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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`———————
`
`IPR2022-00350
`U.S. Patent No. 9,806,565
`
`
`
`
`PETITIONER’S SUR-REPLY
`TO PATENT OWNER’S REPLY TO
`OPPOSITION TO REVISED MOTION TO AMEND
`
`
`
`
`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ............................................................................ iii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PARK IN VIEW OF MOTOHARU RENDERS OBVIOUS
`SUBSTITUTE CLAIMS 21-23 ....................................................................... 1
`
`A. Motoharu’s flexible board discloses the claimed “discrete
`connecting unit” under Patent Owner’s plain and ordinary
`interpretation ........................................................................................ 3
`
`B. Motoharu’s flexible board is “otherwise separate” from its coil
`because they are connected only at their connection leads .................. 6
`
`C.
`
`Claim 23: Motoharu discloses separate and distinct first through
`fourth connection terminals .................................................................. 9
`
`IV. CONCLUSION ..............................................................................................12
`
`CERTIFICATE OF SERVICE ................................................................................13
`
`ii
`
`
`
`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`Ex.1018
`Ex.1019
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`PETITIONER’S EXHIBIT LIST
`
`U.S. 9,806,565
`
`Prosecution History of U.S. 9,806,565
`
`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Joshua Phinney
`
`U.S. 8,941,352 to Hong
`U.S. 8,922,162 to Park et al.
`
`U.S. 2009/0021212 to Hasegawa et al.
`
`U.S. 2012/0274148 to Sung et al.
`U.S. 8,427,100
`
`U.S. 8,687,536
`
`Websters II New College Dictionary: Third Edition, (2005)
`U.S. 8,339,798 to Minoo et al.
`
`U.S. 7,375,609
`
`U.S. 8,164,001
`Scheduling Order, Scramoge Technology Limited v. Apple Inc.,
`WDTX-6-21-cv-00579 (filed Sept. 28, 2021)
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Apple Inc., Scramoge Technology
`Limited v. Apple Inc., WDTX-6-21-cv-00579 (served Sept. 7, 2021)
`
`U.S. 8,643,219
`U.S. 2011/0050164
`U.S. 9,252,611
`
`iii
`
`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`Order Cancelling Markman Hearing, Scramoge Tech. Ltd. v. Apple
`Inc., WDTX-6-21-cv-00579 (filed Sept. 28, 2021)
`Docket Sheet, Scramoge Tech. Ltd. v. Apple Inc., WDTX-6-21-cv-
`00579
`
`Order Setting Initial Case Management Conference and ADR
`Deadlines, Scramoge Tech. Ltd. v. Apple Inc., NDCA-22-cv-03041
`(filed May 24, 2022)
`
`Certified English Translation of Japanese Patent Publication
`JP2011-210937 to Goma et al. (“Goma”), Japanese Language
`Version of JP2011-210937 and Translation Certificate.
`
`Supplemental Declaration of Dr. Joshua Phinney under 37 C.F.R. §
`1.68
`
`Certified English Translation of Japanese Patent Application
`Publication H4-51115 to Motoharu et al. (“Motoharu”), Japanese
`Language Version of H4-51115 and Translation Certificate.
`
`Second Supplemental Declaration of Dr. Joshua Phinney under 37
`C.F.R. § 1.68
`
`Ex.1020
`
`Ex.1021
`
`Ex.1022
`
`Ex.1023
`
`
`Ex.1024
`
`
`Ex.1025
`
`
`Ex.1026
`
`
`Ex.1027
`
`U.S. 2007/0069961 to Akiho et al.
`
`
`
`
`
`iv
`
`
`
`
`
`I.
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`INTRODUCTION
`In its Reply to Petitioner’s Opposition to Revised Motion to Amend (Reply,
`
`Paper 32), Patent Owner attempts to interpret the claim terms “discrete” and
`
`“otherwise separate” to distinguish substitute claims 21-23 over the combination
`
`of Park and Motoharu. Patent Owner’s interpretations, however, do not provide
`
`any such distinction. Park in view of Motoharu discloses exactly what is claimed,
`
`even under Patent Owner’s interpretations. Accordingly, Petitioner requests that
`
`the Board find substitute claims 21-23 unpatentable.
`
`II.
`
`PARK IN VIEW OF MOTOHARU RENDERS OBVIOUS
`SUBSTITUTE CLAIMS 21-23
`As illustrated in Petitioner’s Opposition (Paper 30), Park in view of
`
`Motoharu renders obvious every limitation of substitute claims 21-23, including
`
`the “connecting unit” limitations. A POSITA would have found it obvious to
`
`reduce Park’s substrate thickness by using Motoharu’s “board mounting groove”
`
`technique. Ex.1025, 4; Opposition, 2-9. Figs. 1 and 2 of Motoharu (annotated
`
`below) illustrate its board mounting groove 5 (receiving space) formed in the
`
`ferrite core (substrate), where the flexible board 4 (connecting unit) is “mounted”
`
`1
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`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`in the board mounting groove.1 Ex.1025, 4-5.
`
`board mounting groove 5 (receiving space)
`
`
`
`flexible board 4 within groove 5
`(connecting unit)
` i
`
`inductive coil in grooves 2
`Ex.1025, Figs. 1 and 2 (annotated); Ex.1026, 8.
`
`
`
`As shown below, each of Motoharu’s coils includes two “leads 3” (first and second
`
`connection terminals) that are respectively connected to two “connecting leads”
`
`(third and fourth connection terminals) on the flexible board 4 (connecting unit).
`
`Ex.1025, 4; Opposition, 15-16. Motoharu does not depict or describe any other
`
`connections between the flexible board 4 and the coils.
`
`
`1 The Reply confusingly alleges that the “board 4 is sandwiched between layers of
`
`the ferrite core 1.” Reply, 8. That is not what Motoharu describes or illustrates.
`
`2
`
`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`
`spiral coil
`
`leads 3 of coil (1st and 2nd
`connection terminals)
`
`connecting leads of flexible
`board 4 (3rd and 4th connection
`terminals)
`
`Ex.1025, Fig. 1 (cropped and annotated); Ex.1026, 19.
`
`
`
`Patent Owner disputes only that Motoharu’s flexible board is not “discrete”
`
`from the ferrite core substrate or “otherwise separate” from the coil. Motoharu’s
`
`plain disclosure illustrates that Patent Owner is mistaken.
`
`A. Motoharu’s flexible board discloses the claimed “discrete
`connecting unit” under Patent Owner’s plain and ordinary
`interpretation
`Patent Owner states in its Reply that “the connecting unit is discrete in that it
`
`is a distinct structure separate from the other components, except at the claimed
`
`interconnections.” Reply, 2-3. It similarly notes that the claims require that the
`
`connecting unit be … distinct, i.e., a separate component, relative at least to the
`
`substrate and the wireless power receiving circuit.” Reply, 5; see also id. at 6
`
`(“connecting unit is therefore discrete, i.e., distinct or separate, relative to the
`
`substrate”). The Reply does not allege that “discrete” has any special meaning
`
`3
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`
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`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
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`within the context of the ’565 patent and notes that the description in the
`
`specification is supported by a dictionary definition submitted with the Reply.
`
`Reply, 6 (“Finally, this interpretation is supported by dictionary definitions: Ex.
`
`2020 (defining discrete as distinct or separate)”). Thus, Patent Owner’s
`
`interpretation that the claimed discrete connecting unit is a “distinct structure” or
`
`“separate component” appears to be the plain and ordinary interpretation.
`
`Patent Owner urges the Board to adopt this plain and ordinary interpretation
`
`because it allegedly distinguishes the claimed “discrete connecting unit” from
`
`Motoharu’s flexible board. Motoharu teaches, however, that its flexible board is a
`
`distinct structure from its ferrite core substrate—and is thus discrete under the
`
`plain and ordinary meaning.
`
`As discussed in the Opposition and above, Motoharu teaches a substrate
`
`formed of “ferrite” and separately teaches a “flexible board 4” with connecting
`
`leads. Ex.1025, 4. The ferrite core includes “a board mounting groove where the
`
`board is mounted.” Id. at 5. After the flexible board is so mounted, “the leads 3 of
`
`the coils are soldered to the connecting leads on the flexible board 4 in the board
`
`mounting groove 5 of the core 1.” Id. at 4. That is, Motoharu unequivocally
`
`discloses that the flexible board is a distinct structure that is “mounted” in the
`
`board mounting groove of the substrate. Under Patent Owner’s plain and ordinary
`
`interpretation, because the flexible board is a distinct structure, it is discrete.
`
`4
`
`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
` Patent Owner’s only argument as to why Motoharu does not teach a discrete
`
`
`
`connecting unit is because Motoharu’s flexible board is described as being
`
`“attached” to the ferrite core substrate. Reply, 8. But attachment does not negate
`
`the fact that the flexible board is a discrete component. In fact, attachment proves
`
`the flexible board is discrete. If the flexible board was an integrated portion of the
`
`ferrite core, attachment/mounting would be unnecessary. This understanding is
`
`consistent with the Federal Circuit case law Patent Owner cites in its Response
`
`(Paper 19). See Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936-
`
`39 (Fed. Cir. 2013). In Regents, the court held that because two disks are described
`
`as “affixed,” the two disks are “discrete structures.” Id. at 939; see also id. at 936
`
`(description of “affixing [] two disks to one another, including [by] gluing,
`
`bonding, fusing, and sewing” indicates that the two disks are “separate, physically
`
`distinct structures”). Similarly, because Motoharu’s flexible board is mounted and
`
`attached to the ferrite core, it is discrete from the ferrite core. Ex.1025, 4.
`
`Moreover, Patent Owners’ contention that something “attached” cannot be
`
`discrete is inconsistent with the surrounding claim language of substitute claims 21
`
`and 22. Specifically, the connecting unit is recited as both “discrete” and
`
`“connected.” Claims 21 and 22 each recite:
`
`a substrate comprising a receiving space of a predetermined
`shape formed therein for a discrete connecting unit …
`
`5
`
`
`
`
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`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`wherein the connecting unit is disposed in the receiving space
`and connected to the coil unit, …
`
`The Reply even urges the Board to construe the connecting unit and coil unit “as
`
`separate and distinct components” despite them being recited as “connected.”
`
`Reply at 1-2.
`
`Accordingly, Patent Owner’s argument that Motoharu’s flexible board 4 is
`
`not discrete because it is described as “attached” to the ferrite core conflicts with
`
`its own cited case law and the surrounding claim language—and thus cannot be
`
`correct. As illustrated in the Opposition, Motoharu’s flexible board 4 is a discrete
`
`connecting unit that mounts into a board mounting groove receiving space exactly
`
`as claimed.
`
`B. Motoharu’s flexible board is “otherwise separate” from its coil
`because they are connected only at their connection leads
`Substitute claims 21 and 22 each recite “wherein the connecting unit is
`
`otherwise separate from the first connection terminal, the second connection
`
`terminal, and the coil unit.” In the Reply, Patent Owner asserts that this limitation
`
`requires “that the connecting unit is connected to the coil only via the first-third
`
`and second-forth connection terminal interconnections.” Reply, 5. This
`
`interpretation of the claim language does not distinguish Motoharu—Motoharu’s
`
`flexible board 4 is connected to the coil only via their respective leads, as
`
`explained in the Opposition and illustrated in Motoharu’s Fig. 1. Ex.1025, 4 (“the
`
`6
`
`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`leads 3 of the coils are soldered to the connecting leads on the flexible board 4”);
`
`Opposition, 15-17.
`
`spiral coil
`
`leads 3 of coil (1st and 2nd
`connection terminals)
`
`connecting leads of flexible
`board 4 (3rd and 4th connection
`terminals)
`
`Ex.1025, Fig. 1 (cropped and annotated); Ex.1026, 19.
`
`
`
`The Reply does not dispute this disclosure in Motoharu. Patent Owner
`
`similarly does not dispute that Park’s coil module would be configured in the same
`
`way when modified in view of Motoharu’s technique, as discussed in the
`
`Opposition. Instead, Patent Owner alleges that when Park is modified in view of
`
`Motoharu, Park’s flexible board will not be “otherwise separate” from its coil
`
`because the board will somehow be “connected” to the coil “via the shielding
`
`member/ferrite core between them.” Reply, 9 (noting that Park’s “coils are
`
`attached to the shielding member/ferrite core (the alleged substrate), and that the
`
`ferrite core is attached to the board (the alleged connecting unit)” in Motoharu).
`
`In making this argument, Patent Owner appears to be further narrowing the
`
`7
`
`
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`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`“otherwise separate” limitation to exclude a configuration in which a substrate is
`
`interposed between the coil and connecting unit (i.e., the coil and connecting unit
`
`each connect to a common substrate). This configuration cannot be outside the
`
`scope of the claim for two reasons. First, logically, if an element is “between” the
`
`connecting unit and coil, they are separate. In the proposed combination, Park’s
`
`shielding member is between its flexible board and coil, separating them. The
`
`flexible board is connected to the shielding member, not the coil (except at the
`
`connection terminals). Second, the allegedly offending configuration (coil—
`
`substrate—connecting unit) must be within the scope of the substitute claims
`
`because Patent Owner relied upon such a configuration for written description
`
`support in the Revised Motion to Amend. Specifically, for the “otherwise
`
`separate” limitation, Patent Owner points to Fig. 14, which is part of the “fifth
`
`embodiment” shown in Figs. 14-20 in the ’565 patent. See Revised Motion, 10
`
`(referring to “Figs. 14, 26-28”); Ex.1001, 9:19-21. Fig. 16, which illustrates the
`
`“connected” version of the fifth embodiment, depicts the connecting unit 330 and
`
`coil 230 both contacting the substrate 100. Ex.1001, 10:58-61.
`
`8
`
`
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`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`
`(i) connecting unit 330
`contacts substrate 100,
`which contacts coil 230
`
`(ii) connecting unit 330
`contacts coil 230
`Ex.1001, Fig. 16 (annotated)
`
`
`
`
`
`Patent Owner cannot simultaneously (i) rely on this configuration to provide
`
`112 support for the substitute claims and (ii) argue that this configuration is outside
`
`the scope of the claims. The Reply therefore fails to overcome the showing in the
`
`Opposition that Motoharu’s flexible board is “otherwise separate” from its coil
`
`because they are connected only at their connection leads.
`
`C. Claim 23: Motoharu discloses separate and distinct first through
`fourth connection terminals
`The Reply further alleges that Motoharu “fails to disclose separate and
`
`distinct first-fourth connection terminals.” Reply, 10. Patent Owner appears to base
`
`this contention on the Board’s claim construction discussion in the Final Written
`
`Decision in IPR2022-00118 challenging the ’740 patent. Reply, 10 (“As discussed
`
`above, the Board construed the first and second connection terminals as separate
`
`and distinct from the coil and also from the connection unit.”).
`
`9
`
`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`As an initial matter, Patent Owner’s statement that “[t]he same construction
`
`
`
`applies here,” is simply not true. Id. Although the ’565 patent is the parent of the
`
`’740 patent, the ’565 claims are substantively different with respect to the “coil,”
`
`“coil unit,” and “first and second connection terminals.” Challenged claim 6 of the
`
`’740 patent merely recites a “coil” and first and second connection terminals
`
`“connected” to the coil. The ’565 patent, however, recites a “coil unit comprising a
`
`first connection terminal, a second connection terminal, and a coil,” 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.” The Board explained
`
`that these differences impacted its analysis of the ’740 patent claims:
`
`In view of the patent’s explicit distinction between coil unit 200
`and coil 230, we do not consider the terms to be interchangeable.
`The claims recite specific connection terminals connected to a
`coil, not to a coil unit. As the term “coil unit” does not appear in
`the claims, we do not attempt to construe “coil unit.” We limit
`our analysis to the coil and the connecting unit, as claimed.
`
`IPR2022-00118, Paper 44 at 7-8 (May 5, 2023). Accordingly, to the extent Patent
`
`Owner is relying upon the Board’s claim construction analysis in IPR2022-00118,
`
`such reliance should be given little weight.
`
`As discussed above and in the Opposition, Motoharu teaches exactly what is
`
`recited in the substitute claims of the ’565 patent. Motoharu’s coil unit includes a
`
`10
`
`
`
`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`spiral coil with “leads 3” (also called “terminals”) located at each end (first and
`
`second connection terminals), where the leads 3 are connected via solder to two
`
`“connecting leads” (third and fourth connection terminals) on the flexible board 4.
`
`Ex.1025, 4; Opposition, 10-11, 15-17. Moreover, even if the Board’s ’740 patent
`
`claim construction is applied to substitute claims 21-23, Motoharu nevertheless
`
`illustrates that its “leads 3” are separate and distinct from the spiral coil in Fig. 1.
`
`Spiral coil
`
`leads 3 of coil (1st and 2nd
`connection terminals)
`
`Ex.1025, Fig. 1 (cropped and annotated); Ex.1026, 19.
`
`
`
`
`
`The Reply further notes that Motoharu’s leads are “soldered.” Reply, 10.
`
`Soldered connection terminals are expressly within the scope of the claims. See
`
`Revised Motion, 9-10 (citing Fig. 28 for § 112 support, which shows solder 30
`
`between connection terminals); Ex.1001, 18:23-28.
`
`
`
`
`
`11
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`
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`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`IV. CONCLUSION
`For the above reasons, the substitute claims should be found unpatentable.
`
`Respectfully submitted,
`
`
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
`
`
`
`
`
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`
`
`Dated: May 26, 2023
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`
`Customer No. 27683
`
`
`
`
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`
`
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`12
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`IPR2022-00350 / U.S. Patent No. 9,806,565
`Petitioner’s Sur-Reply to Patent Owner’s Revised Motion to Amend
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e),
`
`service was made on Patent Owner as detailed below.
`
`
`
` Persons served
`
`Date of service May 26, 2023
`Manner of service Electronic Mail: bcooper@bc-lawgroup.com;
`ap@lombardip.com; ehuang@lombardip.com;
`jpetrsoric@bc-lawgroup.com;
`Scramoge_Counsel@b-clg.com
`Documents served Petitioner’s Sur-Reply to Patent Owner’s Reply to
`Opposition to Revised Motion to Amend
`Brett Cooper
`John Petrsoric
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`
`Antonio Papageorgiou
`Eric Huang
`Lombard & Geliebter LLP
`230 Park Avenue, 4th Floor West
`New York, NY 10169
`
`
`
`
`
`
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
`
`
`13
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`
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`
`
`
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