Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 31
`Date: July 3, 2023
`
`
`
`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 10,622,842 B2
`_____________
`
`Record of Oral Hearing
`Held: May 3, 2023
`_____________
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 31
`Date: July 3, 2023
`
`
`
`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 10,622,842 B2
`_____________
`
`Record of Oral Hearing
`Held: May 3, 2023
`_____________
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`SCOTT JARRATT, ESQUIRE
`CALMANN CLEMENTS, ESQUIRE
`HAYNES & BOONE LLP
`6000 Headquarters Drive, Suite 200
`Plano, TX 75024
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BRETT COOPER, ESQUIRE
`BC LAW GROUP, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`
`ROBERT AUCHTER, ESQUIRE
`AUCHTER PLLC
`1629 K Street NW, Suite 300
`Washington, D.C. 20006
`
`
`
`The above-entitled matter came on for hearing on May 3, 2023,
`commencing at 1:00 p.m., via video teleconference.
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE WORMMEESTER: Good afternoon, everyone. We have
`our final hearing in case IPR2022-00351, Apple v. Scramoge Technology,
`which concerns U.S. Patent Number 10,622,842. I'm Judge Wormmeester.
`Also appearing remotely are my colleagues, Judges Lee and Easthom.
`Thank you for your flexibility in conducting this hearing via video
`today. Given this format, we want to start off by clarifying a few items.
`First, our primary concern is your right to be heard. If at any time during the
`proceeding, you encounter technical or other difficulties that undermine your
`ability to adequately represent your client, please let us know immediately,
`for example, by contacting the team members who provided you with
`connection information.
`Second, for the benefit of the Judges, opposing counsel, and court
`reporter, please identify yourself each time you speak. When not speaking,
`please mute yourself. Third, we have the entire record, including the
`demonstratives. When referring to demonstratives, papers, or exhibits,
`please be explicit and identify any slide numbers or page numbers. Please
`also pause a few seconds afterwards so that we can find the reference and
`follow along.
`Finally, please note that members of the public may be listening to
`this oral hearing. So, if there's anything that is confidential, please let us
`know. As of now, we're not aware of anything that's confidential. Does
`anyone have anything you want to say about confidentiality of the materials
`presented today?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`3
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`
`Okay. Thank you. Let's go ahead and get the parties' appearances,
`please. Who do we have for Petitioner?
`MR. JARRATT: Good afternoon, Your Honor. This is Scott
`Jarratt, lead counsel for Petitioner Apple. And with me also is backup
`counsel Calmann Clements. And he will be presenting today.
`JUDGE WORMMEESTER: Great. Thank you. Good afternoon,
`counsel. And for Patent Owner, who do we have?
`MR. COOPER: Thank you, Your Honor. This is Brett Cooper. I
`am lead counsel for Patent Owner Scramoge. My colleagues Robert
`Auchter and John Petrsoric, who are backup counsel on this case, are here as
`well. And Mr. Auchter will be having the lead for us today.
`JUDGE WORMMEESTER: Okay. Great. Thank you so much.
`Welcome. We set forth the procedure for today's hearing in our trial order.
`But just to remind everyone the way this will work, each party will have 60
`minutes to present arguments. Petitioner has the burden and will go first and
`may reserve rebuttal time no more than half its total argument time. Patent
`Owner will then have the opportunity to present its response. It may also
`reserve surrebuttal time no more than half its total argument time.
`Please remember that the demonstratives you submitted are not
`part of the record. The record of the hearing will be the transcript. We will
`maintain a clock and give you warning as we're reaching the end of your
`argument time. Are there any questions before we proceed?
`MR. CLEMENTS: Nope.
`JUDGE WORMMEESTER: Okay. Great. Thanks. Will you be
`reserving any time, counsel?
`MR. CLEMENTS: Yes, Your Honor. I will reserve 20 minutes
`4
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`for rebuttal.
`JUDGE WORMMEESTER: Twenty minutes. Okay. Great. I’ll
`go ahead and start the timer here. And you may begin when you're ready.
`MR. CLEMENTS: Good afternoon. My name is Calmann
`Clements from Haynes and Boone. I'm representing Petitioner Apple.
`Turning to Slide 2, the '842 patent claims nothing more than a
`known arrangement of a wireless charging coil and a communication
`antenna within a device. As shown here in Figure 6, the '842 patent
`described a portable terminal 302 that includes a printed circuit board 301.
`And the printed circuit board has a short-range communication antenna 340
`embedded therein. And the portable terminal also includes a reception space
`A which receives a wireless charging coil 310.
`Turning to Slide 3, we can see a side view of this arrangement, that
`the wireless receiving power coil 310 is placed within the receiving space A.
`It is not embedded in the printed circuit board 301 like the communication
`antenna 340 is.
`Turning to Slide 4, we see here a more detailed depiction of the
`short-range communication antenna within the printed circuit board. As we
`can see from the figure, there's a stack of printed circuit boards identified by
`reference numeral 301. And between those circuit boards are
`communication antennas identified by the reference numeral 340.
`And the claims at issue today are directed to this arrangement we
`see here in Figure 10. But instead of reciting a communication antenna
`between the layers, the claims recite the wireless charging coil between the
`layers.
`
`So, turning to Slide 5, we see here Claims 1 and 7. And Patent
`5
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`Owner's response has presented arguments related only to Dependent Claim
`7. So, our discussion today will focus on Claim 7, which recites a short-
`range communication antenna on the first layer. Now, Claim 7 depends
`from Claim 1, which recites in part, a wireless power receiving coil on the
`first layer.
`So, what we have claimed here is both a wireless power receiving
`coil and a short-range communication antenna on a layer. But the concept of
`placing both a wireless charging coil and a communication antenna on a
`layer was known before the '842 patent.
`Turning to Slide 6, we start our discussion of Ground 2, which
`relies on the combination of Suzuki and Park. And there are two main
`aspects to this ground. First is that Park is prior art because the '842 patent
`is not entitled to its earliest claim priority date. Second, Park shows that as
`of the proper priority date, it was known to include both a wireless coil and a
`communications antenna on a layer.
`Turning to Slide 7, we see here the family history of the '842
`patent. This patent family started with Korean application in 2011. Then
`the '364-A patent, then the '346-B patent. And in the '346-B patent and
`earlier patents, the specifications aligned with the figures that we just
`discussed, with the short-range communication antenna in the printed circuit
`board and the wireless charging coil in the reception space. There was no
`disclosure of a wireless charging coil within the printed circuit board layers.
`And Slide 7 here shows the text that accompanied Figure 10 of the
`'346 patent. And as can be seen, it refers only to the communication antenna
`340 on the printed circuit board. Specifically, the text says, "While the
`procedure of disposing the short-range communication antenna 340 on the
`6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`printed circuit board 301 is being performed."
`Now turning to Slide 8. Now, when the applicant filed the '666-C
`application on August 10, 2017, they added something new to the
`specification as it was filed. Looking at that same paragraph that describes
`Figure 10, the applicant added the highlighted part of the text to the filed
`specification. The specification newly referred to the procedure of disposing
`the short-range communication antenna 340 or receiving coil 310 not shown
`in the Figure 10 in the printed circuit board.
`And for purposes of our discussion today, I will be referring to this
`newly added language as the new receiving coil language. This new
`receiving coil language was the first time that the concept of a wireless
`charging coil within the printed circuit board is suggested. Previously, the
`wireless charging coil was only disclosed as being in the reception space.
`And despite adding this new receiving coil language, the applicant still filed
`the '666-C patent as a continuation rather than a continuation in part.
`Accordingly, the concept of a wireless charging coil within the
`claimed arrangement of layers was new as of August 10, 2017, in Claim 1,
`which recites this newly added concept of the wireless charging coil within
`the claimed arrangement of layers. So, Claim 1 and its dependent Claim 7 at
`issue here are not entitled to the earliest claimed priority date.
`Turning to Slide 9, the Patent Owner's position on this issue is that
`the Examiner knew that the applicant had added this new receiving coil
`language but believed it to be an inherent feature. But there is no evidence
`that the Examiner knew that additional material was added to the
`specification upon filing. And let's look at this from the Examiner's
`perspective. Applicant gave every indication they were filing a continuation
`7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`and not a continuation in part. As we can see here, both the ADS and the
`specification of the '666 patent indicated they were filing a continuation.
`Turning to Slide 10, during prosecution of the '666 patent, Patent
`Owner or Applicant represented to the Office that it was filing a
`continuation and that the subject matter was the same as that of the parent
`applications. There was no reason for the Examiner to believe that there was
`newly added subject matter filed with the continuation.
`Turning to Slide 11, what the Examiner did note, however, was
`that there was no written description support for what the Applicant was
`attempting to claim. And Patent Owner points out that the Examiner says
`that the application adds disclosure not presented in the prior application.
`But the Examiner makes clear that what he's referring to has to do with the
`claims.
`
`Specifically, in the lower highlighted portion section here, the
`Examiner says that, "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. This new matter of
`the claims would be considered the CIP portion, and any support added to
`disclosure would then also constitute new matter and form the basis of a
`CIP."
`
`Turning to Slide 12, regardless of what the Examiner did or did not
`know, one important point here is that Patent Owner has not cited anything
`in the previous specifications that provides support for the claim's concepts.
`Patent Owner cites to interview summaries by the Examiner and Applicant,
`but neither of the interview summaries nor any part of the prosecution record
`8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`point to anything in the previous specifications that provide written
`description support for the claim concepts.
`And the petition explained why the concept of a wireless coil
`within the stacked printed circuit boards was nowhere to be found prior to
`the '666 patent. So, the burden of production thus shifted to Patent Owner to
`identify where the earlier patents describe a wireless charging coil within the
`stacked printed circuit boards. This, they did not and cannot do.
`JUDGE LEE: Mr. Clements, it's Judge Lee. You mentioned
`earlier that the Examiner stated on the record that the claims were drawn to
`new matter; is that right?
`MR. CLEMENTS: That's right.
`JUDGE LEE: What was that new matter? What did the Examiner
`identify as the new material?
`MR. CLEMENTS: So, if we look at the prosecution history of the
`'666 patent, which is in Exhibit 1007, and if it helps, I can share my screen
`here. All right. Is that showing up?
`JUDGE LEE: Yes.
`JUDGE WORMMEESTER: Yes.
`MR. CLEMENTS: So, the claims here, as they were originally
`filed in the '666-C patent application recited various features, including a
`board comprising a variety of layers, a wireless receiving coil disposed in
`the board, a short-range communication coil disposed in the board. And it
`was specific claim limitations that the Examiner was concerned with and
`believed were not disclosed in the specification.
`JUDGE LEE: But was he specific? I’m just trying to see whether
`he complained about the same thing that's at issue before us. So, it's not the
`9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`same thing, right?
`MR. CLEMENTS: So, if we go to -- so the Examiner is referring
`to -- he's not referring to the new receiving coil language that was added
`upon the filing of the specification. So, if we go to page 181 of Exhibit
`1007, we can see what the Examiner actually took issue with. This is page
`183, actually, of Exhibit 1007.
`JUDGE LEE: Well thank you, but it's enough. It's not the same
`thing because what's before us now is something that was added even later
`than that, right?
`MR. CLEMENTS: Yes. What we're looking at --
`JUDGE LEE: So, the Examiner, he couldn't be talking about the
`same thing, right?
`MR. CLEMENTS: So yeah. The Examiner was talking about
`what they had filed with their claims was not added into the specification or
`was not supported in their specification. He wasn't referring to the new
`receiving coil language that was added upon filing of the '666-C patent. Did
`that answer your question?
`JUDGE WORMMEESTER: What part of the claims, I guess --
`this is Judge Wormmeester. What part of the claims were considered new
`matter to the Examiner? Is that made on the record in the (crosstalk)?
`MR. CLEMENTS: Yeah. So, I'm going to go back to -- yeah. So,
`I'm going to go back to sharing my screen. And this is on page 184, which
`is -- here's where the Examiner -- or starting on page 183, actually, the
`Examiner explains what he had issue with. So, starting at Paragraph 9 here,
`he says, "Regarding the new matter rejection, the Examiner has carefully
`considered the claims and reviewed the disclosure multiple times and simply
`10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`is at a loss to find where the claim configuration can be found." A text
`search of the specification shows that the word “layer” is missing, the word
`“separation,” long distance is missing.
`He then referred to Figures 9 and 10 and said, "The problem with
`these figures is that the discussion of Figure 9 spans two lines, comprised as
`one sentence, and describes that the short-range communication antenna 340
`has been disposed in the printed circuit board and a shielding unit." And
`then he says, "The discussion of Figure 10 spans eight lines and describes
`how the short-range communication antenna 340 or receiving coil 310, not
`shown in Figure 10,” which is the new receiving coil added, “is disposed in
`the printed circuit board."
`So, the Examiner was quoting what he saw in the specification. He
`had no indication that that new language here, the receiving coil 310 not
`shown in Figure 10, which was newly added upon filing, he had no
`indication that that was new. So, he was saying that even with that, he didn't
`see support for things that were in the claims. So, the Examiner is not
`discussing this specific language as being new. He is talking about things
`that are in the claims are not supported.
`And we can see that in Applicant's response -- and this is 34 of
`Exhibit 1007 -- they amended Paragraph 84 to put more description in there,
`but this language that was added newly, it's not underlined. So, the
`receiving coil 310 not shown in Figure 10, right here, that's not underlined.
`So, there was no indication to the Examiner that this was new, that they had
`been newly added upon filing. Does that answer your question?
`JUDGE WORMMEESTER: I think so. Does the new matter
`include -- in the claims, include the receiving coil, the -- let me just go to the
`11
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`language so I don't -- oh, between the plurality of layers. Does the new
`matter include the wireless receiving coil being disposed between the
`plurality of layers?
`MR. CLEMENTS: It does say a wireless receiving coil disposed
`in the board.
`JUDGE WORMMEESTER: Right. At that last wherein clause.
`Is that what the Examiner is speaking to where it says the wireless receiving
`coil and the short-range communication coil --
`MR. CLEMENTS: Yeah.
`JUDGE WORMMEESTER: -- and the shielding unit are
`disposed?
`MR. CLEMENTS: I believe this --
`JUDGE WORMMEESTER: Is that part of the new matter as well
`
`or?
`
`MR. CLEMENTS: So --
`JUDGE WORMMEESTER: Or do we not know?
`MR. CLEMENTS: So that was not added. When the Applicant
`filed the specification, the only thing that they added new was that new
`receiving coil language where they said the wireless coil, or 310. That was
`the only thing that was added new upon filing. Now, the examiner had
`originally thought that there was no disclosure for any of what's in Claim 1,
`including that last wherein clause.
`Now, Applicant had an interview with the Examiner and the
`Examiner sided with the Applicant, saying that there was support. But we
`know that what the Examiner had to look at for support was the newly added
`language that was added during filing. So, the Examiner had considered that
`12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`language and believed it to be part of the original filed disclosure. And we
`can see that the Applicant represented to the Office that that material -- or
`there was nothing new, that it was a continuation, and that the disclosure was
`the same at that as it had been in previous applications.
`JUDGE WORMMEESTER: Thank you.
`JUDGE LEE: Okay. It's Judge Lee. I have two follow-up. One is
`that I'm not sure I understand what the Examiner did. You told me that he
`said there's no support in the disclosure for whatever was filed as Claim 1,
`right? But the claim is a part of the disclosure. So, if it's in the claim, it's in
`the specification. So, I'm not understanding why there would be a complaint
`by the Examiner, hey, whatever you're claiming is not in the disclosure.
`And the second one is, is all of this not relevant? Because why do
`we even care whether the Examiner complained about it or not, whether that
`it is what we're considering today? All we need to look at is look at the
`evidence ourselves. And we can determine whether there was or there was
`not supporting disclosure. Whatever the Examiner did is not binding on the
`Board, so why are we even having a dispute about whether the Examiner
`looked at this or not looked at this and what did the Examiner say about it? I
`mean, does that really matter if we look at it and we say, there's no support
`for this?
`
`MR. CLEMENTS: Yeah. So, to answer your first question, why
`did the Examiner have an issue here, you know, I can't speak to the
`Examiner's intent. For whatever reason, the Examiner believed that the
`specification didn't provide (indiscernible) basis support or written
`description support for what was in the claims.
`And as to your second question, why does it matter --
`13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`
`JUDGE LEE: Wait, wait. But isn't the claims a part of the spec?
`MR. CLEMENTS: I agree. So the merits to the Examiner's
`rejection here are not that relevant. But this is what the record shows us.
`So, I would agree with you that as they filed it, that would be original
`disclosure. But even then, that disclosure was entered into the record upon
`filing of the '666-C patent. So it's still new matter in that sense.
`So as far as why do we care about what the Examiner thought
`because it's not binding on the Board, you're correct, Your Honor. The
`reason that we're disputing this is because Patent Owner is relying on what
`the Examiner said and saying that they're entitled to the presumption that
`this stuff is inherent and that it's entitled to its earliest priority date.
`And our position is that, one, it’s not true that the Examiner knew
`about this language, so we don't get to give any presumption to what the
`Examiner thought. But even if we did give any kind of presumption to the
`Examiner, that's not an unrebuttable presumption. We can still say, well,
`wait a minute, is there actually any support prior to August 10, 2017, for the
`concept of a wireless coil and within the printed circuit boards?
`And we can see that there is not. And Patent Owner has had the
`opportunity to show where there might be support and they have not done
`that. Instead, they've just relied on what the Examiner said and are leaving it
`at that.
`
`JUDGE LEE: Thank you.
`JUDGE EASTHOM: Counsel, a follow-up question to that is,
`doesn't there have to be support here based on the dates for the foreign
`priority that goes with this challenged patent?
`MR. CLEMENTS: So, if they're wanting to get their earliest filing
`14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`date back to the original Korean application, yes, there would have to be
`support in there for this concept.
`JUDGE EASTHOM: I thought that's what they had to do to beat
`Park. Maybe I missed the dates, but that's -- am I missing the date on that?
`MR. CLEMENTS: No. I think you're right, that they have to beat
`that. They have to go all the way back to their original filed Korean
`application.
`JUDGE EASTHOM: And so, is there anywhere where there's a
`translation of that on this record or in the prosecution history?
`MR. CLEMENTS: I don't believe that we have a translation of
`that Korean application in this record.
`JUDGE EASTHOM: I'll tell you why I'm kind of concerned. It
`seems that a lot of what we're really talking about here is whether or not
`there's support for Claim 7, because that's what's being argued. And so, you
`have to have support for two different types of antennas, I guess. And then,
`so that, that raises the issue of why we're not really looking at what's in the
`translation, although I get your point that you don't have to go all that way if
`it's not supported in the chain. But it would seem to be something that might
`be an easier slog than sorting through all the stuff in the prosecution history.
`But that's just --
`MR. CLEMENTS: Yeah. And again, because we don't have that
`translation in the record, I can't speak to that.
`JUDGE EASTHOM: Okay.
`MR. CLEMENTS: But what I can speak to is that we do know
`that this material appears to be added for the first time when the Applicant
`filed the '666-C patent application. We do know that they added material to
`15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`the specification as filed that was not in previous specifications. So, we do
`know exactly when this material was added to the prosecution or to the
`family history, and that's on August 10th of 2017. So, we don't believe that
`they're entitled to a date earlier than that.
`JUDGE EASTHOM: Okay. All right. Thank you.
`MR. CLEMENTS: So, turning to Slide 14, we move on to the
`second aspect of Ground 2. And that, given that Park is prior art, we then
`look at Park. And we see here, Park shows that it was known to place both a
`wireless charging coil and a communication antenna on a layer. While
`Suzuki alone shows a wireless coil and a data coil on a noncontiguous layer,
`Park describes something different. Park describes another suitable option
`in which the wireless charging coil and antenna are disposed on the same
`continuous layer.
`In particular, Park describes a groove technique in which the
`wireless charging coil and data coil are placed within grooves of a
`continuous magnetic layer. And this groove technique provides a suitable
`option for Suzuki's device because it allows Suzuki's device to maintain or
`reduce thickness and further provides a shield wall between the
`communication antenna and the wireless charging coil.
`Turning to Slide 15. The shield wall 137 in Park is not the same as
`the shield unit 172 in Suzuki. And this distinction is important. Patent
`Owner argues that Park provides no additional benefits because Suzuki
`already has a shield layer. But the shield wall, 137, provides a different
`benefit than what Suzuki shielding unit does. The shielding wall is a
`magnetic material that's positioned between the two coils, and it shields the
`interference of electronic waves between those coils.
`16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`
`Suzuki's shielding unit, on the other hand, is a metal material that
`is for shielding the coils from electromagnetic noise and it is placed beneath
`the coil, not between the two types of coils. Thus, Park's shield wall
`between the coils provides an additional benefit that is different and distinct
`than the benefit provided by Suzuki's shield unit.
`Moving on to Slide 16, Patent Owner argues that Park's technique
`is problematic because it would couple the magnetic fields from the wireless
`charging coil and the communication antenna. But Patent Owner ignores
`how Park's technique is designed to mitigate this problem. As we just
`discussed, Park's technique has a shield wall that mitigates that problem.
`Turning to Slide 17, Patent Owner's own expert agrees that the
`purpose of the shield wall mitigates the electronic waves between the two
`coils. Dr. Ricketts was asked at deposition what the function of Park's
`shielding wall was, and Dr. Ricketts explained that it shields the interference
`of waves between the first and second coils. Thus, Patent Owner has not
`provided a valid reason to dispute the proposed combination.
`Turning to Slide 18, Patent Owner's other attempts to dispute the
`combination attack a bodily incorporation position that the petition never
`made. Patent Owner argues that there's differences in permeability between
`the layers. But the petition is not bodily incorporating Park's magnetic layer
`into Suzuki.
`Turning to Slide 19, the proposed combination is shown here. And
`that's that, "Suzuki and Park simply represents using a known technique
`(disposing data and power receiving coils in recessed grooves on the same
`layer) to improve similar devices (Suzuki's and Park's wireless charging
`devices) in the same way."
`
`17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`
`Turning to Slide 20. To summarize, Park is prior art because the
`'842 patent is not entitled to its earliest priority date. Park shows that
`placing both the antenna and the wireless charging coil on the same layer
`was simply one known and obvious technique. In other words, Park
`provides evidence that the (indiscernible) already knew and were motivated
`to implement both antenna and a power receiving coil on a layer.
`Turning to Slide 21, we move on to Ground 1. Turning to Slide
`22, Suzuki itself renders obvious both types of coil on a layer, albeit a non-
`continuous layer. In the figure here, we see both the wireless receiving coil
`170 and a short-range communication antenna 154. Both of these coils are
`on a magnetic layer. The wireless receiving coil 170 is on the magnetic
`layer 171 and the short-range communication antenna is on magnetic layer
`155. So accordingly, magnetic layer 171 and magnetic layer 155 together
`form a layer as claimed.
`JUDGE WORMMEESTER: Counsel, I'm having a hard time
`conceptualizing that because I see the magnetic layer 155 wraps around the
`antenna 154, whereas the layer 171H doesn't do that. And to me, it just
`looks like right now, there's two magnetic layers and you're just saying
`they're representing one layer. I don't see how -- and it's not the fact that
`they're not contiguous that's bothering me. It's just they just look like
`completely different layers.
`MR. CLEMENTS: Okay. So, the reason that we are construing
`the claims in a way that Suzuki reads on them, if we turn to Slide 23, we can
`see that what Suzuki describes is no different than what the '842 patent itself
`describes. Where the '842 patent does show a data coil and a power coil in
`the same figure, such as Figure 7 here, they're not on a contiguous layer. In
`18
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`fact, we don't even see --
`JUDGE WORMMEESTER: I'm sorry. Which page are you on?
`MR. CLEMENTS: This is Slide 23.
`JUDGE WORMMEESTER: Okay. Go ahead.
`MR. CLEMENTS: So again, this comes back to the issue that this
`concept of the wireless receiving coil was added during the family history in
`the next file, the '666-C patent. So, we don't really have any disclosures here
`of a wireless coil and an antenna on the same layer. At best, when they are
`shown together, as they are here in Figure 7, we don't see them on a
`continuous layer. And so, because we don't really have any description in
`the specification, we're reading the term layer broadly.
`And so, if we return back to Slide 22, that's why we think that
`reading the first layer broadly, these two separate magnetic layers would
`teach a layer together. And we have both the short-range antenna and the
`receiving coil on those layers or put together, make one layer. Does that
`make sense?
`JUDGE LEE: It's Judge Lee. I understand what you said, but that
`doesn't seem to make sense. If I understand you correctly, you're saying,
`well, because they don't have description, we get to read it as broadly as we
`want. I don't understand the law to be like that. If they don't have support,
`then the attack would be they don't have support, not, well, that's
`justification to read it as broadly as possible. That, you know, it goes
`beyond broadly reasonable. I don't even know a law that says, well, because
`there's no support, then it's reasonable to construe as broadly as you can
`imagine.
`
`MR. CLEMENTS: So, I don't think we're trying to construe this
`19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`IPR2022-00351
`Patent 10,622,842 B2
`
`absurdly broadly. I mean, we're not saying that you can have one piece in
`one part of the world and some other piece in some other part of the world,
`and that together, they make a layer. I mean, we're showing two really
`closely put together layers. And we know that the law says that you can't
`construe a term such that it would exclude the only embodiment in the
`spe
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
