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`
`Paper 10
`Entered: August 5, 2022
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`____________
`
`IPR2022-00351
`Patent 10,622,842 B2
`____________
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1, 2, 5–7, 14–16, 19, and 20 of U.S. Patent
`No. 10,622,842 B2 (Ex. 1001, “the ’842 patent”). Scramoge Technology
`Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). With our authorization (see Paper 7), Petitioner filed a preliminary
`Reply (Paper 8, “Reply”) to Patent Owner’s Preliminary Response, and
`Patent Owner filed a preliminary Sur-reply (Paper 9, “Sur-reply”) to
`Petitioner’s preliminary Reply. We have jurisdiction under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review
`may not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For the reasons that follow, we institute an inter partes review
`as to all the challenged claims of the ’842 patent based on all the grounds
`presented.
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify one related federal district court case, Scramoge
`Technology Limited v. Apple Inc., Case No. 5:22-cv-03041-SVK (N.D.
`Cal.). Reply 1; Sur-reply 2; see also Ex. 1022 (Order Setting Initial Case
`Management Conference and ADR Deadlines). 1
`
`
`1 The parties initially identified Scramoge Technology Limited v. Apple Inc.,
`Case No. 6:21-cv-00579-ADA (W.D. Tex.), but the case was transferred to
`the District Court for the Northern District of California after the filing of
`the Petition and Preliminary Response. Pet. 55; Paper 3, 3 (Patent Owner’s
`Mandatory Notices); Reply 1; Sur-reply 2.
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`B. The ’842 Patent
`The ’842 patent describes wireless power receivers. Ex. 1001, 1:21–
`22. In one embodiment, the wireless power receiver includes a shielding
`unit to prevent the electronic appliance in which the wireless power receiver
`is installed from malfunctioning. Id. at 2:1–3, 2:41–45, 3:4–6; see also id. at
`1:55–57 (“[A] magnetic field generated from the receiving coil exerts an
`influence on an inside of an electronic appliance, so that the electronic
`appliance malfunctions.”). The electronic appliance may be a portable
`device. Id. at 1:39–43.
`To illustrate, Figure 10 of the ’842 patent is reproduced below.
`
`
`Figure 10 shows a wireless power receiver, which includes printed circuit
`board 301, short-range communication antenna 340, a receiving coil (not
`shown), and shielding unit 380. Ex. 1001, 3:4–6, 8:21–23, 8:44–50. Printed
`circuit board 301 includes multiple layers where each layer is spaced apart
`from adjacent layers. Id. at 8:44–46. Short-range communication
`antenna 340 or the receiving coil is disposed in printed circuit board 301. Id.
`at 8:46–49. Shielding unit 380 also is disposed in printed circuit board 301.
`Id. at 8:49–50. In particular, shielding unit 380 is disposed under short-
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`range communication antenna 340 or the receiving coil. Id. at 8:51–52.
`Short-range communication antenna 340, the receiving coil, and shielding
`unit 380 are disposed between the layers of printed circuit board 301. Id. at
`8:52–56.
`The wireless power receiver, as shown in Figure 10, can be divided
`into two regions. Ex. 1001, 9:6–12. First region 411, includes layers that
`overlap the receiving coil in vertical direction 400, which is perpendicular to
`upper surface 385 of shielding unit 380. Id. at 9:6–10. Second region 412,
`413 includes layers that do not overlap the receiving coil in vertical
`direction 400. Id. at 9:10–12. First gap or distance d1, which is measured in
`vertical direction 400 between layers in first region 411, is greater than
`second gap or distance d2, which is measured in vertical direction 400
`between layers in second region 412, 413. Id. at 9:12–16.
`The ’842 patent explains that, “when the shielding unit 380 is inserted
`into the printed circuit board 301, the entire thickness of the wireless power
`receiver . . . may be reduced,” and “a separate procedure of attaching the
`shielding unit 380 is not necessary, so the manufacturing process may be
`simplified.” Ex. 1001, 8:66–9:6.
`
`
`C. Illustrative Claim
`Petitioner challenges claims 1, 2, 5–7, 14–16, 19, and 20 of the
`’842 patent. Claims 1 and 19 are independent. Claim 1 is illustrative of the
`claims under challenge:
`1. A wireless power receiver, comprising:
`a shielding unit;
`a first layer on the shielding unit;
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`a wireless power receiving coil on the first layer;
`a second layer on the wireless power receiving coil;
`a first region in which at least one of the first layer and the
`second layer overlaps the wireless power receiving coil in
`a vertical direction perpendicular to an upper surface of
`the shielding unit; and
`a second region in which at least one of the first layer and the
`second layer does not overlap the wireless power receiving
`coil in the vertical direction,
`wherein a first distance, measured in the vertical direction,
`between the first layer and the second layer in the first
`region is greater than a second distance, measured in the
`vertical direction, between the first layer and the second
`layer in the second region.
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, 5–7, 14–16, 19, and 20 of the
`’842 patent on the following grounds. Pet. 15–54.
`References/Basis
`Claims Challenged
`35 U.S.C. §2
`Suzuki3
`1, 2, 5–7, 14–16, 19, 20 103
`Suzuki, Park4
`7
`103
`In support of its arguments, Petitioner relies on a Declaration of Dr. Joshua
`Phinney, Ph.D. (Ex. 1003).
`
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Because the application from which the ’842 patent issued claims the benefit
`of priority to an application that was filed before this date, the pre-AIA
`version of § 103 applies.
`3 Suzuki, U.S. Patent No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005).
`4 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006).
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`III. DISCUSSION
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`Patent Owner urges us to exercise our discretion under 35 U.S.C.
`§ 314(a) to deny institution based on the parallel litigation in the District
`Court for the Northern District of California. Sur-reply 1.
`Under § 314(a), the Director has discretion to deny institution of an
`inter partes review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial
`on behalf of the Director.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled,
`to institute an IPR proceeding.”). In exercising that discretion on behalf of
`the Director, the Board may consider the state of a parallel district court
`proceeding as a “factor that weighs in favor of denying the Petition under
`§ 314(a).” NHK Spring Co. v. Intri-Plex Techs, Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential). When considering the
`impact of parallel litigation, the Board seeks, among other things, to
`minimize the duplication of work to resolve the same issue. See id. at 19–
`20.
`
`The Board has identified a nonexclusive list of factors “relat[ing] to
`whether efficiency, fairness, and the merits” favor discretionary denial in
`view of parallel district court litigation. Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11, 5–6 (PTAB Mar. 20, 2020) (precedential). Among the
`factors is proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision. Id. at 6; see also id. at 9 (“If the court’s
`trial date is earlier than the projected statutory deadline, the Board generally
`has weighed this fact in favor of exercising authority to deny institution
`under NHK.”). Here, no trial date has been set in the parallel litigation, and
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`there is no indication that the trial will precede a final written decision in this
`proceeding. Reply 1–2; Sur-reply 2.
`We note Patent Owner’s assertion:
`Prior to transfer, the district court case was on track for trial in
`March 2023⸺at least five months before a final written decision
`would be due. And while the expected trial date is less certain
`now that the case has been transferred, there is no reason to
`believe that the trial will occur after the final written decision
`deadline.
`Sur-reply 2. Where a district court has not set a date for trial, however, we
`decline to speculate when such trial would take place. Various factors are
`involved in that consideration by the judge to whom the case is assigned.
`Speculation on our part of the timing on any putative trial date simply is
`inappropriate in this situation. Moreover, Fintiv asks whether the tribunal in
`the parallel proceeding has set a trial date, not what we surmise might be the
`trial date to be set by that tribunal for the parallel proceeding. The lack of a
`scheduled trial date weighs against exercising discretion to deny the Petition.
`The remaining Fintiv factors do not sufficiently weigh in favor of
`exercising our discretion to deny institution. Accordingly, under the
`circumstances of this case, we decline to exercise our discretion to deny
`institution under § 314(a) in view of the parallel litigation.
`
`
`B. Claim Construction
`In an inter partes review proceeding, we construe a claim of a patent
`“using the same claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R.
`§ 42.100(b) (2019). That standard involves construing claims in accordance
`with the ordinary and customary meaning of such claims as would have been
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`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303,
`1312–14 (Fed. Cir. 2005) (en banc).
`Petitioner asserts that “no terms require specific construction.”
`Pet. 10. Patent Owner does not respond. See generally Prelim. Resp. For
`purposes of this Decision, we conclude that no claim term requires express
`interpretation at this time to resolve any controversy in this proceeding. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`
`
`C. Obviousness over Suzuki
`Petitioner asserts that claims 1, 2, 5–7, 14–16, 19, and 20 of the
`’842 patent would have been obvious over Suzuki. Pet. 16–39. Patent
`Owner does not respond with respect to any claim. See generally Prelim.
`Resp. For the reasons explained below, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on this ground as to
`claims 1, 2, 5, 6, 14–16, 19, and 20. We also express concern with
`Petitioner’s showing as to claim 7.
`We start with an overview of the asserted prior art, Suzuki.
`
`
`1. Suzuki
`Suzuki relates to a contactless power transmission apparatus, which
`includes a power transmitter in a primary side and a power receiver in a
`secondary side. Ex. 1005, 4:46–50. The transmitter and the receiver include
`primary and secondary coils, respectively, which can transmit electric power
`from the primary side to the secondary side via electromagnetic induction.
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`Id. at 4:50–55. The transmitter may be a charger, and the receiver may be a
`cell phone. Id. at 4:56–59.
`Suzuki describes various embodiments of the receiver. See, e.g.,
`Ex. 1005, 9:9–23. Figure 9 of Suzuki, which illustrates an example
`embodiment, is reproduced below.
`
`
`Figure 9 shows a power receiver that includes secondary coil block 17,
`load 162, and radiation layer 174. Id. at 4:60–63, 6:29–33, 9:11–13, 9:16–
`19. Secondary coil block 17 includes secondary coil 170, magnetic
`layer 171, shield layer 172, and heat insulation layer 173. Id. at 6:29–33.
`Load 162 is a battery pack located in a battery compartment of the receiver
`and is covered with battery cover 152. Id. at 5:50–51, 6:8–12. Radiation
`layer 174 is formed in between battery cover 152 and secondary coil 170 to
`improve radiation characteristics from battery cover 152. Id. at 9:16–19.
`
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`2. Analysis
`We turn now to our discussion of the claims. We first discuss
`independent claims 1 and 19 in detail, starting with claim 1. We then
`discuss dependent claim 7.
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`a. Independent Claim 1
`Claim 1 is directed to a “wireless power receiver” that comprises a
`“shielding unit,” a “first layer,” a “wireless power receiving coil,” a “second
`layer,” a “first region,” and a “second region.” Claim 1 recites various
`limitations designated by Petitioner as limitations 1.1 through 1.7, which
`relate to these elements. We address the recited claim elements and
`associated limitations in turn.
`
`
`i. Limitation 1.1: “shielding unit”
`Claim 1 recites “a shielding unit.” For this limitation, which
`Petitioner designates as limitation 1.1, Petitioner identifies Suzuki’s shield
`layer 172 as a “shielding unit.” Pet. 21. To illustrate, Petitioner provides an
`inverted and annotated version of Figure 9 of Suzuki, reproduced below. Id.
`
`
`Petitioner’s version of Figure 9 shows a power receiver that includes
`secondary coil block 17. See Ex. 1005, 6:29–33, 9:11–13. Secondary coil
`block 17 includes shield layer 172, which is shown with red shading in the
`figure. Pet. 21; Ex. 1005, 6:29–33.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shown sufficiently for purposes of this Decision that Suzuki
`teaches the recited shielding unit of limitation 1.1.
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`ii. Limitation 1.2: “first layer”
`Claim 1 further recites “a first layer on the shielding unit.” For this
`limitation, which Petitioner designates as limitation 1.2, Petitioner identifies
`Suzuki’s magnetic layer 171 as a “first layer.” Pet. 21. As support,
`Petitioner directs us to where Suzuki teaches that “[t]he shield layer 172 is
`also laminated on at least the upper surface of the magnetic layer 171.”
`Ex. 1005, 6:35–38 (cited by Pet. 21–22). Petitioner further provides an
`inverted and annotated version of Figure 9 of Suzuki, which is reproduced
`below. Pet. 22.
`
`
`Figure 9, as inverted and annotated by Petitioner, shows a power receiver
`that includes secondary coil block 17. See Ex. 1005, 6:29–33, 9:11–13.
`Secondary coil block 17 includes magnetic layer 171 (shown with green
`shading) and shield layer 172 (shown with red shading). Pet. 22; Ex. 1005,
`6:29–33.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shown sufficiently for purposes of this Decision that Suzuki
`teaches the recited first layer of limitation 1.2.
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`iii. Limitation 1.3: “wireless power receiving coil”
`Claim 1 further recites “a wireless power receiving coil on the first
`layer.” For this limitation, which Petitioner designates as limitation 1.3,
`Petitioner identifies Suzuki’s secondary coil 170 as a “wireless power
`receiving coil.” Pet. 22. As support, Petitioner directs us to where Suzuki
`teaches that its “secondary coil 170 is a planar coil and the magnetic
`layer 171 is laminated on at least one side (an upper surface) of the
`secondary coil 170.” Ex. 1005, 6:33–35 (quoted by Pet. 22); see also id. at
`6:41–46 (quoted by Pet. 22). Petitioner also provides an inverted and
`annotated version of Figure 9 of Suzuki, which is reproduced below.
`Pet. 23.
`
`
`This version of Figure 9 shows a power receiver that includes secondary coil
`block 17. See Ex. 1005, 6:29–33, 9:11–13. Secondary coil block 17
`includes secondary coil 170 (shown with blue shading) and magnetic
`layer 171 (shown with green shading), which corresponds to the recited first
`layer. Pet. 23; Ex. 1005, 6:29–33.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shown sufficiently for purposes of this Decision that Suzuki
`teaches the recited wireless power receiving coil of limitation 1.3.
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`iv. Limitation 1.4: “second layer”
`Claim 1 further recites “a second layer on the wireless power
`receiving coil.” For this limitation, which Petitioner designates as
`limitation 1.4, Petitioner identifies Suzuki’s radiation layer 174 as a “second
`layer.” Pet. 23. As support, Petitioner directs us to where Suzuki teaches “a
`radiation layer 174 intervened between the battery cover 152 and the
`secondary coil 170 in order to improve radiation characteristics from the
`battery cover 152.” Ex. 1005, 9:16–19 (quoted by Pet. 23). To illustrate,
`Petitioner provides an inverted and annotated version of Figure 9 of Suzuki,
`reproduced below. Pet. 24.
`
`
`This version of Figure 9 shows a power receiver that includes secondary coil
`block 17 and radiation layer 174. See Ex. 1005, 6:29–33, 9:11–13, 9:16–19.
`Secondary coil block 17 includes secondary coil 170 (shown with blue
`shading), which corresponds to the recited wireless power receiving coil.
`Pet. 24; Ex. 1005, 6:29–33. Radiation layer 174 is shown with purple
`shading. Pet. 24.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shown sufficiently for purposes of this Decision that Suzuki
`teaches the recited second layer of limitation 1.4.
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`v. Limitations 1.5, 1.6, and 1.7: “first region” / “second region”
`Claim 1 further recites “a first region in which at least one of the first
`layer and the second layer overlaps the wireless power receiving coil in a
`vertical direction perpendicular to an upper surface of the shielding unit.”
`Petitioner designates this limitation as limitation 1.5. Pet. 24. Claim 1 also
`recites “a second region in which at least one of the first layer and the
`second layer does not overlap the wireless power receiving coil in the
`vertical direction.” Petitioner designates this limitation as limitation 1.6. Id.
`at 26. Lastly, claim 1 recites “a first distance, measured in the vertical
`direction, between the first layer and the second layer in the first region is
`greater than a second distance, measured in the vertical direction, between
`the first layer and the second layer in the second region.” Petitioner
`designates this limitation as limitation 1.7. Id. at 27. We discuss these
`limitations in turn.
`With respect to limitation 1.5 (which recites “a first region in which at
`least one of the first layer and the second layer overlaps the wireless power
`receiving coil in a vertical direction perpendicular to an upper surface of the
`shielding unit”), Petitioner provides an inverted and annotated version of
`Figure 9 of Suzuki, reproduced below. Pet. 25.
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`Figure 9, as inverted and annotated by Petitioner, shows a power receiver.
`See Ex. 1005, 9:11–13. Relying on its version of Figure 9, Petitioner asserts
`that “Suzuki teaches a region in which the magnetic layer 171 (‘first layer’)
`is below the coil 170 and the radiation layer (‘second layer’) is above the
`coil 170.” Pet. 24. Petitioner further asserts that “each of the magnetic
`layer 171 (‘first layer’) and the radiation layer (‘second layer’) overlaps the
`wireless power receiving coil 170 in a vertical direction perpendicular to an
`upper surface of the shielding layer.” Id. at 25.
`With respect to limitation 1.6 (which recites “a second region in
`which at least one of the first layer and the second layer does not overlap the
`wireless power receiving coil in the vertical direction”), Petitioner provides
`another inverted and annotated version of Figure 9 of Suzuki, reproduced
`below. Pet. 26.
`
`
`This version of Figure 9 shows a power receiver. See Ex. 1005, 9:11–13.
`Petitioner asserts that “Suzuki teaches a region in which neither the magnetic
`layer 171 (‘first layer’) nor the radiation layer (‘second layer’) overlap[s] the
`coil 170 in the vertical direction.” Pet. 26.
`Lastly, with respect to limitation 1.7 (which recites “a first distance,
`measured in the vertical direction, between the first layer and the second
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`layer in the first region is greater than a second distance, measured in the
`vertical direction, between the first layer and the second layer in the second
`region”), Petitioner provides yet another version of Figure 9 of Suzuki,
`reproduced below. Pet. 27.
`
`
`Petitioner’s figure is an inverted, cropped, and annotated version of Figure 9,
`which shows a power receiver. See Ex. 1005, 9:11–13. According to
`Petitioner, “the double-sided red arrow illustrates a point at which the
`distance between the magnetic layer 171 (‘first layer’) and the radiation
`layer 174 (‘second layer’) . . . is greater in the first region than in the second
`region.” Pet. 27. Petitioner asserts that, “in the first region, the coil 170 is
`interposed between the magnetic layer and radiation layer, as the coil is
`pressed into the magnetic layer,” whereas, “in the second region, the
`magnetic layer is adjacent to the radiation layer.” Id. Petitioner contends
`that a “[person of ordinary skill in the art] would have found it obvious that
`the distance between non-adjacent layers is greater than the near-zero
`distance between adjacent layers.” Id. Petitioner relies on the declaration
`testimony of Dr. Phinney. Id. at 27–28 (citing Ex. 1003 ¶¶ 58–60).
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shown sufficiently for purposes of this Decision that Suzuki
`teaches the recited first and second regions of limitations 1.5, 1.6, and 17.
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`b. Independent Claim 19
`Claim 19 is directed to a “wireless power receiver” and for the most
`part recites similar limitations as claim 1, including limitations 1.1 through
`1.6. With respect to those limitations, Petitioner relies on its discussion of
`claim 1 for its analysis of claim 19. Pet. 37–38. Our analysis of claim 1
`applies to claim 19.
`As compared to limitation 1.7 of claim 1 (which recites “a first
`distance, measured in the vertical direction, between the first layer and the
`second layer in the first region is greater than a second distance, measured in
`the vertical direction, between the first layer and the second layer in the
`second region”), claim 19 recites a “gap” between layers rather than a
`“distance, measured in the vertical direction” between layers. More
`specifically, claim 19 recites “a first gap between the first layer and the
`second layer in the first region is larger than a second gap between the first
`layer and the second layer in the second region.” Petitioner addresses this
`limitation separately in its analysis of claim 19.
`In particular, Petitioner relies in part on its discussion of
`limitation 1.7. Pet. 38. Petitioner asserts that, “in the first region, the
`coil 170 is interposed between the magnetic layer and radiation layer,
`whereas, in the second region, the magnetic layer is adjacent to the radiation
`layer.” Id. Petitioner contends that a “[person of ordinary skill in the art]
`would have found it obvious that the gap between non-adjacent layers is
`greater than the gap between adjacent layers.” Id. (citing Ex. 1003 ¶ 86).
`To illustrate, we reproduce below an inverted, cropped, and annotated
`version of Figure 9 of Suzuki, which Petitioner provided in its analysis of
`claim limitation 1.7. Pet. 27.
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`Petitioner’s version of Figure 9 shows a power receiver. See Ex. 1005,
`9:11–13. According to Petitioner’s analysis, the “first distance” and the
`“second distance” of claim 1, shown in the figure, are analogous to the
`recited first gap and the recited second gap of claim 19, respectively. See
`Pet. 38.
`Petitioner adds, “[t]o the extent ‘gap’ is construed more narrowly (i.e.,
`to require a gap above a certain size), it would have been obvious for the
`radiation layer to be secured to the magnetic layer and the coil using an
`adhesive, whereby the adhesive would create a more substantial gap between
`the two layers.” Pet. 38–39. As support, Petitioner asserts that “Suzuki
`regularly describes using adhesives to connect adjoining layers,” and that “a
`[person of ordinary skill in the art] would have found it obvious to similarly
`secure the radiation layer 174 to the magnetic layer and coil using an
`adhesive.” Id. at 39 (citing Ex. 1005, 6:38–42, 6:57–59, 8:4–18, 8:46–65,
`9:32–37, 10:31–34). Petitioner contends that “the space filled by the
`adhesive between the radiation layer and the magnetic layer would be a gap
`(filled with adhesive).” Id. Petitioner relies on the declaration testimony of
`Dr. Phinney. Id. at 38–39 (citing Ex. 1003 ¶ 87).
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`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shown sufficiently for purposes of this Decision that Suzuki
`teaches the recited first and second regions, where a “first gap between the
`first layer and the second layer in the first region is larger than a second gap
`between the first layer and the second layer in the second region.”
`
`
`c. Dependent Claim 7
`Claim 7 depends from claim 1 and recites “a short-range
`communication antenna on the first layer.” For this limitation, Petitioner
`directs us to an embodiment in Suzuki where the power receiving device
`includes a coil for data transmission 154. Pet. 32 (citing Ex. 1005, 12:51–
`64). Petitioner identifies Suzuki’s coil 154 as a “short-range communication
`antenna.” Id. As support, Petitioner points to Suzuki’s teaching that its data
`coil 154 is used to “send and receive a signal (information representing
`charging start, charging completion” to charger 10. Id. at 33 (quoting
`Ex. 1005, 12:56–58). Petitioner further asserts that “a [person of ordinary
`skill in the art] would have found it obvious that the data coil 154 is a short-
`range antenna because the corresponding data coil 104 in the charger 10 is
`only a short distance away when the power receiving device is charging on
`the charger.” Id. (citing Ex. 1005, 12:56–58, Fig. 10).
`Petitioner also provides an annotated version of Figure 21 of Suzuki,
`which is reproduced below. Pet. 34.
`
`19
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`
`Figure 21 of Suzuki, as annotated by Petitioner, shows “essential parts of [a]
`contactless power transmission apparatus.” See Ex. 1005, 4:36–37.
`Petitioner asserts that “the data coil 154, like the power receiving coil 170, is
`on a magnetic layer (“first layer”): ‘[T]he coil 154 is located on the inner
`face of the housing 150, and the magnetic layer 155 is located on the
`coil 154.’” Pet. 34 (quoting Ex. 1005, 12:60–62 (emphasis omitted)).
`According to Petitioner, “the magnetic layer 171 and the magnetic layer 155
`are on the same plane and together represent a ‘first layer’ as claimed.” Id.
`Petitioner adds that “the claim language does not require that the first layer
`be contiguous.” Id.
`We have concerns regarding Petitioner’s analysis of claim 7. In
`particular, we note that Petitioner relies on Figure 9 of Suzuki for its analysis
`of claim 1, where Suzuki’s magnetic layer 171 corresponds to the recited
`first layer of claim 1. Pet. 21–22. Petitioner, however, relies on Figure 21
`of Suzuki for its analysis of claim 7, where the magnetic layer to which
`Petitioner refers as magnetic layer 171 is actually labeled in Figure 21 as
`magnetic layer 171H (not magnetic layer 171). See Ex. 1005, Fig. 21. For
`example, Petitioner asserts that Suzuki’s magnetic layer 171 and magnetic
`
`20
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`layer 155 are on the same plane. Pet. 34. Yet Suzuki shows magnetic
`layer 171H (not magnetic layer 171) and magnetic layer 155 being on the
`same plane. Ex. 1005, Fig. 21; see also Pet. 34 (Petitioner’s annotated
`version of Figure 21 of Suzuki highlighting magnetic layer 171H and
`magnetic layer 155). Petitioner appears to be combining separate
`embodiments within Suzuki for its analysis of claim 7 without sufficient
`explanation.
`
`
`3. Summary
`In view of the foregoing, we determine that Petitioner has
`demonstrated a reasonable likelihood of showing that claims 1 and 19 would
`have been obvious over Suzuki. See Realtime Data, LLC v. Iancu, 912 F.3d
`1368, 1373 (“While [the patent owner] argues that the use of [the reference]
`as a single anticipatory reference would have been more properly raised
`under § 102, it is well settled that ‘a disclosure that anticipates under §102
`also renders the claim invalid under § 103, for “anticipation is the epitome of
`obviousness.”’”). Claims 2, 5, 6, 14–16, and 20 depend from claims 1 or 19.
`Having reviewed Petitioner’s arguments asserting that claims 2, 5, 6, 14–16,
`and 20 would have been obvious over Suzuki, (see Pet. 28–37, 39), we also
`determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing on its assertion as to these dependent claims.
`As to dependent claim 7, however, we express concern with
`Petitioner’s showing.
`
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`D. Obviousness over Suzuki and Park
`Petitioner asserts that claim 7 of the ’842 patent would have been
`obvious over Suzuki and Park. Pet. 39–54. Patent Owner does not
`separately challenge Petitioner’s analysis regarding this claim. See
`generally Prelim. Resp. For the reasons explained below, we express
`concern regarding Petitioner’s showing for this ground.
`We provided an overview of Suzuki above. See supra Part III.C.1.
`Before addressing Petitioner’s analysis, we additionally provide an overview
`of Park.
`
`
`1. Park
`Park relates to “a portable terminal having a secondary coil for
`wireless charging, as well as a plurality of antenna elements.” Ex. 1006,
`1:16–19. To illustrate, Figure 4 of Park is reproduced below.
`
`
`Figure 4 shows an example configuration of a portable terminal that
`implements a wireless charging function and a Near Field Communication
`(NFC) function using a coil module comprising shielding member 131 (not
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`shown) and coils 133 and 135, where coil 133 serves as a secondary coil
`used for wireless charging and coil 135 serves as an antenna element for
`NFC. Id. at 3:9–11, 4:60–65. Coil 135 surrounds coil 133. Id. at 3:61–64.
`Coils 133 and 135 are attached to shielding member 131. Ex. 1006,
`3:4–8. To illustrate, Figure 3 of Park is reproduced below.
`
`
`Figure 3 is a sectional view of the coil module. Id. at 2:43. Shielding
`member 131 includes accommodation grooves 141 and 142. Id. at 3:35–37.
`Accommodation groove 142 surrounds accommodation groove 141. Id. at
`3:37–42. Coil 133 is accommodated in accommodation groove 141,
`whereas coil 135 is accommodated in accommodation groove 142. Id. at
`3:56–59. Shielding wall 137, which shields interference of electronic waves
`between coils 133 and 135, is interposed between accommodation
`grooves 141 and 142. Id. at 3:42–44, 3:66–4:1.
`
`
`2. Analysis
`Claim 7 depends from claim 1 and recites “a short range
`communication antenna on the first layer.” For this limitation, Petitioner
`refers to its analysis of claim limitations 1.2 and 1.3 with respect to
`obviousness over Suzuki, and reiterates its position that “Suzuki teaches
`disposing a power receiving coil 170 on a magnetic layer 171 (first layer).”
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`Pet. 51 (citing Ex. 1005, 6:29–46). Petitioner further asserts that Suzuki also
`teaches
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