PTAB

IPR2022-01058

Samsung Electronics Co Ltd v. Scramoge Technology Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Power Receiver and Control Method Thereof
  • Brief Description: The ’666 patent describes a wireless power receiver designed for minimized thickness by arranging a power receiving coil, a short-range communication antenna, and a shielding unit within a multi-layer printed circuit board.

3. Grounds for Unpatentability

Ground 1: Claims 1-19 and 26-28 are obvious over Lee-364 and Lee-149.

  • Prior Art Relied Upon: Lee-364 (Patent 9,461,364) and Lee-149 (Application # 2017/0237149).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lee-364, as the grandparent patent to the ’666 patent, discloses nearly all limitations of the challenged claims, including a wireless power receiver with a receiving coil, a short-range communication antenna, a shielding unit, and a multi-layer printed circuit board (PCB). However, Lee-364 places the receiving coil in a "reception space" (a hole) rather than embedding it within the board's layers. Lee-149 was asserted to remedy this deficiency by explicitly teaching the implementation of multiple antennas (coils) formed within the various layers of a multi-layer flexible PCB (FPCB), including the use of vias to interconnect conductive layers.
    • Motivation to Combine: A POSITA would combine the teachings of Lee-364 and Lee-149 to simplify the manufacturing process. Lee-364 aims to simplify manufacturing by integrating the shielding unit. A POSITA would have seen a similar benefit in integrating the wireless receiving coil into the PCB layers as taught by Lee-149, thereby avoiding the separate steps of manufacturing the coil and inserting it into a reception space. This creates a more streamlined and cost-effective manufacturing process.
    • Expectation of Success: Success was predictable because both references operate in the same field of portable electronics with multi-layer antenna structures. Lee-149 provides a known, viable method for embedding coils within a multi-layer PCB, making it straightforward to apply its teachings to the receiver structure of Lee-364.

Ground 2: Claims 20-25 are obvious over Lee-364, Lee-149, and Kato.

  • Prior Art Relied Upon: Lee-364 (Patent 9,461,364), Lee-149 (Application # 2017/0237149), and Kato (Application # 2008/0164840).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon Ground 1 to address claims 20-25, which require the wireless receiving coil and/or the short-range communication coil to comprise a "first" and "second" coil (i.e., multiple coil patterns connected together across different layers). While the Lee-364/Lee-149 combination teaches embedding coils in a multi-layer board, Petitioner argued it does not explicitly detail a multi-layer coil structure made of spirally-wound patterns on different substrates. Kato was introduced to supply this teaching, disclosing a multi-layer power transmission coil composed of multiple, stacked, spirally-wound conductor patterns that are electrically connected to function as a single coil.
    • Motivation to Combine: A POSITA would combine Kato with the base combination of Lee-364 and Lee-149 to achieve a functional multi-layer coil with reduced thickness. A POSITA would have known that constructing a multi-layer inductor by connecting multiple coil patterns achieves desired electrical performance while minimizing device thickness, a key goal in portable electronics. Kato provides a detailed, established method for creating such a structure.
    • Expectation of Success: There was a high expectation of success as all three references relate to wireless power for mobile devices. Implementing Kato’s multi-layer coil structure into the integrated PCB of the Lee-364/Lee-149 combination was presented as a predictable application of known design principles to yield a thinner, more efficient coil module.

Ground 3: Claims 1-18 and 20-27 are obvious over Kato and Jung.

  • Prior Art Relied Upon: Kato (Application # 2008/0164840) and Jung (Patent 8,624,546).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Kato discloses a wireless power receiver with a multi-layer board containing a wireless receiving coil and a shielding unit. However, Kato does not explicitly disclose a second, short-range communication coil. Jung was introduced to teach the inclusion of a second coil for short-range communication (e.g., for an "electronic settlement system") alongside a wireless power coil in a mobile phone. Jung further teaches arranging these two coils in the same plane, with one surrounding the other, to minimize device thickness.
    • Motivation to Combine: The motivation was to add desirable functionality to the device disclosed in Kato. Jung taught that the utility of portable devices was being enhanced by adding short-range communication capabilities (like NFC for payments) to devices with wireless charging. A POSITA would have been motivated to incorporate Jung’s communication coil into Kato’s wireless charging system to expand the device's capabilities in line with market trends, improve manufacturability, and reduce component count by placing both coils on the same PCB.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references are in the field of portable terminals and address the integration of antenna coils. The combination was portrayed as the predictable result of integrating two well-known functions into a single, compact device.

4. Key Technical Contentions (Beyond Claim Construction)

  • Loss of Priority Date: A central contention of the petition was that the ’666 patent is not entitled to its claimed priority date. Petitioner argued that the parent applications (’116 and ’390 applications) consistently and exclusively disclosed the wireless receiving coil as being disposed in a "reception space" (i.e., a hole or cutout) in the PCB. The key claim limitations requiring the coil to be "disposed in the board" and "between the plurality of layers" were allegedly added as new matter during the prosecution of the application that led to the ’666 patent. Therefore, Petitioner contended the patent’s effective filing date is August 10, 2017, which renders Lee-364 and Lee-149 available as prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that the factors weigh in favor of institution. The parallel district court case was described as being in its infancy, with minimal investment by the parties and the court. Petitioner noted its diligence in filing the petition shortly after receiving infringement contentions. Furthermore, it was argued that there was currently no overlap between the IPR grounds and invalidity contentions in the district court, as none had yet been served.

6. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-28 of the ’666 patent as unpatentable.