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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
`U.S. Patent No. 9,997,962
`
`———————
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`PETITIONER’S EXHIBIT LIST ........................................................................... IV
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`THE PETITION ESTABLISHES THAT A POSITA WOULD HAVE
`FOUND IT OBVIOUS TO COMBINE SUZUKI AND LEE
`(GROUNDS 1-3) ............................................................................................. 1
`
`A.
`
`1.
`
`2.
`
`Suzuki itself suggests the very combination proposed in the
`petition. ................................................................................................. 2
`
`Suzuki teaches using pressure sensitive adhesive, which a
`POSITA would recognize as tape. ....................................................... 2
`
`Suzuki teaches placing an insulating layer and adhesive between
`its secondary coil and magnetic layer. ................................................. 6
`
`3.
`
`Suzuki teaches toward the combination, not away from it. ................. 8
`
`B.
`
`The evidence shows that using double-sided tape as proposed was
`a commonly accepted, predictable, and obvious solution. ................. 12
`
`III. THE PETITION ESTABLISHES THAT A POSITA WOULD HAVE
`FOUND IT OBVIOUS TO COMBINE SAWA WITH SUZUKI AND
`LEE (GROUND 2) ........................................................................................15
`
`A.
`
`1.
`
`2.
`
`B.
`
`Patent Owner’s “magnetostriction” argument is baseless and
`illogical. .............................................................................................. 15
`
`Suzuki utilizes Fe-Ni, one of Sawa’s allegedly harmful alloys. ........ 16
`
`Sawa illustrates that POSITAs were able to control an alloy’s
`magnetostriction. ................................................................................ 18
`
`Suzuki expressly motivates a POSITA to utilize materials like Fe-
`Ni for its magnetic layer. .................................................................... 19
`
`IV. CONCLUSION ..............................................................................................22
`
`ii
`
`

`

`
`CERTIFICATE OF SERVICE ................................................................................24
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`iii
`
`

`

`
`
`PETITIONER’S EXHIBIT LIST
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`Ex.1001
`
`U.S. 9,997,962
`
`Ex.1002
`
`Prosecution History of U.S. 9,997,962
`
`Ex.1003
`
`Declaration of Joshua Phinney under 37 C.F.R. § 1.68
`
`Ex.1004
`
`Curriculum Vitae of Joshua Phinney
`
`Ex.1005
`
`U.S. Patent No. 8,421,574 to Suzuki et al.
`
`Ex.1006
`
`U.S. Patent No. 9,252,611 to Lee
`
`Ex.1007
`
`U.S. Patent No. 8,922,162 to Park
`
`Ex.1008
`
`U.S. Patent No. 9,443,648 to Sawa
`
`Ex.1009
`
`U.S. Patent Application Pub. No. 2014/0315016
`
`Ex.1010
`
`U.S. Patent No. 8,427,100
`
`Ex.1011
`
`U.S. Patent No. 8,687,536
`
`Ex.1012
`
`U.S. Patent No. 7,161,650
`
`Ex.1013
`
`U.S. Patent No. 9,360,456
`
`Ex.1014
`
`U.S. Patent No. 9,667,086
`
`Ex.1015
`
`Scheduling Order, Scramoge Tech. Ltd. v. Apple Inc., WDTX-6-21-
`cv-00579 (filed Sept. 28, 2021)
`
`Ex.1016
`
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Apple Inc., Scramoge Tech. Ltd. v.
`Apple Inc., WDTX-6-21-cv-00579 (served Sept. 7, 2021)
`
`Ex.1017
`
`U.S. Patent No. 9,306,411
`
`Ex.1018
`
`Websters II New College Dictionary: Third Edition, (2005)
`
`Ex.1019
`
`Deposition Transcript of Dr. David Ricketts (Oct. 5, 2022)
`
`iv
`
`

`

`
`
`Ex.1020
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`Costantino Creton, “Pressure-Sensitive Adhesives: An Introductory
`Course,” MRS Bulletin, Volume 28, Issue 6, June 2003, pp. 434 –
`439, available at https://www.cambridge.org/core/journals/mrs-
`bulletin/article/abs/pressuresensitive-adhesives-an-introductory-
`course/192A601FA28683A72F98DB5A391E10DB
`
`Ex.1021
`
`U.S. Patent No. 9,440,416
`
`Ex.1022
`
`U.S. Patent No. 8,383,092
`
`Ex.1023
`
`Ex.1024
`
`Ex.1025
`
`Ex.1026
`
`Google.com, “About cambridge.org/core/journals/mrs-
`bulletin/article/abs/pressuresensitive-adhesives-an-introductory-
`course/192A601FA28683A72F98DB5A391E10DB,” available at
`https://www.google.com/search?q=About+https:%2F%2Fwww.ca
`mbridge.org%2Fcore%2Fjournals%2Fmrs-
`bulletin%2Farticle%2Fpressuresensitive-adhesives-an-
`introductory-
`course%2F192A601FA28683A72F98DB5A391E10DB&tbm=ilp&
`ilps=ADNMCi1X0jhlJM6C5hacfsMwT58hldSB9w&hl=en-
`US&biw=1920&bih=1057&dpr=1, accessed 10.18.22
`
`Kurt Schramer, “Pressure-Sensitive Adhesives 101,” ASI
`Magazine, October 1, 2009, available at
`https://www.adhesivesmag.com/articles/88511-pressure-sensitive-
`adhesives-101
`
`The Wayback Machine, capture of “Feature Article – Adhesives &
`Sealants Industry” on 10.29.2009,
`https://web.archive.org/web/20091029000228/http://www.adhesive
`smag.com/Articles/Feature_Article
`
`Google.com, “About adhesivesmag.com/articles/88511-pressure-
`sensitive-adhesives-101,” available at
`https://www.google.com/search?q=About+https:%2F%2Fwww.adh
`esivesmag.com%2Farticles%2F88511-pressure-sensitive-
`adhesives-
`101&tbm=ilp&ilps=ADNMCi19IKxi4Y1zFxERnIEP5IGRevL2A
`Q&hl=en-US&biw=1920&bih=1057&dpr=1, accessed 10.18.22
`
`Ex.1027
`
`Pizzi, A. and Mittal, K. L., Handbook of Adhesive Technology,
`
`v
`
`

`

`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`
`
`Marcel Dekker, Inc., 2003.
`
`Ex.1028
`
`U.S. Patent No. 9,353,284
`
`Ex.1029
`
`U.S. Patent No. 9,404,221
`
`Ex.1030
`
`U.S. Patent Application Publication No. 2006/0234046A1
`
`Ex.1031
`
`McBride, et al., “Preparation and Characterization of Novel
`Magnetic Nano-in-Microparticles for Site-Specific Pulmonary
`Drug Delivery,” Molecular Pharmaceutics, August 21, 2013
`
`Ex.1032
`
`U.S. Patent No. 6,864,322
`
`vi
`
`

`

`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`
`I.
`
`INTRODUCTION
`
`The Board should find the challenged claims of the ’962 patent unpatentable
`
`because Patent Owner’s arguments in its Response (“Response,” Paper 14) do
`
`nothing to overcome the showing of obviousness in the Petition. Throughout its
`
`Response, Patent Owner conveniently ignores the various teachings in Suzuki that
`
`defeat its arguments. For Ground 1, Patent Owner argues that a POSITA would not
`
`have used a double-sided tape between Suzuki’s coil and magnetic layer, for
`
`example, because the tape’s insulating layer would make Suzuki too thick. Suzuki,
`
`however, teaches an insulating layer between its coil and magnetic layer. For
`
`Ground 2, Patent Owner argues that a POSITA would not have used Sawa’s “high
`
`magnetostriction” alloys in Suzuki’s magnetic layer, for example, because of
`
`reliability problems. Suzuki, however, teaches using one of Sawa’s alloys. These
`
`and other missteps pervade the Response, rendering the arguments moot.
`
`II. THE PETITION ESTABLISHES THAT A POSITA WOULD HAVE
`FOUND IT OBVIOUS TO COMBINE SUZUKI AND LEE (GROUNDS 1-3)
`
`The Petition and Dr. Phinney’s supporting declaration establish that a
`
`POSITA at the time of the ’962 patent would have been motivated to combine the
`
`teachings of Suzuki and Lee. In particular, the Petition and Dr. Phinney’s
`
`declaration illustrate that it would have been obvious and predictable to utilize a
`
`double-sided tape, as taught by Lee, to adhere Suzuki’s secondary coil to its
`
`1
`
`

`

`
`magnetic layer. See Petition, 22-27; Ex.1003 (Phinney Decl.), ¶¶ 42-47. In short,
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`Suzuki broadly teaches adhering its secondary coil to its magnetic layer with
`
`“adhesive or pressure sensitive adhesive” (Ex.1005, 8:7-10), and Lee illustrates
`
`that it was well known that insulated double-sided tape is a common adhesive for
`
`that specific application (Ex.1006, 16:33-36).
`
`Patent Owner’s Response fails to rebut this prima facie showing of
`
`obviousness because it overlooks (i) that the most common “pressure sensitive
`
`adhesive” is tape, and (ii) that Suzuki teaches using the same insulating layer as
`
`Lee’s tape (i.e., PET film) between its secondary coil and its magnetic layer to
`
`achieve specific benefits. Thus, Suzuki—rather than teaching away from the
`
`proposed combination—would in fact have specifically motivated a POSITA to
`
`utilize an insulated tape like Lee’s.
`
`A.
`Suzuki itself suggests the very combination proposed in the
`petition.
`
`Despite Patent Owner’s suggestions otherwise, the Petition does not rely on
`
`hindsight to arrive at the proposed combination of Suzuki and Lee. Suzuki itself
`
`would have motivated a POSITA to utilize an insulted double-sided tape to adhere
`
`its secondary coil to its magnetic layer.
`
`1.
`Suzuki teaches using pressure sensitive adhesive, which a
`POSITA would recognize as tape.
`
`The Response alleges that “a POSITA would not have looked to the
`
`2
`
`

`

`
`structure of Lee’s double-sided tape in view of Suzuki, because Suzuki already
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`discusses its adhesive structure at length.” Response, 5. The “adhesive structure” in
`
`Suzuki that Patent Owner focuses on—the magnetic layer 171 that is itself formed
`
`of adhesive—however, is not the structure relied upon in the Petition. Response, 5-
`
`8 (citing Ex.1005, Fig. 8, 8:50-52). The Petition instead relies upon the different
`
`embodiment in which a separate adhesive layer is placed between the secondary
`
`coil 170 and the magnetic layer 171. See Petition, 23, 37 (citing Ex.1005, 8:8-10).
`
`Specifically, in this embodiment, Suzuki teaches using an “adhesive or pressure
`
`sensitive adhesive” to adhere the coil to the magnetic layer:
`
`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.
`
`Ex.1005, 8:8-12.
`
`This disclosure of a “pressure sensitive adhesive” (PSA) would have
`
`strongly suggested to a POSITA (if not outright taught) that an adhesive tape may
`
`be utilized to adhere the secondary coil 170 and the magnetic layer 171. See
`
`Petition, 25; Ex.1003, ¶ 46 (citing Ex.1009, [0140]). This is because adhesive tape
`
`is the “quintessential” pressure sensitive adhesive. Ex.1020, 438 (“[T]he
`
`3
`
`

`

`
`quintessential PSA application is adhesive tape.”)1. Similarly, adhesive tape is the
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`“oldest and most commonly known type of PSA.” Ex.1024, 2 (“The oldest and
`
`most commonly known type of PSA is an adhesive tape.”)2; see also Ex.1027, 832
`
`(“The major application area for all pressure-sensitive adhesives is in tapes.”)3;
`
`Ex.1032, 1:25-26 (“PSA compositions have been used as tapes, in particular as
`
`double-sided tapes used to adhere two articles together.”).
`
`In other words, to a POSITA, a disclosure of pressure sensitive adhesive is a
`
`disclosure of adhesive tape. When Suzuki explains that a “pressure sensitive
`
`adhesive” may adhere the coil to the magnetic layer, it is, at worst, rendering
`
`obvious the use of an adhesive tape, and, at best, explicitly teaching the use of an
`
`adhesive tape. Patent Owner’s suggestions otherwise contradict the overwhelming
`
`
`1 See, e.g., Ex.1021, 1:52-53 (citing Ex.1020 as background knowledge of
`
`POSITAs regarding “Conventional PSAs”); Ex.1022, 70:37-38 (same); Ex.1023, 1
`
`(site hosting Ex.1020 “first indexed by Google More than 10 years ago”).
`
`2 See, e.g., Ex.1025, 1 (10.29.2009 Wayback Machine capture of website featuring
`
`Ex.1024); Ex.1026, 1 (site hosting Ex.1024 “first indexed by Google More than 10
`
`years ago”).
`
`3 See, e.g., Ex.1028, 28:34-37 (citing Ex.1027 for background information);
`
`Ex.1029, 28:18-20 (same).
`
`4
`
`

`

`
`evidence in the record.
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`Patent Owner’s only rebuttal is to point out that Suzuki says its pressure
`
`sensitive adhesive “is mixed with magnetic filler or magnetic powder.” Response,
`
`8-9. According to Patent Owner’s expert, Dr. Ricketts, “POSITAs do not typically
`
`refer to ‘mix[ing]’ tape with magnetic filler or magnetic powder.” Id. As an initial
`
`matter, Dr. Ricketts’ testimony is unsupported by any factual evidence and should
`
`be given little weight. See 37 CFR § 42.65(a) (“Expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to
`
`little or no weight.”). Further, POSITAs in fact do refer to mixing adhesive with
`
`magnetic powder to create “magnetic adhesive tape.” See, e.g., Ex.1030, [0012]
`
`(describing a “magnetic adhesive tape … made from a mixture of a magnetizable
`
`material 10” such as “ferric oxide powder”); Ex.1031, 3576 (describing the use of
`
`“double-sided magnetic adhesive tape”). Dr. Ricketts admitted as much during his
`
`cross-examination:
`
`Q. Are you familiar with magnetic adhesive tape?
`
`A. I am familiar with adhesive that is mixed with
`
`magnetic powders so that the tape itself has magnetic
`
`properties from the magnetic material that’s embedded in
`
`the adhesive.
`
`Ex.1019, 67:13-17.
`
`5
`
`

`

`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`Accordingly, Patent Owner is wrong that a POSITA would not have
`
`considered using an adhesive tape in Suzuki. Suzuki’s explicit teaching of a
`
`“pressure sensitive adhesive” would have suggested the use of adhesive tape, the
`
`quintessential pressure sensitive adhesive.
`
`2.
`Suzuki teaches placing an insulating layer and adhesive
`between its secondary coil and magnetic layer.
`
`Patent Owner further alleges that “Suzuki’s existing disclosures” would have
`
`steered a POSITA away utilizing a double-sided tape between coil 170 and
`
`magnetic layer 171. Response, 8. The Response lists “Figures 3, 6A, 6B, 6C, 6D,
`
`6E, 7A, 7B, 7C, 8, 11, 13, 14A, 14B, 15A, 15B, 17A, 17B, 20, 21, 22A, and 22B”
`
`as support for its position. Id. This list of figures, however, conveniently omits Fig.
`
`16, which illustrates that a POSITA would have found it obvious to utilize a
`
`double-sided tape between the coil 170 and magnetic layer 171. Specifically, Fig.
`
`16 and its accompanying description explain that an “insulating thin film 175” may
`
`be located between the secondary coil 170 and magnetic material of the magnetic
`
`layer 171. Ex.1005, 10:22-26. Fig. 16 illustrates this arrangement:
`
`6
`
`

`

`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`magnetic layer 171
`
`insulating thin film 175
`175
`
`coil 170
`
`Suzuki, Fig. 16 (annotated)
`
`
`
`Suzuki notes that the insulating thin film may be “PET film,” which is the
`
`same insulating thin film used in Lee’s doubled-sided tape. See Ex.1005, 10:22-26;
`
`Ex.1006, 9:29-31 (“the double-sided tape 3 is formed of a base member 32 made
`
`of a fluorine resin-based 30 film, for example, a PET (Polyethylene Terephthalate)
`
`film”). Suzuki further explains that in this example, the magnetic layer and
`
`insulating thin film are laminated on the coil with “adhesive.” Ex.1005, 10:31-34.
`
`Thus, Suzuki discloses using PET film and adhesive between the coil 170 and
`
`magnetic layer 171. The combination proposed in the Petition uses PET film and
`
`adhesive between Suzuki’s coil 170 and magnetic layer 171 in the form of Lee’s
`
`double-sided tape:
`
`7
`
`

`

`
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`Because Suzuki itself discloses an embodiment structurally equivalent to the
`
`proposed combination, Patent Owner’s argument that Suzuki’s “existing
`
`disclosures” do “not teach or imply that double-sided tape is or could be used” is
`
`off the mark. See Response, 8. Fig. 16 illustrates that a POSITA would have
`
`naturally looked to Lee’s double-sided tape as an example of how to implement an
`
`adhesive structure that includes PET film and adhesive.
`
`
`
`In sum, Suzuki’s suggestions to use a pressure sensitive adhesive (i.e., tape)
`
`and a PET film insulating layer between its the coil 170 and magnetic layer 171 is
`
`explicit motivation for a POSITA to adhere the coil and magnetic layer with a
`
`double-sided tape, as proposed in the Petition.
`
`3.
`
`Suzuki teaches toward the combination, not away from it.
`
`The Response alleges that “a POSITA would have recognized significant
`
`drawbacks to using double-sided tape as an adhesive in Suzuki’s design.”
`
`Response, 16. Specifically, relying on Dr. Ricketts’ declaration, Patent Owner
`
`claims that “the introduction of the insulating film required by Lee’s double-sided
`
`8
`
`

`

`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`
`tape” would be “detrimental” because of either increased thickness or reduced
`
`magnetic flux. Id. Based on these alleged drawbacks, Patent Owner argues a
`
`POSITA would have “avoided” using an insulting film in Suzuki’s device.
`
`Response, 15.
`
`This argument should be rejected out of hand given that Suzuki affirmatively
`
`teaches the use of an insulating film, as discussed above. Fig. 16 of Suzuki
`
`illustrates the introduction of an “insulating thin film 175 (e.g., a PET film)”
`
`between the secondary coil 170 and magnetic material of the magnetic layer 171.
`
`Ex.1005, 10:22-26. Suzuki further explains that positioning an insulating film
`
`between the coil and magnetic layer is beneficial rather than detrimental. The
`
`insulating thin film, for example, “prevent[s] the magnetic material from leaking
`
`from a spiral gap of the secondary coil 170.” Ex.1005, 10:26-30. This benefit
`
`would have further motivated a POSITA to make the proposed combination.
`
`Even if Patent Owner is correct that there may have been some downsides to
`
`adding an insulating layer (e.g., increased thickness or flux reduction), the fact that
`
`Suzuki nevertheless adds such a layer to its device illustrates that the benefits
`
`outweigh the downsides. Dr. Ricketts’ confirmed this understanding during his
`
`cross-examination. Ex.1019, 69:5-15 (“… a POSITA would not add additional
`
`thickness to a structure such as this unless there was a benefit…”).
`
`More generally, Patent Owner’s argument that a POSITA would have
`
`9
`
`

`

`
`avoided using double-sided tape in a wireless power receiver because of “reduced
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`magnetic flux” is not credible because it discounts the “background knowledge” of
`
`a POSITA. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). By the
`
`priority date of the ’962 patent, it was already common in the wireless power art to
`
`utilize double-sided tape to adhere a power-receiving coil to a magnetic layer. See
`
`Petition, 24 (citing Ex.1003, ¶ 44). For example, Lee describes using “a double-
`
`sided tape 30b” to attach “a receiving-side secondary coil 6 of the wireless
`
`charger” to “a magnetic field shield sheet 10.” Ex.1006, 16:33-36. Dr. Phinney
`
`provides several other examples of POSITAs using double-sided tape in the same
`
`application. See Ex.1003, ¶ 44. Thus, because POSITAs had successfully made the
`
`combination proposed in the Petition many times over, a POSITA evaluating
`
`Suzuki had the background knowledge necessary to overcome potential problems
`
`related to reduced magnetic flux. See Ex.1003, ¶ 46. Patent Owner’s argument that
`
`ignores this background knowledge and treats a POSITA as an automaton should
`
`be rejected. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person
`
`of ordinary creativity, not an automaton.”).
`
`Patent Owner’s contention that increased thickness would prevent a POSITA
`
`from using double-sided tape similarly fails because POSITAs were already well-
`
`versed in how to configure the thickness of double-sided tape for specific wireless
`
`power applications. See Ex.1003, ¶ 46. Dr. Phinney explains:
`
`10
`
`

`

`
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`It was also known that pressure sensitive, double-sided tape may
`
`be configured to have a desired thickness depending on the
`
`particular application. For example, U.S. Patent App. Pub.
`
`2014/0315016 also explains that the “optimum thickness is
`
`dependent on the (opto)electronic construction, on the end
`
`application, on the nature of the embodiment of the PSA …”.
`
`Ex.1009, [0141]-[0142]. “High
`
`layer
`
`thicknesses … are
`
`employed when the aim is to achieve improved adhesion to the
`
`substrate and/or a damping effect within the (opto)electronic
`
`construction.” Ex.1009, [0141]-[0142]. “Low layer thicknesses
`
`… reduce the permeation cross section, and hence the lateral
`
`permeation and the overall thickness of the (opto)electronic
`
`construction.” Ex.1009, [0141]-[0142]. Further, it was well
`
`known that “by adjusting the height of the double-sided tape,” it
`
`was possible to form a gap of predetermined height between
`
`adjacent elements. Ex.1012, 4:42-54. Accordingly, a POSITA
`
`would expect to have success configuring Suzuki’s adhesive as
`
`a pressure-sensitive, double-sided tape as needed to align with
`
`Suzuki’s manufacturing goals.
`
`Ex.1003, ¶ 46; Petition, 25-26. Neither the Response nor Dr. Ricketts’ declaration
`
`offer any evidence to the contrary.
`
`Thus, the record illustrates that POSITAs would not have avoided using
`
`double-sided tape in wireless power receivers just because it includes an insulting
`
`film. More importantly, Fig. 16 of Suzuki establishes that a POSITA would have
`
`11
`
`

`

`
`found it beneficial to utilize an insulating film between Suzuki’s coil and magnetic
`
`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
`
`layer, just as proposed in the Petition.
`
`B.
`The evidence shows that using double-sided tape as proposed was
`a commonly accepted, predictable, and obvious solution.
`
`The Response alleges that the “Petition identifies no benefit for its proposed
`
`combination” and thus fails to show that “a POSITA would have been motivated to
`
`make its proposed combination.” Response, 10. In particular, Patent Owner argues
`
`that Petitioner’s evidence that double-sided tape was common “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.”
`
`Response, 13 (emphasis in original).
`
`This argument is flawed because it presupposes that double-sided tape had
`
`never been used to adhere a coil to a magnetic layer. That is, the proposed
`
`combination is not the type of “new” combination of known devices the Court in
`
`KSR was concerned about:
`
`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
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`important to identify a reason that would have prompted a person
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`of ordinary skill in the relevant field to combine the elements in
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`the way the claimed new invention does.
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`KSR, 550 U.S. at 418. Petitioner’s evidence does not simply establish that a
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`POSITA “could have” made the proposed combination—it establishes that
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`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
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`POSITAs actually did make the proposed combination. The record is replete with
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`examples of POSITAs adhering a receiving coil and magnetic layer with double-
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`sided tape. See Ex.1003, ¶¶ 43, 44 (citing Ex.1006, 16:33-36; Ex.1013, 22:19-26;
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`Ex.1014, 5:44-49; Ex.1017, 25:21-25, 26:15-26, Fig. 13).
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`Instead, the ’962 patent presents the situation KSR calls “a principal reason
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`for declining to allow patents for what is obvious.” 550 U.S. at 416. Specifically, it
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`presents a “combination of familiar elements according to known methods …
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`[that] does no more than yield predictable results.” Id. Lee and the numerous
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`examples noted by Dr. Phinney establish that it would have been entirely
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`predictable before the ’962 patent to adhere Suzuki’s coil and magnetic layer using
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`double-sided tape. According to KSR, this predictable result is the “principal
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`reason” the challenged claims are obvious. See Petition, 26-27 (“Accordingly, the
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`combination of Suzuki and Lee simply represents the combination of a known
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`element (Lee’s double-sided tape) with Suzuki’s known contactless power
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`transmission apparatus according to known methods to yield a predictable result
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`(the adhesion of Suzuki’s coil to its magnetic layer).”); Ex.1003, ¶ 47.
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`The evidence in the record further illustrates that a POSITA would have
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`been motivated to make the proposed combination. In each of the examples
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`identified by Dr. Phinney where a POSITA was faced with the decision on how to
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`adhere a power receiving coil to a magnetic layer, the POSITA specifically chose
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`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
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`to use double-sided tape. See Ex.1006, 16:33-36; Ex.1013, 22:19-26; Ex.1014,
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`5:44-49; Ex.1017, 25:21-25, 26:15-26, Fig. 13. A POSITA deciding how to adhere
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`Suzuki’s coil to its magnetic layer would have been in possession of the same
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`background knowledge that previously motivated POSITAs to select double-sided
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`tape. According to KSR, this “background knowledge” can provide a “reason to
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`combine the known elements in the fashion claimed by the patent at issue.” 550
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`U.S. at 418 (“Often, it will be necessary for a court to look to ... the background
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`knowledge possessed by a person having ordinary skill in the art, [] in order to
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`determine whether there was an apparent reason to combine the known elements in
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`the fashion claimed by the patent at issue.”). Accordingly, the fact that POSITAs
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`routinely adhered coils to magnetic layers using double-sided tape would have
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`motivated a POSITA looking at Suzuki to do the same. Dr. Phinney explained as
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`much in his original declaration. Ex.1003, ¶ 44 (“A POSITA would have found it
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`obvious to specifically implement Suzuki’s adhesive as a double-sided tape
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`because it was common in the wireless power art to utilize double-sided tape to
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`adhere a power-receiving coil to a magnetic layer.”).
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`Very simply, the ’962 patent’s claimed use of double-sided tape would have
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`been obvious because POSITAs were already using the double-sided tape in the
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`same way. There was no need for the Petition to use the ’962 patent as a roadmap
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`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
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`because a POSITA’s background knowledge already provided one.
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`III. THE PETITION ESTABLISHES THAT A POSITA WOULD HAVE
`FOUND IT OBVIOUS TO COMBINE SAWA WITH SUZUKI AND LEE
`(GROUND 2)
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`The Petition and Dr. Phinney’s supporting declaration also establish that a
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`POSITA at the time of the ’962 patent would have been motivated to combine the
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`teachings Sawa with Suzuki and Lee. In particular, the Petition and Dr. Phinney’s
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`declaration illustrate that it would have been obvious and predictable to implement
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`Suzuki’s magnetic layer as an Fe-Si alloy, as taught by Sawa. See Petition, 46-49;
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`Ex.1003, ¶¶ 99-104. In short, Suzuki broadly teaches that its “magnetic layer 171
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`may be a sheet made from manganese ferrite, amorphous magnetic alloy, Fe—Ni
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`alloy (Permalloy), nanocrystalline magnetic material or the like” (Ex.1005, 7:4-8),
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`and Sawa illustrates that POSITAs considered Fe-Si alloy to be one of the “like”
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`materials contemplated by Suzuki (Ex.1008, 8:59-9:2).
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`Each of Patent Owner’s arguments in its Response fails to rebut this prima
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`facie showing of obviousness. First, Patent Owner’s “magnetostriction” argument
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`is baseless because one of the alloys that would allegedly be harmful if used in
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`Suzuki, is used in Suzuki. Second, Suzuki specifically motivates a POSITA to seek
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`out “like” materials.
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`A.
`Patent Owner’s “magnetostriction” argument is baseless and
`illogical.
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`Relying upon Dr. Ricketts’ declaration testimony, Patent Owner alleges that
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`“a POSITA would not have ‘naturally considered’ the teachings of Sawa regarding
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`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
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`the materials used for Sawa’s ‘magnetic thin plate 2,’ because Sawa teaches that its
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`‘magnetic thin plate 2’ has a ‘magnetostriction constant exceeding 5 ppm.’”
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`Response, 21 (emphasis in original). According to Dr. Ricketts, a magnetic layer
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`with “high magnetostriction would not be beneficial in Suzuki’s system” because it
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`“creates the potential for reliability problems.” Response, 22 (citing Ex.2016,
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`¶¶ 50-51).
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`As an initial matter, this portion of Dr. Ricketts’ declaration enumerating
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`various potential problems with high magnetostriction is unsupported by any
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`factual evidence and is therefore entitled to little weight. See Ex.2016, ¶ 51; 37
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`CFR § 42.65(a). More importantly, Dr. Rickett’s testimony suffers from a glaring
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`logical gap: one of Sawa’s “high magnetostriction” materials he claims would not
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`be used in Suzuki, is used in Suzuki.
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`1.
`Suzuki utilizes Fe-Ni, one of Sawa’s allegedly harmful
`alloys.
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`Sawa provides a list of materials that may be used to form its magnetic thin
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`plate 2: “an Fe alloy of an Fe—Cr system, an Fe—Ni system, an Fe—Si system, or
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`the like.” Ex.1008, 8:65-67. Patent Owner claims a POSITA would not have
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`considered any of these alloys, including Fe-Ni, for Suzuki’s magnetic layer due to
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`high magnetostriction. Response, 21 (“a POSITA would not have ‘naturally
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`considered’ the teachings of Sawa regarding the materials used for Sawa’s
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`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
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`‘magnetic thin plate 2’”). Dr. Ricketts confirmed this during his cross-examination.
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`Ex.1019, 24:22-25:3 (confirming that the materials listed by Sawa for its first
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`magnetic thin plate 2 have a “large magnetostriction constant”).
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`This argument is baseless because Suzuki is explicit that “Fe-Ni” alloy may
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`be used for its magnetic layer: “magnetic layer 171 may be a sheet made from
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`manganese ferrite, amorphous magnetic alloy, Fe—Ni alloy (Permalloy) ….”
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`Ex.1005, 7:4-8. That Fe-Ni alloy is listed by both Sawa and Suzuki shows that it is
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`simply not true that a POSITA would have avoided Sawa’s alloys for Suzuki’s
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`magnetic layer due to high magnetostriction.4
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`To the extent Patent Owner instead meant that a POSITA would have
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`avoided taking the entire magnetic thin plate 2 out of Sawa and putting it into
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`Suzuki, such an argument would also fail. The Petition is clear that the
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`combination contemplates a POSITA looking only to Sawa for “additional
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`materials” that may be used in Suzuki’s magnetic layer. Petition, 48
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`(“Accordingly, when considering the description of the magnetic layer in Suzuki, a
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`4 Incredibly, elsewhere in the Response, Patent Owner acknowledges that Suzuki
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`teaches the use of Fe-Ni for its magnetic layer. Response, 24 (“one of these
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`materials [in Sawa] is also taught by Suzuki—Fe-Ni”).
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`POSITA would have naturally considered other literature describing additional
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`IPR2022-00120
`Petitioner’s Reply to Patent Owner’s Response
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`materials known to be used in magnetic layers in contactless power applications.”).
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`Moreover, any analysis by Patent Owner that attempts to bodily incorporate
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`Sawa’s magnetic thin plate 2 into Suzuki should be rejected. See In re Mouttet, 686
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`F.3d 1322, 1322 (Fed. Cir. 2012) (“The test for obviousness is not whether the
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`features of a secondary reference may be bodily incorporated into the structure of
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`the primary reference…”).
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`2.
`Sawa illustrates that POSITAs were able to control an
`alloy’s magnetostriction.
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`Even if a material with high magnetostriction would have been harmful in
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`Suzuki’s system (which has no factual basis), Sawa illustrates that POSITAs were
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`capable of controlling an alloy’s magnetostriction constant to avoid such a result.
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`Specifically, Sawa explains that the constituent elements of its magnetic thin plates
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`may be “adjusted in composition ratio in correspondence with a required magnetic
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`characteristic such as a magnetic permeability, a magnetostriction constant, a
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`magnetic flux density, and an iron loss.” Ex.1008, 11:28-32. Dr. Ricketts’
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`confirmed this during cross-examination: “A magnetostriction can be adjusted by
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`adjusting the composition of the elements and also by adjusting the manufacturing
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`process.” Ex.1019. 27:4-6. Sawa further notes that POSITAs knew how to
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`compose an Fe-Si alloy w