Inter Partes Review
`U.S. Patent No. 10,622,842
`
`Apple Inc. v. Scramoge Technology, Ltd., Case IPR2022-00351
`
`Calmann J. Clements,
`Haynes Boone, LLP
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`Ex.1024 / IPR2022-00351 / Page 1 of 36
`APPLE INC. v. SCRAMOGE TECHNOLOGY LTD.
`
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`U.S. Patent No. 10,622,842
`
`Apple Inc. v. Scramoge Technology, Ltd., Case IPR2022-00351
`
`Calmann J. Clements,
`Haynes Boone, LLP
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`Ex.1024 / IPR2022-00351 / Page 1 of 36
`APPLE INC. v. SCRAMOGE TECHNOLOGY LTD.
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`The ’842 Patent
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`Ex.1001, Fig. 6 (annotated); Petition at 43.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`2
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`2
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`The ’842 Patent
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`Petition at 43.
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`3
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`3
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`The ’842 Patent
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`Ex.1001, Fig. 10; Petition, 41.
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`4
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`4
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`’842 Patent, Claim 1
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`Ex.1001, Claim 7.
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`Ex.1001, Claim 1.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`5
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`5
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`Ground 2: Claim 7 is obvious
`obvious over Suzuki and Park
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`6
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`6
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`Park is prior art because the ’842 patent is not entitled to its earliest priority date
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`’842 Family History
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`Petition at 40.
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`Petition at 41.
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`7
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`7
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`Park is prior art because the ‘842 patent is not entitled to its earliest priority date
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`’842 Family History
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`Petition at 40.
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`Petition at 41; Petitioner’s Reply, 13.
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`8
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`8
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`There is no evidence the Examiner was aware of the newly added language
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`Ex.1007, 276; Petition, 40.
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`Ex.1007, 298; Petition, 40.
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`9
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`9
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`There is no evidence the Examiner was aware of the newly added language
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`Ex.1007, 37; Petitioner Reply, 20.
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`10
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`10
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`There is no evidence the Examiner was aware of the newly added language
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`Ex.1007, 181; Petitioner Reply, 19.
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`11
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`11
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`Patent Owner has not identified support for the claims prior to the ‘666-C patent
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`• The Petition explained how the claimed subject matter was absent from
`the specification prior to the ‘666-C patent filing.
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`• The petition identified precisely when and how the claimed subject matter
`was introduced into the patent family.
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`• The burden of production thus shifted to Patent Owner.
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`• Patent Owner has not identified or cited to anything prior to the ‘666-C
`patent that even suggests replacing the communication antenna in the
`circuit boards with a wireless charging coil.
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`Petitioner Reply, 14-16.
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`12
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`12
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`Patent Owner has not identified support for the claims prior to the ‘666-C patent
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`Patent Owner Response, 20.
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`13
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`13
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`Park teaches both a wireless charging coil and communication antenna on a
`layer as claimed
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`Petition, 47.
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`14
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`14
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`The shield wall 137 in Park is not the same as the shield unit 172 in Suzuki
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`Park’s shield
`wall is
`coplanar with
`the coil
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`Suzuki’s shield
`unit is beneath
`the coil
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`Petitioner’s Reply, 23.
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`Petitioner’s Reply, 22.
`15
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`15
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`Patent Owner argues the combination would be “detrimental”
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`Patent Owner Response
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`Patent Owner Response, 27.
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`16
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`16
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`Patent Owner’s own expert confirmed the benefits of the shield wall
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`Ex.1023, 19; Petitioner’s Reply, 23.
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`17
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`17
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`Patent Owner’s arguments rely upon bodily incorporation
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`Patent Owner argues:
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`• Park’s shielding member 131 cannot replace Suzuki’s magnetic layer 171
`because of the difference in permeability between Suzuki’s magnetic layer
`171 and Park’s shielding member 131. See Response, 25.
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`18
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`The proposed combination does not rely upon bodily incorporation
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`Petition, 51.
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`19
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`19
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`Claim 7 is obvious over Suzuki in view of Park
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`Summary
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`• Park is prior art because the 842 patent is not entitled to its earliest
`priority date.
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`• Patent Owner has not identified support for the added concepts.
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`• Park renders obvious having both a wireless charging coil and a
`communication antenna on a layer
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`20
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`20
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`Ground 1: Claim 7 is obvious in view of Suzuki
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`21
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`21
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`Suzuki itself renders obvious both types of coils on a non-contiguous layer
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`Petition at 34.
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`22
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`22
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`The ’842 Patent
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`Petition, 43.
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`23
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`23
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`The “sixth embodiment” builds upon previous embodiments
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`Petitioner Reply, 6.
`24
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`24
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`The “sixth embodiment” builds upon previous embodiments
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`Dr. Phinney’s testimony:
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`Ex.2020, 21; Petitioner Reply, 7.
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`25
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`25
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`The sixth embodiment does not remove features
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`Patent Owner Response
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`Patent Owner Response, 14.
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`26
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`26
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`The sixth embodiment does not remove features
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`Ex.1005, 10:58-67; Petitioner Reply, 6-7.
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`27
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`27
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`Suzuki renders obvious claim 7
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`Summary
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`• 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.
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`• Suzuki renders claim 7 obvious without relying on a combination of
`embodiments.
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`28
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`28
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`Inter Partes Review
`U.S. Patent No. 10,622,842
`
`Apple Inc. v. Scramoge Technology, Ltd., Case IPR2022-00351
`
`Calmann J. Clements,
`Haynes Boone, LLP
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`29
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`Additional Slides
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`30
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`30
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`Patent Owner has not made a case for inherency
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`• Patent Owner makes only a vague reference to inherency.
`• To establish inherency, the extrinsic evidence ‘must make clear that 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. It cannot be argued that replacing a wireless communication antenna
`in a printed circuit board with a wireless charging coil is “necessarily
`present.”
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`•
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`Inherency 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.
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`• Patent Owner does not and cannot meet the high bar to show inherency.
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`Petitioner Reply, 14-16.
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`31
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`31
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`Red indicates the new subject matter added to the specification at the filing of the ‘666 patent; Blue
`indicates the text added to the ‘666 patent during prosecution; Green indicates the text added to the
`‘842 patent during prosecution
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`Ex.1003, 47.
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`32
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`32
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`Red indicates the new subject matter added to the specification at the filing of the ‘666 patent; Blue
`indicates the text added to the ‘666 patent during prosecution; Green indicates the text added to the
`‘842 patent during prosecution
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`Ex.1003, 48.
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`33
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`33
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`Red indicates the new subject matter added to the specification at the filing of the ‘666 patent; Blue
`indicates the text added to the ‘666 patent during prosecution; Green indicates the text added to the
`‘842 patent during prosecution
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`Ex.1003, 49.
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`34
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`34
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`The petition does not combine embodiments
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`Institution Decision, 21.
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`35
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`35
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`Suzuki’s embodiments would include features not explicitly described
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`Ex.1005, 9: 9-23; Petitioner Reply, 8.
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`36
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`36
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