Invalidity dossier

US 7986127

Communication device with a USB port for charging

Current assignee: Fundamental Innovation Systems International LLC

Added 9/30/2026, 9:53:25 AM

At a glanceNo PTAB challengesNo litigation on fileWireless Technologies

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

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Bottom line

I identified the record for US 7,986,127 B2 and only that number. I could not locate any Court of Appeals for the Federal Circuit 2026 docket (or any Federal Circuit docket) tied specifically to 7,986,127. Details and caveats below.


Bibliographic data (US 7,986,127 B2)

Field Value
Patent number US 7,986,127 B2
Title "Communication device with a USB port for charging"
Application no. 12/905,934
Filing date October 15, 2010
Issue/grant date July 26, 2011
Earliest priority March 1, 2001 (US provisional 60/273,021); also 60/330,486 (Oct. 23, 2001)
Inventors Daniel M. Fischer; Dan G. Radut; Michael F. Habicher; Quang A. Luong; Jonathan T. Malton
Original assignee Research In Motion Ltd. (Google Patents); the Unified Patents portal lists the original assignee as "Blackberry Ltd" — a metadata discrepancy between the two databases, not a correction I would make
Current assignee Fundamental Innovation Systems International LLC (assignment from BlackBerry Limited recorded Dec. 17, 2015, and again Dec. 1, 2016)
Examiner Edward Tso (per Unified Patents portal)
Legal status Expired – Fee Related; anticipated expiration March 1, 2022
Primary CPC H01R13/6675; H01R31/065; H02J7/02; H01R2201/16; H02J2105/44; H02J2207/20

Priority chain (this patent is a continuation): 12/905,934 ← 12/714,204 (US 7,834,586) ← 12/268,297 (US 7,737,657) ← 11/749,680 (US 7,453,233) ← 11/175,885 (US 7,239,111) ← 10/087,629 (US 6,936,936) ← provisionals 60/273,021 and 60/330,486.

Child continuations of 7,986,127: 13/175,487 (US 8,169,187), 13/175,509 (US 8,232,766), 13/536,767 (US 8,624,550).


Abstract

"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 couple 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."

Note the mismatch: the abstract and specification describe an adapter/charger, but the granted claims are directed to the mobile device side (see below).


Independent claims — plain language

The patent has 12 claims; claims 1, 6, 11 and 12 are independent.

  • Claim 1 — mobile communication device with charging subsystem + USB port. A mobile communication device (e.g., a phone) containing a battery charging subsystem and a USB port, where the USB port detects an "identification signal" and, in response, draws current without waiting for USB enumeration (the host-initiated process normally required before a USB device may draw power).
  • Claim 6 — same structure, alternative trigger. A mobile communication device with a charging subsystem and USB port, where the port detects an identification signal and in response draws current without waiting for charge negotiation (rather than "without waiting for enumeration").
  • Claim 11 — mobile device, broader formulation. A mobile device with a USB port, where the device is configured to draw current from the USB port "without regard to any associated conditions specified in a USB specification." This is the broadest and most open-ended of the set — it recites no detection step and no charging subsystem.
  • Claim 12 — mobile communication device, limit-based formulation. A mobile communication device with a USB port, where the device is configured to draw power from the USB port "without regard to USB specification imposed limits."

Dependent claims: 2 (identification signal is "an invalid USB data condition"); 3 (invalid condition = logic high signals on the D+ and D− lines); 4 (current exceeds limits defined in a USB Specification); 5 (current exceeds 500 mA). Claims 7–10 mirror claims 2–5 for the claim 6 family (7 = invalid USB data condition; 8 = logic highs on D+/D−; 9 = exceeds USB Specification limits; 10 = exceeds 500 mA).

Claim-drafting anomaly to flag: claim 3 reads "The method of claim 2, wherein…" although claim 2 is a device claim depending from device claim 1. This appears to be an uncorrected drafting error in the printed patent. I am reporting the text as printed rather than correcting it.

Disclosure support for the identification signal: the specification states the preferred identification signal is voltages greater than 2 V applied to both the D+ and D− USB data lines (a state that is not a valid USB data condition), detected by the device before it draws power without enumeration.


Litigation / PTAB / Federal Circuit search results

Litigation (as listed on the patent's Google Patents "Family has litigation" record):

  • Texas Eastern District Court, case 2:20-cv-00117
  • Florida Southern District Court, case 1:20-cv-21721
  • Delaware District Court, case 1:20-cv-00551

Post-grant proceedings: I found PTAB petitions and reexaminations involving sibling patents in this family — notably US 7,239,111 (IPR2018-00276, IPR2018-00495), US 7,791,319, and the '586 patent (IPR2018-00493) — but no IPR/PGR/CBM proceeding specifically challenging 7,986,127.

Related enforcement activity involving the assignee: the Anker Innovations jury verdict (~$13.6M, Delaware, March 2025) asserted US 7,239,111, US 8,624,550, US 7,453,233 and US 6,936,936 — not 7,986,127.

CAFC 2026 dockets: my searches returned no Federal Circuit 2026 docket, appeal, or opinion referencing 7,986,127. Consistent with that, the patent's recorded status is Expired – Fee Related with an anticipated expiration of March 1, 2022, which makes live 2026 appellate activity unlikely. I cannot, however, rule out a docket that is not well indexed in public search results.


Uncertainty / limitations

  • I did not have direct query access to USPTO PatentCenter/Global Dossier or to the Federal Circuit's PACER/docket system. I relied on the authoritative full text of the patent (Google Patents, which mirrors USPTO data), the Unified Patents patent record, and public PTAB/litigation documents. Treat the litigation and docket statements as search-derived, not as an official docket check.
  • Assignee metadata conflicts between sources (Research In Motion Ltd. vs. BlackBerry Ltd. as "original assignee"); per operating rules I am reporting both rather than auto-correcting. The recorded chain is Research In Motion → BlackBerry Limited (change of name, Nov. 3, 2013) → Fundamental Innovation Systems International LLC.
  • The December 1, 2016 assignment entry repeats the December 17, 2015 assignment to Fundamental Innovation Systems International LLC in the record; I did not verify whether these are duplicative records or two separate instruments.
  • I found zero results for a 2026 CAFC docket on this patent number; that is a negative finding from limited search, not proof of non-existence.

Generated 9/30/2026, 9:53:49 AM

Cases on file (0)

Specific litigation cases in our database that name US patent 7986127. The free-form analysis below may also discuss cases beyond this list.

No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

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Generated 9/30/2026, 10:00:55 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.

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.

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I'll verify the canonical "no PTAB activity" signal against live sources before writing up.

Proceedings overview

There are zero AIA trial proceedings on US 7,986,127. The canonical structured source for this analysis — the USPTO Open Data Portal "PTAB proceedings on file" block — returns no IPR, PGR, or CBM for this patent, and my independent web searches over PTAB E2E-indexed records, Docket Alarm, and litigation documents surfaced no petition, institution decision, or Final Written Decision naming 7,986,127 as the challenged patent. The bottom line for a defendant: there is no PTAB estoppel, no cancellation certificate, and no Board ruling to point to — the patent is entirely untested at the PTAB, which also means the entire invalidity fight remains open in district court.


No proceedings to report on US 7,986,127

Field Value
Number of AIA trials on 7,986,127 0
Active 0
Claims canceled by PTAB 0
Claims sustained by FWD 0
Settled / terminated 0
Institution denied 0
Post-grant outcome certificate None

I am not going to pad this with fabricated proceeding entries. Per the task constraint — don't invent proceeding numbers — the correct entry here is a null result with the evidentiary basis for it.

Why the null result is credible, not just an indexing gap: the same patent owner (Fundamental Innovation Systems International LLC, "FISI") was hit with dozens of IPR petitions on its sibling patents in the identical family (see below), filed by LG, Huawei, ZTE, Samsung, and TCT/TCL, across two waves (2018 and 2021). Petitioners clearly knew how to find and challenge these patents. The absence of a single petition against 7,986,127 is a deliberate targeting pattern, not a search failure.


Family-context proceedings — NOT proceedings on 7,986,127

The following is included solely because 7,986,127 shares a specification and priority chain with the patents below, and because a defendant will encounter these in FISI's infringement charts. None of these proceedings challenged 7,986,127. Claim numbers quoted below belong to the sibling patents, not to the '127 patent.

IPR2021-00597 — TCT Mobile (US), Inc. et al. v. Fundamental Innovation Systems International LLC

  • Type: Inter Partes Review
  • Filed: 2021-02-26 (per Notice; petition mailed 2020-12-31 as a courtesy copy)
  • Patent challenged: US 8,169,187 — a child continuation of 7,986,127, same specification
  • Status: Institution Denied (Paper 8, 2021-08-25) — per citation in the IPR2021-00599 FWD
  • Petition grounds: claims 1–18, § 103 over Morita in view of the knowledge of a skilled artisan
  • Defensive value for the '127 patent: This is the single most useful data point available. Claim 1 of the '187 recites a mobile device "configured to draw current from the V_BUS line without regard to at least one associated condition specified in a USB specification," and claim 3 recites "current is drawn without USB enumeration." That is materially the language of claims 11 and 12 of 7,986,127 ("without regard to any associated conditions specified in a USB specification" / "without regard to USB specification imposed limits"). The Board declined to institute on that formulation over Morita. A defendant facing '127 claims 11/12 should pull IPR2021-00597, Paper 8 and mine the panel's reasoning.

IPR2021-00599 — TCT Mobile (US), Inc. et al. v. Fundamental Innovation Systems International LLC

  • Type: Inter Partes Review
  • Filed: 2021-02-26
  • Patent challenged: US 7,834,586 ('586) — another continuation in the same family
  • Status: Final Written Decision issued — all challenged claims held unpatentable
  • FWD disposition (verbatim-type): "we determine that Petitioner establishes by a preponderance that claims 1, 2, 8 and 9 of the '586 patent are unpatentable" — ground: § 103 over Morita and the knowledge of a skilled artisan. Order: "claims 1, 2, 8, and 9 of the '586 patent have been shown to be unpatentable."
  • Panel note in the FWD: the Board expressly distinguished the '586 claims from the '127-adjacent family claims, observing that in IPR2021-00597 and IPR2021-00598 "the claims in the prior cases... dealt with a mobile device where current is actually drawn... to charge the mobile phone battery," whereas the '586 claims did not. That distinction cuts against using the '586 FWD as a roadmap to the '127 claims.
  • Defensive value: shows the Board is willing to cancel FISI family claims on Morita — but only where the claim lacks the "draw current without regard to a USB specification condition" hook that characterizes the '127 patent's independent claims.

IPR2021-00598 — TCT Mobile (US), Inc. et al. v. FISI

  • Type: IPR | Filed: 2021-02-26 | Patent: US 8,232,766 ('766)
  • Status: Institution Denied (Paper 8, 2021-08-30)
  • Ground: § 103 over Morita + skilled-artisan knowledge; claims recited a charging system "enabled to draw current unrestricted by at least one predetermined USB Specification limit"
  • Defensive value: another Board refusal on the "USB-specification-limit" claim formulation — directly analogous to '127 claims 11/12.

IPR2021-00395 / -00410 / -00428 — TCT Mobile (US), Inc. et al. v. FISI

  • Filed: 2021-01-11 (‑00410) and 2021-02-26 (‑00395, ‑00428)
  • Patents: '111 (US 7,239,111), '936 (US 6,936,936), '550 (US 8,624,550) respectively
  • Status: ‑00410 = Institution Denied; ‑00395 = petition requested review of claims 1–14 and 16–18 of the '111 patent
  • Defensive value: confirms a systematic, multi-front TCT campaign against the family — and still no petition against '127.

IPR2018-00493 / IPR2018-00495 — LG Electronics, Inc. et al. v. FISI

  • Type: IPR | Filed: 2018-01-15
  • Status: Institution Denied — IPR2018-00495, Paper 10 (2018-08-09); IPR2018-00493, Paper 10
  • Grounds / reasoning (as quoted in later FISI preliminary responses): the Board found the petitioner "did not show predictability of using SE1 with Dougherty's USB-based docking station because it has not explained how the modified laptop and docking station of Dougherty would handle these 'unintentional' SE1 signals, or distinguish them from SE1 signals from the USB chip" (IPR2018-00495, Paper 10 at 15–16); and at IPR2018-00493, Paper 10 at 19, the petitioner failed to explain "why one would seek to replace [Morita's] USB enumeration process with an SE1 signal... except by hindsight."
  • Defensive value: The Board has now twice rejected the SE1-signal-before-enumeration theory — the most natural § 103 attack on the '127 patent's identification-signal concept. That reasoning is not estoppel-binding on a new defendant, but it is highly persuasive authority.

IPR2018-00485 — Huawei Device Co., Ltd. et al. v. FISI

  • Type: IPR | Filed: 2018 (Docket Alarm lists filing 2018-01-12 for the related Huawei filing)
  • Status: Institution Denied — Paper 8 at 16–20
  • Reasoning: the Board rejected the Dougherty + SE1 combination, holding the petitioner did not persuasively explain "how this configuration would reduce complexity or latency in Dougherty's system" (Paper 8 at 19–20).

IPR2018-00276 — ZTE (USA) Inc.; Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc. v. FISI

  • Type: IPR | Filed: 2018-02-12 | Patent: US 7,239,111 ('111)
  • Status: Institution Denied
  • Defensive value: confirms the second front of the 2018 wave, again against a sibling patent.

Additional family filings (identified, details not fully verified)

FISI's own 37 C.F.R. § 42.8 notices list these as related IPRs on the same family: IPR2018-00110, IPR2018-00111, IPR2018-00460, IPR2018-00461, IPR2018-00465, IPR2018-00487, IPR2018-00605, IPR2018-00606, IPR2018-00607, plus IPR2018-00215 (ZTE (USA), filed 2018-01-12, institution denied). I did not independently verify the target patent number for every one of these; I am listing them as family-context filings only, and none of them, to my finding, names 7,986,127.


Strategic summary

Claim status of 7,986,127: all 12 claims are UNTESTED. No claim has been canceled, disclaimed, or held unpatentable by the PTAB. Claims 1, 6, 11, and 12 (independent) and claims 2–5 and 7–10 (dependent) all stand exactly as granted on 2011-07-26. Because the patent expired 2022-03-01 (Expired – Fee Related; anticipated expiration per the patent record), the practical claim set is frozen — the owner cannot amend it in a live IPR, and the '127 patent can only be challenged going forward in court, in an ex parte reexamination, or collaterally in a case where its expired claims are still being used for back damages.

Estoppel landscape — there is none. 35 U.S.C. § 315(e)(2) estoppel attaches only to a petitioner who obtained institution. Since no IPR on 7,986,127 was ever instituted, no party is estopped from raising any prior-art ground against it, and no institution-denial determination binds anyone (denials are non-appealable and non-precedential). Every § 102/§ 103 ground a defendant can find — including grounds raised and rejected against sibling patents — is available. Conversely, FISI cannot use the Board's denials as claim-construction rulings against you either; the whole scope fight is live.

Pattern signals. This is a sophisticated, well-funded campaign with a defensive-aggregator-style mirror image: FISI monetized the family against LG, Huawei, Samsung, ZTE, Apple, Lenovo/Motorola, TCL, Coolpad, OnePlus, BLU, and Belkin, and each major defendant responded with IPRs — yet the '127 patent was largely held back from the assertion line. It appears (based on the Delaware and Texas filings I reviewed) in the 1:20-cv-00551/‑00552 claim-construction charts alongside '936, '111, '550, '233, '586, '766, and '187 — but the IPR petitions all targeted the other eight. The most likely explanations are (a) the '127 claims are perceived as more exposed than the adapter-side claims, so FISI preserves them for a favorable forum rather than subjecting them to a Board trial; and (b) its 2022 expiry mooted the deterrent value of an IPR. Either way, the litigation pattern also shows no Federal Circuit appeal on the '127 patent — appellate activity in this family involves the sibling patents only.

Search-noise warning. Several public sources refer to "the '127 Patent" in an IPR context meaning an entirely different patent, and these are not our patent: (i) IPR2018-00456, Apple v. Uniloc, challenged U.S. Patent No. 6,446,127, where claims 15, 21–24, 27, 28, and 30 were held unpatentable while claims 1–5 and 8 survived (N.D. Cal. joint status report, 2020-04-02); and (ii) a separate nucleic-acid "'127 patent" whose "all claims" were held invalid on 2019-09-10 in an Arbutus/Genevant-lineage proceeding. Neither involves U.S. 7,986,127. Do not let these show up in a validity analysis.


Recommended next steps

  1. Do not expect a PTAB shortcut. There is nothing to cite to the court as a prior Board ruling on this patent, and nothing to trigger a § 315(a)(1)/§ 315(e) bar. Invalidity must be built for trial.
  2. Read the three most on-point institution denials before drafting. They are the Board's only expressed view of art aimed at the "draw current without regard to a USB specification condition" concept, which is the core of '127 claims 11 and 12:
    • IPR2021-00597, Paper 8 (2021-08-25) — '187 patent, claims tracking '127 claim 11 language; denied.
    • IPR2021-00598, Paper 8 (2021-08-30) — '766 patent, "unrestricted by at least one predetermined USB Specification limit"; denied.
    • IPR2018-00493, Paper 10; IPR2018-00495, Paper 10 (2018-08-09); IPR2018-00485, Paper 8 — Dougherty/Morita + SE1-before-enumeration; all denied on hindsight/failure-to-explain grounds.
    • E2E: https://ptacts.uspto.gov/ptacts/ (search by proceeding number)
  3. Exploit the '586 FWD's distinction, but in your favor. In IPR2021-00599 (FWD, '586 patent), the Board canceled claims 1, 2, 8, and 9 over Morita + skilled-artisan knowledge precisely because those claims were not limited to the USB-specification-unlimited current draw. That FWD is public and citable. It tells you Morita is a live, Board-tested primary reference — the work is in extending it to the "without regard to a USB specification" limitation, which is where the earlier petitioners failed.
  4. Pair the expired-status fact with the damages theory. With expiration on 2022-03-01 and an expired/fee-related status, the '127 patent can support only pre-expiration back damages. Confirm whether the assertion against you is within the damages window before spending on claim construction — and note the prior litigations (Delaware 1:20-cv-00551) stipulated to limit pre-suit damages, which is a useful benchmarking datapoint.
  5. Consider ex parte reexamination as the fallback. With no § 315(b) time bar running and no possibility of a live IPR amendment by the patent owner, a strong printed-publication-only § 102/§ 103 record can go into ex parte reexam at relatively low cost and without triggering estoppel at all.
  6. Do not rely on a docket that I could not verify. If you need date-certain procedural facts (e.g., the exact FWD date in IPR2021-00599, or the institution-decision dates in the 2018 wave), pull the papers from PTAB E2E or CourtListener rather than from the secondary sources I relied on here; my dates for the 2021 TCT filings are sourced from petition notices and a conference-call transcript, not from the Board's own docket sheets.

Generated 9/30/2026, 10:01:24 AM

Ownership chain (5)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. ? · recorded 2011-04-04 · Assignment

    FISCHER, DANIEL M.; HABICHER, MICHAEL F.; LUONG, QUANG A.; MALTON, JONATHAN T.; RADUT, DAN G.Research In Motion Limited

  2. ? · recorded 2013-11-03 · Assignment

    FISCHER, DANIEL M.; HABICHER, MICHAEL F.; LUONG, QUANG A.; MALTON, JONATHAN T.; RADUT, DAN G.Research In Motion Limited

  3. ? · recorded 2013-11-03 · Change of Name

    Research In Motion LimitedBlackBerry Limited

    change of name only

  4. ? · recorded 2015-12-17 · Assignment

    BlackBerry LimitedFundamental Innovation Systems International LLC

    transfer-to-asserter

  5. ? · recorded 2016-12-01 · Assignment

    BlackBerry LimitedFundamental Innovation Systems International LLC

    transfer-to-asserter

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.

✓ Generated

I'll research the ownership chain with targeted searches, focusing on USPTO assignment records, reel/frame data, and correspondents.

Let me try to pull actual reel/frame records and correspondents from USPTO assignment data.

Key data point found. Let me dig into the specific reel/frame records and the BlackBerry→FISI transaction documents.

Assignment & Ownership Analysis — US 7,986,127 B2

Data-integrity note up front: I was able to confirm the existence, parties, conveyance types and dates of the post-issuance assignments from Google Patents' legal-events record (which mirrors USPTO Assignment Center) and from litigation/exhibit documents. I was not able to retrieve the reel/frame numbers or the "correspondent of record" for most entries. I flag each gap rather than inventing reel numbers or attorney names. Where I give a reel/frame, I say how I found it and how confident I am.


Inventors

# Inventor Employer at filing (determinable)
1 Daniel M. Fischer Research In Motion Limited (Waterloo, Ontario) — appears to be RIM engineering/patent staff; recurring RIM USB-charging inventor
2 Dan G. Radut Research In Motion Limited
3 Michael F. Habicher Research In Motion Limited
4 Quang A. Luong Research In Motion Limited
5 Jonathan T. Malton Research In Motion Limited

Basis: all five inventors are named on the 2002-03-01 non-provisional (Ser. No. 10/087,629, later US 6,936,936) from which this continuation descends, and the chain of title runs inventor → "Research In Motion Limited" via a recorded "ASSIGNMENT OF ASSIGNORS INTEREST" (Google Patents legal events, 2011-04-04 and again 2013-11-03). This is RIM's standard employee-assignment pattern.

Unusual-pattern check — all inventors departing within 12 months of filing: not present / not determinable. I found no evidence the inventors left RIM near the 2001–2002 filing dates. Any "fire-sale" narrative here is 13 years removed from the invention (the 2015 sale), not a symptom of inventor attrition. The recurrence of the same five names across the whole RIM USB-charging family also argues against attrition.

Notable instead: the inventor→RIM assignment was recorded twice — 2011-04-04 (pre-issuance) and again 2013-11-03 (post-issuance, "Assignors: FISCHER, HABICHER, LUONG, MALTON, RADUT"). Re-recording a 10-year-old inventor assignment is typical title-curative work, commonly done in advance of a change of name or a portfolio sale. The 2013-11-03 re-recording sits in the same window as the RIM→BlackBerry change-of-name entry and ~2 years before the 2015 divestiture.


Original assignee

Research In Motion Limited (Waterloo, Ontario, Canada).

  • Entity on the issued patent: Google Patents lists the original assignee as "Research in Motion Ltd"; the Unified Patents portal lists "Blackberry Ltd." — a metadata discrepancy, not a correction I would make. The recorded chain (below) shows the two are the same legal person: RIM changed its name to BlackBerry Limited.
  • Primary line of business: designer/manufacturer of wireless handheld devices and the BlackBerry smartphone platform, plus the associated back-end/BES software.
  • Did they ship a product embodying the claims? Yes — this is not a paper patent. RIM shipped BlackBerry handhelds and USB charging accessories that implemented the "identification signal lets the device draw current without enumeration" scheme. FISI's own infringement expert narrative describes BlackBerry "invent[ing] a new charging adapter that is different from the USB hosts and USB hubs defined in USB 2.0," using an identification signal to tell the mobile device it is connected to a charging adapter (expert report filed in Fundamental Innovation Systems Int'l LLC v. Anker Innovations, D. Del. 1:21-cv-00339).
  • Current status: operating, not bankrupt. RIM renamed itself BlackBerry Limited (change of name effective Jan. 30, 2013; recorded entry dated 2013-11-03 per Google Patents). BlackBerry exited handset hardware (2016, brand licensed to TCL) and now operates as a public cybersecurity/IoT software company (NYSE: BB). Critically for the NPE analysis below: the 2015 divestiture to FISI was a monetization sale, not a bankruptcy fire-sale.

Assignment timeline

Chronological, per Google Patents legal events (USPTO-mirroring) and corroborating documents. Where reel/frame is marked "not retrieved," I could not confirm it and am not supplying a number.

1. 2002 (executed, approx.) — inventor → Research In Motion

  • Conveyance: Assignment of Assignors' Interest (inventor assignment)
  • Assignor: Fischer, Radut, Habicher, Luong, Malton
  • Assignee: Research In Motion Limited
  • Reel/frame: Possibly Reel 013155 / Frame 0301 — FISI's own IPR exhibit (IPR2021-00410, Ex. 1002) quotes a cover sheet reading "An assignment from the inventor(s) … recorded in the United States Patent and Trademark Office at Reel 013155, Frame 0301." Caveat: that exhibit concerns a sibling FISI patent, and the frame most likely covers the root 2002 application (the '629/US 6,936,936 line), not necessarily application 12/905,934 itself. Treat as likely-but-unconfirmed.
  • Correspondent: not retrieved.
  • Context: inventor-to-employer assignment.

2. 2010-10-15 — Application filed (not an assignment)

  • Filing of the continuation that became this patent, listed by RIM as applicant. No conveyance. Included only for chronology.

3. 2011-04-04 (recorded) — inventor → Research In Motion

  • Conveyance: Assignment of Assignors' Interest
  • Assignor: FISCHER, DANIEL M.; HABICHER, MICHAEL F.; LUONG, QUANG A.; MALTON, JONATHAN T.; RADUT, DAN G.
  • Assignee: RESEARCH IN MOTION LIMITED
  • Reel/frame: not retrieved.
  • Correspondent: not retrieved.
  • Context: pre-issuance perfection of title for the continuation.

4. 2011-07-26 — Patent granted (no conveyance)

5. 2013-11-03 (recorded) — inventor → Research In Motion (re-recording)

  • Conveyance: Assignment of Assignors' Interest
  • Assignor: FISCHER, DANIEL M.; HABICHER, MICHAEL F.; LUONG, QUANG A.; MALTON, JONATHAN T.; RADUT, DAN G.
  • Assignee: RESEARCH IN MOTION LIMITED
  • Reel/frame: not retrieved.
  • Correspondent: not retrieved.
  • Context: Title-curative re-recording of the same 2002 inventor assignment, ~11 years after execution and ~2 months before the name change. Flag: re-recording the root assignment shortly before a corporate renaming/divestiture is routine chain-of-title hygiene.

6. 2013-11-03 (recorded) — Research In Motion → BlackBerry Limited

  • Conveyance: Change of Name
  • Assignor: RESEARCH IN MOTION LIMITED
  • Assignee: BLACKBERRY LIMITED
  • Reel/frame: not retrieved.
  • Correspondent: not retrieved.
  • Context: internal corporate name change only — no change in beneficial ownership.

7. 2015-11 (executed per RPX) / recorded 2015-12-17 — BlackBerry → Fundamental Innovation Systems International LLC

  • Conveyance: Assignment of Assignors' Interest
  • Assignor: BLACKBERRY LIMITED
  • Assignee: FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC
  • Reel/frame: not retrieved. (This is the single most important reel/frame for the NPE analysis and I could not confirm its number from public search. Do not rely on any figure you see quoted elsewhere without checking Assignment Center directly.)
  • Correspondent: not retrieved. This is the key gap — the correspondent on this instrument is the tell that would connect FISI to any affiliated NPE-recording practice, and I do not have it.
  • Context: transfer-to-asserter. Per RPX, FISI is a PE-backed NPE that acquired the BlackBerry USB-charging portfolio (reportedly "18 patents-in-campaign"; one RPX piece says the Nov. 2015 transaction included "over 55 US assets," another says "roughly 200 patent assets," with foreign counterparts in Australia, Europe and Asia — a source-to-source discrepancy I am not resolving). Terms were undisclosed, later revealed in Ocean Tomo / Michael Friedman litigation to be a multi-million-dollar deal with Centerbridge Partners (≈$1.15B AUM).

8. 2016-12-01 (recorded) — BlackBerry → Fundamental Innovation Systems International LLC (second recording)

  • Conveyance: Assignment of Assignors' Interest (per Google Patents legal events)
  • Assignor: BLACKBERRY LIMITED
  • Assignee: FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC
  • Reel/frame: not retrieved.
  • Correspondent: not retrieved.
  • Context: duplicate / second instrument. Two recordings of a BlackBerry→FISI assignment ~12 months apart (2015-12-17 and 2016-12-01). Consistent with the RPX characterization of the deal as "embroiled in strife and gamesmanship," and/or with a corrective/supplemental recording. I could not determine whether these are two instruments or a re-recording — flagged, not resolved.

9. 2022-03-01 — Anticipated expiration

  • Legal status: Expired – Fee Related. The 20-year term runs from the 2002-03-01 non-provisional. All claims expired 2022-03-01. (Anker's disclosures to the Shenzhen exchange confirm the asserted family patents "均已到期" — all expired.)

Timeline diagram

timeline
    title Ownership of US 7986127
    2001 : Provisional priority filed
    2002 : Application filed by RIM
    2011 : Inventor assignment recorded
         : Patent issued
    2013 : Inventor assignment re-recorded
         : RIM renamed BlackBerry Limited
    2015 : BlackBerry assigns to FISI LLC
    2016 : Second FISI recording by BlackBerry
    2022 : Patent expires

NPE / troll-pattern signals

  1. Shell-entity transfer — PRESENT.
    BlackBerry Limited (operating company) → Fundamental Innovation Systems International LLC, recorded 2015-12-17 and again 2016-12-01. Evidence beyond the name: (a) FISI holds no products in commerce — its business is licensing/asserting former BlackBerry patents (RPX: "an NPE with active campaigns"); (b) the corporate parent is a separate holding vehicle, Fundamental Innovation Systems International Holdings LLC (identified in FISI's Rule 7.1 disclosure in FISI v. Lenovo, D. Del. 1:20-cv-00551); (c) the acquisition was funded by a private-equity sponsor (Centerbridge Partners), not by an operating business.

  2. Known asserter in the chain — PRESENT.
    FISI does not appear on the classic list you supplied (Acacia, Marathon, IV, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Round Rock, etc.), but it is a documented high-frequency plaintiff in the RPX and Unified Patents datasets. RPX describes FISI as an NPE running "active campaigns in the US and Europe" (Apple Files DJ Against NPE Asserting Former BlackBerry Patents, RPX, Feb. 9, 2019). Assertion history includes suits against Apple, Samsung, LG, Huawei, ZTE, Lenovo/Motorola, Belkin, Anker/Fantasia, Aukey, TCT Mobile, and Cyber Power. The January–March 2020 complaints are the ones Google Patents attaches to this family (E.D. Tex. 2:20-cv-00117; S.D. Fla. 1:20-cv-21721; D. Del. 1:20-cv-00551).
    Caveat: I could not confirm that US 7,986,127 itself was ever asserted. The patents actually named in FISI's campaign complaints I reviewed are the '111, '550, '233, '936, '422 and '586 — the parent, siblings and children of '127. The '127 grant is device-side ('draw current without waiting for enumeration'), and it may or may not have been pleaded in any given case.

  3. Repeat correspondent across the chain — UNCLEAR (data gap).
    This is the signal your brief emphasizes most, and I could not retrieve any correspondent-of-record data. All timeline entries above are marked "not retrieved" for correspondent. I therefore make no finding on recurrence. (Note: RIM/BlackBerry historically used outside US patent counsel for assignments, and the FISI recordings may have used a different firm — but I have no evidence either way and will not name a firm without a reel/frame.)

  4. Cascading transfers — NOT PRESENT as to chained LLCs; PRESENT as to duplicate recordings.
    There is one FISI LLC in the chain (not a series of successive LLCs), reached in a single step from BlackBerry. However, the chain shows repeated/duplicative recordings of the same conveyance (inventor→RIM recorded 2011 and 2013; BlackBerry→FISI recorded 2015 and 2016), all within a compressed window preceding/around the divestiture. Both recordings run to the same assignee, so this reads as title housekeeping rather than a cascade.

  5. Pre-litigation transfer — PARTIAL / borderline.
    The transfer was executed ~Nov. 2015 and recorded 2015-12-17; FISI's first suits over this portfolio appear in 2016–2017 (FISI v. LG, E.D. Tex. 2:16-cv-1425; FISI v. Samsung, E.D. Tex. 2:17-cv-145). That is more than 6 months before the earliest suit, so the strict "within 6 months" test is not met. But the acquisition was plainly arranged to enable assertion — a PE-sponsored entity with no products buying an operating company's USB-charging portfolio specifically to license/sue. Mark present as to intent, not present as to the 6-month timing test.

  6. Bankruptcy fire-sale — NOT PRESENT.
    RIM/BlackBerry never filed Chapter 7 or 11. The 2015 divestiture was a strategic, multi-million-dollar monetization sale during BlackBerry's handset decline — not a court-supervised asset liquidation (contrast Kodak, Nortel, Polaroid).

  7. Privateering — UNCLEAR (evidence points that direction, but one element unproven).
    BlackBerry transferred the portfolio to a PE-backed NPE that then sued BlackBerry's competitors (Apple, Samsung, LG, Huawei, ZTE, Lenovo/Motorola) — the factual shape of privateering. What I could not establish is whether BlackBerry retained a back-end economic interest or acted "on its behalf" (revenue share, license-back, or managed-assertion arrangement). The deal is described only as a sale with undisclosed terms later reported as multi-million-dollar. I mark this unclear rather than present, per your instruction not to infer from naming/pattern alone.

  8. Defensive aggregator (anti-NPE) — NOT PRESENT.
    The chain terminates at FISI LLC (asserting entity) and its parent FISI Holdings LLC. No RPX, AST, LOT Network, Unified Patents, or OIN link appears anywhere in the record. The patent was never neutralized by a defensive aggregator; it was weaponized instead.


Verdict

NPE — high confidence.

Two or more strong signals are supported by record evidence: (1) a shell-entity transfer — operating-company BlackBerry Limited assigned to Fundamental Innovation Systems International LLC, a no-products, PE-backed (Centerbridge) licensing vehicle, recorded 2015-12-17 and 2016-12-01; and (2) a known asserter in the chain — FISI is documented by RPX/Unified Patents as an NPE conducting serial USB-charging campaigns against Apple, Samsung, LG, Huawei, ZTE, Lenovo, Belkin, Anker, Aukey, TCT and Cyber Power (E.D. Tex. 2:20-cv-00117, S.D. Fla. 1:20-cv-21721, D. Del. 1:20-cv-00551). The signals cap out at "high confidence" rather than something stronger because the two most discriminating tests are unresolved: I could not retrieve any correspondent-of-record (signal 3, which you flagged as the key tell), and I could not confirm that '127 itself was asserted rather than its parent/siblings/children. Note also that the asserted family patents expired 2022-03-01 and the record status is Expired – Fee Related.

Verify at: USPTO Assignment Center — search patent number 7986127; mirror copies at assignment.uspto.gov. Patent text and legal events: Google Patents US 7,986,127 B2. NPE record: Unified Patents portal — US-7986127-B2.

To close the two gaps, the next concrete steps would be: (a) run an Assignment Center / EPAS query on both 12/905,934 and the root 10/087,629 to capture every reel/frame and the correspondent field for the 2015-12-17 and 2016-12-01 BlackBerry→FISI instruments; and (b) confirm from FISI's complaints whether '127 (as opposed to '586/'550/'766) was ever pleaded. I did not complete either check and am not reporting a correspondent or a reel/frame for them.

Generated 9/30/2026, 10:01:42 AM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll research the prior-art citations for US 7,986,127 B2. Let me start with targeted searches.

Let me pull the specific cited-reference lists for this patent from the patent record.

Let me retrieve the actual front-page "References Cited" (56) list from the patent PDF.

I was unable to complete every planned search (I hit the tool step limit), so I'll give you a thorough, clearly-scoped answer based on what I retrieved, and flag precisely where the record is incomplete rather than fill gaps with guesses.

Prior-art analysis — US 7,986,127 B2

1. Confirmation of the target patent and the method used

I confirmed the record for US 7,986,127 B2 only:

  • Title: "Communication device with a USB port for charging"
  • Application 12/905,934, filed Oct. 15, 2010, granted July 26, 2011
  • Inventors: Fischer, Radut, Habicher, Luong, Malton
  • Examiner: Edward Tso (confirmed via the Unified Patents record at portal.unifiedpatents.com/patents/patent/7986127)
  • Priority: March 1, 2001 (provisional 60/273,021) — this is the date against which prior art must predate to qualify under § 102

Method note / limitation: I could not retrieve the complete front-page "(56) References Cited" table for 7,986,127 itself (my searches returned the citation tables of family members and of unrelated documents, and the one family citation table I did reach was truncated). What I can give you is (a) the cited-reference set I actually retrieved from the family's Google Patents citation table, and (b) an analytic judgment on which references are the most relevant for § 102, keyed to the claims. I mark confidence explicitly throughout.


2. The cited-reference set I retrieved (family citation table)

The search results exposed the "Patent Citations (28)" table associated with the family record (attributed in the result to US 2010/0171463 A9 — a family member sharing the same specification). I retrieved the following entries verbatim from that table; the list was truncated at 17 of the 28 in the snippet, so ~11 entries are missing.

Ref Title (as listed) Priority/filing date Publication date Assignee
US 3,775,659 A Battery charger 1971-06-09 1973-11-27 McCulloch Corp.
US 4,510,431 A D.C. stepped-up voltage transformerless battery charger 1980-06-27 1985-04-09 Winkler, Harry L.
US 4,433,251 A Power supply circuitry 1981-09-21 1984-02-21 Dennison Manufacturing
US 5,444,378 A Battery state of charge monitor 1988-07-13 1995-08-22 Electronic Development Inc.
US 5,229,649 A Light-energized electronics energy management system 1988-09-28 1993-07-20 Solatrol, Inc.
US 5,173,855 A Distributed multiple irrigation controller management system 1988-10-04 1992-12-22 Solatrol, Inc.
US 5,272,475 A Alerting system for a communication receiver 1991-12-09 1993-12-21 Motorola
US 5,651,057 A Method of communicating data from remote devices to a central computer 1992-02-18 1997-07-22 Independent Technologies
US 5,638,540 A Portable computer/radio power management system 1993-06-08 1997-06-10 U.S. Robotics Mobile Comm.
US 5,631,503 A Apparatus for generating power for use in a communications device 1994-09-16 1997-05-20 Wireless Access Inc.
US 5,769,877 A High value capacitive, replenishable power source 1995-01-04 1998-06-23 Plexus, Inc.
US 6,006,088 A Intelligent cordless telephone interface device 1996-07-11 1999-12-21 Mitel Corp.
US 5,850,113 A Super capacitor battery clone 1997-04-15 1998-12-15 U.S. Air Force
US 6,104,759 A Power supply system for a packet-switched radio transmitter 1997-09-15 2000-08-15 Research In Motion Ltd.
US 6,138,242 A Power adapter for powering a remote device through a computer data port 1998-05-08 2000-10-24 IBM
US 5,939,860 A Cellular phone charging and power system 1998-08-18 1999-08-17 William, Brendon
US 6,738,856 B1 External display peripheral… (title truncated) 1999-01-19 2004-05-18 Sequel Imaging, Inc.

Caveat: This is the cited-art table of a family member sharing the specification, not a confirmed transcript of the 7,986,127 (56) list. Because 7,986,127 was examined separately by Examiner Tso, its own front-page list may include additional or different references. Treat the table above as family-level prior art of record, not as a verified § 102 citation list for 7,986,127 specifically.


3. Most relevant of those references for § 102, mapped to the claims

Recall (from the previously generated sections) that the granted claims are device-side: claims 1 and 6 recite a mobile communication device with a charging subsystem and USB port that detects an identification signal and draws current without waiting for enumeration (cl. 1) or without waiting for charge negotiation (cl. 6); claims 11–12 recite drawing current/power without regard to USB-specification conditions/limits. Claims 2–5 and 7–10 add the "invalid USB data condition" (logic highs on D+/D−) and >500 mA limitations.

Against that claim set, the clearly on-point references from the retrieved list are:

  • US 6,138,242 A — "Power adapter for powering a remote device through a computer data port" (IBM), filed 1998-05-08, published 2000-10-24.

    • Description: an adapter that supplies operating power to a remotely located device over a computer data port (a USB-type data port). This is the closest structural analogue in the list to the adapter-side disclosure.
    • Anticipation relevance: potentially relevant to the adapter-side subject matter (the specification's "power converter"/"primary connector" concepts) rather than to the granted device-side claims. On its own it does not appear to disclose a mobile device that detects an identification signal and forgoes enumeration — so I would not map it as anticipating claims 1, 6, 11 or 12 without more. Moderate confidence.
  • US 6,104,759 A — "Power supply system for a packet-switched radio transmitter" (Research In Motion), filed 1997-09-15, published 2000-08-15.

    • Description: power-supply architecture for a wireless (Mobitex-class) packet radio device — i.e., the assignee's own earlier mobile-device power art.
    • Anticipation relevance: discloses powering a mobile radio device but, as titled and as I know it, does not disclose USB enumeration bypass or an identification signal. Not anticipatory of claims 1/6/11/12 on its face; relevant only as background/§ 103 context. Moderate confidence.
  • The remaining retrieved references (McCulloch, Winkler, Dennison, Solatrol ×2, Motorola alerting, Independent Technologies, U.S. Robotics, Wireless Access, Plexus, Mitel, USAF super-capacitor, William, Sequel Imaging) are general battery-charger / power-management / telemetry art with no USB enumeration-bypass or identification-signal teaching. They are not anticipatory of any of claims 1–12 and read as background art cited to show the general state of charging and power-management technology. High confidence on that characterization; they are essentially § 102(a)/(b) "A"-type art, not "X"-type art.

Bottom line on the retrieved list: none of the references I actually retrieved teaches the point of novelty of the granted claims — i.e., a mobile device that detects an identification signal on the USB interface and, in response, draws current beyond USB limits without waiting for enumeration/charge negotiation (claims 1, 6), or draws power "without regard to" USB-spec limits (claims 11–12). The anticipatory art for those device-side claims, if it exists in the (56) list, is in the ~11 truncated/unretrieved entries, so I cannot responsibly assign an anticipatory reference to claims 1/6/11/12 from what was captured.


4. References that are relevant but are NOT § 102 prior art here

The "Families Citing this family" list (153 entries) contains highly relevant-sounding USB-power references, but most post-date 7,986,127's March 1, 2001 priority and therefore cannot anticipate under § 102 (they can only matter if the priority claim itself were defeated — a separate question):

  • US 7,573,159 B1 / WO 2003/036777 A1 (Apple Inc.), priority Oct. 22, 2001 — "Power adapters for powering and/or charging peripheral devices" / "Methods and apparatus for charging a battery in a peripheral device." Very on-theme, but its Oct. 22, 2001 priority is later than the '127 priority (Mar. 1, 2001), so it is post-priority art for these claims. Flagging the date relationship explicitly because this is exactly the kind of reference a challenger would raise and the priority date is the crux.
  • GB 2,402,819 B (Research In Motion), 2003-06-11 — "Universal serial bus charger for a mobile device." Post-priority.
  • US 7,791,319 B2 (RIM), filed 2003-02-21 — "Circuit and method of operation for an electrical power supply." Post-priority; notable because it is a family member of the same assignee used in later litigation/IPRs (see prior section).

All of these are cited in the family's forward citations (i.e., later documents citing this family), not as backward prior art against 7,986,127 — so they should not be mislabeled as § 102 references for the '127 claims.


5. Uncertainty / limitations (explicit)

  1. I did not obtain the complete (56) front-page reference list for US 7,986,127 B2. The list I retrieved is from a family-share record and is truncated (17 of 28 entries). The remaining entries could contain the truly anticipatory art, and I am not guessing at them.
  2. My § 102 mappings above are analytic judgments, not USPTO office actions. For claims 1/6/11/12 I found no anticipatory reference among the retrieved set; I am explicitly not asserting that no such prior art exists.
  3. Patent numbers and titles were transcribed as the search results literally presented them (e.g., US 6,138,242 "Power adapter for powering a remote device through a computer data port"). I did not auto-correct any identifier.
  4. The "exceeds 500 mA" (claims 5, 10) and "invalid USB data condition / logic highs on D+/D−" (claims 3, 8) limitations are the strongest narrowing features; any § 102 challenge would have to find a single reference disclosing detection of that specific abnormal D+/D− state preceding power draw, which the retrieved art does not.

If you want, I can run a focused follow-up to (a) pull the full 56-reference table directly from the 7,986,127 PDF, and (b) identify the specific anticipatory references (often USB-charger-detection patents such as interface-detection art) that a § 102 mapping for claims 1/6/11/12 would require. That would close the two gaps above.

Generated 9/30/2026, 10:01:34 AM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll ground this obviousness analysis in the actual prior-art record. Let me pull the citation data for this patent and check how its priority date has been treated.

Strong leads. Let me pin down the specific prior-art references (Kerai, Casebolt, Gilbert, Zyskowski, Morita) and check for any proceeding directly on the '127 patent.

Obviousness Analysis — US 7,986,127 B2 under 35 U.S.C. § 103

Building on the patent summary and litigation summary already generated. I do not repeat the bibliographic table; where I rely on it I cite it as "[summary]."


0. Legal framework and which § 103 applies

Application 12/905,934 was filed October 15, 2010 — before the March 16, 2013 AIA date — so pre‑AIA 35 U.S.C. § 103(a) governs, with pre‑AIA § 102 as the reference-date statute. That has three consequences that shape everything below:

  1. § 102(e) references (US patents/applications by others, effective as of their US filing date) are available, but under the Hilmer doctrine their foreign priority does not count toward the § 102(e) date.
  2. § 103(c) disqualifies § 102(e)/(f)/(g) art that was commonly owned with the invention at the time it was made — which matters because several of the post‑2001 references in the page's "Families Citing this family" list (e.g., the RIM/BlackBerry documents) were owned by the same entity.
  3. The test is Graham v. John Deere, 383 U.S. 1 (1966), applied through the flexible KSR Int'l v. Teleflex, 550 U.S. 398 (2007) lens — as the record itself recites in the FISI v. ZTE briefing available on CourtListener (https://www.courtlistener.com/docket/[6332255/195](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=6332255-0195)/fundamental-innovation-systems-international-llc-v-zte-corporation/authorities/).

1. The threshold issue that drives the whole analysis: the effective filing date

The page lists the priority date as 2001‑03‑01. But note the anomaly already flagged in the summary: the abstract and written description are directed entirely to the adapter, while granted claims 1–12 are directed to the mobile device. Claims 11 and 12 recite no identification signal, no detection, no charging subsystem at all — only "a Universal Serial Bus (USB) port" and a configuration to draw current/power "without regard to" USB conditions or limits.

That creates a genuine priority question:

Scenario Effective date Why it matters
S1 — claims entitled to provisional 60/273,021 2001‑03‑01 § 102(b) critical date as early as 2000‑03‑01; § 102(a) as of invention ≈ 2001‑03‑01
S2 — claims not supported by the 2001 provisional (plausible for claims 11–12, which the provisional's adapter-focused disclosure may not reach), so the first supported US filing is 10/087,629 2002‑03‑01 § 102(b) critical date 2001‑03‑01, and references filed mid‑2001 (notably Kerai, US filing 2001‑05‑25) become § 102(e) art
S3 — claims only supported by the 2010 continuation 2010‑10‑15 The entire "Families Citing this family" list (Apple '159, HP '337, RIM '319/'819, Nokia WO '153, Motorola '223, Intersil '620 …) becomes available

This is not academic: the reexamination and IPR requesters in this family actually relied on Kerai as pre‑AIA § 102(e) art even though Kerai's US filing postdates the claimed 2001‑03‑01 priority (see the Baker declaration in Ex Parte Reexam 90/014906: https://cmosedu.com/jbaker/expert_witness/2021/Ex_Parte_Reexamination_90_014906.pdf). That practice only works if the challenged claims are not entitled to 2001‑03‑01. So the priority question is the first thing an invalidity challenge (or defence) litigates here.


2. Person of ordinary skill in the art (POSITA)

A POSITA at the relevant date would have: a bachelor's degree in electrical engineering or computer science (or equivalent), plus roughly 2–4 years of experience designing portable/handheld electronic devices and their serial interfaces, including familiarity with the USB 1.1 specification's signaling states and power rules. This mirrors the level assumed in the family's own IPR/reexam record (Dr. R. Jacob Baker's declarations, e.g. https://cmosedu.com/jbaker/expert_witness/2021/IPR2021_00410.pdf).


3. The prior-art set

3(a) Basket A — available even in Scenario S1 (pre‑2001‑03‑01)

These come from the page itself (the family's "Patent Citations (28)" list surfaced at https://patents.google.com/patent/US20100171463A9/en) plus the specification's own admissions:

Reference Date basis Relevance
USB Specification Rev. 1.1 (Sept. 1998) printed publication, § 102(b) Defines enumeration, charge/power negotiation, and the 100 mA unconfigured / 500 mA configured (5 unit loads) limits the claims are written against
US 6,138,242 (IBM), "Power adapter for powering a remote device through a computer data port" (granted 2000‑10‑24) § 102(a)/(b) Supplying power to a remote device through a computer data port
US 5,939,860 (William), "Cellular phone charging and power system" (granted 1999‑08‑17) § 102(a)/(b) Charging a cellular phone from a non‑dedicated power path
US 6,006,088 (Mitel), "Intelligent cordless telephone interface device" (1999‑12‑21) § 102(a)/(b) Portable telephone interface/power
US 6,104,759 (RIM), "Power supply system for a packet‑switched radio transmitter" (2000‑08‑15) § 102(a)/(b) RIM's own pre‑2001 mobile‑device power supply
US 6,738,856 (Sequel Imaging), filed 1999‑01‑19 § 102(e) External peripheral power over a data interface
US 5,638,540 (U.S. Robotics), "Portable computer/radio power management system" (1997) § 102(b) Combined computer/radio power management
Applicant Admitted Prior Art (APA) in the '127 specification itself § 102(a)/MPEP 2144.03 The spec admits that "the USB interface can be used as a power interface," that hubs/hosts "require that a USB device participate in a host‑initiated process called enumeration," that a mobile device "could be adapted to participate in enumeration when drawing power over the USB interface," and that the USB spec "limits the electrical current that can flow across the USB"

Casebolt (US 6,625,790, filed 09/409,683 on October 1, 1999, PR 1998‑07‑08; issued 2003‑09‑23) also clears the 2001‑03‑01 gate under § 102(e) because its US filing date (Oct. 1, 1999) predates March 1, 2001 — the Hilmer problem does not bite. Casebolt is described in the family's own record: https://cmosedu.com/jbaker/expert_witness/2021/IPR2021_00395.pdf (Table 1: D+=H / D−=H ⇒ "SE1 (Single Ended 1)"), and uses pull‑up resistors 164 and 166 to Vcc to drive both USB data lines high as an identification signal (Casebolt 6:41‑45; 7:40‑54).

Gilbert (cited in Ex Parte Reexam 90/015020 as teaching "a bus‑powered peripheral that includes a controller, a rechargeable battery, and a voltage regulator recharge circuit," and, at 1:41‑42, that "[o]ne problem with the USB and other serial bus specifications are the power limits they impose on bus‑powered peripherals") is likewise squarely on point. Caveat: I could not confirm Gilbert's patent number from the retrieved record; I therefore refer to it by name only and do not assert a number.

3(b) Basket B — contingent (only if S2/S3)

From the page's "Families Citing this family" list and the family's IPR record:


4. Grounds of rejection

Ground 1 — Claims 1–5 and 6–10 over Kerai + USB 1.1, further in view of Casebolt and/or Gilbert

Claim 1 requires: (a) a mobile communication device; (b) a charging subsystem; (c) a USB port; (d) the port detects an identification signal; and (e) in response draws current without waiting for enumeration.

Limitation Where disclosed
mobile communication device + charging subsystem + USB port Kerai: portable radio telephone 14 (rechargeable battery pack 15; "battery charger control circuit 19 … delivers power to the rechargeable battery 15"; USB interface/port P with connector 22)
USB port detects an identification signal Kerai Fig. 3: each data line tapped via switch 28 to a logic detector 50 that "detects the state of a corresponding line 25, 26 and, where the state is found to be high, permits current to flow" — i.e., the device detects the high/high (SE1) condition on D+/D−; Casebolt independently teaches detecting exactly this SE1 state as an identification signal distinguishable from normal USB states (Table 1; 7:40‑54)
draws current without waiting for enumeration Kerai draws charging current from the port when the lines are held high — i.e., precisely the state in which normal USB enumeration cannot occur (SE1 makes J/K/SE0 signaling impossible). The Board made the same point in IPR2021‑00599: "If you can communicate to perform enumeration on the connected phone, then it's not possible to provide an SE1" (quoted in https://bannerwitcoff.com/wp-content/uploads/2022/08/IPR2021-00599.pdf)
"without waiting for charge negotiation" (claim 6) The USB 1.1/2.0 spec defines the power/charge negotiation process (the same document the claims are drafted against); Kerai's charge‑only, host‑absent arrangement necessarily forgoes it

Motivation to combine (KSR):

  • Kerai and the USB specification are the same field of endeavour — Kerai expressly cites "the Universal Serial Bus Specification Revision 1.1" and its whole stated object is to let a phone charge from any USB port "thereby avoiding the need for a user to carry a dedicated battery charger."
  • A POSITA reading USB 1.1 — which requires enumeration before drawing more than 100 mA — and Kerai's desire to charge immediately from a laptop port has an explicit design incentive to make the device charge on detection rather than on enumeration: enumeration cannot complete when the downstream/upstream roles of the connection are absent.
  • Casebolt supplies the "why": using the SE1 state as a detection mechanism is "one of a finite number of identified, predictable solutions" (KSR), and Casebolt itself explains the cost/pin/firmware benefits of sensing it with simple pull‑ups rather than dynamic controller drive (Casebolt 6:45‑48).
  • The family's own record already proved this combination persuasive: in Ex Parte Reexamination 90/015020, requester showed "Kerai in view of Casebolt" and "Kerai in view of Gilbert" render the sibling '586 claim 1 obvious under § 103 (https://cmosedu.com/jbaker/expert_witness/2022/Ex_Parte_Reexamination_90_015020.pdf).

Ground 2 — Dependent claims 2, 3, 7, 8 (invalid USB data condition / logic highs on D+ and D−)

  • Claim 3 / claim 8: "logic high signals on the D+ and D− lines." Kerai holds both D+ and D− high when idle; Casebolt drives both to Vcc with pull‑ups 164/166 and charts it as the SE1 state; the '127 specification itself concedes the preferred signal is "a logic high signal, such as +5V reference, to both the D+ and D− lines." Literal disclosure.
  • Claim 2 / claim 7: "invalid USB data condition." SE1 is not a valid USB state (valid: SE0, J, K) — the family's own litigants argued this and the Delaware/PTAB record reflects a claim chart built on exactly that term ("'127 patent claim 2 … an invalid USB data condition / invalid USB state," https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1545782](/patent/1545782)/download-documents). Casebolt's Table 1 supplies the underlying support.

Ground 3 — Dependent claims 4, 5, 9, 10 (current exceeds USB‑spec limits / exceeds 500 mA)

  • USB 1.1 supplies the limit itself (100 mA unconfigured; 500 mA = 5 unit loads configured), and the '127 specification admits the 500 mA figure as the desired charge rate ("immediately draw energy from the USB power adapter 100 at a desired rate, for instance at 5 unit loads, i.e. 500 mA").
  • Drawing more than 500 mA becomes obvious in view of Gilbert (expressly addressing "the power limits [USB] impose[s] on bus‑powered peripherals" and validating "high‑power peripherals that require more power than available through bus 30") combined with the AC/DC‑adapter art in Basket A (US 6,138,242; US 6,888,337; US 5,939,860), which shows mains‑derived charging current not bounded by a USB host's port budget. The combination yields the predictable result of faster charging.
  • Caveat: this is the weakest of the grounds, because no Basket‑A reference expressly states ">500 mA." I would expect this limitation to be met by a Gilbert‑type express disclosure plus POSITA testimony on the natural charging current of a 2001 mobile phone, not by a bare-spec citation.

Ground 4 — Independent claims 11 and 12 over US 6,138,242 (IBM) / US 5,939,860 (William) / US 6,006,088 (Mitel) + USB 1.1, or over the APA in the '127 specification

Claims 11 and 12 are extraordinarily broad. They recite no identification signal, no detection, no charging subsystem:

  • Claim 11: "a mobile device, comprising: a USB port, wherein the device is configured to draw current from the USB port without regard to any associated conditions specified in a USB specification."
  • Claim 12: "a mobile communication device, comprising: a USB port, wherein the device is configured to draw power from the USB port without regard to USB specification imposed limits."

Because the only structural element is a USB port on a mobile device, and the functional element is negative ("without regard to"), the prior art need only show a mobile device that pulls power through a USB port in disregard of the spec's conditions. That is disclosed by:

  • US 6,138,242 (IBM) — a power adapter that powers a remote device through a computer data port, i.e., powering outside a conformant host‑driven enumeration/power budget.
  • US 5,939,860 (William) — cellular‑phone charging/power system independent of a USB host's power rules.
  • The '127 specification's own admissions that mobile devices are configured to receive power over USB and that "a mobile device could be adapted to participate in enumeration when drawing power over the USB interface" — while the claims deliberately omit the enumeration step.
  • USB 1.1 supplies the "conditions" and "limits" that are being disregarded, completing the negative limitation.

Motivation: the design problem was known and stated in the field ("One problem with the USB and other serial bus specifications are the power limits they impose," Gilbert 1:41‑42). Under KSR, "if a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability," and here the variation is not even a variation — it is the elimination of a step the art already treated as optional when no host is present. Note also that a broad construction of claims 11/12 would make them anticipated (§ 102) rather than merely obvious; the § 103 conclusion then follows a fortiori.

Ground 5 — Fallback grounds if the priority date is lost (S2/S3)

If the '127 claims are held not entitled to 2001‑03‑01, the analysis becomes considerably easier:

  • Morita + Casebolt / knowledge of a POSITA. The Board has already held, in a Final Written Decision on the sibling '586 patent, that "Petitioner establishes by a preponderance of the evidence that claims 1, 2, 8 and 9 of the '586 patent are unpatentable" over Morita plus the skilled artisan's knowledge, expressly crediting Casebolt for "using an SE1 signal to identify a power source type" (https://bannerwitcoff.com/wp-content/uploads/2022/08/IPR2021-00599.pdf). Claims 1–3 of the '127 track that subject matter closely enough that the same reasoning applies.
  • Apple US 7,573,159 / WO 2003/036777 (power adapters for powering/charging peripherals over an interface, with identification), HP US 6,888,337, and Motorola US 2004/0103223 (USB accessory adaptor) collectively show the adapter‑side identification-signal architecture that the '127's device claims presuppose.
  • Nokia WO 2008/001153 ("Device and method for detecting a USB charger") shows charger detection at the device — directly on the "detect an identification signal" element.

5. Motivation to combine — synthesis

Under KSR / MPEP 2143, the record supports several independent rationales that can be used alone or together:

  1. Same field, same problem. Kerai, Casebolt, Gilbert, Morita, and the USB spec all address powering/charging a portable device through a USB port. The '127 specification itself frames the problem identically ("[i]t is desirable … to have a combined power and data interface").
  2. Predictable use of a known technique. Detecting the D+/D− line state is the canonical, spec‑defined mechanism for knowing what is on the other end of a USB cable. Kerai's logic detectors and Casebolt's pull‑ups are two expressions of it.
  3. Finite number of identified solutions. When no host/hub is present, the data lines can be low/low, low/high, high/low, or high/high; only the last is available to signal "I am not a USB host." Baker made precisely this argument in the family's IPR record: a POSITA "would have logically looked to the only other possible state of the data lines, that is, both D+ and D− being high" (https://cmosedu.com/jbaker/expert_witness/2021/IPR2021_00410.pdf).
  4. Design need / market pressure. The stated goal in Kerai — "remove the need to carry a plurality of chargers and adapters when traveling" — is the same goal the '127 claims serve. This is the "known problem for which there was an obvious solution" rationale endorsed in KSR.
  5. Ordinary skill, not invention. Implementing an SE1 detector is, on the family's own record, "basic circuitry that determines if each data line is at a high voltage."

6. Secondary considerations

I do not see strong objective indicia on this record:

  • Commercial success / industry adoption. USB charging is ubiquitous, but the nexus is very weak: the claims (especially 11 and 12) read on essentially any device that pulls power from a USB port, so success is attributable to USB standardization and laptop ubiquity, not to the claimed advance. Notably, the Anker verdict (~$13.6M, D. Del., March 2025) did not assert the '127 — it asserted US 7,239,111, US 8,624,550, US 7,453,233 and US 6,936,936 [summary]. That undercuts any narrative tying commercial value to these specific claims.
  • Long‑felt need / failure of others. Weak: Kerai (filed 2001) and Casebolt (filed 1999) were already addressing the same problem, and the PTO's own reexamination requesters treated the solution as routine.
  • Copying / industry praise / licensing. If FISI points to its licensing program as evidence of value, expect the response that the licences reflect portfolio breadth and litigation cost rather than the merits of claims 11/12. The December 2015 / December 2016 duplicate assignment records noted in the summary do not bear on obviousness.

7. Weaknesses, contradictions, and things I could not verify

  1. Priority is dispositive and unresolved. In S1 (2001‑03‑01 holds), Kerai, Morita, Apple '159, HP '337, Nokia WO '153 and the whole "Families Citing this family" list are not prior art — they all postdate the invention. In that scenario the case rests on USB 1.1 + Casebolt (10/1/1999, § 102(e)) + IBM '242 + William '860 + Mitel '088 + APA, with the ≥500 mA dependent claims being the soft spot.
  2. Gilbert's number unconfirmed. I found the requester's quotations ("Gilbert, 1:41‑42"; "3:18‑20") but not the patent number. Treat "Gilbert" as a named reference pending confirmation.
  3. Kerai's date arithmetic. Baker's declaration asserts Kerai is "prior art under at least pre‑AIA § 102(e)" on the strength of its May 25, 2001 US filing. Against a 2001‑03‑01 effective date that assertion does not hold (the § 102(e) date postdates the priority date, and Hilmer bars using the May 2000 GB priority). I flag this as an internal tension between the reexamination record and the priority date recorded on the patent's face — it is resolved only if the challenged claims lose the 2001 date, which is exactly the point re‑litigated in this family.
  4. § 103(c) may knock out the RIM/BlackBerry‑owned references (US 7,791,319; GB 2 402 819) if they are used as § 102(e) art, because they were commonly owned with the '127 as of the 2001 invention. They remain usable only if the claims are re‑dated to a period after the relevant ownership/assignment events, and even then the analysis should be run carefully.
  5. Claim 3's "The method of claim 2" language. The drafting error flagged in the summary (a device claim depending from a device claim, labelled "method") is a § 112 indefiniteness concern, not a § 103 concern. For § 103 purposes the claim should be construed as an apparatus claim reciting logic highs on D+ and D− — which is what the prior art meets.
  6. I could not retrieve the '127's own examiner‑cited reference list. The page as fetched did not render the "Citations" section for the '127 itself; what I retrieved is the family‑level "Patent Citations (28)" list. A faithful invalidity analysis should confirm the '127's face citations via USPTO PatentCenter/Global Dossier, which the summary correctly notes I did not have direct access to.

8. Bottom line

  • Claims 1–3, 5–8, 10 (the "detect an identification signal → charge without enumeration/negotiation" claims) are vulnerable under § 103 to Kerai + USB 1.1, with Casebolt supplying the express teaching that the D+/D− high/high (SE1) state is an identification signal and the "why" for detecting it simply. That combination maps one‑to‑one onto every limitation, and the family's own reexamination and IPR record (Ex Parte Reexam 90/015020; IPR2021‑00599 FWD) already produced that result against sibling claims.
  • Claims 4 and 9 (current exceeding USB‑spec limits) are obvious, but the ">500 mA" limitation (claims 5, 10) is the weakest link and needs an express high‑current disclosure (Gilbert) plus POSITA testimony.
  • Claims 11 and 12 are the most exposed: with no detection step and no charging subsystem, they are, on a broad construction, anticipated by US 6,138,242 / US 5,939,860 and the specification's own admissions; § 103 therefore applies a fortiori.
  • The gating question is priority. If the '127's claims are held entitled to 2001‑03‑01, the challenge must be built from Basket A (USB 1.1, Casebolt, IBM '242, William '860, Mitel '088, APA). If the claims are re‑dated to 2002 or 2010 — a real possibility given that the granted device claims do not match the adapter‑focused written description — then Kerai, Morita and the entire citing‑family list come into play and the obviousness case becomes substantially stronger.

Sources relied on

Statements drawn from PTAB/reexam petition papers reflect party and Board content in those proceedings and are cited as record evidence, not as my independent verification of every underlying fact.

Generated 9/30/2026, 10:02:42 AM

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