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

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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
`
`
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`Table of Contents
`I. INTRODUCTION ................................................................................................. 1
`II. THE PATENTED TECHNOLOGY .................................................................... 2
`A. Overview of the ’740 Patent ...................................................................... 2
`III. OVERVIEW OF ASSERTED REFERENCES ................................................. 5
`A. Hasegawa (Ex. 1005)—the only reference applied in Ground 1—
`does not disclose the claimed invention ..................................................... 5
`IV. CLAIM CONSTRUCTION ............................................................................... 7
`A. Claims 6 and 16 require separate components for the “coil” and the
`“connecting unit” .......................................................................................... 8
`1. It is well-settled law that separate claim elements are
`presumed to be distinct components of the claimed invention ......... 9
`2. The challenged claims support the presumption that the “coil
`unit” is a separate and distinct component from the
`“connecting unit” ............................................................................ 10
`3. The specification supports the presumption that the “coil
`unit” is a separate and distinct component from the
`“connecting unit” ............................................................................ 12
`4. The prosecution history supports the presumption that the
`“coil unit” is a separate and distinct component from the
`“connecting unit” ............................................................................ 16
`B. The “first connection terminal” and the “second connection
`terminal” are not part of the “connecting unit” ........................................ 19
`V. Ground 1 of the Petition Fails Because Hasegawa Does Not Teach a
`“Coil Unit” and a “Connecting Unit” as Separate and Distinct
`Components ........................................................................................................ 23
`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 ........................... 24
`B. Hasegawa does not disclose a “first connection terminal” and
`“second connection terminal” that are separate and distinct from the
`“connecting unit” ....................................................................................... 25
`VI. Ground 1 of the Petition Additionally Fails Because Hasegawa’s
`Connection Pads and Wiring Pattern are Part of the Substrate ......................... 31
`VII. CONCLUSION .......................................................................................... 34
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
`
`Table of Authorities
`
`Cases
`Am. Piledriving Equip., Inc. v. Geoquip, Inc.,
`637 F.3d 1324 (Fed. Cir. 2011) ........................................................................... 11
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ....................................................................... 9, 11
`Comcast Cable Comm’ns, LLC v Promptu Sys. Corp.,
`838 F. App’x 551 (Fed. Cir. Jan. 4, 2021) .......................................................... 11
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004) ............................................................................. 9
`Graham v. John Deere Co.,
`383 US 1 (1966) .................................................................................................. 24
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006) ........................................................................... 17
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ........................................................................... 24
`IRIS Corp. v. Japan Airlines Corp.,
`769 F.3d 1359 (Fed. Cir. 2014) ........................................................................... 10
`Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n,
`22 F.4th 1369 (Fed. Cir. 2022) .............................................................................. 9
`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co.,
`Case CBM2012-00003 (Paper 8) (PTAB Oct. 25, 2012) ................................... 25
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ........................................................................... 10
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................. 7
`NTP, Inc. v. Research in Motion, Ltd.,
`419 F.3d 1282 (Fed. Cir. 2005) ........................................................................... 10
`Regents of Univ. of Minn. v. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ....................................................................... 11, 17
`Rodime PLC v. Seagate Tech., Inc.,
`174 F.3d 1294 (Fed. Cir. 1999) ........................................................................... 20
`
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`ii
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`SandBox Logistics LLC v. Proppant Express Invs. LLC,
`813 F. App’x 548 (Fed. Cir. 2020) ....................................................................... 9
`SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ........................................................................... 17
`Toro Co. v. White Consol. Indus., Inc.,
`199 F.3d 1295 (Fed. Cir. 1999) ........................................................................... 19
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ............................................................................. 7
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ........................................................................... 18
`Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................... 7
`
`
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`iii
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`2002
`
`2003
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`PATENT OWNER’S EXHIBIT LIST
`Exhibit No. Description
`2001
`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)
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`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.)
`
`iv
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`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)
`
`Specification Filed in U.S. Pat. Appl. No. 13/663,012, now U.S.
`Patent No. 9,806,565
`
`Specification Filed in U.S. Pat. Appl. No. 16/264,360, now U.S.
`Patent No. 10,804,740
`
`July 27, 2022 Deposition Transcript of Joshua Phinney, Ph.D.
`
`Excerpts of Prosecution History of U.S. Patent Application Serial
`No. 13/663,012
`
`U.S. Patent Publication No. 2008/0197597
`
`U.S. Patent No. 10,270,291
`
`v
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`
`I.
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
`
`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
`
`response to Petitioner Apple Inc.’s (“Petitioner”) petition for inter partes review of
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`U.S. Patent No. 10,804,740 (“the ’740 Patent”). The Board’s Decision Granting
`
`Institution shows that there is a claim construction dispute between the parties that
`
`must be addressed to resolve the controversy as to whether Hasegawa discloses the
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`claimed “connecting unit.” Patent Owner respectfully requests that the Board
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`construe independent claims 6 and 16 to require two separate and distinct
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`components for the “coil”/“first connection terminal”/“second connection terminal”
`
`and “connecting unit.”
`
`The independent claims of the ’740 Patent recite a “first connection terminal”
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`and a “second connection terminal” (parts of the ’740 Patent’s “coil unit”) that are
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`separate and distinct from the “connecting unit.” The ’740 Patent claims, figures,
`
`specification, and prosecution history all teach that the “coil unit” and “connecting
`
`unit” are separate and distinct components of the claimed wireless power receiver.
`
`Nevertheless, Petitioner asserts that the lead lines 34 and 35 disclosed by Hasegawa
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`alone discloses the separate and distinct “first connection terminal”/“second
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`connection terminal” and “connecting unit” limitations and does not propose any
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`combination of references or modifications to Hasegawa for these limitations. It is
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`well-settled law that a single component cannot meet the requirements of separate
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`1
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`

`

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`and distinct component limitations in a patent claim. Petitioner has therefore failed
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`to establish the invalidity of the challenged claims of the ’740 Patent.
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`II. THE PATENTED TECHNOLOGY
`
`A. Overview of the ’740 Patent
`
`The ’740 Patent is entitled “Wireless Power Receiver and Method of
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`Manufacturing the Same.” It teaches a wireless power receiver with reduced
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`thickness by providing a connecting unit that connects the coil to the wireless power
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`receiving circuit to transfer power received from the coil to the circuit. Ex. 1001,
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`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
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`adhesive layer 710, and receiving space 130, as depicted in Figures 11 and 26 (for
`
`example):
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`2
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`In one embodiment, the magnetic substrate includes receiving space 130. Id., 8:48-
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`57. In another embodiment, the adhesive layer includes a receiving space. Id.,
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`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
`
`power receiver can be remarkably reduced as much as the thickness of the
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`connecting unit.” Id., 2:49-53. Further, according to another embodiment, a “tape
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`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.
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`
`
`3
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`

`

`The ’740 Patent further describes how the connecting unit, constituted of,
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`
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`inter alia, connection terminals 310 and 320, connects the coil unit 200, constituted
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`of, inter alia, coil 230 and connection terminals 210 and 220, to the wireless power
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`receiving circuit, as depicted in Figures 11 and 27 (for example):
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`
`
`
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`Specifically, “[t]he first connection terminal 210 is located at one end of the coil 230
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`and the second connection terminal 220 is provided at the other end of the coil 230.”
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`Id., 4:61-63; see also 15:34-36, 15:57–16:3. “The first and second connection
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`terminals 210 and 220 are necessary for connection with the connecting unit 300.”
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`Id., 4:64-65 (emphasis added). 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
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`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-
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`26. Further, the connections between the connection terminals of the coil 200 and
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`
`
`4
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`

`

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`the connecting unit 300 can be made in various ways, such as (but not limited to)
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`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.
`
`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-
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`contact power transmission. Ex. 1005, ¶ 2. Hasegawa contains a planar coil 30, a
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`magnetic sheet 40, spacing member 60, a heat sink/magnetic shield plate 50, and a
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`substrate 100. Id. ¶¶ 67-74.
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`
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`5
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`
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`In one embodiment, the spacer, 62, may be a double-sided adhesive. Id. ¶ 72. The
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`spacer “has a slit 62 so as to avoid at least the inner end lead line 34.” Id.
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`Hasegawa’s coil 30 includes “an inner end lead line 34 connected to the inner
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`end of the spiral, and an outer end lead line 35 connected to the out end of the spiral.”
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`Id. ¶ 68. The coil’s lead lines 34 and 35 connect to coil connection pads 103 on the
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`substrate:
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`
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`6
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`

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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`Id., ¶¶ 74 (“The substrate 100 has coil connection pads 103 connected to the inner
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`end lead line 34 and the outer end lead line 35 of the planar coil 30.”), 75, 77. To
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`that end, Hasegawa’s coil directly connects to the substrate and requisite electrical
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`components necessary for non-contact power transmission. See, e.g., id. ¶¶ 62, 78,
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`80, 81.
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`IV. CLAIM CONSTRUCTION
`
`Claim terms that are in dispute and for which resolution of such dispute is
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`“necessary to resolve the controversy” must be construed. Vivid Techs., Inc. v. Am.
`
`Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); U.S. Surgical Corp. v.
`
`Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). This threshold for construing
`
`claim terms is applicable in IPR proceedings. Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`
`
`7
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`A. Claims 6 and 16 require separate components for the “coil” and
`the “connecting unit”
`In the Board’s Decision Granting Institution, the Board did not construe any
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`terms because neither party proposed an explicit construction of any claim term.
`
`However, the Board’s Decision shows that there is a claim construction dispute
`
`between the parties that must be addressed to resolve the controversy as to whether
`
`Hasegawa discloses the claimed “connecting unit.” Accordingly, Patent Owner
`
`respectfully requests that the Board construe independent claims 6 and 16 to require
`
`two separate and distinct components for the “coil unit” and “connecting unit.”
`
`The ’740 Patent claims, figures, specification, and prosecution history all
`
`teach that the “coil unit” and “connecting unit” are separate and discrete components
`
`of the claimed wireless power receiver. The ’740 Patent consistently teaches that
`
`the “coil unit” constitutes, inter alia, a “coil,” a “first connection terminal,” and a
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`“second connection terminal.” Separately, the ’740 Patent teaches that the
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`“connecting unit” constitutes, inter alia, a “third connection terminal,” a “fourth
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`connection terminal,” and a “wiring layer” that connects to the third and fourth
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`“connection terminals.” For example, independent claim 6 separately recites a
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`“coil,” along with a “first connection terminal” and a “second connection terminal”
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`and a “connecting unit”:
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`6. A wireless power receiver, comprising:
`an adhesive layer comprising a receiving space;
`a coil on the adhesive layer;
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`
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`8
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`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.
`
`
`Ex. 1001, 19:61-20:9 (emphasis added). Claim 16 recites the same. Id., 21:5-20.
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`1.
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`It is well-settled law that separate claim elements are
`presumed to be distinct components of the claimed
`invention
`“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.”). To overcome the presumption
`
`that claim elements listed separately are distinct components, Petitioner must
`
`identify either claim language or language in the written description that rebuts the
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`presumption. See, e.g., Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22
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`
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`9
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`

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`F.4th 1369, 1382 (Fed. Cir. 2022) (“The asserted claims list those elements
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`separately…. There is, therefore, a presumption that those components are
`
`distinct.”). Petitioner is unable to do so.
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`2.
`
`The challenged claims support the presumption that
`the “coil unit” is a separate and distinct component
`from the “connecting unit”
`The challenged claims support the distinction between the “coil,” the “first
`
`connection terminal” and the “second connection terminal,” on one hand, and the
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`“connecting unit” on the other. Indeed, the claims specify that the “coil” is
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`ultimately connected to the “connecting unit” through the “first connection terminal”
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`and the “second connection terminal” (see, e.g., Ex. 1001, 19:64-67), which connect
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`to the “third connection terminal” and the “fourth connection terminal,” respectively
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`(see, e.g., id., 20:4-7). See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1299
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`(Fed. Cir. 2015) (“Not only are the ‘two other computers’ recited independently
`
`from, and in addition to, the gateway and caching computer, the word ‘other’ denotes
`
`a further level of distinction.”); NTP, Inc. v. Research in Motion, Ltd., 419 F.3d 1282,
`
`1300 (Fed. Cir. 2005) (holding that the “originating processor” and “gateway
`
`switch” are separate components because, inter alia, the claim language shows that
`
`information “is transmitted from an ‘originating processor’ to a gateway switch),
`
`abrogated on other grounds by IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359,
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`1361 n.1 (Fed. Cir. 2014).
`
`
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`10
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`

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`In Regents of Univ. of Minn., the Federal Circuit explained that when claim
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`
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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
`
`disks that were “connected” to one another, and concluding that such language
`
`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] program
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`system controlling at least part of a speech recognition system coupled to a wireline
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`node.” Comcast Cable Comm’ns, LLC v Promptu Sys. Corp., 838 F. App’x 551,
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`552-53 (Fed. Cir. Jan. 4, 2021) (nonprecedential); see also Am. Piledriving Equip.,
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`Inc. v. Geoquip, Inc., 637 F.3d 1324, 1332-34 (Fed. Cir. 2011) (for claims directed
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`to a piledriving machine, affirming construction of the term “eccentric weight
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`portion” in a limitation reciting that the “eccentric weight portion” was “connected
`
`to” a “cylindrical gear portion” as requiring that the structure forming the “eccentric
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`weight portion” be separate and apart from structure that was the “cylindrical gear
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`portion”); Becton, Dickinson, 616 F.3d at 1254-56 (where a claim to a shieldable
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`needle assembly recited a “hinged arm” and a “spring means,” which was
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`“connected to said hinged arm,” holding the claim to require that the “spring means”
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`
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`11
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`had to be structurally separate from the hinged arm). Accordingly, the ’740 Patent
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`claims’ use of the term “connected” further confirms that the “connecting unit” is
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`separate and distinct from the “coil.”
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`3.
`
`The specification supports the presumption that the
`“coil unit” is a separate and distinct component from
`the “connecting unit”
`The specification of the ’740 Patent reinforces the inference that the claimed
`
`“coil” and “connecting unit” are separate and distinct components. In every
`
`embodiment, the “coil” (part of the “coil unit” along with “the first connection
`
`terminal” and “the second connection terminal”) and the “connecting unit” are
`
`described as separate components. For example, Figures 1, 11, 14, and 26 all depict
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`the “connecting unit 300” as a separate and discrete component from the “coil unit
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`200” of the wireless power receiver:
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`12
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`
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`Ex. 1001, Figs. 1, 11, 14 and 26; see also id., 4:57-65, 5:19-26 (referencing
`
`Fig. 1). As depicted in Figures 11 and 26 (and corresponding Figures 12 and 27), the
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`’740 Patent teaches that the “coil unit 200” is disposed on the “magnetic substrate
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`100” and/or “adhesive layer 710.” Id., 8:32-35, 16:51-55. Those Figures also teach
`
`that “magnetic substrate 100” and/or “adhesive layer 710” may contain “a receiving
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`space 130.” Id., 8:30-32; 16:55-58. The connecting unit may be positioned with,
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`overlap, or be disposed in the “receiving space 130.” Id., 2:19-28 (“positioning the
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`connecting unit in the receiving space”); 2:49-53 (“According to one embodiment,
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`the connecting unit is disposed in the receiving space of the magnetic substrate”);
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`Claim 6 (“a connecting unit overlapping the receiving space”).
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`The ’740 Patent also describes options for the disposition of the “connecting
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`IPR2022-00118 (’740 Patent)
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`unit” relative to the “coil unit”:
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`[R]eferring to FIG. 1, the coil unit 200 is disposed on the top surface
`of the magnetic substrate 100 and the connecting unit 300 is disposed
`on the coil unit 200. However, referring to FIG. 11, the receiving
`space 130 having the structure the same as that of the connecting unit
`300 is formed in the magnetic substrate 100, so that the connecting
`unit 300 may be disposed under the coil unit 200.
`Id., 8:32-39 (emphasis added to show that the “connecting unit” may be disposed on
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`the “coil unit” or under the “coil unit”). To that end, the ’740 Patent teaches that
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`the “connecting unit” is a separate and discrete component from the “coil unit” that
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`may be positioned in, disposed in, or otherwise overlap the receiving space of the
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`substrate and/or adhesive layer and in different orientations relative to one another.
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`The existence of a discrete “connecting unit” is important for achieving the
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`’740 Patent’s goal of achieving a thinner wireless power receiver. For example, the
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`’740 Patent explains that “the connecting unit is disposed in the receiving space of
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`the magnetic substrate so that the thickness of the wireless power receiver can be
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`remarkably reduced as much as the thickness of the connecting unit.” Id., 2:49-53;
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`8:50-54; 16:4-13, 18:46-53. In some embodiments, “a tape substrate is used as the
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`connecting unit so that the overall size of the wireless power receiver can be
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`reduced.” Id., 2:54-56; 16:14-19 (“If the tape substrate is used as the connecting
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`unit 300, the thickness of the connecting unit 300 can be reduced, so that the overall
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`size of the wireless power receiver 1000 can be reduced.”).
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`Additionally, the ’740 Patent further teaches that a purpose of the “connecting
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`unit” is to connect the “coil unit” to the wireless power receiving circuit—further
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`evidencing that the “connecting unit” is contemplated as a distinct component from
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`the “coil unit” of the wireless power receiver. Specifically, “[t]he connecting unit
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`300 connects the wireless power receiving circuit (not shown) with the coil unit 200
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`to transfer the power received from the coil unit 200 to a load (not shown) through
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`the wireless power receiving circuit.” Id., 5:30-33, 15:38-41 (same); see also id.,
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`5:34-37. For example, as shown in Figure 1, “[t]he first connection terminal 210 is
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`located at one end of the coil 230 and the second connection terminal 220 is provided
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`at the other end of the coil 230.” Id., 4:61-63. “The first and second connection
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`terminals 210 and 220 are necessary for connection with the connecting unit 300.”
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`Id., 4:64-65. To that end, “[t]he first connection terminal 310 of the connecting unit
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`300 may be connected to the first connection terminal 210 of the coil unit 200 and
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`the second connection terminal 320 of the connecting unit 300 may be connected to
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`the second connection terminal 220 of the coil unit 200.” Id., 5:22-26. These
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`connections formed between the first and second “connection terminals” of the “coil
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`unit” and the third and fourth “connection terminals” of the “connecting unit” are
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`intended to create the requisite electrical connections between the “coil” (through
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`the “connecting unit” and its “wiring layer”) and ultimately to the power receiving
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`IPR2022-00118 (’740 Patent)
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`circuit, which then converts AC power into DC power.
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`4.
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`The prosecution history supports the presumption
`that the “coil unit” is a separate and distinct
`component from the “connecting unit”
`Finally, the prosecution history of the ’740 Patent reinforces that the “coil
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`unit,” including the “coil,” the “first connection terminal,” and the “second
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`connection terminal,” are separate and distinct from the “connecting unit.” During
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`the prosecution of U.S. Patent Application Serial No. 13/663,012 which led to U.S.
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`Patent No. 9,806,565 and is the ultimate parent application of the ’740 Patent, the
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`applicants made the following statement regarding the disclosed invention:
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`Claim 1 has been amended to recite that the connecting unit includes
`a third connection terminal connected to the first connection terminal
`of the coil unit and a fourth connection terminal connected to the
`second connection terminal of the coil unit, wherein the conductive
`pattern includes a conductive line wound at least two times and the
`conductive pattern has a spiral shape. These advantageous features of
`the subject
`invention are discussed
`throughout
`the original
`specification and can be seen in at least Figure 11, in which the
`connecting unit includes a third connection terminal 310 connected to
`the first connection terminal 210 of the coil unit 200 and a fourth
`connection terminal 320 connected to the second connection terminal
`220 of the coil unit 200, wherein the conductive pattern 230 includes a
`conductive line wound at least two times and the conductive pattern
`230 has a spiral shape (sec also, e.g., page 7, lines 5-7 and 18-23).
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`Ex. 2019 at 9-10, Prosecution History of U.S. Patent Application Serial No.
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`13/663,012, 5/11/2015 Amendment Under 37 C.F.R. §1.11, pp. 7-8.1 And, in
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`allowing the claims of the ’740 Patent, the Examiner expressly noted that “the prior
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`art record does not disclose or suggest a wireless power receiver, comprising, inter
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`alia, a connecting unit as claimed.” Ex. 1002 at 26, Prosecution History of U.S.
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`Patent Application Serial No. 16/264,360, June 24, 2020 Notice of Allowance
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`(emphasis added).
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`The Federal Circuit has found disavowal that limits the scope of the claims
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`based on the patentee’s clear and unmistakable statements, such as ‘‘the present
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`invention includes …” or ‘‘the present invention is …’’ or ‘‘all embodiments of the
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`present invention are …’’ See, e.g., Regents of the Univ. of Minn. v. AGA Med.
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`Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l, Inc. v. ITT Indus., Inc.,
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`452 F.3d 1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys. Inc. v. Advanced
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`Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
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`1 During the prosecution of the ultimate parent application of the ’740 Patent,
`applicants disclosed U.S. Patent Publication No. 2008/0197957 (“Kondo”). Ex.
`2019 at 1-2, Prosecution History of U.S. Patent Application Serial No. 13/663,012,
`7/15/2014 Information Disclosure Statement. Hasegawa and Kondo both identify
`Seiko Epson Corp. as the assignee. Compare Ex. 1005 (Hasegawa) and Ex. 2020
`(Kondo). The inventors of Kondo are also identified as inventors of Hasegawa. Id.
`Similarly to Hasegawa, Kondo discloses a coil with lead lines running through cut-
`outs in an adhesive tape layer to a printed circuit board substrate. See, e.g., Ex. 2020,
`¶ 135. The Examiner never relied on Kondo. This is not surprising because Kondo,
`like Hasegawa, fails to disclose a separate and distinct “connecting unit.”
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`During the prosecution of the parent application to the ’740 Patent, the
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`IPR2022-00118 (’740 Patent)
`Patent Owner’s Response
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`
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`applicants described the following features, inter alia: (i) that the “coil unit” was
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`comprised of the “first connection terminal” and the “second connection terminal”;
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`(ii) that the “connecting unit” was comprised of the “third connection terminal” and
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`the “fourth connection terminal”; and (iii) that the “third connection terminal” was
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`connected to the “first connection terminal,” and the “fourth connection terminal”
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`was connected to the “second connection terminal.” Ex. 2019 at 9-10, Prosecu