`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00573
`Patent 7,825,537
`____________
`
`
`PATENT OWNER’S SUR-REPLY
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`
`
`
`
`
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`
`
`Table of Contents
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. The Petition Fails to Establish that Baarman is Prior Art .................................. 1
`III. Ground 1A Further Fails with Respect to Claims 5 and 16 ............................... 5
`A.
`Claim 5 ................................................................................................. 5
`B.
`Claim 16 ............................................................................................. 11
`
`IV. Ground 2B Fails with Respect to Claims 4, 5, 15, and 16 ............................... 15
`A.
`Claims 4 and 15 .................................................................................. 15
`B.
`Claims 5 and 16 .................................................................................. 18
`V. Conclusion ....................................................................................................... 20
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`
`
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`
`
`
`
`i
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`
`
`Table of Authorities
`
`Cases
`
`Air Liquide Large Indus. U.S. LP v. Praxair Tech., Inc.,
`IPR2015-01075, Paper 11 (PTAB Oct. 26, 2015) ............................................... 16
`
`
`AK Steel Corp. v. Sollac and Ugine,
`344 F.3d 1234 (Fed. Cir. 2003) ............................................................................. 3
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................. 1, 2, 3, 4, 8
`
`Grain Processing Corp. v. Am.–Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................. 20
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ........................................................................... 20
`
`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988) ........................................................................... 3, 9
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001) ........................................................................... 17
`
`Sanofi- Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) ...................................................................... 19-20
`
`Univ. of Rochester v. G.D. Searle & Co., Inc.,
`358 F.3d 916 (Fed. Cir. 2004) ............................................................................ 3-4
`
`Statutes
`
`35 U.S.C. § 112 ..................................................................................................... 2, 3
`
`35 U.S.C. § 119(e)(1) ............................................................................................... 2
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`
`
`
`
`
`
`
`ii
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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
`
`Notice of IPR Petitions, Scramoge Technology Ltd. v. Apple Inc.,
`Case No. 6:21-cv-01071-ADA, Dkt. No. 30 (W.D. Tex. Feb. 16,
`2022)
`
`Scheduling Order, Scramoge Technology Ltd. v. Apple Inc., Case
`No. 6:21-cv-01071-ADA, Dkt. No. 36 (W.D. Tex. Apr. 27, 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)
`
`Standing Order Governing Proceedings in Patent Cases, Judge
`Alan D. Albright
`
`Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case
`No. 6:19-cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30, 2020)
`
`Plaintiff Scramoge Technology Ltd.’s Preliminary Disclosure of
`Asserted Claims and Infringement Contentions to Apple Inc. in
`Scramoge Technology Ltd. v. Apple Inc., Case No. 6:21-cv-
`01071-ADA (W.D. Tex.)
`
`Defendant Apple Inc.’s Preliminary Invalidity Contentions in
`Scramoge Technology Ltd. v. Apple Inc., Case No. 6:21-cv-
`01071-ADA (W.D. Tex.)
`
`2010
`
`Webster’s II New College Dictionary
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`
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`
`
`iii
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`
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`I.
`
`INTRODUCTION
`Patent Owner hereby responds to the arguments raised in Petitioner’s Reply
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`to Patent Owner’s Response, 1 Paper No. 19 (“Reply”) to address the following
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`points:
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`• For Grounds 1A and 1B, Petitioner has not shown that Baarman is
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`entitled to the filing date of the Baarman Provisional Application
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`because it has not shown that that the Baarman Provisional Application
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`satisfies the distinct enablement requirement for any claims of
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`Baarman.
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`• For Ground 1A, Petitioner has not shown that Baarman satisfies the
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`limitations of claims 5 and 16 of the ’537 patent.
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`• For Ground 2B, Petitioner has not shown that Flowerdew satisfies the
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`limitations of claims 4, 5, 15 and 16 of the ’537 patent.
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`II. The Petition Fails to Establish that Baarman is Prior Art
`The Petition fails to show how the provisional application enables at least one
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`claim of Baarman, as required by Dynamic Drinkware. Petitioner concedes that it
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`has not offered any analysis regarding the enablement of, including the amount of
`
`
`1 Although this Sur-Reply does not address all arguments raised by Petitioner in
`Reply, Patent Owner does not concede any argument raised in the Patent Owner
`Response or that any ground renders any challenged claim invalid.
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`
`
`1
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`experimentation required to practice, the Baarman claims. Instead, misstating the
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`law, Petitioner urges that evidence of written description support alone is sufficient
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`to establish priority for Baarman vis-à-vis the Baarman Provisional Application.
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`Reply at 3. Petitioner is incorrect.
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`In order for Baarman to be entitled to the filing date of the Baarman
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`Provisional Application, Section 119 requires that the Baarman Provisional
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`Application meet the requirements of Section 112, ¶ 1 for Baarman. See 35 U.S.C.
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`§ 119(e)(1).2 In other words, the Baarman Provisional Application must satisfy both
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`(i) the written description requirement, and (ii) the enablement requirement, with
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`respect to the claims of Baarman. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
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`800 F.3d 1375, 1378 (Fed. Cir. 2015) (citations omitted) (“[T]he provisional must
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`‘contain a written description of the invention and the manner and process of making
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`and using it, in such full, clear, concise, and exact terms,’ to enable an ordinarily
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`skilled artisan
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`to practice
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`the
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`invention claimed
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`in
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`the non-provisional
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`application.”).3
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`2 35 U.S.C. § 119(e)(1) states in part: “An application for patent … for an
`invention disclosed in the manner provided by section 112 [first paragraph] (other
`than the requirement to disclose the best mode) in a provisional application …
`shall have the same effect, as to such invention, as though filed on the date of the
`provisional application.”
`
` Citing to this sentence in Dynamic Drinkware, Petitioner contends that Patent
`Owner “demonstrates that it understands Dynamic Drinkware to encompass the
`
` 3
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`2
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`Petitioner asserts that it has met the “Dynamic Drinkware standard (which
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`encompasses § 112, ¶ 1) by illustrating how it supports Baarman’s claim 1.” Reply
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`at 4 (emphasis added). But Petitioner and its expert, Dr. Szepesi, provide opinions
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`that, at best, only attempt to establish that the Baarman Provisional Application
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`provides written description support for claim 1 of Baarman. Neither provides any
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`explanation on whether the Baarman Provisional Application “teach[es] those in the
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`art to make and use the invention [claimed in Baarman] without undue
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`experimentation.” See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); see also AK
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`Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003) (“The
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`enablement requirement is satisfied when one skilled in the art, after reading the
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`specification,
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`could
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`practice
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`the
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`claimed
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`invention without
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`undue
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`experimentation.”).
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`Written description support alone is not sufficient. See Univ. of Rochester v.
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`G.D. Searle & Co., Inc., 358 F.3d 916, 921 (Fed. Cir. 2004) (“Although there is
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`often significant overlap between the [§112, ¶ 1] requirements, [the written
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`description and enablement requirements] are nonetheless independent of each
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`other.… [A]n invention may be described without an enabling disclosure of how to
`
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`enablement requirement.” Reply at 4-5. That is exactly the point. The sentence
`incorporates the express language of 35 U.S.C. § 112, ¶ 1, from which the distinct
`written description and enablement requirements arise.
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`3
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`make and use it.” because “an invention may be described without an enabling
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`disclosure of how to make and use it.”). Petitioner and Dr. Szepesi merely opined
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`that the Baarman Provisional Application provides “exemplary support” and
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`“additional support and disclosure” with respect to the limitations of claim 1 of
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`Baarman. See, e.g., Reply at 9-18. Petitioner argues that these citations and opinions
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`are “evidence supporting … [the] enablement requirement[].” Id., at 5. But they are
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`clearly not, because they do not provide any analysis regarding the degree of
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`experimentation required to practice the claims.
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`Petitioner further argues that it “met its burden of production under Dynamic
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`Drinkware” and that the burden of production “shifted to Patent Owner to prove via
`
`evidence that Baarman was not entitled to the benefit of the filing date” of the
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`Baarman Provisional Application. This is also incorrect. The Petition failed to
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`present prima facie evidence of enablement. Consequently, there cannot be a shift
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`in the burden of production to Patent Owner.
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`Because Petitioner cannot show that Baarman is enabled by the Baarman
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`Provisional Application, Petitioner cannot show that Baarman is prior art to the ’537
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`patent. Baarman has a filing date of January 7, 2009, after the ’537 patent’s priority
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`date of November 14, 2008. The Board should find that Baarman fails to qualify as
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`prior art to the ’537 patent and thus no claims of the ’537 patent are unpatentable
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`under Grounds 1A and 1B of the Petition.
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`4
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`III. Ground 1A Further Fails with Respect to Claims 5 and 16
`With respect to claims 5 and 16 of the ’537 patent, the Petition fails to
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`establish in Ground 1A that the combination of Baarman and Partovi-002
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`“compar[e] said measured current or voltage to a constant reference value” to
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`“automatically adjust[] at least one characteristic of said time varying electric
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`current” as required by claim 5, (Ex. 1001, 10:26-28), or “automatically adjust[] at
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`least one characteristic of said time varying electric current” “based on a comparison
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`of said measured current or voltage to a constant reference” as required by claim 16
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`(Ex. 1001, 11:23-26). Petitioner contends that Patent Owner is arguing that these
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`claims require the measurement of current or voltage must be made in the base unit.
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`Reply at 26. While that may be partially correct, at least with respect to claim 5, it
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`is incomplete and misleading because it fails to grasp the point that Baarman does
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`not describe an induction system that compares a “measured current or voltage to a
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`constant reference value” to “automatically adjust[] at least one characteristic of said
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`time varying electric current,” as required by these claims.
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`A. Claim 5
`Claim 5 depends from claim 4, which depends from claim 3, which depends
`
`from independent claim 1. Because claim 5 further modifies limitations from claim
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`1, the analysis begins there. As related to the further limitations of claims 4 and 5,
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`claim 1 requires:
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`
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`5
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`• “applying a time varying electric current to said first inductive element [of
`said base unit] to produce a time varying magnetic field,” Ex. 1001, 10:4-
`7;
`
`• “monitoring at least one parameter indicative of an efficiency of power
`transfer from said base unit to said target unit,” id., 10:8-10; and
`
`• “automatically adjusting at least one characteristic of said time varying
`electric current responsive to said parameter to maximize an efficiency of
`power transfer from said base unit to said target unit,” id., 10:11-14.
`Claim 4 depends from claim 3, which depends from claim 1, although the
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`limitations of claim 3 do not factor into the limitations of claims 4 and 5. Claim 4
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`further requires:
`
`• “communicating said time varying electric current to a load in said base
`unit,” id., 10:23-24; and
`
`• “selecting said parameter to be a measured current or voltage associated
`with said load,” id., 10:24-25.
`Read in the context of claim 1, claim 4 requires “automatically adjusting at
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`least one characteristic of said time varying electric current responsive to the
`
`measured current or voltage associated with said load to maximize an efficiency of
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`power transfer from said base unit to said target unit. For claim 4, the Petition
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`primarily identifies Baarman’s current sense circuit 324, shown in Fig. 3D, and more
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`specifically asserts that the voltage at the R11-C17 circuit is the “the measured
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`voltage associated with said load.” Petition at 27-28; see also Ex. 1003 at ¶ 134
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`(“The said parameter is the voltage on the load, the R-C circuit R11-C17 … The
`
`
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`6
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`
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`voltage on the R-C circuit load is itself a ‘measured voltage’ associated with the
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`load.”).
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`The Petition alternatively asserts that the measured secondary voltage and
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`measured secondary current, as communicated back to the primary circuit through
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`the R11-C17 “load,” are “the measured current voltage associated with said load.”
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`Petition at 29-30; see also Ex. 1003 at ¶ 135 (“the said parameter is the measured
`
`secondary voltage or measured secondary current, which are encoded in a “stream
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`of data” communicated to the primary from the secondary, and which data manifests
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`as a series of change pulses in the voltage level on the R-C load circuit R11-C17.”).
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`The secondary current and voltage are used by the controller to “calculate power
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`transfer efficiency,” Ex. 1004, [0035], Petition at 23-24, Ex. 1003 at ¶¶ 126-127, and
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`the measured secondary voltage and current are communicated back to the primary
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`side through the R-C load circuit. Because the voltage level of the load circuit will
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`change during communication, Petitioner concludes that “the secondary current and
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`voltage are ‘associated’ with load circuit R11-C17 since their communication to the
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`primary controller would result in corresponding pulses in the peak rectified current
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`voltage on R11-C17.” Petition at 29-30. This analysis is divorced from the claim
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`language and does not withstand scrutiny.
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`Claim 4 requires “automatically adjusting at least one characteristic of said
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`time varying electric current [responsive to the measured current or voltage
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`7
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`associated with said load] to maximize an efficiency of power transfer.” When
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`Baarman automatically adjusts the operating frequency based on the secondary
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`voltage and current, it does so in response to the secondary voltage and current. See,
`
`e.g., Ex. 1003 at ¶ 126. It does not do so in response to the voltage of the load circuit
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`R11-C17. The plain and ordinary meaning of “associated” is “connected.” See, e.g.,
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`Ex. 2010, Webster’s II New College Dictionary, at 3. Claim 4 therefore requires the
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`“parameter indicative of an efficiency of power transfer” to be a “measured voltage
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`or current connected with said load.” Indeed, the ‘537 patent describes the
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`measurement of a voltage on “at least a portion of” the load:
`
`In order to provide operation of the second inductive element 120 at its
`self resonant frequency, the CTRL 118 can be configured to indirectly
`monitor the amount of power transferred to the second inductive
`element 120 by monitoring the voltage generated across at least a
`portion of the load 106 … [B]y configuring the CTRL 118 to monitor
`the voltage level at a node of the load 106, such as Vnode at node 108,
`the CTRL 118 can adjust the duty cycle for the SMC circuit to cause a
`particular voltage level at node 108.
`Ex. 1001, 5:18-34.
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`In its primary assertion with respect to Baarman, Petitioner asserts that the
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`voltage at the R11-C17 load circuit is the “the measured voltage associated with said
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`load.” Petition at 27-28; see also Ex. 1003 at ¶ 134. In its alternative assertion for
`
`claim 4, Petitioner asserts that the claim is satisfied because the voltage at the R11-
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`C17 circuit will change as a result of the communication of measured secondary
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`8
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`voltage and current from the secondary circuit. But Petitioner does not explain how
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`the remainder of the claim is satisfied, namely how the secondary voltage or current
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`is “connected with” the load other than to assert that the secondary voltage or current
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`is communicated through the load. The secondary voltage and current are
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`“associated with” the secondary circuit, not the R11-C17 load circuit. Because the
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`secondary voltage and current are not connected with to the load, Petitioner’s
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`alternative assertion as to the satisfaction of claim 4 fails.
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`The Petition relies solely on the alternative assertion for claim 5, which
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`depends from claim 4. The challenge to claim 5 thus fails because it is based on a
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`false premise – that the limitations of claim 4 are satisfied by Baarman.. The
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`challenge also fails because claim 5, contrary to Petitioner’s assertion, requires that
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`“comparing of said measured current or voltage to a constant reference value” is part
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`of the process for “automatically adjusting at least one characteristic of said time
`
`varying electric current responsive to … maximize an efficiency of power transfer.”
`
`Claim 1 requires “monitoring at least one parameter indicative of an efficiency
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`of power transfer” and “automatically adjusting at least one characteristic of said
`
`time varying electric current responsive to said parameter to maximize an efficiency
`
`of power transfer.” Claim 4 depends from claim 1. Claim 4 does not add an
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`additional step. Claim 4 adds the requirement that “selecting said parameter to be a
`
`measured current or voltage associated with said load.” In other words, claim 4
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`9
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`IPR2022-00573 (’537 Patent)
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`requires “automatically adjusting at least one characteristic of said time varying
`
`electric current responsive to a measured current or voltage associated with said load
`
`to maximize an efficiency of power transfer.” Claim 5 depends from claim 4. Claim
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`5 also does not call out an additional step. Claim 5 adds the further requirement of
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`“comparing said measured current or voltage to a constant reference value.” Claim
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`5 thus further modifies the requirement of claim 4 that the parameter by which claim
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`1 “automatically adjust[s] at least one characteristic of said time varying electric
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`current” is “a measured current or voltage associated with said load” to require that
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`the parameter is determined by “comparing said measured current or voltage to a
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`constant reference value.” Because claim 1 requires the adjustment of the time
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`varying electric current based on that parameter, Petitioner is wrong that “[c]laim 5
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`does not recite any adjustment as a result of the comparison.” Reply at 27-28.
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`For claim 5, Petitioner relies on Baarman’s “over-current” and “over-voltage”
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`mechanism. Petition at 30-31; Ex. 1003 at ¶¶ 137-140. But Baarman does not
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`describe using the “over-current” and “over-voltage” mechanism to adjust a
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`characteristic of the time varying electric current to “maximize an efficiency of
`
`power transfer.” Patent Owner Response at 18-19. Consequently, Baarman’s “over-
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`current” and “over-voltage” mechanism cannot satisfy the requirement that the
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`“control circuit” “automatically … adjusts said [at least one] characteristic [of said
`
`time varying electric current] based on a comparison of said measured current or
`
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`10
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`IPR2022-00573 (’537 Patent)
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`voltage to a constant reference value [to maximize an efficiency of power transfer]”
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`as required by claim 5. Ground 1A of the Petition fails to show how claim 5 of the
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`‘537 patent is unpatentable.
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`B. Claim 16
`Claim 16 depends from claim 15, which depends from claim 14, which
`
`depends from independent claim 12. Because claim 16 further modifies limitations
`
`from claim 12, the analysis begins there. As related to the further limitations of
`
`claims 15 and 16, claim 12 requires:
`
`• “a switch element configured for selectively applying a time varying
`electric current to said first inductive element to produce a time varying
`magnetic field, said time varying magnetic field inducing an electric
`current in said second inductive element,” Ex. 1001, 10:66-67;
`
`• “a control circuit configured for monitoring at least one parameter
`indicative of an efficiency of power transfer from said base unit to said
`target unit,” id., 11:4-6; and
`
`• “[a control circuit for] automatically adjusting at least one characteristic of
`said time varying electric current responsive to said parameter to maximize
`an efficiency of power transfer from said base unit to said target unit,” id.,
`11:6-10.
`Claim 15 depends from claim 14, which depends from claim 12, although the
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`limitations of claim 14 do not factor into the limitations of claims 15 and 16. Claim
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`15 further requires:
`
`• “a load circuit coupled to said first inductive element,” id., 11:19-20; and
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`11
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`IPR2022-00573 (’537 Patent)
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`• “where said parameter comprises a current or voltage associated with said
`load,” id., 11:20-22.
`Read in the context of claim 12, claim 15 requires a control circuit
`
`“automatically adjusting at least one characteristic of said time varying electric
`
`current responsive to the current or voltage associated with said load to maximize
`
`an efficiency of power transfer from said base unit to said target unit.
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`As with claim 4, the Petition primarily identifies Baarman’s current sense
`
`circuit 324, shown in Fig. 3D, and more specifically asserts that the voltage at the
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`R11-C17 circuit satisfies “the current or voltage associated with said load.” Petition
`
`at 38; see also Ex. 1003 at ¶ 169. The Petition alternatively asserts that the load 424
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`of Baarman’s inductive charging system satisfies the “load” of the claim and that the
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`measured secondary voltage and measured secondary current, as communicated
`
`back to the primary circuit, are the current and voltage associated with that load.
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`Petition at 38-39; see also Ex. 1003 at ¶ 170. The secondary current and voltage are
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`passed back through the R11-C17 circuit in the primary and are used by the
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`controller to “calculate power transfer efficiency,” Ex. 1004, [0035], Petition at 23-
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`24, Ex. 1003 at ¶¶ 126-127.
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`For claim 16, Petitioner relies on Baarman’s disclosure that “over-current and
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`over-voltage states are detected by comparing the measured current or voltage levels
`
`in the secondary to a predetermined, constant reference value.” Petition at 39. This
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`
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`12
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
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`challenge fails because claim 16, contrary to Petitioner’s assertion, requires that the
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`“comparison of said measured current or voltage to a constant reference value” is
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`part of the “control circuit … automatically adjusting at least one characteristic of
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`said time varying electric current responsive to … maximize an efficiency of power
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`transfer.”
`
`Claim 12 requires that a “control circuit” is “configured for monitoring at least
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`one parameter indicative of an efficiency of power transfer from said base unit to
`
`said target unit” and also for “automatically adjusting at least one characteristic of
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`said time varying electric current responsive to said parameter to maximize an
`
`efficiency of power transfer.” Claim 15 depends from claim 12 and adds the
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`requirements of a “load circuit coupled to said first inductive element” and that “said
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`parameter [monitored by the control circuit] comprises a current or voltage
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`associated with said load.” In other words, claim 15 requires that the “control
`
`circuit” “automatically adjust[] at least one characteristic of said time varying
`
`electric current responsive to a current or voltage associated with said load to
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`maximize an efficiency of power transfer.”
`
`Claim 16 depends from claim 15 and adds the further requirement that the
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`“control circuit” “automatically selectively adjusts said characteristic based on a
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`comparison of said measured current or voltage to a constant reference value.”
`
`Claim 16 references the “automatically adjusting [a] characteristic” requirement of
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`13
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`IPR2022-00573 (’537 Patent)
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`claim 12 and further requires that the “adjusting” performed by the “control circuit”
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`is “based on a comparison of said measured current or voltage to a constant reference
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`value.” Petitioner is wrong that “claim 16 [does not] recite any purpose or
`
`requirement for the comparison or adjustment.” Reply at 27-28. Claim 12 recites
`
`that the “control circuit” is responsible for “adjusting at least one characteristic of
`
`said time varying electric current … to maximize an efficiency of power transfer.”
`
`Claim 16 more specifically requires that the adjustment is made “based on a
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`comparison of said measured current or voltage [of the load circuit of claim 15] to a
`
`constant reference value.” In total, claim 16 requires that the “control circuit” (i)
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`“adjust[] at least one characteristic of said time varying electric current”; (ii) “based
`
`on a comparison of said measured current or voltage to a constant reference value”;
`
`(iii) “to maximize an efficiency of power transfer.”
`
`Petitioner’s reliance on Baarman’s “over-current” and “over-voltage”
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`mechanism, Petition at 39-40; Ex. 1003 at ¶¶ 171-173, is misplaced because
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`Baarman does not describe using the “over-current” and “over-voltage” mechanism
`
`to adjust a characteristic of the time varying electric current to “maximize an
`
`efficiency of power transfer.” Patent Owner Response at 18-19. Consequently,
`
`Baarman’s “over-current” and “over-voltage” mechanism cannot satisfy the
`
`requirement that the “control circuit” “automatically … adjusts said [at least one]
`
`characteristic [of said time varying electric current] based on a comparison of said
`
`
`
`14
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`
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
`
`
`measured current or voltage to a constant reference value [to maximize an efficiency
`
`of power transfer]” as required by claim 16.
`
`For the foregoing reasons, Ground 1A of the Petition also fails to show that
`
`claims 5 and 16 of the ‘537 patent are unpatentable.
`
`IV. Ground 2B Fails with Respect to Claims 4, 5, 15, and 16
`A. Claims 4 and 15
`With respect to claim 4 and Flowerdew, Petitioner correctly surmises Patent
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`Owner’s argument that the claim “requires that the ‘load’ directly receives the same
`
`‘time varying electric current’ that is applied to ‘the first inductive element.’” Reply
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`at 33 (emphasis in original). Petitioner is incorrect that this amounts to importing
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`limitations into the claim. The claim requires “communicating said time varying
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`electric current to a load.” Ex. 1001, 10:23-24. By the express words of the claim,
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`the “electric current” must be communicated to the “load.” For the “electric current”
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`to be communicated to the “load,” the communication must be a direct electrical
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`connection. Indirect communication, e.g., by induction, will not communicate the
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`“time varying electric current” to the load. Petitioner confirms the point when it
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`fails to identify an electric current communicated to Flowerdew’s “sense coil,” and
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`instead references Flowerdew … as “communicating an AC signal.” Reply at 33.
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`Petitioner concludes that the “AC signal” is the claimed “time varying electric
`
`current,” but does not explain how the “AC signal” qualifies as the “electric current”
`
`
`
`15
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`
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
`
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`that is also applied to the “first inductive element.” Id. Indeed, neither the Petition,
`
`Petition at 65-67, nor Dr. Szepesi, Ex. 1003 at ¶¶ 247-248, address how the “time
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`varying electric current” is “communicated” to Flowerdew’s “sense coil.” The
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`Petition fails to show that claim 4 is satisfied by Flowerdew’s “sense coil,” and has
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`therefore failed to show that claim 4 is unpatentable.
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`Similarly, with respect to claim 15, Petitioner incorrectly asserts that Patent
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`Owner’s argument that the “load circuit is electrically connected to the first inductive
`
`element” amounts to importing limitations into the claims. Reply at 34. Petitioner
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`argues that the use of the term “coupled,” rather than “electrically coupled” as is
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`used in another set of claims, must connote greater breadth. Id. at 34-35. As an
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`initial matter, “coupling” and “coupled” are used exclusively to claims 14 and 15,
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`both of which depend from independent claim 12. On the other hand, “electrically
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`coupled” is used exclusively with respect to independent claim 23 and its dependent
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`claim 27. There is no hard and fast rule that “coupling” and “coupled” must be
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`construed differently than “electrically coupled.” See, e.g., Air Liquide Large Indus.
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`U.S. LP v. Praxair Tech., Inc., IPR2015-01075, Paper 11 at 8 (PTAB Oct. 26, 2015)
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`(Construing different claim terms to “refer to essentially the same thing.”). Indeed,
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`an analysis of claims 14 and 15 indicates that the use of “coupling” and “coupled”
`
`is limited to an electrical connection as discussed below.
`
`
`
`16
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`
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
`
`
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`Claim 14 recites that a “switch element is configured for coupling and
`
`decoupling a DC voltage source to said first inductive element to produce said time
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`varying current.” As discussed previously with respect to claim 4, “communicating”
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`the “time varying electric current” requires an electrical connection. For the same
`
`reasons, claim 14’s “coupling and decoupling a DC voltage source … to produce
`
`said time varying current” also requires an electrical connection. In other words, the
`
`claim requires a “switch element” for electrically connecting (“coupling”) the
`
`“voltage source” to the “first inductive element to produce said time varying
`
`current,” as well as electrically disconnecting (“decoupling”) the “voltage source”
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`from the “first inductive element.” The claim language is consistent with the
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`disclosure of the specification. See, e.g., Ex. 1001, Figs. 2, 3A, 3B. Claim 15
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`depends from claim 14 and recites “a load circuit coupled to said first inductive
`
`element.” “Coupled,” as used in claim 15, is the past tense of “couple” and should
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`be construed the same as “coupling,” as used in claim 14, as the present participle of
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`“couple,” to refer to an electrical connection. See, e.g., Rexnord Corp. v. Laitram
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`Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed
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`consistently with its appearance in other places in the same claim or in other claims
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`of the same patent.”). Because claim 15 requires an electrical connection to the
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`“load,” Petitioner’s analysis of Flowerdew comes up short because it fails to show
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`
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`17
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`
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Sur-Reply
`
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`that Flowerdew’s “sense coil” satisfies claim 15. The Petition fails to show that
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`claim 15 is unpatentable.
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`B. Claims 5 and 16
`In proposing its combination of Flowerdew and Jang, Petitioner continues to
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`assert a false premi
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