NuCurrent, Inc.

Patent Trials and Appeals Board

Dec 22, 2020

IPR2019-01217 (P.T.A.B. Dec. 22, 2020)

Trials@uspto.gov Paper 29
571-272-7822 Date: December 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,
v.
NUCURRENT, INC.,
Patent Owner.

IPR2019-01217
Patent 9,941,729 B2

Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

Dismissing Petitioner’s Motion to Strike

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I. INTRODUCTION
Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition
requesting inter partes review of claims 1–9, 11–19, 21, and 23–26 of U.S.
Patent No. 9,941,729 B2 (Ex. 1001, “the ’729 patent”). Paper 2 (“Pet.”).
NuCurrent, Inc. (“Patent Owner”) filed a Preliminary Response to the
Petition. Paper 8 (“Prelim. Resp.”).
We instituted inter partes review of all challenged claims of the ʼ729
patent on all grounds of unpatentability alleged in the Petition. Paper 9
(“Institution Decision” or “Dec.”).
After institution, Patent Owner filed a Patent Owner Response.
Paper 12 (“PO Resp.”). Petitioner filed a Reply. Paper 15 (“Reply”).
Patent Owner filed a Sur-Reply. Paper 18 (“Sur-Reply”).
Pursuant to Board authorization, Petitioner filed a Motion to Strike
(Paper 20), to which Patent Owner filed an Opposition (Paper 21).
An oral hearing was held on October 7, 2020, and a transcript of the
hearing is included in the record. Paper 27 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6, and this Final Written
Decision is issued pursuant to 35 U.S.C. § 328(a). For the reasons that
follow, we determine that Petitioner has established by a preponderance of
the evidence that claims 1–9, 11–19, 21, and 23–26 of the ʼ729 patent are
unpatentable.
A. THE ’729 PATENT (EX. 1001)
The ’729 patent, titled “Single Layer Multi Mode Antenna for
Wireless Power Transmission Using Magnetic Field Coupling,” was issued
April 10, 2018. Ex. 1001, codes (54), (45). The ’729 patent relates to a
“single-structure multi-mode (SSMM) antenna” that “facilitates either or
both the transmission and reception of wirelessly transmitted electrical
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power and/or data” over “a multitude of a non-limiting range of
frequencies.” Id. at 9:31–35, 54–57. The antenna uses a “single coil
structure in which a multitude [of] inductor coils are electrically connected
in series.” Id. at 10:1–3.
An embodiment of the SSMM antenna is illustrated in Figures 2
and 2A, reproduced below.

Figure 2 shows an embodiment of three-terminal antenna 20 and
Figure 2A shows a corresponding electrical schematic diagram. Id. at 10:8–
12; 11:31–38. Figure 2 shows “outer coil 24 [] electrically connected in
series to . . . interior coil 26” which “combines the inductance contributions
of both coils.” Id. at 11:33–36. Figures 2 and 2A illustrate antenna 20
having one end of outer inductive coil 24 electrically connected to terminal
34, interior inductive coil 26 electrically connected to terminal 36, and
terminal 35 electrically connected to a second end of inductive coil 24 at
point 33. Id. at 11:38–45; 12:1–3. “[A]ntenna 20 may be constructed with
an electrical switch circuit 37 that enables selection of a desired inductance
and operating frequency,” specifically “enabl[ing] the detection and analysis
of the electrical impedance of either or combination thereof of the first and
second coils 24, 26.” Id. at 11:50–55. Electrical switch circuit 37 preferably
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has at least one capacitor C1 having a first capacitance and is electrically
connected along third terminal 35 which “enables the detection and analysis
of the impedance” values of coils 24 and 26. The switch circuit may contain
a second capacitor C2 having a second capacitance. Id. at 12:4–13. “The
electrical connections between terminals can be made via [] electrical switch
37.” Id. at 30:62–63.
Another embodiment of the SSMM antenna is illustrated in Figures 3
and 3A, reproduced below.

Figure 3 shows an embodiment of three-terminal antenna 40 and
Figure 3A shows a corresponding electrical schematic diagram. Id. at
12:46–47, 13:35–36. Figures 3 and 3A include “a first outer coil 42 that is
electrically connected in series to a second interior coil 44.” Id. at 12:49–51.
First terminal 46, second terminal 48, and third terminal 50, “each having
three respective terminal connections 52, 54, and 56,” are “electrically
connected at different terminal connection points of the antenna 40.” Id. at
13:3–8. “The first terminal 46 extends from a first end 58 of a first trace 60
of the first outer coil 42,” “[t]he second terminal 48 extends from a first end
62 of a second trace 64 of the second inductor 44,” and “[t]he third terminal
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50 extends from a second end 66 of the second trace 64 of the second coil
44.” Id. at 13:8–13. These “three terminals 46, 48, and 50 provide different
connection points between the first and second inductor coils 42, 44 and
portions thereof.” Id. at 13:13–15. “Connecting the various terminals in
different combinations thus provides the antenna 40 . . . with different
adjustable inductances which, in turn, modifies the operating frequency or
operating mode of the antenna.” Id. at 13:15–19. For example, by
connecting the first terminal with the second terminal, the antenna operates
at a first operating frequency; by connecting the first terminal with the third
terminal, the antenna operates at a different operating frequency. Id. at
13:20–31.
The antenna depicted in Figure 9 is likewise illustrative.

Figure 9 shows an embodiment of a two coil antenna. Id. at 8:13. In
this embodiment, a first electrical connection point 148 is disposed on one
end 149 of wire 142 of the antenna 140. Id. at 28:14–16. Electrical
connection point 148 has a terminal lead 154 attached thereto, thereby
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creating antenna terminal 34. Id. at 28:22–26. Similarly, second electrical
connection point 150 has terminal lead 156 attached to it, thereby creating
additional terminal 35; third electrical connection point 152 has terminal
lead 158, attached to it, thereby creating additional terminal 36. Id. at
28:17–29.
B. RELATED PROCEEDINGS
The parties identify the following district court proceeding as related
to the ’729 patent: NuCurrent, Inc. v. Samsung Elecs. Co., Ltd., No. 1:19-cv-
00798-DLC (S.D.N.Y. Jan. 28, 2019). Pet. 1; Paper 4, 2.
Additionally, Petitioner indicates the “[S]pecification of the ’729
patent is identical to the Specification of U.S. Patent No. 10,063,100
(‘the ’100 patent’), also assigned to Patent Owner, even though the two
patents are not in the same family.” Pet. 1. Petitioner further indicates that
it filed PGR2019-00049 and PGR2019-00050, challenging certain claims of
the ’100 patent. Id.
C. CHALLENGED CLAIMS
Sole independent claim 1 is illustrative of challenged claims 1–9, 11–
19, 21, and 23–26, and is reproduced below.
1. An antenna, comprising:
a) a first conductive wire forming a first coil contactable to a
substrate surface configured to generate a first inductance and a
first resonant frequency, the first coil comprising a continuous
electrically conductive path that extends along the first
conductive wire from a first coil first end that resides at an end
of an outermost turn of the first coil to a first coil second end that
resides at an end of an inner most turn of the first coil, the first
coil comprising N1 number of turns, wherein a first gap extends
between adjacent turns within the first coil;
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b) a second conductive wire forming a second coil 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 comprising a continuous
electrically conductive path that extends along the second
conductive wire from a second coil, first end that resides at an
end of an outermost turn of the second coil to a second coil
second end that resides at an end of an inner most turn of the
second coil, wherein the second coil is disposed on the substrate
surface positioned one of within an inner perimeter formed by
the innermost turn of the first coil and adjacent the first coil, the
second coil comprising N2 number of turns, wherein a second
gap extends between adjacent turns within the second coil, and
wherein the first end of the second coil meets and joins the
second end of the first coil forming a continuous junction
therebetween;
c) a third gap separating the 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;
d) 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; and
e) wherein a tunable inductance is generatable by electrically
connecting two of the first, second and third terminals;
f) 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
g) wherein at least one of the first coil and the second coil
operates at about 100 kHz to about 500 kHz.
Ex. 1001, 32:36–33:14.
D. INSTITUTED GROUNDS OF UNPATENTABILITY
We instituted an inter partes review of claims 1–9, 11–19, 21, and
23–26 on the following ten grounds:

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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 5–8, 12–14, 16–18,
21, 23 § 103 Riehl
1
3, 4, 9, 14, 26 § 103 Riehl, Riehl IEEE2
11 § 103 Riehl, Kanno3
15 § 103 Riehl, Sung4
24 § 103 Riehl, Kazuya5
1, 2, 5–8, 12–14, 16–
19, 21, 23, 25 § 103 Riehl, Yu
6
3, 4, 9, 14, 26 § 103 Riehl, Yu, Riehl IEEE
11 § 103 Riehl, Yu, Kanno
15 § 103 Riehl, Yu, Sung
24 § 103 Riehl, Yu, Kazuya
Dec. 7–8, 20; Pet. 2–4.
Petitioner relies on the Declaration of R. Jacob Baker, Ph.D., P.E.
(Ex. 1002) to support its obviousness challenges (Pet. 6 n.1). Patent Owner
relies on the Declaration of Dr. David S. Ricketts. Ex. 2002.
II. ANALYSIS
A. CLAIM CONSTRUCTION
We apply the claim construction standard articulated in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 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, 51,358 (Oct. 11,

1 Riehl, US 2014/0035383 A1, published Feb. 6, 2014 (Ex. 1005).
2 Patrick S. Riehl et al., Wireless Power Systems for Mobile Devices
Supporting Inductive and Resonant Operating Modes, 63 IEEE Transactions
on Microwave Theory and Techniques 778 (2015) (“Riehl IEEE”)
(Ex. 1006).
3 Kanno, US 2011/0241437 A1, published Oct. 6, 2011 (Ex. 1007).
4 Sung, US 2012/0274148 A1, published Nov. 1, 2012 (Ex. 1008).
5 Kazuya, JP2013-93429, published May 16, 2013 (as translated) (Ex. 1009).
6 Yu, KR10-2013-0045307, published May 3, 2013 (Ex. 1011).
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2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018 (now
codified at 37 C.F.R. § 42.100(b) (2019)). Under Phillips, claim terms are
afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at
1312. “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.” Id. at 1313. Only terms that are in
controversy need to be construed, and then only to the extent necessary to
resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999).
Neither party proposes any claim constructions for our consideration.
Petitioner contends: “no express constructions of the claims are necessary to
assess whether the prior art reads on the challenged claims.” Pet. 10. Patent
Owner states that no constructs are necessary beyond the claim terms’ plain
and ordinary meaning. PO Resp. 16. On the complete record, we determine
that no claim terms require express construction to resolve the controversy.
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, 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)).
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 (citing Ex. 1002 ¶¶ 20–21). Patent Owner describes
a person of ordinary skill in the art as having “a Bachelor’s degree in
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electrical engineering and at least two years of experience in power
conversion utilizing discrete components and inductor design.” PO Resp.
15–16 (citing Ex. 2002 ¶ 34).
There is no substantive difference between the parties’ proffered
descriptions of the person having ordinary skill in the art. Each parties’
description may be satisfied by a Bachelor’s degree in electrical engineering
and two years of work experience in power-based electronics. Also, neither
party argues that the outcome of this case would differ based on our
adoption of any particular description of one of ordinary skill in the art.
Based on the complete record, we adopt Patent Owner’s description of a
person of ordinary skill in the art. The level of ordinary skill in the art is
also reflected by the references themselves. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the
level of skill in the art does not give rise to reversible error ‘where the prior
art itself reflects an appropriate level and a need for testimony is not
shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding
that the Board did not err in concluding that the level of ordinary skill in the
art was best determined by the references of record).
C. ASSERTED OBVIOUSNESS BASED ON RIEHL
1. OVERVIEW OF RIEHL (EX. 1005)
Riehl discloses a “dual-mode wireless power receiver” that “can have
a low-frequency operating range . . . and a high operation frequency.”
Ex. 1005 ¶ 16. Figure 3 illustrates the circuit topology of Riehl’s dual-mode
receiver, and is reproduced below.
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Figure 3 shows the circuit topology of a dual-mode receiver. Id. ¶ 22. As
shown in the circuit of Figure 3, inductor L2 and inductor L3 are receiver
coils electronically connected with capacitors C2a, C2b, and C2q.
Id. ¶¶ 22–23. The “effective inductance” of the circuit depends on its
selective operating frequency, i.e., high frequency or low frequency.
Id. ¶ 22. In particular, “the effective inductance of the electromagnetic
resonator is much higher at low frequencies than at high frequencies.” Id.
At high frequencies, e.g., 6.78 MHz, the “effective inductance of this
circuit at high frequency is approximately equal to L2,” i.e., the circuit is
“tuned to resonance at” the L2 inductance. Id. ¶ 25. This is because, at high
frequency, “capacitor C2a has an impedance much lower than the inductor
L3” and “thus it shunts L3.” Id. ¶ 22. As such, “the C2q capacitor can be
modeled as a short circuit” and “the receiver circuit can be reduced to a
series-parallel resonant circuit where L2, C2a and C2b are the active
elements.” Id. ¶ 25. Accordingly, the circuit is “tuned to resonance at” L2’s
inductance. Id. At low frequencies, e.g., 100 kHz, “the two inductors
appear in series so as to give the required high inductance value.” Id. ¶¶ 22,
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24. This is because, at a low frequency, “the C2a and C2b capacitors can be
approximated as open circuits. Thus the receiver circuit can be reduced to a
pure series LC circuit in which L2, L3 and C2q are the series elements.”
Id. ¶ 24. The resulting effective inductance is L2 + L3. Id. ¶¶ 23, 24.
Furthermore, inductors L2 and L3 can be placed in a coil arrangement
as shown in Figure 5, reproduced below.

Figure 5 shows an exemplary coil arrangement and a schematic diagram. Id.
¶¶ 14, 28. In the overall coil arrangement 18 shown, inductor L3 is the inner
coil and L2 is the outer coil. Id. ¶ 28. “The connection points 1–3 illustrate
the interconnection points for the overall concentric arrangement 18.” Id.
2. ANALYSIS
a) LEGAL STANDARDS
A claim is unpatentable under 35 U.S.C. § 103 “if the differences
between the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious before the effective filing
date of the claimed invention to a person having ordinary skill in the art to
which the claimed invention pertains.”
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Obviousness is resolved based on 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) objective evidence of nonobviousness, i.e., secondary
considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17. Secondary considerations may
include any of the following: long-felt but unmet needs, failure of others,
unexpected results, commercial success, copying, licensing, and praise. Id.
The totality of the evidence submitted may show that the challenged claims
would not have been obvious to one of ordinary skill in the art. In re
Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).7
Petitioner bears the burden of proving unpatentability of the
challenged claims, and the burden of persuasion never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). Petitioner must demonstrate unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); see
also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
identify “with particularity . . . the evidence that supports the grounds for the
challenge to each claim”)). A party that petitions the Board for a
determination of obviousness must show that “a skilled artisan would have
been motivated to combine the teachings of the prior art references to

7 The parties have not presented any evidence of secondary considerations
on the complete record.
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achieve the claimed invention, and that the skilled artisan would have had a
reasonable expectation of success in doing so.” Procter & Gamble Co. v.
Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer,
Inc. v. Apotex, Inc., 408 F.3d 1348, 1361 (Fed. Cir. 2007)).
b) THE PARTIES’ ARGUMENTS
Petitioner asserts that claims 1, 5–8, 12–14, 16–18, 21, and 23 are
unpatentable under 35 U.S.C. § 103 as obvious over Riehl. Pet. 2–3, 10–50;
Ex. 1005. Specifically, Petitioner provides a detailed explanation alleging
where each limitation of these claims is taught or suggested in Riehl, and
why the skilled artisan would have been motivated to modify the teachings
of Riehl to arrive at the claimed subject matter. Id. at 10–50.
Patent Owner focuses its discussion on claim 1 (PO Resp. 2–21),
arguing that Riehl does not teach or suggest the limitation requiring “a
tunable inductance . . . generatable by electrically connecting two of the
first, second, and third terminals” because Riehl discloses an apparatus
having “fixed electrical connections.” Id. at 15–21; Ex. 1001, 33:6–8.
Patent Owner argues that the doctrine of claim differentiation applies,
in that claim 1 recites components that are “electrically connected,” meaning
they “have already been joined or linked together; they are now fixed.” PO
Resp. 17–18. Patent Owner argues that the phrase “electrically connected”
is different than “electrically connecting” because “the addition of the ‘ing’
to the base word denotes action, specifically the action of joining or
fastening together.” Id. at 17; see also id. at 18 (“the ‘tunable inductance’
element . . . recites the action of electrically connecting”); id. at 19 (arguing
that portions of the specification illustrate “that the term ‘connecting’ is
meant to convey action,” and that this term “is used consistently throughout
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the specification to show action, specifically the ‘joining’ or ‘linking’ of two
elements.”).
Patent Owner asserts that Riehl does not “provide access to a third
terminal as would be necessary for the claimed tunability,” and “[w]ithout
access to a third terminal, a [person of ordinary skill in the art]’s only option
for tuning Riehl’s circuit to an alternative frequency would be to change the
circuit topology or change the components of Riehl’s circuit.” PO Resp. 20.
c) ANALYSIS OF CLAIM 1
We begin with Patent Owner’s arguments regarding the “tunable
inductance [] generatable by electrically connecting two of the first, second
and third terminals” limitation. We find these arguments to be misplaced
because claim 1 is an apparatus claim, as are all other challenged claims in
this proceeding by virtue of their dependence from claim 1. Language in an
apparatus claim directed to its function or operation that does not structurally
limit the apparatus components or patentably differentiate the claimed
apparatus from a prior art apparatus, does not support its patentability. See
In re Lampert, 245 F.2d 253, 256 (CCPA 1957) (stating that one “cannot
rely on a method concept to in any way limit or distinguish such [apparatus]
claims over the art.”); In re Otto, 312 F.2d 937, 939 (CCPA 1963)
(recognizing “the impropriety of relying on a method concept to distinguish
a structural claim over the prior art”); In re Stattmann, 146 F.2d 290, 292
(CCPA 1944) (holding that a “statement in the claims as to [a] method” was
“entirely functional and, since the claims are not drawn to method but to
structure, in order to be patentable they must distinguish from the prior art
by structural limitations. This principle is so elementary that it is not
necessary to cite authorities.”)
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Such is the case here because the claim recites that “a tunable
inductance is generatable by electrically connecting two” of the three
terminals. Ex. 1001, 33:6–8 (emphasis added). This language does not
structurally distinguish the claimed antenna over the dual mode receiver
disclosed by Riehl. Ex. 1005 ¶¶ 22–25, 28, Figs. 3, 5. Rather, as recognized
by Patent Owner, the term “electrically connecting” denotes action, such as a
method of joining two elements together electrically. PO Resp. 17–19.
Similarly, the term “generatable” does nothing to signify structure, much
less a structural difference over Riehl’s dual mode receiver. Indeed, the
term “generatable” does not even require an electrical connection to be made
between two of the three terminals, but merely indicates what effect is
generated if an electrical connection is made between two of the first,
second, and third terminals. See Tr. 24:13–19 (Patent Owner’s counsel
stating claim 1 “doesn’t positively recite or require an action” but in
“say[ing] the tunable inductance is generatable,” it is “describing a structure
that is available and what will happen when those structures are electrically
connected”).
The specification discloses that the act of electrically connecting the
terminals in different ways “provides the antenna . . . with different
adjustable inductances which, in turn, modifies the operating frequency or
operating mode of the antenna.” Ex. 1001, 13:17–19; see id. at 13:20–26
(disclosing 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 (disclosing that “by
connecting two of the at least three terminals enables an operator to select a
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desired inductance that is exhibited by the antenna”). 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).
Riehl discloses the same operative effect of obtaining different
inductances depending on which terminals are electrically connected. This
effect is illustrated by the Petitioner-annotated Figures 3 and 5 of Riehl:

Pet. 29. Petitioner’s combined illustration of Riehl’s Figures 3 and 5 depicts
Riehl’s circuit topology (annotated and excerpted Figure 3) and coil
arrangement (annotated Figure 5) at a “low” frequency such as 100 kHz.
Ex. 1005 ¶¶ 22–24, 28. Riehl discloses that “[a]t low frequency (e.g., 100
kHz), . . . the receiver circuit can be reduced to a pure series LC circuit in
which L2, L3 and C2q are the series elements” and, assuming L3’s
inductance is 10 times that of L2, “[t]he effective inductance is 11xL2.” Id.
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¶ 24. This is equivalent to simply combining the inductances of L2 and L3.8
Thus, in this mode of operation, Riehl’s first terminal and second terminal
are electrically connected in series, and generate a certain inductance (i.e.,
11xL2). See id. ¶ 22 (“At low frequencies, the two inductors appear in
series so as to give the required high inductance value.”).9 On the other
hand, if Riehl’s first and third terminals are electrically connected, a
different, much lower inductance––roughly equivalent to L2––is generated.
Petitioner’s additional annotated and excerpted illustration of Riehl’s
Figures 3 and 5 is useful here:

Pet. 30. Petitioner’s illustrations of Riehl’s Figures 3 and 5 depicts Riehl’s
circuit topology (annotated and excerpted Figure 3) and coil arrangement
(annotated Figure 5) at a “high” frequency such as 6.78 MHz. Ex. 1005

8 To illustrate the dual mode receiver’s operation, Riehl states “[l]et us
assume that the inductance of L3 is 10x the inductance of L2.”
Ex. 1005 ¶ 23. If the inductance of L3 is 10xL2, then L2 + L3 = 11xL2.
9 This is scenario (c) described by Patent Owner and Dr. Ricketts, where,
depending on which terminals are electrically connected in the ʼ729 patent’s
claim 1 antenna, the overall inductance is “a combination of the first coil and
the second coil.” PO Resp. 19; Ex. 2002 ¶ 45.
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¶¶ 22–24, 28. Riehl discloses that “[t]he parallel combination of C2a and L3
is dominated by C2a” thereby shunting L3, rendering a “series-parallel
resonant circuit where L2, C2a and C2b are the active elements,” with an
approximate effective inductance of L2. Id. ¶¶ 22, 25.10
We are not persuaded by Patent Owner’s argument that Riehl fails to
teach a “tunable inductance” because Riehl describes its capacitor network
as a “matching network” and not a “switch circuit.” Sur-Reply 3–8. Claim
1 requires neither a matching network nor a switch circuit, and Patent Owner
fails to demonstrate sufficiently that the claimed “tunable inductance”
cannot be achieved with a matching network. Notably, although neither
party offers an express construction for the term “tunable,” the evidence of
record suggests that the skilled artisan would have understood the plain and
ordinary meaning of this term to be “adjustable.” See Ex. 1001, 10:3–6
(disclosing the antenna’s single coil structure “provides for an antenna
having a compact design that enables adjustment or tuning of the inductance
within the antenna” (emphasis added)); see also id. at 12:53–60 (equating
the antenna’s ability to be “tuned” to being “adjusted”). Thus, the relevant
inquiry is not how Riehl chooses to describe its network of capacitors C2a,
C2b, and C2q, but whether Riehl’s capacitor network functions so that the
inductance values of the coils are adjusted, i.e., “tuned,” when different
terminals are electrically connected one to another. As discussed above, this
is how Riehl’s capacitor network functions.
In sum, Patent Owner’s arguments regarding the claimed antenna’s
“tunable inductance [] generatable by electrically connecting two of the first,

10 This is scenario (a) described by Patent Owner and Dr. Ricketts, where the
inductance is that of the first coil. PO Resp. 19; Ex. 2002 ¶ 45.
IPR2019-01217
Patent 9,941,729 B2
20

second and third terminals” fail to structurally or functionally distinguish its
antenna over Riehl’s dual-mode wireless power receiver.
This brings us to Patent Owner’s other assertion––that Riehl does not
provide access to a third terminal. PO Resp. 20; see also Sur-Reply 8–12.11
This contention was raised in the Patent Owner Response in the context of
Patent Owner’s “tunable inductance” argument discussed supra. PO Resp.
20. There, Patent Owner stated “Riehl does not even provide access to a
third terminal as would be necessary for the claimed tunability,” and
“[w]ithout access to a third terminal, a [person of ordinary skill in the art]’s
only options for tuning Riehl’s circuit to an alternative frequency would be
to change the circuit topology” or the components contained therein. Id. In
the Patent Owner Response, Patent Owner did not offer any detail regarding
what it viewed to be Riehl’s “terminals,” and did not address Petitioner’s
mapping of Riehl’s terminals with any degree of specificity. PO Resp. 20.
In the Sur-Reply, however, Patent Owner revealed what it believed to be the
proper location of Riehl’s terminals, i.e., the dual inputs into bridge rectifier
4. See Sur-Reply 9 (“To try to map Riehl’s circuit onto claim 1, Samsung
identifies three locations in Riehl’s circuit that Samsung mischaracterizes as
‘terminals’”). Patent Owner also provided the following annotated Figure 3
of Riehl to support its argument:

11 This argument is the subject of Petitioner’s Motion to Strike, discussed
infra. Petitioner’s Motion to Strike is dismissed as moot, however, because,
even considering Patent Owner’s argument, we find it unpersuasive.
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Sur-Reply 9. Patent Owner’s annotated Figure 3 of Riehl maps Riehl’s
“terminals” to the two inputs, colorized red, to “Bridge Rectifier 4.” Patent
Owner also pointed to Dr. Baker’s deposition testimony and argued that
“physical availability is what distinguishes an ordinary connection point
from a terminal.” Sur-Reply 10–11.
Although we do have some concerns regarding the timeliness of
Patent Owner’s specific arguments in the Sur-Reply regarding the location
of Riehl’s “terminals,” we nevertheless address these arguments and find
them unpersuasive. First, Patent Owner’s arguments rely on the erroneous
premise that Petitioner relied on Riehl’s connection points 1, 2, and 3 alone
to evince Riehl’s three “terminals.” Petitioner, however, recognized that
Riehl’s connection points are only part of Riehl’s first, second, and third
terminals. See Pet. 26 (explaining 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 ¶ 81) (emphasis added)). Petitioner asserts that such
“additional conductive material” can take the form of a “terminal lead.”
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Patent 9,941,729 B2
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Pet. 26; see also Ex. 1002 ¶ 81 (“additional conductive material [] connects
external circuitry to the connection point on the coil,” and a “terminal lead”
could make such a connection from the coil to “the inputs to the rectifier
circuit shown in figure 3 of Riehl”).
Patent Owner has not explained sufficiently why a skilled artisan
would not have understood a “terminal” to encompass the portions of
Riehl’s dual mode wireless receiver identified by Petitioner––e.g., the
connection points and “terminal lead[s] that extend[] from the connection
point on the coil to, for example, the ends of the capacitors and the inputs to
the rectifier circuit shown in figure 3 of Riehl.” Pet. 26–27; see also Pet. 27
(“As shown in annotated figure 3 of Riehl . . . each of the connection points
1, 2, and 3 are part of a ‘terminal’ because they allow for connections
between coils and, for example, the capacitors C2a, C2b, and C2q.”
(emphasis added)). Notably, in mapping the terminals to Riehl’s disclosure,
Petitioner provides a color-coded annotated version of Riehl’s Figure 3 that
appears to identify the three connection points and additional conductive
material extending therefrom:
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Patent 9,941,729 B2
23

Pet. 28. Petitioner’s annotated Figure 3 of Riehl colorizes a first terminal in
green, a second terminal in blue, and a third terminal in red. Each of the
identified “terminals” appears to include “additional conductive material”
colorized beyond the circled “connection points” connecting the coils to, for
example, capacitors C2a, C2b, and C2q, as well as bridge rectifier 4’s
inputs. Id.; Tr. 13:11–14:11 (Petitioner’s counsel confirming the circled
portions of Riehl’s annotated Figure 3 represent the “connection points” and
the colorized lines extending therefrom represent “additional conductive
material”). 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 ¶ 82; Pet. 26–27. 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 ʼ729 patent’s disclosure. Figure 9 of the ʼ729
patent is illustrative on this point:
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Patent 9,941,729 B2
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Figure 9 of the ʼ729 patent depicts an embodiment of a two coil antenna
(Ex. 1001, 8:13), and illustrates three electrical connection points 148, 150,
and 152 (id. at 28:14–20). Notably, only after these electrical connection
points have terminal leads 154, 156, and 158 attached thereto does the ʼ729
patent state that a “terminal” is created. See id. at 28:22–25 (“terminal leads
154, 156, 158, such as electrically conductive wires, may be attached to
these electrical connection points to create antenna terminals.”); see also id.
at 28:25–29 (explaining that “as shown” in Figure 9––i.e., with the terminal
leads attached––“the first electrical connection point 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)); 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” other conductive wires).
We, therefore, credit Dr. Baker’s testimony regarding Riehl’s “terminals”
IPR2019-01217
Patent 9,941,729 B2
25

(Ex. 1002 ¶¶ 80–84) because it is consistent with the teachings of the ʼ729
patent and because it stands unrebutted by Patent Owner.
We are likewise unpersuaded by Patent Owner’s argument that
“Riehl’s interconnection points 1, 2, and 3 are not ‘terminals’ because these
interconnection points are not physically available to external circuitry,”
because Patent Owner does not offer any explanation regarding what
“circuitry” the skilled artisan would have understood to be “external.” Sur-
Reply 10–11. At best, Patent Owner’s argument implies that, in Riehl’s
Figure 3, only bridge rectifier 4 qualifies as such “external circuitry.” See
id. at 10–12. Dr. Baker’s testimony suggests, however, 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 ¶ 81
(Dr. Baker testifying that a terminal includes a connection point and
“additional conductive material that connects external circuitry to the
connection point on the coil” and then exemplifying 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”). Additionally,
the art of record in this proceeding demonstrates how the skilled artisan
would have viewed the phrase “external circuitry” in the context of inductor
coils. See Ex. 1007 ¶ 65 (referring to various possible circuits, including a
“matching circuit,” connected to spiral wiring 201 via wire 213 as an
“external circuit”). Thus, on the complete record, a preponderance of the
evidence supports that the skilled artisan would have understood “external
circuitry” to be circuitry that is external to the coiled wire. In this case, such
external circuitry would include not only Riehl’s bridge rectifier 4 inputs as
argued by Patent Owner, but also Riehl’s capacitor network C2a, C2b, and
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Patent 9,941,729 B2
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C2q that is connected to coil 18 that forms two inductors L2 and L3.
Ex. 1005 ¶¶ 22–25, Fig. 3.
Thus, having considered the record fully developed during trial, we
determine that Petitioner has established by a preponderance of the evidence
that claim 1 would have been obvious over Riehl. More particularly, the
preponderance of the evidence supports Petitioner’s assertions that Riehl
discloses or suggests each limitation of claim 1, and that the skilled artisan
would have been motivated to make the third gap between Riehl’s coils
larger than the first and second gaps to arrive at the subject matter of
claim 1, and would have had a reasonable expectation of successfully doing
so. Pet. 10–34.
d) ANALYSIS OF DEPENDENT CLAIMS 5–8, 12–14, 16–18, 21, AND 23
We have also reviewed Petitioner’s contentions and supporting
evidence regarding dependent claims 5–8, 12–14, 16–18, 21, and 23.
Pet. 34–50. Patent Owner does not offer any separate arguments regarding
these challenged dependent claims. PO Resp., generally; Sur-Reply,
generally. Based on the complete record, we are persuaded that Petitioner
has shown by a preponderance of the evidence that Riehl renders dependent
claims 5–8, 12–14, 16–18, 21, and 23 obvious. Pet. 34–50; Ex. 1005,
Figs. 2, 3, 5, ¶¶ 3, 16–20, 22–26, 28, 30; Ex. 1002 ¶¶ 98–101 (claim 5),
¶¶ 102–104 (claim 6), ¶ 105 (claim 7), ¶¶106, 107 (claim 8), ¶¶ 108–111
(claim 12), ¶¶ 112, 113 (claim 13), ¶¶ 114, 115 (claim 14), ¶ 116 (claim 16),
¶ 117 (claim 17), ¶¶ 118–125 (claim 18), ¶ 126 (claim 21), ¶ 127 (claim 23).
D. ASSERTED OBVIOUSNESS GROUNDS BASED ON RIEHL AND ADDITIONAL
PRIOR ART (GROUNDS 2–6)
Petitioner asserts that claims 1–9, 11–19, 21, and 23–26 of the ’729
patent are unpatentable as obvious over Riehl and one or more additional
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references. Pet. 50–81. Namely, Petitioner asserts that claims 3, 4, 9, 14,
and 26 would have been obvious over Riehl in combination with Riehl IEEE
(Ex. 1006) (Pet. 50–61), that claim 11 would have been obvious over Riehl
in combination with Kanno (Ex. 1007) (Pet. 61–63), that claim 15 would
have been obvious over Riehl in combination with Sung (Ex. 1008) (Pet.
63–65), that claim 24 would have been obvious over Riehl in combination
with Kazuya (Ex. 1009) (Pet. 65–68), and that claims 1, 2, 5–8, 12–14, 16–
19, 21, 23, and 25 would have been obvious over Riehl in combination with
Yu (Ex. 1011) (Pet. 69–81).
Specifically, Petitioner asserts the subject matter of claims 3, 4, 9, 14,
and 26 would have been obvious over Riehl in combination with Riehl
IEEE, pointing out where it believes each limitation of these claims is
disclosed or suggested in these references, and asserting that the skilled
artisan would have been motivated to combine the teachings of these
references to arrive at the claimed subject matter. Pet. 50–61; Ex. 1002
¶¶ 128–64; Ex. 1005, Figs. 3, 5; Ex. 1006, Figs. 4, 6, 11, 14, Abstract, 780–
81, 783, 785–86.
Petitioner asserts the subject matter of claim 11 would have been
obvious over Riehl in combination with Kanno, pointing to where it believes
these references teach or suggest each claim limitation, and asserting that the
skilled artisan would have been motivated to combine the teachings of these
references to arrive at the claimed subject matter. Pet. 61–63; Ex. 1002
¶¶ 165–69; Ex. 1005, Figs. 3, 5; Ex. 1007, Fig. 3, ¶¶ 13, 59–61, 77.
Petitioner asserts the subject matter of claim 15 would have been
obvious over Riehl in combination with Sung, pointing out where it believes
these references teach or suggest each claim limitation, and asserting the
skilled artisan would have been motivated to combine the teachings of these
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references to arrive at the claimed subject matter. Pet. 63–65; Ex. 1002
¶¶ 170-74; Ex. 1005, Figs. 3, 5 ¶ 28; Ex. 1008 ¶¶ 13, 19, 54–61, 64–68, Figs.
1, 7A.
Petitioner asserts the subject matter of claim 24 would have been
obvious over Riehl in combination with Kazuya, pointing out where it
believes these references teach or suggest each claim limitation, and
asserting the skilled artisan would have been motivated to combine the
teachings of these references to arrive at the claimed subject matter.
Pet. 65–68; Ex. 1002 ¶¶ 175–81; Ex. 1005, Figs. 3, 5, ¶ 24; Ex. 1009, 1, Fig.
3, ¶¶ 22, 24–29.
Petitioner asserts claims 1, 2, 5–8, 12–14, 16–19, 21, 23, and 25
would have been obvious over Riehl in combination with Yu, discussing
where it believes Riehl and Yu teach or suggest each claim limitation, and
asserting the skilled artisan would have been motivated to combine the
teachings of these references to arrive at the claimed subject matter.
Pet. 69–81; Ex. 1002 ¶¶ 182–210; Ex. 1005, Figs. 3, 5; Ex. 1011, Abstract,
Fig. 6, ¶¶ 6, 9, 36, 106, 142–160, 165, 178, 179.
We have reviewed Petitioner’s contentions and supporting evidence
regarding these challenges, and are persuaded that the recited limitations of
the challenged claims are disclosed or suggested in the prior art, and that a
person of ordinary skill in the art would have been motivated to combine the
teachings of the relied-upon references in the manner proposed to arrive at
the subject matter of the challenged claims, and would have had a reasonable
expectation of success in doing so. Pet. 50–81. We additionally note that
Patent Owner does not offer any separate arguments regarding these
challenged claims. PO Resp., generally; Sur-Reply, generally. Based on
our review of the complete record, we are persuaded that Petitioner has
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Patent 9,941,729 B2
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shown by a preponderance of the evidence that claims 1–9, 11–19, 21, and
23–26 would have been obvious for the reasons set forth in the Petition. Pet.
50–81; Ex. 1002 ¶¶ 128–210; Exs. 1005–1009, 1011.
E. ADDITIONAL, ALTERNATIVE ASSERTED OBVIOUSNESS GROUNDS
(GROUNDS 7–10)
Petitioner presents additional, alternative obviousness challenges to
claims 3, 4, 9, 11, 14, 15, 24, and 26 to those addressed above, also based on
Riehl as a primary reference. Pet. 81–82. Because we have already
concluded that Petitioner has shown by a preponderance of the evidence that
all challenged claims 1–9, 11–19, 21, and 23–26 would have been obvious,
we need not address these alternative obviousness challenges to this subset
of the challenged claims. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (finding that an administrative agency is at liberty to
reach a decision based on a single dispositive issue because doing so “can
not only save the parties, the [agency], and [the reviewing] court
unnecessary cost and effort,” but can “greatly ease the burden on [an
agency] faced with a . . . proceeding involving numerous complex issues and
required by statute to reach its conclusion within rigid time limits”).
III. PETITIONER’S MOTION TO STRIKE
With Board authorization, Petitioner filed a Motion to Strike section
II.A.2 of Patent Owner’s Sur-Reply. Paper 20, Paper 18. Patent Owner
filed an Opposition to Petitioner’s Motion to Strike. Paper 22. At issue in
Petitioner’s Motion to Strike is the specificity with which Patent Owner
argued in its Response (Paper 12) that Riehl does not disclose three
terminals.
Although we do share Petitioner’s concern regarding the timeliness of
Patent Owner’s specific arguments regarding Riehl’s terminals (Sur-Reply
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2–3, 8–12), we have nevertheless considered these arguments and have
found them unpersuasive. We therefore dismiss Petitioner’s Motion to
Strike as moot.
IV. CONCLUSION12
We conclude Petitioner has satisfied its burden of demonstrating, by a
preponderance of the evidence, that the subject matter of claims 1–9, 11–19,
21, and 23–26 of the ’729 patent is unpatentable.

12 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 to file a reissue application or a request for reexamination of
the challenged patent, 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).
Claims
35
U.S.C.
§
Reference(s) /
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 5–8, 12–
14, 16–18,
21, 23
103 Riehl 1, 5–8, 12–14, 16–18, 21, 23

3, 4, 9, 14,
26
103 Riehl, Riehl IEEE 3, 4, 9, 14, 26
11 103 Riehl, Kanno 11
15 103 Riehl, Sung 15
24 103 Riehl, Kazuya 24
1, 2, 5–8,
12–14, 16–
19, 21, 23,
25

103 Riehl, Yu
1, 2, 5–8, 12–
14, 16–19, 21,
23, 25

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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–9, 11–19, 21, and 23–26 of U.S. Patent No.
9,941,729 B2 have been shown to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Strike is
dismissed; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

13 This ground and the three subsequent grounds listed in this table were not
reached for the reasons explained in Section II.E.
3, 4, 9, 14,
26
10313 Riehl, Yu, Riehl
IEEE

11 103 Riehl, Yu, Kanno
15 103 Riehl, Yu, Sung
24 103 Riehl, Yu, Kazuya
Overall
Outcome
1–9, 11–19, 21, 23–26

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FOR PETITIONER:

Naveen Modi
Joseph E. Palys
Paul Anderson
Chetan Bansal
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
paulanderson@paulhastings.com
chetanbansal@paulhastings.com

FOR PATENT OWNER:

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

Alexis Mosser
Hamad M. Hamad
CALDWELL, CASSADY & CURRY P.C.
hhamad@caldwellcc.com
amosser@caldwellcc.com