Trials@uspto. gov
`571-272-7822
`
`Paper 44
`Date: August 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`Before JAMESON LEE, KARL D. EASTHOM,and MICHELLEN.
`WORMMEESTER,Administrative Patent Judges.
`
`WORMMEESTER,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Revised Motion to Amend
`35 U.S.C. § 318(a)
`
`Dismissing Petitioner’s Motion to Strike
`37 C.ELR. § 42.5
`
`
`571-272-7822
`
`Paper 44
`Date: August 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`Before JAMESON LEE, KARL D. EASTHOM,and MICHELLEN.
`WORMMEESTER,Administrative Patent Judges.
`
`WORMMEESTER,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Revised Motion to Amend
`35 U.S.C. § 318(a)
`
`Dismissing Petitioner’s Motion to Strike
`37 C.ELR. § 42.5
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (‘Petitioner’)filed a Petition (Paper 2, “Pet.”) requesting
`
`interpartes review of claims 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 (Paper 6). With our authorization (see
`
`Paper7), Petitionerfiled a preliminary Reply (Paper 8) to Patent Owner’s
`
`Prelimmary Response, and Patent Ownerfiled a preliminary Sur-reply
`
`(Paper 9) to Petitioner’s preliminary Reply. Pursuant to 35 U.S.C. §314, we
`
`instituted interpartes review. Paper 10 (“Inst. Dec.”).
`
`Following institution, Patent Ownerfiled a Response (Paper19,
`
`“PO Resp.”) to the Petition, Petitionerfiled a Reply (Paper 22, “Pet. Reply”)
`
`to Patent Owner’s Response, and Patent Ownerfiled a Sur-reply (Paper 24,
`
`“PO Sur-reply’’) to Petitioner’s Reply.
`
`Patent Owneralso filed an initial Contingent Motion to Amend
`
`(Paper 18), and Petitionerfiled an Opposition (Paper 21) to the Motion to
`
`Amend. Weissuedpreliminary guidance on Patent Owner’s Motionto
`
`Amend. Paper 23. Thereafter, Patent Ownerfiled a Contingent Revised
`
`Motion to Amend(Paper 25, “RMTA’”), replacing the initial Motion to
`
`Amend. Petitioner filed an Opposition (Paper 30, “Pet. RMTA Opp.”) to the
`
`Revised Motion to Amend, Patent Ownerfiled a Reply (Paper32,
`
`“PORMTA Reply”) to Petitioner’s Opposition, and Petitioner filed a Sur-
`
`reply (Paper 38, “Pet. RMTASur-reply”’) to Patent Owner’s Reply.
`
`Lastly, Petitioner filed a Motion to Strike (Paper 28), and Patent
`
`Ownerfiled an Opposition (Paper 31) to Petitioner’s Motion to Strike. We
`
`authorizedthe filing of these papers in an e-mail dated March 14, 2023.
`
`Ex. 3002.
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`On June 2, 2023, we conducted an oral hearing. A copy of the
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`transcript (Paper 43, “Tr.”) is in the record.
`
`Wehavejurisdiction under 35 U.S.C. § 6(b). For the reasonsthat
`
`follow, we determine that Petitioner has shownby a preponderanceofthe
`
`evidencethat claims 1—12 and 14—20 ofthe ’565 patent are unpatentable.
`
`Wealso determinethat Petitioner has not shown by a preponderanceofthe
`
`evidence that claim 13 is unpatentable. We further determinethat Petitioner
`
`has demonstrated unpatentability of proposed substitute claims 21—23 by a
`
`preponderanceofthe evidence, and, therefore, we deny Patent Owner’s
`
`Revised Motion to Amend. This Final Written Decision 1s issued pursuant
`
`to 35 U.S.C. § 318(a).
`
`I. BACKGROUND
`
`A. RelatedProceedings
`
`The parties identify one federaldistrict court case, Scramoge
`
`Technology Limitedv. Apple Inc. , No. 5:22-cv-03041 (N.D. Cal.). Paper 13,
`
`2—3 (Patent Owner’s Amended Mandatory Notices); Paper 41, 2
`
`(Petitioner’s Updated Mandatory Notices). Patent Owneralsoidentifies
`
`several interpartes review proceedings. Paper 13, 2.
`
`B. The ’565 Patent
`
`The ’565 patent describes wireless powerreceivers. Ex. 1001, 1:14—
`
`15. In one embodiment, “[a] connecting unit is disposed in [a] receiving
`
`space of [a] magnetic substrate so that the thickness of the wireless power
`
`receiver can be remarkably reduced as muchasthe thickness of the
`
`connecting unit.” /d. at 2:45—49.
`
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`Toillustrate, Figure 26 of the ’565 patent is reproduced below.
`
`FIG, 26
`
`Figure 26 1s an exploded view of wireless 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. Ex. 1001, 14:46-47, 14:59-64.
`
`Magnetic substrate 100 includes recerving space 130 with a shape
`
`correspondingto the shape of connecting unit 300. Ex. 1001, 15:27—28,
`
`16:4—6. Connecting unit 300 is disposed in recetving space 130 and
`
`connected to coil unit 200, which includes coil 230.
`
`/d. at 15:27—31, 15:34—
`
`36. Coil unit 200 may be disposed on magnetic substrate 100 and may have
`
`a spiral shape.
`
`/d. at 16:62—63. Short-range communication antenna 600
`
`may be disposed along the perimeter of magnetic substrate 100 such thatit
`
`surroundscoil unit 200 and mayhave a rectangular shape.
`
`/d. at 16:38—42.
`
`To furtherillustrate, Figure 27 of the 565 patent is reproduced below.
`
`4
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`
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`Figure 27 illustrates wireless powerreceiver 1000 in its assembledstate. /d.
`
`at 14:52—55. 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 connection terminal 220 of coil unit 200,
`
`connection terminal 340 of connecting unit 300 is connected to connection
`
`terminal 610 of antenna 600, and connection terminal 350 of connecting unit
`
`300 1s connected to connection terminal 620 of antenna 600. Jd. at 15:60-
`
`16:3. As depicted above in Figure 27, after assembly, connecting unit 300
`
`extends out of receiving space 130 (see Fig. 26).
`
`In operation, coil unit 200 receives powerfrom a transmission side
`
`through “electromagnetic induction or resonance.” Ex. 1001, 15:32—34.
`
`Connecting unit 300 connects a receiver circuit with coil unit 200 to transfer
`
`the powerreceived from coil unit 200 to a load through the receivercircutt.
`
`Id. at 15:38-41. Short-range communication antenna 600 transceives
`
`information in cooperation with a reader.
`
`/d. at 16:26—28. The receiver
`
`circuit transfers the signal received from short-range communication
`
`antenna 600 to a short-range communication signal processing unit.
`
`/d. at
`
`15:49-52.
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`The ’565 patent explains that, “[s]ince the connecting unit 300 is
`
`disposed in the receiving space 130 of the magnetic substrate 100, the
`
`thickness ofthe wireless powerreceiver 1000 can be remarkably reduced as
`
`muchasthe thickness of the connecting unit 300,” and, “[t]hus, the thickness
`
`of the electronic device, such as a portable terminal, equipped with the
`
`wireless powerreceiver 1000 can be remarkably reduced.” Ex. 1001, 16:6—
`
`13.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1—20 of the *565 patent, where claims 1
`
`and 12 are independent. Claim 1, reproducedbelow,is illustrative of the
`
`claims under challenge.
`
`1. A wireless power receiver comprising:
`a substrate comprising a receiving space of a predetermined
`shape formedtherein for a connecting unit configured to
`connect to a wireless powerreceiving circutt;
`
`a coil unit disposed on the substrate, the coil unit comprising
`a first connection terminal, a second connection terminal,
`and a coil; and
`
`a short-range communication antenna disposed on the
`substrate and surroundingthecoll;
`
`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
`terminalis 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,
`
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`wherein the connecting unit is disposed in the receiving space
`and connected to the coil unit,
`
`wherein the connecting unit overlaps the receiving space ina
`second direction parallel
`to the upper surface of the
`substrate, and
`
`wherein the connecting unit 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
`
`Petitioner challenges claims 1—20 of the *565 patent on the following
`
`three grounds. Pet. 17-73. We instituted interpartes review. Inst. Dec. 39.
`
`
`
`1-8, 11-18
`
`10, 20
`
`Hong, Park, Hasegawa*
`Hong, Park, Sung?
`
`In support of its arguments, Petitioner relies on a Declaration of
`
`Joshua Phinney, Ph.D. (Ex. 1003). The transcript ofthe deposition of
`
`Dr. Phinney is entered in the record as Exhibit 2017.
`
`' 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.
`Because the application from which the ’565 patent issued wasfiled before
`this date, the pre-AIA version of § 103 applies.
`* Hong, U.S. Patent No. 8,941,352 B2, issued Jan. 27, 2015 (Ex. 1005).
`3 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).
`
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`II. ANALYSIS
`
`Because Patent Owner’s Revised Motion to Amendis contingent on a
`
`conclusion of unpatentability of the challenged patent claims, wefirst
`
`addressPetitioner’s challenge of clams 1—20 of the °565 patent, and then we
`
`address Patent Owner’s proposedsubstitute claims 21—23 in the Revised
`
`Motion to Amend.
`
`A, 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). Applying that standard, we construe a claim in
`
`accordance with its ordinary and customary meaning as would have been
`
`understood by one of ordinary skill in the art, taking into account the
`
`specification and the prosecution history pertaining to the patent. See id.;
`
`Phillipsv. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc).
`
`Patent Ownerrequests that we “construe independent claims 1 and 12
`
`to require two separate and distinct componentsfor the “substrate
`
`comprising a receiving space’ and ‘connecting unit.’”” PO Resp. 8-19.
`
`Petitioner respondsthatit “relies on separate and distinct elementsto satisfy
`
`the claimed ‘substrate comprising a receiving space’ and ‘connecting unit,’
`
`and no actual claim construction dispute exists.” Pet. Reply 5. For purposes
`
`of this Decision, we concludethat no claim term requires express
`
`interpretation 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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`B. 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 Ownerdisputes
`
`certain aspects of Petitioner’s analysis regarding independentclaims 1 and
`
`12 as well as dependent clam 13. PO Resp. 19-32. For the reasons
`
`explained below, we determinethat Petitioner has demonstrated by a
`
`preponderanceofthe evidence that claims 1—8, 11, 12, and 14-18 would
`
`have been obvious over Hong and Park. Petitioner has not, however,
`
`demonstrated by a preponderanceofthe evidence that claim 13 would have
`
`been obvious over Hong and Park.
`
`1. Overview ofAssertedPrior Art
`
`Westart with an overview ofthe asserted prior art, Hong and Park.
`
`a. Hong
`
`Hongdescribes “a contactless charging apparatusfor a portable
`
`terminal.” Ex. 1005, 1:16-17.
`
`To illustrate, Figure 3 of Hong is reproduced
`
`below.
`
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`4nea
`
`Figure 3 showscontactless charging apparatus 10 mounted on main circuit
`
`board 20 of a portable terminal.
`
`/d. 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.
`
`/d. at 4:22—27.
`
`Secondary coil unit 11 and rectifying unit 13 are connected through
`
`via holes 25a, 25b, and 25c as well as wiring layer 27. Ex. 1005, 5:7—10.
`
`Specifically, end 11b of coil layer 11lais electrically connected to connecting
`
`terminal 13a ofrectifying unit 13 at layer 21a of main circuit board 20.
`
`/d.
`
`at 5:11-15. End 11c of coil layer 11a, which is formedat a centerofcoil
`
`layer 11a, is electrically connected to connecting terminal 13b of rectifying
`
`unit 13.
`
`/d. at 5:16—-18. This connection is made through wiring layer 27,
`
`which is formedin via holes 25a, 25b, and 25c on innerlayers 23 of main
`
`circuit board 20.
`
`/d. at5:19—22.
`
`10
`
`
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`IPR2022-00350
`Patent 9,806,565 B2
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`When contactless charging apparatus 10 is engaged with a contactless
`
`charger, secondary coil unit 11 generates an electromotive forcethatis
`
`inducedby a primary coil in the contactless charger to charge a battery
`
`located in the portable terminal. Ex. 1005, code (57), 3:36—38, 5:3 1-47.
`
`b. Park
`
`Parkrelates to “a portable terminal having a secondary coil for
`
`wireless charging, as well as a plurality of antenna elements.” Ex. 1006,
`
`1:16—19. Toillustrate, Figure 4 of Park is reproduced below.
`
`102
`
`ne
`
`‘\
`
`moLAS
`
`f
`
`48 —
`
` .
`
`*
`~
`143.fenFe8
`wee
`TS,
`athe
`i
`4
`ss
`NS
`Bf Ny
`
`a ,© weool Ih
`alletT
`H
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`“aac
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`4
`x,
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`\
`
`a
`
`NFO ont
`
`i
`a
`
`FIG.4
`.
`J,
`
`Figure 4 showsan example configuration ofa portable terminal that
`
`implements a wireless charging function and a Near Field Communication
`
`(NFC) function using a coil module comprising shielding member131 (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. Jd. at 3:9-11, 4:60-65. Coil 135 surrounds coil 133.
`
`/d. at 3:61—64.
`
`Coils 133 and 135 are attached to shielding member 131. Ex. 1006,
`
`3:4-8. Toillustrate, Figure 3 of Park is reproduced below.
`
`11
`
`
`
`IPR2022-00350
`Patent 9,806,565 B2
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`WS
`
`3
`
`Sas tat Ba BRON35
`seFoageonLotofilesJ
`
`
`
`a3 137
`
`442
`|
`
`FIG.3
`
`Figure 3 is a sectional view ofthe coil module.
`
`/d. at 2:43. Shielding
`
`member131 includes accommodation grooves 141 and 142.
`
`/d. at 3:35—37.
`
`Accommodation groove 142 surrounds accommodation groove 141.
`
`/d. at
`
`3:37-42. Coil 133 is accommodated in accommodation groove 141,
`
`whereascoil 135 is accommodated in accommodation groove 142.
`
`/d. at
`
`3:56—-59. Shielding wall 137, which shields interference of electronic waves
`
`between coils 133 and 135, is interposed between accommodation
`
`grooves 141 and 142.
`
`/d. at 3:42—44, 3:66—4:1.
`
`2. Analysis ofClaims 1-8 and 11-18
`
`Weturn nowto our discussion of the claims.
`
`a. Independent Claim I
`
`Claim 1 is directed to a “wireless power receiver” that comprises a
`
`“substrate,” a “coil unit” including a “coil,” a “short-range communication
`
`antenna,” and a “connecting unit.” Claim 1 recites various limitations
`
`designated by Petitioner as limitations 1.1 through 1.10. We address these
`
`limitations in turn and then considerthe parties’ disputes.
`
`12
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`i. Limitation 1.1: “substrate”
`
`Claim | recites “a substrate comprising a receiving space of a
`
`predetermined shape formedtherein for a connecting unit configured to
`
`connect to a wireless powerreceiving circuit.” For this limitation, which
`
`Petitioner designates as limitation 1.1, Petitioner directs us to where Hong
`
`teachesthat “[t]he secondary coil unit 11 is formed at one surface of the
`
`main circuit board 20,” and that “[t]he end 11c of the coil layer 11a makes
`
`contact to the connecting terminal 13b through the wiring layer 27 formed
`
`in via holes 25a, 25b, and 25c, which are formed on innerlayers 23 of
`
`the main circuit board 20.” Pet. 29 (quoting Ex. 1005, 3:50—51, 5:19-22
`
`(emphases added by Petitioner)). Petitioner identifies “the upper portion of
`
`the main circuit board [20]” in Hong, specifically “the layers of Hong’s main
`
`circuit board [20] upon which and through whichthese elements are
`
`formed,” as a “substrate.” /d. at29—30 (citing Ex. 1005, 3:53—-64, 4:33-36,
`
`Fig. 4). To illustrate, Petitioner provides a cropped and annotated version of
`
`Figure 4 of Hong, whichis reproduced below.
`
`/d. at 30.
`
`a7
`
`250
`
`asp \ grnnnnnnnnnnnns 77RssgrggegogeeREERRRRRR
`
`,
`
`NH te 97
`
`Petitioner’s version of Figure 4 of Hong1s 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 further identifies Hong’s rectifying unit 13 and wiring
`
`layer 27 together as a “connecting unit.” Pet. 30-32. As support, Petitioner
`
`13
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`
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`IPR2022-00350
`Patent 9,806,565 B2
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`provides another cropped and annotated version of Figure 4 of Hong,
`
`reproduced below.
`
`/d. at31.
`
` Y
`
`x\
`
`\
`
`fa.
`
`H@ tte yb BS
`
`i i.e aK bop Se
`
`
`
`This version of Figure 4 ofHong1s a sectionalside view of contactless
`
`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
`
`4:12—19, 5:46. 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. To support its position,
`
`Petitioner directs us to where Hong teachesthat “the wiring layer 27[is]
`
`formed in via holes 25a, 25b, and 25c, which are formed on inner layers 23
`
`of the main circuit board 20,” where the wiring layer 27 correspondsto the
`
`recited connecting unit. Ex. 1005, 5:19—22 (quoted by Pet. 32). Petitioner
`
`further points to Hong’s teaching that “[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 receiving
`
`space in the main circuit board is a designed space of a predetermined shape
`
`that extends through the layers from the end 11c of the coil layer 11a to the
`
`connecting terminal 13b ofthe rectifying unit,” (Pet. 33).
`
`Petitioner additionally provides a cropped and annotated version of
`
`Figure 3 of Hong, which is reproduced below. Pet. 31.
`
`14
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`
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`Figure 3 of Hong, as provided by Petitioner, showscontactless charging
`
`apparatus 10 mounted on main circuit board 20. See Ex. 1005, 2:44-47. As
`
`shownin the annotatedfigure, Petitioner identifies Hong’s charging unit 15
`
`as a “wireless powerreceiving circuit.” Pet. 30. Hong teachesthat “the
`
`rectifying unit 13 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. See Ex. 1005, 4:59-62
`
`(cited by Pet. 30).
`
`Patent OwnerdisputesPetitioner’s analysis for limitation 1.1. See
`
`PO Resp. 19-31. We address the parties’ dispute in further detail below.
`
`ii. Limitations 1.2,1.6, and 1.7: “coilunit”
`
`Claim 1 further recites “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 as limitation 1.2. Pet. 34.
`
`Claim 1 requires that “the first connection terminalis located at one end of
`
`the coil and the second connection terminalis located at the other end of the
`
`coil.” Petitioner designates this limitation as limitation 1.6.
`
`/d. at 40.
`
`15
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`Additionally, claim 1 requires that “the coil unit overlaps the recetving space
`
`in a first direction perpendicular to an upper surface of the substrate.”
`
`Petitioner designates this limitation as limitation 1.7.
`
`/d. at41. We discuss
`
`these limitations in turn.
`
`With respect to limitation 1.2 (whichrecites “a coil unit disposed on
`
`the substrate, the coil unit comprising a first connection terminal, a second
`
`connection terminal, and a coil’), Petitioner identifies Hong’s secondary
`
`coil 11 as a “coil unit.” Pet. 34. As support, Petitioner directs us to where
`
`Hongteachesthat “a secondary coil 11 [is] formed on a main circuit
`
`board 20” and “includesa 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 ofthe rectifying unit 13,”
`
`and that “[a|nother end 11c, formedat a center of the coil layer 11a, is
`
`electrically connected to connecting terminal 13b ofthe rectifying unit 13.”
`
`Id. at 5:11-19, Fig. 4 (cited by Pet. 34-35). Petitioner identifies Hong’s coil
`
`layer 1laas 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.
`
` itiy
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`Patent 9,806,565 B2
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`Petitioner’s version of Figure 3 of Hong showscontactless charging
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`apparatus 10, which includes secondary coil 11, mounted on main circuit
`
`board 20. See Ex. 1005, 2:44-47, 4:16-19. Petitioner also provides an
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`annotated version of Figure 4 of Hong, reproduced below. Pet. 36.
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`1g
`
`a
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`
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`
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`This version of Figure 4 ofHong1s a sectionalside view of contactless
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`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
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`4:12—19, 5:4-6. Inthe annotatedfigures, Petitioner labels the componentsin
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`Hong correspondingto the recited first connection terminal, the recited
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`second connection terminal, and the recited coil. Pet. 35-36.
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`With respect to limitation 1.6 (whichrecites “the first connection
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`terminalis located at one end of the coil and the second connection terminal
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`is located at the other end of the coil’), Petitioner cross-referencesits
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`analysis for limitation 1.2. Pet. 40. Petitioner directs us again to Hong’s
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`teaching of “an outermost end 11b of the coil layer 11a” and “[a]nother
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`end 11c, formed at a centerof the coil layer 11a.” Ex. 1005, 5:11-19,
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`Figs. 3, 4 (cited by Pet. 40-41). Petitioner characterizes end 11c as an
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`17
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`IPR2022-00350
`Patent 9,806,565 B2
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`“inner” end. Pet. 40. We note that end 11b faces away from main circuit
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`board 20, whereas end 11c faces toward main circuit board 20. See
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`Ex. 1005, Figs. 3,4. As discussed above, Hong’s end 11b correspondsto
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`the recited first connection terminal, and Hong’s end 11c correspondsto the
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`recited second connection terminal.
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`With respect to limitation 1.7 (whichrecites “the coil unit overlaps the
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`receiving spacein a first direction perpendicular to an upper surface of the
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`substrate’’), Petitioner provides anotherversion of Figure 4 of Hong, which
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`is reproduced below. Pet. 42.
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`
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`
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`Figure 4 of Hong, as cropped and annotated by Petitioner,is a sectional side
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`view of contactless charging apparatus 10 mounted on main circuit board 20.
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`See Ex. 1005, 4:12—-19, 5:4-6. Pointing to the annotationsin this version of
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`Figure 4, Petitioner contendsthat “Hong teachesandillustrates in Fig. 4 that
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`its coil layer 11a overlaps the receiving space (in which the wiring layeris
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`disposed) in a first direction perpendicular to an upper surface of the main
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`circuit board (substrate).” Pet. 41.
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`Based on Petitioner’s argument and evidence, we are persuadedthat
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`Hongteachesthe recited coil unit of limitations 1.2, 1.6,and 1.7. Patent
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`18
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`IPR2022-00350
`Patent 9,806,565 B2
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`Ownerdoesnot dispute Petitioner’s analysis for any of these limitations.
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`See generally PO Resp.
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`iii. Limitation 1.3: “short-range communication antenna”
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`Claim 1 further recites “a short-range communication antenna
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`disposed on the substrate and surroundingthe coil.” For this limitation,
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`whichPetitioner designatesas limitation 1.3, Petitioner relies additionally on
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`Park. Pet. 36—38. Specifically, Petitioner directs us to where Park describes
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`a portable terminal implementing “both a wireless charging function and an
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`NFC function” with “[a] first coil 133 as a secondary coil used for wireless
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`charging and [a] second coil 135 as an antenna element for NFC.” Ex. 1006,
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`4:60—65 (quoted by Pet. 37). Park teachesthat “the first and second
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`coils 133 and 135 are accommodatedin the first and second accommodation
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`grooves 141 and 142 [of shielding member131], respectively, and the
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`second coil 135 surroundsthe first coil 133.” /d. at 3:61—64, Figs. 3, 4 (cited
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`by Pet. 37).
`
`Petitioner contendsthat an ordinarily skilled artisan “would have been
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`motivated to combine the teachings of Park with those of Hong.” Pet. 22—
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`23; see also id. at22—27. As support, Petitioner asserts that Hong’s
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`“contactless power apparatus may be implemented tn the context of a
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`portable terminal,” (Pet. 23 (citing Ex. 1005, Fig. 1)), and points to Park’s
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`teaching that, “[a]s portable terminals have become a daily commodity, they
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`are equipped with the NFC function,” (Ex. 1006, 1:29—33 (cited by Pet. 23)).
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`Park further teachesthat “a portable terminal is provided with an additional
`
`antenna for performing the NFC function.” Ex. 1006, 1:31—33 (quoted by
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`Pet. 23). Inlight of these teachings, Petitioner asserts that, “as a baseline,it
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`19
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`IPR2022-00350
`Patent 9,806,565 B2
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`waswell known and obviousfor a portable terminal, such as Hong’s, to
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`include an NFC antenna coil as well as a wireless charging coil.” Pet. 23.
`
`Petitionerrelies on the declaration testimony of Dr. Phinney.
`
`/d. (citing
`
`Ex. 1003 4§ 49-51).
`
`Petitioner adds that an ordinarily skilled artisan “would have been
`
`specifically motivated to implement Hong’s device with an NFC coil
`
`because as of the earliest alleged priority date of the 565 patent, NFC was a
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`standardized data transmission protocol with a multitude of commercial
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`applications and advantagesoverother short-range wireless communication
`
`protocols.” Pet. 24. Petitioner states that “NFC technology provides an
`
`advantage of fast communication setup between communication devices,”
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`(id. (quoting Ex. 1006, 1:33—36)), and “the intuitive operation of NFC
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`protocol systems makesthe technology particularly easy for consumersto
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`use,” (id. (quoting Ex. 1010, 4:2—5)). Accordingto Petitioner, combining
`
`the teachings of Hong and Park “would allow Hong’s mobile device to be
`
`easily used for transactions in a variety of commercial applications.” /d.
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`Petitionerrelies on the declaration testimony of Dr. Phinney.
`
`/d. (citing
`
`Ex. 1003 ¢ 52).
`
`Based on Petitioner’s argument and evidence, we are persuadedthat
`
`Petitioner’s proposed combination of Hongand Park teachesthe recited
`
`short-range communication antennaoflimitation 1.3. We also are
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`persuadedthat Petitioner’s proffered reasoning for modifying Hong’s device
`
`to include Park’s NFC antennacoil 1s sufficient to support the legal
`
`conclusion of obviousness. See Inre Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006) (“[T ]here must be somearticulated reasoning with somerational
`
`underpinning to support the legal conclusion of obviousness.”’).
`
`20
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`IPR2022-00350
`Patent 9,806,565 B2
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`Patent Ownerdoesnot dispute Petitioner’s analysis for this limitation.
`
`See generally PO Resp.
`
`iv. Limitations 1.4 and 1.5: “coil”
`
`As discussed above,Petitioner identifies Hong’s coil layer 1 1laas the
`
`recited coil. Pet. 34. Claim 1 requires that “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.
`
`/d. at 38. Claim 1 additionally requiresthat “the conductive
`
`pattern comprises a conductive line woundat least two times and conductive
`
`pattern has a spiral shape.” Petitioner designatesthis limitation as
`
`limitation 1.5.
`
`/d. at39. We discuss these limitations in turn.
`
`With respectto limitation 1.4 (whichrecites “the coil is configured
`
`to wirelessly recetve power, wherein the coil is formed as a conductive
`
`pattern on or within the substrate’”’), Petitioner directs us to where Hong
`
`teachesthat its “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
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`powertransmitter 510.” /d. at 5:44—47(cited by Pet. 38).
`
`Petitioner also directs us to where Hongteachesthatits “secondary
`
`coil unit 11 is formed at one surface of the main circuit board 20,” and the
`
`“coil layer [1s] spirally formed in a circular form ona plane.” Ex. 1005,
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`3:50—52 (cited by Pet. 38). Petitioner points to Hong’s further teaching that
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`“a material of the secondary coil unit 11 on the main circuit board 20 may be
`
`21
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`IPR2022-00350
`Patent 9,806,565 B2
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`the sameas that of a conductive wiring and may be a conductive material to
`
`generate an induced electromotive force.” /d. at 4:28—32 (cited by Pet. 38).
`
`With respect to limitation 1.5 (whichrecites “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
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`layer 11a is shapedlike a spiral and made of a conductive material. Pet. 39
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`(citing Ex. 1005, 3:50—52, 4:27—32). Petitioner further relies on Figure 3 of
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`Hong, which, accordingto Petitioner, showscoil layer 11a woundatleast
`
`two times.
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`/d.
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`To illustrate, Petitioner provides a cropped and annotated
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`version of Figure 3 of Hong, reproduced below.
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`/d.
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`
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`Petitioner’s version of Figure 3 of Hong showscontactless charging
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`apparatus 10, which includes secondary coil 11, mounted on main circuit
`
`board 20. See Ex. 1005, 2:44—47, 4:16-19. Coil layer 11a 1s shown with
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`orange shading.
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`Based on Petitioner’s argument and evidence, we are persuadedthat
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`Hongteachesthe recited coil of limitations 1.4 and 1.5. Patent Owner does
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`not dispute Petitioner’s analysis for either limitation. See generally
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`PO Resp.
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`22
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`IPR2022-00350
`Patent 9,806,565 B2
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`v. Limitations 1.8, 1.9, and 1.10: “connecting unit”
`
`As discussed above,Petitioner identifies Hong’s rectifying unit 13 and
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`wiring layer 27 together as a “connecting unit.” Pet. 30. Claim 1 requires
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`that “the connecting unit is disposed in the receiving space and connectedto
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`the coil unit.” Petitioner designates this limitation as limitation 1.8.
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`/d. at
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`42. Claim 1 further requires that “the connecting unit overlaps the receiving
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`space in a second direction parallel to the upper surface ofthe substrate.”
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`Petitioner designates this limitation as limitation 1.9.
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`/d. at43. Lastly,
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`claim 1 requires that “the connecting unit comprises| | a third connection
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`terminal connectedto the first connection terminal of the coil unit[] anda
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`fourth connection terminal connected to the second connection terminal of
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`the coil unit.” Petitioner designates this limitation as limitation 1.10.
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`/d. at
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`44. Wediscuss these limitations in turn.
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`With respectto limitation 1.8 (whichrecites “the connecting unitis
`
`disposed in the receiving space and connectedto the coil unit’), Petitioner
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`provides a cropped and annotated version of Figure 4 of Hong, reproduced
`
`below. Pet. 43.
`
`
`
`Petitioner’s version of Figure 4 of Hong1sa 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 teaches and
`
`23
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`
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`IPR2022-00350
`Patent 9,806,565 B2
`
`illustrates 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
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`spaces within layers 21a and 23) and connectedto the inner end of 11c of
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`coil layer [1la].” Pet. 42.
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`With respectto limitation 1.9 (whichrecites “the connecting unit
`
`overlaps the receiving space in a second direction parallel to the upper
`
`surface of the substrate’’), Petitioner provides anotherversion of Figure 4 of
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`Hong, reproduced below. Pet. 44.
`
`
`
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`216 a
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`B18ee
`
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`23°
`
`_ Halse pp
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`oF Pe ‘
`aan VB
`18
`
` i
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`This version of Figure 4 ofHong1s a sectionalside view of contactless
`
`charging apparatus 10 mounted on main circuit board 20. See Ex. 1005,
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`4:12—19, 5:46. Petitioner contendsthat “Hongillustrates in Fig. 4... that
`
`wiring layer 27 of the connecting unit overlaps the receiving space ina
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`second direction parallel to the upper surface of the main circuit board
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`(substrate) in two different ways.” Pet. 43. As to the first way, Petitioner
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`asserts that “the wiring layer is disposed within the recerving space—1.e., the
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`wiring layer occupies the same space as the receiving space and thus
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`overlaps the receiving space in every direction, including the second
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`direction parallel to the upper surface of the main circuit board.” /d. Asto
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`the second way,Petitionerasserts that “the portion of the wiring layer in via
`
`24
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