`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00385
`Patent 9,843,215
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`Table of Contents
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. THE PATENTED TECHNOLOGY .................................................................. 2
`A.
`The ’215 Patent Was Invented by LG Innotek .................................... 2
`B. Overview of the ’215 Patent ................................................................ 2
`C.
`Challenged ’215 Patent Independent Claims ....................................... 5
`III. OVERVIEW OF ASSERTED REFERENCES ................................................. 6
`Sakuma (Ex. 1005)—a primary reference—does not disclose the
`A.
`claimed invention ................................................................................. 6
`B. Hiroki (Ex. 1007)— a primary reference—does not disclose the
`claimed invention ............................................................................... 10
`Suzuki (Ex. 1006)—a secondary reference—does not compensate for
`the failures of Sakuma or Hiroki ........................................................ 14
`D. Akiho (Ex. 1022)—a secondary reference—does not compensate for
`the failures of Hiroki .......................................................................... 14
`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE LIKELIHOOD
`OF INVALIDITY OF THE CHALLENGED CLAIMS ................................. 15
`A. Ground 1: Claims 1, 8, 9, 11, 13, 17, 19, and 21 are not anticipated by
`Sakuma ............................................................................................... 15
`Sakuma does not anticipate 1[i]/13[j] ...................................... 15
`1.
`
`a. Sakuma's Figure 1 and 2 embodiments do not disclose
` "sendust"..........................................................................16
`
`b. Sakuma only discloses the use of "sendust" in the Figure
`7 embodiment…...……………………………………..19
`
`C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`c. The Petition's anticipation theory fails………………....21
`
`
`
`i
`
`

`

`E.
`
`F.
`
`C.
`
`D.
`
`E.
`
`B. Ground 2: Dependent Claims 4, 5, 12, 18, and 22 Are Not Rendered
`Obvious by Sakuma in view of Hiroki. ............................................. 23
`C. Ground 3: Claims 1, 8-11, 13, 17, and 19-21 are Not Rendered
`Obvious by Sakuma in view of Suzuki. ............................................. 23
`D. Ground 4: Dependent Claims 4, 5, 12, 18, and 22 Are Not Rendered
`Obvious by Sakuma in view of Suzuki and Hiroki. ........................... 23
`Ground 5: Claims 1, 4, 5, 8, 9, 11-13, 17-19, 21, and 22 are Not
`Anticipated by Hiroki. ....................................................................... 24
`1.
`Hiroki does not anticipate 1[d]/13[e]. ...................................... 24
`Ground 6: Claims 1, 4, 5, 8, 9, 11-13, 17-19, 21, and 22 are Not
`Rendered Obvious by Hiroki in view of Akiho. ................................ 30
`V. INSTITUTION SHOULD BE DENIED UNDER § 314(a) ............................ 32
`A.
`Factors 1–3 do not compel institution. ............................................... 33
`B.
`Factor 4 weighs against institution, as Petitioner delayed filing after
`learning of Sakuma, Suzuki, Hiroki, and Akiho. ............................... 35
`Factor 5 also weighs against institution, as Petitioner has no valid
`excuse for its delay. ............................................................................ 36
`Factor 6 weighs heavily against institution, as the district court is set
`to rule on the validity of the same claims. ......................................... 37
`Factor 7 also weighs against institution, as Petitioner’s strategic
`timing prevents coordination/consolidation with the earlier IPR,
`wastes the Board’s resources, and prejudices Patent Owner. ............ 39
`Summary of Factors ........................................................................... 41
`F.
`VI. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ...................... 41
`Factor 1: The district court has not granted a stay, nor is there any
`A.
`evidence that a stay will be granted. .................................................. 43
`Factor 2: The district court trial will occur before the deadline for a
`final decision in this proceeding. ....................................................... 45
`
`B.
`
`
`
`ii
`
`

`

`C.
`
`D.
`
`Factor 3: By the time an institution decision is reached, the parties and
`the court will have completed claim construction and discovery will
`nearly be closed. ................................................................................. 47
`Factor 4: There is substantial overlap between this IPR and the district
`court proceedings. .............................................................................. 48
`Factor 5: Petitioner is a defendant in the district court litigation. ...... 50
`E.
`Factor 6: The petition is without merit and unlikely to succeed. ....... 51
`F.
`VII. CONCLUSION ................................................................................................ 54
`
`
`
`
`
`
`
`
`iii
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`

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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Samsung
`Electronics Co. Ltd. and Samsung Electronics America, Inc.,
`Case No. 6:21-cv-00454-ADA, Dkt. No. 42 (W.D. Tex. Jan. 7,
`2022)
`
`Scheduling Order, Scramoge Technology Ltd. v. Samsung
`Electronics Co. Ltd. and Samsung Electronics America, Inc.,
`Case No. 6:21-cv-00454-ADA, Dkt. No. 46 (W.D. Tex. Jan. 21,
`2022)
`
`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 (OGP)
`4.1, Judge Alan D. Albright (Apr. 14, 2022)
`
`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 Preliminary Disclosure of
`Asserted Claims and Infringement Contentions to Samsung in
`
`
`
`iv
`
`

`

`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`Scramoge Technology Ltd. v. Samsung Elec. Co. Ltd., et al, Case
`No. 6:21-cv-00454-ADA (W.D. Tex.)
`
`Defendants Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. Preliminary Invalidity Contentions in
`Scramoge Technology Ltd. v. Samsung Elec. Co. Ltd., et al, Case
`No. 6:21-cv-00454-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)
`
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc., Case No. 6:21-cv-00454-ADA, Dkt.
`No. 53 (W.D. Tex. Feb. 11, 2022)
`
`Scheduling Order, Scramoge Technology Ltd. v. Samsung
`Electronics Co. Ltd. and Samsung Electronics America, Inc.,
`Case No. 6:21-cv-00454-ADA, Dkt. No. 55 (W.D. Tex. Feb. 14,
`2022)
`
`United States Patent Application Publication US 2010/0007215
`(“Sakuma”)
`
`Notice of IPR Petition, Scramoge Technology Ltd. v. Google
`LLC, Case No. 6:21-cv-00616-ADA, Dkt. No. 31 (W.D. Tex. Jan.
`7, 2022)
`
`Plaintiff Scramoge Technology Ltd.’s Amended Preliminary
`Disclosure of Asserted Claims and Infringement Contentions to
`Google in Scramoge Technology Ltd. v. Google LLC, Case No.
`6:21-cv-00616-ADA (W.D. Tex.)
`
`Defendant Google LLC Preliminary Invalidity Contentions in
`Scramoge Technology Ltd. v. Google LLC, Case No. 6:21-cv-
`00616-ADA (W.D. Tex.)
`
`
`
`v
`
`

`

`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`Defendants’ Joint Reply Claim Construction Brief in Scramoge
`Technology Ltd. v. Google LLC, Case No. 6:21-cv-00616-ADA,
`Dkt. No. 41 (W.D. Tex. Feb. 11, 2022)
`
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC,
`Case No. 6:21-cv-00616-ADA, Dkt. No. 40 (W.D. Tex. Feb. 11,
`2022)
`
`First Amended Complaint for Patent Infringement in Scramoge
`Technology Ltd. v. . v. Samsung Electronics Co. Ltd. and
`Samsung Electronics America, Inc., Case No. 6:21-cv-00454-
`ADA, Dkt. No. 18 (W.D. Tex. Jun. 22, 2021)
`
`Defendants’ Corrected Joint Opening Claim Construction Brief in
`Scramoge Technology Ltd. v. Google LLC, Case No. 6:21-cv-
`00616-ADA, Dkt. No. 33 (W.D. Tex. Jan. 25, 2022)
`
`Defendants’ Joint Opening Claim Construction Brief in Scramoge
`Technology Ltd. v. . v. Samsung Electronics Co. Ltd. and
`Samsung Electronics America, Inc., Case No. 6:21-cv-00454-
`ADA, Dkt. No. 45 (W.D. Tex. Jan. 7, 2022)
`
`
`
`
`
`
`
`
`
`vi
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`I.
`
`INTRODUCTION
`Patent Owner Scramoge Technology Ltd. (“Patent Owner”) submits this
`
`preliminary response to Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Google LLC’s (collectively, “Petitioner”) petition for inter partes
`
`review of U.S. Patent No. 9,843,215 (“’215 patent”).
`
`First, the Board should deny institution because Petitioner fails to establish a
`
`reasonable likelihood of invalidity for the independent claims under any Ground.
`
`For Grounds 1-4, the Petition fails to establish that Sakuma discloses the claimed
`
`“crystalline alloy” of 1[i]/13[j]. For Grounds 5-6, the Petition fails to establish that
`
`Hiroki or the combination of Hiroki and Akiho discloses the claimed “coil pattern”
`
`of 1[d]/[13e]. Because Petitioner fails to identify any teaching or disclosure of these
`
`claim elements, it cannot establish a reasonable likelihood of invalidity.
`
`Second, the Board should exercise its discretion to deny the Petition under §
`
`314(a) because this is the type of proceeding that the Board’s precedential
`
`decisions—Valve I, Valve II, and General Plastic—were developed to prevent. Here,
`
`the vast majority of General Plastic factors weigh against institution.
`
`Third, the Board should exercise its discretion to deny the petition in light of
`
`a parallel district court case involving the same patent, the same claims, the same
`
`prior art, and the same parties. By the time the Board reaches an institution decision
`
`in this proceeding, the parties and the district court will have already invested
`
`
`
`1
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`significant time and resources in the case—the parties will have already exchanged
`
`final infringement and invalidity contentions, claim construction will be completed,
`
`and discovery will nearly be closed. The district court trial is also set to take place
`
`five months before the deadline for a final written decision. Moreover, the petition
`
`fails on the merits as described above. Thus, all six Fintiv factors strongly favor a
`
`discretionary denial.
`
`But even if the Board concludes that a discretionary denial is not appropriate,
`
`Petitioner has not established a reasonable likelihood of invalidity under any ground
`
`or challenged claim. Accordingly, the Board should deny institution.
`
`II. THE PATENTED TECHNOLOGY
`
`A. The ’215 Patent Was Invented by LG Innotek
`
`The ’215 patent (Ex. 1001) names 7 Korean inventors who were employed by
`
`LG Innotek Co. Ltd (“LG Innotek”). LG Innotek, a global materials and components
`
`manufacturer, developed wireless power devices and components for products such
`
`as smartphones. See, e.g., Ex. 2012. Patent Owner acquired the ’215 patent from LG
`
`Innotek in 2021.
`
`B. Overview of the ’215 Patent
`
`The ’215 patent is entitled “Wireless Charging Board and Communication
`
`Board and Wireless Charging and Communication Device.” It teaches a wireless
`
`
`
`2
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`communication board and a portable terminal that incorporate a plurality of layers
`
`to enable and improve efficiency in wireless power. More specifically, the ’215
`
`patent describes a multi-layer structure that includes a coil for wireless power
`
`conversion (WPC). Ex. 1001 at 2:53–59. In one embodiment illustrated in Figures 1
`
`and 2 below, the wireless charging and communication board may include:
`
`a soft magnetic layer 220, 230; a polymeric material layer 310, 312 disposed
`on one surface and the other surface of the soft magnetic layer 220, 230 and
`extending longer than an exposed portion of the soft magnetic layer 220, 230;
`the coil pattern 120, 130; and a processing hole 311 passing through the
`wireless charging and communication board and used in performing aligning.
`
`Id. at 3:38–45.
`
`
`
`3
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`

`

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`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
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`
`
`Id., Figs. 1 and 2.
`
`The ’215 patent further teaches that the soft magnetic layers 220, 230 may be
`
`made with particular materials:
`
`Any one of the first soft magnetic layer and the second soft magnetic
`layer may be made with any one of an amorphous alloy, a crystalline
`alloy, an amorphous alloy ribbon, a nanocrystalline ribbon, and a
`silicon steel plate.
`
`Id. at 8:55-58.
`
`
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`
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`4
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`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`C. Challenged ’215 Patent Independent Claims
`
`The challenged independent claims are Claims 1 and 13, which are repeated
`
`below (Patent Owner has added emphasis to the claim limitations that are the focus
`
`of this Preliminary Patent Owner’s Response):
`
`1. A wireless charging and communication board, comprising:
`a plurality of soft magnetic layers comprising a first soft magnetic layer and a
`second soft magnetic layer;
`a first polymeric material layer arranged on a first surface of the plurality of
`soft magnetic layers;
`a second polymeric material layer arranged on a second surface of the plurality
`of soft magnetic layers opposed to the first surface; and
`a coil pattern arranged on the second polymeric material layer,
`wherein the plurality of soft magnetic layers are positioned between the first
`polymeric material layer and the second polymeric material layer,
`wherein the first polymeric material layer includes a first extending portion
`extending longer than the plurality of soft magnetic layers,
`wherein the second polymeric material layer includes a second extending
`portion extending longer than the plurality of soft magnetic layers,
`wherein the first extending portion and the second extending portion are
`connected to each other,
`wherein at least one of the first soft magnetic layer or the second soft
`magnetic layer is made with one or more of an amorphous alloy, a crystalline
`alloy, an amorphous alloy ribbon, a nanocrystalline ribbon, or a silicon steel
`plate.
`
`13. A portable terminal, comprising:
`a housing;
`a plurality of soft magnetic layers arranged in the housing, and comprising a
`first soft magnetic layer and a second magnetic layer;
`a first polymeric material layer arranged on a first surface of the plurality of
`soft magnetic layers;
`a second polymeric material layer arranged on a second surface of the plurality
`of soft magnetic layers opposed to the first surface; and
`a coil pattern arranged on the second polymeric material layer,
`
`
`
`5
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`wherein the plurality of soft magnetic layers are disposed between the first
`polymeric material layer and the second polymeric material layer,
`wherein the first polymeric material layer comprises a first extending portion
`extending longer than the plurality of soft magnetic layers,
`wherein the second polymeric material layer comprises a second extending
`portion extending longer than the plurality of soft magnetic layers, and
`wherein the first extending portion and the second extending portion are
`connected to each other, and
`wherein at least one of the first soft magnetic layer or the second soft
`magnetic layer is made with one or more of an amorphous alloy, a crystalline
`alloy, an amorphous alloy ribbon, a nanocrystalline ribbon, or a silicon steel
`plate.
`
`III. OVERVIEW OF ASSERTED REFERENCES
`
`A.
`
`Sakuma (Ex. 1005)—a primary reference—does not disclose the
`
`claimed invention
`
`U.S. Patent Publication No. 2010/0007215 (“Sakuma”) was published on
`
`January 14, 2010. Sakuma relates to a non-contact power transmission system
`
`comprising a power receiver and a power transmitter. Ex. 1005, Abstract.
`
`Importantly, Sakuma
`
`separately discloses
`
`several
`
`substantially different
`
`embodiments.
`
`Sakuma’s Figure 1 and 2 embodiments (shown below) disclose a “soft
`
`magnetic member 31 of the present embodiment [that] comprises ten soft magnetic
`
`pieces 311.” Ex. 1005 at [0029]. As shown in Figure 2A below, the “soft magnetic
`
`pieces 311 of the present embodiment are arranged in one layer so as to constitute a
`
`
`
`6
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
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`single loop so that the soft magnetic member 31 has a center section which does not
`
`contain any soft magnetic piece 311.” Id. at [0030].
`
`
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`7
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`

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`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
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`Sakuma further discloses separate embodiments in Figures 6 and 7 that have
`
`a substantially different structure than the Figure 1 and 2 embodiments. Sakuma
`
`teaches that the Figure 6 and 7 embodiments comprise two magnetic plates 51 and
`
`52 that are made of different materials:
`
`Instead of the soft magnetic pieces the soft magnetic sheet 11 may have
`one or more soft magnetic plate. For example, the soft magnetic sheet
`11 of FIG. 6A comprises two soft magnetic plates 51 and 52, which are
`bonded together by using an adhesive agent 55. It is preferable that the
`adhesive agent 55 has a small Young's modulus and a small
`contractibility upon hardening process. The illustrated soft magnetic
`plates 51 and 52 are made of materials different from each other.
`
`Id. at [0040]. In contrast to the ten separate magnetic pieces 311 in Figure 2A that
`
`are arranged side-by-side horizontally, the Figure 6 and 7 embodiments comprise
`
`continuous magnetic plates that are stacked vertically.
`
`
`
`8
`
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`

`

`
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`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`
`
`
`
`
`With respect to the Figure 7 embodiment (shown below), Sakuma teaches that
`
`the magnetic member 51 may be “sendust:”
`
`FIG. 7 shows another modification of the module. The module of FIG.
`7 comprises two soft magnetic sheets 11g, 11p. The soft magnetic sheet
`11p has a normal sheet-like soft magnetic member 54. On the other
`hand, the soft magnetic sheet 11g has a soft magnetic member 51 which
`is provided with a magnetic gap 61. The magnetic gap 61 is positioned
`just below the coil 33 so as to enhance the magnetic saturation
`characteristic of the module of FIG. 7. It is preferable that the soft
`magnetic member 51 has a large permeability such as ferrite or
`metallic soft magnetic material. The ferrite is for example Mn—Zn
`ferrite or Ni—Zn ferrite. The metallic soft magnetic material is for
`example sendust. The soft magnetic member 54 serves to prevent
`magnetic leakage. The soft magnetic member 54 is made of an
`electromagnetic interference suppression sheet which comprises
`sendust flakes dispersed and arranged into resin binder. The
`modification may be further modified in consideration of FIG. 6A.
`Specifically, the soft magnetic member 51 and the soft magnetic
`
`
`
`9
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
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`
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`member 54 are bonded together, and the whole members 51, 54 are
`hermetically interposed between two insulation films 32.
`
`Id. at [0041].
`
`
`
`However, as will be discussed in more detail below, Sakuma only suggests the use
`
`of the Petition’s cited “sendust” material in the context of the Figure 7 embodiment.
`
`As such, Sakuma’s cited Figure 1 and 2 embodiments cannot anticipate the
`
`independent claims of the ’215 patent because the embodiments do not disclose the
`
`use of “sendust” or any of the claimed materials.
`
`B. Hiroki (Ex. 1007)— a primary reference—does not disclose the
`
`claimed invention
`
`Japanese Patent Publication No. 2008294347 (“Hiroki”) was published on
`
`December 4, 2008. Hiroki is directed to a magnetic sheet to shield non-contact IC
`
`
`
`10
`
`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
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`cards that are stored in a wallet—which is an entirely different problem and
`
`application than the wireless charging board claimed by the ’215 patent.
`
`More specifically, Hiroki is directed to the problem where a user has multiple
`
`non-contact IC cards stored in a wallet (or similar container). Ex. 1007 at [0003].
`
`Hiroki explains that when multiple non-contact IC cards are overlaid in a wallet,
`
`there is a problem where information may be erroneously written to/read from the
`
`non-contact IC cards. Id. As a solution to this problem, Hiroki proposes a “magnetic
`
`sheet 10” that can be placed in a wallet along with the non-contact IC cards 21, 22,
`
`and 23, as shown in Hiroki’s Figure 3 below. Id. at [0025].
`
`
`
`11
`
`

`

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`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
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`
`
`When the non-contact IC cards are arranged in a wallet along with the
`
`magnetic sheet 10, information can be communicated with the non-contact IC card
`
`22 at the surface 30b of the wallet, and information can be communicated with the
`
`non-contact IC card 21 at the surface 30a of the wallet. Id. at [0026], [0027]. On the
`
`other hand, information cannot be communicated with the non-contact IC card 23
`
`that is stored inside the magnetic sheet 10. Id. at [0028]. Likewise, information
`
`
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`12
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`

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`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
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`cannot be communicated with the non-contact IC card 22 at the far surface 30a of
`
`the wallet, and information cannot be communicated with the non-contact IC card
`
`21 at the far surface 30b of the wallet. Id. at [0029]. Thus, the magnetic sheet 10 acts
`
`to shield the non-contact IC cards.
`
`The Petition points to these “non-contact IC cards 21-23” in Hiroki’s Figure
`
`3 as the claimed “coil pattern,” as shown below.
`
`
`
`13
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`Petition at 71. However, as will be discussed in more detail below, Hiroki’s non-
`
`contact IC cards are separate devices and are not part of Hiroki’s “magnetic sheet
`
`10.” As such, Hiroki does not disclose the claimed wireless charging and
`
`communication board that is comprised of a plurality of layers with “a coil pattern
`
`arranged on the second polymeric material layer.” Instead, Hiroki discloses a
`
`“magnetic sheet 10” that does not include any coil.
`
`C.
`
`Suzuki (Ex. 1006)—a secondary reference—does not compensate
`
`for the failures of Sakuma or Hiroki
`
`U.S. Patent No. 9,515,513 (“Suzuki”) issued on December 6, 2016. The
`
`Petition asserts a combination of Sakuma and Suzuki for certain dependent claims.
`
`However, the technical details of Suzuki are not relevant to any of the independent
`
`claim limitations addressed herein by Patent Owner. Thus, the Board need not wade
`
`into the technical details related to Suzuki and it will not be addressed herein.
`
`D. Akiho (Ex. 1022)—a secondary reference—does not compensate
`
`for the failures of Hiroki
`
`U.S. Patent Publication No. 2004/0256468 (“Akiho”) was published on
`
`December 23, 2004. Akiho is directed to an antenna device that is used in a recorder
`
`and/or writer destined for writing and reading data to and from a contactless IC
`
`(integrated circuit) card. Ex. 1022, Abstract. Similar to Hiroki, Akiho is directed to
`
`an entirely different problem and application (i.e., contactless IC cards) than the
`
`
`
`14
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`

`

`IPR2022-00385 (’215 Patent)
`Patent Owner Preliminary Response
`
`
`wireless charging board claimed by the ’215 patent. The Petition asserts Akiho in
`
`combination with Hiroki to support the “coil pattern” term, but Akiho does not
`
`address the failures of Hiroki as will be discussed below.
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`IV. PETITIONER HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD OF INVALIDITY OF THE CHALLENGED CLAIMS
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`A. Ground 1: Claims 1, 8, 9, 11, 13, 17, 19, and 21 are not anticipated
`by Sakuma
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`Ground 1 challenges the two independent claims 1 and 13 (and dependent
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`claims 8, 9, 11, 17, 19, and 21) as anticipated by Sakuma. Petitioner’s Ground 1
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`challenge to these claims fails. Sakuma does not anticipate 1[i]/13[j] “wherein at
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`least one of the first soft magnetic layer or the second soft magnetic layer is made
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`with one or more of an amorphous alloy, a crystalline alloy, an amorphous alloy
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`ribbon, a nanocrystalline ribbon, or a silicon steel plate.” Thus, Petitioner is unable
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`to establish a reasonable likelihood of invalidity as to any of the challenged ’215
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`patent claims.
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`1.
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`Sakuma does not anticipate 1[i]/13[j]
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`For this claim element, the Petition merely quotes the statement in Sakuma
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`that “[t]he metallic soft magnetic material is for example sendust.” Petition at 29.
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`And Sakuma’s mention of “sendust” is the only theory or evidence identified in the
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`Petition for this element.
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`However, the Petition fails to inform the Board that the quoted statement
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`about “sendust” is limited to Sakuma’s Figure 7 embodiment—in contrast, the
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`remainder of Ground 1 refers to Sakuma’s Figure 1 and 2 embodiments. Critically,
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`Sakuma only mentions the word “sendust” in the context of the Figure 7 embodiment
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`and never suggests that “sendust” could be used in the Figure 1 and 2 embodiments.
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`To that end, the Petition improperly attempts to combine the teachings of separate
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`embodiments disclosed in Sakuma without providing any explanation of why these
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`separate embodiments from Sakuma should be read together. See Microsoft Corp. v.
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`Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (“[A]nticipation is not proven
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`by ‘multiple, distinct teachings that the artisan might somehow combine to achieve
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`the claimed invention.’”). Thus, the petition cannot establish anticipation for this
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`limitation (the only asserted theory), and Ground 1 of the Petition should be rejected.
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`a.
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`Sakuma’s Figure 1 and 2 embodiments do not
`disclose “sendust”
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`For each of the elements of independent claims 1 and 13 aside from 1[i]/13[j],
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`the Petition relies on Sakuma’s Figure 1 and 2 embodiments. Petition at 7-28. In
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`particular, for element [1a]/[13b] “a plurality of soft magnetic layers comprising a
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`first soft magnetic layer and a second soft magnetic layer,”1 the Petition identifies
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`“soft magnetic sheet 11” in Figures 1 and 2A. Petition at 13-15. In Figures 1 and 2A,
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`Sakuma discloses that “[t]he soft magnetic member 31 of the present embodiment
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`comprises ten soft magnetic pieces 311. Each of the soft magnetic pieces 311 has a
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`small tile shape.” Ex. 1005 at [0029]. The Petition identifies these magnetic pieces
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`311 in the annotated figure below as the claimed first and second soft magnetic
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`layers. Petition at 13 (“[T]wo soft magnetic pieces 311 disclose the claimed ‘first
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`soft magnetic layer’ and ‘second magnetic layer,’ as shown in annotated Figure 2A
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`below.”).
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`1 This “first soft magnetic layer” and “second soft magnetic layer” provide the
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`antecedent basis for the wherein claim element 1[i]/13[j] at issue here.
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`Petition at 14.
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`However, with respect to Sakuma’s Figure 1 and 2 embodiments, Sakuma
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`never suggests the use of “sendust” for the magnetic material. Indeed, Sakuma
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`includes a detailed paragraph describing the materials for the magnetic pieces 311
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`in Figure 2A and specifically omits sendust. Ex. 1005 at [0042]. As such, Sakuma’s
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`Figure 1 and 2 embodiments cannot support the Petition’s anticipation theory that is
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`based on “sendust” as the magnetic material for claim element 1[i]/13[j]. And, for
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`each of the elements of independent claims 1 and 13 aside from 1[i]/13[j], the
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`Petition never refers to Sakuma’s Figure 7 embodiment that mentions “sendust.”
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`b.
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`Sakuma only discloses the use of “sendust” in the
`Figure 7 embodiment
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`The only mention of “sendust” in Sakuma is in the context of Sakuma’s Figure
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`7 embodiment. Ex. 1005 at [0041], [0047]. Importantly, Figure 7 is described as a
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`“modification of the power receiver of FIG. 1.” Id. at [0021]. Sakuma’s Figure 7
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`(shown below) discloses a modification of the module comprising two magnetic
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`sheets 11g, 11p. In contrast to the Figure 1 and 2 embodiments that disclose ten
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`magnetic pieces 311 with the same shapes as each other that are in a side-by-side
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`arrangement, the Figure 6 and 7 embodiments disclose the use of two magnetic
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`plates with different shapes and materials that are stacked vertically. Id. at
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`[0040] (“Instead of the soft magnetic pieces the soft magnetic sheet 11 may have
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`one or more soft magnetic plate. For example, the soft magnetic sheet 11 of FIG. 6A
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`comprises two soft magnetic plates 51 and 52, which are bonded together by using
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`an adhesive agent 55. . . . The illustrated soft magnetic plates 51 and 52 are made of
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`materials different from each other.”).
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`In the Figure 7 embodiment, Sakuma explains that “[t]he soft magnetic sheet
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`11p has a normal sheet-like soft magnetic member 54. On the other hand, the soft
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`magnetic sheet 11g has a soft magnetic member 51 which is provided with a
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`magnetic gap 61.” Id. at [0041]. To that end, Figure 7 discloses the “soft magnetic
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`member 51” which is substantially different than the “magnetic pieces 311” in the
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`Figure 1 and 2 embodiments. Importantly, for this “soft magnetic member 51,”
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`Sakuma discloses that a different “sendust” material may be used:
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`The magnetic gap 61 is positioned just below the coil 33 so as to
`enhance the magnetic saturation characteristic of the module of FIG. 7.
`It is preferable that the soft magnetic member 51 has a large
`permeability such as ferrite or metallic soft magnetic material. The
`ferrite is for example Mn—Zn ferrite or Ni—Zn ferrite. The metallic
`soft magnetic material is for example sendust.
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`Id at [0041]. As such, Sakuma specifically identifies sendust to “enhance the
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`magnetic saturation characteristic” for the module of Figure 7. Id. Thus, Sakuma’s
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`disclosure of sendust is specific to the unique structure in Figure 7 where magnetic
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`member 51 has the magnetic gap 61. This is further confirmed by Sakuma’s
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`description of the magnetic materials for the Figure 2 embodiment in the very next
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`paragraph [0042] where Sakuma specifically omits the use of sendust. Id. at [0042].
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`Accordingly, Sakuma’s Figure 7 embodiment is substantially different than
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`the Figure 1 and 2 embodiments. And because Sakuma does not disclose the use of
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`“sendust” in the Figure 1 and 2 embodiments, the Petition’s anticipation theory fails.
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`Consequently, the Petition’s Ground 1 should be denied.
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`c.
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`The Petition’s anticipation theory fails
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`“Anticipation requires that a single prior art reference disclose each and every
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`limitation of the claimed invention, either expressly or inherently.” SRI Int'l Inc. v.
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`Cisco Sys., Inc., 930 F.3d 1295, 1306 (Fed. Cir. 2019). In addition to disclosing each
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`element, the prior art must “disclose those elements ‘arranged as in the claim.’” Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For example,
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