Samsung Electronics Co Ltd v. Scramoge Technology Ltd

1. Case Identification

• Case #: IPR2022-01056
• Patent #: 10,461,426
• Filed: May 24, 2022
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Scramoge Technology Ltd.
• Challenged Claims: 1-12, 17-29, 34-45, and 50-52

2. Patent Overview

• Title: Wireless antenna capable of simultaneously supporting wireless charging and near field communication
• Brief Description: The ’426 patent relates to a wireless antenna structure designed to support both wireless charging and near-field communication (NFC) simultaneously. The invention purports to reduce interference between the charging and NFC loop antennas that can otherwise degrade charging or communication efficiency.

3. Grounds for Unpatentability

Ground 1: Anticipation over Kim - Claims 1-5, 9-12, and 50 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 independent claim 1. Kim describes a dual-function antenna structure comprising a loop antenna unit for NFC and a non-contact power receiving coil unit for wireless charging. This structure includes a first (outer) loop antenna pattern and a second (inner) loop antenna pattern (the claimed "first and second wireless communication coils"), with the power receiving coil (the claimed "wireless charging coil") disposed between them. Petitioner further asserted that Kim's figures clearly show the relative dimensions, shapes, and winding counts required by the challenged dependent claims, such as the second communication coil having fewer, narrower windings than the first.

Ground 2: Obviousness over Kim in view of Shostak - Claims 6, 17-22, 25-29, 34-39, 42-45, 51, and 52 are obvious over Kim in view of Shostak

• Prior Art Relied Upon: Kim (Korean Patent Application Publication No. KR10-2015-0010063) and Shostak (Patent 9,276,642).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground primarily addressed claim limitations requiring a specific number of windings or relative spacing between coils. For claim 6, which requires the second wireless communication coil to have only one winding, Petitioner argued that while Kim discloses a two-winding inner coil, Shostak explicitly teaches a single-winding inner communication coil in an otherwise analogous antenna structure. For claim 17, which requires a greater minimum distance between the inner communication coil and the charging coil than between the outer communication coil and the charging coil, Petitioner asserted that Shostak discloses this exact spacing arrangement.
  • Motivation to Combine: A POSITA would combine Kim's general structure with Shostak's teachings for several reasons. Both references address the same problem of integrating NFC and wireless charging coils, and Shostak's use of a single-winding inner coil is explicitly to prevent a communication "dead zone" in the center of the antenna, a problem inherent in such designs. Regarding coil spacing, Petitioner argued a POSITA would understand that magnetic flux is more concentrated around coils with sharper curves (like the inner coil), necessitating greater separation to prevent interference, a principle reflected in Shostak's design.
  • Expectation of Success: Petitioner contended that modifying the number of windings or adjusting the spacing between coils are routine optimizations and predictable design choices for an antenna engineer. A POSITA would have had a high expectation of success in applying Shostak's specific winding count and spacing solutions to Kim's similar antenna to achieve the known benefits of improved performance and reduced interference.

Ground 3: Obviousness over Kim in view of Kim ’681 - Claims 7 and 8 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 focused on claims 7 and 8, which require the wireless charging coil to have a greater number of windings than the first and second communication coils, respectively. While the primary Kim reference shows specific winding counts, it does not explicitly teach this broader principle. Kim ’681, however, teaches a single-coil antenna where the entire coil (more windings) is used for wireless charging, while only a subset of the coil (fewer windings) is used for NFC.
  • Motivation to Combine: A POSITA seeking to optimize the dual-coil antenna of Kim would have looked to references in the same field, like Kim ’681, for guidance on antenna design. Kim ’681's teaching—that more windings are needed to generate the necessary electromotive force for charging compared to communication—provides a clear engineering rationale. A POSITA would have been motivated to apply this principle to Kim’s separate coils to ensure proper functioning for both operations.
  • Expectation of Success: Petitioner argued that applying the known principle of using different winding counts for charging versus communication functions was a straightforward design choice. A POSITA would have reasonably expected that implementing more windings in the charging coil than the communication coils in Kim's design would successfully ensure proper performance, as taught by Kim ’681.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using An (PCT Publication No. WO 2013/141658) to teach a connector on a flexible printed circuit board, as well as grounds that reversed the primary and secondary references (e.g., Shostak in view of Kim).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors, asserting that the parallel district court case was in its infancy with minimal investment by the parties. Petitioner noted that it had not yet served its invalidity contentions in the litigation, meaning there was no overlap with the IPR grounds.
• Petitioner also argued against denial under §325(d), contending that the arguments and evidence presented in the petition were not substantially the same as what was before the Examiner. Specifically, the primary reference, Kim, was not considered during prosecution. Furthermore, while references like Shostak and An were cited on an IDS, the Examiner did not have the benefit of Petitioner's detailed analysis or expert testimony on how to combine them to render the claims obvious.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12, 17-29, 34-45, and 50-52 of the ’426 patent as unpatentable.