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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`———————
`
`IPR2022-00350
`U.S. Patent No. 9,806,565
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`

`

`
`
`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 6
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 7
`
`GROUNDS FOR STANDING ........................................................................ 7
`
`III. NOTE ............................................................................................................... 7
`
`IV. SUMMARY OF THE ’565 PATENT ............................................................. 8
`
`V.
`
`PROSECUTION HISTORY .........................................................................10
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................11
`
`VII. CLAIM CONSTRUCTION ..........................................................................11
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................12
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................12
`
`A. Discretionary denial under the Fintiv factors is not appropriate ........ 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`No evidence regarding a stay ................................................... 13
`
`Parallel proceeding trial date ................................................... 13
`
`Investment in the parallel proceeding ...................................... 13
`
`Overlapping issues with the parallel proceeding ..................... 14
`
`Petitioner is a defendant ........................................................... 15
`
`Other circumstances ................................................................. 15
`
`The Fintiv Framework Should Be Overturned................................... 15
`
`Discretionary denial under General Plastic is not appropriate .......... 15
`
`B.
`
`C.
`
`2
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 16
`
`
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....16
`
`A.
`
`B.
`
`C.
`
`Challenged Claims ............................................................................. 16
`
`Statutory Grounds for Challenges ...................................................... 17
`
`Ground 1: Claims 1-8 and 11-18 are obvious under 35 U.S.C.
`§ 103(a) over Hong in view of Park ................................................... 18
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Summary of Hong .................................................................... 18
`
`Summary of Park ..................................................................... 21
`
`Reasons to Combine Hong and Park ....................................... 22
`
`Claim 1 ..................................................................................... 28
`
`Claim 2 ..................................................................................... 46
`
`Claim 3 ..................................................................................... 47
`
`Claim 4 ..................................................................................... 49
`
`Claim 5 ..................................................................................... 50
`
`Claim 6 ..................................................................................... 51
`
`10. Claim 7 ..................................................................................... 53
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`11. Claim 8 ..................................................................................... 54
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`12. Claim 11 ................................................................................... 55
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`13. Claim 12 ................................................................................... 56
`
`14. Claim 13 ................................................................................... 58
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`15. Claim 14 ................................................................................... 60
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`3
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`16. Claim 15 ................................................................................... 60
`
`17. Claim 16 ................................................................................... 60
`
`18. Claim 17 ................................................................................... 60
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`19. Claim 18 ................................................................................... 60
`
`D. Ground 2: Claims 9 and 19 are obvious under 35 U.S.C. § 103(a)
`over Hong in view of Park and Hasegawa ......................................... 60
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Hasegawa ............................................................ 61
`
`Reasons to Combine Hasegawa with Hong ............................. 63
`
`Claim 9 ..................................................................................... 66
`
`Claim 19 ................................................................................... 68
`
`E.
`
`Ground 3: Claims 10 and 20 are obvious under 35 U.S.C. § 103(a)
`over Hong in view of Park and Sung ................................................. 68
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Sung..................................................................... 68
`
`Reasons to Combine Sung with Hong ..................................... 68
`
`Claim 10 ................................................................................... 72
`
`Claim 20 ................................................................................... 73
`
`XI. CONCLUSION ..............................................................................................73
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`XII. MANDATORY NOTICES ...........................................................................74
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ......................................................................... 74
`
`Related Matters ................................................................................... 74
`
`Lead and Back-up Counsel and Service Information ........................ 74
`
`CERTIFICATE OF WORD COUNT ......................................................................76
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`4
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`CERTIFICATE OF SERVICE ................................................................................77
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`5
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`

`

`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
`
`Ex.1005
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`Ex.1012
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`
`Ex.1018
`Ex.1019
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`PETITIONER’S EXHIBIT LIST
`
`U.S. 9,806,565
`
`Prosecution History of U.S. 9,806,565
`
`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Joshua Phinney
`
`U.S. 8,941,352 to Hong
`U.S. 8,922,162 to Park et al.
`
`U.S. 2009/0021212 to Hasegawa et al.
`
`U.S. 2012/0274148 to Sung et al.
`U.S. 8,427,100
`
`U.S. 8,687,536
`
`Websters II New College Dictionary: Third Edition, (2005)
`U.S. 8,339,798 to Minoo et al.
`U.S. 7,375,609
`
`U.S. 8,164,001
`Scheduling Order, Scramoge Technology Limited v. Apple Inc.,
`WDTX-6-21-cv-00579 (filed Sept. 28, 2021)
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Apple Inc., Scramoge Technology
`Limited v. Apple Inc., WDTX-6-21-cv-00579 (served Sept. 7, 2021)
`U.S. 8,643,219
`
`U.S. 2011/0050164
`U.S. 9,252,611
`
`6
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`

`
`I.
`
`INTRODUCTION
`
`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
`
`U.S. Patent No. 9,806,565 (the “’565 patent,” Ex.1001) is generally directed
`
`to wireless power reception via electromagnetic induction, a concept long known
`
`and applied in consumer devices. The claimed “wireless power receiver” simply
`
`recites an obvious arrangement of the components commonly found in these
`
`devices. For example, portable devices already included wireless power receivers
`
`with spiral coils, connection terminals, connecting units, and short-range
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`communication antennas—all arranged as claimed.
`
`Accordingly, pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100,
`
`Apple Inc. (“Petitioner”) respectfully requests that the Board review and cancel as
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`unpatentable under (pre-AIA) 35 U.S.C. §103(a) claims 1-20 (hereinafter, the
`
`“Challenged Claims”) of the ’565 patent.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’565 patent is eligible for IPR and that Petitioner
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`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
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`7
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`

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`IV. SUMMARY OF THE ’565 PATENT
`
`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`The ’565 patent generally relates to wireless power reception using
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`electromagnetic induction. Ex.1001, Abstract, 1:21-28, 4:25-29.
`
`“[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 background of the ’565 patent explains that the “principle
`
`of electromagnetic induction has been extensively used” in devices since the
`
`1880s. Ex.1001, 1:24-28. For example, “electrical toothbrushes or electrical razors,
`
`which are frequently used in daily life, are charged based on the principle of
`
`electromagnetic induction.” Ex.1001, 1:29-31.
`
`The Challenged Claims of the ’565 patent simply recite an obvious
`
`arrangement of components configured to carry out wireless power reception via
`
`electromagnetic induction. The claimed “wireless power receiver” includes well-
`
`known components such as a “coil unit,” a “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.”
`
`The specification of the ’565 patent offers few details about the components
`
`recited in the Challenged Claims. For example, the embodiment of Fig. 11
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`(reproduced below) broadly describes a wireless power receiver 1000 of a
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`“portable terminal” having a receiving space 130 in a substrate 100, as well as coil
`
`8
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`

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`unit 200 with connection terminals 210 and 220 and connecting unit 300 with
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`connection terminals 310 and 320. Ex.1001, 8:16-9:10.
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`Ex.1001, Fig. 11.
`
`
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`The connecting unit 300 is generally described as having several different
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`components, including first and second connection terminals and a wiring layer,
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`that together “transfer the power received from the coil unit 200 to a load (not
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`shown) through the wireless power receiving circuit.” Ex.1001, 5:16-30. Fig. 12,
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`below, illustrates the “the state in which the coil unit 200 and the connecting unit
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`300 are interconnected with each other,” where the “connecting unit 300 is
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`disposed under the coil unit 200” in the receiving space. Ex.1001, 8:40-67.
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`9
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`Ex.1001, Fig. 12.
`
`
`
`As explained 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. Ex.1003, ¶ 35.
`
`V.
`
`PROSECUTION HISTORY
`
`The ’565 patent was filed October 29, 2012 as U.S. Application No.
`
`13/663,012. It claims priority to foreign applications KR 10-2012-0029987 and
`
`KR10-2012-0079004, respectively filed March 23, 2012 and July 19, 2012. It is
`
`unnecessary to determine whether the ’565 patent is entitled to its earliest alleged
`
`priority date because the prior art relied upon herein pre-dates the earliest alleged
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`priority date.
`
`During prosecution, the applicant gained allowance after amending the
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`10
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`

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`independent claims to recite the subject matter deemed allowable by the Examiner:
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`“a short-range communication antenna disposed on the substrate and surrounding
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`the coil” and “wherein the connecting unit overlaps the receiving space in a second
`
`direction parallel to the upper surface of the substrate.” Ex.1002, 108-115. The
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`Examiner’s reasons for allowance listed every limitation of independent claim 1.
`
`Ex.1002, 31-35. The patent issued October 31, 2017. Ex.1002, 12.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A Person of Ordinary Skill in The Art (“POSITA”) in 2012 would have had
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`a working knowledge of the wireless power art that is 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 field of
`
`wireless power transmission. Lack of work experience can be remedied by
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`additional education, and vice versa. Ex.1003, ¶¶ 18-20.
`
`VII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “shall be construed 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), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b). The Board only construes the claims to the extent necessary to resolve
`
`11
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`

`
`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes
`
`of this proceeding, the terms of the Challenged Claims should be given their plain
`
`and ordinary meaning, and no terms require specific construction.1
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
`
`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for § 314 denial strongly favor institution. See
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential). The district court case is at an early stage and no trial date has been
`
`set despite the court issuing a scheduling order. Petitioner has diligently prepared
`
`and filed this petition within four months of being served Patent Owner’s
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`infringement contentions. Ex.1016, 1-2, 7. The petition is also well within the one-
`
`
`1 Petitioner does not concede that any term in the challenged claims meets the
`
`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
`
`patentable subject matter under 35 U.S.C. § 101.
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`12
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`year timeframe allowed by Congress.
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`1. No evidence regarding a stay
`
`No motion to stay has been filed, so the Board should not infer the outcome
`
`of such a motion. Sand Revolution II LLC v. Continental Intermodal Group –
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`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
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`(informative); see also Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-
`
`01359, Paper 15 (Feb. 12, 2021) (“It would be improper to speculate, at this stage,
`
`what the Texas court might do regarding a motion to stay…”). Thus, this factor is
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`neutral on discretionary denial.
`
`2. Parallel proceeding trial date
`
`The co-pending litigation is at an early stage. The district court recently
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`issued a scheduling order but did not set a trial date. Ex.1015, 4. Instead, the court
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`“expects to set this date” at the conclusion of the Markman hearing, scheduled for
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`March 8, 2022. Ex.1015, 3, 4. Without a trial date, this factor weighs heavily
`
`against discretionary denial. See Sand Revolution II at 8-10, 14 (uncertainty over
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`district court’s trial date weighed against discretionary denial).
`
`3. Investment in the parallel proceeding
`
`The co-pending litigation is in its early stages, and the investment in it has
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`been minimal. As mentioned above, a claim construction hearing has not yet
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`occurred, fact discovery will not close until September 2022, and expert discovery
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`13
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`will not close until November 2022. Ex.1015, 3; see PEAG LLC v. Varta
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`Microbattery GmbH, IPR2020-01214, Paper 8, 17 (Jan. 6, 2021). This lack of
`
`investment favors institution.
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`Moreover, Petitioner only learned which claims were being asserted on
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`September 7, 2021. See Ex.1016 (infringement contentions). In the intervening
`
`weeks, Petitioner has worked expeditiously to file this petition. Under Fintiv,
`
`Petitioner’s prompt filing “weigh[s] against exercising the authority to deny
`
`institution.” Fintiv, Paper 11, 11 (“If the evidence shows that the petitioner filed
`
`the petition expeditiously, such as promptly after becoming aware of the claims
`
`being asserted, this fact has weighed against exercising the authority to deny
`
`institution under NHK.”).
`
`4. Overlapping issues with the parallel proceeding
`
`Because the co-pending litigation is in its early stages, Petitioner’s invalidity
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`positions have not yet been fully developed—only preliminary invalidity
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`contentions have been served. Final invalidity contentions are not due until April
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`19, 2022. Because the extent of overlap is thus speculative at this point in time, this
`
`factor favors institution.
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`5. Petitioner is a defendant
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`Petitioner is a defendant in the litigation. That is true of most Petitioners in
`
`IPR proceedings. Accordingly, this factor should not be a basis for denying
`
`institution.
`
`6. Other circumstances
`
`The prior art presented in this Petition renders the Challenged Claims
`
`unpatentable as obvious. The merits of Petitioner’s arguments are strong, and this
`
`factor weighs against discretionary denial.
`
`As such, because the Fintiv factors are either neutral or weigh against
`
`discretionary denial, and because this Petition was filed well before the statutory
`
`bar date, institution should not be denied on discretionary factors.
`
`B.
`
`The Fintiv Framework Should Be Overturned
`
`Apart from Petitioner’s showing that the Fintiv factors favor institution, the
`
`Fintiv framework should be overturned because it (1) exceeds the Director’s
`
`authority, (2) is arbitrary and capricious, and (3) was adopted without notice-and-
`
`comment rulemaking.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’565 patent has not been challenged in any prior IPR petition, so none of
`
`the General Plastic discretionary institution factors apply to this Petition. See
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`
`15
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`

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`Paper 19 at 16 (PTAB Sept. 6, 2016) (Section II.B.4.i. precedential).
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative nor redundant to the prosecution of the ’565
`
`Patent. The Examiner did not consider any of the references relied upon in this
`
`petition. Moreover, the challenges in this petition are non-cumulative because they
`
`rely upon prior art that teaches the specific limitations the Examiner found lacking
`
`in the prior art of record during prosecution. Compare Ex.1002, 31-32 (allowance
`
`based upon amendments adding “short-range communication antenna” and
`
`“connecting unit overlaps the receiving space in a second direction parallel to the
`
`upper surface of the substrate) with Ex.1006, 4:60-65 (teaching NFC antenna coil)
`
`and Ex.1005, Fig. 4 (illustrating connecting unit overlapping receiving space as
`
`claimed).
`
`X.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1-20, which include the claims asserted in the
`
`plaintiff’s infringement contentions in the co-pending litigation. Ex.1016, 1.
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`#2
`
`Claims
`1-8, 11-18
`9 and 19
`
`#3
`
`10 and 20
`
`Basis
`§ 103 (Pre-AIA) Hong in view of Park
`§ 103 (Pre-AIA) Hong in view of Park and
`Hasegawa
`§ 103 (Pre-AIA) Hong in view of Park and
`Sung
`
`U.S. Patent No. 8,941,352 to Hong (“Hong,” Ex.1005) was filed on May 18,
`
`
`
`
`
`2011 and issued January 27, 2015. Hong is prior art under (pre-AIA) 35 U.S.C. §
`
`102(e).
`
`U.S. Patent No. 8,922,162 to Park et al. (“Park,” Ex.1006) was filed on
`
`December 6, 2011 and issued December 30, 2014. Park is prior art under (pre-
`
`AIA) 35 U.S.C. § 102(e).
`
`U.S. Patent Application Publication No. 2009/0021212 to Hasegawa et al.
`
`(“Hasegawa,” Ex.1007) was published on January 22, 2009. Hasegawa is prior art
`
`under (pre-AIA) 35 U.S.C. § 102(b).
`
`U.S. Patent Application Publication No. 2012/0274148 to Sung et al.
`
`(“Sung,” Ex.1008) was filed on November 1, 2011 and published November 1,
`
`2012. Sung is prior art under (pre-AIA) 35 U.S.C. § 102(e).
`
`
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`C. Ground 1: Claims 1-8 and 11-18 are obvious under 35 U.S.C.
`§ 103(a) over Hong in view of Park
`
`1.
`
`Summary of Hong
`
`Like the ’565 patent, Hong describes a “contactless charging apparatus of a
`
`portable terminal.” Ex.1005, Abstract. Hong illustrates the portable terminal and its
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`contactless charging components in Fig. 2, annotated below. Ex.1005, 3:36-49.
`
`Portable terminal
`
`Charging apparatus
`on main
`circuit board 20
`
`Battery 30
`
` Ex.1005, Fig. 2 (annotated); Ex.1003, ¶ 40.
`
`
`
`In more detail, the charging apparatus “includes a rectifying unit 13, a
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`18
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`charging unit 15, and a secondary coil 11 formed on a main circuit board 20,” as
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`illustrated in Fig. 3 below. Ex.1005, 4:16-19.
`
`Secondary coil unit
`
`Rectifying unit
`
`
`Battery charging unit
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`
`
`
`Main circuit board 20
`
`
` Ex.1005, Fig. 3 (cropped and annotated); Ex.1003, ¶ 41.
`
`
`
`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.” Ex.1005, Abstract.
`
`Hong further describes that the rectifying unit includes two “connecting
`
`terminals” to which the coil connects. Ex.1005, 4:53-56. As an aspect of this, 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. Ex.1005, 5:7-24, Fig. 4.
`
`19
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`IPR2022-00350 Petition
`Inter Partes Review of U.S. 9,806,565
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`Wiring layer 27 disposed in substrate
`connecting inner end of coil 11c to
`rectifying unit 13
`
`Rectifying unit
`
`
` Ex.1005, Fig. 4 (annotated); Ex.1003, ¶ 43.
`
`
`
`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.” Ex.1005, 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. Ex.1005, Figs. 2-4, 3:38-41, 4:59-67, 5:7-24. That is, the electrical
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`connection created by these components carries (and rectifies) the power
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`inductively induced in the coil to the battery. Ex.1005, 4:53-67; Ex.1003, ¶ 44.
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`2.
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`Summary of Park
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`Like Hong and the ’565 patent, Park relates to a device for wireless
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`charging. See Ex.1006, Abstract. Park explains in its background section that it
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`was known to include both a wireless charging coil and NFC antenna on the same
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`portable device: “To implement both the NFC function and the wireless charging
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`function in a single portable terminal, an NFC antenna element taking the form of a
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`loop antenna and a secondary coil for wireless charging should be mounted in the
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`portable terminal.” Ex.1006, 1:54-59.
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`Park describes an improvement upon this known concept: “[T]he present
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`invention is to provide a portable terminal having a structure that facilitates
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`mounting of a secondary coil for wireless charging and a Near Field
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`Communication (NFC) antenna element, without increasing the thickness of the
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`portable terminal.” Ex.1006, 2:11-15. Park does this by having “a first coil for
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`wireless charging and a second coil for the NFC function on the same plane.”
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`Ex.1006, 5:63-65.
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`To form the wireless charging coil and NFC coil on the same plane, the
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`underlying shielding layer 131 includes recessed accommodation grooves: “The
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`shielding member 131 may be formed by injection molding, having first and
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`second accommodation grooves 141 and 142 on a surface thereof. The first and
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`second accommodation grooves 141 and 142 are circular in shape and recessed
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`into one surface of the shielding member 131.” Ex.1006, 3:35-39. “[T]he first coil
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`133 is accommodated in the first accommodation groove 141 and the second coil
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`135 is accommodated in the second accommodation groove 142.” Ex.1006, 3:56-
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`59. The device of Park is shown below.
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`wireless charging
`coil 133
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`NFC coil 135
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`recessed
`accommodation
`groove
`Ex.1006, Figs. 3 and 4 (annotated); Ex.1003, ¶ 47.
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`Accordingly, Park provides evidence that it was known for a portable device
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`to include both a wireless charging coil and a near field communication antenna,
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`particularly in recessed accommodation grooves on the same plane. Ex.1003, ¶ 48.
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`3.
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`Reasons to Combine Hong and Park
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`For the reasons set forth below, a POSITA would have been motivated to
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`combine the teachings of Park with those of Hong. Ex.1003, ¶ 49. In particular,
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`before the ’565 patent, it would have been obvious, beneficial, and predictable for
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`Hong’s device to include an NFC coil, as taught by Park. Ex.1003, ¶ 49.
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`As an initial matter, one of ordinary skill in the art when considering the
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`teachings of Hong would have also considered the teachings of Park. Ex.1003, ¶
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`50. Park is analogous prior art pertaining to the same field of endeavor, namely,
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`contactless charging via electromechanical induction. See Ex.1005, Abstract;
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`Ex.1006, Abstract; Ex.1003, ¶ 50. Specifically, both references describe a
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`contactless power apparatus having a power-receiving coil. Ex.1005, Fig. 3, 4:12-
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`67; Ex.1006, Abstract.
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`Hong notes that its contactless power apparatus may be implemented in the
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`context of a portable terminal. Ex.1005, Fig. 1. Park explains that “[a]s portable
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`terminals have become a daily commodity, they are equipped with the NFC
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`function.” Ex.1006, 1:29-33; see also id. 1:24-26 (“Recently, various functions
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`have been integrated in a single mobile communication terminal called a smart
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`phone.”). Park further explains that to implement an NFC-capable portable
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`terminal, the “portable terminal is provided with an additional antenna for
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`performing the NFC function.” Ex.1006, 1:31-33. Thus, as a baseline, it was well
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`known and obvious for a portable terminal, such as Hong’s, to include an NFC
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`antenna coil as well as a wireless charging coil. Ex.1003, ¶ 51.
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`One of ordinary skill in the art would have been specifically motivated to
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`
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`implement Hong’s device with an NFC coil because as of the earliest alleged
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`priority date of the ’565 patent, NFC was a standardized data transmission protocol
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`with a multitude of commercial applications and advantages over other short-range
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`wireless communication protocols. Ex.1003, ¶ 52 (citing Ex.1009, 2:9-26;
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`Ex.1010, 2:64-3:6, 3:66-4:11). For example, at the time, “familiar applications of
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`NFC protocol technology [were] electronic pass keys used in building security
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`systems, mass transit fare card systems, and smart credit cards which need only to
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`be brought close to a point of sale reader to complete a transaction.” Ex.1010, 4:7-
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`11; see also Ex.1006, 1:27-29. Relative to other short-range wireless protocols,
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`“NFC technology provides an advantage of fast communication setup between
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`communication devices.” Ex.1006, 1:33-36. Further, “the intuitive operation of
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`NFC protocol systems makes the technology particularly easy for consumers to use
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`(‘just touch and go’).” Ex.1010, 4:2-5. Accordingly, a person of ordinary skill in
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`the art would have been motivated to apply Park’s teachings regarding an NFC coil
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`to Hong’s portable device. Ex.1003, ¶ 52. Doing so would allow Hong’s mobile
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`device to be easily used for transactions in a variety of commercial applications.
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`Ex.1003, ¶ 52; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
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`(“[I]f a technique has been used to improve one device, and a person of ordinary
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`skill in the art would recognize that it would improve similar devices in the same
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`way, using the technique is obvious …”).
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`As an aspect of implementing Park’s teaching of an NFC coil in Hong’s
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`mobile device, a POSITA would have found it obvious to locate the NFC coil such
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`that it surrounds Hong’s power-receiving coil 16 in accommodating grooves, as
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`taught by Park. Ex.1003, ¶ 53. Specifically, Park teaches and illustrates in Figs. 3
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`and 4 (reproduced above) that its NFC coil 135 is “surrounding” its wireless
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`charging coil 133 in grooves 141 and 142. Ex.1006, 2:25-31, Figs. 3, 4. A POSITA
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`would have found it advantageous to use Park’s arrangement in which the NFC
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`coil surrounds the wireless power coil, due to the different frequencies at which the
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`different wireless protocols operate. See e.g., Ex.1019, 17:49-59 (“Since the NFC
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`antenna coil 41 has a higher frequency band than the wireless charger antenna coil
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`43, the NFC antenna coil 41 is formed … along the outside of the substrate 49 …
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`[and] the wireless charger antenna coil 43 is formed in the inside of the NFC
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`antenna coil 41.”). For this same reason, a POSITA would have arranged Hong’s
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`NFC coil to surround its power-receiving coil 16. Ex.1003, ¶ 53.
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`Similarly, one of ordinary skill in the art would have been specifically
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`motivated to utilize Park’s groove technique to implement an NFC transmission
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`coil in Hong because Park teaches a number of advantages associated with its
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`accommodation grooves. Ex.1003, ¶ 54. First, Park’s technique “facilitates
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`mounting of a secondary coil for wireless charging and a Near Field
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`Communication (NFC) antenna element, without increasing the thickness of the
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`portable terminal.” Ex.1006, 2:12-16, 5:62-65. To achieve this, Park’s coils are
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`placed into recessed accommodation grooves discussed above. Ex.1006, 3:35-39,
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`3:56-59. A POSITA would have been motivated to utilize Park’s groove technique
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`to reduce thickness in Hong because it furthers Hong’s explicit design goal of
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`“reduc[ing] a thickness of a portable terminal.” Ex.1005, 2:22-24; Ex.1003, ¶ 54.
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`Park also teaches that as part of its groove technique, a “shielding wall 137
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`is interposed between the first and second accommodation grooves 141 and 142.”
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`Ex.1006, 3:35-44. This shielding wall “provides a shielding effect between the
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`coils” which “shields interference of electronic waves between the first and second
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`coils 133 and 135.” Ex.1006, 3:61-4:1. “As a consequence, high power efficiency
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`and a sufficient recognition distance can be achieved for the wireless charging
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`function and the NF