PTAB

IPR2022-01055

Samsung Electronics Co Ltd v. Scramoge Technology Ltd

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Petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Antenna for Wireless Charging and NFC Communication and Wireless Terminal to Which Same is Applied
  • Brief Description: The ’592 patent discloses a wireless antenna capable of simultaneously supporting wireless charging and near-field communication (NFC). The invention aims to reduce interference between the two functions by integrating a loop antenna for NFC inside a larger loop antenna for wireless charging.

3. Grounds for Unpatentability

Ground 1: Anticipation by Kim - Claims 1, 2, 5, 7-9, 12, and 14-16 are anticipated by Kim.

  • Prior Art Relied Upon: Kim (Korean Patent Application Publication No. KR10-2015-0010063).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kim discloses every limitation of the challenged claims. Kim describes an antenna structure for both non-contact charging and NFC that includes a "non-contact power receiving coil unit" (the claimed wireless charging coil) disposed between a "first loop antenna pattern" (the claimed first wireless communication coil) and a "second loop antenna pattern" (the claimed second wireless communication coil). Petitioner contended that Kim’s figures and description explicitly show the required nested arrangement, the coil connection member traversing the charging coil to interconnect the two communication coils, and the relative winding widths and counts recited in the dependent claims.

Ground 2: Obviousness over Kim in view of Kim ’681 - Claims 3, 10, and 17 are obvious over Kim in view of Kim ’681.

  • Prior Art Relied Upon: Kim (Korean Patent Application Publication No. KR10-2015-0010063) and Kim ’681 (Korean Patent No. 10-1185681).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring the number of windings of the wireless charging coil to be greater than the number of windings of the first wireless communication coil. While Kim discloses the base antenna structure, it does not explicitly state this winding relationship. Kim ’681, however, teaches a single-coil antenna where the entire coil (with more windings) is used for wireless charging, while only a portion (with fewer windings) is used for NFC.
    • Motivation to Combine: Petitioner asserted that Kim and Kim ’681 relate to the same field of dual-function antennas. A person of ordinary skill in the art (POSITA) implementing Kim’s design would look to references like Kim ’681 for guidance on optimizing performance. A POSITA would combine Kim's multi-coil structure with Kim ’681's teaching on winding ratios to ensure the antenna could effectively generate the required electromotive force for both charging and communication.
    • Expectation of Success: A POSITA would have understood that varying winding counts is a standard design parameter for tuning coils and would have had a high expectation of success in applying this known principle to Kim’s antenna.

Ground 3: Obviousness over Shostak in view of Kim - Claims 1-19 are obvious over Shostak in view of Kim.

  • Prior Art Relied Upon: Shostak (Patent 9,276,642) and Kim (Korean Patent Application Publication No. KR10-2015-0010063).
  • Core Argument for this Ground:
    • Prior Art Mapping: Shostak was presented as disclosing the primary antenna configuration of claim 1: a first (outer) communication coil, a second (inner) communication coil, and a wireless charging coil disposed between them. However, Shostak is silent on the relative widths of the windings for the two communication coils. Petitioner argued that Kim’s figures consistently disclose this missing feature, showing the windings of the outer communication coil to be wider than those of the inner communication coil.
    • Motivation to Combine: A POSITA starting with Shostak’s design would seek guidance from similar art, like Kim, to determine optimal design parameters such as winding widths. Petitioner argued this was a simple design choice with a finite number of predictable options (wider, narrower, or same). Kim’s disclosure would have directed a POSITA to select wider windings for the outer coil. This modification would be desirable to reduce resistance and improve the quality factor (Q) of the coil, which were well-known objectives in the art.
    • Expectation of Success: Given the similarities between the antenna structures in Shostak and Kim, a POSITA would expect that relative dimensions proven to work in Kim’s antenna would also function effectively in Shostak’s design. Adjusting winding widths was a routine task with predictable outcomes.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 4, 6, 11, 13, 18, and 19 based on Kim in view of Shostak, relying on similar design optimization theories to incorporate Shostak's teachings on specific winding counts and coil spacing into Kim's base design.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate.
    • §314(a) (Fintiv Factors): Petitioner asserted that the parallel district court case was in its infancy, with minimal investment by the parties and no overlap between the petition’s grounds and any invalidity contentions in the litigation. These factors, it was argued, weigh strongly in favor of institution.
    • §325(d): Petitioner argued that its grounds were not the same or substantially the same as those considered during prosecution. Although Shostak was cited by the examiner, it was presented in this petition in a new combination with Kim, which was never before the Office. Petitioner contended this new combination presents the art in a new light, warranting review.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-19 of the ’592 patent as unpatentable.