Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 9
`Entered: May 12, 2022
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00117
`Patent 9,843,215 B2
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`
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`
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`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`McNAMARA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 9
`Entered: May 12, 2022
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
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`IPR2022-00117
`Patent 9,843,215 B2
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a petition, Paper 2 (“Petition” or
`“Pet.”), to institute an inter partes review of claims 1, 5, 8–13, and 17–22
`(the “challenged claims”) of U.S. Patent No. 9,843,215 B2 (“the ’215
`patent”). 35 U.S.C. § 311. Scramoge Technology Ltd. (“Patent Owner”)
`filed a Preliminary Response, Paper 6 (“Prelim. Resp.”), contending that the
`Petition should be denied as to all challenged claims. As authorized by the
`panel, Petitioner filed a Reply (Paper 7, “Reply”) and Patent Owner filed a
`Sur-reply (Paper 8 “Sur-reply”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`A decision to institute under § 314 may not institute on fewer than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018). In addition, per Board practice, if the Board institutes trial,
`it will “institute on all grounds in the petition.” PTAB Consolidated Trial
`Practice Guide, 5–6 (Nov. 2019); see also PGS Geophysical AS v. Iancu,
`891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a
`simple yes-or-no institution choice respecting a petition, embracing all
`challenges included in the petition”).
`Having considered the arguments and the associated evidence
`presented in the Petition and the Preliminary Response, for the reasons
`described below, we institute inter partes review.
`
`2
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`IPR2022-00117
`Patent 9,843,215 B2
`REAL PARTIES IN INTEREST
`II.
`Petitioner identifies itself (Apple Inc.) as the sole real party-in-
`interest. Pet. 69. Patent Owner identifies itself (Scramoge Technology Ltd.)
`the sole real party-in-interest. Paper 4, 2.
`
`
`III. RELATED MATTERS
`The Petition states that the ’215 patent is asserted in the following
`litigation: Scramoge Tech. Ltd. v. Apple Inc., No. 6-21-cv-0579 (W.D. Tex.,
`filed June 7, 2021) (“Apple case”); Scramoge Tech. Ltd. v. Google, LLC f/k/a
`Google Inc., No. 6-21-cv-0616 (W.D. Tex., filed June 15, 2021) (“Google
`case”); Scramoge Tech. Ltd. v. Samsung Electronics Co., Ltd. et al., No. 6-
`21-cv-0454 (W.D. Tec. Filed April 30, 2021). Pet. 69.
`Patent Owner also identifies the following co-pending proceedings:
`Apple Inc. v. Scramoge Technology Ltd., IPR2022-00118 (PTAB, October
`29, 2021); Apple Inc. v. Scramoge Technology Ltd., IPR2022-00119 (PTAB
`October 29, 2021); and Apple Inc. v. Scramoge Technology Ltd., IPR2022-
`00120 (PTAB October 29, 2021). Paper 4, 2.
`
`
`IV. 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.
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`IPR2022-00117
`Patent 9,843,215 B2
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`Figure 1 of the ’215 patent
`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
`field communication, as well as transmitter 500 having transmission coil
`pattern 520 for wireless power conversion and transmission coil pattern 530
`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–
`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 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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`4
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`IPR2022-00117
`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 the term polymeric material connector 313 may be used
`with the term extending portion, so that “a first extending portion may be
`extended in the first polymeric material layer 310, and a second extending
`portion may be extended in the second polymeric material layer. Id. at 5:37–
`42. “Accordingly, in the embodiment of FIG. 3, the exposed portion may
`refer to an end exposed by a processing hole 311 and the polymeric material
`connector 313 surrounding the exposed portion of the soft magnetic core 220
`may prevent water penetration from the outside.” Id. at 5:43–47.
`
`5
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`IPR2022-00117
`Patent 9,843,215 B2
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`ILLUSTRATIVE CLAIM
`V.
`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;
`[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.
`
`
`
`VI. ASSERTED GROUNDS
`Petitioner asserts that claims 1, 5, 8–13, and 17–22 would have been
`unpatentable on the following grounds:
`
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`IPR2022-00117
`Patent 9,843,215 B2
`Claim(s) Challenged
`1, 8–11, 13, 17, and
`19–21
`5, 12, 18, 22
`
`
`
`35 U.S.C. §
`103
`103
`
`Reference(s)/Basis
`Sawa1, Park2
`Sawa, Park, Inoue3
`
`VII. EXERCISE OF DISCRETION
`A. Discretion under 35 U.S.C. § 314(a)
`In the Preliminary Response, Patent Owner contends that we should
`exercise our discretion to deny the Petition in favor of the parallel
`proceeding in the Western District of Texas. Prelim. Resp. 4–11. The
`Board has held that the advanced state of a parallel district court action is a
`factor that may weigh in favor of denying a petition under § 314(a). See
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20
`(PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board,
`Consolidated Trial Practice Guide (“CTPG”), 58 & n.2 (Nov. 2019),
`available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`We consider the following factors to assess “whether efficiency, fairness,
`and the merits support the exercise of authority to deny institution in view of
`an earlier trial date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`
`
`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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`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we
`“take[] a holistic view of whether efficiency and integrity of the system are
`best served by denying or instituting review.” Id. at 6. We consider each of
`these factors below.
`
`Factor 1
`Petitioner contends that, because no motion for a stay has been filed,
`we cannot infer the outcome of such a motion. Pet. 13. Patent Owner
`responds that all three4 corresponding, co-pending litigations are pending in
`the U.S. District Court for the Western District of Texas before Judge
`Albright, where a stay has not been entered and a scheduling order has been
`entered. Prelim. Resp. 29–30. According to Patent Owner, the cases,
`including the corresponding Apple case, are “on track for trial in early 2023.
`Id. at 30 (citing Exs. 2002, 2013). Noting that none of the defendants has
`moved for a stay, Patent Owner argues that, even if such a motion were
`filed, Judge Albright does not favor stays pending IPR proceedings. Id. at
`29–31 (citing Ex. 2003). Petitioner contends that Patent Owner’s arguments
`are “pure conjecture” based on how Judge Albright has ruled in different
`cases with different facts. Reply 1.
`
`
`4 In addition to the Apple case and the Google case, the Preliminary
`Response refers to Scramoge Technology Ltd. v. Samsung Electronics Co.,
`Ltd. et al., No. 6-21-cv-00454-ADA, which previously has not been
`identified to the Board in a Mandatory Notice.
`
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`Patent 9,843,215 B2
`We are not persuaded by Patent Owner’s arguments that a stay is
`unlikely because this case is at such an advanced stage that a stay is
`necessarily precluded. Sur-reply 1–2 (citing Samsung Elecs. Co. Ltd. v.
`Evolved Wireless LLC, IPR2021-00950, Paper 10 at 10–11 (PTAB Nov. 29,
`2021)). We agree with Petitioner that the circumstances of each case are
`unique. Reply 1 (citing Sand Revolution II, LLC v. Continental Intermodal
`Group – Trucking LLC, IPR2019- 01393, Paper 24 at 7 (June 16, 2020)
`(informative) (“Sand Revolution II”), Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 15 at 12 (May 13, 2020) (informative) (finding Factor 1
`neutral after “declin[ing]to infer” how WDTX would rule based on actions
`taken in “different cases with different facts”). In the absence of specific
`evidence relating to the circumstances surrounding this case we will not
`attempt to predict how the district court would proceed, and we find this
`factor does not weigh for or against exercising our discretion to deny
`institution.
`
`
`Factor 2
`Petitioner contends that we should not exercise discretion to deny
`institution because the co-pending litigation is at an early stage and a trial
`date had not been set when the Petition was filed. Pet. 13. Patent Owner
`contends that Factor 2 strongly favors exercise of discretion because the
`district court litigation “is on track for trial in March 2023,” before the
`deadline for a final decision in this proceeding. Sur-reply 2. Petitioner notes
`that the district court does not expect to set a trial date until the conclusion of
`the Markman hearing, which has been delayed to May 23, 2023. Reply 2.
`As trial will not occur in the corresponding Apple case until sometime after
`the May 23, 2022 Markman hearing, Petitioner notes that Patent Owner is
`left to speculate that the parallel Google case is on track for trial in March
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`2023. Id. Petitioner further notes that even if trial in the Google case
`occurred in March 2023, a Final Written Decision would issue from this
`panel roughly two months later (around the time of the Markman hearing in
`the Apple case). Id. at 3. Under these circumstances, we find that Factor 2
`weighs against exercising discretion to deny institution of this proceeding.
`
`Factor 3
`Petitioner contends that when the Petition was filed the co-pending
`litigation was in its early stages, investment in the litigation had been
`minimal, fact discovery does not close until September 22, 2022 and expert
`discovery does not close until November 23, 2022. Pet. 13–14. Petitioner
`further argues that it did not learn what claims were being asserted until
`September 27, 2021 and that in the following 8 weeks, Petitioner worked to
`expedite filing its Petition. Id. Patent Owner argues that we should exercise
`discretion to deny because claim construction is underway, and infringement
`and invalidity contentions have been exchanged, indicating that substantial
`investment in the district court proceedings has occurred. Sur-reply 2–3.
`Citing Sand Revolution II, Petitioner notes that the focus of this factor is the
`parties’ investment in the merits of invalidity positions, and that much of the
`activity in the district court case is untethered to validity issues. Reply 3–4.
`Petitioner notes that final invalidity contentions are not due until after
`institution, and that neither party has proposed claim constructions in this
`proceeding, reducing the significance to invalidity issues in this proceeding
`of district court Markman briefing. Id. at 4. Petitioner also notes that at the
`time of institution, fact and expert discovery will not close for four and six
`months, respectively, and substantive motion practice on invalidity will not
`have started. Id. at 4–5 (citing Ex. 1015, 3). Under these circumstances we
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`find that Factor 3 weighs against exercising our discretion to deny
`institution.
`
`
`Factor 4
`Noting that, at the time it filed the Petition, Petitioner had not served
`its preliminary invalidity contentions in the district court proceeding,
`Petitioner argues there was no overlap of issues between the co-pending
`litigation and this proceeding. Pet 14. Petitioner also stipules that “it will
`not pursue in the parallel district court proceeding (WDTX-6-21-cv-00579)
`the prior art obviousness combinations on which trial is instituted for the
`claims on which trial is instituted.” Reply 5. Petitioner contends that in
`Sand Revolution II “a nearly identical stipulation was found to effectively
`address the risk of duplicative efforts.” Reply 5 (citing Sand Revolution II
`11–12).
`Patent Owner argues that Petitioner’s “narrow stipulation is
`insufficient and fails to resolve concerns of duplicative issues and
`inconsistent rulings” because it “concerns the particular obviousness
`combinations directed to particular claims for which trial is instituted.” Sur-
`reply 4. According to Patent Owner, Petitioner would be free to raise
`different combinations based on the same references, the same combinations
`directed to different claims and anticipation arguments based on the same
`references. Id. at 4–5. Patent Owner contends that Petitioner could have
`stipulated it would not pursue any ground raised or that could have been
`reasonably raised in an IPR, i.e., any ground that could be raised under
`§§ 102 or 103 on the basis of prior art patents or printed publications. Sur-
`reply 4 (citing Sand Revolution II at 12, n.5). In Sand Revolution II, the
`Board noted that such a stipulation could have tipped this factor more
`conclusively in Petitioner’s favor (Sand Revolution II at 12, n.5).
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`11
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`Patent 9,843,215 B2
`Nevertheless, in Sand Revolution II, the Board found that Petitioner’s
`stipulation to counsel that “if the IPR is instituted, Petitioner will not pursue
`the same grounds in the district court litigation” “weigh[ed] marginally in
`favor of not exercising discretion to deny institution.” Sand Revolution II at
`11–12. At this stage of the co-pending litigation discovery is on-going and
`infringement and invalidity contentions have not been finalized. In view of
`these circumstances, we find Petitioner’s stipulation in this proceeding to be
`similar in scope to that of the petition in Sand Revolution II and determine
`that Factor 4 weighs marginally against exercising discretion to deny
`institution.
`
`
`Factor 5
`Petitioner acknowledges that it is a defendant in the co-pending
`litigation, but argues that, as defendants are petitioners in many other inter
`partes reviews, Petitioner’s mere status as a defendant should not be a basis
`for exercising discretion to deny institution, especially in the absence of a
`trial date, where it is unclear which tribunal will be first to address the
`patentability of the claims. Pet. 14, Reply 6 (citing Google LLC v. Parus
`Holdings, Inc., IPR2020-00846, Paper 9 at 21 (Oct. 21, 2020). According to
`Petitioner, under the circumstances, Factor 5 is neutral. Reply 6. Patent
`Owner argues that this factor is not neutral and that the trial will occur
`before a final written decision by the Board. Sur-reply 5.
`Given the uncertainty of the trial date, this factor is neutral or,
`assuming the final written decision will precede trial in the parallel district
`court proceeding given the absence of a confirmed trial date at this point,
`weighs against discretionary denial.
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`Factor 6
` Petitioner contends that, based the prior art presented in the Petition,
`the merits of its case are strong and weigh against exercise of discretion to
`deny institution. Pet. 15. Patent Owner contends that it has identified
`weaknesses in the Petition that, considered with the remaining Fintiv factors,
`support denying institution. Prelim. Resp. 37–40.
`As discussed in greater detail below, we determine Petitioner’s
`evidence and arguments on this preliminary record to be sufficient to
`institute an inter partes review. Accordingly, we determine that this factor
`does not weigh either for or against exercising our discretion to deny
`institution.
`
`
`Conclusion
`We have considered the circumstances and facts before us in view of
`the Fintiv factors, as discussed above. Evaluating these factors as part of a
`holistic analysis, we are not persuaded that the interests of the efficiency and
`integrity of the system would be best served by invoking our discretion
`under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious
`petition.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner asserts that at the time of filing of the application for the
`’215 patent, a person of ordinary skill “would have had a working
`knowledge of the wireless power arts that are pertinent to the ’215 patent.
`That person would have a bachelor’s degree in electrical engineering, or
`equivalent training, and approximately two years of experience working in
`the field of wireless power transmission” and that experience and additional
`education could have substituted for each other. Pet. 11 (citing Ex. 1003,
`
`13
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`Declaration of Dr. Joshua Phinney (“Phinney Decl.”) ¶¶ 18–20. Patent
`Owner does not comment explicitly on the level of ordinary skill.
`The level of ordinary skill in the art usually is evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a
`person of ordinary skill appears to be commensurate with the subject matter
`of the ’215 patent claims and the references, we apply Petitioner’s
`description of a person of ordinary skill for purposes of this Decision.
`IX. CLAIM CONSTRUCTION
`For petitions filed after November 13, 2018, we interpret claim terms
`using “the same claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b)
`(2019). In this context, claim terms “are generally given their ordinary and
`customary meaning” as understood by a person of ordinary skill in the art in
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant
`than the intrinsic record in determining ‘the legally operative meaning of
`claim language.’” Phillips, 415 F.3d at 1317 (citations omitted).
`Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`We construe only those claim terms that require analysis to determine
`whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”).
`Neither party has proposed a special definition or explicit construction
`of any claim term. As we do not perceive a need to construe any term, we
`apply the plain and ordinary meaning to the claim language.
`X. ANALYSIS
`
`Introduction
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`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
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“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
`Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar
`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
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner
`cannot satisfy its burden of proving obviousness by employing “mere
`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`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
`knowledge, creativity, and common sense of the person of ordinary skill.
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
`2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)).
`Before determining whether a claim is obvious in light of the prior art,
`we consider any relevant evidence of secondary considerations of non-
`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
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`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 a reasonable likelihood of success at trial.
`Claims 1, 8–11, 13, 17 and 19–21 As Obvious Over Sawa and
`B.
`Park
`
`
`Sawa – Ex. 1005
`Sawa concerns a magnetic sheet for a non-contact power receiving.
`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
`laminate of thin plates with resin is an effective solution if the laminate of
`thin plates is subject to corrosion or if electrical insulation is 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:
`
`17
`
`
`
`IPR2022-00117
`Patent 9,843,215 B2
`
`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
`surface of the shielding member that faces the inner surface of the external
`part, and a second coil is attached to the surface of the shielding member,
`with the second coil surrounding the first coil on a same plane.” Id. at 2:26–
`32.
`
`
`Independent claim 1
`The preamble of claim 1, identified by Petitioner as claim limitation
`1.0, recites “[a] wireless charging and communication board.” Petitioner
`contends that, although the preamble of claim 1 is not limiting, Sawa
`discloses the claimed subject matter, e.g., a non-contact power receiving
`device 11 with a spiral coil 16 disposed along a plane of magnetic sheet 1,
`that forms a substantially planar multi-layer board. Pet. 27–31. Petitioner
`contends it would have been obvious for Sawa’s wireless charging device to
`include an NFC coil for data communication in the manner taught be Park,
`resulting in a wireless charging and communications board. Id. at 30 (citing
`Ex. 1003, Phinney Decl. ¶ 57). Petitioner notes that Sawa and Park pertain
`to the same filed of endeavor, i.e., contactless charging via
`electro-mechanical induction. Id. 24. Park 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 communication board. Patent
`
`18
`
`
`
`IPR2022-00117
`Patent 9,843,215 B2
`Owner does not argue that a person of ordinary skill would not have had
`reason to combine the teachings of Sawa and Park, but instead argues that
`Petitioner incorrectly contends that Sawa alone teaches certain structural
`claim limitations. Prelim. Resp. 21–22. We address those limitations
`below.
`An annotated version of Figure 3 of Sawa from the Petition is
`reproduced below.
`
`
`Pet. 40. Petitioner identifies Sawa’s thin magnetic plates 3, 4 as disclosing a
`plurality of soft magnetic layers comprising a first soft magnetic layer and a
`second soft magnetic layer, recited in claim limitation 1.1. Id. at 31–32
`(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).
`Petitioner cites spiral coil 16 of Sawa as disclosing the coil pattern arranged
`
`19
`
`
`
`IPR2022-00117
`Patent 9,843,215 B2
`on the second polymeric material layer recited in claim limitation 1.4. Id. at
`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 Figure 3 first and 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 limitation 1.8.
`Pet. 37–42. According to Petitioner “because Sawa’s 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).
`Petitioner cites Sawa’s disclosure that the second magnetic plate is
`preferably made of Co-based amorphous alloy as rendering obvious claim
`limitation 1.9, which recites that at least one of the soft magnetic layers 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.”
`Id. at 42–43 (citing Ex. 1003, Phinney Decl. ¶¶ 85–86; Ex. 1005, 11:12–19).
`Patent Owner provides the following annotated version of Figure 3 of
`the ’215 patent.
`
`20
`
`
`
`IPR2022-00117
`Patent 9,843,215 B2
`
`
`Prelim. Resp. 15. Patent Owner emphasizes that the ’215 patent has distinct
`polymeric layers 310 and 312 that are connected to each other by polymeric
`material 313. Id. (quoting Ex. 1001, 5:34–37 stating that polymeric material
`connector 313 is “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
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