UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2022-00118
`
`Patent 10,804,740
`
`
`
`_______________________________________________________________
`
`REVISED PATENT OWNER’S CONTINGENT MOTION TO AMEND
`UNDER 37 C.F.R. § 42.121
`
`1
`
`
`
`

`

`
`
`Table of Contents
`
`
`
`
`
`
`
`
`
`
`
`I. INTRODUCTION ...................................................................................... 1
`
`II. LEGAL STANDARD – MOTION TO AMEND ..................................... 1
`
`a. Substitute Claims Do Not Add New Matter. .............................................. 2
`
`b. Substitute Claims Do Not Expand the Scope of the Claims of the ’740
`Patent..........................................................................................................11
`
`c. Patent Owner Proposes a Reasonable Number of Substitute Claims ......13
`
`d. The Proposed Substitute Claims Respond to the Instituted Grounds ......13
`
`III. CONCLUSION .....................................................................................16
`
`APPENDIX .................................................................................................17
`
`i
`
`

`

`Table of Authorities
`
`
`
`Cases
`
`Aqua Products Inc. v. Matal, 872 F.3d 1290, 1324 (Fed. Cir. 2017) (en banc) ........ 1
`
`Corning Optical Comm'n RF, LLC v. PPC Broadband, Inc., IPR2014-00441,
`Paper 19 at 3 (PTAB Oct. 30, 2014) ....................................................................13
`
`L&P Property Mgt. Co. v. Remacro Machinery & Tech. Co., Ltd., Case IPR2019-
`00255, p. 6 (PTAB Jun. 18, 2019) (Paper No. 15) ................................................. 2
`
`Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper 15., p.7
`(Feb. 25, 2019) ........................................................................................................ 3
`
`
`
`Statutes
`
`35 U.S.C. § 316(d)(3)........................................................................................ 13, 16
`
`37 C.F.R. § 42.121(a)(2)(i) ........................................................................................ 2
`
`37 C.F.R. § 42.121(a)(2)(ii) .......................................................................... 2, 11, 13
`
`37 C.F.R. § 42.121(a)(3) ......................................................................................2, 13
`
`37 C.F.R. § 42.121(d)(1) ............................................................................................ 1
`
`
`
`ii
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, Patent Owner
`
`submits this contingent Revised Motion to Amend, to substitute proposed claims
`
`21, 22, and 23 for original claims 6, 16, and 17, respectively, of U.S. Patent No.
`
`10,804,740 (“the ’740 Patent”). The Board has provided preliminary guidance
`
`(Paper 26, Nov. 23, 2023) pursuant to The Pilot Program Concerning Motion to
`
`Amend Practice and Procedures in Trial Proceedings Under the AIA. 86 Fed. Reg.
`
`51656 (Sept. 16, 2021); 84 Fed. Reg. 9497 (March 15, 2019).
`
`Patent Owner submits that this Revised Motion to Amend satisfies the
`
`requirements under 37 C.F. R. §42.121(a) and is responsive to the Board’s
`
`preliminary guidance, as explained below. Accordingly, should the Board find that
`
`claims 6, 16, and 17 of the ’740 Patent are unpatentable, Patent Owner requests
`
`that the Board grant this Motion and herewith substitute original claims 6, 16, and
`
`17 with proposed substitute claims 21, 22, and 23, respectively.
`
`II.
`
`LEGAL STANDARD – MOTION TO AMEND
`
`For a motion to amend, a Patent Owner need show that the requirements of
`
`“paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2), (a)(3),
`
`(b)(1), and (b)(2) of [37 C.F.R. § 42.121]” are met. 37 C.F.R. § 42.121(d)(1). The
`
`burden to show that the amended claims are unpatentable over the prior art rests
`
`solely on the Petitioner. 37 C.F.R. § 42.121(d)(2); Aqua Products Inc. v. Matal,
`
`872 F.3d 1290, 1324 (Fed. Cir. 2017) (en banc).
`
`
`
`1
`
`

`

`A Patent Owner must therefore only show that the 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 (37 C.F.R. § 42.121(a)(2)(i)). The Board may
`
`then consider whether the Petitioner has shown that the substitute claims at issue
`
`are unpatentable by a preponderance of the evidence. L&P Property Mgt. Co. v.
`
`Remacro Machinery & Tech. Co., Ltd., Case IPR2019-00255, p. 6 (PTAB Jun. 18,
`
`2019) (Paper No. 15).
`
`Patent Owner’s Motion to Amend satisfied these requirements for the
`
`following reasons:
`
`a. Substitute Claims Do Not Add New Matter.
`
`The ’740 Patent (U.S. Pat. Appl. No. 16/264,360) is a continuation of U.S.
`
`Pat. Appl. No. 15/430,173, filed on Feb. 10, 2017 (U.S. Pat. No. 10,277,071),
`
`which is a continuation of U.S. Pat. Appl. No. 15/360,425, filed on Nov. 23, 2016
`
`(U.S. Pat. No. 10,270,291), which is a continuation of U.S. Pat. Appl. No.
`
`13/663,012, filed on Oct. 29, 2012 (U.S. Pat. No. 9,806,565)1. (Ex. 1001 at p. 1-2).
`
`Patent Owner has proposed one substitute claim for each of original claims
`
`6, 16, and 17. Tables A-C below indicate the proposed amendments to claims 6,
`
`
`
`1 U.S. Pat. Appl. No. 13/663,012 further claims priority under 35 U.S.C. § 119 to
`
`Korean Pat. App. No. 10-2012-0029987, filed March 23, 2012, and Korean Pat.
`
`App. No. 10-2012-0079004, filed July 19, 2012. (Ex. 1001 at p. 1).
`
`2
`
`
`
`

`

`16, and 17, vis-à-vis substitute claims 21, 22, and 23, respectively, and where there
`
`is support for the substitute claims in the original disclosures of both (1) the ’740
`
`Patent (U.S. Pat. Appl. No. 16/264,360) (Ex. 2017) and (2) the earliest U.S. patent
`
`application in the ’740 Patent family (U.S. Pat. Appl. No. 13/663,012) (Ex. 2016),
`
`pursuant to 37 CFR § 42.121(b). Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-
`
`01129, 01130, Paper 15., p.7 (Feb. 25, 2019) (“New matter is any addition to the
`
`claims without support in the original disclosure.”) (citation omitted).
`
`
`Proposed Claim 21
`(Replacing Claim 6)2
`
`[6.0] 21. A wireless
`power receiver,
`comprising:
`
`[6.1] an adhesive
`layer comprising a
`receiving space;
`
`[6.2] a coil on the
`adhesive layer;
`
`
`Table A
`Exemplary Support in Original Disclosure of the (1) ’740
`Patent (16/264,360) (Ex. 2017), and (2) 13/663,012 (Ex.
`2016)
`“FIG. 26 is an exploded perspective view of the wireless
`power receiver 1000 according to still another
`embodiment, …” (Ex. 2017, p. 22, ln. 5-8; Ex. 2016, p.
`22, ln. 1-4).
`
`“Similar to the magnetic substrate 100, a receiving space
`having the shape identical to the shape of the connecting
`unit 300 may be formed in the first dual-side adhesive
`layer 710.” (Ex. 2017, p. 25, ln. 8-10; Ex. 2016, p. 25, ln.
`3-5); Fig. 26 (ref. no. 130, 710) (Ex. 2017, p. 50; Ex.
`2016, p. 49).
`
`“Referring to FIGS. 26 to 28, the wireless power receiver
`1000 may include a magnetic substrate 100, a coil unit
`200, a connecting unit 300, a short-range communication
`antenna 600, an adhesive layer 700, a first dual-side
`adhesive layer 710, a second dual-side adhesive layer
`720, a protective film 800 and a release paper layer 730.”
`
`
`
`2 Additions to the claims are shown in underline, deletions in strike-through.
`
`3
`
`
`
`

`

`
`Proposed Claim 21
`(Replacing Claim 6)2
`
`
`[6.3] a first
`connection terminal
`connected to an outer
`end of the coil;
`
`[6.4] a second
`connection terminal
`connected to an inner
`end of the coil; and
`
`[6.5] a discrete
`connecting unit, the
`connecting unit
`overlapping the
`receiving space and
`disposed in a vertical
`direction
`perpendicularly
`above or below [[to]]
`the adhesive layer
`
`Table A
`Exemplary Support in Original Disclosure of the (1) ’740
`Patent (16/264,360) (Ex. 2017), and (2) 13/663,012 (Ex.
`2016)
`(Ex. 2017, p. 22, ln. 13-16; Ex. 2016, p. 22, ln. 9-12); Fig.
`26 (ref. no. 230, 710) (Ex. 2017, p. 50; Ex. 2016, p. 49).
`
`“Similar to the coil unit 200 illustrated in FIG. 1, the coil
`unit 200 may include … a coil 230. (Ex. 2017, p. 23, ln.
`11-13; Ex. 2016, p. 23, ln. 7-9).
`
`“The coil 230/short-range communication antenna 600
`and the magnetic substrate 100 may be adhered with
`each other by the first dual-side adhesive layer 710.”
`(Ex. 2017, p. 28, ln. 4-5; Ex. 2016, p. 27, ln. 29-30); Fig.
`36 (ref. no. 230, 710) (Ex. 2017, p. 54; Ex. 2016, p. 53).
`
`“Similar to the coil unit 200 illustrated in FIG. 1, the coil
`unit 200 may include a first connection terminal 210, a
`second connection terminal 220 and a coil 230. (Ex. 2017,
`p. 23, ln. 11-13; Ex. 2016, p. 23, ln. 7-9); Fig. 26 (ref. no.
`210) (Ex. 2017, p. 50; Ex. 2016, p. 49).
`
`“Similar to the coil unit 200 illustrated in FIG. 1, the coil
`unit 200 may include a first connection terminal 210, a
`second connection terminal 220 and a coil 230. (Ex.
`2017, p. 23, ln. 11-13; Ex. 2016, p. 23, ln. 7-9); Fig. 26
`(ref. no. 220) (Ex. 2017, p. 50; Ex. 2016, p. 49).
`
`“A method of manufacturing a wireless power receiver for
`wirelessly receiving power according to one embodiment
`includes … connecting a connecting unit to be
`connected to an external circuit to a connection terminal
`… positioning the connecting unit in the receiving
`space.” (Ex. 2017, p. 2, ln. 26 - p. 3, ln. 2; Ex. 2016, p. 2,
`ln. 23-29).
`
`“According to one embodiment, the connecting unit 300
`may include a flexible printed circuit board (FPCB), a
`
`4
`
`
`
`

`

`
`Proposed Claim 21
`(Replacing Claim 6)2
`
`and connected to a
`circuit separate from
`the connecting unit,
`
`
`Table A
`Exemplary Support in Original Disclosure of the (1) ’740
`Patent (16/264,360) (Ex. 2017), and (2) 13/663,012 (Ex.
`2016)
`tape substrate (TS) or a lead frame (LF).” (Ex. 2017, p.
`24, ln. 11-12; Ex. 2016, p. 24, ln. 7-8).
`
`“The connecting unit 300 connects the wireless power
`receiving circuit (not shown) with the coil unit 200 ...”
`(Ex. 2017, p. 8, ln. 1-3; Ex. 2016, p. 7, ln. 26-28).
`
`“The wireless power receiver 1000 shown in FIG. 2 may
`be equipped in an electronic appliance, such as a
`terminal. The terminal may include a typical mobile
`phone, ….” (Ex. 2017, p. 8, ln. 22-28; Ex. 2016, p. 8, ln.
`16-23).
`
`“According to one embodiment, the connecting unit is
`disposed in the receiving space …” (Ex. 2017, p. 3, ln.
`16; Ex. 2016, p. 3, ln. 14).
`
`Fig. 26 (ref. no. 130, 300) (Ex. 2017, p. 50; Ex. 2016, p.
`49); Fig. 28 (300, 710) (showing the connecting unit 300
`overlapping receiving space 130 and vertically
`perpendicularly above or below the adhesive layer 710)
`(Ex. 2017, p. 51; Ex. 2016, p. 50).
`
`
`See also, Fig. 11 (ref. no. 130, 300) (Ex. 2017, p. 40; Ex.
`2016, p. 39); Fig. 36 (Ex. 2017, p. 54; Ex. 2016, p. 53).
`
`
`5
`
`
`
`

`

`
`Proposed Claim 21
`(Replacing Claim 6)2
`
`[6.6] wherein the
`connecting unit
`comprises: a circuit
`board;
`a third connection
`terminal on the
`circuit board
`connected to the first
`connection terminal;
`
`Table A
`Exemplary Support in Original Disclosure of the (1) ’740
`Patent (16/264,360) (Ex. 2017), and (2) 13/663,012 (Ex.
`2016)
`“According to one embodiment, the connecting unit 300
`may include a flexible printed circuit board (FPCB), a
`tape substrate (TS) or a lead frame (LF).” (Ex. 2017, p.
`24, ln. 11-12; Ex. 2016, p. 24, ln. 7-8).
`
`“The connecting unit 300 may include a first
`connection terminal 310 [i.e., the claimed third
`connection terminal], a second connection terminal 320, a
`third connection terminal 340 and a fourth connection
`terminal 350. The first connection terminal 310 of the
`connecting unit 300 is connected to the first connection
`terminal 210 of the coil unit 200 ….” (Ex. 2017, p. 23,
`ln. 26-30; Ex. 2016, p. 26, ln. 22-26); Fig. 26, 28 (ref. no.
`210, 310) (showing the claimed third connection terminal
`310 on the circuit board 300, the claimed third connection
`terminal connected to the first connection terminal 210 of
`the coil unit) (Ex. 2017, p. 50-51; Ex. 2016, p. 49-50).
`
`
`
`
`
`
`“The connecting unit 300 may include a first connection
`terminal 310, a second connection terminal 320 [i.e., the
`claimed fourth connection terminal], a third connection
`terminal 340 and a fourth connection terminal 350. The
`first connection terminal 310 of the connecting unit 300 is
`connected to the first connection terminal 210 of the coil
`
`[6.7] [wherein the
`connecting unit
`comprises:]
`a fourth connection
`terminal on the
`circuit board
`
`6
`
`
`
`

`

`
`Proposed Claim 21
`(Replacing Claim 6)2
`
`connected to the
`second connection
`terminal at the inner
`end of the coil; and
`
`Table A
`Exemplary Support in Original Disclosure of the (1) ’740
`Patent (16/264,360) (Ex. 2017), and (2) 13/663,012 (Ex.
`2016)
`unit 200, the second connection terminal 320 of the
`connecting unit 300 is connected to the second
`connection terminal 220 of the coil unit 200.” (Ex.
`2017, p. 23, ln. 26-30; Ex. 2016, p. 26, ln. 22-26).
`
`Fig. 26 (Ex. 2017, p. 50; Ex. 2016, p. 49), Fig. 28
`(showing the fourth connection terminal 320 on the circuit
`board 300, the fourth connection terminal connected to the
`second connection terminal 220) (Ex. 2017, p. 51; Ex.
`2016, p. 50).
`
`
`
`
`
`“The connecting unit 300 may include a first connection
`terminal 310, a second connection terminal 320 and a
`printed circuit board 330… The printed circuit board 330
`may include a wiring layer and the wiring layer may
`include a wireless power receiving circuit …” (Ex. 2017,
`p. 15, ln. 26 – p. 16, ln. 6; Ex. 2016, p. 15, ln. 26 – p. 16,
`ln. 4). See also, Figs. 3, 8-9, 16, 21, 28, 35 (ref. no. 300,
`310, 320, 330) (Ex. 2017, p. 36-53; Ex. 2016, p. 35-52).
`
`Fig. 11, 14, 26-28 (showing connecting unit separate from
`the coil 230); (Ex. 2017, p. 40, 42, 50, 51). Fig. 26 (ref.
`no. 130, 300) (Ex. 2017, p. 50; Ex. 2016, p. 49).
`
`[6.8] [wherein the
`connecting unit
`comprises:] a wiring
`layer on the circuit
`board connected to
`the third connection
`terminal and the
`fourth terminal,
`wherein the
`connecting unit is
`otherwise separate
`from the first
`connection terminal,
`the second
`
`7
`
`
`
`

`

`Table A
`Exemplary Support in Original Disclosure of the (1) ’740
`Patent (16/264,360) (Ex. 2017), and (2) 13/663,012 (Ex.
`2016)
`
`
`Proposed Claim 21
`(Replacing Claim 6)2
`
`connection terminal,
`and the coil.
`
`
`
`
`Proposed Claim 22
`(Replacing Claim 16)
`
`[16.0] 22. A wireless power
`receiver, comprising:
`
`[16.1] an adhesive layer
`comprising a receiving
`space;
`
`[16.2] a coil on the adhesive
`layer;
`
`[16.3] a first connection
`terminal connected to one
`end of the coil;
`
`[16.4] a second connection
`terminal connected to
`another end of the coil; and
`
`[16.5] a discrete connecting
`unit, the connecting unit
`disposed corresponding to
`the receiving space and
`connected to a circuit
`separate from the
`connecting unit,
`
`Table B
`Exemplary Support in Original Disclosure of the
`(1) ’740 Patent (16/264,360) (Ex. 2017), and (2)
`13/663,012 (Ex. 2016)
`See substitute claim 21, supra (Table A - Element
`6.0).
`
`See substitute claim 21, supra (Table A - Element
`6.1).
`
`See substitute claim 21, supra (Table A - Element
`6.2).
`
`
`See substitute claim 21, supra (Table A - Element
`6.3).
`
`See substitute claim 21, supra (Table A - Element
`6.4).
`
`See substitute claim 21, supra (Table A - Element
`6.5).
`
`
`
`8
`
`
`
`

`

`Table B
`Exemplary Support in Original Disclosure of the
`(1) ’740 Patent (16/264,360) (Ex. 2017), and (2)
`13/663,012 (Ex. 2016)
`
`See substitute claim 21, supra (Table A - Element
`6.6).
`
`See substitute claim 21, supra (Table A - Element
`6.7).
`
`
`See substitute claim 21, supra (Table A - Element
`6.8).
`
`
`Proposed Claim 22
`(Replacing Claim 16)
`
`
`[16.6] wherein the
`connecting unit comprises:
`a circuit board;
`a third connection terminal
`on the circuit board
`connected to the first
`connection terminal;
`
`[16.7] [wherein the
`connecting unit comprises:]
`a fourth connection terminal
`on the circuit board
`connected to the second
`connection terminal; and
`
`[16.8] [wherein the
`connecting unit comprises:]
`a wiring layer on the circuit
`board connected to the third
`connection terminal and the
`fourth terminal,
`wherein the connecting unit
`is otherwise separate from
`the first connection
`terminal, the second
`connection terminal, and the
`coil.
`
`
`
`
`
`
`9
`
`
`
`

`

`
`Proposed Claim 23
`(Replacing Claim 17)
`
`[17.0] 23. The wireless
`power receiver of claim 16
`22:
`
`[17.1] wherein the
`receiving space extends
`from inside the coil to
`outside the coil,
`
`
`Table C
`Exemplary Support in Original Disclosure of the (1)
`’740 Patent (16/264,360) (Ex. 2017), and (2)
`13/663,012 (Ex. 2016)
`See substitute claim 21, supra (Table A - Elements
`6.0-6.8); substitute claim 22, supra (Table B -
`Elements 16.0-16.8).
`
`Fig. 26 (ref. no. 130, showing receiving space
`defined by the highlighted boundary), (Ex. 2017, p.
`50; Ex. 2016, p. 49). Fig. 27 (ref. no. 320 (at inside
`of coil), 310 (at outside of coil)). (Ex. 2017, p. 51;
`Ex. 2016, p. 50).
`
`
`[17.2] wherein the third
`connection terminal is
`connected to the first
`connection terminal
`horizontally within a
`boundary defining the
`receiving space, and
`
`[17.3] wherein the fourth
`connection terminal is
`connected to the second
`
`
`
`Fig. 26 (ref. no. 130), (Ex. 2017, p. 50; Ex. 2016, p.
`49). Fig. 27 (showing the third and fourth connection
`terminals 310, 320 horizontally (when viewed in
`from the top) within the boundary defining the
`receiving space), (Ex. 2017, p. 51; Ex. 2016, p. 50).
`Fig. 28 (showing connection terminals 210, 310 and
`connection terminals 220, 320 interconnected within
`the boundary of the receiving space). (Ex. 2017, p.
`51; Ex. 2016, p. 50).
`
`
`See substitute claim 23, supra (Table C - Element
`17.2).
`
`10
`
`
`
`

`

`Table C
`Exemplary Support in Original Disclosure of the (1)
`’740 Patent (16/264,360) (Ex. 2017), and (2)
`13/663,012 (Ex. 2016)
`
`“According to one embodiment, the connecting unit
`300 may include a flexible printed circuit board
`(FPCB), a tape substrate (TS) or a lead frame (LF).”
`(Ex. 2017, p. 24, ln. 11-12; Ex. 2016, p. 24, ln. 7-8).
`
`Fig. 26-28 (showing the adhesive layer 710 having
`upper and lower surfaces (Fig. 28) and a receiving
`space 130 that extends continuously between such
`surfaces from the inside of the coil to the outside of
`the coil (Fig. 26-27)). (Ex. 2017, p. 50 – 51; Ex.
`2016, p. 49 – 50).
`
`
`
`Proposed Claim 23
`(Replacing Claim 17)
`
`connection terminal
`horizontally within the
`boundary defining the
`receiving space;
`wherein the connecting
`unit circuit board
`comprises at least one of a
`flexible circuit board and a
`tape substrate,
`wherein the adhesive
`layer has an upper surface
`and a lower surface
`opposite the upper surface,
`and
`wherein the receiving
`space extends between the
`upper surface and lower
`surface of the adhesive
`layer continually from
`inside the coil to outside
`the coil.
`
`The proposed substitute claims are supported by the original disclosure and
`
`therefore do not add new matter. 37 C.F.R. § 42.121(a)(2)(ii).
`
`b. Substitute Claims Do Not Expand the Scope of the Claims of the
`’740 Patent
`
`
`
`11
`
`
`
`

`

`As shown in Tables A-B and Appendix A, substitute independent claims 21
`
`and 22 further limit original claims 6 and 16, respectively, by adding thereto the
`
`requirement that the connecting unit is “discrete” and “the connecting unit
`
`overlapping
`
`the
`
`receiving space and disposed
`
`in a vertical direction
`
`perpendicularly above or below the adhesive layer”. Additionally, the connecting
`
`unit is “connected to a circuit separate from the connecting unit.” Claims 21 and 22
`
`also recite that the connecting unit comprises “a circuit board” and that the third,
`
`fourth, and wiring layer are on the circuit board and Claim 21 recites that the
`
`“fourth connection terminal [is] connected to the second connection terminal at the
`
`inner end of the coil”. Finally, claims 21 and 22 add that “the connecting unit is
`
`otherwise separate from the first connection terminal, the second connection
`
`terminal, and the coil.” That is, except for the third-first and fourth-second
`
`connections, the connection terminal is separate from the coil.
`
`As shown in Table C and Appendix A, substitute claim 23 is dependent on
`
`and further limits substitute claim 22 by reciting further that in the claimed
`
`wireless power receiver “the third connection terminal is connected to the first
`
`connection terminal horizontally within a boundary defining the receiving space”
`
`and “the fourth connection terminal is connected to the second connection terminal
`
`horizontally within the boundary defining the receiving space” and further that “the
`
`connecting unit circuit board comprises at least one of a flexible circuit board and a
`
`tape substrate,…the adhesive layer has an upper surface and a lower surface
`
`opposite the upper surface, and … the receiving space extends between the upper
`
`12
`
`
`
`

`

`surface and lower surface of the adhesive layer continually from inside the coil to
`
`outside the coil.”
`
`The proposed substitute claims 21, 22, and 23 retain essentially all
`
`limitations of their corresponding original claims and therefore do not expand the
`
`scope of original claims 6, 16, and 17, respectively. 37 C.F.R. § 42.121(a)(2)(ii).
`
`c. Patent Owner Proposes a Reasonable Number of Substitute Claims
`
` “The presumption is that only one substitute claim would be needed to
`
`replace each challenged claim.” 37 C.F.R. § 42.121(a)(3); Corning Optical
`
`Comm'n RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 at 3 (PTAB
`
`Oct. 30, 2014). As shown in Tables A-C above and Appendix A hereto, Patent
`
`Owner proposes only one substitute claim for each of original claims 6, 16, and 17.
`
`Accordingly, Patent Owner “propose[s] a reasonable number of substitute claims.”
`
`37 C.F.R. § 42.121(a)(3).
`
`d. The Proposed Substitute Claims Respond to the Instituted Grounds,
`Petitioner’s Opposition, and Preliminary Guidance.
`
`Petitioner asserted a single ground of invalidity, i.e., that that claims 6, 7, 16,
`
`17, 19, 20 of the ’740 Patent are obvious under 35 U.S.C. § 103(a) over
`
`2009/0021212 to Hasegawa et al. (“Hasegawa,” Ex.1005). (Pet. At 15). Claims 6
`
`and 16 are independent. Claim 7 is dependent on claim 6 and claims 17, 19, and 20
`
`are dependent on claim 16. (Ex. 1001, 19:61-20:21; 21:5-22:18).
`
`Petitioner argued in this regard that Hasegawa “teaches that its coil unit
`
`includes several elements that connect the power-receiving planar coil to the
`
`13
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`

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`portable telephone to charge it, including lead lines 34 and 35 (first and second
`
`connection terminals), coil connection pads 103, and the wiring pattern of substrate
`
`100 (together the connecting unit). (Pet. at 29).
`
`In response, Patent Owner noted “that the claims require a separate and
`
`discrete connecting unit that has connection terminals that connect to the
`
`connection terminals of the coil.” (Prelim. Resp at 11). Patent Owner further noted
`
`that “Hasegawa does not disclose a connecting unit [as claimed]—it merely
`
`discloses that the coil connects directly to the substrate, which itself contains
`
`circuit elements (such as a thermistor).” (Id.) In other words, the claimed
`
`connecting unit is a discrete assembly interposed between a separate coil assembly
`
`and circuit elements, unlike Hasegawa. Patent Owner proposed substitute claims
`
`21-23 add limitations that required this interpretation regarding the scope of the
`
`claims of the ’740 Patent. (See MTA at 15-16). As such, Hasegawa alone or in
`
`combination with any of the other references cited by Petitioner fails to disclose all
`
`the elements of proposed independent claims 21 and 22, and these claims are
`
`therefore patentable over Hasegawa, as explained in Patent Owner’s Motion to
`
`Amend.
`
`Petitioner did not oppose Patent Owner’s contention in this regard. Instead,
`
`Petitioner argues that substitute claims 21-23 are unpatentable under 35 U.S.C. 103
`
`over US 2008/0164840 to Kato et al. (“Kao”) (Opp. to MTA at p. 10), suggesting
`
`that Patent Owner improperly withheld Kato from the Board, even though Kato
`
`appears on the face of the ’740 Patent because it was cited in an IDS and therefore
`
`considered by the USPTO before granting the ’740 Patent (see Prel. Guid. to MTA
`
`14
`
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`

`

`at p. 8). Even so, this did not stop Petitioner from alleging that proposed claims 21-
`
`23, which are narrower in scope than the original claims that were allowed by the
`
`USPTO over Kato, are obvious over Kato alone. The rational to support
`
`Petitioner’s contention is simply incredible.
`
`Regardless, proposed claims 21-23 herewith further limit original claims 6,
`
`16, and 17 to require that the connecting unit comprises “a circuit board” and that
`
`the third, fourth, and wiring layer are on the circuit board and “the connecting unit
`
`is otherwise separate from the first connection terminal, the second connection
`
`terminal, and the coil.” That is, the connecting unit (wiring layer and circuit board)
`
`is separate from the coil except at the third-first and fourth-second connections.
`
`The references relied on by Petitioner all equate a conductor, which is adhered to
`
`the coil via the adhesive layer, with the claimed connecting unit. (See, e.g., Opp. to
`
`MTA at p. 17-18 (equating board 90 with the discrete connecting unit)). For
`
`instance, Kato at Fig. 19 depicts the coil 38 adhered to the substrate 90 via the
`
`adhesive layer 42. (Kato at [0081] (“Referring to FIGS. 17 to 20, the noncontact
`
`power-transmission coil 21WD of the present embodiment is formed as follows.
`
`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 through an adhesion sheet
`
`42.”) (emphasis added). As such, Kato does not disclose or suggest a connecting
`
`unit (circuit board and wiring layer) that is “discrete” and “separate from the coil”
`
`except at the claimed connections, as required by proposed claims 21-22.
`
`Substitute claim 23 further limits substitute claim 22 by reciting further that
`
`“the connecting unit circuit board comprises at least one of a flexible circuit board
`
`15
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`

`

`and a tape substrate,…the adhesive layer has an upper surface and a lower
`
`surface opposite the upper surface, and … the receiving space extends between the
`
`upper surface and lower surface of the adhesive layer continually from inside the
`
`coil to outside the coil.” Kato’s “receiving space”, as interpreted by Petitioner,
`
`does not extend continually between the surfaces of the adhesive layers. Rather,
`
`the inner periphery portion 37 is simply a hole that does not extend laterally in any
`
`way to meet the limitations of claim 23.
`
`The proposed substitute claims 21-23 therefore respond to the instituted
`
`ground, as well as Petitioner’s Opposition to Patent Owner’s Motion to Amend and
`
`the Board’s guidance.
`
`e. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant this contingent Motion to Amend should claims 6, 16, and 17 the ’740 Patent
`
`be found unpatentable.
`
`Dated: December 8, 2022
`
`Respectfully submitted,
`
`
`
`/Antonio Papageorgiou/
`Antonio Papageorgiou
` Reg. No. 53,431
`
`LOMBARD & GELIEBTER LLP
`230 Park Avenue, 4th Floor West
`New York, NY 10169
`(212) 520-1172 (telephone)
`(646) 349-5567 (facsimile)
`ap@lombardip.com
`
`SCRAMOGE TECHNOLOGY LTD.
`
`16
`
`
`
`

`

`APPENDIX
`
`CLAIM LISTING
`
`21.
`
`(Proposed substitute for claim 6) A wireless power receiver,
`
`comprising:
`
`an adhesive layer comprising a receiving space;
`
`a coil on the adhesive layer;
`
`a first connection terminal connected to an outer end of the coil;
`
`a second connection terminal connected to an inner end of the coil; and
`
`a discrete connecting unit, the connecting unit overlapping the receiving
`
`space and disposed in a vertical direction perpendicularly above or below [[to]] the
`
`adhesive layer and connected to a circuit separate from the connecting unit,
`
`wherein the connecting unit comprises:
`
`a circuit board;
`
`a third connection terminal on the circuit board connected to the first
`
`connection terminal;
`
`a fourth connection terminal on the circuit board connected to the second
`
`connection terminal at the inner end of the coil; and
`
`a wiring layer on the circuit board connected to the third connection terminal
`
`and the fourth terminal, wherein the connecting unit is otherwise separate from the
`
`first connection terminal, the second connection terminal, and the coil.
`
`
`
`
`
`17
`
`

`

`22.
`
`(Proposed substitute for claim 16) A wireless power receiver,
`
`comprising:
`
`an adhesive layer comprising a receiving space;
`
`a coil on the adhesive layer;
`
`a first connection terminal connected to one end of the coil;
`
`a second connection terminal connected to another end of the coil; and
`
`a discrete connecting unit, the connecting unit disposed corresponding to the
`
`receiving space and connected to a circuit separate from the connecting unit,
`
`wherein the connecting unit comprises:
`
`a circuit board;
`
`a third connection terminal on the circuit board connected to the first
`
`connection terminal;
`
`a fourth connection terminal on the circuit board connected to the second
`
`connection terminal; and
`
`a wiring layer on the circuit board connected to the third connection terminal
`
`and the fourth terminal, wherein the connecting unit is otherwise separate from the
`
`first connection terminal, the second connection terminal, and the coil.
`
`
`
`23.
`
`(Proposed substitute for claim 17) The wireless power receiver of
`
`claim 16 22, wherein the receiving space extends from inside the coil to outside the
`
`coil,
`
`wherein the third connection terminal is connected to the first connection
`
`terminal horizontally within a boundary defining the receiving space, and wherein
`
`18
`
`
`
`

`

`the fourth connection terminal is connected to the second connection terminal
`
`horizontally within the boundary defining the receiving space,
`
`wherein the connecting unit circuit board comprises at least one of a flexible
`
`circuit board and a tape substrate,
`
`wherein the adhesive layer has an upper surface and a lower surface opposite
`
`the upper surface, and
`
`wherein the receiving space extends between the upper surface and lower
`
`surface of the adhesive layer continually from inside the coil to outside the coil.
`
`
`
`19
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`
`that on August 4, 2022, a copy of this CONTINGENT REVISED MOTION TO
`
`AMEND UNDER 37 C.F.R. § 42.121 was served by filing this document through
`
`the Patent Trial and Appeal Board End to End system, as well as delivering a copy
`
`via electronic mail upon the following attorneys of record for the Petitioner:
`
`
`
`Scott T. Jarratt (Reg No. 70,297)
`scott.jarratt.ipr@haynesboone.com
`Andrew S. Ehmke (Reg No. 50,271)
`andy.ehmke.ipr@haynesboone.com
`Calmann J. Clements (Reg No. 66,910)
`calmann.clements.ipr@haynesboone.com
`
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Dated: December 8, 2022
`
`Respectfully submitted,
`
`
`
`
`
`/Antonio Papageorgiou/
`Antonio Papageorgiou
` Reg. No. 53,431
`
`LOMBARD & GELIEBTER LLP
`230 Park Avenue, 4th Floor West
`New York, NY 10169
`(212) 520-1172 (telephone)
`(646) 349-5567 (facsimile)
`ap@lombardip.com
`
`Attorney for SCRAMOGE
`TECHNOLOGY LTD.
`
`20
`
`
`
`