`
`
`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
`_____________________
`
`
`DECLARATION OF DR. JOSHUA PHINNEY,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`1
`
`
`
`Ex.1003
`APPLE INC. / Page 1 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`TABLE OF CONTENTS
`
`
`
`Introduction ...................................................................................................... 4
`I.
`Qualifications and Professional Experience .................................................... 6
`II.
`III. Level of Ordinary Skill in the Art ................................................................. 10
`IV. Relevant Legal Standards .............................................................................. 11
`V.
`Background .................................................................................................... 13
`VI. Overview of the ’565 Patent .......................................................................... 15
`VII. Claim Construction ........................................................................................ 18
`VIII. Identification of how the Claims are Unpatentable ....................................... 19
`A. Ground 1: Claims 1-8 and 11-18 are obvious under 35 U.S.C.
`§ 103 over Hong in view of Park. ....................................................... 19
`1.
`Summary of Hong .......................................................... 19
`2.
`Summary of Park ........................................................... 23
`3.
`Reasons to Combine Hong and Park ............................. 24
`4.
`Claim 1 ........................................................................... 29
`5.
`Claim 2 ........................................................................... 53
`6.
`Claim 3 ........................................................................... 55
`7.
`Claim 4 ........................................................................... 57
`8.
`Claim 5 ........................................................................... 58
`9.
`Claim 6 ........................................................................... 58
`10.
`Claim 7 ........................................................................... 61
`11.
`Claim 8 ........................................................................... 62
`12.
`Claim 11 ......................................................................... 63
`
`
`
`
`2
`
`
`
`Ex.1003
`APPLE INC. / Page 2 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`Claim 12 ......................................................................... 64
`13.
`Claim 13 ......................................................................... 66
`14.
`Claim 14 ......................................................................... 69
`15.
`Claim 15 ......................................................................... 69
`16.
`Claim 16 ......................................................................... 69
`17.
`Claim 17 ......................................................................... 69
`18.
`Claim 18 ......................................................................... 69
`19.
`Ground 2: Claims 9 and 19 are obvious under 35 U.S.C. § 103
`over Hong in view of Park and Hasegawa. ......................................... 70
`1.
`Summary of Hasegawa .................................................. 70
`2.
`Reasons to Combine Hasegawa with Hong ................... 72
`3.
`Claim 9 ........................................................................... 75
`4.
`Claim 19 ......................................................................... 77
`Ground 3: Claims 10 and 20 are obvious under 35 U.S.C. § 103
`over Hong in view of Park and Sung. ................................................. 78
`1.
`Summary of Sung .......................................................... 78
`2.
`Reasons to Combine Sung with Hong ........................... 78
`3.
`Claim 10 ......................................................................... 82
`4.
`Claim 20 ......................................................................... 84
`IX. Conclusion ..................................................................................................... 85
`
`
`
`B.
`
`C.
`
`
`
`
`3
`
`
`
`Ex.1003
`APPLE INC. / Page 3 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`I, Joshua Phinney, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Apple Inc. in the matter
`
`of the Inter Partes Review of U.S. Patent No. 9,806,565 (“the ’565 Patent”) to An
`
`et al.
`
`
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent on the outcome of this matter or the specifics of my testimony.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`20 (“the Challenged Claims”) of the ’565 Patent are unpatentable as they would
`
`have been obvious to a person having ordinary skill in the art (“POSITA”) at the
`
`time of the alleged invention, in light of the prior art. It is my opinion that all of the
`
`limitations of the challenged claims would have been obvious to a POSITA.
`
`4.
`
`a.
`
`b.
`
`Ex.1002;
`
`c.
`
`d.
`
`
`
`
`In the preparation of this declaration, I have studied:
`
`the ’565 Patent, Ex.1001;
`
`the prosecution history of the ’565 Patent (“’565 File History”),
`
`U.S. Patent No. 8,941,352 to Hong (“Hong”), Ex.1005;
`
`U.S. Patent No. 8,922,162 to Park et al. (“Park”), Ex.1006;
`
`4
`
`
`
`Ex.1003
`APPLE INC. / Page 4 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`e.
`
`U.S. Patent Application Publication No. US 2009/0021212 to
`
`Hasegawa et al. (“Hasegawa”), Ex.1007; and
`
`f.
`
`U.S. Patent Application Publication No. 2012/0274148 to Sung et al.
`
`(“Sung”), Ex.1008.
`
`g.
`
`h.
`
`U.S. Patent No. 8,427,100, Ex.1009;
`
`U.S. Patent No. 8,687,536, Ex.1010;
`
`i. Websters II New College Dictionary: Third Edition, (2005), Ex.1011;
`
`j.
`
`k.
`
`l.
`
`U.S. 8,339,798 to Minoo et al., Ex.1012;
`
`U.S. 7,375,609, Ex.1013;
`
`U.S. 8,164,001, Ex.1014;
`
`m. U.S. 8,643,219, Ex.1017;
`
`n.
`
`o.
`
`5.
`
`U.S. 2011/0050164, Ex.1018; and
`
`U.S. 9,252,611, Ex.1019.
`
`In forming the opinions expressed below, I have considered:
`
`the documents listed above;
`
`the relevant legal standards, including the standard for obviousness,
`
`and any additional authoritative documents as cited in the body of this
`
`declaration; and
`
`my own knowledge and experience based upon my work in the field
`
`of wireless charging as described below.
`
`
`
`
`5
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 5 of 85
`
`
`
`Phinney Declaration
`
`Inter Partes Review of U.S. 9,806,565
`
`6.
`
`Unless otherwise noted, all emphasis in any quoted material has been
`
`added.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`7.
`
`My complete qualifications and professional experience are described
`
`in my Curriculum Vitae, a copy of which can be found in Exhibit 1004. The
`
`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`8.
`
`I am a Principal Engineer in the Electrical Engineering and Computer
`
`Science practice at Exponent, an engineering and scientific consulting firm
`
`headquartered at 149 Commonwealth Drive, Menlo Park, California 94025. I
`
`received a Ph.D. in Electrical Engineering from the Massachusetts Institute of
`
`Technology (“MIT”) in 2005. I also earned S.M. and B.S. degrees in Electrical
`
`Engineering from MIT and the University of Illinois, Chicago (“UIC”),
`
`respectively.
`
`9.
`
`My master’s thesis at MIT focused on the miniaturization of power
`
`converters, by reducing the energy storage and improving the performance of
`
`inductors. As part of this work, I designed, tested, and constructed ferrite, iron-
`
`powder, and air-core inductors, while minimizing magnetic losses. During this
`
`time, I invented with my advisor, Dr. David Perreault, an electrical component
`
`with a capacitive impedance and an inductance-cancellation feature provided by
`
`6
`
`Ex.1003
`APPLE INC. / Page 6 of 85
`
`
`
`Phinney Declaration
`
`magnetically coupled windings. A filter having a capacitor with inductance
`
`Inter Partes Review of U.S. 9,806,565
`
`cancellation provides enhanced performance over frequency compared with
`
`conventional capacitors. This work was later extended to a second patent, with
`
`magnetically coupled windings used to improve EMI filters and common-mode
`
`chokes.
`
`10. My doctoral work at MIT centered on miniaturization of power
`
`converters and magnetics. As part of my doctoral work, I constructed and modeled
`
`planar magnetic systems, including magnetically coupled, printed magnetic coils.
`
`By incorporating such compact, magnetic structures into power converters, the
`
`resulting converter enjoyed multiple benefits, including waveform-shaping and
`
`reduction of switch stresses. Through the modeling associated with this
`
`dissertation, I become proficient in methods for analyzing the inductances of
`
`packages and interconnects, especially planar or filamentous systems of
`
`conductors.
`
`11.
`
` For my publications related to both my Master’s and Ph.D. thesis, I
`
`received the William M. Portnoy Prize Paper Award (2003) and the IEEE Power
`
`Electronics Society Transactions Prize Paper Award (2004).
`
`12. After earning my Ph.D., I joined Exponent and have led technical
`
`investigations to portable electronic devices, microcomputers, as well as industrial
`
`and consumer devices with embedded controllers. My job functions include
`
`
`
`
`7
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 7 of 85
`
`
`
`Phinney Declaration
`
`analyzing hardware and software of these devices to understand their modes of
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`failure, and testifying regarding these devices in legal matters involving patents
`
`and trade secrets.
`
`13. As part of my employment at Exponent, I have performed design,
`
`design reviews, and failure analysis for wireless charging and communication
`
`systems. The focus of this work has been (1) coupling between transmitter and
`
`receiver coils from the standpoint of efficiency and magnetic-field exposure to
`
`users, in particular for the Power Matters Alliance; (2) coupling of interrogators
`
`and transponder coils in printed magnetic cards; and (3) integrated-circuit and coil
`
`failures due to wear, dimensional changes, and triboelectric charging. In addition
`
`to testifying regarding resonant and inductive wireless-power transfer, I have
`
`consulted for industry regarding coil design, RFID and near-field communication
`
`(NFC) integrated circuits, modulation methods, and on-metal RFID tags.
`
`14.
`
`I have testified regarding the software-defined features, internal
`
`circuitry, and physical embodiments of electronic equipment. Regarding
`
`electronics, I have testified regarding power electronics in communication systems,
`
`wind turbines, grid-scale photovoltaic plants, and consumer electronics. In
`
`addition, I have testified regarding control and compensation in industrial
`
`controllers, voltage regulators, and switched-mode power converters. My
`
`experience with wireless RF circuitry includes failure analysis of amplifiers, power
`
`
`
`
`8
`
`
`
`Ex.1003
`APPLE INC. / Page 8 of 85
`
`
`
`Phinney Declaration
`
`supplies, matching networks, and multiplexers in satellites, semiconductor-
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`processing equipment, and medical devices.
`
`15. Regarding the mechanical elements of electronic equipment, I have
`
`testified regarding buttons and touch interfaces, connectors, linear and rotary
`
`actuators, position-measuring devices, and the design and construction of modular
`
`housings for computerized equipment and peripherals. In particular, I have
`
`testified regarding detachable components as they are constructed in relation to the
`
`housing and underlying electronic assemblies, including printed circuit boards, flex
`
`printed circuits, and other connector assemblies within the housing of electronic
`
`equipment.
`
`16.
`
`In addition to the forgoing, I perform electromagnetic assessment of
`
`utility and communication infrastructure. These issues include permitting,
`
`interference, and environmental impact of radar, AC and HVDC transmission
`
`lines, substations, photovoltaic installations, generators, broadcast antennas, and
`
`electrified mass transit systems.
`
`17.
`
`I am being compensated for my work associated with this case plus
`
`reimbursement of reasonable expenses. My compensation is not contingent on my
`
`opinions or the outcome of the case, and I have no other interest in this case or the
`
`parties thereto.
`
`
`
`
`9
`
`
`
`Ex.1003
`APPLE INC. / Page 9 of 85
`
`
`
`Phinney Declaration
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`18.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`19. A person of ordinary skill in the art (“POSITA”) in the field of the
`
`’565 Patent, as of its earliest possible filing date of March 23, 2012, would have
`
`been someone knowledgeable and familiar with the wireless power arts that are
`
`pertinent to the ’565 Patent. That person would have a bachelor’s degree in
`
`electrical engineering, or equivalent training, and approximately two years of
`
`experience working in the electrical engineering field. Lack of work experience
`
`can be remedied by additional education, and vice versa.
`
`20. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of the earliest
`
`possible priority date of the ’565 Patent (i.e., March 23, 2012). Unless otherwise
`
`stated, when I provide my understanding and analysis below, it is consistent with
`
`the level of a POSITA prior to the alleged priority date of the ’565 Patent.
`
`
`
`
`10
`
`
`
`Ex.1003
`APPLE INC. / Page 10 of 85
`
`
`
`Phinney Declaration
`
`IV. RELEVANT LEGAL STANDARDS
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`21.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’565 Patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are discussed
`
`below.
`
`22.
`
`I understand that prior art to the ’565 Patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’565 Patent. For purposes of this Declaration, I am
`
`applying March 23, 2012 as the earliest possible priority date of the ’565 Patent.
`
`23.
`
`I have been informed that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`24.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`
`
`
`11
`
`
`
`Ex.1003
`APPLE INC. / Page 11 of 85
`
`
`
`Phinney Declaration
`
`following: (a) combining prior art elements according to known methods to yield
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`25.
`
`I further understand that certain factors may support or rebut the
`
`obviousness of a claim. I understand that such secondary considerations include,
`
`among other things, commercial success of the patented invention, skepticism of
`
`those having ordinary skill in the art at the time of invention, unexpected results of
`
`the invention, any long-felt but unsolved need in the art that was satisfied by the
`
`alleged invention, the failure of others to make the alleged invention, praise of the
`
`alleged invention by those having ordinary skill in the art, and copying of the
`
`alleged invention by others in the field. I understand that there must be a nexus—a
`
`connection—between any such secondary considerations and the alleged invention.
`
`I also understand that contemporaneous and independent invention by others is a
`
`
`
`
`12
`
`
`
`Ex.1003
`APPLE INC. / Page 12 of 85
`
`
`
`Phinney Declaration
`
`secondary consideration tending to show obviousness.
`
`Inter Partes Review of U.S. 9,806,565
`
`26.
`
`I am not aware of any allegations by the named inventor of the ’565
`
`Patent or any assignee of the ’565 Patent that any secondary considerations are
`
`relevant to the obviousness analysis of any Challenged Claim of the ’565 Patent.
`
`V. BACKGROUND
`
`27. Mobile devices such as smart phones provide users with a wide
`
`variety of communication mechanisms such as phone calls, text messages, internet
`
`access, as well as providing other features. Mobile devices typically include a
`
`built-in or detachable battery pack that is chargeable. Some types of devices may
`
`be charged wirelessly using the principle of electromagnetic induction.
`
`“[E]lectromagnetic induction refers to the generation of an electric current through
`
`induction of a voltage when a magnetic field is changed around a conductor.”
`
`Ex.1001, 1:32-35. The ’565 Patent explains that the principle of electromagnetic
`
`induction has been extensively used in devices since the 1880s:
`
`A wireless power transmission or a wireless energy transfer refers to a
`technology of wirelessly transferring electric energy to desired devices.
`In the 1800's, an electric motor or a transformer employing the principle
`of electromagnetic induction has been extensively used and then a
`method of transmitting electrical energy by irradiating electromagnetic
`waves, such as radio waves or lasers, has been suggested. Actually,
`electrical toothbrushes or electrical razors, which are frequently used in
`daily life, are charged based on the principle of electromagnetic
`
`
`
`
`13
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 13 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`induction. The electromagnetic induction refers to the generation of an
`electric current through induction of a voltage when a magnetic field is
`changed around a conductor. The electromagnetic induction scheme
`has been successfully commercialized for electronic appliances having
`small sizes, but represents a problem in that the transmission distance
`of power is too short.
`
`Ex.1001, 1:22-38.
`
`28.
`
`In the context of more recent portable devices, the principle of
`
`electromagnetic induction has been applied to enable charging of a portable device
`
`as it rests on a charging pad. Typically, a coil in the wirelessly chargeable device is
`
`inductively coupled with a coil in the charging pad, and current is generated in the
`
`device’s coil and transferred to its battery. The coil in the wirelessly chargeable
`
`device is one component of several that are common to most wireless power
`
`receivers. Other common components include a magnetic layer adjacent to the coil
`
`to reduce the amount of the magnetic field leaked to the outside, an adhesive layer
`
`to attach the coil to the magnetic layer, a short-range communication antenna to
`
`facilitate near field communication, and several components that together
`
`electrically connect the coil to the load (e.g., a battery) in the chargeable device.
`
`29. As will be described in more detail below, the ’565 Patent describes
`
`and claims no more than what was already known in the art with regard to the
`
`components of common wireless power receivers.
`
`
`
`
`14
`
`
`
`Ex.1003
`APPLE INC. / Page 14 of 85
`
`
`
`Phinney Declaration
`
`VI. OVERVIEW OF THE ’565 PATENT
`
`Inter Partes Review of U.S. 9,806,565
`
`30. The ’565 patent generally relates to wireless power reception using
`
`electromagnetic induction. Ex.1001, Abstract, 1:21-28, 4:25-29.
`
`31.
`
`It is my opinion that the Challenged Claims of the ’565 Patent recite
`
`an obvious arrangement of components configured to carry out wireless power
`
`reception via electromagnetic induction. For example, claim 1 recites:
`
`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,
`
`
`
`
`15
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 15 of 85
`
`
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`Phinney Declaration
`
`
`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.
`
`32. The claimed “wireless power receiver” includes well-known
`
`components such as a “coil unit,” an “short-range communication antenna,” and
`
`“connection terminals” spatially arranged with respect to generic elements, such as
`
`a “receiving space” in a substrate and a “connecting unit.”
`
`33.
`
`I’ve reviewed the specification of the ’565 patent, and it does not
`
`provide many details about the components recited in the Challenged Claims. For
`
`example, the embodiment of Fig. 11 (reproduced below) broadly describes a
`
`wireless power receiver 1000 of a “portable terminal” having a receiving space 130
`
`in a substrate 100, as well as coil unit 200 with connection terminals 210 and 220
`
`and connecting unit 300 with connection terminals 310 and 320. Ex.1001, 8:16-
`
`9:10.
`
`
`
`
`16
`
`
`
`Ex.1003
`APPLE INC. / Page 16 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`
`
`Ex.1001, Fig. 11.
`34. The connecting unit 300 is generally described as having several
`
`different components, including first and second connection terminals and a wiring
`
`layer, that together “transfer the power received from the coil unit 200 to a load
`
`(not shown) through the wireless power receiving circuit.” Ex.1001, 5:16-30. Fig.
`
`12, below, illustrates the “the state in which the coil unit 200 and the connecting
`
`unit 300 are interconnected with each other,” where the “connecting unit 300 is
`
`disposed under the coil unit 200” in the receiving space. Ex.1001, 8:40-67.
`
`
`
`
`17
`
`
`
`Ex.1003
`APPLE INC. / Page 17 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`Ex.1001, Fig. 12.
`35. As I explain below, the concept of a wireless power receiver having
`
`
`
`these common components broadly arranged as claimed was not new as of the
`
`earliest alleged priority date of the ’565 patent.
`
`VII. CLAIM CONSTRUCTION
`
`36.
`
`It is my understanding that in order to properly evaluate the ’565
`
`Patent, the terms of the claims must first be interpreted. It is my understanding that
`
`for the purposes of this inter partes review, the claims are to be construed under
`
`the so-called Phillips standard, under which claim terms are given their ordinary
`
`and customary meaning as would be understood by one of ordinary skill in the art
`
`in light of the specification and prosecution history, unless the inventor has set
`
`forth a special meaning for a term. It is my opinion that none of the claim terms
`
`
`
`
`18
`
`
`
`Ex.1003
`APPLE INC. / Page 18 of 85
`
`
`
`Phinney Declaration
`
`require a specific construction for the purposes of this declaration, and all will be
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`given their plain and ordinary meaning.
`
`VIII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`37.
`
`I have been asked to provide my opinion as to whether the Challenged
`
`Claims of the ’565 Patent would have been obvious in view of the prior art. The
`
`discussion below provides a detailed analysis of how the prior art reference
`
`identified below teaches the limitations of the Challenged Claims of the ’565
`
`Patent.
`
`38. As part of my analysis, I have considered the scope and content of the
`
`prior art and any differences between the alleged invention and the prior art. I
`
`describe in detail below the scope and content of the prior art, as well as any
`
`differences between the alleged invention and the prior art, on an element-by-
`
`element basis for each Challenged Claims of the ’565 Patent.
`
`39. As described in detail below, the alleged invention of the Challenged
`
`Claims would have been obvious in view of the teachings of the identified prior art
`
`references as well as the knowledge of a POSITA.
`
`A. Ground 1: Claims 1-8 and 11-18 are obvious under 35 U.S.C.
`§ 103 over Hong in view of Park.
`
`1.
`
`Summary of Hong
`
`
`
`40. Like the ’565 patent, Hong describes a “contactless charging
`
`apparatus of a portable terminal.” Hong, Abstract. Hong illustrates the portable
`
`
`
`
`19
`
`
`
`Ex.1003
`APPLE INC. / Page 19 of 85
`
`
`
`Phinney Declaration
`
`
`terminal and its contactless charging components in Fig. 2, annotated below. Hong,
`
`Inter Partes Review of U.S. 9,806,565
`
`3:36-49.
`
`Portable terminal
`
`Charging apparatus
`on main
`circuit board 20
`
`Battery 30
`
`Hong, Fig. 2 (annotated)
`41. The charging apparatus “includes a rectifying unit 13, a charging unit
`
`
`
`15, and a secondary coil 11 formed on a main circuit board 20,” as illustrated in
`
`Fig. 3 below. Hong, 4:16-19.
`
`
`
`
`20
`
`
`
`Ex.1003
`APPLE INC. / Page 20 of 85
`
`
`
`Phinney Declaration
`
`
`Secondary coil unit
`
`
`
`Main circuit board 20
`
`
` Hong, Fig. 3 (cropped and annotated)
`
`42. Hong explains that the coil “generates an electromotive force induced
`
`by a magnetic induction field created by a contactless charger, and a direct current
`
`is applied to a battery to charge the battery using the rectifying unit and the
`
`charging unit.” Hong, Abstract.
`
`43. Hong further describes that the rectifying unit includes two
`
`“connecting terminals” to which the coil connects. Hong, 4:53-56. A “wiring
`
`layer” is disposed within the layers of the main circuit board 20 to electrically
`
`connect the inner end of the coil to a connecting terminal of the rectifying unit, as
`
`illustrated in Fig. 4 below. Hong, 5:7-24, Fig. 4.
`
`
`
`
`21
`
`Inter Partes Review of U.S. 9,806,565
`
`Rectifying unit
`
`
`Battery charging unit
`
`
`
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 21 of 85
`
`
`
`Phinney Declaration
`
`
`Inter Partes Review of U.S. 9,806,565
`
`Wiring layer 27 disposed in substrate
`connecting inner end of coil 11c to
`rectifying unit 13
`
`Rectifying unit
`
`
` Hong, Fig. 4 (annotated)
`
`
`
`
`
`44. Hong explains that the rectifying unit “rectifies an alternating current
`
`induced by the secondary coil unit 11 to a direct current,” where the “rectified
`
`current … may be applied to the battery.” Hong, 4:53-67. Accordingly, as
`
`illustrated in Figs. 3 and 4 above, the wiring layer 27 and the rectifying unit 13
`
`together electrically connect the power-receiving coil to the battery charging
`
`circuit in the portable terminal. Hong, Figs. 2-4, 3:38-41, 4:59-67, 5:7-24. In other
`
`words, the electrical connection created by these components carries (and rectifies)
`
`the power inductively induced in the coil to the battery. Hong, 4:53-67.
`
`
`
`
`22
`
`
`
`Ex.1003
`APPLE INC. / Page 22 of 85
`
`
`
`Phinney Declaration
`
`
`2.
`
`Summary of Park
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`45. Like Hong and the ’565 Patent, Park relates to a device for wireless
`
`charging. See Park, Abstract. Park explains in its background section that it was
`
`known to include both a wireless charging coil and NFC antenna on the same
`
`portable device: “To implement both the NFC function and the wireless charging
`
`function in a single portable terminal, an NFC antenna element taking the form of a
`
`loop antenna and a secondary coil for wireless charging should be mounted in the
`
`portable terminal.” Park, 1:54-59.
`
`46. Park describes an improvement upon this known concept: “[T]he
`
`present invention is to provide a portable terminal having a structure that facilitates
`
`mounting of a secondary coil for wireless charging and a Near Field
`
`Communication (NFC) antenna element, without increasing the thickness of the
`
`portable terminal.” Park, 2:11-15. Park does this by having “a first coil for
`
`wireless charging and a second coil for the NFC function on the same plane.”
`
`Park, 5:63-65.
`
`47. To form the wireless charging coil and NFC coil on the same plane,
`
`the underlying shielding layer 131 includes recessed accommodation grooves:
`
`“The shielding member 131 may be formed by injection molding, having first and
`
`second accommodation grooves 141 and 142 on a surface thereof. The first and
`
`second accommodation grooves 141 and 142 are circular in shape and recessed
`
`
`
`
`23
`
`
`
`Ex.1003
`APPLE INC. / Page 23 of 85
`
`
`
`Phinney Declaration
`
`into one surface of the shielding member 131.” Park, 3:35-39. “[T]he first coil 133
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`is accommodated in the first accommodation groove 141 and the second coil 135 is
`
`accommodated in the second accommodation groove 142.” Park, 3:56-59. I’ve
`
`annotated the device of Park below.
`
`wireless charging
`coil 133
`
`NFC coil 135
`
`Park, Figs. 3 and 4 (annotated)
`
`recessed
`accommodation
`groove
`
`48. Accordingly, Park provides evidence that it was known for a portable
`
`device to include both a wireless charging coil and a near field communication
`
`antenna, particularly in recessed accommodation grooves on the same plane.
`
`3.
`
`Reasons to Combine Hong and Park
`
`49.
`
`It is my opinion that a POSITA would have been motivated to
`
`
`
`
`24
`
`
`
`
`
`Ex.1003
`APPLE INC. / Page 24 of 85
`
`
`
`Phinney Declaration
`
`combine the teachings of Park with those of Hong. In particular, before the ’565
`
`Inter Partes Review of U.S. 9,806,565
`
`
`
`patent, it would have been obvious, beneficial, and predictable for Hong’s device
`
`to include an NFC coil, as taught by Park.
`
`50.
`
`I first note that a POSITA, when considering the teachings of Hong,
`
`would have also considered the teachings of Park. Park is analogous prior art
`
`pertaining to the same field of endeavor, na