InductEV Inc v. WiTricity Corp

1. Case Identification

• Case #: IPR2021-01166
• Patent #: 8,304,935
• Filed: June 21, 2021
• Petitioner(s): Momentum Dynamics Corporation
• Patent Owner(s): WiTricity Corporation
• Challenged Claims: 1-23

2. Patent Overview

• Title: Wireless Energy Transfer Using Field Shaping to Reduce Loss
• Brief Description: The ’935 patent discloses systems for near-field wireless energy transfer between a source resonator and a second (device) resonator. The technology focuses on techniques for "shaping" the magnetic field using conductive and magnetic materials to avoid or protect "loss-inducing objects."

3. Grounds for Unpatentability

Ground 1: Anticipation over O'Brien - Claims 1, 5-8, 15, and 19-22 are anticipated by O'Brien under 35 U.S.C. §102.

• Prior Art Relied Upon: O'Brien (Kathleen O’Brien, Ph.D. dissertation, Inductively Coupled Radio Frequency Power Transmission System for Wireless Systems and Devices (2007)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that O'Brien, a doctoral thesis not considered during prosecution, disclosed every element of the challenged claims. O'Brien taught a complete wireless power transmission system comprising a "source side" with a "Tunable Resonant Circuit" (the claimed source resonator) and a "receiver side" with a "Resonant Circuit" (the claimed second resonator). The system was explicitly described as operating via magnetic coupling in the near-field to transfer energy over distances up to several meters. Critically, Petitioner asserted that O'Brien taught shaping the system's magnetic field using conductive materials (e.g., an aluminum plate), magnetic materials (e.g., a hollow cylinder of permeable material), and a combination of both (e.g., an aluminum shield coated with ferrite) to manage the field and shield objects. The petition provided detailed mapping of O'Brien's figures and text to show how these materials divert, guide, and dampen the magnetic field, corresponding to the "shaping" limitation of independent claims 1 and 15.
  • Key Aspects: For dependent claims, Petitioner argued O'Brien disclosed systems with multiple source and receiver resonators (claims 5-7, 19-21) and that shaping the field with combined materials to guide flux around a "shielded region" inherently taught shaping to avoid a "loss-inducing object" (claims 8, 22), as conductive objects within the field were described as causing losses.

Ground 2: Obviousness over O'Brien and Haaster - Claims 1-23 are obvious over O'Brien in view of Haaster under 35 U.S.C. §103.

• Prior Art Relied Upon: O'Brien and Haaster (Application # 2004/0001299).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that O'Brien taught the foundational wireless power system with resonators and near-field coupling, as detailed in Ground 1. Haaster, which addresses electromagnetic interference (EMI) shielding for electronic equipment, was argued to supply the teachings for intentionally shielding specific "loss-inducing objects," such as sensitive electronic circuits. Haaster taught an improved EMI enclosure using a combination of a highly-conductive material (e.g., copper, aluminum) to reflect energy and a magnetic, lossy material (e.g., ferrite) to absorb energy. Petitioner contended that combining Haaster's explicit teachings on shielding electronic devices with O'Brien's wireless power system would have been obvious. This combination allegedly rendered obvious the claims requiring shaping the field to avoid a loss-inducing object, including specific configurations like complete or partial covering (claims 9-10), layered structures (claim 12), and shielding a mobile electronic device (claim 14). For claim 23, Petitioner argued O'Brien's power and control circuitry would have been an obvious candidate for shielding using Haaster's enclosure.
  • Motivation to Combine: A POSITA would combine the references to solve a known problem. O'Brien's system generated a strong magnetic field that could interfere with sensitive electronic components (i.e., loss-inducing objects) that might be present in the operating volume but are not the intended power receivers. O'Brien acknowledged the field of EMC and intentionally shielded devices. Haaster provided an explicit, well-known solution for shielding such electronics from EMI. Therefore, a POSITA would have been motivated to apply Haaster's multi-layer shield to protect components within O'Brien's system, thereby shaping the field to avoid those loss-inducing objects.
  • Expectation of Success: A POSITA would have had a high expectation of success because both references operated on the same principles of electromagnetism and used similar materials (conductors and ferrites) to control magnetic fields. The combination involved applying a known shielding technique (Haaster) to a known field-generating system (O'Brien) to achieve the predictable result of protecting components from that field.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial. Under §325(d), it was argued that the petition raised new art and arguments, as the primary reference, O'Brien, was never considered by the examiner during prosecution.
• Regarding the Fintiv factors, Petitioner asserted that the co-pending district court litigation was in its earliest stages, with Petitioner having not yet responded to the complaint and no substantive issues or investments having been made by the court or the parties. Therefore, institution would be efficient and not duplicative of court efforts.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of the ’935 patent as unpatentable.