Apple Inc v. Scramoge Technology Ltd

1. Case Identification

• Case #: IPR2022-00350
• Patent #: Patent 9,806,565
• Filed: December 23, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Scramoge Technology Ltd.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Wireless Power Receiver and Portable Terminal Having the Same
• Brief Description: The ’565 patent relates to a wireless power receiver for portable devices using electromagnetic induction. The invention describes a specific spatial arrangement of components, including a substrate with a receiving space, a coil unit, a short-range communication antenna, and a connecting unit that overlaps the receiving space.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hong and Park - Claims 1-8 and 11-18 are obvious over Hong in view of Park.

• Prior Art Relied Upon: Hong (Patent 8,941,352) and Park (Patent 8,922,162).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hong teaches the core elements of a wireless power receiver as claimed, including a substrate (main circuit board), a coil unit with terminals, and a connecting unit (rectifier and wiring layer) disposed within a receiving space in the substrate. However, Hong does not explicitly disclose a short-range communication antenna surrounding the coil. Park was argued to supply this missing element, as it teaches combining a wireless charging coil with a surrounding Near Field Communication (NFC) antenna on the same plane within recessed grooves of a substrate to conserve space in a portable terminal. The combination of Hong’s receiver and Park’s surrounding antenna was alleged to render the independent claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Park’s teaching of an NFC antenna with Hong’s wireless charging device to add a common and commercially desirable feature to a portable terminal. Petitioner asserted that adding NFC capability was a well-known trend, and Park’s method of arranging the antenna concentrically around the charging coil provided known advantages, such as minimizing device thickness and mitigating interference, which were consistent with the general design goals of portable electronics like the one disclosed in Hong.
  • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved implementing a standardized, commercially available technology (NFC) for its intended and predictable function alongside a conventional wireless charging coil.

Ground 2: Obviousness over Hong, Park, and Hasegawa - Claims 9 and 19 are obvious over Hong in view of Park and Hasegawa.

• Prior Art Relied Upon: Hong (Patent 8,941,352), Park (Patent 8,922,162), and Hasegawa (Application # 2009/0021212).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Hong and Park combination from Ground 1 to address claims 9 and 19, which require the substrate to comprise “magnetic material.” Petitioner argued that while Hong and Park provide the primary receiver structure, Hasegawa teaches the benefit of adding a magnetic layer. Hasegawa discloses placing a "magnetic sheet" on the non-transmission side of a planar power-receiving coil. This addition was alleged to directly satisfy the “magnetic material” limitation.
  • Motivation to Combine: A POSITA seeking to improve the performance of the combined Hong/Park device would be motivated to incorporate Hasegawa’s magnetic sheet. Hasegawa explicitly teaches that using such a layer increases the inductance of the coil and helps dissipate heat, thereby improving power transfer efficiency and thermal management. These are known and desirable improvements for wireless charging systems in compact portable devices.
  • Expectation of Success: Success would have been expected, as implementing a magnetic layer beneath a charging coil was a known technique for improving efficiency, and its application to the Hong/Park combination would yield predictable results.

Ground 3: Obviousness over Hong, Park, and Sung - Claims 10 and 20 are obvious over Hong in view of Park and Sung.

• Prior Art Relied Upon: Hong (Patent 8,941,352), Park (Patent 8,922,162), and Sung (Application # 2012/0274148).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also builds on the Hong and Park combination but adds the teachings of Sung to address claims 10 and 20, which require the substrate to be “flexible.” Petitioner asserted that Sung discloses implementing wireless charging components, including a power-receiving coil, on a flexible substrate such as a flexible printed circuit board (FPCB). Modifying the substrate of the Hong/Park device to be flexible, as taught by Sung, would meet this limitation.
  • Motivation to Combine: A POSITA would combine Sung’s teachings to improve the manufacturability and integration of the Hong/Park device. Sung explains that using a flexible substrate allows the power receiver to be significantly slimmer, enables attachment to curved surfaces, and can reduce manufacturing costs and complexity. These are strong, well-understood motivations in the design of modern portable electronics.
  • Expectation of Success: A POSITA would have reasonably expected success, as implementing circuits on flexible substrates was a well-established practice in the electrical arts. The combination simply applies this known substrate technology to a conventional wireless charging and NFC module to gain predictable benefits in form factor and cost.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Against denial under Fintiv, Petitioner asserted that the co-pending district court litigation was in a very early stage, with no trial date set, minimal investment by the parties, and speculative overlap of issues, all of which weighed heavily in favor of institution.
• Against denial under 35 U.S.C. §325(d), Petitioner argued that the challenge was not based on cumulative art. The prior art references asserted in the petition were never considered by the Examiner during prosecution and teach the specific limitations—a surrounding short-range antenna and an overlapping connecting unit—that were added via amendment to secure allowance of the claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’565 patent as unpatentable.