Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 9
`Entered: May 12, 2022
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00118
`Patent 10,804,740 B2
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`
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`
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`
`
`
`
`Before JAMESON LEE, KARL D. EASTHAM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`McNAMARA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
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`
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`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 9
`Entered: May 12, 2022
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00118
`Patent 10,804,740 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHAM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`McNAMARA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
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`IPR2022-00118
`Patent 10,804,740 B2
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a petition, Paper 2 (“Petition” or
`“Pet.”), to institute an inter partes review of claims 6, 7, 16, 17, 19, and 20
`(the “challenged claims”) of U.S. Patent No. 10,804,740 B2. (“the ’740
`patent”). 35 U.S.C. § 311. Scramoge Technology Ltd. (“Patent Owner”)
`filed a Preliminary Response, Paper 6 (“Prelim. Resp.”), contending that the
`Petition should be denied as to all challenged claims. As authorized by the
`panel, Petitioner filed a Reply (Paper 7, “Reply”) and Patent Owner filed a
`Sur-reply (Paper 8, “Sur-reply”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`A decision to institute under § 314 may not institute on fewer than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018). In addition, per Board practice, if the Board institutes trial,
`it will “institute on all grounds in the petition.” PTAB Consolidated Trial
`Practice Guide, 5–6 (Nov. 2019); see also PGS Geophysical AS v. Iancu,
`891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a
`simple yes-or-no institution choice respecting a petition, embracing all
`challenges included in the petition”).
`Having considered the arguments and the associated evidence
`presented in the Petition and the Preliminary Response, for the reasons
`described below, we institute inter partes review.
`
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`REAL PARTIES IN INTEREST
`II.
`Petitioner identifies itself (Apple Inc.) as the sole real party-in-
`interest. Pet. 47. Patent Owner identifies itself (Scramoge Technology Ltd.)
`as the sole real party-in-interest. Paper 4, 2.
`
`
`III. RELATED MATTERS
`The Petition states that the ’740 patent is involved in the following co-
`pending litigation: Scramoge Technology Limited v. Apple Inc., No. 6-61-cv-
`00579 (W.D. Tex., filed June 7, 2021) (“Apple case”) and Scramoge
`Technology Limited v. Google, LLC f/k/a Google Inc., No. 6-21-cv-00616
`(W.D. Tex., filed June 15, 2021) (“Google case”). Pet. 47, see also Paper 4,
`2 (Patent Owner’s Mandatory Notice identifying the same co-pending
`district court litigation, and the following co-pending post grant proceedings:
`Apple Inc. v. Scramoge Technology Ltd., IPR2022-00117; Apple Inc. v.
`Scramoge Technology Ltd., IPR2022-00119, and Apple Inc. v. Scramoge
`Technology Ltd., IPR2022-00120, all filed on October 29, 2021).
`
`
`IV. THE ’740 PATENT
`The ’740 patent concerns a wireless power receiver used for wireless
`power transmission, whose thickness is reduced by directly disposing a coil
`unit on a top surface of a magnetic substrate or inside the magnetic substrate.
`Ex. 1001, 1:21–27, 1:54–56, 1:65–67. Figure 1 of the ’740 patent is
`reproduced below.
`
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`Patent 10,804,740 B2
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`As shown in annotated Figure 1, the wireless power receiver includes
`magnetic substrate 100 that concentrates a magnetic field received by
`electromagnetic induction or resonance from its transmission side into coil
`200, which may adhere to the substrate via an adhesion layer (not shown).
`See id. at 4:23–5:37, Fig. 2–3. Connecting unit 300, which may be directly
`disposed on coil 200, connects coil 200 via terminals 210, 310 and 220, 320,
`to a wireless power receiving circuit that may include a rectifier and a
`smoothing circuit to convert AC to DC power to be transferred to a load (not
`shown). Id. at 5:19–37, 6:30–39. According to the ’740 patent, “the
`thickness of the wireless power receiver can be remarkably reduced by
`directly disposing the coil unit on a top surface of the magnetic substrate.”
`Id. at 2:29–32.
`Figure 11 of the ’740 patent is reproduced below.
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`Although similar to the embodiment in Figure 1, the Figure 11 embodiment
`includes receiving space 130 in magnetic substrate 100. Id. at 2:19–28,
`8:30–57; 8:19–57. In the embodiment of Figure 11, connecting unit 300,
`which may be of equal or lesser thickness than magnetic substrate 100, may
`be disposed in receiving space 130. Id. at 8:44–49. Another difference
`between the Figure 1 and Figure 11 embodiments is that in the Figure 11
`embodiment, connecting unit 300 may be disposed under coil 200. Id. at
`8:32–39.
`
`ILLUSTRATIVE CLAIM[S]
`V.
`Independent claim 6, reproduced below with the paragraph
`designations used in the Petition, is illustrative of the subject matter of the
`’740 patent.
`[6.0] A wireless power receiver, comprising:
`[6.1] an adhesive layer comprising a receiving space;
`[6.2] a coil on the adhesive layer;
`[6.3] a first connection terminal connected to an outer end of
`the coil;
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`IPR2022-00118
`Patent 10,804,740 B2
`[6.4] a second connection terminal connected to an inner end
`of the coil; and
`[6.5] a connecting unit overlapping the receiving space in a
`vertical direction perpendicular to the adhesive layer,
`[6.6] wherein the connecting unit comprises: a third
`connection terminal connected to the first connection
`terminal;
`[6.7] [wherein the connecting unit comprises:] a fourth
`connection terminal connected to the second
`connection terminal; and
`[6.8] [wherein the connecting unit comprises:] a wiring
`layer connected to the third connection terminal.
`
`
`
`VI. ASSERTED GROUNDS
`Petitioner asserts that claims 6, 7, 16, 17, 19, 20 would have been
`unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`6, 7, 16, 17, 19, 20
`103
`
`Reference(s)/Basis
`Hasegawa1
`
`
`
`VII. EXERCISE OF DISCRETION
`A. Discretion under 35 U.S.C. § 314(a)
`In the Preliminary Response, Patent Owner contends that we should
`exercise our discretion to deny the Petition in favor of the parallel
`proceeding in the Western District of Texas. Prelim. Resp. 4–11. The
`Board has held that the advanced state of a parallel district court action is a
`factor that may weigh in favor of denying a petition under § 314(a). See
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20
`(PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board,
`Consolidated Trial Practice Guide (“CTPG”), 58 & n.2 (Nov. 2019),
`
`
`1 U.S. Patent Application Publication 2009/0021212 (Ex. 1005).
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`Patent 10,804,740 B2
`available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`We consider the following factors to assess “whether efficiency, fairness,
`and the merits support the exercise of authority to deny institution in view of
`an earlier trial date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6. We consider each of
`these factors below.
`
`Factor 1
`Petitioner contends that, because no motion for a stay has been filed,
`we cannot infer the outcome of such a motion. Pet. 11. Patent Owner
`responds that all three2 corresponding, co-pending litigations are pending in
`the U.S. District Court for the Western District of Texas before Judge
`Albright, where a stay has not been entered and a scheduling order has been
`
`
`2 In addition to the Apple case and the Google case, the Preliminary
`Response refers to Scramoge Technology Ltd. v. Samsung Electronics Co.,
`Ltd. et al., No. 6-21-cv-00454-ADA, which previously has not been
`identified to the Board in a Mandatory Notice.
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`entered. Prelim. Resp. 29–30. According to Patent Owner, the cases,
`including the Apple case, are “on track for trial in early 2023.” Id. at 30
`(citing Exs. 2002, 2012). Noting that none of the defendants has moved for
`a stay, Patent Owner argues that, even if such a motion were filed, Judge
`Albright does not favor stays pending IPR proceedings. Id. at 29–30 (citing
`Ex. 2003). Petitioner contends that Patent Owner’s arguments are “pure
`conjecture” based on how Judge Albright has ruled in different cases with
`different facts. Reply 1. We are not persuaded by Patent Owner’s
`arguments that a stay is unlikely because this case is at such an advanced
`stage that a stay is necessarily precluded. Sur-reply 1 (citing Samsung Elecs.
`Co. Ltd. v. Evolved Wireless LLC, IPR2021-00950, Paper 10 at 10–11
`(PTAB Nov. 29, 2021)). We agree with Petitioner that the circumstances of
`each case are unique. Reply 1 (citing Sand Revolution II, LLC v.
`Continental Intermodal Group – Trucking LLC, IPR2019- 01393, Paper 24
`at 7 (June 16, 2020) (informative) (“Sand Revolution II”), Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (May 13, 2020) (informative)
`(finding Factor 1 neutral after “declin[ing]to infer” how WDTX would rule
`based on actions taken in “different cases with different facts”). In the
`absence of specific evidence relating to the circumstances surrounding this
`case we will not attempt to predict how the district court would proceed, and
`we find this factor does not weigh for or against exercising our discretion to
`deny institution.
`
`Factor 2
`Petitioner contends that we should not exercise discretion to deny
`institution because the co-pending litigation is at an early stage and a trial
`date had not been set when the Petition was filed. Pet. 10–11. Patent Owner
`contends that Factor 2 strongly favors exercise of discretion because the
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`district court litigation “is on track for trial in March 2023,” before the
`deadline for a final decision in this proceeding. Sur-reply 2. Petitioner notes
`that the district court does not expect to set a trial date until the conclusion of
`the Markman hearing, which has been delayed to May 23, 2022. Reply 2.
`As trial will not occur in the corresponding Apple case until sometime after
`the May 23, 2022 Markman hearing, Petitioner notes that Patent Owner is
`left to speculate that the parallel Google case is on track for trial in March
`2023. Id. Petitioner further notes that, even if trial in the Google case
`occurred in March 2023, a Final Written Decision would issue from this
`panel roughly two months later, a time that has been found does not warrant
`denial. Id. at 3. Under these circumstances, we find that Factor 2 weighs
`against exercising discretion to deny institution of this proceeding.
`
`Factor 3
`Petitioner contends that when the Petition was filed the co-pending
`litigation was in its early stages, investment in the litigation had been
`minimal, fact discovery does not close until September 22, 2022, and expert
`discovery does not close until November 23, 2022. Pet. 12. Petitioner
`further argues that it did not learn what claims were being asserted until
`September 27, 2021 and that in the following 8 weeks, Petitioner worked to
`expedite filing its Petition. Id. Patent Owner argues that we should exercise
`discretion to deny because claim construction is underway, and infringement
`and invalidity contentions have been exchanged, indicating that substantial
`investment in the district court proceedings has occurred. Sur-reply 3.
`Citing Sand Revolution II, Petitioner notes that the focus of this factor is the
`parties’ investment in the merits of invalidity positions, and that much of the
`activity in the district court case is untethered to validity issues. Reply 3–4.
`Petitioner notes that final invalidity contentions are not due until after
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`institution, and that neither party has proposed claim constructions in this
`proceeding, reducing the significance to invalidity issues in this proceeding
`of district court Markman briefing. Id. at 4. Petitioner also notes that at the
`time of institution, fact and expert discovery will not close for four and six
`months, respectively, and substantive motion practice on invalidity will not
`have started. Id. at 4–5 (citing Ex. 1015, 3). Under these circumstances we
`find that Factor 3 weighs against exercising our discretion to deny
`institution.
`
`
`Factor 4
`Noting that at the time it filed the Petition, Petitioner had not served
`its preliminary invalidity contentions in the district court proceeding,
`Petitoner argues there was no overlap of issues between the co-pending
`litigation and this proceeding. Pet 13. Petitioner also stipulates that “it will
`not pursue in the parallel district court proceeding (WDTX-6-21-cv-00579)
`the prior art obviousness combinations on which trial is instituted for the
`claims on which trial is instituted.” Reply 5. Petitioner contends that in
`Sand Revolution II “a nearly identical stipulation was found to effectively
`address the risk of duplicative efforts.” Reply 5 (citing Sand Revolution II
`11–12).
`Patent Owner argues that Petitioner’s “narrow stipulation is
`insufficient and fails to resolve concerns of duplicative issues and
`inconsistent rulings” because it “concerns the particular obviousness
`combinations directed to particular claims for which trial is instituted.” Sur-
`reply 4. According to Patent Owner, Petitioner would be free to raise
`different combinations based on the same references, the same combinations
`directed to different claims and anticipation arguments based on the same
`references. Id. at 4–5. Patent Owner contends that Petitioner could have
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`stipulated it would not pursue any ground raised or that could have been
`reasonably raised in an IPR, i.e., any ground that could be raised under
`§§ 102 or 103 on the basis of prior art patents or printed publications. Sur-
`reply 4 (citing Sand Revolution II at 12, n.5). In Sand Revolution II the
`Board noted that such a stipulation could have tipped this factor more
`conclusively in Petitioner’s favor (Sand Revolution II at 12, n.5).
`Nevertheless, in Sand Revolution II the Board found that Petitioner’s
`stipulation to counsel that “if the IPR is instituted, Petitioner will not pursue
`the same grounds in the district court litigation” “weigh[ed] marginally in
`favor of not exercising discretion to deny institution.” Sand Revolution II,
`11–12. At this stage of the co-pending litigation discovery is on-going and
`infringement and invalidity contentions have not been finalized. In view of
`these circumstances, we find Petitioner’s stipulation in this proceeding to be
`similar in scope to that of the petition in Sand Revolution II and determine
`that Factor 4 weighs marginally against exercising discretion to deny
`institution.
`
`
`Factor 5
`Petitioner acknowledges that it is a defendant in the co-pending
`litigation, but argues that, as defendants are petitioners in many other inter
`partes reviews, Petitioner’s mere status as a defendant should not be a basis
`for exercising discretion to deny institution, especially in the absence of a
`trial date, where it is unclear which tribunal will be first to address the
`patentability of the claims. Pet. 13, Reply 6 (citing Google LLC v. Parus
`Holdings, Inc., IPR2020-00846, Paper 9 at 21 (Oct. 21, 2020). According to
`Petitioner, under the circumstances, Factor 5 is neutral. Reply 6. Patent
`Owner argues that this factor is not neutral and that the trial will occur
`before a final written decision by the Board. Sur-reply 5. Given the
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`uncertainty of the trial date, this factor is neutral or, assuming the final
`written decision will precede trial in the parallel district court proceeding
`given the absence of a confirmed trial date at this point, weighs against
`discretionary denial.
`
`Factor 6
` Petitioner contends that, based the prior art presented in the Petition,
`the merits of its case are strong and weigh against exercise of discretion to
`deny institution. Pet. 13. Patent Owner contends that it has identified
`weaknesses in the Petition that, considered with the remaining Factors,
`support denying institution. Prelim. Resp. 37.
`As discussed in greater detail below, we determine Petitioner’s
`evidence and arguments on this preliminary record to be sufficient to
`institute an inter partes review. Accordingly, we determine that this factor
`does not weigh either for or against exercising our discretion to deny
`institution.
`
`
`Conclusion
`We have considered the circumstances and facts before us in view of
`the Fintiv factors, as discussed above. Evaluating these factors as part of a
`holistic analysis, we are not persuaded that the interests of the efficiency and
`integrity of the system would be best served by invoking our discretion
`under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious
`petition.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner states that at the time of the filing of the application for the
`’740 patent a person of ordinary skill “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,” and that
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`work experience or additional education could substitute for each other. Pet.
`9 (citing Ex. 1003, Declaration of Dr. Joshua Phinney (“Phinney Decl.”)
`¶¶ 18-20). Patent Owner does not comment on the level of ordinary skill in
`the art.
`The level of ordinary skill in the art usually is evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of the
`level of ordinary skill appears to be commensurate with the technology
`addressed by the ’740 patent and the references, for purposes of this
`Decision we apply Petitioner’s description of the level of ordinary skill.
`IX. CLAIM CONSTRUCTION
`For petitions filed after November 13, 2018, we interpret claim terms
`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).” 37 C.F.R. § 42.100(b)
`(2019). In this context, claim terms “are generally given their ordinary and
`customary meaning” as understood by a person of ordinary skill in the art in
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant
`than the intrinsic record in determining ‘the legally operative meaning of
`claim language.’” Phillips, 415 F.3d at 1317 (citations omitted).
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`Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`We construe only those claim terms that require analysis to determine
`whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”).
`Neither party has proposed a special definition or explicit construction
`of any claim term. As we do not perceive a need to construe any term, we
`apply the plain and ordinary meaning to the claim language.
`
`
`X. ANALYSIS
`
`Introduction
`A.
`“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) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (requiring “articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness”)); see In re Warsaw
`Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar
`Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d
`1356, 1360 (Fed. Cir. 2006)).
` An obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). 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). Instead, Petitioner must articulate a reason why a
`person of ordinary skill in the art would have combined the prior art
`references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`A reason to combine or modify the prior art may be found explicitly
`or implicitly in market forces; design incentives; the “‘interrelated teachings
`of multiple patents’”; “‘any need or problem known in the field of endeavor
`at the time of invention and addressed by the patent’”; and the background
`knowledge, creativity, and common sense of the person of ordinary skill.
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
`2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)).
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`Before determining whether a claim is obvious in light of the prior art,
`we consider any relevant evidence of secondary considerations of non-
`obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the
`teachings of the prior art would have suggested to one of ordinary skill in the
`art at the time of the invention, the totality of the evidence submitted,
`including objective evidence of non-obviousness, may lead to a conclusion
`that the challenged claims would not have been obvious to one of ordinary
`skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). No evidence
`of secondary considerations has been presented in this proceeding.
`We analyze the asserted grounds of unpatentability in accordance with
`these principles to determine whether Petitioner has met its burden to
`establish a reasonable likelihood of success at trial.
`Claims 6, 7, 16, 17, 19, and 20 are obvious under 35 U.S.C. §
`B.
`103(a) over Hasegawa
`
`Hasegawa – Ex. 1005
`Hasegawa discloses a coil unit for non-contact power transmission
`using the coil. Ex. 1005 ¶ 2. Petitioner’s annotated version of Figure 2 of
`Hasegawa is reproduced below.
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`Pet. 17. Hasegawa’s coil unit includes planar coil 30 with transmission side
`31 and non-transmission side 32, magnetic sheet 40 over non-transmission
`side 32 of the planar coil, and heat sink/magnetic shield plate 50 stacked on
`the side of the magnetic sheet opposite the side that faces planar coil 30. Id.
`¶66–67, Figs 2, 3A, 3B. Planar coil 30, e.g., an air coil formed by a single
`core or multi-core coated wire in a plane, has an inner end lead line 34
`connected to the inner end of the spiral and an outer end lead line 35
`connected to the outer end of the spiral. Id. ¶ 68. This arrangement allows
`transmission side 31 of planar coil 30 to be made flat, so that the primary
`and secondary coils are adjacent when performing non-contact power
`transmission. Magnetic sheet 40, made of soft magnetic ferrite material or a
`soft metal, receives magnetic flux from planar coil 30 to increase the
`inductance of planar coil 30. Id. ¶ 69. Circular spacer member 60, e.g., a
`double-sided adhesive sheet with almost the same diameter as that of planar
`coil 30, placed between planar coil 30 and magnetic sheet 40 is substantially
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`IPR2022-00118
`Patent 10,804,740 B2
`the same thickness as inner end lead line 34. Id. ¶ 72. Spacer 60 also has
`slit 62 to avoid at least the inner end lead line 34. Id.
`Figure 3A of Hasegawa, as annotated by Petitioner, is reproduced
`below.
`
`
`Pet. 18. Figure 3A shows planar coil 30 adhered to magnetic sheet 40 and
`heat sink 50 assembled to substrate 100. Ex. 1005 ¶¶ 73–74. Petitioner
`notes that Figure 3A illustrates lead line 34 disposed in slit 62 of adhesive
`layer 60 connected to one of coil connection pads103 of substrate 100. Pet.
`18, Ex. 1005 ¶ 75.
`
`
`Independent Claim 6
`Claim limitations 6.0–6.4
`a)
`Claim limitations 6.0–6.4 recite a structure for a wireless power
`receiver (limitation 6.0) in which a coil (limitation 6.2) having a first
`connection terminal at its outer end (limitation 6.3) and a second connection
`at its inner end (limitation 6.4) is placed on an adhesive layer having a
`receiving space (limitation 6.1). See Ex. 1001, 19:61–67. Petitioner cites
`Hasegawa as disclosing a wireless power receiver in a portable phone 20 in
`which coil unit 22 (the claimed wireless power receiver) receives power
`from coil unit 12 within a charger 10. Pet. 20–21. Citing Figure 2 of
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`Hasegawa, Petitioner notes that coil unit 22 includes double sided adhesive
`spacer member 60 (the claimed adhesive layer) with slit 62 (the claimed
`receiving space) configured to avoid at least the inner end lead line 34 when
`planar coil 30 (the claimed coil) is adhered to magnetic sheet 40. Id.at 21–
`22. Petitioner further asserts that Hasegawa’s outer lead line 35 and inner
`lead line 34 correspond to the claimed connection terminals because they
`connect the outer and inner ends of coil 30 to connection terminals 103 on
`substrate 100. Id. at 24–28.
`Patent Owner does not explicitly dispute that Hasegawa discloses
`claim limitations 6.0–6.4. We find that Petitioner has demonstrated that
`Hasegawa discloses claim limitations 6.0–6.4.
`Claim limitations 6.5–6.8
`b)
`Claim limitation 6.5 recites “a connecting unit overlapping the
`receiving space in a vertical direction perpendicular to the adhesive layer.”
`Claim limitations 6.6. and 6.7 recite that the connecting unit comprises third
`and fourth terminals connected to the first and second terminals,
`respectively; claim limitation 6.8 recites that the connecting unit comprises a
`wiring layer connected to the third and fourth terminals. According to
`Petitioner, “lead lines 34 and 35, coil connection pads 103, and the wiring
`pattern on substrate 100 of the coil unit together render obvious the claimed
`connecting unit because these components together form an electrical
`connection between the power-receiving planar coil and the portable
`telephone.” Pet. 31 (citing Ex.1003, Phinney Decl. ¶ 67). Petitioner
`identifies one coil connection pad 103 as the third connection terminal and
`another coil connection pad 103 as the fourth connection terminal. Id. at 33–
`34.
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`IPR2022-00118
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`Patent Owner contends, “the claims require a separate and discrete
`connecting unit that has connection terminals that connect to the connection
`terminals of the coil.” Prelim. Resp. 11. According to Patent Owner
`Hasegawa does not disclose the claimed connecting unit, because Hasegawa
`“discloses that the coil connects directly to the substrate, which itself
`contains circuit elements.” Id. According to Patent Owner, Hasegawa’s
`leads 34, 35 are part of the coil, not part of the connecting unit. Id. at 18–19
`(citing Ex. 1005 ¶¶ 68 (disclosing that planar coil 30 includes inner and
`outer end lead lines 34, 35 connected to inner and out ends of the spiral), 74,
`75, 77).
`As Petitioner notes, claim 6 recites the third and fourth connection
`terminals are part of the connecting unit, but is “silent in that regard as to the
`first and second connection terminals . . . that each connect to the coil unit
`200.” Pet. 29, n.2 (citing Ex. 1001, 15:57–30 (sic)). According to Petitioner
`“although claim 6 does not require the recited first connection terminal and
`second connection terminal to be part of the connecting unit, the claim
`encompasses such a read based on the specification.” Id. (citing Ex.1003,
`Phinney Decl. ¶ 69).
` Patent Owner argues that Figures 1, 11, 14, and 26 all depict the
`connecting unit as a distinct component of the wireless power receiver and
`that, because the claims list the connecting unit separately, “the clear
`implication of the claim language,” is that those elements are distinct
`components of the invention. Prelim. Resp. 12–14.
` In patent law, “the name of the game is the claim.” In re Hiniker Co.,
`150 F.3d 1362, 1369 (Fed. Cir. 1998). “Though understanding the claim
`language may be aided by the explanations contained in the written
`description, it is important not to import into a claim limitations that are not
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`a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
`870, 875 (Fed. Cir. 2004); see also Thorner v. Sony Computer Entm’t Am.
`L.L.C., 669 F.3d 1362, 1365 (Fed. Cir. 2012) (holding that it is not enough
`that the only embodiment, or all of the embodiments, contain a particular
`limitation to limit a claim to that particular embodiment).
`Although Patent Owner’s arguments are grounded in interpreting the
`“connecting unit” to mean a physically separate and distinct item, neither
`party has proposed a construction of “connecting unit.” Patent Owner
`asserts that “[u]nder a plain reading of the claims, it simply cannot be the
`case that the four claimed connection terminals are contained on the
`connecting unit,” because, had that been patentee’s intent, “patentee would
`have written the claims in a manner that specified that relationship.” Prelim.
`Resp. 21.
`Claim 6 recites the connecting unit as a separate limitation, but claim
`6 does not explicitly recite that the connecting unit is a separate and discrete
`physical assembly or device. Although Patent Owner c
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