UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`______________
`
`IPR2022-00351
`Patent No. 10,622,842
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
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`
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`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`______________
`
`IPR2022-00351
`Patent No. 10,622,842
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
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`Table of Contents
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`Introduction ........................................................................................................ 1
`I.
`II. With Respect to Claim 7, Ground 1 Fails Because The Petition’s
`Rationale To Consider Suzuki’s Sixth Embodiment In Light Of The
`Second Embodiment Is Unsupported .................................................................. 1
`III. Ground 2 Fails Because Park Is Not Prior Art And The Petition’s
`Rationale To Combine Suzuki With Park Is Unsupported ................................. 8
`A. Park Is Not Prior Art To The ’842 Patent ...................................................... 9
`B. A POSITA Would Not Be Motivated To Combine Suzuki With Park ........ 12
`IV. Conclusion ....................................................................................................... 15
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`i
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
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`Table of Authorities
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ............................................................................. 5
`
`
`Commonwealth Sci. & Indus. Rsch. Organisation v. Buffalo Tech. (USA), Inc.,
`542 F.3d 1363 (Fed. Cir. 2008) ............................................................................. 9
`
`
`G&H Diversified Manufacturing, LP v. Dynaenergetics Eur. Gmbh,
`PGR2021-00078, Paper 44 at 13-16 (PTAB Oct. 28, 2022) ............................ 9-10
`
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) .......................................................................... 3-4
`
`
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) ............................................................................. 3
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 3
`
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ........................................................................... 4, 5
`
`
`Unified Patents v. American Patents LLC,
`IPR2019-00482, Paper 132 at 15 (PTAB Aug. 3, 2022) .................................... 10
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`ii
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`Exhibit No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
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`Exhibits
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`Description
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Apple Inc.,
`Case No. 6:21-cv-00579-ADA, Dkt. No. 35 (W.D. Tex. Nov. 11,
`2021)
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 33 (W.D. Tex. Sept. 28,
`2021)
`Law360 Article: West Texas Judge Says He Can Move Faster
`Than PTAB
`Text Order Denying Motion to Stay Pending IPR, Solas OLED
`Ltd. v. Google, Inc., Case No. 6:19-cv-00515-ADA (W.D. Tex.
`June 23, 2020)
`Order Denying Motion to Stay Pending IPR, Multimedia Content
`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-
`00207-ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019)
`Scheduling Order, Correct Transmission LLC v. Adtran, Inc.,
`Case No. 6:20-cv-00669-ADA, Dkt. No. 34 (W.D. Tex. Dec. 10,
`2020)
`Scheduling Order, Maxell Ltd. v. Amperex Technology Ltd., Case
`No. 6:21-cv-00347-ADA, Dkt. No. 37 (W.D. Tex. Nov. 8, 2021)
`Standing Order Governing Proceedings in Patent Cases, Judge
`Alan D. Albright
`Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case
`No. 6:19-cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30,
`2020)
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Apple Inc. in Scramoge Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-00579-ADA (W.D. Tex.)
`Defendant Apple Inc.’s First Amended Preliminary Invalidity
`Contentions in Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA (W.D. Tex.)
`Android Authority article: LG Innotek’s Latest wireless charger
`is Three times faster
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 28 (W.D. Tex. Nov. 15,
`2021)
`
`
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`iii
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-00579-ADA
`(W.D. Tex.)
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-00579-ADA, Dkt. No. 56 (W.D. Tex. Feb. 11,
`2022)
`Declaration of John Petrsoric in Support of Motion for
`Admission Pro Hac Vice
`Declaration of David S. Ricketts, Ph.D.
`Curriculum Vitae of David S. Ricketts, Ph.D.
`Excerpts of Elements of Electromagnetics, Matthew N. O.
`Sadiku
`November 1, 2022 Deposition Transcript of Joshua Phinney,
`Ph.D.
`
`iv
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`2014
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`2015
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`2016
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`2017
`2018
`2019
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`2020
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
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`I.
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`Introduction
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`Patent Owner hereby responds to the arguments raised in Petitioner’s Reply
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`to Patent Owner’s Response, Paper No. 22 (“Reply”). As set forth in Patent Owner’s
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`Response, Paper No. 17, Ground 1 with respect to dependent claim 7 of U.S. Patent
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`No. 10,662,842 (the “’842 patent”) fails because Petitioner cannot show that the
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`sixth embodiment of Suzuki satisfies the limitations of claim 1 (from which claim 7
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`depends). Petitioner likewise cannot show that a POSITA would be motivated to
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`combine the second and sixth embodiments of Suzuki.
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`Petitioner’s Ground 2 fails because Petitioner cannot show that Park is prior
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`art to the ’842 patent. Even if Park were prior art, Petitioner still has not shown that
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`a POSITA would not be motivated to make the proposed combination of Park with
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`Suzuki, given Suzuki’s teachings and the detrimental effects of the combination on
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`Suzuki’s power and data receiving apparatus.
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`For the reasons explained in detail below, and the reasons set forth in Patent
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`Owner’s Response, the Petition fails to establish that challenged claim 7 is
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`unpatentable. The Board should find challenged claim 7 not unpatentable.
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`II. With Respect to Claim 7, Ground 1 Fails Because The Petition’s
`Rationale To Consider Suzuki’s Sixth Embodiment In Light Of The
`Second Embodiment Is Unsupported
`As set forth in Patent Owner’s Response, with respect to claim 7, Petitioner
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`relies on the sixth embodiment in Suzuki and Fig. 21, in particular, for an
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`1
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`electromagnetic induction power receiving device that includes a coil for short-range
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`data communication. Patent Owner’s Response at 12. But Petitioner relies on the
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`second embodiment of Suzuki for the independent claim from which claim 7
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`depends. Id., at 11. Petitioner revisits these embodiments in Reply, but now refers
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`to the disclosures related to each embodiment as being “under [a] heading” in
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`Suzuki’s disclosure. More specifically, Petitioner refers to Fig. 9 as being “under
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`the heading ‘Second Embodiment’” and Fig. 21 as being “under the heading ‘Sixth
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`Embodiment’” Reply at 2, 3. This reference to Suzuki’s “headings” is an
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`obfuscation of Suzuki’s clear description and delineation of the specific design,
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`structures, materials, and operation of its six embodiments. See, e.g., Ex. 2017,
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`Declaration of David S. Ricketts, Ph.D. (“Ricketts Decl.”), ¶¶ 52-70.
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`Petitioner now asserts that it “does not ‘switch’ to the ‘Sixth’ embodiment [for
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`claim 7]—it simply cites to additional features that Suzuki contemplates as part of
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`its ‘present invention.’” Reply at 4; see also id. at 3 (citing Ex. 1005, 9:11-13, 10:38-
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`40). Petitioner ignores that these cited discussions of the “present invention” in
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`Suzuki are within the context of each of the specific embodiments, e.g., “FIG. 9
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`shows a power receiver in contactless power transmission apparatus in accordance
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`with a second embodiment of the present invention.” Ex. 1005, 9:11-13. Indeed,
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`Suzuki repeats the description “in accordance with the [nth] embodiment of the
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`present invention” for all of the embodiments. See id., 4:46-48, 9:11-13, 9:26-27,
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`2
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`9:43-45, 9:66-10:1, 10:38-40. In doing so, Suzuki is clearly referring to the “present
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`invention” as it relates to each embodiment, not the patent as a whole. Many of the
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`embodiments add, remove or substitute materials or structural components found in
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`the other embodiments. To read these descriptions as all concerning the same
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`“invention,” as Petitioner suggests, would result in the nonsensical result that every
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`feature disclosed in the specification is a critical feature, even where contradictory
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`or inconsistent. Each embodiment stands on its own.
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`Moreover, the Petition misstates the teachings of Suzuki by improperly
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`combining features of different embodiments without pointing to any teaching in
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`Suzuki, or any other art, that suggests such a combination is appropriate.
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`Specifically, for claim 7, the Petition proposes to add elements from the sixth
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`embodiment to the second embodiment without ever addressing the consequences
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`of doing so. The Petition is completely silent as to how or why Suzuki’s distinct
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`embodiments could (or would) be combined.
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`For obviousness grounds, even single reference obviousness, the Board
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`“consider[s] whether a POSITA would have been motivated to combine the prior art
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`to achieve the claimed invention.” In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
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`1333 (Fed. Cir. 2016) (internal quotation marks, brackets, and citation omitted); see
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`also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “Even when
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`obviousness is based on a single prior art reference, there must be a showing of a
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`3
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`suggestion or motivation to modify the teachings of that reference.” In re Kotzab,
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`217 F.3d 1365, 1370 (Fed. Cir. 2000).
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`For claim 7 of the ’842 patent, Petitioner relies on elements of the second and
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`sixth embodiment. In particular, Petitioner asserts that it would have been obvious
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`to a POSITA to combine the data coil feature of the sixth embodiment with the
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`second embodiment that the Petition relies on exclusively to challenge claim 1.
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`Petitioner was therefore required to articulate a rationale for combining the data coil
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`features of the sixth embodiment with the second embodiment. In re Kotzab, 217
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`F.3d at 1370-71. Petitioner never addresses how or why a POSITA would make
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`these modifications. This conclusory analysis fails. Personal Web Techs., LLC v.
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`Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017) (rejecting “reasoning [that] seems
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`to say no more than that a skilled artisan, once presented with the two references,
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`would have understood that they could be combined”).
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`Additionally, the sixth embodiment is the first embodiment to introduce
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`multiple magnetic layers to reduce noise and enhance the reliability of data
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`communications, and it avoids the use of the shielding layer 172 and radiation layer
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`174 that the Petition relies on for elements of claim 1. Petitioner not only fails to
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`provide any rationale for combining the embodiments of Suzuki, but also fails to
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`address these critical differences between the embodiments. Accordingly, the
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`4
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`Petition additionally fails for this reason. Id.; see also, Arendi S.A.R.L. v. Apple Inc.,
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`832 F.3d 1355, 1361-62 (Fed. Cir. 2016).
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`Recognizing the inadequacy of the Petition, Petitioner asserts that such an
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`analysis was unnecessary because the sixth embodiment “includes and builds upon
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`the features described in previous embodiments.” Reply at 5. More specifically,
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`Petitioner alleges that the sixth embodiment includes shield layer 172 and radiation
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`layer 174 and is only differentiated from the first through fifth embodiments “by
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`adding a plurality of magnetic layers to both the primary and secondary sides.” Id.
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`This is demonstrably false. The plurality of magnetic layers in the sixth embodiment
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`is not an addition—it is a substitution for at least the single magnetic layer and
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`shielding layer structure of the first through fifth embodiments.
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`As to the first through fifth embodiments, Suzuki notes that “each secondary
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`side includes a secondary coil, a magnetic layer laminated on at least one side of the
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`secondary coil, and a shield layer laminated on the magnetic layer.” Ex. 1005,
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`10:45-48. In its Reply, Petitioner presents this portion as part of the “Recap of first-
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`fifth embodiment.” Reply at 6 (annotating Ex. 1005 at 10:43-65). Petitioner’s
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`“Recap” annotation is misleading. While lines 43 to 56 do summarize the basic
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`structure of the first-to-fifth embodiments, lines 57 to 62 are not a summary but in
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`fact are a critique of those embodiments—where the housings in between the
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`primary and secondary coils reduce coupling and increase magnetic flux leakage that
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`5
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`the shield layer has difficulty eliminating. See Ex. 1005, 10:57-62. The next
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`sentence provides the solution: a plurality of magnetic layers on at least the
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`secondary side. See id., 10:63-65.
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`Suzuki next describes in detail the structure of the plurality of magnetic layers
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`with respect to Figures 17A and 17B which “show the essential parts of contactless
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`power transmission apparatus in accordance with” this sixth embodiment. Ex. 1005,
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`10:38-40; see also 10:65-11:49 (describing details of structure, materials, and size
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`of multiple magnetic layers of sixth embodiment). Conspicuously absent from the
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`figures and description of the sixth embodiment is the discussion of the use of a
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`shielding layer 172. Petitioner would have the Board accept that “Suzuki
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`contemplates that its invention generally includes both a shield layer and a plurality
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`of magnetic layers,” Reply at 7, but Suzuki’s omission of the shielding layer 172
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`from the figures of the sixth embodiment (that show the “essential parts” of the
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`embodiment) is telling, especially when compared with the figures of every other
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`embodiment that show the shielding layer 172 as an “essential part” of those
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`embodiments. See, e.g., Ex. 1005 at Fig. 3, 3:61-62, Fig. 9, 4:7-10, Fig. 11, 4:15-
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`16, Fig. 13, 4:20-21, Figs. 15A and 15B, 4:25-26. As such, a POSITA would
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`understand that Suzuki is not teaching the use of shielding layer 172 in the sixth
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`embodiment. Ex. 2017, 64.
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`6
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`Petitioner also asserts that “Suzuki’s invention as a whole already includes
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`multiple magnetic layers at least on the secondary side.” Reply at 8 (citing to Ex.
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`1005, 10:63-65). Petitioner relies on the reference to the “present invention” to
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`conclude that every embodiment includes a plurality of magnetic layers. This cannot
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`be. First, that discussion of the “present invention” is within the context of “the sixth
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`embodiment of the present invention,” Ex. 1005, 4:29-31, 10:38-40. Second, the
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`sentence follows the summary of the first through fifth embodiments, each of which
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`has a single magnetic layer on the secondary side, and Suzuki’s critique of those
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`embodiments because the shield layer has difficulty eliminating the increased
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`magnetic flux leakage. See Ex. 1005, 10:57-62.
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`Only the sixth embodiment discloses a plurality of magnetic layers, and it does
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`not “build upon” the previous embodiments—even if it includes some basic
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`elements from previous embodiments (e.g., coils, housing, types of magnetic
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`material), it proposes a new structure to increase coupling and reduce magnetic flux
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`leakage and noise. See Ex. 1005, 3:25-41 (describing how multiple magnetic layers
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`and sizing of those layers is used to reduce noise), 12:28-40 (same) Abstract. Only
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`then does Suzuki introduce the “second aspect” of the sixth embodiment, the use of
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`antennas and coils for data transmission in the vicinity of the magnetic layers. See,
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`e.g., Ex. 1005, 3:42-46, 12:41-64. “[T]he magnetic layer 171L is located in the
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`vicinity of the antenna 153 between the secondary coil 170 and the antenna 153.
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`7
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`Accordingly, it is possible to prevent noise from entering the antenna 153 from the
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`secondary coil side.” Id., 12:46-50.
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`As set forth above, and in the Patent Owner’s Response, the shield layer 172
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`and the radiation layer 174 do not exist in the sixth embodiment. By reference to
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`the sixth embodiment, Petitioner can no longer show that the [1.1] “shielding unit”
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`and [1.4] “second layer,” as well as subsequent limitations, are satisfied. The
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`Petition also does not present any rationale, let alone an adequate rationale, for how
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`and elements of the two embodiments would be combined. The Petition fails to
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`show that claim 7 is obvious over Suzuki.
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`III. Ground 2 Fails Because Park Is Not Prior Art And The Petition’s
`Rationale To Combine Suzuki With Park Is Unsupported
`Petitioner continues to look to Park to include a communication antenna on
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`the same contiguous magnetic layer as the power receiving coil in Suzuki. Reply at
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`20-21. Petitioner’s challenge to claim 7 through the proposed combination of Suzuki
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`with Park still fails for the reasons set forth above. Park does not cure Petitioner’s
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`failure to establish the combination of Suzuki’s second and sixth embodiments.
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`Petitioner’s proposed combination of Park with Suzuki further fails for two
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`additional reasons because (i) Petitioner has failed to show that Park is prior art to
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`the ’842 patent; and (ii) a POSITA would not be motivated to combine Suzuki with
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`Park.
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`8
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`A.
`Park Is Not Prior Art To The ’842 Patent
`Petitioner asserts that “Patent Owner fails to identify any subject matter in the
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`earlier applications that would indicate the ’842 patent is entitled to an earlier priority
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`date—and thus fails to meet its burden of production.” Reply at 13. In doing so,
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`Petitioner contends that it has satisfied its initial burden of persuasion to show that
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`the ’842 patent is not entitled to the filing date of the earlier parent applications. Id.
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`at 14. But Petitioner has not satisfied its burden to show that the Examiner of the
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`parent application, U.S. Patent Application No. 15/673,763 (the “’763 application,”
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`the immediate parent of the application, U.S. Patent Application No. 16/182,258,
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`that matured into the ’842 Patent), erred in finding the amendments made in that
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`application were not new matter. For those amendments to now be considered new
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`matter and thereby removing the ’842 patent’s entitlement to the earlier filed
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`applications, Petitioner was required to present evidence and argument that
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`overcome the presumption that the Examiner was correct in finding that the
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`amendments did not constitute new matter. See Commonwealth Sci. & Indus. Rsch.
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`Organisation v. Buffalo Tech. (USA), Inc., 542 F.3d 1363, 1380 (Fed. Cir. 2008).
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`Petitioner has not done so and has not shifted any burden to Patent Owner.
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`As an initial matter, the cases cited by Petitioner to support its assertion that
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`the burden of production has shifted to Patent Owner are inapplicable. In G&H
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`Diversified Manufacturing, LP v. Dynaenergetics Eur. Gmbh, the issue was whether
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`IPR2022-00351 (’842 Patent)
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`the patent at issue was entitled to the filing date of a foreign parent application and
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`thus did not deal with the presumption that the Examiner was correct in finding
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`amendments to not be new matter. PGR2021-00078, Paper 44 at 13-16 (PTAB Oct.
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`28, 2022). In Unified Patents v. American Patents LLC, the prior art patent issued
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`before the earliest potential priority date on the face of the patent at issue. IPR2019-
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`00482, Paper 132 at 15 (PTAB Aug. 3, 2022).
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`The Petition, at most, summarizes the amendments made in the ’763
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`Application and discusses one embodiment, with respect to Figures 6 and 7 of the
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`’842 patent, where the receiving coil sits in a receiving space. Petition at 43. This
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`is merely a factual recitation, devoid of evidence or argument sufficient to overcome
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`the presumption that the Examiner was incorrect in finding the amendments to be
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`inherent. In its Response, Patent Owner carefully laid out how the Examiner of the
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`’763 Application was aware of all changes to the specification, beginning with
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`modification to paragraph [0085] at filing. In Reply, Petitioner argues that the
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`“disclosure not presented in the prior application,” Ex. 1007 at 182, can only refer
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`to the “disclosure” of the claims of the ’763 Application. Reply at 16-17. This
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`cannot be. Immediately after noting that “application repeats a substantial portion
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`of prior Application No.13/658, 116, filed 10/23/12, and adds disclosure not
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`presented in the prior application,” the Examiner noted that the application “may
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`constitute a continuation-in-part of the prior application.” Ex. 1007 at 182. If the
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`claims were exclusively recognized as being the “new matter,” as Petitioner alleges,
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`the Examiner would have issued a rejection under 35 U.S.C. §112, ¶1 without raising
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`the point that the application “may constitute a continuation-in-part.”
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`Petitioner further argues that the “subject matter upon which the claims of the
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`’842 patent rely was not added with these ‘inherent’ amendments—it had been
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`previously added” when the ’763 Application was filed. Reply at 19 (referring to
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`the April 30, 2018 amendment, Ex. 1007 at 34). But even a cursory analysis of that
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`reference, reproduced below, belies that assertion. For example, the following
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`additions have nothing to do with the initial amendment to the ’763 Application: (i)
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`“the layers [of the printed circuit board 301 being] spaced apart from adjacent
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`layers”; (ii) “the short-range communication antenna 340 … is disposed in the
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`printed circuit board 301”; (iii) “the shielding unit 380 is disposed under … the short-
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`range communication antenna 340”; and (iv) “the short-range communication
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`antenna 340, and the shielding unit 380 are disposed between the plurality of layers
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`of the printed circuit board 301.” Ex. 1007 at 34. Petitioner would like the Board
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`to accept that all the amendments were the fruit of its poisonous tree that is the initial
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`amendment to the ’763 Application, and that the Examiner was beguiled into
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`accepting all the amendments. But that is clearly not the case.
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`These amendments addressed not only the structure of the receiving coil, but
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`also the structures of the short-range communication antenna 340 and the shielding
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`unit 380. Indeed, the amendments were not just directed to these structures being in
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`the printed circuit board 301. As such, they were not premised on the initial
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`amendment to the ’763 Application. Rather, they were premised on the disclosures
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`of Figures 9 and 10. See Ex. 1007 at 63 (Prior to amendment, the Examiner, in the
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`notes from the March 29, 2018 interview, referenced “the same Figure 9 and 10”
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`from the grandparent application as the basis for finding support as an “inherent
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`property.”).
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`In short, Petitioner has not met its burden to show that the Examiner of the
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`’763 Application was not correct in finding that the amendments to the specification
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`in that application were inherent in the disclosures of the grandparent applications.
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`Accordingly, the ’842 patent is entitled to the filing date of its earliest-filed parent
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`application, October 23, 2012. Based on that date, Park is not prior art to the ’842
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`patent.
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`B. A POSITA Would Not Be Motivated To Combine Suzuki With
`Park
`In Reply, Petitioner reasserts that the POSITA would have been motivated to
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`make the combination of Suzuki with Park because of the shielding wall Park
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`provides between coils. Reply at 21. As an
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`initial matter,
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`the Petition was
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`ambiguous as to how the combination of Suzuki and Park would be implemented.
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`Petition at 48-50. Petitioner now more fully explains the combination—
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`implementing Suzuki’s magnetic layer using Park’s groove technique that would
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`12
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`yield “shielding walls” (made of Suzuki’s magnetic layer) between the data coil 154
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`and the power receiving coil 170 of Suzuki’s sixth embodiment.
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`As Dr. Ricketts explains, Suzuki teaches a magnetic layer of detailed
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`composition with specific magnetic properties, including magnetic permeability of
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`1000 or more. Ex. 2017, Ricketts Decl., ¶ 88. Park, in contrast, describes a resin
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`with some unknown degree of an iron (Fe) component to be used in the shielding
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`member 131. Ex. 1006, 3:45-47. Park does not disclose the permeability nor the
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`dimensions of the proposed shielding member 131, but does describe it as
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`“paramagnetic.” Id., 4:38-40, 52-53. As Dr. Ricketts explains, paramagnetism is a
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`weak form of magnetism and has a permeability only slightly greater than 1, which
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`is orders of magnitude less than Suzuki’s permeability of 1000 or more. Ex. 2017,
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`Ricketts Decl., ¶ 89. Implementing Suzuki’s magnetic layer across coils 154 and
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`170 with Park’s contiguous shielding member 131, including shielding wall 137,
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`would couple the magnetic fields for each coil. See, e.g., id., ¶¶ 44-46. As Dr.
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`Ricketts noted, this “would present significant technical drawbacks” that Suzuki
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`already avoids by shielding 154 with separate magnetic layer 155. Id., ¶ 93.
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`Petitioner points to Dr. Ricketts’s deposition testimony as supportive of the
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`shielding provided by the shielding walls in Park’s shielding member. Reply at 23,
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`25-26 (citing Ex. 1023, Ricketts Deposition Transcript, at 19). But the cited
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`testimony is not a complete or proper analysis of the performance of Park’s groove
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`13
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`technique in Suzuki’s high permeability material. In short, implementing Park’s
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`contiguous shielding member would be detrimental because the shielding member
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`would couple the magnetic fields of the data coil 154 and the power receiving coil
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`170, which Suzuki separates using the magnetic layers. See Ex. 2017, Ricketts
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`Decl., ¶ 95. Neither Petitioner nor its expert provide any explanation as to how the
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`proposed combination would work, let alone address the significant drawbacks
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`identified by Dr. Ricketts.
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`Furthermore, Petitioner does not address the fact that Suzuki already teaches
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`how the data coil 154 is shielded from power receiving coil 170 using magnetic layer
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`155. See id., ¶ 93. Because Suzuki already teaches how to shield the data coil, a
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`POSITA would not be motivated to look to Park for a shielding technique that
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`provides no additional benefit and comes with the significant drawback of potential
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`coupling between the data coil and power receiving coil.
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`Finally, Patent Owner’s Response explained that the Petition does not show
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`how any benefit from the combination of Park with Suzuki would come about.
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`Patent Owner’s Response at 27. In its Reply, Petitioner asserts that “[t]his argument
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`is flawed because it presupposes that placing both an antenna and a power receiving
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`coil on a magnetic layer had never been done.” Reply at 26. Petitioner then asserts
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`that “Park provides evidence that POSITAs already knew how and were motivated
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`to implement both an antenna and power receiving coil on a layer.” This shows that
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`14
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`antenna and power receiving coil were, at most, implemented on the same layer, not
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`the same magnetic layer. As recounted above, a POSITA would not look to
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`implement the antenna and power receiving coil on the same magnetic layer of
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`Suzuki. In other words, just because POSITAs were already implementing antennas
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`and power receiving coils on Park’s low-permeability shielding member does not
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`mean that a POSITA would have had a reason to do the same with Suzuki’s high-
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`permeability magnetic layer.
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`IV. Conclusion
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`Petitioner’s reply with respect to claim 7 fails because Petitioner still is unable
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`to establish that a POSITA would have recognized that Suzuki alone renders claim
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`7 obvious or that a POSITA would combine Park with Suzuki in the proposed
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`manner. Park also does not qualify as prior art. Challenged claim 7 should be found
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`not unpatentable.
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`Respectfully submitted,
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`/s/ Brett Cooper
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`Brett Cooper (Reg. No. 55,085)
`Lead counsel for Patent Owner
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`16
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`Dated: March 3, 2023
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`CERTIFICATION REGARDING WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(d), Patent Owner certifies that there are 4,331
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`words in the paper excluding the portions exempted under 37 C.F.R. § 42.24(a)(1).
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`/s/ Brett Cooper
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`Brett Cooper, Reg. No. 55,085
`Lead counsel for Patent Owner
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`Dated: March 3, 2023
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Sur-Reply
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the above document was served on
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`March 3, 2022, by filing this document through the Patent Trial and Appeal Case
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`Tracking System as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
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`Scott T. Jarratt (Reg No. 70,297)
`scott.jarratt.ipr@haynesboone.com
`Andrew S. Ehmke (Reg No. 50,271)
`andy.ehmke.ipr@haynesboone.com
`Calmann J. Clements (Reg No. 66,910)
`calmann.clements.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Phone: (972) 739-8663
`Fax: (214) 200-0853
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`
`
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`Date: March 3, 2023
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`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`(212) 951-0100
`
`
` /s/ Brett Cooper
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`Brett Cooper
`Reg. No. 55,085
`Attorney for Patent Owner
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`
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