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 No. 9,843,215
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`Table of Contents
`
`Introduction ........................................................................................................ 1
`I.
`II. Burden of Proof .................................................................................................. 3
`III. Technical Background ....................................................................................... 4
`A. Wireless Power Transfer ................................................................................ 5
`B. Magnetic Permeability and Reluctance .......................................................... 9
`C. Magnetostriction, Stress and Increased Saturation Magnetization .............. 16
`IV. The Teaching of Sawa ...................................................................................... 17
`V. Claim Construction .......................................................................................... 25
`A. The Board Should Construe the Claims to Require Two Separate and
`Distinct Polymeric Layers ................................................................................... 25
`VI. Ground 1 of the Petition Fails Because Sawa Does Not Teach a Plurality of
`Soft Magnetic Layers ....................................................................................... 30
`VII. Ground 1 Further Fails Because Sawa Does Not Teach Two Separate and
`Distinct Polymeric Layers ................................................................................ 33
`VIII. ....... Ground 2 Fails Because the Petition Fails to Motivate its Combination of
`Sawa with Inoue ............................................................................................... 39
`A. The Petition’s Rationale to Consider Inoue’s Adhesive Layer in view of
`Sawa is Unsupported. .......................................................................................... 40
`B. The Petition identifies no benefit for its proposed combination. ................. 44
`C. A POSITA would have further avoided the Petition’s proposed combination
`because that combination would be detrimental to Sawa’s goals. ...................... 47
`D. The Petition’s combination is supported only by hindsight. ........................ 48
`IX. Conclusion ....................................................................................................... 51
`
`
`
`
`
`i
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`Table of Authorities
`
`Cases
`Am. Piledriving Equip., Inc. v. Geoquip, Inc.,
`637 F.3d 1324 (Fed. Cir. 2011) ........................................................................... 30
`Apple, Inc. v. Realtime Data LLC,
`IPR2016-01737, 2018 WL 1326656 (PTAB Mar. 13, 2018) ............................. 46
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ..................................................................... 25, 30
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................... 46
`Duo Sec. Inc. v. Strikeforce Techs., Inc.,
`IPR2017-01041, 2017 WL 4677235 (PTAB Oct. 16, 2017) .............................. 45
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................. 4
`Ex Parte Brillowska-Dabrowska,
`Appeal No. 2016-006485, 2016 WL 4525004 (PTAB Aug. 24, 2016) .............. 45
`Ex Parte Debates,
`Appeal No. 2020-006536, 2022 WL 263587 (PTAB Jan. 27, 2022) ................. 45
`Ex Parte Masashi Hayakawa,
`Appeal No. 2020-006550, 2021 WL 6133976 (PTAB Dec. 27, 2021) .............. 50
`Ex Parte Shigetoshi Ito & Daisuke Hanaoka,
`Appeal No. 2010-003391, 2012 WL 3041144 (BPAI July 23, 2012) .......... 48, 50
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004) ........................................................................... 26
`Grain Processing Corp. v. American–Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ....................................................................... 49, 51
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ....................................................................... 3, 37
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................. 4
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ..................................................................... 49, 51
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ........................................................................... 38
`Johns-Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, Paper No. 9 (PTAB Oct. 16, 2018) ......................................... 46
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 45, 50
`
`
`
`ii
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n,
`22 F.4th 1369 (Fed. Cir. 2022) ............................................................................ 26
`NetApp, Inc. v. Proven Networks, LLC,
`IPR2020-01436, Paper 33 (PTAB Apr. 7, 2022) ................................................ 39
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ........................................................................... 25
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................. 46
`Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.,
`411 F. 3d 1332 (Fed. Cir. 2005) .......................................................................... 36
`Regents of Univ. of Minn. v. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ....................................................................... 29, 36
`Smartmatic USA Corp. v. Election Sys. & Software,
`IPR2019-00527, Paper 32 (Aug. 5, 2020) .......................................................... 37
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ........................................................................... 25
`Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................. 25
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ........................................................................... 48
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 4
`35 U.S.C. § 316(e) .................................................................................................... 4
`
`
`
`
`
`
`
`
`iii
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`Exhibits
`
`Description
`
`Exhib
`it No.
`2001 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)
`2002 Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA, Dkt. No. 33 (W.D. Tex. Sept. 28, 2021)
`2003 Law360 Article: West Texas Judge Says He Can Move Faster Than PTAB
`2004 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)
`2005 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)
`2006 Scheduling Order, Correct Transmission LLC v. Adtran, Inc., Case No.
`6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10, 2020)
`2007 Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case No.
`6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`2008 Standing Order Governing Proceedings in Patent Cases, Judge Alan D.
`Albright
`2009 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)
`2010 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.)
`2011 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.)
`2012 Android Authority article: LG Innotek’s Latest wireless charger is Three
`times faster
`2013 Scheduling Order, Scramoge Technology Ltd. v. Google LLC, Case No.
`6:21-cv-00616-ADA, Dkt. No. 28 (W.D. Tex. Nov. 15, 2021)
`2014 Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-00579-ADA (W.D. Tex.)
`2015 Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA, Dkt. No. 56 (W.D. Tex. Feb. 11, 2022)
`2016 Not Assigned
`2017 Curriculum Vitae of David S. Ricketts, Ph.D.
`2018
`July 21, 2022 Deposition Transcript of Joshua Phinney, Ph.D.
`
`iv
`
`
`
`
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`2019 Excerpts from Introduction to Inorganic Chemistry, Wikibook, Penn State
`University, at 6.91.1 (available at
`https://chem.libretexts.org/Bookshelves/Inorganic_Chemistry/Book%3A_I
`ntroduction_to_Inorganic_Chemistry_(Wikibook))
`2020 Declaration of Dr. David S. Ricketts in Support of Patent Owner’s
`Response
`
`v
`
`
`
`
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`I.
`
`Introduction
`
`The Petition challenges the claims of U.S. Patent No. 9,843,215 (“the ’215
`
`Patent”) under two grounds of unpatentability:
`
`• Ground 1. Claims 1, 8–11, 13, 17, and 19–21 obvious in view of U.S.
`
`Patent No. 9,443,648 (“Sawa”) and U.S. Patent No. 8,922,162 (“Park”).
`
`• Ground 2. Claims 5, 12, 18, and 22 obvious in view of Sawa, Park, and
`
`U.S. Patent No. 8,922,160 (“Inoue”).
`
`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
`
`19–21 depend from independent claim 13. Petitioner’s ground 1 challenge to these
`
`claims fails because Sawa teaches away from the limitations of independent claims
`
`1 and 13 that require, respectively, “a plurality of soft magnetic layers comprising a
`
`first soft magnetic layer and a second soft magnetic layer” (Ex. 1001, 9:56-57) and
`
`“a plurality of soft magnetic layers arranged in the housing, and comprising a first
`
`soft magnetic layer and a second [soft] magnetic layer” (Ex. 1001, 11:3-5). Sawa
`
`teaches and describes a magnetic material for use in its first magnetic thin plates that
`
`is not a soft magnetic material. Consequently, the disclosure of Sawa does not
`
`include a “first soft magnetic layer” as required by the claims of the ’215 Patent. For
`
`this reason alone, the Petition cannot show any challenged claims to be unpatentable.
`
`
`
`1
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`In addition, the Board’s Decision Granting Institution shows that there is a
`
`claim construction dispute between the parties that must be addressed to resolve the
`
`controversy as to whether Sawa discloses the claimed “first polymeric material
`
`layer” and “second polymeric material layer.” Patent Owner respectfully requests
`
`that the Board construe independent claims 1 and 13 to require two separate and
`
`distinct polymeric layers. Under the proper claim construction, the Petition fails to
`
`show that Sawa discloses the claimed structure 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, which is an independent reason why the Petition’s Ground 1 fails.
`
`Ground 2 suffers the same deficiencies as Ground 1 because it relies solely on
`
`the same combination of Sawa and Park to arrive at the limitations recited by
`
`independent claims 1 and 13. And Ground 2 is further deficient because it relies on
`
`conclusory allegations of obviousness for its combination of Sawa with Inoue.
`
`Specifically, Ground 2 combines an adhesive layer taught by Inoue with the
`
`encapsulating resin taught by Sawa when the proposed combination would provide
`
`no benefit while adding drawbacks. As such, the Ground 2 combination fails to
`
`satisfy the “adhesive layer” requirements of claims 5 and 12, which depend from
`
`claim 1, and claims 18 and 22, which depend from claim 13. The Petition ignores
`
`
`
`2
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`the fact that Sawa was clearly aware of the use of an adhesive agent or layer with
`
`resin films, but conspicuously avoids the use of an adhesive agent or layer with the
`
`encapsulating resin film. Furthermore, the Petition identifies no benefit to Sawa’s
`
`laminated magnetic sheet—beyond the results already taught by Sawa—that would
`
`result from the Petition’s proposed combination of Sawa and Inoue. The Petition
`
`merely assumes without support that a POSITA would have found the resulting
`
`combination to be “obvious and predictable.” At most, the Petition establishes that
`
`a POSITA could have made its proposed modification to Sawa, not that a POSITA
`
`would have been motivated to do so as required. In fact, a POSITA would
`
`understand that the proposed combination would actually be detrimental, because it
`
`would increase the thickness of Sawa’s design. A POSITA would thus not have been
`
`motivated to make the proposed combination. The Petition’s failure to show why a
`
`POSITA would have made the proposed combination of Sawa with Inoue is an
`
`independent reason why the Petition’s Ground 2 fails.
`
`For the above reasons, and as explained in further detail below, the Petition
`
`fails to establish that any challenged claims are unpatentable.
`
`II. Burden of Proof
`
`“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. §
`
`
`
`3
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`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). Furthermore, the 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). “The petitioner must
`
`instead articulate specific reasoning, based on evidence of record, to support the
`
`legal conclusion of obviousness.” Id. To prevail in an inter partes review, Petitioner
`
`must show by a preponderance of the evidence that a patent is invalid. 35 U.S.C. §
`
`316(e).
`
`III. Technical Background
`
`The ’215 Patent is directed to a wireless charging and communication board
`
`comprising (i) a plurality of soft magnetic layers 220, 230; (ii) a first and second
`
`polymeric material layer 310, 312 arranged on one surface and the other surface of
`
`the soft magnetic layers and extending longer than an exposed portion of the soft
`
`magnetic layers; (iii) adhesive layers 315 to adhere the polymeric material layers to
`
`the soft magnetic layers; and (iv)a coil pattern 130 arranged on the second polymeric
`
`material layer. See, e.g., Ex. 1001, Abstract, 3:20-29, cls. 1 and 13; see also Figure
`
`2:
`
`
`
`4
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`Wireless power transfer involves various technical principles related to
`
`electromagnetic radiation and the manner in which various materials perform in the
`
`
`
`presence of that electromagnetic radiation.
`
`A. Wireless Power Transfer
`
`Wireless power transfer (“WPT”) is a method to transfer energy from a source
`
`to a load through the air with no direct connection. In the context of the ’215 Patent,
`
`the wireless power transfer method uses a source coil that generates a time-varying
`
`magnetic field that is sensed by a second coil in a receiver, or load. The two coils
`
`form a transformer. A transformer is a basic electromagnetic device that transfers
`
`energy from one circuit to another. The operating principles of a transformer are
`
`based on the law of induction by Michael Faraday (Faraday’s Law) and Ampere’s
`
`Law, which states that a current in a wire will generate a magnetic field. Ex. 2020,
`
`Declaration of Dr. David S. Ricketts in Support of Patent Owner’s Response
`
`(“Ricketts Declaration”), ¶ 35.
`
`
`
`5
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`A basic magnetic transformer consists of two coils of wire that are in close
`
`proximity to each other (but not in direct contact). When the transformer is operated
`
`under the (proper) conditions, an electric current is applied to one coil as an energy
`
`input; that energy is transferred (via a magnetic field) to the second coil—across a
`
`gap between them. Direct electrical contact is unnecessary for this energy transfer.
`
`For convenience and general convention, we will call the coil supplying the energy
`
`the primary coil and the coil receiving the energy as the secondary coil. Id., ¶ 36.
`
`Specifically, in a magnetic transformer a current in one coil generates a
`
`magnetic field (Ampere’s Law). If that magnetic field varies with time, i.e., is an
`
`alternating current (AC) field created by an AC current in the primary coil, it will
`
`generate a voltage on the secondary coil (Faraday’s Law) placed within the primary
`
`coil’s AC magnetic field. The voltage on the secondary coil can then be used to
`
`supply energy to a second circuit/device/system. Thus, in a magnetic transformer,
`
`energy from the first coil can be transferred to the second coil even though the two
`
`coils are not in direct contact. Id., ¶¶ 37-39.
`
`To increase the energy transferred across a transformer, it is desirable to
`
`couple the maximum amount of magnetic flux inside the primary coil and secondary
`
`coil. Under Faraday’s Law, the induced voltage is proportional to the amount of
`
`magnetic flux in the coils area, A. The figure below illustrates this coupling of
`
`
`
`6
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`magnetic flux (shown in the below figure in red) in an air-gap (or air-core)
`
`transformer (the material between and surrounding the coils is air):
`
`
`
`Id., ¶ 40.
`
`If the flux generated by the current in the primary coil changes with time, i.e.
`
`is AC, then a voltage proportional to the flux passing through the secondary coil will
`
`be induced and energy can be transferred. A DC (non-time varying) current in the
`
`primary coil will generate a DC magnetic flux (Ampere’s Law), but per Faraday’s
`
`Law, no voltage appears on the secondary coil as there is no AC flux and thus no
`
`energy is transferred. In other words, a magnetic transformer only functions for AC.
`
`Id., ¶ 41.
`
`The amount of coupled magnetic field is affected by the shape and proximity
`
`of the coils. Since the magnetic field decreases by approximately one over the cube
`
`of the distance, the closer the proximity, the higher the coupled magnetic field. Shape
`
`
`
`7
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`will also aid in concentrating the magnetic field. The coupled flux is shown and is
`
`highest in the center of the coil. Id., ¶ 42.
`
`While an air-gap transformer enables important functionality, such as in
`
`wireless power transfer, it has significant limitations as a substantial amount of flux
`
`is not coupled between primary coil and secondary coil. Id., ¶ 43.
`
`Because of this, transformers may incorporate a magnetic core or sheet to aid
`
`in concentrating of the magnetic flux to increase the coupling between coils. The
`
`purpose of the core or sheet is to provide a more desirable path for the magnetic field
`
`between the coils. This more desirable path is quantified by the magnetic reluctance,
`
`which is a direct analogy to electrical resistance. A higher reluctance means that it
`
`is a less desirable path for magnetic flux, just like a higher electrical resistance is a
`
`less desirable path for current to flow. For magnetic circuits, one considers the flux
`
`and the reluctance; for electrical circuits, one considers the current and resistance.
`
`Id., ¶ 44.
`
`The magnetic reluctance is inversely proportional to the permeability of a
`
`magnetic material, with air having a much higher reluctance, or resistance, to flux
`
`than a material with high permeability. Id., ¶ 45. To increase the amount of coupled
`
`AC flux between primary coil and secondary coil, a magnetic core or sheet can be
`
`used. When the reluctance is very low (flux prefers to be concentrated in the core),
`
`the majority of the magnetic flux will be concentrated in the core. Id., ¶ 46.
`
`
`
`8
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`Magnetic cores or sheets also have a number of ancillary effects that may be
`
`considered drawbacks in certain applications. The magnetic flux inside of a magnetic
`
`core can cause a phenomenon known as eddy currents within the magnetic core.
`
`Eddy currents are circular currents that flow inside the magnetic core material that
`
`are induced by the AC flux in the core. If the magnetic core material is electrically
`
`conductive, the AC magnetic field from the primary coil will induce small voltages
`
`inside the core and cause current to flow inside the core, just like it induces a larger
`
`voltage on the secondary coil and causes current to flow in the device connected to
`
`the secondary coil. The eddy currents will cause energy loss. Id., ¶ 47. Additionally,
`
`there is a phenomenon known as core loss. This occurs because microscopic
`
`magnetic domains within material will switch back and forth as they follow the AC
`
`current. Id., ¶ 48. Thus, the use of a magnetic core or sheet may provide increased
`
`flux coupling between the primary and secondary coils of a transformer, but may
`
`add some additional loss. Id., ¶ 49.
`
`B. Magnetic Permeability and Reluctance
`
`Properties that underlie magnetic cores or sheets used in WPT are known as
`
`magnetic permeability and its inverse, magnetic reluctance, are important to
`
`understanding the ’215 Patent. Id., ¶ 50. The magnetic flux in a vacuum created by
`
`a current flowing through a coil can be calculated. When a material other than a
`
`vacuum is present, the magnetic flux in that material may be different than in a
`
`
`
`9
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`vacuum. Id., ¶ 51. The permeability characterizes the change in magnetic flux when
`
`a coil is not in a vacuum. Air has a permeability of 1.00000037, and thus the
`
`magnetic flux in air is almost identical to that of a vacuum. Id., ¶ 52. Materials can
`
`have a permeability different from 1. The most notable are magnetic cores or sheets
`
`in WPT, which typically have a permeability much greater than 1. Some materials,
`
`like water have a permeability less than 1, which means the flux is lower in water
`
`than it would be in a vacuum or air. Id., ¶ 53.
`
`Magnetic permeability can be understood by looking at the microscopic
`
`composition of many magnetic materials. Many magnetic materials are composed
`
`of microscopic (1-30 micrometer) domains that act like a small magnet. They are
`
`randomly arranged in a magnetic material, as shown below.
`
`Id., ¶ 54.
`
`
`
`10
`
`
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`A domain is like a microscopic bar magnet, with a North and South pole and
`
`the orientation shown by the arrow. In an unmagnetized material, the domains are
`
`randomly oriented. Because of their random orientation, the fields from each domain
`
`cancel one another and the net magnetic field is zero. When an external magnetic
`
`field, H, is applied some domains will align with the external field. Now the domains
`
`are not all random, some point in the direction of the applied field, H. Because of
`
`this, their magnetic fields do not cancel, but rather add to the applied magnetic field,
`
`H, such that the effective magnetic field, B, is greater than the applied magnetic field,
`
`H. Id., ¶¶ 55-57.
`
`As the external field is increased, more and more domains will align. Once all
`
`of the magnetic domains are aligned, the effective magnetic field, B, cannot increase
`
`at the same rate and the material is said to be saturated. A common representation of
`
`this is the relationship between B and H, as shown below in what is often referred to
`
`as a B-H curve:
`
`
`
`11
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`B
`
`
`
`This example displays the difference between a soft magnetic material and a hard
`
`magnetic material in the presence of an applied magnetic field, H. When H=0, the
`
`domains of each of the materials are random. Id., ¶ 58.
`
`The slope of the curve is the effective permeability. The curve has hysteresis
`
`because once domains are aligned they tend to stay aligned, it takes a reduced or
`
`opposing external field to get them to return to a random orientation or to be oriented
`
`in the opposite direction. The saturation occurs when all domains are aligned. Id., ¶
`
`59.
`
`
`
`12
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`A soft magnetic material is one in which the domains align easily with the
`
`external field, H, and return to their random orientation easily when the external field
`
`is removed. It can be thought of as responsive to the external field and requires little
`
`energy to change. Id., ¶ 60. A hard magnetic material is one in which the domains
`
`stay in place and it takes a large magnetic field to change their orientation. The
`
`orientation of the domains is hard to change and they are not as responsive to changes
`
`in external fields, H, unless it is a large magnitude. The magnitude of the external
`
`field needed to change all domains from one direction to the other is called the
`
`coercivity. Id., ¶ 61.
`
`The difference between hard and soft materials can be seen in the diagram
`
`above. For a soft material, a small change in H causes a small change in B. As shown
`
`in the figure above, when a large H is applied in the positive direction, all of the
`
`domains align and the soft material is saturated. Soft materials can be easily
`
`saturated. Hard materials require a greater external field to saturate. In his
`
`deposition, Petitioner’s expert, Dr. Phinney, noted that there is “a somewhat
`
`arbitrary dividing line between what we call hard and soft that’s for a particular
`
`numeric value of coercivity.” Ex. 2018, Phinney Tr. at 38:23 – 39:4 (discussing
`
`whether stainless steels can be a soft magnetic material); see also id., Phinney Tr. at
`
`43:9-17 (the width of the hysteresis loop in the B-H curve will, along a continuum,
`
`dictate the transition from soft magnetic properties to hard magnetic properties). Dr.
`
`
`
`13
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`Phinney also noted that a clear “dividing line” between soft and hard is 1,000 Amps
`
`per meter. See id., Phinney Tr. at 43:19 – 44:6. Ex. 2020, Ricketts Declaration, ¶ 62.
`
`One common method to create a hard magnetic material is to induce an
`
`anisotropy to the shape of the domains, such that they prefer only being in one
`
`direction or the other, e.g. a bar magnet that only wants to be N side up or S side up,
`
`with no other possible orientation. Another method is to create crystal grains that are
`
`on the order of the magnetic domains. When this happens, the magnetic domains are
`
`“pinned” by the grain dimension and hard to change. In other words, while the
`
`elemental components will have an effect on the magnetic characteristics of a
`
`composition, the crystal structure and size, dependent on the processing of the
`
`composition, plays a significant role in whether the material exhibits soft magnetic
`
`characteristics or hard magnetic characteristics. In his deposition testimony, Dr.
`
`Phinney identified permalloy and silicon steel as having soft magnetic properties.
`
`Phinney Tr. at 12:2-23, 38:14-22, 54:4-14. The example below shows the B-H curve
`
`of each of silicon steel, configured as a hard magnetic material, and permalloy,
`
`configured as a soft magnetic material. In addition, it can be seen that the Permalloy
`
`is easily saturated by an external magnetic field, as only a small H is needed to
`
`saturate it.
`
`
`
`14
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`
`Saturated
`
`
`
`Ex. 2019 at 36, Introduction to Inorganic Chemistry, Wikibook, Penn State
`
`University,
`
`at
`
`6.9.1
`
`(available
`
`at
`
`https://chem.libretexts.org/Bookshelves/Inorganic_Chemistry/Book%3A_Introduct
`
`ion_to_Inorganic_Chemistry_(Wikibook))
`
`(annotated). Ex. 2020, Ricketts
`
`Declaration, ¶ 63.
`
`As Sawa explains, “[t]he Fe alloy of the Fe--Cr system, the Fe--Ni system,
`
`and the Fe--Si system is easy to be adjusted in plate thickness by rolling. Further, it
`
`is easy to form an inner strain in a stressing process step such as rolling and to
`
`generate a magnetic anisotropy by an interaction with a magnetostriction. Therefore,
`
`it is possible to make the first magnetic thin plate 2 hard to be magnetic-saturated.”
`
`
`
`15
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`Ex. 1005, 9:4-11. Anisotropy is a common method to “harden” a magnetic material
`
`as explained above. Ex. 2020, Ricketts Declaration, ¶ 64.
`
`As discussed above, magnetic reluctance is the measurement of a material’s
`
`resistance to magnetic flux, with lower reluctances being a more desirable path for
`
`magnetic flux. This is a direct analog to electrical resistance, where a lower
`
`resistance is a more desirable path for current to flow. Magnetic reluctance is
`
`inversely proportional to a material’s permeability and thus two properties are
`
`directly related. Magnetic flux will choose to flow in the least reluctance path and
`
`thus will be concentrated by low reluctance paths in a magnetic circuit. Id., ¶¶ 65-
`
`66.
`
`C. Magnetostriction, Stress and Increased Saturation Magnetization
`
`Magnetostriction is the property of a magnetic material that it changes
`
`dimension during magnetization. One example is an ultrasonic transducer where a
`
`current carrying coil generates a magnetic field which then causes a magnetic
`
`material with magnetostriction properties to expand/contract. Thus, the current
`
`carrying coil can cause a mechanical vibration through the magnetostriction
`
`properties of the magnetic material. Id., ¶ 67. In materials with magnetostriction, a
`
`magnetic field causes a strain that may lead to displacement or dimensional change
`
`of the material. Likewise, a mechanical pressure can cause a magnetic field. Id., ¶
`
`68.
`
`
`
`16
`
`

`

`IPR2022-00117 (’215 Patent)
`Patent Owner’s Response
`The saturation magnetization of a material can be changed by inducing stress
`
`during manufacturing or by stress induced during operation where the strain impedes
`
`the alignment of the small magnetic domains, resulting in a higher magnetic field
`
`needed to overcome the induced strain. This may be thought of as a magnet with
`
`magnetostriction in a fixed box. When a magnetic field is applied, it cannot lengthen
`
`and thus the domains cannot align. The fixed box can be a physical dimension
`
`limitation, e.g. an actual box, or can be due to strain in the material. Id., ¶ 69.
`
`IV. The Teaching of Sawa
`
`US Patent No. 9,443,648 to Sawa (“Sawa”) relates to a magnetic sheet to be
`
`used in wireless power charging that consists of a plurality of magnetic thin plates.
`
`Ex. 1005, Abstract. As is common in wireless power transfer technology, Sawa
`
`recognizes that a magnetic sheet can increase efficiency and power by reducing
`
`magnetic flux passing through wireless power coils into the substrate or battery, Ex.
`
`1005, 2:6-17. Ex. 2020, Ricketts Declaration, ¶ 76.
`
`Sawa notes that a conventional magnetic sheet/shield consists of “a magnetic
`
`thin plate with a saturation magnetic flux density of 0.55 to 2 T (5.5 to 20 kG), f