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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00350
`Patent 9,806,565
`____________
`
`
`PATENT OWNER’S RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`Table of Contents
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`INTRODUCTION .......................................................................................... 1
`
`THE PATENTED TECHNOLOGY .............................................................. 2
`
`A. Overview of the ’565 Patent ................................................................... 2
`
`
`
`I.
`
`II.
`
`
`III. OVERVIEW OF ASSERTED REFERENCES ............................................. 5
`A. Hong (Ex. 1005)—the primary reference applied in Ground 1—does
` not disclose the claimed invention .......................................................... 5
`
`IV. CLAIM CONSTRUCTION ........................................................................... 8
`A. Claims 1 and 12 require separate components for the “substrate
` comprising a receiving space” and the “connecting unit” ....................... 8
`
`
`1. It is well-settled law that separate claim elements are presumed to be
`
`distinct components of the claimed invention ................................. 10
`
`2.
`
` The challenged claims support the presumption that the “substrate
`comprising a receiving space,” the “coil unit” and the “connecting
`unit” are separate and distinct components ..................................... 11
`
` The specification supports the presumption that the “substrate
`comprising a receiving space,” the “coil unit” and the “connecting
`unit” are separate and distinct components ..................................... 13
`
` The prosecution history supports the presumption that the “substrate
`comprising a receiving space,” the “coil unit” and the “connecting
`unit” are separate and distinct components ..................................... 17
`
`3.
`
`4.
`
`V.
`
`
`
`THE PETITION FAILS BECAUSE HONG DOES NOT TEACH A
`“SUBSTRATE COMPRISING A RECEIVING SPACE” AND A
`“CONNECTING UNIT” AS SEPARATE AND DISTINCT
`COMPONENTS ........................................................................................... 19
`
`i
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`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 ................................................................... 21
`B. Hong does not disclose a “substrate comprising a receiving space” that
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`is separate and distinct from the “connecting unit” .............................. 22
`
`
`1. “substrate comprising a receiving space” ........................................ 22
`
`2. “connecting unit” ............................................................................. 24
`
`VI. WITH RESPECT TO CLAIM 13, GROUND FAILS BECAUSE HONG
`DOES NOT TEACH THE “CONNECTING UNIT” AS SEPARABLE
`FROM THE “RECEIVING SPACE” .......................................................... 31
`
`VII. CONCLUSION ............................................................................................ 32
`
`
`
`ii
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`Table of Authorities
`
`Cases
`Am. Piledriving Equip., Inc. v. Geoquip, Inc.,
`637 F.3d 1324 (Fed. Cir. 2011) ........................................................................... 12
`
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ..................................................................... 10, 12
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................. 30
`
`Comcast Cable Comm’ns, LLC v Promptu Sys. Corp.,
`838 F. App’x 551 (Fed. Cir. Jan. 4, 2021) .......................................................... 12
`
`Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc.,
`214 F.3d 1302 (Fed. Cir. 2000) ........................................................................... 31
`
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004) ........................................................................... 10
`
`Gen. Am. Transp. Corp. v. Cryo-Trans, Inc.,
`93 F.3d 766 (Fed. Cir. 1996) ............................................................................... 30
`
`Graham v. John Deere Co.,
`383 US 1 (1966) .................................................................................................. 21
`
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006) ........................................................................... 18
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ........................................................................... 21
`
`IRIS Corp. v. Japan Airlines Corp.,
`769 F.3d 1359 (Fed. Cir. 2014) ........................................................................... 12
`
`Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n,
`22 F.4th 1369 (Fed. Cir. 2022) ............................................................................ 10
`
`
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`iii
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co.,
`Case CBM2012-00003 (Paper 8) (PTAB Oct. 25, 2012) ................................... 22
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ........................................................................... 11
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................. 8
`
`NTP, Inc. v. Research in Motion, Ltd.,
`419 F.3d 1282 (Fed. Cir. 2005) ........................................................................... 11
`
`Regents of Univ. of Minn. v. AGA Med. Corp.,
`717 F.3d 929 (Fed. Cir. 2013) ....................................................................... 12, 18
`
`SandBox Logistics LLC v. Proppant Express Invs. LLC,
`813 F. App’x 548 (Fed. Cir. 2020) ..................................................................... 10
`
`SciMed Life Sys. Inc. v. Adv. Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ........................................................................... 18
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ............................................................................. 8
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ........................................................................... 19
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................... 8
`Statutes and Rules
`37 C.F.R. §1.11 ................................................................................................. 18, 19
`
`
`
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`iv
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`2002
`
`2003
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`PATENT OWNER’S EXHIBIT LIST
`Exhibit No. Description
`2001
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Apple Inc.,
`Case No. 6:21-cv-00579-ADA, Dkt. No. 35 (W.D. Tex. Nov. 11,
`2021)
`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)
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Scheduling Order, Correct Transmission LLC v. Adtran, Inc.,
`Case No. 6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10,
`2020)
`
`Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case
`No. 6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`
`Standing Order Governing Proceedings in Patent Cases, Judge
`Alan D. Albright
`
`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.)
`
`v
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`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`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)
`
`Declaration of John Petrsoric in Support of Motion for Admission
`Pro Hac Vice
`
`vi
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`I.
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
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`response to Petitioner Apple Inc.’s (“Petitioner”) petition for inter partes review of
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`U.S. Patent No. 9,806,565 (“the ’565 Patent”). The Board’s Decision Granting
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`Institution shows that there is a claim construction dispute between the parties that
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`must be addressed to resolve the controversy as to whether Hong discloses the
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`claimed “substrate comprising a receiving space of a predetermined shape formed
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`therein” and “connecting unit.” Patent Owner respectfully requests that the Board
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`construe independent claims 1 and 12 to require two separate and distinct
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`components for the “substrate comprising a receiving space of a predetermined
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`shape formed therein” and “connecting unit.”
`
`The independent claims of the ’565 Patent recite a “substrate comprising a
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`receiving space of a predetermined shape formed therein” that is separate and
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`distinct from the “connecting unit.” The ’565 Patent claims, figures, specification,
`
`and prosecution history all teach that the “substrate comprising a receiving space of
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`a predetermined shape formed therein” and “connecting unit” are separate and
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`distinct components of the claimed wireless power receiver. Nevertheless, Petitioner
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`asserts that the wiring layer disclosed by Hong alone discloses both the separate and
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`distinct “receiving space” of the substrate and “connecting unit” limitations, and
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`does not propose any combination of references or modifications to Hong for these
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`
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`1
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`
`
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`limitations. It is well-settled law that a single component cannot meet the
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`requirements of separate and distinct component limitations in a patent claim.
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`Petitioner has therefore failed to establish the invalidity of the challenged claims of
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`the ’565 Patent. The Petition additionally fails to show that the “connecting unit” is
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`“separable from the receiving space,” as required by dependent claim 13.
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`II. THE PATENTED TECHNOLOGY
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`A. Overview of the ’565 Patent
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`The ’565 Patent is entitled “Wireless Power Receiver and Method of
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`Manufacturing the Same.” It teaches a wireless power receiver with reduced
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`thickness by providing a connecting unit that connects the coil to the wireless power
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`receiving circuit to transfer power received from the coil to the circuit. Ex. 1001,
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`2:45-52, 5:27-30.
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`Specifically, the ’565 Patent describes a wireless power receiver 1000
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`comprising a coil unit 200, a connecting unit 300, a magnetic substrate 100, an
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`adhesive layer 710, and receiving space 130, as depicted in Figures 11 and 26 (for
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`example):
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`2
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`IPR2022-00350 (’565 Patent)
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`In one embodiment, the magnetic substrate includes receiving space 130. Id., 8:46-
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`55. In another embodiment, the adhesive layer includes a receiving space. Id.,
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`16:55-58. For example, the ’565 Patent teaches that “the connecting unit is disposed
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`in the receiving space of the magnetic substrate so that the thickness of the wireless
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`power receiver can be remarkably reduced as much as the thickness of the
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`connecting unit.” Id., 2:45-49. Further, according to another embodiment, a “tape
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`substrate is used as the connecting unit so that the overall size of the wireless power
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`receiver can be reduced.” Id., 2:50-52; 16:14-19. To that end, the ’565 Patent
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`consistently discusses the “connecting unit” as a discrete component of the wireless
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`power receiver.
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`
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`3
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`
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`The ’565 Patent further describes how the connecting unit constitutes of, inter
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`
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`alia, connection terminals 310 and 320 that connects the coil unit 200, constituting,
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`inter alia, coil 230 and connection terminals 210 and 220, to the wireless power
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`receiving circuit, as depicted in Figures 11 and 27 (for example):
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`
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`Specifically, “[t]he first connection terminal 210 is located at one end of the coil 230
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`and the second connection terminal 220 is provided at the other end of the coil 230.”
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`Id., 4:57-59; see also 15:34-36, 15:57–16:3. “The first and second connection
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`terminals 210 and 220 are necessary for connection with the connecting unit 300.”
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`Id., 4:60-61 (emphasis added). To that end, “[t]he first connection terminal 310 of
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`the connecting unit 300 may be connected to the first connection terminal 210 of the
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`coil unit 200 and the second connection terminal 320 of the connecting unit 300 may
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`be connected to the second connection terminal 220 of the coil unit 200.” Id., 5:19-
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`23. Further, the connections between the connection terminals of the coil 200 and
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`
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`4
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`the connecting unit 300 can be made in various ways, such as (but not limited to)
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`with solder. Id., 5:43-57; 18:23-34. As such, the ’565 Patent teaches that the
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`connecting unit is a distinct component that connects to the coil.
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`III. OVERVIEW OF ASSERTED REFERENCES
`
`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
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`discloses a contactless charging apparatus of a portable terminal. Ex. 1005, Abstract.
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`As illustrated in Figure 3 below, Hong discloses “a rectifying unit 13, a charging
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`unit 15, and a secondary coil 11 formed on a main circuit board 20.” Id., 4:16-19.
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`5
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`Hong states that “secondary coil unit 11 includes a coil layer 11a having an
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`end 11b that is electrically connected to one of two connecting terminals 13a and
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`6
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`13b of the rectifying unit 13.” Id., 4:53-56. To that end, the outer end of Hong’s
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`IPR2022-00350 (’565 Patent)
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`coil directly connects to the rectifying unit 13. Hong further states that “[t]he
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`rectifying unit 13 is composed of a diode and a capacitor, and rectifies an alternating
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`current induced by the secondary coil unit 11 to a direct current using the diode and
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`the capacitor.” Id., 4:56-59. The other end of Hong’s coil connects to the rectifying
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`circuit through “through via holes 25a, 25b, and 25c and a wiring layer 27 formed
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`on the main circuit board 20.” Id., 5:7-10, Fig. 4 (reproduced below). Thus, unlike
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`the ’565 Patent, Hong does not teach the use of a separate and distinct “connecting
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`unit” for connecting the inner end of the coil to the rectifying circuit. The inner end
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`of the coil is connected through to the rectifying circuit through the circuit board
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`traces and via connections in the inner layers of Hong’s circuit board.
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`7
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`Id., Fig. 4.
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`IV. CLAIM CONSTRUCTION
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`Claim terms that are in dispute and for which resolution of such dispute is
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`“necessary to resolve the controversy” must be construed. Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); U.S. Surgical Corp. v.
`
`Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). This threshold for construing
`
`claim terms is applicable in IPR proceedings. See Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`A. Claims 1 and 12 require separate components for the “substrate
`comprising a receiving space” and the “connecting unit”
`In the Board’s Decision Granting Institution, the Board did not construe any
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`terms because neither party proposed an explicit construction of any claim term.
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`However, the Board’s Decision shows that there is a claim construction dispute
`
`between the parties that must be addressed to resolve the controversy as to whether
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`Hong discloses the claimed “connecting unit.” Accordingly, Patent Owner
`
`respectfully requests that the Board construe independent claims 1 and 12 to require
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`two separate and distinct components for the “substrate comprising a receiving
`
`space” and “connecting unit.”
`
`The ’565 Patent claims, figures, specification, and prosecution history all
`
`teach that the “substrate comprising a receiving space” and “connecting unit” are
`
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`8
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`separate and discrete components of the claimed wireless power receiver. The ’565
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`Patent consistently teaches that the “substrate comprising a receiving space”
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`constitutes, inter alia, a magnetic substrate or an adhesive layer substrate with a
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`receiving space 130. The “coil unit”—consisting of a “coil,” a “first connection
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`terminal,” and a “second connection terminal”—are disposed on the substrate.
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`Separately, the ’565 Patent teaches that the “connecting unit” constitutes, inter alia,
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`a “third connection terminal,” a “fourth connection terminal,” and a “wiring layer”
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`that connects to the third and fourth “connection terminals.” For example,
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`independent claim 1 separately recites a “substrate comprising a receiving space,” a
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`“coil unit,” and a “connecting unit”:
`
`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,
`
`
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`9
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`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.
`
`
`Ex. 1001, 19:16-46 (emphasis added). Claim 12 recites the same. Id., 20:12-42.
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`1.
`
`It is well-settled law that separate claim elements are
`presumed to be distinct components of the claimed
`invention
`“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
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`separately from the ‘end walls’ and ‘side walls’ implies that the ‘structural support
`
`members’ are a structurally distinct component.”). To overcome the presumption
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`that claim elements listed separately are distinct components, Petitioner must
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`identify either claim language or language in the written description that rebuts the
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`presumption. See, e.g., Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22
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`F.4th 1369, 1382 (Fed. Cir. 2022) (“The asserted claims list those elements
`
`
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`10
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`
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`separately…. There is, therefore, a presumption that those components are
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`IPR2022-00350 (’565 Patent)
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`distinct.”). Petitioner is unable to do so.
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`2.
`
`The challenged claims support the presumption that
`the “substrate comprising a receiving space,” the “coil
`unit” and the “connecting unit” are separate and
`distinct components
`The challenged claims support the distinction between the “substrate
`
`comprising a receiving space,” “the coil unit” and the “connecting unit.” Indeed, the
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`claims specify that the “connecting unit is disposed in the receiving space” of the
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`substrate (see, e.g., Ex. 1001, 19:37-38) and that “the coil unit” is connected to the
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`“connecting unit” (see, e.g., id.) through the “first connection terminal” and the
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`“second connection terminal,” which connect to the “third connection terminal” and
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`the “fourth connection terminal,” respectively (see, e.g., id., 19:43-46). See
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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015) (“Not only
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`are the ‘two other computers’ recited independently from, and in addition to, the
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`gateway and caching computer, the word ‘other’ denotes a further level of
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`distinction.”); NTP, Inc. v. Research in Motion, Ltd., 419 F.3d 1282, 1300 (Fed. Cir.
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`2005) (holding that the “originating processor” and “gateway switch” are separate
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`components because, inter alia, the claim language shows that information “is
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`transmitted from an ‘originating processor’ to a gateway switch), abrogated on other
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`11
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`
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`grounds by IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359, 1361 n.1 (Fed. Cir.
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`2014).
`
`In Regents of Univ. of Minn., the Federal Circuit explained that when claim
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`language recites two components that are “connected,” it means that those objects
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`were previously separate. See Regents of Univ. of Minn. v. AGA Med. Corp., 717
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`F.3d 929, 935-36 (Fed. Cir. 2013) (construing claim for medical device with two
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`disks that were “connected” to one another, and concluding that such language
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`required two distinct disks). Similarly, in Comcast Cable Comm’ns, the Federal
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`Circuit affirmed the Board’s conclusion that “speech recognition system” and
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`“wireline node” were “distinct elements” because the claim “list[ed] the elements
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`separately” and “[used] the word ‘coupled’” in the claim language “[a] program
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`system controlling at least part of a speech recognition system coupled to a wireline
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`node.” Comcast Cable Comm’ns, LLC v Promptu Sys. Corp., 838 F. App’x 551,
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`552-53 (Fed. Cir. Jan. 4, 2021) (nonprecedential); see also Am. Piledriving Equip.,
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`Inc. v. Geoquip, Inc., 637 F.3d 1324, 1332-34 (Fed. Cir. 2011) (for claims directed
`
`to a piledriving machine, affirming construction of the term “eccentric weight
`
`portion” in a limitation reciting that the “eccentric weight portion” was “connected
`
`to” a “cylindrical gear portion” as requiring that the structure forming the “eccentric
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`weight portion” be separate and apart from structure that was the “cylindrical gear
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`portion”); Becton, Dickinson, 616 F.3d at 1254-56 (where a claim to a shieldable
`
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`12
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`needle assembly recited a “hinged arm” and a “spring means,” which was
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`“connected to said hinged arm,” holding the claim to require that the “spring means”
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`had to be structurally separate from the hinged arm). Accordingly, the ’565 Patent
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`claims’ use of (i) the term “disposed” further confirms that the “connecting unit” is
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`separate and distinct from the “substrate comprising a receiving space”; and (ii) the
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`term “connected” further confirms that the “connecting unit” is separate and distinct
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`from the “coil unit.”
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`3.
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`The specification supports the presumption that the
`“substrate comprising a receiving space,” the “coil
`unit” and the “connecting unit” are separate and
`distinct components
`The specification of the ’565 Patent reinforces the inference that the claimed
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`“substrate comprising a receiving space,” “coil unit” and “connecting unit” are
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`separate and distinct components. In every embodiment, the “substrate,” the “coil
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`unit” and the “connecting unit” are described as separate components. For example,
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`Figures 1, 11, 14, and 26 all depict the “connecting unit 300” as a separate and
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`discrete component from the “substrate 100” and “coil unit 200” of the wireless
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`power receiver, with the “connecting unit 300” shaped in part to fit in the “receiving
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`space 130”:
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`13
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`Ex. 1001, Figs. 1, 11, 14 and 26; see also id., 4:53-61, 5:16-23 (referencing Fig. 1).
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`As depicted in Figures 11 and 26 (and corresponding Figures 12 and 27), the ’565
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`Patent teaches that the “coil unit 200” is disposed on the “magnetic substrate 100”
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`and/or “adhesive layer 710.” Id., 8:30-33, 16:51-55. Those Figures also teach that
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`“magnetic substrate 100” and/or “adhesive layer 710” contain “a receiving space
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`14
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`130” such that the “connecting unit” may be positioned with, overlap, or be disposed
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`in the “receiving space 130.” Id., 2:19-28 (“positioning the connecting unit in the
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`receiving space”); 2:49-53 (“According to one embodiment, the connecting unit is
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`disposed in the receiving space of the magnetic substrate”); 8:33-37; 16:55-58;
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`Claim 1 (“the connecting unit is disposed in the receiving space”).
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`The ’565 Patent also describes options for the disposition of the “connecting
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`unit” relative to the “coil unit” in the “receiving space” of the substrate:
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`[R]eferring to FIG. 1, the coil unit 200 is disposed on the top surface
`of the magnetic substrate 100 and the connecting unit 300 is disposed
`on the coil unit 200. However, referring to FIG. 11, the receiving
`space 130 having the structure the same as that of the connecting
`unit 300 is formed in the magnetic substrate 100, so that the
`connecting unit 300 may be disposed under the coil unit 200.
`Id., 8:30-37 (emphasis added to show that the “connecting unit” may be disposed
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`under the “coil unit” in the “receiving space”). To that end, the ’565 Patent teaches
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`that the “connecting unit” is a separate and discrete component from the “coil unit”
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`that may be positioned in, disposed in, or otherwise overlap the receiving space of
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`the separate and distinct “substrate comprising a receiving space.”
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`The existence of these discrete components is important for achieving the ’565
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`Patent’s goal of achieving a thinner wireless power receiver. For example, the ’565
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`Patent explains that “the connecting unit is disposed in the receiving space of the
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`magnetic substrate so that the thickness of the wireless power receiver can be
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`15
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`remarkably reduced as much as the thickness of the connecting unit.” Id., 2:45-49;
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`8:48-53; 16:4-13; 18:46-53. In some embodiments, “a tape substrate is used as the
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`connecting unit so that the overall size of the wireless power receiver can be
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`reduced.” Id., 2:50-53; 16:14-19 (“If the tape substrate is used as the connecting
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`unit 300, the thickness of the connecting unit 300 can be reduced, so that the overall
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`size of the wireless power receiver 1000 can be reduced.”).
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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 unit” to the wireless power receiving circuit—further
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`evidencing that the “connecting unit” is contemplated as a distinct component from
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`the “coil unit” of the wireless power receiver and the “substrate comprising a
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`receiving space” on which the “coil unit” is disposed. Specifically, “[t]he connecting
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`unit 300 connects the wireless power receiving circuit (not shown) with the coil unit
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`200 to transfer the power received from the coil unit 200 to a load (not shown)
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`through the wireless power receiving circuit.” Id., 5:27-30, 15:38-41 (same); see
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`also id., 5:31-34. For example, as shown in Figure 1, “[t]he first connection terminal
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`210 is located at one end of the coil 230 and the second connection terminal 220 is
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`provided at the other end of the coil 230.” Id., 4:57-59. “The first and second
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`connection terminals 210 and 220 are necessary for connection with the connecting
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`unit 300.” Id., 4:60-61. To that end, “[t]he first connection terminal 310 of the
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`connecting unit 300 may be connected to the first connection terminal 210 of the
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`16
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`coil unit 200 and the second connection terminal 320 of the connecting unit 300 may
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`be connected to the second connection terminal 220 of the coil unit 200.” Id., 5:19-
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`23. These connections formed between the first and second “connection terminals”
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`of the “coil unit” and the third and fourth “connection terminals” of the “connecting
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`unit” are intended to create the requisite electrical connections between the “coil”
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`(through the “connecting unit” and its “wiring layer”) and ultimately to the power
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`receiving circuit, which then converts AC power into DC power.
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`4.
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`The prosecution history supports the presumption that
`the “substrate comprising a receiving space,” the “coil
`unit” and the “connecting unit” are separate and
`distinct components
`Finally, the prosecution history of the ’565 Patent reinforces that the
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`“substrate comprising a receiving space,” the “coil unit” and the “connecting unit”
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`are separate and distinct components. During the prosecution of the application that
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`led to U.S. Patent No. 9,806,565, the applicants made the following statement
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`regarding the disclosed invention:
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`Claim 1 has been amended to recite that the connecting unit includes
`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, wherein the conductive
`pattern includes a conductive line wound at least two times and the
`conductive pattern has a spiral shape. These advantageous features of
`the subject
`invention are discussed
`throughout
`the original
`specification and can be seen in at least Figure 11, in which the
`connecting unit includes a third connection terminal 310 connected to
`the first connection terminal 210 of the coil unit 200 and a fourth
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`17
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`IPR2022-00350 (’565 Patent)
`Patent Owner’s Response
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`connection terminal 320 connected to the second connection terminal
`220 of the coil unit 200, wherein the conductive pattern 230 includes a
`conductive line wound at least two times and the conductive pattern
`230 has a spiral shape (sec also, e.g., page 7, lines 5-7 and 18-23).
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`Ex. 1002 at 357-358, 5/11/2015 Amendment Under 37 C.F.R. §1.11, pp. 7-8. And,
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`in allowing the claims of the ’565 Patent, the Examiner expressly noted that the
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`“earlier cited art” and the “newly cited IDS art” does not “disclose the substrate
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`comprising a receiving space of a predetermined shape formed therein for a
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`connecting unit configured t
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