PTAB

IPR2018-00286

Apple Inc v. MEC Resources LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Inductors with Minimized EMI Effect and Method of Manufacturing
  • Brief Description: The ’390 patent discloses an inductor comprising a standard magnetic core and an electrically conducting coil. The patent’s asserted novelty is embedding this conventional inductor within a magnetic resin layer via a compression-molding process to enhance inductance and provide shielding.

3. Grounds for Unpatentability

Petitioner asserted two primary sets of obviousness challenges under 35 U.S.C. §103, distinguished by the primary reference used to teach the base inductor.

Ground 1: Obviousness over Franco in view of Shafer (Claims 1, 3-4, 7, 9-11, 13-14, 17, 19-20)

  • Prior Art Relied Upon: Franco (“Electric Circuits Fundamentals,” a 1995 textbook) and Shafer (Patent 6,204,744).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Franco, a foundational textbook, discloses the conventional inductor recited in independent claims 1 and 11, namely a magnetic core (e.g., iron or ferrite) with an electrically conducting coil wound around it. Shafer was argued to supply the remaining key limitation: a method for embedding an inductor coil within a magnetic resin layer (comprising powdered iron and a polymer resin) using a "pressure molding process." Petitioner contended this combination teaches every element of the independent claims.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Franco's basic inductor with Shafer's encapsulation method to achieve several predictable benefits explicitly taught by Shafer. These motivations included: (1) providing physical "armor" and mechanical protection for the exposed coil in Franco; (2) providing magnetic shielding to reduce electromagnetic interference (EMI); (3) increasing inductance, allowing for a smaller device; (4) minimizing air spaces to improve performance; and (5) reducing manufacturing costs.
    • Expectation of Success: The combination was presented as the application of a known technique (Shafer’s compression molding) to a known device (Franco’s inductor) to yield predictable, beneficial results. Petitioner argued that any minor modifications to Shafer's mold size or shape to accommodate Franco's inductor would have been a routine design choice for a POSITA.

Ground 2: Obviousness over Amada in view of Shafer (Claims 1, 3-4, 7, 9-11, 13-14, 17, 19-20)

  • Prior Art Relied Upon: Amada (Patent 6,144,280) and Shafer (Patent 6,204,744).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Amada discloses a "chip inductor" that meets the base inductor limitations of the claims, teaching a magnetic bobbin core with a wound coil. Amada further teaches enclosing this inductor in a magnetic coating made of an epoxy resin containing ferrite or iron oxide powder. While Amada discloses the coated structure, it does not specify the manufacturing process. Petitioner argued that Shafer remedies this by teaching a well-known compression-molding process to apply such a magnetic resin layer.
    • Motivation to Combine: A POSITA would have been motivated to apply Shafer's compression-molding process to Amada's inductor for several reasons. First, Amada describes a desirable rectangular coating with flat surfaces, and Shafer’s molding process is a suitable and simple method to form such a shape. Second, Shafer teaches that compression molding minimizes performance-degrading air spaces, a direct solution to a known problem. Third, Shafer teaches using powdered iron, which is more permeable than Amada’s ferrite, to create inductors capable of handling higher currents—a simple substitution of one known magnetic material for another to improve performance in certain applications.
    • Expectation of Success: Petitioner argued that combining Amada's inductor with Shafer's established manufacturing process would predictably result in an operable and improved device. The combination was characterized as producing the exact structure Amada describes using the well-understood method Shafer provides.

  • Additional Grounds: Petitioner asserted eight additional obviousness challenges that build upon the two primary combinations. For both the Franco/Shafer and Amada/Shafer bases, Petitioner added tertiary references to teach the limitations of various dependent claims:

    • Rittner (Patent 6,600,403) was added to teach setting the inductance value by controlling the thickness of the magnetic resin layer (claims 2, 12).
    • Butherus (Patent 3,953,251) was added to teach forming the magnetic core itself from a compression-molded magnetic resin (claim 5).
    • Kaneko (Patent 5,010,313) was added to teach the use of an outer metal magnetic sheath for additional shielding and inductance control (claims 6, 16).
    • Ohkawa (EP Publication # EP0265839A2) was added to teach using a thermoplastic polymer (e.g., polypropylene) as the resin, a known alternative to the thermosetting resin in Shafer (claims 8, 18).

4. Relief Requested

  • Petitioner requests the Board institute an inter partes review of claims 1-14 and 16-20 of the ’390 patent and cancel those claims as unpatentable.