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 SUR-REPLY
`
`
`
`
`
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`
`
`____________
`
`
`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 SUR-REPLY
`
`
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`
`
`
`
`
`
`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
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`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. ....................................................................... 1
`A. Suzuki does not teach using pressure sensitive adhesive between the
` magnetic layer 171 and the secondary coil 170. ............................................ 2
`B. Suzuki does not teach placing an insulating layer between the magnetic layer
`
`171H and the secondary coil 170. .................................................................. 6
`1. Petitioner relies on new arguments, not in the Petition, to explain how
`Suzuki purportedly discloses a motivation to combine Suzuki with Lee. . 6
`
`
`
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`2. Petitioner’s new arguments still do not disclose a motivation to combine
`Suzuki with Lee. ..................................................................................... 10
`
`
`C. Because a POSITA could have combined double-sided tape with Suzuki
`does not mean they would have been motivated to do so. .................................. 14
`III. Ground 2 additionally fails because a POSITA would not have been motivated
`to combine Sawa with Suzuki and Lee. ........................................................... 17
`IV. Conclusion ....................................................................................................... 18
`
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`i
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
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`Table of Authorities
`
`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018) ......................................................................... 9, 10
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................... 15
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ........................................................................... 16
`
`Google LLC v. Koninklijke Philips N.V.,
`789 F. App’x 874 (Fed. Cir. 2019) ..................................................................... 10
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ........................................................................... 16
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................. 15
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ........................................................................... 16
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ........................................................................... 10
`
`Nautilus Hyosung Inc. v. Diebold Self-service Systems division of Diebold,
`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ............................................... 15
`
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008)) ......................................................................... 16
`Statutes
`35 U.S.C. § 312(a)(3) ......................................................................................... 9, 16
`
`37 C.F.R. § 42.23(b) ................................................................................................. 9
`
`
`
`
`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 Sur-Reply
`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)
`
`
`
`iii
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`
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`2014
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`2015
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`2016
`2017
`2018
`2019
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`IPR2022-00120 Sur-Reply
`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.
`Declaration of John Petrsoric in Support of Motion for
`Admission Pro Hac Vice
`
`iv
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`
`I.
`
`Introduction
`
`Patent Owner hereby responds to the arguments raised in Petitioner’s Reply
`
`to Patent Owner’s Response, Paper No. 19 (“Reply”). Petitioners’ obviousness
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`arguments rest on mischaracterizations of the prior art and conclusory analyses
`
`regarding motivations to combine prior art references. These assertions and analyses
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`are not only unsupported, they are directly contradicted by the evidence of record.
`
`To paper over the Petition’s clear failure to establish even a prima facia case of
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`obviousness, Petitioner has turned to new arguments which still do not establish the
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`obviousness of the claims. For the reasons explained in detail below, and the reasons
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`set forth in Patent Owner’s Response, Paper No. 14, the Petition fails to establish
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`that any challenged claims are unpatentable. The Board should find the challenged
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`claims patentable.
`
`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
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`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
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`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
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`“the adhesive layer”).
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`1
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`As explained in the Patent Owner’s Response, the Petition arrives at its
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`conclusion of obviousness only through improper hindsight. First, the Petition’s
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`rationale for a POSITA looking to Lee would result in the POSITA focusing on the
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`type of adhesive material (i.e., acrylic) used for Lee’s adhesive, not Lee’s adhesive
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`structure, because Suzuki already discloses the structure of its adhesive at length.
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`In addition, the Petition identifies no benefit for its proposed combination while
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`ignoring the drawbacks of the proposed combination. Finally, Petitioner
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`impermissibly raises new arguments and evidence regarding Suzuki in the Reply.
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`These arguments are improper and should be stricken.
`
`A.
`
`Suzuki does not teach using pressure sensitive adhesive between
`the magnetic layer 171 and the secondary coil 170.
`Petitioner asserts that “[t]he ‘adhesive structure’ in Suzuki that Patent Owner
`
`focuses on—the magnetic layer 171 that is itself formed of adhesive—however, is
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`not the structure relied upon in the Petition.” Reply at 3 (emphasis in original).
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`Based upon that assertion, Petitioner concludes that “[t]he disclosure of a ‘pressure
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`sensitive adhesive’ (PSA) would have strongly suggested to a POSITA (if not
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`outright taught) that an adhesive tape may be utilized to adhere the secondary coil
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`170 and the magnetic layer 171” because “adhesive tape is the ‘quintessential’
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`pressure sensitive adhesive.” Id. (emphasis in original). That conclusion, however,
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`is based on Petitioner misunderstanding the structure of Suzuki’s secondary coil
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`block.
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`2
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`Patent No. 9,997,962
`In presenting its theory of the “adhesive structure” of Suzuki, Petitioner relies
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`solely on the sentence from column 8, lines 8 to 12, but ignores the context of the
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`entire paragraph that addresses one of four manufacturing methods for the secondary
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`coil block 17 (as set forth from column 7, line 64 through column 8, line 65).
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`Contrary to Petitioner’s assertions, all of the manufacturing methods described by
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`Suzuki in the first embodiment include a magnetic layer 171 that is composed of a
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`mixture of magnetic material with an adhesive or pressure sensitive adhesive. The
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`description of the first manufacturing method is set forth below:
`
`Different methods of manufacturing the secondary coil block 17 are
`explained. In a manufacturing method, the heat insulation material
`obtained by mixing resin with vacuum beads is applied on one side (an
`upper Surface) of the shield layer 172 (e.g., copper foil) formed into
`one shape of FIGS. 7A-7C. Thereby, the heat insulation layer 173 is
`formed on the one side of the shield layer 172, which are then fixed
`together by drying. Subsequently, the other side (a lower surface) of
`the shield layer 172 is stuck to one side (an upper surface) of the
`magnetic layer 171 (e.g., the nickel ferrite sheet) formed into one
`shape of FIGS. 6A-6E with adhesive or pressure sensitive adhesive.
`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, 7:64-8:18 (emphases added).
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`3
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`Patent No. 9,997,962
`In its Reply, Petitioner relies on the underlined sentence. But when that
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`sentence is read in light of the preceding sentence, highlighted in bold, and the
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`succeeding sentence, highlighted in italics, it is clear that Suzuki is not teaching a
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`“different embodiment in which a separate adhesive layer is placed between the
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`secondary coil 170 and the magnetic layer 171.” Reply at 3 (emphasis in original).
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`The first sentence (“the magnetic layer 171 (e.g., the nickel ferrite sheet) formed
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`into one shape of FIGS. 6A-6E with adhesive or pressure sensitive adhesive”)
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`introduces the concept that the combination of magnetic material and adhesive are
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`used to form the magnetic layer 171. The next sentence, upon which Petitioner
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`relies, elucidates further, noting that the “magnetic layer 171” includes “adhesive or
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`pressure sensitive adhesive which is mixed with magnetic filler or magnetic
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`powder.” The final sentence (“the magnetic layer 171 may be formed of the above
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`mentioned magnetic material, and adhesive or pressure sensitive adhesive, which is
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`mixed with magnetic filler or magnetic powder”) brings it all together — the
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`magnetic layer 171 of this manufacturing method is composed of (i) adhesive or
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`pressure sensitive; (ii) a magnetic material such as a “nickel ferrite sheet”; and (iii)
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`additional magnetic filler or powder.
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`Suzuki notably describes that the magnetic material of the 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, 7:5-8,
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`4
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`or “may be magnetic coating, or a magnetic mixture of resin and magnetic filler or
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`magnetic powder, each of which contains nickel ferrite, manganese ferrite,
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`amorphous magnetic alloy, Fe—Ni alloy, nanocrystalline magnetic material or the
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`like,” Id., 7:8-12. Consistent with this disclosure, Suzuki’s first manufacturing
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`method creates a magnetic layer consisting of the two classes of magnetic materials
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`suggested earlier in the specification by Suzuki. Suzuki is not teaching a separate
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`adhesive layer between the magnetic layer 171 and the secondary coil 170.
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`The disclosure of both a “sheet” magnetic material and a “filler/powder”
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`magnetic material as part of the magnetic layer 171 in the first manufacturing method
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`is also contrasted with the other manufacturing methods described by Suzuki, which
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`include:
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`(i)
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`adhesive or pressure sensitive adhesive mixed with Fe- or Ni-flat
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`powder or particle powder magnetic powder, Ex. 1005, 8:19-36 (“the
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`magnetic layer 171 is formed of the flat powder or particle powder, and
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`the adhesive or pressure sensitive adhesive”);
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`(ii) magnetic paint or magnetic mixture of resin and magnetic filler or
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`powder combined with adhesive or pressure sensitive adhesive mixed
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`with magnetic filler or magnetic powder, Ex. 1005, 8:37-52 (“[t]he
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`magnetic layer 171 is … formed of the magnetic material, and the
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`adhesive or pressure sensitive adhesive”); and
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`5
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`(iii) adhesive or pressure sensitive adhesive sandwiched between magnetic
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`plating on each side, Ex. 1005, 8:53-65 (“[t]he magnetic layer 171 is …
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`formed of the magnetic plating, and the adhesive or pressure sensitive
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`adhesive”).
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`In all of these instances, Suzuki’s magnetic layer 171 is formed of adhesive
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`and magnetic material, with the secondary coil 170 laminated directly to the
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`magnetic layer 17.1 Suzuki teaches a complete structure for the form in which
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`adhesive is to be applied — as part of the magnetic layer. See Ex. 2016, Ricketts
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`Declaration, ¶¶ 35-36. No other adhesive is necessary to adhere the magnetic layer
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`171 to the secondary coil 170, because magnetic layer 171 already has adhesive
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`properties. As set forth in the Patent Owner’s Response, at 2-19, a POSITA would
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`therefore not be motivated to add the double-sided tape of Lee to Suzuki or replace
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`the adhesive components of Suzuki’s magnetic layer 171 with the double-sided tape
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`of Lee.
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`B.
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`Suzuki does not teach placing an insulating layer between the
`magnetic layer 171H and the secondary coil 170.
`1.
`Petitioner relies on new arguments, not in the Petition,
`to explain how Suzuki purportedly discloses a
`motivation to combine Suzuki with Lee.
`
`In Section II.A.2, entitled “Suzuki teaches placing an insulating layer and
`
`adhesive between its secondary coil and magnetic layer,” Reply at 6-8, and Section
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`II.A.3, entitled “Suzuki teaches toward the combination, not away from it,” Reply at
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`6
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`8-12, Petitioner relies on Figure 16 of Suzuki and parts of the supporting written
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`description in column 10, lines 22-34 to rebut Patent Owner’s arguments that a
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`POSITA would not be motivated to combine the double-sided tape of Lee with the
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`disclosures of Suzuki that Petitioner relies upon in its attempt to show
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`unpatentability of the ’962 Patent. In doing so, Petitioner raises a new argument not
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`previously raised in the Petition.
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`Recognizing that these are new arguments that should be stricken, Petitioner
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`attempts to justify their consideration by attacking the Patent Owner’s Response for
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`“conveniently omit[ting] Fig. 16 [of Suzuki], which illustrates that a POSITA would
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`have found it obvious to utilize a double-sided tape between the coil 170 and
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`magnetic layer 171.” Reply at 6 (emphasis added). Petitioner’s attempts to mask its
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`own failures should be rejected. It is not Patent Owner’s responsibility to address
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`every disclosure of the prior art, but to respond to the arguments and the evidence
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`raised in the Petition. And the Petition does not argue or assert that Figure 16 of
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`Suzuki suggests to a POSITA a reason to combine the double-sided tape of Lee with
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`Suzuki. In fact, the Petition does not even cite to Figure 16 of Suzuki.
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`Petitioner spends nearly a third of its reply brief addressing arguments and
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`evidence with respect to Suzuki that are nowhere to be found in the Petition. For
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`example:
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`
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`7
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`• Petitioner asserts that “Fig. 16 and its accompanying description
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`explain that an ‘insulating thin film 175’ may be located between the
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`secondary coil 170 and magnetic material of the magnetic layer 171.”
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`Reply at 6.
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`• Petitioner concludes that “Suzuki’s suggestions to use a pressure
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`sensitive adhesive (i.e., tape) and a PET film insulating layer between
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`its the coil 170 and magnetic layer 171 is explicit motivation for a
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`POSITA to adhere the coil and magnetic layer with a double-sided
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`tape, as proposed in the Petition.” Reply at 8 (emphasis added).
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`• Petitioner attacks Patent Owner’s demonstration of the detrimental
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`effect of combining the double-sided tape of Lee with the disclosures
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`of Suzuki: “This argument should be rejected out of hand given that
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`Suzuki affirmatively teaches the use of an insulating film, as discussed
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`above. Fig. 16 of Suzuki illustrates the introduction of an ‘insulating
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`thin film 175 (e.g., a PET film)’ between the secondary coil 170 and
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`magnetic material of the magnetic layer 171.” Reply at 9.
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`• Petitioner asserts that Figure 16 of Suzuki and its accompanying
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`disclosure describe a benefit because “Suzuki further explains that
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`positioning an insulating film between the coil and magnetic layer is
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`beneficial rather than detrimental. The insulating thin film, for
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`8
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`example, ‘prevent[s] the magnetic material from leaking from a spiral
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`gap of the secondary coil 170.’ Ex.1005, 10:26-30. This benefit would
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`have further motivated a POSITA to make the proposed combination.”
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`Reply at 9.
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`• Petitioner asserts that Figure 16 of Suzuki and its accompanying
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`disclosure describe a critical benefit: “More importantly, Fig. 16 of
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`Suzuki establishes that a POSITA would have found it beneficial to
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`utilize an insulating film between Suzuki’s coil and magnetic layer, just
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`as proposed in the Petition.” Reply at 11-12.
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`By statute, “the initial petition [must] identify ‘with particularity’ the
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`‘evidence that supports the grounds for the challenge to each claim. 35 U.S.C. §
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`312(a)(3).’” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775
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`(Fed. Cir. 2018) (citations omitted). Accordingly, a “reply may only respond to
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`arguments raised in the ... patent owner response,” 37 C.F.R. § 42.23(b), and may
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`not “raise[] a new issue or belatedly present[] evidence.” PTAB Consolidated Patent
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`Trial
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`Practice
`
`Guide
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`(Nov.
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`21,
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`2019),
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`available
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`at
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`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf, at 73 (“Petitioner
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`may not submit new evidence or argument in reply that it could have presented
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`earlier, e.g.[,] to make out a prima facie case of unpatentability.”); id. at 74 (“While
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`9
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`replies and sur-replies can help crystalize issues for decision, a reply or sur-reply
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`that raises a new issue or belatedly presents evidence may not be considered.”).
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`The Board routinely rejects new unpatentability arguments that were not
`
`raised in the petition. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
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`1359, 1369 (Fed. Cir. 2016) (affirming refusal to consider reply arguments relying
`
`on “new evidence ... not relied upon to support unpatentability in the Petition” and
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`a “new rationale to explain why one of skill in the art would have been motivated to
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`combine” the prior art); see also Google LLC v. Koninklijke Philips N.V., 789 F.
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`App’x 874, 876–77 (Fed. Cir. 2019) (same); Acceleration Bay, 908 F.3d at 775
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`(same). Here, Petitioner’s reply arguments and evidence regarding Figure 16 of
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`Suzuki were not raised in the Petition and are not responsive to any substantive
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`argument in the Patent Owner’s Response. Rather, they are a thinly veiled attempt
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`to fill in gaps in the Petition with new argument and should be rejected.
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`2.
`
`Petitioner’s new arguments still do not disclose a
`motivation to combine Suzuki with Lee.
`
`Suzuki describes six separate embodiments for a wireless charging system.
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`Suzuki’s first embodiment consists of Figs. 1A, 1B, 2, 3, 4A, 4B, 4C, 5, 6A, 6B, 6C,
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`6D, 6E, 7A, 7B, 7C, and 8, and the accompanying written description in the
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`specification at column 4, line 46 through column 9, line 8. The figures and
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`description describe, inter alia, with respect to the first embodiment: (i) the general
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`structure of a wireless charging system, (ii) the circuitry and structure of a wireless
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`10
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`charging transmitter, (iii) the circuitry of a wireless charging receiver; (iv) the
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`general design and structure of the wireless charging receiver coil block; (v) the
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`specific laminated structure of, and the manufacture of, the receiving coil block; and
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`(vi) various manufacturing methods for the receiving coil block (as discussed in
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`Section II.A, supra).
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`Suzuki’s second embodiment consists of Fig. 9 and the accompanying written
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`description in the specification at column 9, line 10 through column 9, line 23. The
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`second embodiment adds a radiation layer 174 to the first embodiment. See Ex.
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`1005, 9:16-19 (“The power receiver in the second embodiment further includes a
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`radiation layer 174 intervened between the battery cover 152 and the secondary coil
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`170 in order to improve radiation characteristics from the battery cover 152.”).
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`Suzuki’s third embodiment consists of Figs. 10 and 11, and the accompanying
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`written description in the specification at column 9, line 25 through column 9, line
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`40. The third embodiment describes the secondary coil block being adhered to
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`another part of the cell phone. See Ex. 1005, 9:34-37 (“the upper surface of a heat
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`insulation layer 173 is stuck on the bottom of the secondary battery with adhesive or
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`pressure sensitive adhesive”).
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`Suzuki’s fourth embodiment consists of Figs. 12 and 13, and the
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`accompanying written description in the specification at column 9, line 41 through
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`11
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`column 9, line 62. The fourth embodiment describes the secondary coil block being
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`formed in the shape of a card that will fit in the battery compartment of a cell phone.
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`Suzuki’s fifth embodiment consists of Figs. 14A, 14B, 15A, 15B, and 16, and
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`the accompanying written description in the specification at column 9, line 64
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`through column 10, line 35. The fifth embodiment describes the different
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`manufacture of the magnetic layer 171, involving the pressing of a soft magnetic
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`material made of crystalline metal material or non-crystalline metal material on one
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`side of the secondary coil 170. Ex. 1005, 10:7-10. The fifth embodiment does not
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`disclose the use of adhesive or pressure sensitive adhesive as part of the magnetic
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`layer 171, and there is a risk that the magnetic material can leak through the spiral
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`gap in the secondary coil. Ex. 1005, 10:13-15, 10:26-28. To prevent that risk, Fig.
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`16 of the fifth embodiment proposes the inclusion of “an insulating thin film 175
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`(e.g., a PET film) between the secondary coil 170 and the above mentioned magnetic
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`material.” Ex. 1005, 10:22-24.
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`Suzuki’s sixth embodiment consists of Figs. 17A, 17B, 18, 19, 20, 21, 22A
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`and 22B, and the accompanying written description in the specification at column
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`10, line 35 through column 13, line 2. The sixth embodiment describes the use of a
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`plurality of magnetic layers on both the transmitting and receiving sides in lieu of
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`the singular magnetic layer of the prior embodiments. See Ex. 1005, 11:9-17 (“[A]
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`power receiver (a secondary device) in the secondary side has a housing 150 and a
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`12
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`secondary coil 170 stuck on the inner face of the housing 150, and the plurality of
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`magnetic layers of the secondary side are magnetic layers 171H and 171L that are
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`laminated on one side of the secondary coil 170. Specifically, the magnetic layer
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`(first magnetic layer) 171H is laminated on the one side of the primary coil 170, and
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`the magnetic layer (second magnetic layer) 171L is laminated on the magnetic layer
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`171H.”). The Petition, and the accompanying declaration of Dr. Phinney, rely on
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`the plurality of magnetic layers, 171H and 171L, as rendering obvious the “first
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`magnetic sheet” and the “second magnetic sheet disposed on the first magnetic
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`sheet” of the claims of the ’962 patent. See, e.g., Petition, at 35, 36.
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`In the discussion of each of the second through sixth embodiments, the
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`specification of Suzuki recites the following: “For the purpose of clarity, like kind
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`elements are assigned the same reference numerals as depicted in the first
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`embodiment.” See, e.g., id., 9:13-15; see also id., 9:28-29, 9:45-47, 10:2-3, 10:41-
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`42. These statements inform a POSITA that the level of structural disclosure for
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`each of the second through sixth embodiments is commensurate with the level of
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`structural disclosure of the first embodiment. In other words, to the extent a
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`particular component or layer is “essential” to a given embodiment, the drawings
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`and/or written description for that embodiment will disclose that particular
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`component or layer and its role in the embodiment. See id., 4:27-28 (“FIG. 16
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`illustrates the essential parts of a power receiver in an example;”).
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`13
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`Of particular note, the sixth embodiment does not describe the use of the soft
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`magnetic material of the fifth embodiment for the magnetic layers 171H and 171L,
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`see id., 11:24-28 (“Each magnetic material of the magnetic layers 121H and 171H
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`is for example ferrite, while each magnetic material of the magnetic layers 121L and
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`171L is e.g., compound of amorphous material and resin.”), and a POSITA would
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`understand that Suzuki is not teaching the use of the soft magnetic material of the
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`fifth embodiment for the magnetic layers 171H and 171L. For the reasons set forth
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`in the Patent Owner’s Response, it would not have been obvious to a POSITA to
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`modify magnetic layer 171 of Suzuki to include an adhesive layer between the
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`magnetic layer 171 and the secondary coil 170. In addition, Suzuki already discusses
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`the use of an insulating film layer between the magnetic layer 171 and the secondary
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`coil 170 of the fifth embodiment but conspicuously avoids the use of an insulating
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`film layer in the first and sixth embodiments, because such a layer is unnecessary.
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`It would not have been obvious to a POSITA to modify the first or sixth
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`embodiments of Suzuki to include an insulating film layer between the magnetic
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`layer 171 and the secondary coil 170.
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`C. Because a POSITA could have combined double-sided tape with
`Suzuki does not mean they would have been motivated to do so.
`Petitioner asserts that because it was common for coils to be adhered to a
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`magnetic layer using double-sided tape, and therefore in the general background
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`knowledge of a POSITA, the POSITA would be motivated to make the proposed
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`14
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`combination. By Petitioner’s logic, if a POSITA could have made a combination, a
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`POSITA would have made the combination. That is not the law. As the Federal
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`Circuit has explained, “obviousness concerns whether a skilled artisan not only
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`could have made but would have been motivated to make the combinations or
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`modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-
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`Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis in original). Similarly,
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`the Board has previously remarked that “[a]n assertion that something could be done
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`does not articulate a reason why something would be done by one of ordinary skill
`
`in the art at the time of the invention and, therefore, raises a specter of impermissible
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`hindsight bias in an obviousness analysis.” Nautilus Hyosung Inc. v. Diebold Self-
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`service Systems division of Diebold, IPR2016-00633, Paper 9 at 21 (PTAB Aug. 22,
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`2016). Without “some articulated reasoning with some rational underpinning to
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`support the legal conclusion of obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed.
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`Cir. 2006), the obviousness analysis fails. The Petition does not offer an adequate
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`explanation as to how and why the double-sided tape of Lee would have been
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`combined with Suzuki. Indeed, Patent Owner has demonstrated that Suzuki would
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`gain no benefit from the inclusion of double-sided tape between the magnetic layer
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`171 and the secondary coil 170, see Patent Owner’s Response at 10-15, but instead
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`would face the drawbacks of increased thickness and diminished magnetic flux
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`concentration, see id. at 15-17.
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`15
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`“In an [inter partes review], the petitioner has the burden from the onset to
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`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
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`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. §
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`312(a)(3). This burden never shifts to the Patent Owner. See Dynamic Drinkware,
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`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech.
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`Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008))
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`(discussing the burden of proof in inter partes review). Furthermore, Petitioner
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`cannot satisfy its burden of proving obviousness by employing “mere conclusory
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`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
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`2016) (In light of Petitioner’s failure to explain why a skilled artisan would have
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`sought to combine the prior art references, the Board had no basis to conclude that
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`the Petitioner had satisfied its burden to prove that the claimed invention would have
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`been obvious.). In the present instance, Petitioner merely concludes that, because
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`double-sided tape was commonly used to adhere magnetic layers and coils, it would
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`have been obvious to use double-sided tape in Suzuki to adhere the magnetic layer
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`171 with the secondary coil 170. However, as Patent Owner has consistently
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`demonstrated, the magnetic layer 171 of Suzuki on which Petitioner relies is
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`composed of, inter alia, adhesive. See Section II.A, supra. The addition of double-
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`sided tape to that magnetic layer is therefore unnecessary, i.e., of no benefit, and
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`IPR2022-00120 Sur-Reply
`Patent No. 9,997,962
`detrimental. With no degree of benefit and some degree of detriment, Petitioner’s
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`proposed combination is clearly made in hindsight. It should be rejected.
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`III. Ground 2 additionally fails because a POSITA would not have been
`motivated to combine Sawa with Suzuki and Lee.
`Petitioner’s proposed combination of Sawa with Suzuki and Lee should also
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`be r
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