`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`
`SCRAMOGE TECHNOLOGY LTD.
`Patent Owner
`
`_________________
`
`Patent No. 10,804,740
`_________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,804,740
`
`
`
`Petition for Inter Partes Review
`Patent No. 10,804,740
`
`TABLE OF CONTENTS
`INTRODUCTION ...............................................................................1
`I.
`II. MANDATORY NOTICES ...................................................................1
`III. PAYMENT OF FEES ..........................................................................2
`IV. GROUNDS FOR STANDING ..............................................................2
`V.
`PRECISE RELIEF REQUESTED AND GROUNDS RAISED ..................2
`VI. LEVEL OF ORDINARY SKILL ...........................................................4
`VII. THE ’740 PATENT .............................................................................4
`VIII. CLAIM CONSTRUCTION ..................................................................6
`IX. DETAILED EXPLANATION OF GROUNDS........................................7
`A. Ground 1: Claims 1 and 3 Are Anticipated By Goma.......................7
`1.
`Claim 1 ............................................................................7
`2.
`Claim 3 .......................................................................... 26
`B. Ground 2: Claims 1-10 Are Obvious Over Goma in View of
`Yamazaki ................................................................................ 28
`1.
`Claim 1 .......................................................................... 28
`2.
`Claim 2 .......................................................................... 54
`3.
`Claim 3 .......................................................................... 55
`4.
`Claim 4 .......................................................................... 58
`5.
`Claim 5 .......................................................................... 60
`6.
`Claim 6 .......................................................................... 62
`7.
`Claim 7 .......................................................................... 67
`8.
`Claim 8 .......................................................................... 68
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`Claim 9 .......................................................................... 71
`9.
`10. Claim 10......................................................................... 71
`C. Ground 3: Claims 1-6 and 8-10 Are Anticipated By Kato ............... 72
`1.
`Claim 1 .......................................................................... 72
`2.
`Claim 2 .......................................................................... 88
`3.
`Claim 3 .......................................................................... 90
`4.
`Claim 4 .......................................................................... 91
`5.
`Claim 5 .......................................................................... 93
`6.
`Claim 6 .......................................................................... 95
`7.
`Claim 8 .......................................................................... 99
`8.
`Claim 9 ........................................................................ 100
`9.
`Claim 10....................................................................... 100
`D. Ground 4: Claims 6-8 Are Anticipated By Okada........................ 102
`1.
`Claim 6 ........................................................................ 102
`2.
`Claim 7 ........................................................................ 117
`3.
`Claim 8 ........................................................................ 119
`THE BOARD SHOULD NOT USE ITS DISCRETION TO DENY
`INSTITUTION UNDER FINTIV ....................................................... 121
`XI. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
`UNDER GENERAL PLASTICS ......................................................... 124
`XII. CONCLUSION ............................................................................... 126
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`
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`X.
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`
`
`ii
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`
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`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
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`Ex. 1014
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`Ex. 1015
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`Petition for Inter Partes Review
`Patent No. 10,804,740
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`LIST OF EXHIBITS
`
`U.S. Patent No. 10,804,740
`Declaration of Dr. Gary Woods
`Curriculum Vitae of Dr. Gary Woods
`Prosecution History of U.S. Patent No. 10,804,740
`U.S. Patent Publication No. 2008/0164840 to Kato et al. (“Kato”)
`U.S. Patent Publication No. 2009/0284341 to Okada et al. (“Okada”)
`Plaintiff Scramoge Technology Ltd.’s Responsive Claim Construction
`Brief, Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-00579
`(W.D. Tex. Jan. 28, 2022)
`Certified English Translation of Japanese Patent Publication JP2011-
`210937 to Goma et al. (“Goma”), Japanese Language Version of
`JP2011-210937 and Translation Certificate.
`U.S. Patent No. 7,852,184 to Yamazaki et al. (“Yamazaki”)
`Prosecution History of U.S. Patent No. 10,277,071
`Prosecution History of U.S. Patent No. 10,270,291
`Prosecution History of U.S. Patent No. 9,806,565
`Exhibit C of Scramoge’s Preliminary Infringement Contentions,
`Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D.
`Tex. Sept. 29, 2021)
`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).
`Standing Order Governing Proceedings – Patent Cases, Scramoge
`Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D. Tex. Sept.
`29, 2021).
`
`iii
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`Scheduling Order, Scramoge Technology Ltd. v. Google LLC, No.
`6:21-cv-00616 (W.D. Tex. Nov. 15, 2021).
`
`Ex. 1016
`
`iv
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`
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`
`I.
`
`INTRODUCTION
`Google LLC (“Petitioner” or “Google”) requests inter partes review of claims
`
`1-10 (“the challenged claims”) of U.S. Patent No. 10,804,740 (“the ’740 patent”)
`
`(Ex. 1001), which, according to PTO records, is assigned to Scramoge Technology
`
`Ltd. (“Patent Owner” or “PO”). For the reasons discussed below, the challenged
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`claims should be found unpatentable and canceled.
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`II. MANDATORY NOTICES
`Real Parties-in-Interest: Petitioner identifies the following as the real party-
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`in-interest: Google LLC. 1
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`Related Matters: PO has asserted the ’740 Patent against Google LLC in
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`Scramoge Technology Ltd. v. Google LLC, No. 6:21-cv-00616 (W.D. Tex. June 15,
`
`2021), and against Apple Inc. (“Apple”) in Scramoge Technology Ltd. v. Apple Inc.,
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`No. 6:21-cv-00579 (W.D. Tex. June 7, 2021).
`
`Apple has challenged claims 6, 7, 16, 17, 19, and 20 of the ’740 patent in
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`IPR2022-00118, which was filed on October 29, 2021.
`
`
`1 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.
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`1
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`
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`Counsel and Service Information: Lead counsel: Naveen Modi (Reg. No.
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`46,224), and Backup counsel are (1) Joseph E. Palys (Reg. No. 46,508), (2) Phillip
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`Citroën (Reg. No. 66,541), (3) Paul M. Anderson (Reg. No. 39,896), and (4) Quadeer
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`A. Ahmed (Reg. No. 60,835), Paul Hastings LLP, 2050 M St., N.W. Washington,
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`DC 20036 (Telephone: (202) 551-1990; Fax: (202) 551-1705; Email: PH-Google-
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`Scramoge-IPR@paulhastings.com. Petitioner consents to electronic service.
`
`III. PAYMENT OF FEES
`The PTO is authorized to charge any fees due during this proceeding to
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`Deposit Account No. 50-2613.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’740 patent is available for review, and Petitioner
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`is not barred/estopped from requesting review on the grounds identified herein.
`
`V.
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`PRECISE RELIEF REQUESTED AND GROUNDS RAISED
`Claims 1-10 should be canceled as unpatentable based on the following
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`grounds:
`
`Ground 1: Claims 1 and 3 are anticipated by Japanese Patent Application
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`Publication No. JP 2011-210937 to Goma et al. (“Goma”) (Ex. 1008)2;
`
`
`2 Ex. 1008 is a compilation containing the English-language translation of Goma
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`(id., pp. 1-13), followed by its Japanese language version (id., pp. 14-26). The
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`2
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`Ground 2: Claims 1-10 are rendered obvious by Goma in view of U.S. Patent
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`No. 7,852,184 to Yamazaki et al. (“Yamazaki”) (Ex. 1009);
`
`Ground 3: Claims 1-6 and 8-10 are anticipated by U.S. Patent Publication
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`No. 2008/0164840 to Kato et al. (“Kato”) (Ex. 1005); and
`
`Ground 4: Claims 6-8 are anticipated by U.S. Patent Publication No.
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`2009/0284341 to Okada et al. (“Okada”) (Ex. 1006).
`
`The ’740 patent issued October 13, 2020, from U.S. App. No. 16/264,360
`
`(“the ’360 application”), filed January 31, 2019, which is a continuation of U.S. App.
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`No. 15/430,173 (Ex. 1010) (now U.S. Patent No. 10,277,071), filed February 10,
`
`2017, which is a continuation of U.S. App. No. 15/360,425 (Ex. 1011) (now U.S.
`
`Patent No. 10,270,291), filed November 23, 2016, which is a continuation of U.S.
`
`App. No. 13/663,012 (Ex. 1012) (now U.S. Patent No. 9,806,565), filed October 29,
`
`2012. The ’740 patent also claims priority to Korean Patent Applications 10-2012-
`
`0029987 and 10-2012-0079004, filed March 23, 2012, and July 19, 2012,
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`respectively. For this proceeding only, Petitioner assumes the earliest effective
`
`filing date of the ’740 patent is March 23, 2012.
`
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`affidavit required by 37 C.F.R. § 42.63(b) (in the form of a declaration as permitted
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`by 37 C.F.R. § 42.2) follows the Japanese-language version.
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`3
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`Okada published November 19, 2009, Yamazaki issued December 14, 2010,
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`and Kato published July 10, 2008. Thus, Okada, Yamazaki, and Kato qualify as
`
`prior art under at least pre-AIA 35 U.S.C. § 102(b). Goma published October 20,
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`2011, from an application filed March 30, 2010. Thus, Goma is prior art under at
`
`least pre-AIA 35 U.S.C. § 102(a). Okada, Goma, and Yamazaki were not considered
`
`during prosecution. (See generally Ex. 1004.)
`
`VI. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art as of the claimed priority date of the ’740
`
`patent (“POSITA”) would have had a bachelor’s degree in electrical engineering,
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`computer engineering, applied physics, or a related field, and at least one year of
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`experience in the research, design, development, and/or testing of wireless charging
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`systems, or the equivalent. (Ex. 1002, ¶¶45-48.)3 More education can supplement
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`practical experience and vice versa. (Id.)
`
`VII. THE ’740 PATENT
`The ’740 patent is entitled “Wireless Power Receiver and Method of
`
`Manufacturing the Same” and “relates to a wireless power receiver used for wireless
`
`power transmission or an antenna to reduce a thickness of the wireless power
`
`
`3 Petitioner submits the declaration of Dr. Gary Woods (Ex. 1002), an expert in the
`
`field of the ’740 patent. (Ex. 1002, ¶¶7-15; Ex. 1003.)
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`4
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`Patent No. 10,804,740
`receiver.” (Ex. 1001, Title, 1:23-27; Ex. 1002, ¶¶49-55.) The ’740 patent purports
`
`to reduce thickness of a wireless power receiver “by directly disposing a coil unit on
`
`a top surface of a magnetic substrate.” (Ex. 1001, 1:54-56.) Connections to the coil
`
`can be established using a “connecting unit” such as a “flexible printed circuit
`
`board,” “tape substrate,” or a “lead frame.” (Id., 2:22-24, 2:54-58, 16:14-19.)
`
`Annotated figure 11 of the ’740 patent shows the coil 200 formed on the
`
`magnetic substrate 100, where the connecting unit 300 has a shape corresponding to
`
`the receiving space 130 and is disposed in the receiving space to reduce thickness of
`
`the wireless power receiver. (Id., 8:19-39, 16:4-13, FIG. 11.)
`
`(Id., FIG. 11 (annotated); Ex. 1002, ¶50.)
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`5
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`Patent No. 10,804,740
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`VIII. CLAIM CONSTRUCTION
`For IPR proceedings, the Board applies the claim construction standard set
`
`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 83
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`Fed. Reg. 51341 (Oct. 11, 2018). The Board only construes the claims when
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`necessary to resolve the underlying controversy. Toyota Motor Corp. v. Cellport
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`Systems, Inc., IPR2015-00633, Paper No. 11 at 16 (Aug. 14, 2015).
`
`Claim 1 recites “a first receiving space and second receiving space,” and claim
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`6 recites “a receiving space.” In district court, PO argues that no construction of
`
`“receiving space” is necessary, and that the “receiving space” is merely a “space”
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`that is “meant to ‘receive’ the ‘connecting unit’ in some fashion—for example, the
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`‘connecting unit’ can be positioned with, overlap, or be disposed in the ‘receiving
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`space.’” (Ex. 1007, 1-3.) Consistent with this broad interpretation, PO’s
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`infringement allegations contend that a space in a magnetic sheet or adhesive where
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`electrical contact is made to a coil constitutes a receiving space. (Ex. 1013, 1-4, 20-
`
`22.) Without waiving any positions it may present in district court, Petitioner makes
`
`the present challenge based on PO’s broad interpretation. (Ex. 1002, ¶¶55-58.) See
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`10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-00086, Paper 8 at 21-22 (PTAB
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`Apr. 27, 2020) (permitting petitioner to base its challenge “on claim constructions
`
`implied by Patent Owner’s district court infringement contentions without
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`6
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`Patent No. 10,804,740
`expressing subjective agreement with those constructions”); W. Digital Corp. v.
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`SPEX Techs., Inc., IPR2018-00084, Paper 14 at 11 (PTAB Apr. 25, 2018).
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`IX. DETAILED EXPLANATION OF GROUNDS
`A. Ground 1: Claims 1 and 3 Are Anticipated By Goma
`Claim 1
`1.
`Element 1[pre]: A wireless power receiver,
`a)
`comprising:
`To the extent the preamble of claim 1 is limiting, Goma discloses the features
`
`therein. (Ex. 1002, ¶¶68-70, 75-77.) For instance, Goma discloses a coil module
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`for use in a receiver in a non-contact (i.e., wireless) power transmission system. (Ex.
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`1008, ¶¶[0001], [0002] (“In order to transmit power in a contactless manner between
`
`electronic devices, it is necessary to install a coil module for contactless power
`
`transmission in both the electronic device on the power transmitting side and in the
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`electronic device on the power receiving side.”), [0030], [0036], FIGs. 1-3.)
`
`Annotated figure 1 below, and figures 2 and 3, illustrate Goma’s coil module
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`used for wireless power reception, where the coil module includes a coil 2, a resin
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`structure 3 that includes magnetic material, and a circuit substrate (i.e., circuit board)
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`4 that includes a plurality of electronic components. (Id., ¶¶[0028], [0031]; Ex.
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`1002, ¶76.)
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`(Ex. 1008, FIG. 1 (annotated); Ex. 1002, ¶76.) Goma’s coil module, as shown in
`
`figures 1-3, is a “wireless power receiver.” (Ex. 1002, ¶77.)
`
`b) Element 1[a]: a magnetic substrate comprising a first
`receiving space and second receiving space;
`Goma discloses these features at least under PO’s district court interpretation.
`
`(Ex. 1002, ¶¶78-83.) For example, Goma discloses that the resin 3 (“magnetic
`
`substrate”) shown in annotated figure 1(a) below contains magnetic material. (Ex.
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`1008, ¶¶[0007], [0031], [0033] (“The resin structural body 3 is a curable resin
`
`material obtained by kneading the powder of a magnetic material such as ferrite and
`
`molding it into a flat plate shape.”), [0034] (“since the coil 2 is covered by a curable
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`8
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`resin containing a magnetic material on all but one surface 31 of the resin structural
`
`body 3”), [0039].)
`
`The resin 3 is “a flat plate-shaped resin structural body” and serves as a
`
`“substrate” because it supports the coil 2 and circuit board 4. (Id., ¶¶[0033]-[0035],
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`[0039] (“Thus, the coil 2 and the circuit substrate 4 are integrated and solidified by
`
`the resin structural body 3.”); Ex. 1002, ¶79.) Goma discloses that, like the ’740
`
`patent, the resin 3 (“magnetic substrate”) is a substrate that prevents unwanted
`
`magnetic field leakage. (Ex. 1008, ¶¶[0037]; Ex. 1001, 4:34-49; Ex. 1002, ¶80.)
`
`Annotated figures 1(a) and 2 below show the resin 3 (“magnetic substrate”) and its
`
`relative positioning with respect to the coil 2 and the circuit board 4. (Ex. 1002,
`
`¶80.)
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`9
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶80.)
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`10
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 2 (annotated); Ex. 1002, ¶80.)
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`Goma discloses that resin 3 (“magnetic substrate”) includes a “first receiving
`
`space” and a “second receiving space” at least under PO’s district court
`
`interpretation. (Ex. 1002, ¶81.) For example, Goma discloses that the resin structure
`
`includes an opening 32 or space for the circuit board 4 (which discloses the claimed
`
`“connecting unit,” as discussed below) so that the components of the circuit board
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`are exposed and accessible to the exterior of the coil module. (Ex. 1008, ¶[0037],
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`FIGs. 1(a), 1(b), 2.) The opening 32, which includes the first and second receiving
`
`spaces, is shown in annotated figures 1(a) and 2 below. (Ex. 1002, ¶81.)
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`11
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶81.)
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 2 (annotated); Ex. 1002, ¶81.)
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`Therefore, Goma discloses “a magnetic substrate comprising a first receiving
`
`space and second receiving space,” as recited in claim 1, 4 at least under PO’s district
`
`court interpretation. (Section VIII; Ex. 1002, ¶82.)
`
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`4 The ’740 patent only recites “a first receiving space and a second receiving space”
`
`in the claims. (Ex. 1001, 19:18-19.) While a “receiving space 130” is shown in and
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`discussed in the context of, for example, figure 11 (id., 8:30-39, FIG. 11), none of
`
`the embodiments refer to more than one such “receiving space.” (See generally Ex.
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`1001, Ex. 1004;Ex. 1002, ¶83.) Therefore, while Goma has only a single opening
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`32 for the circuit board 4, if the ’740 patent’s disclosure of a single “receiving space
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`130” supports a “first receiving space” and a “second receiving space,” the single
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`Patent No. 10,804,740
`Element 1[b]: a coil on the magnetic substrate;
`c)
`Goma discloses this feature. (Ex. 1002, ¶¶84-85.) For instance, as shown in
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`annotated figures 1(b) and 2 below, Goma discloses a coil 2 on the resin 3 (“magnetic
`
`substrate”). (Ex. 1008, ¶¶[0031], [0033], [0039], [0040], FIGs. 1(a), 1(b) (2).)
`
`(Ex. 1008, FIG. 1(b) (annotated); Ex. 1002, ¶84.)
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`
`
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`opening 32 in Goma can correspond to two receiving spaces in the same manner.
`
`(Ex. 1002, ¶83.)
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`(Ex. 1008, FIG. 1(b) (annotated); Ex. 1002, ¶84.)
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`Goma discloses that the surface of the coil 2 and the circuit substrate 4 (i.e.,
`
`circuit board) are exposed when integrated with the resin 3, which is consistent with
`
`the coil being “on” the resin (“substrate”). (Ex. 1008, ¶[0039], Ex. 1002, ¶85.)
`
`d) Element 1[c]: a first connection terminal connected to
`an outer end of the coil;
`Goma discloses this feature. (Ex. 1002, ¶¶86-88.) Figure 3 of Goma
`
`illustrates a method for manufacturing the coil module illustrated in figures 1 and 2.
`
`(Ex. 1008, ¶[0038].) As shown in annotated figure 3(c) below, Goma discloses a
`
`wire 21 that is drawn from, and provides a connection to, the outer end of the coil
`
`(“first connection terminal connected to an outer end of the coil”). (Id., ¶¶[0037],
`
`[0038]; Ex. 1002, ¶86.)
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 3(c) (annotated); Ex. 1002, ¶86.)
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`Goma discloses that the coil is formed, for example, by a copper wire that is
`
`wound where the wire material 21 is drawn out at the ends to provide the connections
`
`to the coil. (Ex. 1008, ¶[0038], Ex. 1002, ¶¶86-87.) In figure 3(c) above, the coil is
`
`not obscured by the overlying resin 3 (“magnetic substrate”) and therefore provides
`
`a better perspective of the “first connection terminal” than figure 1(a). The same
`
`wire 21 (“first connection terminal”) shown in figure 3(c) above is highlighted in
`
`figure 1(a) below. (Ex. 1002, ¶88.)
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`16
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`Petition for Inter Partes Review
`Patent No. 10,804,740
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`
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`(Ex. 1008, FIG. 1(a); Ex. 1002, ¶88.)
`
`e)
`
`Element 1[d]: a second connection terminal connected
`to an inner end of the coil;
`Goma discloses this feature. (Ex. 1002, ¶¶89-90.) As shown in annotated
`
`figure 3(c) below, Goma discloses a wire 21 that is drawn from the inner end of the
`
`coil (“second connection terminal connected to an outer end of the coil”). (Ex. 1008,
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`¶¶[0037], [0038]; Ex. 1002, ¶89.)
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 3(c); Ex. 1002, ¶89.) The same wire 21 (“second connection
`
`terminal”) shown in figure 3(c) above is highlighted in figure 1(a) below. (Ex. 1002,
`
`¶90.)
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`Patent No. 10,804,740
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`
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶90.)
`
`f)
`
`Element 1[e]: a connecting unit comprising a third
`connection terminal connected to the first connection
`terminal, and a fourth connection terminal connected
`to the second connection terminal;
`Goma discloses this feature. (Ex. 1002, ¶¶91-92.) For instance, as shown in
`
`annotated figure 3(c) below, Goma discloses circuit board 4 (“connecting unit”) that
`
`includes coil connection terminals 45 (“third connection terminal” and “fourth
`
`connection terminal”). (Ex. 1008, ¶[0038].) The coil 2 is connected to the coil
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`connection terminals 45 of the circuit board 4 such that the wire 21 corresponding
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`19
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`Petition for Inter Partes Review
`Patent No. 10,804,740
`to the outer end of the coil (“first connection terminal”) is connected to one of the
`
`coil connection terminals 45 (“third connection terminal”) and such that the wire 21
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`corresponding to the inner end of the coil (“second connection terminal”) is
`
`connected to the other coil connection terminal 45 (“fourth connection terminal”).
`
`(Id., ¶[0038], FIGs. 1(a), 3(c); Ex. 1002, ¶91.)
`
`
`(Ex. 1008, FIG. 3(c) (annotated); Ex. 1002, ¶91.) Similarly, the first, second, third,
`
`and fourth connection terminals are also shown in annotated figure 1(a) below.
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`20
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶92.)
`
`g)
`
`Element 1[f]: wherein the first connection terminal
`and the third connection terminal overlap the first
`receiving space in a vertical direction perpendicular
`to the magnetic substrate
`Goma discloses this feature. (Ex. 1002, ¶93.) As shown in annotated figure
`
`1(a) below, the wire 21 that is connected to the outer end of the coil (“first connection
`
`terminal”) is connected to the coil connection terminal 45 (“third connection
`
`terminal”) in the first receiving space of the magnetic layer (“overlaps the first
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`Patent No. 10,804,740
`receiving space in a vertical direction perpendicular to the magnetic substrate”).
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`(Id.)
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`
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶93.)
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`h) Element 1[g]: wherein the second connection terminal
`and the fourth connection terminal overlap the second
`receiving space in a vertical direction perpendicular
`to the magnetic substrate, and
`Goma discloses these features. (Ex. 1002, ¶94.) As shown in annotated figure
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`1(a) below, the wire 21 that is connected to the inner end of the coil (“second
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`Patent No. 10,804,740
`connection terminal”) is connected to the coil connection terminal 45 (“fourth
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`connection terminal”) in the second receiving space of the magnetic layer (“overlaps
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`the second receiving space in a vertical direction perpendicular to the magnetic
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`substrate”). (Id.)
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶94.)
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`i)
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`Patent No. 10,804,740
`Element 1[h]: wherein the connecting unit comprises:
`a wiring layer connected to the third connection
`terminal and the fourth connection terminal.
`Goma discloses this feature. (Ex. 1002, ¶95.) For instance, as shown in
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`annotated figures 3(c) and 1(a) below, the circuit board 4 (“connecting unit”)
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`includes at least the wiring for connecting the terminals (e.g., connecting the coil
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`connection terminals 45 to the circuit module 43 and for connecting the circuit
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`module 43 to the connector 44). (Ex. 1008, ¶[0038].) The wiring (“wiring layer”)
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`on the circuit board (“connecting unit”) that is connected to the third and fourth
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`connection terminals is highlighted in figures 1(a) and 3(b) below. (Ex. 1002, ¶95.)
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`(Ex. 1008, FIG. 3(c) (annotated); Ex. 1002, ¶95.)
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶95.)
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`2.
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`Claim 3
`The wireless power receiver of claim 1, wherein the
`a)
`wiring layer is connected to a receiving circuit; and
`wherein the receiving circuit is disposed outside the
`first receiving space and the second receiving space.
`Goma discloses these features. (Ex. 1002, ¶¶96-97.) For example, Goma
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`discloses that the coil module depicted below in figure 1a includes a circuit module
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`43 (“receiver circuit”), which, as shown in annotated figure 1(a) below, is connected
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`to the wiring layer and is outside the first and second receiving spaces. Goma
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`discloses that in a coil module used on the power receiving side, the module will
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`include a rectifier circuit, a regulator circuit, and a charge control circuit. (Ex. 1008,
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`¶[0036]; Ex. 1002, ¶¶96-97.)
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶96.)
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`Patent No. 10,804,740
`B. Ground 2: Claims 1-10 Are Obvious Over Goma in View of
`Yamazaki
`Claim 15
`1.
`Element 1[pre]
`a)
`Goma discloses this feature for the reasons discussed above in Section
`
`IX.A.1(a). (Supra Section IX.A.1(a); Ex. 1002, ¶104.)
`
`b) Element 1[a]
`As discussed above in Section IX.A.1(b), Goma discloses this feature at least
`
`under PO’s district court construction. (Supra Section IX.A.1(b).) As discussed
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`above, in district court, PO’s infringement allegations contend that a space in a
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`magnetic sheet or adhesive where electrical contact is made to a coil constitutes a
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`receiving space. (Id.; Ex. 1013, 1-4.) For the reasons discussed below, the
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`combination of Goma and Yamazaki discloses or suggests claim element 1[a] in a
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`manner consistent with PO’s infringement allegations. (Ex. 1002, ¶¶98-103, 105-
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`123.)
`
`As discussed above in Section IX.A.1(b), Goma’s resin 3 shown in annotated
`
`figures 1(a) and 2 below contains magnetic material and is a “magnetic substrate,”
`
`as claimed. (Ex. 1008, ¶¶[0007], [0031], [0033]-[0034]; see Section IX.A.1(b); Ex.
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`1002, ¶106.)
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`5 The language of the challenged claims is not repeated in subsequent grounds.
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`(Ex. 1008, FIG. 1(a) (annotated); Ex. 1002, ¶106.)
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`(Ex. 1008, FIG. 2 (annotated); Ex. 1002, ¶106.)
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`Goma discloses a coil 2 that is a continuous strand of wire, where the
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`connections to the inner and outer ends of the coil are part of the same strand of wire.
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`(Ex. 1008, ¶¶[0032], [0038], FIGs. 1(a), 1(b), 2, 3(c); Ex. 1002, ¶107.) Because the
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`connection to the inner end of the coil is part of the same wire used to form the turns
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`of the coil, a portion of the coil wire necessarily overlaps itself, which is shown in
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`annotated figure 3(c) below. (Ex. 1002, ¶107.)
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 3(c) (annotated); Ex. 1002, ¶107.)
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`The overlap of the coil wire on itself adds to the thickness of the coil. (Ex.
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`1002, ¶108.) For example, as shown in the non-limiting demonstratives below, a
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`cross section of figures 1(a) and 1(b) of Goma along a line B-B shown in figures
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`1(a) and 1(b) below shows wire 21 as it extends from the inner end of the coil to the
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`circuit board.
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`Patent No. 10,804,740
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`(Ex. 1008, FIG. 1 (annotated); Ex. 1002, ¶108.)
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`(Ex. 1008, FIG. 2 (modified, annotated); Ex. 1002, ¶108.)
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`Yamazaki discloses that the added thickness resulting from the coil wire
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`overlapping itself can be avoided by using an extremely thin sheet-like circuit board
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`to provide the connection to the inner end of the coil. (Ex. 1009, 1:27-37, 4:2-36,
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`FIG. 3; Ex. 1002, ¶109.) As shown in annotated figure 3 of Yamazaki below, the
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`coil wire 20 is stuck on an “extremely thin” flexible printed circuit board. (Ex. 1009,
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`4:2-10.) A first internal wiring pattern 28 in the flexible circuit board connects a
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`first coil connecting portion 23 at the inner end of the coil with a first external
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`connection terminal portion 26. (Id., 4:21-24.) Similarly, a second internal wiring
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`pattern 29 in the flexible circuit board connects a second coil connecting portion 25
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`at the outer end of the coil with a second external connection terminal portion 27.
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`(Id., 4:24-27; Ex. 1002, ¶110.)
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`(Ex. 1009, FIG. 3 (annotated); Ex. 1002, ¶110.)
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`Yamazaki discloses that the coil is formed on one surface of the flexible
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`printed circuit board, where there is an insulating layer between the coil wire 20 and
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`the first internal wiring pattern 28. (Ex. 1009, 4:10-27.) Yamazaki further discloses
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`that by using a circuit board to provide the connections to the inner and outer ends
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`of the coil, rather than the ends of the coil itself, the overlap of the coil on itself can
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`be avoided. (Id., 4:28-36; Ex. 1002, ¶111.)
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`Therefore, Yamazaki teaches that using a flexible printed circuit board to
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`provide the connections to the coil wire allows for a thinner coil in comparison with
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`coil modules like that disclosed by Goma where the coil connections are made using
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`the same wire as the coil itself. A POSITA would have found it obvious to apply
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`these teachings of Yamazaki to Goma in order to realize a thinner receiver coil
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`module, which both Goma and Yamazaki expressly state is a desirable objective.
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`(Ex. 1008, ¶¶[0004] (“it is important to reduce the size of the coil module by
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`reducing its thickness”), [0035] (“making it possible to render the coil module
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`thinner and more compact”), [0040] (“it is possible to make the coil module 1 thinner
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`and smaller”); Ex. 1009, 1:20-24 (“a flat coil that has been made slim”), 1:30-37;
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`Ex. 1002, ¶112.)
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`Yamazaki, like Goma, is directed to a coil module for wireless power
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`reception that can be used in a portable devices like mobile phones. (Ex. 1009, 1:14-
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`20, 3:29-33.) Indeed, the coil modules of Goma and Yamazaki are very similar in
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`many respects, including encasement of the coil in resin in which magnetic material
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`is mixed. (Id., 8:34-44; Ex. 1002, ¶113.) Therefore, a POSITA implementing a coil
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`module like that disclosed in Goma would have reason to look to Yamazaki, which
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`is directed to the same subject matter (a wireless power transfer receiver module),
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`has similar optimization objectives (thinner coils), and similar components
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`(magnetic sheets and coils with connections to circuit boards). (Ex. 1002, ¶114.)
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`A POSITA would have found it obvious to use a flat coil
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