PTAB

IPR2022-00110

Tesla Inc v. Unicorn Energy GmbH

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Supply Network Component for a Supply Network
  • Brief Description: The ’869 patent discloses a scalable energy supply network built from modular components. These components, such as an "energy storing component," are designed to connect to one another to transfer electrical energy and communicate data for network management and safety.

3. Grounds for Unpatentability

Ground 1: Obviousness over Robinson - Claims 1-3, 5-7, 9-10, 17, 19, 24, 27-28 are obvious over Robinson

  • Prior Art Relied Upon: Robinson (Application # 2011/0006603).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Robinson, which describes scalable power networks built from modular "power managers," discloses every limitation of the challenged claims. Robinson’s power managers are analogous to the ’869 patent’s "energy storing components" and include device ports ("contact unit"), rechargeable batteries ("energy store"), internal power buses with switches and converters ("gateway"), and interfaces for power and data ("transport" and "communication" interfaces). Critically, Petitioner asserted that Robinson’s "energy management schema" operates independently to monitor connected devices, determine if a device is compatible with the network, and connect or disconnect it from the power bus. This autonomous compatibility check and resulting separation directly maps to the key limitation of independent claim 1 requiring separation from the network "in response to an autonomous identification of incompatibility."
    • Motivation to Combine: Not applicable as this ground relies on a single reference.
    • Expectation of Success: Not applicable as this ground relies on a single reference.

Ground 2: Obviousness over Robinson and Juzkow - Claims 1-3, 5-7, 9-10, 17, 19, 24, 27-28 are obvious over Robinson in view of Juzkow

  • Prior Art Relied Upon: Robinson (Application # 2011/0006603) and Juzkow (“Development of a BB-2590/U rechargeable lithium-ion battery,” Journal of Power Sources (1999)).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Juzkow provides extensive detail on the "BB-2590" battery, a component that Robinson expressly discloses for use with its power managers. Juzkow describes the battery's internal electronics, which are designed to "provide maximum safety and reliability" by protecting the lithium-ion cells from "overcharge, over discharge, and excessive discharge current." This teaching, according to Petitioner, reinforces the obviousness of implementing the autonomous incompatibility-detection and disconnection features of the challenged claims. It provides a specific, known implementation for the safety functions generally described in Robinson, such as isolating a device in response to an over-current or over-voltage event.
    • Motivation to Combine: A POSITA would combine Robinson and Juzkow because Robinson’s system explicitly contemplates using the BB-2590 battery, and Juzkow provides the well-known technical specifications for that exact battery.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the references, as it would involve integrating a commercially known battery, detailed by Juzkow, into the compatible system disclosed by Robinson.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Robinson and Juzkow with Scheucher (Application # 2007/0188130) to teach the "auxiliary voltage interface" of claim 3, and with Boskovitch (Patent 6,882,129) to teach disconnecting a device in the event of a communication interface failure, as recited in claim 24.

4. Key Claim Construction Positions

  • Petitioner argued that the claims are invalid even under the Patent Owner's proposed constructions for most terms. However, a key dispute centered on the claim term "an autonomous identification of incompatibility."
  • Petitioner's Position: Petitioner proposed a construction based on the term's plain meaning: "an identification, by the energy storing component, of incompatibility with the supply network."
  • Patent Owner's Position: Patent Owner proposed a more detailed construction requiring the energy storing component to monitor communications and physical parameters to "self-determine" whether to separate from the network.
  • Argument: Petitioner argued that Robinson discloses this limitation under either construction, as its power manager operates independently to read device parameters and network conditions to determine compatibility and then connect or disconnect accordingly.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be inappropriate.
  • Withheld Prior Art: The primary reference, Robinson, was allegedly known to the Patent Owner during prosecution of the ’869 patent because it was cited against a parallel Unicorn application with similar technology, but the Patent Owner did not disclose Robinson to the examiner of the ’869 patent.
  • Co-pending Litigation Status: The parallel district court litigation was in an early stage at the time of filing. No claim construction decision had been issued and no trial date was set, making an IPR an efficient means of resolving the validity dispute.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 5-7, 9-10, 17, 19, 24, and 27-28 of the ’869 patent as unpatentable.