Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Entered: April 26, 2023
`
`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 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`AARON W. MOORE, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 30
`Entered: April 26, 2023
`
`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 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`AARON W. MOORE, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) supported
`by the Declaration of Dr. Joshua Phinney (Ex. 1003) requesting an inter
`partes review of claims 1–4, 7, 8, 18, and 19 (“challenged claims”) of U.S.
`Patent No. 9,997,962 B2 (Ex. 1001, the “’962 patent”). Scramoge
`Technology Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). 1
`After the Institution Decision (Paper 9, “Inst. Dec.”), Patent Owner
`filed a Response (Paper 14, “PO Resp.”), and a Declaration of Dr. David S.
`Ricketts (Ex. 2016); Petitioner filed a Reply (Paper 19); and Patent Owner
`filed a Sur-reply (Paper 21). Thereafter, the parties presented oral arguments
`via a video Oral Hearing, and a transcript thereof is in the record. Paper 29
`(“Tr.”). For the reasons set forth in this Final Written Decision pursuant to
`35 U.S.C. § 318(a), we determine that Petitioner demonstrates by a
`preponderance of evidence that the challenged claims are unpatentable.
`II. BACKGROUND
`A. Real Parties in Interest
`The parties identify themselves as real parties in interest. Pet. 62;
`Paper 4, 2.
`
`B. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’962 patent: Scramoge Tech. Ltd. v. Apple Inc., No. 6:21-cv-
`0579-ADA (W.D. Tex.); Scramoge Tech. Ltd. v. Samsung Electronics Co.,
`
`
`1 The parties also filed additional briefing authorized by the Board to address
`a discretionary denial issue not relevant to this Final Written Decision.
`Papers 7, 8.
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`2
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`IPR2022-00120
`Patent 9,997,962 B2
`Ltd., No. 6:21-cv-0454-ADA (W.D. Tex.); Scramoge Tech. Ltd. v. Google
`LLC, No. 6:21-cv-0616-ADA (W.D. Tex.). See Paper 4, 2; Pet. 62.
`The following inter partes review proceeding involves the ’962
`patent: Samsung Electronics Co., Ltd. vs Scramoge Technology Ltd.,
`IPR2022-00284 (PTAB December 7, 2021). The following inter partes
`review proceedings involve related patents: Apple Inc. v. Scramoge Tech.
`Ltd., IPR2022-00117, Paper 9 (PTAB May 22, 2022) (institution decision);
`Apple Inc. v. Scramoge Tech. Ltd., IPR2022-00118, Paper 9 (PTAB May 22,
`2022) (institution decision); Apple Inc. v. Scramoge Tech. Ltd., IPR2022-
`00119, Paper 8 (PTAB Jan. 31, 2022) (terminated). See Paper 4, 2.
`C. The ’962 Patent
`The ’962 patent relates to a wireless secondary coil device that
`receives electromagnetic energy from a primary coil for charging a power
`supply in household electronic products and other products. See Ex. 1001,
`code (57), 1:24–31.
`[A]n embodiment of the present invention 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 is formed between the
`soft magnetic layer and the receiving coil.
`Id. at code (57).
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`Patent 9,997,962 B2
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`Figure 5 of the ’962 patent, as annotated by Petitioner, follows
`(Pet. 8):
`
`
`
`
`
`
`
`Annotated Figure 5 of the ’962 patent, above, illustrates a secondary
`
`(receiving) antenna coil and magnetic layer configuration, including
`“adhesive layer 510 . . . formed on a soft magnetic layer 500 [and] a
`receiving coil 520 . . . formed on the adhesive layer 510,” with “receiving
`coil 520 . . . disposed on the upper surface of the soft magnetic layer 500.”
`Ex. 1001, 6:11–30. “[T]he adhesive layer 510 may include a first adhesive
`layer 512, an insulating layer 514 formed [on] the first adhesive layer 512,
`and a second adhesive layer 516 formed on the insulating layer.” Id.
`at 6:42–45. As depicted and annotated by Petitioner, the highest position of
`a second magnetic sheet (shown above as soft magnetic layer 500) is higher
`relative to a substrate (not depicted but located at the bottom of the figure)
`than the lowest portion of receiving coil 520. See infra § II.D, claim 1,
`limitation 1.6.
`An example of the insulating layer between the two adhesive layers is
`“polyethylene terephthalate (PET) material.” Ex. 1001, 6:47. The ’962
`
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`IPR2022-00120
`Patent 9,997,962 B2
`specification refers to the multi-layer adhesive as “double-sided.” Id.
`at 6:37–38.
`Figure 6 of the ’962 patent, as annotated by Petitioner, follows
`(Pet. 8–9):
`
`
`Figure 6 above illustrates a double-sided adhesive tape with first 512 and
`second 516 adhesive layers sandwiching insulating layer 514. See Ex. 1001,
`6:42–45.
`
`
`
`D. Illustrative Claim
`Independent claim 1 follows:
`[1.0] A wireless power receiving antenna comprising:
`[1.1] a substrate;
`[1.2] a soft magnetic layer comprising a first magnetic
`sheet disposed on the substrate and a second magnetic sheet
`disposed on the first magnetic sheet;
`[1.3] a receiving coil disposed on the second magnetic
`sheet; and
`[1.4] an adhesive layer formed between the second
`magnetic sheet and the receiving coil,
`[1.5] 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
`
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`Patent 9,997,962 B2
`insulating layer disposed between the first adhesive layer and
`the second adhesive layer, and
`[1.6] 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.
`Ex. 1001, 8:54–9:4 (bracketed information added to conform to the Petition).
`E. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–4, 7, 8, 18, and 19 are unpatentable
`as follows:2
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 18, 19
`
`2–4, 7
`
`8
`
`Pet. 16.
`
`103
`
`103
`
`103
`
`Suzuki, 3 Lee4
`
`Suzuki, Lee, Sawa5
`Suzuki, Lee, Sawa,
`Park6
`
`III. ANALYSIS
`A. Legal Standards
`A patent claim is unpatentable “if the differences between the claimed
`invention and the prior art are such that the claimed invention as a whole
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103 (effective Mar. 16, 2013).
`Because the ’962 patent’s effective filing date is after the date of the
`applicable AIA amendment (see Pet. 9; Ex. 1001, codes (22, 30), the
`AIA version of § 103 applies.
`3 US Pat. No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005).
`4 US Pat. No. 9,252,611 B2, issued Feb. 2, 2016 (Ex. 1006).
`5 US Pat. No. 9,443,648 B2, issued Sept. 13, 2016 (Ex. 1008).
`6 US Pat. No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1007).
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`would have been obvious before the effective filing date of the invention to a
`person having ordinary skill in the art to which the claimed invention
`pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007) (similar language albeit with respect to the pre-AIA version
`of 35 U.S.C. § 103). “[W]hen a patent claims a structure already known in
`the prior art that is altered by the mere substitution of one element for
`another known in the field, the combination must do more than yield a
`predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams,
`383 U.S. 39, 50‒51 (1966)). The question of obviousness involves resolving
`underlying factual determinations including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and, if in evidence,
`(4) objective evidence of non-obviousness. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`Determining whether an invention would have been obvious under
`35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent
`art at the time of the effective filing date of the claimed invention. Graham,
`383 U.S. at 17. The person of ordinary skill in the art is a hypothetical
`person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art
`include the types of problems encountered in the art, the sophistication of the
`technology, and educational level of active workers in the field. Id. One or
`more factors may predominate. Id.
`Petitioner contends
`[a] Person of Ordinary Skill in The Art (“POSITA”) in
`June 2013 would have had a working knowledge of the network
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`communication art that is pertinent to the ’962 patent. That
`person would have a bachelor’s degree in electrical engineering,
`or equivalent training, and approximately
`two years of
`experience working in the field of wireless power transmission.
`Lack of work experience can be remedied by additional
`education, and vice versa.
`Pet. 10 (citing Ex. 1003 ¶¶ 18–20).
`Patent Owner neither disputes Petitioner’s proposed level of ordinary
`skill in the art, nor proposes a different level. See generally PO Resp.
`
`Based on a review of the record, we adopt Petitioner’s proposed level
`of ordinary skill in the art because it is consistent with the evidence of
`record, including the asserted prior art and ’962 patent specification.
`C. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under
`this standard, claim terms have their ordinary and customary meaning, as
`would be understood by a person of ordinary skill in the art at the time of the
`invention, in light of the language of the claims, the specification, and the
`prosecution history. See Phillips, 415 F.3d at 1313–14.
`Neither party provides an explicit claim construction for any claim
`term here. We determine that it is not necessary to construe any claim terms
`explicitly, because doing so would have no effect in the analyses below of
`Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we
`need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
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`D. Ground 1: Asserted Obviousness Based on Suzuki and Lee
`Petitioner asserts that claims 1, 18 and 19 are unpatentable under
`35 U.S.C. § 103(a) based on the combined teachings of Suzuki and Lee.
`Pet. 17–46.
`
`1. Suzuki
`Suzuki generally describes a wireless charging device using a primary
`coil coupled via electromagnetic induction to a secondary coil in consumer
`items such as “a cordless phone, a shaver, an electric toothbrush, a personal
`digital assistance [sic] or the like (hereinafter referred to as a ‘secondary
`device’).” Ex. 1005, 1:17–26.
`Suzuki’s Figure 1A follows:
`
`
`Suzuki’s Figure 1A above shows primary coil 120 in charger device
`10 for charging cell phone 15 via electromagnetic induction with cell phone
`secondary coil 17[0]. 7 See Ex. 1005, 4:48–59.
`
`
`7 In describing Figures 1A and 3, the specification refers to “secondary coil[]
`. . . 170” and “secondary coil 170,” respectively, so “17” in those figures is a
`misprint. See Ex. 1005, 4:48–59, 6:34.
`
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`Patent 9,997,962 B2
`With respect to the secondary device (e.g., cell phone 15),
`“a secondary side of contactless power transmission apparatus” includes
`“a holding member which is physically separated from a primary side; a
`magnetic layer; a shield layer for shielding [the] electromagnetic noise; and
`a heat insulation layer.” Id. at code (57). The holding member supports a
`planar secondary coil. Id. “[T]he magnetic layer is laminated on one side of
`the planar coil and unified with the planar coil.” Id. “[T]he secondary side
`of the apparatus includes a plurality of magnetic layers.” Id.
`2. Lee
`Similar to Suzuki, Lee also discloses a secondary coil in a portable
`mobile terminal (e.g., cell phone) for wirelessly charging the terminal. See
`Ex. 1006, code (57), Fig. 17. In Lee, a “receiving-side secondary coil 6 of
`the wireless charger is attached on an upper portion of a protective film of a
`magnetic field shield sheet 10 by using a double-sided tape 30b.” Id.
`at 16:31–40.
`
`3. Claims 1, 18 and 19
`Petitioner contends that the combined teachings of Suzuki and Lee
`would have rendered independent claims 1 and 18 and dependent claim 19
`obvious. Pet. 17–46. Patent Owner disagrees, focusing on limitation 1.5 of
`claim 1. PO Resp. 2–19.
`
`a) Claim 1
`i. Preamble and Limitations 1.1–1.3
`The preamble of claim 1 recites “[a] wireless power receiving antenna
`comprising.” Petitioner contends that to the extent the preamble is limiting,
`“Suzuki renders [it] obvious,” “because Suzuki teaches a contactless power
`transmission apparatus that includes a power receiver with a secondary coil
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`block antenna.” Pet. 32 (citing Ex. 1005, Fig. 3; Ex. 1003 ¶ 57). To support
`the showing, Petitioner annotates Suzuki’s Figure 3 as follows:
`
`
`
`Annotated Figure 3 of Suzuki above shows secondary coil block 17
`(identified by Petitioner in red text) as the “wireless power receiving
`antenna” as recited in the preamble of claim 1. 8 Pet. 31. Petitioner explains
`that Suzuki’s “power receiver includes a ‘secondary coil block 17’ . . . with
`multiple layers, including ‘a magnetic layer 171, a shield layer 172 for
`shielding electromagnetic noise, and a heat insulation layer 173, which
`together are unified with the secondary coil 170.’” Id. at 31–32 (quoting
`Ex. 1005, 6:29–33).
`Petitioner’s showing as to the preamble is persuasive as supported by
`the record. Patent Owner does not challenge Petitioner’s showing as to the
`preamble. See generally PO Resp.
`Limitation 1.1 recites “a substrate.” Petitioner reads “a substrate” on
`Suzuki’s “shield layer 172 and/or insulation layer 173.” Pet. 33 (citing
`Ex. 1003 ¶ 59; annotating Ex. 1005, Fig. 3).
`
`
`8 Figure 3 represents an upside-down view of an embodiment of secondary
`coil block 17 of cell phone 15 as depicted in Figure 1 above.
`
`11
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`IPR2022-00120
`Patent 9,997,962 B2
`Petitioner’s showing as to limitation 1.1 is persuasive as supported by
`the record. Patent Owner does not challenge Petitioner’s showing as to
`limitation 1.1. See generally PO Resp.
`Limitation 1.2 recites “a soft magnetic layer comprising a first
`magnetic sheet disposed on the substrate and a second magnetic sheet
`disposed on the first magnetic sheet.” To address this limitation, Petitioner
`begins with the following annotated version of Suzuki’s Figure 3 (Pet. 34):
`
`
`Annotated Figure 3 above shows receiving coil 170 (blue) embedded in soft
`magnetic layer 171 (green) on substrate 171/172 (red). See Pet. 34 (citing
`Ex. 1005, 6:29–46; Ex. 1003 ¶ 62).
`To address the first and second magnetic sheets (not depicted in
`Figure 3 above), Petitioner relies on Suzuki’s teaching with respect to
`another embodiment (see Figure 17A). Pet. 25. Describing the invention in
`general and the embodiment associated with Figure 17A, Suzuki states that
`“in order to further reduce the influence of noise, at least secondary side of
`the present invention includes a plurality of magnetic layers.” Id. (quoting
`Ex. 1005, 10:63–65). Further addressing this plurality of magnetic layers,
`Petitioner quotes Suzuki as follows:
`[T]he plurality of magnetic layers of the secondary side are
`magnetic layers 171H and 171L that are laminated on one side
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`of the secondary coil 170. Specifically, the magnetic layer (first
`magnetic layer) 171H is laminated on the one side of the primary
`[sic: secondary] coil 170, and the magnetic layer (second
`magnetic layer) 171L is laminated on the magnetic layer 171H.
`Pet. 35 (second alteration by Petitioner (quoting Ex. 1005, 11:14–17); citing
`Ex. 1003 ¶ 66). Petitioner combines Suzuki’s teachings related to these two
`embodiments, annotating Suzuki’s Figure 3 to include the two magnetic
`layers 171L and 171H (as described in connection with Suzuki’s
`embodiment as illustrated with respect to Figure 17A), as follows (Pet. 36):
`
`
`As annotated by Petitioner, Suzuki’s Figure 3 above shows substrate
`172, 173 (red), first magnetic sheet 171L (green), second magnetic sheet
`171H (green), and secondary receiving coil 170 (blue). Pet. 36 (citing
`Ex. 1005, Fig. 3; Ex. 1003 ¶ 68).
`Petitioner relies on the following advantages of employing two
`magnetic layers instead of just one as described in Suzuki: “[P]ower
`transmission efficiency between primary and secondary sides can be
`enhanced with the two magnetic layers.” Pet. 35 (quoting Ex. 1005,
`10:51–56) (emphasis by Petitioner). “[I]n order to further reduce the
`influence of noise, at least secondary side of the present invention includes a
`plurality of magnetic layers.” Id. (quoting Ex. 1005, 10:63–65) (emphasis
`by Petitioner). Petitioner reasons that these advantages (enhanced power
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`transmission efficiency and noise reduction) would have rendered it obvious
`to employ Suzuki’s dual magnetic layers (171L, 171H) as described in
`connection with Figure 17A instead of using Suzuki’s single magnetic layer
`170 as described in connection with Figure 3. See id. (citing Ex. 1003 ¶ 67).
`Petitioner’s showing as to limitation 1.2 is persuasive as supported by
`the record. Patent Owner does not challenge Petitioner’s showing as to
`limitation 1.2. See generally PO Resp.
`Limitation 1.3 recites “a receiving coil disposed on the second
`magnetic sheet.” Petitioner again relies on an annotated version of Figure 3,
`as modified via the teachings with respect to the dual magnetic layers
`addressed in connection with limitation 1.2, as follows (Pet. 37):
`
`
`Suzuki’s Figure 3, as annotated and modified by Petitioner, shows receiving
`coil 170 (blue) embedded in second magnetic sheet/layer 171H (green)
`based on Petitioner’s obviousness contention of employing two magnetic
`layers 171H and 171L instead of a single magnetic layer/layer 171. See
`Pet. 36–37. Petitioner states that Suzuki teaches that “when the magnetic
`layer 171 comprises two layers, the magnetic layer 171H is laminated on the
`one side of the coil 170.” Id. at 36 (citing Ex. 1005, 11:9–33; Ex. 1003
`¶ 69). As noted above in addressing the two magnetic layers of limitation
`1.2, Petitioner quotes Suzuki as follows: “Specifically, the magnetic layer
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`(first magnetic layer) 171H is laminated on the one side of the primary [sic:
`secondary] coil 170, and the magnetic layer (second magnetic layer) 171L is
`laminated on the magnetic layer 171H.” Id. at 35 (quoting Ex. 1005, 11:9–
`33; citing Ex. 1003 ¶ 66).
`
`Petitioner’s showing as to limitation 1.3 is persuasive as supported by
`the record. Patent Owner does not challenge Petitioner’s showing as to
`limitation 1.3. See generally PO Resp.
`
`Limitation 1.4 recites “an adhesive layer formed between the second
`magnetic sheet and the receiving coil.” Petitioner relies on Suzuki’s
`teaching that “[t]he secondary coil 170 is then stuck on the other side (a
`lower surface) of the magnetic layer 171 with adhesive or pressure sensitive
`adhesive.” Pet. 37 (quoting Ex. 1005, 8:8–10). Petitioner adds that after
`using layers 171H and 171L instead of single layer 171 to create a multi-
`sheet layer 171 for the reasons set forth with respect to limitation 1.2, “the
`adhesive would connect the coil 170 to the top layer 171H,” rendering
`obvious limitation 1.4. See id. at 37–38 (citing Ex. 1003 ¶¶ 71–72).
`
`Petitioner’s showing as to limitation 1.4 is persuasive as supported by
`the record. Patent Owner does not challenge Petitioner’s showing as to
`limitation 1.4. See generally PO Resp.
`ii. Limitation 1.5
`Limitation 1.5 modifies the adhesive layer of limitation 1.4, which
`Suzuki discloses, and generally reads on a double-sided adhesive tape
`replacing the adhesive layer of limitation 1.4 so that the double-sided
`adhesive tape is in contact with the receiving coil and second magnetic
`sheet. See Pet. 38–39 (discussing Lee, Ex. 1006). In particular, limitation
`1.5 recites “wherein the adhesive layer includes a first adhesive layer in
`contact with the second magnetic sheet, a second adhesive layer in contact
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`with the receiving coil, and an insulating layer disposed between the first
`adhesive layer and the second adhesive layer.” Relying on its showing for
`limitation 1.4, Petitioner states that “Suzuki generally describes the use of an
`adhesive to connect the coil 170 to the magnetic layer 171.” Id. at 38 (citing
`Ex. 1006, 8:8–10; Ex. 1003 ¶ 73).
`Petitioner turns to Lee as teaching “an example of a ‘double-sided
`tape’ adhesive used to connect a coil to a magnetic layer.” Pet. 38 (citing
`Ex. 1006, 9:29–38). Petitioner annotates Lee’s Figure 5, as follows:
`
`
`
`Lee’s Figure 5 as annotated by Petitioner shows insulating layer 32
`sandwiched between adhesive layers 31, 33. See Pet. 38–39 (citing
`Ex. 1006, 9:29–38; Ex. 1003 ¶¶ 74–75); Ex. 1006, 9:29–33 (“[D]ouble-sided
`tape 3 is formed of a base member 32 made of a fluorine resin based film,
`for example, a PET (Polyethylene Terephthalate) film, on both sides of
`which second and third adhesive layers 31 and 33 are formed.”).
`Petitioner quotes Lee for its teaching of using the double-sided tape to
`attach a secondary coil to a magnetic sheet: “[R]eceiving-side secondary
`coil 6 of the wireless charger is attached on an upper portion of a protective
`film of a magnetic field shield sheet 10 by using a double-sided tape 30b.”
`Pet. 39 (quoting Ex. 1006, 16:31–36). Petitioner asserts that a person of
`ordinary skill in the art “would have found it obvious to use such a double-
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`sided tape to connect Suzuki’s magnetic layer 171 and coil 170” for several
`reasons. See id. at 39 (citing Pet. § X.C.3 (listing reasons); Ex. 1003 ¶¶ 76–
`77). Petitioner provides evidence that “beyond Lee, the patent literature is
`replete with examples of utilizing double-sided tape” “to adhere a power-
`receiving coil to a magnetic layer.” Id. at 24 (citing Ex. 1003 ¶ 44; Ex.1013,
`22:19–26 (“[T]he receiver coil L2 may be disposed and affixed on top of the
`magnetic shielding material 41 using double-sided adhesive tape with
`adhesive applied on both sides thereof.”); Ex. 1014, 5:44–48 (“An insulative
`double-faced tape or adhesive or the like is used . . . to adhere the upper face
`of first magnetic sheet 44 and the lower face of the charging coil 41 . . . .”);
`Ex.1017, 25:21–25, 26:15–26, Fig. 13 (describing a protective layer that is
`“double-sided tape” between a magnetic sheet and a coil)).
`
`Petitioner provides the following modified and annotated version of
`Suzuki’s Figure 3 (Pet. 38):
`
`
`Petitioner’s modified and annotated version of Suzuki’s Figure 3
`above illustrates coil 170 embedded and attached via Lee’s double-sided
`adhesive tape (purple), which replaces Suzuki’s adhesive layer, in second
`magnetic sheet 171H (green) above substrate 172, 173 (red). See Pet. 37–
`40.
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`In addition to noting that the prior art is replete with examples of
`using double-sided adhesive tape for adhering a secondary coil to a magnetic
`layer as indicated above, Petitioner asserts that “when considering the
`description of the adhesive in Suzuki, a [person of ordinary skill in the art]
`would have naturally considered Lee, as it more fully describes known
`adhesives intended for use in adhering a power-receiving coil to a magnetic
`layer.” Pet. 24 (citing Ex. 1003 ¶ 43). Petitioner also contends that “Suzuki
`explains that in its method, the layers are stuck together ‘collectively by
`pressing,’ and that the adhesive may be a ‘pressure sensitive adhesive.’” Id.
`at 25 (citing Ex. 1005, 8:66–9:1, 8:8–10). According to Petitioner, “[i]t was
`known in the electronics manufacturing art that double-sided tape may be a
`pressure sensitive adhesive (PSA).” Id. at 25 (citing Ex. 1003 ¶ 46; Ex.
`1009 ¶ 140).
`
`The Petition provides evidence that artisans of ordinary skill knew
`that for PSA double-sided tape applications, “optimum thickness is
`dependent on the (opto)electronic construction, on the end application, [and]
`on the nature of the embodiment of the PSA.” Id. at 25–26 (quoting Dollase
`(Ex. 1009 ¶ 141)). The Petition further relies on Dollase’s explanation that
`“high . . . thicknesses” for a PSA double-sided tape “achieve improved
`adhesion to the substrate and/or a damping effect,” and “low . . . thicknesses
`. . . reduce the permeation cross section, and hence the lateral permeation
`and the overall thickness of the (opto)electronic construction.” Id. at 26
`(quoting Ex. 1009 ¶ 141). Dr. Phinney also relies on Dollase to support his
`testimony that “[i]t was . . . known that pressure sensitive, double-sided tape
`may be configured to have a desired thickness depending on the particular
`application.” Ex. 1003 ¶ 46 (citing Ex. 1009 ¶¶ 141–142). At cited
`paragraph 141, Dollase explains that “there is a good compromise between a
`
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`Patent 9,997,962 B2
`low thickness of composition and the consequent low permeation cross
`section, which reduces the lateral permeation, and a sufficiently thick film of
`composition to produce a sufficiently adhering bond.” Ex. 1009 ¶ 141; see
`also Inst. Dec. 28 (same).
`Citing other evidence, Petitioner asserts that “it was well known that
`‘by adjusting the height of the double-sided tape,’ it was possible to form a
`gap of predetermined height between adjacent elements.” Pet. 26 (quoting
`Ex. 1012, 4:50–51; citing id. at 4:42–54; Ex. 1003 ¶ 46). In summary, in
`addition to Lee, as indicated above, Petitioner relies on and cites other prior
`art references of record that show using double-sided tape for attaching
`coils, or more generally, for electronic applications, was common at the time
`of the invention and known to provide benefits involving controlling
`thickness and damping effects, while adjusting for adhesion and
`permeability. See Pet. 23–26 (citing Ex. 1009 ¶¶ 141–142; Ex. 1012, 4:42–
`54; Ex. 1013, 22:19–26; Ex. 1014, 5:44–48; Ex. 1017, 25:21–25, 26:15–26,
`Fig. 13; Ex. 1003 ¶¶ 44–47).
`Based on the evidence as summarized above, including the testimony
`of Dr. Phinney, the Petition asserts that the record evidence shows a
`reasonable expectation of success and also shows a predictable and
`advantageous application of adhering a secondary coil to a magnetic layer
`with no change in function to Suzuki’s device or Lee’s adhesive. See Pet.
`23–26. Petitioner summarizes by stating that “the combination of Suzuki
`and Lee simply represents the combination of a known element (Lee’s
`double-sided tape) with Suzuki’s known contactless power transmission
`apparatus according to known methods to yield a predictable result (the
`adhesion of Suzuki’s coil to its magnetic layer).” Id. at 26–27 (citing
`Ex. 1003 ¶ 47).
`
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`Patent 9,997,962 B2
`Patent Owner responds that Petitioner’s showing rests on “improper
`hindsight.” PO Resp. 2. Patent Owner asserts that “the Petition looks to Lee
`for its disclosure of an adhesive structure, not for the material composition
`of the specific adhesive used,” but Dr. Phinney testified during his
`deposition that “he did not ‘recall citing anything specific about what
`adhesives were used or disclosed in Lee.’” Id. at 3–4 (quoting Ex. 29:9–11;
`citing Pet. 23–27, 38–40). Patent Owner maintains that a person of ordinary
`skill in the art “would not have looked to the structure of Lee’s double-sided
`tape in view of Suzuki, because Suzuki already discusses its adhesive
`structure at length.” Id. at 5 (citing Ex. 2016 ¶¶ 34–40).
`Patent Owner also asserts that in some of Suzuki’s “embodiments, no
`adhesive other than layer 171 itself is necessary to adhere shield layer 172 to
`coil 170, because magnetic layer 171 already has adhesive properties.” PO
`Resp. 6 (citing Ex. 2016 ¶¶ 35–36). Patent Owner asserts that in other
`embodiments “where magnetic layer 171 may not itself include adhesive,
`Suzuki teaches that layer 171 is stuck to coil 170 “with adhesive or pressure
`sensitive adhesive which is mixed with magnetic filler or magnetic
`powder.” Id. at 8 (quoting Ex. 1005, 8:8–12; citing Pet. 23).
`Patent Owner asserts that “no matter whether Suzuki’s adhesive is
`magnetic layer 171, Suzuki teaches a structure for its adhesive, such that a
`[person of ordinary skill in the art] would not need to look to Lee for further
`disclosure of adhesive structure.” PO Resp. 9 (citing Ex. 2016 ¶¶ 35–40).
`Patent Owner also asserts that the Petition “lack[s] . . . identified benefits”
`for the combination of Suzuki and Lee. Id. at 10. Patent Owner also asserts
`that a person of ordinary skill “would have recognized significant drawbacks
`to using [Lee’s] double-sided tape as an adhesive in Suzuki’s design,”
`because double-sided tape “would increase the thickness of Suzuki’s
`
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`IPR2022-00120
`Patent 9,997,962 B2
`designs.” Id. at 16. In addition, Patent Owner asserts that “Lee’s double-
`sided tape would reduce the proximity of Suzuki’s magnetic layer 171 to its
`coil 170,” thereby reducing the magnetic flux concentration. Id. (citing
`Ex. 2016 ¶ 45). Based on the above reasons, Patent Owner argues that “the
`Petition necessarily arrives at its proposed combination through the
`impermissible use of hindsight.” Id. at 17.
`Contrary to Patent Owner’s arguments, the Petition applies persuasive
`rationale to combine the teachings of Suzuki and Lee, as summarized above.
`For example, the Petition asserts that a person of ordinary skill in that art
`“would have . . . found it straightforward and predictable given that the
`combination utilizes Lee’s multilayer adhesive precisely as it was
`intended—for attaching a power-receiving coil to a magnetic layer.”
`Pet. 24–25 (citing Ex. 1003 ¶ 45). Patent Owner does not dispute that Lee
`employs double-sided adhesive tape to attach power receiving coils to a
`magnetic layer––the same purpose for the adhesive in Suzuki. See generally
`PO Resp. As the Petition argues, using Lee’s double-sided adhesive tape in
`place of Suzuki’s adhesive for the same purpose of adhering a secondary
`coil to a magnetic layer is “the predictable use of prior art elements
`according to their established functions.” See Pet. 25 (citing KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 417 (2007)).
`As Petitioner also persuasively argues, “the ’962 patent presents the
`situation KSR calls ‘a principal reason for declining to allow patents for what
`is obvious.’ 550 U.S. at 416. Specifically, it presents a ‘combination of
`familiar elements according to known methods . . . [that] does no more than
`yield predictable results.’” Reply 13 (quoting KSR, 550 U.S. at 416). Other
`than advancing what amounts to teaching away arguments, which the record
`does not support for the reasons discussed below, Patent Owner does not
`
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`IPR2022-00120
`Patent 9,997,962 B2
`dispute this rationale. As indicated above, the Petition supplies numerous
`examples, in addition to Lee, of the prior art using a double-sided adhesive
`to attach a coil to a magnetic layer. Pet. 24 (citing Ex.1013, 22:19–26
`(“[T]he receiver coil L2 may be disposed and affixed on top of the magnetic
`shielding material 41 using double-sided adhesive
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