Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: June 23, 2022
`
`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 B2
`
`
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM,
`and BRIAN J. McNAMARA, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 14
`Date: June 23, 2022
`
`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 B2
`
`
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM,
`and BRIAN J. McNAMARA, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00385
`Patent 9,843,215 B2
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Google LLC (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 4, 5, 8–13, and 17–22 (the “challenged claims”) of U.S.
`Patent No. 9,843,215 B2 (Ex. 1001, “the ’215 patent”). Paper 1 (“Pet.”).
`Scramoge Technology Ltd. (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). Petitioner filed an authorized Preliminary Reply.
`Paper 9 (“Prelim. Reply”). Patent Owner filed an authorized Preliminary
`Sur-Reply. Paper 10 (“Prelim. Sur-Reply”).
`We have authority to determine whether to institute an inter partes
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under section
`313 shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314(a) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board
`institutes the trial on behalf of the Director.”). The “reasonable likelihood”
`standard is “a higher standard than mere notice pleading,” but “lower than
`the ‘preponderance’ standard to prevail in a final written decision.” Hulu,
`LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13
`(PTAB Dec. 20, 2019) (precedential).
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that it
`would prevail in showing the unpatentability of at least one challenged
`claim. Accordingly, we institute an inter partes review on all challenged
`claims and on each ground set forth in the Petition.
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`B.
`
`Real Parties in Interest
`Petitioner states that its real parties in interest are Samsung
`Electronics Co., Ltd., Samsung Electronics America, Inc., and Google LLC.
`Pet. 1. Patent Owner states that its real party in interest is Scramoge
`Technology Ltd. Paper 5, 2.
`
`C.
`
`Related Proceedings
`Petitioner and Patent Owner both identify the following district court
`actions as involving the ’215 patent: (1) Scramoge Technology Ltd. v.
`Google LLC, No. 6:21-cv-00616 (W.D. Tex. June 15, 2021); (2) Scramoge
`Technology Ltd. v. Samsung Elec. Co., Ltd., No. 6:21-cv-00454-ADA (W.D.
`Tex. Apr. 30, 2021); and Scramoge Technology Ltd. v. Apple Inc., No. 6:21-
`cv-00579 (W.D. Tex. June 7, 2021). Pet. 1; Paper 5, 3.
`Petitioner identifies Board proceeding IPR2022-00117 as also
`involving the ’215 patent.1 Pet. 2. Patent Owner identifies the following
`Board proceedings before the Board as related: IPR2022-00117, IPR2022-
`00118, IPR2022-00119, IPR2022-00185, IPR2022-00241, IPR2022-00284,
`IPR2022-00120, IPR2022-00350, IPR2022-00351. Paper 5, 2–3.
`
`D.
`
`The ’215 Patent (Ex. 1001)
`The ’215 patent is directed to a wireless charging and communication
`board and device. Ex. 1001, 1:18–20. Figure 1 of the ’215 patent is
`reproduced below.
`
`
`1 The Board instituted review in IPR2022-00117 on May 12, 2022.
`IPR2022-00117, Paper 10.
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`Figure 1 of the ’215 patent
`Figure 1 of the ’215 patent shows a charging and communication
`device that includes receiver 100 having reception coil pattern 120 for
`wireless power conversion and reception coil 130 for near field
`communication. Id. at 2:53–64. The charging and communication device
`also includes transmitter 500 having transmission coil pattern 520 for
`wireless power conversion and transmission coil pattern 530 for near field
`communication. Id. at 2:65–3:2. Alternating current flowing in
`transmission coil pattern 520 induces current in reception coil pattern 120
`that is transmitted to a separate circuit and rectified. Id. at 3:6–19. Receiver
`100 includes a wireless charging and communication board and housing 400
`in which the board is received. Id. at 3:33–35. Housing 400 radiates heat
`generated from the current induced in coil patterns 120, 130 to the outside.
`Id. at 3:35–37.
`The wireless charging and communication board includes soft
`magnetic layer 220, 230, polymeric layer 310, 312 disposed on one surface
`and the other surface of soft magnetic layer 220, 230 by adhesive layer 315
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`to extend longer than an exposed portion of soft magnetic layer 220, 230.
`Id. at 3:38–56. The wireless charging and communication board further
`includes coil patterns 120, 130, and processing hole 311. Id.
`Figure 3 of the ’215 patent is reproduced below.
`
`
`Figure 3 of the ’215 patent is a cross-sectional view of a wireless charging
`and communication board. Id. at 2:1–3. Figure 3 shows polymeric material
`layers 310, 312 arranged on the surfaces of soft magnetic layer 220, 230 and
`extending longer than an exposed portion of soft magnetic layer 220, 230,
`and coil pattern 120, 130 arranged on polymeric material layer 310, 312. Id.
`at 5:24–31.
`The wireless charging and communication board further includes
`polymeric material connector 313 connecting first polymeric layer 310 and
`second polymeric layer 312, and surrounding the exposed portion of soft
`magnetic layer 220. Id. at 5:32–37. The ’215 patent further explains that in
`its specification the term polymeric material connector 313 can be used with
`an “extending portion,” so that “a first extending portion may be extended in
`the first polymeric material layer 310, and a second extending portion may
`be extended in [the] second polymeric material layer 312.” Id. at 5:37–42.
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`“Accordingly, in the embodiment of FIG. 3, the exposed portion may refer
`to an end exposed by a processing hole 311 and the polymeric material
`connector 313 surrounding the exposed portion of the soft magnetic core 220
`may prevent water penetration from the outside.” Id. at 5:43–47.
`
`Claims 1 and 13 are representative and reproduced below:2
`1[pre] A wireless charging and communication board,
`comprising:
`1[a] a plurality of soft magnetic layers comprising a first soft
`magnetic layer and a second soft magnetic layer;
`1[b] a first polymeric layer arranged on a first surface of the
`plurality of soft magnetic layers;
`1[c] a second polymeric material layer arranged on a second
`surface of the plurality of soft magnetic layers opposed to
`the first surface; and
`1[d] a coil pattern arranged on the second polymeric
`material layer;
`1[e] wherein the plurality of soft magnetic layers are
`positioned between the first polymeric material layer and
`the second polymeric material layer,
`1[f] wherein the first polymeric material layer includes a
`first extending portion extending longer than the plurality
`of soft magnetic layers,
`1[g] wherein the second polymeric material layer includes a
`second extending portion extending longer than the
`plurality of soft magnetic layers,
`1[h] wherein the first extending portion and the second
`extending portion are connected to each other,
`1[i] 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.
`
`
`
`2 The preamble and element captions are added and used by Petitioner to
`reference the preamble and the claim elements. See Pet. 7–20. We use the
`same captions here for ease of reference, understanding, and consistency.
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`13[pre] A portable terminal, comprising:
`13[a] a housing;
`13[b] a plurality of soft magnetic layers arranged in the
`housing, and comprising a first soft magnetic layer and a
`second soft magnetic layer;
`13[c] a first polymeric layer arranged on a first surface of
`the plurality of soft magnetic layers;
`13[d] a second polymeric material layer arranged on a
`second surface of the plurality of soft magnetic layers
`opposed to the first surface; and
`13[e] a coil pattern arranged on the second polymeric
`material layer;
`13[f] wherein the plurality of soft magnetic layers are
`disposed between the first polymeric material layer and
`the second polymeric material layer,
`13[g] wherein the first polymeric material layer comprises a
`first extending portion extending longer than the plurality
`of soft magnetic layers,
`13[h] wherein the second polymeric material layer
`comprises a second extending portion extending longer
`than the plurality of soft magnetic layers,
`13[i] wherein the first extending portion and the second
`extending portion are connected to each other,
`13[j] 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.
`Ex. 1001, 9:54–10:13, 11:1–28.
`
`Claims 1 and 13 are essentially the same except that claim 1’s
`preamble recites “[a] wireless charging and communication board,” while
`claim 13’s preamble recites “[a] portable terminal.” Claim 13 also
`additionally recites “a housing” as limitation 13[a], and specifies in
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`limitation 13[b] that the plurality of soft magnetic layers is “arranged in the
`housing.” Further, limitations 1[e] and 13[f] are the same except that the
`term “positioned between” is used in limitation 1[e] while the term
`“disposed between” is used in limitation 13[f]. There is no substantive
`difference between the two. Limitations 1[f] and limitation 13[g] are the
`same except that the word “includes” is used in limitation 1[f] while the
`word “comprises” is used in limitation 13[g]. There is no substantive
`difference between the two. Limitations 1[g] and limitation 13[h] are the
`same except that the word “includes” is used in limitation 1[g] while the
`word “comprises” is used in limitation 13[h]. There is no substantive
`difference between the two.
`
`E.
`
`Evidence Relied on by Petitioner
`Petitioner relies on the following evidence:3
`References
`Date
`Suzuki
`Issued Dec. 6, 2016;
`filed May 13, 2013
`
`U.S. Pat. 9,515,513 B2
`
`Exhibit
`Ex. 1006
`
`Sakuma
`
`Akiho
`
`Hiroki
`
`U.S. Pat. Pub.
`2010/0007215 A1
`
`U.S. Pub. App.
`2004/0256468 A1
`
`Published Jan, 14, 2010 Ex. 1005
`
`Published Dec. 23, 2004 Ex. 1022
`
`Japanese Pub. App. 2008-
`294347A
`
`Published Dec. 4, 2008
`
`Ex. 10084
`
`
`3 The ’215 patent issued from Application 16/636,347, filed March 3, 2015.
`Ex. 1001, codes (21), (22). The ’215 patent also claims priority to Korean
`Application 10-2014-0025390, filed March 4, 2014. Id. at code (30).
`4 Citations to Hiroki are to Exhibit 1007, a certified English translation of
`Hiroki as submitted by Petitioner.
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`Petitioner also relies on the Declaration of Gary Woods, Ph.D.
`(Ex. 1002).
`
`F.
`
`Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 4, 5, 8–13, and 17–
`22 of the ’215 patent based on the following grounds:
`
`Claims Challenged
`
`35 U.S.C. §5
`
`Reference(s)/Basis
`
`1, 8, 9, 11, 13, 17, 19,
`21
`
`4, 5, 12, 18, 22
`
`1, 8–11, 13, 17, 19–
`21
`
`4, 5, 12, 18, 22
`
`1, 4, 5, 8, 9, 11–13,
`17–19, 21, 22
`
`1, 4, 5, 8, 9, 11–13,
`17–19, 21, 22
`
`
`
`102
`
`103
`
`103
`
`103
`
`102
`
`103
`
`Sakuma
`
`Sakuma, Hiroki
`
`Sakuma, Suzuki
`
`Sakuma, Suzuki, Hiroki
`
`Hiroki
`
`Hiroki, Akiho
`
`II.
`
`PATENT OWNER’S REQUEST FOR DENIAL
`UNDER 35 U.S.C. § 314(a)
`Background
`A.
`Patent Owner asserts that the Petition should be discretionarily denied
`under 35 U.S.C. § 314(a) by application of the factors (“Fintiv factors”) set
`
`
`5 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103. Based on the record
`before us, the ’215 patent has an effective filing date after the effective date
`of the applicable AIA amendments (March 16, 2013). Therefore, we apply
`the post-AIA version of 35 U.S.C. §§ 102, 103.
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`forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`Mar. 20, 2020) (precedential). Prelim. Resp. 41–53. Patent Owner also
`asserts that the Petition should be discretionarily denied under 35 U.S.C.
`§ 314(a), as a “follow on” petition, by application of the factors (“General
`Plastic factors”) set forth in General Plastic Indus. Co. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential
`as to § II.B.4.i). Id. at 32–41.
`We first address the General Plastic factors and then the Fintiv
`factors. Thereafter, we conclude that in the circumstances of this case, we
`decline to exercise discretion to deny the Petition.
`B. General Plastic Factors
`In a separate proceeding, IPR2022-00117, another petitioner, i.e.,
`Apple Inc., has challenged claims in the ’215 patent. The petition in
`IPR2022-00117 was filed on November 3, 2021 and the Board instituted
`review on May 12, 2022.
`The facts in General Plastic involved multiple petitions serially filed
`by the same petitioner against the same patent. In Valve Corp. v. Elec.
`Scripting Prods., Inc., IPR2019-00062, -00063, -00084, Paper 11 (PTAB
`Apr. 2, 2019) (designated precedential May 7, 2019) (“Valve”), the Board
`extended application of General Plastic factors to the situation where
`multiple petitions for review of the same patent are filed by different
`petitioners. Valve, Paper 11 at 2 (“when different petitioners challenge the
`same patent, we consider any relationship between those petitioners when
`weighing the General Plastic factors.”).
`The General Plastic factors are as follows:
`1.
`whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`
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`3.
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`4.
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`5.
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`2.
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`6.
`7.
`
`whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it;
`whether at the time of filing of the second petition the
`petitioner already received the patent owner’s
`preliminary response to the first petition or received the
`Board’s decision on whether to institute review in the
`first petition;
`the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition;
`whether the petitioner provides adequate explanation for
`the time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent;
`the finite resources of the Board; and
`the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on
`which the Director notices institution of review.
`1.
`Factor 1
`It is not disputed by the parties that Petitioner here is different from
`the petitioner in IPR2022-00117. Petitioner here also represents that none of
`its real parties in interest is related in any way to the petitioner in IPR2022-
`00117. Prelim. Reply 5. Petitioner further represents that it has not
`coordinated in any way with the petitioner in IPR2022-00117 with regard to
`challenging the ’215 patent before the Board. Id. Petitioner additionally
`notes that it and the petitioner in IPR2022-00117 are not even codefendants
`in the same district court litigation, were not sued by the Patent Owner at the
`same time, and were sued on the basis of each’s own separate products. Id.
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`at 6.6 With respect to such lack of relationship, Patent Owner makes no
`contention to the contrary.
`For the foregoing reasons, General Plastic Factor 1 weighs very
`strongly against exercising discretion to deny the Petition.
`2.
`Factors 2–5
`Regarding Factor 2, Patent Owner points to no evidence that as of the
`filing of the petition in IPR2022-00117 on November 3, 2021, Petitioner
`knew of any of the references applied in the Petition at issue in this
`proceeding. General Plastic Factor 2 weighs against exercising discretion to
`deny the Petition.
`Regarding Factor 3, the Petition here was filed on December 31, 2021,
`prior to the filing of Patent Owner’s preliminary response and the Board’s
`institution decision in IPR2022-00117. Patent Owner points to no evidence
`of Petitioner using any Board decision or Patent Owner submission as a
`roadmap to prepare the Petition. General Plastic Factor 3 weighs against
`exercising discretion to deny the Petition.
`Regarding Factor 4, Patent Owner points to the time Petitioner served
`its invalidity contentions in district court, i.e., November 15, 2021, as the
`time Petitioner knew of the prior art references relied on in the Petition, and
`notes that there is a six week lapse between that time and the time the
`Petition in this proceeding was filed. Prelim. Resp. 35–36. Six weeks is not
`an unreasonable amount of time between learning of prior art references and
`filing a petition for inter partes review based on those references. Patent
`Owner argues that Petitioner has not explained why it could not have located
`
`6 Petitioner additionally notes that claim 4, on which Petitioner has been
`sued by Patent Owner, is challenged by the Petition here and not in the
`petition filed in IPR2022-00117. Pet. 94.
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`the references earlier or filed the Petition earlier. Id. at 36. Factor 4 requires
`no such explanation. General Plastic Factor 4 weighs against exercising
`discretion to deny the Petition.
`Factor 5 is “whether the petitioner provides adequate
`explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent.” In our view,
`in the circumstance here, where the first petitioner and the second
`petitioner are different and are not related to each other in any way,
`this consideration is not meaningful. In this circumstance, we find
`that General Plastic factor 5 is neutral.
`3.
`Factors 6 and 7
`We have considered the resources of the Board as well as the
`requirement for the Board to issue a final determination not later than 1 year
`after the date on which the Director notices institution of review. Neither
`presents any problem with instituting review in this proceeding at this time.
`General Plastic factors 6 and 7 are neutral.
`4.
`Conclusion
`For the foregoing reasons, our consideration of the General Plastic
`factors in the circumstances of this case leads to the conclusion that the
`circumstances do not justify exercising discretionary denial of the Petition.
`C.
`Fintiv Factors
`The Board’s precedential decision in Fintiv identifies a non-exclusive
`list of factors parties may consider addressing where there is a related,
`parallel district court action to determine whether such action provides any
`basis for discretionary denial. Fintiv, Paper 11 at 5–16. The Fintiv factors
`are
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`1. whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and
`the parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise
`of discretion, including the merits.
`Id. at 5–6. In evaluating the factors, we take a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review. Id. at 6.
`1.
`Fintiv Factor 1
`The parties do not dispute that no motion to stay has been filed in the
`district court in the identified related district court litigation. The record also
`does not include any statement from the district court specifically regarding
`whether the district court will grant a motion to stay if review is instituted by
`the Board. Patent Owner asserts that “Judge Albright does not favor stays
`pending IPR proceedings,” and surmises that “it is highly unlikely that Judge
`Albright would grant a stay.” Prelim. Resp. 44.
`Because we do not speculate on what the district court may or may
`not do in response to a potential motion for stay pending an inter partes
`review proceeding, Fintiv factor 1 is neutral.
`2.
`Fintiv Factor 2
`It is undisputed by the parties that the district court has now scheduled
`trial in both the parallel litigation involving Samsung Electronics Co., Ltd.
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`and Samsung Electronics America, Inc., and the parallel litigation involving
`Google LLC for March 6, 2023. Prelim. Reply 2–3; Ex. 1031. The trial date
`of March 6, 2023 is approximately four months prior to the expected time of
`a final written decision in this proceeding. Fintiv factor 2 weighs in favor of
`exercising discretion to deny the Petition.
`3.
`Factor 3
`Patent Owner asserts that by the projected time a decision on whether
`review would be instituted, the parties will have exchanged final
`infringement and invalidity contentions, discovery will nearly be closed, and
`claim construction will have been completed. Prelim. Resp. 47. In fact, the
`district court issued its claim construction order on May 23, 2022. Ex. 1030.
`Patent Owner’s assertions are true. We must, however, also consider
`whether Petitioner was diligent in filing its Petition.
`Google LLC was served with the complaint in its district court case
`involving the ’215 patent on June 16, 2021, and Samsung Electronics Co.,
`Ltd., and Samsung Electronics America, Inc. were served with a complaint
`(involving on the ’215 patent) in their district court case on June 22, 2021.
`Prelim. Resp. 35, Ex. 2022. The Petition was filed on December 31, 2021,
`less than seven months from service of those complaints in parallel
`litigation. Further, Petitioner filed the Petition within four months of being
`served Patent Owner’s infringement contentions. Prelim. Reply 1.
`We find that that both parties, as well as the district court, will have
`invested significant time and resources into the parallel district court
`litigations by the time we issue this Decision on whether to institute review.
`A significant portion of that investment, however, pertains to alleged
`infringement rather than invalidity of the claims of the ’215 patent. We also
`find that Petitioner was diligent in filing its Petition.
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`Having considered the investment of resources by the parties and the
`district court, as well as Petitioner’s diligence in filing its Petition, we find
`Fintiv factor 3 to be neutral.
`4.
`Factor 4
`Petitioner has stipulated that in parallel district court litigation it will
`not pursue any anticipation or obviousness ground that includes any primary
`reference raised in the Petition here, i.e., Sakuma and Hiroki. Ex. 1028,
`1029. Although this stipulation is narrow and is not the broader type of
`overlap eliminating stipulation referred to in Sotera Wireless, Inc. v. Masimo
`Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential as
`to § II.A.), it still is a type of stipulation that has been recognized as having
`value in reducing overlap. Sand Revolution II, LLC v. Continental
`Intermodal Group–Trucking LLC, IPR2019-01393, Paper 24 at 11–12
`(PTAB. June 16, 2020) (informative) (similar stipulation “mitigates to some
`degree the concerns of duplicative efforts between the district court and the
`Board, as well as concerns of potentially conflicting decisions.”). Further,
`the parties do not dispute that at least some of the challenged claims in this
`proceeding will not be involved at trial because the parties are required in
`district court to reduce the number of asserted claims. See Pet. 93.
`
`For the foregoing reasons, Fintiv factor 4 weighs against exercising
`discretion to deny the Petition.
`5.
`Factor 5
`The parties do not dispute that the parties are the same between this
`proceeding and the related parallel district court litigations involving the
`’215 patent and each of (1) Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc., and (2) Google LLC. With the trial date in each
`litigation now scheduled for March 6, 2023 (Prelim. Reply 2–3; Ex. 1031),
`
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`
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`IPR2022-00385
`Patent 9,843,215 B2
`
`the district court trial will take place prior to the expected time of a final
`written decision in this proceeding. In this circumstance, Fintiv Factor 5
`favors exercising discretion to deny the Petition.
`6.
`Factor 6
`Patent Owner asserts that the Petition is substantively weak on the
`merits. Prelim. Resp. 51. But as discussed herein, at least the grounds based
`on Hiroki as the primary reference are not weak. Patent Owner also asserts
`that Petitioner has taken inconsistent positions on claim construction with
`respect to the claim term “arranged on,” in that Petitioner states before the
`Board that it does not believe any term requires explicit construction, but
`presents a specific construction for “arranged on” before the district court.
`Id. at 51–52. We do not regard Petitioner’s offering a different claim
`construction position in this proceeding as adding to the reasons for
`discretionary denial. In any event, the district court has issued its claim
`construction order and has not adopted Petitioner’s proposed construction
`before the district court. Ex. 1030, 2.
`We find significant that the Board already has instituted review of the
`’215 patent in IPR2022-00117 on May 12, 2022. IPR2022-00117, Paper 9.
`The institution decision here is not long after May 12, 2022. Instituting
`review in this proceeding will provide a more complete and thorough view
`and analysis of the ’215 patent, as compared to proceeding with just
`IPR2022-00117. In our view, that will enhance the integrity of the patent
`system.
`Based on the foregoing, Fintiv factor 6 weighs strongly against
`exercising discretion to deny the Petition.
`
`17
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`IPR2022-00385
`Patent 9,843,215 B2
`
`
`Conclusion
`7.
`Having considered all of the Fintiv factors and associated arguments
`presented by both parties we determine that the particular circumstances
`here do not support an exercise of discretion under 35 U.S.C. § 314(a) to
`deny the Petition. We decline to deny the Petition discretionarily based on
`Fintiv factors.
`
`A.
`
`III. ANALYSIS
`Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of the alleged invention “would have had a bachelor’s degree in electrical
`engineering, computer engineering, applied physics, or a related field, and at
`least one year of experience in the research, design, development, and/or
`testing of wireless charging systems, or the equivalent, with additional
`education substituting for experience and vice versa.” Pet. 6 (citing Ex.
`1002 ¶¶ 46–49). Patent Owner at this stage takes no position with regard to
`what constitutes the level of ordinary skill in the art, and applies Petitioner’s
`statement of the level of ordinary skill.
`Petitioner’s assertion is supported by the cited testimony of
`Dr. Woods. Ex. 1002 ¶¶ 46–49. Petitioner’s assertion also appears
`consistent with the content of the applied prior art references. Cf. Okajima
`v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art
`may reflect an appropriate level of skill).
`On this record, and in the absence of a contrary contention by Patent
`Owner, we adopt Petitioner’s proposed level of ordinary skill in the art for
`purposes of this Decision.
`
`18
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`IPR2022-00385
`Patent 9,843,215 B2
`
`B.
`
`Claim Construction
`We use the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The
`claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc) is applicable.
`Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries, and
`learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
`dispositive, and it is the single best guide to the meaning of a disputed term.
`Id. at 1315.
`The specification may reveal a special definition given to a claim term
`by the patentee, or the specification or prosecution history may reveal an
`intentional disclaimer or disavowal of claim scope by the inventor. Id. at
`1316. If an inventor acts as his or her own lexicographer, the definition
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`1243, 1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by
`language in the specification or the prosecution history. Poly-America, L.P.
`v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016).
`Only those claim terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. Nidec Motor
`
`19
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`IPR2022-00385
`Patent 9,843,215 B2
`
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
`Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999).
`Section VIII of the Petition is captioned “CLAIM
`CONSTRUCTION.” Pet. 7. In Section VIII, Petitioner has not proposed a
`specific construction for any claim term, and states that “Petitioner does not
`believe that any term requires explicit construction.” Id. Further, Petitioner
`states that it interprets claims according to the standard set forth in Phillips.
`Id. Patent Owner also has not proposed a specific construction for any claim
`term. However, in Footnote 7 of the Petition, Petitioner nonetheless appears
`to take a position regarding the claim term “arranged on” by stating:
`Whether insulation film 32 is arranged directly or
`indirectly “on” the first surface of soft magnetic member 31 is
`irrelevant as the ’215 Patent uses the term “on” broadly. For
`example,
`the ’215 Patent describes embodiments where
`polymeric layers (310/312) are “arranged on” soft magnetic
`layers (220/230) despite the presence of intervening adhesive
`layers 315. Ex-1002, ¶ 93; Ex-1001, 3:38–41, 3:52–54, 4:24–30,
`5:51–64, FIGS. 1–3.
`Id. at 17 n.7. Patent Owner does not expressly state that “arranged on”
`requires immediate contact or abutment without any intervening material.
`We address this issue about “arranged on” in the analysis below, where the
`matter is presented in a specific context of applying Hiroki’s teachings.
`Petitioner contends that the preambles of independent claim 1 and 13
`are non-limiting.7 Pet. 8–9, 49, 59. Patent Owner does not appear to have
`
`
`7 Claim 1’s preamble recites: [a] wireless charging and communication
`board.” Ex. 1001, 9:54. Claim 13’s preamble recites: “[a] portable
`terminal
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