`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00117
`Patent 9,843,215
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`Table of Contents
`
`B.
`
`C.
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. THE PATENTED TECHNOLOGY .................................................................. 2
`A.
`The ’215 Patent Was Invented by LG Innotek .................................... 2
`B. Overview of the ’215 Patent ................................................................ 2
`C.
`Challenged ’215 Patent Independent Claims ....................................... 5
`III. OVERVIEW OF ASSERTED REFERENCES ................................................. 6
`Sawa (Ex. 1005)—the primary reference—does not disclose the
`A.
`claimed invention ................................................................................. 6
`Park (Ex. 1006)—a secondary reference—does not compensate for
`the deficiencies of Sawa ....................................................................... 9
`Inoue (Ex. 1007)—a tertiary reference—does not compensate for the
`failures of Sawa or Park ....................................................................... 9
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE LIKELIHOOD
`OF INVALIDITY OF THE CHALLENGED CLAIMS ................................... 9
`A. Ground 1: Claims 1, 8–11, 13, 17, and 19–21 Are Not Rendered
`Obvious by the Combination of Sawa and Park .................................. 9
`The Petition asserts that Sawa alone discloses these claim
`1.
`limitations—the Petition does not assert any combination of
`references or articulate any modifications to Sawa ................. 11
`Sawa does not disclose [1.2 and 13.3] “a first polymeric
`material layer” and [1.3 and 13.4] “a second polymeric material
`layer,” [1.8 and 13.9] “wherein the first extending portion and
`the second extending portion are connected to each other.” ... 13
`a. Claims 1 and 13 require two separate and distinct
` polymeric material layers…………………………...…...13
`
`b. Sawa does not disclose "a first polymeric material layer"
` and a "second polymeric material layer" …………...…..18
`
`2.
`
`
`
`i
`
`

`

`3.
`
`Sawa does not disclose [1.6] and [13.7] “wherein the first
`polymeric material layer includes a first extending portion
`extending longer than the plurality of soft magnetic layers” or
`[1.7] and [13.8] “wherein the second polymeric material layer
`includes a second extending portion extending longer than the
`plurality of soft magnetic layers.” ........................................... 22
`a. Claims 1 and 13 require extending portions………...…...23
`
`b. Sawa does not disclose the claimed "extending
` portion[s]"………………………………………………..25
`
`
`
`B. Ground 2: Claims 5, 12, 18, and 22 Are Not Rendered Obvious by the
`Combination of Sawa and Inoue. ....................................................... 28
`V. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ...................... 28
`Factor 1: The district court has not granted a stay, nor is there any
`A.
`evidence that a stay will be granted. .................................................. 29
`Factor 2: The district court trial will occur before the deadline for a
`final decision in this proceeding. ....................................................... 31
`Factor 3: By the time an institution decision is reached, the parties and
`the court will have nearly completed claim construction and discovery
`will be underway. ............................................................................... 34
`Factor 4: There is complete overlap between this IPR and the district
`court proceedings. .............................................................................. 35
`Factor 5: Petitioner is a defendant in the district court litigation. ...... 37
`E.
`Factor 6: The petition is without merit and unlikely to succeed. ....... 37
`F.
`VI. CONCLUSION ................................................................................................ 40
`
`
`B.
`
`C.
`
`D.
`
`
`
`
`
`
`
`ii
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`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Apple Inc.,
`Case No. 6:21-cv-00579-ADA, Dkt. No. 35 (W.D. Tex. Nov. 11,
`2021)
`
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 33 (W.D. Tex. Sept. 28, 2021)
`
`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`
`Text Order Denying Motion to Stay Pending IPR, Solas OLED
`Ltd. v. Google, Inc., Case No. 6:19-cv-00515-ADA (W.D. Tex.
`June 23, 2020)
`
`Order Denying Motion to Stay Pending IPR, Multimedia Content
`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-
`00207-ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019)
`
`Scheduling Order, Correct Transmission LLC v. Adtran, Inc.,
`Case No. 6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10,
`2020)
`
`Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case
`No. 6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`
`Standing Order Governing Proceedings in Patent Cases, Judge
`Alan D. Albright
`
`Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case
`No. 6:19-cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30, 2020)
`
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Apple Inc. in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`
`
`
`iii
`
`

`

`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`Defendant Apple Inc.’s First Amended Preliminary Invalidity
`Contentions in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`
`Android Authority article: LG Innotek’s Latest wireless charger is
`Three times faster
`
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 28 (W.D. Tex. Nov. 15,
`2021)
`
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-00579-ADA
`(W.D. Tex.)
`
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 56 (W.D. Tex. Feb. 11, 2022)
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`I.
`
`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
`
`preliminary response to Petitioner Apple Inc.’s (“Petitioner”) petition for inter
`
`partes review of U.S. Patent No. 9,843,215 (“’215 patent”).
`
`First, the Board should deny institution because Petitioner fails to establish a
`
`reasonable likelihood of invalidity for the independent claims. The independent
`
`claims separately recite two distinct layers—“a first polymeric material layer” and
`
`“a second polymeric material layer”—that are connected to each other. Petitioner
`
`asserts that Sawa alone discloses these claim limitations and does not propose
`
`any combination of references or modifications to Sawa for these limitations.
`
`However, Petitioner cannot establish that Sawa discloses these limitations because
`
`Petitioner identifies only a single resin layer as supposedly constituting both the
`
`“first” and “second” layers. Petitioner fails to provide any reasonable basis to
`
`support its reliance on only a single layer of Sawa as constituting both the “first” and
`
`“second” layers recited in the claims, and therefore cannot establish a reasonable
`
`likelihood of invalidity.
`
`Second, the Board should exercise its discretion to deny the petition in light
`
`of a parallel district court case involving the same patent, the same claims, the same
`
`prior art, and the same parties. By the time the Board reaches an institution decision
`
`in this proceeding, the parties and the district court will have already invested
`
`
`
`1
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`significant time and resources in the case—claim construction will nearly be
`
`completed and discovery will be underway. The district court trial is also on track to
`
`take place months before the deadline for a final written decision. Moreover, the
`
`petition fails on the merits as described above. Thus, all six Fintiv factors strongly
`
`favor a discretionary denial. But even if the Board concludes that a discretionary
`
`denial is not appropriate, Petitioner has not established a reasonable likelihood of
`
`invalidity under any ground or challenged claim.
`
`Accordingly, the Board should deny institution.
`
`II. THE PATENTED TECHNOLOGY
`
`A. The ’215 Patent Was Invented by LG Innotek
`
`The ’215 patent (Ex. 1001) names 7 Korean inventors who were employed by
`
`LG Innotek Co. Ltd (“LG Innotek”). LG Innotek, a global materials and components
`
`manufacturer, developed wireless power devices and components for products such
`
`as smartphones. See, e.g., Ex. 2012. Patent Owner acquired the ’215 patent from LG
`
`Innotek in 2021.
`
`B. Overview of the ’215 Patent
`
`The ’215 patent is entitled “Wireless Charging Board and Communication
`
`Board and Wireless Charging and Communication Device.” It teaches a wireless
`
`communication board and a portable terminal that incorporate a plurality of layers
`
`
`
`2
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`to enable and improve efficiency in wireless power. More specifically, the ’215
`
`patent describes a multi-layer structure that includes a coil for wireless power
`
`conversion (WPC). Ex. 1001 at 2:53–59. In one embodiment illustrated in Figures 1
`
`and 2 below, the wireless charging and communication board may include:
`
`a soft magnetic layer 220, 230; a polymeric material layer 310, 312 disposed
`on one surface and the other surface of the soft magnetic layer 220, 230 and
`extending longer than an exposed portion of the soft magnetic layer 220, 230;
`the coil pattern 120, 130; and a processing hole 311 passing through the
`wireless charging and communication board and used in performing aligning.
`
`Id. at 3:38–45.
`
`
`
`3
`
`
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`Ex. 1001, Figs. 1 and 2 (annotated to show extending portions in green).
`
`The ’215 patent emphasizes the importance of the extending portions (in
`
`green) by teaching that “an extending portion length l of a first polymeric material
`
`layer 310 or a second polymeric material layer 312 and a thickness h of the magnetic
`
`soft material layer 220, 230 may be formed to have a relation of the following
`
`Equation 1: l=A×h.” Id. at 4:38–45. The patent further teaches that if too short, the
`
`extending portions may not sufficiently protect the magnetic layers and if too long,
`
`the extending portions can be easily bent and damaged. Id. at 4:46–57. The extending
`
`portions can connect to one another and may (or may not) be made of the same
`
`material. Id. at 8:15-18; 9:15-17.
`
`To that end, the ’215 patent teaches that the two separate and distinct
`
`polymeric layers 310 and 312 can be connected to each other using polymeric
`
`material connectors 313. Id. at 5:24–42. Figure 3 below shows the polymeric layers
`
`310 and 312 in green and polymeric material connector 313 in brown.
`
`
`
`4
`
`

`

`
`
`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`Ex. 1001, Fig. 3.
`C. Challenged ’215 Patent Independent Claims
`
`The challenged independent claims are Claims 1 and 13, which are repeated
`
`below (Patent Owner has added emphasis to the claim limitations that are the focus
`
`of this Preliminary Patent Owner’s Response):
`
`1. A wireless charging and communication board, comprising:
`a plurality of soft magnetic layers comprising a first soft magnetic layer and a
`second soft magnetic layer;
`a first polymeric material layer arranged on a first surface of the plurality
`of soft magnetic layers;
`a second polymeric material layer arranged on a second surface of the
`plurality of soft magnetic layers opposed to the first surface; and
`a coil pattern arranged on the second polymeric material layer,
`wherein the plurality of soft magnetic layers are positioned between the first
`polymeric material layer and the second polymeric material layer,
`wherein the first polymeric material layer includes a first extending
`portion extending longer than the plurality of soft magnetic layers,
`wherein the second polymeric material layer includes a second extending
`portion extending longer than the plurality of soft magnetic layers,
`
`
`
`5
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`wherein the first extending portion and the second extending portion are
`connected to each other,
`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.
`
`13. A portable terminal, comprising:
`a housing;
`a plurality of soft magnetic layers arranged in the housing, and comprising a
`first soft magnetic layer and a second magnetic layer;
`a first polymeric material layer arranged on a first surface of the plurality
`of soft magnetic layers;
`a second polymeric material layer arranged on a second surface of the
`plurality of soft magnetic layers opposed to the first surface; and
`a coil pattern arranged on the second polymeric material layer,
`wherein the plurality of soft magnetic layers are disposed between the first
`polymeric material layer and the second polymeric material layer,
`wherein the first polymeric material layer comprises a first extending
`portion extending longer than the plurality of soft magnetic layers,
`wherein the second polymeric material layer comprises a second
`extending portion extending longer than the plurality of soft magnetic layers,
`and
`
`wherein the first extending portion and the second extending portion are
`connected to each other, and
`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.
`
`III. OVERVIEW OF ASSERTED REFERENCES
`
`A.
`
`Sawa (Ex. 1005)—the primary reference—does not disclose the
`
`claimed invention
`
`U.S. Patent No. 9,443,648 (“Sawa”) was issued on September 13, 2016. Sawa
`
`relates to a magnetic sheet consisting of a plurality of magnetic thin plates. Id.,
`
`
`
`6
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`Abstract. Sawa states that a magnetic sheet can increase efficiency and power by
`
`reducing magnetic flux passing through wireless power coils into the substrate or
`
`battery. Id. at 2:6–17.
`
`As will be discussed in more detail below, Sawa fails to disclose two distinct
`
`polymeric layers that are connected to each other as required by both independent
`
`claims 1 and 13 of the ’215 patent. Sawa also fails to disclose the extending portions
`
`as required by the independent claims of the ’215 patent. Instead, Sawa discloses
`
`that a multi-layer laminate may be covered by a single, continuous, resin film:
`
`The magnetic sheet 1 shown in FIG. 3 has a structure in which the laminate
`of two first magnetic thin plates 2A, 2B and one second magnetic thin plate 4
`is covered by a resin film 5. If the magnetic thin plates 2, 4 are affected by
`corrosion such as rust, covering the entire laminate of the magnetic thin plates
`2, 4 by the resin film 5 is effective.
`
`Id. at 5:8–13 (emphasis added).
`
`Sawa depicts this film in Figure 3 as a continuous resin film 5 covering the
`
`entire laminate (shown in blue below).
`
`
`
`7
`
`

`

`
`
`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`Id., Fig. 3 (annotated).
`
`Sawa teaches that it is effective to encapsulate the entire laminate with the
`
`resin film:
`
`If the magnetic thin plates 2, 4 are affected by corrosion such as rust, covering
`the entire laminate of the magnetic thin plates 2, 4 by the resin film 5 is
`effective. If it is necessary for the magnetic thin plates 2, 4 to be electrically
`insulated, the resin film 5 covering the entire laminate is effective.
`
`Id. at 5:11–16 (emphasis added). Sawa further teaches that if the entire laminate is
`
`covered by a resin film, adhesive layers are not necessary:
`
`If the entire laminate is covered by the resin film 5 as in the magnetic sheet 1
`shown in FIG. 3, it is not necessary to provide an adhesive layer portion 3
`between the magnetic thin plates of the same kind, for example, between the
`magnetic thin plate 2A and the magnetic thin plate 2B.
`
`Id. at 5:16–21 (emphasis added).
`
`
`
`8
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`B.
`
`Park (Ex. 1006)—a secondary reference—does not compensate
`
`for the deficiencies of Sawa
`
`U.S. Patent No. 8,922,162 (“Park”) was issued on December 30, 2014. The
`
`Petition asserts Park in the context of the preamble of claim 1 and certain dependent
`
`claims. However, Petitioner does not rely on Park for any of the independent claim
`
`limitations addressed herein by Patent Owner. Thus, the Board need not wade into
`
`the issues related to Park and it will not be addressed herein.
`
`C.
`
`Inoue (Ex. 1007)—a tertiary reference—does not compensate for
`
`the failures of Sawa or Park
`
`U.S. Patent No. 8,922,160 (“Inoue”) was also issued on December 30, 2014.
`
`The Petition asserts Inoue in the context of certain dependent claims. However,
`
`Petitioner does not rely on Inoue for any of the independent claim limitations
`
`addressed herein by Patent Owner. Thus, the Board need not wade into the issues
`
`related to Inoue and it will not be addressed herein.
`
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD OF INVALIDITY OF THE CHALLENGED CLAIMS
`
`A. Ground 1: Claims 1, 8–11, 13, 17, and 19–21 Are Not Rendered
`Obvious by the Combination of Sawa and Park
`
`Ground 1 challenges claims 1, 8–11, 13, 17, and 19–21 as obvious over Sawa
`
`in view of Park. Claims 8–11 depend from independent claim 1, and claims 17 and
`
`
`
`9
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`19–21 depend from independent claim 13. Petitioner’s ground 1 challenge to these
`
`claims fails for two dispositive reasons.
`
`First, Petitioner’s combination does not disclose or render obvious “a first
`
`polymeric material layer” and “a second polymeric material layer” that are
`
`“connected to each other” as required by the following limitations:
`
`• [1.2 and 13.3] “a first polymeric material layer arranged on a first
`
`surface of the plurality of soft magnetic layers”
`
`• [1.3 and 13.4] “a second polymeric material layer arranged on a second
`
`surface of the plurality of soft magnetic layers opposed to the first
`
`surface”
`
`• [1.8 and 13.9] “wherein the first extending portion and the second
`
`extending portion are connected to each other”
`
`Second, Petitioner’s combination does not disclose or render obvious the
`
`“extending portions” required by the following limitations:
`
`• [1.6] “wherein the first polymeric material layer includes a first
`
`extending portion extending longer than the plurality of soft magnetic
`
`layers” [13.7] “wherein the first polymeric material layer comprises a
`
`first extending portion extending longer than the plurality of soft
`
`magnetic layers”
`
`
`
`10
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`• [1.7] “wherein the second polymeric material layer includes a second
`
`extending portion extending longer than the plurality of soft magnetic
`
`layers” and [13.8] “wherein the second polymeric material layer
`
`comprises a second extending portion extending longer than the
`
`plurality of soft magnetic layers”
`
`Because the combination of Sawa and Park does not disclose these critical
`
`claim limitations of independent claims 1 and 13, Petitioner is unable to establish a
`
`reasonable likelihood of invalidity as to these claims or any of the challenged
`
`dependent claims.
`
`1.
`
`The Petition asserts that Sawa alone discloses these claim
`limitations—the Petition does not assert any combination of
`references or articulate any modifications to Sawa
`
`The Petition only cites the secondary Park reference in the context of the
`
`preamble of claim 1. To that end, the Petition asserts that Sawa alone discloses each
`
`of the claim limitations in the independent claims aside from the preamble. As such,
`
`the Petition’s discussion of Park and the reasons to combine Sawa and Park are
`
`irrelevant to the analysis of the claim limitations discussed herein.
`
`While the Petition concludes that “Sawa renders obvious” each claim
`
`limitation, the Petition does not articulate any obviousness theory for any limitations
`
`aside from the preamble. For instance, the Petition does not propose any combination
`
`of references. Nor does the Petition propose or articulate any modifications to Sawa
`
`
`
`11
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`or single reference obviousness theory based on Sawa. Nor does the Petition identify
`
`any differences between Sawa and the claim limitations, which is a fundamental first
`
`step in the obviousness analysis. See Graham v. John Deere Co., 383 US 1, 17-18
`
`(1966).
`
`Rather, the Petition only presents the theory that Sawa alone “teaches” or
`
`discloses these claim limitations. Thus, the Board must consider only what Sawa
`
`actually discloses—regardless of whether the Petition uses the conclusory language
`
`that “Sawa renders obvious” the various limitations. See In re Magnum Oil Tools
`
`Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving
`
`obviousness, a petitioner cannot employ mere conclusory statements. The petitioner
`
`must instead articulate specific reasoning, based on evidence of record, to support
`
`the legal conclusion of obviousness.”); Liberty Mut. Ins. Co. v. Progressive Casualty
`
`Ins. Co., Case CBM2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8)
`
`(“[W]e will address only the basis, rationale, and reasoning put forth by the
`
`Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s
`
`arguments against the Petitioner.”).
`
`Consequently, the Petition cannot establish any reasonable likelihood of
`
`invalidity aside from what is actually taught and disclosed by Sawa. And as
`
`discussed below, Sawa does not teach or disclose several critical claim limitations.
`
`
`
`12
`
`

`

`
`
`2.
`
`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`Sawa does not disclose [1.2 and 13.3] “a first polymeric
`material layer” and [1.3 and 13.4] “a second polymeric
`material layer,” [1.8 and 13.9] “wherein the first extending
`portion and the second extending portion are connected to
`each other.”
`
`The ’215 patent claims separately recite two distinct layers—“a first
`
`polymeric material layer” and “a second polymeric material layer”—that are
`
`connected to each other. The Petition asserts that Sawa’s single, encapsulating resin
`
`film discloses both the “first polymeric layer” and the “second polymeric layer.”
`
`However, the Petition cannot establish that Sawa discloses these limitations because
`
`the Petition identifies only a single resin layer as supposedly constituting both the
`
`“first” and “second” layers. The Petition fails to provide any reasonable basis to
`
`support its reliance on only a single layer of Sawa as constituting both the “first” and
`
`“second” layers recited in the claims, and therefore cannot establish a reasonable
`
`likelihood of invalidity.
`
`a.
`
`Claims 1 and 13 require two separate and
`distinct polymeric material layers
`
`The ’215 patent claims require two separate and distinct polymeric material
`
`layers. For example, the two separate limitations in claim 1 are seen in bold below:
`
`1. A wireless charging and communication board, comprising:
`a plurality of soft magnetic layers comprising a first soft magnetic layer and a
`second soft magnetic layer;
`a first polymeric material layer arranged on a first surface of the plurality
`of soft magnetic layers;
`
`
`
`13
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`a second polymeric material layer arranged on a second surface of the
`plurality of soft magnetic layers opposed to the first surface; and
`a coil pattern arranged on the second polymeric material layer,
`wherein the plurality of soft magnetic layers are positioned between the first
`polymeric material layer and the second polymeric material layer,
`wherein the first polymeric material layer includes a first extending portion
`extending longer than the plurality of soft magnetic layers,
`wherein the second polymeric material layer includes a second extending
`portion extending longer than the plurality of soft magnetic layers,
`wherein the first extending portion and the second extending portion are
`connected to each other,
`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.
`
`Ex. 1001, Claim 1. The same limitations are recited in claim 13.
`
`Thus, the ’215 patent clearly recites two separate and distinct polymeric
`
`layers: the “first polymeric material layer” and “the second polymeric material
`
`layer.” See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249,
`
`1254 (Fed. Cir. 2010) (“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.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288
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`(Fed. Cir. 2004)). These two separate and distinct polymeric layers are further
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`illustrated in each of Figures 1-5, 9 and 10. For example, Figure 3 below illustrates
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`two distinct polymeric layers 310 and 312 (in green) arranged on opposite surfaces
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`of the soft magnetic layers 220 and 230.
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`Ex. 1001, Fig. 3 (annotated).
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`The ’215 patent further teaches that the two distinct polymeric layers 310 and
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`312 are connected to each other, which further emphasizes that they are separate
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`layers. Id. at 5:24–42. For example, Figure 3 above shows the polymeric layers 310
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`and 312 (in green). The polymeric material connector 313 (in brown) is “intended
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`for connecting the first polymeric material layer 310 and the second polymeric
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`material layer 312 and surrounding the exposed portion of the soft magnetic layer
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`220.” Id. at 5:34-37.
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`To that end, Claims 1 and 13 separately recite that each polymeric material
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`layer includes an extending portion, wherein those extending portions “are
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`connected to each other.” These limitations are bolded in claim 1 below:
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`1. A wireless charging and communication board, comprising:
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`a plurality of soft magnetic layers comprising a first soft magnetic layer and a
`second soft magnetic layer;
`a first polymeric material layer arranged on a first surface of the plurality of
`soft magnetic layers;
`a second polymeric material layer arranged on a second surface of the plurality
`of soft magnetic layers opposed to the first surface; and
`a coil pattern arranged on the second polymeric material layer,
`wherein the plurality of soft magnetic layers are positioned between the first
`polymeric material layer and the second polymeric material layer,
`wherein the first polymeric material layer includes a first extending
`portion extending longer than the plurality of soft magnetic layers,
`wherein the second polymeric material layer includes a second extending
`portion extending longer than the plurality of soft magnetic layers,
`wherein the first extending portion and the second extending portion are
`connected to each other,
`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.
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`The emphasized language above further confirms that the two polymeric
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`layers are distinct components. Not only does the claim separately recite the two
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`polymeric layers as separate claim limitations, but (as shown above) the claims
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`require that they be “connected to each other” through the extending portions—
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`meaning the two polymeric layers are two separate and distinct components. For
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`example, in Regents of Univ. of Minn., the Federal Circuit explained that when claim
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`language recites two components that are “connected,” it means that those objects
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`were previously separate. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d
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`929, 935-36 (Fed. Cir. 2013) (construing claim for medical device with two disks
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`that were “connected” to one another, and concluding that such language required
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`two distinct disks). Similarly, in Comcast Cable Comm’ns, the Federal Circuit
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`affirmed the Board’s conclusion that “speech recognition system” and “wireline
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`node” were “distinct elements” because the claim “list[ed] the elements separately”
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`and “[used] the word ‘coupled’” in the claim language “[a] program system
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`controlling at least part of a speech recognition system coupled to a wireline node.”
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`Comcast Cable Comm’ns, LLC v Promptu Sys. Corp., 838 F. App’x 551, 552-53
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`(Fed. Cir. Jan. 4, 2021) (nonprecedential); see also Am. Piledriving Equip., Inc. v.
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`Geoquip, Inc., 637 F.3d 1324, 1332-34 (Fed. Cir. 2011) (for claims directed to a
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`piledriving machine, affirming construction of the term “eccentric weight portion”
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`in a limitation reciting that the “eccentric weight portion” was “connected to” a
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`“cylindrical gear portion” as requiring that the structure forming the “eccentric
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`weight portion” be separate and apart from structure that was the “cylindrical gear
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`portion”); Becton, Dickinson, 616 F.3d at 1254–56 (where a claim to a shieldable
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`needle assembly recited a “hinged arm” and a “spring means,” which was
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`“connected to said hinged arm,” holding the claim to require that the “spring
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`means” had to be structurally separate from the hinged arm). Accordingly, the ’215
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`patent claims’ use of the term “connected” further confirms that the “first polymeric
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`material layer” and “second polymeric material layer” are separate and distinct
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`layers.
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`b.
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`Sawa does not disclose a “first polymeric
`material
`layer” and a “second polymeric
`material layer”
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`Sawa does not disclose two distinct polymeric layers that are connected to
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`each other. To the contrary, Sawa discloses a single “polymer resin that encapsulates
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`the magnetic sheet.” Petition at 40; Ex. 1005 at 5:8-16. At most, Sawa discloses only
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`a single polymeric layer.
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`The Petition asserts that Sawa’s Figure 3 discloses the “first polymeric layer”
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`and the “second polymeric layer.” Petition at 32-35. However, Petitioner’s annotated
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`diagram of Sawa’s Figure 3 arbitrarily splits the single, encapsulating resin film 5
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`into separate pieces: 1) a first polymeric layer, 2) a first extending portion, 3) a
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`boundary where the first extending portion is “connected” to the second extending
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`portion, 4) a second extending portion, and 5) a second polymeric layer.
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`Petition at 40. Sawa provides no such teaching to support Petitioner’s arbitrary
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`carving of Figure 3 into distinct portions—Sawa merely discloses a single,
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`encapsulating resin film 5. Indeed, in the district court claim construction briefing,
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`Petitioner acknowledged that Sawa discloses only a single encapsulating polymer
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`resin. See Ex. 2014 at 12 (“Apple relied on art in which a magnetic sheet is
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`encapsulated in a polymer resin such that the polymer is on a top surface of the
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`magnetic sheet, a bottom surface of the magnetic sheet, and sides of the magnetic
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`sheet, which consist of more than one magnetic plate.”). Petitioner does not provide
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`any reasonable basis to support its arbitrary carving of Sawa