Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Date: May 5, 2023
`
`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 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 33
`Date: May 5, 2023
`
`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 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2022-00117
`Patent 9,843,215 B2
`
`I. BACKGROUND
`
`In response to a Petition (“Pet.”), on May 12, 2022, we instituted an
`
`inter partes review of claims 1, 5, 8–13, and 17–22 of U.S. Patent
`
`No. 9,843,215 B2 (“the ’215 patent”). Paper 9 (“Dec. to Inst.”). Patent
`
`Owner filed a Patent Owner Response (Paper 17, “PO Resp.”), Petitioner
`
`filed a Petitioner Reply (Paper 22, “Reply”), and Patent Owner filed a Sur-
`
`reply (Paper 25, “Sur-reply”). A transcript of an oral hearing held on
`
`February 9, 2023 (Paper 32, “Hr’g Tr.”) has been entered into the record.
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a). We base our decision on
`
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`Having reviewed the arguments of the parties and the supporting
`
`evidence, we conclude that Petitioner has demonstrated by a preponderance
`
`of the evidence that the challenged claims are unpatentable.
`
`II. THE ’215 PATENT
`
`The ’215 patent concerns a wireless charging and communication
`
`board and device. Ex. 1001, 1:18–20. Figure 1 of the ’215 patent is
`
`reproduced below.
`
`Figure 1 of the ’215 patent
`
`
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`2
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`Patent 9,843,215 B2
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`Figure 1 of the ’215 patent shows an embodiment of a charging and
`
`communication device that includes receiver 100 having reception coil
`
`pattern 120 for wireless power conversion and reception coil 130 for near
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`field communication, as well as transmitter 500 having transmission coil
`
`pattern 520 for wireless power conversion and transmission coil pattern 530
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`for near field communication. Id. at 2:54–3:2, Fig. 1. Alternating current
`
`flowing in transmission coil pattern 520 induces current in reception coil
`
`pattern 120 that is transmitted to a separate circuit and rectified. Id. at 3:6–
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`19. Receiver 100 includes a wireless charging and communication board
`
`and housing 400 that radiates heat from coil patterns 120, 130 to the outside.
`
`Id. at 3:33–37. The wireless communication board includes soft magnetic
`
`layer 220, 230; polymeric material layer 310, 312 disposed on one surface
`
`and the other surface of soft magnetic layer 220, 230 to extend longer than
`
`an exposed portion thereof and adhered thereto by adhesive layer 315; coil
`
`patterns 120, 130; and processing hole 311. Id. at 3:38–56, 4:39–57.
`
`Figure 3 of the ’215 patent is reproduced below.
`
`
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`3
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`Patent 9,843,215 B2
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`Figure 3 of the ’215 patent is a cross-sectional view of an embodiment of a
`
`wireless charging and communication board. Id. at 2:1–3. Figure 3 shows
`
`polymeric material layers 310, 312 arranged on the surfaces of soft magnetic
`
`layer 220, 230 and extending longer than an exposed portion of soft
`
`magnetic layer 220, 230, and material connector 313 connecting first
`
`polymeric layer 310 and second polymeric layer 312, thereby surrounding
`
`the exposed portion of soft magnetic layer. Id. at 5:24–37. The ’215 patent
`
`further explains that “a term of the polymeric material connector 313 can be
`
`used with a term of the extending portion,” so that “a first extending portion
`
`may be extended in the first polymeric material layer 310, and a second
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`extending portion may be extended in [the] second polymeric material
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`layer 312.” Id. at 5:37–42. “Accordingly, in the embodiment of FIG. 3, the
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`exposed portion may refer to an end exposed by a processing hole 311 and
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`the polymeric material connector 313 surrounding the exposed portion of the
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`soft magnetic core 220 may prevent water penetration from the outside.” Id.
`
`at 5:43–47.
`
`III.
`
`ILLUSTRATIVE CLAIM
`
`Claim 1, reproduced below with the paragraph designations used in
`
`the Petition, is representative of the subject matter of the ’215 patent.
`
`[1.0] 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 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;
`
`4
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`IPR2022-00117
`Patent 9,843,215 B2
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`[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.
`
`
`
`IV. GROUNDS OF INSTITUTION
`
`We instituted trial on the following grounds:
`
`Claim(s) Challenged
`1, 8–11, 13, 17, 19–21
`5, 12, 18, 22
`
`
`35 U.S.C. §
`103
`103
`
`Reference(s)/Basis
`Sawa,1 Park2
`Sawa, Park, Inoue3
`
`V. LEVEL OF ORDINARY SKILL
`
`In the Decision to Institute, we applied Petitioner’s description of a
`
`person of ordinary skill as one having a bachelor’s degree in electrical
`
`engineering, or equivalent training, and approximately two years of
`
`experience working in the field of wireless power transmission or experience
`
`and additional education that could have substituted for each other. Dec. to
`
`Inst. 13–14. Neither party disputes this description, and we apply it in this
`
`Decision.
`
`
`1 U.S. Patent No. 9,443,648 B2 to Sawa (Ex. 1005).
`2 U.S. Patent No. 8,922,162 B2 to Park (Ex. 1006).
`3 U.S. Patent No. 8,922,160 B2 to Inoue (Ex. 1007).
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`Patent 9,843,215 B2
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`VI. CLAIM CONSTRUCTION
`
` In our Decision to Institute, we noted that neither party proposed a
`
`construction of any claim term and we did not construe any terms. Dec. to
`
`Inst. 14–15. In its post-institution Patent Owner Response, Patent Owner
`
`contends that we should construe the claims to require two separate and
`
`distinct polymeric layers (claim limitations 1.2–1.8). PO Resp. 25–30.
`
`In separate limitations, claim 1 recites first and second layers on first
`
`and second surfaces, i.e., different surfaces, of a plurality of soft magnetic
`
`layers. Ex. 1001, 9:59–62. Each of the first and second layers has a portion
`
`that extends longer than the magnetic layers and the extending portions are
`
`connected to each other. Id. at 10:1–8. According to Patent Owner,
`
`Applicant’s amendment of the claims from their original form reciting “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” to their current form separately reciting first and second
`
`layers with extension portions that are connected to each other indicates the
`
`claim, as issued, should be construed to mean separate layers that are
`
`connected together. PO Resp. 28–30 (citing Ex. 1002, 81–82, 89, 214).
`
`Patent Owner contends that its proposed construction is consistent
`
`with the claim language. Id. at 29. Patent Owner argues that claim 1 not
`
`only recites first and second polymeric layers separately, but also recites that
`
`each of the polymeric layers has an extending portion and the extending
`
`portions are connected to each other. Id.; see Ex. 1001, 10:1–8.
`
`Patent Owner further contends that its proposed construction is
`
`consistent with the Specification. Id. at 27–28. Patent Owner’s annotated
`
`version of Figure 3 of the ’215 patent is reproduced below.
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`PO Resp. 27. Citing the description of Figure 3 at column 5, lines 34–37, of
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`the ’215 patent, Patent Owner argues that polymeric layers 310, 312
`
`highlighted in green are described in the patent as distinct, separate layers
`
`arranged on opposite sides of soft magnetic layers 220, 230 connected to
`
`each other by polymeric material connector 313 highlighted in brown. Id.
`
`at 27–28; see Ex. 1001, 5:33–37 (“[T]he wireless charging and
`
`communication board . . . includes polymeric material connector 313
`
`intended for connecting the first polymeric material layer 310 and the second
`
`polymeric material layer 312 and surrounding the exposed portion of the soft
`
`magnetic layer 220.”).
`
`Patent Owner also cites the prosecution history of the ’215 patent,
`
`noting that the Applicant obtained allowance of issued claim 1 by amending
`
`the claim to its current form in response to an Examiner’s rejection of a
`
`claim reciting “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.” PO Resp. 28–30 (citing
`
`Ex. 1002, 81–82, 89, 214).
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`Petitioner contends that Patent Owner’s separate and distinct
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`construction is internally inconsistent and improperly implicates a
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`product-by-process claim. Reply 19–20. In support of its argument that
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`Patent Owner’s separate and distinct construction is internally inconsistent,
`
`Petitioner relies on dictionaries that define “separate” as meaning “not
`
`connected” and “detached, disconnected, or disjoined.” Id. (citing
`
`Exs. 1025, 1026). With these definitions in mind, Petitioner contends that
`
`the first and second polymeric layers cannot be both physically separate, as
`
`argued by Patent Owner, and connected, as recited in the claim. Id. at 20.
`
`Petitioner further notes that claims 11 and 21 recite that the extending
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`portions of the first and second material layers contact each other. Id.
`
`Noting Patent Owner’s argument that the ’215 patent never suggests
`
`the claimed extending portions may be fabricated as a single integrated
`
`piece, Petitioner contends that, because the claims recite the extending
`
`portions are connected to each other, a single integrated piece is expressly
`
`encompassed by the claims. Id. at 21–22 (citing PO Resp. 37).
`
`Petitioner further contends that, to the extent Patent Owner argues the
`
`claimed polymeric layers were previously separate and are subsequently
`
`connected, Patent Owner improperly construes independent apparatus claims
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`1 and 13 as product-by-process claims. Id. at 20–21 (citing Regents of Univ.
`
`of Minn. v. AGA Med. Corp.,717 F.3d 929, 935–936 (Fed. Cir. 2013)).
`
`Petitioner argues that patentability does not depend on the method of
`
`production, but on the product itself. Id. at 21 (citing In re Thorpe, 777 F.2d
`
`695, 698 (Fed. Cir. 1985)).
`
`Patent Owner also cites Regents, arguing “the Federal Circuit
`
`explained that when two components are ‘connected’ it means those objects
`
`were previously separate.” PO Resp. 29 (citing Regents, 717 F.3d at 935–
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`36); id. at 36 (citing Regents, 717 F.3d at 938); see also Sur-reply 8 (citing
`
`Regents to argue that Petitioner’s product-by-process argument “runs
`
`contrary to the myriad of cases where the Federal Circuit has recognized that
`
`separate, physically distinct structures can be ‘connected,’ ‘coupled,’
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`‘affixed,’ etc.”). Patent Owner relies on Becton, Dickinson & Co. v. Tyco
`
`Healthcare Grp., LP, 616 F.3d 1249, 1254–56 (Fed. Cir. 2010) and Am.
`
`Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1332–34 (Fed. Cir.
`
`2011) as supporting its argument that elements claimed as connected to each
`
`other are structurally separate and distinct. PO Resp. 29–30.
`
`In Becton, where a claim drawn to a shieldable needle recited a spring
`
`means connected to a hinged arm, the court found that by its plain terms,
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`“the spring means and the hinged arms are separate structures which are
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`‘connected to’ each other” and concluded that the district court erred when
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`its construction “did not require a spring means that was a distinct structural
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`element from the hinged arm.” Becton, 616 F. 3d at 1253–54. The court
`
`noted that the Becton claims recited the spring means and the hinged arm as
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`two separate elements, there was nothing to suggest the hinged arm and the
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`spring means can be the same structure, and the only elements disclosed in
`
`the specification as spring means for urging a guard on the needle forward
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`were separate structures from the hinged arm and its hinges. Id. at 1254. An
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`issue that distinguishes Becton is the court’s observation that nothing in the
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`specification suggests the hinge can perform the same function the spring
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`performs, i.e., moving the guard forward. Id. In this case, the first and
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`second polymeric layers each perform a similar function, i.e., each of the
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`first and second layers covers a surface of the magnetic material between
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`them, although the surfaces are opposite each other.
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`Regents concerned a series of patents claiming septal occluders
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`(medical devices used to block holes in a thin wall of muscle and tissue
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`diving two chambers of the heart). Regents, 717 F.3d at 932. The summary
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`of the invention of a generally common specification described the septal
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`occluders as having “first and second occluding disks which are attached to
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`one another” centrally. Id. at 932–933. The disks are collapsed for insertion
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`into a delivery catheter that positions the disks on each side of a defective
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`septum. Id. When the delivery catheter is withdrawn, the disks expand to
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`cover both sides of the septum and block the hole. Id. The court found
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`claim language explaining a conjoint disk is formed by affixing the
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`membranes of the first and second occluding disks to one another “supports
`
`a requirement of separateness” of the first and second occluding disks. Id. at
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`935. The court further found that “dictionary definitions support the
`
`conclusion that when a physical object is described as having been ‘affixed,’
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`‘joined,’ ‘connected,’ or ‘conjoin[ed]’ to another object, it means that those
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`objects were previously separate.” Id. at 938. Noting that the specification
`
`is the best guide to the meaning of a disputed term, in Regents the court
`
`found the specification never teaches an embodiment constructed as a single
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`piece, but that every embodiment disclosed in the drawings and the written
`
`description is made up of two separate disks. Id. at 936. Thus, an issue that
`
`distinguishes Regents’ conclusion that the claimed disks must be separate
`
`components from the circumstances of this case is that Applicant’s initial
`
`claim was drawn to a single polymeric material layer, i.e. “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.” PO Resp. 28–30 (citing Ex. 1002, 81–82, 89, 214).
`
`10
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`Contrary to Petitioner’s arguments that Patent Owner converts the
`
`subject claims to a product-by-process claim, in Regents, the court explicitly
`
`rejected a similar argument that the district court improperly imported
`
`process limitations in the construed claims. Regents¸717 F.3d at 938. The
`
`court noted that words like “affixed” or “conjoint” should be given their
`
`ordinary meaning with respect to the claimed product’s structure and, when
`
`read in context, such words “describe [] the product more by its structure
`
`than by the process used to obtain it.” Id. (citing Hazani v. U.S. Int’l Trade
`
`Comm’n., 126 F.3d 1479 (Fed. Cir. 1997), 3M Innovative Props. Co. v.
`
`Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003) (such words
`
`are “commonly and by default interpreted in their structural sense”)). The
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`court contrasted words like “connected” with words such as “integral,”
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`noting that in Vanguard Products Corp. v. Parker Hannifin Corp., 234 F.3d
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`1370, 1372–73 (Fed. Cir. 2000), the court held “integral” to describe the
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`relationship between elastomeric layers, not the means of joining them.
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`Regents, 717 F.3d 938–939. The court noted that the decision in Vanguard
`
`found “integral” to be used in its ordinary sense to mean formed as a unit
`
`with another part, because the term describes the product, not as a
`
`designation of a specific manufacturing process. Id.
`
`Other Federal Circuit cases support the notion that the plain meaning
`
`of “connected” does not require separate components. See, e.g., Fisher–
`
`Price Inc. v. Safety 1st, Inc., 109 F. App’x 387, 396 (Fed. Cir. 2004)
`
`(rejecting the argument that “[i]f one component is said to be ‘movably
`
`connected’ to another, and if ‘movably connected’ is given its ordinary
`
`meaning, it would seem that the two components would have to be
`
`separate,” because “nothing in the plain meaning of the phrase ‘“movably
`
`connected” [inherently] eliminates the possibility of common portions
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`shared between the members so connected’” (alteration in original));
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`Animatics Corp. v. Quicksilver Controls, Inc., 102 F. App’x 659, 666 (Fed.
`
`Cir. 2004) (“We agree with Animatics that the district court erred in
`
`requiring that the microprocessor and the PID controller be physically
`
`separate circuits that are electrically connected. Claims are generally given
`
`their plain meaning unless the patentee chooses to be his own
`
`lexicographer.”).
`
`The case before us is similar to the situation in Animatics. In
`
`Animatics, claim 26 at issue recited “a proportional-integral-derivative (PID)
`
`filter connected to said microprocessor.” Animatics, 102 F. App’x at 665
`
`(emphasis added). Nevertheless, the court held that claim 26 did not require
`
`“physically separate circuits that are electrically connected,” reasoning that
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`“[i]f the PID filter is implemented purely in software, then the physical line
`
`between the microprocessor and PID filter completely disappears.” Id. at
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`666–67. Here, claim 1 similarly recites that “the first extending portion and
`
`the second extending portion are connected to each other” (emphasis
`
`added). However, the text in the Specification that describes the
`
`embodiments of Figures 3–5 does not describe how to connect the extending
`
`portions with any specificity. See Ex. 1001, 5:24–64. In Animatics,
`
`rejecting the district court’s overly restrictive requirement that “connected”
`
`means “physically separate circuits that are electrically connected,” the
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`Federal Circuit reasoned that this requirement is not the ordinary meaning
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`and then found “no indication in the intrinsic evidence (claims, specification,
`
`or prosecution history) clearly indicating that the inventor intended to
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`[narrow the ordinary meaning] and exclude a software-only implemented
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`PID.” See Animatics, 102 F. App’x at 666–667. Similarly, there is nothing
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`here to indicate that the inventors intended to exclude an integral connection
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`of extending portions to require physically separate connection portions.
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`Neither Becton nor Regents stands for a per se rule that two
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`“connected” elements must have at one time been disconnected, unattached,
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`or unaffixed to each other. Much depends on the specification, the
`
`prosecution history, and the nature of the two elements. The issue is case
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`specific and determined on a case-by-case basis.
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`Where the specification describes the connected elements simply as
`
`material rather than an assembly of parts, and where the elements are
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`essentially portions of one material located apart from each other, the
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`considerations weigh more toward holding the elements are connected even
`
`if they were never structurally separated at any time. For instance, a one-
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`piece iron dumbbell has a first enlarged end and a second enlarged end
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`connected to each other by a bar. The two ends are connected even though
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`they were never structurally separated at any time. On that basis, both
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`Becton and Regents are distinguished from the facts here.
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`Moreover, under the facts of this case, holding that the first and
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`second polymeric layers of claim 1, or extensions thereof, must have at one
`
`time been physically separate before being connected, as Patent Owner
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`argues, adds a process step limitation to an apparatus claim, which even
`
`Regents recognizes as improper. Regents, 717 F.3d at 938.
`
`Two additional facts distinguish this case from Becton and from
`
`Regents. First, Figure 5 of the ’215 patent shows connector 313 without an
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`internal physical separation between an extension of the first polymeric layer
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`310 and an extension of the second polymeric layer 312. That reasonably
`
`indicates, in the context of the ’215 patent, two connected elements (upper
`
`extending portion and lower extending portion) may comprise a single
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`integral structure. If the extending portions may be so deemed “connected,”
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`then so can first polymeric layer 310 and second polymeric layer 312.
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`Second, as discussed above, Applicant initially claimed not a first and
`
`second polymeric layer but “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, 19, 81. That
`
`indicates the Specification differs from those in Becton and Regents, and that
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`an integral layer including the first polymeric layer, the second polymeric
`
`layer, and the connecting extensions is not without meaning, pertinence, or
`
`significance. Although the amendment adds language about a first and a
`
`second layer, the change is not sufficient to exclude from the claim scope a
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`single large layer folded over and under magnetic sheets to comprise the first
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`layer and the second layer connected to each other through extension
`
`portions thereof.
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`In summary, we reject Patent Owner’s argument that we should
`
`construe the claims to require two separate and distinct polymeric layers
`
`(claim limitations 1.2–1.3, 1.6–1.8). PO Resp. 25–30. Moreover, as
`
`explained in our patentability analysis below, even if we agree with Patent
`
`Owner that claim 1 recites structural limitations in the form of separate
`
`layers (see limitations 1.2, 1.3) that are connected to each other via their
`
`extended portions (see limitations 1.6, 1.7, 1.8), Petitioner shows by a
`
`preponderance of evidence that claim 1 would have been obvious. See,
`
`Section VII.B.3.a herein.
`
`
`
`VII. ANALYSIS OF PRIOR ART CHALLENGES
`
`A.
`
`Introduction
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden of persuasion never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`
`inter partes review).
`
`The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of non-
`
`obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`Additionally, the obviousness inquiry typically requires an analysis of
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`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006) (requiring “articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness”)); see In re Warsaw
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`Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar
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`Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
`
`1356, 1360 (Fed. Cir. 2006)).
`
` An obviousness analysis “need not seek out precise teachings
`
`directed to the specific subject matter of the challenged claim, for a court
`
`can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner
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`cannot satisfy its burden of proving obviousness by employing “mere
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`15
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`
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`IPR2022-00117
`Patent 9,843,215 B2
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`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
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`1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a
`
`person of ordinary skill in the art would have combined the prior art
`
`references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`A reason to combine or modify the prior art may be found explicitly
`
`or implicitly in market forces; design incentives; the “‘interrelated teachings
`
`of multiple patents’”; “‘any need or problem known in the field of endeavor
`
`at the time of invention and addressed by the patent’”; and the background
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`knowledge, creativity, and common sense of the person of ordinary skill.
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`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
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`2009) (quoting KSR, 550 U.S. at 418–21).
`
`Before determining whether a claim is obvious in light of the prior art,
`
`we consider any relevant evidence of secondary considerations of non-
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`obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the
`
`teachings of the prior art would have suggested to one of ordinary skill in the
`
`art at the time of the invention, the totality of the evidence submitted,
`
`including objective evidence of non-obviousness, may lead to a conclusion
`
`that the challenged claims would not have been obvious to one of ordinary
`
`skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). No evidence
`
`of secondary considerations has been presented in this proceeding.
`
`We analyze the asserted grounds of unpatentability in accordance with
`
`these principles to determine whether Petitioner has met its burden to
`
`establish unpatentability by a preponderance of the evidence.
`
`16
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`
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`IPR2022-00117
`Patent 9,843,215 B2
`
`Claims 1, 8–11, 13, 17 and 19–21 As Obvious Over Sawa and
`
`B.
`Park
`
`1.
`
`Sawa – Ex. 1005
`
`Sawa concerns a magnetic sheet for a non-contact power receiving
`
`device. Ex. 1005, 3:46–47. Figure 3 of Sawa is reproduced below.
`
`
`
`Figure 3 of Sawa shows magnetic device 1 having a laminate structure of
`
`two first magnetic thin plates 2A, 2B and one second magnetic thin plate 4
`
`covered by resin film 5. Id. at 5:8–11. Sawa states that covering the
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`laminate of thin plates with resin film 5 is an effective solution if the
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`laminate of thin plates is subject to corrosion or if electrical insulation is
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`required. Id. at 5:11–16. Sawa further notes that adhesive layers 3 are not
`
`necessary if the entire laminate is covered by resin film 5. Id. at 5.
`
`2.
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`Park – Ex. 1006
`
`Park discloses “a portable terminal having a structure that facilitates
`
`mounting of a secondary coil for wireless charging and a Near Field
`
`Communication (NFC) antenna element, without increasing the thickness of
`
`the portable terminal.” Ex. 1006, 2:12–16. In Park, “a shielding member is
`
`attached to an inner surface of an external part, a first coil is attached to a
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`surface of the shielding member that faces the inner surface of the external
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`part, and a second coil is attached to the surface of the shielding member,
`
`17
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`
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`IPR2022-00117
`Patent 9,843,215 B2
`
`with the second coil surrounding the first coil on a same plane.” Id. at 2:26–
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`32.
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`3.
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`Independent claim 1
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`The preamble of claim 1, identified by Petitioner as claim element 1.0,
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`recites “[a] wireless charging and communication board.” Petitioner
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`contends that, although the preamble of claim 1 is not limiting, Sawa
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`discloses the claimed subject matter, e.g., a non-contact power receiving
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`device 11 with a spiral coil 16 disposed along a plane of magnetic sheet 1,
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`that forms a substantially planar multi-layer board. Pet. 27–31. Petitioner
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`contends it would have been obvious for Sawa’s wireless charging device to
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`include an NFC coil for data communication in the manner taught by Park,
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`resulting in a wireless charging and communications board. Id. at 30 (citing
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`Ex. 1003, Declaration of Dr. Joshua Phinney (“Phinney Decl.”) ¶ 57).
`
`Petitioner notes that Sawa and Park pertain to the same field of endeavor,
`
`i.e., contactless charging via electro-mechanical induction. Id. at 24. Park
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`explicitly discloses “[a] portable terminal having a wireless charger coil and
`
`an antenna element on the same plane.” Ex. 1006 (code 57). We agree with
`
`Petitioner that a person of ordinary skill would have had reason to combine
`
`the teachings of Sawa and Park to arrive at a wireless charging and
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`communication board.
`
`
`
`a)
`
`Claim limitations 1.2–1.8
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`An annotated version of Figure 3 of Sawa from the Petition is
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`reproduced below.
`
`18
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`
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`IPR2022-00117
`Patent 9,843,215 B2
`
`
`
`Pet. 40. Petitioner identifies Sawa’s thin magnetic plates 3, 4 as disclosing a
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`plurality of soft magnetic layers comprising a first soft magnetic layer and a
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`second soft magnetic layer, recited in claim limitation 1.1. Id. at 31–32
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`(citing Ex. 1003, Phinney Decl. ¶¶ 59–62; Ex. 1005, 4:10–14, 8:65–67,
`
`9:65–10:1, Fig. 3). Petitioner cites Sawa’s resin film 5, i.e., a polymeric
`
`layer that encapsulates the magnetic plates, as disclosing a polymeric layer
`
`on a first (top) surface and a second (bottom) surface of the plurality of soft
`
`magnetic layers, as recited in claim limitations 1.2 and 1.3. Id. at 32–35
`
`(citing Ex. 1003, Phinney Decl. ¶¶ 63–70; Ex. 1005, 4:39–43, 5:8–23).
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`Petitioner cites spiral coil 16 of Sawa as disclosing the coil pattern arranged
`
`on the second polymeric material layer recited in claim limitation 1.4. Id. at
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`35–36 (citing Ex. 1003, Phinney Decl. ¶¶ 72–74; Ex. 1005, 15:51–61).
`
`Petitioner further notes that in Sawa magnetic plates 2, 4 are positioned
`
`between the first and second polymeric layers, as recited in claim limitation
`
`1.5. Id. at 36–37 (citing Ex. 1003, Phinney Decl. ¶¶ 73, 75).
`
`Noting that Sawa’s magnetic sheets 2, 4 are encapsulated in polymer
`
`resin 5, Petitioner shows in its annotated version of Sawa’s Figure 3 first and
`
`19
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`
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`IPR2022-00117
`Patent 9,843,215 B2
`
`second extending portions of the first and second polymeric layer that extend
`
`longer than the plurality of soft magnetic layers, as recited in claim
`
`limitations 1.6 and 1.7, and are connected to each other, as recited in claim
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`limitation 1.8. Pet. 37–42. According to Petitioner, “because Sawa’s
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`polymer resin 5 encapsulates the magnetic sheets, which includes a first
`
`extending portion that is connected to the second extending portion, Sawa
`
`renders obvious ‘wherein the first extending portion and the second
`
`extending portion are connected to each other.’” Id. at 42 (citing Ex. 1003
`
`¶ 84).
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`Patent Owner argues that Petitioner’s reliance on Sawa as disclosing a
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`polymer resin that encapsulates a magnetic sheet fails to demonstrate that
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`Sawa discloses the claimed first and second resin layers. PO Resp. 33–39.
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`Petitioner argues that it “cites different and distinct portions of Sawa’s resin
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`film for the two polymeric material layers,” i.e. the upper layer of Sawa’s
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`resin fil
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