`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00284
`Patent 9,997,962
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`INTRODUCTION ............................................................................................. 1
`I.
`II. THE PATENTED TECHNOLOGY .................................................................. 2
`A.
`The ’962 Patent Was Invented by LG Innotek .................................... 2
`B. Overview of the ’962 Patent ................................................................ 3
`C.
`Challenged ’962 Patent Independent Claims ....................................... 6
`III. OVERVIEW OF ASSERTED REFERENCES ................................................. 7
`Suzuki (Ex. 1005)—the primary reference—does not disclose the
`A.
`claimed invention ................................................................................. 7
`B. Okada (Ex. 1006)—a secondary reference—does not compensate for
`the failures of Suzuki ......................................................................... 11
`Lee (Ex. 1007)—a secondary reference—does not compensate for the
`failures of Suzuki ............................................................................... 11
`Lin (Ex. 1014)—a tertiary reference—does not compensate for the
`failures of Suzuki or Okada ............................................................... 12
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE LIKELIHOOD
`OF INVALIDITY OF THE CHALLENGED CLAIMS ................................. 12
`A. Ground 1: Claims 1-8 and 18-19 are not rendered obvious by Suzuki
`in view of Okada ................................................................................ 13
`Suzuki does not render obvious 1[a]/18[a] “a substrate.” ....... 13
`1.
`a.
`The ’962 patent claims a “substrate.”……………….....14
`
`b.
`
`C.
`
`D.
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`
`
`
`
`2.
`
`The Petition fails to show that Suzuki discloses the
`claimed “substrate.”…………………………………....14
`
`The Petition’s Suzuki-Okada combination does not render
`obvious 1[d]/18[d] “an adhesive layer formed between the
`second magnetic sheet and the receiving coil.” ....................... 17
`
`
`
`i
`
`

`

`a.
`
`
`b.
`
`The ’962 patent claims “an adhesive layer formed
`between the second magnetic sheet and the receiving
`coil.”…………………………………..…………….....18
`
`The Petition’s Suzuki-Okada combination does not
`render obvious the claimed “adhesive layer formed
`between the second magnetic sheet and the receiving
`coil.”…..…....20
`
`
`
`
`
`
`
`
`
`B. Ground 2: Dependent Claims 2-8 Are Not Rendered Obvious by the
`Combination of Suzuki, Okada, and Yang. ....................................... 23
`C. Ground 3: Claims 1-8 and 18-19 are Not Rendered Obvious by the
`Combination of Suzuki, Okada, and Lin. .......................................... 23
`D. Ground 4: Dependent Claims 2-8 Are Not Rendered Obvious by the
`Combination of Suzuki, Okada, Lin, and Yang. ................................ 24
`Ground 5: Claims 1-8 and 18-19 are Not Rendered Obvious by Suzuki
`in view of Lee. ................................................................................... 24
`The Petition fails to show that the combination of Suzuki and
`1.
`Lee renders obvious the claimed “substrate.” ......................... 24
`The Petition’s Suzuki-Lee combination does not render obvious
`the claimed “adhesive layer formed between the second
`magnetic sheet and the receiving coil.” ................................... 28
`V. INSTITUTION SHOULD BE DENIED UNDER § 325(d) ............................ 29
`VI. INSTITUTION SHOULD BE DENIED UNDER § 314(a) ............................ 31
`A.
`Factors 1-3 do not compel institution. ............................................... 33
`B.
`Factor 4 weighs against institution, as Petitioner delayed filing after
`learning of Suzuki, Okada, Lee and Yang. ........................................ 34
`Factor 5 also weighs against institution, as Petitioner has no valid
`excuse for its delay. ............................................................................ 35
`Factor 6 weighs heavily against institution, as the district court is set
`to rule on the validity on the same claims. ......................................... 36
`
`E.
`
`2.
`
`C.
`
`D.
`
`
`
`ii
`
`

`

`E.
`
`B.
`
`C.
`
`Factor 7 also weighs against institution, as Petitioner’s strategic
`timing prevents coordination/consolidation with earlier IPR, wastes
`the Board’s resources, and prejudices Patent Owner. ........................ 38
`Summary of Factors ........................................................................... 40
`F.
`VII. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ..................... 40
`Factor 1: The district court has not granted a stay, nor is there any
`A.
`evidence that a stay will be granted. .................................................. 42
`Factor 2: The district court trial will occur before the deadline for a
`final decision in this proceeding. ....................................................... 44
`Factor 3: By the time an institution decision is reached, the parties and
`the court will have completed claim construction and discovery will
`be underway. ...................................................................................... 46
`Factor 4: There is substantial overlap between this IPR and the district
`court proceedings. .............................................................................. 47
`Factor 5: Petitioner is a defendant in the district court litigation. ...... 49
`E.
`Factor 6: The petition is without merit and unlikely to succeed. ....... 50
`F.
`VIII. CONCLUSION .............................................................................................. 54
`
`
`D.
`
`
`
`
`
`
`
`iii
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Samsung
`Electronics Co. Ltd. and Samsung Electronics America, Inc.,
`Case No. 6:21-cv-00454-ADA, Dkt. No. 38 (W.D. Tex. Dec. 14,
`2021)
`
`Scheduling Order, Scramoge Technology Ltd. v. Samsung
`Electronics Co. Ltd. and Samsung Electronics America, Inc.,
`Case No. 6:21-cv-00454-ADA, Dkt. No. 46 (W.D. Tex. Jan. 21,
`2022)
`
`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 (Mar. 7, 2022)
`
`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 Preliminary Disclosure of
`Asserted Claims and Infringement Contentions to Samsung in
`
`
`
`iv
`
`

`

`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`Scramoge Technology Ltd. v. Samsung Elec. Co. Ltd., et al, Case
`No. 6:21-cv-00454-ADA (W.D. Tex.)
`
`Defendants Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. Preliminary Invalidity Contentions in
`Scramoge Technology Ltd. v. Samsung Elec. Co. Ltd., et al, Case
`No. 6:21-cv-00454-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)
`
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc., Case No. 6:21-cv-00454-ADA, Dkt.
`No. 53 (W.D. Tex. Feb. 11, 2022)
`
`Scheduling Order, Scramoge Technology Ltd. v. Samsung
`Electronics Co. Ltd. and Samsung Electronics America, Inc.,
`Case No. 6:21-cv-00454-ADA, Dkt. No. 55 (W.D. Tex. Feb. 14,
`2022)
`
`United States Patent Application Publication US 2010/0007215
`(“Sakuma”)
`
`Notice of IPR Petition, Scramoge Technology Ltd. v. Google
`LLC, Case No. 6:21-cv-00616-ADA, Dkt. No. 30 (W.D. Tex.
`Dec. 14, 2021)
`
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Google in Scramoge Technology Ltd. v. Google LLC, Case No.
`6:21-cv-00616-ADA (W.D. Tex.)
`
`Defendant Google LLC Preliminary Invalidity Contentions in
`Scramoge Technology Ltd. v. Google LLC, Case No. 6:21-cv-
`00616-ADA (W.D. Tex.)
`
`
`
`v
`
`

`

`2020
`
`2021
`
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Google LLC, Case No. 6:21-cv-00616-ADA,
`Dkt. No. 41 (W.D. Tex. Feb. 11, 2022)
`
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 40 (W.D. Tex. Feb. 11,
`2022)
`
`
`
`
`
`
`
`
`
`vi
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`I.
`
`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
`
`preliminary response to Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Google LLC’s (collectively, “Petitioner”) petition for inter partes
`
`review of U.S. Patent No. 9,997,962 (“’962 patent”).
`
`First, the Board should deny institution because Petitioner fails to establish a
`
`reasonable likelihood of invalidity for the independent claims. The independent
`
`claims recite “a substrate” and an “adhesive layer.” For the “substrate” limitation,
`
`the Petition identifies the inapposite battery in Suzuki which does not disclose the
`
`claimed substrate. For the “adhesive layer” limitation, the Petition identifies the
`
`inapposite affixing elements in Suzuki that do not disclose the layer structure
`
`claimed by the ’962 patent that solves the problem identified in the patent related to
`
`electrical shorts. Because Petitioner fails to identify any teaching or disclosure of
`
`these limitations, it cannot establish a reasonable likelihood of invalidity.
`
`Second, the Board should exercise its discretion to deny the Petition under §
`
`325(d) because the Petition merely presents the same or substantially the same art
`
`that was previously presented to the Office. The Office did not err in allowing the
`
`’962 patent claims, and the Petition’s hindsight arguments do not warrant
`
`reconsideration of substantially the same art.
`
`
`
`1
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`Third, the Board should exercise its discretion to deny the Petition under §
`
`314(a) because this is the type of proceeding that the Board’s precedential
`
`decisions—Valve I, Valve II, and General Plastic—were developed to prevent. Here,
`
`the vast majority of General Plastic factors weigh against institution.
`
`Fourth, the Board should exercise its discretion to deny the petition in light of
`
`a parallel district court case involving the same patent, substantially the same claims,
`
`the same prior art, and the same parties. By the time the Board reaches an institution
`
`decision in this proceeding, the parties and the district court will have already
`
`invested significant time and resources in the case—the parties will have already
`
`exchanged final infringement and invalidity contentions, claim construction will be
`
`completed, and discovery will be far along. The district court trial is also set to take
`
`place four months before the deadline for a final written decision. Moreover, the
`
`petition fails on the merits as described above. Thus, all six Fintiv factors strongly
`
`favor a discretionary denial.
`
`But even if the Board concludes that a discretionary denial is not appropriate,
`
`Petitioner has not established a reasonable likelihood of invalidity under any ground
`
`or challenged claim. Accordingly, the Board should deny institution.
`
`II. THE PATENTED TECHNOLOGY
`
`A. The ’962 Patent Was Invented by LG Innotek
`
`
`
`2
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`The ’962 patent (Ex. 1001) names 3 Korean inventors who were employed by
`
`LG Innotek Co. Ltd (“LG Innotek”). LG Innotek, a global materials and components
`
`manufacturer, developed wireless power devices and components for products such
`
`as smartphones. See, e.g., Ex. 2012. Patent Owner acquired the ’962 patent from LG
`
`Innotek in 2021.
`
`B. Overview of the ’962 Patent
`
`The ’962 patent is entitled “Receiving Antenna and Wireless Power Receiving
`
`Device Including the Same.” The ’962 patent relates to wireless charging and is
`
`directed to a receiving antenna for wireless charging and a wireless power receiving
`
`device including the same. See, e.g., Ex. 1001, Abstract, 1:17–20. The disclosed
`
`invention is aimed at minimizing energy loss between the wireless power
`
`transmission device and the wireless power receiving device to increase power
`
`transfer efficiency. Id.
`
`The ’962 patent teaches a receiving antenna of a wireless power receiving
`
`device for wirelessly charging and describes a plurality of soft magnetic layers on
`
`which a receiving coil may be formed. Id. For example, one embodiment includes a
`
`substrate, a soft magnetic layer disposed on the substrate, and a receiving coil
`
`configured to receive electromagnetic energy emitted from a wireless power
`
`transmission device, wound in parallel with a plane of the soft magnetic layer, and
`
`
`
`3
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`formed inside of the soft magnetic layer, and an insulating layer formed between the
`
`soft magnetic layer and the receiving coil. Id.; see also id., cl. 1.
`
`In one embodiment, the soft magnetic layer “focuses the electromagnetic
`
`energy emitted from the transmitting antenna 120 of the wireless power transmission
`
`device 100.” Id. at 5:16–18. The soft magnetic layer may include:
`
`a metallic material or a ferrite material, and may be implemented in various
`forms of a pellet, a plate, a ribbon, foil, a film, etc. In an example embodiment,
`the soft magnetic layer 210 may be a form in which a plurality of sheets
`including a single metal or an alloy powder having soft magnetism
`(hereinafter, referred to as a soft magnetic metallic powder) and a polymer
`resin are stacked. In another example embodiment, the soft magnetic layer
`210 may be an alloy ribbon, a stacked ribbon, foil, or a film including at least
`one of Fe, Co, and Ni. In still another example embodiment, the soft magnetic
`layer 210 may be a composite including 90 wt % or more of FeSiCr flakes
`and 10 wt % or less of a polymer resin. In yet another example embodiment,
`the soft magnetic layer 210 may be a sheet, a ribbon, foil, or a film including
`nickel-zinc (Ni—Zn) ferrite.
`
`Id. at 5:19–34.
`
`The soft magnetic material may be metallic and conduct current. An adhesive
`
`layer may be formed between the plurality of soft magnetic layers and the receiving
`
`coil. When forming the receiving coil 520 into the soft magnetic layer 500, the
`
`adhesive layer(s) may break down and cause “an electrical short between a metal in
`
`the soft magnetic layer 500 and the receiving coil 520.” Id. at 6:47–52. An electrical
`
`short between the receiving coil would reduce the received power and would also
`
`lead to other negative consequences, such as, for example, overheating, damage to
`
`
`
`4
`
`

`

`
`magnetic layers, and unsafe currents through the receiving coil and/or soft magnetic
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`layer(s).
`
`To prevent an electrical short, “the adhesive layer 510 may have a double-
`
`sided structure containing an insulating layer” and in one embodiment “the adhesive
`
`layer 510 may include a first adhesive layer 512, an insulating layer 514 formed the
`
`first adhesive layer 512, and a second adhesive layer 516 formed on the insulating
`
`layer 514.” Id. at 6:37–45. “Here, the insulating layer 514 may include, for example,
`
`a polyethylene terephthalate (PET) material.” Id. at 6:46–47.
`
`
`
`Id., Fig. 6.
`
`The ’962 patent teaches that when the receiving coil is formed inside of a
`
`plurality of soft magnetic layers, which can be metallic and conducting, a structure
`
`with two adhesive layers formed on either side of an insulating layer can be used to
`
`electrically isolate the receiving coil from the conducting soft magnetic layer(s), thus
`
`preventing reduced performance, hazardous conditions, and damage. Furthermore,
`
`
`
`5
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`the structure 510 of the claimed invention overcomes the problem of the adhesive
`
`layer breaking down when forming the receiving coil in the soft magnetic layer(s).
`
`Id. at 6:46-53.
`
`C. Challenged ’962 Patent Independent Claims
`
`The challenged independent claims are Claims 1 and 18, which are repeated
`
`below (Patent Owner has added emphasis to the claim limitations that are the focus
`
`of this Preliminary Patent Owner’s Response):
`
`1. A wireless power receiving antenna comprising:
`a substrate;
`a soft magnetic layer comprising a first magnetic sheet disposed on the
`substrate and a second magnetic sheet disposed on the first magnetic sheet;
`a receiving coil disposed on the second magnetic sheet; and
`an adhesive layer formed between the second magnetic sheet and the
`receiving coil,
`wherein the adhesive layer includes a first adhesive layer in contact with the
`second magnetic sheet, a second adhesive layer in contact with the receiving coil,
`and an insulating layer disposed between the first adhesive layer and the second
`adhesive layer, and
`wherein 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.
`
`18. A wireless power receiving apparatus comprising a receiving circuit and
`a wireless power receiving antenna, the wireless power receiving antenna
`comprising:
`a substrate;
`a soft magnetic layer comprising a first magnetic sheet disposed on the
`substrate and a second magnetic sheet disposed on the first magnetic sheet;
`a receiving coil disposed on the second magnetic sheet, and
`an adhesive layer formed between the second magnetic sheet and the
`receiving coil;
`
`
`
`6
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`wherein the adhesive layer includes a first adhesive layer in contact with the
`second magnetic sheet, a second adhesive layer in contact with the receiving coil,
`and an insulating layer disposed between the first adhesive layer and the second
`adhesive layer, and
`wherein 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.
`
`III. OVERVIEW OF ASSERTED REFERENCES
`
`A.
`
`Suzuki (Ex. 1005)—the primary reference—does not disclose the
`
`claimed invention
`
`U.S. Patent No. 9,515,513 (“Suzuki”) issued on December 6, 2016. Suzuki
`
`relates to an apparatus with near field communication and wireless power receiving
`
`coils arranged on a magnetic sheet. Ex. 1005, Abstract. One embodiment is shown
`
`in Figure 1 below.
`
`
`
`7
`
`

`

`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`
`
`Id., Figs. 1A and 1B.
`
`In Figure 1, the combo coil module 1 comprises a wireless power receiving
`
`coil 4 and a near field communication (NFC) coil 3, which may be arranged on a
`
`magnetic sheet 2. Id., 3:18-22. The magnetic sheet may be formed by “ferrous
`
`
`
`8
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`materials with comparatively high-magnetic permeability with respect to the target
`
`frequency corresponding to the combo coil module 1.” Id., 3:64-67. The NFC and
`
`wireless power receiving coil may be mounted on the magnetic sheet 2 using affixing
`
`element 5. Id., 3:42-46 (“The affixing element 5 may, e.g., be double-sided tape or
`
`another suitable adhesive agent.”).
`
`In the Figure 3 embodiment shown below, combo coil 1 is “formed integrally
`
`with battery pack 9…[] the combo coil module 1 may be mounted on a top surface
`
`of the battery pack 9 within the mobile device 10a. The combo coil module 1 of FIG.
`
`3B may be mounted to the battery pack 9 by use of a common adhesive
`
`agent/method.” Id., 4:38-43.
`
`
`
`9
`
`

`

`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`Id., Figs. 3A and 3B.
`
`In the Figure 9 embodiment shown below, the “the NFC antenna coil 3 and
`
`the wireless power receiving coil 4 are embedded within a magnetic sheet to form a
`
`combo coil module.” Id., 7:44-47.
`
`
`
`
`
`10
`
`

`

`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`Id., Fig. 9B.
`
`However, as will be discussed in more detail below, Suzuki does not disclose
`
`the “substrate” or “adhesive layer” claimed by the ’962 patent.
`
`B. Okada (Ex. 1006)—a secondary reference—does not compensate
`
`for the failures of Suzuki
`
`U.S. Patent Publication No. 2009/0284341 (“Okada”) was published on
`
`November 19, 2009. The Petition asserts a combination of Suzuki and Okada for
`
`certain claim limitations. However, the technical details of Okada are not relevant to
`
`any of the independent claim limitations addressed herein by Patent Owner. Thus,
`
`the Board need not wade into the technical details related to Okada and it will not be
`
`addressed herein.
`
`C. Lee (Ex. 1007)—a secondary reference—does not compensate for
`
`the failures of Suzuki
`
`
`
`11
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`U.S. Patent No. 9,252,611 (“Lee”) issued on February 2, 2016. The Petition
`
`asserts a combination of Suzuki and Lee for certain claim limitations for Ground 5.
`
`Lee relates to “a magnetic field shield sheet for a wireless charger, which blocks an
`
`effect of an alternating-current magnetic field generated when a charger function for
`
`a portable mobile terminal device is implemented in a non-contact wireless manner
`
`on a main body of the portable mobile terminal device and exhibits excellent electric
`
`power transmission efficiency, a method of manufacturing the sheet, and a receiver
`
`for the wireless charger by using the sheet.” Ex. 1007, Abstract.
`
`Importantly, the content of Lee was cited during prosecution of the ’962
`
`patent. See Petition at 79. Specifically, U.S. Patent No. 9,504,194—a continuation
`
`of Lee—was cited during prosecution. Ex. 1001, References Cited.
`
`D. Lin (Ex. 1014)—a tertiary reference—does not compensate for the
`
`failures of Suzuki or Okada
`
`U.S. Patent Publication No. 2014/0147625 (“Lin”) was published on May 29,
`
`2014. The Petition asserts a combination of Suzuki, Okada, and Lin for certain claim
`
`limitations. However, Petitioner does not rely on Lin for any of the independent
`
`claim limitations addressed herein by Patent Owner. Thus, the Board need not wade
`
`into the issues related to Lin and it will not be addressed herein.
`
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD OF INVALIDITY OF THE CHALLENGED CLAIMS
`
`
`
`12
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`A. Ground 1: Claims 1-8 and 18-19 are not rendered obvious by
`Suzuki in view of Okada
`
`Ground 1 challenges the two independent claims 1 and 18 (and dependent
`
`claims 2-8 and 19) as obvious by Suzuki in view of Okada. Petitioner’s Ground 1
`
`challenge to these claims fails for two dispositive reasons.
`
`First, Petitioner’s combination does not disclose or render obvious 1[a]/18[a]
`
`“a substrate.” Second, Petitioner’s combination does not disclose or render obvious
`
`1[d]/18[d] “an adhesive layer formed between the second magnetic sheet and the
`
`receiving coil.”
`
`Thus, Petitioner is unable to establish a reasonable likelihood of invalidity as
`
`to any of the challenged ’962 patent claims.
`
`1.
`
`Suzuki does not render obvious 1[a]/18[a] “a
`substrate.”
`
`For this limitation, the Petition relies only on Suzuki and does not rely on the
`
`secondary reference Okada. The Petition is unable to identify a “substrate” in Suzuki
`
`and therefore argues that a “POSITA would have understood that the exterior of
`
`Suzuki’s battery pack is a ‘substrate.’” Petition at 18. However, Petitioner’s
`
`argument is contrary to the plain and ordinary meaning of the term “substrate”—
`
`which is “an underlying layer.” Thus, the petition cannot establish a reasonable
`
`likelihood of unpatentability for this limitation, and Ground 1 of the Petition should
`
`be rejected.
`
`
`
`13
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`a.
`
`The ’962 patent claims “a substrate.”
`
`The ’962 patent claims and describes “a substrate” which is an underlying
`
`layer on which the “first magnetic sheet” is disposed. Ex. 1001, Claim 1 (“a
`
`substrate; a soft magnetic layer comprising a first magnetic sheet disposed on the
`
`substrate and a second magnetic sheet disposed on the first magnetic sheet”). In
`
`particular, the ’962 patent teaches that:
`
`The soft magnetic layer 210 may be formed on a substrate (not
`shown). The substrate may include many layers of fixed sheets, and
`may be connected to the soft magnetic layer 210 to fix the soft
`magnetic layer 210.
`Id., 5:10-14.
`
`In light of the claims and specification, the plain and ordinary meaning of a
`
`substrate is “an underlying layer,” as confirmed by Petitioner’s co-defendant, Apple
`
`Inc., in its petition for the ’962 patent. See Apple Inc. v. Scramoge Tech. Ltd.,
`
`IPR2022-00120, Paper 2 at 33 (“the plain and ordinary meaning of a substrate [is]
`
`‘an underlying layer’”). Thus, the “substrate” claimed in the ’962 Patent is an
`
`underlying layer on which other layers (i.e., the “first magnetic sheet”) are disposed.
`
`b.
`
`The Petition fails to show that Suzuki discloses
`the claimed “substrate.”
`
`The Petition asserts that “Suzuki discloses or suggests an embodiment in
`
`which the combo coil unit 1b from figure 9B is mounted on the battery 9 in a mobile
`
`device 10a like that shown in figure 3B.” Petition at 18. The Petition illustrates its
`
`
`
`14
`
`

`

`
`theory in the demonstrative below (note that Petitioner’s demonstrative is not a
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`figure from Suzuki):
`
`
`
`Id. The Petition identifies Suzuki’s battery pack 9 as the claimed “substrate.”
`
`
`
`However, Suzuki’s battery does not disclose or suggest the claimed
`
`“substrate.” A battery is not an underlying layer on which other layers of the combo
`
`coil module are disposed. To the contrary, Suzuki teaches that the battery is a
`
`separate component to which the combo coil module may be mounted. Ex. 1005,
`
`4:41-43 (“The combo coil module 1 of FIG. 3B may be mounted to the battery pack
`
`9 by use of a common adhesive agent/method.”). Petitioner’s argument that the
`
`
`
`15
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`battery pack is a substrate stretches the meaning of the term so far as to render it
`
`virtually meaningless such that it would include any possible structure.1
`
`Furthermore, the Petition injects ambiguity into its assertion by suggesting
`
`that the “exterior of Suzuki’s battery pack is a ‘substrate.’” Petition at 18. On the one
`
`hand, the Petition appears to recognize that the battery itself cannot be a substrate,
`
`but at the same time seeks to assert that an unspecified exterior surface can be a
`
`“substrate.” However, the exterior surface of a battery is plainly not an underlying
`
`layer of the claimed wireless power receiving apparatus—it is merely a surface of
`
`the battery. And the Petition does not (as it cannot) cite to any discussion of what
`
`the “surface” of the battery may comprise of (e.g., a polymer, metal casing, or
`
`something else). Consequently, the Petition fails to identify anything in Suzuki that
`
`discloses the claimed “substrate.”
`
`
`1 The Petition’s conclusory attorney argument is supported only by its expert’s
`
`equally conclusory declaration—which simply repeats the attorney argument
`
`practically verbatim and is due no weight. Compare Petition at 17-19 with Ex. 1002
`
`at 46-47; Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016);
`
`Smartmatic USA Corp. v. Election Sys. & Software, IPR2019-00527, Paper 32 at 34
`
`(Aug. 5, 2020) (giving no weight to an expert declaration that “merely parrots the
`
`language in the Petition”).
`
`
`
`16
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`Moreover, the Petition tacitly admits that Suzuki does not disclose a
`
`“substrate” because it later asserts Suzuki in combination with Lee discloses this
`
`limitation. Id. at 53-54 (“Second, to the extent PO argues or the Board finds that
`
`Suzuki does not disclose or suggest ‘a substrate,’ Suzuki in combination with Lee
`
`discloses or suggests this limitation.”).2 Thus, the Petition itself confirms that its
`
`theory based on Suzuki alone is not persuasive.
`
`Because Suzuki does not disclose the claimed “substrate,” the Petition’s
`
`Ground 1 should be denied.
`
`2.
`
`The Petition’s Suzuki-Okada combination does not
`render obvious 1[d]/18[d] “an adhesive layer formed
`between the second magnetic sheet and the receiving
`coil.”
`
`For this limitation, the Petition relies on its combination of Suzuki and Okada.
`
`However, the Petition’s Suzuki-Okada combination does not disclose “an adhesive
`
`layer formed between the second magnetic sheet and the receiving coil.” Instead, the
`
`Petition identifies the four separate “affixing elements” in its demonstrative that do
`
`not disclose the layer structure taught and claimed in the ’962 patent. Thus, the
`
`
`2 The Petition’s combination of Suzuki and Lee also fails to disclose the claimed
`
`“substrate” as further discussed below.
`
`
`
`17
`
`

`

`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`petition cannot establish a reasonable likelihood of unpatentability for this
`
`limitation, and Ground 1 of the Petition should be rejected.
`
`a.
`
`The ’962 patent claims “an adhesive layer
`formed between the second magnetic sheet and
`the receiving coil.”
`
`The ’962 patent claims and describes “an adhesive layer.” For example, the
`
`patent illustrates “adhesive layer 510” in Figure 5 as seen below.
`
`Ex. 1001, Fig. 5. The patent further teaches that “the adhesive layer 510 may have a
`
`double-sided structure including an insulating layer.” Id. at 6:37–38. This
`
`embodiment is illustrated in Figure 6:
`
`
`
`
`
`18
`
`

`

`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`
`
`Id., Fig. 6; 6:42-45 (“Referring to FIG. 6, the adhesive layer 510 may include a first
`
`adhesive layer 512, an insulating layer 514 formed the first adhesive layer 512, and
`
`a second adhesive layer 516 formed on the insulating layer 514.”). This structure is
`
`also recited in the claims: “wherein the adhesive layer includes a first adhesive layer
`
`in contact with the second magnetic sheet, a second adhesive layer in contact with
`
`the receiving coil, and an insulating layer disposed between the first adhesive layer
`
`and the second adhesive layer.” Id., Claims 1 and 18.
`
`The ’962 patent teaches that when the receiving coil is formed inside of a
`
`plurality of soft magnetic layers, which can be metallic and conducting, a structure
`
`with two adhesive layers formed on either side of an insulating layer can be used to
`
`electrically isolate the receiving coil from the conducting soft magnetic layer, thus
`
`preventing reduced performance, hazardous conditions, and damage. For example,
`
`the specification explains that:
`
`
`
`19
`
`

`

`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response
`
`• “the probability of an electrical short between the soft magnetic layer
`
`and the receiving coil is reduced, and therefore reliability of the
`
`receiving antenna may be improved.” Id. at 2:64-67.
`
`• “even when the first adhesive layer 512 or the second adhesive layer
`
`516 is broken down in the process of forming or embedding the
`
`receiving coil 520 inside of the soft magnetic layer 500, an electrical
`
`short between a metal in the so