IP Law Daily Board sides with Apple and invalidates Comarco’s power adapter patent
Friday, February 24, 2017

Board sides with Apple and invalidates Comarco’s power adapter patent

The Patent Trial and Appeal Board in an inter partes review has invalidated a Comarco Wireless Technologies, Inc., patent for a power adapter, agreeing with petitioner Apple Inc. that two claims of Comarco’s patent are unpatentable. The Board issued a Final Written Decision, holding that those claims are obvious over the combined teachings of three registered U.S. Patents (Apple, Inc. v. Comarco Wireless Technologies, Inc., February 22, 2017, Baer, G.).

Comarco had sued Apple in federal district court for the Central District of California, alleging that Apple infringed Comarco’s patent directed to power supply equipment for portable electronic devices, U.S. Patent No. 8,492,933 ("the ’933 Patent"), by selling chargers with Apple’s Lightning cable connector. Apple filed a Petition before the Patent Board requesting an inter partes review of claims 1 and 2 of the ’933 Patent. After the Board determined that Apple showed a reasonable likelihood of prevailing in establishing the unpatentability of those claims, it instituted the inter partes review.

Obviousness. The Board determined that Apple demonstrated by a preponderance of the evidence that the claims of the ’933 are unpatentable as being obvious over the combined teachings of three registered U.S. Patents—U.S. Patent No. 7,243,246 ("Allen), U.S. Patent No. 7,296,164 ("Breen"), and U.S. Patent No. 6,054,846 ("Castleman").

All three of the prior Patents disclose power supply equipment for electronic devices. The Board first agreed with Apple that the combination of Allen and Breen teaches the disputed limitation in the ’933 Patent’s claims that "the adapter including circuitry for producing an analog data signal for use by the electronic device to control an amount of power drawn by the electronic device." The Board concluded that Allen teaches an adapter with identification circuits producing data signals that are transmitted to an electronic device, while Breen discloses circuitry for producing an outgoing analog signal. Comarco made two arguments related to the Breen Patent, but the Board found them "not persuasive," because they attacked Breen alone, rather than the combination of Allen and Breen.

The Board also agreed with Apple that the combination of Allen, Breen, and Castleman discloses the rest of the limitations in the two claims, which Comarco did not address in its opposition to Apple’s petition. As to claim 1, the Board concluded that Apple had shown that the combination of the three prior Patents teaches "the output connecter including … circuitry to receive a data request from the electronic device and in response transmit a data output to the electronic device to identify the power supply equipment to the electronic device." Allen teaches the claimed identification circuitry, Breen teaches sending an identification signal as a response to a data request, and Castleman teaches placing identification circuity in an output connector at the end of the adapter’s cable.

Similarly, the Board found, as Apple had argued, that Castleman discloses the additional limitation on Claim 2, "wherein the output connector can be detached from the cable."

Combination. The Board found that Apple had "articulated sufficient reasoning with some rational underpinning" in support of its legal conclusion that combining Allen, Breen, and Castleman would have been obvious to one of ordinary skill in the art. Apple explained that one skilled in the art would combine Breen’s request/response circuitry with Allen’s power supply equipment. The Board agreed, concluding that the combination "would provide a more power-efficient design over comparable circuitry." The Board rejected Comarco’s argument that one skilled in the art would not combine Allen and Breen, because the resulting power savings are too minimal to motivate the redesign of Allen to include Breen’s request/response circuitry. So long as adding Breen could improve Allen’s efficiency, "it is irrelevant whether that improvement would be enough to justify modifying a physical embodiment of Allen’s power supply equipment," the Board noted.

Apple also argued that one skilled in the art would have been motivated to combine Castleman to Allen and Breen for reasons of cost savings and flexibility. The Board agreed.

The case is No. IPR2015-01879.

Attorneys: Xin-Yi Zhou, Cameron Westin, and Scot Rives (O'Melveny & Myers LLP) for Apple Inc. Harris Wolin (Graham Curtin, PA) for Comarco Wireless Technologies, Inc.

Companies: Apple Inc.; Comarco Wireless Technologies, Inc.

MainStory: TopStory Patent USPTO

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