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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
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`

`

`
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 5
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 6
`
`GROUNDS FOR STANDING ........................................................................ 6
`
`III. NOTE ............................................................................................................... 6
`
`IV. SUMMARY OF THE ’215 PATENT ............................................................. 7
`
`V.
`
`PROSECUTION HISTORY .........................................................................10
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................11
`
`VII. CLAIM CONSTRUCTION ..........................................................................11
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................12
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................12
`
`A. Discretionary denial under the Fintiv factors is not appropriate ........ 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`No evidence regarding a stay ................................................... 13
`
`Parallel proceeding trial date ................................................... 13
`
`Investment in the parallel proceeding ...................................... 13
`
`Overlapping issues with the parallel proceeding ..................... 14
`
`Petitioner is a defendant ........................................................... 14
`
`Other circumstances ................................................................. 15
`
`The Fintiv Framework Should Be Overturned................................... 15
`
`Discretionary denial under General Plastic is not appropriate .......... 15
`
`B.
`
`C.
`
`2
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 16
`
`
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....17
`
`A.
`
`B.
`
`C.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Challenged Claims ............................................................................. 17
`
`Statutory Grounds for Challenges ...................................................... 17
`
`Ground 1: Claims 1, 8-11, 13, 17, and 19-21 are obvious under 35
`U.S.C. § 103 over Sawa and Park. ..................................................... 18
`
`Summary of Sawa .............................................................................. 18
`
`Summary of Park ................................................................................ 21
`
`Reasons to Combine Sawa and Park .................................................. 23
`
`Claim 1 ............................................................................................... 27
`
`Claim 8 ............................................................................................... 43
`
`Claim 9 ............................................................................................... 44
`
`Claim 10 ............................................................................................. 45
`
`Claim 11 ............................................................................................. 48
`
`Claim 13 ............................................................................................. 50
`
`10. Claim 17 ............................................................................................. 53
`
`11. Claim 19 ............................................................................................. 53
`
`12. Claim 20 ............................................................................................. 53
`
`13. Claim 21 ............................................................................................. 54
`
`D. Ground 2: Claims 5, 12, 18, and 22 are obvious under 35 U.S.C.
`§ 103 over Sawa, Park, and Inoue. ..................................................... 54
`
`1.
`
`Summary of Inoue .............................................................................. 54
`
`3
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`

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`
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Reasons to combine Sawa and Inoue ................................................. 56
`
`Claim 5 ............................................................................................... 59
`
`Claim 12 ............................................................................................. 63
`
`Claim 18 ............................................................................................. 67
`
`Claim 22 ............................................................................................. 67
`
`XI. CONCLUSION ..............................................................................................68
`
`XII. MANDATORY NOTICES ...........................................................................69
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ......................................................................... 69
`
`Related Matters ................................................................................... 69
`
`Lead and Back-up Counsel and Service Information ........................ 69
`
`CERTIFICATE OF WORD COUNT ......................................................................71
`
`CERTIFICATE OF SERVICE ................................................................................72
`
`4
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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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 (“Sawa”)
`U.S. Patent No. 8,922,162 to Park (“Park”)
`
`U.S. Patent No. 8,922,160 to Inoue (“Inoue”)
`
`U.S. Patent No. 9,030,724 to Agrawal (“Agrawal”)
`U.S. Patent Publication No. 2012/0236528 to Le (“Le”)
`
`U.S. Patent Publication No. 2014/0320369 to Azenui (“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 (“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)
`
`
`
`
`
`
`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
`
`5
`
`

`

`
`I.
`
`INTRODUCTION
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
`
`U.S. Patent No. 9,843,215 (the “’215 patent,” Ex.1001) describes and claims
`
`well-known concepts related to wireless charging technology. Wireless charging
`
`technology typically uses inductive coupling between a charging coil and a power
`
`receiving coil. To make the coupling more efficient, a magnetic layer is placed
`
`adjacent to the power receiving coil. The ’215 patent describes and claims no more
`
`than well-known concepts related to that magnetic layer, such as encapsulating it in
`
`a polymer or forming it with specific types of materials. As will be explained in
`
`detail below, each of these concepts was already well known before the earliest
`
`alleged priority date of the ’215 patent.
`
`Pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100, Apple Inc.
`
`(“Petitioner”) respectfully requests that the Board review and cancel as
`
`unpatentable under 35 U.S.C. §103 claims 1, 5, 8-13, and 17-22 (hereinafter, the
`
`“Challenged Claims”) of the ’215 patent.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’215 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`6
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`

`
`material has been added. Claim terms are presented in italics.
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`IV. SUMMARY OF THE ’215 PATENT
`
`The ’215 patent generally relates to “a wireless charging and communication
`
`device.” Ex.1001, Abstract. In particular, the ’215 patent describes a device that
`
`includes a coil that is placed adjacent to a magnetic layer 220, 230. See Ex.1001,
`
`5:24-31. The magnetic layer 220, 230 is sandwiched between two polymeric layers
`
`310, 312: “The polymeric material layer 310, 312 … may be disposed on one
`
`surface and the other surface of the first and second soft magnetic layers 220, 230.”
`
`Ex.1001, 6:39-41. The polymer layers may be “extending longer than an exposed
`
`portion of the soft magnetic layer 220, 230.” Ex.1001, 5:29-31; Ex.1003, ¶ 30. The
`
`magnetic layer as shown in Fig. 1 below.
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`7
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`polymeric
`layer
`
`magnetic
`layer
`
`polymeric
`layer
`
`coil
`
`Ex.1001, Fig. 1 (partial, annotated); Ex.1003, ¶ 30.
`
`
`
`The ’215 patent further describes embodiments in which the magnetic layer
`
`includes multiple sheets: “the soft magnetic layer 220, 230 may be added in plural
`
`numbers.” Ex.1001, 6:60-61. Further, the magnetic layers may be encapsulated by
`
`connecting the top polymer layer to the bottom polymer layer with an additional
`
`section of polymer: “a polymeric material connector 313 intended for connecting
`
`the first polymeric material layer 310 and the second polymeric material layer 312
`
`and surrounding the exposed portion of the soft magnetic layer 220.” Ex.1001,
`
`5:33-37. The encapsulation is shown in Figs. 5 and 10 below.
`
`8
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`

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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`polymeric
`layer
`
`magnetic
`layer
`magnetic
`layer
`polymeric
`layer
`
`coil
`
`Ex.1001, Fig. 10 (partial, annotated) Ex.1003, ¶ 31.
`
`first extending
`portion
`
`magnetic
`layer
`
`coil
`
`second
`extending
`portion
`Ex.1001, Fig. 5 (annotated); Ex.1003, ¶ 31.
`
`The concepts related to multiple magnetic layers that are encapsulated in
`
`9
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`polymer, as well as other concepts, were added during prosecution of the ’215
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`patent, as will be explained below. However, each of these concepts was known in
`
`the art. Ex.1003, ¶ 32.
`
`V.
`
`PROSECUTION HISTORY
`
`The ’215 patent was filed on March 3, 2015. It claims priority to Korean
`
`Patent No. 10-2014-0025290 filed March 4, 2014. In a first Office Action, the
`
`Office rejected most claims as being anticipated by Korean Patent Application
`
`2013-00721810 to Lee (“Lee”). Ex.1002, 100. To overcome the references cited by
`
`the Office during prosecution of the ’215 patent, the Applicant added limitations
`
`related to encapsulating the magnetic layer by having the top polymeric layer
`
`connect to the bottom polymeric layer. Ex.1002, 81-92. After receiving a first
`
`notice of allowance, the Applicant filed a petition to withdraw from issue and a
`
`request for continued examination to make further amendments to the claims
`
`related to the device having a plurality of magnetic layers, as well as the type of
`
`material that may comprise the magnetic layers. Ex.1002, 50. These limitations
`
`then resulted in the Office issuing a second notice of allowance. Ex.1002, 21-25.
`
`As will be shown below, the various limitations added to gain allowance of
`
`the ’215 patent (polymeric encapsulation, plurality of magnetic layers, and type of
`
`material) were all known in the art when the ’215 patent was filed.
`
`10
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`

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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`A Person of Ordinary Skill in The Art (“POSITA”) in 2014 would have had
`
`a working knowledge of the wireless power arts that are pertinent to the ’215
`
`patent. That person would have a bachelor’s degree in electrical engineering, or
`
`equivalent training, and approximately two years of experience working in the
`
`field of wireless power transmission. Lack of work experience can be remedied by
`
`additional education, and vice versa. Ex.1003, ¶¶ 18-20.
`
`VII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “shall be construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b). The Board only construes the claims to the extent necessary to resolve
`
`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes
`
`11
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`

`
`of this proceeding, the terms of the Challenged Claims should be given their plain
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`and ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶ 33.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
`
`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for § 314 denial strongly favor institution. See
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential). The district court case is at an early stage and no trial date has been
`
`set despite the court issuing a scheduling order. Petitioner has diligently prepared
`
`and filed this petition within two months of being served Patent Owner’s
`
`infringement contentions. Ex.1016, 1-2, 7. The petition is also well within the one-
`
`year timeframe allowed by Congress.
`
`
`1 Petitioner does not concede that any term in the challenged claims meets the
`
`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
`
`patentable subject matter under 35 U.S.C. § 101.
`
`12
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
`
`1.
`
`No evidence regarding a stay
`
`
`
`No motion to stay has been filed, so the Board should not infer the outcome
`
`of such a motion. Sand Revolution II LLC v. Continental Intermodal Group –
`
`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
`
`(informative); see also Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-
`
`01359, Paper 15 at 11 (Feb. 12, 2021) (“It would be improper to speculate, at this
`
`stage, what the Texas court might do regarding a motion to stay…”). Thus, this
`
`factor is neutral on discretionary denial.
`
`2.
`
`Parallel proceeding trial date
`
`The co-pending litigation is at an early stage. The district court recently
`
`issued a scheduling order but did not set a trial date. Ex.1015, 4. Instead, the court
`
`“expects to set this date” at the conclusion of the Markman hearing, scheduled for
`
`March 8, 2022. Ex.1015, 3, 4. Without a trial date, this factor weighs heavily
`
`against discretionary denial. See Sand Revolution II at 8-10, 14 (uncertainty over
`
`district court’s trial date weighed against discretionary denial).
`
`3.
`
`Investment in the parallel proceeding
`
`The co-pending litigation is in its early stages, and the investment in it has
`
`been minimal. As mentioned above, a claim construction hearing has not yet
`
`occurred, fact discovery will not close until September 2022, and expert discovery
`
`will not close until November 2022. Ex.1015, 3; see PEAG LLC v. Varta
`
`13
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`

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`Microbattery GmbH, IPR2020-01214, Paper 8, 17 (Jan. 6, 2021). This lack of
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`investment favors institution.
`
`Moreover, Petitioner only learned which claims were being asserted on
`
`September 7, 2021. See Ex.1016 (infringement contentions). In the intervening two
`
`months, Petitioner has worked expeditiously to file this petition. Under Fintiv,
`
`Petitioner’s prompt filing “weigh[s] against exercising the authority to deny
`
`institution.” Fintiv, Paper 11 at 11 (“If the evidence shows that the petitioner filed
`
`the petition expeditiously, such as promptly after becoming aware of the claims
`
`being asserted, this fact has weighed against exercising the authority to deny
`
`institution under NHK.”).
`
`4. Overlapping issues with the parallel proceeding
`
`There is no present overlap of prior art issues due to the early stage of
`
`district court litigation. For example, Petitioner has not served its preliminary
`
`invalidity contentions in the district court proceeding. Consequently, this factor
`
`favors institution.
`
`5.
`
`Petitioner is a defendant
`
`Petitioner is a defendant in the litigation. That is true of most Petitioners in
`
`IPR proceedings. Accordingly, this factor should not be a basis for denying
`
`institution.
`
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`6. Other circumstances
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`The prior art presented in this Petition renders the Challenged Claims
`
`unpatentable as obvious. The merits of Petitioner’s arguments are strong, and this
`
`factor weighs against discretionary denial.
`
`As such, because the Fintiv factors are either neutral or weigh against
`
`discretionary denial, and because this Petition was filed more than six months
`
`before the statutory bar date, institution should not be denied on discretionary
`
`factors.
`
`B.
`
`The Fintiv Framework Should Be Overturned
`
`Apart from Petitioner’s showing that the Fintiv factors favor institution, the
`
`Fintiv framework should be overturned because it (1) exceeds the Director’s
`
`authority, (2) is arbitrary and capricious, and (3) was adopted without notice-and-
`
`comment rulemaking. See Apple, Inc. et al. v. Iancu, No. 5:20-cv-06128-EJD
`
`(N.D. Cal.), Dkt. No. 65.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’215 patent has not been challenged in any prior IPR petition, so none of
`
`the General Plastic discretionary institution factors apply to this Petition. See
`
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`
`at 16 (PTAB Sept. 6, 2016) (Section II.B.4.i. precedential).
`
`15
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative nor redundant to the prosecution of the ’215
`
`patent. The Examiner did not cite any of the references relied upon in this petition
`
`in a rejection. With regard to Ground 2, although Inoue was cited on the face of the
`
`’215 Patent, it was not cited nor substantively discussed by the examiner during
`
`prosecution. The other reference (Sawa) from Ground 2 was not considered by the
`
`Examiner during prosecution. The Board has found that where presented prior art
`
`references include references that were not before the examiner in combination
`
`with a reference that was not substantively considered by an examiner, such
`
`combinations are not the same or substantially the same art or arguments
`
`previously presented to the Office. Group III International, Inc. v. Targus Group
`
`International, Inc., IPR2021-00371, No. 21 at 33 (P.T.A.B. Jul. 9, 2021); see also
`
`Intel Corporation v. Koninklijke Philips N.V., IPR2021-00370, No. 10 at 9
`
`(P.T.A.B. Jul. 6, 2021) (finding that the first condition of Advanced Bionics was
`
`not satisfied where a single reference had been cited on the face of the Challenged
`
`Patent while the other references were not before the examiner and declining to
`
`consider the material error condition of Advanced Bionics).
`
`Moreover, the challenges in this petition are non-cumulative because they
`
`rely upon prior art that teach the specific limitations the Examiner found lacking in
`
`16
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`

`

`
`the prior art of record during prosecution. Compare Ex.1002, 21-25, 50 (allowance
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`based upon amendments adding polymeric encapsulation, plurality of magnetic
`
`layers, and type of magnetic material) with Ex.1005, 5:13-16 (polymeric
`
`encapsulation), 4:32-34 (plurality of magnetic plates) and 11:12-19 (recited type of
`
`material).
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1, 5, 8-13, and 17-22, which correspond to the
`
`claims asserted in the Plaintiff’s infringement contentions in the co-pending
`
`litigation. Ex.1016, 2.
`
`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`
`#2
`
`Claims
`1, 8-11, 13,
`17, and 19-21
`5, 12, 18, and
`22
`
`Basis
`§ 103 over Sawa in view of Park
`
`§ 103 over Sawa in view of Park and Inoue
`
`
`
`U.S. Patent No. 9,443,648 to Sawa et al. (“Sawa,” Ex.1005) was filed in the
`
`U.S. on May 7, 2014. Sawa issued on September 13, 2016. Sawa claims priority to
`
`PCT/JP2012/007133, filed on Nov. 7, 2012. Compliant with 35 U.S.C. § 363,
`
`PCT/JP2012/007133 designates the U.S., and thus Sawa was effectively filed at
`
`least as early as November 7, 2012. See 35 U.S.C. 102(d)(2). Sawa is thus prior art
`
`17
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`under 35 U.S.C. 102(a)(2).
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`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`U.S. Patent No. 8,922,162 to Park et al. (“Park,” Ex.1006) was filed on
`
`December 6, 2011. Park issued on December 30, 2014. Park is thus prior art under
`
`35 U.S.C. 102(a)(2).
`
`U.S. Patent No. 8,922,160 to Inoue (“Inoue,” Ex.1007) has a 371(c) date of
`
`February 19, 2010 and claims priority to a PCT Application filed August 20, 2008.
`
`Inoue issued on December 30, 2014. Inoue is thus prior art under 35 U.S.C.
`
`102(a)(2).
`
`Petitioner’s analysis also cites additional evidence to demonstrate the
`
`background knowledge of a POSITA and to provide contemporaneous context to
`
`support Petitioner’s assertions regarding what a POSITA would have understood
`
`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
`
`1042 (Fed. Cir. 2018) (affirming the use of “supporting evidence relied upon to
`
`support the challenge”); 37 C.F.R. § 42.104(b); see also K/S HIMPP v. Hear-Wear
`
`Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014); Arendi S.A.R.L. v. Apple
`
`Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016).
`
`C. Ground 1: Claims 1, 8-11, 13, 17, and 19-21 are obvious under 35
`U.S.C. § 103 over Sawa and Park.
`
`1.
`
`Summary of Sawa
`
`Like the ’215 patent, Sawa relates to a “non-contact power receiving
`
`18
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`

`

`
`device.” Ex.1005, 1:20. In Sawa’s device, a “magnetic sheet 1 [is] provided
`
`IPR2022-00117 Petition
`Inter Partes Review of U.S. 9,843,215
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`between the spiral coil (power receiving coil) 16 and the secondary battery 18.”
`
`Ex.1005, 15:52-54; Ex.1003, ¶ 38.
`
`non-contact type power receiving device
`
`magnetic sheet
`
`coil
`
`Ex.1005, Fig. 10 (annotated); Ex.1003, ¶ 38.
`
`
`
`Sawa describes that the “magnetic sheet for non-contact power receiving
`
`device of the embodiment includes a laminate of a plurality of magnetic thin
`
`plates.” Ex.1005, 3:55-57. In particular, Sawa’s magnetic sheet includes an
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`“adhesive layer portion … between the first magnetic thin plate 2 and the second
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`magnetic thin plate 4.” Ex.1005, 4:32-34. Sawa’s magnetic sheet is shown below.
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`Ex.1003, ¶ 39.
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`magnetic
`sheet
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`first magnetic plate
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`second magnetic
`plate
`Ex.1005, Fig. 1 (annotated); Ex.1003, ¶ 39.
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`
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`Sawa further describes an example in which the magnetic sheet is
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`encapsulated in a polymer: “If the magnetic thin plates 2, 4 are affected by
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`corrosion such as rust, covering the entire laminate of the magnetic thin plates 2, 4
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`by the resin film 5 is effective.” Ex.1005, 5:11-13. “If it is necessary for the
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`magnetic thin plates 2, 4 to be electrically insulated, the resin film 5 covering the
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`entire laminate is effective.” Ex.1005, 5:13-16. The resin film may include
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`polymeric materials such as “PET film, a PI film, a PPS film, a PP film, a PTFE
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`film, and so on.” Ex.1005, 5:22-23. Sawa’s encapsulating resin film is shown in
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`Fig. 3 below. Ex.1003, ¶ 40.
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`magnetic
`sheet
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`first magnetic plate 2
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`polymer
`resin
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`second magnetic
`plate 4
`Ex.1005, Fig. 3 (annotated); Ex.1003, ¶ 40.
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`As shown above in Fig. 3, Sawa additionally teaches that the first magnetic
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`plate 2 may be divided into two separate magnetic thin plates 2A and 2B. Ex.1005,
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`4:66-67. Sawa notes, however, that “[i]f the entire laminate is covered by the resin
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`film 5 as in the magnetic sheet 1 shown in FIG. 3, it is not necessary to provide an
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`adhesive layer portion 3 between … magnetic thin plate 2A and the magnetic thin
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`plate 2B.” Ex.1005, 5:16-21. As such, the layers 2A and 2B illustrated in Fig. 3
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`may be treated as single magnetic plate. Ex.1003, ¶ 41.
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`Thus, Sawa provides evidence that it was known for wireless charging
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`devices to include a plurality of magnetic layers, encapsulated in polymer, against
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`a wireless power coil. Ex.1003, ¶ 42.
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`2.
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`Summary of Park
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`Like the ’215 patent, Park relates to a device with “a plurality of antenna
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`elements” to carry out both wireless charging coil and NFC communications.
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`Ex.1006, 1:18-19, Abstract. Park notes in its background section that it was already
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`well known to include both a wireless charging coil and NFC antenna on the same
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`device: “To implement both the NFC function and the wireless charging function
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`in a single portable terminal, an NFC antenna element taking the form of a loop
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`antenna and a secondary coil for wireless charging should be mounted in the
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`portable terminal.” Ex.1006, 1:54-59; Ex.1003, ¶ 43.
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`Park describes an improvement upon the known concept of having both a
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`wireless charging coil and NFC antenna in the same device: “[T]he present
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`invention is to provide a portable terminal having a structure that facilitates
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`mounting of a secondary coil for wireless charging and a Near Field
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`Communication (NFC) antenna element, without increasing the thickness of the
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`portable terminal.” Ex.1006, 2:11-16. The device of Park is shown below.
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`Ex.1003, ¶ 44.
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`wireless charging
`coil 133
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`NFC coil 135
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`Ex.1006, Figs. 3 and 4 (annotated); Ex.1003, ¶ 44.
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`
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`Accordingly, Park provides evidence that it was known for a portable device
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`to include both a wireless charging coil and a near field communication antenna,
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`particularly on the same plane. Ex.1003, ¶ 45.
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`3.
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`Reasons to Combine Sawa and Park
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`For the reasons set forth below, a POSITA would have been motivated to
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`combine the teachings of Park with those of Sawa. Ex.1003, ¶ 46. In particular,
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`before the ’215 patent, it would have been obvious, beneficial, and predictable for
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`Sawa’s device to include an NFC coil, as taught by Park. Ex.1003, ¶ 46.
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`As an initial matter, one of ordinary skill in the art when considering the
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`teachings of Sawa would have also considered the teachings of Park. Ex.1003, ¶
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`47. Park is analogous prior art pertaining to the same field of endeavor, namely,
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`contactless charging via electromechanical induction. See Ex.1005, 1:57-2:5;
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`Ex.1006, Abstract; Ex.1003, ¶ 47. Specifically, both references describe a
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`contactless power apparatus having a power-receiving coil. Ex.1005, 1:7-2:5, 3:46-
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`50, Fig. 10; Ex.1006, Abstract.
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`Sawa notes that its contactless power apparatus may be implemented in the
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`context of a portable device such as a “cellular phone.” Ex.1005, 17:14-16, Fig. 12.
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`Park explains that “[a]s portable terminals have become a daily commodity, they
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`are equipped with the NFC function.” Ex.1006, 1:29-33; see also id. 1:24-26
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`(“Recently, various functions have been integrated in a single mobile
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`communication terminal called a smart phone.”). Park further explains that to
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`implement an NFC-capable portable terminal, the “portable terminal is provided
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`with an additional antenna for performing the NFC function.” Ex.1006, 1:31-33.
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`Thus, as a baseline, it was well known and obvious for a cellular phone, such as
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`Sawa’s, to include an NFC antenna coil as well as a wireless charging coil.
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`Ex.1003, ¶ 48.
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`One of ordinary skill in the art would have been specifically motivated to
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`implement Sawa’s device with an NFC coil because as of the earliest alleged
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`priority date of the ’215 patent, NFC was a standardized data transmission protocol
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`with a multitude of commercial applications and advantages over other short-range
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`wireless communication protocols. Ex.1003, ¶ 49 (citing Ex.1012, 2:9-26;
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`Ex.1013, 2:64-3:6, 3:66-4:11). For example, at the time, “familiar applications of
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`NFC protocol technology [were] electronic pass keys used in building security
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`systems, mass transit fare card systems, and Smart credit cards which need only to
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`be brought close to a point of sale reader to complete a transaction.” Ex.1013, 4:7-
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`11; see also Ex.1006, 1:27-29. Relative to other short-range wireless protocols,
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`“NFC technology provides an advantage of fast communication setup between
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`communication devices.” Ex.1006, 1:33-36. Further, “the intuitive operation of
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`NFC protocol systems makes the technology particularly easy for consumers to use
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`(‘just touch and go’).” Ex.1013, 4:2-5. Accordingly, a person of ordinary skill in
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`the art would have been motivated to apply Park’s teachings regarding an NFC coil
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`to Sawa’s mobile device. Ex.1003, ¶ 50. Doing so would allow Sawa’s mobile
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`device to be easily used by consumers in a variety of commercial applications.
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`Ex.1003, ¶ 50; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
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`(“[I]f a technique has been used to improve one device, and a person of ordinary
`
`skill in the art would recognize that it would improve similar devices in the same
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`way, using the technique is obvious …”).
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`As an aspect of implementing Park’s teaching of an NFC coil in Sawa’s
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`mobile device, a POSITA would have found it obvious to locate the NFC coil such
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`that it surrounds Sawa’s power-receiving coil 16, in the manner as taught by Park.
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`Ex.1003, ¶ 51. Specifically, Park teaches and illustrates in Figs. 3 and 4
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`(reproduced above) that its NFC coil 135 is “surrounding” its wireless charging
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`coil 133. Ex.1006, 2:25-31, Figs. 3, 4. A POSITA would have found it
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`advantageous to use Park’s arrangement in which the NFC coil surrounds the
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`wireless power coil, due to the different frequencies at which the different wireless
`
`protocols operate. See e.g., Ex.1011, 17:49-59 (“Since the NFC antenna coil 41 has
`
`a higher frequency band than the wireless charger antenna coil 43, the NFC
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`antenna coil 41 is formed … along the outside of the substrate 49 [and] the
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`wireless charger antenna coil 43 is formed in the inside of the NFC antenna coil
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`41.”). For this same reason, a POSITA would have arranged Sawa’s NFC coil to
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`surround its power-receiving coil 16. Ex.1003, ¶ 51.
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`Not only would utilizing Park’s teachings regarding an NFC coil in Sawa’s
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`wireless power receiver have been advantageous, but a POSITA would have also
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`found doing so straightforward and predictable given that the combination utilizes
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`Park’s NFC coil precisely as it was intended—as a companion to a wireless power
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`receiving coil in a portable device. A POSITA would have had a reasonable
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`expectation of success because the combination does not change the intended
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`functionality of either Sawa’s power receiver or Park’s NFC coil. Ex.1003, ¶ 52.
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`Park’s NFC coil was specifically intended to be implemented in wireless power
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`receivers