`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00573
`Patent 7,825,537
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Table of Contents
`
` Introduction .................................................................................................... 1
`I.
` Burden of Proof .............................................................................................. 3
`II.
`III. The Petition Fails to Establish that Baarman is Prior Art .............................. 4
`IV. The Petition Fails to Provide a Motivation to Combine Baarman with
`Partovi-002 and Partovi-413 ........................................................................ 10
` Ground 1A Further Fails with Respect to Claims 5 and 16 ......................... 14
`V.
`VI. The Petition Fails to Provide a Motivation to Combine Flowerdew
`with Jang and Partovi-413 ............................................................................ 19
`VII. Ground 2B Further Fails with Respect to Claims 4, 5, 15, and 16 .............. 21
`VIII. Conclusion .................................................................................................... 27
`
`
`
`
`
`
`
`
`i
`
`
`
`Table of Authorities
`
`Cases
`
`ALZA Corp. v. Andrx Pharm.,
`603 F.3d 935 (Fed. Cir. 2010) ............................................................................... 7
`
`Amgen Inc. v. Sanofi,
`872 F.3d 1367 (Fed. Cir. 2017), cert. denied, 139 S. Ct. 787 (2019) ................... 8
`
`Apple, Inc. v. Realtime Data LLC,
`IPR2016-01737, 2018 WL 1326656 (PTAB Mar. 13, 2018) ............................. 12
`
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ........................................................ 6, 7
`
`Atlas Powder Co. v. E.I. Du Pont De Nemours & Co.,
`750 F.2d 1569 (Fed. Cir. 1984) ............................................................................. 6
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................... 12
`
`Duo Sec. Inc. v. Strikeforce Techs., Inc.,
`IPR2017-01041, 2017 WL 4677235 (PTAB Oct. 16, 2017) ........................ 11, 20
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................. 2, 4, 5, 7, 8
`
`Ex Parte Brillowska-Dabrowska,
`Appeal No. 2016-006485, 2016 WL 4525004 (PTAB Aug. 24, 2016) .............. 11
`
`Ex Parte Debates,
`Appeal No. 2020-006536, 2022 WL 263587 (PTAB Jan. 27, 2022) ................. 11
`
`Grain Processing Corp. v. Am.–Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................. 27
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................. 4
`
`
`
`
`ii
`
`
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................. 4
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ........................................................................... 27
`
`In re OxyContin Antitrust Litig.,
`994 F. Supp. 2d 367 (S.D.N.Y. 2014), aff’d sub nom ........................................... 6
`
`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988) ........................................................................... 6, 9
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, 2018 WL 5098902 (PTAB Oct. 16, 2018) ........................ 13, 21
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 10, 11
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) ............................................................................. 5
`
`Personal Web Techs., LLC v. Apple, Inc.,
` 848 F.3d 987 (Fed. Cir. 2017) ....................................................................... 12, 20
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................................. 5
`
`Purdue Pharma L.P. v. Epic Pharma, LLC,
`811 F.3d 1345 (Fed. Cir. 2016) ............................................................................. 6
`
`Revolution Eyewear, Inc. v. Aspect Eyewear, Inc.,
`563 F.3d 1358 (Fed. Cir. 2009) ............................................................................. 7
`
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ............................................................................. 8
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.3d 1555 (Fed. Cir. 1991) ............................................................................. 7
`
`
`
`
`iii
`
`
`
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ........................................................................... 27
`Statutes
`
`35 U.S.C. § 111(b)(1)(A) (2002) .............................................................................. 5
`
`35 U.S.C. § 112 ................................................................................................ 5, 6, 8
`
`35 U.S.C. § 119(e)(1) ............................................................................................... 5
`
`35 U.S.C. § 312(a)(3) ............................................................................................... 4
`
`35 U.S.C. § 316(e) ................................................................................................ 4, 8
`
`MPEP § 211.05(I)(A) ............................................................................................... 7
`
`
`
`
`
`
`
`
`
`
`iv
`
`
`
`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.)
`
`
`
`
`
`v
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`I.
`
`INTRODUCTION
`The Petition challenges the claims1 of U.S. Patent No. 7,825,537 (the “’537
`
`patent”) under six grounds of unpatentability:
`
`• Ground 1A. Claims 1-5, 8-16, 19-22, and 28 are obvious over Baarman
`
`in view of Partovi-002;
`
`• Ground 1B. Claims 6-7 and 17-18 are obvious over Baarman in view
`
`of Partovi-002 and Partovi-413;
`
`• Ground 2A. Claims 1-2, 8-11, and 28 are anticipated by Flowerdew;
`
`• Ground 2B. Claims 3-5, 12-16, and 19-22 are obvious over Flowerdew
`
`in view of Jang;
`
`• Ground 2C. Claims 6-7 are obvious over Flowerdew in view of
`
`Partovi-413; and
`
`• Ground 2D. Claims 7-18 are obvious over Flowerdew in view of Jang
`
`Partovi-413.
`
`This Patent Owner Response addresses various arguments raised in the
`
`Petition’s six grounds to establish:2
`
`
`1 The challenged claims of the ’537 Patent are claims 1-22 and 28.
`
` 2
`
` Although this Response does not address all claims addressed by the Petition with
`respect to the six grounds on which the Petition relies, Petitioner nevertheless bears
`the burden of proof in this proceeding, and Patent Owner does not concede that any
`ground renders any challenged claim invalid.
`
`
`
`1
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`
`1.
`
`Grounds 1A and 1B fail because the Petition fails to establish that
`
`Baarman is entitled to the filing date of its provisional application. More
`
`specifically, the Petition fails to show how the provisional application enables at
`
`least one claim of Baarman, as required by Dynamic Drinkware.
`
`2.
`
`Grounds 1A and 1B fail because the Petition fails to establish that a
`
`person of ordinary skill in the art (“POSITA”) would be motivated to combine
`
`Baarman with either Partovi-002 or Partovi-413. Petitioner and its expert, Dr.
`
`Szepesi, merely conclude that a POSITA would be motivated to make the
`
`combinations but provide no explanation as to why a POSITA would be so
`
`motivated. The Petition merely assumes, without support, that a POSITA would
`
`have found the resulting combination to be desirable. Petitioner cannot satisfy its
`
`burden of proving obviousness by only employing conclusory statements.
`
`3. With respect to claims 5 and 16 of the ’537 patent, the Petition fails to
`
`establish in Ground 1A that the combination of Baarman and Partovi-002
`
`“compar[e] said measured current or voltage to a constant reference value” to
`
`“automatically adjust[] at least one characteristic of said time varying electric
`
`current” as required by claim 5, (Ex. 1001, 10:26-28), or “automatically adjust[] at
`
`least one characteristic of said time varying electric current” “based on a comparison
`
`of said measured current or voltage to a constant reference” as required by claim 16
`
`(Ex. 1001, 11:23-26).
`
`
`
`2
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`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`
`4.
`
`Grounds 2B, 2C, and 2D fail because the Petition fails to establish that
`
`a POSITA would be motivated to combine Flowerdew with either Jang or Partovi-
`
`413. Petitioner and its expert, Dr. Szepesi, merely conclude that a POSITA would
`
`be motivated to make the combinations but provide no explanation as why a POSITA
`
`would be so motivated. The Petition merely assumes, without support, that a
`
`POSITA would have found the resulting combination to be desirable. Petitioner
`
`cannot satisfy its burden of proving obviousness by only employing conclusory
`
`statements.
`
`5. With respect to claims 4/15 and 5/16 of the ’537 patent, the Petition
`
`fails to establish in Ground 2B that the combination of Flowerdew and Jang (i)
`
`“select[] said parameter to be a measured current or voltage associated with said
`
`load” “in said base unit” as required by claim 4 (Ex. 1001, 10:22-25; see also id.,
`
`11:19-22); and (ii) “compar[e] said measured current or voltage to a constant
`
`reference value” as required by 5 (Ex. 1001, 10:26-28; see also id., 11:23-26).
`
`For the above reasons, and as explained in further detail below, the Petition
`
`fails to establish that challenged claims 3-7 and 12-22 of the ’537 patent are
`
`unpatentable.
`
`II. Burden of Proof
`“In an [inter partes review], the petitioner has the burden from the onset to
`
`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
`
`
`
`3
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. §
`
`312(a)(3) (requiring inter partes review petitions to identify “with particularity . . .
`
`the evidence that supports the grounds for the challenge to each claim”)). This
`
`burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC
`
`v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`
`of proof in inter partes review). Furthermore, the petitioner cannot satisfy its burden
`
`of proving obviousness by employing “mere conclusory statements.” In re Magnum
`
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). “The petitioner must
`
`instead articulate specific reasoning, based on evidence of record, to support the
`
`legal conclusion of obviousness.” Id. To prevail in an inter partes review, Petitioner
`
`must show by a preponderance of the evidence that a patent is invalid. 35 U.S.C. §
`
`316(e).
`
`III. The Petition Fails to Establish that Baarman is Prior Art
`Petitioner bears the burden to establish that Baarman qualifies as prior art.
`
`The application leading to Baarman was filed after November 14, 2008, the priority
`
`date of the ’537 Patent. Petitioner claims that Baarman is entitled to the earlier filing
`
`date of provisional patent application No. 61/019,411 (“Baarman Provisional
`
`Application”). In order for Baarman to be entitled to the Baarman Provisional
`
`Application’s filing date, Section 119 requires that the Baarman Provisional
`
`Application meets the requirements of Section 112, ¶ 1 for Baarman. See 35 U.S.C.
`
`
`
`4
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`§ 119(e)(1). In other words, the Baarman Provisional Application must satisfy both
`
`(i) the written description requirement, and (ii) the enablement requirement, with
`
`respect to the claims of Baarman.
`
`In Dynamic Drinkware, the Federal Circuit made clear that, for a patent or
`
`published application to receive the priority date of a provisional application, “the
`
`specification of the provisional must ‘contain a written description of the invention
`
`and the manner and process of making and using it, in such full, clear, concise, and
`
`exact terms,’ to enable an ordinarily skilled artisan to practice the invention claimed
`
`in the non-provisional application.” Dynamic Drinkware, 800 F.3d at 1378 (quoting
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir.
`
`2002)); see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed.
`
`Cir. 2008) (“[A] patent application is entitled to the benefit of the filing date of an
`
`earlier filed application only if the disclosure of the earlier application provides
`
`support for the claims of the later application, as required by 35 U.S.C. § 112.”).
`
`Provisional applications must include a “specification as prescribed by the
`
`first paragraph of [§] 112.” 35 U.S.C. § 111(b)(1)(A) (2002). The first paragraph
`
`of pre-AIA 35 U.S.C. § 112 required a specification in a provisional disclosure to
`
`“contain a written description of the invention, and of the manner and process of
`
`making and using it, in such full, clear, concise, and exact terms as to enable any
`
`person skilled in the art to which it pertains . . . to make and use the same.” 35
`
`
`
`5
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`U.S.C. § 112, ¶ 1. “Section 112 demands both (1) that a patentee adequately disclose
`
`his or her invention to the public, and (2) that the patent enable others to replicate
`
`it.” In re OxyContin Antitrust Litig., 994 F. Supp. 2d 367, 382 (S.D.N.Y. 2014),
`
`aff’d sub nom. Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir.
`
`2016). The written description requirement and the enablement requirement are
`
`distinct, and a patent or provisional application must satisfy both. Id. (citing Ariad
`
`Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc)).
`
`Courts have interpreted § 112 to require that a provisional application
`
`“disclose enough detail to enable a person of ordinary skill in the art to practice the
`
`invention ‘without undue experimentation.’” In re OxyContin, 944 F. Supp. 2d at
`
`382. Some experimentation is permissible, and may even be necessary, but “unduly
`
`extensive” experimentation will preclude a finding of enablement. Atlas Powder
`
`Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). To
`
`determine if a disclosure satisfies the enablement requirement, courts balance the so-
`
`called Wands factors, which include: (1) the quantity of experimentation necessary;
`
`(2) the amount of direction or guidance presented; (3) the presence or absence of
`
`working examples; (4) the nature of the invention; (5) the state of the prior art; (6)
`
`the relative skill of those in the art; (7) the predictability of the art; and (8) the breadth
`
`of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Federal Circuit
`
`has explained that “[w]hether undue experimentation is needed is not a single,
`
`
`
`6
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`simple factual determination, but rather is a conclusion reached by weighing many
`
`factual considerations.” ALZA Corp. v. Andrx Pharm., 603 F.3d 935, 940 (Fed. Cir.
`
`2010) (citing In re Wands, 858 F.2d at 737).
`
`Written description is also referred to as a possession test, where the
`
`disclosure “must convey with reasonable clarity to those skilled in the art that, as of
`
`the filing date sought, [the inventor] was in possession of the invention.” Revolution
`
`Eyewear, Inc. v. Aspect Eyewear, Inc., 563 F.3d 1358, 1366 (Fed. Cir. 2009) (citing
`
`Vas-Cath Inc. v. Mahurkar, 935 F.3d 1555, 1563-64 (Fed. Cir. 1991)). The written
`
`description inquiry is a question of fact, and the Federal Circuit has stated that the
`
`relevant inquiry—“possession as shown in the disclosure”—is an “objective inquiry
`
`into the four corners of the specification from the perspective of a person of ordinary
`
`skill in the art. Based on that inquiry, the specification must describe an invention
`
`understandable to that skilled artisan and show that the inventor actually invented
`
`the invention claimed.” Ariad, 598 F.3d at 1351.
`
`Provisional applications are not reviewed by the Patent Office, and the Patent
`
`Office “does not examine priority claims unless necessary.” See Dynamic
`
`Drinkware, 800 F.3d at 1380 (citing MPEP § 211.05(I)(A).) There is no
`
`presumption that provisional applications are valid or satisfy the enablement or
`
`written description requirements. Accordingly, Petitioner bear the burden of
`
`persuasion that Baarman is entitled to the filing date of the Baarman Provisional
`
`
`
`7
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`Application. “The burden of persuasion ‘is the ultimate burden assigned to a party
`
`who must prove something to a specified degree of certainty,’ such as . . . by clear
`
`and convincing evidence.” Dynamic Drinkware, 800 F.3d at 1378 (citing Tech.
`
`Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). “In an
`
`inter partes review, the burden of persuasion is on the petitioner to prove
`
`‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e)” whereas,
`
`in litigation, the burden of persuasion is on the accused infringer to prove invalidity
`
`by clear and convincing evidence per § 282.)). Id. Petitioner must therefore show
`
`by a preponderance of the evidence that the Baarman Provisional Application
`
`provides written description and enablement support under pre-AIA 35 U.S.C. §
`
`112, ¶ 1 for the claims of Baarman.
`
`Petitioner’s invalidity combinations based on Baarman fail because neither
`
`Petitioner nor its expert show that any claim of Baarman is enabled by the Baarman
`
`Provisional Application, leaving Baarman with the priority date of January 7, 2009,
`
`after the ’537 patent’s filing date of November 14, 2008. Under controlling Federal
`
`Circuit law, the Baarman Provisional Application must “enable an ordinarily skilled
`
`artisan to practice the invention claimed in the non-provisional application.”
`
`Dynamic Drinkware, 800 F.3d at 1378 (citations omitted); see also Amgen Inc. v.
`
`Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017), cert. denied, 139 S. Ct. 787 (2019)
`
`(finding that appellants “did not proffer any evidence” sufficient to satisfy the
`
`
`
`8
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`written description requirement and “provided no evidence” that the claims were
`
`enabled by the provisional application, and holding that the district court’s grant of
`
`judgment as a matter of law was proper because the court properly excluded the
`
`alleged prior art under Dynamic Drinkware).
`
`Despite bearing the burden of proof, Petitioner and its expert, Dr. Szepesi,
`
`provides opinions that, at best, only attempt to establish that the Baarman Provisional
`
`Application provides written description support for claim 1 of Baarman. Neither
`
`the Petition nor Dr. Szepesi address the issue of enablement. For each of the
`
`limitations of that claim, the Petition and Dr. Szepesi merely provide an exemplary
`
`citation to the Baarman Provisional Application, without further explanation. See
`
`Petition at 6-7; Ex. 1003, ¶ 89. Neither provides any explanation on whether the
`
`Baarman Provisional Application “teach[es] those in the art to make and use the
`
`invention [claimed in Baarman] without undue experimentation.” See In re Wands,
`
`858 F.2d 731, 737 (Fed. Cir. 1988). Further, neither the Petition nor Dr. Szepesi
`
`offer any opinions regarding any of the Wands factors as they would pertain to the
`
`claims of Baarman vis-à-vis the Baarman Provisional Application: “(1) the quantity
`
`of experimentation necessary, (2) the amount of direction or guidance presented, (3)
`
`the presence or absence of working examples, (4) the nature of the invention, (5) the
`
`state of the prior art, (6) the relative skill of those in the art, (7) the predictability or
`
`unpredictability of the art, and (8) the breadth of the claims.” Id.
`
`
`
`9
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`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`
`Stripped of its unproven priority claim to the Baarman Provisional
`
`Application, Baarman is not prior art to the ’537 patent. Baarman has a filing date
`
`of January 7, 2009, that post-dates the ’537 patent’s priority date of November 14,
`
`2008. The Board should find that Baarman fails to qualify as prior art to the ’537
`
`patent and thus no claims of the ’537 patent are unpatentable under Grounds 1A and
`
`1B of the Petition.
`
`IV. The Petition Fails to Provide a Motivation to Combine Baarman with
`Partovi-002 and Partovi-413
`Petitioner alleges that there are predictable benefits that a POSITA would
`
`recognize from a combination of Baarman and Partovi-002, see Petition at 18-19
`
`(“Multiple reasons would have prompted a POSITA to implement Baarman’s system
`
`in accordance with Partovi-002 …”), and a combination of Baarman and Partovi-
`
`002 with Partovi-413. See Petition at 43, 45. But, tellingly absent, is any analysis
`
`of how there is any benefit in the combinations over and above what Baarman
`
`already teaches. The descriptions of benefits provided by the combinations are
`
`merely conclusory, and are not evaluated in light of the structures and methods that
`
`Baarman already employs.
`
`The absence of evidence for any benefit of modifying Baarman’s system is
`
`strong evidence against obviousness. As the Court explained in KSR:
`
`Although common sense directs one to look with care at a patent
`application that claims as innovation the combination of two known
`
`
`
`10
`
`
`
`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
`
`
`
`devices according to their established functions, it can be important to
`identify a reason that would have prompted a person of ordinary skill in
`the relevant field to combine the elements in the way the claimed new
`invention does. This is so because inventions in most, if not all, instances
`rely upon building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense, is
`already known.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007); id. at 424 (“The proper
`
`question to have asked was whether a [POSITA] . . . would have seen a benefit to
`
`upgrading Asano with a sensor.”); see also Ex Parte Debates, Appeal No. 2020-
`
`006536, 2022 WL 263587, at *4 (PTAB Jan. 27, 2022) (reversing examiner’s
`
`obviousness rejection because it was “too general and [was] not tailored to
`
`explaining why one skilled in the art would have seen the benefit of modifying
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`Lerner’s electronic device and tag reading method to include the specific overlay
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`features of Detlefsen”); Duo Sec. Inc. v. Strikeforce Techs., Inc., IPR2017-01041,
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`2017 WL 4677235, at *9 (PTAB Oct. 16, 2017)
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` (finding no motivation to combine where “Petitioner never identifies or explains
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`adequately any benefit or improvement gained by adding Falk, and specifically,
`
`Falk’s relevant message, to the proposed combination of Feigen and Bulfer”); Ex
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`Parte Brillowska-Dabrowska, Appeal No. 2016-006485, 2016 WL 4525004, at *4
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`(PTAB Aug. 24, 2016) (reversing rejection based on a combination of references
`
`where it was “unclear why” the combination “would be particularly useful”).
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`11
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
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`The Petition asserts that the combination of Baarman with Partovi-002 and
`
`Partovi-413 would yield “predictable benefits” or “predictable results.” See Petition
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`at 19, 45. But, absent motivation to actually implement any of the disclosures of
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`Partovi-002 and/or Partovi-413 in Baarman’s system, this is the wrong inquiry. It
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`goes, at most, to whether a POSITA could have made the proposed combination,
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`not to whether a POSITA would have been motivated to make that combination as
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`required. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir.
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`2017) (it is not enough to show that “a skilled artisan, once presented with the two
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`references, would have understood that they could be combined”); Apple, Inc. v.
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`Realtime Data LLC, IPR2016-01737, 2018 WL 1326656, at *25 (PTAB Mar. 13,
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`2018) (granting motion to amend because petitioner did not adequately “articulate a
`
`reason why a person of ordinary skill in the art would combine the prior art
`
`references”) (citing and quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
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`(Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could
`
`have made but would have been motivated to make the combination or modifications
`
`of prior art to arrive at the claimed invention”)) (emphases in original). The
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`Petition’s failure to show that a POSITA would have been motivated to make its
`
`proposed combination is established by the Petition’s failure to articulate any benefit
`
`of that combination over and above what Baarman already teaches.
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`
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`12
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
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`
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`The Petition’s allegation of benefits of (i) substituting the positioning system
`
`of Baarman with the positioning system of Partovi-002, or (ii) substituting the circuit
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`topologies of Baarman with the circuit topologies of Partovi-413, amounts to an
`
`unsupported assumption that a POSITA would have seen some benefit from
`
`indiscriminately applying all inductive power transfer positioning systems and all
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`inductive power transfer circuit topologies to Baarman’s inductive power transfer
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`system. The Petition’s argument is thus strikingly similar to the argument the Board
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`rejected in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, 2018
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`WL 5098902 (PTAB Oct. 16, 2018) (informative):
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`Petitioner’s argument assumes that all thermoset binders are useful
`in a fiberglass insulation product of the type disclosed in Srinivasan—
`an assumption that Petitioner fails to support. Petitioner does not
`compare the thermoset binder disclosed in Worthington with the
`thermoset binder disclosed in Srinivasan, nor does Petitioner attempt to
`show that one of ordinary skill in the art would have had a reason to
`substitute Worthington’s binder for the binder disclosed in Srinivasan.
`Id. at *5; see also id. at *6 (“An unsupported statement that combining the teachings
`
`of the two references would have been ‘well within the skill of a POSA,’ because
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`the results of reacting a reducing sugar with an amine reactant ‘were well-known
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`and predictable’ does not meet Petitioner’s burden.”). Like the petitioner in Johns
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`Manville, the Petition here fails to compare the inductive power transfer positioning
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`system and circuit topologies disclosed by Baarman with the Petition’s proposed
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`combinations including the positioning system of Partovi-002 and the circuit
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`
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`13
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
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`topologies of Partovi-413 or identify any affirmative reason a POSITA would have
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`had to make the proposed modifications. Accordingly, the Board should find that
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`the Petition fails to establish a motivation to combine Baarman with Partovi-002 or
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`to combine Baarman with Partovi-002 and Partovi-413, and that no claims of
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`the ’537 patent are unpatentable under Grounds 1A and 1B of the Petition.
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`V. 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).
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`Claim 5 depends from claim 4, which recites: “The method according to claim
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`3, further comprising communicating said time varying electric current to a load in
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`said base unit, and selecting said parameter to be a measured current or voltage
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`associated with said load.” Ex. 1001, 10:22-25. Similarly, claim 16 depends from
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`claim 15, which recites: “The system of claim 14, further comprising a load circuit
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`14
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
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`coupled to said first inductive element, and where said parameter comprises a current
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`or voltage associated with said load.” Ex. 1001, 11:19-22.
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`Petition asserts that the current sensor 322 of Baarman “measures current
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`through tank circuit 120, which includes the primary inductor.” Petition at 27. The
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`current sensor 322 is coupled to the tank circuit and, consequently, the time-varying
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`electric circuit is communicated to the current sensor 322. The current sensor acts
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`to transform the current of the tank circuit to an output that can be conditioned for
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`consumption by the primary controller 310:
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`[T]he current sensor 322 is a current transformer having a primary coil
`connected to the tank circuit and a secondary coil connected to the
`primary controller 310. In the current embodiment, the current sensor
`322 includes circuitry to adjust the gain of the output of the current
`sensor to accommodate the ranges accepted by the primary controller
`310. Further, the amount of gain may be adjusted by the primary
`controller 310 by applying a signal to the switch. The inductive power
`supply 300 may include conditioning circuitry 324 for conditioning the
`current transformer output before it is supplied to the primary controller
`310.
`Ex. 1004, [0031]. The Petition states that “[a]s shown in FIG. 3D, current sensor
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`322 communicates the time-varying electric current from the tank circuit (including
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`the primary inductor) to an R-C load circuit R11-C17 (load) in the primary (base
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`unit).” Petition at 27 (emphasis in original); see also Petition at 38 (claim 15). The
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`Petitioner further comments that “Figure 3D shows in more detail that the peak
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`rectified tank current voltage (said parameter) generated on R-C load circuit R11-
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`
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`15
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`IPR2022-00573 (’537 Patent)
`Patent Owner’s Response
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`C17 (load) is the actual measurement obtained from current sensor 322” and that the
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`“peak rectified current voltage is then input to the primary microcontroller.” Petition
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`at 27-28 (emphasis in original). Baarman does not use the term “peak rectified tank
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`current voltage” with respect to the output of the R-C load circuit R11-C17 or the
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`conditioned I-SENSE signal and Petitioner does not explain why either the output
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`of the R-C load circuit R11-C17 or the conditioned I-SENSE signal should be
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`qualified as “peak.”
`
`The Petition
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