`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`———————
`
`IPR2022-00351
`U.S. Patent No. 10,622,842
`
`
`
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ........................................................................... IV
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE PETITION ESTABLISHES THAT SUZUKI RENDERS
`OBVIOUS PLACING A WIRELESS CHARGING COIL AND
`COMMUNICATION ANTENNA ON A LAYER (GROUND 1) ................. 1
`
`A.
`
`B.
`
`Suzuki’s “Sixth” embodiment supports the obviousness
`combination of Ground 1 because it builds upon features
`described in previous embodiments. .................................................... 4
`
`Claim 7 is broad enough to encompass any interpretation of
`Suzuki. .................................................................................................. 9
`
`III.
`
`PARK IS PRIOR ART BECAUSE THE ’842 PATENT IS NOT
`ENTITLED TO ITS EARLIEST CLAIMED PRIORITY DATE
`(GROUND 2) .................................................................................................11
`
`A.
`
`B.
`
`Patent Owner did not meet its burden of production to show that
`Park is not prior art, nor could they have. .......................................... 14
`
`There is no evidence that the Examiner was aware of the new
`subject matter. .................................................................................... 16
`
`IV. THE PETITION ESTABLISHES THAT SUZUKI AND PARK
`RENDER OBVIOUS PLACING A WIRELESS CHARGING COIL
`AND COMMUNICATION ANTENNA ON THE SAME LAYER ............20
`
`A.
`
`B.
`
`Park’s groove technique provides shielding between the antenna
`and the wireless charging coil. ........................................................... 21
`
`Patent Owner mischaracterizes the Petition’s proposed
`combination as a bodily incorporation of Park’s shield layer into
`Suzuki’s device. .................................................................................. 24
`
`ii
`
`
`
`
`
`C.
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`The evidence shows that placing both an antenna and a power
`receiving coil on a layer was a commonly known, predictable, and
`obvious solution. ................................................................................ 26
`
`V.
`
`CONCLUSION ..............................................................................................29
`
`CERTIFICATE OF WORD COUNT ......................................................................30
`
`CERTIFICATE OF SERVICE ................................................................................31
`
`iii
`
`
`
`
`
`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
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent No. 10,622,842
`
`Prosecution History of U.S. Patent No. 10,622,842
`
`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Joshua Phinney
`
`U.S. 8,421,574 to Suzuki et al. (“Suzuki”)
`U.S. Patent No. 8,922,162 to Park et al. (“Park”)
`
`Prosecution History of U.S. Patent No. 10,153,666
`
`U.S. Patent No. 10,069,346
`U.S. Patent Publication No. 2010/0203831 to Muth (“Muth”)
`
`U.S. Patent No. 8,687,536 to Michaelis (“Michaelis”)
`
`Redline comparison between U.S. Patent No. 10,069,346
`specification in the issued patent (text taken from USPTO website)
`with the as-filed specification of U.S. Patent No. 10,153,666 (text
`taken from publication 2017/0338697 on the USPTO website,
`which represents the as-filed specification of the ’666 patent).
`
`Reserved.
`
`Reserved.
`Reserved.
`
`Scheduling Order, Scramoge Tech. Ltd. 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 Tech. Ltd. v.
`Apple Inc., WDTX-6-21-cv-00579 (served Sept. 7, 2021)
`
`Ex.1017
`
`Reserved
`
`iv
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`Reserved
`
`Reserved
`
`Order Cancelling Markman Hearing, Scramoge Tech. Ltd. v. Apple
`Inc., WDTX-6-21-cv-00579 (filed Sept. 28, 2021)
`Docket Sheet, Scramoge Tech. Ltd. v. Apple Inc., WDTX-6-21-cv-
`00579
`Order Setting Initial Case Management Conference and ADR
`Deadlines, Scramoge Tech. Ltd. v. Apple Inc., NDCA-22-cv-03041
`(filed May 24, 2022)
`Ricketts Deposition Transcript
`
`
`
`Ex.1018
`
`Ex.1019
`
`Ex.1020
`
`Ex.1021
`
`Ex.1022
`
`Ex.1023
`
`v
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Response (“Response,” Paper 17) presents arguments only
`
`with respect to claim 7. Patent Owner did not (and cannot now) present arguments
`
`with respect to any other challenged claim. See Scheduling Order, Paper 11 at 8
`
`(“any arguments not raised in the response may be deemed waived”).
`
`The Petition challenges Claim 7 as obvious over Suzuki (Ground 1) and
`
`obvious over Suzuki in view of Park (Ground 2). Patent Owner’s arguments with
`
`respect to both grounds fail to overcome the showing in the Petition that the
`
`concept of placing a wireless charging coil and communication antenna on the
`
`same layer was well known both (i) before the earliest claimed priority date of the
`
`’842 patent (Ground 1) and (ii) before the actual priority date of the ’842 patent
`
`(Ground 2).
`
`II. THE PETITION ESTABLISHES THAT SUZUKI RENDERS
`OBVIOUS PLACING A WIRELESS CHARGING COIL AND
`COMMUNICATION ANTENNA ON A LAYER (GROUND 1)
`
`In its mapping of claim 1 to Suzuki, the Petition explains that its coil block
`
`“includes a magnetic layer 171” (“first layer”) adjacent to the secondary coil 170
`
`(“wireless power receiving coil”). Ex.1005, 6:29-46; Petition, 21-23. Fig. 9
`
`illustrates the magnetic layer 171 and secondary coil 170.
`
`1
`
`
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`Petition, 23. Suzuki describes Fig. 9 under the heading “Second Embodiment.”
`
`Ex.1005, 9:9-23.
`
`
`
`In its mapping of claim 7, the Petition points to Suzuki’s data transmission
`
`coil 154 on magnetic layer 155 for the claimed “short range communication
`
`antenna on the first layer,” which is illustrated in Fig. 21. Petition, 32-35.
`
`2
`
`
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
` Suzuki describes Fig. 21 under the heading “Sixth Embodiment.” Ex.1005, 10:36-
`
`
`
`13:2.
`
`Although Suzuki describes the features relied upon in the mapping of claims
`
`1 and 7 under the “second” and “sixth” embodiment headings, these embodiments
`
`are presented in the context of the same “present invention,” where the sixth
`
`embodiment builds upon the previous embodiments. Ex.1005, 9:11-13, 10:38-40.
`
`Moreover, the recitation in claim 7 of the “short range communication antenna” on
`
`the same “first layer” as the “wireless power receiving coil” encompasses any
`
`reasonable interpretation given the lack of description of this arrangement in the
`
`’842 Patent specification.
`
`3
`
`
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`Suzuki’s “Sixth” embodiment supports the obviousness
`A.
`combination of Ground 1 because it builds upon features described in
`previous embodiments.
`
`The Response characterizes the Petition as “switching” to the sixth
`
`embodiment, where the “sixth embodiment does not satisfy claim 1 of the ’842
`
`patent and therefore cannot satisfy claim 7.” Response, 1, 14. Specifically, the
`
`Response alleges that “absent from the sixth embodiment are the structures of the
`
`second embodiment that Petitioner contends satisfy the ‘shielding unit’ and
`
`‘second layer’ limitations of the independent claim.” Response, 1.
`
`The Petition, however, does not “switch” to the “Sixth” embodiment—it
`
`simply cites to additional features that Suzuki contemplates as part of its “present
`
`invention.” Petition, 32-35; Ex.1005, 10:40. In the context of Suzuki’s full
`
`disclosure (including wireless power coil 170 on magnetic layer 171), the Petition
`
`and Dr. Phinney’s declaration explain that Suzuki’s data coil 154 on a magnetic
`
`layer is an “example” of why the claimed “short range communication antenna on
`
`the first layer” is obvious:
`
`Thus, because Suzuki teaches an example in which the device
`includes a coil for short range data transmission on a magnetic
`layer, Suzuki renders obvious “a short range communication
`antenna on the first layer” as claimed. Ex.1003, ¶ 72.
`
`Petition, 32-35, Ex.1003, ¶¶ 68-72.
`
`Even if the Petition did “switch” to the “Sixth” embodiment for claim 7
`
`4
`
`
`
`
`(which it does not), the “Sixth” embodiment further supports the prima facie case
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`of obviousness because it includes and builds upon the features described in
`
`previous embodiments. Suzuki contemplates that the “Sixth” includes features
`
`from previous embodiments, including the shield layer 172 (“shielding unit”) and
`
`the radiation layer 174 (“second layer”), as illustrated in Fig. 9 under the “Second
`
`Embodiment” heading. Suzuki differentiates the “Sixth” embodiment over the
`
`previous embodiments by adding a plurality of magnetic layers to both the primary
`
`and secondary sides. Ex.1005, 10:65-67.
`
`In more detail, when introducing the “Sixth” embodiment on column 10,
`
`Suzuki recaps the features of the “first-fifth embodiments” that make up the
`
`“present invention” and then, in the last three lines of column 10, notes how the
`
`sixth embodiment is different:
`
`5
`
`
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`Recap of first-fifth
`embodiment
`
`Sixth
`embodiment
`
`Ex.1005, 10:38-67 (annotated).
`
`
`
`As part of the explanation of the first-fifth embodiments, Suzuki notes that a
`
`shield layer by itself may have difficulty “fully eliminating noise.” Ex.1005, 10:57-
`
`62. Before introducing the differences of the sixth embodiment, Suzuki states that
`
`the “present invention” generally may include a plurality of magnetic layers to
`
`“further” reduce noise: “[I]n order to further reduce the influence of noise, at least
`
`6
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`
`secondary side of the present invention includes a plurality of magnetic
`
`layers.” Ex.1005, 10:63-65. In other words, Suzuki contemplates that its invention
`
`generally includes both a shield layer and a plurality of magnetic layers on the
`
`secondary side for better noise reduction. After this explanation of the “present
`
`invention,” Suzuki then specifically notes that the sixth embodiment adds a
`
`plurality of magnetic layers on “each” of the primary and secondary sides: “In the
`
`sixth embodiment, each of the primary and secondary sides includes a plurality of
`
`magnetic layers.” Suzuki 10:65-67. Accordingly, contrary to Patent Owner’s
`
`contentions, nowhere does “Suzuki make[] explicitly clear that the shield layer 172
`
`is not necessary” “[w]hen the multiple magnetic layers of the sixth embodiment are
`
`used.” Response, 18. Rather, Suzuki explains in column 10 that the sixth
`
`embodiment adds features—it does not remove them. Dr. Phinney confirmed as
`
`much when questioned during his cross-examination, explaining that the sixth
`
`embodiment is a “further refinement of what has been described previously in
`
`those other embodiments, and it can be applied to those other embodiments.”
`
`Ex.2020, 21.
`
`Patent Owner’s various attempts to obscure Suzuki’s clear disclosure fail
`
`under scrutiny. First, Patent Owner argues that “the unnecessary addition of the
`
`shield layer to the plurality of magnetic layers will only increase the thickness of
`
`the receiving block structure, without any benefit.” Response, 17-18. But this
`
`7
`
`
`
`
`argument ignores Suzuki’s explicit teaching that Suzuki’s invention as a whole
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`already includes multiple magnetic layers at least on the secondary side. Ex.1005,
`
`10:63-65 (“in order to further reduce the influence of noise, at least secondary side
`
`of the present invention includes a plurality of magnetic layers”). There is thus no
`
`basis for Patent Owner’s claim that a shield layer and multiple magnetic layers
`
`problematically increases the thickness of Suzuki’s device.
`
`Further, Patent Owner’s narrow interpretation of Suzuki in which any
`
`feature not explicitly shown or described cannot be included in an embodiment is
`
`unsupported. Patent Owner cites Dr. Ricketts’ statement that “[t]o the extent a
`
`particular element from the first embodiment is not disclosed in the figures or
`
`written description for this embodiment, a POSITA would understand that it is not
`
`included in this embodiment.” Response, 9-10, citing Ex.2017, ¶ 64. But nothing in
`
`Suzuki supports that interpretation—just the opposite. For example, the second
`
`embodiment (Fig. 9) illustrates and describes only the “power receiver”
`
`(secondary) side of Suzuki’s power transmission apparatus, but that does not mean
`
`the embodiment does not include all of the elements of the primary side that are
`
`not explicitly shown. See Ex.1005, 9: 9-23.
`
`Because the sixth embodiment builds upon previous embodiments, the
`
`Petition’s reliance on features described under Suzuki’s “sixth embodiment”
`
`heading is not an improper combination of embodiments. Rather, Suzuki’s sixth
`
`8
`
`
`
`
`embodiment, which includes the features of previous embodiments, further
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`confirms that concept of having a data coil and an antenna on a layer would have
`
`been obvious.
`
` Accordingly, as set forth in the Petition, Suzuki renders obvious “a short-
`
`range communication antenna on the first layer” of claim 7.
`
`B. Claim 7 is broad enough to encompass any interpretation of
`Suzuki.
`
`As noted above, independent claim 1 recites a “wireless power receiving coil
`
`on the first layer.” Claim 7 further recites “a short range communication antenna
`
`on the first layer.” The figures of the ’842 patent never illustrate a wireless power
`
`receiving coil and a short range communication antenna on the same layer. Nor
`
`does it contemplate how they might both be arranged on the same layer—for
`
`instance within printed circuit board 301 in Fig. 10. Ex.1001, 8:44-49 (“Referring
`
`to FIG. 10, the printed circuit board 301 comprises a plurality of layers …, the
`
`short-range communication antenna 340 or the receiving coil 310 (not shown in
`
`the FIG. 10) is disposed in the printed circuit board 301.”). Without any guidance
`
`from the specification, claim 7 encompasses any reasonable interpretation.
`
`Further, when the ’842 Patent figures do illustrate both the data coil and
`
`power coil together in the same device, they are disposed in a non-contiguous
`
`manner. For example, as shown in Fig. 7 below, the wireless charging coil 310 is
`
`9
`
`
`
`
`in the “reception space A” and thus separated from short range communication
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`antenna 340 embedded in printed circuit board 301.
`
`Ex.1001, Fig. 7 (annotated), Petition, 43.
`
`
`
`Given the broad scope of claim 7, Suzuki’s secondary coil 170 and data coil
`
`154 on a magnetic layer (155 and 171) render the claim obvious. The Petition
`
`explains that “magnetic layer 171 and the magnetic layer 155 are on the same
`
`plane and together represent a ‘first layer’ as claimed.” Petition, 34. While the
`
`petition illustrates—as a visual tool—that Suzuki shows the magnetic layers 171
`
`and 155 on the same plane, nothing in the claim language requires the claimed
`
`“first layer” to precisely exist within a single plane. Regardless of whether real-life
`
`implementations of Suzuki’s concept may vary from the magnetic layers 171 and
`
`154 being coplanar, a reasonable interpretation of the term “layer” in light of the
`
`specification encompasses Suzuki’s magnetic layers 171 and 154 illustrated in Fig.
`
`21. Petition, 34.
`
`Patent Owner further points to Suzuki’s data coil 154 and secondary coil 170
`
`10
`
`
`
`
`being different thicknesses. See Response, 15-16. The Petition’s obviousness
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`analysis, however, does not depend on the coils having the same thickness. Rather,
`
`the Petition merely notes that magnetic layer 171 and magnetic layer 155 together
`
`teach the claimed “first layer.” Petition, 34. And, in Fig. 17A, where the magnetic
`
`layer 171 is illustrated as subcomponents 171H and 171L, Suzuki’s magnetic layer
`
`155 along with 171H, 171L, or both (171) teach a “first layer” as claimed.
`
`Ex.1005, Fig. 17A.
`
`In short, nothing in the claim limits whether the claimed “first layer” must
`
`be contiguous, in the same plane, or of the same thickness. Nor does the claim
`
`place any limit on the size or thickness of the “receiving coil” or the “short range
`
`communication antenna.” Accordingly, the Petition establishes that Suzuki renders
`
`obvious precisely what is broadly claimed—a short range communication antenna
`
`and a power receiving coil on a layer.
`
`III. PARK IS PRIOR ART BECAUSE THE ’842 PATENT IS NOT
`ENTITLED TO ITS EARLIEST CLAIMED PRIORITY DATE (GROUND
`2)
`
`As discussed above, the specification of the ’842 Patent never illustrates
`
`both the wireless power coil and the short range communication antenna on the
`
`same contiguous magnetic layer. That is because the early applications in the ’842
`
`patent family never contemplated such a configuration, explicitly or inherently.
`
`Rather, as explained in the Petition, such applications exclusively depicted and
`
`11
`
`
`
`
`described the short-range communication antenna 340 as “embedded” in the
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`printed circuit board 301 and the power receiving coil 310 as separately “placed
`
`in” reception space A in the printed circuit board 301, as shown below. Ex.1001,
`
`5:7-58, Figs. 6, 7.
`
`printed circuit board 301
`short range
`comm. antenna 340
`
`reception space A
`
`power receiving coil 310
`
`printed circuit board 301
`
`embedded short range
`comm. antenna 340
`
`reception space A
`
`power receiving coil 310
`in reception space
`Ex.1001, Figs. 6, 7 (annotated); Ex.1003, ¶ 95.
`
`
`
`The claimed concept of also embedding the power receiving coil 310 in the layers
`
`12
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`
`of printed circuit board 301 was first introduced in the as-filed specification of the
`
`immediate parent to the ’842 Patent on August 10, 2017, referred to as the ’666-C
`
`Patent:
`
`Ex.1007, 309 (highlights indicate added text not present in previous
`specifications).
`
`
`
`See Ex.1011, 10 (redline comparison between ’346-B specification in the issued
`
`patent with the specification filed with the ’666-C patent application). Petition, 40-
`
`43. This added text in the ’666-C patent application is the only support for the
`
`claimed subject matter of a “wireless power receiving coil” embedded in a multi-
`
`layer configuration, as explained with detailed analysis and expert declaration
`
`support. Petition, 40-45; Ex.1003, ¶¶ 90-98. Accordingly, the claims of the ’842
`
`patent are only entitled at the earliest to the filing date of the’666-C patent, August
`
`10, 2017.
`
`
`
`In its Response, Patent Owner fails to identify any subject matter in the
`
`earlier applications that would indicate the ’842 patent is entitled to an earlier
`
`priority date—and thus fails to meet its burden of production. Instead, Patent
`
`Owner argues that the Examiner supposedly recognized and blessed the addition to
`
`13
`
`
`
`
`the specification, but that is demonstrably not true.
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`Patent Owner did not meet its burden of production to show that
`A.
`Park is not prior art, nor could they have.
`
`“Although the burden of persuasion as to patentability remains on petitioner,
`
`the burden of production may shift to the patent owner, for example, to support a
`
`position that the claims of a challenged patent are entitled to the benefit of an
`
`earlier effective filing date to potentially remove an asserted reference as prior art.”
`
`G&H Diversified Manufacturing, LP v. Dynaenergetics Eur. Gmbh, PGR2021-
`
`00078, Paper 44 at 12 (Oct. 28, 2022) (citing Dynamic Drinkware, LLC v. Nat’l
`
`Graphics, Inc., 800 F.3d 1375, 1378-80 (Fed. Cir. 2015)). “The burden of
`
`production may entail producing additional evidence and presenting persuasive
`
`argument based on new evidence or evidence already of record.” Dynamic
`
`Drinkware, 800 F.3d at 1379 (internal quotations omitted).
`
`Here, Petitioner met its initial burden by presenting evidence that Park is
`
`prior art through its detailed analysis of the file history and supporting declaration
`
`evidence. Petition, 40-45; Ex.1003, ¶¶ 90-98. The burden of production thus
`
`shifted to Patent Owner to present evidence to the contrary—but it failed to meet
`
`that burden. See Unified Patents v. American Patents LLC, IPR2019-00482, Paper
`
`132 at (Aug. 3, 2022) (“Petitioner met its initial burden of presenting evidence that
`
`Templin is prior art, shifting the burden of production to Patent Owner.”) (citing
`
`14
`
`
`
`
`Dynamic Drinkware, 800 F.3d at 1379). The Response contains no evidence
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`attempting to show § 112 written description support for the challenged claims of
`
`the ’842 Patent in any application filed prior to the Park reference. For example,
`
`Patent Owner does not identify anything in the specifications before the ’666-C
`
`patent that would support the claimed concept of placing a “wireless power
`
`receiving coil” within a printed circuit board rather than in a distinct reception
`
`space within the board (as shown in Figs. 6 and 7). Instead, Patent Owner merely
`
`alleges that “Petitioner fails to provide any reason why Figure 10’s teaching of
`
`incorporating the ‘short-range communication antenna 340’ into the circuit board
`
`310 cannot be used interchangeably with the ‘receiving coil 310’ based on the
`
`inherent disclosure of the originally filed specification.” Response, 20. This vague
`
`reference to “inherent disclosure” hardly satisfies Patent Owner’s burden to
`
`produce “additional evidence and present[] persuasive argument based on new
`
`evidence or evidence already of record.” Dynamic Drinkware, 800 F.3d at 1379.
`
`Patent Owner has thus failed to “bear[] the burden of establishing that its claimed
`
`invention is entitled to an earlier priority date than [the] asserted prior art
`
`reference,” Park. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed.
`
`Cir. 2016).
`
`Further, even if a vague appeal to inherency was sufficient to meet its
`
`burden, Patent Owner also failed to meet the high threshold associated with
`
`15
`
`
`
`
`inherency. “To establish inherency, the extrinsic evidence ‘must make clear that
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`the missing descriptive matter is necessarily present in the thing described in the
`
`reference, and that it would be so recognized by persons of ordinary skill.
`
`Inherency, however, may not be established by probabilities or possibilities. The
`
`mere fact that a certain thing may result from a given set of circumstances is not
`
`sufficient.’” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
`
`Cir. 1999) (citations omitted) (emphasis added). Patent Owner’s unsupported
`
`suggestion that the antenna in the printed circuit board may somehow be replaced
`
`with a power receiving coil is just that, a suggestion. The Response includes no
`
`extrinsic evidence to make clear that the missing description of the receiving coil
`
`310 in the circuit board 310 is “necessarily present.”
`
`There is no evidence that the Examiner was aware of the new
`B.
`subject matter.
`
`Patent Owner additionally argues that “the Examiner of the ’763 application
`
`recognized the supposedly-offending addition to the specification and that the
`
`embedding of a power receiving coil 310 was inherently disclosed in the
`
`originally-filed parent specification.” Response, 20. This argument fails even under
`
`the lightest of scrutiny.
`
`The Response quotes a rejection of the pending claims from January 10,
`
`2018, in which the Examiner states “This application repeats a substantial portion
`
`16
`
`
`
`
`of prior Application No.13/658,116, filed 10/23/12 and adds disclosure not
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`presented in the prior application.” Response, 20-21 (quoting Ex. 1007 at 181)
`
`(emphasis added by Patent Owner). Patent Owner alleges that “[t]he ‘disclosure
`
`not presented’ in the prior application could only refer to the supposedly-offending
`
`addition.” Response, 21. This is objectively not true, as the Examiner explicitly
`
`states later in the same paragraph that the new disclosure, he is referring to is in the
`
`“claims”:
`
`The area of concern is the claims which seem to recite subject
`matter not found in the originally filed disclosure. In other
`words, the claims are directed to an embodiment not previously
`disclosed in the chain of continuity and seem to represent new
`matter.
`
`Ex.1007, 181 (emphasis added). Because of this “new matter” in the claims, the
`
`Examiner rejected claims 1-29 under § 112 as failing to comply with the written
`
`description requirement. Ex.1007, 182-186. The specification was objected to “as
`
`failing to provide proper antecedent basis for the claimed subject matter”—not
`
`because it contained the added text. Ex.1007, 182. In fact, when explaining why
`
`the specification did not support the rejected claims, the Examiner quoted the
`
`added text as if it had always been part of the common specification supporting the
`
`patent family:
`
`17
`
`
`
`
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`Regarding the "new matter" rejection of claims 1-29, the
`examiner has carefully considered the claims and reviewed the
`disclosure multiple times and simply is at a loss to find where the
`claimed configuration can be found. A text search of the
`specification shows that the word "layer" is missing and does not
`appear a single time. …
`
`The discussion of Figure 10 [0084] spans 8 lines and describes
`how the short range communication antenna (340) or receiving
`coil (310-not shown in Figure 10) is disposed in the printed
`circuit board (301) and the shielding unit (380) may be inserted
`into the printed circuit board (301). As noted already, the word
`"layer" is missing and the descriptions noted do not lend
`themselves to readily interpret what a "layer" may be considered
`to be in Figures 9 and 10.
`
`Ex.1007, 183-184. The rejection of January 10, 2018 thus indicates that the
`
`Examiner was unaware the that text “or the receiving coil (310)(not shown in the
`
`Fig. 10) in” was added to the as-filed specification of the ’666-C patent.
`
`The remaining quotes from the prosecution history cited in the Response are
`
`all associated with the Applicants amending the specification in an attempt to
`
`support the rejected claims. For example, in the Examiner Interview of March 29,
`
`2018, the Examiner tacitly approved the Applicants’ plan to amend the
`
`specification to describe “inherent” properties of Figures 9 and 10, which would
`
`“overcome all outstanding issues.” Ex.1007, 63. In the next response, the
`
`18
`
`
`
`
`Applicants submitted the proposed amendments, stating that “the sentences added
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`to paragraphs [0083] and [0084] by this Amendment are only to clarify and
`
`describe features that were already shown in Figures 9 and 10 and/or inherent.”
`
`Ex.1007, 37. The subject matter upon which the claims of the ’842 patent rely was
`
`not added with these “inherent” amendments—it had been previously added when
`
`the ’666-C application was filed, as indicated in Applicants’ response that does not
`
`underline the text “or the receiving coil (310)(not shown in the Fig. 10)” in
`
`paragraph [0084]:
`
`Ex.1007, 34.
`
`Accordingly, contrary to Patent Owner’s contentions, the Examiner did not
`
`consider the text added to the as-filed ’666-C application to be inherent. There’s no
`
`
`
`19
`
`
`
`
`indication that he was even aware of such text—nor should he have been. The
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`Applicants represented that it was a “continuation application” with disclosure “the
`
`same as that of the parent applications”:
`
`
`
`Ex.1007, 37.
`
`Accordingly, the claims of the ’842 patent are only entitled at the earliest to
`
`the filing date of the ’666-C patent, August 10, 2017. 35 U.S.C. § 120; In re Chu,
`
`66 F.3d 292, 297 (Fed. Cir. 1995) (holding that a CIP application “cannot obtain
`
`the benefit of the [parent] patent filing date” because the “invention as now
`
`claimed[] was not described in the [parent] patent).
`
`IV. THE PETITION ESTABLISHES THAT SUZUKI AND PARK
`RENDER OBVIOUS PLACING A WIRELESS CHARGING COIL AND
`COMMUNICATION ANTENNA ON THE SAME LAYER
`
`When the ’842 Patent is given its actual priority date, Park illustrates that the
`
`concept of placing a wireless charging coil and communication antenna on a single
`
`20
`
`
`
`
`contiguous magnetic layer was not new. The Response fails to rebut this prima
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`facie showing of obviousness.
`
`Park’s groove technique provides shielding between the antenna
`A.
`and the wireless charging coil.
`
`The Petition establishes that it would have been obvious for Suzuki’s device
`
`to utilize Park’s technique of placing both a communication antenna and wireless
`
`power receiving coil on a contiguous layer. Petition, 47-51. One noted reason a
`
`POSITA would have been motivated to make such a combination would have been
`
`Park’s groove technique. Petition, 49. Park teaches that as part of its groove
`
`technique, a “shielding wall 137 is interposed between the first and second
`
`accommodation grooves 141 and 142.” Ex.1006, 3:35-44. This shielding wall
`
`“provides a shielding effect between the coils,” which “shields interference of
`
`electronic waves between the first and second coils 133 and 135.” Ex.1006, 3:61-
`
`4:1. “As a consequence, high power efficiency and a sufficient recognition distance
`
`can be achieved for the wireless charging function and the NFC function,
`
`respectively.” Ex.1006, 6:6-9.
`
`The Institution Decision expresses that “[i]t is not clear why adding Park’s
`
`shielding wall to Suzuki’s device would improve Suzuki’s device when it already
`
`includes a shield layer.” Decision, 26. Patent Owner similarly notes that “the shield
`
`layer surrounds coil 170 at its circumference, just as the shielding wall 137 of Park
`
`21
`
`
`
`
`surrounds the coil 133 at its circumference.” Response, 27. The shield wall 137 in
`
`IPR2022-00351 / U.S. Patent No. 10,622,842
`Petitioner’s Reply to Patent Owner’s Response
`
`Park and the shield layer 172 in Suzuki, however, are disposed in different
`
`locations relative to the coil, serve different functions, and are made of different
`
`materials.
`
`First, Suzuki’s shield layer 172 is disposed beneath the wireless power coil
`
`170 such that it is between the coil and a “load 162” (i.e., the “battery pack” to be
`
`charged by the coil). Ex.1005, 5:50-51, Fig. 9.
`
`wireless power
`receiving coil 170
`magnetic layer 171
`(first layer)
`shielding unit 172
`
`Ex.1005, Fig. 9 (annotated); Ex.1003, ¶ 48.
`
`
`
`Suzuki’s shield layer 172 comprises a metal material, such as “copper foil or
`
`alumin
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
