PTAB

IPR2021-01127

InductEV Inc v. WiTricity Corp

Key Events

Petition

petition Intelligence

Title: Wireless Energy Transfer with Reduced Fields
Brief Description: The ’635 patent relates to a system for wireless energy transfer using magnetic resonators. The invention focuses on reducing stray electromagnetic fields by using a first source magnetic resonator and a second source magnetic resonator that are driven out of phase to create opposing magnetic fields that at least partially cancel each other.

Prior Art Relied Upon: Kanno (Patent 8,698,350).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kanno, which was not considered during the prosecution of the ’635 patent, discloses every limitation of claims 1-8. Kanno describes a wireless power transmission unit comprising first and second transmitting sections, each containing a power transmitting antenna (a source magnetic resonator) and a power receiving antenna (a device magnetic resonator). A control section drives the two source resonators with a phase difference of 180 degrees, causing their respective resonant magnetic fields to be in opposite directions. This arrangement is explicitly for the purpose of reducing the leakage of electromagnetic waves into the surrounding space by ensuring the fields "will at least partially cancel each other." This directly maps to the core invention of the ’635 patent.
- Key Aspects: Petitioner contended that Kanno's "Example 1" provides specific implementation details that anticipate the dependent claims, including disclosing square-shaped coils of the same size and number of turns (claim 3), a Quality Factor of 1350 (claim 2), and an arrangement where the source resonators are driven by identical oscillators to produce dipole moments of substantially equal magnitude (claim 4).

Prior Art Relied Upon: Kanno (Patent 8,698,350).
Core Argument for this Ground:
- Prior Art Mapping: In the alternative to anticipation, Petitioner argued that it would have been obvious to a person of ordinary skill in the art (POSITA) to arrive at the claimed invention using Kanno. The petition asserted that a POSITA would read Kanno’s general description of a power generator (e.g., in Figures 7 and 9) in conjunction with the specific, real-world implementation details provided in its "Example 1." This combination of teachings within Kanno renders claims 1-8 obvious.
- Motivation to Combine: A POSITA seeking to build the wireless power system generally described in Kanno would have been motivated to consult "Example 1." The example provides specific component values and configuration details, along with test data demonstrating high power transfer efficiency (98.3%) and a significant reduction in stray magnetic fields (over 70%). These successful results would motivate a POSITA to apply the specific details of the example to the general system.
- Expectation of Success: The expectation of success would have been high, as "Example 1" is presented as a successful embodiment of the fundamental system disclosed in Kanno, demonstrating that the combination of elements works for its intended purpose.

Prior Art Relied Upon: Kanno (Patent 8,698,350) and Hall (Application # 2010/0237709).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that to the extent claims 5 and 6 are interpreted to require the source and device resonators to be integrated into single-unit housings, it would have been obvious to combine Kanno's system with the teachings of Hall. Hall, an admitted prior art reference cited in the ’635 patent, explicitly teaches integrating a wireless source resonator into a solar panel to form a unitary wireless power source (addressing claim 5). Hall also explicitly teaches integrating a device resonator into a portable electronic device or battery to form a unitary wireless power device (addressing claim 6).
- Motivation to Combine: A POSITA would combine Kanno's field-cancelling wireless power system with Hall's integration techniques to gain the well-understood benefits described in Hall. These benefits include simpler installation, improved reliability, weatherproofing, reduced cost, and the convenience of eliminating external power cords for portable devices.
- Expectation of Success: Success would have been expected, as integrating known components into a single unit to achieve predictable advantages like improved portability and simpler installation was considered a matter of routine engineering design choice.

Petitioner argued that the Board should not exercise its discretion to deny institution. It asserted that denial under §325(d) is inappropriate because the primary reference, Kanno, presents arguments and evidence not considered during prosecution and directly teaches the limitations that the Patent Owner previously relied upon to distinguish over other art.
Petitioner also argued that discretionary denial under Fintiv (§314(a)) is inappropriate because the parallel district court case was in its earliest stages. At the time of filing, Petitioner had not yet responded to the complaint, the court had not decided any substantive issues, and the parties' investment in the litigation was minimal.

Petitioner requests institution of an inter partes review (IPR) for claims 1-8 of Patent 9,306,635 and that those claims be found unpatentable and canceled.