`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00120
`Patent 9,997,962
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`Table of Contents
`
`B.
`
`C.
`
`D.
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. THE PATENTED TECHNOLOGY .................................................................. 2
`A.
`The ’962 Patent Was Invented by LG Innotek .................................... 2
`B. Overview of the ’962 Patent ................................................................ 2
`C.
`Challenged ’962 Patent Independent Claims ....................................... 5
`III. OVERVIEW OF ASSERTED REFERENCES ................................................. 6
`Suzuki (Ex. 1005)—the primary reference applied in Ground 1—does
`A.
`not disclose the claimed invention ....................................................... 6
`Lee (Ex. 1006)—a secondary reference—does not compensate for the
`deficiencies of Suzuki ........................................................................ 11
`Park (Ex. 1007)—a tertiary reference—does not compensate for the
`failures of Suzuki or Lee .................................................................... 11
`Sawa (Ex. 1008)—a tertiary reference—does not compensate for the
`failures of Suzuki or Lee .................................................................... 11
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE LIKELIHOOD
`OF INVALIDITY OF THE CHALLENGED CLAIMS ................................. 12
`A. Ground 1: Claims 1, 18, and 19 are not rendered obvious over Suzuki
`and Lee ............................................................................................... 12
`Suzuki does not render obvious [1.2 and 18.2] “a soft magnetic
`1.
`layer comprising a first magnetic sheet disposed on the
`substrate and a second magnetic sheet disposed on the first
`magnetic sheet.” ....................................................................... 13
`Suzuki does not render obvious [1.4 and 18.4] “an adhesive
`layer formed between the second magnetic sheet and the
`receiving coil.” ......................................................................... 19
`Petitioner’s combination of Suzuki and Lee does not render
`obvious [1.6 and 18.6] “wherein a height of a highest position
`
`2.
`
`3.
`
`
`
`i
`
`

`

`4.
`
`B.
`
`C.
`
`of the second magnetic sheet from the substrate is higher than a
`height of a lowest position of the receiving coil from the
`substrate.” ................................................................................ 21
`Petitioner’s arguments regarding claim 18 and 19 fail for the
`reasons discussed above. ......................................................... 27
`B. Ground 2: Claims 2, 3, 4, and 7 Are Not Rendered Obvious by the
`Combination of Suzuki, Lee, and Sawa. ............................................ 27
`C. Ground 3: Claim 8 Is Not Rendered Obvious by the Combination of
`Suzuki, Lee, Sawa, and Park. ............................................................. 27
`V. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ...................... 28
`Factor 1: The district court has not granted a stay, nor is there any
`A.
`evidence that a stay will be granted. .................................................. 29
`Factor 2: The district court trial will occur before the deadline for a
`final decision in this proceeding. ....................................................... 31
`Factor 3: By the time an institution decision is reached, the parties and
`the court will have completed claim construction and discovery will
`be underway. ...................................................................................... 33
`Factor 4: There is complete overlap between this IPR and the district
`court proceedings. .............................................................................. 35
`Factor 5: Petitioner is a defendant in the district court litigation. ...... 36
`E.
`Factor 6: The petition is without merit and unlikely to succeed. ....... 37
`F.
`VI. CONCLUSION ................................................................................................ 37
`
`
`D.
`
`
`
`
`
`
`
`ii
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Apple Inc.,
`Case No. 6:21-cv-00579-ADA, Dkt. No. 35 (W.D. Tex. Nov. 11,
`2021)
`
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 33 (W.D. Tex. Sept. 28, 2021)
`
`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`
`Text Order Denying Motion to Stay Pending IPR, Solas OLED
`Ltd. v. Google, Inc., Case No. 6:19-cv-00515-ADA (W.D. Tex.
`June 23, 2020)
`
`Order Denying Motion to Stay Pending IPR, Multimedia Content
`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-
`00207-ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019)
`
`Scheduling Order, Correct Transmission LLC v. Adtran, Inc.,
`Case No. 6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10,
`2020)
`
`Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case
`No. 6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`
`Standing Order Governing Proceedings in Patent Cases, Judge
`Alan D. Albright
`
`Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case
`No. 6:19-cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30, 2020)
`
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Apple Inc. in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`
`
`
`iii
`
`

`

`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`Defendant Apple Inc.’s First Amended Preliminary Invalidity
`Contentions in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`
`Android Authority article: LG Innotek’s Latest wireless charger is
`Three times faster
`
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 28 (W.D. Tex. Nov. 15,
`2021)
`
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-00579-ADA
`(W.D. Tex.)
`
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 56 (W.D. Tex. Feb. 11, 2022)
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`I.
`
`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
`
`preliminary response to Petitioner Apple Inc.’s (“Petitioner”) petition for inter
`
`partes review of U.S. Patent No. 9,997,962 (“’962 patent”).
`
`First, the Board should deny institution because Petitioner fails to establish a
`
`reasonable likelihood of invalidity for the independent claims. The independent
`
`claims recite “a soft magnetic layer comprising a first magnetic sheet and a second
`
`magnetic sheet disposed on the first magnetic sheet.” For this limitation, the Petition
`
`relies only on Suzuki and does not rely on the secondary reference Lee. However,
`
`Suzuki’s cited “First Embodiment” does not disclose “a first magnetic sheet” and a
`
`“second magnetic sheet.” To that end, the Petition improperly attempts to combine
`
`the teachings of Suzuki’s “First Embodiment” with its “Sixth Embodiment” without
`
`providing any motivation to make the combination or a reasonable expectation that
`
`such a combination would be successful. And Suzuki’s embodiments have
`
`substantial differences such that they are not interchangeable. Because Petitioner
`
`fails to provide sufficient support for its combination of these entirely separate
`
`embodiments, it cannot establish a reasonable likelihood of invalidity.
`
`Second, the Board should exercise its discretion to deny the petition in light
`
`of a parallel district court case involving the same patent, the same claims, the same
`
`prior art, and the same parties. By the time the Board reaches an institution decision
`
`
`
`1
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`in this proceeding, the parties and the district court will have already invested
`
`significant time and resources in the case—claim construction will nearly be
`
`completed and discovery will be underway. The district court trial is also on track to
`
`take place months before the deadline for a final written decision. Moreover, the
`
`petition fails on the merits as described above. Thus, all six Fintiv factors strongly
`
`favor a discretionary denial. But even if the Board concludes that a discretionary
`
`denial is not appropriate, Petitioner has not established a reasonable likelihood of
`
`invalidity under any ground or challenged claim.
`
`Accordingly, the Board should deny institution.
`
`II. THE PATENTED TECHNOLOGY
`
`A. The ’962 Patent Was Invented by LG Innotek
`
`The ’962 patent (Ex. 1001) names 3 Korean inventors who were employed by
`
`LG Innotek Co. Ltd (“LG Innotek”). LG Innotek, a global materials and components
`
`manufacturer, developed wireless power devices and components for products such
`
`as smartphones. See, e.g., Ex. 2012. Patent Owner acquired the ’962 patent from LG
`
`Innotek in 2021.
`
`B. Overview of the ’962 Patent
`
`The ’962 patent is entitled “Receiving Antenna and Wireless Power Receiving
`
`Device Including the Same.” The ’962 patent relates to wireless charging and is
`
`
`
`2
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`directed to a receiving antenna for wireless charging and a wireless power receiving
`
`device including the same. See, e.g., Ex. 1001, Abstract, 1:17–20. The disclosed
`
`invention is aimed at minimizing energy loss between the wireless power
`
`transmission device and the wireless power receiving device to increase power
`
`transceiving efficiency. Id.
`
`The ’962 patent teaches a receiving antenna of a wireless power receiving
`
`device for wirelessly charging electric power and describes a plurality of soft
`
`magnetic layers on which a receiving coil may be formed. Id. For example, one
`
`embodiment includes a substrate, a soft magnetic layer stacked on the substrate, and
`
`a receiving coil configured to receive electromagnetic energy emitted from a
`
`wireless power transmission device, wound in parallel with a plane of the soft
`
`magnetic layer, and formed inside of the soft magnetic layer, and an insulating layer
`
`formed between the soft magnetic layer and the receiving coil. Id.; see also id., cl.
`
`1.
`
`In one embodiment, the soft magnetic layer “focuses the electromagnetic
`
`energy emitted from the transmitting antenna 120 of the wireless power transmission
`
`device 100.” Id. at 5:16–18. The soft magnetic layer may include:
`
`a metallic material or a ferrite material, and may be implemented in various
`forms of a pellet, a plate, a ribbon, foil, a film, etc. In an example embodiment,
`the soft magnetic layer 210 may be a form in which a plurality of sheets
`including a single metal or an alloy powder having soft magnetism
`(hereinafter, referred to as a soft magnetic metallic powder) and a polymer
`
`
`
`3
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`resin are stacked. In another example embodiment, the soft magnetic layer
`210 may be an alloy ribbon, a stacked ribbon, foil, or a film including at least
`one of Fe, Co, and Ni. In still another example embodiment, the soft magnetic
`layer 210 may be a composite including 90 wt % or more of FeSiCr flakes
`and 10 wt % or less of a polymer resin. In yet another example embodiment,
`the soft magnetic layer 210 may be a sheet, a ribbon, foil, or a film including
`nickel-zinc (Ni—Zn) ferrite.
`
`Id. at 5:19–34.
`
`The soft magnetic material may be metallic and conduct current. An adhesive
`
`layer may be formed between the plurality of soft magnetic layers and the receiving
`
`coil. When forming the receiving coil 520 into the soft magnetic layer 500, the
`
`adhesive layer(s) may break down and cause “an electrical short between a metal in
`
`the soft magnetic layer 500 and the receiving coil 520.” Id. at 6:47–52. An electrical
`
`short between the receiving coil would reduce the received power and would also
`
`lead to other negative consequences, such as, for example, overheating, damage to
`
`magnetic layers, and unsafe currents through the receiving coil and/or soft magnetic
`
`layer(s).
`
`To prevent an electrical short, “the adhesive layer 510 may have a double-
`
`sided structure containing an insulating layer” and in one embodiment “the adhesive
`
`layer 510 may include a first adhesive layer 512, an insulating layer 514 formed the
`
`first adhesive layer 512, and a second adhesive layer 516 formed on the insulating
`
`layer 514.” Id. at 6:37–45. “Here, the insulating layer 514 may include, for example,
`
`a polyethylene terephthalate (PET) material.” Id. at 6:46–47.
`
`
`
`4
`
`

`

`
`
`Id., Fig. 6.
`
`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`The ’962 patent teaches that when the receiving coil is formed inside of a
`
`plurality of soft magnetic layers, which can be metallic and conducting, a structure
`
`with two adhesive layers formed on either side of an insulating layer can be used to
`
`electrically isolate the receiving coil from the conducting soft magnetic layer(s), thus
`
`preventing reduced performance, hazardous conditions, and damage. Furthermore,
`
`the structure 510 of the claimed invention overcomes the problem of the adhesive
`
`layer breaking down when forming the receiving coil in the soft magnetic layer(s).
`
`Id. at 6:46-53.
`
`C. Challenged ’962 Patent Independent Claims
`
`The challenged independent claims are Claims 1 and 18, which are repeated
`
`below (Patent Owner has added emphasis to the claim limitations that are the focus
`
`of this Preliminary Patent Owner’s Response):
`
`
`
`5
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`1. A wireless power receiving antenna comprising:
`a substrate;
`a soft magnetic layer comprising a first magnetic sheet disposed on the
`substrate and a second magnetic sheet disposed on the first magnetic sheet;
`a receiving coil disposed on the second magnetic sheet; and
`an adhesive layer formed between the second magnetic sheet and the
`receiving coil,
`wherein the adhesive layer includes a first adhesive layer in contact with the
`second magnetic sheet, a second adhesive layer in contact with the receiving coil,
`and an insulating layer disposed between the first adhesive layer and the second
`adhesive layer, and
`wherein a height of a highest position of the second magnetic sheet from
`the substrate is higher than a height of a lowest position of the receiving coil
`from the substrate.
`
`18. A wireless power receiving apparatus comprising a receiving circuit and
`a wireless power receiving antenna, the wireless power receiving antenna
`comprising:
`a substrate;
`a soft magnetic layer comprising a first magnetic sheet disposed on the
`substrate and a second magnetic sheet disposed on the first magnetic sheet;
`a receiving coil disposed on the second magnetic sheet, and
`an adhesive layer formed between the second magnetic sheet and the
`receiving coil;
`wherein the adhesive layer includes a first adhesive layer in contact with the
`second magnetic sheet, a second adhesive layer in contact with the receiving coil,
`and an insulating layer disposed between the first adhesive layer and the second
`adhesive layer, and
`wherein a height of a highest position of the second magnetic sheet from
`the substrate is higher than a height of a lowest position of the receiving coil
`from the substrate.
`
`III. OVERVIEW OF ASSERTED REFERENCES
`
`A.
`
`Suzuki (Ex. 1005)—the primary reference applied in Ground 1—
`
`does not disclose the claimed invention
`
`
`
`6
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`U.S. Patent No. 8,421,574 (“Suzuki”) issued on April 16, 2013. Suzuki
`
`discloses a secondary side contactless power transmission apparatus, which includes
`
`a holding member, a secondary coil, a magnetic layer, a shield layer for shielding
`
`electromagnetic noise, and a heat insulation layer. Ex. 1005, Abstract. Importantly,
`
`Suzuki separately discloses several different embodiments.
`
`Suzuki’s “First Embodiment” of a secondary side contactless apparatus is
`
`shown in Fig. 1A:
`
`The secondary side contactless apparatus contains a coil block 17, depicted in
`
`
`
`Figure 3:
`
`
`
`7
`
`

`

`
`
`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`The coil block contains a holding member 152, a secondary coil 170, a
`
`magnetic layer 171, a shielding layer for electromagnetic noise 172, and a heat
`
`insulation layer 173. Id. at 6:29–46. The magnetic layer is “laminated on at least one
`
`side (an upper surface) of the secondary coil 170.” Id. at 6:34–35. The magnetic
`
`layer may be made of “nickel ferrite” (id. at 6:66) or “may be a sheet made from
`
`manganese ferrite, amorphous magnetic alloy, Fe—Ni alloy (Permalloy),
`
`nanocrystalline magnetic material or the like.” Id. at 7:4–8. It may also be “magnetic
`
`coating, or a magnetic mixture of resin and magnetic filler or magnetic powder, each
`
`of which contains nickel ferrite, manganese ferrite, amorphous magnetic alloy, Fe—
`
`Ni alloy, nanocrystalline magnetic material or the like.” Id. at 7:8–12.
`
`
`
`8
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`Suzuki teaches that “it is possible to enhance the power transmission
`
`efficiency from the primary side to the secondary side” by increasing the thickness
`
`of the magnetic layer. Id. at 7:23–24. For example, Figure 5 shows three thicknesses
`
`of the magnetic layer 171, “A,” “B,” and “C,” which are 0.15 mm, 0.10 mm and 0.05
`
`mm, respectively. Id. at 7:19–21.
`
`Suzuki further discloses a separate “Sixth Embodiment” as illustrated in
`
`
`
`Figures 17A and 17B:
`
`
`
`9
`
`

`

`
`
`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`In the context of this “Sixth Embodiment,” Suzuki describes magnetic layers 171H
`
`
`
`and 171L:
`
`On the other hands, a power receiver (a secondary device) in the secondary
`side has a housing 150 and a secondary coil 170 stuck on the inner face of the
`housing 150, and the plurality of magnetic layers of the secondary side are
`magnetic layers 171H and 171L that are laminated on one side of the
`secondary coil 170. Specifically, the magnetic layer (first magnetic layer)
`171H is laminated on the one side of the primary coil 170, and the magnetic
`layer (second magnetic layer) 171L is laminated on the magnetic layer 171H.
`When electric power is transmitted from the primary side to the secondary
`side, the primary and secondary coils are arranged opposite each other through
`the housings 100 and 150.
`
`Id. at 11:9-20.
`
`
`
`10
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`However, as will be discussed in more detail below, the Petition improperly
`
`attempts to combine the teachings of Suzuki’s “First Embodiment” and “Sixth
`
`Embodiment” without providing any motivation to make the combination or a
`
`reasonable expectation that such a combination would be successful.
`
`B.
`
`Lee (Ex. 1006)—a secondary reference—does not compensate for
`
`the deficiencies of Suzuki
`
`U.S. Patent No. 9,252,611 (“Lee”) issued on February 2, 2016. The Petition
`
`asserts a combination of Suzuki and Lee for certain claim limitations. However,
`
`Petitioner does not rely on Lee for any of the independent claim limitations
`
`addressed herein by Patent Owner. Thus, the Board need not wade into the issues
`
`related to Lee and it will not be addressed herein.
`
`C.
`
`Park (Ex. 1007)—a tertiary reference—does not compensate for
`
`the failures of Suzuki or Lee
`
`U.S. Patent No. 8,922,162 (“Park”) was issued on December 30, 2014. The
`
`Petition asserts Park only for dependent claim 8. Petitioner does not rely on Park for
`
`any of the independent claims addressed herein by Patent Owner. Thus, the Board
`
`need not wade into the issues related to Park and it will not be addressed herein.
`
`D.
`
`Sawa (Ex. 1008)—a tertiary reference—does not compensate for
`
`the failures of Suzuki or Lee
`
`
`
`11
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`U.S. Patent No. 9,443,648 (“Sawa”) was issued on September 13, 2016. The
`
`Petition asserts Sawa only for certain dependent claims. Petitioner does not rely on
`
`Sawa for any of the independent claims addressed herein by Patent Owner. Thus,
`
`the Board need not wade into the issues related to Sawa and it will not be addressed
`
`herein.
`
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD OF INVALIDITY OF THE CHALLENGED CLAIMS
`
`A. Ground 1: Claims 1, 18, and 19 are not rendered obvious over
`Suzuki and Lee
`
`Ground 1 challenges the two independent claims 1 and 18 (and dependent
`
`claim 19) as obvious over Suzuki in view of Lee. Petitioner’s ground 1 challenge to
`
`these claims fails for three dispositive reasons.
`
`First, Petitioner’s combination does not disclose or render obvious “a first
`
`magnetic sheet” and “a second magnetic sheet” as required by the following
`
`limitations:
`
`• [1.2 and 18.2] “a soft magnetic layer comprising a first magnetic sheet
`
`disposed on the substrate and a second magnetic sheet disposed on the
`
`first magnetic sheet.”
`
`Second, Petitioner’s combination does not disclose or render obvious:
`
`• [1.4 and 18.4] “an adhesive layer formed between the second magnetic
`
`sheet and the receiving coil.”
`
`
`
`12
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`Third, Petitioner’s combination does not disclose or render obvious:
`
`• [1.6 and 18.6] “wherein a height of a highest position of the second
`
`magnetic sheet from the substrate is higher than a height of a lowest
`
`position of the receiving coil from the substrate.”
`
`Thus, Petitioner is unable to establish a reasonable likelihood of invalidity as to any
`
`of the challenged ’962 patent claims.
`
`1.
`
`Suzuki does not render obvious [1.2 and 18.2] “a soft
`magnetic layer comprising a first magnetic sheet
`disposed on the substrate and a second magnetic sheet
`disposed on the first magnetic sheet.”
`
`For this limitation, the Petition relies only on Suzuki and does not rely on the
`
`secondary reference Lee. Suzuki’s Figure 3 does not disclose “a soft magnetic layer
`
`comprising a first magnetic sheet and a second magnetic sheet disposed on the first
`
`magnetic sheet.” To that end, the Petition improperly attempts to combine the
`
`teachings of separate embodiments disclosed in Suzuki without providing any
`
`motivation to make the combination or a reasonable expectation that such a
`
`combination would be successful. See In re Stepan Co., 868 F.3d 1342, 1346 n.1
`
`(Fed. Cir. 2017) (“Whether a rejection is based on combining disclosures from
`
`multiple references, combining multiple embodiments from a single reference, or
`
`selecting from large lists of elements in a single reference, there must be a motivation
`
`to make the combination and a reasonable expectation that such a combination
`
`
`
`13
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`would be successful.”). Thus, the petition cannot establish a reasonable likelihood
`
`of unpatentability for this limitation, and Ground 1 of the Petition should be rejected.
`
`For this limitation, the Petition asserts that an annotated drawing of Suzuki’s
`
`Figure 3 discloses this limitation; however, Petitioner’s annotations are not
`
`supported by Suzuki. In particular, Suzuki does not disclose first and second
`
`magnetic sheets (171H and 171L) in the embodiment of Figure 3, which Petitioner
`
`arbitrarily added to the figure below in green:
`
`Petition at 36. To the contrary, Figure 3 discloses only a single “magnetic layer 171”
`
`as seen in the original Figure 3 below. Ex. 1005 at 6:30.
`
`
`
`
`
`14
`
`

`

`
`
`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`Thus, Figure 3 does not disclose this claim limitation which plainly recites “a first
`
`magnetic sheet” and “a second magnetic sheet disposed on the first magnetic sheet.”
`
`
`
`Because Figure 3 teaches only a single magnetic layer, Petitioner turns to
`
`Suzuki’s Figure 17A and its description of “magnetic layers 171H and 171L.”
`
`Petition at 35. However, Suzuki’s Figure 3 is presented in the context of Suzuki’s
`
`“First Embodiment.” Id. at 4:44. On the other hand, Figure 17A is presented in the
`
`context of Suzuki’s “Sixth Embodiment.” Ex. 1005 at 10:36. Notably, Petitioner
`
`fails to even mention to the Board that it is combining these features from different
`
`embodiments. And the two different embodiments have substantial differences such
`
`that they are not interchangeable. But Petitioner fails to provide any justification or
`
`motivation to combine these entirely separate embodiments. Thus, Petitioner
`
`
`
`15
`
`

`

`IPR2022-00120 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`improperly attempts to combine the teachings of separate embodiments to arrive at
`
`the annotated figure without sufficient support. See, e.g., Abiomed, Inc. v. Maquet
`
`Cardiovascular, LLC, IPR2017-01204, -01205, Paper 9 at 8-12 (PTAB Oct. 23,
`
`2017) (denying institution where the Petition failed to establish sufficiently that the
`
`features of different embodiments were interchangeable or provide sufficient
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`rationale to combine the teachings of the different embodiments).
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`Moreover, Suzuki confirms that its embodiments are not interchangeable
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`because Figure 17A shows that the receiving coil (170) is separate from the magnetic
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`layers (in contrast to the Figure 3 embodiment that shows the receiving coil (170)
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`embedded in the magnetic layer 171):
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`Ex. 1005 at Fig. 17A. Furthermore, Suzuki teaches that 171H and 171L are different
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`materials. Id. at 11:24-28 (“Each magnetic material of the magnetic layers 121H and
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`171H is for example ferrite, while each magnetic material of the magnetic layers
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`121L and 171L is e.g., compound of amorphous material and resin.”). And Suzuki
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`teaches that the two layers are different sizes. Id. at 11:42-45 (“On the other hand,
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`the magnetic layer 171H is larger than the secondary coil 170, and the magnetic layer
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`171L is larger than the magnetic layer 171H.”). Further, Suzuki teaches that the two
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`magnetic layers (171H and 171L) are attached to the coil and are not disposed on a
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`substrate (as required by the ’962 patent claims). Id. at 11:9-20. The Petition fails to
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`address these differences and does not provide any evidence that Suzuki’s
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`embodiments are interchangeable.
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`Furthermore, the Petition does not establish any reasonable expectation of
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`success for the combination. A finding of obviousness with no corresponding finding
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`of reasonable expectation of success constitutes reversible error. See OSI Pharms.,
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`LLC v. Apotex Inc., 939 F.3d 1375, 1385 (Fed. Cir. 2019) (reversing obviousness
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`determination under circumstances where “a reasonable fact finder could not find a
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`reasonable expectation of success”). And a reasonable expectation of success is
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`required when combining multiple embodiments from a single reference. See In re
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`Stepan Co., 868 F.3d at 1346 n.1 (“Whether a rejection is based on combining
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`disclosures from multiple references, combining multiple embodiments from a
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`single reference, or selecting from large lists of elements in a single reference, there
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`must be a motivation to make the combination and a reasonable expectation that
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`such a combination would be successful.”). Yet, the Petition does not even bother to
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`address the expectation of success for the proposed combination. For example,
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`Petitioner fails to explain how the magnetic layer 171 in Figure 3 could be replaced
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`with the structure shown in Figure 17A (which has different materials and sizes for
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`layers 171H and 171L) without also modifying the location of the receiving coil.
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`At most, the Petition provides “mere conclusory statements” that are
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`insufficient for a finding of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere
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`conclusory statements; instead, there must be some articulated reasoning with some
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`rational underpinning to support the legal conclusion of obviousness.”) (quoting In
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`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (alteration in original); In re Magnum
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`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of
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`proving obviousness, a petitioner cannot employ mere conclusory statements. The
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`petitioner must instead articulate specific reasoning, based on evidence of record, to
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`support the legal conclusion of obviousness.”).1
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`1 The Petition’s conclusory attorney argument is supported only by its expert’s
`equally conclusory declaration—which simply repeats the attorney argument
`practically verbatim and is due no weight. Compare Petition at 34-36 with Ex. 1003
`at 33-38; Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016);
`Smartmatic USA Corp. v. Election Sys. & Software, IPR2019-00527, Paper 32 at 34
`(Aug. 5, 2020) (giving no weight to an expert declaration that “merely parrots the
`language in the Petition”).
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`Because the Petition fails to provide any reasoning to support its proposed
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`combination of the teachings of separate embodiments disclosed in Suzuki, the
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`Petition’s Ground 1 should be denied.
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`2.
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`Suzuki does not render obvious [1.4 and 18.4] “an
`adhesive layer formed between the second magnetic
`sheet and the receiving coil.”
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`For this limitation, the Petition relies only on Suzuki and does not rely on the
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`secondary reference Lee. The Petition also fails for limitation [1.4 and 18.4] because
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`it again seeks to apply its improper combination of the teachings of separate
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`embodiments disclosed in Suzuki without providing any motivation to make the
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`combination or a reasonable expectation that such a combination would be
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`successful. Thus, Petitioner fails to show that Suzuki renders obvious “an adhesive
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`layer formed between the second magnetic sheet and the receiving coil.”
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`The Petition again asserts that an annotated drawing of Suzuki’s Figure 3
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`discloses this limitation; however, Petitioner’s annotations are not supported by
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`Suzuki. In particular, there is no “adhesive layer” between “a second magnetic sheet”
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`and the receiving coil in Figure 3 as Petitioner adds to the figure below:
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`IPR2022-00120 (’962 Patent)
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`Petition at 38. To the contrary, Figure 3 discloses only a single “magnetic layer 171.”
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`Ex. 1005 at 6:30. Thus, Figure 3 does not disclose this claim limitation which plainly
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`recites “a second magnetic sheet.” Accordingly, the Petition fails for the same
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`reasons discussed above.
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`Furthermore, even Petitioner’s annotated drawing fails to disclose this
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`limitation. More specifically, the drawing does not disclose an adhesive layer formed
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`between the second magnetic sheet and the receiving coil. Rather, Petitioner’s
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`drawing appears to illustrate an adhesive layer between the receiving coil and the
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`first magnetic sheet. Petitioner does not clearly delineate the first and second
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`magnetic sheets or explain how the adhesive layer would contact the second
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`magnetic sheet as opposed to the first. Moreover, Petitioner’s failure of proof here
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`was not a mere oversight in the detail and delineation of its annotated figure. Rather,
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`IPR2022-00120 (’962 Patent)
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`Petitioner’s deficiency is due to the fact that Figure 3 in Suzuki discloses only a
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`single magnetic sheet 171 as discussed above, and Petitioner is therefore forced to
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`modify Figure 3 in a manner that is not supported by Suzuki.
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`Because the Petition further fails to provide any reasoning to support its
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`proposed combination of the teachings of separate embodiments disclosed in Suzuki
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`for this limitation, the Petition’s Ground 1 should be denied.
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`3.
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`Petitioner’s combination of Suzuki and Lee does not
`render obvious [1.6 and 18.6] “wherein a height of a
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