NuCurrent, Inc.

Patent Trials and Appeals Board

Nov 30, 2020

PGR2019-00050 (P.T.A.B. Nov. 30, 2020)

Trials@uspto.gov Paper 26
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.
____________

PGR2019-00050
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)

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I. INTRODUCTION
This is a Final Written Decision in a post-grant review of claims 1–25
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 1–25.
Paper 2 (“Pet.”). NuCurrent, Inc., (“Patent Owner”) did not file a
Preliminary Response to the Petition. 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 8
(“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. Patent Owner filed a Sur-Reply on
July 30, 2020. Paper 20 (“PO Sur-Reply”).
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 25 (“Tr.”).
B. Real Parties in Interest
Petitioner identifies its real parties in interest as Samsung Electronics
Co., Ltd. and Samsung Electronics America, Inc. Pet. 3. Patent Owner
identifies itself, NuCurrent, Inc., as the real party in interest. Paper 5, 1.
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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. 3. The parties provide notice that Patent Owner has asserted the ’729
patent in NuCurrent, Inc. v. Samsung Electronics 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 PGR2019-00049
(challenging claims based upon obviousness). 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.
See AIA § 3(n)(1). The AIA was enacted on September 16, 2011,
therefore, post-grant review is available only for patents that, at one 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

1 The parties note that the ’100 patent and ’729 patent are not in the same
family. Pet. 3; Paper 5, 1.
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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.
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Figure 3 of the ’100 patent is 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. The
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.
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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 13:35–41.
E. Illustrative Claim
Petitioner challenges claims 1–25. 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
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;
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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. The Asserted Grounds
Petitioner challenges the patentability of claims 1–25 of the ’100
patent on the following grounds:
Pet. 5. 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 satisfy the written description requirement under 35 U.S.C.
§ 112(a), the specification must “reasonably convey[] to those skilled in the
art that the inventor had possession” of the claimed invention as of the filing
date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1–25 § 112(a) Written Description

1–25 § 112(b) Indefiniteness

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2010) (en banc). Although the Specification need not recite the claimed
invention in haec verba, it must do more than simply render the claimed
invention obvious. Id. at 1352. “One shows that one is ‘in possession’ of
the invention by describing the invention, with all its claimed limitations, . . .
by such descriptive means . . . that fully set forth the claimed invention.”
Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(citation omitted). However, when evaluating the adequacy of the
disclosure, we may consider “the existing knowledge in the particular field,
the extent and content of the prior art, the maturity of the science or
technology, [and] the predictability of the aspect at issue.” Capon v. Eshhar,
418 F.3d 1349, 1359 (Fed. Cir. 2005), cited with approval in Ariad, 598
F.3d at 1352.
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 a patentability analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
F.2d 714, 718 (Fed. Cir. 1991)) (addressing the analysis of obviousness).
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. 5 (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. 7. In the Patent
Owner Response, Patent Owner provides a slightly different definition,
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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
experience in power conversion utilizing discrete components and inductor
design.” PO Resp. 4 (citing Ex. 2002 ¶ 31).
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
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controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 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 “for purposes of this proceeding, no term
requires construction.” Pet. 31. Patent Owner asserts that “[t]he challenged
claims should carry their plain and ordinary meaning to a person of ordinary
skill in the art and that no further claim construction is required for purposes
of this proceeding.” PO Resp. 4–5. 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. Written Description
Petitioner asserts that claims 1–25 are unpatentable under 35 U.S.C.
§ 112(a) for failing to satisfy the written description requirement. Pet. 31–
58. Patent Owner disagrees. PO Resp. 5–22.
1. Petitioner’s Contentions
Petitioner asserts that a number of limitations in independent claim 1
are not adequately supported by the Specification, rendering that claim and
dependent claims 2–25 unpatentable. Pet. 32. Further, Petitioner asserts that
certain dependent claims include additional limitations that lack written
description support. Id. at 33. Here, we focus on Petitioner’s contentions
relating to the limitation in claim 1 reciting the relative position of the coils,
as we determine that issue is dispositive.
The antenna of claim 1 comprises a first conductive wire forming a
first coil and a second conductive wire forming a second coil. Ex. 1001,
32:43–51. Claim 1 recites, in part, “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.” Id. at 32:55–58.
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Petitioner notes that the terms “one of” and “and adjacent the first coil,” in
the quoted language above, were added just prior to allowance. Pet. 33.
Petitioner asserts that prior to that amendment, “the claim was limited to a
coil configuration in which one coil was inside the inner perimeter of the
other,” i.e., the second coil was inside the inner perimeter of the first coil.
Id. According to Petitioner, the amendment “broadened the scope of the
claim such that it encompasses a coil arrangement where the two coils can
be side-by-side, i.e., one coil need not be within the inner perimeter of the
other coil.” Id.2 Petitioner contends, however, that the original application
filed (the ’157 application),3 including the original claims, provides no
written description support for the broadened claim including that alternative
side-by-side coil arrangement. Id. at 36.
Specifically, Petitioner asserts that the ’157 application does not
disclose two coils that are arranged side-by-side. Pet. 38. Rather, Petitioner
asserts, every figure in the ’157 application that illustrates a two-coil antenna
“shows an inner coil that lies within the innermost turn of an outer coil.” Id.
at 37 (citing Ex. 1004, 1356, 1358, 1360–61, 1363 (Figs. 2, 3, 3B, 3C, and
3E)). Further, Petitioner asserts that a person having ordinary skill in the art
would have understood that “in the original application in the context of the
positioning of the two coils the word ‘adjacent’ is only used in describing
the gap 120 between the outermost turn of the inner coil and the innermost
turn of the ‘adjacent’ outer coil.” Id. at 39 (citing Ex. 1002 ¶ 35; Ex. 1004,
1322–1323). Petitioner states, “[i]n other words, each time ‘adjacent’ is

2 Petitioner alleges that the amendment was made “to cover products (such
as Samsung’s) in which two coils are placed side-by-side (not one inside the
other).” Pet. 34.
3 Singh, US 2015/14821157, filed Aug. 7, 2015 (“the ’157 application”).
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used to describe the coils, it is in the specific context of an inner coil that lies
within the innermost turn of an outer coil.” Id. (citing Ex. 1002 ¶¶ 35–38).
In support of that position, Petitioner draws our attention to two
instances where the original application describes the position of gap 120.
Id. First, Petitioner notes that the original application describes “a gap 120
of space disposed between adjacent first and second inductor coils such as
the first and second inductor coils 76, 78 and/or the third and fourth inductor
coils 90, 92.” Id. at 39–40 (quoting Ex. 1004, 1322–1323; citing Ex. 1004,
Fig. 3B (depicting coil 78 within coil 76) and Fig. 3C (depicting coil 92
within coil 90)). Second, Petitioner notes that the original application also
describes “a gap of space 120 posit[ion]ed between adjacently positioned
inductor coils such as the first and second inductor coils 24, 26. This gap
120 preferably reduces the proximity effect between adjacently positioned
inner and outer coils, such as 76, 78 (FIG. 3B) and 90, 92 (FIG. 3C).” Id. at
41 (quoting Ex. 1004, 1324; citing Figs. 2, 3B, and 3C (each depicting one
coil within another); Ex. 1001 ¶¶ 97, 101) (emphasis omitted). Petitioner
asserts that, in each of those instances, the referenced figures illustrate a gap
between two coils situated one within the other, as set forth below in
Petitioner’s annotated versions of Figures 3B and 3C in the original
application:
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Figures 3B and 3C illustrate embodiments of a first (Fig. 3B) and second
(Fig. 3C) layer of a multi-layer single structure multiple mode antenna of the
present disclosure. Ex. 1001, 7:65–8:3. Petitioner’s annotations label Coil
76, Coil 78, Coil 90, Coil 92, and Gap 120 between the inner and outer coils.
Pet. 40 (citing Ex. 1002 ¶ 36; Ex. 1004, 1360–61).
Petitioner asserts its position is also supported by Patent Owner’s
description of its antenna during prosecution of the ’157 application as
having a second coil being positioned inside of a first coil. Id. at 41–42
(citing Ex. 1004, 225, 227-228, 373, 399, 478, 482, 483). As one of its
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examples, Petitioner refers to Patent Owner’s statement during prosecution
that its antenna “is constructed having a second coil with a first gap between
adjacent turns of the second coil positioned within an inner perimeter formed
by an inner most turn of the first coil having a second gap between adjacent
turns of the first coil . . . .” Id. at 42 (citing Ex. 1004, 373–374).
Additionally, Petitioner asserts that the recitation of a “third gap” in
claim 1 further demonstrates that the inventor was not in possession of a
side-by-side coil arrangement. Id. at 44. Specifically, Petitioner refers to
the limitation in claim 1 reciting “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.” Id. (quoting Ex. 1001, 32:60–
62). According to Petitioner, “[s]uch a gap only makes sense if two coils are
arranged such that one coil is within the inner perimeter of the other.” Id.
(citing Ex. 1002 ¶ 39). Petitioner asserts that the original application
describes the third gap only in the context of an inner and outer coil
arrangement and not in any side-by-side coil arrangement. Id. at 45 (citing
Ex. 1004, 1324–1326).
2. Patent Owner’s Contentions
Patent Owner agrees with Petitioner that “claim 1 recites two options
for the spatial relationship between the first coil and the second coil,”
wherein the first option positions the second coil within an inner perimeter
formed by an innermost turn of the first coil, and the second option positions
the second coil “adjacent” to the first coil. PO Resp. 7 (citing Ex. 2002
¶ 35). Patent Owner contends, however, that “[t]he ’100 patent provides
support for both.” Id. To support that contention, Patent Owner directs us to
the use of the term “adjacent” in the “Summary” section of the ’100 patent,
set forth below:
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[B]y dynamically adjusting the electrical connections within the
antenna of the present disclosure, the separation distance
between adjacent antennas that facilitates data or electrical
power transfer can also be adjusted to meet specific application
requirements.
Id. at 8 (quoting Ex. 1004, 1293, ¶ 20) (emphasis added by Patent Owner).
Patent Owner notes that “[t]his disclosure broadly refers to ‘adjacent
antennas’ and these antennas are not limited to one coil being within the
inner perimeter of the other.” Id. (citing Ex. 2002 ¶ 37). According to
Patent Owner, that disclosure in “[t]he summary of the ’100 patent explicitly
discloses a non-limiting description of adjacent coils that pertains to the
invention as a whole.” Id. at 11 (citing Ex. 2002 ¶ 38).
Regarding Petitioner’s assertion that the “third gap” limitation in
claim 1 only makes sense if the two coils of the antenna are arranged such
that one is within the inner perimeter of the other, Pet. 44, Patent Owner
disagrees, PO Resp. 12. Patent Owner refers to the Specification description
of “a gap 120 of space disposed between adjacent first and second inductor
coils such as the first and second inductor coils 76, 78 and/or the third and
fourth inductor coils 90, 92,” Ex. 1001, 19:61–64, and asserts that the first
portion of the quote refers to a gap between adjacent coils, whereas the
second portion of the quote “uses the phrase ‘such as’ to identify the
concentric coils shown in the figures as merely an example,” PO Resp. 12
(citing Ex. 2002 ¶ 43). Based on that rationale, Patent Owner asserts that “a
[person of ordinary skill in the art (POSITA)] would have understood that
the disclosure of the third gap is not limited to concentric coil
embodiment[s].” Id. at 13 (citing Ex. 2002 ¶ 43).
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3. Discussion
Having reviewed the arguments and the evidence, we determine that,
based on the record as a whole, Petitioner has demonstrated by a
preponderance of the evidence that independent claim 1, and dependent
claims 2–25, are unpatentable for lack of written description. Specifically,
Petitioner has shown persuasively that the ’157 application supports only
one of the two alternatives covered by the recitation in claim 1 regarding the
positioning of the second coil of the antenna. There is no dispute that the
limitation in claim 1 reciting “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,” Ex. 1001, 32:55–58, provides two
distinct options for the position of the second coil on the substrate surface:
(1) where the second coil is positioned “within an inner perimeter formed by
an innermost turn of the first coil,” and (2) where the second coil is instead
positioned in a side-by-side manner with the first coil.
As Petitioner correctly asserts, and Patent Owner does not dispute, the
original application depicts only the first option in each of the figures
illustrating an antenna comprising two coils. See, e.g., Ex. 1004, Figs. 2, 3,
3B, 3C at 1356, 1358, 1360, 1361(each depicting the two coils of an
antenna wherein one coil is positioned within the inner perimeter of the
other). Our analysis, however, does not end there. We next consider the
disclosures in the Specification that Patent Owner asserts show that the
inventors were in possession of a single structure antenna with two coils
arranged in a side-by-side manner. The first description Patent Owner refers
us to is in the “Summary” section of the original application. PO Resp. 8
(citing Ex. 1004, 1293, ¶ 20; Ex. 1001, 5:32–37). That disclosure, however,
unambiguously describes the position between antennas and not the position
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of the coils of an antenna, as it states “the separation distance between
adjacent antennas.” Ex. 1004, 1293, ¶ 20 (emphasis added). Indeed, Patent
Owner and its declarant, Dr. Ricketts acknowledge the same. See PO Resp.
8; Ex 2002 ¶ 37 (each stating, “[t]his disclosure broadly refers to ‘adjacent
antennas’”). Despite that acknowledgment, Patent Owner argues and
Dr. Ricketts testifies that the disclosure relating to adjacent antennas
“explicitly discloses a non-limiting description of adjacent coils that pertains
to the invention as a whole.” PO Resp. 9; Ex. 2002 ¶ 38. We disagree, as
the only support for that contention is the use of the term “adjacent” in the
“Summary” section of the original application. However, as just discussed,
the term “adjacent” is not used in that “Summary” section to describe the
positioning of coils for the antenna.
Next, Patent Owner relies upon a statement in the Specification of the
’100 patent that describes “a gap 120 of space disposed between adjacent
first and second inductor coils such as the first and second inductor coils 76,
78 and/or the third and fourth inductor coils 90, 92.” PO Resp. 12 (quoting
Ex. 1001, 19:61–64) (emphasis removed).4 This is the same statement
Petitioner referred to in the original application. See Pet. 39 (citing
Ex. 1004, 1322–1323). The parties read this statement differently.
Petitioner asserts that this disclosure supports finding that the term
“adjacent” is used only to describe the coils “in the specific context of an

4 In it Sur-Reply, Patent Owner also refers to a similar description in the
Specification of “a gap of space 120 positioned between adjacently
positioned inductor coils such as the first and second inductor coils 24, 26.”
Ex. 1001, 20:54–57, see PO Sur-Reply 1. Coils 24 and 26 are also depicted
wherein one coil is positioned within the inner perimeter of the other. See
Ex. 1001, Fig. 2.
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inner coil that lies within the innermost turn of an outer coil.” Id. (citing
Ex. 1002 ¶¶ 35–38). In support of that reading, Petitioner directs us to the
depicted arrangement of coils 76 and 78 in Figure 3B and the depicted
arrangement of coils 90 and 92 in Figure 3C, expressly referred to in the
Specification statement describing the “adjacent” coils. Id. at 39–41
(referring to Ex. 1001, Figs. 3B and 3C, each depicting a coil arrangement
wherein one coil is positioned within the inner perimeter of another coil).
On the other hand, Patent Owner asserts the Specification statement should
be dissected such that only the first portion of the quote describing a gap
between adjacent coils refers to coils that are side-by-side, while the second
portion of the quote “uses the phrase ‘such as’ to identify the concentric
coils shown in the figures as merely an example,” PO Resp. 12–13 (citing
Ex. 2002 ¶ 43). Neither Patent Owner nor Dr. Ricketts provide any rationale
for doing so. See id.
Based on our reading of the Specification description of “a gap 120 of
space disposed between adjacent first and second inductor coils such as the
first and second inductor coils 76, 78 and/or the third and fourth inductor
coils 90, 92,” Ex. 1001, 19:61–64, it is apparent that the phrase “such as the
first and second inductor coils 76, 78 and/or the third and fourth inductor
coils 90, 92,” cannot be divorced from the preceding mention of “adjacent
first and second inductor coils.” Rather, coils 76, 78 and coils 90, 92
exemplify the “adjacent” coil configuration referenced. Patent Owner’s
contention that the Specification statement separately references adjacent
coils and concentric coils lacks reason in view of the use of the term “such
as” in the statement. The use of “such as” in the statement serves to connect
the first portion of the sentence with the second portion of the sentence,
rather than to distinguish those two portions. Insofar as Patent Owner
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asserts that Specification statement identifies the concentric coils shown in
the figures as “merely an example,” we note that Patent Owner does not
explain what it asserts they are “merely an example” of. See PO Resp. 12.
The Specification statement itself plainly provides that answer—the cited
coils in the statement exemplify “adjacent” coils in an exemplary structure.
The Specification, however, contemplates structures comprising more coils
than depicted in Figures 3B and 3C. See, e.g., Ex. 1001, 29:19–31, Fig. 11.
Therefore, even though the structure and concentric coils depicted in Figures
3B and 3C are merely examples, it does not follow that the Specification
supports anything other than “adjacent” coils in concentric orientation with
one another.
Accordingly, we determine that a proper reading of the Specification
reveals that the use of the term “adjacent” to describe the position of coils
refers to an arrangement such as that depicted in the figures showing coils 76
and 78, and coils 90 and 92, wherein the second coil is positioned within an
inner perimeter formed by an innermost turn of the first coil. See Exhibit
1001, Figs. 3B, 3C; Ex. 1004, Figs. 3B, 3C. In other words, the
Specification use of the term “adjacent” within the context of describing the
position of the coils does not refer to a side-by-side arrangement.
Thus, we do not find that Patent Owner has identified any disclosure
in the original application describing the second coil of an antenna being
positioned in a side-by-side manner with the first coil. Accordingly, based
on the current record as a whole, we determine that Petitioner has shown by
a preponderance of the evidence that independent claim 1 lacks written
description support because a person of ordinary skill in the art would not
have recognized from the original application that the inventor had
possession of the full claim scope of claim 1. As each of claims 2–25
PGR2019-00050
Patent 10,063,100 B2
20
depend from claim 1, we determine that those claims lack written
description support for at least the same reasons as claim 1.
E. Indefiniteness
Petitioner asserts that claims 1–25 are indefinite under 35 U.S.C.
§ 112(b). Pet. 58–66. Petitioner contends that independent claim 1 is
indefinite because it does not sufficiently “inform those skilled in the art
about the scope of the invention with reasonable certainty.” Id. at 58–59. In
particular, Petitioner asserts that the full scope of the claim is not limited to
one coil positioned within an inner perimeter of another coil. Id. at 60.
Rather, Petitioner asserts that the plain language of the claim “encompasses
an antenna in which the two coils are arranged side-by-side,” i.e., “adjacent”
to each other, as discussed above with regard to the written description
requirement. Id. According to Petitioner, a person having ordinary skill in
the art would not have known where the recited “third gap” would be
measured in such a side-by-side arrangement. Id.
Because we have determined that all of the challenged claims are
unpatentable under 35 U.S.C. § 112(a) for lack of written description, in
particular for lacking a description of coils arranged in a side-by-side
manner, which arrangement serves as the basis for Petitioner’s indefiniteness
challenge, we need not reach Petitioner’s indefiniteness ground. 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).
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Patent 10,063,100 B2
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III. CONCLUSION5
For the foregoing reasons, we conclude that Petitioner has shown by a
preponderance of the evidence that claims 1–25 are unpatentable under
35 U.S.C. § 112(a) for lack of written description. The results are
summarized in the table following the Order.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–25 of U.S. Patent No. 10,063,100 B2 have
been shown to be unpatentable; and
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.
In summary:

5 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).
6 As discussed above, in Section II.E., we do not reach this ground.
Claims

35
U.S.C. §
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–25 112(a) Written
Description
1–25
1–25 112(b)6 Indefiniteness
Overall
Outcome
1–25
PGR2019-00050
Patent 10,063,100 B2
22
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