Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: May 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`AARON W. MOORE, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Entered: May 4, 2022
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
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`I.
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`INTRODUCTION
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`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
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`an inter partes review of claims 1–4, 7, 8, 18, and 19 of U.S. Patent No.
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`9,997,962 B2 (Ex. 1001, the “’962 patent”). Scramoge Technology Ltd.
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`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
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`Petitioner filed a Preliminary Reply (Paper 7, “Pet. Prelim. Reply”) and
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`Patent Owner filed a Preliminary Sur-Reply (Paper 8, “PO Prelim. Sur-
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`Reply”) authorized by the Board to address a discretionary denial issue.
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`We have authority to determine whether to institute an inter partes
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`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution
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`of an inter partes review requires that “the information presented in the
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`petition and . . . any response . . . shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth
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`below, we determine that there is a reasonable likelihood that Petitioner will
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`prevail with respect to at least one challenged claim. Accordingly, we
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`institute an inter partes review of the ’962 patent.
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`II. BACKGROUND
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`A. Real Parties in Interest
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`The parties identify themselves as real parties in interest. Pet. 86;
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`Paper 4, 2.
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`B. Related Matters
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`The parties identify the following proceedings as related matters
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`involving the ’962 patent: Scramoge Tech. Ltd. v. Apple Inc., No. 6:21-cv-
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`2
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`Patent 9,997,962 B2
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`0579-ADA (W.D. Tex.) (the “District Court” or the “District Court case”);1
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`Scramoge Tech. Ltd. v. Samsung Electronics Co., Ltd., No. 6:21-cv-0454-
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`ADA (W.D. Tex.); Scramoge Tech. Ltd. v. Google LLC, No. 6:21-cv-0616-
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`ADA (W.D. Tex.). See Paper 4, 2; Pet. 62.
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`The following inter partes review proceeding involves the ’962
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`patent: Samsung Electronics Co., Ltd. vs Scramoge Technology Ltd.,
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`IPR2022-00284 (PTAB December 7, 2021). The following inter partes
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`review proceedings involve related patents: Apple Inc. v. Scramoge Tech.
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`Ltd., IPR2022-00117 (PTAB October 29, 2021); Apple Inc. v. Scramoge
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`Tech. Ltd., IPR2022-00118 (PTAB October 29, 2021); Apple Inc. v.
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`Scramoge Tech. Ltd., IPR2022-00119 (PTAB October 29, 2021). See Paper
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`4, 2.
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`C. The ’962 Patent
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`The ’962 patent relates to a wireless charging device using a
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`transmitting primary coil coupled via electromagnetic induction to a
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`receiving secondary coil for charging a power supply in household
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`electronic products and other products. See Ex. 1001, code (57), 1:24–21.
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`[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.
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`Id. at code (57).
`
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`1 This short-hand reference is to the District Court case or litigation itself,
`not to the case citation. See infra § III.D.1.
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`3
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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.
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`8):
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`Annotated Figure 5 of the ’962 patent, above, illustrates an antenna
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`coil and magnetic layer configuration, including “adhesive layer 510 . . .
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`formed on a soft magnetic layer 500 [and] a receiving coil 520 . . . formed
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`on the adhesive layer 510,” with “receiving coil 520 . . . disposed on the
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`upper surface of the soft magnetic layer 500.” Ex. 1001, 6:11–30. “[T]he
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`adhesive layer 510 may include a first adhesive layer 512, an insulating layer
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`514 formed [on] the first adhesive layer 512, and a second adhesive layer
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`516 formed on the insulating layer.” Id. at 6:42–45. As depicted and
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`annotated by Petitioner, the highest position of a second magnetic sheet
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`(shown above as soft magnetic layer 500) is higher from a substrate (not
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`depicted but located at the bottom of the figure) than the lowest portion of
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`receiving coil 520. See infra § II.D, claim 1, limitation 1.6.
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`An example of the insulating layer between the two adhesive layers is
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`“polyethylene terephthalate (PET) material.” Ex. 1001, 6:47. The ’962
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`specification refers to the multi-layer adhesive as “double-sided.” Id. at
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`6:37–38.
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`4
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`Patent 9,997,962 B2
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`Figure 6 of the ’962 patent, as annotated by Petitioner, follows (Pet.
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`8):
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`
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`Figure 6 above illustrates the double-sided tape configuration (for attaching
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`a coil to a magnetic layer) with first 512 and second 516 adhesive layers
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`sandwiching insulating layer 514. See Ex. 1001, 6:42–45.
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`
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`D. Illustrative Claim
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`Independent claim 1 follows:
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`[1.0] A wireless power receiving antenna comprising:
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`[1.1] a substrate;
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`[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;
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`[1.3] a receiving coil disposed on the second magnetic
`sheet; and
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`[1.4] an adhesive layer formed between the second
`magnetic sheet and the receiving coil,
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`[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
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`insulating layer disposed between the first adhesive layer and
`the second adhesive layer, and
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`[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.
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`Ex. 1001, 8:54–9:4 (bracketed information added to conform to the Petition).
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`E. Asserted Grounds of Unpatentability
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`Petitioner contends that claims 1–4, 7, 8, 18, and 19 are unpatentable
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`as follows:2
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`Claim(s) Challenged
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`35 U.S.C. §
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`Reference(s)/Basis
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`1, 18, 19
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`2–4, 7
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`8
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`103
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`103
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`103
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`Suzuki,3 Lee4
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`Suzuki, Lee, Sawa5
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`Suzuki, Lee, Sawa,
`Park6
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`Pet. 2–3. Petitioner supports its Petition with the Declaration of Dr. Joshua
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`Phinney (Ex. 1003).
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`III. ANALYSIS
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`A. Legal Standards
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`A patent claim is unpatentable “if the differences between the
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`claimed invention and the prior art are such that the claimed invention as
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`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’962 patent’s
`effective filing date is after the March 16, 2013 effective date of the
`applicable AIA amendment, the post-AIA version of § 103 applies.
`3 U.S. Pat. No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005).
`4 U.S. Pat. No. 9,252,611 B2, issued Feb. 2, 2016 (Ex. 1006).
`5 U.S. Pat. No. 9,443,648 B2, issued Sept. 13, 2016 (Ex. 1008).
`6 U.S. Pat. No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1007).
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`a whole would have been obvious before the effective filing date of the
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`invention to a person having ordinary skill in the art to which the claimed
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`invention pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 406 (2007) (similar language albeit with respect to the
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`pre-AIA version of 35 U.S.C. § 103). “[W]hen a patent claims a structure
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`already known in the prior art that is altered by the mere substitution of
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`one element for another known in the field, the combination must do
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`more than yield a predictable result.” KSR, 550 U.S. at 416 (citing United
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`States v. Adams, 383 U.S. 39, 50‒51 (1966)). The question of
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`obviousness involves resolving underlying factual determinations
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`including (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of
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`ordinary skill in the art; and (4) objective evidence of non-obviousness.
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`B. Level of Ordinary Skill in the Art
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`Determining whether an invention would have been obvious under
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`35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent
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`art at the time of the effective filing date of the claimed invention. Graham,
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`383 U.S. at 17. The person of ordinary skill in the art is a hypothetical
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`person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art
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`include the types of problems encountered in the art, the sophistication of the
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`technology, and educational level of active workers in the field. Id. One or
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`more factors may predominate. Id.
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`Petitioner contends that a
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`[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.
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`Pet. 10 (citing Ex. 1003 ¶¶ 18–20).
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`Patent Owner neither disputes Petitioner’s proposed level of ordinary
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`skill in the art, nor proposes a different level. See generally Prelim. Resp.
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`
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`Based on a review of the preliminary record, for purposes of the
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`Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in
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`the art because it is consistent with the evidence of record, including the
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`asserted prior art and ’962 patent specification.
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`C. Claim Construction
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`In inter partes reviews, the Board interprets claim language using the
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`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
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`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under
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`this standard, claim terms have their ordinary and customary meaning, as
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`would be understood by a person of ordinary skill in the art at the time of the
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`invention, in light of the language of the claims, the specification, and the
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`prosecution history. See Phillips, 415 F.3d at 1313–14.
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`Neither party provides an explicit claim construction for any claim
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`term here. At this stage, it is not necessary to explicitly construe any claim
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`terms, because doing so would have no effect in the analyses below of
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`Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we
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`need only construe terms ‘that are in controversy, and only to the extent
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`necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci.
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`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
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`D. Discretion Under 35 U.S.C. § 314(a)
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`Patent Owner argues that we should exercise discretion to deny
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`institution under 35 U.S.C. § 314(a) in view of the District Court litigation.
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`Prelim. Resp. 4–8 (citing, inter alia, Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)).
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`Institution of an inter partes review is discretionary. See 35 U.S.C.
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`§ 314(a) (authorizing institution of an inter partes review under particular
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`circumstances, but not requiring institution under any circumstances);
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`Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he
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`agency’s decision to deny a petition is a matter committed to the Patent
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`Office’s discretion.”); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
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`(“[Section] 314(a) invests the Director with discretion on the question
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`whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid
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`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted,
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`but never compelled, to institute an IPR proceeding.”).
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`An advanced state of a parallel district court proceeding is a “factor
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`that weighs in favor of denying the Petition under § 314(a).” NHK Spring
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`Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept.
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`12, 2018) (precedential) (“NHK”). Specifically, an early trial date is part of
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`a “balanced assessment of all relevant circumstances in the case, including
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`the merits.” Consolidated Trial Practice Guide November 2019 (“TPG”)
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`58.7
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`7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`This balanced assessment involves consideration of the following
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`factors:
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`1. whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and
`the parties;
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`4. overlap between issues raised in the petition and in the
`parallel proceeding;
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`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise
`of discretion, including the merits.
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`Fintiv, Paper 11 at 5–6.
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`1. Factor 1: whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted
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`The parties agree that a stay has neither been requested nor granted in
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`the District Court case involving Apple (supra § II.B (identifying Related
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`Matters)). See Pet. 12; Pet. Prelim. Reply 1; Prelim. Resp. 30; PO Prelim.
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`Sur-reply 2.
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`Accordingly, this factor is neutral as to exercising discretion to deny
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`institution.
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`2. Factor 2: proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
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`The Board assesses this factor on a case-by-case basis. On one hand,
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`the Board takes a district court’s trial schedule at “face value” and declines
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`to question it “absent some strong evidence to the contrary.” Apple Inc. v.
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`Fintiv, Inc., IPR2020-00019, Paper 15 at 12–13 (PTAB May 13, 2020)
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`(informative). On the other hand, the Board considers the uncertainty in the
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`schedule (including that caused by the parties agreeing to jointly request
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`rescheduling of the trial date on several occasions) despite a scheduled trial
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`date. Sand Revolution II, LLC v. Cont’l Intermodal Grp. Trucking LLC,
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`IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative)
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`(“Sand Revolution II”).
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`The projected date of the Board’s final written decision here is May 4,
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`2023. Petitioner argues that the District Court’s “Markman hearing has been
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`delayed and a trial date will not be set until after an institution decision is
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`due.” Pet. Prelim. Reply 1. Petitioner points out that “the District Court
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`‘expects to set [the trial] date at the conclusion of the Markman Hearing.’”
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`Id. at 2 (quoting Ex. 1015 (revised District Court original scheduling order),
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`4). Petitioner explains that “[t]he Markman hearing . . . has been delayed to
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`May 23, 2022—after the Board’s institution decision which is due by May
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`16, 2022.” Id. (citing Ex. 2015, 1). The District Court’s revised scheduling
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`order supports Petitioner. Exhibit 2015, 1.
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`Nevertheless, Patent Owner responds that “Petitioner does not
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`seriously dispute that the [D]istrict [C]ourt case is on track for trial in March
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`2023, which is months before a final written decision would be due.” PO
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`Prelim. Sur-reply 2. Patent Owner’s argument does not dispute Petitioner’s
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`showing based on Exhibit 2015 that the District Court has not set a trial date.
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`This factor involves comparing a district court trial date to the
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`expected final written decision date and assessing weight. This comparison
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`is a proxy for the likelihood that the trial court will reach a decision on
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`validity issues before the Board reaches a final written decision. In general,
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`any trial set to occur soon after the institution decision is likely to happen
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`prior to the Board’s final written decision. Here, however, the District Court
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`has not yet set a trial date so any comparison to the projected date of a final
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`written decision involves speculation.
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`Accordingly, this factor weighs against exercising discretion to deny
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`institution.
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`3. Factor 3: investment in the parallel proceeding by the court
`and the parties
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`If, at the time of the institution decision, a district court has issued
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`substantive orders related to the challenged patent, such as a claim
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`construction order, this circumstance weighs in favor of denial. See Fintiv,
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`Paper 11 at 9–10. On the other hand, if the district court has not issued such
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`orders, this circumstance weighs against discretionary denial. Id. at 10.
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`Moreover, in evaluating this factor, “[i]f the evidence shows that the
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`petitioner filed the petition expeditiously, such as promptly after becoming
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`aware of the claims being asserted, this fact has weighed against exercising
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`the authority to deny institution under NHK.” Id. at 11.
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`Patent Owner identifies completion of Markman briefing, and
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`exchange of preliminary infringement and invalidity contentions. See
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`Prelim. Resp. 34. Patent Owner notes that “pre-trial disclosures (jury
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`instructions, exhibits lists, witness lists, discovery and deposition
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`designations) are due on December 20, 2022.” Id. at 32 (citing Ex. 2002, 4).
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`Petitioner argues that neither party explicitly construes any claim
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`terms here so that “even if the [D]istrict [C]ourt issues a Markman order
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`soon after institution, as speculated by Patent Owner, that order will not
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`reflect any investment in the merits of the invalidity issues here.” Pet.
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`Prelim. Reply 4. Petitioner points out that “final invalidity contentions are
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`not due until after institution.” Id. at 4 (citing Ex. 2015, 1).
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`The record does not show a significant investment in the District
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`Court in terms of substantive orders or actions by parties toward the
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`patentability issues presented here. As Patent Owner notes, pre-trial
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`disclosures are not due until December 20, 2022. Cf. Sand Revolution II,
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`Paper 24 at 11 (“[W]e recognize that much work remains in the district court
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`case as it relates to invalidity: fact discovery is still ongoing, expert reports
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`are not yet due, and substantive motion practice is yet to come.”). Similar to
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`the circumstances in Sand Revolution II, fact and expert discovery, final
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`invalidity contentions, and dispositive motions, are not complete in the
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`District Court. See Fintiv, Paper 11 at 9–10 (this factor concerns, in part,
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`“duplicative costs”); Apple Inc. v. Parus Holdings, Inc., IPR2020-00686,
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`Paper 9 at 17 (PTAB Sept. 23, 2020) (noting Fintiv’s concern with
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`“duplicative costs” and finding “as far as claim construction is concerned,
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`there is little risk of the parties or us duplicating work performed in the
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`Texas case should we proceed to a trial” where the parties relied on the plain
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`meaning in the IPR).
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`Petitioner also asserts that it filed the Petition “prompt[ly] within two
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`months after being served infringement contentions.” Pet. Prelim. Reply 5.
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`The record supports Petitioner and shows that Petitioner filed the Petition
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`diligently (October, 29 2021) less than two months after Patent Owner
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`served its preliminary invalidity contentions (September 7, 2021, according
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`to the District Court scheduling order). See Ex. 1015, 4. Petitioner’s
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`diligence factors holistically with the noted minimal investment in the
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`District Court parallel proceeding as summarized above.
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`Accordingly, this factor weighs against exercising discretion to deny
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`institution.
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`4. Factor 4: overlap between issues raised in the petition and in the
`parallel proceeding
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`Petitioner “stipulates that it will not pursue in the parallel district court
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`proceeding (WDTX-6-21-cv-00579) the prior art obviousness combinations
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`on which trial is instituted for the claims on which trial is instituted.” Pet.
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`Prelim. Reply 5 (citing Sand Revolution II, Paper 24 at 11–12 (addressing a
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`stipulation)). Patent Owner argues that Petitioner’s
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`narrow stipulation is insufficient and fails to resolve concerns of
`duplicative issues and inconsistent rulings. The stipulation only
`concerns the particular obviousness combinations directed to
`particular claims for which trial is instituted. Petitioner,
`however, would still be free to raise different combinations based
`on the same references, or even the same combinations directed
`to different claims. In addition, Petitioner would still be free to
`raise anticipation arguments based on the same references.
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`Prelim. Resp. 4.
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`Notwithstanding Patent Owner’s arguments, anticipation is not at
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`issue here and the stipulation does not appear too narrow as it refers to not
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`pursuing the “obvious combinations” at issue here. Therefore, at the least,
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`Petitioner’s stipulation “mitigates to some degree the concerns of duplicative
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`efforts between the district court and the Board, as well as concerns of
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`potentially conflicting decisions.” Sand Revolution II, Paper 24 at 12.
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`Accordingly, this factor weighs marginally against exercising our
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`discretion to deny institution.
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`5. Factor 5: whether the petitioner and the defendant in the parallel
`proceeding are the same party
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`The parties here are the parties in the District Court litigation. See
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`Pet. Prelim. Reply 5. Accordingly, this factor is neutral or, assuming the
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`final written decision will precede trial in the District Court given the
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`absence of a confirmed trial date at this point, weighs against discretionary
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`denial.
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`6. Factor 6: other circumstances that impact the Board’s exercise of
`discretion, including the merits
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`The factors typically considered in the exercise of discretion are part
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`of a balanced assessment of all the relevant circumstances in the case,
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`including the merits. Fintiv, Paper 11 at 14. For example, if the merits of a
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`ground raised in the petition seem particularly strong on the preliminary
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`record, this fact has favored institution. Id. at 14–15. By contrast, if the
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`merits of the grounds raised in the petition are a closer call, then that fact has
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`favored denying institution when other factors favoring denial are present.
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`Id. at 15. In Sand Revolution II, the panel determined that this factor
`
`weighed in favor of not exercising discretion when the petitioner had “set
`
`forth a reasonably strong case for the obviousness of most challenged
`
`claims.” Sand Revolution II, Paper 24 at 13.
`
`As summarized below, Petitioner sufficiently shows that at least
`
`challenged independent claim 1 is unpatentable for purposes of institution.
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`This factor is neutral as to exercising discretion to deny institution.
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`7. Conclusion
`
`The Board “holistic[ally] view[s] . . . whether efficiency and integrity
`
`of the system are best served by denying or instituting review” under
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`§ 314(a) when evaluating the Fintiv factors. Fintiv, Paper 11 at 6.
`
`Evaluating all of the factors on this record, we decline to exercise our
`
`discretion under § 314(a) to deny institution of inter partes review.8
`
`
`8 Given this decision, no need exists to reach Petitioner’s arguments in
`support of its assertion that “the Fintiv framework should be overturned.”
`See Pet. 14.
`
`15
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`E. 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 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].9 See Ex. 1005, 4:48–59.
`
`
`
`
`9 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.
`
`16
`
`
`
`IPR2022-00120
`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 phone. 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 and 18–19
`
`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. Prelim. Resp. 12–27.
`
`a) Claim 1
`
`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
`
`block antenna.” Pet. 32 (citing Ex. 1005, Fig. 3; Ex. 1003 ¶ 57). To support
`
`the showing, Petitioner annotates Suzuki’s Figure 3 as follows:
`
`17
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`
`
`Annotated Figure 3 of Suzuki above shows secondary coil 17[0]
`
`(identified by Petitioner in red text) as the “wireless power receiving
`
`antenna” as recited in the preamble of claim 1. Pet. 32. Petitioner explains
`
`that Suzuki’s “power receiver includes a ‘secondary coil block 17[0]’ . . .
`
`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).
`
`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).
`
`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):
`
`18
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`
`
`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, 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
`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
`
`19
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`layers 171L and 171H (as described in connection with Suzuki’s
`
`embodiment as illustrated with respect to Figure 17A), as follows:
`
`
`
`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
`
`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).
`
`20
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`Patent Owner argues that Petitioner fails to provide a reason to
`
`employ Suzuki’s dual magnetic layers in place of Suzuki’s single magnetic
`
`layer. Prelim. Resp. 13 (arguing that “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”), 15 (arguing that
`
`“Petitioner fails to provide any justification or motivation to combine these
`
`entirely separate embodiments”). Patent Owner also argues that “Figure 3
`
`discloses only a single ‘magnetic layer 171’.” Id. at 14.
`
`These arguments do not address Petitioner’s showing as summarized
`
`above. Contrary to Patent Owner’s arguments, on this preliminary record,
`
`Petitioner provides sufficient reasons supported by the record for combining
`
`Suzuki’s separate embodiments. In other words, Petitioner does not rely
`
`solely on Suzuki’s Figure 3 (or teachings associated therewith).
`
`Patent Owner also argues that “Suzuki teaches that the two magnetic
`
`layers (171H and 171L) are attached to the coil and are not disposed on a
`
`substrate (as required by the ’962 patent claims).” Prelim. Resp. 17
`
`(reproducing Ex. 1005, Fig. 17A). This argument does not undermine
`
`Petitioner’s showing because it separately attacks Suzuki’s Figure 17A
`
`embodiment in isolation without addressing Petitioner’s reliance on the
`
`combination of teachings about the two embod
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