U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`
`
`
`
`
`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.
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,997,962
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES ............................................................................ 1
`III.
`FEE AUTHORIZATION ............................................................................... 3
`IV. GROUNDS FOR STANDING ....................................................................... 3
`V.
`PRECISE RELIEF REQUESTED ................................................................. 3
`VI. THE CHALLENGED PATENT .................................................................... 5
`VII. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 8
`VIII. CLAIM CONSTRUCTION ........................................................................... 9
`IX. DETAILED EXPLANATION OF THE GROUNDS .................................. 10
`A. Ground 1: Claims 1-8 and 18-19 are rendered obvious by
`Suzuki in view of Okada .................................................................... 10
`1.
`Obviousness Rationale ............................................................. 10
`2.
`Independent Claims 1, 18 ........................................................ 12
`3.
`Dependent Claims 2-8 and 19 .................................................. 32
`Ground 2: Claims 2-8 are rendered obvious by Suzuki in view
`of Okada and Yang ............................................................................. 44
`1.
`Obviousness Rationale ............................................................. 44
`Ground 3: Claims 1-8 and 18-19 are rendered obvious by
`Suzuki in view of Okada and Lin ....................................................... 47
`1.
`Obviousness Rationale ............................................................. 47
`D. Ground 4: Claims 2-8 are rendered obvious by Suzuki in view
`of Okada, Lin, and Yang .................................................................... 50
`Ground 5: Claims 1-8 and 18-19 are rendered obvious by
`Suzuki in view of Lee ......................................................................... 51
`1.
`Obviousness Rationale ............................................................. 51
`2.
`Independent Claims 1, 18 ........................................................ 53
`3.
`Dependent Claims 2-8 and 19 .................................................. 70
`
`B.
`
`C.
`
`E.
`
`
`
`
`
`i
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`F.
`
`
`
`X.
`
`Ground 6: Claim 6 is rendered obvious by Suzuki in view of
`Lee and Lin ......................................................................................... 78
`1.
`Obviousness Rationale ............................................................. 78
`THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER SECTION 325(D) .......................................................................... 79
`XI. THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER FINTIV ................................................................. 81
`XII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER GENERAL PLASTICS .................................................................... 85
`XIII. CONCLUSION ............................................................................................. 87
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`LIST OF EXHIBITS1
`
`Ex-1001 U.S. Patent No. 9,997,962
`Ex-1002 Declaration of Dr. Gary Woods
`Ex-1003 Curriculum Vitae of Dr. Gary Woods
`Ex-1004 Prosecution History of U.S. Patent No. 9,997,962
`Ex-1005 U.S. Patent No. 9,515,513 to Suzuki et al.
`Ex-1006 U.S. Patent Publication No. 2009/0284341 to Okada et al.
`Ex-1007 U.S. Patent No. 9,252,611 to Lee et al.
`Ex-1008
`Scramoge Technology Ltd.’s Infringement Contentions regarding
`U.S. Patent No. 9,997,962 against Samsung in Scramoge Technology
`Ltd. v. Samsung Elec. Co., Ltd., No. 6:21-cv-00454-ADA (Sept. 7,
`2021)
`Ex-1009 English-language translation of Korean Patent Publication No. 10-
`2013-0050633 to Jang et al., original Korean Publication No. 10-
`2013-0050633, and translation certificate
`Ex-1010 U.S. Patent Publication No. 2011/0210696 to Inoue
`Ex-1011 Double Coated Tapes with Adhesive 350, 3M (November, 2008)
`Ex-1012 Double Coated Tape with Adhesive 420, 3M (January, 2011)
`Ex-1013 U.S. Patent No. 8,268,092 to Yang
`Ex-1014 U.S. Patent Publication No. 2014/0147625 to Lin
`Ex-1015 English-language translation of Taiwanese Patent Application No.
`101144204 to Lin, original Taiwanese Patent Application No.
`
`1 Four-digit pin citations that begin with 0 refer to branded page numbers added by
`
`Samsung in the bottom right corner of the exhibits. All other pin citations are to
`
`original page, column, paragraph, and/or line numbers.
`
`iii
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`101144204, and translation certificate
`Ex-1016 English-language translation of PCT Application No.
`PCT/KR2012/011256, original PCT Application No.
`PCT/KR2012/011256, and translation certificate
`Ex-1017 Excerpt of Encyclopedia of Materials: Science and Technology,
`Volume 9, pp. 8840-8843 (2001)
`Ex-1018 Scheduling Order, Scramoge Technology Ltd. v. Google LLC, No.
`6:21-cv-00616 (W.D. Tex. Nov. 15, 2021), ECF No. 28.
`Ex-1019 Proposed Scheduling Order, Scramoge Technology Ltd. v. Samsung
`Elec. Co., Ltd., No. 6:21-cv-00454-ADA (W.D. Tex. Sept. 27,
`2021), ECF No. 34-1.
`Ex-1020 Google LLC’s Opposed Motion to Transfer Venue to the Northern
`District of California Under 28 U.S.C. ¶ 1404(a) [redacted],
`Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D.
`Tex. Sept. 29, 2021), ECF No. 26.
`Ex-1021 Standing Order Governing Proceedings – Patent Cases, Scramoge
`Tech. Ltd. v. Samsung Elec. Co., Ltd., 6:21-cv-454-ADA (W.D. Tex.
`Oct. 8, 2021), ECF No. 36
`
`
`
`
`
`iv
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`
`Google LLC (collectively, “Petitioner”) request inter partes review (“IPR”) of
`
`Claims 1-8, 18, and 19 of U.S. Patent No. 9,997,962 (“the ’962 Patent”) (Ex-1001),
`
`assigned to Scramoge Technology Ltd. (“PO”). For the reasons discussed below, the
`
`challenged claims should be found unpatentable and canceled.
`
`II. MANDATORY NOTICES
`Real Parties-in-Interest: Petitioner identifies the following real parties-in-
`
`interest: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`
`Google LLC.1
`
`Related Matters: PO has asserted the ’962 Patent against Google LLC in
`
`Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D. Tex. June 15,
`
`2021) and against Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. in Scramoge Technology Ltd. v. Samsung Elec. Co., Ltd., No. 6:21-cv-00454-
`
`ADA (W.D. Tex. Apr. 30, 2021).
`
`The ’962 Patent is also asserted against Apple Inc. (“Apple”) in Scramoge
`
`
`1 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
`
`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest
`
`to this proceeding.
`
`1
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`Technology Ltd. v. Google LLC, No. 6:21-cv-00579 (W.D. Tex. June 7, 2021).
`
`Certain claims of the ’962 Patent are challenged by Apple in IPR No. 2022-
`
`00120 (“Apple -120 IPR”).
`
`Lead and Back-Up Counsel:
`• Lead Counsel: John Kappos (Reg. No. 37,861), O’Melveny & Myers
`
`LLP, 610 Newport Center Dr., 17th Floor, Newport Beach, CA
`
`92660. (Telephone: 949-823-6900; Fax: 949-823-6994; Email:
`
`jkappos@omm.com)
`
`• Backup Counsel: Cameron W. Westin (Reg. No. 66,188), O’Melveny
`
`& Myers LLP, 610 Newport Center Dr., 17th Floor, Newport Beach,
`
`CA 92660. (Telephone: 949-823-6900; Fax: 949-823-6994; Email:
`
`jkappos@omm.com; cwestin@omm.com); Naveen Modi (Reg. No.
`
`46,224), Joseph E. Palys (Reg. No. 46,508), Phillip Citroën (Reg. No.
`
`66,541), Paul M. Anderson (Reg. No. 39,896), Quadeer A. Ahmed
`
`(Reg. No. 60,835), Paul Hastings LLP, 2050 M St., N.W. Washington,
`
`DC 20036 (Telephone: (202) 551-1990; Fax: (202) 551-1705; Email:
`
`PH-Google-Scramoge-IPR@paulhastings.com)
`
`Service Information: Petitioner consents to electronic service by email to
`
`scramogesamsungomm@omm.com and PH-Google-Scramoge-
`
`IPR@paulhastings.com.
`
`2
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`III. FEE AUTHORIZATION
`Pursuant to 37 C.F.R. §42.15(a) and §42.103(a), the PTO is authorized to
`
`charge any and all fees to Deposit Account No. 50-0639.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’962 Patent is available for IPR, this Petition is
`
`timely filed, and Petitioner is not barred or estopped from requesting IPR on the
`
`grounds presented.
`
`V.
`
`PRECISE RELIEF REQUESTED
`Petitioner requests cancellation of Claims 1-8, 18, and 19 of the ’962 Patent
`
`under 35 U.S.C. §§ 103 on the grounds listed below, which are supported by a
`
`declaration from Dr. Gary Woods, an expert in the field of the ’962 Patent. Ex-1002,
`
`¶¶7-15; Ex-1003:
`
`•
`
`Ground 1: Claims 1-8 and 18-19 are rendered obvious by U.S. Patent
`
`No. 9,515,513 (“Suzuki”) in view of U.S. Patent Application Publication No.
`
`2009/0284341 (“Okada”);
`
`•
`
`Ground 2: Claims 2-8 are rendered obvious by Suzuki in view of
`
`Okada and U.S. Patent No. 8,268,092 (“Yang”);
`
`•
`
`Ground 3: Claims 1-8 and 18-19 are rendered obvious by Suzuki in
`
`view of Okada and U.S. Patent Publication No. 2014/0147625 (“Lin”);
`
`•
`
`Ground 4: Claims 2-8 are rendered obvious by Suzuki in view of
`
`3
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`Okada, Lin, and Yang;
`
`•
`
`Ground 5: Claims 1-8 and 18-19 are rendered obvious by Suzuki in
`
`view of U.S. Patent No. 9,252,611 (“Lee”); and
`
`•
`
`Ground 6: Claim 6 is rendered obvious by Suzuki in view of Lee and
`
`Lin.2
`
`For purposes of this proceeding only, Petitioner assumes the earliest date to
`
`which the ’962 Patent is entitled to priority is June 27, 2013. Ex-1002, ¶61.
`
`Therefore, in determining what constitutes prior art, this petition applies post-AIA
`
`35 U.S.C. § 102.
`
`Suzuki issued from an application filed May 13, 2013. Ex-1005 at Cover.
`
`Suzuki qualifies as prior art under at least post-AIA 35 U.S.C. §102(a)(2).
`
`Okada published on November 19, 2009. Ex-1006 at Cover. Okada qualifies
`
`as prior art under at least post-AIA 35 U.S.C. §102(a)(1).
`
`Yang issued on September 18, 2012, from an application filed July 22, 2010,
`
`and claims priority to an application filed April 25, 2006. Ex-1013 at Cover. Yang
`
`qualifies as prior art under at least post-AIA 35 U.S.C. §102(a)(1).
`
`
`2 For each Ground, any other references discussed herein are provided to show the
`
`state of the art at the time of the alleged invention. Int’l Bus. Machines Corp. v.
`
`Intellectual Ventures II, LLC, IPR2015-00089, Paper No. 44 at 15 (Apr. 25, 2016).
`
`4
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`Lin claims priority to Taiwanese patent application 101144204, which was
`
`filed November 26, 2012. Ex-1014 at Cover. The Taiwanese patent application
`
`supports the subject matter described in Lin. See generally Ex-1014; Ex-1015; Ex-
`
`1002, ¶¶83-85; post-AIA 35 U.S.C. §102(d)(2). Thus, Lin qualifies as prior art under
`
`at least post-AIA 35 U.S.C. §102(a)(2).3
`
`Lee issued from PCT application No. PCT/KR2012/011256 filed December
`
`21, 2012. Ex-1007 at Cover. The PCT application supports the subject matter
`
`described in Lee. See generally Ex-1007; Ex-1016; Ex-1002, ¶¶74-79; post-AIA 35
`
`U.S.C. §102(d)(2). Thus, Lee qualifies as prior art under at least post-AIA 35 U.S.C.
`
`§102(a)(2).4
`
`VI. THE CHALLENGED PATENT
`The ’962 Patent is directed to “[a] receiving antenna for wireless charging,”
`
`Ex-1001, Abstract, which, as shown in Figure 5, includes a “substrate,” “soft
`
`
`3 Where Petitioner has cited Lin, Petitioner provides citations to Lin’s priority
`
`application, Ex-1015, which confirms the priority application supports the relied
`
`upon disclosure. Ex-1002, ¶¶83-84.
`
`4 Where Petitioner has cited Lee, Petitioner also provides citations to Lee’s PCT
`
`application, Ex-1016, which confirms the PCT application supports the relied upon
`
`disclosure. Ex-1002, ¶¶74-75.
`
`5
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`magnetic layer 500,” “adhesive layer 510,” “receiving coil 520,” and “support means
`
`530,” id., 6:8-16, Fig. 5. Ex-1002, ¶¶50-54.
`
`
`
`The soft magnetic layer “may be in the form in which a plurality of sheets
`
`including a single metal or an alloy” are “stacked.” Ex-1001, 5:19-26. As illustrated
`
`in Figure 5 above, the receiving coil 520 may be “embedded inside of the soft
`
`magnetic layer 500.” Id., 6:28-32.
`
`The ’962 Patent also explains that the adhesive layer 510 may have 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 514,” as illustrated
`
`in Figure 6 below. Ex-1001, 6:37-45, Fig. 6.
`
`6
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`
`
`The wireless power receiving device may also include an “NFC coil 230” that
`
`may be “formed to surround an outer portion of the receiving coil 220,” as illustrated
`
`in Figure 3 below. Ex-1001, 5:50-54, Fig. 3.
`
`
`
`7
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`
`
`As discussed below, all the limitations in the challenged claims were known
`
`in the prior art and obvious. See Section IX; Ex-1002, ¶¶86-254.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`One of ordinary skill in the art at the relevant time (“POSITA”) would have
`
`had a bachelor’s degree in electrical engineering, computer engineering, applied
`
`physics, or a related field, and at least one year of experience in the research, design,
`
`development, and/or testing of wireless charging systems, or the equivalent, with
`
`additional education substituting for experience and vice versa. Ex-1002, ¶¶46-49.
`
`8
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`VIII. CLAIM CONSTRUCTION
`Petitioner interprets the claims of the ’962 Patent according to the Phillips
`
`claim construction standard. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005). Petitioner does not believe that any term requires explicit
`
`construction to resolve the issues presented in this Petition.5 Ex-1002, ¶62. However,
`
`while Petitioner does not believe “support means,” as recited in dependent Claim 3,
`
`is a means-plus-function term governed by 35 U.S.C. § 112(6) (id.), to the extent the
`
`Board disagrees, Petitioner proposes the construction discussed below.
`
`Dependent Claim 3 recites the wireless power receiving antenna of Claim 2,
`
`“further comprising a support means stacked on the receiving coil.” The function of
`
`the “support means” is “to support the receiving coil.” The corresponding structure
`
`is “a film-like layer, such as a polyethylene terephthalate (PET) layer.”
`
`The ’962 Patent explains that “a support means 530 is formed on the receiving
`
`coil 520.” Ex-1001, 6:14-15. The “support means 530 supports the receiving coil
`
`520,” and “may include a polyethylene terephthalate (PET) material, and may have
`
`the form of a film.” Id., 6:16-17. Accordingly, a POSITA would have understood
`
`that a “support means” has a structure of “a film-like layer, such as a polyethylene
`
`
`5 Petitioner reserves all rights to raise claim construction and other arguments in
`
`district court.
`
`9
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`terephthalate (PET) layer,” and a function “to support the receiving coil.” Ex-1002,
`
`¶¶62-63.
`
`IX. DETAILED EXPLANATION OF THE GROUNDS
`As explained below, the challenged claims are disclosed by the prior art. Ex-
`
`1002, ¶86; see also id. generally ¶¶64-254.
`
`A. Ground 1: Claims 1-8 and 18-19 are rendered obvious by Suzuki
`in view of Okada
`1. Obviousness Rationale
`In addition to the reasons set forth below with respect to specific claim
`
`elements, a POSITA would have had good reason to combine the teachings of
`
`Suzuki and Okada and would have had a reasonable expectation of success in doing
`
`so. Ex-1002, ¶¶87-94.
`
`Suzuki and Okada are in the same field of invention and teach similar wireless
`
`charging techniques. Ex-1002, ¶88; see also id., ¶¶65-69 (Suzuki overview), ¶¶70-
`
`73 (Okada overview). Suzuki is directed to devices with a “wireless power receiving
`
`coil for wireless charging.” Ex-1005, 1:6-15. Likewise, Okada “relates to a coil unit
`
`suitable for contactless power transmission” “to transmit power without using a
`
`metal contact.” Ex-1006, [0002], [0004].
`
`Moreover, Suzuki and Okada both seek to solve similar, well-known
`
`problems in wireless charging systems. For example, Suzuki discloses a system for
`
`improving the “performance characteristics” of wireless charging devices, including
`
`10
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`by limiting and inhibiting “the influence of metallic elements included elsewhere in
`
`the mobile device” by arranging a magnetic sheet between the antenna and those
`
`metallic elements (e.g., a battery pack) to shield the antenna and avoid degradation
`
`of the performance characteristics of the antenna. Ex-1005, 1:35-40, 2:1-12, 3:21-
`
`30. Similarly, Okada improves wireless charging devices by, for example, including
`
`a magnetic substance as a part of the wireless receiver, where the magnetic substance
`
`may be “a multilayer body where a plurality of magnetic substances are layered.”
`
`Ex-1006, [0015]. Okada discloses that using such a multilayer body can provide
`
`desired coil characteristics and reduce magnetic flux leakage. Id.
`
`A POSITA seeking to solve well-known problems in wireless charging
`
`systems, such as improving wireless charging efficiency, would have known of and
`
`consulted each of the proposed solutions of these references. Ex-1002, ¶91. A
`
`POSITA would have had good reason to combine the teachings of Suzuki and
`
`Okada, at least because a POSITA would have recognized a benefit in implementing
`
`Suzuki’s magnetic sheet as a multilayer body with a plurality of layered magnetic
`
`substances, as disclosed by Okada, to obtain desired coil characteristics and reduce
`
`magnetic flux leakage. Id., ¶92.
`
`A POSITA would also have had a reasonable expectation of success in
`
`combining the teachings of Suzuki and Okada. Ex-1002, ¶93. Each includes similar
`
`and well-known components, including magnetic sheets and wireless power
`
`11
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`receiving coils, and purports to solve similar problems in similar and predictable
`
`ways, including by modifying the receiving antenna’s magnetic sheet. Accordingly,
`
`a POSITA would have understood that these references disclose interrelated
`
`teachings based on routine wireless charging technologies, and Suzuki and Okada
`
`would be amenable to various well-understood and predictable combinations. Id.,
`
`¶¶93-94.
`
`2.
`Independent Claims 1, 18
`Independent Claims 1 and 18 of the ’962 Patent include identical limitations,
`
`with the exception of the preambles. Accordingly, Petitioner addresses both claims
`
`together below. Ex-1002, ¶95.
`
`a.
`
`Element 1[pre]: “A wireless power receiving antenna
`comprising:”
`
`Element 18[pre]: “A wireless power receiving
`apparatus comprising a receiving circuit and a
`wireless power receiving antenna, the wireless power
`receiving antenna comprising:”
`Suzuki discloses or suggests the preambles of Claims 1 and 18, to the extent
`
`they are limiting. Ex-1002, ¶¶96-104. For example, with reference to figure 3A,
`
`Suzuki discloses a mobile device 10a that includes a combo coil module 1 having
`
`12
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`both an NFC coil 3 and a wireless power receiving coil 4. Ex-1005, 3:18-21,6 FIG.
`
`3A.
`
`
`
`Ex-1005, FIG. 3A (annotated); Ex-1002, ¶97.
`
`The exemplary combo coil module 1 included in figure 3A is illustrated in
`
`figure 1A, whereas a cross section of the exemplary combo coil module is shown in
`
`figure 1B, which is replicated in annotated form below. As disclosed by Suzuki, the
`
`
`6 A POSITA would have understood the embodiments in Suzuki build upon each
`
`other, such that disclosure with respect to common features between the
`
`embodiments applies to those features in each of the embodiments in which they are
`
`included. For example, Suzuki’s description of the details of the combo coil module
`
`and its use within a mobile device with respect to the embodiments illustrated in
`
`figures 1 and 2 would also be applicable to the combo coil module embodiments
`
`illustrated in figures 3 and 9. Ex-1005, 3:9-11, 4:35-41; Ex-1002, ¶100.
`
`13
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`exemplary combo coil module 1 includes a wireless power receiving coil 4 and an
`
`NFC antennal coil 3 arranged on a magnetic sheet 2. Ex-1005, 3:18-22. The NFC
`
`coil 3 and the wireless power receiving coil 4 are mounted on the magnetic sheet 2
`
`by an affixing element 5, which, for example, can be double-sided tape. Ex-1005,
`
`3:42-46.
`
`Ex-1005, FIG. 1B (annotated); Ex-1002, ¶98.
`
`As shown in the cross-section illustrated in annotated figure 3B below, a
`
`combo coil module 1 is mounted on the top surface of a battery pack 9 within the
`
`mobile device 10a. Ex-1005, 3:18-22, 4:35-41, FIGs. 3A, 3B.
`
`
`
`14
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`
`
`Ex-1005, FIGs. 3B (annotated); Ex-1002, ¶99.
`
`Suzuki further discloses that “the battery pack 9 may include and/or interface
`
`with power circuitry for powering the mobile device 10 and/or charging the battery
`
`pack 9.” Ex-1005, 4:27-30. Figure 3B is depicted as including the exemplary combo
`
`coil module 1 shown in figures 1A and 1B. Suzuki, however, discloses that “[w]hile
`
`FIG. 1B illustrates the NFC antenna coil 3 and the wireless power receiving coil 4
`
`as being mounted flush with a top surface of the magnetic sheet 2, this arrangement
`
`should not be construed as limiting.” Ex-1005, 3:46-49. Consistent with this
`
`disclosure, Suzuki discloses another embodiment of the combo coil module 1b with
`
`respect to figures 9A and 9B, where the NFC coil 3 and wireless power receiving
`
`coil 4 are embedded within the magnetic sheet 2a. Ex-1005, 7:43-47.
`
`15
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`
`
`Ex-1005, FIG. 9B (annotated); Ex-1002, ¶101.
`
`Therefore, a POSITA would have understood that Suzuki discloses or
`
`suggests an embodiment where the combo coil module 1b illustrated in figures 9A
`
`and 9B, rather than the exemplary combo coil unit 1 shown in figures 1A and 1B, is
`
`included in a mobile device like that shown in figure 3B. Ex-1002, ¶102; Ex-1005,
`
`3:46-49. The demonstrative below illustrates such an arrangement where the combo
`
`coil module of figure 9B is mounted on the battery 9, which may be housed in a
`
`mobile device as shown in figure 3B. Ex-1002, ¶102.
`
`16
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`
`
`Id.
`
`The combination of the combo coil module 1b and battery pack 9 as depicted
`
`in the demonstrative above corresponds to the “wireless power receiving antenna”
`
`recited in Claims 1 and 18. For Claim 18, in the embodiment where the mobile
`
`device includes the combo coil module 1b on the battery as depicted above, Suzuki’s
`
`mobile device 10a corresponds to the recited “wireless power receiving apparatus,”
`
`and the power circuitry for powering the mobile device and charging the battery
`
`disclosed as also included in the mobile device by Suzuki corresponds to the recited
`
`“a receiving circuit.” Ex-1002, ¶103.
`
`b.
`Element 1[a]/18[a]: “a substrate;”
`Suzuki discloses or suggests elements 1[a] and 18[a]. Ex-1002, ¶¶105-109.
`
`Suzuki discloses that the combo coil module 1 “may be mounted on a top surface of
`
`17
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`the battery pack 9 within the mobile device 10 a.” Ex-1005, 4:35-43, Fig. 3B. As
`
`discussed above with respect to the preamble, 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.
`
`
`
`
`
`Ex-1002, ¶106.
`
`A POSITA would have understood that the exterior of Suzuki’s battery pack
`
`is a “substrate,” consistent with the ’962 Patent, which indicates that the substrate is
`
`simply something on which the magnetic layer is “stacked on” or “formed on.” Ex-
`
`1001, Abstract, 1:65-2:2, 2:28-31, 5:10-14; Ex-1002, ¶107. For example, a POSITA
`
`would have recognized that the battery pack acts as a base upon which the receiving
`
`antenna’s components are affixed. Ex-1002, ¶107. A POSITA would have also
`
`known that the battery pack supports the components of the wireless receiving
`
`18
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`antenna, similar to commonly used substrates in wireless charging systems at the
`
`time of the ’962 Patent. Id., ¶¶107-108.
`
`c.
`
`Element 1[b]/18[b]: “a soft magnetic layer comprising
`a first magnetic sheet disposed on the substrate and a
`second magnetic sheet disposed on the first magnetic
`sheet;”
`Suzuki in combination with Okada discloses or suggests elements 1[b] and
`
`18[b]. Ex-1002, ¶¶110-125. While Suzuki discloses that the combo control module
`
`1 shown in figure 9B includes a magnetic sheet 2a, Suzuki does not explicitly
`
`disclose that the magnetic sheet 2a includes first and second magnetic sheets, as
`
`recited in claim elements 1[b]/18[b]. Okada, however, discloses such a feature.
`
`Okada, like Suzuki, is directed to wireless power transfer for use in, for
`
`example, a mobile phone. Ex-1006, [0002], FIGs. 1, 3-5. Okada discloses “[a] coil
`
`unit…includes a coil formed by winding a coil wire, a wiring substrate, and a
`
`magnetic substance for receiving magnetic lines of force generated by the coil.” Id.,
`
`[0008]. Annotated figure 4 of Okada below shows an exploded view of a coil unit,
`
`where the magnetic substance 60, which, for example, “takes the shape of a sheet or
`
`a plate,” is provided on the non-transmission side of the coil 30. Id., [0049]. Like
`
`Suzuki, Okada discloses that the magnetic sheet can be affixed to the coil using an
`
`adhesive layer, such as double-sided tape. Id., [0049].
`
`19
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`Ex-1006, FIG. 4 (annotated); Ex-1002, ¶¶112-113.
`
`Annotated figure 5 of Okada below shows first and second magnetic sheets
`
`included in a multilayer body of the coil unit.
`
`
`
`20
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`
`
`
`Ex-1006, FIG. 5 (annotated); Ex-1002, ¶¶114-115. Okada discloses the advantages
`
`of using two stacked sheets of different magnetic materials, including allowing for
`
`better control of inductor characteristics, improved transmission efficiency, and
`
`reduced magnetic flux leakage. Ex-1006, [0015]-[0017], [0062]-[0086], FIGS 8-10;
`
`Ex-1002, ¶¶114-115.
`
`As explained above in Section IX.A.1 and further discussed below, a POSITA
`
`would have found it obvious to modify the wireless power receiving antenna of
`
`Suzuki so that the magnetic sheet 2a shown in figure 9B of Suzuki is replaced by a
`
`multilayer body having two layered magnetic sheets, as disclosed by Okada, because
`
`such a modification would have provided several advantages (e.g., increased
`
`freedom to select desired inductance and resistance characteristics resulting in
`
`increased power transfer efficiency and reduced leakage of magnetic flux). Ex-1002,
`
`¶¶116-117. Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir.
`
`21
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`2016); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 424 (2007). Indeed, such
`
`advantages were well known in the prior art. Ex-1002, ¶¶117-121; Ex-1006, [0015]-
`
`[0016], [0085]-[0086]; Ex-1009, ¶¶[0044], [0064]-[0065], Ex-1007, 15:42-46,
`
`15:61-16:5, 17:7-31; Ex-1016, [132], [136], [148]-[150]; Ex-1010, ¶¶[0021]-[0027],
`
`[0070].7 As such, a POSITA would have had good reason to make such a
`
`modification. Ex-1002, ¶121.
`
`Additionally, such a modification would have been straightforward for a
`
`POSITA. Ex-1002, ¶122. An exemplary and non-limiting demonstrative of the
`
`combo coil unit 1b of figure 9B of Suzuki, as modified in view of Okada such that
`
`it is provided on the top surface of the battery pack, as disclosed in figure 3B of
`
`Suzuki, is provided below.
`
`
`
`7 See n.2.
`
`
`
`22
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`Id. And, as evidenced by Jang, using multiple magnetic sheets in the combo coil
`
`module of the Suzuki-Okada combination does not detract from the performance of
`
`the NFC coil included in the combo coil module. Ex-1009, ¶¶[0044], [0064]-[0065];
`
`Ex-1002, ¶123.
`
`In view of the above, modifying Suzuki based on Okada would have been
`
`obvious, because a POSITA would have recognized that applying Okada’s technique
`
`(e.g., using multiple magnetic sheets) to Suzuki’s combo coil module would have
`
`improved Suzuki’s coil module in the same way Okada’s use of a multiple magnetic
`
`sheets improves Okada’s coil unit (e.g., improves power transmission efficiency and
`
`reduces flux leakage), and such application was within the level of ordinary skill.
`
`Ex-1002, ¶123; See In Re Katz Interactive Call Processing Patent Litig., 639 F.3d
`
`1303, 1323 (Fed. Cir. 2011).
`
`Moreover, a POSITA would have understood that the first and second
`
`magnetic sheets in the Suzuki-Okada combination constitute a “soft magnetic layer,”
`
`as recited in Claims 1 and 18. Ex-1002, ¶124. For example, Suzuki discloses that
`
`“[a]s a non-limiting example, the magnetic sheet 2 maybe formed by ferrous
`
`materials with comparatively high magnetic permeability.” Ex-1005, 3:64-66
`
`(emphasis added). And Okada discloses that the magnetic sheets “may be various
`
`magnetic materials such as a soft magnetic material, a ferrite soft magnetic
`
`material, and a metal soft magnetic material.” Ex-1006, [0060] (emphasis added).
`
`23
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`Thus, a POSITA would have found it obvious to use soft magnetic materials like
`
`those disclosed by Okada for the first and second magnetic sheets in the Suzuki-
`
`Okada combination, as Okada discloses that using such materials (which may be
`
`ferrous, as in Suzuki) produces the above-noted desired benefits when two magnetic
`
`sheets are used in the coil unit. Ex-1006, [0015]-[0017], [0062]-[0086]; Ex-1002,
`
`¶125. The understanding that the magnetic materials used by both Suzuki and Okada
`
`constitute “soft” magnetic materials is consistent with the disclosure in the ’962
`
`Patent. Ex-1001, 5:19-34.
`
`As shown in the demonstrative above, in the coil module of the combination,
`
`the first magnetic sheet is on the substrate and the second magnetic sheet is on the
`
`first magnetic sheet. Therefore, the modified Suzuki-Okada combo coil unit
`
`discloses or suggests the claimed “soft magnetic layer comprising a first magnetic
`
`sheet disposed on the substrate and a second magnetic sheet disposed on the first
`
`magnetic sheet.” Ex-1002, ¶125.
`
`d.
`
`Element 1[c]/18[c]: “a receiving coil disposed on the
`second magnetic sheet; and”
`The Suzuki-Okada combination discloses or suggests elements 1[c] and 18[c].
`
`Ex-1002, ¶¶126-129. Suzuki discloses that the wireless power receiving coil 4 “may
`
`be arranged upon a magnetic sheet 2.” Ex-1005, 3:18-22. As shown in the
`
`demonstrative corresponding to the combo coil module of the Suzuki-Okada
`
`24
`
`

`

`U.S. Patent No. 9,997,962
`Petition for Inter Partes Review
`combination below, the power receiving coil (“receiving coil”) is “disposed on the
`
`second magnetic sheet.”
`
`
`
`Ex-1002, ¶¶127.
`
`
`
`Notably, even though there is an intervening adhesive layer between the
`
`wireless power receiving coil and the second magnetic sheet, the understanding that
`
`the wireless power rec