`
`
`
`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 No. 9,997,962
`____________
`
`
`DECLARATION OF DR. DAVID S. RICKETTS IN SUPPORT OF
`PATENT OWNER’S RESPONSE
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ......................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ............................................... 2
`
`LEGAL PRINCIPLES .................................................................................. 5
`
`III.
`A. Claim construction ........................................................................................ 5
`B. Burden of Proof ............................................................................................. 6
`C. Anticipation ................................................................................................... 6
`D. Obviousness .................................................................................................. 6
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 8
`
`IV.
`
`GROUND 1: CLAIMS 1, 18, AND 19 ARE NOT OBVIOUS OVER
`V.
`SUZUKI IN VIEW OF LEE. .................................................................................... 8
`GROUND 2: CLAIMS 2-4 AND 7 ARE ADDITIONALLY NOT
`VI.
`OBVIOUS OVER SUZUKI IN VIEW OF LEE AND SAWA. ............................ 19
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`I, David S. Ricketts, PhD, hereby declare as follows:
`
`I.
`
`Introduction
`1.
`I am over the age of eighteen (18) years and otherwise competent to
`
`make this declaration.
`
`2.
`
`I have been retained as an expert witness on behalf of Scramoge
`
`Technology Limited (“Scramoge”) for the above-captioned inter partes review
`
`(“IPR”). I understand that the petition for inter partes review involves U.S. Patent
`
`No. 9,997,962 (“the ’962 Patent”).
`
`3.
`
`I make this declaration based on my personal knowledge, educational
`
`background and training, consideration of the materials I discuss herein, and my
`
`expert opinions.
`
`4.
`
`I am being compensated at a rate of $650 per hour for my time in this
`
`matter. My compensation does not depend on the outcome of this proceeding, and I
`
`have no financial interest in its outcome.
`
`5.
`
`In preparing this Declaration, I have reviewed and considered the ’962
`
`Patent, the ’962 Patent’s prosecution history, the Petition, Dr. Phinney’s
`
`declaration submitted in this proceeding and his deposition testimony, and each
`
`document cited in my declaration.
`
`
`
`
`1
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`II. BACKGROUND AND QUALIFICATIONS
`6. My qualifications for forming the opinions given in this declaration
`
`are summarized here and are addressed more fully in my curriculum vitae, which is
`
`submitted as Exhibit 2017. That exhibit also includes a list of my publications.
`
`7.
`
`I am currently Professor of Electrical and Computer Engineering at
`
`the North Carolina State University. In my position I conduct research and teach
`
`undergraduate and graduate students in the area of electrical and computer
`
`engineering. The courses I teach include Advanced Analog Integrated Circuit
`
`(“IC”) Design, Radio System Design, and Power Management IC Design. I also
`
`lead a research group that conducts research and design of electrical and electronic
`
`circuits, including millimeter wave and microwave circuits and systems, radio
`
`frequency identification (“RFID”) circuits, wireless power transfer circuits, analog
`
`circuits, and radio frequency (“RF”) circuits. I have served in my current position
`
`since 2012.
`
`8.
`
`Prior to my current position, I served as an Assistant Professor of
`
`Electrical and Computer Engineering and Assistant Professor of Materials Science
`
`and Engineering (Courtesy) at Carnegie Mellon University from 2006 to 2012.
`
`9.
`
`I received my B.S. and M.S. in Electrical Engineering in 1995 and
`
`1997, respectively, from Worcester Polytechnic Institute in Worcester,
`
`
`
`
`2
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`Massachusetts. I received my Ph.D. in Electrical Engineering from Harvard
`
`University in Cambridge, Massachusetts in 2006.
`
`10. Prior to entering academia, I worked as an engineer in private industry
`
`holding several engineering and managerial positions where I developed and
`
`oversaw the development of electrical and electronic circuits, including those
`
`related to power transfer, power conversion, and semiconductor design in wired
`
`and wireless circuits and systems.
`
`11. From 1995 to 1999, I held a position as an engineer and senior
`
`engineer at American Power Conversion, where I designed AC-DC and DC-DC
`
`converters.
`
`12. From 1999 to 2001, I held a position as a Principal Consultant at
`
`Renaissance Design, Inc., where I designed power management ICs.
`
`13. From 2000 to 2002, I held a position as a Manager of New Product
`
`Development at ON Semiconductor Corp., where I was responsible for six product
`
`development teams. In that role I oversaw the development of over twenty power
`
`management ICs in bipolar, CMOS, and BiCMOS technologies.
`
`14. From 2002 to 2003, I held the position of Advanced System
`
`Engineering Manager at ON Semiconductor Corp., where I directed a team of
`
`system engineers to develop multi-phase power management ICs for Intel and
`
`AMD microprocessors.
`
`
`
`
`3
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`15.
`
`I have published at least 49 academic journal papers, as shown in my
`
`curriculum vitae, relating to various topics related to millimeter wave and
`
`microwave circuits and systems, RFID circuits, wireless power transfer circuits,
`
`analog circuits, and RF circuits.
`
`16.
`
`I have been the author of at least 78 conference articles, as shown in
`
`my curriculum vitae, relating to various topics related to millimeter wave and
`
`microwave circuits and systems, RFID circuits, wireless power transfer circuits,
`
`analog circuits, and RF circuits.
`
`17. More particularly, I have published more than twenty journal and
`
`conference papers on wireless power transfer in leading publications for wireless
`
`power, such as the Transactions on Microwave Theory and Techniques, Applied
`
`Physics Letters, Antennas and Wireless Propagation Letters, as well as United
`
`States, European, and Asia-Pacific wireless conferences. Several of these papers
`
`were on the role of magnetic materials and their effect on wireless power transfer. I
`
`was an invited speaker to the 2014 Wireless Power Summit, San Francisco, a
`
`leading annual conference for wireless power industry providers in the United
`
`States. At that conference, I presented advances in wireless power transfer from
`
`my research. I have served on the technical committee for the International
`
`Microwave Symposium, where I co-chaired the committee on wireless power
`
`transfer. I have also served on the technical committee for the Institute of Electrical
`4
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`and Electronics Engineers (IEEE) Wireless Power Transfer Conference (WPTC),
`
`the premier global conference dedicated to wireless power transfer. In addition, I
`
`have developed multiple commercial solutions in wireless power for companies
`
`such as General Motors (detailed in my publications).
`
`18. My current curriculum vitae, provided in Exhibit 2017, contains more
`
`information on my background and experience, as well as the cases in which I have
`
`served as an expert witness the past four years.
`
`19. No part of my compensation is contingent upon the outcome of this
`
`litigation. I have no other interests in this litigation or with any of the parties.
`
`III. LEGAL PRINCIPLES
`A. Claim construction
`20.
`I understand that the first step in performing a validity analysis of the
`
`patent claims is to interpret the meaning and scope of the claims by construing the
`
`terms and phrases found in those claims. I understand that the appropriate
`
`construction of a claim term is its ordinary and accustomed meaning as understood
`
`by one of ordinary skill in the art at the time of the invention in the context of the
`
`entire patent.
`
`21.
`
`I understand that standard for claim construction in an inter partes
`
`review is the same standard as is applied in district court proceedings.
`
`
`
`
`5
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`22.
`
`I understand that a determination of the meaning and scope of the
`
`claims is a matter of law. I have been informed that to determine the meaning of
`
`the claims, one should consider the intrinsic evidence, which includes the patent’s
`
`claims, written description, and prosecution history.
`
`B.
`23.
`
`Burden of Proof
`I understand that in an inter partes review, the petitioner has the
`
`burden of proving unpatentability by a preponderance of the evidence.
`
`C. Anticipation
`24.
`I have been instructed by counsel and understand that a reference is
`
`anticipated if a single prior art reference discloses each and every claim element,
`
`either explicitly or inherently, as arranged in the same way as in the claim. I
`
`understand that where even one claim element is not disclosed in a reference, a
`
`contention of anticipation fails.
`
`25.
`
`I further understand that when a reference fails to explicitly disclose a
`
`claim element, that reference inherently discloses that element only if the reference
`
`must necessarily include the undisclosed claim element.
`
`D. Obviousness
`26.
`I have been instructed by counsel and understand that a combination
`
`of prior art references may render a claim obvious if, at the time of the invention, a
`
`person of ordinary skill in the art would have selected and combined those prior-art
`
`
`
`
`6
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`elements in the normal course of research and development to yield the claimed
`
`invention.
`
`27.
`
`I understand that in an obviousness analysis, one should consider the
`
`Graham factors: the scope and content of the prior art; the differences between the
`
`claimed inventions and the prior art; the level of ordinary skill in the art; and
`
`certain secondary considerations, identified below. I further understand the
`
`obviousness analysis is to be performed on a claim-by-claim basis. I understand
`
`that a person of ordinary skill in the art is a person of ordinary creativity, not an
`
`automaton.
`
`28.
`
`I have been instructed by counsel and understand that obviousness
`
`requires more than a mere showing that the prior art includes separate references
`
`covering each separate limitation in a claim under examination. I understand
`
`obviousness requires the additional showing that a person of ordinary skill at the
`
`time of the invention would have been motivated to combine those references in a
`
`manner that would include all limitations of the challenged claim, and, in making
`
`that combination, a person of ordinary skill in the art would have had a reasonable
`
`expectation of success.
`
`29.
`
`I also understand that an obviousness analysis must be conducted with
`
`awareness of the distortion caused by hindsight bias and with caution of arguments
`
`reliant upon ex post reasoning. For instance, I understand that when considering
`7
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`obviousness, I should put myself in the position of a person of ordinary skill in the
`
`field at the time of the invention, rather than considering new information that is
`
`known today but was not known before the priority date of the challenged patent.
`
`30.
`
`In particular, I understand that it is improper to use the challenged
`
`patent’s disclosure or invention as a roadmap to find its prior-art components,
`
`because such an approach discounts the value of combining various existing
`
`features or principles in a new way to achieve a new result.
`
`IV. Person of ordinary skill in the art
`31. Dr. Phinney states that a POSITA “would have a bachelor’s degree in
`
`electrical engineering, or equivalent training, and approximately two years of
`
`experience working in the electrical engineering field. Lack of work experience
`
`can be remedied by additional education, and vice versa.” Ex. 1003 at ¶ 20. For
`
`purposes of this declaration, I apply the level of skill in the art described above.
`
`V. Ground 1: Claims 1, 18, and 19 are not obvious over Suzuki in view of
`Lee.
`32.
`
`I understand that the Petition alleges that a POSITA considering the
`
`teachings of Suzuki would have “considered the teachings of Lee,” because
`
`“Suzuki chooses to omit implementation details that were known to POSITAs—for
`
`example, details related to the specific adhesive used to adhere the secondary coil
`
`to the magnetic layer.” Petition at 23. On this basis, the Petition concludes that “a
`
`POSITA would have naturally considered other literature more fully describing
`8
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`known adhesives intended for use in wireless charging applications,” and would
`
`have looked to Lee because, supposedly, Lee “describes a known adhesive [‘a
`
`double-sided tape 30b’] for such applications.” Petition at 23.
`
`33. To be clear, the Petition looks to Lee for its disclosure of the structure
`
`of adhesive used by Lee, not the “specific adhesive” used by Lee (as it contends a
`
`POSITA would have done). For instance, the Petition does not analyze or rely on
`
`the material composition of Lee’s adhesive, but rather discusses only the structure
`
`of Lee’s adhesive tape—specifically, that Lee’s adhesive tape is formed by an
`
`insulating film sandwiched between two adhesive layers. See Petition at 23-27, 38-
`
`40.
`
`34. Rather than relying on the specific adhesives used in Lee, the Petition
`
`relies on Lee’s teaching of a “double-sided tape 30b,” which as taught by Lee and
`
`acknowledged by the Petition, is not simply adhesive. Rather, it is “a base member
`
`32 made of a fluorine-resin-based film” which is attached on both sides to two
`
`“adhesive layers 31 and 33.” Ex. 1006 at 29-32. In sum, the Petition relies on Lee
`
`for its teaching of a particular way that adhesive can be structured (with two
`
`adhesive layers and an intermediate insulating film to form a double-sided tape),
`
`and does not rely on Lee for its teaching of a specific type of adhesive.
`
`35.
`
`I disagree that a POSA considering the teachings of Suzuki would
`
`look to Lee to learn about how adhesive can be structured, because Suzuki already
`9
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`discloses how its adhesive is structured. For instance, Suzuki teaches that the
`
`adhesive can be “magnetic layer 171” itself, which Suzuki implies is preferred
`
`because it simplifies the manufacturing method:
`
`The secondary coil 170 is then stuck on the other side
`(a lower surface) of the magnetic layer 171 with
`adhesive or pressure sensitive adhesive which is mixed
`with magnetic filler or magnetic powder, so that the
`secondary coil block 17 is obtained. However, not
`limited to this, the magnetic layer 171 may be formed
`of the above-mentioned magnetic material, and
`adhesive or pressure sensitive adhesive, which is
`mixed with magnetic filler or magnetic powder. In this
`example, since a sheet shaped magnetic material can
`be used, the secondary coil block 17 can be
`manufactured by a simpler manufacturing method.
`Ex. 1005 at 8:8-18.1 Suzuki goes on to emphasize in numerous places that its
`
`magnetic layer 171 is itself formed of adhesive:
`
`Subsequently, Fe- or Ni-flat powder or particle
`powder is filled between the other side (lower surface)
`of the shield layer 172 and the secondary coil 170, and
`the shield layer 172 and secondary coil 170 are stuck
`together with adhesive or pressure sensitive adhesive,
`which is mixed with magnetic filler or magnetic
`powder. As a result, the magnetic layer 171 is formed
`of the flat powder or particle powder, and the
`adhesive or pressure sensitive adhesive, while at the
`same time the secondary coil block 17 is obtained.
`
`
`
`10
`
` 1
`
`
`
`
` All emphases in quotations in this declaration are my own, unless otherwise
`indicated.
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`Ex. 1005 at 8:24-33; see also, e.g., id. at 8:50-52 (“The magnetic layer 171 is also
`
`formed of the magnetic material, and the adhesive or pressure sensitive
`
`adhesive.”); id. at 8:63-65 (same).
`
`36. The above disclosure of Suzuki teaches that shield layer 172 and
`
`secondary coil 170 are adhered together using magnetic adhesive layer 171, which
`
`would inform a POSITA that no additional adhesive (such as adhesive contained
`
`within a double-sided tape) would be necessary or beneficial to Suzuki’s system. A
`
`POSA would understand these teachings to mean that other than magnetic layer
`
`171 itself, no additional adhesive would be necessary to adhere layer 171 to coil
`
`170 (because layer 171 would already have adhesive properties).
`
`37. Furthermore, a POSITA would understand that these teachings about
`
`Suzuki’s magnetic layer 171 apply equally to Suzuki’s layers 171H and 171L,
`
`because Suzuki teaches that power transmission “can be enhanced with the two
`
`magnetic layers” of 171H and 171L. Ex. 1005 at 10:51-56. And because Suzuki
`
`uses a similar numbering convention for layers 171H and 171L as layer 171, a
`
`POSITA would understand that these layers are simply subsets of layer 171, and
`
`that Suzuki’s disclosures regarding layer 171 apply equally to layers 171H and
`
`171L. Dr. Phinney appears to agree, as he testified that layer “171 could be made
`
`up of 171H and 171L,” and that he was not aware of any ways in which he “could
`
`
`
`
`11
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`implement 171H and 171L where they would not be subsets of layer 171.” Phinney
`
`Tr. at 17:8-18.
`
`38. Additionally, the structure of magnetic layer 171 is discussed at length
`
`in Suzuki. In particular, Suzuki teaches that magnetic layer 171 can be structured in
`
`numerous ways, as depicted by Figures 3, 6A, 6B, 6C, 6D, 6E, 7A, 7B, 7C, 8, 11,
`
`13, 14A, 14B, 15A, 15B, 17A, 17B, 20, 21, 22A, and 22B, each of which shows the
`
`positioning and structure of magnetic layer 171 (and thus magnetic layers 171H and
`
`171L). For instance, Figures 7A-7C (reproduced below)
`
`
`
`
`
`
`
`
`12
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`depict the structure of magnetic layer 171, and Suzuki expressly teaches that in these
`
`embodiments layer 171 is “formed of the magnetic material, and the adhesive or
`
`pressure-sensitive adhesive.” Ex. 1005 at 8:37-52. Figure 8 shows explicitly the
`
`magnetic powder in the adhesive (Figure 7 also includes the magnetic filler or
`
`powder in 171, but is not explicitly shown).
`
`
`
`39.
`
`In sum, Suzuki already teaches a complete structure for the form in
`
`which its adhesive should be applied—by mixing adhesive with magnetic filler or
`
`magnetic powder to create magnetic layer 171 (and thus 171H and 171L).
`
`Nowhere does Suzuki suggest or imply that double-sided tape would be used in
`
`this process, and a POSITA would not look to Lee (which has different design
`
`goals and different purposes2) for guidance on how to structure the adhesive for
`
`which Suzuki already teaches a structure.
`
`
`
` 2
`
`
`
`
` For instance, a primary goal of Lee is to “provide a magnetic field shield sheet for
`a wireless charger, which fills a gap between fine pieces of an amorphous ribbon
`through a flake treatment process of the amorphous ribbon and then a compression
`laminating process with an adhesive, to thereby prevent water penetration, and
`13
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`40. Additionally, in embodiments of Suzuki where magnetic layer 171
`
`may not itself include adhesive, Suzuki teaches that layer 171 is adhered to coil
`
`170 “with adhesive or pressure sensitive adhesive which is mixed with magnetic
`
`filler or magnetic powder.” Ex. 1005 at 8:8-12. A POSITA would understand this
`
`to be a reference to the structure of an adhesive mixture, not an adhesive tape,
`
`because POSITAs do not typically refer to mixing tape with magnetic filler or
`
`magnetic powder. Thus, in the embodiment where Suzuki implies that its magnetic
`
`layer 171 is not itself an adhesive layer, Suzuki implies an adhesive structure that
`
`would not include double-sided tape.
`
`41. Furthermore, Lee teaches the use of acrylic as its specific adhesive.
`
`Ex. 1006 at 9:50-53, 18:57-61. Thus, assuming for the sake of argument that the
`
`Petition is correct that a POSITA would have looked to Lee to learn “details
`
`
`
`
`which simultaneously surrounds all surfaces of the fine pieces with an adhesive (or
`a dielectric) to thus mutually isolate the fine pieces to thereby promote reduction of
`eddy currents and prevent shielding performance from falling.” Ex. 1006 at 4:26-
`36. A POSITA would understand that all disclosed embodiments of Lee disclose
`the use of magnetic flakes, and Lee teaches that its double-sided tape is used to
`isolate the magnetic flakes. See Ex. 1006 at 10:30-36. The magnetic flakes are
`result of a specific manufacturing process and materials disclosed in Lee. For
`example, Lee teachings an amorphous ribbon that is broken into small pieces
`(flakes) by a flake treatment process. In contrast, Suzuki does not teach the use of
`magnetic flakes, and instead teaches that magnetic filler or magnetic power is
`mixed with Suzuki’s adhesive. In my opinion the combination of Suzuki and Lee
`does not teach any benefit to using double-sided tape except for isolation of
`magnetic flakes.
`
`
`
`
`14
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`related to the specific adhesive used to adhere the secondary coil to the magnetic
`
`layer” (see Petition at 23), this would simply have taught a POSITA to use acrylic
`
`as Suzuki’s adhesive, because Suzuki does not disclose what specific material is
`
`mixed with magnetic filler or magnetic powder. In other words, this would result in
`
`a combination of the two references where a POSITA would have implemented
`
`Suzuki’s disclosed adhesive structure, wherein adhesive is mixed with magnetic
`
`filler or powder to create magnetic layer 171, by using acrylic as the specific
`
`adhesive. I see no reason why a POSITA looking to Lee to learn “details related to
`
`the specific adhesive used” as the Petition suggests would look to Lee for the
`
`structure of the adhesive (which Suzuki discloses at length) as opposed to the
`
`material composition of the adhesive. Accordingly, even if the Petition’s stated
`
`motivation to learn about “the specific adhesive used” in Lee were accurate, it
`
`would not result in the use of double-sided tape as the adhesive structure, but
`
`would result in the use of acrylic using the structure Suzuki already discloses.
`
`42. Additionally, the Petition is silent as to any benefit or improvement
`
`for either (1) replacing the adhesive structure already disclosed in Suzuki with
`
`double-sided tape, or (2) adding double-sided tape to the adhesive structure already
`
`disclosed in Suzuki. The Petition states that this modification would “adhere a coil
`
`to a magnetic layer” (Petition at 24) and would result in “the adhesion of Suzuki’s
`
`coil to its magnetic layer” (Petition at 27), but Suzuki has an adhesive structure that
`15
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`already accomplishes these same results. I am thus aware of no benefit or
`
`improvement to Suzuki that would be obtained from such a substitution or
`
`replacement.
`
`43.
`
`In contrast, the inventors of the ’962 patent recognized that the
`
`double-sided tape structure would have the benefit of preventing electrical shorts.
`
`See Ex. 1001 at 7:41-46 (teaching that “when the adhesive layer is formed to have
`
`a double-sided structure including an insulating layer, an electrical short can be
`
`prevented even when a part of the adhesive layer is peeled in the process”).3 And a
`
`POSITA would have recognized that such a benefit would not be present if double-
`
`sided tape were applied to Suzuki, because Suzuki’s magnetic coil is already
`
`electrically insulated so as to prevent electrical shorts. See Ex. 1005 at 6:47-59
`
`
`
` 3
`
`
`
`
` I understand that Dr. Phinney testified at his deposition that “it’s almost
`universal” that coils are already insulated, and that it would be only “very unusual
`circumstances” where someone would design a coil that does not use insulated
`wire. See Phinney Tr. at 46:13-48:7. I disagree. First, a POSITA would readily
`understand that in industrial manufacturing processes, non-insulated wire coils can
`be laid down in a precise manner as to avoid what Dr. Phinney describes as
`“shorted turn failures.” See id. In my experience, many high-volume coils for, e.g.,
`wireless power receivers do not use pre-insulated wire coils, and instead rely on
`precise manufacturing patterns in order to prevent shorted turn failures and apply
`insulating layers onto the coils as a separate process step. Second, the use of non-
`insulated wire for the coil is what I understand the ’962 patent itself to describe,
`which is why the ’962 patent teaches that a double-sided tape can prevent electrical
`shorting between the coil and the magnetic layer. Specifically, if the ’962 patent’s
`coil were already insulated, the double-sided tape structure would not be necessary
`for preventing an electrical short.
`
`16
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`(teaching that Suzuki’s secondary coil is made of one or more wires which are
`
`“polyurethane enameled copper wire, a polyester enameled copper wire, an
`
`enameled copper wire or the like”).
`
`44. Finally, a POSITA would not have been motivated to replace
`
`Suzuki’s disclosed adhesive structure with Lee’s double-sided tape structure,
`
`because a POSITA would have viewed a double-sided tape as being
`
`disadvantageous in Suzuki’s system. For instance, Suzuki teaches a goal of
`
`“thin[ning] the secondary coil block,” (Ex. 1005 at 7:13-15), and a POSITA would
`
`understand that this goal comports with a general industry desire to “miniaturize[]”
`
`and “thin[]” power-receiving devices (id. at 1:38-41). But addition of an insulating
`
`layer in between two adhesive layers (e.g., the use of double-sided tape) would
`
`increase the thickness of Suzuki’s design, contrary to Suzuki’s goals. First, a
`
`POSITA would understand that adding the insulating layer adds overall thickness
`
`to the system, because it requires an extra layer of material, which a POSITA
`
`would understand to be significant at the scale Suzuki teaches, where the magnetic
`
`layer 171 has a thickness ranging from 0.05-0.15 mm. See Ex. 1005 at 6:66-7:12.
`
`45. Additionally, a POSITA would further recognize that the introduction
`
`of a PET (polyethylene terephthalate) film (as exists in Lee’s double-sided tape)
`
`would reduce the proximity of the magnetic material in Suzuki’s magnetic layer
`
`171 to the coil 170, and would thus either (1) reduce magnetic flux concentration
`17
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`caused by magnetic layer 171, or (2) require the thickness of magnetic layer 171 to
`
`be increased (contrary to the design goals of Suzuki).
`
`46.
`
`In light of the drawbacks identified above, to the extent a POSITA
`
`might even consider adding double-sided tape to Suzuki’s design (counter to
`
`Suzuki’s teachings), a POSITA would not have chosen to actually modify Suzuki’s
`
`design in such a manner because the POSITA would have concluded that such a
`
`modification would be detrimental to Suzuki’s system with no identified
`
`countervailing benefits.
`
`47. Given that the Petition’s stated motivation to look to Lee would not
`
`have resulted in the modification the Petition proposes (i.e., a POSITA looking to
`
`Lee for details about the specific adhesive would have looked to Lee’s teaching of
`
`acrylic, not double-sided tape, especially because Suzuki already discloses the
`
`structure of its adhesive in detail commensurate to that provided by Lee), and
`
`because the Petition’s proposed combination would be detrimental and not
`
`beneficial, it is my opinion that the Petition and Dr. Phinney have not set forth a
`
`basis for the obviousness of their combination of Suzuki with Lee.
`
`
`
`
`18
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`VI. Ground 2: Claims 2-4 and 7 are additionally not obvious over Suzuki in
`view of Lee and Sawa.
`48.
`In my opinion, the Petition does not provide a motivation to replace
`
`Suzuki’s magnetic layer 171 with the ferrosilicon (Fe-Si) material that Sawa
`
`teaches can be used for Sawa’s “first magnetic thin plate 2.”
`
`49. As an initial matter, Suzuki itself already teaches the use of various
`
`categories of the magnetic layer, specifically teaching that “nickel ferrite,
`
`manganese ferrite, amorphous magnetic alloy, Fe-Ni alloy, nanocrystalline
`
`magnetic material or the like” can be used as Suzuki’s magnetic layer. Ex. 1005 at
`
`6:66-7:12. In this teaching, Suzuki discloses three material compositions in
`
`particular: nickel ferrite, manganese ferrite, and Fe-Ni alloy. (Amorphous magnetic
`
`alloy and nanocrystalline magnetic material are not disclosures of specific material
`
`compositions; rather they disclose structures that can encompass many material
`
`compositions.) Absent from this list of Suzuki’s enumerated material compositions
`
`is Fe-Si.
`
`50. The Petition’s stated rationale for looking to Sawa for its disclosure of
`
`an Fe-Si material is that Suzuki’s list of materials “is not exclusive,” a “POSITA
`
`would have naturally considered other literature describing additional materials
`
`known to be used in magnetic layers.” Petition at 48. The Petition thus contends
`
`
`
`
`19
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`that “a POSITA would have found it obvious to utilize any of Sawa’s listed
`
`magnetic materials to implement Suzuki’s magnetic layer.” Petition at 48-49.
`
`51.
`
`I disagree with the Petition’s rationale as to why a POSITA would
`
`have supposedly looked to Sawa for its disclosure of an Fe-Si material used in
`
`Sawa’s “magnetic thin plate 2.” Rather, it is my opinion that a POSITA would not
`
`have looked to Sawa for its disclosure of magnetic materials that can be used for
`
`Sawa’s “magnetic thin plate 2,” because Sawa teaches that its “magnetic thin plate
`
`2” has a “magnetostriction constant exceeding 5ppm.” See Ex. 1008 at 5:24-28; see
`
`also id. at 5:64-6:10, 6:32-34. A POSITA would generally avoid materials with
`
`high magnetostriction constants in excess of 5ppm. Sawa teaches that in its specific
`
`implementation, the high magnetostriction can be beneficially employed in Sawa’s
`
`system to mitigate the effects of a positioning magnet saturating the magnetic
`
`layer. See Ex. 1008 at 2:47-49, 4:15-18, 5:24-51, 6:54-59, 7:19-27. A POSITA
`
`would understand that high magnetostriction material applied to Suzuki’s magnetic
`
`layer 171 would not have this same benefit and would instead be detrimental.
`
`Firstly, Suzuki does not involve the use of a positioning magnet (nor do I
`
`understand the Petition to propose such a modification to Suzuki), and thus would
`
`not benefit from magnetostriction in the manner that Sawa does. Secondly, a
`
`POSITA would understand magnetostriction to cause additional difficulties and
`
`complications as applied to Suzuki. As Sawa indicates, “magnetostriction indicates
`20
`
`
`
`
`APPLE V. SCRAMOGE
`IPR2022-0120
`Exhibit 2016
`
`

`

`a range of expansion or contraction of a magnetic substance in a magnetic field
`
`direction at a time that the magnetic substance is magnetized by an external
`
`magnetic field.” Ex. 1008 at 5:34-38. In other words, a material with a high
`
`absolute value of magnetostriction will change size (either expand or contract) in
`
`response to the application of an external magnetic field. In the case where
`
`Suzuki’s magnetic layer 171 is an adhesive with magnetic filler or powder,
`
`magnetostriction may lead to problems such as causing the adhesive to become
`
`dislodged when the powder or filler increases in size due to an applied electric
`
`field or the powder, or causing the filler particles to negatively interact with one
`
`another as they change size. And in the case where Suzuki’s magnetic layer 171 is
`
`not itself adhesive, magnetostriction will cause the magnetic layer to change size,
`
`which can negatively impact the overall system. For example, as the magnetic
`
`layer increases or decreases in size, it may pull up adhesive, stress other
`
`components, or dislocate or disconnect othe