PTAB
IPR2022-00385
Samsung Electronics Co Ltd v. Scramoge Technology Ltd
Key Events
Petition
Table of Contents
petition
1. Case Identification
- Case #: IPR2022-00385
- Patent #: 9,843,215
- Filed: December 31, 2021
- Petitioner(s): Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Google LLC
- Patent Owner(s): Scramoge Technology Ltd.
- Challenged Claims: 1, 4, 5, 8-13, and 17-22
2. Patent Overview
- Title: Wireless Charging and Communication Board, and Wireless Charging and Communication Device
- Brief Description: The ’215 patent describes a board for wireless power conversion (WPC) and near-field communication (NFC). The board structure includes a plurality of soft magnetic layers and a coil pattern, which are positioned between first and second polymeric material layers that extend beyond the magnetic layers and are connected to each other.
3. Grounds for Unpatentability
Ground 1: Anticipation by Sakuma - Claims 1, 8, 9, 11, 13, 17, 19, and 21 are anticipated by Sakuma.
- Prior Art Relied Upon: Sakuma (Application # 2010/0007215).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Sakuma, which discloses a contactless power transmission system for a hand-held device, teaches every element of the challenged independent claims. Sakuma’s soft magnetic member 31, comprising multiple soft magnetic pieces 311, was alleged to be the claimed "plurality of soft magnetic layers." The polyester insulation films 32 that hermetically seal the magnetic member were mapped to the first and second "polymeric material layers" arranged on opposing surfaces of the magnetic layers. Petitioner asserted that these films extend beyond the magnetic member and connect to each other, meeting further limitations. Sakuma’s receiver coil 33 was identified as the claimed "coil pattern," and its disclosure of Sendust, a crystalline alloy, met the material requirement for the magnetic layers.
Ground 2: Obviousness over Sakuma in view of Suzuki - Claims 1, 8-11, 13, 17, and 19-21 are obvious over Sakuma in view of Suzuki.
- Prior Art Relied Upon: Sakuma (Application # 2010/0007215) and Suzuki (Patent 9,515,513).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Sakuma discloses the fundamental structure of the wireless charging board, as detailed in Ground 1. Suzuki was introduced to teach the "communication" aspect of the preamble and the limitations of dependent claims 10 and 20, which require both a wireless charging antenna and a near-field communication antenna. Suzuki discloses a "combo coil module" for mobile devices that combines an NFC antenna coil with a wireless power receiving coil, both situated over a magnetic sheet. Petitioner argued that modifying Sakuma's device to include Suzuki’s NFC coil surrounding Sakuma's receiver coil would result in the claimed invention.
- Motivation to Combine: A POSITA would combine Sakuma with Suzuki to add well-known NFC functionality to a wireless charging device. Sakuma’s system is intended for IC tags, a common application for NFC. Adding this capability would provide secure, short-range communication for applications like wireless payments, a known benefit at the time.
- Expectation of Success: A POSITA would have a reasonable expectation of success because both references describe similar components for portable devices. Combining routine wireless charging technology with standard NFC technology was a predictable and well-understood design choice.
Ground 3: Anticipation by Hiroki - Claims 1, 4, 5, 8, 9, 11-13, 17-19, 21, and 22 are anticipated by Hiroki.
Prior Art Relied Upon: Hiroki (Certified Translation of Japanese Patent Publication No. 2008294347).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Hiroki, which describes a magnetic sheet for non-contact IC cards, anticipates all challenged claims, particularly if the claims are interpreted to encompass a stacked arrangement of magnetic layers. Hiroki’s magnetic sheet 10, comprising a first magnetic layer 12 and a second magnetic layer 13, was argued to meet the "plurality of soft magnetic layers." The first and second coating materials (15, 16), made of polyethylene or polyamide, were mapped to the "polymeric material layers." These layers cover and extend beyond the magnetic layers and are fused together. The antennas on Hiroki’s non-contact IC cards were identified as the "coil pattern." Hiroki also explicitly discloses using an adhesive layer to bond the coating materials, anticipating claims 5, 12, 18, and 22.
Additional Grounds: Petitioner asserted additional obviousness challenges based on Sakuma in view of Hiroki (adding teachings on adhesive layers and specific polymers); Sakuma in view of Suzuki and Hiroki (a combination of the foregoing); and Hiroki in view of Akiho (to further support that an IC card antenna comprises a "coil pattern").
4. Key Claim Construction Positions
- "arranged on" / "provided on": For dependent claims 9 and 19, Petitioner argued that the phrase "second soft magnetic layer is arranged [provided] on the first soft magnetic layer" must be interpreted in light of the parent independent claims. Because the independent claims require single polymeric layers to cover opposing surfaces of the entire plurality of magnetic layers, Petitioner contended this is only possible if the magnetic layers are arranged side-by-side, not stacked. The claim language thus requires a side-by-side arrangement.
5. Arguments Regarding Discretionary Denial
- Discretionary Denial under Fintiv: Petitioner argued against discretionary denial, asserting that the parallel district court litigation is in a very early stage. Petitioner noted that fact discovery had just begun, no trial date was set in one matter, and the trial date in the other was scheduled for approximately four months before the statutory deadline for a Final Written Decision (FWD) and was subject to change. Petitioner also argued that the merits of the petition are exceptionally strong, weighing against denial.
- Discretionary Denial under General Plastics: Petitioner argued that this is not a serial petition because it is the Petitioner's first challenge against the ’215 patent. It further contended that a separate IPR filed by Apple Inc. does not make this a serial petition, as the grounds asserted are different and this petition challenges claim 4, which is not at issue in the Apple IPR but is asserted against Petitioner in district court.
6. Relief Requested
- Petitioner requests institution of an inter partes review and cancellation of claims 1, 4, 5, 8-13, and 17-22 of the ’215 patent as unpatentable.
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