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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`———————
`
`IPR2022-00117
`U.S. Patent No. 9,843,215
`
`
`
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ............................................................................ iv
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE PETITION ESTABLISHES THAT SAWA TEACHES SOFT
`MAGNETIC LAYERS AS CLAIMED .......................................................... 1
`
`A.
`
`The Evidence in the Record Establishes that Sawa’s First
`Magnetic Thin Plate is a “Soft Magnetic Layer” ................................. 2
`
`1.
`
`2.
`
`The Petition and Dr. Phinney’s declaration present a
`prima facie showing that Sawa’s first magnetic thin
`plate is a soft magnetic layer ...................................................... 2
`
`The overwhelming evidence shows that a POSITA
`would have considered Sawa’s first magnetic thin plate
`materials to be soft magnetic materials ...................................... 3
`
`B.
`
`Patent Owner’s Arguments Fail Because They Apply the Wrong
`Standard in Concluding Sawa’s First Magnetic Plate is a Hard
`Magnet .................................................................................................. 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`Coercivity is the industry standard metric for
`designating a material as magnetically hard or soft. .................. 5
`
`Patent Owner’s position is based on Sawa’s magnetic
`plate being hard to saturate rather than its coercivity ................ 6
`
`Patent Owner is wrong that Sawa’s “processing steps”
`turns Sawa’s soft magnetic thin plate into hard magnetic
`material ....................................................................................... 9
`
`Sawa’s device would be unsuited for its purpose if it
`used a hard magnetic material .................................................. 13
`
`III. THE PETITION ESTABLISHES THAT SAWA TEACHES THE
`CLAIMED “A FIRST POLMERIC MATERIAL LAYER” AND “A
`SECOND POLYMERIC MATERIAL LAYER.” ........................................16
`
`ii
`
`
`
`
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`A.
`
`B.
`
`C.
`
`The Petition Identifies Two Distinct Portions of Sawa’s Resin
`Film as Corresponding to the Claimed Polymeric Material Layers. . 17
`
`Patent Owner’s “Separate and Distinct” Construction is Internally
`Inconsistent ......................................................................................... 19
`
`Patent Owner’s “Separate and Distinct” Construction
`Alternatively Implies a Product-by-Process Claim that is Taught
`by Sawa. ............................................................................................. 20
`
`IV. THE PETITION ESTABLISHES THAT A POSITA WOULD HAVE
`FOUND IT OBVIOUS TO COMBINE SAWA AND INOUE
`(GROUND 2) .................................................................................................23
`
`A.
`
`B.
`
`C.
`
`Sawa’s Lack of Adhesive Between Magnetic Plates is Irrelevant to
`Whether it Would Have Been Obvious to Use Adhesive to Secure
`Polymer to the Magnetic Plates. ......................................................... 24
`
`A POSITA Would Have Looked to Inoue for Known
`Implementation Techniques for Securing Polymer to a Magnetic
`Sheet. .................................................................................................. 24
`
`Including an Adhesive Layer to Secure the Resin Film to the
`Magnetic Sheet is Consistent with Sawa’s Design Tolerances.......... 26
`
`V.
`
`CONCLUSION ..............................................................................................28
`
`CERTIFICATE OF WORD COUNT ......................................................................29
`
`CERTIFICATE OF SERVICE ................................................................................30
`
`iii
`
`
`
`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`
`Ex.1017
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`Ex.1018
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent No. 9,843,215
`
`Prosecution History of U.S. 9,843,215
`
`Declaration of Joshua Phinney under 37 C.F.R. § 1.68
`Curriculum Vitae of Joshua Phinney
`
`U.S. Patent No. 9,443,648 to Sawa et al. (“Sawa”)
`U.S. Patent No. 8,922,162 to Park et al. (“Park”)
`
`U.S. Patent No. 8,922,160 to Inoue (“Inoue”)
`
`U.S. Patent No. 9,030,724 to Agrawal et al. (“Agrawal”)
`U.S. Patent Publication No. 2012/0236528 to Le et al. (“Le”)
`
`U.S. Patent Publication No. 2014/0320369 to Azenui et al.
`(“Azenui”)
`
`U.S. Patent No. 9,252,611 to Lee et al. (“Lee”)
`
`U.S. Patent No. 8,427,100 to Vorenkamp et al. (“Vorenkamp”)
`U.S. Patent No. 8,687,536 to Michaelis (“Michaelis”)
`
`U.S. Patent No. 9,627,646 to Ellinger et al. (“Ellinger”)
`
`Scheduling Order, Scramoge Tech. Ltd. v. Apple Inc., WDTX-6-21-
`cv-00579 (filed Sept. 28, 2021)
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Apple Inc., Scramoge Tech. Ltd. v.
`Apple Inc., WDTX-6-21-cv-00579 (served Sept. 7, 2021)
`Deposition Transcript of Dr. David Ricketts (Oct. 6, 2022)
`Supplemental Declaration of Joshua Phinney under 37 C.F.R. §
`1.68
`
`iv
`
`
`
`
`
`Ex.1019
`
`Ex.1020
`
`Ex.1021
`
`Ex.1022
`
`Ex.1023
`
`Ex.1024
`
`Ex.1025
`
`Ex.1026
`
`Ex.1027
`Ex.1028
`Ex.1029
`
`Ex.1030
`
`Ex.1031
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`Ex.1032
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`Ex.1033
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`B.D. Cullity, Introduction to Magnetic Materials, 2nd Edition
`(2009)
`U.S. Patent No. 10,344,391 to Liu et al. (“Liu”)
`Xing Xing, Soft Magnetic Materials and Devices on Energy
`Applications, July 2011 doctoral thesis at Northeastern
`University
`S. Tumanski, Magnetic Materials from: Handbook of Magnetic
`Measurements, CRC Press
`Sun, Soft High Saturation Magnetization (Fe0.7Co0.3)1-xNx Thin
`Films For Inductive Write Heads
`Leary, Soft Magnetic Materials in High-Frequency, High-Power
`Conversion Applications
`The Merriam-Webster Dictionary, Merriam-Webster, Inc., 1995.
`The Wayback Machine, capture of “Separate | Define Separate
`at Dictionary.com” on February 7, 2012,
`https://web.archive.org/web/20120207103735/http://dictionary.r
`eference.com:80/browse/separate
`U.S. Patent No. 8,409,341 to Iftime et al. (“Iftime”)
`Wiley Online Record for Cullity (Ex.1019)
`Northeastern Library Link
`Xing Xing, High Bandwidth Low Insertion Loss Solenoid
`Transformers Using FeCoB Multilayer (p.19)
`Online Print Publication Record for Ex.1022
`Magnetic Nanoparticles: From Fabrication to Clinical
`Applications” (pg. 41) which was published in 2012 by CRC
`Press, ISBN 978-1-4398-6933-8.
`U.S. Patent No. 7,968,219 to Jiang et al. (“Jiang”)
`
`v
`
`
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 8,320,077 to Tang et al. (“Tang”)
`Google.com, “About link.springer.com/article/10.007/s11837-
`012-0350-0 – Google Search,” available at
`https://www.google.com/search?q=About+https:%2F%2Flink.s
`pringer.com%2Farticle%2F10.1007%2Fs11837-012-0350-
`0&tbm=ilp&ilps=ADNMCi21_WI8yR_hzcZP-
`i7MCKMEzFj2nQ&hl=en-US&biw=1920&bih=1057&dpr=1,
`accessed 10.31.22
`Effect of Mo Addition on Structure and Magnetocaloric Effect in
`γ-FeNi Nanocrystals from the Journal of Electronic Materials,
`Vol. 43
`
`Ex.1034
`
`Ex.1035
`
`Ex.1036
`
`
`
`
`
`vi
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`
`I.
`
`INTRODUCTION
`
`The Petition illustrates how each limitation of the challenged claims is
`
`rendered obvious by the prior art. Patent Owner’s arguments in its Response
`
`(“Response,” Paper 17) do not overcome this showing of obviousness for several
`
`reasons. First, Patent Owner relies on the wrong definition of what makes a
`
`magnetic material “soft” when arguing that Sawa’s magnetic thin plate “is not a
`
`soft magnetic material.” Response, 1. Second, Patent Owner seeks a construction
`
`of the claimed “first polymeric material layer” and the “second polymeric material
`
`layer” that either contradicts the claim language or does not overcome the prior art.
`
`Third, Patent Owner ignores the background knowledge of a POSITA that shows it
`
`would have been predictable and obvious to make the proposed combination of
`
`Inoue and Sawa. For the reasons outlined below, Petitioner requests that the Board
`
`cancel each of the challenged claims as unpatentable.
`
`II. THE PETITION ESTABLISHES THAT SAWA TEACHES SOFT
`MAGNETIC LAYERS AS CLAIMED
`
`The Petition and Dr. Phinney’s declaration illustrate that Sawa teaches well-
`
`known soft magnetic materials for its first magnetic thin plate 2, and thus renders
`
`obvious the claimed “first soft magnetic layer.” Petition, 32-34. Patent Owner
`
`responds that Sawa’s material for its first magnetic thin plates “is not a soft
`
`magnetic material” because the material is “hard to saturate.” Response, 1, 31-32
`
`1
`
`
`
`
`(emphasis added). This argument fails on its face because the standard for
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`determining whether a material is a hard or soft magnet is not based on how hard it
`
`is to saturate but rather on its coercivity—something Patent Owner’s expert admits
`
`he did not analyze. Because Sawa lists soft magnets for its first thin plate and there
`
`is no evidence that Sawa somehow changes the coercivity of these soft magnet
`
`materials to make them hard magnets, Sawa renders obvious the claimed “first soft
`
`magnetic layer.”
`
`A. The Evidence in the Record Establishes that Sawa’s First
`Magnetic Thin Plate is a “Soft Magnetic Layer”
`
`The Petition and Dr. Phinney’s declaration present a prima
`1.
`facie showing that Sawa’s first magnetic thin plate is a soft
`magnetic layer
`
`The Petition identifies Sawa’s first magnetic thin plate 2 as corresponding to
`
`the claimed “first soft magnetic layer.” Petition, 31. The Petition explains that
`
`“Sawa teaches that the first and second thin magnetic plates may be formed of a
`
`soft magnetic material” and identifies some of the ferrite materials Sawa lists for
`
`its first magnetic thin plate: “Fe—Cr system, an Fe—Ni system, an Fe—Si system,
`
`or the like.” Petition, 31-32 (citing Ex.1005, 8:64-67). Citing to Dr. Phinney’s
`
`more detailed explanation in his declaration, the Petition explains that Sawa’s
`
`magnetic thin plates have “soft magnetic characteristics” and that they render
`
`obvious “soft magnetic layers” as claimed. See Petition, 32 (citing Ex.1003, ¶¶60-
`
`2
`
`
`
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`61) Ex.1018, ¶37. Dr. Phinney’s declaration cites to and quotes the portions of
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`Sawa that provide additional materials for the first magnetic thin layer, including
`
`invar, kovar, and permalloy. Ex.1003, ¶¶60-61. When cross-examined on his
`
`declaration testimony, Dr. Phinney confirmed that Sawa’s materials were soft
`
`magnetic materials. See e.g., Ex.2018, 12:20-22 (“the permalloy or silicon steel
`
`and others -- and these are real classic, soft magnetic materials”).
`
`The overwhelming evidence shows that a POSITA would
`2.
`have considered Sawa’s first magnetic thin plate materials to be
`soft magnetic materials
`
`As mentioned above, Sawa teaches a number of ferrous materials (i.e., iron-
`
`based alloys) for its first magnetic thin plate. Ex.1005, 8:59-9:11. Further, the
`
`identified ferrous materials—“Fe-Cr,” “Fe-Ni,” “Fe-Si,” “or the like”—are
`
`consistently listed as soft magnetic materials in academic literature. Ex.1005, 8:64-
`
`67; Ex.1018, ¶¶38-40. For example, as shown in the figure below from the
`
`Handbook of Magnetic Measurements1, Sawa’s listed ferrites Fe-Ni and Fe-Si are
`
`categorized as soft magnetic materials:
`
`
`1 Ex.1018, ¶13 (citing Ex.1031, Ex.1032).
`
`3
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`Petitioner’s Reply to Patent Owner’s Response
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`Range of soft materials
`
`Sawa’s
`materials
`
`Range of soft materials
`
`Ex.1022, Fig. 3.1
`
`Ex.1022, Fig. 3.2
`
`
`
`As noted by Dr. Phinney, Sawa also provides concrete examples of its listed
`
`iron alloys: “a stainless steel, a silicon steel, a permalloy, an Invar, a Kovar, and so
`
`on.” Ex.1005, 8:59-9:11; Ex.1003, ¶¶60-61. These materials are “widely accepted”
`
`as soft magnetic materials, as shown in relevant patent and academic literature.
`
`Ex.1020, 1:17-20 (“Fe—Ni alloys represented by Invar alloy, Kovar alloy and
`
`permalloy, are widely accepted for their advantages of the performance in thermal
`
`expansion and soft magnetic properties”). The textbook Patent Owner’s expert Dr.
`
`Ricketts relies upon, Introduction to Inorganic Chemistry, explicitly describes
`
`“permalloy” as a well-known “soft magnet.” Ex.2019, 36 (“Permalloy, an alloy
`
`consisting of about 20% Fe and 80% Ni, is a soft magnet”). Dr. Ricketts also
`
`4
`
`
`
`
`acknowledged that permalloy with 20% iron and 80% nickel is a “soft” magnetic
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`material. Ex.1017, 19:17-24, 17:12-15; Ex.2020, ¶63.
`
`Accordingly, the materials Sawa lists as examples for its first magnetic thin
`
`plate 2 are widely regarded as soft magnetic materials, as confirmed by patent
`
`literature, academic literature (including Patent Owner’s own textbook), and both
`
`parties’ experts. Based on Sawa’s disclosure, a POSITA would have found it
`
`obvious that Sawa’s first magnetic thin plate 2 is the claimed “first soft magnetic
`
`layer.” Ex.1018, ¶¶38-40.
`
`Patent Owner’s Arguments Fail Because They Apply the Wrong
`B.
`Standard in Concluding Sawa’s First Magnetic Plate is a Hard Magnet
`
`Coercivity is the industry standard metric for designating a
`1.
`material as magnetically hard or soft.
`
`It is universally understood by POSITAs that whether a material is a “soft”
`
`or “hard” magnetic material depends upon the coercivity of the material. Ex.1018,
`
`¶¶20-25. International industry standards distinguish between soft and hard
`
`magnets based on coercivity:
`
`The magnetic materials can be further classified into two clearly
`separate categories: soft magnetic materials and hard magnetic
`materials. Coercivity is assumed as the main criterion, and IEC
`Standard 404-1 recommends the coercivity of 1000A/m as a
`value to distinguish both groups.
`
`Ex.1022, 117; see also Ex.2018, 44:3-6 (Dr. Phinney confirming this coercivity
`
`5
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`
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`threshold during his deposition). The textbook relied upon by Patent Owner
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`confirms this understanding:
`
`Whether a ferro- or ferrimagnetic material is a hard or a soft
`magnet depends on the strength of the magnetic field needed to
`align the magnetic domains. This property is characterized by
`HC, the coercivity. Ex.2019, 36.
`
`Hard magnets have a high coercivity (HC), and thus retain their
`magnetization in the absence of an applied field, whereas soft
`magnets have low values. Ex.2019, 36.
`
`Patent Owner’s expert confirmed during his deposition that the above
`
`understanding of whether a material is a hard or soft magnet would have been
`
`reflective of the understanding of a POSITA in 2014. Ex.1017, 11:21-12:21. Dr.
`
`Ricketts further testified that “a hard magnetic material is one that has a high
`
`coercivity” and “a soft magnetic material has a low coercivity.” Ex.1017, 12:15-
`
`13:6; see also id. at 54:11-14. Accordingly, it was commonly understood in 2014
`
`(and still today) that whether a material is magnetically soft or hard is determined
`
`by the coercivity of that material—as evidenced by industry standards, Patent
`
`Owner’s textbook, and both experts.
`
`Patent Owner’s position is based on Sawa’s magnetic plate
`2.
`being hard to saturate rather than its coercivity
`
`Despite the universal understanding that coercivity determines whether a
`
`material is a hard or soft magnet, Patent Owner and Dr. Ricketts inexplicably relied
`
`6
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`
`
`
`on a different metric to make the determination that Sawa’s first magnetic thin
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`plate is not a soft magnet. Instead of analyzing coercivity, Patent Owner repeatedly
`
`points to Sawa’s first magnetic thin plate as being “hard to saturate.” Response, 22
`
`(explaining that Sawa’s “first magnetic plate exhibits hard to saturate magnetic
`
`characteristics”), 15 (“it is possible to make the first magnetic thin plate 2 hard to
`
`be magnetic-saturated”), 17, 18, 19 (“a first magnetic plate … should be hard to
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`saturate”).
`
`In particular, Patent Owner focuses on Sawa’s description in its background
`
`of a conventional soft magnetic sheet saturating too easily in the presence of a
`
`permanent magnet. See e.g., Response, 18 (citing Ex.1005, 2:56-3:3). The
`
`Response (correctly) explains that Sawa attempts to “overcome this saturation of a
`
`soft magnetic sheet” with “a first magnetic plate on the power transmission side
`
`[that is] hard to saturate.” Response, 19 (citing Ex.1005, 4:18-29). Patent Owner
`
`then painstakingly describes over six pages the various ways in which Sawa
`
`describes making the first magnetic plate harder to saturate. Response, 19-24.
`
`Although its characterization of Sawa’s goals and methodology is generally
`
`accurate, Patent Owner draws the wrong conclusion. Ex.1018, ¶19, 26-28. Sawa’s
`
`description of making the first magnetic plate (that is made of well-known soft
`
`materials) harder to saturate does not “teach[] away from the first magnetic layer
`
`being a soft magnetic layer.” Response, 31. Coercivity, not saturation, determines
`
`7
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`
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`whether a material is a soft or hard magnetic material—as recognized by
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
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`international standards.
`
`Although Sawa affirmatively lists well-known soft magnetic materials for its
`
`first magnetic thin plate 2, Patent Owner fails to even mention coercivity in its
`
`argument that the Sawa’s plate is instead not a soft magnetic material. See
`
`generally Response. Dr. Ricketts was clear during his cross-examination that he
`
`did not analyze the coercivity of Sawa’s materials:
`
`Q. [Y]ou have no opinion on whether [Sawa’s materials] have
`high coercivity or not, correct?
`
`A. That is correct. I do not have any information on the
`coercivity of these materials, whether it’s high or low.
`
`Ex.1017, 40:1-6.
`
`Accordingly, because Patent Owner concludes that Sawa’s plate is not a soft
`
`magnetic material based on Sawa’s description of it being hard to saturate and not
`
`based on its coercivity, its analysis should be rejected.
`
`In any event, Patent Owner’s technical analysis is irrelevant for the purposes
`
`of determining whether Sawa renders obvious the claimed “first soft magnetic
`
`layer.” Sawa’s description of its first magnetic thin plate is broad—it simply
`
`requires “a first magnetic thin plate and a second magnetic thin plate different in
`
`kind from the first magnetic thin plate.” Ex. 1005, 3:57-66. “[D]ifferent in kind
`
`8
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`
`
`
`means that magnetic characteristic such as a magnetostriction constant, thickness,
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`Petitioner’s Reply to Patent Owner’s Response
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`composing material, or the like of the magnetic thin plate are different.” Id. With
`
`respect to plates of different thickness, Sawa’s abstract provides a simple example:
`
`“the first magnetic thin plate has a thickness of from 50 to 300 μm, and the second
`
`magnetic thin plate has a thickness of from 10 to 30 μm.” Ex.1005, Abstract. When
`
`Sawa’s first magnetic thin plate is (i) formed of “permalloy” (a known soft
`
`magnet) and (ii) different from the second plate in thickness only, there can be no
`
`dispute that Sawa’s first plate renders obvious the claimed “first soft magnetic
`
`layer.” Ex.1005, 9:1; Ex.2019, 36 (“Permalloy … is a soft magnet”); Ex.1017,
`
`20:25-21:5 (Dr. Ricketts agreeing that a “POSITA would be able to obtain … a
`
`soft magnetic Permalloy with a thickness of 100 microns”). Ex.1018, ¶¶26-28.
`
`Patent Owner is wrong that Sawa’s “processing steps”
`3.
`turns Sawa’s soft magnetic thin plate into hard magnetic material
`
`As explained above, Sawa lists several examples of materials, such as
`
`“permalloy,” for its first magnetic thin plate that are widely accepted as soft
`
`magnetic materials. Ex.1005, 8:59-9:11; Ex.1020, 1:17-20. To the extent Patent
`
`Owner implies that Sawa’s processing steps somehow change these soft magnetic
`
`materials into hard magnetic materials, Patent Owner is wrong. Sawa simply
`
`makes these materials “hard to be magnetic saturated.” Ex.1005, 9:9-11.
`
`After describing how Sawa’s first magnetic thin plate is created, the
`
`9
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`
`
`Response asserts that “it is through these processing steps that a hard magnetic
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`Petitioner’s Reply to Patent Owner’s Response
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`material can be created from compositions that may exhibit soft magnetic
`
`characteristics in many other forms.” Response, 24. But nowhere does Sawa
`
`describe or even imply that its processing steps make the first magnetic thin plate a
`
`hard magnetic material. Sawa is not concerned about changing the coercivity of the
`
`first magnetic thin plate, as acknowledged by Dr. Ricketts. Ex.1017, 39:7-8 (“Sawa
`
`does not concern itself with coercivity”). Rather, Sawa is explicit its processing
`
`steps are designed to “make the first magnetic thin plate 2 hard to be magnetic
`
`saturated”:
`
`The 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.
`
`Ex.1005, 9:4-11.
`
`
`
`Sawa even lists the specific characteristics of its processed first magnetic
`
`thin plate 2—none of which make the plate a hard magnetic material. For example,
`
`Sawa states “[i]n order to suppress magnetic saturation of the first magnetic thin
`
`plate 2, it is preferable that the first magnetic thin plate 2 has a large
`
`10
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`magnetostriction constant and a saturation magnetic flux density of 1 T (10
`
`kG) or more.” Ex.1005, 7:19-22. Magnetostriction is “not related” to whether a
`
`material is hard or soft. See Ex.1017, 55:19-54:3 (Dr. Ricketts explaining that
`
`“magnetostriction is the dimensional change of a material with respect to an
`
`applied magnetic field. That concept itself is not related to hard or soft”).
`
`Similarly, saturation magnetic flux density is the point along the y-axis of a B-H
`
`curve “where the saturation occurs,” whereas coercivity is indicated by the x-axis
`
`intercept, as explained by Dr. Ricketts and shown in his example B-H graph.
`
`Ex.1017, 58:1-9; Ex.2020, ¶58; Ex.1018, ¶¶29-36.
`
`Ex.2020, ¶58
`
`
`
`Dr. Phinney further explains that how hard it is for a material to saturate is
`
`11
`
`
`
`
`distinct from its coercivity. Ex.1018, ¶¶30-36 (citing Ex.10192, Ex.10213,
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`Petitioner’s Reply to Patent Owner’s Response
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`Ex.10234, and Ex.10245). He illustrates in the B-H graph below that the soft
`
`magnet shown in green is “harder” to saturate despite it having the same near-zero
`
`coercivity as the soft magnet shown in blue. Ex.1018, ¶¶34-36. That is, the green
`
`magnet is harder to saturate without it being a hard magnet material. Ex.1018,
`
`¶¶34-36.
`
`Ex.1018, ¶35 (reproducing Ex.1024, Fig. 7)
`
`
`
`
`2 See Ex.1018, ¶11 (citing Ex.1027, Ex.1028).
`
`3 See Ex.1018, ¶12 (citing Ex.1029, Ex.1030).
`
`4 See Ex.1018, ¶14 (citing Ex.1033, Ex.1034).
`
`5 See Ex.1018, ¶15 (citing Ex.1035, Ex.1036).
`
`12
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`
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`Additionally, Sawa’s preferred “thickness” of 50 to 300 µm for the first
`
`
`
`magnetic thin plate 2 does not make it a hard magnetic material. Ex.1005, 6:16-18,
`
`Abstract. Plate thickness is not correlated with the hardness of the magnetic
`
`material. Ex.1018, ¶¶41-42; Ex.1017, 57:2-7.
`
`
`
`Accordingly, Sawa teaches that its first magnetic thin plate is composed of
`
`well-known soft magnetic materials, and there is no evidence that any of Sawa’s
`
`processing steps or desired magnetic characteristics make it a hard magnetic plate.
`
`Instead, as described below, a POSITA would not prefer not to change the first
`
`magnetic thin plate into a hard magnetic plate.
`
`Sawa’s device would be unsuited for its purpose if it used a
`4.
`hard magnetic material
`
`Patent Owner’s assertion that Sawa’s magnetic thin plate 2 is a hard
`
`magnetic material also ignores the technical repercussions of such a suggestion.
`
`Sawa would not utilize a hard magnetic material for its first magnetic thin plate
`
`because doing so would render its wireless power receiver inoperable for its
`
`intended purpose. Ex.1018, ¶¶41-49.
`
`Sawa explains that it seeks a magnetic sheet for its wireless power receiver
`
`that “enables a sufficient magnetic shield effect and a high charging efficiency
`
`independently of existence/absence of a magnet in a power feeding device side.”
`
`Ex.1005, 3:4-7. A magnetic sheet of hard magnetic material would not accomplish
`
`13
`
`
`
`
`those goals because it would be “ill-suited for wireless power charging systems,”
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`as explained by Dr. Phinney. Ex.1018, ¶45.
`
`In particular, Sawa could not achieve its goal of “high charging efficiency”
`
`with a hard magnet because it would “dissipate a large amount of heat” during
`
`charging. See Ex.1018, ¶46 (Dr. Phinney explaining that the wide hysteresis loop
`
`of hard magnetic materials means that they wastefully dissipate large amounts of
`
`energy as heat when switched back and forth). A soft magnet, however, would
`
`“dissipate relatively little energy” during charging—making “soft magnets
`
`preferable … where the field is switched rapidly.” Ex.1018, ¶46 (citing Ex.2019,
`
`35-36).
`
`
`
`Further, a hard magnet would not allow Sawa to achieve “sufficient
`
`magnetic shield effect” because it is ill-suited for “guiding flux” in a charging
`
`application. Ex.1018, ¶45. Dr. Ricketts similarly explained during his deposition
`
`that “a POSITA would understand that a hard magnetic material would not respond
`
`to a small external field used in wireless power. And so the POSITA … would
`
`look for a soft material” such as “Permalloys.” Ex.1017, 18:16-19:5. Permalloy is
`
`specifically one of the soft magnetic materials suggested by Sawa for its first
`
`magnetic thin plate 2. Ex.1005, 8:59-9:11. Further, it makes little sense why Sawa
`
`would list well-known soft magnetic materials, such as permalloy, for its first
`
`magnetic thin plate 2, if, instead, Sawa intended to use a hard magnetic material, as
`
`14
`
`
`
`
`Patent Owner suggests.
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`Even Patent Owner’s own expert, in both his declaration and deposition,
`
`would not state on the record that Sawa’s magnetic thin plate 2 is a “hard magnetic
`
`material.” For example, Dr. Ricketts’ declaration does not include the statement in
`
`the Response referencing the “the hard magnetic material used in the first magnetic
`
`thin plate” of Sawa. Compare Response, 43 with Ex.2020, ¶113. And, during
`
`cross-examination, when asked whether he agreed with the above statement in the
`
`Response, he said “no”:
`
`Q. Would you agree with the statement that the magnetic sheet
`of Sawa is significantly thicker because it uses a hard magnetic
`material for the first magnetic thin plate?
`
`A. No. Sawa is describing a hard to magnetically saturate
`material with a high saturation magnetization.
`
`Ex.1017, 60:18-61:2.
`
`Sawa purposefully listed well-known soft magnetic materials, such as
`
`permalloy, for its first magnetic thin plate 2. Patent Owner’s position that ignores
`
`why soft, rather than hard, magnetic materials are used in Sawa’s wireless power
`
`device should be given little weight. In light of evidence in the record, the Board
`
`should confirm the showing in the Petition that Sawa renders obvious the claimed
`
`“first soft magnetic layer.”
`
`15
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`
`III. THE PETITION ESTABLISHES THAT SAWA TEACHES THE
`CLAIMED “A FIRST POLMERIC MATERIAL LAYER” AND “A
`SECOND POLYMERIC MATERIAL LAYER.”
`
`The Petition and Dr. Phinney’s supporting declaration show that Sawa
`
`teaches the same end-product that is recited in the claims—a magnetic plate
`
`encapsulated in polymer. Petition 32-35. The Petition identifies Sawa’s resin film
`
`on top of the magnetic sheet 1 as corresponding to the “first polymeric material
`
`layer” and identifies Sawa’s resin film on the bottom of the magnetic sheet 1 as
`
`corresponding to the claimed “second polymeric material layer.” Petition, 32-35.
`
`The Petition further explains that the extending portions of the upper layer and
`
`lower layer of the resin “are connected to each other” on the sides of the magnetic
`
`thin plate, as shown in the figure below. Petition 37-42.
`
`In an attempt to distinguish the claims from the prior art, Patent Owner
`
`
`
`16
`
`
`
`
`“requests that the Board construe independent claims 1 and 13 to require two
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`separate and distinct polymeric layers.” Response, 2. However, Patent Owner’s
`
`proffered construction either (i) creates an internal contradiction or (ii) fails to
`
`distinguish the claims from the prior art. If Patent Owner intends for the claim to
`
`recite two physically “separate” (i.e., unconnected) layers, such a construction
`
`would directly contradict the claimed requirement that the two layers are
`
`“connected to each other” (claims 1 and 13). If Patent Owner instead intends for
`
`the claim to require that the two polymer layers were previously separate but then
`
`connected during manufacture, such a construction would imply a product-by-
`
`process claim that is nevertheless rendered obvious by Sawa’s end-product.
`
`A. The Petition Identifies Two Distinct Portions of Sawa’s Resin
`Film as Corresponding to the Claimed Polymeric Material Layers.
`
`Patent Owner misleadingly implies that Petitioner points to the same
`
`element in Sawa for two different claim elements: “[T]he Petition identifies only a
`
`single resin layer as supposedly constituting both the ‘first’ and ‘second’ layers.”
`
`Response, 2 (emphasis in the original). However, as explained above, the Petition
`
`cites to different and distinct portions of Sawa’s resin film for the two claimed
`
`polymeric material layers. The Petition identifies the upper layer of Sawa’s resin
`
`film, which is positioned on top of the magnetic plate 1, as corresponding to the
`
`claimed “first polymeric material layer.” Petition, 32-34.
`
`17
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`
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`The Petition cites to a different and distinct portion of Sawa’s resin film for
`
`the claimed “second polymeric material layer.” Particularly, the Petition identifies
`
`the bottom layer of Sawa’s resin film, which is positioned on the bottom of the
`
`magnetic plate, as corresponding to the claimed “second polymeric material
`
`layer.” Petition, 34-35. The bottom portion is entirely distinct from the upper
`
`portion, as it is positioned on an entirely different plane on the opposite side of the
`
`magnetic sheet 1.
`
`18
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`Accordingly, Petitioner does not, as Patent Owner suggests, point to the
`
`same element in Sawa for both the “first polymeric material layer” and the “second
`
`polymeric material layer.” Rather, the Petition identifies two distinct portions of
`
`resin layer as corresponding to the claimed first and second polymeric layers.
`
`Patent Owner’s “Separate and Distinct” Construction is
`B.
`Internally Inconsistent
`
`To the extent Patent Owner seeks a construction that would require the first
`
`and second polymeric material layers to be physically “separate,” such a
`
`construction would contradict other limitations in both the independent and
`
`dependent claims. Independent claims 1 and 13 recite that the extending portions
`
`of the first and second polymeric layers “are connected to each other.” Dependent
`
`claims 11 and 21 recite that the extending portions of the first and second
`
`polymeric material layers “contact each other.”
`
`19
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`IPR2022-00117
`Petitioner’s Reply to Patent Owner’s Response
`
`The commonly
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