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 RESPONSE
`
`
`
`
`
`
`
`
`
`____________
`
`
`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 RESPONSE
`
`
`
`
`
`
`
`
`
`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`
`Table of Contents
`
`Introduction ........................................................................................................ 1
`I.
`II. Burden of Proof .................................................................................................. 3
`III. Background ........................................................................................................ 4
`A. U.S. Patent No. 8,421,574 (“Suzuki”) ........................................................... 4
`B. Challenged Claims 1 and 7 .......................................................................... 10
`IV. 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 ..................................................................................................... 12
`V. Ground 2 Fails Because Park is not Prior Art and the Petition’s Rationale to
`Combine Suzuki with Park is Unsupported ..................................................... 18
`A. Park is not Prior Art to the ’842 Patent ........................................................ 19
`B. A POSITA Would not be Motivated to Combine Suzuki with Park ........... 23
`1. The Petition identifies no benefit for its proposed combination. .............. 27
`
`2. A POSITA would have further avoided the Petition’s proposed
`combination because that combination would be detrimental to Suzuki’s goals
`....... .................................................................................................................. 31
`
`
`
`
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`3. The Petition’s combination is supported only by hindsight. .................... 32
`
`
`VI. Conclusion ....................................................................................................... 34
`
`
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`i
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
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`Table of Authorities
`
`Cases
`Apple, Inc. v. Realtime Data LLC,
`IPR2016-01737, 2018 WL 1326656 (PTAB Mar. 13, 2018) ............................. 30
`
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................... 30
`
`
`Brooktree Corp. v. Advanced Micro Devices, Inc.,
`977 F.2d 1555 (Fed. Cir. 1992) ........................................................................... 19
`
`
`Commonwealth Sci. & Indus. Rsch. Organisation v. Buffalo Tech. (USA), Inc.,
`542 F.3d 1363 (Fed. Cir. 2008) ........................................................................... 23
`
`
`Duo Sec. Inc. v. Strikeforce Techs., Inc.,
`IPR2017-01041, 2017 WL 4677235 (PTAB Oct. 16, 2017) .............................. 29
`
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................. 4
`
`
`Ex Parte Brillowska-Dabrowska,
`Appeal No. 2016-006485, 2016 WL 4525004 (PTAB Aug. 24, 2016) .............. 29
`
`
`Ex Parte Debates,
`Appeal No. 2020-006536, 2022 WL 263587 (PTAB Jan. 27, 2022) ................. 28
`
`
`Ex Parte Masashi Hayakawa,
`Appeal No. 2020-006550, 2021 WL 6133976 (PTAB Dec. 27, 2021) .............. 34
`
`
`Ex Parte Shigetoshi Ito & Daisuke Hanaoka,
`Appeal No. 2010-003391, 2012 WL 3041144 (BPAI July 23, 2012) .......... 32, 34
`
`
`Grain Processing Corp. v. Am.–Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................. 33
`
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................. 3
`
`
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
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`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc.,
`222 F.3d 951 (Fed. Cir. 2000) ............................................................................. 17
`
`
`In re Chitayat,
`408 F.2d 475 (CCPA 1969) ................................................................................ 17
`
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................. 4
`
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................... 32, 33, 34
`
`
`In re Wright,
`569 F.2d 1124 (CCPA 1977) .............................................................................. 17
`
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, 2018 WL 5098902 (PTAB Oct. 16, 2018) ........................ 30, 31
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 28, 34
`
`
`Nystrom v. TREX Co., Inc.,
`424 F.3d 1136 (Fed. Cir. 2005) ....................................................................... 3, 17
`
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................. 29
`
`
`Schering Corp. v. Amgen Inc.,
`222 F.3d 1347 (Fed. Cir. 2000) ........................................................................... 20
`
`
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ........................................................................... 32
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 4
`
`35 U.S.C. § 316(e) .................................................................................................... 4
`
`
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`iii
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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)
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`Exhibits
`
`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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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`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.
`
`v
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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 Response
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`I.
`
`Introduction
`
`The Petition challenges the claims of U.S. Patent No. 10,662,842 (the “’842
`
`patent”) under two grounds of unpatentability:
`
`• Ground 1. Claims 1, 2, 5-7, 14-16, 19, and 20 obvious over Suzuki.
`
`• Ground 2. Claim 7 obvious over Suzuki in view of Park.
`
`This Patent Owner Response addresses various arguments raised in Petition’s
`
`Grounds 1-2 for claim 7 of the ’842 patent.1 For Ground 1, with the exception of
`
`claim 7, the Petition relies solely on the assertion that one particular embodiment of
`
`Suzuki, the second embodiment, discloses all of the limitations of the challenged
`
`claims. As explained below, with respect to claim 7, which depends from claim 1,
`
`the Petition and accompanying declaration of D. Joshua Phinney look to another
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`embodiment of Suzuki, the sixth embodiment, to satisfy the dependent claim
`
`limitations. Notably absent from the sixth embodiment are the structures of the
`
`second embodiment that Petitioner contends satisfy the “shielding unit” and “second
`
`layer” limitations of the independent claim. In short, the sixth embodiment does not
`
`satisfy claim 1 of the ’842 patent and therefore cannot satisfy claim 7.
`
`
`
` 1
`
` Although this Response does not address all claims addressed by the Petition with
`respect to Ground 1, Petitioner nevertheless bears the burden of proof in this
`proceeding, and Patent Owner does not concede that Ground 1 renders any
`challenged claims invalid.
`
`
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`1
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`Neither the Petition nor the accompanying declaration analyze the missing
`
`structures and the resultant impact on the analysis of claim 7. As addressed further
`
`below in this response and the accompanying declaration of Dr. David S. Ricketts,
`
`a person of ordinary skill in the art (“POSITA”) would recognize that Suzuki
`
`purposefully excludes those particular structures from the sixth embodiment and a
`
`POSITA would not be motivated to combine those particular structures from the
`
`second embodiment with the sixth embodiment. Neither the Petition nor Dr.
`
`Phinney make any allegation whatsoever that a POSITA would have derived any
`
`benefit from doing so. In fact, a POSITA would understand that the proposed
`
`combination would be detrimental to Suzuki, because it would increase the thickness
`
`of Suzuki’s sixth embodiment design without any tangible benefit. A POSITA
`
`would thus not have been motivated to make the combination; for this reason alone,
`
`the Petition cannot show challenged claim 7 to be unpatentable.
`
`Furthermore, even assuming arguendo that the sixth embodiment could satisfy
`
`the independent claim limitations, the Petition still fails to show that Suzuki satisfies
`
`the “short-range communication antenna on the first layer” limitation. With respect
`
`to whether Suzuki discloses the antenna “on the first layer,” Petitioner and Dr.
`
`Phinney rely solely on an analysis of drawings that are not made to scale. It is black
`
`letter law that it is erroneous to rely on invalidity arguments founded in an un-
`
`corroborated analysis of un-scaled drawings. See Nystrom v. TREX Co., Inc., 424
`
`
`
`2
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`F.3d 1136, 1149 (Fed. Cir. 2005). For this independent reason, the Petition cannot
`
`show challenged claim 7 to be unpatentable.
`
`Petition’s Ground 2 fails because the Petition does not show that Park is prior
`
`art to the ’842 patent. The Petition fails to establish that the claims of the ’842 patent
`
`are entitled to anything but the date of the earliest-filed parent application, meaning
`
`Park is not prior art. Ground 2 is also deficient because it relies on conclusory
`
`allegations of obviousness for its combination of Suzuki and Park. For instance, the
`
`Petition ignores the fact that Suzuki already teaches significant aspects of Park that
`
`Petitioner relies upon. A POSITA considering the proposed combinations with Park
`
`would conclude them to not offer a benefit in light of the results already taught by
`
`Suzuki. Furthermore, a POSITA would have avoided implementing other proposed
`
`changes advanced by Petitioner because the results would be detrimental to Suzuki.
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`The Petition merely assumes without support that a POSITA would have found the
`
`resulting combination to be desirable.
`
`For the above reasons, and as explained in further detail below, the Petition
`
`fails to establish that challenged claim 7 of the ’842 patent is unpatentable.
`
`II. Burden of Proof
`
`“In an [inter partes review], the petitioner has the burden from the onset to
`
`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
`
`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. §
`
`
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`3
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`312(a)(3) (requiring inter partes review petitions to identify “with particularity . . .
`
`the evidence that supports the grounds for the challenge to each claim”)). This
`
`burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC
`
`v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`
`of proof in inter partes review). Furthermore, the petitioner cannot satisfy its burden
`
`of proving obviousness by employing “mere conclusory statements.” In re Magnum
`
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). “The petitioner must
`
`instead articulate specific reasoning, based on evidence of record, to support the
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`legal conclusion of obviousness.” Id. To prevail in an inter partes review, Petitioner
`
`must show by a preponderance of the evidence that a patent is invalid. 35 U.S.C. §
`
`316(e).
`
`III. Background
`A. U.S. Patent No. 8,421,574 (“Suzuki”)
`
`Suzuki generally relates to wireless charging and communication. Ex. 1005,
`
`Abstract. As is common in wireless power transfer technology, Suzuki includes a
`
`magnetic layer to “enhance the power transmission efficiency from the primary side
`
`to the secondary side.” Ex. 1005, 7:23-24. Suzuki describes six separate
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`embodiments for the wireless charging system. Ex. 2017, Declaration of Dr. David
`
`S. Ricketts in Support of Patent Owner’s Response (“Ricketts Declaration”), ¶ 52.
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`4
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`Suzuki’s first embodiment consists of Figs. 1A, 1B, 2, 3, 4A, 4B, 4C, 5, 6A,
`
`6B, 6C, 6D, 6E, 7A, 7B, 7C, and 8, and the accompanying written description in the
`
`specification at column 4, line 46 through column 9, line 8. As Dr. Ricketts explains
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`in his declaration, the figures and description describe, inter alia, with respect to the
`
`first embodiment: (i) the general structure of a wireless charging system, (ii) the
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`circuitry and structure of a wireless charging transmitter, (iii) the circuitry of a
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`wireless charging receiver; (iv) the general design and structure of the wireless
`
`charging receiver coil block; (v) the specific laminated structure of, and the
`
`manufacture of, the receiving coil block; and (vi) various manufacturing methods
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`for the receiving coil block. Ex. 2017, Ricketts Declaration, ¶ 53.
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`Suzuki’s second embodiment consists of Fig. 9 and the accompanying written
`
`description in the specification at column 9, line 10 through column 9, line 23. As
`
`Dr. Ricketts explains in his declaration, Suzuki’s second embodiment adds a
`
`radiation layer 174 to the first embodiment. Ex. 2017, Ricketts Declaration, ¶ 55;
`
`see also Ex. 1005, 9:16-19 (“The power receiver in the second embodiment further
`
`includes 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.”). The second embodiment is the only embodiment that includes the
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`radiation layer 174. Ex. 2017, Ricketts Declaration, ¶ 56.
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`5
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`Suzuki’s third embodiment consists of Figs. 10 and 11, and the accompanying
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`written description in the specification at column 9, line 25 through column 9, line
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`40. As Dr. Ricketts explains in his declaration, Suzuki’s third embodiment describes
`
`the secondary coil block being adhered to another part of the cell phone. Ex. 2017,
`
`Ricketts Declaration, ¶ 59; see also Ex. 1005, 9:34-37 (“the upper surface of a heat
`
`insulation layer 173 is stuck on the bottom of the secondary battery with adhesive or
`
`pressure sensitive adhesive”). Notably, the third embodiment does not include a
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`radiation layer 174. Ex. 2017, Ricketts Declaration, ¶ 59.
`
`Suzuki’s fourth embodiment consists of Figs. 12 and 13, and the
`
`accompanying written description in the specification at column 9, line 41 through
`
`column 9, line 62. As Dr. Ricketts explains in his declaration, Suzuki’s fourth
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`embodiment describes the secondary coil block being formed in the shape of a card
`
`that will fit in the battery compartment of a cell phone. Ex. 2017, Ricketts
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`Declaration, ¶ 61. Like the third embodiment, the fourth embodiment does not
`
`include a radiation layer 174. Id.
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`Suzuki’s fifth embodiment consists of Figs. 14A, 14B, 15A, 15B, and 16, and
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`the accompanying written description in the specification at column 9, line 64
`
`through column 10, line 35. As Dr. Ricketts explains in his declaration, Suzuki’s
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`fifth embodiment describes manufacturing variations of the first embodiment
`
`involving the pressing of the magnetic layer 171, the shield layer 172 and the heat
`
`
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`6
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`insulation layer 173. Ex. 2017, Ricketts Declaration, ¶ 63. Like the third and fourth
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`embodiments, the fifth embodiment does not include a radiation layer 174. Id.
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`Suzuki’s sixth embodiment consists of Figs. 17A, 17B, 18, 19, 20, 21, 22A
`
`and 22B, and the accompanying written description in the specification at column
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`10, line 35 through column 13, line 2. As Dr. Ricketts explains in his declaration,
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`Suzuki’s sixth embodiment describes the use of a plurality of magnetic layers on
`
`both the transmitting and receiving sides in lieu of the singular magnetic layer of the
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`prior embodiments. Ex. 2017, Ricketts Declaration, ¶ 65; see also Ex. 1005, 11:9-
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`17 (“[A] power receiver (a secondary device) in the secondary side has a housing
`
`150 and a secondary coil 170 stuck on the inner face of the housing 150, and the
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`plurality of magnetic layers of the secondary side are magnetic layers 171H and
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`171L that are laminated on one side of the secondary coil 170. Specifically, the
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`magnetic layer (first magnetic layer) 171H is laminated on the one side of the
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`primary coil 170, and the magnetic layer (second magnetic layer) 171L is laminated
`
`on the magnetic layer 171H.”). Like the third, fourth and fifth embodiments, the
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`sixth embodiment does not include a radiation layer 174. Ex. 2017, Ricketts
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`Declaration, ¶ 70; see also Ex. 2020, November 1, 2022 Phinney Dep. Tr., 155:14-
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`156:7 (Dr. Phinney confirming that, in the discussion of the sixth embodiment at
`
`column 10, line 36 through column 13, line 2, he could identify no reference to a
`
`radiation layer 174.).
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`7
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`The sixth embodiment also lacks the shield layer 172. As Dr. Ricketts
`
`explains, the inclusion of multiple magnetic layers in the sixth embodiment provides
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`greater noise reduction than the shield layer of the other embodiments:
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`However, the housings of primary and secondary devices exist
`between primary and secondary coils, and accordingly coupling
`between the primary and secondary coils is reduced and magnetic flux
`leakage can be increased, thereby creating difficulty in fully
`eliminating noise with a shield layer made of copper foil, aluminum
`foil or the like.
`
`Therefore, in order to further reduce the influence of noise, at least
`secondary side of the present invention includes a plurality of
`magnetic layers.
`Ex. 1005, 10:57-65 (emphasis added); Ex. 2017, Ricketts Declaration, ¶ 68.
`
`The exclusion of the shield layer 172 in the sixth embodiment helps offset the
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`additional thickness attributable to the multiple magnetic layers. Id., ¶ 67 (combined
`
`thickness of 171H and 171L of the sixth embodiment is 0.3 mm, at least double the
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`0.05 mm to .15 mm thickness of the magnetic layer 171 of the other embodiments).
`
`Fig. 21 is a variation of the sixth embodiment that includes a data transmission
`
`coil in addition to the power receiving coil:
`
`[T]he primary and secondary devices are a charger 10 and a cell phone
`15, respectively. The charger 10 further includes a coil for data
`transmission 104 and a magnetic layer 105, while the cell phone 15
`further includes a coil for data transmission 154 and a magnetic layer
`155. The coils 104 and 154 are used to send and receive a signal
`(information) representing charging start, charging completion or the
`like. The coil 104 is located on the inner face of the housing 100, and
`the magnetic layer 105 is located on the coil 104. Similarly, the coil 154
`is located on the inner face of the housing 150, and the magnetic layer
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`8
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`155 is located on the coil 154. In this embodiment, reliability of signal
`transmission between the coils 104 and 154 can be improved.
`Ex. 1005, 12:51-64.
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`In the discussion of each of the second through sixth embodiments, the
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`specification of Suzuki recites the following: “For the purpose of clarity, like kind
`
`elements are assigned the same reference numerals as depicted in the first
`
`embodiment.” See, e.g., id., 9:13-15; see also id., 9:28-29, 9:45-47, 10:2-3, 10:41-
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`42. These statements inform a POSITA that the level of structural disclosure for
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`each of the second through sixth embodiments is commensurate with the level of
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`structural disclosure of the first embodiment. In other words, to the extent a
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`particular component or layer is “essential” to a given embodiment, the drawings
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`and/or written description for that embodiment will disclose that particular
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`component or layer and its role in the embodiment. See id., 4:7-10 (“FIG. 9 is a
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`sectional view of the essential parts of a power receiver in contactless power
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`transmission apparatus in accordance with a second embodiment of the present
`
`invention;”), 4:36-37 (“FIG. 21 illustrates the essential parts of contactless power
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`transmission apparatus in an embodiment;”). Dr. Ricketts explains further:
`
`Suzuki states that for the sixth embodiment, “like kind elements are
`assigned the same reference numerals as depicted in the first
`embodiment.” Ex. 1005, 10:41-42. I interpret this statement to be
`informing a POSITA that the level of disclosure of the drawings, and
`accompanying written description, for this embodiment is at the same
`level as for the first embodiment. To the extent a particular element
`from the first embodiment is not disclosed in the figures or written
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`9
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`description for this embodiment, a POSITA would understand that it is
`not included in this embodiment. Similarly, to the extent a particular
`element from this embodiment is not disclosed in the figures or written
`description for the first embodiment, a POSITA would not understand
`that element to be included in the first embodiment.
`Ex. 2017, Ricketts Declaration, ¶ 64; see also id., ¶¶ 54, 58, 60, 62.
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`Of particular note, the sixth embodiment does not have the radiation layer 174
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`of the second embodiment or the shield layer 172 of the first through fifth
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`embodiments, and a POSITA would understand that Suzuki is not teaching the use
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`of the radiation layer 174 or the shield layer 172 with this sixth embodiment. Id., ¶
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`70.
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`B. Challenged Claims 1 and 7
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`Claim 1 of the ’842 recites:
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`[1.0] A wireless power receiver, comprising:
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`[1.1] a shielding unit;
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`[1.2] a first layer on the shielding unit;
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`[1.3] a wireless power receiving coil on the first layer;
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`[1.4] a second layer on the wireless power receiving coil;
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`[1.5] 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
`[1.6] 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,
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`10
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`[1.7] 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.
`Claim 7 of the ’842 patent depends from claim 1 and recites:
`
`[7.1] The wireless power receiver of claim 1, comprising: a short range
`communication antenna on the first layer.
`With respect to the invalidity challenge of at least independent claims 1 and
`
`19 of the ’842 patent, Petitioner and Dr. Phinney rely solely on the second
`
`embodiment of Suzuki. See Petition, pp. 16-28, 37-39; Ex. 1003, ¶¶ 38-60, 79-87.
`
`An annotated version of Fig. 9 (with respect to claim 1 of the ’842 patent) is
`
`reproduced below to show the particular elements of the second embodiment that
`
`Petitioner and Dr. Phinney rely on:
`
`Ex. 1003, ¶ 36; see also id., ¶¶ 40, 43, 46, 48, 50, 52, 53, 55, 58; see also Petition,
`
`
`
`pp. 18, 20-27.
`
`
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`11
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`With respect to the invalidity challenge of claim 7 in Ground 1 and the
`
`additional limitations presented in the claim, Petitioner and Dr. Phinney rely on the
`
`sixth embodiment of Suzuki and Fig. 21 in particular:
`
`
`
`Ex. 1003, ¶ 70; see also id., ¶ 68; see also Petition, pp. 32-34.
`
`IV. 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 noted above, with respect to claim 7, Petitioner and Dr. Phinney point to
`
`the sixth embodiment in Suzuki and Fig. 21, in particular, for an electromagnetic
`
`induction power receiving device that includes a coil for short-range data
`
`communication. See, e.g., Ex. 1003, ¶ 72 (“[B]ecause Suzuki teaches an example in
`
`
`
`12
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`which the device includes a coil for short range data transmission on a magnetic
`
`layer, Suzuki renders obvious ‘a short range communication antenna on the first
`
`layer’ as claimed.”); see also Petition, p. 35. But, as noted above and by Dr. Ricketts,
`
`Petitioner and Dr. Phinney point to the second embodiment for the independent
`
`claim from which claim 7 depends. See, e.g., Ex. 2017, Ricketts Declaration, ¶ 75.
`
`More specifically, they rely on the shield layer 172 to show that the limitation of
`
`[1.1] “a shielding unit” is satisfied and the radiation layer 174 to show that the
`
`limitation of [1.4] “a second layer on the wireless power receiving coil” is satisfied:
`
`
`
`shielding
`unit
`
`Suzuki, Fig. 9
`(annotated)
`
`Ex. 1003, ¶ 43; see also Petition, pg. 21.
`
`
`
`
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`13
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`
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`
`
`
`Ex. 1003, ¶ 50; see also Petition, pp. 23-24.
`
`The shield layer 172 and the radiation layer 174 do not exist in the sixth
`
`embodiment. Id., ¶¶ 64-70. Thus, by switching to the sixth embodiment, Petitioner
`
`and Dr. Phinney can no longer show that the [1.1] “shielding unit” and [1.4] “second
`
`layer” are satisfied, as well as the subsequent limitations [1.2], [1.5], [1.6], and [1.7]
`
`that reference either the “shielding unit” or the “second layer.” Id., ¶ 76.
`
`Even assuming that a POSITA would be motivated to combine the second
`
`embodiment and the sixth embodiment, the Petition and Dr. Phinney offer only a
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`conclusory analysis as to how the data coil 154 of Suzuki would be on the magnetic
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`layer 171H and therefore “on the first layer” as required by claim 7 of the ’842
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`patent. That analysis is limited to a cursory examination of Fig. 21 showing the data
`
`coil 154 and the secondary coil 170 to be approximately of the same thickness to
`
`conclude that “the magnetic layer 171 and the magnetic layer 155 are on the same
`
`
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`14
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`plane and together represent a ‘first layer’ as claimed.” Ex. 1003, ¶ 71. This
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`conclusion fails for several reasons.
`
`First, Fig. 21 is clearly meant to be illustrative and is not made to scale.
`
`Among other things, it shows the primary coil 120 and the secondary coil 170 to be
`
`of approximately the same dimensions, yet the written description for the sixth
`
`embodiment, in reference to Fig. 17A and 17B describes the secondary coil 170 to
`
`be smaller in circumference and significantly thinner. See Ex. 1005, 11:35-40 (“In
`
`an example, the outside diameter, inside diameter and thickness of the primary coil
`
`120 are φ34 mm, φ10 mm and 1 mm, respectively and the outside diameter, inside
`
`diameter and thickness of the primary [secondary] coil 170 are φ25 mm, φ8 mm and
`
`0.2 mm, respectively.”). The coil 170 is 1/5 the thickness of coil 120, yet Fig. 17A
`
`(as well as Figs. 20 and 21) of Suzuki shows the two coils as rectangular boxes with
`
`approximately the same thickness. Ex. 2017, Ricketts Declaration, ¶ 77.
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`Ex. 1005, Fig. 17A.
`
`
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`15
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`Fig. 21 uses the same reference numbers for the coils 120 and 170, and a
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`POSITA would understand they are like coils with different thicknesses—no
`
`additional limitations are disclosed in Suzuki such that coils 120 and 170 are the
`
`same thickness in Fig. 21 and are not the same thickness in Fig. 17A. Likewise, in
`
`Fig. 21, coil 154 is represented by a rectangle with the same thickness as coil 170
`
`and coil 120, although the latter are explicitly disclosed as having different
`
`thicknesses by a factor of 5. A POSITA would understand that Fig. 21, like Fig.
`
`17A and others, illustrate the structure of the embodiment and are not meant to be
`
`scale drawings such that a layer disposed on coil 154 must be therefore in the same
`
`plane as a layer disposed on coil 170. Without such dimensions, it is not possible to
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`conclude that “the magnetic layer 171 and the magnetic layer 155 are on the same
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`plane” as Petitioner and Dr. Phinney do. Petition, pg. 34 (citing Ex. 1003, ¶ 71.).
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`Ex. 2017, Ricketts Declaration, ¶ 78.
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`Neither the Petition nor Dr. Phinney offer any analysis as to the dimensions,
`
`including the thickness of the data coil 154 and, without such dimensions, it is not
`
`possible to conclude that “the magnetic layer 171 and the magnetic layer 155 are on
`
`the same plane.” Their analysis is limited to the illustration of Fig. 21. See Ex. 2020,
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`November 1, 2022 Phinney Dep. Tr., 158:13-21:
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`Q: In terms of 155 and 171H being in the same plane, besides Figure
`21, did you find any other reference in the specification as to the two
`magnetic layers being in the same plane?
`
`
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`16
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`IPR2022-00351 (’842 Patent)
`Patent Owner’s Response
`A: I believe this is all I found, and I think I’ve cited to the -- to
`everything I found about this topic, so annotating Figure 21. I think
`that’s really what I’m relying on, and I think that’s here.
`This analysis is inadequate. “[A]rguments based on drawings not explicitly
`
`made to scale in issued patents are unavailing.” Nystrom, 24 F.3d at 1149. The
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`Federal Circuit has expressed its “disfavor in reading precise proportions into patent
`
`drawings which do not expressly provide such proportions.” Id. (citing Hockerson-
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`Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)).
`
`While the written description can support an interpretation of a drawing, “[a]bsent
`
`any written description in the specification of quantitative values, arguments based
`
`on measurement of a drawing are of little value.” In re Wright, 569 F.2d 1124, 1127
`
`(CCPA 1977) (citing In re Chitayat, 4
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