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
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`———————
`
`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
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 5
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 6
`
`GROUNDS FOR STANDING ........................................................................ 6
`
`III. NOTE ............................................................................................................... 6
`
`IV. SUMMARY OF THE ’962 PATENT ............................................................. 7
`
`V.
`
`PROSECUTION HISTORY ........................................................................... 9
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................10
`
`VII. CLAIM CONSTRUCTION ..........................................................................10
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................11
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................11
`
`A. Discretionary denial under the Fintiv factors is not appropriate ........ 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`No evidence regarding a stay ................................................... 12
`
`Parallel proceeding trial date ................................................... 12
`
`Investment in the parallel proceeding ...................................... 12
`
`Overlapping issues with the parallel proceeding ..................... 13
`
`Petitioner is a defendant ........................................................... 13
`
`Other circumstances ................................................................. 14
`
`The Fintiv Framework Should Be Overturned................................... 14
`
`Discretionary denial under General Plastic is not appropriate .......... 14
`
`B.
`
`C.
`
`2
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`
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 15
`
`
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....16
`
`A.
`
`B.
`
`C.
`
`Challenged Claims ............................................................................. 16
`
`Statutory Grounds for Challenges ...................................................... 16
`
`Ground 1: Claims 1, 18, and 19 are obvious under 35 U.S.C. § 103
`over Suzuki and Lee ........................................................................... 17
`
`1.
`
`2.
`
`3.
`
`a)
`
`b)
`
`4.
`
`5.
`
`6.
`
`Summary of Suzuki .................................................................. 18
`
`Summary of Lee ....................................................................... 20
`
`Reasons to Combine Suzuki and Lee ...................................... 22
`
`Implementing Suzuki’s Adhesive Layer Using Double-
`sided Tape ................................................................................ 23
`
`Implementing Suzuki’s Device with an NFC Coil .................. 27
`
`Claim 1 ..................................................................................... 31
`
`Claim 18 ................................................................................... 41
`
`Claim 19 ................................................................................... 44
`
`D. Ground 2: Claims 2-4 and 7 are obvious under 35 U.S.C. § 103
`over Suzuki, Lee, and Sawa. .............................................................. 46
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Summary of Sawa .................................................................... 46
`
`Reasons to Combine Sawa with Suzuki and Lee ..................... 46
`
`Claim 2 ..................................................................................... 49
`
`Claim 3 ..................................................................................... 50
`
`Claim 4 ..................................................................................... 53
`
`3
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`
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`6.
`
`Claim 7 ..................................................................................... 53
`
`E.
`
`Ground 3: Claim 8 is obvious under 35 U.S.C. § 103 over Suzuki,
`Lee, Sawa, and Park. .......................................................................... 54
`
`1.
`
`2.
`
`3.
`
`Summary of Park ..................................................................... 54
`
`Reasons to Combine Park with Suzuki and Lee ...................... 56
`
`Claim 8 ..................................................................................... 60
`
`XI. CONCLUSION ..............................................................................................61
`
`XII. MANDATORY NOTICES ...........................................................................62
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ......................................................................... 62
`
`Related Matters ................................................................................... 62
`
`Lead and Back-up Counsel and Service Information ........................ 62
`
`CERTIFICATE OF WORD COUNT ......................................................................64
`
`CERTIFICATE OF SERVICE ................................................................................65
`
`4
`
`
`
`
`
`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`
`Ex.1018
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`PETITIONER’S EXHIBIT LIST
`
`U.S. 9,997,962
`
`Prosecution History of U.S. 9,997,962
`
`Declaration of Joshua Phinney under 37 C.F.R. § 1.68
`Curriculum Vitae of Joshua Phinney
`
`U.S. Patent No. 8,421,574 to Suzuki et al.
`U.S. Patent No. 9,252,611 to Lee
`
`U.S. Patent No. 8,922,162 to Park
`
`U.S. Patent No. 9,443,648 to Sawa
`U.S. Patent Application Pub. No. 2014/0315016
`
`U.S. Patent No. 8,427,100
`
`U.S. Patent No. 8,687,536
`U.S. Patent No. 7,161,650
`
`U.S. Patent No. 9,360,456
`
`U.S. Patent No. 9,667,086
`Scheduling Order, Scramoge Tech. Ltd. v. Apple Inc., WDTX-6-21-
`cv-00579 (filed Sept. 28, 2021)
`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)
`
`U.S. Patent No. 9,306,411
`
`Websters II New College Dictionary: Third Edition, (2005)
`
`
`5
`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
`
`U.S. Patent No. 9,997,962 (the “’962 patent,” Ex.1001) is generally directed
`
`to wireless power reception via electromagnetic induction, a concept long known
`
`and applied in many different devices. These devices typically include a power-
`
`receiving coil and a magnetic layer adhered to the coil. The ’962 patent describes
`
`and claims no more than well-known concepts related to the coil and magnetic
`
`layer, such as embedding the coil within the magnetic layer and adhering the coil
`
`to the magnetic layer with a multi-layer adhesive.
`
`Pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100, Apple Inc.
`
`(“Petitioner”) respectfully requests that the Board review and cancel as
`
`unpatentable under 35 U.S.C. §103 claims 1-4, 7, 8, 18, and 19 (hereinafter, the
`
`“Challenged Claims”) of the ’962 patent.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’962 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
`
`6
`
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`
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`IV. SUMMARY OF THE ’962 PATENT
`
`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`The ’962 patent generally relates to “a receiving antenna for wireless
`
`charging and a wireless power receiving device including the same.” Ex.1001,
`
`1:18-20. The ’962 patent explains that the receiving antenna “includes a substrate,
`
`a soft magnetic layer stacked on the substrate, and a receiving coil configured to
`
`receive electromagnetic energy.” Ex.1001, Abstract. The ’962 patent explains that
`
`the receiving coil is “wound in parallel with a plane of the soft magnetic layer and
`
`formed inside of the soft magnetic layer.” Ex.1001, 2:3-4; Ex.1003, ¶ 28.
`
`Fig. 5 of the ’962 patent, annotated below, illustrates this coil and magnetic
`
`layer configuration, including “an adhesive layer 510 … formed on a soft magnetic
`
`layer 500 [and] a receiving coil 520 … formed on the adhesive layer 510,” with
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`“receiving coil 520 … disposed on the upper surface of the soft magnetic layer
`
`500.” Ex.1001, 6:11-30. The ’962 patent specification, in particular, explains that
`
`the “receiving coil 520 may be embedded inside of the soft magnetic layer 500.”
`
`Ex.1001, 6:30-31. The Challenged Claims characterize this “embedding” concept
`
`as “a height of a highest position of the second magnetic sheet from the substrate is
`
`higher than a height of a lowest position of the receiving coil from the substrate.”
`
`Ex.1001, claim 1; Ex.1003, ¶ 29.
`
`7
`
`
`
`
`highest position of
`the second magnetic
`sheet
`
`adhesive
`layer
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`receiving coil embedded
`in magnetic layer
`
`height from
`substrate
`
`lowest portion of the
`receiving coil
`Ex.1001, Fig. 5 (annotated); Ex.1003, ¶ 29.
`
`soft magnetic
`layer
`
`
`
`The ’962 patent further describes and claims details about the adhesive
`
`layer: “the adhesive layer 510 may include a first adhesive layer 512, an insulating
`
`layer 514 formed [on] the first adhesive layer 512, and a second adhesive layer 516
`
`formed on the insulating layer.” Ex.1001, 6:42-45. One example of the insulating
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`layer between the two adhesive layers is “polyethylene terephthalate (PET)
`
`material.” Ex.1001, 6:47. The ’962 specification refers to the multi-layer adhesive
`
`as “double-sided.” Ex.1001, 6:37-38. This double-sided tape configuration is
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`illustrated in Fig. 6, shown below. Ex.1003, ¶ 30.
`
`8
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`
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`second adhesive layer
`
`
`
`adhesive
`layer
`
`insulating layer
`
`first adhesive
`layer
`Ex.1001, Fig. 6 (annotated); Ex.1003, ¶ 30
`
`
`
`As explained below, the concept of embedding a coil into a magnetic layer
`
`with a multi-layer adhesive was hardly new as of the earliest alleged priority date
`
`of the ’962 patent. Ex.1003, ¶ 31.
`
`V.
`
`PROSECUTION HISTORY
`
`The ’962 patent was filed December 28, 2015 as U.S. Application No.
`
`14/901,426. Ex.1002, 406. The ’962 patent was filed as a National Stage entry of
`
`PCT Application No. PCT/KR2014/005258 filed June 16, 2014. Ex.1002, 424. The
`
`’962 patent separately claims foreign priority to Korean Application No. 10-2013-
`
`0074620 filed June 27, 2013. Ex.1002, 425. It is unnecessary to determine whether
`
`the ’962 patent is entitled to its earliest alleged priority date because the prior art
`
`relied upon herein pre-dates the earliest alleged priority date.
`
`During a brief prosecution, the Examiner rejected the pending claims as
`
`anticipated over various references. Ex.1002, 355-64. To overcome the rejection,
`
`the applicant amended the independent claims to recite a multi-layer adhesive
`
`9
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`
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`layer, a multi-sheet magnetic layer, and a specific relation between the “heights” of
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`the highest portion of the second magnetic sheet and the lowest portion of the
`
`receiving coil. Ex.1002, 45-55. The Examiner subsequently allowed the claims,
`
`referencing the entirety of the independent claims in the reasons for allowance.
`
`Ex.1002, 25-30. The ’962 patent issued on June 12, 2018. Ex.1002, 15-16.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A Person of Ordinary Skill in The Art (“POSITA”) in June 2013 would have
`
`had a working knowledge of the network communication art that is pertinent to the
`
`’962 patent. That person would have a bachelor’s degree in electrical engineering,
`
`or equivalent training, and approximately two years of experience working in the
`
`field of wireless power transmission. Lack of work experience can be remedied by
`
`additional education, and vice versa. Ex.1003, ¶¶ 18-20.
`
`VII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “shall be construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b). The Board only construes the claims to the extent necessary to resolve
`
`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`10
`
`
`
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`of this proceeding, the terms of the Challenged Claims should be given their plain
`
`and ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶ 32.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
`
`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for § 314 denial strongly favor institution. See
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential). The district court case is at an early stage and no trial date has been
`
`set despite the court issuing a scheduling order. Petitioner has diligently prepared
`
`and filed this petition within eight weeks of being served Patent Owner’s
`
`infringement contentions. Ex.1016, 1-2, 7. The petition is also well within the one-
`
`year timeframe allowed by Congress.
`
`
`1 Petitioner does not concede that any term in the challenged claims meets the
`
`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
`
`patentable subject matter under 35 U.S.C. § 101.
`
`11
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`1. No evidence regarding a stay
`
`No motion to stay has been filed, so the Board should not infer the outcome
`
`of such a motion. Sand Revolution II LLC v. Continental Intermodal Group –
`
`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
`
`(informative); see also Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-
`
`01359, Paper 15 at 11 (Feb. 12, 2021) (“It would be improper to speculate, at this
`
`stage, what the Texas court might do regarding a motion to stay…”). Thus, this
`
`factor is neutral on discretionary denial.
`
`2. Parallel proceeding trial date
`
`The co-pending litigation is at an early stage. The district court recently
`
`issued a scheduling order but did not set a trial date. Ex.1015, 4. Instead, the court
`
`“expects to set this date” at the conclusion of the Markman hearing, scheduled for
`
`March 8, 2022. Ex.1015, 3, 4. Without a trial date, this factor weighs heavily
`
`against discretionary denial. See Sand Revolution II at 8-10, 14 (uncertainty over
`
`district court’s trial date weighed against discretionary denial).
`
`3. Investment in the parallel proceeding
`
`The co-pending litigation is in its early stages, and the investment in it has
`
`been minimal. As mentioned above, a claim construction hearing has not yet
`
`occurred, fact discovery will not close until September 2022, and expert discovery
`
`will not close until November 2022. Ex.1015, 3; see PEAG LLC v. Varta
`
`12
`
`
`
`
`Microbattery GmbH, IPR2020-01214, Paper 8 at 17 (Jan. 6, 2021). This lack of
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`investment favors institution.
`
`Moreover, Petitioner only learned which claims were being asserted on
`
`September 7, 2021. See Ex.1016 (infringement contentions). In the intervening
`
`eight weeks, Petitioner has worked expeditiously to file this petition. Under Fintiv,
`
`Petitioner’s prompt filing “weigh[s] against exercising the authority to deny
`
`institution.” Fintiv, Paper 11 at 11 (“If the evidence shows that the petitioner filed
`
`the petition expeditiously, such as promptly after becoming aware of the claims
`
`being asserted, this fact has weighed against exercising the authority to deny
`
`institution under NHK.”).
`
`4. Overlapping issues with the parallel proceeding
`
`There is no present overlap of prior art issues due to the early stage of
`
`district court litigation. For example, Petitioner has not served its preliminary
`
`invalidity contentions in the district court proceeding. Consequently, this factor
`
`favors institution.
`
`5. Petitioner is a defendant
`
`Petitioner is a defendant in the litigation. That is true of most Petitioners in
`
`IPR proceedings. Accordingly, this factor should not be a basis for denying
`
`institution.
`
`13
`
`
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`
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`6. Other circumstances
`
`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`The prior art presented in this Petition renders the Challenged Claims
`
`unpatentable as obvious. The merits of Petitioner’s arguments are strong, and this
`
`factor weighs against discretionary denial.
`
`As such, because the Fintiv factors are either neutral or weigh against
`
`discretionary denial, and because this Petition was filed more than six months
`
`before the statutory bar date, institution should not be denied on discretionary
`
`factors.
`
`B.
`
`The Fintiv Framework Should Be Overturned
`
`Apart from Petitioner’s showing that the Fintiv factors favor institution, the
`
`Fintiv framework should be overturned because it (1) exceeds the Director’s
`
`authority, (2) is arbitrary and capricious, and (3) was adopted without notice-and-
`
`comment rulemaking. See Apple, Inc. et al. v. Iancu, No. 5:20-cv-06128-EJD
`
`(N.D. Cal.), Dkt. No. 65.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’962 patent has not been challenged in any prior IPR petition, so none of
`
`the General Plastic discretionary institution factors apply to this Petition. See
`
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`
`at 16 (PTAB Sept. 6, 2016) (Section II.B.4.i. precedential).
`
`14
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative of nor redundant to the prosecution of the ’962
`
`patent. The Examiner did not consider any of the references relied upon in this
`
`petition. Although a family member of the Lee reference was cited on the face of
`
`the ’962 Patent, it was not used in a rejection or substantively discussed by the
`
`examiner during prosecution. No other reference in any of the Grounds were cited.
`
`The Board has found that where presented prior art references include references
`
`that were not before the examiner in combination with a reference that was not
`
`substantively considered by an examiner, such combinations are not the same or
`
`substantially the same art or arguments previously presented to the Office. Group
`
`III International, Inc. v. Targus Group International, Inc., IPR2021-00371, No. 21
`
`at 33 (P.T.A.B. Jul. 9, 2021); see also Intel Corporation v. Koninklijke Philips
`
`N.V., IPR2021-00370, No. 10 at 9 (P.T.A.B. Jul. 6, 2021) (finding that the first
`
`condition of Advanced Bionics was not satisfied where a single reference had been
`
`cited on the face of the Challenged Patent while the other references were not
`
`before the examiner and declining to consider the material error condition of
`
`Advanced Bionics).
`
`Moreover, the challenges in this petition are non-cumulative because they
`
`rely upon prior art that teach the specific limitations the Examiner found lacking in
`
`15
`
`
`
`
`the prior art of record during prosecution. Compare Ex.1002, 26-29 (allowance
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`based upon amendments adding multi-sheet magnetic layer, multi-layer adhesive,
`
`and a specific spatial relationship) with Ex.1005, 10:63-67 (teaching a multi-sheet
`
`magnetic layer and the claimed spatial relationship) and Ex.1006, 9:29-38
`
`(teaching a multi-layer adhesive).
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1-4, 7, 8, 18, and 19, which correspond to the
`
`claims asserted in the plaintiff’s infringement contentions in the co-pending
`
`litigation. Ex.1016, 2.
`
`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`#2
`#3
`
`Claims
`1, 18, and 19
`2-4 and 7
`8
`
`Basis
`§ 103 over Suzuki and Lee
`§ 103 over Suzuki, Lee, and Sawa
`§ 103 over Suzuki, Lee, Sawa, and Park
`
`
`
`U.S. Patent No. 8,421,574 to Suzuki et al. (“Suzuki,” Ex.1005) was filed as
`
`a PCT application on June 12, 2008 and entered the national stage under 35 U.S.C.
`
`§ 371 on December 16, 2009. It issued on April 16, 2013. Suzuki is prior art under
`
`35 U.S.C. § 102(a)(1).
`
`U.S. Patent No. 9,252,611 to Lee (“Lee,” Ex.1006), was filed as a PCT
`
`16
`
`
`
`
`application on December 21, 2012 and entered the national stage under 35 U.S.C. §
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`371 on June 18, 2014. It issued on February 2, 2016. Lee is prior art under 35
`
`U.S.C. § 102(a)(2).
`
`U.S. Patent No. 8,922,162 to Park (“Park,” Ex.1007) was filed December 6,
`
`2011 and issued on December 30, 2014. Park is prior art under 35 U.S.C. §
`
`102(a)(2).
`
`U.S. Patent No. 9,443,648 to Sawa et. al (“Sawa,” Ex.1008) was filed May
`
`7, 2014 and issued September 13, 2016, and is a continuation of
`
`PCT/JP2012/007133 filed November 7, 2012. Sawa is prior art under 35 U.S.C. §
`
`102(a)(2).
`
`Petitioner’s analysis also cites additional prior art to demonstrate the
`
`background knowledge of a POSITA and to provide contemporaneous context to
`
`support Petitioner’s assertions regarding what a POSITA would have understood
`
`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
`
`1042 (Fed. Cir. 2018) (affirming the use of “supporting evidence relied upon to
`
`support the challenge”); 37 C.F.R. § 42.104(b); see also K/S HIMPP v. Hear-Wear
`
`Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014); Arendi S.A.R.L. v. Apple
`
`Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016); Ex.1003, ¶¶ 33-35.
`
`C. Ground 1: Claims 1, 18, and 19 are obvious under 35 U.S.C. § 103
`
`17
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
`
`
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`over Suzuki and Lee
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`1.
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`Summary of Suzuki
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`Like the ’962 patent, Suzuki describes a “contactless power transmission
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`apparatus.” Ex.1005, Abstract, 4:49-50. And, also like the ’962 patent, Suzuki
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`describes a coil 170 embedded in a magnetic layer, as shown in Fig. 3 below2.
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`Ex.1003, ¶ 36.
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`2 For the sake of illustration, Fig. 3 of Suzuki is shown rotated 180 degrees (i.e.,
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`upside down) throughout this petition to be consistent with the orientation
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`described in the ’962 patent. Specifically, the ’962 patent describes its power
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`receiver with the assumption the associated transmitter is “above” the receiver,
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`whereas Suzuki describes its power receiver with the assumption the associated
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`transmitter is “below” the receiver. For readability, the reference numerals have
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`been flipped as well.
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`coil
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`magnetic
`layer
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`Ex.1005, Fig. 3 (flipped, annotated); Ex.1003, ¶ 36.
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`
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`Suzuki explains that its apparatus includes a “secondary coil block 17” that
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`includes “a magnetic layer 171, a shield layer 172 for shielding electromagnetic
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`noise, and a heat insulation layer 173, which together are unified with the
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`secondary coil 170.” Ex.1005, 6:29-33. In one example, the magnetic layer 171 is
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`made of “soft magnetic material made of crystalline metal material or non-
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`crystalline metal material.” Ex.1005, 10:8-10. “The secondary coil 170 is a planar
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`coil and the magnetic layer 171 is laminated on at least one side … of the
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`secondary coil 170.” Ex.1005, 6:33-35. The coil 170 embedded in the magnetic
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`layer 171, as shown in Fig. 3, after each of the manufactured layers are pressed
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`together. See Ex.1005, 8:66-9:1 (“In each of the manufacturing methods,
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`preferably sticking several thin layers together as stated above is treated
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`collectively by pressing”). Ex.1003, ¶ 37
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`Suzuki further describes other elements that were common in wireless power
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`receiving antennas (and recited in the Challenged Claims). For example, Suzuki
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`19
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`describes that laminating the secondary coil and magnetic layer may include using
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`an “adhesive or pressure sensitive adhesive.” Ex.1005, 8:8-10. Suzuki also
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`describes that the magnetic layer 171 may also include “a plurality of magnetic
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`layers” such as “magnetic layers 171H and 171L that are laminated on one side of
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`the secondary coil 170.” Ex.1005, 10:65-67, 11:12-14; Ex.1003, ¶ 38.
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`2.
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`Summary of Lee
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`Like Suzuki and the ’962 patent, Lee describes a “magnetic field shield sheet
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`for a wireless charger.” Ex.1006, Abstract. In particular, Lee demonstrates that
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`utilizing a multi-layer adhesive was common in wireless power applications prior
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`to the ’962 patent. For example, Lee teaching using “a double-sided tape 30b” to
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`attach “a receiving-side secondary coil 6 of the wireless charger” to “a magnetic
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`field shield sheet 10.” Ex.1006, 16:33-36. Lee explains that the double-sided tape
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`includes “a base member 32 made of a fluorine resin-based film,” and “second and
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`third adhesive layers 31 and 33.” Ex.1006, 9:29-33. The resin-based film 32 may
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`be “for example, a PET (Polyethylene Terephthalate) film.” Ex.1006, 9:31. Lee’s
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`double-sided tape is shown in Fig. 5 below, along with Fig. 6 of the ’962 patent for
`
`comparison purposes. Ex.1003, ¶ 39.
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`adhesive
`layer
`
`PET film
`
`second adhesive
`layer
`
`first adhesive
`layer
`Ex.1006, Fig. 5 (annotated); Ex.1003, ¶ 39.
`
`second adhesive layer
`insulating layer
`adhesive
`layer
`
`first adhesive
`layer
`Ex.1001, Fig. 6 (annotated); Ex.1003, ¶ 39.
`
`
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`Also like the ’962 patent, Lee teaches a near-field communication (NFC)
`
`coil surrounding the wireless charger coil. A “dual antenna 40 is configured to
`
`include, for example, a NFC antenna coil 41 and a wireless charger antenna coil 43
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`that are formed together on a substrate 49.” Ex.1006, 17:42-45. Lee’s NFC coil,
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`along with the NFC coil of the ’962 patent for comparison, is shown below.
`
`Ex.1003, ¶ 40.
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`21
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`Ex.1006, Fig. 18 (annotated)
`
`wireless power
`receiving coil
`
`NFC coil
`
`Ex.1001, Fig. 3 (annotated)
`wireless power
`receiving coil
`
`NFC coil
`
`Ex.1003, ¶ 40.
`
`
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`Accordingly, Lee provides additional evidence that various elements, such
`
`as multi-layer adhesives and NFC coils, were already well known in the wireless
`
`charging space. Ex.1003, ¶ 41.
`
`3.
`
`Reasons to Combine Suzuki and Lee
`
`For the reasons set forth below, a POSITA would have been motivated to
`
`combine the teachings of Suzuki and Lee, which are both directed to wireless
`
`charging. Ex.1003, ¶ 42. In particular, before the ’962 patent, it would have been
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`obvious, beneficial, and predictable to implement Suzuki’s adhesive layer as
`
`double-sided tape, as taught by Lee. Ex.1003, ¶ 42. A POSITA would have further
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`found it obvious, beneficial, and predictable for Suzuki’s device to include an NFC
`
`coil as taught by Lee. Ex.1003, ¶ 42.
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`22
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
`
`Implementing Suzuki’s Adhesive Layer Using
`a)
`Double-sided Tape
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`As an initial matter, one of ordinary skill in the art when considering the
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`teachings of Suzuki would have also considered the teachings of Lee. Ex.1003,
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`¶ 43. Specifically, in describing the general features and functionality of its
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`contactless power transmission apparatus, 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. Ex.1005, 8:8-10.
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`Suzuki merely states the “secondary coil 170 is then stuck on the other side (a
`
`lower surface) of the magnetic layer 171 with adhesive or pressure sensitive
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`adhesive.” Ex.1005, 8:8-10. Accordingly, when considering the description of the
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`adhesive in Suzuki, a POSITA would have naturally considered other literature
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`more fully describing known adhesives intended for use in wireless charging
`
`applications. Ex.1003, ¶ 43. Lee, for example, describes a known adhesive for
`
`such applications. In particular, Lee describes using “a double-sided tape 30b” to
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`attach “a receiving-side secondary coil 6 of the wireless charger” to “a magnetic
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`field shield sheet 10.” Ex.1006, 16:33-36. Lee’s adhesive layer includes “a base
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`member 32 made of a fluorine resin-based film,” and “second and third adhesive
`
`layers 31 and 33.” Ex.1006, 9:29-33. The resin-based film 32 may be “for
`
`example, a PET (Polyethylene Terephthalate) film.” Ex.1006, 9:31. Accordingly,
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`23
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`
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`when considering the description of the adhesive in Suzuki, a POSITA would have
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
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`naturally considered Lee, as it more fully describes known adhesives intended for
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`use in adhering a power-receiving coil to a magnetic layer. Ex.1003, ¶ 43.
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`One of ordinary skill in the art would have found it obvious to specifically
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`implement Suzuki’s adhesive as a double-sided tape because it was common in the
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`wireless power art to utilize double-sided tape to adhere a power-receiving coil to a
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`magnetic layer. Ex.1003, ¶ 44. For example, beyond Lee, the patent literature is
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`replete with examples of utilizing double-sided tape in this manner. See, e.g.,
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`Ex.1013, 22:19-26 (“[T]he receiver coil L2 may be disposed and affixed on top of
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`the magnetic shielding material 41 using double-sided adhesive tape with adhesive
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`applied on both sides thereof.”); Ex.1014, 5:44-48 (“An insulative double-faced
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`tape or adhesive or the like is used … to adhere the upper face of first magnetic
`
`sheet 44 and the lower face of the charging coil 41….”); Ex.1017, 25:21-25, 26:15-
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`26, Fig. 13 (describing a protective layer that is “double-sided tape” between a
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`magnetic sheet and a coil). Accordingly, a POSITA would have found it obvious to
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`utilize a common type of adhesive (i.e., double-sided tape) in the manner
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`commonly found in the art (i.e., to adhere a coil to a magnetic layer). Ex.1003,
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`¶ 44.
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`Not only would utilizing Lee’s teachings in Suzuki’s wireless power
`
`receiver have been advantageous, but a POSITA would have also found it
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`24
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`
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`straightforward and predictable given that the combination utilizes Lee’s multi-
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`IPR2022-00120 Petition
`Inter Partes Review of U.S. 9,997,962
`
`layer adhesive precisely as it was intended—for attaching a power-receiving coil to
`
`a magnetic layer. Ex.1003, ¶ 45. A POSITA would have had a reasonable
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`expectation of success because the combination does not change the intended
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`functionality of either Suzuki’s power receiver or Lee’s adhesive. Ex.1003, ¶ 45.
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`Lee’s improved adhesive design was specifically intended to be implemented in
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`wireless power receivers ready for improvement, such as Suzuki’s receiver.
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`Ex.1003, ¶ 45; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
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`(finding obvious “the predictable use of prior art elements according to their
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`established functions”).
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`A POSITA would have further had a reasonable expectation of success in
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`using double-sided tape in Suzuki’s manufacturing method. Ex.1003, ¶ 46.
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`Specifically, Suzuki explains that in its method, the layers are stuck together
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`“collectively by pressing,” and that the adhesive may be a “pressure s
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