`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________
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`APPLE INC.,
`
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-00472
`
`Patent 10,562,077
`
`___________________________
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITION FOR INTER PARTES
`
`REVIEW
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`
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`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
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`II. ARGUMENT ....................................................................................................... 3
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`A. A POSITA lacks rationale/motivation to pursue the Gundlach-Lee
`
`combination ............................................................................................................. 3
`
`1. The Gundlach-Lee combination, even if it met the claim limitations (which
`
`it does not), would not have been obviousness. .................................................. 3
`
`a. The Reply does not meaningfully dispute important reasons why the
`
`combination alleged in the Petition is not obvious. ......................................... 3
`
`b. Petitioner’s improper new Lee suggestion theory should be disregarded.
`
`Irrespective, it lacks merit.................................................................................... 8
`
`c. Petitioner’s improper new “additional rationales” theories should be
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`disregarded. Irrespective, they lack merit. ........................................................10
`
`d. The law does not preempt Gwee’s motivation facts and arguments. Rather,
`
`it supports them. .................................................................................................12
`
`e. The serious problems resulting from the proposed Gundlach-Lee
`
`combination are more than mere “tradeoffs” and far outweigh and undermine
`
`any alleged motivation. ......................................................................................13
`
`
`
`f. None of Dr. Cooperstock’s “ten other prior art examples,” (eight of which
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`are untimely raised), involve wireless charging from a portable battery
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`powered device or devices with the geometry of the Petition’s combination. ..14
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`B. Petitioner’s new Reply arguments against “bodily incorporation,” for
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`“ordinary creativity,” and against using Gundlach’s “form factor” relied upon by
`
`the Petition are untimely and improper ................................................................15
`
`C. Petitioner’s alleged motivations do not support a motivation to make the
`
`combination asserted in the Petition. ....................................................................16
`
`1. Inductive charging being a “known alternative” in some circumstances
`
`(inapplicable here) does not provide a motivation for Gundlach-Lee
`
`combination asserted in the Petition. .................................................................16
`
`2. Petitioner’s argument for alleged enhanced reliability is based upon a
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`mistaken premise and, in any event, does not provide a motivation for
`
`Gundlach-Lee combination asserted in the Petition. .........................................17
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`4. The Reply argument for a very different and allegedly now “feasible”
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`design for the Lee-Gundlach combination is untimely and improper. Further, it
`
`is fatally flawed and there is no evidence it would work for a Gundlach
`
`headset. In any event, motivation to combine is still lacking for this untimely
`
`new design. ........................................................................................................19
`
`
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`5. The Reply’s footnote argument that the “Petition does not solely rely on
`
`Lee’s dual-purpose coil embodiment to satisfy claim 1” is false. .....................22
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`6. Petitioner’s interoperability argument lacks merit ......................................24
`
`D. Brown is not analogous art. ............................................................................25
`
`E. A POSITA would not have been motivated to combine Mak-Fan with
`
`Gundlach-Lee. Irrespective, Mak-Fan does not disclose a magnet in the lid of
`
`the phone case. ......................................................................................................26
`
`F. Petitioner’s Ground 1A-2E arguments are meritless. .....................................26
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`1. Grounds 1A/2A, Element [1b] ....................................................................26
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`2. Grounds 1A/2A, Element [1d] ....................................................................28
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`3. Grounds 1A/2A, Element [1g] ....................................................................28
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`4. Grounds 1A/2A, Element [1j] .....................................................................30
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`5. Grounds 1A/2A and 1C/2C, Element [11] ..................................................31
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`III. CONCLUSION ..............................................................................................32
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`WORD-COUNT CERTIFICATE ............................................................................33
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`CERTIFICATE OF SERVICE ................................................................................34
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`
`
`
`
`Cases
`Henny Penny v. Frymaster, 938 F.3d 1324 (Fed. Cir. 2019) .................................... 2
`
`Hoffmann La Roche v. Apotex, 748 F.3d 1326 (Fed. Cir. 2014) .............................13
`
`Hulu v. Sound View Innovations (IPR2018-00582, Paper 34) ............................3, 13
`
`In re Etter, 756 F.2d 852 (Fed. Cir. 1985) ...............................................................16
`
`Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359 (Fed. Cir. 2016) ........... 2
`
`Johns Manville v. Knauf Insulation (IPR2018-00827, Paper 9) ..................... 2, 3, 12
`
`Statutes
`5 U.S.C. § 706 ............................................................................................................ 2
`Rules
`37 C.F.R. §42.23(b) ................................................................................................... 2
`
`
`
`EXHIBIT LIST
`
`Exhibit 2022
`
`Declaration of Hamid Toliyat, PhD
`
`Exhibit 2023
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`CV of Hamid Toliyat, PhD
`
`Exhibit 2024
`
`YouTube video of Powermat bearing a date of
`
`December
`
`28,
`
`2020
`
`and
`
`accessible
`
`at
`
`https://www.youtube.com/watch?v=_SyU_eKd3pE.
`
`Exhibit 2025
`
` YouTube video of Powermat bearing a date of
`
`November
`
`29,
`
`2010
`
`and
`
`accessible
`
`at
`
`https://www.youtube.com/watch?v=aLOYN6SgbFQ.
`
`Exhibit 2026
`
` YouTube video of Palm Touchstone bearing a date of
`
`July
`
`11,
`
`2011
`
`and
`
`accessible
`
`at
`
`https://www.youtube.com/watch?v=wCyyJTszxH8.
`
`Exhibit 2027
`
`Wireless Power Consortium site on the Wayback
`
`Machine
`
`at
`
`https://web.archive.org/web/20110715210021/http://
`
`www.wirelesspowerconsortium.com/technology/cou
`
`pling-factor.html
`
`Exhibit 2028
`
`Li and Mi, WPT for EV Applications, IEEE Journal
`
`of Emerging and Selected Topics
`
`in Power
`
`Electronics, Vol. 3, No. 1.
`
`
`
`Exhibit 2029
`
`Wireless Power Consortium site on the Wayback
`
`Machine
`
`at
`
`https://web.archive.org/web/20110729035955/http://
`
`www.wirelesspowerconsortium.com/member-list.
`
`Exhibit 2030
`
`Wireless Power Consortium site on the Wayback
`
`Machine
`
`at
`
`https://web.archive.org/web/20110821093859/http://
`
`www.wirelesspowerconsortium.com/about/our-
`
`vision.html
`
`Exhibit 2031
`
`Wireless Power Consortium site on the Wayback
`
`Machine
`
`at
`
`https://web.archive.org/web/20110822142011/http://
`
`www.wirelesspowerconsortium.com/technology/tota
`
`l-energy-consumption.html
`
`Exhibit 2032
`
`An introduction to the Wireless Power Consortium
`
`standard and TI’s compliant solutions” from the 1Q
`
`2011 Texas Instruments Analog Applications Journal
`
`Exhibit 2033
`
`H. Shen, J. Lee and T. Chang, "Study of contactless
`
`inductive charging platform with core array structure
`
`for portable products," 2011 International Conference
`
`
`
`on Consumer Electronics, Communications and
`
`Networks, 2011
`
`Exhibit 2034
`
`Measuring Wireless Charging Efficiency In the Real
`
`World”
`
`from
`
`https://www.wirelesspowerconsortium.com/data/dow
`
`nloadables/1/4/8/1/measuring-wireless-charging-
`
`efficiency-in-the-real-world-wpc-michigan-sept-
`
`2015.pdf
`
`Exhibit 2035
`
`Remote Deposition Transcript (Nov. 19, 2021), Dr.
`
`Jeremy Cooperstock, Ph.D.
`
`Exhibit 2036
`
`Remote Deposition Transcript (April 14, 2022), Dr.
`
`Jeremy Cooperstock, Ph.D.
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`
`
`
`
`I.
`
`INTRODUCTION
`
`Gwee’s Response established, with the well-reasoned testimony of Dr.
`
`Toliyat, a professor and frequent author in the field of inductive power, see EX2023,
`
`that a POSITA would be highly motivated to have Gundlach’s original, highly
`
`efficient, conductive charging design instead of the highly inefficient Gundlach-Lee
`
`dual-use transducer coil inductive charging system. POR, 31; EX2022, ¶147.
`
`Petitioner’s Reply does not meaningfully dispute important reasons (see, e.g., POR,
`
`1-3, 17-18, 24-31; EX2022, ¶¶109, 113-114, 125-148) that undermine and refute any
`
`rationales for modifications/combinations. Further, the Reply does not meaningfully
`
`defend the Petition’s Gundlach-Lee combination. Instead, Petitioner defends
`
`inductive charging in general, and introduces multiple new theories,1 each made for
`
`the first time in its Reply, as well as new Exhibits 1069-1089 submitted with the
`
`Reply, in an effort to rebut Dr. Toliyat’s reasoned analysis. These new theories and
`
`exhibits are untimely, improper and unfairly prejudicial in a Reply, and they should
`
`
`1 For simplicity, the word “theory” is used short-hand to reference an improper
`
`new theory, argument, basis and/or ground, as each such word is applicable.
`
`
`
`
`1
`
`
`
`be disregarded. 2 Henny Penny v. Frymaster, 938 F.3d 1324, 1330-31 (Fed. Cir.
`
`2019); SAS Inst. v. Iancu, 138 S. Ct. 1348, 1355 (2018); Intelligent Bio-Sys. v.
`
`Illumina Cambridge, 821 F.3d 1359, 1369-70 (Fed. Cir. 2016); 5 U.S.C. § 706; 37
`
`C.F.R. §42.23(b). Petitioner’s new theories for suggestion/motivation to combine,
`
`including its new and very different configuration for a modified Gundlach-Lee
`
`headset, should be rejected and disregarded.
`
`Gwee’s rationale/motivation arguments are not precluded. Johns Manville v.
`
`Knauf Insulation (IPR2018-00827, Paper 9); Hulu v. Sound View Innovations
`
`(IPR2018-00582, Paper 34). See also cases at POR, 40. It is Petitioner’s burden to
`
`establish that reason to combine for the skilled artisan, Johns Manville, supra, and,
`
`moreover, the testimony of Gwee’s expert, Dr. Toliyat, whose vast expertise in the
`
`area of wireless charging is not denied, amply contravenes, debunks and outweighs
`
`any alleged motions to combine proffered by Petitioner. See, e.g., Hulu, supra.
`
`
`2 For simplicity, the word “disregard” is used as shorthand for reject and disregard,
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`and to note Gwee’s continuing objection to the untimely, improper new exhibits
`
`and theories in the Reply.
`
`
`
`
`2
`
`
`
`II. ARGUMENT
`
`A. A POSITA lacks rationale/motivation to pursue the Gundlach-Lee
`
`combination
`
`1.
`
`The Gundlach-Lee combination, even if it met the claim
`
`limitations (which it does not), would not have been obviousness.
`
`a.
`
`The Reply does not meaningfully dispute important reasons why
`
`the combination alleged in the Petition is not obvious.
`
`The Petition advanced a specific configuration for an alleged Gundlach-Lee
`
`combination utilizing the geometry of the devices depicted in the asserted “system”
`
`in Gundlach Fig. 18. See EX1005, [0080]. For example, the Petition states and
`
`depicts the following:
`
`
`
`
`3
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`
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`In the embodiment of Figures 18a-18b (below), Gundlach’s system includes a
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`wireless headset stored in a clamshell charging case. (APPLE-1005, [0080].) This
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`pairofdevices that operate together to implement predetermined functionality—e.g.,
`
`charging and storing—is consistent with a POSITA’s understanding of a system.
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`(APPLE-1003, §47 (citing APPLE-1025; APPLE-1026).)
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`Ly
`
`and
`
`Gundlach-Lee satisfies [la]. Gundlach, for example. provides a portable
`
`charging case (portable switching device) coupled to a wireless headset (portable
`
`Gundlach, Figure 18b (annotated)
`
`electronic device). (APPLE-1003. 448.) Stee
`
`
`
`
`
`Gundlach, Figure 18b (annotated)
`
`
`
`
`4
`
`
`
`and
`
`
`
`Pet., 18-19, 22. See also Pet., 18 (“embodiment of Figures 18a-18b…is consistent
`
`with a POSITA’s understanding of a system”); Pet., 25-26 (“Figure 18 clamshell
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`case”); Pet. 30, 33 (“clamshell case embodiment (Figures 18a-18b)”); Pet., 29, 32,
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`34, 36, 39, 41, 47, 49, 63 (referring to Gundlach “clamshell case” as the “switching
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`device”); Pet. 20, 29, 33 (“Gundlach and Lee yield a clamshell case”); Pet., 47
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`(“clamshell case embodiment of Figures 18a-18b is sufficient to demonstrate
`
`obviousness”). The theories in the Petition were based upon the starting point of
`
`the Gundlach headset, e.g., headset 100 in the Petition’s Fig. 1, which has the same
`
`geometry as headset 1800 in Fig. 18, which has a speaker, and thus a speaker
`5
`
`
`
`
`
`
`transducer coil, in the earpiece of the wireless headset. See, e.g., EX1005, [0058],
`
`[0060].
`
`The footnoted statement about “bodily incorporation,” (Pet., 14, n.2), misses
`
`the point that the Petition unambiguously relied upon Gundlach Fig. 18 clamshell
`
`case and its corresponding headset as the starting point and basis for a system
`
`modified by Lee. It also misses the point that the speaker being modified by Lee’s
`
`dual-use coil is depicted in the Petition in the earpiece:
`
`
`
`Pet., 7. See EX1005, [0058]. The wireless headset depicted, described and relied
`
`upon in the Petition is the one consistently depicted in Gundlach See, e.g., EX1005,
`
`Figs. 1, 2a-f, 3a-b, 4a-b, 5a-b, 6a-d, 8, 9a-b, 10a-c, 11a-b, 13a-b, 14a-b, 17b-c, and
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`18a-b; Pet., passim.
`
`
`
`
`6
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`
`
`The Reply does not meaningfully dispute important reasons refuting any
`
`rationales for the Petition’s combinations. For example, first, Gundlach’s
`
`conductive charging is superior. POR, 1. Second, alleged enhanced reliabilities
`
`would not have motivated a POSITA to adopt Lee’s dual-use inductive system
`
`for Gundlach’s device. Id., 1-2. Third, any alleged benefits from alleged
`
`combination would be heavily outweighed and countervailed by other factors,
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`including penalties in energy efficiency, cost, complexity, troublesome heat inside
`
`a closed clamshell case, weight and size, especially in view of the goals and
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`requirements of Gundlach. Id., 1-3, 17-18, 24-31; EX2022, ¶¶109, 113-114, 125-
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`148. For example, the highly inefficient dual-use coil inductive charging in Lee’s
`
`Fig. 12 would require larger batteries and substantially increase charging time.
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`Id. Fourth, substituting Lee’s Fig. 12 inductive charging would not increase
`
`interoperability since USB charging (available directly and indirectly with an
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`adapter) is more commonly accessible than wireless charging. POR, 17-19;
`
`EX2022, ¶¶111-115. Nor does the Reply meaningfully dispute that the alleged
`
`combination would make coupling difficult at best, make resonance difficult at
`
`best, have a large air gap, and introduce significant inefficiencies. POR, 34;
`
`EX2022, ¶¶154.
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`All of Petitioner’s stated rationales for modifying Gundlach to use inductive
`
`
`
`
`7
`
`
`
`charging are, if valid, applicable, if at all, wireless charging in general. See POR,
`
`32; EX2022, ¶151. They do not stretch to the dual-use coil of Lee’s Fig. 12 device
`
`in combination with a Gundlach Fig. 18 device.
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`The only potential advantage proffered by Petitioner for using the dual-use
`
`transducer coil depicted in Lee’s Fig. 12 is reducing size and weight. Pet., 15.
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`However, this feature would have had no meaningful effect on either. POR, 32-33;
`
`EX2022, ¶¶151-156. Moreover, the larger battery required for such highly
`
`inefficient inductive charging would add more weight and bulk. POR, 33; EX2022,
`
`¶156.
`
`b.
`
`Petitioner’s improper new Lee suggestion theory should be
`
`disregarded. Irrespective, it lacks merit.
`
`Realizing that its Petition theories, the thrust being that references could be
`
`combined, are insufficient; and realizing that Gwee’s Response undermined any
`
`alleged rationales for combining, Petitioner’s Reply belatedly, but unpersuasively,
`
`seeks to shore up this issue. Petitioner’s new theory that Lee somehow “suggests”
`
`the Gundlach-Lee combination, (Reply, 1-2), is an untimely and improper Reply
`
`theory that should be disregarded. Irrespective, Lee does not suggest any
`
`combination advanced by the Petition. For example, Lee does not suggest inductive
`
`charging from a portable battery powered device, and Lee does not suggest using
`
`
`
`
`8
`
`
`
`any embodiment, much less its dual-use transducer coil embodiment, for devices
`
`with the portability, size and geometry requirements of Gundlach’s Fig. 18
`
`embodiment. At most, Lee’s advocacy of inductive charging versus “[w]ired
`
`methods of recharging batteries” might arguably suggest, if anything, some
`
`advantage, if any, over a USB cord. EX1006, 1:62-2:2. However, in Petitioner’s
`
`proposed Gundlach-Lee combination, the Gundlach Fig. 18 embodiment relies on
`
`conductive contacts between the headset and the case, not charging cords. E.g.,
`
`EX1005, [0069] (“[E]lectrical contacts 1124…for engaging electrical contacts).
`
`Contrary to Petitioner’s new (and improper) Reply theory, the Gundlach Fig. 18
`
`embodiment does not describe anything “targeted for improvement by Lee.” See
`
`Reply, 1.
`
`Further, while at most Lee might arguably suggest using inductive charging
`
`in some situations when corrosion, fatigue or alignment of electrical contacts is a
`
`problem, there is no evidence of such a problem with Gundlach devices, especially
`
`with a headset enclosed in a clamshell. Also, Petitioner’s expert Dr. Cooperstock
`
`and Gwee’s expert Dr. Toliyat agree that one designing a system with electrical
`
`contacts would account for fatigue or corrosion issues. EX2022, ¶100; Ex. 2036;
`
`37:15-22. See POR, 16. Further, mis-alignment of charging contacts is not an issue
`
`
`
`
`9
`
`
`
`for the proposed Gundlach-Lee combination, since the recessed base of Gundlach’s
`
`clamshell case would automatically align headset charging contacts.
`
`c.
`
`Petitioner’s improper new “additional rationales” theories
`
`should be disregarded. Irrespective, they lack merit.
`
`Petitioner’s “mere substitution” of inductive charging theory, (Reply, 2-3), is
`
`an untimely and improper new Reply theory that should be disregarded.
`
`Irrespective, re-engineering Gundlach’s system from a conductive charging
`
`arrangement to a dual-use transducer coil inductive charging system is not a “mere
`
`substitution” of one element for another. Petitioner’s proposed combination of
`
`Gundlach with Lee
`
`turns Gundlach’s simple charging solution from a
`
`straightforward DC-to-DC charging system to a heavy, bulky and inefficient DC-to-
`
`AC-to-DC charging system with new rectifiers and other circuit elements, all of
`
`which contribute to the inefficiency of the design by becoming sources of power loss
`
`due to heat. POR, 2.
`
`
`
`Petitioner’s “familiar elements…known methods…[and] predictable
`
`results’” theory, (Reply, 4), is another untimely and improper new Reply theory
`
`that should be disregarded. Irrespective, although Lee illustrates a dual-purpose
`
`coil arrangement schematically, none of Lee, Petitioner or Petitioner’s other
`
`exhibits provides any details for how such a dual-purpose coil would be
`
`
`
`
`10
`
`
`
`implemented in Gundlach’s Fig. 18 design. Gwee’s Dr. Toliyat notes, without
`
`meaningful rebuttal, that (1) a POSITA would understand that energy accumulating
`
`in the magnet of the dual-purpose coil would translate into undesirable heat, and it
`
`could vibrate the magnet as well, which could result in undesirable noise, POR, 26;
`
`EX2022, ¶136; (2) there has never been a commercially available portable
`
`consumer product with an inductive charging coil with a diameter as small as 3-
`
`4mm, POR, 29; EX2022, ¶141; (3) small coils required by the combination, even
`
`if they worked for inductive charging in view of the air gap versus diameter, would
`
`result in a battery charging very slowly compared to the use of conductive contacts,
`
`POR, 29; EX2022, ¶142; (4) large air gap in relation to coil diameter would result
`
`in a very low k coefficient and a very inefficient charging, if such a system could
`
`charge a battery in any meaningful way at all when one compares flux path height
`
`with air gap, POR, 30; EX2022, ¶143; (5) a POSITA would be concerned about heat
`
`due to inductive charging in closed clamshell case, POR, 31; EX2022, ¶146; and
`
`(6) a POSITA would need significant experimentation to try to adapt Lee’s Fig. 12
`
`embodiment in a Gundlach-Lee combination, especially to provide any meaningful
`
`level of charging efficiency, POR, 31; EX2022, ¶148. The suggested combination,
`
`therefore, is far from being a “known method” as Petitioner now argues, and
`
`instead would involve significant work on the part of a POSITA to overcome all
`
`
`
`
`11
`
`
`
`of the above-noted obstacles were the POSITA forced to attempt such a
`
`combination.
`
`Further, if anything the only “predictable results” of re-engineering Gundlach,
`
`as advocated in the Petition comprise charging inefficiency, cost, complexity,
`
`troublesome heat inside a closed clamshell case, and weight and size. POR, 1-3, 17-18,
`
`24-31; EX2022, ¶109, 113-114, 125-148.
`
`As to Petitioner’s motivation theory (Reply, 2), as explained in Gwee’s
`
`Response, including Dr. Toliyat’s well-reasoned testimony, Lee does not motivate a
`
`POSITA to make the Petition combinations. Including as noted above, Lee does not
`
`provide motivation for adopting inefficient inductive charging from a portable
`
`battery-powered device; and Lee does not provide any motivation for employing a
`
`“dual-use” transducer coil in a Gundlach Fig. 18 system.
`
`d.
`
`The law does not preempt Gwee’s motivation facts and
`
`arguments. Rather, it supports them.
`
`Gwee’s anti-motivation arguments are not preempted. Petitioner bears the
`
`burden on motivation. See, e.g., Johns Manville, supra. Obviousness requires a
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`reason (i.e., motivation) that would have prompted a person of skill in the relevant
`
`field to combine the elements in the manner asserted. See, e.g., id. Although
`
`“[c]onclusive proof of efficacy is not necessary to show obviousness,” see Hoffmann
`
`
`
`
`12
`
`
`
`La Roche v. Apotex, 748 F.3d 1326, 1331 (Fed. Cir. 2014), countervailing
`
`considerations for the alleged combination can, and here do, defeat allegations of
`
`motivation and obviousness. See, e.g., Hulu, supra.
`
`e.
`
`The serious problems resulting from the proposed Gundlach-Lee
`
`combination are more than mere “tradeoffs” and far outweigh
`
`and undermine any alleged motivation.
`
`Petitioner asserts that the disadvantages of a Gundlach-Lee combination “do[]
`
`not necessarily obviate motivation to combine.” See Reply, 5. Perhaps, in the
`
`abstract, disadvantages of a proposed combination may not defeat obviousness, but
`
`here, with respect to petitioner’s proposed Gundlach-Lee combination, they do.
`
`Gwee’s Response, supported by the well-informed and well-reasoned testimony of
`
`Dr. Toliyat, addresses why the proposed combination violates any realistic design-
`
`goals and intent of both Gundlach and Lee, and so why the proposed combination is
`
`not a reasonable “design tradeoff” that a POSITA would make. Petitioner responds
`
`by asserting that obviousness only requires a suitable option.’” See Reply, 5.
`
`However, suitability does not equate with motivation; and in any event
`
`disadvantages can, and here do, obviate an alleged option being suitable. Here, the
`
`same reasons noted above for lack of motivation and lack of known method (see
`
`
`
`
`13
`
`
`
`above and in the Response) establish why Petitioner’s proposed combination is not
`
`a suitable option.
`
`f.
`
`None of Dr. Cooperstock’s “ten other prior art examples,” (eight
`
`of which are untimely raised), involve wireless charging from a
`
`portable battery powered device or devices with the geometry of
`
`the Petition’s combination.
`
`None of Dr. Cooperstock’s “at least ten other prior art examples of inductively
`
`charged wireless audio devices,” (Reply, 10) -- most of which (i.e., APPLE-1070
`
`through APPLE-1080) are untimely raised for the first time in the Reply (and thus
`
`should be disregarded)3 -- involve wireless charging from a portable battery powered
`
`device or a system with the geometry requirements of Gundlach’s clamshell case
`
`system. That certain wireless charging of devices in certain configurations was
`
`
`3 In addition, Reply Exhibit 1080 is an advertising piece dated January 2022, which
`
`is after what Petitioner does not challenge as the August 5, 2011 priority date for
`
`the ‘077 patent, Pet., 1, thus rendering it irrelevant. Further, the charging cases
`
`depicted in Figure 4, which are not stated to charge from battery power, are clearly
`
`simulations, not actual products. EX1080, Fig. 4.
`
`
`
`
`14
`
`
`
`allegedly known or deemed suitable by some does not provide any motivation to
`
`make the Petition’s unsuitable Gundlach-Lee combination.
`
`Petitioner’s complaint that Dr. Toliyat, a leader in the field of wireless
`
`charging, provides only “bare testimony” of unsuitability is mistaken, and also ill-
`
`advised in view of Dr. Toliyat’s unquestioned qualifications and many unchallenged
`
`opinions and observations. Dr. Toliyat cites multiple references including peer
`
`reviewed articles and industry publications. EX2022, ¶¶118-126 (citing EX2027-
`
`2034). Moreover, Petitioner’s expert, Dr. Cooperstock, at least tacitly acknowledges
`
`unsuitability by not refuting major points, and by belatedly attempting to re-engineer
`
`the Petition’s combination. See EX1089, ¶¶36-41.
`
`B.
`
`Petitioner’s new Reply arguments against “bodily incorporation,” for
`
`“ordinary creativity,” and against using Gundlach’s “form factor” relied
`
`upon by the Petition are untimely and improper
`
`Petitioner’s arguments noted above, (Reply, 7-8) should be disregarded. The
`
`theories in the Petition were based upon the Gundlach Fig. 18-type headset and
`
`clamshell case depicted and described throughout the Petition, which has a speaker,
`
`and thus a speaker transducer coil, in the earpiece of the wireless headset. See, e.g.,
`
`EX. 1005, [0058], [0060]. Petitioner’s reliance upon Etter is misplaced, because the
`
`Petition specifically relied upon a system consisting of Gundlach Fig. 18 system
`
`
`
`
`15
`
`
`
`comprising a speaker in the earpiece being modified by Lee’s Fig. 12 device. See In
`
`re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Petitioner’s suggestion that
`
`the Board could deem obvious a modified or different system than the one advanced
`
`in the Petition invites error. Petitioner cannot, in a Reply, shift the theory, structures
`
`and configuration relied upon in the Petition. Although it may arguably entail some
`
`“creativity” to carry out a proposed combination, that does not mean Petitioner is
`
`free to change theories mid-IPR and re-engineer the Gundlach “form factor” relied
`
`upon by the Petition.
`
`C.
`
`Petitioner’s alleged motivations do not support a motivation to make the
`
`combination asserted in the Petition.
`
`1.
`
`Inductive charging being a “known alternative” in some
`
`circumstances (inapplicable here) does not provide a motivation
`
`for Gundlach-Lee combination asserted in the Petition.
`
`As noted above, Petitioner’s stated rationales for modifying Gundlach to use
`
`inductive charging are, if valid, applicable, if at all, wireless charging in general.
`
`See POR, 32; EX2022, ¶151. They do not stretch to the dual-use coil of Lee’s Fig.
`
`12 device in combination with a Gundlach Fig. 18 device, which, among other
`
`things, would be rendered inefficient, heavier and larger.
`
`
`
`
`16
`
`
`
`2.
`
`Petitioner’s argument for alleged enhanced reliability is based
`
`upon a mistaken premise and, in any event, does not provide a
`
`motivation for Gundlach-Lee combination asserted in the
`
`Petition.
`
`The Petition mentions “enhanced reliability” without further elaboration. Pet.,
`
`14. Irrespective, electrical contacts or USB-type wired connections are used for
`
`earpieces and similar devices exponentially more often than wireless charging
`
`solutions, especially during the relevant 2011 time frame. If corrosion was actually
`
`an issue, and/or if it was not heavily outweighed by inefficiencies and problems
`
`noted by Dr. Toliyat, one would expect small, portable devices wirelessly charged
`
`inside portable battery powered cases to be on the market at some point, but they
`
`never have. POR, 15-16; EX2022, ¶99. Fatigue and corrosion are minimal design
`
`considerations. POR, 16; EX2022, ¶100. Conductive contacts have more than ample
`
`reliability for Gundlach, especially the encased Fig. 18 embodiment. POR 16;
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`EX2022, ¶100. Further, it is agreed that designer would account for any fatigue or
`
`corrosion. EX2022, ¶100; Ex. 2036; 37:15-22. See POR, 16.
`
`The new Reply Exhibits, including 1070 and 1074 are untimely, and should
`
`be disregarded (see also footnote 3 above regarding irrelevant EX1080).
`
`Irrespective, they only show that a designer at most deemed certain wireless
`
`
`
`
`17
`
`
`
`charging suitable for specific applications not applicable to the Gundlach-Lee
`
`combination.
`
`Petitioner’s “reduce stress” argument, (Reply, 20-21), is based upon the
`
`mistaken premise that USB connections the sole means of charging the Gundlach
`
`headset. Reply, 20-21; EX2036, 31:15-33:9. To the contrary, Gundlach headsets
`
`can have USB-type connections and electrical contacts. EX1005, [0066]. Electrical
`
`contacts 326 are depicted when the underside of the Gundlach wireless headset is
`
`depicted in Figs. 3a-b, 4a-b, 6b, 6d --
`
`See also complementary adapter and cradle contacts 924 (Fig 9b), 1724 (Fig. 17c).
`
`EX1005, [0066], [0079]. The headset with contacts 326 is the same shape and
`
`
`
`
`
`
`18
`
`
`
`configuration of headset depicted in Fig. 18b relied upon by the Petition. All of
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`Gundlach’s headsets of the Fig. 18-type are depicted with at least electrical contacts.
`
`Petitioner’s untimely Reply argument that USB connections may serve as
`
`points of entry for contaminants (Reply, 10-11; EX2036, 31:15-33:9), does not
`
`address the electric contacts which would not.
`
`Moreover, Dr. Toliyat has presented persuasive testimony for why using
`
`indictive charging via Lee’s dual-use transducer coil in Gundlach’s clamshell case
`
`would be less reliable than ubiquitous and highly reliable electrical contacts. See at
`
`II.A.I.c above
`
`4.
`
`The Reply argument for a very different and allegedly now
`
`“feasible” design for the Lee-Gundlach combination is untimely
`
`and improper. Further, it is fatally flawed and there is no
`
`evidence it would work for a Gundlach headset. In any event,
`
`motivation to combine is still lacking for this untimely new
`
`design.
`
`Dr. Cooperstock’s Reply Declaration, EX1089, should be disregarded in its
`
`entirety as consisting of conclusory, unsupported arguments that merely repeat those
`
`advanced in the Reply, and untimely new theories. Relying upon Dr. Cooperstock,
`
`Petitioner advocates a new and very different design for its Gundlach-Lee
`
`
`
`
`19
`
`
`
`combination. Reply, 12; EX1089, ¶¶28-32. For example, the Reply now advocates
`
`moving the Gundlach speaker (as modified by Lee’s dual-purpose transducer coil)
`
`from the earpiece –as Gundlach teaches and the Petition advocates—to another
`
`location central to the headset, and employing an unspecified “acoustic passageway”
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`to route sound. See Reply, 12 (citing EX1089, ¶¶28-32). As noted at II.A.1.a above,
`
`the Petition’s theory was that a Gundlach speaker in the earpiece portion of
`
`Gundlach’s headset would be modified by Lee’s dual-use coil. The Reply abandons
`
`this theory, no doubt because Dr. Toliyat has explained its unfeasibility. The Reply
`
`(p. 12) improperly relies upon new EX1089, ¶¶28-32, which cites new EX1073 and
`
`EX1083-1085. This Reply argument for a very different and allegedly now
`
`“feasible” design for the Lee-Gundlach combination, and the new exhibits it relies
`
`upon, should be disregarded.
`
`Drs. Cooperstock and Toliyat at least agree on the importance of minimal air
`
`gap and proper coil alignment, which is usually achieved with close and parallel
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`coils. EX2022, ¶¶119, 122, 142; EX1089, ¶28. With the Petition’s Gundlach-Lee
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`combination, the small coils in the earpiece, “if they could be induced to carry a
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`charge in view of the air gap versus diameter, w
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