`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00350
`Patent 9,806,565
`____________
`
`
`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
`
`
`
`
`
`

`

`Table of Contents
`
`B.
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. THE PATENTED TECHNOLOGY .................................................................. 2
`A.
`The ’565 Patent Was Invented by LG Innotek .................................... 2
`B. Overview of the ’565 Patent ................................................................ 2
`C.
`Challenged ’565 Patent Independent Claims ....................................... 5
`III. OVERVIEW OF ASSERTED REFERENCES ................................................. 7
`A. Hong (Ex. 1005)—the primary reference applied in Ground 1—does
`not disclose the claimed invention ....................................................... 8
`Park (Ex. 1006)—a secondary reference—does not compensate for
`the deficiencies of Hong .................................................................... 10
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE LIKELIHOOD
`OF INVALIDITY OF THE CHALLENGED CLAIMS ................................. 10
`The Petition asserts that Hong alone discloses these claim
`A.
`limitations—the Petition does not assert any combination of
`references or articulate any modifications to Hong ........................... 11
`B. Hong does not disclose [1.1 and 12.1] “a substrate comprising a
`receiving space of a predetermined shape formed therein for a
`connecting unit configured to connect to a wireless power receiving
`circuit” ................................................................................................ 12
`1.
`Claims 1 and 12 require a distinct “connecting unit” .............. 14
`2.
`Hong does not disclose a separate and distinct “connecting
`unit” ......................................................................................... 18
`Hong does not render obvious the ’565 Patent’s “connecting
`unit” ......................................................................................... 21
`V. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ...................... 24
`Factor 1: The district court has not granted a stay, nor is there any
`A.
`evidence that a stay will be granted. .................................................. 26
`
`3.
`
`
`
`i
`
`

`

`B.
`
`C.
`
`Factor 2: The district court trial will occur before the deadline for a
`final decision in this proceeding. ....................................................... 28
`Factor 3: By the time an institution decision is reached, the parties and
`the court will have completed claim construction and discovery will
`be nearly closed. ................................................................................. 30
`Factor 4: There is complete overlap between this IPR and the district
`court proceedings. .............................................................................. 32
`Factor 5: Petitioner is a defendant in the district court litigation. ...... 34
`E.
`Factor 6: The petition is without merit and unlikely to succeed. ....... 34
`F.
`VI. CONCLUSION ................................................................................................ 35
`
`
`D.
`
`
`
`
`
`
`
`ii
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`

`

`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. Apple Inc.,
`Case No. 6:21-cv-00579-ADA, Dkt. No. 42 (W.D. Tex. January
`7, 2022)
`
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 33 (W.D. Tex. Sept. 28, 2021)
`
`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`
`Text Order Denying Motion to Stay Pending IPR, Solas OLED
`Ltd. v. Google, Inc., Case No. 6:19-cv-00515-ADA (W.D. Tex.
`June 23, 2020)
`
`Order Denying Motion to Stay Pending IPR, Multimedia Content
`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-
`00207-ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019)
`
`Scheduling Order, Correct Transmission LLC v. Adtran, Inc.,
`Case No. 6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10,
`2020)
`
`Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case
`No. 6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`
`Standing Order Governing Proceedings in Patent Cases (OGP)
`4.1, Judge Alan D. Albright
`
`Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case
`No. 6:19-cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30, 2020)
`
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Apple Inc. in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`
`
`
`iii
`
`

`

`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`Defendant Apple Inc.’s First Amended Preliminary Invalidity
`Contentions in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`
`Android Authority article: LG Innotek’s Latest wireless charger is
`Three times faster
`
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 28 (W.D. Tex. Nov. 15,
`2021)
`
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-00579-ADA
`(W.D. Tex.)
`
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 56 (W.D. Tex. Feb. 11, 2022)
`
`
`
`
`
`
`
`
`
`iv
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`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`I.
`
`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
`
`preliminary response to Petitioner Apple Inc.’s (“Petitioner”) petition for inter
`
`partes review of U.S. Patent No. 9,806,565 (“the ’565 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 separate and distinct “connecting unit.” Petitioner asserts that Hong
`
`alone discloses a discrete “connecting unit” and does not propose any combination
`
`of references or modifications to Hong for this limitation. However, Petitioner
`
`cannot establish that Hong discloses a separate and distinct “connecting unit” for
`
`purposes of connecting the coil to the requisite circuitry, such as a rectifying circuit.
`
`Hong merely discloses that the coil be directly connected to a “rectifying unit.” But
`
`it would not make sense to use Hong’s “rectifying unit” as the ’565 Patent’s
`
`“connecting unit.” Petitioner fails to provide any reasonable basis to support its
`
`arbitrary re-writing of Hong to include the claimed “connecting unit,” and therefore
`
`cannot establish a reasonable likelihood of invalidity.
`
`Second, the Board should exercise its discretion to deny the petition in light
`
`of a parallel district court case involving the same patent, 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
`
`
`
`1
`
`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`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 nearly be closed. The district court trial is also on track to take
`
`place five 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 ’565 Patent Was Invented by LG Innotek
`
`The ’565 Patent (Ex. 1001) names four 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 Ex. 2012. Patent Owner acquired the ’565 Patent
`
`from LG Innotek in 2021.
`
`B. Overview of the ’565 Patent
`
`The ’565 Patent is entitled “Wireless Power Receiver and Method of
`
`Manufacturing the Same.” It teaches a wireless power receiver with reduced
`
`thickness by providing a connecting unit that connects the coil to the wireless power
`
`
`
`2
`
`

`

`
`receiving circuit to transfer power received from the coil to the circuit. Ex. 1001,
`
`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`2:45-49, 5:27-34.
`
`The ’565 Patent describes a wireless power receiver 1000 comprising a coil
`
`unit 200, a connecting unit 300, a magnetic substrate 100, an adhesive layer 710, and
`
`receiving space 130, as depicted in Figures 11 and 26 (for example):
`
`
`
`
`
`In one embodiment, the magnetic substrate includes receiving space 130. Id., 8:46-
`
`47. In another embodiment, the adhesive layer includes a receiving space. Id.,
`
`16:55-58. For example, the ’565 Patent teaches that “the connecting unit is disposed
`
`in the receiving space of the magnetic substrate so that the thickness of the wireless
`
`power receiver can be remarkably reduced as much as the thickness of the
`
`
`
`3
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`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`connecting unit.” Id., 2:45-49. Further, according to another embodiment, a “tape
`
`substrate is used as the connecting unit so that the overall size of the wireless power
`
`receiver can be reduced.” Id., 2:50-52; 16:14-19. To that end, the ’565 Patent
`
`consistently discusses the “connecting unit” as a discrete component of the wireless
`
`power receiver.
`
`The ’565 Patent further describes how the connecting unit containing
`
`connecting terminals, 310 and 320, connects the coil 200 to the wireless power
`
`receiving circuit, as depicted in Figures 11 and 27 (for example):
`
`
`
`
`
`Specifically, “[t]he first connection terminal 210 is located at one end of the coil 230
`
`and the second connection terminal 220 is provided at the other end of the coil 230.”
`
`Id., 4:57-59; see also 15:34-36, 15:57–16:3. “The first and second connection
`
`terminals 210 and 220 are necessary for connection with the connecting unit 300.”
`
`Id., 4:60-61. To that end, “[t]he first connection terminal 310 of the connecting unit
`
`
`
`4
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`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`300 may be connected to the first connection terminal 210 of the coil unit 200 and
`
`the second connection terminal 320 of the connecting unit 300 may be connected to
`
`the second connection terminal 220 of the coil unit 200.” Id., 5:19-23. Further, the
`
`connections between the connection terminals of the coil 200 and the connecting
`
`unit 300 can be made in various ways, such as (but not limited to) with solder, via
`
`holes, and other techniques. Id., 5:43-45; 18:23-34. As such, the ’565 Patent teaches
`
`that the connecting unit is a distinct component that connects to the coil.
`
`
`
`Additionally, the ’565 Patent also teaches the function of the connecting unit:
`
`“[t]he connecting unit 300 connects the wireless power receiving circuit (not shown)
`
`with the coil unit 200 to transfer the power received from the coil unit 200 to a load
`
`(not shown) through the wireless power receiving circuit.” Id., 5:27-30. Further,
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`“[t]he wireless power receiving circuit may include a rectifier circuit for converting
`
`AC power into DC power and a smoothing circuit for transferring the DC power to
`
`the load after removing ripple components from the DC power.” Id., 5:31-34.
`
`C. Challenged ’565 Patent Independent Claims
`
`The challenged independent claims are Claims 1 and 12, 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
`
`
`1 All emphasis added, unless stated otherwise.
`
`
`
`5
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`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`1. A wireless power receiver comprising:
`a substrate comprising a receiving space of a predetermined shape
`formed therein for a connecting unit configured to connect to a wireless
`power receiving circuit;
`a coil unit disposed on the substrate, the coil unit comprising a first
`connection terminal, a second connection terminal, and a coil; and
`a short-range communication antenna disposed on the substrate and
`surrounding the coil;
`wherein the coil is configured to wirelessly receive power, wherein the
`coil is formed as a conductive pattern on or within the substrate,
`wherein the conductive pattern comprises a conductive line wound at
`least two times and conductive pattern has a spiral shape, wherein the first
`connection terminal is located at one end of the coil and the second connection
`terminal is located at the other end of the coil, wherein the coil unit overlaps
`the receiving space in a first direction perpendicular to an upper surface of the
`substrate,
`wherein the connecting unit is disposed in the receiving space and
`connected to the coil unit,
`wherein the connecting unit overlaps the receiving space in a second
`direction parallel to the upper surface of the substrate, and
`wherein the connecting unit comprises:
`a third connection terminal connected to the first connection terminal
`of the coil unit; and
`a fourth connection terminal connected to the second connection
`terminal of the coil unit.
`
`12. A wireless power receiver comprising:
`
`6
`
`
`
`
`
`
`
`

`

`
`
`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`a substrate comprising a receiving space of a predetermined shape
`formed therein for a connecting unit configured to connect to a wireless
`power receiving circuit; and
`a coil unit comprising a first connection terminal, a second connection
`terminal, and a coil; and
`a short-range communication antenna disposed on the substrate and
`surrounding the coil;
`wherein the coil is configured to wirelessly receive power,
`wherein the coil is formed as a conductive pattern on or within the
`substrate,
`wherein the conductive pattern comprises a conductive line wound at
`least two times and the conductive pattern has a spiral shape,
`wherein the first connection terminal is located at one end of the coil
`and the second connection terminal is located at the other end of the coil,
`wherein the connecting unit is disposed in the receiving space and
`connected to the coil unit,
`wherein the connecting unit overlaps the receiving space in a direction
`parallel to the upper surface of the substrate, and
`wherein the connecting unit comprises:
`a third connection terminal connected to the first connection terminal
`of the coil unit; and
`a fourth connection terminal connected to the second connection
`terminal of the coil unit; and
`wherein the coil unit is disposed on the substrate and the connecting
`
`unit.
`
`
`III. OVERVIEW OF ASSERTED REFERENCES
`
`
`
`7
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`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`
`A. Hong (Ex. 1005)—the primary reference applied in Ground 1—
`
`does not disclose the claimed invention
`
`U.S. Patent No. 8,941,352 (“Hong”) issued on January 27, 2015. Hong
`
`discloses a contactless charging apparatus of a portable terminal. Ex. 1005, Abstract.
`
`As illustrated in Figure 3 below, Hong discloses “a rectifying unit 13, a charging
`
`unit 15, and a secondary coil 11 formed on a main circuit board 20.” Id., 4:16-19.
`
`
`
`8
`
`

`

`
`
`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`Hong states that “secondary coil unit 11 includes a coil layer 11a having an
`
`end 11b that is electrically connected to one of two connecting terminals 13a and
`
`
`
`
`
`9
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`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`13b of the rectifying unit 13.” Id., 4:53-56. To that end, Hong’s coil directly
`
`connects to the rectifying unit 13. Hong further states that “[t]he rectifying unit 13
`
`is composed of a diode and a capacitor, and rectifies an alternating current induced
`
`by the secondary coil unit 11 to a direct current using the diode and the capacitor.”
`
`Id., 4:56-59. Thus, unlike the ’565 Patent, Hong does not teach the use of a separate
`
`and distinct “connecting unit” for connecting the coil to the requisite circuit
`
`elements, which may include a rectifier circuit.
`
`B.
`
`Park (Ex. 1006)—a secondary reference—does not compensate
`
`for the deficiencies of Hong
`
`U.S. Patent No. 8,922,162 (“Park”) was issued on December 30, 2014. The
`
`Petition asserts Park in the context of [1.3]. Pet., 37. However, Petitioner does not
`
`rely on Park for any of the independent claim limitations addressed herein by Patent
`
`Owner. Thus, the Board need not wade into the issues related to Park and it will not
`
`be addressed herein.
`
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD OF INVALIDITY OF THE CHALLENGED CLAIMS
`
`Ground 1 challenges two independent claims 1 and 12 (and dependent claims
`
`2-8, 11, and 13-18) as obvious over Hong in view of Park. Claims 2-8 and 11 depend
`
`on independent claim 1, and claims 13-18 depend on independent claim 12.
`
`
`
`10
`
`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`Petitioner’s Ground 1 challenge to these claims fails because Hong does not disclose
`
`or render obvious the “connecting unit” required by limitations [1.1] and [12.1]:
`
`• [1.1 and 12.1] “a substrate comprising a receiving space of a
`
`predetermined shape formed therein for a connecting unit configured
`
`to connect to a wireless power receiving circuit”
`
`Because Hong does not disclose these critical claim limitations of independent
`
`claims 1 and 12, Petitioner is unable to establish a reasonable likelihood of invalidity
`
`as to these claims or any of the challenged dependent claims. Grounds 2 and 3 only
`
`challenge dependent claims and therefore fail for the same reasons as Ground 1.
`
`A. The Petition asserts that Hong alone discloses these claim
`limitations—the Petition does not assert any combination of
`references or articulate any modifications to Hong
`
`
`The Petition asserts that Hong alone discloses each of the claim limitations in
`
`the independent claims. While the Petition concludes that Hong “renders obvious”
`
`each claim limitation, the Petition does not articulate any specific obviousness theory
`
`for any limitations. For example, the Petition does not propose any combination of
`
`references. Nor does the Petition propose or articulate any modifications to Hong
`
`for a single reference obviousness theory based on Hong. Nor does the Petition
`
`identify any differences between Hong and the claim limitations, which is a
`
`
`
`11
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`

`

`
`fundamental first step in the obviousness analysis. See Graham v. John Deere Co.,
`
`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`383 US 1, 17-18 (1966).
`
`Rather, the Petition only presents the theory that Hong alone “teaches” or
`
`discloses these claim limitations. Thus, the Board must consider only what Hong
`
`actually discloses—regardless of whether the Petition uses the conclusory language
`
`that Hong “renders obvious” the various limitations. See In re Magnum Oil Tools
`
`Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving
`
`obviousness, a petitioner cannot employ mere conclusory statements. The petitioner
`
`must instead articulate specific reasoning, based on evidence of record, to support
`
`the legal conclusion of obviousness.”); Liberty Mut. Ins. Co. v. Progressive Casualty
`
`Ins. Co., Case CBM2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8)
`
`(“[W]e will address only the basis, rationale, and reasoning put forth by the
`
`Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s
`
`arguments against the Petitioner.”).
`
`Consequently, the Petition cannot establish any reasonable likelihood of
`
`invalidity aside from what is actually taught and disclosed by Hong. And as
`
`discussed below, Hong does not teach or disclose the ’565 Patent’s distinct
`
`“connecting unit.”
`
`B. Hong does not disclose [1.1 and 12.1] “a substrate comprising a
`receiving space of a predetermined shape formed therein for a
`
`
`
`12
`
`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`
`connecting unit configured to connect to a wireless power
`receiving circuit”
`The ’565 Patent claims a “connecting unit” that connects the coil to the
`
`wireless power receiving circuit to transfer power received from the coil to the
`
`wireless power receiving circuit, which may comprise a rectifying circuit. The ’565
`
`Patent teaches that the connecting unit contains connection terminals that connect to
`
`corresponding connection terminals contained on each end of the coil. To that end,
`
`the claims require a separate and discrete connecting unit that connects the coil to
`
`the power receiving circuit.
`
`Hong does not disclose a connecting unit—it merely discloses that the coil
`
`connects directly to the rectifying unit 13, which is not a connecting unit. The
`
`Petition seeks to arbitrarily combine portions of Hong’s wiring layer 27 and
`
`rectifying unit 13 to manufacture the claimed connecting unit out of whole cloth.
`
`However, the Petition fails to provide any reasonable basis why Hong’s wiring layer
`
`and rectifying unit comprise a separate and distinct connecting unit. In fact,
`
`combining Hong in this manner is contrary to the teachings of the ’565 Patent. The
`
`’565 Patent claims require that the “connecting unit” connect the coil to a wireless
`
`power receiving circuit, which may be a rectifying circuit. To that end, it would not
`
`make sense to use Hong’s rectifying unit as the ’565 Patent’s connecting unit when
`
`the ’565 Patent envisions that the very purpose of the claimed “connecting unit” is
`
`
`
`13
`
`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`to connect the charging coil to a rectifying circuit, for example. For these reasons,
`
`Petitioner cannot establish a reasonable likelihood of invalidity.
`
`
`
`1.
`
` Claims 1 and 12 require a distinct “connecting unit”
`
`The ’565 Patent claims, figures, and specification all teach that the
`
`“connecting unit” is a discrete component of the claimed wireless power receiver.
`
`For example, claim 1 recites a connecting unit with a third and fourth connection
`
`terminal for purposes of connecting to first and second connection terminals of the
`
`coil:
`
`1. A wireless power receiver comprising:
`a substrate comprising a receiving space of a predetermined shape
`formed therein for a connecting unit configured to connect to a wireless
`power receiving circuit;
`a coil unit disposed on the substrate, the coil unit comprising a first
`connection terminal, a second connection terminal, and a coil; and
`a short-range communication antenna disposed on the substrate and
`surrounding the coil;
`wherein the coil is configured to wirelessly receive power, wherein the
`coil is formed as a conductive pattern on or within the substrate,
`wherein the conductive pattern comprises a conductive line wound at
`least two times and conductive pattern has a spiral shape, wherein the first
`connection terminal is located at one end of the coil and the second connection
`terminal is located at the other end of the coil, wherein the coil unit overlaps
`
`
`
`14
`
`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`
`the receiving space in a first direction perpendicular to an upper surface of the
`substrate,
`wherein the connecting unit is disposed in the receiving space and
`connected to the coil unit,
`wherein the connecting unit overlaps the receiving space in a second
`direction parallel to the upper surface of the substrate, and
`wherein the connecting unit comprises:
`a third connection terminal connected to the first connection terminal
`of the coil unit; and
`a fourth connection terminal connected to the second connection
`terminal of the coil unit.
`
`
`Claim 12 recites the same limitations with respect to the “connecting unit.” “Where
`
`a claim lists elements separately, ‘the clear implication of the claim language’ is that
`
`those elements are ‘distinct component[s]’ of the patented invention.” Becton,
`
`Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
`
`(quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see also
`
`SandBox Logistics LLC v. Proppant Express Invs. LLC, 813 F. App’x 548, 555 (Fed.
`
`Cir. 2020) (“That the ‘structural support members’ are recited separately from the
`
`‘end walls’ and ‘side walls’ implies that the ‘structural support members’ are a
`
`structurally distinct component.”). Indeed, the claims call out the requisite elements
`
`of the “connecting unit” by using a “wherein” clause to specify the components that
`
`“comprise” the “connecting unit.” See, e.g., Genentech, Inc. v. Chiron Corp., 112
`
`
`
`15
`
`

`

`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language
`
`which means that the named elements are essential….”). As such, the ’565 Patent
`
`claims require that the wireless power receiver contain a separate and distinct
`
`“connecting unit.”
`
`Further, Figures 1, 11, 14, and 26 (for example) all depict the connecting unit
`
`300 as a distinct component of the wireless power receiver:
`
`
`
`
`
`
`
`16
`
`

`

`
`
`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
`
`
`
`
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`As depicted in Figures 11 and 26 (and corresponding Figures 12 and 27), the ’565
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`Patent also teaches that “magnetic substrate 100” and/or “adhesive layer 710” may
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`contain “a receiving space 130.” Id., 8:27-29; 16:55-58. The connecting unit may
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`be disposed in the “receiving space 130.” Id., 2:45-49 (“According to one
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`embodiment, the connecting unit is disposed in the receiving space of the magnetic
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`substrate”); Claims 1 and 12 (“wherein the connecting unit is disposed in the
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`receiving space and connected to the coil unit”). To that end, the ’565 Patent teaches
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`and claims that the “connecting unit” is a discrete component that is disposed in the
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`receiving space of the substrate.
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`Additionally, the ’565 Patent further teaches that a purpose of the connecting
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`unit is to connect the coil to the wireless power receiving circuit—further evidencing
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`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
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`that the “connecting unit” is contemplated as a distinct component of the wireless
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`power receiver. Specifically, “[t]he connecting unit 300 connects the wireless power
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`receiving circuit (not shown) with the coil unit 200 to transfer the power received
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`from the coil unit 200 to a load (not shown) through the wireless power receiving
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`circuit.” Ex. 1001, 5:27-34, 10:50-57, 15:38-41. “The wireless power receiving
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`circuit may include a rectifier circuit for converting AC power into DC power and a
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`smoothing circuit for transferring the DC power to the load after removing ripple
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`components from the DC power.” Id., 5:31-34, 10:53-57.
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`Thus, the claims, figures, and specification all specify that the claimed
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`“connecting unit” is separate and discrete component that is intended to connect the
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`coil to requisite circuity, which may include a rectifying circuit.
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`2. Hong does not disclose a separate and distinct
`“connecting unit”
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`Hong does not disclose a wireless power receiver with a separate and distinct
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`“connecting unit.” According to Hong, the coil unit 11 is directly connected to the
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`rectifying unit 13. Ex. 1005, 4:53-56 (“As illustrated in the expanded section of FIG.
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`3, secondary coil unit 11 includes a coil layer 11a having an end 11b that is
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`electrically connected to one of two connecting terminals 13a and 13b of the
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`rectifying unit 13.”). The Petition illustrates this in the annotated figures below:
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`IPR2022-00350 (’565 Patent)
`IPR2022-00350 (565 Patent)
`Patent Owner Preliminary Response
`Patent Owner Preliminary Response
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`Rectifying unit 13
`(part of connecting unit)
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`Charging unit 15 to
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`1b
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`charge battery Coil unit
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`Ex.1005, Fig. 3 (cropped, annotated); Ex.1003, § 64.
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`
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`Coil unit
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`11a |
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`(part ofconnecting unit)
`/
`a7
`200
`25a— | \ Ve 27
`20D\ | |
`4
`\ 18d)
`13
`\
`a
`}
`}
`1a TENETTUETEETERETELTES EET
`"4
`|
`23
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`Wiring layer
`.
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`.
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`/
`
`f
`
`ate
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`:
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`_—
`Recti
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`(part ofvoi unit)
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`;
`unit
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`|
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`/
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`\
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`\
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`Ex.1005, Fig. 4 (cropped, annotated); Ex.1003, § 65.
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`19
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`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
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`Pet., 31. Thus, unlike the ’565 Patent that utilizes a “connecting unit” for purposes
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`of connecting the coil to the wireless power receiving circuit, Hong merely teaches
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`connecting the coil directly to the rectifying unit.
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`
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`Petitioner improperly reads three different components of Hong as disclosing
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`the single claimed “connecting unit”: (1) wiring layer 27; (2) connecting terminal
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`13b of the rectifying unit 13; and (3) rectifying unit 13. Pet., 30-32. However, none
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`of these elements constitute a distinct “connecting unit” (alone or in combination
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`with one another). Thus, the Petition merely applies hindsight reasoning using the
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`’565 claims as a roadmap to find its prior art components.2
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`2 See, e.g., Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F. 3d 1332,
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`1337 (Fed. Cir. 2005) (“[I]n making the assessment of differences between the prior
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`art and the claimed subject matter, section 103 specifically requires consideration of
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`the claimed invention ‘as a whole.’ Inventions typically are new combinations of
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`existing principles or features. The ‘as a whole’ instruction in title 35 prevents
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`evaluation of the invention part by part. Without this important requirement, an
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`obviousness assessment might successfully break an invention into its component
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`parts, then find a prior art reference corresponding to each component. This line of
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`reasoning would import hindsight into the obviousness determination by using the
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`invention as a roadmap to find its prior art components. Further, this improper
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`20
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`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
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`3. Hong does not render obvious the ’565 Patent’s
`“connecting unit”
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`As explained above, the Petition asserts that the combination of Hong’s (1)
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`wiring layer 27, (2) connecting terminal 13b of the rectifying unit 13, and (3)
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`rectifying unit 13 all together “render obvious the claimed connecting unit.” Pet.,
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`30-32. But the Petition does not provide any combination of references or
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`modifications to Hong in order to satisfy the ’565 Patent’s requirement that the
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`wireless power receiver contain a separate and distinct “connecting unit.” Further,
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`the Petition does not provide any motivation to implement a distinct “connecting
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`unit” in Hong or reasonable expectation of success. See In re Stepan Co., 868 F.3d
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`1342, 1346 n.1 (Fed. Cir. 2017) (“Whether a rejection is based on combining
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`disclosures from multiple references, combining multiple embodiments from a
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`single reference, or selecting from large lists of elements in a single reference, there
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`must be a motivation to make the combination and a reasonable expectation that
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`such a combination would be successful.”).
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`method would discount the value of combining various existing features or
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`principles in a new way to achieve a new result — often the essence of invention.”)
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`(citations omitted).
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`IPR2022-00350 (’565 Patent)
`Patent Owner Preliminary Response
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`Petitioner does not purport that Hong fails to disclose the claimed “connecting
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`unit”—it simply maintains that Hong teaches “that its contactless charging apparatus
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`includes several elements that connect the power-receiving coil to the battery
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`charging unit 15 ….” Pet., 30. But simply pointing to “several elements” that can
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`comprise the claimed “connecting unit” hardly demonstrates what elements are
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`missing from Hong and why a POSITA would be motivated to combine other
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`aspects of Hong to overcome those missing elements. See, e.g., Arendi S.A.R.L. v.
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`Apple Inc., 832 F.3