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
`U.S. Patent No. 10,804,740
`
`________________
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`
`
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
`
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`
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`
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`
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`———————
`
`IPR2022-00118
`U.S. Patent No. 10,804,740
`
`________________
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
`
`
`
`
`
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`
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`TABLE OF CONTENTS
`Petitioner’s Exhibit List ............................................................................................. v
`
`I.
`
`INTRODUCTION ................................................................................................ 7
`
`II. THE SUBSTITUTE CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C. § 112 ............................................................................................................... 8
`
`III. SUBSTITUTE CLAIMS 21-23 ARE UNPATENTABLE AS OBVIOUS
`UNDER 35 U.S.C. § 103 .........................................................................................10
`
`A. Kato Renders Obvious Substitute Claims 21-23 ........................................ 11
`
`1. Substitute Claim 21 ............................................................................... 11
`
`[21.0] A wireless power receiver, comprising: .................................. 11
`
`[21.1] an adhesive layer comprising a receiving space; ..................... 13
`
`[21.2] a coil on the adhesive layer; ...................................................... 14
`
`[21.3] a first connection terminal connected to an outer end of the
`coil; ........................................................................................................ 15
`
`[21.4] a second connection terminal connected to an inner end of the
`coil; ........................................................................................................ 16
`
`[21.5] a discrete connecting unit separate from the coil, the first
`connection terminal, and the second connection terminal, the
`connecting unit overlapping the receiving space in a vertical direction
`perpendicular to the adhesive layer and connected to a circuit
`separate from the connecting unit, ...................................................... 17
`
`[21.6] wherein the connecting unit comprises: a third connection
`terminal connected to the first connection terminal; .......................... 20
`
`ii
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`[21.7] [wherein the connecting unit comprises:] a fourth connection
`terminal connected to the second connection terminal at the inner
`end of the coil; ...................................................................................... 21
`
`[21.8] [wherein the connecting unit comprises:] a wiring layer
`connected to the third connection terminal and the fourth terminal. 22
`
`2. Claim 22 ................................................................................................ 23
`
`[22.0] A wireless power receiver, comprising: .................................... 23
`
`[22.1] an adhesive layer comprising a receiving space; ..................... 23
`
`[22.2] a coil on the adhesive layer; ...................................................... 23
`
`[22.3] a first connection terminal connected to one end of the coil; . 23
`
`[22.4] a second connection terminal at another end of the coil; and 23
`
`[22.5] a discrete connecting unit separate from the coil, the first
`connection terminal, and the second connection terminal, the
`connecting unit disposed corresponding to the receiving space and
`connected to a circuit separate from the connecting unit; ................. 24
`
`[22.6] wherein the connecting unit comprises: a third connection
`terminal connected to the first connection terminal; .......................... 25
`
`[22.7] [wherein the connecting unit comprises:] a fourth connection
`terminal connected to the second connection terminal; and .............. 25
`
`[22.8] [wherein the connecting unit comprises:] a wiring layer
`connected to the third connection terminal and the fourth terminal. 25
`
`3. Substitute Claim 23 ............................................................................... 25
`
`[23.0] The wireless power receiver of claim 22, .................................. 25
`
`iii
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`IPR2022-00118 / U.S. Patent No. 10,804,740
`[23.1] wherein the receiving space extends from inside the coil to
`outside the coil, ..................................................................................... 25
`
`[23.2] wherein the third connection terminal is connected to the first
`connection terminal horizontally within a boundary defining the
`receiving space, and .............................................................................. 26
`
`[23.3] wherein the fourth connection terminal is connected to the
`second connection terminal horizontally within the boundary
`defining the receiving space. ................................................................ 27
`
`IV. CONCLUSION ..................................................................................................28
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`
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`iv
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`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`
`Ex.1006
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`Ex.1010
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`Ex.1011
`Ex.1012
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`Ex.1013
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`Ex.1014
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`Ex.1015
`
`Ex.1016
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`Ex.1017
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`Ex.1018
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`Ex.1019
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`PETITIONER’S EXHIBIT LIST
`
`U.S. 10,804,740
`
`Prosecution History of U.S. 10,804,740
`
`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Joshua Phinney
`
`U.S. Patent Application Publication 2009/0021212 (Hasegawa)
`
`U.S. Patent Application Publication 2007/0069961
`U.S. Patent Application Publication 2014/0306656 A1 Tabata et al
`
`U.S. Patent 8,384,263 B2 to Hiramatsu et al
`
`Reserved
`Reserved
`
`Reserved
`Reserved
`
`Reserved
`
`Reserved
`Scheduling Order, Scramoge Technology Limited v. Apple Inc.,
`WDTX-6-21-cv-00579 (filed Sept. 28, 2021)
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Apple Inc., Scramoge Technology
`Limited v. Apple Inc., WDTX-6-21-cv-00579 (served Sept. 7, 2021)
`U.S. Patent Publication No. 2008/0164840 to Kato et al.
`Supplemental Declaration of Dr. Joshua Phinney under 37
`C.F.R. § 1.68
`The Merriam-Webster Dictionary, Merriam-Webster, Inc., 1995.
`
`v
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`IPR2022-00118 / U.S. Patent No. 10,804,740
`
`Ex.1020
`
`The Wayback Machine, capture of “Separate | Define Separate
`at Dictionary.com” on February 7, 2012,
`https://web.archive.org/web/20120207103735/http://dictionary.r
`eference.com:80/browse/separate
`
`vi
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`
`I.
`
`INTRODUCTION
`Patent Owner filed a Motion to Amend (“Motion,” Paper 16) with substitute
`
`claims 21, 22, and 23. The Board should deny the Motion for multiple,
`
`independent reasons. First, Patent Owner’s amendments create internal
`
`contradictions that render the substitute claims indefinite under 35 U.S.C. § 112.
`
`Second, the substitute claims are no more novel than the original claims. For
`
`example, US 2008/0164840 to Kato et al. renders obvious the newly added
`
`limitations as well as the original limitations under 35 U.S.C. § 103. Notably, the
`
`Kato reference is already known to Patent Owner as it was a primary reference in a
`
`second IPR that challenged the ’740 patent, IPR2022-00603 filed by Google LLC
`
`(the “Google IPR”). Patent Owner has made no effort to make the Board aware of
`
`Kato (or even the Google IPR itself) despite its materiality to the substitute claims
`
`proposed in the Motion.1 By proposing substitute claims that it should have known
`
`are unpatentable, Patent Owner has failed to make efficient use of the Board’s
`
`finite resources and failed to meet its obligation under 37 C.F.R. § 42.11. See
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 9-10 (PTAB Feb.
`
`
`
`1 Neither Patent Owner’s “Second Amended Mandatory Notices” (Paper 13, July
`
`13, 2022) nor “Third Amended Mandatory Notices” (Paper 20, September 30,
`
`2022) lists the Google IPR (filed Feb. 14, 2022).
`
`7
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`25, 2019) (precedential) (“Under 37 C.F.R. § 42.11, all parties have a duty of
`
`
`
`candor, which includes a patent owner’s duty to disclose to the Board information
`
`of which the patent owner is aware that is material to the patentability of substitute
`
`claims, if such information is not already of record in the case.”).
`
`Patent Owner’s Motion should be denied.
`
`II. THE SUBSTITUTE CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C. § 112
`Substitute claims 21-23 are unpatentable under 35 U.S.C. § 112 because the
`
`newly added language creates an internal contradiction that renders the claims
`
`indefinite. Ex.1018, ¶¶ 4-8. Substitute claims 21 and 22 recite “a discrete
`
`connecting unit separate from the coil, the first connection terminal, and the second
`
`connection terminal” (underlining denoting newly added claim language). The
`
`added requirement that the connecting unit be “separate” from the first and second
`
`connection terminals contradicts the originally claimed requirement that the
`
`connecting unit be “connected” to the first and second connection terminals. For
`
`example, the “connecting unit comprises: a third connection terminal connected to
`
`the first connection terminal” and also comprises “a fourth connection terminal
`
`connected to the second connection terminal.” In other words, the amended claim
`
`requires the connecting unit to be both (i) “connected” to the first and second
`
`connection terminals (via the third and fourth connection terminals) and (ii)
`
`“separate” from the first and second connection terminals. Neither Patent Owner’s
`
`8
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`Motion nor the ’740 patent specification clarifies this apparent contradiction.
`
`
`
`The ’740 patent specification does not describe the connecting unit’s
`
`connection terminals as being “separate” from other connection terminals—and
`
`does not use the term “separate” at all. Instead, the specification consistently
`
`describes the connecting unit’s connection terminals as being “connected” to
`
`connection terminals via “solder.” Ex.1001, 5:46-60, 6:34-39, 7:14-19, 13:7-12.
`
`Further, the commonly understood meaning of “separate” is “not
`
`connected.” See, e.g., Ex. 1019 (Merriam-Webster), 473; see also Ex.1020
`
`(Wayback Machine capture of dictionary.com from February 7, 2012), 2 (defining
`
`“separate” as “detached, disconnected, or disjoined”); Ex.1018, ¶ 7. A POSITA
`
`would not have understood how the connecting unit can be both “connected to” the
`
`first and second connection terminals and not connected to the first and second
`
`connection terminals. Ex.1018, ¶ 7; see also Trs. of Columbia Univ. v. Symantec
`
`Corp., 811 F.3d 1359, 1366-67 (Fed. Cir. 2016) (“The claims are nonsensical in
`
`the way a claim to extracting orange juice from apples would be, and are thus
`
`indefinite.”).
`
`In fact, Patent Owner’s own argument in its Patent Owner Response
`
`(“Response,” Paper 17) highlights the nonsensical nature of substitute claims 21
`
`and 22. The Response alleges that “when claim language recites two components
`
`that are ‘connected,’ it means that those objects were previously separate.”
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`9
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`Response, 11 (emphasis added). By that logic, the connecting unit in substitute
`
`
`
`claims 21 and 22 that is “connected” to the first and second connection terminals
`
`was “previously separate” from the first and second connection terminals. The
`
`substitute claims, however, also recite that the connecting unit is “separate” from
`
`the first and second connection terminals. It is unclear how the recited connecting
`
`unit can be both “previously separate” and presently “separate” from the first and
`
`second connection terminals. At best, the claim language is ambiguous and fails to
`
`clearly delineate the subject matter sought to be protected.
`
`Because substitute claims 21 and 22 “fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention,” they are
`
`unpatentable as indefinite under 35 U.S.C. § 112. Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 572 U.S. 898, 901 (2014); see also B.R.A.H.M.S. GMBH v.
`
`Becton, Dickinson, and Co., PGR2016-00018, Paper 8 at 29-31 (Nov. 2, 2016)
`
`(finding claims indefinite that are “internally inconsistent”); Ex.1018, ¶¶ 4-8.
`
`Substitute claim 23 depends from substitute claim 22 and is thus unpatentable for
`
`the same reason.
`
`III. SUBSTITUTE CLAIMS 21-23 ARE UNPATENTABLE AS OBVIOUS
`UNDER 35 U.S.C. § 103
`The Board should independently deny Patent Owner’s motion because
`
`substitute claims 21-23 are obvious in view of the Kato reference recently cited
`
`against the ’740 patent in the Google IPR (U.S. 2008/0164840, Ex.1017).
`
`10
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`A. Kato Renders Obvious Substitute Claims 21-23
`Substitute Claim 21
`1.
`
`[21.0] A wireless power receiver, comprising:
`
`To the extent the preamble is limiting, Kato discloses a wireless power
`
`receiver. Like the ’740 patent, Kato discloses “a noncontact power-transmission
`
`coil for use in power transmission in a noncontact manner using electromagnetic
`
`induction.” Ex.1017, [0003]. Fig. 3 of Kato, annotated below, illustrates a mobile
`
`phone unit 2 having a “secondary power-transmission coil 21” (wireless power
`
`receiver) that wirelessly receives power from “primary power-transmission coil
`
`10” within a cradle 1. Ex.1017, [0049]-[0052], [0058] (“[W]hen an alternating
`
`voltage is induced in the secondary power-transmission coil 21 with the alternating
`
`voltage from the primary power-transmission coil 10 of the cradle 1, the mobile
`
`phone unit 2 rectifies the induced alternating voltage and then converts it into a
`
`direct current voltage, followed by charging the battery 22 with the direct current
`
`voltage.”).
`
`11
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`secondary power-transmission coil 21 (wireless power receiver)
`
`
`
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`mobile phone 2
`
`cradle 1
`
`Ex.1017, Fig. 3 (annotated); Ex.1018, 12
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`
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`
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`Figs. 17-20 of Kato show one example of a power transmission coil 21WD
`
`used for reception of power in a mobile phone like that illustrated in Fig. 3 above.
`
`Ex.1017, [0062], [0079]-[0084]. As shown in annotated Fig. 17 below, the power
`
`transmission coil 21WD is an assembly of elements, including a coil 40 on the
`
`surface of a flexible printed-circuit board 90 that includes a wiring layer 33/34. Ex.
`
`1017, [0081]-[0083].
`
`12
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
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`secondary power-
`transmission coil 21WD
`(wireless power receiver)
`
`flexible
`printed-circuit
` board 90
`
`planar coil 40
`
`Ex.1017, Fig. 17 (annotated); Ex.1018, 13
`
`
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`[21.1] an adhesive layer comprising a receiving space;
`
`Kato discloses that the power transmission coil 21WD shown in annotated
`
`Fig. 19 below includes an “adhesion sheet 42” (adhesive layer) that is used to
`
`adhere the coil 40 to the flexible printed circuit board 90. Ex. 1017, [0081] (“One
`
`flat surface of the planar coil formed of the wound electric wire 40 is stuck on
`
`the surface of the flexible printed-circuit board 90 though an adhesion sheet
`
`42.”) As shown in annotated Figs. 19 and 17 below, the adhesive layer 42 includes
`
`a gap (receiving space) corresponding to the “inner peripheral portion 37” of the
`
`coil 40 to accommodate (i.e., receive) the first coil contact portion 36. Ex.1017,
`
`[0082].
`
`13
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
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`Ex.1017, Fig. 19 (annotated); Ex.1018, 14
`
`
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`Ex.1017, Fig. 17 (annotated); Ex.1018, 14
`
`
`
`Although Kato does not utilize the term “receiving space,” a POSITA would
`
`have found it obvious that the gap in Kato’s adhesion sheet is a receiving space
`
`because it is a space that receives the first coil contact portion 36. Ex.1018, 15.
`
`This gap allows the first coil contact portion 36 to electrically connect the coil to
`
`the wiring layer of the flexible printed circuit board 90. Ex.1018, 14.
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`[21.2] a coil on the adhesive layer;
`
`14
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`As shown in annotated Fig. 19 below, Kato teaches that a “planar coil
`
`formed of the wound electric wire 40 is stuck on the surface of the flexible printed-
`
`circuit board 90 through an adhesion sheet 42.” Ex.1017, [0081].
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 15
`
`
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`[21.3] a first connection terminal connected to an outer end of the coil;
`
`As shown in annotated Figs. 17 and 19 below, Kato discloses a coil contact
`
`portion 35 (first connection terminal) that is connected to an outer end of the coil
`
`40. Ex.1017, [0082] (“The second coil contact portion 35 is electrically connected
`
`to the electric wire end at the end of the winding of the outer peripheral portion 38
`
`of the planar coil.”)
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`
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`15
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
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`
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`Ex.1017, Fig. 17 (annotated); Ex.1018, 16
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`Ex.1017, Fig. 19 (annotated); Ex.1018, 16
`
`[21.4] a second connection terminal connected to an inner end of the coil;
`
`As shown in annotated Figs. 17 and 19 below, Kato discloses a coil contact
`
`portion 36 (second connection terminal) that is connected to an inner end of the
`
`coil 40. Ex.1017, [0082] (“[T]he first coil contact portion 36 is electrically
`
`connected to the electric wire end at the start of the winding of inner peripheral
`
`portion 37 of the planar coil.”)
`
`16
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`
`Ex.1017, Fig. 17 (annotated); Ex.1018, 17
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 17
`
`
`
`
`
`[21.5] a discrete connecting unit separate from the coil, the first connection
`terminal, and the second connection terminal, the connecting unit overlapping
`the receiving space in a vertical direction perpendicular to the adhesive layer and
`connected to a circuit separate from the connecting unit,
`
`First, as shown in annotated Fig. 18 below, Kato discloses a “flexible
`
`printed-circuit board 90” (discrete connecting unit) “with an insulating layer and
`
`formed so as to substantially fit to the shape of the flat surface of the planar coil.”
`
`17
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`Ex.1017, [0082]. The circuit board 90 includes “first inner conductor pattern 33”
`
`
`
`and “second inner conductor pattern 34” that are “formed under the surface
`
`insulating layer” to electrically connect the coil to the connections 31 and 32, as
`
`shown in Fig. 18. Ex.1017, [0082].
`
`inner
`conductors
`33, 34
`
`
`flexible
`printed-circuit
` board 90
`(connecting unit)
`
`Ex.1017, Fig. 18 (annotated); Ex.1018, 18
`
`
`
`Fig. 18 also illustrates that Kato renders obvious the connecting unit under
`
`any interpretation of the ambiguous language requiring it to be both “separate”
`
`(Fig. 18) and “connected” (Fig. 17). Ex.1017, [0034] (“FIG. 18 is a schematic front
`
`view of the noncontact power-transmission coil in which the planar coil shown in
`
`FIG. 17 is not stuck on the flexible printed-circuit board.”).
`
`Kato further explains that the board’s insulating layer is not formed at the
`
`inner or outer portion of the coil such that “the inner conductor of the flexible
`
`printed-circuit board 90 is exposed to the outside.” Ex.1017, [0082]. Because the
`
`18
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`board’s inner conductor is exposed to the outside (at least at some point during
`
`
`
`manufacture), it may be considered separate—for the purposes of this invalidity
`
`analysis only—from any connection terminals to which they might connect, such
`
`as coil contact portion 35 (first connection terminal) and the coil contact portion 36
`
`(second connection terminal). Ex.1018, 19.
`
`Second, as shown in annotated Fig. 19 below, the flexible printed circuit
`
`board 90 (connecting unit) overlaps the gap in the adhesion sheet 42 (receiving
`
`space) in the vertical direction perpendicular to the adhesion sheet. Id.
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 19
`
`
`
`Third, Kato teaches that the circuit board 90 of the secondary power-
`
`transmission coil 21WD is connected to a separate “charging control circuit” in the
`
`mobile phone that detects a voltage change in the secondary power-transmission
`
`coil. Ex.1017, [0055] (“The charging control circuit of the mobile phone unit 2
`
`19
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`according to the embodiment is allowed to detect a voltage change in response to a
`
`
`
`change in magnetic field of the secondary power-transmission coil 21.”); Ex.1018,
`
`19-20.
`
`[21.6] wherein the connecting unit comprises: a third connection terminal
`connected to the first connection terminal;
`
`As described in [21.5], the circuit board 90 (connecting unit) includes a
`
`second inner conductor pattern 34 with an “exposed” end at the outer end of the
`
`coil 40. Ex.1017, [0082].
`
`inner
`conductor
`34 with
`exposed end
`
`
`flexible
`printed-circuit
` board 90
`(connecting unit)
`
`Ex.1017, Fig. 18 (annotated); Ex.1018, 20
`
`
`
`As illustrated in Fig. 19 below, the exposed end of the conductor pattern 34 (third
`
`connection terminal) is connected to the coil contact portion 35 (first connection
`
`terminal).
`
`20
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
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`Ex.1017, Fig. 19 (annotated); Ex.1018, 21
`
`
`
`[21.7] [wherein the connecting unit comprises:] a fourth connection terminal
`connected to the second connection terminal at the inner end of the coil;
`
`As described in [21.5], the circuit board 90 (connecting unit) includes a first
`
`inner conductor pattern 33 with an “exposed” end at the inner end of the coil 40.
`
`Ex.1017, [0082].
`
`inner
`conductor
`33 with
`exposed end
`
`
`flexible
`printed-circuit
` board 90
`(connecting unit)
`
`Ex.1017, Fig. 18 (annotated); Ex.1018, 21
`
`
`
`As illustrated in Fig. 19 below, the exposed end of the conductor pattern 33
`
`(fourth connection terminal) is connected to the coil contact portion 36 (second
`
`21
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`connection terminal) at the inner end of the coil 40.
`
`
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 22
`
`
`
`[21.8] [wherein the connecting unit comprises:] a wiring layer connected to the
`third connection terminal and the fourth terminal.
`
`As discussed in [21.5], and as shown in Fig. 18 below, the printed circuit
`
`board 90 (connecting unit) includes first inner conductor pattern 33 and second
`
`inner conductor pattern 34 (together the wiring layer). Ex.1017, [0079]. The
`
`conductor patterns 33 and 34 are respectively connected to their exposed end
`
`portions (third and fourth connection terminals). Ex.1017, [0082]; Ex.1018, 23.
`
`22
`
`
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`
`Ex.1017, Fig. 18 (annotated); Ex.1018, 23
`
`
`
`2.
`
`Claim 22
`
`[22.0] A wireless power receiver, comprising:
`
`As discussed in [21.0], Kato renders obvious this limitation. Ex.1018, 23.
`
`[22.1] an adhesive layer comprising a receiving space;
`
`
`
`As discussed in [21.1], Kato renders obvious this limitation. Ex.1018, 23.
`
`[22.2] a coil on the adhesive layer;
`
`
`
`As discussed in [21.2], Kato renders obvious this limitation. Ex.1018, 24.
`
`[22.3] a first connection terminal connected to one end of the coil;
`
`
`
`As discussed in [21.3], Kato renders obvious this limitation. Ex.1018, 24.
`
`[22.4] a second connection terminal at another end of the coil; and
`
`As discussed in [21.4], Kato teaches that coil contact portion 36 (second
`
`connection terminal) is connected at an inner end of the coil 40. Ex.1017, [0082]
`
`23
`
`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`(“[T]he first coil contact portion 36 is electrically connected to the electric wire
`
`
`
`end at the start of the winding of inner peripheral portion 37 of the planar coil.”)
`
`Ex.1017, Fig. 17 (annotated); Ex.1018, 25
`
`
`
`[22.5] a discrete connecting unit separate from the coil, the first connection
`terminal, and the second connection terminal, the connecting unit disposed
`corresponding to the receiving space and connected to a circuit separate from
`the connecting unit;
`
`First, as discussed in [21.5], Kato renders obvious the “connecting unit,”
`
`under any interpretation. Ex.1017, [0055], [0082], [0034], Figs. 17, 18. Second,
`
`with respect to the “the connecting unit disposed corresponding to the receiving
`
`space,” the flexible printed circuit board (connecting unit) is disposed
`
`corresponding to the gap in the adhesion sheet 42 (receiving space) because the
`
`circuit board is specifically positioned beneath the gap to expose circuit board’s
`
`inner conductor pattern 33. Ex.1017, [0082]; Ex.1018, 27.
`
`24
`
`
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`[22.6] wherein the connecting unit comprises: a third connection terminal
`connected to the first connection terminal;
`
`
`
`As discussed in [21.6], Kato renders obvious this limitation. Ex.1018, 28.
`
`[22.7] [wherein the connecting unit comprises:] a fourth connection terminal
`connected to the second connection terminal; and
`
`
`
`As discussed in [21.7], Kato renders obvious this limitation. Ex.1018, 28.
`
`[22.8] [wherein the connecting unit comprises:] a wiring layer connected to the
`third connection terminal and the fourth terminal.
`
`As discussed in [21.8], Kato renders obvious this limitation. Ex.1018, ¶28-
`
`
`
`29.
`
`3.
`
`Substitute Claim 23
`
`[23.0] The wireless power receiver of claim 22,
`
`See claim 22.
`
`[23.1] wherein the receiving space extends from inside the coil to outside the coil,
`
`
`
`As discussed in [21.1], Kato teaches that the adhesive layer includes an inner
`
`gap (receiving space) corresponding to the “inner peripheral portion 37” of the
`
`coil. Ex.1017, [0082]. Kato also teaches that the adhesive layer includes an outer
`
`gap (receiving space) corresponding to the “outer peripheral portion 38” of the coil
`
`to avoid the second coil contact portion 35. Ex.1017, [0082] (“That is, a surface
`
`insulating layer is not formed on any of the first coil contact portion 36 arranged in
`
`the inner peripheral portion 37 of the planar coil, the second coil contact portion 35
`
`arranged near the outside of the outer peripheral portion 38 of the planar coil.”).
`
`25
`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`Outer
`portion of
`
`
`
`
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 30 (annotated)
`
`Further, the adhesive layer also includes a receiving space on its top surface where
`
`the coil is received and adhered, as illustrated in Fig. 19 annotated below.
`
`Outer
`portion of
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 30
`
`Accordingly, the receiving space of the adhesive layer 42 extends from inside the
`
`coil 40 to outside the coil 40. Ex.1018, 30.
`
`[23.2] wherein the third connection terminal is connected to the first connection
`terminal horizontally within a boundary defining the receiving space, and
`
`
`
`As illustrated in Fig. 19, annotated below, Kato teaches that the exposed end
`
`of the conductor pattern 34 (third connection terminal) is connected to the coil
`
`26
`
`
`
`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`contact portion 35 (first connection terminal) horizontally within a boundary
`
`
`
`defining the receiving space at the outer end of the coil.
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 31
`
`
`
`[23.3] wherein the fourth connection terminal is connected to the second
`connection terminal horizontally within the boundary defining the receiving
`space.
`
`
`
`As illustrated in Fig. 19, annotated below, Kato teaches that the exposed end
`
`of the conductor pattern 33 (fourth connection terminal) is connected to the coil
`
`contact portion 36 (second connection terminal) horizontally within a boundary
`
`defining the receiving space at the inner end of the coil.
`
`27
`
`
`
`
`
`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`
`Ex.1017, Fig. 19 (annotated); Ex.1018, 31
`
`
`
`IV. CONCLUSION
`For the reasons discussed above, Patent Owner’s Motion should be denied.
`
`
`
`
`
`
`
`
`
`
`Dated: October 28, 2022
`
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Telephone: 972-739-8663
`Facsimile: 214-200-0853
`
`
`
`
`
`Respectfully submitted,
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Registration No. 70,297
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`28
`
`
`
`
`
`Petitioner’s Opposition to Motion to Amend
`IPR2022-00118 / U.S. Patent No. 10,804,740
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service October 28, 2022
`
`Persons served
`
`
`
`Manner of service Electronic Mail: bcooper@bc-lawgroup.com;
`jpetrsoric@bc-lawgroup.com; ap@lombardip.com;
`ehuang@lombardip.com; Scramoge_Counsel@b-clg.com
`
`Documents served Petitioner’s Opposition to Patent Owner’s Motion to
`Amend; Exhibits Ex.1017 – Ex.1020
`
`Brett Cooper
`John Petrsoric
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`
`Antonio Papageorgiou
`Eric Huang
`Lombard & Geliebter LLP
`230 Park Avenue, 4th Floor West
`New York, NY 10169
`
`
`
`
`
`
`
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Registration No. 70,297
`Counsel for Petitioner
`
`
`29
`
`
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