NuCurrent, Inc.Download PDFPatent Trials and Appeals BoardNov 30, 2020PGR2019-00049 (P.T.A.B. Nov. 30, 2020) Copy Citation 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 Copy with citationCopy as parenthetical citation