Trials@uspto.gov
`571-272-7822
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`Paper 44
`Date: August 1, 2023
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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
`Patent 9,806,565 B2
`____________
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Revised Motion to Amend
`35 U.S.C. § 318(a)
`
`Dismissing Petitioner’s Motion to Strike
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 44
`Date: August 1, 2023
`
`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 B2
`____________
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Revised Motion to Amend
`35 U.S.C. § 318(a)
`
`Dismissing Petitioner’s Motion to Strike
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
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`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1–20 of U.S. Patent No. 9,806,565 B2
`(Ex. 1001, “the ’565 patent”). Scramoge Technology Ltd. (“Patent Owner”)
`filed a Preliminary Response (Paper 6). With our authorization (see
`Paper 7), Petitioner filed a preliminary Reply (Paper 8) to Patent Owner’s
`Preliminary Response, and Patent Owner filed a preliminary Sur-reply
`(Paper 9) to Petitioner’s preliminary Reply. Pursuant to 35 U.S.C. § 314, we
`instituted inter partes review. Paper 10 (“Inst. Dec.”).
`Following institution, Patent Owner filed a Response (Paper 19,
`“PO Resp.”) to the Petition, Petitioner filed a Reply (Paper 22, “Pet. Reply”)
`to Patent Owner’s Response, and Patent Owner filed a Sur-reply (Paper 24,
`“PO Sur-reply”) to Petitioner’s Reply.
`Patent Owner also filed an initial Contingent Motion to Amend
`(Paper 18), and Petitioner filed an Opposition (Paper 21) to the Motion to
`Amend. We issued preliminary guidance on Patent Owner’s Motion to
`Amend. Paper 23. Thereafter, Patent Owner filed a Contingent Revised
`Motion to Amend (Paper 25, “RMTA”), replacing the initial Motion to
`Amend. Petitioner filed an Opposition (Paper 30, “Pet. RMTA Opp.”) to the
`Revised Motion to Amend, Patent Owner filed a Reply (Paper 32,
`“PO RMTA Reply”) to Petitioner’s Opposition, and Petitioner filed a Sur-
`reply (Paper 38, “Pet. RMTA Sur-reply”) to Patent Owner’s Reply.
` Lastly, Petitioner filed a Motion to Strike (Paper 28), and Patent
`Owner filed an Opposition (Paper 31) to Petitioner’s Motion to Strike. We
`authorized the filing of these papers in an e-mail dated March 14, 2023.
`Ex. 3002.
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`On June 2, 2023, we conducted an oral hearing. A copy of the
`transcript (Paper 43, “Tr.”) is in the record.
`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–12 and 14–20 of the ’565 patent are unpatentable.
`We also determine that Petitioner has not shown by a preponderance of the
`evidence that claim 13 is unpatentable. We further determine that Petitioner
`has demonstrated unpatentability of proposed substitute claims 21–23 by a
`preponderance of the evidence, and, therefore, we deny Patent Owner’s
`Revised Motion to Amend. This Final Written Decision is issued pursuant
`to 35 U.S.C. § 318(a).
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify one federal district court case, Scramoge
`Technology Limited v. Apple Inc., No. 5:22-cv-03041 (N.D. Cal.). Paper 13,
`2–3 (Patent Owner’s Amended Mandatory Notices); Paper 41, 2
`(Petitioner’s Updated Mandatory Notices). Patent Owner also identifies
`several inter partes review proceedings. Paper 13, 2.
`
`
`B. The ’565 Patent
`The ’565 patent describes wireless power receivers. Ex. 1001, 1:14–
`15. In one embodiment, “[a] connecting unit is disposed in [a] receiving
`space of [a] magnetic substrate so that the thickness of the wireless power
`receiver can be remarkably reduced as much as the thickness of the
`connecting unit.” Id. at 2:45–49.
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`To illustrate, Figure 26 of the ’565 patent is reproduced below.
`
`
`Figure 26 is an exploded view of wireless power receiver 1000, which
`includes magnetic substrate 100, coil unit 200, connecting unit 300, short-
`range communication antenna 600, adhesive layer 710, and protective
`film 800. Ex. 1001, 14:46–47, 14:59–64.
`Magnetic substrate 100 includes receiving space 130 with a shape
`corresponding to the shape of connecting unit 300. Ex. 1001, 15:27–28,
`16:4–6. Connecting unit 300 is disposed in receiving space 130 and
`connected to coil unit 200, which includes coil 230. Id. at 15:27–31, 15:34–
`36. Coil unit 200 may be disposed on magnetic substrate 100 and may have
`a spiral shape. Id. at 16:62–63. Short-range communication antenna 600
`may be disposed along the perimeter of magnetic substrate 100 such that it
`surrounds coil unit 200 and may have a rectangular shape. Id. at 16:38–42.
`To further illustrate, Figure 27 of the ’565 patent is reproduced below.
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`Figure 27 illustrates wireless power receiver 1000 in its assembled state. Id.
`at 14:52–55. Connection terminal 310 of connecting unit 300 is connected
`to connection terminal 210 of coil unit 200, connection terminal 320 of
`connecting unit 300 is connected to connection terminal 220 of coil unit 200,
`connection terminal 340 of connecting unit 300 is connected to connection
`terminal 610 of antenna 600, and connection terminal 350 of connecting unit
`300 is connected to connection terminal 620 of antenna 600. Id. at 15:60–
`16:3. As depicted above in Figure 27, after assembly, connecting unit 300
`extends out of receiving space 130 (see Fig. 26).
`In operation, coil unit 200 receives power from a transmission side
`through “electromagnetic induction or resonance.” Ex. 1001, 15:32–34.
`Connecting unit 300 connects a receiver circuit with coil unit 200 to transfer
`the power received from coil unit 200 to a load through the receiver circuit.
`Id. at 15:38–41. Short-range communication antenna 600 transceives
`information in cooperation with a reader. Id. at 16:26–28. The receiver
`circuit transfers the signal received from short-range communication
`antenna 600 to a short-range communication signal processing unit. Id. at
`15:49–52.
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`The ’565 patent explains that, “[s]ince the connecting unit 300 is
`disposed in the receiving space 130 of the magnetic substrate 100, the
`thickness of the wireless power receiver 1000 can be remarkably reduced as
`much as the thickness of the connecting unit 300,” and, “[t]hus, the thickness
`of the electronic device, such as a portable terminal, equipped with the
`wireless power receiver 1000 can be remarkably reduced.” Ex. 1001, 16:6–
`13.
`
`
`
`C. Illustrative Claim
`Petitioner challenges claims 1–20 of the ’565 patent, where claims 1
`and 12 are independent. Claim 1, reproduced below, is illustrative of the
`claims under challenge.
`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 the substrate,
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`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.
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–20 of the ’565 patent on the following
`three grounds. Pet. 17–73. We instituted inter partes review. Inst. Dec. 39.
`Claims Challenged
`35 U.S.C. §1
`References/Basis
`1–8, 11–18
`103
`Hong, 2 Park3
`9, 19
`103
`Hong, Park, Hasegawa4
`10, 20
`103
`Hong, Park, Sung5
`In support of its arguments, Petitioner relies on a Declaration of
`Joshua Phinney, Ph.D. (Ex. 1003). The transcript of the deposition of
`Dr. Phinney is entered in the record as Exhibit 2017.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Because the application from which the ’565 patent issued was filed before
`this date, the pre-AIA version of § 103 applies.
`2 Hong, U.S. Patent No. 8,941,352 B2, issued Jan. 27, 2015 (Ex. 1005).
`3 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006).
`4 Hasegawa, U.S. Publ’n No. 2009/0021212 A1, published Jan. 22, 2009
`(Ex. 1007).
`5 Sung, U.S. Publ’n No. 2012/0274148 A1, published Nov. 1, 2012
`(Ex. 1008).
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`III. ANALYSIS
`Because Patent Owner’s Revised Motion to Amend is contingent on a
`conclusion of unpatentability of the challenged patent claims, we first
`address Petitioner’s challenge of claims 1–20 of the ’565 patent, and then we
`address Patent Owner’s proposed substitute claims 21–23 in the Revised
`Motion to Amend.
`
`
`A. Claim Construction
`In an inter partes review proceeding, we construe a claim of a patent
`“using the same claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R.
`§ 42.100(b) (2019). Applying that standard, we construe a claim in
`accordance with its ordinary and customary meaning as would have been
`understood by one of ordinary skill in the art, taking into account the
`specification and the prosecution history pertaining to the patent. See id.;
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc).
`Patent Owner requests that we “construe independent claims 1 and 12
`to require two separate and distinct components for the ‘substrate
`comprising a receiving space’ and ‘connecting unit.’” PO Resp. 8–19.
`Petitioner responds that it “relies on separate and distinct elements to satisfy
`the claimed ‘substrate comprising a receiving space’ and ‘connecting unit,’
`and no actual claim construction dispute exists.” Pet. Reply 5. For purposes
`of this Decision, we conclude that no claim term requires express
`interpretation to resolve any controversy in this proceeding. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
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`B. Obviousness over Hong and Park
`Petitioner asserts that claims 1–8 and 11–18 of the ’565 patent would
`have been obvious over Hong and Park. Pet. 18–60. Patent Owner disputes
`certain aspects of Petitioner’s analysis regarding independent claims 1 and
`12 as well as dependent claim 13. PO Resp. 19–32. For the reasons
`explained below, we determine that Petitioner has demonstrated by a
`preponderance of the evidence that claims 1–8, 11, 12, and 14–18 would
`have been obvious over Hong and Park. Petitioner has not, however,
`demonstrated by a preponderance of the evidence that claim 13 would have
`been obvious over Hong and Park.
`
`
`1. Overview of Asserted Prior Art
`We start with an overview of the asserted prior art, Hong and Park.
`
`
`a. Hong
`Hong describes “a contactless charging apparatus for a portable
`terminal.” Ex. 1005, 1:16–17. To illustrate, Figure 3 of Hong is reproduced
`below.
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`Figure 3 shows contactless charging apparatus 10 mounted on main circuit
`board 20 of a portable terminal. Id. at 2:44–47, 3:36–38, 4:16–19.
`Contactless charging apparatus 10 includes secondary coil 11, rectifying
`unit 13, and charging unit 15. Secondary coil 11 includes coil layer 11a and
`may have a circular shape. Id. at 4:22–27.
`Secondary coil unit 11 and rectifying unit 13 are connected through
`via holes 25a, 25b, and 25c as well as wiring layer 27. Ex. 1005, 5:7–10.
`Specifically, end 11b of coil layer 11a is electrically connected to connecting
`terminal 13a of rectifying unit 13 at layer 21a of main circuit board 20. Id.
`at 5:11–15. End 11c of coil layer 11a, which is formed at a center of coil
`layer 11a, is electrically connected to connecting terminal 13b of rectifying
`unit 13. Id. at 5:16–18. This connection is made through wiring layer 27,
`which is formed in via holes 25a, 25b, and 25c on inner layers 23 of main
`circuit board 20. Id. at 5:19–22.
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`When contactless charging apparatus 10 is engaged with a contactless
`charger, secondary coil unit 11 generates an electromotive force that is
`induced by a primary coil in the contactless charger to charge a battery
`located in the portable terminal. Ex. 1005, code (57), 3:36–38, 5:31–47.
`
`
`b. Park
`Park relates to “a portable terminal having a secondary coil for
`wireless charging, as well as a plurality of antenna elements.” Ex. 1006,
`1:16–19. To illustrate, Figure 4 of Park is reproduced below.
`
`
`Figure 4 shows an example configuration of a portable terminal that
`implements a wireless charging function and a Near Field Communication
`(NFC) function using a coil module comprising shielding member 131 (not
`shown) and coils 133 and 135, where coil 133 serves as a secondary coil
`used for wireless charging and coil 135 serves as an antenna element for
`NFC. Id. at 3:9–11, 4:60–65. Coil 135 surrounds coil 133. Id. at 3:61–64.
`Coils 133 and 135 are attached to shielding member 131. Ex. 1006,
`3:4–8. To illustrate, Figure 3 of Park is reproduced below.
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`Figure 3 is a sectional view of the coil module. Id. at 2:43. Shielding
`member 131 includes accommodation grooves 141 and 142. Id. at 3:35–37.
`Accommodation groove 142 surrounds accommodation groove 141. Id. at
`3:37–42. Coil 133 is accommodated in accommodation groove 141,
`whereas coil 135 is accommodated in accommodation groove 142. Id. at
`3:56–59. Shielding wall 137, which shields interference of electronic waves
`between coils 133 and 135, is interposed between accommodation
`grooves 141 and 142. Id. at 3:42–44, 3:66–4:1.
`
`
`2. Analysis of Claims 1–8 and 11–18
`We turn now to our discussion of the claims.
`
`
`a. Independent Claim 1
`Claim 1 is directed to a “wireless power receiver” that comprises a
`“substrate,” a “coil unit” including a “coil,” a “short-range communication
`antenna,” and a “connecting unit.” Claim 1 recites various limitations
`designated by Petitioner as limitations 1.1 through 1.10. We address these
`limitations in turn and then consider the parties’ disputes.
`
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`i. Limitation 1.1: “substrate”
`Claim 1 recites “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.” For this limitation, which
`Petitioner designates as limitation 1.1, Petitioner directs us to where Hong
`teaches that “[t]he secondary coil unit 11 is formed at one surface of the
`main circuit board 20,” and that “[t]he end 11c of the coil layer 11a makes
`contact to the connecting terminal 13b through the wiring layer 27 formed
`in via holes 25a, 25b, and 25c, which are formed on inner layers 23 of
`the main circuit board 20.” Pet. 29 (quoting Ex. 1005, 3:50–51, 5:19–22
`(emphases added by Petitioner)). Petitioner identifies “the upper portion of
`the main circuit board [20]” in Hong, specifically “the layers of Hong’s main
`circuit board [20] upon which and through which these elements are
`formed,” as a “substrate.” Id. at 29–30 (citing Ex. 1005, 3:53–64, 4:33–36,
`Fig. 4). To illustrate, Petitioner provides a cropped and annotated version of
`Figure 4 of Hong, which is reproduced below. Id. at 30.
`
`Petitioner’s version of Figure 4 of Hong is a sectional side view of
`contactless charging apparatus 10 mounted on main circuit board 20. See
`Ex. 1005, 4:12–19, 5:4–6.
`Petitioner further identifies Hong’s rectifying unit 13 and wiring
`layer 27 together as a “connecting unit.” Pet. 30–32. As support, Petitioner
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`provides another cropped and annotated version of Figure 4 of Hong,
`reproduced below. Id. at 31.
`
`
`This version of Figure 4 of Hong is a sectional side view of contactless
`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
`4:12–19, 5:4–6. Petitioner contends that Hong’s via holes 25a, 25b, and 25c
`as well as the space extending between them correspond to the recited
`receiving space formed in the substrate. Pet. 32. To support its position,
`Petitioner directs us to where Hong teaches that “the wiring layer 27 [is]
`formed in via holes 25a, 25b, and 25c, which are formed on inner layers 23
`of the main circuit board 20,” where the wiring layer 27 corresponds to the
`recited connecting unit. Ex. 1005, 5:19–22 (quoted by Pet. 32). Petitioner
`further points to Hong’s teaching that “[a] via hole and a wiring layer may
`be formed . . . according to a designed condition,” (Ex. 1005, 5:22–24
`(quoted by Pet. 32)), which, according to Petitioner, means “the receiving
`space in the main circuit board is a designed space of a predetermined shape
`that extends through the layers from the end 11c of the coil layer 11a to the
`connecting terminal 13b of the rectifying unit,” (Pet. 33).
`Petitioner additionally provides a cropped and annotated version of
`Figure 3 of Hong, which is reproduced below. Pet. 31.
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`Figure 3 of Hong, as provided by Petitioner, shows contactless charging
`apparatus 10 mounted on main circuit board 20. See Ex. 1005, 2:44–47. As
`shown in the annotated figure, Petitioner identifies Hong’s charging unit 15
`as a “wireless power receiving circuit.” Pet. 30. Hong teaches that “the
`rectifying unit 13 connects with the charging unit 15 which includes a
`battery charging terminal 15a for contact with a battery,” where rectifying
`unit 13 corresponds to the recited connecting unit. See Ex. 1005, 4:59–62
`(cited by Pet. 30).
`Patent Owner disputes Petitioner’s analysis for limitation 1.1. See
`PO Resp. 19–31. We address the parties’ dispute in further detail below.
`
`
`ii. Limitations 1.2, 1.6, and 1.7: “coil unit”
`Claim 1 further recites “a coil unit disposed on the substrate, the coil
`unit comprising a first connection terminal, a second connection terminal,
`and a coil.” Petitioner designates this limitation as limitation 1.2. Pet. 34.
`Claim 1 requires that “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.” Petitioner designates this limitation as limitation 1.6. Id. at 40.
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`Additionally, claim 1 requires that “the coil unit overlaps the receiving space
`in a first direction perpendicular to an upper surface of the substrate.”
`Petitioner designates this limitation as limitation 1.7. Id. at 41. We discuss
`these limitations in turn.
`With respect to limitation 1.2 (which recites “a coil unit disposed on
`the substrate, the coil unit comprising a first connection terminal, a second
`connection terminal, and a coil”), Petitioner identifies Hong’s secondary
`coil 11 as a “coil unit.” Pet. 34. As support, Petitioner directs us to where
`Hong teaches that “a secondary coil 11 [is] formed on a main circuit
`board 20” and “includes a coil layer 11a.” Ex. 1005, 4:16–23 (cited by
`Pet. 34). Hong teaches that “an outermost end 11b of the coil layer 11a is
`electrically connected to connecting terminal 13a of the rectifying unit 13,”
`and that “[a]nother end 11c, formed at a center of the coil layer 11a, is
`electrically connected to connecting terminal 13b of the rectifying unit 13.”
`Id. at 5:11–19, Fig. 4 (cited by Pet. 34–35). Petitioner identifies Hong’s coil
`layer 11a as a “coil,” Hong’s end 11b as a “first connection terminal,” and
`Hong’s end 11c as a “second connection terminal.” Pet. 34–35.
`To illustrate, Petitioner provides a cropped and annotated version of
`Figure 3 of Hong, which is reproduced below. Pet. 35.
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`Petitioner’s version of Figure 3 of Hong shows contactless charging
`apparatus 10, which includes secondary coil 11, mounted on main circuit
`board 20. See Ex. 1005, 2:44–47, 4:16–19. Petitioner also provides an
`annotated version of Figure 4 of Hong, reproduced below. Pet. 36.
`
`
`This version of Figure 4 of Hong is a sectional side view of contactless
`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
`4:12–19, 5:4–6. In the annotated figures, Petitioner labels the components in
`Hong corresponding to the recited first connection terminal, the recited
`second connection terminal, and the recited coil. Pet. 35–36.
`With respect to limitation 1.6 (which recites “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”), Petitioner cross-references its
`analysis for limitation 1.2. Pet. 40. Petitioner directs us again to Hong’s
`teaching of “an outermost end 11b of the coil layer 11a” and “[a]nother
`end 11c, formed at a center of the coil layer 11a.” Ex. 1005, 5:11–19,
`Figs. 3, 4 (cited by Pet. 40–41). Petitioner characterizes end 11c as an
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`“inner” end. Pet. 40. We note that end 11b faces away from main circuit
`board 20, whereas end 11c faces toward main circuit board 20. See
`Ex. 1005, Figs. 3, 4. As discussed above, Hong’s end 11b corresponds to
`the recited first connection terminal, and Hong’s end 11c corresponds to the
`recited second connection terminal.
`With respect to limitation 1.7 (which recites “the coil unit overlaps the
`receiving space in a first direction perpendicular to an upper surface of the
`substrate”), Petitioner provides another version of Figure 4 of Hong, which
`is reproduced below. Pet. 42.
`
`
`Figure 4 of Hong, as cropped and annotated by Petitioner, is a sectional side
`view of contactless charging apparatus 10 mounted on main circuit board 20.
`See Ex. 1005, 4:12–19, 5:4–6. Pointing to the annotations in this version of
`Figure 4, Petitioner contends that “Hong teaches and illustrates in Fig. 4 that
`its coil layer 11a overlaps the receiving space (in which the wiring layer is
`disposed) in a first direction perpendicular to an upper surface of the main
`circuit board (substrate).” Pet. 41.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Hong teaches the recited coil unit of limitations 1.2, 1.6, and 1.7. Patent
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`Owner does not dispute Petitioner’s analysis for any of these limitations.
`See generally PO Resp.
`
`iii. Limitation 1.3: “short-range communication antenna”
`Claim 1 further recites “a short-range communication antenna
`disposed on the substrate and surrounding the coil.” For this limitation,
`which Petitioner designates as limitation 1.3, Petitioner relies additionally on
`Park. Pet. 36–38. Specifically, Petitioner directs us to where Park describes
`a portable terminal implementing “both a wireless charging function and an
`NFC function” with “[a] first coil 133 as a secondary coil used for wireless
`charging and [a] second coil 135 as an antenna element for NFC.” Ex. 1006,
`4:60–65 (quoted by Pet. 37). Park teaches that “the first and second
`coils 133 and 135 are accommodated in the first and second accommodation
`grooves 141 and 142 [of shielding member 131], respectively, and the
`second coil 135 surrounds the first coil 133.” Id. at 3:61–64, Figs. 3, 4 (cited
`by Pet. 37).
`Petitioner contends that an ordinarily skilled artisan “would have been
`motivated to combine the teachings of Park with those of Hong.” Pet. 22–
`23; see also id. at 22–27. As support, Petitioner asserts that Hong’s
`“contactless power apparatus may be implemented in the context of a
`portable terminal,” (Pet. 23 (citing Ex. 1005, Fig. 1)), and points to Park’s
`teaching that, “[a]s portable terminals have become a daily commodity, they
`are equipped with the NFC function,” (Ex. 1006, 1:29–33 (cited by Pet. 23)).
`Park further teaches that “a portable terminal is provided with an additional
`antenna for performing the NFC function.” Ex. 1006, 1:31–33 (quoted by
`Pet. 23). In light of these teachings, Petitioner asserts that, “as a baseline, it
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`was well known and obvious for a portable terminal, such as Hong’s, to
`include an NFC antenna coil as well as a wireless charging coil.” Pet. 23.
`Petitioner relies on the declaration testimony of Dr. Phinney. Id. (citing
`Ex. 1003 ¶¶ 49–51).
`Petitioner adds that an ordinarily skilled artisan “would have been
`specifically motivated to implement Hong’s device with an NFC coil
`because as of the earliest alleged priority date of the ’565 patent, NFC was a
`standardized data transmission protocol with a multitude of commercial
`applications and advantages over other short-range wireless communication
`protocols.” Pet. 24. Petitioner states that “NFC technology provides an
`advantage of fast communication setup between communication devices,”
`(id. (quoting Ex. 1006, 1:33–36)), and “the intuitive operation of NFC
`protocol systems makes the technology particularly easy for consumers to
`use,” (id. (quoting Ex. 1010, 4:2–5)). According to Petitioner, combining
`the teachings of Hong and Park “would allow Hong’s mobile device to be
`easily used for transactions in a variety of commercial applications.” Id.
`Petitioner relies on the declaration testimony of Dr. Phinney. Id. (citing
`Ex. 1003 ¶ 52).
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner’s proposed combination of Hong and Park teaches the recited
`short-range communication antenna of limitation 1.3. We also are
`persuaded that Petitioner’s proffered reasoning for modifying Hong’s device
`to include Park’s NFC antenna coil is sufficient to support the legal
`conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[T]here must be some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.”).
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`
`Patent Owner does not dispute Petitioner’s analysis for this limitation.
`See generally PO Resp.
`
`
`iv. Limitations 1.4 and 1.5: “coil”
`As discussed above, Petitioner identifies Hong’s coil layer 11a as the
`recited coil. Pet. 34. Claim 1 requires that “the coil is configured to
`wirelessly receive power, wherein the coil is formed as a conductive pattern
`on or within the substrate.” Petitioner designates this limitation as
`limitation 1.4. Id. at 38. Claim 1 additionally requires that “the conductive
`pattern comprises a conductive line wound at least two times and conductive
`pattern has a spiral shape.” Petitioner designates this limitation as
`limitation 1.5. Id. at 39. We discuss these limitations in turn.
` With respect to limitation 1.4 (which recites “the coil is configured
`to wirelessly receive power, wherein the coil is formed as a conductive
`pattern on or within the substrate”), Petitioner directs us to where Hong
`teaches that its “coil layer . . . generates an electromotive force induced by a
`magnetic induction field created by a contactless charger.” Ex. 1005,
`code (57) (cited by Pet. 38). More specifically, an “induced electromotive
`force is generated in the secondary coil unit 11 of the portable terminal 1 by
`the magnetic induction field formed in the primary coil unit 511 of the
`power transmitter 510.” Id. at 5:44–47 (cited by Pet. 38).
`Petitioner also directs us to where Hong teaches that its “secondary
`coil unit 11 is formed at one surface of the main circuit board 20,” and the
`“coil layer [is] spirally formed in a circular form on a plane.” Ex. 1005,
`3:50–52 (cited by Pet. 38). Petitioner points to Hong’s further teaching that
`“a material of the secondary coil unit 11 on the main circuit board 20 may be
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`the same as that of a conductive wiring and may be a conductive material to
`generate an induced electromotive force.” Id. at 4:28–32 (cited by Pet. 38).
`With respect to limitation 1.5 (which recites “the conductive pattern
`comprises a conductive line wound at least two times and conductive pattern
`has a spiral shape”), Petitioner points again to Hong’s teaching that its coil
`layer 11a is shaped like a spiral and made of a conductive material. Pet. 39
`(citing Ex. 1005, 3:50–52, 4:27–32). Petitioner further relies on Figure 3 of
`Hong, which, according to Petitioner, shows coil layer 11a wound at least
`two times. Id. To illustrate, Petitioner provides a cropped and annotated
`version of Figure 3 of Hong, reproduced below. Id.
`
`
`Petitioner’s version of Figure 3 of Hong shows contactless charging
`apparatus 10, which includes secondary coil 11, mounted on main circuit
`board 20. See Ex. 1005, 2:44–47, 4:16–19. Coil layer 11a is shown with
`orange shading.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Hong teaches the recited coil of limitations 1.4 and 1.5. Patent Owner does
`not dispute Petitioner’s analysis for either limitation. See generally
`PO Resp.
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`v. Limitations 1.8, 1.9, and 1.10: “connecting unit”
`As discussed above, Petitioner identifies Hong’s rectifying unit 13 and
`wiring layer 27 together as a “connecting unit.” Pet. 30. Claim 1 requires
`that “the connecting unit is disposed in the receiving space and connected to
`the coil unit.” Petitioner designates this limitation as limitation 1.8. Id. at
`42. Claim 1 further requires that “the connecting unit overlaps the receiving
`space in a second direction parallel to the upper surface of the substrate.”
`Petitioner designates this limitation as limitation 1.9. Id. at 43. Lastly,
`claim 1 requires that “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.” Petitioner designates this limitation as limitation 1.10. Id. at
`44. We discuss these limitations in turn.
`With respect to limitation 1.8 (which recites “the connecting unit is
`disposed in the receiving space and connected to the coil unit”), Petitioner
`provides a cropped and annotated version of Figure 4 of Hong, reproduced
`below. Pet. 43.
`
`Petitioner’s version of Figure 4 of Hong is a sectional side view of
`contactless charging apparatus 10 mounted on main circuit board 20. See
`Ex. 1005, 4:12–19, 5:4–6. Petitioner contends that “Hong teaches and
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`illustrates in Fig. 4 that the wiring layer 27 (part of the connecting unit) is
`disposed within the receiving space (via holes 25a, 25b, and 25c and empty
`spaces within layers 21a and 23) and connected to the inner end of 11c of
`coil layer [11a].” Pet. 42.
`With respect to limitation 1.9 (which recites “the connecting unit
`overlaps the receiving space in a second direction parallel to the upper
`surface of the substrate”), Petitioner provides another version of Figure 4 of
`Hong, reproduced below. Pet. 44.
`
`
`This version of Figure 4 of Hong is a sectional side view of contactless
`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
`4:12–19, 5:4–6. Petitioner contends that “Hong illustrates in Fig. 4 . . . that
`wiring layer 27 of the connecting unit overlaps the receiving space in a
`second directio
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