PTAB

IPR2021-01232

Shenzhen Chic Electrics Co Ltd v. Pilot Inc

Title: Automobile charger
Brief Description: The ’653 patent discloses an automobile charger and charging methods. The device includes a first battery, a power converter, a microcontroller, switching circuitry, a battery level detector to monitor the first battery, and a load detector to determine the connection status of an external load (e.g., a vehicle battery).

Prior Art Relied Upon: Yu (Chinese Patent Publication CN203211234), Klang (Patent 6,424,158), and Koebler (Application # 2013/0241498).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Yu disclosed the basic architecture of a portable automobile starter, including an internal battery, a microcontroller, and a relay-based switching circuit. Klang was cited for teaching diagnostic features common in battery chargers, such as a battery level detector and a reverse polarity sensor to detect the load connection. Koebler was introduced for its teaching of using solid-state MOSFET switches, a well-known alternative to the relay disclosed in Yu, to control power delivery in battery systems for improved safety and reliability.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA), when designing a jump starter like Yu’s, would combine the teachings of Klang to add established safety and diagnostic features and would substitute Yu’s relay with Koebler’s MOSFET-based electronic switch. This combination was argued to be a predictable design choice to enhance performance and safety, as all references address common problems in the same field of battery chargers and jump starters.
- Expectation of Success: Petitioner asserted that replacing a mechanical relay with a solid-state electronic switch, as taught by Koebler, was a routine and predictable modification in power electronics with well-understood benefits.

Prior Art Relied Upon: Yu (CN203211234), Klang (Patent 6,424,158), Koebler (Application # 2013/0241498), and Thomason (Application # 2005/0110467).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the base combination of Yu, Klang, and Koebler. Petitioner introduced Thomason for its explicit disclosure of microcontroller logic that protects the internal battery. Thomason taught using a microcontroller to prevent power output if the internal battery’s voltage is below a certain threshold (addressing claim 4) and to generate an output signal to control the switching circuitry based on both the internal battery level and the load connection status (addressing claims 7 and 11).
- Motivation to Combine: A POSITA would be motivated to incorporate Thomason’s protection logic into the base combination to prevent damage from over-discharging the internal battery, a known issue in portable jump starters. Thomason’s teachings provided a specific solution for making the device safer and more durable, which would have been a recognized goal for a POSITA in this field.

Prior Art Relied Upon: Yu (CN203211234), Klang (Patent 6,424,158), Koebler (Application # 2013/0241498), and Richardson (Application # 2013/0154543).
Core Argument for this Ground:
- Prior Art Mapping: This ground also used the primary Yu/Klang/Koebler combination and added Richardson. Petitioner argued Richardson taught the specific standby mode functionality of claim 5, wherein the device "closes all outputs" if the internal battery voltage is too low and only "recovers" operation after the battery is recharged to an acceptable level. Richardson also disclosed disconnecting the jump starter from the vehicle's charging system (the load) after the internal battery is recharged past a threshold, mapping to claim 13.
- Motivation to Combine: A POSITA would combine Richardson’s standby and recharge management logic to solve the known problem of operating a jump starter with a depleted internal battery. Richardson provided an express and detailed control strategy that would improve the functionality and longevity of the device described in the primary references.

"battery level detector": Petitioner proposed this term be construed as "a detector that detects a level of the first battery." Alternatively, if treated as a means-plus-function term, Petitioner identified the corresponding structure in the ’653 patent as the circuitry connected to the first battery, power converter, and microcontroller, with the function of detecting the battery's power level.
"load detector": Petitioner proposed the construction "a detector that detects a load." If construed as a means-plus-function term, Petitioner identified the corresponding structure as circuitry connected to the load and switching circuit, with the function of detecting a load.
"switching circuit" / "switching circuitry": Petitioner proposed these terms be construed as "a circuit that includes a switch." If treated as a means-plus-function term, the structure was identified as the switch and associated circuitry connected to the battery, microcontroller, and load, with the function of selectively connecting the battery to the load based on the microcontroller's output.

Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and §314(a).
§325(d): Petitioner contended that denial was improper because the core prior art references (Yu, Klang, Thomason) were never before the examiner during prosecution. It further argued that while Koebler and Richardson were listed in an IDS, they were never analyzed or discussed by the examiner, and this petition presented them in new combinations raising new questions of patentability.
§314(a) (Fintiv/General Plastic): Petitioner argued that factors weigh against denial. It distinguished its petition from a separate petition filed by The NOCO Company (IPR2021-00777) by using different prior art combinations (primarily based on Yu) and challenging a different scope of claims. Regarding co-pending litigation, Petitioner argued that the Fintiv factors favored institution because the relevant district court cases were either stayed or recently filed with minimal investment from the parties or the court.

Petitioner requested institution of an inter partes review and cancellation of claims 1 and 3-20 of the ’653 patent as unpatentable under 35 U.S.C. §103.