Trials@uspto.gov
`571-272-7822
`
`.
`
`7
`
`Paper 10
`Entered: August 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`SCRAMOGE TECHNOLOGYLTD.,
`Patent Owner.
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`Before JAMESON LEE, KARL D. EASTHOM,and MICHELLE N.
`WORMMEESTER,Administrative Patent Judges.
`
`WORMMEESTER,Administrative PatentJudge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 U.S.C. §314
`
`
`571-272-7822
`
`.
`
`7
`
`Paper 10
`Entered: August 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`SCRAMOGE TECHNOLOGYLTD.,
`Patent Owner.
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`Before JAMESON LEE, KARL D. EASTHOM,and MICHELLE N.
`WORMMEESTER,Administrative Patent Judges.
`
`WORMMEESTER,Administrative PatentJudge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 U.S.C. §314
`
`
`
`_
`IPR2022-00350
`Patent 9,806,565 B2:
`
`I.
`INTRODUCTION
`Apple Inc.(“Petitioner”) filed a Petition (Paper 2,“Pet.”) requesting
`interpartes review ofclaims 1—20 of U.S. Patent No. 9,806,565 B2
`
`(Ex. 1001, “the °565 patent”). Scramoge Technology Ltd. (“Patent Owner”)
`filed a Preliminary Response(Paper6, “Prelim. Resp.”). With our
`authorization (see Paper 7), Petitionerfiled a preliminary Reply (Paper8,
`“Reply”) to Patent Owner’s Preliminary Response, and Patent Ownerfiled a
`preliminary Sur-reply (Paper9, “Sur-reply”) to Petitioner’s preliminary
`Reply. Wehavejurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`Under 35 U.S.C. § 314(a), an interpartes review may notbe instituted —
`“unless . .. there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 ofthe claims challengedin the petition.” For the
`"reasonsthat follow, we institute an interpartes review astoall the
`|
`challenged claims ofthe °565 patent based onall the grounds presented.
`
`-
`
`Il. BACKGROUND
`
`A. RelatedProceedings
`
`Theparties identify one related federal district court case, Scramoge —
`
`_ Technology Limitedy. Apple Inc., Case No. 5:22-cv-03041-SVK (N.D.
`Cal.). Reply 1; Sur-reply 2; see also Ex. 1022 (OrderSetting Initial Case
`Management Conference and ADR Deadlines). !
`|
`
`J
`
`' The parties initially identified ScramogeTechnology Limited v. Apple Inc.,|
`Case No.6:21-cv-00579-ADA (W.D. Tex.), but the case was transferred to
`the District Court for the Northern District of California after.the filing of
`the Petition and the Preliminary Response. Pet. 74; Paper 3, 3 (Patent
`Owner’s Mandatory Notices); Reply 1; Sur-reply 2.
`
`2
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`B. The ’565 Patent
`
`The ’565 patent describes wireless power receivers. Ex. 1001, 1:14-
`
`15. In one embodiment, “[a] connecting unit is disposedin [a] receiving
`
`space of [a] magnetic substrate so that the thickness ofthe wireless power
`receiver can be remarkably reduced as muchasthe thickness ofthe
`connecting unit.” Jd. at 2:45—49.
`
`To illustrate, Figure 26 of the ’565 patent is reproduced below.
`
`FIG: 26
`
`. Figure 26 is an exploded view ofwireless powerreceiver 1000, which
`includes magnetic substrate 100, coil unit 200, connecting unit 300, short-
`range communication antenna 600, adhesive layer 710, and protective
`
`film 800. Jd. at 14:46-47, 59-64.
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`Magnetic substrate 100 includes receiving space 130 with a shape
`correspondingto the shape of connecting unit 300. Jd. at 15:27-28, 16:46.
`
`Connecting unit 300 is disposed in receiving space 130 and connectedto coil
`
`unit 200, which includes coil 230. Jd. at 15:27-31, 34-36. Coil unit 200
`
`may be disposed on magnetic substrate 100 and may havea spiral shape. Id.
`
`at 16:62-63. Short-range communication antenna 600 may be disposed
`along the perimeter of magnetic substrate 100 such that it surroundscoil
`
`unit 200 and may have a rectangular shape. Jd. at 16:38-42. To further
`
`illustrate, Figure 27 of the ?565 patent is reproduced below.
`
`
`
`$80
`
`310.320.
`
`230
`
`FIG. 27
`
`Figure 27illustrates wireless powerreceiver 1000 in its assembled state. Id.
`at 14:52—55. As shown in Figure 27, connection terminal 310 of connecting
`unit 300 is connected to connection terminal 210 of coil unit 200, connection
`terminal 320 of connecting unit 300 is connected to connectionterminal 220
`of coil unit 200, connection terminal 340 of connecting unit 300 is connected
`to connection terminal 610 of antenna 600, and connectionterminal 350 of
`
`connecting unit 300 is connected to connection terminal 620 of antenna 600.
`
`Td. at 15:60—16:3.
`
`
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`IPR2022-00350 -
`_ Patent 9,806,565 B2
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`In operation, coil unit 200 receives power froma transmission side
`_through “electromagnetic induction or resonance.”. Id. at 1532-34.
`Connecting unit 300 connects a receivercircuit with coil unit 200 to transfer
`the power receivedfromcoil unit 200 to a load through thereceivercircuit.
`Id..at 15:338-41, Short-range communication antenna 600 transceives
`information in cooperation with a reader. Id. at 16:26-28. The receiver
`circuit transfers the signal received from short-range communication
`antenna600 to a short-range communication signal processingunit. Id. at
`15:49-52.
`.
`_ The 565 patent explains that, “[s]ince the connecting unit 300is
`disposed in the receiving space 130 of the magnetic substrate 100, the
`thicknessofthe wireless powerreceiver 1000 can be remarkably reducedas _
`muchas the thickness ofthe connectingunit 300,”and,“[t]hus, the thickness
`ofthe electronic device, such as a portable terminal, equippedwith the
`wireless power receiver 1000 can be remarkably reduced.” Jd. at 16:6—13.
`
`C. Mlustrative Claim
`Petitioner challenges claims I--20 ofthe °565patent. Claims I and 12.
`are independent. Claim 1 is illustrative ofthe claims underchallenge:
`1. A wireless powerreceiver comprising:
`a substrate comprising a receiving space of a predetermined
`shape formed therein for a connecting unit configured to
`connect to a wireless powerreceiving circuit;
`a coil unit disposed on the substrate, the coil unit comprising
`a first connectionterminal, asecond connection terminal,
`and a coil; and
`a short-range communication antenna disposed on the
`substrate and surroundingthe coil;
`
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`wherein the coil is configured to wirelessly receive power,
`wherein the coil is formed as a conductive pattern on or
`within the substrate,
`wherein the conductive pattern comprises a conductive line
`_ woundat least two times and conductive pattern has a
`_ spiral shape, wherein the first connection terminal
`is
`located at one end of the coil and the second connection
`terminal is located at the other end of the coil, wherein the
`coil unit overlaps the receiving space inafirst direction
`perpendicular to an upper.surface the substrate,
`wherein the connecting unit is disposed in the receiving space
`and connected to the coil-unit,
`. Wherein the connecting unit overlaps the receiving space in a
`second direction parallel
`to the upper surface of the
`- substrate, and
`
`‘wherein the connectingunit comprises:
`a third connection terminal connected to the first
`connection terminal of the coil unit; and
`a fourth connection terminal connected to the second
`connection terminal of the coil unit.
`
`D. Asserted Grounds ofUnpatentability
`Petitionerchallenges claims 1-20ofthe 565 patent on the following
`grounds. Pet. 17-73.
`
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`1-8, 11-18
`
`___References/Basis
`
`
`
`Hong, Park, Hasegawa‘
`103
`Hong, Park, Sung® -
`103
`10, 20
`In supportof its arguments, Petitioner relies on a Declaration ofDr. Joshua
`Phinney, Ph.D. (Ex. 1003).
`
`Il. DISCUSSION
`A. Discretionary Denial Under 35 U. SC.§ 314(a)
`Patent Owner urges us to exercise our discretion under 35 U.S.C.
`_
`§ 314(a) to deny institution based on the parallel litigation in the District
`Court for the Northern District ofCalifornia. Sur-reply 1.
`Under § 314(a), the Director has discretion to deny institution ofan
`interpartes review. See 37 C.F.R.§ 42.4(a) (“The Board institutesthe trial
`on behalf ofthe Director.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“[T]he PTOis permitted, but never compelled,
`to institute an IPR proceeding.”). In exercising that discretion on behalf of.
`the Director, the Board may considerthe state of a parallel district court
`proceeding as a “factorthat weighs in favor of denying the Petition under
`
`* The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Becausethe application from which the ’565 patent issued: wasfiled before
`this date, the pre-AIA version of § 103 applies.
`3 Hong, U.S. Patent No. 8,941,352 B2,issued Jan. 27, 2015 (Ex. 1005).
`‘ Park, U.S. PatentNo.8,922,162 B2,issued Dec.30, 2014 (Ex. 1006)...
`> Hasegawa, U.S.Publ’n No. 2009/0021212 A1, published Jan. 22, 2009
`(Ex. 1007).
`_
`° Sung, U.S. Publ’n No. 2012/0274148 A1, published Nov.1, 2012
`(Ex. 1008).
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`§ 314(a).” NHKSpring Co. v. Intri-Plex Techs, Inc. , TPR2018-00752,
`Paper8 at 20 (PTAB Sept. 12, 2018) (precedential). When considering the
`impactofparallel litigation, the Board seeks, amongotherthings, to
`‘minimize the duplication ofwork to resolve the sameissue. See id. at 19—
`20.
`|
`.
`The Boardhas identified a nonexclusivelist offactors “relat[ing] to
`whetherefficiency, fairness, and the merits” favor discretionary denial in
`view ofparallel district court litigation. AppleInc. v. Fintiv, Inc. ,1PR2020-
`00019, Paper11, 5-6 (PTAB Mar. 20, 2020) (precedential). Among the
`factors is proximity of the court’s trial date to the Board’s projected statutory
`deadline fora final written decision. Id. at 6; see also id. at9 (“If the court’s
`trial date is earlier than the projected statutory deadline, the Board generally
`has weighedthis factin favorof exercising authority to deny institution
`under NHK.”). Here,notrial date has beensetin the parallellitigation, and
`there is no indication that the trial will precede a final written decision in this
`proceeding. Reply 1—2; Sur-reply 2.
`Wenote Patent Owner’s assertion: .
`Prior to transfer, the district court case was on track fortrial in
`March 2023—atleast five months before a final written decision
`would be due. And while the expected trial date is less certain
`now that the case has been transferred, there is no reason to
`believe that the trial will occur after the final written decision
`deadline.
`©
`
`Sur-reply 2. Whereadistrict court has notset a date for trial, however, we
`
`decline to speculate when suchtrial would take place. Various factors are
`involvedin that consideration.by the judge to whom thecaseis assigned.
`Speculation on ourpart ofthe timing on any putativetrial date simply is
`inappropriate in this situation. Moreover, Fintiv asks whetherthe tribunalin
`
`8
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`-IPR2022-00350
`Patent 9,806,565 B2
`the parallel proceeding hasseta trial date, not whatwe surmise might be the
`trial date to be set by thattribunalfor the parallel proceeding. Thelack of a
`scheduledtrial date weighs against exercising discretion to denythe Petition.
`|
`The remaining Fintiv factors do notsufficiently weigh in favor of
`exercising our discretion to deny institution. Accordingly, under the
`_ circumstances ofthis case, we decline to exercise our discretion to deny
`institution under § 314(a) in view ofthe parallellitigation.
`
`B. Claim Construction
`
`In an interpartes review proceeding, we construe a claim of a patent
`“using the same claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. 282(b).” See 37C.F.R.
`
`§ 42.100(b) (2019). That standard involves construing claims in accordance
`with the ordinary and customary meaning of such claims as would have been
`understoodby oneofordinary skill in the art and the prosecution history
`pertaining to the patent. See id.; Phillipsv. AWHCorp. » 415 F.3d 1303,
`1312-14 (Fed. Cir. 2005) (en banc).
`Petitionerasserts that “no terms require specific construction.”
`Pet. 12. PatentOwner does not respond. See generally Prelim. Resp. For
`purposesofthis Decision, we concludethat no claim term requires express
`interpretation at this time to resolve any controversy in this proceeding, See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`|
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`C. Obviousness over Hong andPark
`
`Petitioner asserts that claims 1-8 and 11—18 ofthe °565 patent would
`have been obvious over Hong and Park. Pet. 18-60. Patent Owner opposes.
`Prelim. Resp. 10-24. For the reasons explained below, we determinethat
`
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`
`asserted ground.
`
`1. Overview ofAssertedPrior Art
`
`Westart with an overview ofthe asserted prior art, Hong and Park.
`
`.
`a. Hong
`. Hong describes “a contactless charging apparatus for a portable
`
`terminal.” Ex. 1005, 1:16-17. To illustrate, Figure 3 of Hong is reproduced
`
`below.
`
`
`
`TPR2022-00350
`Patent 9,806,565 B2 ©
`
`Figure 3 showscontactless charging apparatus 10 mounted on main circuit
`
`board 20 of a portable terminal. Id. at 2:44-47, 3:36-38, 4:16-19.
`Contactless charging apparatus 10 includes secondary coil 11, rectifying
`‘unit 13, and charging unit 15. Secondary coil 11 includes coil layer 11a and
`may havea circular shape. Id. at 422-27.
`Secondary coil unit.1 1 and rectifying unit 13 are connectedthrough
`‘via holes 25a, 25b, and 25c as well as wiring layer 27. Ex. 1005, 5:7—10.
`Specifically, end 11b of coil layer 1 1ais electrically connected to connecting
`terminal 13a ofrectifying unit 13 at layer 21a ofmain circuit board 20. Id.
`at 5:11-15. End 11c ofcoil layer 11a, which is formed at a center ofcoil
`layer 1 1a, is electrically connectedto connecting terminal 13b ofrectifying
`unit 13. Jd. at 5:16-18. This connection is made through wiring layer 27,
`whichis formedin via holes 25a, 25b, and 25c on inner layers 23 of main ©
`circuit board 20. Jd. at 5:19-22.
`
`Whencontactless charging apparatus 10 is engaged with a contactless
`charger, secondary coil unit 11 generates an electromotive forcethatis
`induced by a primary coil in the contactless charger to charge a battery
`located in the portable terminal. Ex. 1005, code (57), 3:36—38, 5:31-47.
`
`b. Park
`
`Park relates to “a portable terminal having a secondary coil for
`
`wireless charging, as well as a plurality of antenna elements.” Ex. 1006,
`
`1:16-19. To illustrate, Figure 4 of Park is reproduced below.
`
`Il
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`IPR2022-00350
`_ Patent 9,806,565 B2
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`3 NEGO”
`
`
`- *FIGA
`
`Figure 4 shows an example configuration ofa portable terminalthat
`implements a wireless charging function and a Near Field Communication
`(NFC) function using a coil module comprising shielding member 131 (not
`
`shown) and coils 133 and 135, where coil 133 serves as a secondary coil
`- used for wireless charging and coil 135 serves as an antenna elementfor
`NEC. /d. at 3:9-11, 4:60-65. Coil 135 surroundscoil 133. Id. at 3:61—64.
`Coils 133 and 135 are attached to shielding member 131, Ex. 1006,
`3:4-8. To illustrate, Figure 3 of Park is reproduced below.
`
`ay 8 ‘37 \ 38
`
` 499
`
`FIG.3
`
`Figure 3 is a sectional view of the coil module. /d. at 2:43. Shielding
`member131 includes accommodation grooves 141 and 142. Id. at 3:35-37.
`
`Accommodation groove 142 surrounds accommodation groove 141. Jd. at
`
`12
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`3:37-42. Coil 133 is accommodated in accommodation groove 141,
`
`whereascoil 135 is accommodated in accommodation groove 142. Jd. at
`
`3:56-59. Shielding wall 137, which shields interference ofelectronic waves
`between coils 133 and 135, is interposed between accommodation
`
`grooves 141 and 142. Id. at 3:42-44,3:66-4:1.
`
`2. Independent Claim 1
`
`Weturn nowto our discussion of the claims. We discuss independent
`
`claims 1 and 12 in detail, starting with claim 1. Claim 1 is directed to a
`
`“wireless power receiver” that comprisesa “substrate,” a “coil unit”
`including a “coil,” a “short-range communication antenna,” anda
`
`“connecting unit.” Claim 1 recites various limitations designated by
`
`Petitioner as limitations 1.1 through 1.10, whichrelate to these elements.
`
`We addressthe recited claim elements and associated limitations in turn and
`
`then considerthe parties’ disputes as to claim 1.
`
`a. Limitation 1.1: “substrate”
`
`_ Claim 1 recites “a substrate comprising a receiving space of a
`predetermined shape formed therein for a connecting unit configured to
`
`connect to a wireless powerreceiving circuit.” Forthis limitation, which
`
`Petitioner designates as limitation 1.1, Petitioner identifies Hong’s main
`
`circuit board 20 as a “substrate.” Pet. 29-30. As support, Petitioner directs
`
`us to where Hong teachesthat “[t]he secondary coil unit 11 is formedat one
`surface ofthe main circuit board20,” and that “It]he end 1 1c ofthe coil
`layer 11a makes contact to the connecting terminal 13b through the wiring
`layer 27 formedin via holes 25a, 25b, and 25c, which areformedon inner
`
`13
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`IPR2022-00350
`Patent 9,806,565 B2
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`layers 23 ofthemain circuit board 20.” Ex. 1005, 3:50—51, 5:19-22
`
`(emphases added)(cited by Pet. 29). Petitioner also provides a cropped and
`
`annotated version of Figure 4 of Hong, which is reproduced below. Pet. 30.
`
`
`
`Main.ciseuit
`ard20:
`
`a ("a
`slf
`= eo7ads
`
`iaSobsrraté:
`
`
`Petitioner’s version ofFigure 4 is a sectional side view of contactless
`
`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
`
`4:12-19, 5:4-6.
`
`Petitionerfurther identifies Hong’s rectifyingunit 13 and wiring
`layer 27 together as a “connecting unit.” Pet. 30-32. Toillustrate,
`
`Petitioner provides another cropped and annotated version of Figure 4 of
`
`Hong, reproduced below. Jd. at 31.
`
`
` cg
`
`cect
`adi CEEEETETIEEERNUEEEEEE ‘wrtos
`218stemcmeTEE ve
`a
`pees
`ih
`
`
`
`This version ofFigure 4 is a sectional side view of contactless charging
`apparatus 10 mounted on main circuit board 20. See Ex. 1005, 4:12-19,
`
`5:4-6. Petitioner contends that Hong’s via holes 25a, 25b, and 25c as well
`as the space extending between them correspondto the recited receiving
`space formed in the substrate. Pet.32. As support, Petitionerdirects us to
`
`14
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`IPR2022-00350
`Patent 9,806,565 B2
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`where Hongteachesthat “the wiring layer 27 [is] formed in via holes 25a,
`25b, and 25c, which are formed on innerlayers 23 of the main circuit
`
`board 20,” where the wiring layer 27 correspondsto the recited connecting
`unit. Ex. 1005, 5:1 9-22 (quoted by Pet. 32). Petitioner further points to
`Hong’s teachingthat “[a] via hole and a wiring layer may be formed.. .
`
`according to a designed condition,” (Ex. 1005, 5:22—24 (quoted by Pet. 32)),
`
`which, according to Petitioner, means“the receivingspace in the main
`
`circuit board is a designed space of a predetermined shape that extends
`
`through the layers from the end 11c ofthe coil layer 11ato the connecting
`
`terminal 13b ofthe rectifying unit,” (Pet. 33).
`
`Petitioner additionally provides a cropped and annotated version of
`
`Figure 3 of Hong, whichis reproduced below. Pet. 31.
`
`ie unit ls:
`
`daecthig unity:
`
`Figure 3, as provided by Petitioner, shows contactless charging apparatus 10
`mounted on main circuit board 20. See Ex. 1005, 2:44-47. As shownin the
`
`figure, Petitioner identifies Hong’s charging unit 15 as a “wireless power
`
`receiving circuit.” Pet. 30. Hongteachesthat “the rectifying unit 13
`
`15
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`IPR2022-00350
`Patent 9,806,565 B2
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`connects with the charging unit 15 which includes a battery charging
`
`terminal 15a for contact with a battery,” where rectifying unit 13
`
`correspondsto the recited connecting unit. Ex. 1005, 4:59-62(cited by
`
`Pet. 30).
`
`Based on Petitioner’s argument and evidence, we are persuadedthat
`
`Petitioner has shownsufficiently for purposesof this Decision that Hong
`teaches the recited substrate oflimitation 1.1. PatentOwner, however,
`challenges certain aspects of Petitioner’s analysis regarding the recited
`
`connecting unit. Prelim. Resp. 10-24. We addressthe parties’ dispute in
`
`further detail below.
`
`b. Limitations 1.2, 1.6, and 1.7: “coilunit”
`Claim 1 furtherrecites “a coil unit disposed on the substrate, the coil
`
`unit comprising a first connection terminal, a second connection terminal,
`
`and a coil.” Petitioner designates this limitation aslimitation 1.2. Pet. 34.
`
`Claim 1 requires that “the first connection terminalis located at one end of
`the coil and the second connection terminal is located at the other end ofthe
`
`coil.” Petitioner designatesthis limitation as limitation 1.6. Jd. at 40.
`
`Additionally, claim 1 requiresthat “the coil unit overlaps the receiving space
`
`in a first direction perpendicular to an upper surface of the substrate.”
`Petitioner designates this limitation as limitation 1.7. Jd. at41. We discuss
`these limitations in turn.
`
`With respect to limitation 1.2 (which recites “a coil unit disposed on
`
`the substrate, the coil unit comprising a first connection terminal, a second
`connection terminal, and a coil”), Petitioneridentifies Hong’s secondary
`coil 11 as a “coil unit.” Pet. 34. As support, Petitioner directs us to where
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`_ Patent 9,806,565 B2
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`Hong teachesthat “a secondary coil 11 [is] formed on a main circuit
`
`board 20” and “includes a coil layer 11a.” Ex. 1005, 4:16—23 (cited by
`
`Pet. 34). Hong teachesthat “an outermost end 11b of the coil layer 11a is
`
`electrically connected to connecting terminal 13a of the rectifying unit 13,”
`
`and that “[a]nother end 1 1c, formed at a center of the coil layer 11a, is
`electrically connected to connecting terminal 13b of the rectifying unit 13.”
`Id. at 5:11-19, Fig. 4 (cited by Pet. 34—35). Petitioner identifies Hong’s coil
`
`layer 11a as a “coil,” Hong’s end 11b as a “first connection terminal,” and
`
`Hong’s end 11cas a “second connection terminal.” Pet. 34—-35.
`To illustrate, Petitioner provides a cropped and annotated version of
`Figure 3 of Hong, whichis reproduced below. Pet. 35.
`
`
`
`Petitioner’s version of Figure 3 shows contactless charging apparatus 10,
`
`which includes secondary coil 11, mounted on main circuit board 20. See
`Ex. 1005, 2:44-47, 4:16-19. Petitioneralso provides an annotatedversion
`of Figure 4 of Hong, reproduced below. Pet. 36.
`
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`RAIN —— perry
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`SrERQUUTT
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`RETO
`
`TAREUUNETG}
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`SSERPERENY
`
`7fsZé
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`This version ofFigure 4 is a sectional side view of contactless charging
`
`apparatus10 mounted on main circuit board 20. See Ex. 1005, 4:12-19,
`5:4-6. In the figures, Petitioner labels the elements in Hong corresponding
`to the recited first connection terminal, second connection terminal, and coil.
`
`Pet. 35-36.
`
`With respectto limitation 1.6 (which recites “the first connection
`terminalis located at one end ofthe coil and the second connectionterminal
`is located at the other endofthe coil”), Petitioner cross-referencesits
`
`analysis for limitation 1.2. Pet. 40. Petitioner directs us again to Hong’s
`teaching of“an outermost end 11b ofthe coil layer 11a” and “fajnother |
`end 11c, formedat a center ofthe coil layer 11a.” Ex. 1005, 5:11-19,
`Figs. 3, 4 (cited by Pet. 40-41). Petitioner characterizes end 11c as an
`“inner” end. Pet.40. We note that end 11b faces away from main circuit
`board 20, whereas end 11c faces toward main circuit board 20. See
`Ex. 1005, Figs. 3,4. As discussed above, Hong’s end 11b correspondsto
`
`18
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`
`the recited first connection terminal, and Hong’s end 11c correspondsto the
`recited second connection terminal.
`|
`.
`
`With respect to limitation 1.7 (whichrecites “the coil unit overlaps the
`
`receiving space in a first direction perpendicular to an upper surface of the
`substrate”), Petitioner provides another version ofFigure 4 ofHong, which
`is reproduced below. ‘Pet.42.
`
`
`
`
`
`
`Figure 4, as cropped and annotated by Petitioner, is a sectional side view of
`. contactless charging apparatus 10 mounted on maincircuit board 20. See
`Ex. 1005, 4:12-19, 5:4—6. Pointing to the annotationsin this version of
`Figure 4, Petitioner contendsthat “Hongteachesandillustrates in Fig. 4 that
`its coil layer 11a overlaps the receivingspace (in which the wiring layeris
`“disposed) in a first direction perpendicular to an uppersurface of the main
`circuit board (substrate).” Pet. 41.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shownsufficiently for purposesofthis Decision that Hong
`
`teachesthe recited coil unit of limitations 1.2, 1.6, and 1.7. Patent Owner
`_ doesnotchallenge Petitioner’s analysis forany oftheselimitations. See
`generally Prelim. Resp.
`
`19 ©
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`c. Limitation 1.3: “short-range communication antenna”
`Claim 1 furtherrecites “a short-range communication antenna
`disposed on the substrate and surroundingthe coil.” Forthis imitation,
`which Petitioner designatesas limitation 1.3, Petitioner relies additionally on
`
`Park. Pet. 36-38. Specifically, Petitioner directs us to where Park describes
`a portable terminal implementing “both a wireless charging function and an
`NECfunction” with “fal first coil 133 as a secondarycoil used for wireless
`| charging and [a] second coil 135 as an antenna element forNFC.” Ex. 1006,
`4:60-65 (quoted by Pet. 37). Park teachesthat “thefirst and second
`coils 133 and 135 are accommodatedin the first and second accommodation
`
`|
`
`grooves 141 and 142 [ofshielding member 131], respectively, and the
`second coil 135 surroundsthefirst coil 133.” Id. at 3:61-64, Figs. 3, 4 (cited
`by Pet. 37).
`.
`Petitioner contendsthat an ordinarily skilled artisan “would have been
`motivatedto combinethe teachings ofPark with those ofHong.” Pet. 23;
`see also id. at 22-27. As support, Petitioner asserts that Hong’s “contactless
`powerapparatus may be implementedin the context of a portable terminal,”
`
`(Pet. 23 (citing Ex. 1005, Fig. 1)), and points to Park’s teaching that, “[a]s
`portable terminals have becomea daily commodity, they are equipped with
`the NFC function,” (Ex. 1006, 1:29-33 (cited by Pet. 23)). Park further
`teachesthat“a portable terminalis providedwith an additional antenna for —
`performing the NFC function.” Ex. 1006, 1:31—33 (quoted by Pet. 23). In
`light of these teachings,Petitioner asserts that, “as a baseline, it was well
`knownandobviousfor a portable terminal, such as Hong’s, to include an
`NFC antennacoil as well as a wireless charging coil.” Pet. 23. Petitioner
`
`20
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`relies on the declaration testimony of Dr. Phinney. Jd. (citing Ex. 1003
`
`qf49-51).
`Petitioneraddsthat “[o]ne of ordinary skill in the art would have been
`
`specifically motivated to implement Hong’s device with an NFCcoil
`
`becauseasofthe earliest alleged priority date of the ’565 patent, NFC was a
`standardized data transmission protocolwith a multitude of commercial
`applications and advantages over other short-range wireless communication
`protocols.” Pet. 24. Petitioner states that “NFC technology provides an
`
`advantage of fast communication setup between communication devices,”
`
`(Pet. 24 (quoting Ex. 1006, 1:33-36)), and “the intuitive operation ofNFC
`
`protocol systems makesthe technology particularly easy for consumers to
`use,” (Pet. 24 (quoting Ex. 1010, 4:2—5)). ‘According to Petitioner,
`|
`combining the teachings ofHong and Park “would allow Hong’s mobile
`deviceto be easily used for transactions in a variety of commercial
`applications.” Pet.24. Petitionerrelies on the declaration testimony of
`
`Dr. Phinney. /d. (citing Ex. 1003 4 52).
`
`Based on Petitioner’s argument and evidence, we are persuadedthat
`
`Petitioner has shownsufficiently for purposes ofthis Decision that the
`
`proposed combination of Hong and Park teachesthe recited short-range
`
`communication antennaoflimitation 1.3. We also are persuaded that
`
`Petitioner’s proffered reasoning for modifying Hong’s deviceto include
`Park’s NFC antennacoil, namely, to implement an NFCfunction so that
`Hong’s device can be easily used for transactions across various commercial
`applications, is sufficient to support the legal conclusion of obviousness.
`See Inre Kahn, 441 F.3d977, 988 (Fed. Cir. 2006) (“[T]here must be some
`
`21
`
`
`
`_ IPR2022-00350
`Patent 9,806,565 B2
`
`articulated reasoning with somerational underpinning to supportthelegal
`
`conclusion of obviousness.”).
`
`Patent Ownerdoesnot challenge Petitioner’s analysis for this
`
`limitation. See generally Prelim. Resp.
`
`d. Limitations 1.4and 1.5: “coil”
`
`As discussed above, Petitioneridentifies Hong’s coil layer 1 1aas the
`
`recited coil. Pet. 34. Claim 1 requiresthat “the coil is configured to
`
`wirelessly receive power, wherein the coil is formed as a conductive pattern
`on or within the substrate.” Petitioner designatesthis limitation as
`limitation 1.4. Claim 1 additionally requires that “the conductive pattern
`
`comprises a conductive line woundat least two times and conductive pattern
`
`hasaspiral shape.” Petitioner designatesthis limitation as limitation 1.5.
`
`Wediscusstheselimitations in turn.
`With respect to limitation 1.4 (which recites “the coil is configured
`to wirelessly receive power, wherein the coil is formed as a conductive
`
`pattern on or within the substrate”), Petitioner directs us to where Hong
`
`teaches thatits “coil layer .
`
`.
`
`. generates an electromotive force induced by a
`
`magnetic induction field created by a contactless charger.” Ex. 1005,
`
`code (57) (cited by Pet. 38). More specifically, an “induced electromotive
`
`force is generated in the secondary coil unit 11 of the portable terminal 1 by
`
`the magnetic induction field formed in the primary coil unit 511 of the
`
`powertransmitter 510.” Jd. at 5:44-47 (cited by Pet. 38).
`
`Petitioner also directs us to where Hongteachesthatits “secondary
`
`coil unit 11 is formedat one surface of the main circuit board 20,” and the
`“coil layer [is] spirally formed in a circular form ona plane.” Ex. 1005,
`
`22 |
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`3:50—-52 (cited by Pet. 38). Petitioner points to Hong’s further teaching that
`
`“a material of the secondary coil unit 11 on the main circuit board 20 may be .
`the sameasthatof a conductive wiring and may be a conductive material to
`_ generate an inducedelectromotive force.” Id. at 428-32 (cited by Pet. 38).
`|
`With respectto limitation 1.5 (which recites “the conductive pattern
`comprises a conductive line woundat least two times and conductive pattern
`has.a spiral shape”), Petitioner points again to Hong’s teachingthatits coil
`|
`layer 11a is shaped like a spiral and made of a conductive material. Pet. 39
`(citing Ex. 1005, 3:50—52, 4:27-32). Petitioner further relies on Figure 3 of
`Hong, which, according to Petitioner, showscoil layer 11a woundatleast
`_ two times. Jd. Toillustrate, Petitioner provides a cropped and annotated
`
`version of Figure 3 of Hong, reproduced below. Id.
`
`Petitioner’s version ofFigure 3 showscontactless charging apparatus 10,
`which includes secondary coil 11, mounted on main circuit board 20. See
`~ Ex. 1005, 2:44-47, 4:16-19.
`Based on Petitioner’s argument and evidence, we are persuaded that
`Petitioner has shownsufficiently for purposes ofthis Decision that Hong
`
`23
`
`
`
`-TPR2022-00350.
`Patent 9,806,565 B2
`
`teachestherecited coil of limitations 1.4 and 1.5. Patent Owner does not
`challenge Petitioner’s analysis for either limitation. See generally Prelim.
`Resp.
`
`e. Limitations 1.8, 1.9, and 1.10: “connecting unit”
`As discussed above,Petitioner identifies Hong’s rectifying unit 13 and
`wiring layer 27 together as a “connecting unit.” Pet. 30. Claim 1 requires
`that“the connecting unit is disposed in the receiving space and connectedto
`the coil unit.” Petitioner designates this limitation as limitation 1.8. Jd. at
`
`42. Claim 1 further requires that “the connecting unit overlapsthe receiving
`space in a seconddirection parallel to the upper surface ofthe substrate.”
`
`Petitioner designates this limitation as limitation 1.9. Id. at43. Lastly,
`claim 1 requires that “the connectingunit comprises[] a third connection
`terminal connectedto the first connectionterminal ofthe coil unit[] anda
`fourth connection terminal connected to the second connection terminal of
`the coil unit.” Petitioner designates this limitation as limitation 1.10. Id. at
`44. Wediscussthese limitations in turn.
`|
`.
`With respect to limitation 1.8 (whichrecites “the connecting unit is
`disposed in the receiving space and connectedto the coil unit”), Petitioner
`provides a cropped and annotated version ofFigure 4 ofHong, reproduced
`below. Pet. 43.
`
` ‘Winelay
`
`
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`Petitioner’s version of Figure 4 is a sectional side view of contactless
`
`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
`4:12-19, 5:4-6. Petitioner contendsthat “Hong teachesandillustrates in
`Fig. 4 that the wiring layer 27 (part of the connecting unit) is disposed within
`the receiving space (via holes 25a, 25b, and 25c and empty spaces within
`layers 21a and 23) and connectedto the inner end of 1 1c of coil layer [11a].”
`
`Pet. 42.
`
`With respect to limitation 1.9 (which recites “the connecting unit
`
`overlaps the receiving space in a seconddirection parallel to the upper
`surface ofthe substrate”), Petitionerprovides another version ofFigure 4 of
`Hong, reproduced below. Pet. 44.
`
`
`
`This version of Figure 4 is a sectional side view of contactless charging
`
`apparatus 10 mounted on main circuit boa
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