U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`
`
`
`
`
`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.
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,843,215
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ................................... 1
`III. FEE AUTHORIZATION ............................................................................... 3
`IV. GROUNDS FOR STANDING ....................................................................... 3
`V.
`PRECISE RELIEF REQUESTED ................................................................. 3
`VI. THE CHALLENGED PATENT .................................................................... 4
`VII. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 6
`VIII. CLAIM CONSTRUCTION ........................................................................... 7
`IX. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS ..................................................................................................... 7
`A. Ground 1: Claims 1, 8, 9, 11, 13, 17, 19, and 21 are anticipated
`by Sakuma ............................................................................................ 7
`1.
`Independent Claims 1 and 13 ..................................................... 7
`2.
`Dependent Claims 8, 9, 11, 17, 19, and 21 .............................. 29
`B. Ground 2: Claims 4, 5, 12, 18, and 22 are rendered obvious by
`Sakuma in view of Hiroki .................................................................. 35
`1.
`The Combination of Sakuma and Hiroki Would Have
`Been Obvious ........................................................................... 35
`Dependent Claims 4, 5, 12, 18, and 22 .................................... 38
`2.
`C. Ground 3: Claims 1, 8-11, 13, 17, and 19-21 are rendered
`obvious by Sakuma in view of Suzuki ............................................... 46
`1.
`The Combination of Sakuma and Suzuki Would Have
`Been Obvious ........................................................................... 46
`Independent Claims 1 and 13 ................................................... 49
`Dependent Claims 8, 11, 17, and 21 ........................................ 54
`Dependent Claims 9 and 19 ..................................................... 55
`Dependent Claims 10 and 20 ................................................... 57
`
`2.
`3.
`4.
`5.
`
`
`
`
`
`i
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`E.
`
`F.
`
`
`
`X.
`
`D. Ground 4: Claims 4, 5, 12, 18, and 22 are rendered obvious by
`Sakuma in view of Suzuki and Hiroki ............................................... 58
`1.
`The Combination of Sakuma, Suzuki, and Hiroki Would
`Have Been Obvious ................................................................. 58
`Dependent Claims 4, 5, 12, 18, and 22 .................................... 59
`2.
`Ground 5: Claims 1, 4, 5, 8, 9, 11-13, 17-19, 21, and 22 are
`anticipated by Hiroki .......................................................................... 59
`1.
`Independent Claims 1 and 13 ................................................... 59
`2.
`Dependent Claims 4, 5, 8-12, and 17-22 ................................. 80
`Ground 6: Claims 1, 4, 5, 8, 9, 11-13, 17-19, 21, and 22 are
`rendered obvious by Hiroki in view of Akiho ................................... 87
`1.
`Independent Claims 1 and 13 ................................................... 87
`2.
`Claims 4, 5, 8, 9, 11, 12, 17-19, 21, and 22 ............................. 90
`THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER FINTIV ................................................................. 91
`XI. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER GENERAL PLASTICS .................................................................... 94
`XII. CONCLUSION ............................................................................................. 96
`
`
`
`
`
`
`
`
`ii
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`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS1
`
`Ex-1001 U.S. Patent No. 9,843,215
`Ex-1002 Declaration of Dr. Gary Woods
`Ex-1003 Curriculum Vitae of Dr. Gary Woods
`Ex-1004 Prosecution History of U.S. Patent No. 9,843,215
`Ex-1005 U.S. Patent Publication No. 2010/0007215 (“Sakuma”)
`Ex-1006 U.S. Patent No. 9,515,513 (“Suzuki”)
`Ex-1007 Certified Translation of Japanese Patent Publication No. 2008294347
`(“Hiroki”)
`Japanese Patent Publication No. 2008294347 (“Hiroki”)
`Ex-1008
`Ex-1009 U.S. Patent No. 8,934,836 (“Lefley”)
`Ex-1010 U.S. Patent No. 8,922,162 (“Park”)
`Ex-1011
`Certified Translation of Japanese Patent Publication No. 2014011853
`(“Koyanagi”)
`
`Japanese Patent Publication No. 2014011853 (“Koyanagi”)
`Ex-1012
`Ex-1013 Certified Translation of Japanese Patent Publication No. 2013053029
`(“Goto”)
`Japanese Patent Publication No. 2013053029 (“Goto”)
`Ex-1014
`Ex-1015 U.S. Patent No. 5,756,162 (“Bae”)
`
`
`1 Four-digit pin citations that begin with 0 are to the branded numbers added by
`
`Samsung in the bottom right corner of the exhibits. All other pin citations are to
`
`original page, column, paragraph, and/or line numbers.
`
`iii
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`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Ex-1016 U.S. Patent No. 7,070,624 (“Holmes, III”)
`Ex-1017 European Patent Application Publication No. 2117017A1
`(“Matsukawa”)
`Ex-1018 U.S. Patent No. 5,449,419 (“Suzuki II”)
`Ex-1019 U.S. Patent No. 8,297,518 (“Yamazaki”)
`Ex-1020 U.S. Patent No. 6,371,380 (“Tanimura”)
`Ex-1021 U.S. Patent No. 9,063,689 (“Suzuki III)”)
`Ex-1022 U.S. Patent Publication No. 2004/0256468 (“Akiho”)
`Ex-1023 U.S. Patent No. 6,517,005 (“Ayala”)
`Ex-1024 U.S. Patent Publication No. 2005/0011961 (“Uesaka”)
`Ex-1025 The American Heritage Dictionary of the English Language (5th ed.),
`2011
`Ex-1026 Google LLC’s Opposed Motion to Transfer Venue to the Northern
`District of California Under 28 U.S.C. 1404(a) [redacted], Scramoge
`Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D. Tex.
`Sept. 29, 2021), ECF No. 26.
`Ex-1027 Standing Order Governing Proceedings – Patent Cases, Scramoge
`Tech. Ltd. v. Samsung Elec. Co., Ltd., 6:21-cv-454-ADA (W.D. Tex.
`Oct. 8, 2021), ECF No. 36
`
`iv
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`
`Google LLC (collectively, “Petitioner”) request inter partes review (“IPR”) of
`
`Claims 1, 4, 5, 8-13, and 17-22 of U.S. Patent No. 9,843,215 (“the ’215 Patent”)
`
`(Ex-1001), assigned to Scramoge Technology Ltd. (“PO”).
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`Real Parties-in-Interest: Petitioner identifies the following real parties-in-
`
`interest: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`
`Google LLC.2
`
`Related Matters: PO has asserted the ’215 Patent against Google LLC in
`
`Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D. Tex. June 15,
`
`2021) and against Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. in Scramoge Technology Ltd. v. Samsung Elec. Co., Ltd., No. 6:21-cv-00454-
`
`ADA (W.D. Tex. Apr. 30, 2021).
`
`The ’215 Patent is also asserted against Apple Inc. (“Apple”) in Scramoge
`
`Technology Ltd. v. Apple Inc., No. 6:21-cv-00579 (W.D. Tex. June 7, 2021).
`
`
`2 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
`
`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest
`
`to this proceeding.
`
`1
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`Certain claims of the ’215 Patent are challenged by Apple in IPR No. 2022-
`
`00117 (“Apple -117 IPR”).
`
`Lead and Back-Up Counsel:
`• Lead Counsel: John Kappos (Reg. No. 37,861), O’Melveny & Myers
`
`LLP, 610 Newport Center Dr., 17th Floor, Newport Beach, CA
`
`92660. (Telephone: 949-823-6900; Fax: 949-823-6994; Email:
`
`jkappos@omm.com)
`
`• Backup Counsel: Cameron W. Westin (Reg. No. 66,188), O’Melveny
`
`& Myers LLP, 610 Newport Center Dr., 17th Floor, Newport Beach,
`
`CA 92660. (Telephone: 949-823-6900; Fax: 949-823-6994; Email:
`
`jkappos@omm.com; cwestin@omm.com); Naveen Modi (Reg. No.
`
`46,224), Joseph E. Palys (Reg. No. 46,508), Phillip Citroën (Reg. No.
`
`66,541), Paul M. Anderson (Reg. No. 39,896), Quadeer A. Ahmed
`
`(Reg. No. 60,835), Paul Hastings LLP, 2050 M St., N.W. Washington,
`
`DC 20036 (Telephone: (202) 551-1990; Fax: (202) 551-1705; Email:
`
`PH-Google-Scramoge-IPR@paulhastings.com)
`
`Service Information: Petitioner consents to electronic service by email to
`
`scramogesamsungomm@omm.com and PH-Google-Scramoge-
`
`IPR@paulhastings.com.
`
`2
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`III. FEE AUTHORIZATION
`The PTO is authorized to charge any fees due during this proceeding to
`
`Deposit Account No. 50-0639.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’215 patent is available for review, and Petitioner
`
`is not barred/estopped from requesting review on the grounds herein.
`
`V.
`
`PRECISE RELIEF REQUESTED
`Petitioner requests review and cancellation of Claims 1, 4, 5, 8-13, and 17-
`
`22 as unpatentable based on the following grounds, supported by a declaration
`
`from Dr. Gary Woods, an expert in the field of the ’215 Patent. Ex-1002, ¶¶7-15,
`
`46-49; Ex-1003:
`
`•
`
`Ground 1: Claims 1, 8, 9, 11, 13, 17, 19, and 21 are anticipated by
`
`Sakuma (Ex-1005);
`
`•
`
`Ground 2: Claims 4, 5, 12, 18, and 22 are rendered obvious by
`
`Sakuma in view of Hiroki (Ex-1007);
`
`•
`
`Ground 3: Claims 1, 8-11, 13, 17, and 19-21 are rendered obvious by
`
`Sakuma in view of Suzuki (Ex-1006);
`
`•
`
`Ground 4: Claims 4, 5, 12, 18, and 22 are rendered obvious by
`
`Sakuma in view of Suzuki and Hiroki;
`
`•
`
`Ground 5: Claims 1, 4, 5, 8, 9, 11-13, 17-19, 21, and 22 are
`
`3
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`anticipated by Hiroki; and
`
`•
`
`Ground 6: Claims 1, 4, 5, 8, 9, 11-13, 17-19, 21, and 22 are rendered
`
`obvious by Hiroki in view of Akiho (Ex-1022).3
`
`For purposes of this proceeding only, Petitioner assumes the earliest date to
`
`which the ’215 Patent is entitled to priority is March 4, 2014, and thus applies post-
`
`AIA 35 U.S.C. § 102.
`
`Sakuma published on January 14, 2010 (Ex-1005, Cover), Hiroki published
`
`on December 4, 2008 (Ex-1007, Cover), and Akiho published on December 23,
`
`2004 (Ex-1022, Cover). Thus, Sakuma, Hiroki, and Akiho qualify as prior art
`
`under at least 35 U.S.C. §102(a)(1).
`
`Suzuki issued from an application filed May 13, 2013 (Ex-1006, Cover), and
`
`thus qualifies as prior art under at least 35 U.S.C. §102(a)(2).
`
`VI. THE CHALLENGED PATENT
`The ’215 Patent is directed to a “wireless charging and communication
`
`board, and a wireless charging and communication device” that includes receiver
`
`100 and transmitter 500, which may enable “wireless power conversion (WPC)
`
`
`3 Any other references discussed herein are provided to show the state of the art at
`
`the time of the alleged invention. Int’l Bus. Machines Corp. v. Intellectual Ventures
`
`II, LLC, IPR2015-00089, Paper No. 44 at 15 (Apr. 25, 2016).
`
`4
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`and near field communication (NFC).” Ex-1001at 2:53-59, FIG. 1; Ex-1002, ¶¶50-
`
`54.
`
`
`
`Id., FIG. 1.
`
`The board includes soft magnetic layers 220, 230 and polymeric material
`
`layers 310, 312 “arranged 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.” Ex-1001, 5:27-30.
`
`5
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`
`
`Id. at FIG. 3.
`
`As discussed below, all the limitations in the challenged claims of the ’215
`
`Patent were known in the prior art and anticipated and/or obvious. See Section IX;
`
`Ex-1002, ¶¶62-230.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`One of ordinary skill in the art at the relevant time (“POSITA”) 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.
`
`Ex-1002, ¶¶46-49.
`
`6
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`VIII. CLAIM CONSTRUCTION
`Petitioner interprets the claims of the ’215 Patent according to the Phillips
`
`claim construction standard. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005). To resolve the particular grounds presented in this
`
`Petition, Petitioner does not believe that any term requires explicit construction.4
`
`Ex-1002, ¶¶33-45.
`
`IX. DETAILED EXPLANATION OF THE UNPATENTABILITY
`GROUNDS
`As explained below, the challenged claims are disclosed or suggested by the
`
`prior art. Ex-1002, ¶¶63-73; see also id. generally ¶¶62-230. Like claim elements
`
`are discussed together below.
`
`A. Ground 1: Claims 1, 8, 9, 11, 13, 17, 19, and 21 are anticipated by
`Sakuma
`1.
`Independent Claims 1 and 13
`a.
`Element 1[pre]:A wireless charging and
`communication board, comprising
`Element 13[pre]: A portable terminal, comprising:
`As discussed below, the preambles of Claims 1 and 13 are not limiting, but
`
`even if they are, they are disclosed by Sakuma.
`
`
`4 Petitioner reserves all rights to raise claim construction and other arguments in
`
`district court.
`
`7
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`The Preambles Are Not Limiting
`In general, there is a “presumption against reading a statement of purpose in
`
`the preamble as a claim limitation.” Marrin v. Griffin, 599 F.3d 1290, 1294–95 (Fed.
`
`Cir. 2010); Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002)
`
`(“Generally, the preamble does not limit the claims.”). Here, the preambles are not
`
`limiting, because, for example, the preambles (i) merely state a purpose or intended
`
`use of the invention, (ii) do not impose any structural requirements beyond those
`
`explicitly provided in the claim body, (iii) are not relied upon for antecedent basis
`
`in the claim body, and (iv) were not relied upon during prosecution to distinguish
`
`from the prior art. Arctic Cat Inc. v. GEP Power Prods., 919 F.3d 1320, 1329-30
`
`(Fed. Cir. 2019); Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962
`
`F.3d 1362, 1367-68 (Fed. Cir. 2020).
`
`First, the preambles recite a “wireless charging and communication board”
`
`and a “portable terminal,” which merely state a purpose or intended use of the
`
`alleged invention. Marrin, 599 F.3d at 1294–95. Second, the preambles do not
`
`impose any structural requirements on the claim because the claim body provides a
`
`complete structure. Ex-1001, 9:56-10:13 (Claim 1 reciting all elements of a
`
`structure), 11:1-28 (Claim 13 reciting all elements of a structure). Arctic Cat Inc.,
`
`919 F.3d at 1329–30; Shoes by Firebug LLC, 962 F.3d at 1367–68. Nor do the
`
`preambles provide antecedent basis for terms in the claim body. Id. The preambles
`
`8
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`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`were also not relied upon during prosecution to distinguish over the prior art. See
`
`generally Ex-1004; Arctic Cat Inc., 919 F.3d at 1329. Thus, the preambles of Claims
`
`1 and 13 are not limiting.
`
`The Preambles Are Disclosed by Sakuma
`To the extent the preambles are limiting, Sakuma discloses the features set
`
`forth therein. Ex-1002, ¶¶75-80. For example, Sakuma discloses a contactless power
`
`transmission system (e.g., a wireless charging system) employed in a hand-held
`
`device or an IC tag system. Ex-1005, [0002]-[0003]; see also Ex-1002, ¶¶63-65
`
`(Sakuma overview).
`
`As shown in Figure 1 below, Sakuma’s contactless power transmission system
`
`includes a power receiver 1, which includes a housing 13 that houses a soft magnetic
`
`sheet 11 and a coil sheet 12. Ex-1005, [0026]-[0027], FIG. 1. The system shown in
`
`Figure 1 also includes power transmitter 2, which supplies power to power receiver
`
`1 and includes a housing 23 that houses a soft magnetic sheet 21 and a coil sheet 22.
`
`Ex-1005, [0033]-[0034], FIG. 1. Power is transmitted from the transmitter coil of
`
`coil sheet 22 to the receiver coil of coil sheet 12. Ex-1005, [0034], FIG. 1.
`
`9
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`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Ex-1005, FIG. 1 (annotated); Ex-1002, ¶76.
`
`Sakuma’s hand-held device or portion of an IC tag system including a power
`
`receiver 1 for wireless charging discloses a “portable terminal,” as recited in claim
`
`
`
`13.
`
`Sakuma also discloses the “wireless charging and communication board”
`
`recited in claim 1. For example, Sakuma discloses using the power receiver (for
`
`wireless charging) in a hand-held device or an IC tag system, which a POSITA
`
`would have understood also includes communication functionality, because, e.g., IC
`
`tags are used to wirelessly read/write information. Ex-1002, ¶78; Ex-1019, 1:10-
`
`2:14; Ex-1020, 1:5-63, FIGS. 1-2.
`
`10
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`Sakuma’s disclosure of such a “board” is consistent with the ’215 Patent’s
`
`disclosure, which describes a “board” as simply a collection of components such as
`
`a magnetic sheet and a coil pattern, which is what Sakuma’s power receiver 1
`
`includes. Ex-1001, 4:24-31, FIG. 2; Ex-1002, ¶¶75-80.
`
`Thus, to the extent the preambles are limiting, Sakuma discloses them.
`
`b.
`Element 13[a]: a housing
`Sakuma discloses element 13[a]. Ex-1002, ¶¶81-83. For example, as
`
`discussed above for elements 1[pre]/13[pre], Sakuma discloses a housing 13
`
`(“housing”), which houses soft magnetic sheet 11 and coil sheet 12. Ex-1005,
`
`[0027].
`
`11
`
`
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Id., FIG. 1 (annotated); Ex-1002, ¶81.
`
`Sakuma’s disclosure of a housing 13 is consistent with the ’215 Patent’s
`
`disclosure of housing 400, which houses soft magnetic layers 220, 230 and coil
`
`patterns 120, 130.
`
`Ex-1001, FIG. 1 (annotated); Ex-1002, ¶82.
`
`Accordingly, Sakuma discloses the claimed housing. Ex-1002, ¶¶81-83.
`
`
`
`12
`
`

`

`c.
`
`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`Element 1[a]: a plurality of soft magnetic layers
`comprising a first soft magnetic layer and a second
`soft magnetic layer;
`Element 13[b]: a plurality of soft magnetic layers
`arranged in the housing, and comprising a first soft
`magnetic layer and a second magnetic layer;
`Sakuma discloses elements 1[a] and 13[b]. Ex-1002, ¶¶84-87. For example,
`
`with reference to Figure 2A (which shows a schematic of the soft magnetic sheet 11
`
`of power receiver 1 in Figure 1), Sakuma discloses that its “soft magnetic sheet 11
`
`comprises [] a soft magnetic member 31.” Ex-1005, [0011], [0028], FIGS. 1, 2A.
`
`Sakuma further discloses that “[t]he soft magnetic member 31 [] comprises ten soft
`
`magnetic pieces 311.” Id., [0029], FIG. 2A.
`
`Sakuma’s soft magnetic member 31, including soft magnetic pieces 311,
`
`discloses the claimed “plurality of soft magnetic layers,” and at least two soft
`
`magnetic pieces 311 disclose the claimed “first soft magnetic layer” and “second
`
`magnetic layer,” as shown in annotated Figure 2A below.5 Id., [0029], FIG. 2A; Ex-
`
`1002, ¶85.
`
`
`5 Sakuma’s disclosure of soft magnetic pieces 311 in a side-by-side arrangement is
`
`consistent with the ’215 Patent’s disclosure regarding the claimed plurality of soft
`
`magnetic layers. Ex-1001, FIGS. 1-5 (showing plural soft magnetic layers 220 and
`
`230 in a side-by-side arrangement), 4:33-38, 4:58-63, 6:39-41; Ex-1002, ¶85, FN. 3.
`
`13
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`
`
`Ex-1005, FIG. 2A (annotated); Ex-1002, ¶85.
`
`With respect to element 13[b], Sakuma discloses that soft magnetic sheet 11
`
`(including soft magnetic member 31/soft magnetic pieces 311) is arranged in
`
`housing 13, as claimed. For example, Sakuma discloses that “[t]he receiver housing
`
`13 [] accommodates the soft magnetic sheet 11.”6 Ex-1005, [0027], FIG. 1.
`
`
`6 Emphasis added unless otherwise noted.
`
`14
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`
`
`Ex-1005, FIG. 1 (annotated); Ex-1002, ¶86.
`
`Accordingly, Sakuma discloses the claimed plurality of soft magnetic layers
`
`in the housing. Ex-1002, ¶¶84-87.
`
`d.
`
`Element 1[b]/13[c]: a first polymeric material layer
`arranged on a first surface of the plurality of soft
`magnetic layers;
`Sakuma discloses elements 1[b] and 13[c]. Ex-1002, ¶¶88-91. For example,
`
`with reference to Figure 2A, Sakuma discloses that its “soft magnetic sheet 11
`
`comprises a pair of insulation films 32 and a soft magnetic member 31.” Ex-1005,
`
`[0028], FIG. 2A. For example, Sakuma discloses:
`
`15
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`The soft magnetic member 31 of the present embodiment is fixed
`between the insulation films 32. Specifically, the soft magnetic
`member 31 is hermetically interposed between the insulation
`films 32. In other words, the soft magnetic member 31 has a
`laminate structure. Each of the insulation films 32 is made of a
`polyester film.
`
`Id.
`
`Thus, a first insulation film 32 is arranged on and covers the bottom surface
`
`of soft magnetic member 31, and a second insulation film 32 is arranged on and
`
`covers the top and side surfaces of soft magnetic member 31. Id., [0028], FIG. 2A.
`
`Annotated Figure 2A below shows first insulation film 32 on the bottom surface of
`
`soft magnetic member 31. For ease of visualization, the second insulation film 32 on
`
`the top surface is not shown.
`
`
`
`16
`
`

`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Ex-1005, FIG. 2A (annotated); Ex-1002, ¶89.
`
`Accordingly, Sakuma discloses a first insulation film 32 (“first [] layer”)
`
`arranged on a first surface (e.g., bottom surface) of soft magnetic member 31, which
`
`includes soft magnetic pieces 311 (“plurality of soft magnetic layers”).7 Ex-1002,
`
`¶90.
`
`The first insulation film 32 is made of “polyester film,” which is a polymeric
`
`material. Ex-1005, [0028]; Ex-1002, ¶90; Ex-1016, 1:14-18.
`
`Therefore, Sakuma discloses elements 1[b] and 13[c]. Ex-1002, ¶¶88-91.
`
`e.
`
`Element 1[c]/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
`Sakuma discloses elements 1[c] and 13[d]. Ex-1002, ¶¶92-94. For example,
`
`as discussed above in Section IX.A.1.d, Sakuma discloses a first insulation film 32
`
`on the bottom surface of soft magnetic member 31 and a second insulation film 32
`
`
`7 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.
`
`17
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`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`on the top and side surfaces of soft magnetic member 31, where insulation films 32
`
`are made of polymeric material. Ex-1005, [0028], FIG. 2A.
`
`Thus, as shown below, Sakuma discloses a second insulation film 32 (“second
`
`polymeric material layer”) arranged on a second surface (e.g., top surface) of soft
`
`magnetic member 31, which includes soft magnetic pieces 311 (“plurality of soft
`
`magnetic layers”), opposed to the first surface (e.g., bottom surface).8 In the
`
`annotated figure below, the first polymeric material layer 32 is not shown.
`
`
`
`8 See n.7.
`
`
`
`18
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`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Ex-1005, FIG. 2A (annotated); Ex-1002, ¶93.
`
`Accordingly, Sakuma discloses elements 1[c] and 13[d]. Ex-1002, ¶¶92-94.
`
`f.
`
`Element 1[d]/13[e]: a coil pattern arranged on the
`second polymeric material layer,
`Sakuma discloses elements 1[d] and 13[e]. Ex-1002, ¶¶95-99. For example,
`
`Sakuma discloses a coil sheet 12 including receiver coil 33 (“coil pattern”) arranged
`
`on second insulating film 32 (“second polymeric material layer”). Ex-1005, [0027],
`
`[0031].
`
`For example, Sakuma discloses that “[t]he coil sheet 12 is stacked on the soft
`
`magnetic sheet 11” (Ex-1005, [0027]) and that “[t]he coil sheet 12 is attached to the
`
`soft magnetic sheet 11 so that an inside area of the receiver coil 33 corresponds to
`
`the center section of the soft magnetic sheet 11, as apparent from FIG. 2B” (id.,
`
`[0031]). Id., FIG. 2B.
`
`19
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`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`
`
`Ex-1005, FIG. 2B (annotated); Ex-1002, ¶96.
`
`Sakuma discloses that “the insulation films 32 [covering soft magnetic
`
`member 31] are partially omitted in FIG. 2B for the sake of better understanding.”
`
`Ex-1005, [0028]. As discussed above in Section IX.A.1.d, Sakuma explains that its
`
`soft magnetic member 31 is “hermetically interposed between the insulation films
`
`32” and has a “laminate structure.” Id. That is, the soft magnetic member 31 is
`
`completely sealed from all sides by way of the insulation films 32. Ex-1002, ¶97;
`
`Ex-1025, 4. Thus, while Figure 2B does not explicitly illustrate that coil sheet 12 is
`
`arranged on second insulating film 32, a POSITA would have readily understood
`
`based on Sakuma’s disclosures that coil sheet 12 is arranged on second insulating
`
`20
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`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`film 32 (which is omitted from Figure 2B). Ex-1005, [0026]-[0028], [0031], FIGS.
`
`1, 2A-2B.9 Ex-1002, ¶98.
`
`Accordingly, Sakuma discloses elements 1[d] and 13[e]. Ex-1002, ¶¶95-99.
`
`g.
`
`Element 1[e]/13[f]: wherein the plurality of soft
`magnetic layers are positioned [disposed] between the
`first polymeric material layer and the second
`polymeric material layer,
`Sakuma discloses elements 1[e] and 13[f]. Ex-1002, ¶¶100-102. For example,
`
`as discussed and shown above in Sections IX.A.1.c-d, soft magnetic member 31
`
`including soft magnetic pieces 311 (“plurality of soft magnetic layers”) are
`
`positioned or disposed between first insulating film 32 (“first polymeric material
`
`layer”) and second insulating film 32 (“second polymeric material layer”). Ex-1005,
`
`[0028], FIG. 2A. Annotated Figure 2A below includes a delineation line A-A, where,
`
`above the line, the first insulation film on the bottom is transparent, and where, below
`
`the line, the second insulation film is transparent.
`
`
`9 Whether the coil pattern is arranged directly or indirectly “on” the second
`
`polymeric material layer is irrelevant as the ’215 Patent uses the term “on” broadly.
`
`See n.7.
`
`21
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`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`
`
`Ex-1005, FIG. 2A (annotated); Ex-1002, ¶100.
`
`The non-limiting demonstrative below represents a cross-section taken along
`
`the line A-A shown in annotated figure 2A above. As shown in the demonstrative,
`
`magnetic pieces 311 are sandwiched between the first insulation film on the
`
`bottom and the second insulation film on the top.
`
`22
`
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`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Ex-1002, ¶101.
`
`Accordingly, Sakuma discloses elements 1[e] and 13[f]. Ex-1002, ¶¶100-
`
`102.
`
`h.
`
`Element 1[f]/13[g]: wherein the first polymeric
`material layer includes [comprises] a first extending
`portion extending longer than the plurality of soft
`magnetic layers,
`Sakuma discloses elements 1[f] and 13[g]. Ex-1002, ¶¶103-106. For example,
`
`as shown in an annotated excerpt of Figure 2A below, Sakuma discloses that first
`
`insulating film 32 includes a first extending portion extending longer than soft
`
`magnetic member 31 including soft magnetic pieces 311 (“plurality of soft magnetic
`
`layers”). Ex-1005, [0028], FIG. 2A.
`
`
`
`23
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`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Ex-1005, FIG. 2A (annotated); Ex-1002, ¶103.
`
`
`
`
`
`The first extending portion is also shown in the demonstrative corresponding
`
`to the cross-section discussed above with respect to claim elements 1[e]/13[f].
`
`
`
`
`
`24
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`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`Ex-1002, ¶104.
`
`As discussed above in Section IX.A.1.c, Sakuma describes its soft magnetic
`
`member 31 as being hermetically interposed between insulation films 32 and having
`
`a laminate structure. Ex-1005, [0028]. Thus, both insulation films 32 extend longer
`
`than the soft magnetic member 31 including soft magnetic pieces 311, as shown in
`
`annotated Figure 2A and the demonstrative above. Ex-1002, ¶105.
`
`Accordingly, Sakuma discloses elements 1[f] and 13[g]. Ex-1002, ¶¶103-
`
`106.
`
`i.
`
`Element 1[g]/13[h]: wherein the second polymeric
`material layer includes [comprises] a second
`extending portion extending longer than the plurality
`of soft magnetic layers, [and]
`Sakuma discloses elements 1[g] and 13[h]. Ex-1002, ¶¶107-110. For example,
`
`as shown in annotated Figure 2A below, Sakuma discloses that second insulating
`
`film 32 includes a second extending portion extending longer than soft magnetic
`
`member 31 including soft magnetic pieces 311 (“plurality of soft magnetic layers”).
`
`Ex-1005, [0028], FIG. 2A.
`
`25
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`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`
`
`
`Ex-1005, FIG. 2A (annotated); Ex-1002, ¶107.
`
`
`
`The second extending portion is also shown in the demonstrative
`
`corresponding to the cross-section discussed above with respect to claim elements
`
`1[f]/13[g] that also includes the first extending portion.
`
`
`
`Ex-1002, ¶¶108-109.
`
`26
`
`
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`

`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`Accordingly, Sakuma discloses elements 1[g] and 13[h]. Ex-1002, ¶¶107-
`
`110.
`
`j.
`
`Element 1[h]/13[i]: wherein the first extending
`portion and the second extending portion are
`connected to each other,
`Sakuma discloses elements 1[h] and 13[i]. Ex-1002, ¶¶111-114. For example,
`
`as shown in annotated Figure 2A below, Sakuma discloses that the extended portion
`
`of the first insulating film and the extended portion of the second insulating film 32
`
`are connected to each other. Ex-1005, [0028], FIG. 2A.
`
`
`
`Ex-1005, FIG. 2A (annotated); Ex-1002, ¶111.
`
`27
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`U.S. Patent No. 9,843,215
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`The area in which the first and second extending portions are connected is
`
`
`
`also shown in the demonstrative corresponding to the cross-section discussed above
`
`with respect to claim elements 1[g]/13[h].
`
`Ex-1002, ¶112.
`
`The understanding that the extended portions of first and second insulating
`
`films 32 are connected to each other is confirmed by Sakuma’s above-noted
`
`disclosures that soft magnetic member 31 is hermetically interposed between
`
`insulation films 32 in the laminate structure. Ex-1005, [0028]. For the soft magnetic
`
`member 31 to be completely covered from all sides by insulation films 32, the
`
`insulation films must be connected to each other. Ex-1002, ¶113.
`
`Accordingly, Sakuma discloses elements 1[h] and 13[i]. Ex-1002, ¶¶111-
`
`114.
`
`28
`
`

`

`k.
`
`U.S. Patent No. 9,843,215
`Petition for Inter Partes Review
`Element 1[i]/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.
`Sakuma discloses elements 1[i] and 13[j]. Ex-1002, ¶¶115-116. For example,
`
`Sakuma discloses that “[t]he metallic soft magnetic material is for example sendust.”
`
`Ex-1005, [0041]. Sendust is a crystalline alloy, as claimed. Ex-1002, ¶¶115-116;
`
`Ex-1015, 1:13-15; Ex-1007, [0015]; Ex-1018, 1:38-39.
`
`2.
`
`Dependent Claims 8, 9, 11, 17, 19, and 21
`a.
`Claim 8/17: [The wireless charging and
`communication board of claim 1 / The portable
`terminal of claim 13], wherein the first polymeric
`material layer and the first extending portion are
`made with a same material.
`Sakuma discloses Claims 8 and 17. Ex-1002, ¶¶117-118. For example,
`
`Sakuma discloses that first insulation film 32 is “made of a polyester film.” Ex-1005,
`
`[0028], FIG. 2A. And as discussed above in