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
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`______________
`
`IPR2022-00120
`Patent No. 9,997,962
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`IPR2022-00120 POR
`Patent No. 9,997,962
`
`Table of Contents
`
`Introduction ........................................................................................................ 1
`I.
`II. Grounds 1-3 fail because the Petition does not properly motivate its proposed
`combination of Suzuki with Lee. ....................................................................... 2
`A. The Petition’s rationale to consider Lee’s double-sided tape in view of
`Suzuki is unsupported. .......................................................................................... 3
`B. The Petition identifies no benefit for its proposed combination. ................. 10
`C. A POSITA would have further avoided the Petition’s proposed combination
`because that combination would be detrimental to Suzuki’s goals. .................... 15
`D. The Petition’s combination is supported only by hindsight. ........................ 17
`III. Ground 2 additionally fails because the Petition fails to motivate its
`combination of Suzuki and Lee with Sawa. ..................................................... 19
`A. A POSITA looking to improve the proposed Suzuki/Lee combination would
`not have relied on Sawa. ..................................................................................... 20
`B. To the extent a POSITA were to consider Sawa in view of Suzuki and Lee,
`the references would lead a POSITA toward Fe-Ni rather than Fe-Si. ............... 23
`C. The Petition identifies no benefit that would motivate a POSITA to combine
`Sawa with Suzuki and Lee in the proposed manner. ........................................... 25
`IV. Conclusion ........................................................................................................ 29
`
`
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`i
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`IPR2022-00120 POR
`Patent No. 9,997,962
`
`Table of Authorities
`
`Cases
`Apple, Inc. v. Realtime Data LLC,
`IPR2016-01737, 2018 WL 1326656 (PTAB Mar. 13, 2018) .............................. 13
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................... 14
`Duo Sec. Inc. v. Strikeforce Techs., Inc.,
`IPR2017-01041, 2017 WL 4677235 (PTAB Oct. 16, 2017) .............................. 13
`Ex Parte Brillowska-Dabrowska,
`Appeal No. 2016-006485, 2016 WL 4525004 (PTAB Aug. 24, 2016) .............. 13
`Ex Parte Debates,
`Appeal No. 2020-006536, 2022 WL 263587 (PTAB Jan. 27, 2022) .................. 12
`Ex Parte Masashi Hayakawa,
`Appeal No. 2020-006550, 2021 WL 6133976 (PTAB Dec. 27, 2021) ............... 19
`Ex Parte Shigetoshi Ito & Daisuke Hanaoka,
`Appeal No. 2010-003391, 2012 WL 3041144 (BPAI July 23, 2012) .......... 17, 19
`Ex Parte Wilson,
`Appeal No. 2018-002717, 2019 WL 1058252 (PTAB Feb. 7, 2019) ........... 25, 28
`Grain Processing Corp. v. American–Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ....................................................................... 17, 27
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................... 17, 19, 27
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, 2018 WL 5098902 (PTAB Oct. 16, 2018) .................. 14, 15, 29
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 12, 19
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................. 13
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ........................................................................... 15
`
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`
`ii
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`Exhibit No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`IPR2022-00120 POR
`Patent No. 9,997,962
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`Exhibits
`
`Description
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Apple Inc.,
`Case No. 6:21-cv-00579-ADA, Dkt. No. 35 (W.D. Tex. Nov. 11,
`2021)
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 33 (W.D. Tex. Sept. 28,
`2021)
`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`Text Order Denying Motion to Stay Pending IPR, Solas OLED
`Ltd. v. Google, Inc., Case No. 6:19-cv-00515-ADA (W.D. Tex.
`June 23, 2020)
`Order Denying Motion to Stay Pending IPR, Multimedia Content
`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-
`00207-ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019)
`Scheduling Order, Correct Transmission LLC v. Adtran, Inc.,
`Case No. 6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10,
`2020)
`Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case
`No. 6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`Standing Order Governing Proceedings in Patent Cases, Judge
`Alan D. Albright
`Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case
`No. 6:19-cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30,
`2020)
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Apple Inc. in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`Defendant Apple Inc.’s First Amended Preliminary Invalidity
`Contentions in Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA (W.D. Tex.)
`Android Authority article: LG Innotek’s Latest wireless charger
`is Three times faster
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 28 (W.D. Tex. Nov. 15,
`2021)
`
`
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`iii
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`IPR2022-00120 POR
`Patent No. 9,997,962
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-00579-ADA
`(W.D. Tex.)
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 56 (W.D. Tex. Feb. 11,
`2022)
`Declaration of David S. Ricketts, Ph.D.
`Curriculum Vitae of David S. Ricketts, Ph.D.
`July 14, 2022 Deposition Transcript of Joshua Phinney, Ph.D.
`
`2014
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`2015
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`2016
`2017
`2018
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`iv
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`IPR2022-00120 POR
`Patent No. 9,997,962
`
`I.
`
`Introduction
`
`The Petition challenges the claims of U.S. Patent No. 9,997,962 (the “’962
`
`patent”) under three grounds of unpatentability:
`
`• Ground 1. Claims 1, 18, and 19 obvious in view of Suzuki and Lee.
`
`• Ground 2. Claims 2-4 and 7 obvious in view of Suzuki, Lee, and Sawa.
`
`• Ground 3. Claim 8 obvious in view of Suzuki, Lee, Sawa, and Park.
`
`For Ground 1, the Petition’s theory relies on the assertion that a POSITA
`
`would have been motivated to use Lee’s double-sided tape to attach Suzuki’s
`
`secondary coil to a magnetic layer. But notably absent from the Petition’s analysis
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`is any allegation whatsoever that a POSITA would have derived any benefit from
`
`doing so. In fact, a POSITA would understand that the proposed combination would
`
`be detrimental to Suzuki, because it would harm magnetic flux density in and
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`increase the thickness of Suzuki’s design. A POSITA would thus not have been
`
`motivated to make the proposed combination; for this reason alone, the Petition
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`cannot show any challenged claims to be unpatentable.
`
`Grounds 2-3 suffer the same deficiency as Ground 1, because they rely solely
`
`on the same combination of Suzuki and Lee to arrive at the limitations recited by
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`independent claims 1 and 18. And Ground 2 is further deficient because it also relies
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`on conclusory allegations of obviousness for its combination of Suzuki and Lee with
`
`Sawa’s disclosure of using an Fe-Si material for a magnetic layer. For instance, the
`
`
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`1
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`IPR2022-00120 POR
`Patent No. 9,997,962
`Petition ignores the fact that Sawa teaches the use of high magnetostriction magnetic
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`layers, which a POSITA would have avoided implementing in Suzuki. Likewise, the
`
`Petition identifies no benefit to Suzuki’s system, beyond the results already taught
`
`by Suzuki, that would result from the Petition’s proposed combination. The Petition
`
`merely assumes without support that a POSITA would have found the resulting
`
`combination to be desirable. The Petition’s failure to show why a POSITA would
`
`have made the proposed combination of Suzuki and Lee with Sawa is an independent
`
`reason why the Petition’s Grounds 2-3 fail.
`
`For the above reasons, and as explained in further detail below, the Petition
`
`fails to establish that any challenged claims are unpatentable.
`
`II. Grounds 1-3 fail because the Petition does not properly motivate its
`proposed combination of Suzuki with Lee.
`Ground 1 proposes a combination of Suzuki with Lee to address Suzuki’s
`
`failure to teach the limitation of claims 1 and 18 that recite: “wherein the adhesive
`
`layer includes a first adhesive layer in contact with the second magnetic sheet, a
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`second adhesive layer in contact with the receiving coil, and an insulating layer
`
`disposed between the first adhesive layer and the second adhesive layer.” See
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`Petition at 38-40, 43-44 (relying solely on Lee to disclose this recited structure of
`
`“the adhesive layer”).
`
`As explained in the following sections, the Petition arrives at its conclusion
`
`of obviousness only through improper hindsight. First, the Petition’s rationale for a
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`
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`2
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`IPR2022-00120 POR
`Patent No. 9,997,962
`POSITA looking to Lee would result in the POSITA focusing on the type of adhesive
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`material (i.e., acrylic) used for Lee’s adhesive, not Lee’s adhesive structure, because
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`Suzuki already discloses the structure of its adhesive at length. Second, the Petition
`
`identifies no benefit for its proposed combination. Third, the Petition ignores
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`significant drawbacks to its proposed combination.
`
`A. The Petition’s rationale to consider Lee’s double-sided tape in
`view of Suzuki is unsupported.
`The Petition begins its obviousness analysis by asserting that “one of ordinary
`
`skill in the art when considering the teachings of Suzuki would have also considered
`
`the teachings of Lee,” because allegedly, “Suzuki chooses to omit implementation
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`details that were known to POSITAs—for example, details related to the specific
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`adhesive used to adhere the secondary coil to the magnetic layer.” Petition at 23.1
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`Thus, the Petition concludes, “a POSITA would have naturally considered other
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`literature more fully describing known adhesives intended for use in wireless
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`charging applications,” and would have looked to Lee because, supposedly, Lee
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`“describes a known adhesive [‘a double-sided tape 30b’] for such applications.” Id.
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`As an initial matter, the Petition looks to Lee for its disclosure of an adhesive
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`structure, not for the material composition of the specific adhesive used. See
`
`generally Petition at 23-27, 38-40 (providing no discussion of material composition
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`
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` All emphases herein are added unless otherwise specified.
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`3
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` 1
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`IPR2022-00120 POR
`Patent No. 9,997,962
`of Lee’s adhesive, and rather discussing only its structure, wherein an insulating film
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`is sandwiched between two adhesive layers to form a double-sided tape); Ex. 2016
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`(“Ricketts Decl.”) ¶ 32-33.
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`In fact, although the Petition alleges that a POSITA would seek guidance from
`
`Lee because “Suzuki [omits] details related to the specific adhesive used,” Dr.
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`Phinney could not even answer what “specific adhesives” Lee uses without
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`reviewing Lee in detail, and admitted that he did not “recall citing anything specific
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`about what adhesives were used or disclosed in Lee”:
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`
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`Phinney Tr. at 29:5-14.
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`And although Dr. Phinney testified, after searching the disclosure of Lee, that
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`Lee states its adhesives may be made of acrylic or undisclosed other materials,
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`neither the Petition nor Dr. Phinney’s declaration relies on this teaching of Lee for
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`4
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`IPR2022-00120 POR
`Patent No. 9,997,962
`the proposed modification to Suzuki. Compare Phinney Tr. at 29:15-30:14 (stating
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`that Lee teaches the use of acrylic adhesives), with Ex. 1003 (containing no
`
`discussion of the use of acrylic for adhesive) and Petition at 22-27, 31-41 (same).
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`Thus, as noted above, the Petition relies on Lee only for the structure of its
`
`double-sided tape, and not the material composition of its adhesive. However, a
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`POSITA 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. Ricketts
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`Decl. ¶¶ 34-40.
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`For instance, Suzuki teaches that the adhesive can be “magnetic layer 171”
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`itself, which Suzuki implies is preferred because it simplifies the manufacturing
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`method:
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`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; Ricketts Decl. ¶ 35. Suzuki goes on to teach that magnetic layer
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`171 is itself the adhesive that adheres secondary coil to shield layer 172, which can
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`be seen in Figure 8 (reproduced below).
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`IPR2022-00120 POR
`Patent No. 9,997,962
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`
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`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.
`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.”);
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`id. at 8:63-65 (same). Thus, in these embodiments, no adhesive other than layer 171
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`itself is necessary to adhere shield layer 172 to coil 170, because magnetic layer 171
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`already has adhesive properties. Ricketts Decl. ¶¶ 35-36.
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`6
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`Patent No. 9,997,962
`Furthermore, the structure of magnetic layer 171 is discussed at length in
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`Suzuki. For instance, 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,
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`13, 14A, 14B, 15A, 15B, 17A, 17B, 20, 21, 22A, and 22B, each of which shows the
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`positioning and structure of magnetic layer 171 (or magnetic layers 171H and 171L,
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`which Dr. Phinney and Dr. Ricketts agree that a POSITA would understand to be
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`subsets of magnetic layer 1712). For
`
`instance, Figures 7A-7C (reproduced
`
`here) clearly depict the structure of
`
`magnetic
`
`layer 171, and Suzuki
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`expressly
`
`teaches
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`that
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`in
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`these
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`embodiments layer 171 is “formed of
`
`the magnetic material, and the adhesive
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`or pressure-sensitive adhesive.” Ex.
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`1005 at 8:37-52; Ricketts Decl. ¶ 38.
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`Thus, in the instance where Suzuki’s magnetic layer 171 is formed of
`
`adhesive, Suzuki already teaches a complete structure for the form in which its
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`adhesive should be applied—by mixing adhesive with magnetic filler or magnetic
`
`
`
` See Ricketts Decl. ¶ 37; Phinney Tr. at 16:2-7, 16:25-17:18.
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`7
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` 2
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`IPR2022-00120 POR
`Patent No. 9,997,962
`powder to create magnetic layer 171. And Suzuki does not teach or imply that
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`double-sided tape is or could be used in this process. Ricketts Decl. ¶ 38-39.
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`Accordingly, a POSITA would not look to Lee (which as described by Dr. Ricketts
`
`has substantially different design goals and purposes from Suzuki) for guidance as
`
`to how to structure Suzuki’s adhesive, in view of Suzuki’s existing disclosures for
`
`how to structure its adhesive. Id.
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`Likewise, in instances where magnetic layer 171 may not itself include
`
`adhesive, Suzuki teaches that layer 171 is stuck to coil 170 “with adhesive or
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`pressure sensitive adhesive which is mixed with magnetic filler or magnetic
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`powder.” Ex. 1005 at 8:8-12; see also Petition at 23 (omitting the emphasized
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`portion of
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`this quotation, while alleging
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`that “Suzuki chooses
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`to omit
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`implementation details”). This is relevant for two reasons. First, a POSITA would
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`understand disclosure of mixing an adhesive with magnetic filler or magnetic
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`powder as a disclosure of an adhesive structure (i.e., a mixture of any suitable
`
`adhesive material with magnetic filler or magnetic powder), such that a POSITA
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`would not need to look to Lee for disclosure of adhesive structure (i.e., Lee’s
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`disclosure of sandwiching an insulating layer between two layers of a suitable
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`adhesive material). Ricketts Decl. ¶¶ 40-41. Second, a POSITA would not
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`understand Suzuki’s teachings to be consistent with the use of a double-sided tape,
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`Patent No. 9,997,962
`because POSITAs do not typically refer to “mix[ing]” tape with magnetic filler or
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`magnetic powder. Ricketts Decl. ¶ 40.
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`Thus, no matter whether Suzuki’s adhesive is magnetic layer 171, Suzuki
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`teaches a structure for its adhesive, such that a POSITA would not need to look to
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`Lee for further disclosure of adhesive structure. Ricketts Decl. ¶¶ 35-40.
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`Instead, to the extent any POSITA looked to Lee in view of Suzuki at all, the
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`POSITA would recognize that even though Suzuki teaches with a relatively high
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`level of detail how its adhesive is structured, (Ricketts Decl. ¶¶ 40, 47), Suzuki does
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`not specifically teach the type of material used for its adhesive. Thus, a POSITA
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`looking at Lee for more information about the “specific adhesive” to use according
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`to the Petition’s purported motivation (see Petition at 23) would have looked to Lee
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`for disclosure of the specific type of material used for its adhesive.
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`Lee teaches that the specific adhesive it uses can be “acrylic,” “but may be of
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`course possibly implemented by using different types of adhesives.” Ex. 1006 at
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`9:50-53. Because “acrylic” is the only material Lee specifically explicitly describes
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`as being used for its adhesive, a POSITA looking to Lee to fill in the gaps in Suzuki’s
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`disclosure would potentially implement Suzuki’s adhesive as acrylic adhesive. What
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`such a POSITA would not do, however, is replace the adhesive structures expressly
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`disclosed by Suzuki with the double-sided tape structure disclosed in Lee. See
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`Ricketts Decl. ¶ 41.
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`IPR2022-00120 POR
`Patent No. 9,997,962
`B.
`The Petition identifies no benefit for its proposed combination.
`The Petition alleges several times that its proposed combination of Lee’s
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`double-sided tape with Suzuki would be beneficial. See Petition at 22 (alleging that
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`“it would have been . . . beneficial . . . to implement Suzuki’s adhesive layer as
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`double-sided tape, as taught by Lee”); id. at 24 (alleging that “utilizing Lee’s
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`teachings in Suzuki’s wireless power receiver [would] have been advantageous”);
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`id. at 25 (alleging that Lee’s “adhesive design” is somehow “improved”).
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`Tellingly absent from the Petition, however, is any identification of what these
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`supposed benefits of using double-sided tape in Suzuki’s system actually are. For
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`instance, there is no benefit such as improved efficiency, reduced size, or ease of
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`manufacture identified in the Petition or Dr. Phinney’s declaration. The only
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`statements that could even arguably be described as descriptions of benefits are that
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`the combination would result in adhering Suzuki’s coil to Suzuki’s magnetic layer.
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`See Petition at 24 (stating that the modification would “adhere a coil to a magnetic
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`layer”); id. at 27 (discussing “the adhesion of Suzuki’s coil to its magnetic layer”).
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`But Suzuki describes a design that would already have this result, using the structure
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`that Suzuki discloses for its own adhesive. Ricketts Decl. ¶ 42.
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`The Petition’s lack of identified benefits is further shown by Dr. Phinney’s
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`cross-examination testimony, where the only “improvement” he was able to identify
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`Lee’s double-sided tape as providing to Suzuki’s receiver was “providing
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`
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`10
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`Patent No. 9,997,962
`implementation details [for] affixing the coil.” Ex. 2018 (“Phinney Tr.”) at 40:14-
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`41:9. But, as described in Section II.A, Suzuki already provides numerous details
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`regarding how to implement the structure of its adhesive.
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`Dr. Phinney’s failure to address in his declaration any purported benefits of
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`using double-sided tape in Suzuki’s system is particularly noteworthy, considering
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`that he felt it sufficiently important to include the benefits of his own inventions in
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`his declaration. See Ex. 1003 at ¶ 9 (explaining that his invention “provides
`
`enhanced performance over frequency compared with conventional capacitors”);
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`id. at ¶ 10 (explaining that later of his work provided “multiple benefits, including
`
`waveform-shaping and reduction of switch stresses”). Dr. Phinney testified during
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`cross-examination that his declaration described the benefits of his inventions in
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`order “to explain [why] someone would care about them” (Phinney Tr. at 10:6-19),
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`but tellingly Dr. Phinney did not provide a description of the benefits of his proposed
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`combination of Lee’s double-sided tape with Suzuki’s design.
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`Furthermore, as Dr. Ricketts explains, the inventors of the ’962 patent
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`recognized that its double-sided tape structure would have the benefit of preventing
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`electrical short circuits. Ricketts Decl. ¶ 43; Ex. 1001 at 7:41-46 (teaching that
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`“when the adhesive layer is formed to have a double-sided structure including an
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`insulating layer, an electrical short can be prevented even when a part of the adhesive
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`layer is peeled in the process”). But such a benefit would not be present in the
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`11
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`Patent No. 9,997,962
`Petition’s proposed combination, because Suzuki teaches that its magnetic coil is
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`already electrically insulated in a manner that a POSITA would recognize would
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`prevent short circuits. Rickets Decl. ¶ 43; Ex. 1005 at 6:47-59 (teaching that
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`Suzuki’s secondary coil is made of one or more wires which are “polyurethane
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`enameled copper wire, a polyester enameled copper wire, an enameled copper wire
`
`or the like”).
`
`The absence of evidence for any benefit of using double-sided tape in Suzuki’s
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`design is strong evidence against obviousness. As the Court explained in KSR:
`
`Although common sense directs one to look with care
`at a patent application that claims as innovation the
`combination of two known devices according to their
`established functions, it can be important to identify a
`reason that would have prompted a person of ordinary
`skill in the relevant field to combine the elements in the
`way the claimed new invention does. This is so because
`inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed
`discoveries almost of necessity will be combinations
`of what, in some sense, is already known.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007); id. at 424 (“The proper
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`question to have asked was whether a [POSITA] . . . would have seen a benefit to
`
`upgrading Asano with a sensor.”); see also Ex Parte Debates, Appeal No. 2020-
`
`006536, 2022 WL 263587, at *4 (PTAB Jan. 27, 2022) (reversing examiner’s
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`obviousness rejection because it was “too general and [was] not tailored to
`
`explaining why one skilled in the art would have seen the benefit of modifying
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`12
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`Lerner's electronic device and tag reading method to include the specific overlay
`
`features of Detlefsen”); Duo Sec. Inc. v. Strikeforce Techs., Inc., IPR2017-01041,
`
`2017 WL 4677235, at *9 (PTAB Oct. 16, 2017) (finding no motivation to combine
`
`where “Petitioner never identifies or explains adequately any benefit or
`
`improvement gained by adding Falk, and specifically, Falk's relevant message, to
`
`the proposed combination of Feigen and Bulfer”); Ex Parte Brillowska-Dabrowska,
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`Appeal No. 2016-006485, 2016 WL 4525004, at *4 (PTAB Aug. 24, 2016)
`
`(reversing rejection based on a combination of references where it was “unclear
`
`why” the combination “would be particularly useful”).
`
`The Petition also alleges that double-sided tape was “common” and
`
`“predictable.” See Petition at 24-25. But absent motivation to actually implement
`
`double-sided tape in Suzuki’s design, this is the wrong inquiry; it goes, at most, to
`
`whether a POSITA could have made the proposed combination, not to whether a
`
`POSITA would have been motivated to make that combination as required. See
`
`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (it is
`
`not enough to show that “a skilled artisan, once presented with the two references,
`
`would have understood that they could be combined”); Apple, Inc. v. Realtime Data
`
`LLC, IPR2016-01737, 2018 WL 1326656, at *25 (PTAB Mar. 13, 2018) (granting
`
`motion to amend because petitioner did not adequately “articulate a reason why a
`
`person of ordinary skill in the art would combine the prior art references”) (citing
`
`
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`13
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`
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`IPR2022-00120 POR
`Patent No. 9,997,962
`and quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
`
`(“obviousness concerns whether a skilled artisan not only could have made but
`
`would have been motivated to make the combination or modifications of prior art to
`
`arrive at the claimed invention”)) (emphases in original). The Petition’s failure to
`
`show that a POSITA would have been motivated to make its proposed combination
`
`is shown by the Petition’s failure to articulate any benefit of that combination.
`
`The Petition’s allegation of benefits of using Lee’s adhesive structure—while
`
`simultaneously failing to provide evidence of any such benefits—amounts to an
`
`unsupported assumption that a POSITA would have seen some benefit from
`
`indiscriminately applying all adhesive structures in the art to Suzuki’s system. The
`
`Petition’s argument is thus strikingly similar to the argument the Board rejected in
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, 2018 WL 5098902
`
`(PTAB Oct. 16, 2018) (informative):
`
`Petitioner’s argument assumes that all thermoset binders are useful
`in a fiberglass insulation product of the type disclosed in Srinivasan—
`an assumption that Petitioner fails to support. Petitioner does not
`compare the thermoset binder disclosed in Worthington with the
`thermoset binder disclosed in Srinivasan, nor does Petitioner attempt to
`show that one of ordinary skill in the art would have had a reason to
`substitute Worthington’s binder for the binder disclosed in Srinivasan.
`
`Id. at *5; see also id. at *6 (“An unsupported statement that combining the teachings
`
`of the two references would have been ‘well within the skill of a POSA,’ because
`
`
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`14
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`
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`IPR2022-00120 POR
`Patent No. 9,997,962
`the results of reacting a reducing sugar with an amine reactant ‘were well-known
`
`and predictable’ does not meet Petitioner’s burden.”).
`
`Like the petitioner in Johns Manville, the Petition fails to compare the
`
`adhesive structure disclosed by Suzuki with the structure indicated by double-sided
`
`tape or identify any affirmative reason a POSITA would have had to make the
`
`proposed modification. Furthermore, as explained below, the Petition’s proposed
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`modification not only lacks benefits, but also includes significant drawbacks that
`
`would cause a POSITA to avoid making that combination.
`
`C. A POSITA would have further avoided the Petition’s proposed
`combination because that combination would be detrimental to
`Suzuki’s goals.
`As discussed above, the Petition provides no articulation of any alleged
`
`benefits of replacing the adhesive structures disclosed in Suzuki with the double-
`
`sided tape structure disclosed in Lee. However, even if the Petition had made such
`
`a showing, the inquiry would not end there, because obviousness cannot be
`
`established based solely on an allegation of benefits. Instead, the countervailing
`
`drawbacks or losses from pursuing a proposed modification must be evaluated to
`
`determine whether the proposed modification is “on balance, desirable.” Winner
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`Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) (“Trade-offs often
`
`concern what is feasible, not what is, on balance, desirable. Motivation to combine
`
`
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`15
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`
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`IPR2022-00120 POR
`Patent No. 9,997,962
`requires the latter.”). Accordingly, “the benefits, both lost and gained, should be
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`weighed against one another.” Id. at 1349 n.8.
`
`Here, a POSITA would have recognized significant drawbacks to using
`
`double-sided tape as an adhesive in Suzuki’s design. By way of background, Suzuki
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`teaches a goal of “thin[ning] the secondary coil block.” Ex. 1005 at 7:13-15; Ricketts
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`Decl. ¶ 44. As Dr. Ricketts explains, this goal is consistent with Suzuki’s recognition
`
`of a general desire in the art to “miniaturize[]” and “thin[]” power-receiving devices.
`
`Ex. 1005 at 1:38-41; Ricketts Decl. ¶ 44.
`
`Contrary to Suzuki’s goals, adding a double-sided tape structure to Suzuki
`
`(which requires an insulating layer between two adhesive layers) would increase the
`
`thickness of Suzuki’s designs. First, as a matter of common sense, the insertion of
`
`an additional layer of material would add overall thickness to Suzuki’s secondary
`
`coil block, which would be significant at the scales taught by Suzuki. See Ricketts
`
`Decl. ¶ 44. Additionally, the introduction of the insulating film required by Lee’s
`
`double-sided tape would reduce the proximity of Suzuki’s magnetic layer 171 to its
`
`coil 170. Ricketts Decl. ¶ 45. A POSITA would recognize that this would require a
`
`negative tradeoff: either magnetic flux concentration resulting from magnetic layer
`
`171 would be detrimentally reduced, or the thickness of magnetic layer 171 would
`
`be detrimentally increased. Ricketts Decl. ¶ 45.
`
`
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`16
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`IPR2022-00120 POR
`Patent No. 9,997,962
`These significant drawbacks of the Petition’s proposed combination (which
`
`the Petition fails to address) are further reasons why the Petition’s combination is
`
`not properly motivated. See Ex Parte Shigetoshi Ito & Daisuke Hanaoka, Appeal
`
`No. 2010-003391, 2012 WL 3041144, at *4 (BPAI July 23, 2012) (“[T]he Examiner
`
`relied on impermissible hindsight. . . . Since Harding strives to increase cooling, one
`
`skilled in the art would have been discouraged from modifying Harding's device
`
`with Ootsuka's nonconductive, thermally insulating, cap.”); Ricketts Decl. ¶¶ 44-47.
`
`D. The Petition’s combination is supported only by hindsight.
`Here, where the Petition’s proposed combination to Suzuki’s design would
`
`have no identified benefit but would have multiple drawbacks, the Petition
`
`necessarily arrives at its proposed combination through the impermissible use of
`
`hindsight. The Petition’s hindsight-motivated approach should be rejected. See In re
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`NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (“Care must be taken to avoid
`
`hindsight reconstruction by using ‘the patent in suit as a guide through the maze of
`
`prior art references, combining the right references in the right way so as to achieve
`
`the result of the claims in suit.’”) (quoting Grain Processing Corp. v. American–
`
`Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988)).
`
`In NTP, the Federal Circuit reviewed the Board’s rejection of certain claims
`
`of a patent application and acknowledged that all claim elements were disclosed
`
`separately in the prior art. Id. (noting that “the Board’s findings regarding the content
`
`
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`17
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`IPR2022-00120 POR
`Patent No. 9,997,962
`of the references are supported by substantial evidence”). Nevertheless, the court
`
`reversed the Board’s rejections, because the Board “improperly relied on hindsight
`
`reasoning to piece together elements to arrive at the claimed invention.” Id. The court
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`criticized the Board for “carv[ing] out” a claim limitation from one reference for
`
`combination with applicant’s admitted prior art (“AAPA”), explaining: “This type
`
`o
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