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 SUR-REPLY
`
`
`
`
`
`
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`
`Table of Contents
`
`Introduction ........................................................................................................ 1
`I.
`II. Petitioner’s Reply and Supporting Evidence Regarding Sawa’s
`Disclosure of “Soft Magnetic Materials” Should be Stricken ............................ 2
`III. Ground 1 Additionally Fails Because Sawa Does Not Describe
`Separate and Distinct “Polymeric Layers” ......................................................... 5
`IV. Ground 2 Fails Because the Petition Fails to Motivate its
`Combination of Sawa with Inoue ....................................................................... 9
`V. Conclusion ........................................................................................................ 13
`
`
`
`i
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`
`Table of Authorities
`
`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018) ............................................................................... 4
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ......................................................................... 7, 8
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................. 9
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ........................................................................... 10
`Google LLC v. Koninklijke Philips N.V.,
`789 F. App’x 874 (Fed. Cir. 2019) ........................................................................ 4
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ........................................................................... 10
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................. 10
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ........................................................................... 10
`In re Thorpe,
`777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985) ..................................................... 8
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................. 4
`Nautilus Hyosung Inc. v. Diebold Self-service Systems division of Diebold,
`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ............................................... 10
`Novartis Pharms. Corp. v. West-Ward Pharms. Int’l Ltd.,
`923 F.3d 1051 (Fed. Cir. 2019) ........................................................................... 12
`Nystrom v. TREX Co., Inc.,
`424 F.3d 1136 (Fed. Cir. 2005) ............................................................................. 7
`Regents of Univ. of Minn. v. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ............................................................................... 8
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ........................................................................... 10
`Statutes and Rules
`35 U.S.C. § 312(a)(3) ......................................................................................... 3, 10
`37 C.F.R. § 42.23(b) ................................................................................................. 4
`
`
`
`ii
`
`

`

`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`
`Exhibits
`
`Description
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Apple Inc.,
`Case No. 6:21-cv-00579-ADA, Dkt. No. 35 (W.D. Tex. Nov. 11,
`2021)
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 33 (W.D. Tex. Sept. 28,
`2021)
`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`Text Order Denying Motion to Stay Pending IPR, Solas OLED
`Ltd. v. Google, Inc., Case No. 6:19-cv-00515-ADA (W.D. Tex.
`June 23, 2020)
`Order Denying Motion to Stay Pending IPR, Multimedia Content
`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-
`00207-ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019)
`Scheduling Order, Correct Transmission LLC v. Adtran, Inc.,
`Case No. 6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10,
`2020)
`Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case
`No. 6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`Standing Order Governing Proceedings in Patent Cases, Judge
`Alan D. Albright
`Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case
`No. 6:19-cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30,
`2020)
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Apple Inc. in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`Defendant Apple Inc.’s First Amended Preliminary Invalidity
`Contentions in Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA (W.D. Tex.)
`Android Authority article: LG Innotek’s Latest wireless charger
`is Three times faster
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 28 (W.D. Tex. Nov. 15,
`2021)
`
`
`
`iii
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-00579-ADA
`(W.D. Tex.)
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 56 (W.D. Tex. Feb. 11, 2022)
`Declaration of John Petrsoric in Support of Motion for
`Admission Pro Hac Vice
`Curriculum Vitae of David S. Ricketts, Ph.D.
`July 21, 2022 Deposition Transcript of Joshua Phinney, Ph.D.
`Excerpts from Introduction to Inorganic Chemistry, Wikibook,
`Penn State University, at 6.91.1 (available at
`https://chem.libretexts.org/Bookshelves/Inorganic_Chemistry/Bo
`ok%3A_Introduction_to_Inorganic_Chemistry_(Wikibook))
`Declaration of Dr. David S. Ricketts in Support of Patent
`Owner’s Response
`
`iv
`
`2014
`
`2015
`
`2016
`
`2017
`2018
`2019
`
`2020
`
`
`
`
`
`
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`
`I.
`
`Introduction
`
`Patent Owner hereby responds to the arguments raised in Petitioner’s Reply
`
`to Patent Owner’s Response, Paper No. 22 (“Reply”). As set forth in Patent Owner’s
`
`Response, Paper No. 17, Ground 1 fails because Sawa teaches and describes a
`
`magnetic material for use in its first magnetic thin plates that is not a soft magnetic
`
`material. With respect to Ground 1 and whether Sawa discloses a “plurality of soft
`
`magnetic layers,” the Reply raises new arguments and evidence for the first time.
`
`These arguments and evidence should be stricken.
`
`Additionally, as to Ground 1 and whether Sawa discloses the claimed “first
`
`polymeric material layer” and “second polymeric material layer,” Petitioner fails to
`
`rebut Patent Owner’s arguments regarding the construction of independent claims 1
`
`and 13 to require two separate and distinct polymeric layers. Because the Petition
`
`identifies only a single resin layer in Sawa as supposedly constituting both the “first”
`
`and “second” “polymeric material layers,” Petitioner fails to show that Sawa satisfies
`
`all of the limitations of the independent claims.
`
`As to Ground 2 and claims 5, 12, 18, and 22, Petitioner’s obviousness
`
`arguments rest on a conclusory analysis regarding the motivation to combine Inoue
`
`with Sawa. This analysis is not just unsupported, it is directly contradicted by the
`
`evidence of record. Ground 2, with respect to claims 5, 12, 18, and 22, fails as well.
`
`
`
`1
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`For the reasons explained in detail below, and the reasons set forth in Patent
`
`Owner’s Response, the Petition fails to establish that any challenged claims are
`
`unpatentable. The Board should find the challenged claims patentable.
`
`II.
`
`Petitioner’s Reply and Supporting Evidence Regarding Sawa’s
`Disclosure of “Soft Magnetic Materials” Should be Stricken
`With respect to whether Sawa discloses “a plurality of soft magnetic layers
`
`comprising a first soft magnetic layer and a second soft magnetic layer,” the sum
`
`total of argument and evidence presented by Petitioner and Dr. Phinney at the filing
`
`of this inter partes review amounts to:
`
`• An annotation of Figure 3 and highlighting of column 4, lines 5-29 of
`
`Sawa to show a “magnetic sheet” that purportedly comprises a “first
`
`magnetic thin plate” and a “second magnetic thin plate.” Petition at 31,
`
`Ex.1003, ¶ 59;
`
`• Highlighting of column 8, line 59 through column 9, line 11, and
`
`column 9, line 65 through column 10, line 1 of Sawa to purportedly
`
`show that the “first magnetic thin plate” may be formed of a soft
`
`magnetic material. Petition at 31-32, Ex.1003, ¶¶ 60, 61; and
`
`• Highlighting of column 11, lines 12-45, and column 9, line 6, through
`
`column 10, line 1, of Sawa to purportedly show that the “second
`
`magnetic thin plate” may be formed of a soft magnetic material.
`
`Petition at 31-32, Ex.1003, ¶¶ 60, 61.
`
`
`
`2
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`In effect, Petitioner and Dr. Phinney recite several passages in Sawa and
`
`highlight those passages, without a scintilla of explanation, to conclude that both
`
`magnetic thin plate 2 and magnetic thin plate 4 of Sawa are constructed of soft
`
`magnetic materials. In response, Patent Owner presented the testimony of Dr.
`
`Ricketts who provided evidence and explanation from Sawa and other sources
`
`refuting the un-substantiated conclusions of Petitioner and Dr. Phinney as to whether
`
`Sawa discloses a soft magnetic material for its first magnetic thin plate 2 (it does
`
`not). See, e.g., Ex. 2020, Declaration of Dr. David S. Ricketts in Support of Patent
`
`Owner’s Response (“Ricketts Declaration”), ¶¶ 50-66, 77-90, 96-108. In reply,
`
`Petitioner offers a supplemental declaration of Dr. Phinney in excess of twenty-five
`
`pages and more than fifteen new exhibits. Petitioner also devotes more than half of
`
`the reply brief in an effort to show that Sawa’s first magnetic thin plate 2 is
`
`constructed of soft magnetic materials. See Reply at 1-15, Ex. 1018, Declaration of
`
`Joshua Phinney, Ph.D., Under 37 C.F.R. § 1.68 in Support of Petitioner Reply
`
`(“Phinney Supp. Decl.”); Exs. 1019-1036. In doing so, Petitioner impermissibly
`
`raises new arguments and presents new evidence not previously raised or presented
`
`in the Petition.
`
`By statute, “the initial petition [must] identify ‘with particularity’ the
`
`‘evidence that supports the grounds for the challenge to each claim. 35 U.S.C. §
`
`312(a)(3).’” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775
`
`
`
`3
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`(Fed. Cir. 2018) (citations omitted). Accordingly, a “reply may only respond to
`
`arguments raised in the ... patent owner response,” 37 C.F.R. § 42.23(b), and may
`
`not “raise[] a new issue or belatedly present[] evidence.” PTAB Consolidated Patent
`
`Trial
`
`Practice
`
`Guide
`
`(Nov.
`
`21,
`
`2019),
`
`available
`
`at
`
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf, at 73 (“Petitioner
`
`may not submit new evidence or argument in reply that it could have presented
`
`earlier, e.g.[,] to make out a prima facie case of unpatentability.”); id. at 74 (“While
`
`replies and sur-replies can help crystalize issues for decision, a reply or sur-reply
`
`that raises a new issue or belatedly presents evidence may not be considered.”).
`
`The Board routinely rejects new unpatentability arguments that were not
`
`raised in the petition. See, e.g., Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359, 1369 (Fed. Cir. 2016) (affirming refusal to consider reply arguments
`
`relying on “new evidence ... not relied upon to support unpatentability in the
`
`Petition” and a “new rationale to explain why one of skill in the art would have been
`
`motivated to combine” the prior art); see also Google LLC v. Koninklijke Philips
`
`N.V., 789 F. App’x 874, 876–77 (Fed. Cir. 2019) (same); Acceleration Bay, 908 F.3d
`
`at 775 (same). Here, this Board should do the same. Petitioner failed to meet its
`
`burden of proof in its Petition by merely concluding, without explanation, that Sawa
`
`discloses a plurality of soft magnetic layers, then waited until Patent Owner raised
`
`serious questions about those conclusions before proffering any evidence outside its
`
`
`
`4
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`highlights of Sawa. Petitioner’s arguments and evidence regarding whether Sawa’s
`
`first magnetic thin plate 2 is a soft magnetic material should have been raised in the
`
`Petition, not in reply. The new arguments and evidence raised in reply should be
`
`stricken. As set forth in Patent Owner’s Response, Ground 1 fails because Sawa
`
`teaches and describes a magnetic material for use in its first magnetic thin plates that
`
`is not a soft magnetic material.
`
`III. Ground 1 Additionally Fails Because Sawa Does Not Describe Separate
`and Distinct “Polymeric Layers”
`The independent claims of the ’215 patent recite a “first polymeric layer” and
`
`a “second polymeric layer,” each with “extending portion” that are “connected to
`
`each other.” Ex. 1001, Claims 1, 13. As set forth in Patent Owner’s Response in
`
`Section V, black-letter claim construction law dictates that the “first polymeric
`
`layer” and the “second polymeric layer” require separate and distinct structures.
`
`Petitioner asserts that Sawa’s encapsulating resin satisfies these limitations, but
`
`neither Petitioner, nor its expert, Dr. Phinney, examine the structure of Sawa’s
`
`encapsulating resin to determine whether it is composed of a single integrated piece
`
`or is composed of top and bottom layers of resin stuck together, or otherwise.
`
`Petitioner and its expert merely assume that the resin on each side is “connected”
`
`without ever proving that they are, in fact, “connected.” Reply at 16 (citing Petition
`
`at 37-42). Petitioner and Dr. Phinney simply assert that, because “Sawa describes
`
`how the polymer resin encapsulates the magnetic sheets … the extending portions
`
`
`
`5
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`on both top and bottom are connected to each other on the side.” Petition at 40; Ex.
`
`1003, Phinney Decl., ¶ 82. Petitioner and Dr. Phinney explain that such an
`
`examination is unnecessary because “[t]he claims are agnostic as to the manner in
`
`which the upper extending portion and lower extending portion are manufactured
`
`(i.e., fabricated as a single integrated piece or fabricated as two separate pieces stuck
`
`together).” Petition at 41; Ex. 1003, Phinney Decl., ¶ 83. In other words, even if
`
`Sawa’s encapsulating resin were manufactured as a single integrated piece, e.g., by
`
`spraying the encapsulating resin, dipping the magnetic sheet in the encapsulating
`
`resin, or otherwise, Ex. 2020, Ricketts Decl. at ¶ 93, Petitioner and Dr. Phinney
`
`contend that the claimed “extending portions” of the “first polymeric layer” and the
`
`“second polymeric layer” are “connected to each other” in Sawa. That cannot be.
`
`Petitioner further argues that “the Petition identifies two distinct portions of resin
`
`layer as corresponding to the claimed first and second polymeric layers.” Reply at
`
`19. In doing so, Petitioner tacitly acknowledges it has failed to meet its burden to
`
`show that the “polymeric layer” limitations of the ’215 patent are satisfied—it is
`
`pointing to two arbitrary portions of the same resin layer.
`
`Petitioner’s assertion that the claims of the ’215 patent are “agnostic as to the
`
`manner in which the upper extending portion and lower extending portion are
`
`manufactured” is incorrect. Starting with the presumption that separately listed
`
`claimed limitations are distinct components of the claimed invention, the Patent
`
`
`
`6
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`Owner’s Response analyzed the claim language as a whole, identified the inter-
`
`relationship, i.e., that the “extending portions” of the “first” and “second”
`
`“polymeric layers” are “connected to each other,” and further examined the
`
`specification1 and prosecution history, to support that the first and second polymeric
`
`layers, as well as their respective extending portions, are separate and distinct.
`
`Patent Owner’s Response at 25-31. In Reply, Petitioner does not counter Patent
`
`Owner’s claim construction arguments, only poking at the notion that multiple
`
`polymeric material layers can be “separate” and “connected to” each other. Reply
`
`at 20. This is a red herring. The Federal Circuit has repeatedly recognized that
`
`“separate” structures can be “connected” to each other. See, e.g., Becton, Dickinson
`
`& Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1253-56 (Fed. Cir. 2010)
`
`(holding that the claimed spring means and hinged arm are “separate structures” that
`
`are “connected to” each other); Regents of Univ. of Minn. v. AGA Med. Corp., 717
`
`
`
` 1
`
` The ’215 patent describes the use of adhesive or thermal compression bonding to
`adhere the distinct layers, i.e., to “connect” the distinct layers. Petitioner argues
`that “bonding the polymeric layers together integrates them into a single piece.”
`Reply at 22. Petitioner does not explain this leap. Nor can they. The ’215 patent
`only refers to the polymeric layers as “connected,” both with and without an
`adhesive layer and never refers to the connected polymeric layers as “integrated.”
`Ex. 1001, 5:32-42, 5:51-58. To the extent Petitioner is relying on the figures of the
`’215 patent to show the connected polymeric layers as “integrated,” it is erroneous
`to rely on invalidity arguments founded in an un-corroborated analysis of those
`figures. See, e.g., Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir.
`2005)
`
`
`
`7
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`F.3d 929, 935-36 (Fed. Cir. 2013) (holding that the “first and second occluding
`
`disks” “must be discrete structures” that are “affixed” to one another as required by
`
`the claim). Consequently, the claims of the ’215 patent require two separate
`
`“polymeric layers” with “extending portions” that are “connected to each other” and
`
`Petitioner is unable to show that Sawa’s encapsulating resin, consisting of a single
`
`cohesive layer, not two separate layers, can satisfy that requirement.
`
`Petitioner further argues that “to construe the claims to require that the
`
`polymeric layers were previously separate but then combined to be connected would
`
`define the claimed apparatus by how it was made (i.e., a product-by process claim).”
`
`Reply at 21 (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
`
`1985)). This argument is non-sensical and would turn any apparatus claim that uses
`
`terms like “connected,” “coupled,” or “affixed” into a product-by process claim. It
`
`runs contrary to the myriad of cases where the Federal Circuit has recognized that
`
`separate, physically distinct structures can be “connected,” “coupled,” affixed,” etc.
`
`See, e.g., Regents of Univ. of Minn., 717 F.3d at 935-36; Becton, Dickinson, 616 F.3d
`
`at 1254–56.
`
`Under the proper construction that the claims require two separate and distinct
`
`polymeric layers, Ground 1 fails because Sawa does not disclose or render obvious
`
`two separate and distinct polymeric layers. Petitioner’s arguments to the contrary
`
`
`
`8
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`fail to show otherwise. All challenged claims of the ’215 patent should be found not
`
`unpatentable.
`
`IV. Ground 2 Fails Because the Petition Fails to Motivate its Combination
`of Sawa with Inoue
`Ground 2 of the Petition proposes a combination of Sawa with Inoue to
`
`address Sawa’s failure to teach the limitation of claims 5 and 18 that requires “an
`
`adhesive layer that adheres the first polymeric material and the second polymeric
`
`material to the plurality of soft magnetic layers” and the limitation of claims 12 and
`
`22 that requires “an adhesive layer positioned between the first extending portion
`
`and the second extending portion.” Petitioner asserts that because it was “known to
`
`use adhesives to secure polymer to magnetic plates in the field of wireless charging
`
`devices,” Reply at 23, and therefore in the general background knowledge of a
`
`POSITA, the POSITA would be motivated to make the proposed combination. By
`
`Petitioner’s logic, if a POSITA could have made a combination, a POSITA would
`
`have made the combination. That is not the law. As the Federal Circuit has
`
`explained, “obviousness concerns whether a skilled artisan not only could have made
`
`but would have been motivated to make the combinations or modifications of prior
`
`art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
`
`1073 (Fed. Cir. 2015) (emphasis in original). Similarly, the Board has previously
`
`remarked that “[a]n assertion that something could be done does not articulate a
`
`reason why something would be done by one of ordinary skill in the art at the time
`
`
`
`9
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`of the invention and, therefore, raises a specter of impermissible hindsight bias in an
`
`obviousness analysis.” Nautilus Hyosung Inc. v. Diebold Self-service Systems
`
`division of Diebold, IPR2016-00633, Paper 9 at 21 (PTAB Aug. 22, 2016).
`
`Without “some articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006), the obviousness analysis fails. “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). This burden never shifts to the Patent Owner.
`
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed.
`
`Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27
`
`(Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`
`Furthermore, 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) (In light of Petitioner’s failure to explain why a
`
`skilled artisan would have sought to combine the prior art references, the Board had
`
`no basis to conclude that the Petitioner had satisfied its burden to prove that the
`
`claimed invention would have been obvious.). In the present instance, Petitioner
`
`merely concludes that, because Inoue shows that it was already known to secure a
`
`polymer to a magnetic sheet using adhesive and that a POSITA would recognize that
`
`
`
`10
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`there were multiple known ways to secure the polymer to the magnetic sheet, a
`
`POSITA would look to the adhesive example of Inoue. However, the Petition does
`
`not offer an adequate explanation as to how and why the adhesive layer of Inoue
`
`would have been combined with Sawa. Indeed, Petitioner merely concludes that a
`
`predictable result would ensue from the combination.
`
`In reaching this conclusion, Petitioner again fails to address why a POSITA
`
`would modify Sawa’s Figure 3 embodiment. Sawa was already aware of the
`
`combination of resin films with adhesive to maintain the laminated magnetic sheet
`
`structure. See Ex. 1001, 4:34-36 (“As the adhesive layer portion 3, there can be cited
`
`a resin film having adherence or an adhesive agent or the like.”). Yet Sawa taught
`
`that such an adhesive layer was not necessary, except to maintain electrical
`
`insulation, when an encapsulating resin is used because the entire laminated
`
`magnetic sheet structure is secured by the encapsulating resin. See Ex. 2020,
`
`Ricketts Decl., ¶¶ 93-95. Sawa’s clear indication that it is not necessary to employ
`
`adhesive to secure layers in the laminated structure when encapsulating resin is used
`
`is not irrelevant, as Petitioner argues, Reply at 24, because it goes directly towards
`
`why a POSITA would not look to employ an adhesive between the encapsulating
`
`resin and the magnetic sheets.
`
`Adding an adhesive to the encapsulating resin provides no benefit and,
`
`consequently, Petitioner is unable to identify any such benefit in either the Petition
`
`
`
`11
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`or in its Reply, instead relying on the assertion that adding adhesive would yield a
`
`predictable result and attempting to diminish the drawbacks identified by Patent
`
`Owner and Dr. Ricketts. Petitioner’s reply arguments regarding those drawbacks,
`
`which include increased size, increased manufacturing complexity, and decreased
`
`magnetic flux concentration, Reply at 26-28, go at most to the degree of the
`
`drawbacks and do not change the simple fact that the drawbacks outweigh the
`
`benefits. The addition of adhesive to Sawa’s encapsulating resin is unnecessary, i.e.,
`
`of no benefit, and detrimental. With no degree of benefit and some degree of
`
`detriment, Petitioner’s proposed combination is clearly made in hindsight. It should
`
`be rejected.
`
`Petitioner’s citation to Novartis Pharms. Corp. v. West-Ward Pharms. Int’l
`
`Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) for the proposition that an obviousness
`
`showing “does not require that a particular combination must be the preferred or the
`
`most desirable, combination described in the prior art in order to provide motivation
`
`for the current invention,” Reply at 26, is inapposite. Patent Owner is not arguing
`
`that Petitioner has failed to show Inoue’s adhesive layer to be the preferred or
`
`desirable combination. Patent Owner is arguing that Petitioner has failed to make
`
`the requisite showing that a POSITA would have been motivated to combine Inoue
`
`with Sawa because Inoue’s adhesive layer is not a desirable modification to Sawa’s
`
`
`
`12
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`Figure 3 embodiment. No further inquiry is necessary. The Board should separately
`
`find that challenged claims 5, 12, 18, and 22 are not unpatentable.
`
`V. Conclusion
`
`With respect to Ground 1, Petitioner’s reply impermissibly introduced new
`
`arguments and evidence to in an attempt to show that a POSITA would recognize
`
`that the first magnetic thin plate of Sawa is a soft magnetic material. These
`
`arguments and evidence should be stricken. The Petition fails to establish that Sawa
`
`satisfies the ’215 Patent’s requirement of “a plurality of soft magnetic layers” and
`
`all challenged claims should be found not unpatentable. Petitioner’s reply with
`
`respect to the claimed requirement of two separate and distinct polymeric layers also
`
`fails because Petitioner still is unable to show that Sawa has anything but a single
`
`layer encapsulating resin.
`
`With respect to Ground 2, Petitioner’s reply additionally fails to show that a
`
`POSITA would be motivated to combine an adhesive layer taught by Inoue with the
`
`encapsulating resin taught by Sawa when the proposed combination would provide
`
`no benefit while adding drawbacks. Accordingly, the Petition cannot show that its
`
`proposed modification of Sawa and Inoue to include an adhesive layer with the
`
`encapsulating resin would have been obvious.
`
`For all of the reasons above, Patent Owner respectfully requests that all
`
`challenged claims be found not unpatentable.
`
`
`
`
`
`13
`
`

`

`
`
`
`
`
`Dated: December 12, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/s/ Brett Cooper
`
`
`
`
`
`Brett Cooper (Reg. No. 55,085)
`Lead counsel for Patent Owner
`
`
`14
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`CERTIFICATION REGARDING WORD COUNT
`
`Pursuant to 37 C.F.R. § 42.24(d), Patent Owner certifies that there are 3,319
`
`
`
`
`words in the paper excluding the portions exempted under 37 C.F.R. § 42.24(a)(1).
`
`/s/ Brett Cooper
`
`
`
`Brett Cooper, Reg. No. 55,085
`Lead counsel for Patent Owner
`
`
`
`
`
`
`
`Dated: December 12, 2022
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-00117 Sur-Reply
`Patent No. 9,843,215
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above document was served on
`
`December 12, 2022, by filing this document through the Patent Trial and Appeal
`
`Case Tracking System as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Petitioner:
`
`Scott T. Jarratt (Reg No. 70,297)
`scott.jarratt.ipr@haynesboone.com
`Andrew S. Ehmke (Reg No. 50,271)
`andy.ehmke.ipr@haynesboone.com
`Calmann J. Clements (Reg No. 66,910)
`calmann.clements.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Phone: (972) 739-8663
`Fax: (214) 200-0853
`
`
`
`
`Date: December 12, 2022
`
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`(212) 951-0100
`
`
` /s/ Brett Cooper
`
`
`
`
`
`Brett Cooper
`Reg. No. 55,085
`Attorney for Patent Owner
`
`
`
`
`
`