NuCurrent, Inc.

Patent Trials and Appeals Board

Nov 30, 2020

PGR2019-00049 (P.T.A.B. Nov. 30, 2020)

Trials@uspto.gov Paper 28
571.272.7822 Date: November 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

NUCURRENT, INC.,
Patent Owner.
____________

PGR2019-00049
Patent 10,063,100 B2
____________

Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
WESLEY B. DERRICK, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 328(a)

PGR2019-00049
Patent 10,063,100 B2
2
I. INTRODUCTION
This is a Final Written Decision in a post-grant review of claims 1–9,
12–20, and 22–25 of U.S. Patent No. 10,063,100 B2 (Ex. 1001, “the ’100
patent”). We have jurisdiction under 35 U.S.C. § 6, and enter this Decision
pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.3. For the reasons set
forth below, we determine that Samsung Electronics Co., Ltd. (“Petitioner”)
has shown, by a preponderance of the evidence, that the challenged claims
are unpatentable. See 35 U.S.C. § 326(e) (2018).
A. Procedural History
Petitioner filed a Petition requesting post-grant review of claims 1–9,
12–20, and 22–25 of the ’100 patent. Paper 2 (“Pet.”). NuCurrent, Inc.,
(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6. On
December 4, 2019, pursuant to 35 U.S.C. § 324(a), we instituted trial to
determine whether the challenged claims are unpatentable on the grounds
raised in the Petition. Paper 7 (“Dec.”). Patent Owner filed a Patent
Owner’s Response on February 27, 2020. Paper 11 (“PO Resp.”).
Petitioner filed a Reply to the Patent Owner’s Response on June 18, 2020.
Paper 15 (“Pet. Reply”). Patent Owner filed a Sur-Reply on July 30, 2020.
Paper 20 (“PO Sur-Reply”). Petitioner filed a Motion to Strike portions of
Patent Owner’s Sur-Reply. Paper 22. Patent Owner filed an Opposition to
Petitioner’s Motion to Strike. Paper 23.
On September 3, 2020, the parties presented arguments at an oral
hearing. The transcript of the oral hearing has been entered in the record.
Paper 27 (“Tr.”).

PGR2019-00049
Patent 10,063,100 B2
3
B. Real Parties in Interest
Petitioner identifies its real parties in interest as Samsung Electronics
Co., Ltd. and Samsung Electronics America, Inc. Pet. 1. Patent Owner
identifies itself, NuCurrent, Inc., as the real party in interest. Paper 5, 1.
C. Related Matters
Petitioner states that “[t]he specification of the ’100 patent is identical
to the specification of U.S. Patent No. 9,941,729 (‘the ’729 patent’).” 1
Pet. 1. The parties provide notice that Patent Owner has asserted the ’729
patent in NuCurrent, Inc. v. Samsung Elecs. Co., No. 1:19-cv-00798-DLC
(S.D.N.Y.). Id.; Paper 5, 1.
We instituted an additional post-grant review of claims of the ’100
patent based on a separate petition filed by Petitioner in PGR2019-00050
(challenging claims based upon written description and indefiniteness). The
Board also instituted a post-grant review of claims of the ’729 patent in
IPR2019-01217.
D. The ’100 Patent
1. Eligibility for Post-Grant Review
Post-grant review is available only for patents “described in section
3(n)(1)” of the Leahy-Smith America Invents Act (“AIA”), Pub L. No.
112-29, 125 Stat. 284 (2011). AIA § 6(f)(2)(A) (2011). Those are patents
that issue from applications “that contain[] or contained at any time . . . a
claim to a claimed invention that has an effective filing date in section
100(i) of title 35, United States Code, that is on or after” “the expiration of
the 18-month period beginning on the date of the enactment of” the AIA.

1 The parties note that the ’100 patent and ’729 patent are not in the same
family. Pet. 1; Paper 5, 1.
PGR2019-00049
Patent 10,063,100 B2
4
See AIA § 3(n)(1). The AIA was enacted on September 16, 2011,
therefore, post-grant review is available only for patents that, at any point,
contained at least one claim with an effective filing date, as defined by
35 U.S.C. § 100(i), on or after March 16, 2013. That requirement is met
as the filing date for the ’100 patent is August 7, 2015, and the patent does
not claim benefit to an earlier filing date. See Ex. 1001.
The AIA also requires the petition for post-grant review to be filed
within nine months of the issue date of the challenged patent. 35 U.S.C.
§ 321(c) (2018). The ’100 patent issued on August 28, 2018. Ex. 1001,
code (45). The Petition has been accorded a filing date of May 28, 2019,
Paper 3, 1, which is within the nine-month window. Thus, Petitioner has
timely filed the Petition.
Accordingly, we determine that the ’100 patent is eligible for
post-grant review.
2. Patent Disclosure
The ’100 patent is directed to “an antenna that facilitates the wireless
transmission of data and electrical energy at multiple operating frequency
bands.” Ex. 1001, 1:11–13. According to the Specification:
[T]he antenna of the present disclosure is of a single structure
design that enables coupled magnetic resonance. Coupled
magnetic resonance is an alternative technology that when
appropriately designed, can provide for increased wireless power
transfer and communication efficiencies and is less dependent of
physical orientation and positioning requirements of prior art
antennas. As a result, the antenna of the present disclosure
provides for improved wireless transfer efficiency and a better
user experience.
Id. at 8:59–67.
PGR2019-00049
Patent 10,063,100 B2
5
Figures 3 and 3A of the ’100 patent are reproduced below:

Figure 3 “illustrates an embodiment of a three terminal single
structure multiple mode antenna of the present disclosure.” Ex. 1001,
7:61–62. Figure 3A illustrates an electrical schematic diagram of the
antenna 40 illustrated in Figure 3. Id. at 13:50–51.
“[T]he three terminal antenna 40 comprises a first outer coil 42 that is
electrically connected in a series to a second interior coil 44.” Id. at
12:63–65. The Specification explains,
The antenna 40 as shown in FIG. 3 comprises three terminals, a
first terminal 46, a second terminal 48, and a third terminal 50,
each having three respective terminal connections 52, 54, and 56.
Each of the three terminals is electrically connected at different
terminal connection points of the antenna 40. As shown, the first
terminal 46 extends from a first end 50 of a first trace 60 of the
first outer coil 42. The second terminal 48 extends from a first
end 62 of a second trace 64 of the second inductor 44. The third
terminal 50 extends from a second end 66 of the second trace 64
of the second coil 44. Thus, the three terminals 46, 48, and 50
provide different connection points between the first and second
inductor coils 42, 44 and portions thereof. Connecting the
various terminals in different combinations thus provides the
antenna 40 of the present disclosure with different adjustable
inductances which, in turn, modifies the operating frequency or
operating mode of the antenna 40.
PGR2019-00049
Patent 10,063,100 B2
6
Id. at 13:18–34. For example, electrically connecting the first terminal to
the second terminal allows the antenna to operate at a first operating
frequency, whereas electrically connecting the first terminal to the third
terminal allows the antenna to operate at a second operating frequency. Id.
at 13:35–38.
Figures 2 and 2A of the ’100 patent are reproduced below:

Figure 2 illustrates an additional example of a three terminal single structure
antenna 20 of the present disclosure. Id. at 11:45–46. Figure 2A is an
electrical schematic diagram of the antenna shown in Figure 2. Id. at
11:51–52. The first outer coil 24 is electrically connected in series to the
second interior coil 26. Id. at 11:7–48. Antenna 20 comprises three
terminals, 34, 35, and 36. Id. at 11:53–54. Antenna 20 may include an
electrical switch circuit 37 that “enables selection of a desired inductance
and operation frequency.” Id. at 11:64–12:2. The Specification explains,
[T]he switch circuit 37 is electrically connected in series between
the first and second coils, 24, 26. In a preferred embodiment, the
switch circuit 37 enables the selection of a connection between
the first and second coils 24, 26, or alternatively, a selection of
either of the first or second coils 24, 26 individually. The third
PGR2019-00049
Patent 10,063,100 B2
7
terminal 35 is electrically connected at point 33 which is an
electrical junction between the first and second coils 24, 26.
Id. at 12:10–17. Preferably, the electrical switch circuit 37 comprises at
least one capacitor C1 having a first capacitance, preferably electrically
connected along third terminal 35. Id. at 12:18–21. “Inclusion of the at least
one capacitor C1 enables the detection and analysis of the impedance of
either or both coils 24, 26 at an operating frequency.” Id. at 12:25–27.
E. Illustrative Claim
Petitioner challenges claims 1–9, 12–20, and 22–25. Claim 1, the
only independent claim, is illustrative and reads as follows:
1. An electrical system comprising:
a) an antenna, comprising:
i) a first conductive wire forming a first coil having N1
number of turns with spaced apart first and second, first
coil ends that are disposed on a substrate surface,
wherein the first coil configured to generate a first
inductance and a first resonant frequency, wherein a
first gap extends between adjacent turns within
the first coil;
ii) a second conductive wire forming a second coil having
N2 number of turns with spaced apart first and second,
second coil ends, configured to generate a second
inductance and a second resonant frequency, wherein
the first resonant frequency is different than the second
resonant frequency, the second coil positioned on the
substrate surface and one of within an inner perimeter
formed by an innermost turn of the first coil
and adjacent the first coil, wherein a second gap extends
between adjacent turns within the second coil;
iii) a third gap separating an outermost turn of the second
coil from the innermost turn of the first coil, wherein
the third gap is greater than the first and second gaps,
and wherein the first end of the second coil meets and
joins the second end of the first coil forming a continuous
junction therebetween; and
PGR2019-00049
Patent 10,063,100 B2
8
iv) a first terminal electrically connected to the first end
of the first coil, a second terminal electrically connected to
the second end of the second coil and a third terminal
electrically connected to either of the first or second coils;
b) a control circuit electrically connected to at least one of
the first, second and third antenna terminals, wherein
the control circuit is configured to control the operation
of the antenna;
c) wherein a tunable inductance is generatable by electrically
connecting two of the first, second, and third
terminals;
d) wherein the first resonant frequency of the first coil
differs from the second resonant frequency of the
second coil by at least 100 kHz; and
e) wherein at least one of the first coil and the second coil
operates at about 100 kHz to about 500 kHz.

Ex. 1001, 32:41–33:15.
F. Prior Art and Asserted Grounds
We instituted review of claims 1–9, 12–20, and 22–25 of the ’100
patent on the following ten asserted obviousness grounds:

2 Riehl, US 2014/0035383 A1, published Feb. 6, 2014 (“Riehl”) (Ex. 1005).
3 Riehl et al., Wireless Power Systems for Mobile Devices Supporting
Inductive and Resonant Operating Modes, 63(3) IEEE TRANSACTIONS ON
MICROWAVE THEORY AND TECHNIQUES 780–790 (2015) (“Riehl IEEE”)
(Ex. 1006).
4 Kanno, US 2011/0241437 A1, published Oct. 6, 2011 (“Kanno”)
(Ex. 1007).
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 5–9, 13–15, 17, 18,
20, 22
103(a) Riehl2

4, 15, 25 103(a) Riehl, Riehl IEEE3

12 103(a) Riehl, Kanno4
PGR2019-00049
Patent 10,063,100 B2
9
Pet. 3–4. Petitioner also relies on the Declarations of R. Jacob Baker, Ph.D.,
P.E. (Ex. 1002, Ex. 1015). Patent Owner relies on the Declaration of David
S. Ricketts (Ex. 2002).
II. ANALYSIS
A. Legal Standards
To prevail in its challenges to the patentability of claims of the ’100
patent, Petitioner must demonstrate by a preponderance of the evidence that
the claims are unpatentable. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). A
claim is unpatentable for obviousness if, to one of ordinary skill in the
pertinent art, “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” 35 U.S.C. § 103(a);

5 Sung et al., US 2012/0274148 A1, published Nov. 1, 2012 (“Sung”)
(Ex. 1008).
6 Kazuya, JP 2013/93429 A, published May 16, 2013 (Certified English
Translation) (“Kazuya”) (Ex. 1009).
7 Yu, KR 2013/0045307, published May 3, 2013 (Certified English
Translation) (“Yu”) (Ex. 1011).

16 103(a) Riehl, Sung5
23 103(a) Riehl, Kazuya6
1–3, 5–9, 13–15, 17–20,
22, 24
103(a) Riehl, Yu7
4, 15, 25 103(a) Riehl, Yu, Riehl IEEE
12 103(a) Riehl, Yu, Kanno
16 103(a) Riehl, Yu, Sung
23 103(a) Riehl, Yu, Kazuya
PGR2019-00049
Patent 10,063,100 B2
10
see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) if in the record, objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Consideration of the Graham factors “helps inform the ultimate obviousness
determination.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048
(Fed. Cir. 2016) (en banc).
B. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1323–1324 (Fed. Cir. 1999) (citing Graham,
383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed.
Cir. 1991)).
Petitioner describes a person having ordinary skill in the art as having
“a bachelor’s degree in electrical engineering or a similar field, and at least
two to three years of experience in integrated circuit design including power
electronics,” and that “[m]ore education can supplement practical experience
and vice versa.” Pet. 6–7 (citing Ex. 1002 ¶ 20).
In the Institution Decision, we preliminarily adopted Petitioner’s
definition of an ordinarily skilled artisan based upon a determination that it
was sufficiently supported by the record at that time. Dec. 8–9. In the
Patent Owner Response, Patent Owner provides a slightly different
definition, asserting that a person of ordinary skill in the art “would have had
a Bachelor’s degree in electrical engineering and at least two years of
PGR2019-00049
Patent 10,063,100 B2
11
experience in power conversion utilizing discrete components and inductor
design.” PO Resp. 15 (citing Ex. 2002 ¶ 34).
Our consideration of the issues presented in this case does not turn on
which proposed definition is applied. In any event, having considered the
evidence and arguments, we find Petitioner’s broader description of the level
of ordinary skill in the art to be supported by record as a whole.
Accordingly, we adopt Petitioner’s description of a person of ordinary skill
in the art, while maintaining that the prior art reflects the appropriate level of
skill at the time of the claimed invention. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001).
C. Claim Construction
In a post-grant review, we construe the claims “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. § 282(b).” See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.200(b) effective November 13, 2018) (now
codified at 37 C.F.R. § 42.200(b) (2019)). Therefore, we construe the
challenged claims under the framework set forth in Phillips v. AWH Corp.,
415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework,
claim terms are given their ordinary and customary meaning, as would be
understood by a person of ordinary skill in the art at the time of the
invention, in light of the language of the claims, the specification, and the
prosecution history of record. Id. Only those terms that are in controversy
need be construed, “and only to the extent necessary to resolve the
controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
PGR2019-00049
Patent 10,063,100 B2
12
Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
Petitioner asserts that “no express constructions of the claims are
necessary to assess whether the prior art reads on the challenged claims.”
Pet. 11. Patent Owner asserts that “[t]he challenged claims here carry their
plain and ordinary meaning to a person of ordinary skill in the art. No
further claim construction is required for purposes of this proceeding.” PO
Resp. 15–16. Based upon our review of the record as a whole, we determine
that no claim terms require express construction to resolve the controversy in
this proceeding.
D. Obviousness Based on Riehl
Petitioner asserts that claims 1, 2, 5–9, 13–15, 17, 18, 20, and 22
would have been obvious over the teachings of Riehl. Pet. 11–67. Patent
Owner disagrees. PO Resp. 16–20.
1. Riehl
Riehl relates to “the field of wireless power transfer, and in particular
to a dual-mode wireless power receiver.” Ex. 1005 ¶ 2. According to Riehl,
“[t]he dual-mode wireless power receiver can receive power from either an
inductive charger operating in the range of hundreds of kHz or a resonant
charger operating at a frequency in the MHz range.” Id. ¶ 16. Riehl states,
Essentially, the invention describes a receiver-side circuit
that can operate either in a low-frequency inductive charging
system such as Qi or a higher-frequency resonant wireless power
system. The invention allows for the use of complicated coil
arrangements and one or more passive component than a single-
mode receiver. Moreover, the dual–mode wireless power
receiver can have a low-frequency operating range of 110-205
kHz and a high operation frequency of 6.78 MHz, but the
invention can generally be used for any two frequency bands
separated by a factor of at least 5.
PGR2019-00049
Patent 10,063,100 B2
13
Id. ¶ 30.
Riehl Figures 3 and 5 are set forth below:

Figure 3 shows the circuit topology 14 of the dual-mode receiver.
Ex. 1005 ¶ 22. Figure 5 is a schematic diagram illustrating “a coil
arrangement 18 that can form two separate inductors in the same plane of a
printed circuit board, making it possible to save circuit area.” Id. ¶¶ 14, 28.
Specifically, Riehl explains, “the two inductors are arranged in a planar,
concentric fashion with the L3 inductor on the inside and the L2 inductor on
the outside,” wherein such arrangement may be reversed. Id. ¶ 28. Further,
Riehl explains that “[t]he connection points 1-3 illustrate the interconnection
points for the overall concentric arrangement 18.” Id.
2. Petitioner’s Contentions
In the Petition, Petitioner sets forth its reasoning and evidence to
support its assertion that Riehl teaches or suggests each element of claims 1,
2, 5–9, 13–15, 17, 18, 20, and 22. Pet. 11–67. In particular, we highlight
here Petitioner’s assertions relating to two limitations of independent claim 1
and additional limitations of dependent claim 8 that correspond to Patent
Owner’s contentions.
Independent claim 1 requires “a first terminal electrically connected to
the first end of the first coil, a second terminal electrically connected to the
PGR2019-00049
Patent 10,063,100 B2
14
second end of the second coil and a third terminal electrically connected to
either of the first or second coils.” Ex. 1001, 32:66–33:3. Petitioner asserts
that Riehl teaches this claim element by disclosing
forming coil L2 with connection point 3 on its outer end (“first
terminal electrically connected to the first end of the first coil”),
forming coil L3 with connection point 1 on its inner end (“second
terminal electrically connected to the second end of the second
coil”), and forming coils L2 and L3 such that both the first end
of coil L3 and the second end of coil L2 are connected at
connection point 2 (“a third terminal electrically connected to
either of the first or second coils.”).
Pet. 32 (citing Ex. 1005, Figs. 3 and 5, ¶ 28; Ex. 1002 ¶ 82). Petitioner
asserts that a person having ordinary skill in the art would have understood
that each terminal includes the connection point on the coil and “additional
conductive material that connects external circuitry to the connection point
on the coil.” Id. (citing Ex. 1002 ¶ 83; Ex. 1005, Fig 5). According to
Petitioner, “each of the connection points 1, 2, and 3 are part of a ‘terminal’
because they allow for connections between the coils and, for example, the
capacitors C2a, C2b, and C2q.” Id. at 33 (citing Ex. 1005, Fig 3) (emphasis
omitted).
Petitioner’s annotated Figures 3 and 5 of Riehl are set forth below:

PGR2019-00049
Patent 10,063,100 B2
15
Petitioner’s annotated versions of Figures 3 and 5 from Riehl include labels
identifying the asserted first (green), second (blue), and third (red) terminals
in Riehl’s dual-mode wireless power receiver. Pet. 33–34. Petitioner further
compares its annotated versions of Riehl’s figures with an annotated version
of Figure 2 from the ’100 patent, set forth below:

Petitioner’s annotated version of Figure 2 from the ’100 patent also includes
labels identifying what Petitioner asserts to be the first, second, and third
terminals of the disclosed antenna. Pet. 34–35. According to Petitioner, its
depiction of the terminals in Riehl’s Figures 3 and 5 are consistent with what
it depicts as the corresponding terminals in Figure 2 of the ’100 patent. Id.
at 34 (citing Ex. 1002, ¶¶ 85–86). In particular, Petitioner asserts that Figure
2 of the ’100 patent illustrates “the first end of coil 30 and the second end of
coil 26 a[s] connected to the third terminal 35.” Id.
Claim 1 also recites, “wherein a tunable inductance is generatable by
electrically connecting two of the first, second and third terminals.”
Ex. 1001, 33:8–10. Petitioner asserts that Riehl teaches this claim element
because “Riehl discloses either connecting the first and second terminals to
generate a high inductance or connecting the first and third terminals to
generate a low inductance . . . .” Pet. 40 (citing Ex. 1002 ¶ 93). In support
PGR2019-00049
Patent 10,063,100 B2
16
of that assertion, Petitioner begins by referring to a first side-by-side
modified version of its annotated Figures 3 and 5 of Riehl, set forth below.

Petitioner’s side-by-side modified version of its annotated Figures 3 and 5
shows: (a) Riehl’s Figure 5 on the right with labeling to identify what
Petitioner asserts are the first (green) and second (blue) terminals; and (b) an
excerpt of Riehl’s Figure 3 that Petitioner asserts is the receiver depicted as
it functions at low frequencies, and which is also labeled to identify what
Petitioner asserts are the first (green) and second (blue) terminals. Id. at 38.
Referring to those figures, Petitioner contends that Riehl discloses that “at
low frequencies, capacitor C2a acts as an open circuit, and current flows
between terminal 1 (‘the second terminal’) and terminal 3 (‘the first
terminal’) so that the total inductance for the receiver circuit is the sum of
the inductances of L2 and L3.” Id. (citing Ex. 1005 ¶¶ 22–24). Petitioner
asserts that, terminals 1 and 3 are, therefore, “‘electrically connected’ to the
receiver circuitry, which includes the capacitor network and the rectifier
circuitry that are shown in figure 3 of Riehl.” Id. According to Petitioner,
PGR2019-00049
Patent 10,063,100 B2
17
“the inductance seen by the rectifier circuit corresponds to connections to
first and second terminals, where at low frequencies that inductance is the
series inductance of L2 plus L3, which, in the example where L3 has an
inductance 10 times that of L2, is equal to 11 times L2.” Id. (citing Ex. 1005
¶ 24; Ex. 1002 ¶ 90).
Next, Petitioner refers to a second side-by-side modified version of its
annotated Figures 3 and 5 of Riehl, set forth below.

Petitioner’s second side-by-side modified version of its annotated Figures 3
and 5 shows: (a) Riehl’s Figure 5 on the right with labeling to identify what
Petitioner asserts are the first (green) and third (red) terminals; and (b) an
excerpt of Riehl’s Figure 3 that Petitioner asserts to represent the receiver at
high frequencies, and which is also labeled to identify what Petitioner asserts
are the first (green) and third (red) terminals. Id. at 39. Referring to those
figures, Petitioner asserts that Riehl discloses that “at high frequencies,
C2a’s capacitance is selected so that its impedance is much lower than
inductor L3’s, thereby shunting L3 so that current does not flow through
inductor L3.” Id. citing (Ex. 1005 ¶¶ 22-25). Petitioner contends, “[a]s a
result, at high frequencies current flows between terminal 2 (‘the third
PGR2019-00049
Patent 10,063,100 B2
18
terminal’) and terminal 3 (‘the first terminal’), and terminals 2 and 3 are
‘electrically connected’ by the receiver circuitry, which includes the
capacitor network and the rectifier circuitry.” Id. According to
Petitioner, “[i]n such a scenario, the inductance seen by the rectifier
circuit corresponds to connections to first and third terminals, which is a
low inductance value approximately equal to the inductance of inductor
L2.” Id. (citing Ex. 1002, ¶¶ 91–92).
Dependent claim 8, recites, in part, “The electrical system of claim
1, wherein the third terminal of the antenna is electrically connected to an
electrical switch circuit comprising at least one capacitor, wherein the
electrical switch circuit is electrically connected to the second end of the
first coil and the first end of the second coil . . . .” Ex. 1001, 33:42–47.
Petitioner asserts the Riehl’s capacitors C2a, C2b, and C2q provide such
an “electrical switch circuit.” Pet. 56. To support its position, Petitioner
refers to another modified version of its annotated Figure 3 of Riehl, set
forth below. Id. at 57.

PGR2019-00049
Patent 10,063,100 B2
19
Petitioner’s modified version of its annotated Figure 3 includes labeling to
show what Petitioner asserts to be the first (green), second (blue), and third
(red) terminals, the second end of the first coil L2 and first end of second
coil L3 (red), and the switch circuit (purple). Id. Petitioner asserts that the
modified version of its annotated Figure 3 shows that (a) the third terminal
of the antenna is connected to the switch circuit, (b) the switch circuit
comprises C2a, C2b, and C2q, i.e., “at least one capacitor,” and (c) the
switch circuit is connected to the inside end of coil L2 and the outside end of
coil L3, i.e., “connected to the second end of the first coil and the first end of
the second coil,” as required by claim 8. Id. at 56–57 (citing Ex. 1002
¶ 120).
Petitioner contends that the capacitors “select different inter-
connections between the terminals corresponding to the ends of the
inductors bases on the frequency of operation.” Id. at 57. For example,
Petitioner asserts that Riehl discloses that “C2a has a low impedance and
shunts L3 at high frequencies but has a high impedance such that it acts as
an open circuit a[t] low frequencies.” Id. at 57–58 (citing Ex. 1005 ¶¶ 22,
24, 25; Ex. 1002 ¶ 121). Therefore, according to Petitioner, “the
‘electrical switch circuit’ that includes C2a, C2b, and C2q ‘electrically
connects two of the three antenna terminal ends so that an antenna
operating frequency is modified,’ where ‘actuation of the electrical
switch’ corresponds to the capacitors moving between high- and low-
impedance states.” Id. at 57–58 (citing Ex. 1002 ¶ 122). Petitioner
asserts also that because “capacitors C2a, C2b, and C2q act to select the
manner in which inductors L2 and L3 are connected to the rectifier circuit
PGR2019-00049
Patent 10,063,100 B2
20
based on the operating frequency of the disclosed receiver circuit” they
constitute an “electrical switch circuit.” Id.
3. Patent Owner’s Contentions
In the Patent Owner Response, Patent Owner focuses its arguments on
one limitation of independent claim 1 and an additional limitation in
dependent claim 8.
Regarding independent claim 1, Patent Owner contends that Riehl
does not teach or suggests “a tunable inductance [that] is generatable by
electrically connecting two of the first, second, and third terminals,” as
recited by independent claim 1. PO Resp. 16. Patent Owner asserts that
Riehl does not describe a tunable circuit, but instead discloses a circuit
“configured to have specific frequency/impedance characteristics.” Id. at 17
(citing Ex. 2002 ¶¶ 41, 45). According to Patent Owner, “Riehl’s circuit
cannot be tuned to have different frequency/impedance characteristics
without physically changing component values (or adding components).”
Id.
Patent Owner asserts that, contrary to Petitioner’s position, Riehl’s
disclosure of switching between two fixed inductances does not meet the
claim requirement that the “tunable inductance is generatable by electrically
connecting two of the first, second, and third terminals.” Id. (emphasis
added by Patent Owner). According to Patent Owner the term “electrically
connecting” refers to the action of joining or fastening together and not
merely to components that are already “joined or linked together” or
“electrically connected.” Id. (citing Ex. 2002 ¶ 42; Ex. 2004,8 264). Patent
Owner notes that “[u]nlike the ‘tunable inductance’ element, which recites

8 Merriam-Webster’s Collegiate Dictionary, 11th ed. (2003).
PGR2019-00049
Patent 10,063,100 B2
21
the action of electrically connecting, other elements of claim 1 recite
components that are ‘electrically connected’ – past tense.” Id. (citing Ex.
1001, 32:66–33:3). Patent Owner asserts that the doctrine of claim
differentiation requires that those different phrases be interpreted differently
and that the Specification supports doing so. Id. at 18–20.
Thus, Patent Owner contends that Riehl’s circuit it not tunable by
electrically connecting various pairs of terminals because Riehl’s terminal
connections are always fixed. Id. at 20. According to Patent Owner, “Riehl
does not even provide access to a third terminal as would be necessary for
the claimed tunability.” Id. (citing Ex. 2002 ¶ 46). Patent Owner asserts
that “[w]ithout access to a third terminal, a [person of ordinary skill in the
art’s (POSITA)] only options for tuning Riehl’s circuit to an alternative
frequency would be to change the circuit topology or change the components
of Riehl’s circuit.” Id.
Regarding claim 8, Patent Owner asserts that Riehl does not teach or
suggest a switch circuit. Id. at 21. Patent Owner contends that the limitation
in claim 8 reciting “the electrical switch circuit is electrically connected to
the second end of the first coil and the first end of the second coil,” requires
the switch circuit to be “connected in series between the first and second
coils.” Id. (citing Ex. 2002 ¶ 50; Ex. 1001, 12:10–12). Patent Owner asserts
that Riehl’s capacitors are not connected in series between the first and
second coils, i.e., between L2 and L3, instead “Riehl’s capacitor C2a is
connected in parallel with only one of Riehl’s inductors (L3), and neither
C2b nor C2q is connected between Riehl’s inductors L2 and L3.” Id. at 22–
23 (citing Ex. 1005, Fig. 3).
PGR2019-00049
Patent 10,063,100 B2
22
4. Petitioner’s Reply
Regarding Patent Owner’s contentions relating to the tunable
inductance element of claim 1, Petitioner reiterates its position that “Riehl
discloses connecting two of the three terminals to change the inductance of
the claimed antenna in the identical manner as the ’100 patent.” Pet. Reply
1. Specifically, Petitioner asserts again that
at low frequencies, capacitor C2a in [Riehl’s] receiver acts as an
open circuit, and current flows between terminal 1 (“the second
terminal”) and terminal 3 (“the first terminal”) so that the
“effective inductance” is the sum of the inductances of L2 and
L3. . . . At high frequencies, capacitor C2a shunts inductor L3 so
that current does not flow through L3 (i.e., L3 is bypassed) and
the effective inductance of the receiver circuitry is the inductance
of coil L2.
Id. at 11 (citing Ex. 1005 ¶¶ 22–25; Pet. 39–41). Based on that circuitry
operation, Petitioner asserts that
in low frequency mode, terminals 1 and 3 are “electrically
connected” because the inductance between those two terminals,
i.e., inductance of coil L2 + inductance of coil L3, is the
inductance seen by the rectifier circuit connected to the coils. . . .
At high frequencies, terminals 2 and 3 are “electrically
connected” because the inductance between those two terminals,
i.e., the inductance of coil L2, is seen by the rectifier circuitry
connected to the coils. (Id., 39.) Being able to switch between the
higher amount of inductance (L2 + L3) and the lower amount of
inductance (L2) demonstrates that Riehl’s “dual-mode receiver”
has a “tunable inductance.” . . . And this “tunable inductance” is
generated by electrically connecting two of terminals 1, 2, and 3
to the rectifier circuitry.
Id. at 13 (citing Pet. 38). According to Petitioner, the ’100 patent describes
“electrically connecting” two terminals in a similar manner as Riehl, such
that “electrically connecting” two terminals involves producing the
inductance between those terminals. Id. 13–15 (citing Ex. 1015 ¶¶ 15–22).
PGR2019-00049
Patent 10,063,100 B2
23
For example, Petitioner refers to the ’100 patent description of electrically
connecting terminals 46 and 48 to produce a first inductance (of coil 44) and
electrically connecting terminals 48 and 50 to produce a third inductance (of
coils 42 and 44). Id. at 14–15 (citing Ex. 1001, 13:35–43).
As for Patent Owner’s assertion that Riehl does not provide access to
a third terminal, Petitioner reiterates its position that “Riehl discloses an
electrical switch circuit connected to the three terminals of its two-coil
antenna, where the switch circuit provides the claimed tunability.” Id. at 23
(citing Pet. 38–42, 47–55, 56–58).
Regarding Patent Owner’s contention relating to claim 8, Petitioner
asserts in its Reply that claim 8 does not recite that the switch circuit is
connected “in series between the first and second coils.” Id. at 3. Petitioner
asserts that Patent Owner’s argument is based upon an attempt to import
such a limitation from the Specification into the claim. Id. According to
Petitioner, “[a] POSITA would have understood that in order for a switch
circuit to be connected to one end of each of the coils, it need not be
connected in series between the coils.” Id. (citing Ex. 1015 ¶¶ 4–5).
Further, Petitioner asserts that, in view of the recitation in claim 1 requiring
“the first end of the second coil meets and joins the second end of the first
coil forming a continuous junction therebetween,” the switch circuit recited
in dependent claim 8 “cannot be located in series between the second end of
the first coil and the first end of the second coil without preventing the first
and second coils from meeting and joining to form a continuous junction
therebetween as is required by claim 1.” Id. at 3–4 (citing Ex. 1015 ¶¶ 6–
13).
PGR2019-00049
Patent 10,063,100 B2
24
5. Patent Owner’s Sur-Reply
In its Sur-Reply, Patent Owner asserts that Petition relies on a
“hindsight-driven misinterpretation to map Riehl’s circuit onto the claims of
the ’100 patent.” PO Sur-Reply 3. In particular, Patent Owner asserts that
(a) the capacitors in Riehl that Petitioner refers to as a “switch circuit” are
explicitly described in Riehl as a “matching network,” which Patent Owner
asserts is not a switch circuit, and (b) the elements that Petitioner refers to as
“terminals” are explicitly described in Riehl as “interconnections points,”
which Patent Owner asserts are not terminals. Id. at 3–14.
Regarding the former point (a), Patent Owner notes that Riehl refers
to a matching network for its use of capacitors in Figure 3 and refers to the
capacitors in Figure 4 as “switched capacitors.” Id. at 6. Further, Patent
Owner refers to testimony by Dr. Baker and Dr. Ricketts that a switching
capacitor is not the same as a matching network. Id. (citing Ex. 2005,
46:15–17; Ex. 1016, 81:25–2:9).
Regarding the latter point (b), Patent Owner asserts that “Riehl’s
interconnection points 1, 2, and 3 are not ‘terminals’ because these
interconnection points are not physically available to external circuitry.” Id.
at 10–11 (citing Ex. 2005, 42:24–44:6, 36:1–42:20).9 According to Patent
Owner, those “interconnection points connect Riehl’s receiver coils (L2 and
L3) to the matching network (capacitors C2a, C2b, and C2q),” while the
actual terminals in Riehl are “the inputs from the matching network to the
bridge rectifier.” Id. at 11. Patent Owner asserts that only two such inputs

9 This argument by Patent Owner relating to “terminals” is the subject of
Petitioner’s Motion to Strike, discussed below in Section III. Petitioner’s
Motion to Strike is dismissed as moot because, even considering Patent
Owner’s argument, we find such argument unpersuasive.
PGR2019-00049
Patent 10,063,100 B2
25
exist, meaning that Riehl has only two terminals. Further, Patent Owner
asserts that with only two terminals, Riehl does not teach or suggest “tunable
inductance … generatable by electrically connecting two of the first, second,
and third terminals.” Id. at 12.
6. Analysis
a) Claim 1
Based upon our review and consideration of the arguments and
evidence, we find that Petitioner demonstrates persuasively that Riehl
teaches or suggests each element of independent claim 1. Specifically, we
find that Petitioner has shown by a preponderance of the evidence that Riehl
teaches an electrical system, i.e., a dual-mode wireless power receiver,
comprising an antenna, i.e., a receiver coil comprising two inductor coils,
having each of the elements recited for the antenna in claim 1. Pet. 11–44.
The parties’ dispute regarding Petitioner’s showing centers on whether Riehl
teaches or suggests “a tunable inductance is generatable by electrically
connecting two of the first, second, and third terminals,” and whether Riehl
even teaches a third terminal. Thus, we focus our discussion on those
disputed matters.
We begin with Patent Owner’s assertion that Riehl’s circuit cannot
exhibit a tunable inductance generatable by electrically connecting two of
the first, second, and third terminals because the circuit is “configured to
have specific frequency/impedance characteristics.” PO Resp. 17 (citing Ex.
2002 ¶¶ 41, 45). According to Patent Owner, “Riehl’s circuit cannot be
tuned to have different frequency/impedance characteristics without
physically changing component values (or adding components).” Id. We
disagree with Patent Owner. The claim requires the circuit to be able to
generate a tunable inductance. Patent Owner acknowledges that Riehl’s
PGR2019-00049
Patent 10,063,100 B2
26
Figure 3 operates between “two different modes with only one frequency per
mode and only two different inductances.” Id. at 11. Petitioner has shown
persuasively how Riehl’s circuit produces different inductances by changing
the frequency of operation. Pet. 38–42; Pet. Reply 20. Based upon our
review of Riehl, we credit Petitioner’s argument and Dr. Baker’s testimony
that “Riehl discloses either connecting the first and second terminals to
generate a high inductance or connecting the first and third terminals to
generate a low inductance.” Pet. 40; Ex. 1002 ¶ 93.
As persuasively shown in Petitioner’s first side-by-side modified
version of its annotated Figures 3 and 5, set forth above, Riehl discloses that
“at low frequencies, capacitor C2a acts as an open circuit, and current flows
between terminal 1 (‘the second terminal’) and terminal 3 (‘the first
terminal’) so that the total inductance for the receiver circuit is the sum of
the inductances of L2 and L3.” Id. at 38 (citing Ex. 1005 ¶¶ 22–24).
Similarly persuasive, Petitioner’s second side-by-side modified version of its
annotated Figures 3 and 5, also set forth above, shows how Riehl discloses
that “at high frequencies, C2a’s capacitance is selected so that its
impedance is much lower than inductor L3’s, thereby shunting L3 so that
current does not flow through inductor L3.” Id. at 39 citing (Ex. 1005 ¶¶
22-25). In other words, at high frequencies, L3 is bypassed and the effective
inductance of the receiver circuit is a low inductance value approximately
equal to the inductance of L2 alone. See Ex. 1002 ¶ 92.
Based on those modes of operation disclosed by Riehl, we agree with
Petitioner and Dr. Baker that at high frequencies, when C2a connects the
second and third terminals, shunting out L3, the circuit changes or tunes the
inductance of the coil structure to correspond to the lower inductance of L2
alone (as opposed to the sum of L2 and L3 seen at a low frequencies). See
PGR2019-00049
Patent 10,063,100 B2
27
id. ¶ 95; see Ex. 1001, 10:17–21 (describing “adjustment or tuning of the
inductance within the antenna”); see also id. at 12:66–13:7 (interchangeably
referring to the antenna’s ability to be “tuned” or “adjusted”). Thus, we find
that Riehl’s circuit exhibits a tunable inductance.
Further, contrary to Patent Owner’s contention, we find that Petitioner
has shown persuasively that Riehl’s tunable inductance is generatable by
electrically connecting two of the first, second, and third terminals. As
Petitioner and Dr. Baker have persuasively explained and demonstrated in
their first and second side-by-side modified versions of its annotated Figures
3 and 5, in low frequency mode, terminals 1 and 3 are electrically
connecting, and in high frequency mode, terminals 2 and 3 are electrically
connecting. See Pet. 38–40 (citing Ex. 1002 ¶¶ 90–93); Pet. Reply 13–15
(citing Ex. 1015 ¶¶ 25–22).
Insofar as Patent Owner argues or suggests that such inductances are
produced by Riehl’s terminals being electrically connected by the function at
different frequencies rather than by a process step of “electrically
connecting” the terminals, we find that argument lacks merit. As an
apparatus claim, the phrase “electrically connecting” refers to the properties
of the claimed structure and not a method step. That phrase does not serve
to structurally distinguish the claimed antenna over Riehl’s dual mode
receiver. Patent Owner bases its argument on an assertion that Riehl’s
terminal connections are always fixed and cannot dynamically adjust the
inductance by electrically connecting terminal pairs. As Petitioner correctly
notes, claim 1 does not recite or require “dynamically adjusting” the
inductance. Pet. Reply 22–23. Further, we find that Patent Owner has not
credibly explained how Riehl’s so-called “fixed” terminals are incapable of
electrically connecting two of the first, second, and third terminals.
PGR2019-00049
Patent 10,063,100 B2
28
On the other hand, Petitioner has shown persuasively, as discussed
above, that Riehl discloses producing different inductances by its function of
electrically connecting different terminals at different frequencies.
Petitioner has shown that the ’100 patent similarly describes electrically
connecting terminals to produce different inductances. See Ex. 1001, 13:17–
26 (explaining that by electrically connecting the first and second terminals
“a first inductance may be produced that is generally suitable for operation
at a first operating frequency,” while electrically connecting the first and
third terminals “produces a second inductance . . . suitable for operation at a
second operating frequency”); id. at 30:52–54 (explaining that “by
connecting two of the at least three terminals enables an operator to select a
desired . . . inductance that is exhibited by the antenna”). Similar to Riehl,
the ’100 patent explains also that these electrical connections can be made
via an electrical switch circuit comprising multiple capacitors. Ex. 1001,
12:4–13, Fig. 2A (electrical switch circuit 37, capacitors C1 and C2). Thus,
Petitioner has demonstrated persuasively how Riehl’s dual mode antenna
provides a structure that is capable (and indeed does) generate a tunable
inductance by electrically connecting two of the first, second, and third
terminals.
In the Sur-Reply, Patent Owner contends that Riehl fails to teach a
“tunable inductance” because the capacitors in Riehl that Petitioner refers to
as a “switch circuit” are instead described in Riehl as a “matching network.”
Sur-Reply 4–8. To begin, we note that claim 1 does not recite or require
either a matching network or a switch circuit. To the extent that Petitioner
relies on Riehl’s capacitors C2a, C2b, and C2q to demonstrate that Riehl is
capable of generating a tunable inductance, as required by claim 1, the
relevant inquiry is not how Riehl chooses to describe its network of
PGR2019-00049
Patent 10,063,100 B2
29
capacitors C2a, C2b, and C2q, but whether that capacitor network functions
in a manner that adjusts or tunes the inductance values of the coils when
different terminals are electrically connected one to another. As we have set
forth in the preceding discussion, the preponderance of the evidence
supports Petitioner’s position that those capacitors function precisely in that
manner.
As for Patent Owner’s assertion that Riehl does not teach or suggest
the tunable inductance limitation of claim 1 because Riehl does not provide
access to a third terminal, PO Resp. 20, we find that the preponderance of
the evidence supports Petitioner’s position that it does, see Pet. 32–34. In
the Petition, Petitioner refers to Riehl’s Figures 3 and 5 and its discussion in
paragraph 28 to support its assertion that Riehl describes three terminals, i.e.,
Riehl teaches or suggests (a) “a first terminal electrically connected to the
first end of the first coil” by disclosing forming coil L2 with connection
point 3 on its outer end, (b) “a second terminal electrically connected to the
second end of the second coil” by disclosing forming coil L3 with
connection point 1 on its inner end, and (c) “a third terminal electrically
connected to either of the first or second coils” by disclosing forming coils
L2 and L3 such that both the first end of coil L3 and the second end of coil
L2 are connected at connection point 2. Id. at 32 (citing Ex. 1005, Figs. 3
and 5, ¶ 28; Ex. 1002 ¶ 82).
Petitioner further supports its position with the testimony of Dr. Baker
that a person having ordinary skill in the art would have understood that
each terminal includes “not just the connection point on the coil, but
additional conductive material that connects external circuitry to the
connection point on the coil.” Ex. 1002 ¶ 83. Dr. Baker explains also that
“each of the connection points 1, 2, and 3 are part of a “terminal” because
PGR2019-00049
Patent 10,063,100 B2
30
they allow for connections between the coils and, for example, the capacitors
C2a, C2b, and C2q.” Id. ¶ 84. For example, Dr. Baker explains, in
reference to Riehl’s Figure 5, “the first terminal is coupled to C2b and the
rectifier circuit, the second terminal is connected to capacitors C2a and C2q,
and the third terminal is coupled to capacitor C2a.” Id.
We credit Dr. Baker’s testimony over the testimony of Dr. Rickett’s
relied upon by Patent Owner in support of its assertion that Riehl does not
provide access to a third terminal, as Dr. Baker supports his testimony by
referring to disclosures in Riehl, whereas Dr. Ricketts merely provides an
opinion without explaining or providing any evidentiary support for it. See
Ex. 2002 ¶ 46 (stating “In fact, Riehl does not even provide access to a third
terminal as would be necessary for the claimed tenability,” without
providing any facts to support that opinion). See 37 C.F.R. § 42.65(a)
(“Expert testimony that does not disclose the underlying facts or data on
which the opinion is based is entitled to little or no weight.”).
This result is unchanged by Patent Owner’s assertion in its Sur-Reply
that Riehl does not teach or suggest three terminals as required by claim 1.
PO Sur-Reply 8–12. According to Patent Owner, “Riehl’s terminals are
actually the inputs form the matching network to the bridge rectifier.” Id. at
11. To illustrate that point, Patent Owner refers to its annotated Figure 3 of
Riehl, set forth below.
PGR2019-00049
Patent 10,063,100 B2
31

Patent Owner’s annotated version Figure 3 of Riehl includes red
highlighting and a label to identify what Patent Owner asserts to be the
“Fixed (Input) Terminals” and includes a separate label to identify the
“Bridge Rectifier 4.” Id. at 12. Patent Owner asserts, “[b]ecause Riehl has
only two inputs into the bridge rectifier 4, Riehl has only two terminals—not
three terminals, as required by claim 1.” Id.
Having considered the arguments and the evidence, we find that
Patent Owner’s position that Riehl does not teach or suggest three terminals
lacks merit as it relies on an erroneous premise that Petitioner relies only on
Riehl’s connection points 1, 2, and 3 to meet the “terminal” limitations. In
the Petition, Petitioner expressly describes Riehl’s connection points as only
part of Riehl’s first, second, and third terminals. See Pet. 32 (Petitioner
stating that a person of ordinary skill in the art “would have understood that
the terminals . . . in [Riehl’s] figure 5 would include not just the connection
point on the coil, but additional conductive material that connects external
circuitry to the connection point on the coil” (citing Ex. 1002 ¶ 83)
(emphasis added)). Petitioner explains also that such “additional conductive
PGR2019-00049
Patent 10,063,100 B2
32
material” can take the form of a “terminal lead.” Id.; see also Ex. 1002 ¶ 83
(“additional conductive material [] connects external circuitry to the
connection point on the coil,” and that a “terminal lead” could make such a
connection from the coil to “the inputs to the rectifier circuit shown in figure
3 of Riehl”).
Indeed, to illustrate the three terminals in Riehl, Petitioner refers to its
annotated version of Riehl’s Figure 3, again set forth below.

Pet. 33. Petitioner’s annotated version of Riehl’s Figure 3 identifies a first
terminal (green), a second terminal (blue), and a third terminal (red). Each
identified “terminal” includes more than the connection point (circled)
alone. Rather, each identified terminal also includes an additional portion of
the circuity that extends from (and shares the same color as) the encircled
connection point. Petitioner refers to this annotated version of Riehl’s
Figure 3 when asserting that “each of the connection points 1, 2, and 3 are
part of a ‘terminal’ because they allow for connections between the coils
and, for example, the capacitors C2a, C2b, and C2q.” Id. (emphasis added).
Thus, it appears that Petitioner has identified in the annotated figure each
PGR2019-00049
Patent 10,063,100 B2
33
terminal as including a connection point and additional conductive material
extending therefrom.
This illustration is consistent with Petitioner’s argument and Dr.
Baker’s testimony regarding how the skilled artisan would have understood
Riehl’s Figure 3, i.e., that “each of the connection points 1, 2, and 3 are part
of a ‘terminal’.” Ex. 1002 ¶ 84; Pet. 33. Significantly, Petitioner’s
argument and Dr. Baker’s testimony that a “terminal” includes a connection
point and additional conductive material such as a terminal lead is also
consistent with the disclosure in the ʼ100 patent. Figure 9 of the ʼ100 patent
is set forth below.

Figure 9 of the ʼ100 patent depicts an embodiment of a two coil antenna and
illustrates three “electrical connection points 148, 150, 152.” Ex. 1001,
8:30–31, 28:13–16. The Specification describes creating terminals by
attaching the electrical connection points to “terminal leads 154, 156, 158.”
Id. at 28:25–28; see id. at 28:25–29 (explaining that “as shown” in Figure 9,
i.e., with the terminal leads attached, “the first electrical connection point
PGR2019-00049
Patent 10,063,100 B2
34
148 may serve as the first terminal 34, the third electrical connection point
152 may serve as the second terminal 36 and the second electrical
connection point 150 may serve as the third terminal 35” (emphasis added));
see also id. at 6:12–19 (disclosing how “[o]ne or more embodiments include
wherein each terminal has a terminal lead portion that extends between a
coil connection point and a terminal end, the coil connection point
electrically connected to” conductive wire).
Based on those disclosures in Riehl and the ’100 patent, we accord
persuasive weight to Dr. Baker’s testimony regarding the location and
composition of Riehl’s “terminals” (Ex. 1002 ¶¶ 82–86) as his testimony is
supported by the teachings of Riehl and the ʼ100 patent, and because his
rationale stands unrebutted by Patent Owner.
We also find unpersuasive Patent Owner argument that “Riehl’s
interconnection points 1, 2, and 3 are not ‘terminals’ because these
interconnection points are not physically available to external circuitry.” PO
Sur-Reply 10. Patent Owner asserts that Dr. Baker’s testimony supports that
position because he agreed that for a connection point to be considered a
terminal, it would have to be physically available to external circuitry. Id. at
10–11 (citing Ex. 2005, 42:21–44:6). Patent Owner, however, does not offer
any explanation regarding what “circuitry” the skilled artisan would have
understood to be “external.” See id. at 10–12.
Insofar as Patent Owner may be viewed as suggesting that, in Riehl’s
Figure 3, the “external circuitry” would only include bridge rectifier 4, such
an assertion is inadequately supported. See id. Rather, Dr. Baker’s
testimony suggests that Riehl’s capacitor network of C2a, C2b, and C2q
would also have been understood by a person of ordinary skill to be
“external circuitry.” Ex. 1002 ¶ 83 (Dr. Baker testifying that a terminal
PGR2019-00049
Patent 10,063,100 B2
35
includes a connection point and “additional conductive material that
connects external circuitry to the connection point on the coil” and
exemplifies a terminal as including a lead extending from the connection
point to “the ends of the capacitors and the inputs to the rectifier circuit
shown in figure 3 of Riehl”).
Thus, a preponderance of the evidence supports that the skilled artisan
would have understood such external circuitry to include not only Riehl’s
bridge rectifier 4 inputs as argued by Patent Owner, but also Riehl’s
capacitor network C2a, C2b, and C2q that is connected to coil 18 that forms
two inductors L2 and L3. Ex. 1005 ¶¶ 22–25, Fig. 3.
Accordingly, based on our consideration of the record as a whole, and
in the absence of any evidence of secondary considerations, we determine
that Petitioner has established by a preponderance of the evidence that claim
1 would have been obvious over Riehl.
b) Claim 8
Claim 8 recites,
The electrical system of claim 1, wherein the third terminal of
the antenna is electrically connected to an electrical switch
circuit comprising at least one capacitor, wherein the electrical
switch circuit is electrically connected to the second end of the
first coil and the first end of the second coil, and wherein
actuation of the electrical switch electrically connects two of the
three antenna terminal ends so that an antenna operating
frequency is modified.
Ex. 1001, 33:42–49. Based upon our review and consideration of the
arguments and evidence, we find that Petitioner demonstrates persuasively
that the additional limitations of claim 8 is also taught or suggested by Riehl
for the reasons set forth in the Petition. See Pet. 56–58. In particular,
Petitioner has demonstrated persuasively that the third terminal of Riehl’s
PGR2019-00049
Patent 10,063,100 B2
36
antenna depicted in Figure 3 is connected to a switch circuit, that switch
circuit comprises C2a, C2b, and C2q, i.e., “at least one capacitor,” and that
switch circuit is connected to the inside end of coil L2 and the outside end of
coil L3, i.e., “connected to the second end of the first coil and the first end of
the second coil,” as required by claim 8. Id. at 56–57 (citing Ex. 1002
¶ 120).
We are not persuaded otherwise by Patent Owner’s assertion that
Riehl’s capacitors are not connected “in series” between the first and second
coils, i.e., between L2 and L3. PO Resp. 22. According to Petitioner,
“Riehl’s capacitor C2a is connected in parallel with only one of Riehl’s
inductors (L3), and neither C2b nor C2q is connected between Riehl’s
inductors L2 and L3.” Pet. Reply 23 (citing Ex. 1005, Fig. 3). Claim 8,
however, does not require the capacitors to be connected “in series” between
the first and second coils. Rather, regarding that connection, the claim
recites only that “the electrical switch circuit is electrically connected to the
second end of the first coil and the first end of the second coil.” We agree
with Petitioner that Patent Owner’s reference to a description in the
Specification of the ’100 patent stating that “the switch circuit 37 is
electrically connected in series between the first and second coils 24, 26”
amounts to an attempt to import a limitation from the Specification into the
claim. See id. at 4 (citing PO Resp. 21–24 (quoting Ex. 1001, 12:10–12)).
Further, we accord Dr. Baker’s testimony that “a person of ordinary
skill in the art reading [claim 8] would have understood that in order for a
switch circuit to be connected to one end of each of the coils, it need not be
connected in series between the coils.” Ex. 1015 ¶ 4. Dr. Baker
demonstrates how a switch circuit may be connected to one end of each of
L1 and L2, but not in series between L1 and L2. Id. Dr. Baker also explains
PGR2019-00049
Patent 10,063,100 B2
37
how Riehl’s Figure 3 shows that the switch circuit is connected to inside an
end of coil L2 and the outside end of coil L3. Id. at ¶ 5. Additionally,
Dr. Baker explains persuasively how Dr. Rickett’s reading of claim 8 is
inconsistent with independent claim 1, from which claim 8 depends, which
recites, in part, that “the first end of the second coil meets and joins the
second end of the first coil forming a continuous junction therebetween.” Id.
at ¶ 6 (quoting Ex. 1001, 32:63–65 (emphasis added by Dr. Baker)). Dr.
Baker testifies, and we agree that “[t]he claimed switch circuit cannot be
located in series between the second end of the first coil and the first end of
the second coil without preventing the first and second coils from meeting
and joining to form a continuous junction therebetween as is required by
claim 1.” Id. Moreover, Patent Owner has not provided any argument or
evidence to rebut Dr. Baker’s testimony in that regard.
Thus, based on our consideration of the record as a whole, we
determine that Petitioner has established by a preponderance of the evidence
that claim 8 would have been obvious over Riehl.
c) Claims 2, 5–7, 9, 13–15, 17, 18, 20, and 22
Petitioner has also set forth its arguments and evidence to support its
assertion that Riehl teaches or suggests each element of dependent claims 2,
5–7, 9, 13–15, 17, 18, 20, and 22. Patent Owner does not raise separate
arguments contesting Petitioner’s position regarding those claims. Having
considered Petitioner’s evidence and arguments as to those dependent
claims, we determine that, based on our consideration of the record as a
whole, Petitioner has established by a preponderance of the evidence that
each of claims 2, 5–7, 9, 13–15, 17, 18, 20, and 22 also would have been
obvious over Riehl based on the reasons and evidence set forth in the
Petition. See Pet. 44–56, 58–67.
PGR2019-00049
Patent 10,063,100 B2
38
E. Obviousness Based on Combinations Including Riehl
Petitioner asserts that the remaining challenged dependent claims, i.e.,
claims 3, 4, 12, 16, 19, and 23–25, are unpatentable as obvious over Riehl in
combination with one or more additional references. Pet. 67–103.
Specifically, Petitioner asserts that claims 3, 19, and 24 would have been
obvious over Riehl in combination with Yu, claims 4 and 25 would have
been obvious over Riehl in combination with Riehl IEEE, claim 12 would
have been obvious over Riehl in combination with Kanno, claim 16 would
have been obvious over Riehl in combination with Sung, and claim 23
would have been obvious over Riehl in combination with Kazuya. Id.
We have reviewed those grounds involving Riehl in combination with
the cited prior art and have considered Petitioner’s arguments and evidence
supporting its challenge of the dependent claims. In particular, Petitioner
has identified where every limitation of the challenged dependent claims is
disclosed in the cited art and provides a persuasive explanation as to why
one having ordinary skill in the art would have combined the references to
arrive at the subject matter of each challenged claim. See id. Patent Owner
does not offer any separate arguments to address those claims.
Having considered the record as a whole, we determine that Petitioner
has established by a preponderance of the evidence that each of claims 3, 4,
12, 16, 19, and 23–25 would have been obvious over the combined art based
on the reasons discussed regarding independent claim 1, along with the
reasons and evidence set forth in the Petition for each of the challenged
dependent claims. See Pet. 67–103.
PGR2019-00049
Patent 10,063,100 B2
39
F. Remaining Alternative Obviousness Grounds
Petitioner presents alternative obviousness challenges to claims 1, 2,
4–9, 12–18, 20, 22, 23, and 25, in addition to those that we have decided
above, in Sections II.D and II.E. See Pet. 72–75, 86–91, 95–99, 102–103.
Because we have already concluded that Petitioner has shown by a
preponderance of the evidence that all of the challenged claims (claims 1–9,
12–20, and 22–25) of the ’100 patent are unpatentable, we need not address
the alternative obviousness challenges to this subset of the challenged
claims. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding
that a petitioner “is entitled to a final written decision addressing all of the
claims it has challenged”) (emphasis added).
III. MOTION TO STRIKE
With Board authorization, Petitioner filed a Motion to Strike section
II.A.2 of Patent Owner’s Sur-reply. Paper 22. Patent Owner filed an
Opposition to Petitioner’s motion. Paper 23. According to Petitioner, Patent
Owner presents new arguments in the Sur-reply challenging Petitioner’s
assertion regarding what components in Riehl’s circuit are “terminals,” as
recited by independent claim 1 of the ’100 patent. Paper 22, 1.
Although we share Petitioner’s concern regarding the timeliness of
Patent Owner’s arguments regarding Riehl’s terminals presented for the first
time in the Sur-Reply, see Tr. 3:17–4:14, we considered the arguments
raised by Patent Owner in the Sur-Reply and found them unpersuasive.
Therefore, we dismiss Petitioner’s Motion to Strike as moot.
PGR2019-00049
Patent 10,063,100 B2
40
IV. CONCLUSION10
For the foregoing reasons, we conclude Petitioner has demonstrated
by a preponderance of the evidence that claims 1–9, 12–20, and 22–25 of the
’100 patent are unpatentable. The results are summarized in the table
following the Order.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–9, 12–20, and 22–25 of U.S. Patent
10,063,100 B2 have been shown to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
any party to this proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2; and
FURTHER ORDERED that Petitioner’s Motion to Strike is dismissed
as moot.

10 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses one of those options, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
PGR2019-00049
Patent 10,063,100 B2
41
In summary:

11 As discussed in Section II.F above, we do not reach the alternate grounds
raised for claims 1, 2, 4–9, 12–18, 20, 22, 23, and 25, as we have determined
those claims are unpatentable based on grounds set forth in this table.
Claims

35
U.S.C.
§
Reference(s)
/Basis
Claims
Shown
Unpatentable11
Claims
Not shown
Unpatentable
1, 2, 5–9,
13–15,
17, 18,
20, 22
103(a) Riehl 1, 2, 5–9,
13–15, 17, 18,
20, 22

4, 15, 25 103(a) Riehl, Riehl IEEE 4, 25
12 103(a) Riehl, Kanno 12
16 103(a) Riehl, Sung 16
23 103(a) Riehl, Kazuya 23
1–3, 5–9,
13–15,
17–20,
22, 24
103(a) Riehl, Yu 3, 19, 24
4, 15, 25 103(a) Riehl, Yu, Riehl
IEEE

12 103(a) Riehl, Yu, Kanno
16 103(a) Riehl, Yu, Sung
23 103(a) Riehl, Yu,
Kazuya

Overall
Outcome
1–9, 12–20,
22–25

PGR2019-00049
Patent 10,063,100 B2
42
PETITIONER:
Naveen Modi
Joseph E. Palys
Paul Anderson
Chetan R. Bansal
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
paulanderson@paulhastings.com
chetanbansal@paulhastings.com

PATENT OWNER:
Jonathan Tuminaro
Michael B. Ray
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jtuminar-ptab@sternekessler.com
mray-ptab@sternekessler.com