieved (see §6). It is necessarily pre‑2002 to have been used as prior art. |
| Kind code / title | Not verifiable from the retrieved material — I am not asserting a title. |
| Role | Examiner’s primary anticipation reference |
Prosecution record (as documented in the IPR2021‑00410 petition/expert report, https://cmosedu.com/jbaker/expert_witness/2021/IPR2021_00410.pdf):
- September 7, 2004 — Examiner’s rejection: claims 1, 2, 4, 6, and 16–24 rejected as anticipated under 35 U.S.C. § 102 by Dougherty; claims 3, 5, 13–15, 25–27, and 34–36 rejected as obvious under § 103 over Dougherty. Claims 7–12 and 28–33 were objected to as depending from an independent claim but indicated as allowable if rewritten in independent form.
- December 6, 2004 — Applicant amendment: the applicant amended to incorporate the features the examiner had identified as allowable.
- January 10, 2005 — Examiner allowed the claims without comment.
Brief description of what Dougherty teaches / does not teach: Per the petition’s characterization, Dougherty discloses a USB-based charging arrangement (the plug/adapter→converter→USB connector pathway), but “Dougherty does not disclose the use of the USB data lines to provide an identification signal.” That gap is precisely what the applicant relied on to overcome the rejection.
Which claim(s) it potentially anticipates under § 102 — with a numbering caveat. The claims the examiner rejected were the pre‑amendment claims, whose numbers do not map one‑to‑one to the issued 104 claims:
| Dougherty rejection | Ground | Pre‑amendment claims |
|---|---|---|
| Anticipation | § 102 | 1, 2, 4, 6, 16–24 |
| Obviousness | § 103 | 3, 5, 13–15, 25–27, 34–36 |
After amendment, the surviving limitations were: “the identification signal comprises a logic high signal on the D+ data line and a logic high signal on the D− data line” (this became issued claim 1, and its auxiliary‑connector sibling issued claim 65, and system claim 63), and “the identification subsystem comprises a hard‑wired connection of a voltage level to one or more data lines” (issued claim 13). In other words, no issued claim stands or falls today on Dougherty alone — the D+/D− “SE1” identification signal was the point of novelty the applicant argued.
3. Prior art asserted post‑grant — IPR2021‑00410 (TCT Mobile/TCL v. Fundamental Innovation)
The previously generated section correctly recorded that IPR2021‑00410 challenged claims 1–3, 6, 12–18, 25, 26, 28–29, 32, 63, 84–86, 99, 101 and that institution was denied (July 2, 2021). Two refinements from the petition itself:
3a. “Morita” (primary reference)
- Role: the primary § 103 reference, described in the petition as “a USB adapter” in which it would have been obvious to use the USB specification’s SE1 signal as an identification signal.
- Ground: § 103 obviousness (Morita in view of the USB specification and POSITA knowledge) — not a standalone § 102 anticipation.
- Exact patent number: I could not confirm which “Morita” reference (there are several Morita‑et‑al. U.S. patents in the surrounding record — e.g., US 4,082,858; US 6,031,157; US 6,080,561) is the one designated in IPR2021‑00410. Treat this identifier as unverified.
3b. Universal Serial Bus Specification, Revision 1.1 (printed publication)
| Item | Value |
|---|---|
| Citation | Universal Serial Bus Specification, Revision 1.1, USB Implementers Forum, Inc. |
| Publication date | September 23, 1998 |
| Role | § 102(b) printed publication (published >1 year before the March 1, 2001 priority date); cited as Ex. 1008 to establish that the “SE1” condition (both D+ and D− driven logic‑high) was known |
| Claim mapping | Used as the § 103 secondary reference underpinning the Morita combination against claims 1–3, 6, 12–18, 25, 26, 28–29, 32, 63, 84–86, 99, 101 — not asserted alone as § 102 anticipation |
(The examiner initially allowed the claims because the D+/D− logic‑high identification signal distinguished over Dougherty; the petitioner’s theory was that the USB 1.1 spec already disclosed that same SE1 condition, making it obvious to combine with Morita. The Board did not institute, so none of the challenged claims were cancelled.)
3c. The three settled 2018 IPRs
The previously generated section recorded IPR2018‑00605 / ‑00606 / ‑00607 (petitioner Unified Patents) as filed and settled — consistent with the Google Patents “Family has litigation” panel. No final written decision issued, so no claims were cancelled there either.
4. Consolidated prior-art table (§ 102 focus)
| Reference | Citation | Date | Type | § 102 claim mapping (as asserted) | Outcome |
|---|---|---|---|---|---|
| Dougherty | US 6,668,296 (Dougherty et al.) | Granted Dec. 23, 2003 | U.S. patent | Anticipates pre‑am. claims 1, 2, 4, 6, 16–24; obvious (‑) pre‑am. 3, 5, 13–15, 25–27, 34–36 | Overcome by amendment (D+/D− logic‑high & hard‑wired identification limitations) |
| USB Spec. Rev. 1.1 | USB‑IF, Rev. 1.1 | Sep. 23, 1998 | Printed publication → § 102(b) | Not asserted alone; § 103 secondary | Basis of denied IPR |
| Morita | (number unverified — “USB adapter”) | Not confirmed | U.S. patent / publication | § 103 only (with USB 1.1) vs. claims 1–3, 6, 12–18, 25, 26, 28–29, 32, 63, 84–86, 99, 101 | Institution denied |
Bottom line on § 102: The only reference ever applied as anticipation to ’936’s claims was Dougherty (US 6,668,296) against the pre‑amendment claims. Every issued independent claim was obtained by adding either (a) the D+/D− logic‑high (“SE1”) identification limitation (issued claims 1, 63, 65, 70, 84…) or (b) the hard‑wired voltage connection limitation (issued claims 13, 51, 59…), and none of those issued claims was invalidated over any § 102 reference. The later Morita ground was a § 103 theory that the Board declined to institute.
5. Not prior art (do not mis-cite)
The two documents referenced in the ’936 specification are priority documents, not prior art:
- US Provisional 60/273,021 (“System and Method for Adapting a USB to Provide Power for Charging a Mobile Device”), filed Mar. 1, 2001;
- US Provisional 60/330,486 (“Multifunctional Charger System and Method”), filed Oct. 23, 2001.
6. Explicit uncertainty flags
- Complete Box (56) list not retrieved. I could not obtain the full printed “References Cited” list from the authoritative copy. The Dougherty citation is well‑documented via the prosecution history; additional examiner‑cited U.S. patent documents may exist that I could not verify, and I will not guess at them.
- Dougherty’s title and filing date are not confirmed from the sources retrieved; only the grant date (Dec. 23, 2003) and its role in the rejection are grounded.
- “Morita” numerical identity is unverified; the IPR2021‑00410 petition text is the source for its role, but I could not pin the exact patent/publication number.
- Pre‑ vs. post‑amendment claim numbers differ; the § 102 mapping above uses the examiner’s original numbering and should be read with that caveat.
- Cross-check vs. prior section: the previously generated summary stated the IPR2021‑00410 ground as “Morita + POSITA knowledge”; the petition additionally relies on the USB 1.1 specification as the printed‑publication component. This is a refinement, not a conflict. The prior section also did not mention the Dougherty § 102 rejection, which is the key missing prior-art fact for this task.
Suggested anchor URLs: https://patents.google.com/patent/US6936936/en · https://patents.justia.com/patent/6936936 · https://cmosedu.com/jbaker/expert_witness/2021/IPR2021_00410.pdf · https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2021-00410 · https://www.docketalarm.com/cases/PTAB/IPR2021-00410/
Generated 9/30/2026, 10:32:59 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the prior art actually cited on this patent's face and in the IPR record, since the page text provided did not include a reference-citation list.
Let me pin down the specific prior-art references listed on this patent's face and analyzed in the record.
Obviousness Analysis — US 6,936,936 under 35 U.S.C. § 103
0. Scope note: which "Prior Art section" this analysis uses
⚠️ Important provenance flag. The authoritative Google Patents copy of US 6,936,936 that I was given (https://patents.google.com/patent/US6936936/en) contained no "References Cited" / "Prior Art" citation table. The only prior-art content in the fetched page is the classifier/keyword field:
Prior art keywords: power; usb; adapter; mobile device; usb connector
That is a Google-generated search-keyword set, not a legal prior-art listing, and it cannot support a § 103 ground by itself. To avoid fabricating a reference list, I grounded this analysis in the prior art that is independently documented in the ’936 record:
- The prosecution history of the ’936 patent (Examiner's Sept. 7, 2004 rejection over Dougherty, US 6,668,296), as reproduced in the Petitioner's expert declaration in IPR2021-00410 (https://cmosedu.com/jbaker/expert_witness/2021/IPR2021_00410.pdf).
- The PTAB record for IPR2021-00410 (TCT Mobile v. Fundamental Innovation), including the Petition's prior-art summary (https://www.docketalarm.com/cases/PTAB/IPR2021-00410/).
- The IPR2018-00605/006/007 record on this patent (https://www.docketalarm.com/cases/PTAB/IPR2018-00606/).
- Ex parte reexamination filings against the sibling ’586 patent that re-use the same reference set against the ’936 claim constructions (https://www.cmosedu.com/jbaker/expert_witness/2021/Ex_Parte_Reexamination_90_014886.pdf).
Correction to a previously generated section: that section stated the IPR2018-00605/006/007 petitioner was "Unified Patents." The docket records I retrieved show [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.) Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) v. Fundamental Innovation Systems International LLC for IPR2018-00606. The Google Patents page actually leaves the "Petitioner:" field blank, so "Unified Patents" was not supported by either source. I flag this as a correction.
Also refining the earlier uncertainty flag: the IPR2021-00410 Petition expressly challenged claims 1–3, 6, 12–18, 25, 26, 28–29, 32, 63, 84–86, 99, and 101. That independently confirms that claims 99 (hard-wired identification subsystem) and 101 (USB-controller identification subsystem) are independent claims of the types I described, which reduces (but does not fully eliminate) the earlier uncertainty about claims 92–104.
1. Legal framework and the person of ordinary skill
- Governing law: pre-AIA § 103 (priority March 1, 2001; filed March 1, 2002; granted Aug. 30, 2005). The reexamination requests apply pre-AIA §§ 102(a)/(b) and 103.
- POSITA (adopted by the Board in this family, ZTE v. FISI, IPR2018-00111, Paper 62 at 14): a bachelor's degree in electrical engineering and 3–5 years of experience in circuit or device design, or equivalents — a person familiar with the USB 1.1 Specification (Sept. 23, 1998).
- Graham/KSR factors: scope and content of the prior art; differences between prior art and claims; level of ordinary skill; and secondary considerations. Under KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420–21 (2007), a combination is obvious where it is "the mere application of a known technique to a known device ready for improvement," or where the improvement is "the product of ordinary creativity."
The single most important fact in this analysis
The ’936 patent was allowed only after the applicant added the "identification signal on the data lines" limitations to overcome Dougherty. Per the prosecution history recited in the Baker declaration:
"On September 7, 2004, the Examiner rejected claims 1, 2, 4, 6, and 16-24 as anticipated by U.S. Patent No. 6,668,296 ('Dougherty') and claims 3, 5, 13-15, 25-27, and 34-36 as obvious over Dougherty… Dougherty does not disclose the use of the USB data lines to provide an identification signal." (IPR2021-00410 Baker Decl. § IV.B)
Consequently, every viable § 103 ground must supply the "identification signal at the USB data lines" element — specifically SE1 (logic high on both D+ and D−), the hard-wired voltage variant, the USB-controller variant, or the switch variant. Everything else in the independent claims was already before the Examiner in Dougherty.
2. Element decomposition (the "gaps" to be filled)
| Element | Where it appears in the claims | Was it before the Examiner (Dougherty)? | What is needed to fill it |
|---|---|---|---|
| E1 Plug unit → power socket (wall/car/air, plug adapters) | all indep. claims; dep. 2–5, 14–17, 28–31, 40–43, 85–88 | Yes (Dougherty's dock + 18 V supply) | — |
| E2 Power converter outputting a "power requirement" | all indep. claims; dep. 12, 24, 26, 50, 62, 69, 77, 83 | Yes (switching/linear regulators; Douherty voltage-ramp logic) | — |
| E3 Primary USB connector delivering power to the mobile device | all indep. claims | Yes (Dougherty USB connector 236; Morita USB port 21) | — |
| E4 Identification subsystem providing a signal at the data lines | 1, 63, 70, 84, 65 (SE1) | No | SE1-signaling art + rationale |
| E4′ Identification subsystem = hard-wired voltage to data line(s) | 13, 51, 59, 99 | No | SE1 art + "hard-wire is the cheapest implementation" |
| E4″ Identification subsystem = USB controller | 25, 55, 74, 101 | No (but Dougherty/Morita have USB controllers/hub logic) | USB controller art + data-line signaling art |
| E4‴ Identification subsystem = switch coupling converter output to USB connector | 37–39, 78–80, 95 | No | Any Vbus switching art (e.g., Kerai's in-line switch) |
| E5 Auxiliary USB connector, data lines coupled to primary | 7–9, 19–21, 33–35, 45–47, 59–62, 65–69, 74–77, 78–82, 89–91 | Partly (Dougherty port replication) | Hub/multi-port art |
| E6 Battery receptacle + charging subsystem in the adapter | 11, 23, 27, 49, 61, 64, 68, 76, 82, 93, 100 | No | USB charge-control art |
| E7 Method steps + "detect the identification signal" | 51–58, 70–73, 95–98 | Partly | SE1 detection art |
| E8 System: device-side power distribution subsystem + adapter | 63, 101, 103–104 | Partly | Mobile-device charging art |
3. Reference ledger (verified content only)
| Ref. | Identity | Key verified disclosure | Date status |
|---|---|---|---|
| Dougherty | US 6,668,296 B1 (HP), filed 6/30/2000, granted 12/23/2003 — "Powering a notebook across a USB interface"; continuation US 7,360,004 | Docking station supplies 18.5 V / 2.5 A over the USB power rails; handshaking protocol; "voltage ramp logic 210 couples to an 18 volt supply"; detects "no voltage on the USB power rails" in the dead-battery scenario | § 102(e)/(b) relative to the ’486 provisional |
| Morita | JP 2000-165513 A, published June 16, 2000 — "Charger" | USB hub-controllable charger: power supply cable 22 to an outlet, charging control unit 23, USB hub control unit 27, USB port 21 to the mobile videophone, USB port 20 (PC), USB ports 24 (peripherals); supplies power from the charger to ports 21 and 24 ([0016]); "the mobile phone always accesses the external device while receiving the supply of power from the charger" ([0022]) | § 102(a)/(b) |
| Kerai | US 6,531,845 B2, GB priority 5/26/2000, filed 5/25/2001 — "Battery Charging" | Mobile device with USB interface (22) and charging circuit 19/charging control circuit 19 that draws power from the Vbus conductor 27 to charge battery 15; switch 28 in series with diode 100 between Vbus and the charger jack path (col. 3:37–41); discloses SE1 detection (5:49–53) | § 102(a)/(b) via GB priority |
| Shiga | US 6,625,738 | Describes a "fourth mode" of the USB data lines = SE1; SE1 detection circuitry (5:60–62, 6:35–48, Abstract) | § 102(b) |
| Zyskowski | US 2003/0135766 A1 | "When the host 104 is in a full power state, data lines D1 and D2 may be raised to a predefined DC voltage level, for example, 5 volts"; "device 106 may detect the power state of host 104 by detecting the presence or absence of the predefined DC voltage level on the data paths" | ⚠️ date-sensitive — see § 7 |
| Casebolt | US 6,625,790 | USB↔PS/2 interface adapter; the peripheral distinguishes between interface types via data-line states; SE1 detection (6:6–16, 7:40–54) | § 102(b)-era |
| Gilbert | US 6,357,011 | Power-extension peripheral that overcomes the 2.5 W USB bus limit; monitors data on the bus to divert power to a battery or to the downstream peripheral (2:47–59, 3:51–4:12) | § 102(b) |
| De Iuliis | US 7,766,698 | Power adapter for powering/charging a peripheral "through a data transmission line" that may be "a universal serial bus (USB) or a FIREWIRE IEEE 1394 interface" (2:34–37, 4:40–65) | ⚠️ post-2001 filing; only usable as § 102(e) art if its effective filing predates |
| USB 1.1 Spec. | USB Implementers Forum, Sept. 23, 1998 | Unit load = 100 mA; low-power device max 100 mA; high-power device max 500 mA; high-power port ≥ 500 mA; "All devices default to low-power"; the four DC states of D+/D−, with pull-up on D+ = full-speed and on D− = low-speed (§ 7.1.5); SE1 (both high) is an illegal/abnormal state | § 102(a)/(b) |
| Cypress enCoReUSB datasheet | — | SE1 state detection in a USB controller | § 102(b) |
Note on Theobald (cited by the Petitioner for the ">500 mA" point) and Matsumoto (US 6,904,488) / Yang (CN2410806Y): these appear in the record only as secondary or alternative references. I did not retrieve verified text for Theobald's content and therefore do not rely on it below.
4. Proposed grounds of obviousness
Ground 1 (primary): Morita + Kerai (or Shiga / Zyskowski) + USB 1.1 knowledge → claims 1, 63, 65, 70, 84
This is the ground the Petitioner actually ran in IPR2021-00410 (Pet., 32–47), and it is the strongest structural fit.
Claim-chart logic:
| Limitation | Disclosure |
|---|---|
| Plug unit → power socket | Morita, power supply cable 22 connected to "an outlet or the like connected to a commercial power supply" ([0016]) |
| Power converter regulating received energy, outputting a "power requirement" | Morita charging control unit 23; Fernald's annotated Morita Fig. 1 shows the power regulator feeding hub controller 27 and ports 21/24 |
| Primary USB connector delivering power to the mobile device | Morita USB port 21 → mobile videophone 100 |
| Identification subsystem providing an identification signal at the data lines, comprising logic high on D+ and logic high on D− (SE1) | Not in Morita → supplied by Kerai/Shiga/Zyskowski, which teach that the data lines carry state information and that a device may detect those states; SE1 is the only remaining DC state when no host is present |
| Method steps + detection | Zyskowski: "device 106 may detect the power state of host 104 by detecting the presence or absence of the predefined DC voltage level on the data paths D1 and D2"; Kerai/Shiga/Casebolt likewise |
Motivation to combine (KSR-recognized rationales):
- Known technique applied to a known device. Using USB data-line states to convey information to a downstream device already existed in USB 1.1 § 7.1.5 (pull-up on D+ = full-speed, on D− = low-speed) and in Kerai/Shiga/Zyskowski/Casebolt/Cypress. Applying that known signaling technique to Morita's known USB hub-charger is "the mere application of a known technique to a known device ready for improvement." KSR, 550 U.S. at 417.
- Predictable result / explicit performance incentive. USB 1.1 § 7.2.1 states a high-power hub port ≥ 500 mA while "All devices default to low-power" (100 mA). A POSITA who wants the charger to deliver 500 mA instead of the 100 mA default has a concrete, predictable reason to affirmatively identify the source as a high-power, non-USB-limited port.
- Exhaustion of alternatives. With a mobile device attached and no host/hub coupled to the adapter, the normal low-speed state (D+ low/D− high) and full-speed state (D+ high/D− low) are unavailable and both-low is excluded by the presence of the device — leaving both-high (SE1) as the only remaining state to repurpose. That is KSR "ordinary creativity," not hindsight.
- Morita itself supplies the structural hook. Morita's USB hub control unit 27 already sits between port 21 and ports 24 and already manages "transmission and branching of signaling"; implementing a data-line identification output from the hub controller is a design choice within the existing architecture.
- Faster charging is the claimed rationale, and it is a normal design objective (KSR: "a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions").
Why this ground is vulnerable — see § 6.
Ground 2: Dougherty + Shiga (+ USB 1.1) → claims 1, 25, 63, 84 and their dependents
This is the ground the Examiner essentially ran in 2004, and its evidentiary base is the strongest of any ground because Dougherty was examined against these very claims.
- Dougherty supplies E1, E2, E3 in a form already accepted as anticipating then-pending claims 1, 2, 4, 6 and 16–24 (see § 1). Dougherty also discloses the functional core of the invention: supplying power over the USB power rails without regard to the USB power limits (18.5 V / 2.5 A vs. the 500 mA device limit), with a handshaking/voltage-ramp protocol and a dead-battery detection flow.
- Dougherty also anticipates the switch claims (37–39, 78–80): its "voltage ramp logic 210" is commanded to ramp power up onto power rail 244 and to detect/withdraw it — i.e., an identification circuit that connects and disconnects the converter output from the USB connector.
- Shiga supplies SE1 as a recognized, detectable data-line mode.
- Motivation: both Dougherty and the ’936 patent address the same problem — a mobile/portable device that must be powered or charged without a separate power brick and without relying on a host's power budget. A POSITA seeking to simplify Dougherty's multi-step handshaking (the Petitioner's stated motivation) would look to the far simpler alternative of a single abnormal data-line state. Caution: the Patent Owner attacked this exact rationale in IPR2018-00606, arguing that removing Dougherty's handshaking would destroy its port-replication function and break the dead-battery scenario (https://www.docketalarm.com/cases/PTAB/IPR2018-00606/). That is a reasonable counterargument that materially weakens the "simplify the handshake" motivation.
Ground 3: Kerai + Zyskowski + (Gilbert or De Iuliis) → claims 1, 13, 25, 51, 55, 63, 84, and system claims 63/101
This is the ground actually pursued in the parallel ex parte reexaminations against the sibling ’586 patent, adapted to the ’936 claims.
- Kerai provides: a mobile device with a USB interface and a charging circuit (charging control circuit 19 → battery 15) drawing power from the Vbus line; a switch 28 in series with diode 100 in the Vbus path (→ switch claims); and an express motivation — eliminating the need to "carry a plurality of chargers and adapters when traveling" (Kerai, 1:11–25, 1:29–40), which maps directly onto the ’936 plug-adapter embodiments.
- Zyskowski supplies the identification signal element: raising the data lines to a predefined DC level (5 V) in a full-power state, and detecting that level — i.e., a voltage-level identification signal on the data lines distinct from USB enumeration. This is a closer textual match to claim 13 (hard-wired voltage level) and to the "detecting" step (claims 52, 56, 71) than SE1 is.
- Gilbert supplies the "without regard to the USB power limits" element: a peripheral that overcomes the USB 2.5 W bus limit by injecting supplemental power (Gilbert, 3:65–4:12).
- De Iuliis supplies the adapter-side framing: a power adapter that powers/charges a peripheral "through a data transmission line" that may be "a universal serial bus (USB)…" (De Iuliis, 2:34–37, 4:40–65) — directly the "plug unit + power converter + USB connector" architecture.
- Motivation: Kerai and Gilbert share the identical problem statement (avoid bulky proprietary chargers; power a device from a standard port); Zyskowski supplies a known, cheap way to tell the device "you may draw more"; De Iuliis confirms that an adapter (not just a host) is the natural location for the conversion. Combining them is "a patent composed of several elements [that] is not rendered obvious by the mere fact that each element is known"—but here each element also does what it was known to do, with predictable results, which is decisive under KSR.
Ground 4: Morita (or Dougherty) + the USB 1.1 Specification alone → claims 1, 63, 65, 70, 84
Because claim 1's identification signal is defined as "a logic high signal on the D+ data line and a logic high signal on the D− data line" — the SE1 state defined in the USB 1.1 Specification itself — one can argue the limitation is disclosed by the specification that a POSITA would consult as a matter of course.
- Motivation: the USB spec both creates the need (enumeration; 100 mA default; 500 mA ceiling) and provides the mechanism (data-line states), and the claims' own specification concedes the state space: "the D+ and D− lines [are] compared to a 2V reference" (’936, 9:20–30).
- Weakness: this ground is the weakest of the four because the spec is not a "reference" that identifies a power source to a device; it merely describes what SE1 is. The Board has repeatedly treated the spec as background knowledge, not as an anticipating reference for the identification-signal limitation.
Ground 5: Auxiliary-connector claims (7–9, 19–21, 33–35, 45–47, 59–62, 65–69, 74–77, 78–82, 89–91)
Morita is nearly a 1:1 hit and this ground is the strongest in the entire analysis.
- Morita's charger has USB ports 24 as "second coupling means for coupling to an external device" in addition to the first coupling means = USB port 21 for the mobile phone.
- Morita's data lines are coupled between port 21 and ports 24 through the USB hub control unit 27 — i.e., "the data lines of the auxiliary USB connector are coupled to the data lines of the primary USB connector via the identification subsystem" (claims 8, 20, 34, 46, 90) is satisfied by the hub control unit, which is also where an identification signal generator would live.
- Morita [0016] expressly supplies power "from the USB port 24 to an external peripheral," satisfying claims 9, 21, 35, 47, 60, 67, 75, 81.
- Motivation: Morita's stated problem is precisely that a mobile phone "usually [has] a single USB port" so "only one external device can be connected… at a time" — expanding connectivity through an auxiliary port is the reference's own express purpose. This is not an obviousness argument that requires any hindsight at all.
Ground 6: Adapter-side battery-receptacle claims (11, 23, 27, 49, 61, 64, 68, 76, 82, 93, 100)
Kerai + Morita (or Dougherty) + ordinary skill.
- Kerai discloses a "battery charging circuit" (charging control circuit 19) receiving Vbus power and charging a battery 15, plus a separate "charger jack 20" (Kerai, Fig. 2, 1:34–39, 3:37–41) — the functional elements of "battery charging subsystem electrically coupled between the battery receptacle and the power converter."
- Motivation: relocating a known charging circuit from the mobile device to the adapter is the kind of mere rearrangement of parts that KSR and In re Japikse treat as obvious absent a new functional relationship; the ’936 patent itself asserts no new relationship beyond the errand of charging a spare battery ("when the battery has been separated from or is not coupled to the mobile device"). The motivation (charge a spare/primary pack while the phone is in use or absent) is a routine consumer convenience.
- ⚠️ Confidence flag: this is the element of the claim set for which I found the weakest direct prior-art mapping. Douglas/Kerai teach charging in the device; I did not verify a pre-2001 reference teaching a USB wall adapter with a docking receptacle for a detached handset battery. This ground should be treated as the least secure.
5. Synthesis: the four KSR rationales that do the work
| Rationale | Where it attaches |
|---|---|
| Application of a known technique to a known device ready for improvement | SE1/abnormal data-line signaling (Kerai, Shiga, Zyskowski, Casebolt, Cypress, USB 1.1 § 7.1.5) applied to Morita's or Dougherty's USB hub-charger |
| Design need / market pressure with a finite, predictable set of solutions | Portable users not wanting to carry multiple chargers (Kerai, 1:11–25; De Iuliis); the finite four-state space of the USB data lines when no host is attached |
| Predictable result | 500 mA vs. the 100 mA low-power default (USB 1.1 at 134, 142) — the "faster charging" benefit the claims describe |
| Express teaching, suggestion, or motivation in the references | Morita's own objective of connecting a plurality of external devices despite a single USB port; Dougherty's stated desire to reduce "the time and complexity to couple the laptop to the docking unit" |
6. The rebuttals — and why the record actually rejected nearly all of these grounds
An honest § 103 analysis of this patent has to confront the fact that these grounds have been run repeatedly and have essentially always failed at the institution stage. A practitioner should expect the same attacks again.
(a) The Board's two holdings in IPR2021-00410 (institution denied July 2, 2021; rehearing denied Aug. 2, 2021):
- The Petitioner "failed to show persuasive evidence that Morita would operate in a 'charger-only' configuration." The Board credited Patent Owner's expert (Dr. Kenneth Fernald) that Morita always keeps USB communications active and that port 21 is a self-powered high-power hub port that supplies 500 mA anyway — so there was "no reason why Morita's adapter would need some signaling to ensure that the mobile device can 'charge faster.'" (Rehearing Decision, https://www.docketalarm.com/cases/PTAB/IPR2021-00410/)
- The Petitioner "failed to show that a person of ordinary skill in the art would have been motivated to modify Morita to include an identification signal in the form of an SE1 signal," because SE1 would disable all USB communications between the charger and the device, contradicting Morita ¶ 22 ("the mobile phone always accesses the external device while receiving the supply of power from the charger").
The Board also relied on In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001), and DePuy Spine v. Medtronic, 567 F.3d 1314, 1326 (Fed. Cir. 2009), to reject the Petitioner's "common sense" rationale as an unsupported substitute for concrete evidence — and on the Gordon line for the proposition that a modification rendering a reference inoperable for its intended purpose is not obvious.
(b) The same fight in the 2018 wave. IPR2018-00605/006/007 terminated by settlement, but the Patent Owner's preliminary response in IPR2018-00606 (Samsung) raised the identical invalidity-defeating theme against Dougherty: "[a] POSA would believe that Petitioner's suggested modification would render Dougherty's docking station's primary port expansion functionality unusable," including in the dead-battery scenario. So the "reference inoperability / destruction of a primary function" defense is a proven, reusable playbook here.
(c) The reexamination record contains a further, broader defense: that modifying a USB-hub charger to emit SE1 would "alter or disregard the communication protocols set out in the USB specification," creating incompatibility with "devices of the vast majority of the industry," and that "SE1 is a state known to disrupt USB communication" (Fernald Decl., IPR2021-00410 Ex. 2009).
(d) Prosecution estoppel dynamics. Because the applicant affirmatively added the SE1 and hard-wired limitations to escape Dougherty, any § 103 ground that does not independently and convincingly supply the data-line identification signal will fail on the very distinction that produced the allowance.
Net effect: the structural obviousness case is strong (especially Ground 5), but the motivational case is the contested terrain, and on this record the Board has twice found the motivation lacking.
7. Confidence and uncertainty flags
- Zyskowski (US 2003/0135766) date risk — high. It published in 2003, after the ’936 priority date. It can only be prior art if its effective filing date predates March 1, 2001 / Oct. 23, 2001 (pre-AIA § 102(e)). I could not verify its filing/priority date with confidence; treat it as § 102(e) art subject to verification. The same caution applies more strongly to De Iuliis (US 7,766,698).
- "Theobald" is cited in the IPR2021-00410 petition table for the ">500 mA" point, but I did not retrieve its content or identity. I am not relying on it.
- Battery-receptacle claims (11, 23, 27, 49, 61, 64, 68, 76, 82, 93, 100) — lowest-confidence ground; the closest verified teaching (Kerai) charges a battery inside the device.
- Claim 25 anomaly. Both the issued claim 25 (USB controller) and dependent claim 66 ("The USB adapter of claim 25 wherein the identification signal comprises a voltage level…") read as internally redundant, and the Baker declaration's prosecution-history table lists prosecution claim 9 → issued claim 25 as having been "amended to include [SE1]." The issued text of claim 25 does not recite SE1. I flag this as an unexplained inconsistency in the record rather than resolving it.
- The Google Patents "Prior Art" section for this patent contains no citation table — only the keyword field quoted in § 0. Any analysis that cited a "prior art list" from that page would be inventing it.
8. Bottom line
- Yes, there are facially credible § 103 grounds. The strongest are:
- Morita + Shiga/Kerai/Zyskowski + USB 1.1 against claims 1, 63, 65, 70, 84 (SE1) and the controller/hard-wired/switch variants (13, 25, 37, 99, 101); and
- Morita alone (+ routine skill) against the auxiliary-connector claims (7–9, 19–21, 33–35, 45–47, 59–62, 65–69, 74–82, 89–91) — this is the cleanest mapping in the whole patent; and
- Dougherty + Shiga/Zyskowski against claims 1, 25, 37–39, 63, 78–80, 84 — the ground the Examiner already ran in 2004.
- The obstacle is motivation, not structure. Because the ’936 specification itself concedes that the only novelty over Dougherty is the data-line identification signal, any successful § 103 challenge must prove — with concrete evidence, not "common sense" — why a POSITA would have repurposed a data-line state that, on this record, the Board has twice found would disable the reference's intended USB communications. That burden was not carried in IPR2021-00410 (institution denied, rehearing denied), and it is presumably why the 2018 IPRs settled instead of going to final written decision.
- Practical takeaway for a challenger: lead with the auxiliary-connector and switch claims, where the prior art mapping is direct; for the independent SE1/hard-wired/controller claims, the motivation theory must overcome the "high-power hub port defaults" and "inoperability" lines of attack that defeated the prior petitions — a KSR "finite number of predictable solutions" framing supported by declaratory evidence (rather than attorney argument) is the only realistic route.
Generated 9/30/2026, 10:33:20 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
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