Trials@uspto.gov
`571-272-7822
`
`
` Paper 26
`
`Entered: November 23, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-00118
`Patent 10,804,740 B2
`
`
`____________
`
`
`Before JAMESON LEE, KARL D. EASTHAM, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTION TO AMEND
`
`
`

`

`Case IPR2022-00118
`Patent 10,804,740 B2
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a petition, Paper 2 (“Petition” or
`“Pet.”), to institute an inter partes review of claims 6, 7, 16, 17, 19, and 20
`(the “challenged claims”) of U.S. Patent No. 10,804,740 B2 (“the ’740
`patent”). 35 U.S.C. § 311. We instituted an inter partes review on May 12,
`2022. Paper 9 (Dec. to Inst.). On August 4, 2022, Scramoge Technology,
`Ltd. (“Patent Owner”) filed a Motion to Amend. Paper 16 (“Motion” or
`“Mot.”). Under the MTA Pilot Program1 Patent Owner’s Motion requests
`Preliminary Guidance. Mot. 1. On October 28, 2022, Petitioner filed an
`Opposition to Patent Owner’s Motion to Amend (“Opposition” or “Opp.”). 2
`In a Motion to Amend Patent Owner must demonstrate a reasonable
`likelihood it has complied with certain statutory and regulatory
`requirements. Patent Owner must show that substitute claims (1) do not
`introduce new subject matter (37 C.F.R. § 42.121(a)(2)(ii)); (2) do not
`impermissibly seek to enlarge the scope of the claims (id.); (3) propose a
`reasonable number of substitute claims (37 C.F.R. § 42.121(a)(3)); and (4)
`respond to a ground of unpatentability in the trial
`
`
`1 The MTA Pilot program initiated on March 15, 2019 has been extended to
`September 16, 2024. See
`https://www.federalregister.gov/documents/2022/10/04/2022-
`21472/extension-of-the-patent-trial-and-appeal-board-motion-to-amend-
`pilot-program
`2 Per the Scheduling Order (Paper 15), Petitioner’s non-extendable
`Opposition to the Motion to Amend was due on Oct. 27, 2022. The parties
`notified us that, when extending the filing date for the Petitioner’s Reply to
`the Patent Owner Response to October 28, 2022, they inadvertently agreed
`to extend the deadline for Petitioner’s Opposition from October 27 to
`October 28. In view of this minor error, we agreed to accept Petitioner’s
`Opposition as timely filed.
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`(37 C.F.R. §42.121(a)(2)(i)). See
`https://www.federalregister.gov/documents/2019/03/15/2019-04897/notice-
`regarding-a-new-pilot-program-concerning-motion-to-amend-practice-and-
`procedures-in-trial.
`In an Opposition, the burden to show a reasonable likelihood the
`substitute claims are unpatentable lies with Petitioner. Id., see also L&P
`Property Mgt. Co. v. Remacro Machinery & Tech. Co., Ltd., Case IPR2019-
`00255 (PTAB Jun. 18, 2019) (Paper No. 15 at 6).
`In Preliminary Guidance we “provide an initial discussion about
`whether petitioner (or the record then before the Office, including any
`opposition to the MTA and accompanying evidence) establishes a
`reasonable likelihood that the substitute claims are unpatentable.” Id. See
`also 35 U.S.C. § 316(d); 37 CFR § 42.121; Lectrosonics, Inc. v. Zaxcom,
`Inc., IPR201801129, 01130, Paper 15 (PTAB Feb. 25, 2019) (precedential);
`see also Notice, 84 Fed. Reg. at 9,497 (“The preliminary guidance . . .
`provides preliminary, non-binding guidance from the Board to the parties
`about the [motion to amend].”).
`For purposes of this Preliminary Guidance, we focus on the proposed
`substitute claims, and specifically on the amendments proposed in the
`Motion. See Notice, 84 Fed. Reg. at 9,497. In this paper, we do not address
`the patentability of the issued claims. Id. Moreover, in formulating our
`preliminary views on the Motion and Opposition, we have not considered
`the parties’ other substantive papers on the underlying merits of Petitioner’s
`challenges. We emphasize that the views expressed in this Preliminary
`Guidance are subject to change upon consideration of the complete record,
`including, if applicable, any revision to the Motion filed by Patent Owner.
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`Thus, this Preliminary Guidance is not binding on the Board when rendering
`a final written decision. See id. at 9,500.
`II. THE ’740 PATENT
`The ’740 patent concerns a wireless power receiver used for wireless
`power transmission, whose thickness is reduced by directly disposing a coil
`unit on a top surface of a magnetic substrate or inside the magnetic substrate.
`Ex. 1001, 1:21–27, 1:54–56, 1:65–67. Figure 1 of the ’740 patent is
`reproduced below.
`
`
`
`
`As shown in annotated Figure 1, the wireless power receiver includes
`magnetic substrate 100 that concentrates a magnetic field received by
`electromagnetic induction or resonance from its transmission side into coil
`200, which may adhere to the substrate via an adhesion layer (not shown).
`See id. at 4:23–5:37, Fig. 2–3. Connecting unit 300, which may be directly
`disposed on coil 200, connects coil 200 via terminals 210, 310 and 220, 320,
`to a wireless power receiving circuit that may include a rectifier and a
`smoothing circuit to convert AC to DC power to be transferred to a load (not
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`shown). Id. at 5:19–37, 6:30–39. According to the ’740 patent, “the
`thickness of the wireless power receiver can be remarkably reduced by
`directly disposing the coil unit on a top surface of the magnetic substrate.”
`Id. at 2:29–32. Figure 11 of the ’740 patent is reproduced below.
`
`
`Although similar to the embodiment in Figure 1, the Figure 11
`embodiment includes receiving space 130 in magnetic substrate 100. Id. at
`2:19–28, 8:30–57; 8:19–57. In the embodiment of Figure 11, connecting
`unit 300, which may be of equal or lesser thickness than magnetic substrate
`100, may be disposed in receiving space 130. Id. at 8:44–49. Another
`difference between the Figure 1 and Figure 11 embodiments is that in the
`Figure 11 embodiment, connecting unit 300 may be disposed under coil 200.
`Id. at 8:32–39. See also, id. at 16:51–58, Fig. 26 (discussing a receiving
`space in adhesive layer 710).
`
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`
`III. PATENT OWNER’S PROPOSED AMENDMENTS
`Patent Owner proposes to substitute claim 21 for independent claim 6,
`by amending independent claim 6 to recite that the claimed connecting unit,
`which overlaps a receiving space in a vertical direction, is a discrete
`connecting unit that is separate from the coil, and the first and second
`connection terminals. Consistent with the connecting unit being a discrete,
`separate unit, Patent Owner further proposes to amend claim 6 to recite that
`the connecting unit is connected to a circuit separate from the connection
`unit. Finally, Patent Owner proposes to amend claim 6 to recite that the
`connection of the fourth connection terminal to the second connection
`terminal is at the inner end of the coil. See Mot. Appendix.
`Patent Owner proposes to substitute claim 22 for independent claim
`16. Patent Owner’s proposed amendment to claim 16 are similar to those
`Patent Owner proposes for claim 6, but does not recite the additional
`limitation on the connection between the second and fourth terminals.
`Patent Owner proposes to substitute claim 23 for dependent claim 17.
`Patent Owner proposes to add additional limitations to original claim 17 that
`recite the third connection terminal is connected to the first connection
`terminal and the fourth connection terminal is connected horizontally to the
`second connection terminal horizontally within a boundary defining the
`receiving space.
`STATUTORY AND REGULATORY REQUIREMENTS
`IV.
`Patent Owner contends that the substitute claim do not add new
`matter, and do not expand the scope of the claims of the ’740 patent. Mot.
`1–11. Patent Owner also contends that its three substitute claims are a
`reasonable number of substitute claims and that its proposed substitute
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`claims respond to grounds of institution. Mot. 11–14. Petitioner does not
`dispute that Patent Owner’s Motion to Amend complies with these
`requirements. See generally, Opp.
`Having reviewed the Motion to Amend, we find that Patent Owner
`has made an adequate showing that the substitute claims do not add new
`matter and do not expand the scope of the ’740 patent. We further agree that
`the Motion to Amend proposes a reasonable number of substitute claims and
`is responsive to the ground of institution. Thus, we find that Patent Owner
`has established a reasonable likelihood that its Motion satisfies the relevant
`statutory and regulatory requirements.
`V. ANALYSIS OF PATENTABILITY
`A. Issues under 35 U.S.C. § 112
`Petitioner contends that newly added language in claims 21–23,
`requiring the connecting unit be “separate” from the first and second
`connection terminals, “creates an internal contradiction that renders the
`claims indefinite.” Opp. 8 (citing Ex. 1018, Supplemental Declaration of
`Joshua Phinney, PhD. (“Suppl. Phinney Decl.”) ¶ 8). Petitioner contends
`that “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.” Id.
`Substitute claim 21 is illustrative. The wireless power receiver in
`claim 21 includes a coil on an adhesive layer with first and second
`connection terminals connected to outer and inner ends, respectively, of the
`coil. Claim 21 also recites a discrete connecting unit separate from the coil
`and the first and second connection terminals of the coil. Claim 21 further
`
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`recites that this discrete connecting unit includes third and fourth connection
`terminals that are connected to the first and second connection terminals,
`respectively. The claimed structure is one in which a separate and discrete
`connecting unit has its own terminals (the third and fourth terminals) that are
`connected to terminals of the coil (the first and second terminals). The
`claimed interconnection of the terminals within the wireless power receiver
`does not alter that fact that the terminals of the separate and discrete
`connecting unit (the third and fourth terminals) remain separate from the
`terminals of the coil (the first and second terminals). Contrary to
`Petitioner’s contentions, the claims do not recite an internal contradiction
`and we conclude that substitute claim 21 complies with the definiteness
`requirement of 35 U.S.C. § 112.
`B. Obviousness under 35 U.S.C. § 103 over Kato
`1. Introduction
`Petitioner contends that the proposed amended claims are obvious
`over Kato.3 Petitioner points out that, notwithstanding its knowledge of
`Kato, Patent Owner failed to alert the Board that Kato was cited against the
`’740 patent in Google LLC. v. Scramoge Technology, Ltd., IPR2022-006034.
`Opp. 7. Kato is listed as a reference on the face of the ’740 patent and was
`included in an Information Disclosure Statement submitted during
`prosecution of the application for the ’740 patent and is listed on the face of
`the ’740 patent. Ex. 1001, code (56); Ex. 1002, 270.
`
`
`3 U.S. Patent Publication No. 2008/0164840 to Kato et al. (Ex. 1017)
`4 IPR2022-00603 was terminated on September 26, 2022 pursuant to a
`settlement. See Google LLC v. Scramoge Tech. Ltd., IPR2022-00603, Paper
`8.
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`Case IPR2022-00118
`Patent 10,804,740 B2
`
`
`2. Kato (Ex. 1017)
`Like the subject matter of the ’740 patent, Kato “relates to a
`noncontact power-transmission coil for use in power transmission in a
`noncontact manner using electromagnetic induction, when charging a
`rechargeable battery.” Ex. 1017 ¶ 3. Figures 1 and 2 of Kato are reproduced
`side-by side below, with Figure 1 on the left and Figure 2 on the right.
`
`
`
`
`
`
`Figure 1 of Kato
`
`Figure 2 of Kato
`
`
`Figures 1 and 2 of Kato illustrate a schematic configuration of noncontact
`power-transmission coil 200 that has spirally wound electric wire 201. At
`periphery 203 are end 205 of wire 201 and end 204 of a wire passing under
`or over the coil to inner periphery 202 of wire 201. Id. ¶ 8. One surface of
`planar coil 200 is attached by an adhesive sheet to a housing and the other
`surface of planar coil 200 is attached to magnetic sheet 210 using adhesive
`sheet 211. Id. Kato discloses that such a unit can be used as a noncontact
`power transmission coil on the power receiving side for charging a battery in
`a mobile telephone. Id. ¶ 48, Fig. 3.
`
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`
`Figures 17–20 illustrate an embodiment of Kato’s noncontact power
`transmission coil in which a planar coil of electric wire is adhered to a
`flexible printed circuit board. Ex. 1017 ¶ 80.
`3. Substitute claim 21
`For convenience, in this Preliminary Guidance we address the claim
`limitations of claim 21 using the paragraph designations Petitioner uses in its
`Opposition. We also include underlining and strike-outs Patent Owner used
`in substitute claim 21 to illustrate its proposed amendments to claim 6. We
`analyze the limitations of claim 21 below.
`21.0 A wireless power receiver
`Kato discloses a wireless power receiver. See Ex. 1017 ¶ 49 (referencing
`Figure 3 and stating “secondary power transmission coil 21 is provid[ing]
`as a noncontact power-transmission coil on the power-receiving side for
`charging the battery.”)
`21.1 an adhesive layer comprising a receiving space
`Petitioner’s annotated versions of Figures 17 and 19 of Kato are
`reproduced side-by-side below, with annotated Figure 17 on the left and
`annotated Figure 18 on the right.
`
`
`
`
`
`Ex. 1017, Fig. 17 Annotated
`
`Exhibit 1017, Fig. 19 Annotated
`
`
`Id. at 14. Figure 17 of Kato “is a schematic front view of a noncontact
`power-transmission coil having a flexible printed-circuit board with a
`shape substantially fit to a planar coil formed of a spirally-would electric
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`wire.” Ex. 1017, ¶ 33. Figure 19 of Kato “is a schematic cross sectional
`view of the noncontact power-transmission coil, where a magnetic layer is
`formed on both the flat surface and an outer periphery side portion of the
`planer coil shown in Fig. 17.” Id. ¶ 35.
`
`Petitioner’s annotations of Figure 17 and 19 are intended to illustrate the
`claimed adhesive layer and receiving space. Petitioner cites Kato as
`disclosing power transmission coil 21WD includes adhesion sheet 42, i.e.
`the claimed adhesive layer, that adheres coil 40 to flexible circuit board
`90. Id. at 15 (citing Ex. 1017 ¶ 81). Acknowledging that Kato does not
`use the term “receiving space,” Petitioner cites Kato as disclosing that
`adhesive layer 42 includes a gap corresponding to inner peripheral portion
`37, as shown by Petitioner’s annotations to accommodate or receive first
`coil contact portion 36. Id. at 13–14. Although the receiving space
`annotated by Petitioner has a different shape from the entire receiving
`space 130 shown in Figures 11 and 26 of the ’740 patent, substitute claim
`21 does not limit the shape of the receiving space. We agree with
`Petitioner that a person of ordinary skill would have recognized the gap in
`Kato’s adhesion sheet is a receiving space as claimed.
`21.2 a coil on the adhesive layer
`Kato’s coil 40 discloses the claimed coil on the adhesive layer. Opp. 14–
`15 (citing Ex. 1017 ¶ 81, Fig. 19).
`21.3 a first connection terminal connected to an outer end of the coil
`Kato’s coil contact portion 35 discloses the claimed first connection
`terminal at the outer end of the coil. See Opp. 15–16 (citing Ex. 1017 ¶
`82, Figs. 17, 19).
`21.4 the recitation “a second connection terminal connected to an
`inner end of the coil
`Kato’s coil contact portion 36 discloses the claimed second connection
`terminal connected an inner end of the coil. See Opp. at 16–17 (citing Ex.
`1017 ¶ 82, Figs. 17, 19).
`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
`Petitioner cites Kato’s flexible printed circuit board 90 as disclosing the
`claimed discrete connecting unit. Opp. 17. Petitioner’s annotated
`
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`Case IPR2022-00118
`Patent 10,804,740 B2
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`
`versions of Figures 18 and 19 of Kato are reproduced side-by-side below,
`with annotated Figure 18 on the left and annotated Figure 18 on the right.
`
`
`Ex. 1017, Fig 19 Annotated
`
`
`
`
`Opp. 18–19. Figure 18 of Figure 18 of Kato “is 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.” Ex. 1017 ¶ 34.
`Figure 19 “is a schematic cross-sectional view of the noncontact power-
`transmission coil, where a magnetic layer is formed on both the flat
`surface and an outer periphery side portion of the planer coil shown in
`Figure 17.” Id. ¶ 35. Petitioner’s annotations are intended to show the
`printed flexible circuit board 90 is the claimed separate unit that vertically
`overlaps the receiving space, as claimed. See Opp. 17–20.
`
`
`Petitioner notes that Kato’s circuit board 90 has first and second inner
`conductor patterns 33, 34 that are formed under its surface insulating layer
`to electrically connect to connections 31 and 32 of the printed circuit
`board. Id. at 18 (citing Ex. 1017 ¶ 82). According to Petitioner “[b]ecause
`the board’s inner conductor is exposed to the outside (at least at some
`point during manufacture), it may be considered separate—for 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 coil contact portion 36 (second connection terminal)”. Opp. 18–19
`(citing Ex. 1018, Supp. Phinney Decl., 19).
`
`Kato describes flexible printed circuit board 90 as a substrate in the form
`of an extremely thin sheet of base material. Ex. 1017 ¶ 82. The surface of
`flexible printed circuit board 90 is fit with an insulating layer that fits the
`shape of the coil, but does not insulate the area near contact portions 35
`and 36 located at the outer and inner peripheries of the coil, respectively.
`
`Ex. 1017, Fig. 18 Annotated
`
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`Case IPR2022-00118
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`
`Id. Kato further discloses that “wound electric wire 40 is stuck on the
`surface of the flexible printed circuit board 90 through an adhesion sheet
`42.” Id. ¶ 81. In view of Kato’s description, we agree with Petitioner that
`Kato discloses flexible printed circuit board 90 as a connecting unit that is
`separate from the coil.
`
`Kato further describes conductor patterns 33 and 34 under the surface
`insulating layer of flexible printed circuit board 90 that are used to
`electrically connect inner and outer coil contact portions 36 and 35 to
`external connection terminals 31 and 32, respectively. Id. ¶ 82–83 see
`also id. ¶ 66. Thus, we agree with Petitioner that Kato discloses the
`connecting unit is separate from the claimed first and second terminals.
`We also agree that, as shown in Petitioner’s annotated version of Figure 19
`above, Kato discloses the discrete connecting unit overlaps the receiving
`space.
`
`As to the limitation that the control unit is connected to a circuit separate
`from the connecting unit, Petitioner cites Kato’s description of connecting
`circuit board 90 of transmission coil 21WD to a separate charging control
`unit in a mobile phone that detects a voltage change in the secondary
`power-transmission coil. Opp. 19–20 (citing Ex. 1017 ¶ 55, Ex. 1018,
`Phinney Decl., 19–20)
`.
`Based on the disclosures discussed above, we agree with Petitioner that
`Kato teaches the subject matter recited in claim limitation 21.5.
`21.6 wherein the connecting unit comprises: a third connection
`terminal connected to the first connection terminal
`Kato’s flexible printed circuit board 90 (the claimed connecting unit) has
`inner conductor pattern 34 with an exposed end, (the claimed third
`connection terminal) that connects to coil contact portion 35 (the claimed
`first connection terminal). See Opp. 20–21 (citing Ex. 1017 ¶ 82, Figs 18,
`19). Kato teaches the subject matter recited in claim limitation 21.6.
`21.7 [wherein the connecting unit comprises:] a fourth connection
`terminal connected to the second connection terminal at the inner end
`of the coil.
`Kato’s flexible printed circuit board 90 (the claimed connecting unit) has
`inner conductor pattern 33 with an exposed end, (the claimed fourth
`connection terminal) that connects to coil contact portion 36 (the claimed
`second connection terminal) at the inner end of coil 40. See Opp.21–22
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`Case IPR2022-00118
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`(citing Ex. 1017 ¶ 82, Figs. 18, 19). Kato teaches the subject matter
`recited in claim limitation 21.7.
`21.8 [wherein the connecting unit comprises:] a wiring layer
`connected to the third connection terminal and the fourth terminal
`First and second inner conductor patterns 33, 34 on Kato’s flexible printed
`circuit board 90 (the claimed connecting unit) disclose the wiring layer
`recited in claim limitation 21.8. Id. (citing Ex. 1017 ¶¶ 79, 82, Ex. 1018,
`Phinney Decl., 23).
`Based on our analysis above, Petitioner has demonstrated a reasonable
`likelihood that substitute claim 21 is unpatentable.
`4. Substitute claim 22
`Substitute claim 22 amends 16 and recites limitations similar to those
`in substitute claim 21. Claim limitations 22.0, 22.1, 22.2, 22.6 and 22.8 are
`identical to claim limitations 21.0, 21.1, 21.2, 21.6 and 21.8, respectively.
`Claim limitation 22.3 and 22.4 differ from the recitations of claim 21.3 and
`21.4 in that claim limitations 22.3 and 22.4 recite the first and second
`connection terminals connect to one end and another end of the coil, while
`claim limitations 21.3 and 21.4 more specifically recite that the first and
`second terminals connect to outer and inner ends of the coil, respectively.
`Claim limitation 22.5 differs from claim limitation 21.5 in that claim
`limitation 22.5 recites that “the connecting unit [is] disposed corresponding
`to the receiving space,” while claim limitation 21.5 more specifically recites
`“the connecting unit overlapping the receiving space in a vertical direction
`perpendicular to the adhesive layer.” Claim limitation 22.7 differs from
`claim 21.7 in that claim limitation 22.7 recites the fourth connection terminal
`connected to the second connection terminal, while claim 21 more
`specifically recites that the connection is at the inner end of the coil.
`
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`The differences between substitute claims 21 and 22 are not
`significant from the perspective of assessing patentability. For the same
`reasons as those discussed above with respect to substitute claim 21, we find
`that Petitioner has demonstrated a reasonable likelihood that substitute claim
`22 is unpatentable.
`5. Substitute claim 23
`Substitute claim 23 amends claim 17 and depends from substitute
`claim 22.
`23.0 The wireless power receiver of claim 22
`
`23.1 the receiving space extends from inside the coil to outside the coil
`
`23.2 wherein the third connection terminal is connected to the first
`connection terminal horizontally within a boundary defining the
`receiving space
`
`23.3 wherein the fourth connection terminal is connected to the second
`connection terminal horizontally within the boundary defining the
`receiving space
`Petitioner’s further annotated version of Figure 19 of Kato is reproduced
`below.
`
`
`
`Opp. 26. As previously discussed, Figure 19 is a schematic cross-
`sectional view of Kato’s noncontact power-transmission coil, with a
`magnetic layer formed on both the flat surface and an outer periphery side
`portion of the planar coil shown in Figure 17. Ex. 1017 ¶ 35. As shown in
`annotated Figure 19 above, Petitioner maps the claimed receiving space on
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`Case IPR2022-00118
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`the adhesive layer (claim limitation 23.1) to (i) Kato’s inner gap
`corresponding to the inner peripheral portion 37 of the coil, (ii) Kato’s
`outer gap corresponding to the outer portion 38 of the coil, where an
`insulating layer is not formed, and (iii) a space on the top surface of
`adhesive layer 42 extending from the gap in the adhesive layer at the coil’s
`inner periphery to the gap in the adhesive layer at the coil’s outer
`periphery “where the coil is received and adhered.” Opp. 25–26 (citing
`Ex. 1017, Fig. 19; Ex. 1018, Supp. Phinney Decl., 30; see also Ex. 1017
`Figs. 17, 18).
`
`As to claim limitations 23.2, Petitioner notes that Kato teaches an exposed
`end of conductor pattern 34 (the claimed third connection terminal) is
`connected to coil contact portion 35 (the claimed first connection terminal
`horizontally within the boundary defined by the receiving space at the
`outer end of the coil. See Opp. 26–27.
`
`Similarly, as to claim limitation 23.3, Petitioner notes that Kato teaches
`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. Opp. 27–28.
`
`Claim limitation 23.1 recites that the adhesive layer comprises a receiving
`space that extends from the inside of the coil to the outside of the coil. As,
`claim 23 depends from claim 22, the connection unit is “disposed
`corresponding to the receiving space” of the adhesive layer. See claim
`limitation 22.5. Except for the recitation that the receiving space extends
`from the inside to the outside of the coil, claim 23 does not recite any
`further distinguishing features. For example, there are no limitations on
`the shape or form of the claimed receiving space and there are no
`limitations on how or what part of the connecting unit is disposed so as to
`correspond to the receiving space. Further the claims do not recite the
`shape of the receiving space, and do not recite what may be received in the
`receiving space. For example, claim 23 does not recite that the receiving
`space receives only the connecting unit, or that the shape of the receiving
`space be related to the shape of the connecting unit, or that the connecting
`unit be insertable into the receiving space, or that the receiving space be an
`empty space. Thus, we agree with Petitioner that Kato discloses claimed
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`receiving space extending from the inside to the outside of the coil (claim
`limitation 23.1)
`
`In addition, as we noted in our discussion of issues under 35 U.S.C. § 112,
`claim 23 is drawn to an assembled device, i.e. a wireless power receiver.
`When assembled, Kato’s adhesive layer 42 (the claimed adhesive layer) is
`placed over flexible printed circuit 90, such that inner conductors 33, 34 of
`printed circuit card 90 (the claimed connecting unit) occupy space between
`flexible printed circuit card 90 and a bottom surface of adhesive layer 42.
`Thus, when assembled into the claimed wireless power receiver, the
`placement of adhesive layer 42 results in a space that extends from the
`inner terminal to the outer terminal of the coil, thereby resulting in a
`receiving space in the adhesive layer that extends from inside the coil to
`outside the coil, as claimed. It would have been obvious to generally
`conform Kato’s adhesive layer to the insulating layer so as to include gaps
`to protect the wiring and allow connection of the terminals and coil while
`allowing for a large adhesion surface. See Ex. 1017 ¶¶ 80, 81.
`
`We further agree that Petitioner has demonstrated that Kato discloses the
`connections at the inner and outer ends of the coil in the area defined by
`the receiving space.
`In view of the above, Petitioner has demonstrated a reasonable
`likelihood that substitute claim 23 is unpatentable.
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`17
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`

`

`Case IPR2022-00118
`Patent 10,804,740 B2
`
`PETITIONER:
`Scott T. Jarratt
`Andrew S. Ehmke
`Calmann Clements
`HAYNES AND BOONE, LLP
`scott.jarratt.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`calmann.clements.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Brett Cooper
`BC LAW GROUP, P.C.
`bcooper@bc-lawgroup.com
`
`Antonio Papageorgiou
`LOMBARD & GELIEBTER LLP
`ap@lombardip.com
`
`James Milkey
`Reza Mirzaie
`RUSS AUGUST & KABAT
`jmilkey@raklaw.com
`mirzaie@raklaw.com
`
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`18
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