Samsung Electronics Co Ltd v. Mojo Mobility LLC

1. Case Identification

• Case #: IPR2023-01087
• Patent #: 9577440
• Filed: June 27, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Mojo Mobility Inc.
• Challenged Claims: 1 and 27

2. Patent Overview

• Title: Inductive Power Source and Charging System
• Brief Description: The ’440 patent relates to an inductive power charging system featuring a universal base unit with a primary coil and a mobile device with a secondary coil. The system is designed to charge different types of mobile devices that have varied charging characteristics.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nakamura, Odendaal, and Calhoon - Claims 1 and 27 are obvious over Nakamura in view of Odendaal and Calhoon.

• Prior Art Relied Upon: Nakamura (Application # 2005/0068019), Odendaal (Patent 6960968), and Calhoon (Application # 2005/0127868).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the primary reference, Nakamura, taught the core elements of the claimed invention, including a universal inductive charging system capable of charging different mobile devices (e.g., phones, laptops) with varying charging characteristics. Nakamura disclosed a base unit that communicates with a mobile device to determine and supply the appropriate power level. To meet the claim limitation of a "generally planar" receiver coil, Petitioner argued for modifying Nakamura with the teachings of Odendaal. Odendaal disclosed the use of planar spiral coils in inductive power systems to achieve a thin form factor. Petitioner further argued for modifying the Nakamura/Odendaal system with Calhoon to supply two key missing elements. First, Calhoon taught an "identification component" for wirelessly identifying a receiver to a base unit for security and authentication purposes. Second, Calhoon taught a device-side "means for avoiding overcharging," such as a controller that monitors battery parameters and disrupts charging when the battery is full, which complements Nakamura’s base-unit-controlled overcharge prevention.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Nakamura and Odendaal to achieve a thinner and more compact charging system. This modification would be a predictable design choice to better suit the applications contemplated by Nakamura, such as embedding charging pads into furniture or other surfaces. A POSITA would further incorporate Calhoon's identification component to enhance security and user authentication, which would be particularly beneficial for the public and commercial charging environments described in Nakamura. Finally, a POSITA would be motivated to add Calhoon’s device-side overcharge protection to the system as a redundant safety feature to prevent battery damage, which is a well-known and desirable improvement for any battery charging system.
  • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success in making these combinations. The proposed modifications involved applying known technologies—planar coils, identification circuitry, and redundant overcharge protection—to an existing inductive charging framework for their predictable and well-understood benefits.

4. Key Claim Construction Positions

• Petitioner argued that the claim term "means for avoiding overcharging one or both of the mobile device and battery inductively" should be construed as a means-plus-function term under 35 U.S.C. §112.
• The identified function was "avoiding overcharging...inductively." The corresponding structure disclosed in the ’440 patent’s specification was identified as a battery regulator chip and/or a circuit that measures battery parameters (e.g., voltage, temperature) and uses an internal program to regulate the power drawn from a circuit to prevent overcharging. This construction was central to Petitioner's argument that Calhoon’s teachings met this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the specific prior art combination of Nakamura, Odendaal, and Calhoon was never considered by the examiner during prosecution. Petitioner emphasized that Nakamura, the primary reference, was not cited at all.
• Petitioner also contended that the Fintiv factors weighed against discretionary denial of institution. The arguments included that the co-pending district court case was in its early stages with minimal investment, that the Final Written Decision (FWD) in the inter partes review (IPR) would issue close to the trial date, and that Petitioner stipulated it would not pursue the same invalidity grounds in district court if the IPR is instituted. Petitioner also asserted that the petition presented compelling merits for unpatentability, which should favor institution.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1 and 27 of Patent 9577440 as unpatentable.