`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00118
`Patent 10,804,740
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`Table of Contents
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. THE PATENTED TECHNOLOGY .................................................................. 2
`A.
`The ’740 Patent Was Invented by LG Innotek .................................... 2
`B.
`Overview of the ’740 Patent ................................................................ 2
`C.
`Challenged ’740 Patent Independent Claims ....................................... 5
`III. OVERVIEW OF ASSERTED REFERENCES ................................................. 6
`A. Hasegawa (Ex. 1005)—the only reference applied in Ground 1—does
`not disclose the claimed invention ....................................................... 6
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE LIKELIHOOD
`OF INVALIDITY OF THE CHALLENGED CLAIMS ................................... 8
`The Petition asserts that Hasegawa alone discloses these claim
`A.
`limitations—the Petition does not assert any combination of
`references or articulate any modifications to Hasegawa ...................... 9
`Hasegawa does not disclose [6.5] “a connecting unit overlapping the
`receiving space in a vertical direction perpendicular to the adhesive
`layer” and [16.5] “a connecting unit disposed corresponding to the
`receiving space” ................................................................................. 10
`1.
`Claims 6 and 16 require a distinct “connecting unit” .............. 11
`2.
`Hasegawa does not disclose a separate and distinct “connecting
`unit” ......................................................................................... 16
`a. Hasegawa’s lead lines are part of the coil ………...…… 18
`
`B.
`
`
`
`
`
`
`
`
`b. Hasegawa’s connection pads and wiring pattern are part of
` the substrate……………………………………………. 23
`
`
`
`3.
`
`Hasegawa does not render obvious the ’740 Patent’s
`“connecting unit” ..................................................................... 25
`V. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ...................... 27
`
`
`
`i
`
`

`

`A.
`
`B.
`
`C.
`
`Factor 1: The district court has not granted a stay, nor is there any
`evidence that a stay will be granted. .................................................. 29
`Factor 2: The district court trial will occur before the deadline for a
`final decision in this proceeding. ....................................................... 31
`Factor 3: By the time an institution decision is reached, the parties and
`the court will have nearly completed claim construction and discovery
`will be underway. ............................................................................... 33
`Factor 4: There is complete overlap between this IPR and the district
`court proceedings. .............................................................................. 35
`Factor 5: Petitioner is a defendant in the district court litigation. ...... 36
`E.
`Factor 6: The petition is without merit and unlikely to succeed. ....... 37
`F.
`VI. CONCLUSION ................................................................................................ 37
`
`
`D.
`
`
`
`
`
`
`
`ii
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`

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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`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.)
`
`
`
`iii
`
`

`

`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`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)
`
`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)
`
`
`
`
`
`
`
`
`
`iv
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`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`I.
`
`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
`
`preliminary response to Petitioner Apple Inc.’s (“Petitioner”) petition for inter
`
`partes review of U.S. Patent No. 10,804,740 (“the ’740 Patent”).
`
`First, the Board should deny institution because Petitioner fails to establish a
`
`reasonable likelihood of invalidity for the independent claims. The independent
`
`claims recite a separate and distinct “connecting unit.” Petitioner asserts that
`
`Hasegawa alone discloses a discrete “connecting unit” and does not propose
`
`any combination of references or modifications to Hasegawa for this limitation.
`
`However, Petitioner cannot establish that Hasegawa discloses a separate and distinct
`
`“connecting unit” for purposes of connecting the coil to the requisite circuitry.
`
`Petitioner seeks to arbitrarily combine three different components of Hasegawa to
`
`demonstrate the existence of a connecting unit, while simultaneously requiring that
`
`these same components satisfy other distinct claim limitations. But Petitioner fails
`
`to provide any reasonable basis to support its arbitrary re-writing of Hasegawa, and
`
`therefore cannot establish a reasonable likelihood of invalidity.
`
`Second, the Board should exercise its discretion to deny the petition in light
`
`of a parallel district court case involving the same patent, the same claims, the same
`
`prior art, and the same parties. By the time the Board reaches an institution decision
`
`in this proceeding, the parties and the district court will have already invested
`
`
`
`1
`
`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`significant time and resources in the case—claim construction will nearly be
`
`completed and discovery will be underway. The district court trial is also on track
`
`to take place months before the deadline for a final written decision. Moreover, the
`
`petition fails on the merits as described above. Thus, all six Fintiv factors strongly
`
`favor a discretionary denial. But even if the Board concludes that a discretionary
`
`denial is not appropriate, Petitioner has not established a reasonable likelihood of
`
`invalidity under any ground or challenged claim.
`
`Accordingly, the Board should deny institution.
`
`II. THE PATENTED TECHNOLOGY
`
`A. The ’740 Patent Was Invented by LG Innotek
`
`The ’740 Patent (Ex. 1001) names four Korean inventors who were employed
`
`by LG Innotek Co. Ltd (“LG Innotek”). LG Innotek, a global materials and
`
`components manufacturer, developed wireless power devices and components for
`
`products such as smartphones. See Ex. 2012. Patent Owner acquired the ’740 Patent
`
`from LG Innotek in 2021.
`
`B. Overview of the ’740 Patent
`
`The ’740 Patent is entitled “Wireless Power Receiver and Method of
`
`Manufacturing the Same.” It teaches a wireless power receiver with reduced
`
`thickness by providing a connecting unit that connects the coil to the wireless power
`
`
`
`2
`
`

`

`
`receiving circuit to transfer power received from the coil to the circuit. Ex. 1001,
`
`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`2:49-56, 5:30-33.
`
`Specifically, the ’740 Patent describes a wireless power receiver 1000
`
`comprising a coil unit 200, a connecting unit 300, a magnetic substrate 100, an
`
`adhesive layer 710, and receiving space 130, as depicted in Figures 11 and 26 (for
`
`example):
`
`
`
`
`
`In one embodiment, the magnetic substrate includes receiving space 130. Id., 8:48-
`
`57. In another embodiment, the adhesive layer includes a receiving space. Id.,
`
`16:55-58. For example, the ’740 Patent teaches that “the connecting unit is disposed
`
`in the receiving space of the magnetic substrate so that the thickness of the wireless
`
`
`
`3
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`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`power receiver can be remarkably reduced as much as the thickness of the
`
`connecting unit.” Id., 2:49-53. Further, according to another embodiment, a “tape
`
`substrate is used as the connecting unit so that the overall size of the wireless power
`
`receiver can be reduced.” Id., 2:54-56; 16:14-19. To that end, the ’740 Patent
`
`consistently discusses the “connecting unit” as a discrete component of the wireless
`
`power receiver.
`
`The ’740 Patent further describes how the connecting unit containing
`
`connecting terminals, 310 and 320, connects the coil 200 to the wireless power
`
`receiving circuit, as depicted in Figures 11 and 27 (for example):
`
`
`
`
`
`Specifically, “[t]he first connection terminal 210 is located at one end of the coil 230
`
`and the second connection terminal 220 is provided at the other end of the coil 230.”
`
`Id., 4:61-63; see also 15:34-36, 15:57–16:3. “The first and second connection
`
`terminals 210 and 220 are necessary for connection with the connecting unit 300.”
`
`
`
`4
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`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`Id., 4:64-65.1 To that end, “[t]he first connection terminal 310 of the connecting unit
`
`300 may be connected to the first connection terminal 210 of the coil unit 200 and
`
`the second connection terminal 320 of the connecting unit 300 may be connected to
`
`the second connection terminal 220 of the coil unit 200.” Id., 5:22-26. Further, the
`
`connections between the connection terminals of the coil 200 and the connecting
`
`unit 300 can be made in various ways, such as (but not limited to) with solder, via
`
`holes, and other techniques. Id., 5:46-60; 18:23-34. As such, the ’740 Patent teaches
`
`that the connecting unit is a distinct component that connects to the coil.
`
`C. Challenged ’740 Patent Independent Claims
`
`The challenged independent claims are Claims 6 and 16, which are repeated
`
`below (Patent Owner has added emphasis to the claim limitations that are the focus
`
`of this Preliminary Patent Owner’s Response):
`
`6. A wireless power receiver, comprising:
`an adhesive layer comprising a receiving space;
`a coil on the adhesive layer;
`a first connection terminal connected to an outer end of the coil;
`a second connection terminal connected to an inner end of the coil; and
`a connecting unit overlapping the receiving space in a vertical direction
`perpendicular to the adhesive layer,
`wherein the connecting unit comprises:
`a third connection terminal connected to the first connection terminal;
`a fourth connection terminal connected to the second connection terminal; and
`a wiring layer connected to the third connection terminal and the fourth
`terminal.
`
`
`
`
`1 All emphasis added, unless stated otherwise.
`
`
`
`5
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`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`
`16. A wireless power receiver, comprising:
`an adhesive layer comprising a receiving space;
`a coil on the adhesive layer;
`a first connection terminal connected to one end of the coil;
`a second connection terminal connected to an other end of the coil; and
`a connecting unit disposed corresponding to the receiving space,
`wherein the connecting unit comprises:
`a third connection terminal connected to the first connection terminal;
`a fourth connection terminal connected to the second connection terminal; and
`a wiring layer connected to the third connection terminal and the fourth
`terminal.
`
`
`III. OVERVIEW OF ASSERTED REFERENCES
`
`A. Hasegawa (Ex. 1005)—the only reference applied in Ground 1—
`
`does not disclose the claimed invention
`
`U.S. Patent Application Publication No. 2009/0021212 (“Hasegawa”) was
`
`published on January 22, 2009. Hasegawa discloses a coil unit utilized for non-
`
`contact power transmission. Ex. 1005, ¶ 2. Hasegawa contains a planar coil 30, a
`
`magnetic sheet 40, spacing member 60, a heat sink/magnetic shield plate 50, and a
`
`substrate 100. Id. ¶¶ 67-74.
`
`
`
`6
`
`

`

`
`
`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`
`In one embodiment, the spacer, 62, may be a double-sided adhesive. Id. ¶ 72. The
`
`spacer “has a slit 62 so as to avoid at least the inner end lead line 34.” Id.
`
`Hasegawa’s coil 30 includes “an inner end lead line 34 connected to the inner
`
`end of the spiral, and an outer end lead line 35 connected to the out end of the spiral.”
`
`Id. ¶ 68. The coil’s lead lines 34 and 35 connect to coil connection pads 103 on the
`
`substrate:
`
`
`
`7
`
`

`

`
`
`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`
`
`
`Id., ¶¶ 74 (“The substrate 100 has coil connection pads 103 connected to the inner
`
`end lead line 34 and the outer end lead line 35 of the planar coil 30.”), 75, 77. To
`
`that end, Hasegawa’s coil directly connects to the substrate and requisite electrical
`
`components necessary for non-contact power transmission. See, e.g., id. ¶¶ 62, 78,
`
`80, 81. Thus, unlike the ’740 Patent, Hasegawa does not teach the use of a separate
`
`and distinct “connecting unit” for connecting the coil to the requisite circuit
`
`elements.
`
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD OF INVALIDITY OF THE CHALLENGED CLAIMS
`
`Ground 1 challenges two independent claims 6 and 16 (and dependent claims
`
`7, 17, 19, and 20) as obvious over Hasegawa. Claim 7 depends on independent claim
`
`6, and claims 17, 19, and 20 depend on independent claim 16. Petitioner’s ground 1
`
`
`
`8
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`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`challenge to these claims fails because Hasegawa does not disclose or render obvious
`
`the “connecting unit” required by limitations [6.5] and [16.5]:
`
`• [6.5] “a connecting unit overlapping the receiving space in a vertical
`
`direction perpendicular to the adhesive layer” and [16.5] “a connecting
`
`unit disposed corresponding to the receiving space”
`
`Because Hasegawa does not disclose these critical claim limitations of
`
`independent claims 6 and 16, Petitioner is unable to establish a reasonable likelihood
`
`of invalidity as to these claims or any of the challenged dependent claims.
`
`A. The Petition asserts that Hasegawa alone discloses these claim
`limitations—the Petition does not assert any combination of
`references or articulate any modifications to Hasegawa
`
`
`The Petition asserts that Hasegawa alone discloses each of the claim
`
`limitations in the independent claims. While the Petition concludes that “Hasegawa
`
`renders obvious” each claim limitation, the Petition does not articulate any specific
`
`obviousness theory for any limitations. For example, the Petition does not propose
`
`any combination of references. Nor does the Petition propose or articulate any
`
`modifications to Hasegawa for a single reference obviousness theory based on
`
`Hasegawa. Nor does the Petition identify any differences between Hasegawa and
`
`the claim limitations, which is a fundamental first step in the obviousness analysis.
`
`See Graham v. John Deere Co., 383 US 1, 17-18 (1966).
`
`
`
`9
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`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`
`Rather, the Petition only presents the theory that Hasegawa alone “teaches”
`
`or discloses these claim limitations. Thus, the Board must consider only what
`
`Hasegawa actually discloses—regardless of whether the Petition uses the conclusory
`
`language that “Hasegawa renders obvious” the various limitations. See In re
`
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
`
`burden of proving obviousness, a petitioner cannot employ mere conclusory
`
`statements. The petitioner must instead articulate specific reasoning, based on
`
`evidence of record, to support the legal conclusion of obviousness.”); Liberty Mut.
`
`Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 10
`
`(PTAB Oct. 25, 2012) (Paper 8) (“[W]e will address only the basis, rationale, and
`
`reasoning put forth by the Petitioner in the petition, and resolve all vagueness and
`
`ambiguity in Petitioner’s arguments against the Petitioner.”).
`
`Consequently, the Petition cannot establish any reasonable likelihood of
`
`invalidity aside from what is actually taught and disclosed by Hasegawa. And as
`
`discussed below, Hasegawa does not teach or disclose the ’740 Patent’s “connecting
`
`unit.”
`
`B. Hasegawa does not disclose [6.5] “a connecting unit overlapping
`the receiving space in a vertical direction perpendicular to the
`adhesive layer” and [16.5] “a connecting unit disposed
`corresponding to the receiving space”
`
`
`
`10
`
`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`
`The ’740 Patent claims a “connecting unit” that connects the coil to the
`
`wireless power receiving circuit to transfer power received from the coil to the
`
`circuit. The ’740 Patent teaches that the connecting unit contains connection
`
`terminals that connect to corresponding connection terminals contained on each end
`
`of the coil. To that end, the claims require a separate and discrete connecting unit
`
`that has connection terminals that connect to the connection terminals of the coil.
`
`However, Hasegawa does not disclose a connecting unit—it merely discloses that
`
`the coil connects directly to the substrate, which itself contains circuit elements (such
`
`as a thermistor). The Petition seeks to arbitrarily combine portions of Hasegawa’s
`
`coil and substrate to manufacture the claimed connecting unit out of whole cloth.
`
`However, the Petition fails to provide any reasonable basis why Hasegawa’s coil and
`
`substrate comprise a separate and distinct connecting unit, and therefore cannot
`
`establish a reasonable likelihood of invalidity.
`
`
`
`1.
`
` Claims 6 and 16 require a distinct “connecting unit”
`
`The ’740 Patent claims, figures, and specification all teach that the
`
`“connecting unit” is a discrete component of the claimed wireless power receiver.
`
`For example, claim 6 recites a connecting unit with a third and fourth connection
`
`terminal for purposes of connecting to first and second connection terminals of the
`
`coil:
`
`
`
`6. A wireless power receiver, comprising:
`
`11
`
`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`
`an adhesive layer comprising a receiving space;
`a coil on the adhesive layer;
`a first connection terminal connected to an outer end of the coil;
`a second connection terminal connected to an inner end of the coil; and
`a connecting unit overlapping the receiving space in a vertical direction
`perpendicular to the adhesive layer,
`wherein the connecting unit comprises:
`a third connection terminal connected to the first connection terminal;
`a fourth connection terminal connected to the second connection terminal; and
`a wiring layer connected to the third connection terminal and the fourth
`terminal.
`
`
`Claim 16 recites the same limitations with respect to the “connecting unit.” “Where
`
`a claim lists elements separately, ‘the clear implication of the claim language’ is that
`
`those elements are ‘distinct component[s]’ of the patented invention.” Becton,
`
`Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
`
`(quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see also
`
`SandBox Logistics LLC v. Proppant Express Invs. LLC, 813 F. App’x 548, 555 (Fed.
`
`Cir. 2020) (“That the ‘structural support members’ are recited separately from the
`
`‘end walls’ and ‘side walls’ implies that the ‘structural support members’ are a
`
`structurally distinct component.”). Indeed, the claims call out the requisite elements
`
`of the “connecting unit” by using a “wherein” clause to specify the components that
`
`“comprise” the “connecting unit.” See, e.g., Genentech, Inc. v. Chiron Corp., 112
`
`F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language
`
`which means that the named elements are essential….”). To that end, the ’740 Patent
`
`
`
`12
`
`

`

`
`claims require that the wireless power receiver contain a separate and distinct
`
`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`“connecting unit.”
`
`Further, Figures 1, 11, 14, and 26 (for example) all depict the connecting unit
`
`300 as a distinct component of the wireless power receiver:
`
`
`
`
`
`
`
`
`
`
`
`13
`
`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`As depicted in Figures 11 and 26 (and corresponding Figures 12 and 27), the ’740
`
`Patent also teaches that “magnetic substrate 100” and/or “adhesive layer 710” may
`
`contain “a receiving space 130.” Id., 8:30-32; 16:55-58. The connecting unit may
`
`be positioned with, overlap, or be disposed in the “receiving space 130.” Id., 2:19-
`
`28 (“positioning the connecting unit in the receiving space”); 2:49-53 (“According
`
`to one embodiment, the connecting unit is disposed in the receiving space of the
`
`magnetic substrate”); Claim 6 (“a connecting unit overlapping the receiving space”).
`
`To that end, the ’740 Patent teaches that the “connecting unit” is a discrete
`
`component that may be positioned in, disposed in, or otherwise overlap the receiving
`
`space of the substrate and/or adhesive layer.
`
`The existence of a discrete connecting unit is important for achieving the ’740
`
`Patent’s goal of achieving a thinner wireless power receiver. For example, the ’740
`
`Patent explains: “the connecting unit is disposed in the receiving space of the
`
`magnetic substrate so that the thickness of the wireless power receiver can be
`
`remarkably reduced as much as the thickness of the connecting unit.” Ex. 1001,
`
`2:49-53; 8:50-54; 16:4-13, 18:46-53. In some embodiments, “a tape substrate is
`
`used as the connecting unit so that the overall size of the wireless power receiver can
`
`be reduced.” Id., 2:54-56; 16:14-19 (“If the tape substrate is used as the connecting
`
`unit 300, the thickness of the connecting unit 300 can be reduced, so that the overall
`
`size of the wireless power receiver 1000 can be reduced.”).
`
`
`
`14
`
`

`

`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
`
`
`
`Additionally, the ’740 Patent further teaches that a purpose of the connecting
`
`unit is to connect the coil to the wireless power receiving circuit—further evidencing
`
`that the “connecting unit” is contemplated as a distinct component of the wireless
`
`power receiver. Specifically, “[t]he connecting unit 300 connects the wireless power
`
`receiving circuit (not shown) with the coil unit 200 to transfer the power received
`
`from the coil unit 200 to a load (not shown) through the wireless power receiving
`
`circuit.” Ex. 1001, 5:30-33, 15:38-41 (same); see also id., 5:34-37. For example, as
`
`shown in Figure 1, “[t]he first connection terminal 210 is located at one end of the
`
`coil 230 and the second connection terminal 220 is provided at the other end of the
`
`coil 230.” Id., 4:61-63. “The first and second connection terminals 210 and 220 are
`
`necessary for connection with the connecting unit 300.” Id., 4:64-65. To that end,
`
`“[t]he first connection terminal 310 of the connecting unit 300 may be connected to
`
`the first connection terminal 210 of the coil unit 200 and the second connection
`
`terminal 320 of the connecting unit 300 may be connected to the second connection
`
`terminal 220 of the coil unit 200.” Id., 5:22-26.
`
`
`
`Finally, the prosecution history further confirms that the connecting unit is a
`
`distinct component. For example, in the notice of allowance, the examiner explained
`
`that “the prior art of record does not disclose or suggest a wireless power receiver,
`
`comprising, inter alia, a connecting unit as claimed.” Ex. 1002 at 26.
`
`
`
`15
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`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
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`Thus, the claims, figures, specification, and prosecution history are all in
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`agreement that the claimed “connecting unit” is separate and distinct from other
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`claimed features of the wireless power receiver, such as the “coil unit 200.”
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`2. Hasegawa does not disclose a separate and distinct
`“connecting unit”
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`Hasegawa does not disclose a wireless power receiver with a separate and
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`distinct “connecting unit.” According to Hasegawa, the coil 30 contains leads 34
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`and 35. Ex. 1005, ¶ 68 (“The planar coil 30 includes an inner end lead line 34
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`connected to the inner end of the spiral, and an outer end lead line 35 connected to
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`the outer end of the spiral.”). The coil 30 is then connected to the substrate 100
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`through leads 34 and 35 at connection pads 103:
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`16
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`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
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`Id. ¶ 74 (“The substrate 100 has coil connection pads 103 connected to the inner end
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`lead line 34 and the outer end lead line 35 of the planar coil 30.”); ¶ 77 (“The inner
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`end lead line 34 and the outer end lead line 35 of the planar coil 30 are then connected
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`to the coil connection terminals 103 of the substrate 100 to obtain the coil unit 12.”).
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`Thus, unlike the ’740 Patent that utilizes a “connecting unit” for purposes of
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`connecting the coil to the receiving circuit, Hasegawa merely teaches connecting the
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`coil through its lead wires to the substrate containing the requisite electrical
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`components. See, e.g., id. ¶¶ 62, 78, 80, 81.
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`Petitioner improperly reads three different components of Hasegawa as
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`disclosing the single claimed “connecting unit”: (1) lead lines 34 and 35 (which
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`Hasegawa discloses are part of the coil 30); (2) coil connection pads 103 (which
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`Hasegawa discloses as part of the substrate 100); and (3) wiring pattern (which
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`Hasegawa discloses as part of the substrate 100). Pet., 29-33, 39-41. However, none
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`of these elements constitute a distinct “connecting unit” (alone or in combination
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`with one another), and Petitioner impermissibly points to the same elements from
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`Hasegawa as also satisfying other claim limitations in claims 6 and 16. See, e.g.,
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`Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1382 (Fed.
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`Cir. 2022) (“The ‘safety contact element’ and ‘exit end of the mechanism’ are
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`distinct components. The asserted claims list those elements separately…. There is,
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`therefore, a presumption that those components are distinct.”). Thus, the Petition
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`merely applies hindsight reasoning using the ’740 claims as a roadmap to find its
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`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
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`prior art components.2
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`a. Hasegawa’s lead lines are part of the coil
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`Petitioner maintains that lead lines 34 and 35 satisfy the claim 6 and 16’s
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`requirement of “a first connection terminal connected to one end of the coil” and of
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`“a second connection terminal connected to an other end of the coil,” while
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`simultaneously also comprising the “connecting unit.” Pet., 24-32; 39-41.3 But
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`Hasegawa makes clear that lead lines 34 and 35 are part of the coil. Ex. 1005, ¶¶ 68
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`2 See, e.g., Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F. 3d 1332,
`1337 (Fed. Cir. 2005) (“[I]n making the assessment of differences between the prior
`art and the claimed subject matter, section 103 specifically requires consideration of
`the claimed invention ‘as a whole.’ Inventions typically are new combinations of
`existing principles or features. The ‘as a whole’ instruction in title 35 prevents
`evaluation of the invention part by part. Without this important requirement, an
`obviousness assessment might successfully break an invention into its component
`parts, then find a prior art reference corresponding to each component. This line of
`reasoning would import hindsight into the obviousness determination by using the
`invention as a roadmap to find its prior art components. Further, this improper
`method would discount the value of combining various existing features or
`principles in a new way to achieve a new result — often the essence of invention.”)
`(citations omitted).
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` Petitioner is forced to assert this convoluted theory because Hasegawa does not
`disclose a distinct “connecting unit” and because of the claimed requirement that the
`“connecting unit” must overlap the receiving space. If the lead lines 34 and 35 were
`not included as part of Petitioner’s asserted “connecting unit,” then the supposed
`connecting unit would not overlap or otherwise be disposed corresponding to the
`receiving space (which Petitioner identifies as Slit 62). Pet., 32, 39-41.
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`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
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`(“The planar coil 30 includes an inner end lead line 34 connected to the inner end of
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`the spiral, and an outer end lead line 35 connected to the outer end of the spiral.”),
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`74, 75, 77. It cannot be the case that lead lines 34 and 35 can be both the claimed
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`first and second connection terminals of the coil and the claimed “connecting
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`unit”—which the claims treat as separate and distinct components.
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`Claims 6 and 16 specifically call out the first and second connection terminals
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`as features of the coil, and then separately specify that the connecting unit contains
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`third and fourth connection terminals which are connected to the first and second
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`connection terminals of the coil. For example, claim 6 provides:
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`6. A wireless power receiver, comprising:
`an adhesive layer comprising a receiving space;
`a coil on the adhesive layer;
`a first connection terminal connected to an outer end of the coil;
`a second connection terminal connected to an inner end of the coil; and
`a connecting unit overlapping the receiving space in a vertical direction
`perpendicular to the adhesive layer,
`wherein the connecting unit comprises:
`a third connection terminal connected to the first connection terminal;
`a fourth connection terminal connected to the second connection terminal; and
`a wiring layer connected to the third connection terminal and the fourth
`terminal.
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`Claim 16 likewise recites these same claim elements. As such, the claims make clear
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`that the first and second connection terminals of the coil are “connected to” the third
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`and second connection terminals of the “connecting unit”—underscoring that the
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`coil and the connecting unit are separate and distinct components of the wireless
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`IPR2022-00118 (’740 Patent)
`Patent Owner Preliminary Response
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`power receiver.
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`In Regents of Univ. of Minn., the Federal Circuit explained that when claim
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`language recites two components that are “connected,” it means that those objects
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`were previously separate. See Regents of Univ. of Minn. v. AGA Med. Corp., 717
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`F.3d 929, 935-36 (Fed. Cir. 2013) (construing claim for medical device with two
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`disks that were “connected” to one another, and concluding that such language
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`required two distinct disks). Similarly, in Comcast Cable Comm’ns, the Federal
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`Circuit affirmed the Board’s conclusion that “speech recognition system” and
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`“wireline node” were “distinct elements” because the claim “list[ed] the elements
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`separately” and “[used] the word ‘coupled’” in the claim language “[a] p