Shenzhen Chic Electrics Co Ltd v. Pilot Inc

1. Case Identification

• Case #: IPR2023-00810
• Patent #: 11,376,971
• Filed: May 22, 2023
• Petitioner(s): Shenzhen Chic Electrics Co., Ltd.
• Patent Owner(s): Pilot Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Automobile Charging Device
• Brief Description: The ’971 patent discloses a microcontroller-controlled automobile charging device, or jumpstarter, designed to provide safe power. The device includes modules for detecting the voltage of its internal battery and detecting the connection state (e.g., reverse polarity) of an external load, such as a depleted car battery, before allowing a start control module to supply charging current.

3. Grounds for Unpatentability

Ground 1: Obviousness over Baxter - Claims 1-30 are obvious over Baxter

• Prior Art Relied Upon: Baxter (Application # 2010/0173182).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Baxter discloses a complete, microcontroller-controlled safety circuit for automotive jumpstarting applications that renders all challenged claims obvious. Baxter’s safety circuit includes a power supply (internal battery), a detection circuit to determine if output terminals are properly connected to a low-voltage system with correct polarity, and a power-controlling circuit (e.g., high-current transistors) configured to provide power only when a proper connection is detected. Petitioner asserted that Baxter’s voltage sensor for the supply-side battery (formed by resistors R13/R16) meets the claimed “battery detector” limitation, and its various load detection circuits (voltage divider, LED indicator, current stimulus) meet the “load detector” limitation. The microcontroller in Baxter receives inputs from these detectors and generates an output signal to control the power switch, allegedly meeting the core functional limitations of independent claims 1, 17, and 18.
  • Motivation to Combine (for §103 grounds): N/A (single reference ground). Petitioner contended that a person of ordinary skill in the art (POSITA) would find it obvious to implement Baxter's disclosed safety circuit in a self-contained booster box, as Baxter itself suggests.
  • Expectation of Success (for §103 grounds): Petitioner argued that implementing Baxter's teachings in a jumpstarter would be a matter of routine design with predictable results.

Ground 2: Obviousness over Krieger450 - Claims 1-4, 6-7, 9-13, 16-28, and 30 are obvious over Krieger450

• Prior Art Relied Upon: Krieger450 (Patent 7,345,450).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Krieger450, an analogous reference disclosing a battery booster device, teaches all key elements of the challenged claims. Krieger450 describes a jumpstarter with a boosting battery, a microcontroller, and switching circuitry. It discloses using a resistive divider feedback circuit to monitor its own battery voltage, meeting the “battery detector” limitation and triggering a fault if the voltage falls below a predetermined level (e.g., 80% of rated value). It further discloses an opto-isolator to detect a correct connection to a vehicle battery before the microcontroller turns on the main switch, meeting the “load detector” limitation. Petitioner contended that the combination of these features in Krieger450’s microcontroller-based system renders the claims obvious.
  • Motivation to Combine (for §103 grounds): N/A (single reference ground). Petitioner asserted that all claimed features are present in the single Krieger450 reference.
  • Expectation of Success (for §103 grounds): Petitioner argued that a POSITA would have a high expectation of success in implementing the fault detection and switching logic described in Krieger450.

Ground 3: Obviousness over Baxter and Zhang - Claim 10 is obvious over Baxter in view of Zhang

• Prior Art Relied Upon: Baxter (Application # 2010/0173182), Zhang (Chinese Utility New Model Patent No. CN 202696190 U).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground supplements the Baxter reference to explicitly teach the limitation of claim 10, which requires the jumpstarter to exit standby mode when its battery has more than 10 volts. While Baxter discloses voltage tests (e.g., >6V and >2.5V), it does not specify a 10-volt threshold. Zhang, a jumpstarter with a microprocessor-controlled switch, was cited for its express disclosure that when its internal battery voltage is less than 10 volts, the output is turned off until it is recharged.
  • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would be motivated to modify Baxter's safety logic to incorporate the specific 10-volt threshold taught by Zhang. This value was presented as a simple design choice, easily implemented as a parameter change in a microcontroller, to ensure the jumpstarter has sufficient charge before use.
  • Expectation of Success (for §103 grounds): Modifying the voltage threshold in Baxter’s software would be a routine task with predictable results.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including:

  • Claims 14, 15, and 29 over Baxter and Tracey (adding passive backflow protection).
  • Claims 18-30 over Baxter and Xinfang (adding an explicit output port for removable cables).
  • Various claims over Krieger450 in view of combinations with Koebler (for series-parallel switch topology), Richardson (for an improved reverse polarity sensor), and Morse (for half-wave rectifier backflow protection).

4. Key Claim Construction Positions

• “start control module” (Claims 11, 26): Petitioner proposed this term be construed as “electronic switch.” This construction was based on explicit statements in the ’971 patent’s specification, which describes the “automobile start control module” as including transistors and states directly that it “is the electronic switch.” This construction is critical for mapping the claims onto the prior art’s disclosure of transistor-based switching circuits.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the prior art relied upon in the petition was not substantively considered during prosecution. The ’971 patent issued after a first-action allowance that only addressed informalities and obviousness-type double patenting, which Petitioner characterized as an oversight by the Patent Office.
• Furthermore, Petitioner highlighted that the PTAB has previously issued three Final Written Decisions finding claims unpatentable in two parent patents of the ’971 patent family, and instituted trial against another parent patent, demonstrating the high relevance of the asserted art and related arguments.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’971 patent as unpatentable under 35 U.S.C. §103.