Apple Inc.
`v.
`Scramoge Technology Ltd.
`
`IPR2022-00117, U.S. Patent No. 9,843,215
`
`Patent Owner’s Demonstrative Exhibits
`
`February 9, 2023
`
`Ex. 2021
`
`Scramoge Technology Ltd.
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`1
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 1
`
`
`v.
`Scramoge Technology Ltd.
`
`IPR2022-00117, U.S. Patent No. 9,843,215
`
`Patent Owner’s Demonstrative Exhibits
`
`February 9, 2023
`
`Ex. 2021
`
`Scramoge Technology Ltd.
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`1
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 1
`
`
`
`Grounds 1-2: No Plurality of Soft Magnetic Layers in Sawa
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`2
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 2
`
`
`
`’215 Patent, Claim 1
`
`1. A wireless charging and communication board, comprising:
`[1.1] a plurality of soft magnetic layers comprising a first soft magnetic layer and a second soft magnetic layer;
`[1.2] a first polymeric material layer arranged on a first surface of the plurality of soft magnetic layers;
`[1.3] a second polymeric material layer arranged on a second surface of the plurality of soft magnetic layers
`opposed to the first surface; and
`[1.4] a coil pattern arranged on the second polymeric material layer,
`[1.5] wherein the plurality of soft magnetic layers are positioned between the first polymeric material layer and
`the second polymeric material layer,
`[1.6] wherein the first polymeric material layer includes a first extending portion extending longer than the
`plurality of soft magnetic layers,
`[1.7] wherein the second polymeric material layer includes a second extending portion extending longer than the
`plurality of soft magnetic layers,
`[1.8] wherein the first extending portion and the second extending portion are connected to each other,
`[1.9] wherein at least one of the first soft magnetic layer or the second soft magnetic layer is made with one or
`more of an amorphous alloy, a crystalline alloy, an amorphous alloy ribbon, a nanocrystalline ribbon, or a
`silicon steel plate.
`
`’215 Patent, Claim 1; see also Claim 13.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`3
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 3
`
`
`
`Summary of Why Petition Fails
`
`• Petition relies on Sawa (U.S. Patent No. 9,443,648), inter alia, for
`all grounds.
`• Sawa discloses two magnetic sheets.
`• Sawa teaches that the sheets are of two different “kinds” and that
`they exhibit different magnetic characteristics.
`
`•
`
`In order to be “hard to saturate” in the presence of a positioning
`magnet, Sawa’s first magnetic sheet is of a different material
`composition than the second magnetic sheet, is manufactured
`differently than the second magnetic sheet, and is significantly
`thicker than the second magnetic sheet.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`4
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 4
`
`
`
`The Petition Inadequately Analyzes Sawa
`
`• Petition identifies the first magnetic thin plate of Sawa as satisfying
`the “first soft magnetic layer” of the claims of the ’215 Patent.
`• Petition identifies the second magnetic thin plate of Sawa as
`satisfying the “second soft magnetic layer” of the claims of the
`’215 Patent.
`• Petition relies on Sawa’s disclosure that the inclusion of silicon (Si)
`as part of the material composition of the first magnetic thin plate
`renders obvious that the composition is a soft magnetic material
`– “[E]ach magnetic plate may include silicon (Si), where ‘Si is an element
`effective for control of a soft magnetic characteristic.’” Petition at 31-32
`(citing Sawa at 9:56-10:1).
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`5
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 5
`
`
`
`Silicon Alone Does Not Dictate Soft Characteristics
`
`Ex. 2020, Declaration of Dr. David S. Ricketts, ¶107.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`6
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 6
`
`
`
`Petition Ignores Sawa’s Full Disclosure
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`Sawa at 2:47 – 3:3.
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`7
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 7
`
`
`
`Petition Ignores Sawa’s Full Disclosure
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`8
`
`Sawa at 5:24–41.
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 8
`
`
`
`Petition Ignores Sawa’s Full Disclosure
`
`Sawa at 9:2–11.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`9
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 9
`
`
`
`Petition Ignores Sawa’s Full Disclosure
`
`Ex. 2020, Declaration of Dr. David S. Ricketts, ¶63.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`10
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 10
`
`
`
`Petition Ignores Sawa’s Full Disclosure
`
`Ex. 2020, Declaration of Dr. David S. Ricketts, ¶62.
`
`Ex. 2019, Introduction to Inorganic Chemistry, at 6.91.1.
`
`Ex. 2020, Declaration of Dr. David S. Ricketts, ¶63.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`11
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 11
`
`
`
`Petitioner Presents New Evidence In Reply
`
`• Petition pays curt treatment to Sawa’s disclosure regarding the magnetic
`characteristics of the first magnetic sheet, arriving at unsubstantiated
`conclusions.
`
`•
`
`In Reply, Petitioner submits a supplemental declaration in excess of
`twenty-five pages and more than fifteen new exhibits.
`
`• “In an inter partes review, the burden of persuasion is on the petitioner to
`prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. §
`316(e), and that burden never shifts to the patentee.”
`– Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`12
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 12
`
`
`
`Petitioner’s Reply Evidence Is Improper
`
`• “[I]t is of the utmost importance that petitioners in the IPR proceedings adhere to the
`requirement that the initial petition identify “with particularity” the “evidence that
`supports the grounds for the challenge to each claim.”
`– Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018)
`• “Petitioner may not submit new evidence or argument in reply that it could have
`presented earlier, e.g.[,] to make out a prima facie case of unpatentability.”
`– PTAB Consolidated Patent Trial Practice Guide (Nov. 21, 2019)
`• “Unlike district court litigation—where parties have greater freedom to revise and
`develop their arguments over time and in response to newly discovered material—the
`expedited nature of IPRs bring with it an obligation for petitioners to make their case
`in their petition to institute.”
`– Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (affirming
`refusal to consider reply arguments relying on “new evidence”).
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`13
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 13
`
`
`
`Grounds 1-2: No Separate Polymeric Layers in Sawa
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`14
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 14
`
`
`
`’215 Patent, Claim 1
`
`1. A wireless charging and communication board, comprising:
`[1.1] a plurality of soft magnetic layers comprising a first soft magnetic layer and a second soft magnetic layer;
`[1.2] a first polymeric material layer arranged on a first surface of the plurality of soft magnetic layers;
`[1.3] a second polymeric material layer arranged on a second surface of the plurality of soft magnetic layers
`opposed to the first surface; and
`[1.4] a coil pattern arranged on the second polymeric material layer,
`[1.5] wherein the plurality of soft magnetic layers are positioned between the first polymeric material layer and
`the second polymeric material layer,
`[1.6] wherein the first polymeric material layer includes a first extending portion extending longer than the
`plurality of soft magnetic layers,
`[1.7] wherein the second polymeric material layer includes a second extending portion extending longer than
`the plurality of soft magnetic layers,
`[1.8] wherein the first extending portion and the second extending portion are connected to each other,
`[1.9] wherein at least one of the first soft magnetic layer or the second soft magnetic layer is made with one or
`more of an amorphous alloy, a crystalline alloy, an amorphous alloy ribbon, a nanocrystalline ribbon, or a
`silicon steel plate.
`
`’215 Patent, Claim 1; see also Claim 13.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`15
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 15
`
`
`
`Summary of Why Petition Fails
`
`• Petition relies on Sawa (U.S. Patent No. 9,443,648), inter alia, for all grounds.
`• Petition focuses on Sawa’s encapsulating resin in attempting to show that the
`“first polymeric material layer …” and “second polymeric material layer …”
`limitations are met.
`• The unequivocal language of the claims requires separate “polymeric material
`layers.” The claims further require that the “extending portions” of the
`“polymeric material layers” be connected to each other.
`• When properly construed, the “first polymeric material layer …” and the “second
`polymeric material layer …” must be separate and distinct from each other.
`• Because Sawa’s encapsulating resin does not consist of separate and distinct top
`and bottom layers, Sawa cannotsatisfy the “first polymeric material layer …”
`and the “second polymeric material layer …” limitations.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`16
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 16
`
`
`
`Claim Construction
`
`• “Where a claim lists elements separately, ‘the clear implication of the claim
`language’ is that those elements are ‘distinct component[s]’ of the patented
`invention.”
`– Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed.
`Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))
`• “The asserted claims list those elements [safety contact element and exit
`end of the mechanism] separately … There is, therefore, a presumption that
`those components are distinct … No party has identified claim language
`overcoming the presumption that the exit end of the mechanism and the
`safety contact element are distinct components. Nor is there any language in
`the written description that overcomes that presumption.”
`
`– Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1382 (Fed.
`Cir. 2022)
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`17
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 17
`
`
`
`Regents of Univ. of Minn.
`
`• Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935-36 (Fed. Cir. 2013)
`• Claims of patent recited “first and second disks” or “first and second occluding disks” and
`further required that the two disks be either “affixed,” “joined,” or “connected” to one
`another.
`
`• “The district court [correctly] concluded that ‘a person of ordinary skill in the art ... would
`read the ′ 291 patent as covering only a device made up of two physically separate disks
`that are attached to one another,’ and therefore construed the phrase ‘first and second
`[occluding] disks’ to mean ‘physically distinct and separate disks.’”.
`• “The claim language fully supports a requirement of separateness.”
`• “The separateness requirement is also fully supported by the specification, which is ‘the
`single best guide to the meaning of a disputed term.’”
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`18
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 18
`
`
`
`The Claims Support a Requirement of Separateness
`
`[1.2] a first polymeric material layer arranged on a first surface of the plurality of soft magnetic layers;
`[1.3] a second polymeric material layer arranged on a second surface of the plurality of soft magnetic layers
`opposed to the first surface; and
`
`[1.6] wherein the first polymeric material layer includes a first extending portion extending longer than the
`plurality of soft magnetic layers,
`[1.7] wherein the second polymeric material layer includes a second extending portion extending longer than
`the plurality of soft magnetic layers,
`
`[1.8] wherein the first extending portion and the second extending portion are connected to each other,
`
`• The claims separately recite the “first polymeric material layer” and the “second polymeric
`material layer.”
`
`• The claims further recite limiting language that the “first polymeric material layer” has a
`“first extending portion,” that the “second terminal polymeric material layer” has a “second
`extending portion,” and that “the first extending portion” and “the second extending portion”
`“are connected to each other.”
`Grounds 1-2, § 1
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`19
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 19
`
`
`
`The Specification Supports Separateness
`
`Scramoge Technology Ltd.
`
`’215 Patent at 5:32-42, Fig 3.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`20
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 20
`
`
`
`The Specification Supports Separateness
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`21
`
`’215 Patent at 5:51-58, Fig 5.
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 21
`
`
`
`File History Supports Separateness
`
`• Originally-filed claim recited “a polymeric material layer arranged on
`one surface and the other surface of the soft magnetic layer and
`extending longer than an exposed portion of the soft magnetic layer.”
`
`– Ex. 1002 at 214, Prosecution History of U.S. Patent Application Serial No.
`14/636,347, March 3, 2015 Claims, cl. 1.
`• Dependent claim 2 further recited “the polymeric material layer
`comprises a first polymeric material layer arranged on one surface of
`the soft magnetic layer and a second polymeric material layer
`arranged on the other surface of the soft magnetic layer.”
`– Ex. 1002 at 214, Prosecution History of U.S. Patent Application Serial No.
`14/636,347, March 3, 2015 Claims, cl. 2.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`22
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 22
`
`
`
`File History Supports Separateness
`
`• Examiner rejected the originally-filed claims based on Korean patent
`application KR 2013-0072181 to Lee et al. that taught a single polymeric layer.
`
`– Ex. 1002 at 100-101, Prosecution History of U.S. Patent Application Serial No. 14/636,347,
`August 25, 2016 Office Action.
`
`•
`
`In response, applicants amended claim 1 to recite the “first polymeric material
`layer” and the “second polymeric material layer,” remarking that “LEE et al.
`does not teach or suggest that ‘the first polymeric material layer is arranged on
`a first surface of the plurality of soft magnetic layers, and the second
`polymeric material layer is arranged on a second surface of the plurality of soft
`magnetic layers opposed to the first surface,’ as recited in claim 1.”
`
`– Ex. 1002 at 81-82, Prosecution History of U.S. Patent Application Serial No. 14/636,347, November 21,
`2016 Amendment, pp. 7-8.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`23
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 23
`
`
`
`Petition Arbitrarily Splits Sawa’s Single Encapsulating Resin
`
`•
`
`Sawa discloses a single encapsulating resin.
`
`• Petitioner’s annotated drawing merely applies hindsight reasoning using the ’215 Patent
`claims as a roadmap to find its prior art components.
`
`Petition at 40.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`24
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 24
`
`
`
`Petitioner’s Analysis Is Incorrect
`
`• Petitioner incorrectly asserts that the “claims are agnostic as to the manner in which
`the upper extending portion and lower extending portion are manufactured …”
`Petition at 41.
`
`– The correct claim construction analysis shows that separate “first and second polymeric material
`layers” must be “connected” through their respective “extending portions.”
`
`• Petitioner incorrectly asserts that Patent Owner’s proffered claim construction
`analysis results in a product-by-process claim. Reply at 21.
`
`– Petitioner cites no supporting law. Regardless, taken to its logical conclusion, this runs afoul of well-
`settled law that a claim can require separate structures that are “connected,” “coupled” or “affixed.”
`
`• Petitioner argues that “the Petition identifies two distinct portions of resin layer as
`corresponding to the claimed first and second polymeric layers.” Reply at 19.
`
`– Petitioner tacitly, if not expressly, admits that it has failed to show that Sawa discloses separate
`polymeric layers.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`25
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 25
`
`
`
`Ground 2: Not Obvious to Combine Sawa & Inoue
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`26
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 26
`
`
`
`’215 Patent, Claims 5, 12, 18 and 22
`
`5. The wireless charging and communication board of claim 1,
`further comprising an adhesive layer that adheres the first
`polymeric material layer and the second polymeric material
`layer to the plurality of soft magnetic layers.
`
`’215 Patent, Claim 5; see also Claim 18.
`
`12. The wireless charging and communication board of claim 1,
`further comprising an adhesive layer positioned between the
`first extending portion and the second extending portion,
`wherein the first extending portion adheres to the second
`extending portion.
`
`’215 Patent, Claim 12; see also Claim 22.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`27
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 27
`
`
`
`Summary of Why Ground 2 Fails
`
`• Petition relies on combination of Sawa (U.S. Patent No. 9,443,648) and Inoue (U.S.
`Patent No. 8,922,160), inter alia, for Ground 2.
`
`•
`
`Inoue teaches an adhesive between layers of a magnetic sheet.
`
`•
`
`Sawa already discloses use of an adhesive between layers of a magnetic sheet, but
`foregoes the adhesive when electrical insulation is not required in the embodiment the
`Petition relies upon.
`• A POSITA would recognize no benefit in adding adhesive to Sawa’s encapsulating resin in
`the manner the Petition proposes.
`• The combination’s drawbacks would outweigh any possible benefit.
`• Clearly a case of hindsight.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`28
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 28
`
`
`
`Sawa’s Disclosure of Adhesive
`
`Sawa, Fig. 1.
`
`Sawa, Fig. 3.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`Sawa at 4:5-15.
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`29
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 29
`
`
`
`Sawa’s Disclosure of Adhesive
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`30
`
`Sawa at 4:32-45.
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 30
`
`
`
`Inoue’s Disclosure of Adhesive
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`31
`
`Inoue at 7:17-28.
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 31
`
`
`
`Sawa Avoids Adhesive with Encapsulating Resin
`
`Sawa, Fig. 3.
`
`Sawa at 5:16-23.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`32
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 32
`
`
`
`Sawa Avoids Adhesive with Encapsulating Resin
`
`Ex. 2020, Declaration of Dr. David S. Ricketts, ¶116.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`33
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 33
`
`
`
`No Benefit in the Combination, Only Drawbacks
`
`Ex. 2020, Declaration of Dr. David S. Ricketts, ¶115.
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`34
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 34
`
`
`
`Obviousness Requires a Motivation to Combine
`
`•
`
`In assessing the prior art, the Board must consider whether a POSITA would
`have been motivated to combine the prior art to achieve the claimed
`invention.
`• “[O]bviousness concerns whether a skilled artisan not only could have
`made but would have been motivated to make the combinations or
`modifications of prior art to arrive at the claimed invention.”
`
`– Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
`• “[I]t can be important to identify a reason that would have prompted a
`person of ordinary skill in the relevant field to combine the elements in the
`way the claimed new invention does.”
`
`– KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`35
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 35
`
`
`
`Absence of a Benefit Precludes Obviousness
`
`• “The proper question to have asked was whether a pedal designer of ordinary
`skill, facing the wide range of needs created by developments in the field of
`endeavor, would have seen a benefit to upgrading Asano with a sensor.”
`– KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)
`• The Board has found IPR Petitions deficient where “profferred reasons to
`combine” are “excessively generic” and where “Petitioner never identifies or
`explains adequately any benefit or improvement gained by adding” the
`secondary reference.
`
`– Duo Sec. Inc. v. Strikeforce Techs., Inc., IPR2017-01041, 2017 WL 4677235, at *9
`(PTAB Oct. 16, 2017)(citing In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir.
`2016)(“[T]he factual inquiry whether to combine references must be thorough
`and searching, and the need for specificity pervades ....”.)
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`36
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 36
`
`
`
`Benefits Must Be Weighed Against Drawbacks
`
`• Motivation to combine requires balancing the desirability of trade-offs from a
`proposed combination. “The fact that the motivating benefit comes at the
`expense of another benefit, however, should not nullify its use as a basis to
`modify the disclosure of one reference with the teachings of another.
`Instead, the benefits, both lost and gained, should be weighed against one
`another.”
`– Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)
`• “Since Harding strives to increase cooling, one skilled in the art would have
`been discouraged from modifying Harding's device with Ootsuka's
`nonconductive, thermally insulating, cap.”
`
`– Ex Parte Shigetoshi Ito & Daisuke Hanaoka, Appeal No. 2010-003391, 2012 WL
`3041144, at *4 (BPAI July 23, 2012).
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`37
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 37
`
`
`
`“Could Have” Does Not Satisfy “Would Have”
`
`• “[O]bviousness concerns whether a skilled artisan not only could have
`made but would have been motivated to make the combinations or
`modifications of prior art to arrive at the claimed invention.”
`
`– Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
`• “An unsupported statement that combining the teachings of the two
`references would have been ‘well within the skill of a POSA,’ because the
`results of reacting a reducing sugar with an amine reactant ‘were well-known
`and predictable’ does not meet Petitioner’s burden.”
`
`– Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, 2018 WL 5098902,
`at *6 (PTAB Oct. 16, 2018).
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`38
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 38
`
`
`
`The Proposed Combination Is Made In Hindsight
`
`• Based on the unfounded assumption that Sawa’s encapsulating resin should be secured
`to all sides of the magnetic sheet, the Petition merely makes generic assertions that a
`POSITA would find the proposed combination of Sawa with Inoue “predictable” and
`“would have had a reasonable expectation of success.”
`• Petition identifies no benefit or improvement with the proposed combination.
`
`• Petition does not factor in the benefits lost, i.e., detrimental effects, with the
`proposed combination.
`• “Without any explanation as to how or why the references would be combined to arrive
`at the claimed invention, we are left with only hindsight bias that KSR warns against.”
`
`– Ex Parte Masashi Hayakawa, Appeal No. 2020-006550, 2021 WL 6133976, at *4
`(PTAB Dec. 27, 2021).
`
`Scramoge Technology Ltd.
`
`Grounds 1-2, § 1
`
`Grounds 1-2, § 2
`
`Ground 2
`
`DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE
`
`39
`
`Scramoge Technology Ltd.
`Ex. 2021 - Page 39
`
`
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