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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`———————
`
`IPR2022-00118
`U.S. Patent No. 10,804,740
`
`
`
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ............................................................................ iii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S PROPOSED CLAIM CONSTRUCTION
`UNDULY LIMITS THE CLAIMS ................................................................. 1
`
`A.
`
`The challenged claims do not require that the claimed first and
`second connection terminals be part of the “coil” ............................... 2
`
`1.
`
`2.
`
`3.
`
`The claims do not recite a “coil unit” ........................................ 2
`
`The specification does not require that the connecting
`unit be separate and discrete from a “coil unit” that
`includes the first and second connection terminals ................... 3
`
`The prosecution history does not require that the
`connecting unit be separate from a “coil unit” that
`includes the first and second connection terminals ................... 5
`
`B.
`
`The claims do not require that the first and second connection
`terminals be separate and distinct from the connecting unit ................ 8
`
`II.
`
`HASEGAWA RENDERS THE CHALLENGED CLAIMS OBVIOUS .....11
`
`A. Hasegawa renders obvious a connecting unit, first and second
`connection terminals, and a coil ......................................................... 12
`
`B.
`
`C.
`
`The challenged claims do not require that the connecting unit be
`separate and discrete from the substrate ............................................. 14
`
`Hasegawa makes clear that its “wiring pattern” connects the
`connection pads 103 ........................................................................... 15
`
`III. CONCLUSION ..............................................................................................16
`
`CERTIFICATE OF SERVICE ................................................................................18
`
`ii
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`
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`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`Ex.1009
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`Ex.1010
`
`Ex.1011
`Ex.1012
`
`Ex.1013
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`Ex.1014
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`Ex.1015
`
`Ex.1016
`
`Ex.1017
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`Ex.1018
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`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
`
`iii
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`
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
`
`Ex.1019
`
`Ex.1020
`
`The Merriam-Webster Dictionary, Merriam-Webster, Inc., 1995.
`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
`
`
`
`
`
`iv
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`
`
`
`I.
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
`
`INTRODUCTION
`Patent Owner’s entire argument for why Hasegawa does not render the
`
`challenged claims obvious hinges on its assertion that the claimed connecting unit
`
`must be “separate and discrete” from the other components of the claimed wireless
`
`power receiver. But neither the claims nor the intrinsic record contains any such
`
`requirement. Patent Owner’s arguments to the contrary commit the “cardinal sin”
`
`of reading the embodiments described in the specification into the claims and
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`therefore fail.
`
`Because each of Patent Owner’s arguments is premised on incorrect claim
`
`constructions, its Response fails to rebut the prima facie case of obviousness
`
`presented in the Petition. Accordingly, Petitioner respectfully requests that the
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`Board find each of the challenged claims unpatentable.
`
`II.
`
`PATENT OWNER’S PROPOSED CLAIM CONSTRUCTION
`UNDULY LIMITS THE CLAIMS
`Patent Owner asks the Board to construe the challenged claims to require
`
`that the claimed “connecting unit” be “separate and distinct” from the “coil unit”—
`
`which it contends includes a “coil,” a “first connection terminal,” and a “second
`
`connection terminal”—because embodiments described in the specification include
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`“coil units” that are purportedly “distinct” from the connecting units described in
`
`those embodiments. Patent Owner’s Response (“Response,” Paper 17), 8. But the
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`1
`
`
`
`
`challenged claims do not recite a “coil unit.” See Ex.1001, claims 6, 16. Instead,
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
`
`they recite a “coil,” which is connected to the first and second connection
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`terminals. See id.
`
`According to Patent Owner’s own cited case law, the fact that the claims
`
`recite that the coil is “connected to” the first and second terminals means that the
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`first and second terminals are not “associated with the ‘coil’,” as Patent Owner
`
`contends. See Response, 19-20 (emphasis in original). And nothing in the claims
`
`indicates that those terminals cannot instead be part of the claimed connecting unit.
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`Accordingly, Petitioner respectfully requests that the Board reject Patent
`
`Owner’s invitation to unduly limit the claims.
`
`A. The challenged claims do not require that the claimed first and
`second connection terminals be part of the “coil”
`The claims do not recite a “coil unit”
`1.
`Patent Owner confusingly refers to a “coil unit,” which it claims must be
`
`separate and distinct from the claimed “connecting unit.” Response, 8 (“Patent
`
`Owner respectfully requests that the Board construe independent claims 6 and 16
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`to require two separate and distinct components for the “coil unit” and “connecting
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`unit.”). But none of the challenged claims recites a “coil unit.” Instead, claims 6
`
`and 16 each recites “a coil” and first and second connection terminals that are
`
`2
`
`
`
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`“connected to”1 the coil, which are in turn connected to the third and fourth
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`connection terminals of the connecting unit.
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`As Patent Owner itself notes, “when claim language recites two components
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`that are ‘connected,’ it means that those objects were previously separate.” See
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`Response, 11 (citing Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929,
`
`935-36 (Fed. Cir. 2013)). Therefore, under Patent Owner’s own logic, the fact that
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`the claims recite that the first and second connection terminals are “connected to”
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`the ends of the coil means that the first and second terminals are not part of the
`
`coil.
`
`2.
`
`The specification does not require that the connecting unit
`be separate and discrete from a “coil unit” that includes the
`first and second connection terminals
`Patent Owner’s arguments that the claims nevertheless require a “coil unit”
`
`that is separate from the “connecting unit” center around Patent Owner’s assertion
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`that in every embodiment described in the specification, the “coil unit” is separate
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`and discrete from the “connecting unit.” But in patent law, “the name of the game
`
`is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). The Federal
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`Circuit has repeatedly cautioned that “reading a limitation from the written
`
`description into the claims” is one of the “cardinal sins of patent law.” Phillips v.
`
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`1 All emphasis is added unless otherwise noted.
`
`3
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`
`
`
`AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (quoting SciMed Life Sys. v.
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`Adv. Cardiovascular Sys. Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001)). Even where
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`“every embodiment in the specification depicts a particular arrangement or
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`structure,” that arrangement should not be read into the claims “absent express
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`claim language requiring as much.” Ethicon LLC v. Intuitive Surgical, Inc., 847
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`Fed. App’x 901, 907 (Fed. Cir. 2021) (citing Aventis Pharma S.A. v. Hospira, Inc.,
`
`675 F.3d 1324, 1330 (Fed. Cir. 2012)).
`
`Nothing in the challenged claims requires that the first and second
`
`connection terminals be part of the coil or that the (non-recited) “coil unit” be
`
`separate and distinct from the connecting unit. In fact, as noted above, the claims
`
`make clear that the first and second connection terminals need not be part of the
`
`coil by reciting that they are “connected to” the coil. See Regents of Univ. of
`
`Minn., 717 F.3d at 935-36.
`
`That is reinforced by the specification. The specification never refers to the
`
`first and second connection terminals as being part of the “coil”—only a “coil
`
`unit.” And where the specification refers to a “coil unit” that includes a coil and
`
`first and second connection terminals, it states that the first and second connection
`
`terminals are “located” at the ends of coil. See, e.g., Ex. 1001, 4:61-63, 10:23-26.
`
`The fact that the patentee chose to instead claim a coil “connected to” first and
`
`second terminals confirms that the claims are not limited to these embodiments.
`
`4
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`
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
`
`Although Patent Owner argues that the that the existence of a “discrete”
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`
`
`connecting unit is important for achieving the patent’s goal of achieving a thinner
`
`wireless power receiver, it fails to explain why it is necessary for the connecting
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`unit to be discrete from the other components of the claimed wireless power
`
`receiver to achieve this goal. Patent Owner points to the specification’s statement
`
`that a discrete connecting unit can be fitted into a “receiving space” in the substrate
`
`to save space. See Response, 14 (citing Ex. 1001, 2:49-53, 8:48-54, 16:4-13,
`
`18:46-53). But the same goal could be achieved by making the connecting unit
`
`integral with the substrate. Indeed, doing so would potentially be more space
`
`efficient than other described embodiments in which a discrete connecting unit is
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`placed on top of the substrate. See, e.g., Ex. 1001, Figs. 1-3, 5:22-6:43.
`
`3.
`
`The prosecution history does not require that the
`connecting unit be separate from a “coil unit” that includes
`the first and second connection terminals
`The prosecution history also does not dictate that the coil and first and
`
`second connection terminals be part of a “coil unit” that is physically separate from
`
`the connecting unit. Patent Owner argues that “applicants of the ’740 Patent
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`disavowed the ‘coil unit’ and the ‘connecting unit’ being anything but separate
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`units” by amending the claims of a different patent to recite that “the connecting
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`unit includes a third connection terminal connected to the first connection terminal
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`of the coil unit and a fourth connection terminal connected to the second
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`5
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`
`
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`connection terminal of the coil unit, wherein the conductive pattern includes a
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`conductive line wound at least two times and the conductive pattern has a spiral
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`shape.” See Response, 16-19 (citing Ex. 2019,9-10).
`
`Specifically, Patent Owner appears to argue that because the applicant stated
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`that the “advantageous features of the subject invention” recited in the amended
`
`claim language are “discussed throughout the original specification,” the applicant
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`disavowed any embodiment that does not include the features recited in the added
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`claim language. See id. (citing Verizon Servs. Corp. v. Vonage Holdings Corp.,
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`503 F.3d 1295, 1308 (Fed. Cir. 2007)). But the applicant’s statement about “the
`
`subject invention” plainly referred to the invention recited in the amended claims,
`
`not every invention described in the specification. That distinguishes this case
`
`from Verizon and the other cases Patent Owner cites because in each of those
`
`cases, the relevant patent’s specification included repeated statements clearly
`
`characterizing “the features of the ‘present invention’ as a whole.” Verizon, 503
`
`F.3d at 1308 (emphasis added); see also Regents of the Univ. of Minn., 717 F.3d at
`
`936; Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir.
`
`2006); SciMed Life Sys. Inc., 242 F.3d at 1341. No such statements exist here.
`
`Where, as here, “the purported disclaimers made during prosecution are
`
`directed to specific claim terms that have been omitted or materially altered in
`
`subsequent applications (rather than to the invention itself), those disclaimers do
`
`6
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`
`
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`not apply.” Regents of the Univ. of Minn., 717 F.3d 929 at 943. Thus, even if the
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`statement Patent Owner relies on created a disclaimer, that disclaimer would only
`
`affect the specific claims that were subject to the amendment or that contain the
`
`same language. As explained above, the challenged claims, unlike the amended
`
`claims in the different patent Patent Owner relies on, do not recite a “coil unit”
`
`that includes the first and second connection terminals. The applicant’s statements
`
`about them are therefore irrelevant to the scope of the challenged claims.
`
`Patent Owner also cites a generic statement from the Notice of Allowance of
`
`the application that led to the ’740 Patent that “the prior art record does not
`
`disclose or suggest a wireless power receiver, comprising, inter alia, a connecting
`
`unit as claimed.” Response, 17 (citing Ex.1002, 26) (emphasis in original). But
`
`this statement does not describe the “connecting unit” at all, much less suggest that
`
`it must be separate from a “coil unit” that is not even recited in the claims.
`
`In sum, nothing in either the claims or the intrinsic record requires that the
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`first and second connection terminals be part of a “coil unit” that is physically
`
`separate from the connecting unit, as Patent Owner contends.2
`
`
`2 To the extent that Patent Owner also contends that the claimed connecting
`
`unit must be separate from the coil itself, that argument is irrelevant because
`
`Hasegawa discloses a “planar coil 30” comprising a spiral that is distinct from
`
`7
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
`
`B.
`
`The claims do not require that the first and second connection
`terminals be separate and distinct from the connecting unit
`Patent Owner’s argument that the first and second connection terminals must
`
`be “separate and distinct” from the connecting unit relies primarily on its assertion
`
`that the first and second connection terminals are part of a “coil unit” that the
`
`specification purportedly describes as being “separate and distinct” from the
`
`connecting unit. That argument fails for the reasons discussed above, and
`
`accordingly, Patent Owner’s argument that the first and second connection
`
`terminals cannot instead be part of the claimed connecting unit also fails.
`
`Nothing in the claim language itself or in the intrinsic record requires that
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`the first and second connection terminals be separate from the connecting unit.
`
`Absent such guidance, “the use of two terms in a claim requires [only] that they
`
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`Hasegawa’s connecting unit, which comprises lead lines 34 and 35, coil connection
`
`pads 103, and the wiring pattern on substrate 100. The Board therefore need not
`
`decide whether the claims require that the coil alone must be separate and distinct
`
`from the connecting unit. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that the Board must
`
`construe the claims only “to the extent necessary to resolve the controversy).
`
`
`
`8
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`
`
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`connote different meanings.” Applied Med. Res. Corp. v. U.S. Surgical Corp., 448
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`F.3d 1324, 1333 n.3 (Fed. Cir. 2006). It does not require “that they necessarily
`
`refer to two different structures.” Id.
`
`Petitioner does not contend that the first and second connection terminals
`
`and the connecting unit have the same meaning—only that they may overlap such
`
`that the first and second connection terminals are part of the connecting unit.
`
`Nothing in the intrinsic record precludes that. See Linear Tech. Corp. v. Int'l
`
`Trade Comm'n, 566 F.3d 1049, 1055 (Fed. Cir. 2009) (holding that separately
`
`recited “second circuit” and “third circuit[s]” could contain overlapping
`
`components because the intrinsic record did not suggest otherwise); Intell. Prop.
`
`Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1320
`
`n.9 (Fed. Cir. 2003) (“Contrary to Cablevision's argument, we see no reason why,
`
`as a matter of law, one claim limitation may not be responsive to another merely
`
`because they are located in the same physical structure.”); Apple Inc. v. Kilbourne,
`
`IPR2019-00233, Paper 40, 27-38 (PTAB Mar. 25, 2020), aff’d Kilbourne v. Apple
`
`Inc., 837 Fed. Appx. 812 (Fed. Cir. 2021) (explaining that simply listing three
`
`different elements in a claim did not require “separate and distinct structures”).
`
`As Patent Owner points out, the challenged claims recite that the first and
`
`second connection terminals are each “connected to” parts of the claimed
`
`connecting unit—namely, the third and fourth connection terminals, respectively.
`
`9
`
`
`
`
`But nothing in the claim language or the intrinsic record suggests that one part of
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`the connecting unit cannot connect to another part of the connecting unit.
`
`Patent Owner’s arguments to the contrary rely on the fact that in certain
`
`embodiments described in the specification, the first and second connection
`
`terminals are purportedly described as being part of a coil unit rather than as part of
`
`the connecting unit. But again, the challenged claims do not recite a coil unit, and,
`
`even if they did, “it is ‘not enough that the only embodiments, or all of the
`
`embodiments, contain a particular limitation’ to limit claims beyond their plain
`
`meaning.” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir.
`
`2016) (citing Thorner v. Sony Computer Entertainment America. LLC, 669 F.3d
`
`1362, 1366 (Fed. Cir. 2012)).
`
`In fact, the challenged claims themselves directly contradict Patent Owner’s
`
`argument that the first and second terminals must be “separate” from the
`
`connecting unit. “Separate” means “not connected.” See, e.g., Ex. 1019 (Merriam-
`
`Webster), 473. But the challenged claims expressly recite that the first and second
`
`terminals are “connected to” the connecting unit’s third and fourth terminals.
`
`Patent Owner’s proposed construction is therefore non-sensical in light of the
`
`surrounding claim language.
`
`Patent Owner also argues that “had the patentee intended that the four
`
`recited ‘connection terminals’ could all reside on the ‘connecting unit,’ the
`
`10
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`
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`patentee would have written the claims in a manner that specified that
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`relationship.” Response, 19-20. But the reverse is true. If the patentee had
`
`intended to limit the claims to require that the first and second connection
`
`terminals be part of a coil unit that is separate and the discrete from the connecting
`
`unit, it would have included limiting language in the claims specifying that
`
`relationship. Instead, the patentee chose to draft the claims broadly by not
`
`specifying any relationship between the first and second connection terminals and
`
`connecting unit. Patent Owner should not be permitted to artificially limit the
`
`claims now in the face of invalidating prior art.
`
`II. HASEGAWA RENDERS THE CHALLENGED CLAIMS OBVIOUS
`
`Each of Patent Owner’s arguments for why Hasegawa does not render the
`
`challenged claims obvious hinges on its incorrect contention that the connecting
`
`unit must be “separate and discrete” from the other components of claimed
`
`wireless power receiver. Specifically, Patent Owner contends that Hasegawa does
`
`not render the challenged claims obvious because Hasegawa does not disclose a
`
`connecting unit that is “separate and distinct” from (1) a “coil unit” that includes a
`
`“first connection terminal” and a “second connection terminal” or (2) the
`
`“substrate.”
`
`But as explained above, the challenged claims neither recite a “coil unit” nor
`
`require that any such “coil unit” be separate and discrete from the connecting unit.
`
`11
`
`
`
`
`And Patent Owner’s assertion that the claimed connecting unit must be separate
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`and discrete from the substrate similarly fails because the challenged claims do not
`
`even recite a “substrate,” much less indicate that the connecting unit must be
`
`distinct from the substrate.
`
`As a result, the Response fails to rebut the prima facie case of obviousness
`
`set forth in the Petition, and the Board should find all challenged claims
`
`unpatentable.
`
`A. Hasegawa renders obvious a connecting unit, first and second
`connection terminals, and a coil
`
`As shown in the Petition, Hasegawa’s “lead lines 34 and 35 (first and second
`
`connection terminals), coil connection pads 103, and the wiring pattern of substrate
`
`100” together render obvious the claimed connection unit. See Petition, 29-37, 39-
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`42. Patent Owner devotes the bulk of its Response to arguing that under its
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`proposed claim construction, Hasegawa does not disclose or render obvious the
`
`claimed connecting unit because Hasegawa’s lead lines 34 and 35 cannot be both
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`the claimed first and second connection terminals and part of the connecting unit.
`
`See Response, 30-31.
`
`For the reasons explained above, Patent Owner’s proposed claim
`
`construction is wrong. Nothing in the claims or the intrinsic record requires that
`
`the first and second terminals be “separate and distinct” from the connecting unit.
`
`12
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`
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`Accordingly, Patent Owner’s argument fails.
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`Further, even if Patent Owner is correct that the recited “coil” alone must be
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`separate and distinct from the connecting unit, Hasegawa would still invalidate the
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`challenged claims because Hasegawa renders obvious a coil that is separate and
`
`distinct from a connecting unit. Specifically, Hasegawa discloses “a planar coil
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`(coil) 30” with “an inner end lead line 34 connected to the inner end of the spiral,”
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`and “an outer end lead line 35 connected to the outer end of the spiral.” See
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`Petition, 22-27 (citing Ex. 1005, [0067]-[0068], Fig. 3A). Under Patent Owner’s
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`own cited case law, the spiral of Hasegawa’s “coil” is separate from the “lead
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`lines” 34 and 35 (first and second connection terminals) because the lead lines are
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`“connected” to the spiral. See id.; Regents of Univ. of Minn., 717 F.3d at 935-36.
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`Therefore, Hasegawa renders obvious a coil (the spiral) that is separate from its
`
`lead lines 34 and 35, coil connection pads 103, and the wiring pattern on its
`
`substrate 100, which together render obvious a connecting unit. See Petition, 29-
`
`30, 39-41.
`
`Further, although Hasegawa in several places characterizes the “lead lines”
`
`34 and 35 as being part of the planar coil 30 (see, e.g., Ex. 1005, [0068]), a
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`POSITA would not be restricted to only viewing the lead lines 34 and 35 as being
`
`a part of the coil. See Board’s Decision Granting Institution, Paper 9, 20-21. A
`
`13
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`
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`POSITA could instead view the lead lines as being separate. Id. Accordingly,
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`Hasegawa renders obvious a coil that is separate from a connecting unit.
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`B.
`
`The challenged claims do not require that the connecting unit be
`separate and discrete from the substrate
`Patent Owner also argues that Hasegawa does not render obvious the
`
`claimed connecting unit because Hasegawa’s “connection pads 103” and “wiring
`
`pattern” are part of the “substrate,” not a discrete connecting unit. Response, 31-
`
`34. But challenged claims do not recite a “substrate,” much less require that any
`
`“substrate” be separate and distinct from the connection unit, as Patent Owner
`
`asserts. Patent Owner’s arguments to the contrary again commit the “cardinal sin”
`
`of reading embodiments described in the specification into the claims. See
`
`Phillips, 415 F.3d at 1320.
`
`Even if the claims did recite a “substrate,” the fact that claims recite two
`
`separate elements does not mean that those elements must be structurally
`
`independent. See Applied Med. Res. Corp., 448 F.3d at 1333 n.3; Linear, 566 F.3d
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`at 1055. Furthermore, the mere fact that the claims recite a “unit” does not mean
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`that the claimed “unit” must be a discrete, unitary structure as Patent Owner seems
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`to suggest. That is particularly true where, as here, the claimed unit is comprised
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`of a number of discrete components. For example, in Paragon Solutions, LLC v.
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`Timex Corp., 566 F.3d 1075, 1084-86 (Fed. Cir. 2009), the Federal Circuit rejected
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`14
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`the district court’s construction of “data acquisition unit,” which required that all
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`recited components of the claimed unit be housed a single structure because
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`nothing in the specification or the prosecution history precluded a “unit” comprised
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`of multiple, physically separate structures.
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`Likewise, here, the claimed connecting unit expressly comprises several
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`different components, including third and fourth connecting terminals and a wiring
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`layer. Nothing in the claims themselves or in the intrinsic record requires that all
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`of these components be part of a discrete, integral connecting unit as Patent Owner
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`suggests. Instead, the claims broadly encompass connecting units comprised of
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`several structures, each of which may also be part of other structures within the
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`claimed wireless power receiver. See Paragon, 566 F.3d at 1084-86; Linear, 566
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`F.3d at 1055.
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`C. Hasegawa makes clear that its “wiring pattern” connects the
`connection pads 103
`Finally, Patent Holder asserts that “Hasegawa does not provide any
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`discussion concerning the relationship of connection pads 103 to the wiring pattern
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`of the substrate” and that Petitioner therefore “has no basis” for suggesting that
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`“the supposed wiring pattern annotated by Petitioner is actually related to
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`connection pads 103 in any way.” Response, 33-34. This argument is
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`demonstrably incorrect. As explained in both the Petition and the supporting
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`15
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`expert declaration, Figure 4 of Hasegawa specifically depicts that the wiring
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`pattern connects to the connection pads 103. See Petition, 30-32, 35-37; Ex.1003,
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`¶¶ 67, 80-83. Additionally, as Petitioner’s expert explained, Hasegawa makes
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`clear that the wiring layer, together with the lead lines and the connection pads
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`103, transfer power from the coil to a portable device. See Ex.1003, ¶¶ 65, 73. In
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`order for that to happen, the wiring pattern would necessarily need to be connected
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`to the connection pads 103. See id.
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`Accordingly, Hasegawa’s “lead lines 34 and 35 (first and second connection
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`terminals), coil connection pads 103, and the wiring pattern of substrate 100”
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`together render obvious the claimed connection unit. See Petition, 29-37, 39-42.
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`III. CONCLUSION
`For the foregoing reasons, Patent Owner’s arguments in its Response should
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`be rejected, and the challenged claims should be found unpatentable.
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`Respectfully submitted,
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`
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`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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`Dated: October 28, 2022
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
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`Customer No. 27683
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(d), Petitioner hereby certifies, in accordance
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`with and reliance on the word count provided by the word-processing system used
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`to prepare this petition, that the number of words in this paper is 3594. This word
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`count excludes the table of contents, table of authorities, mandatory notices under
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`§42.8, certificate of service, certificate of word count, signature block, and
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`appendix of exhibits. See 37 C.F.R. §42.24(c).
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`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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`IPR2022-00118
`Petitioner’s Reply to Patent Owner’s Response
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e),
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`service was made on Patent Owner as detailed below.
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` Persons served
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`Date of service October 28, 2022
`Manner of service Electronic Mail: bcooper@bc-lawgroup.com;
`jpetrsoric@bc-lawgroup.com; ap@lombardip.com;
`ehuang@lombardip.com; Scramoge_Counsel@b-clg.com
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`Documents served Petitioner’s Reply to Patent Owner’s Response; 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
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`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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