Samsung Electronics Co Ltd v. Mojo Mobility LLC

1. Case Identification

• Case #: IPR2023-01088
• Patent #: 9,577,440
• Filed: June 27, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Mojo Mobility Inc.
• Challenged Claims: 3 and 13

2. Patent Overview

• Title: Inductive Power Source and Charging System
• Brief Description: The ’440 patent relates to an inductive power and charging system comprising a universal base unit with one or more primary coils and a mobile device with a secondary coil. The system is designed to charge different types of mobile devices and batteries having different charging characteristics.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 3 and 13 over Nakamura, Odendaal, and Calhoon

• Prior Art Relied Upon: Nakamura (2005/0068019), Odendaal (6,960,968), and Calhoon (2005/0127868).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nakamura, the primary reference, disclosed the core elements of the challenged claims, including a universal base unit for inductively charging different mobile devices (e.g., a phone and a laptop) with varying charging characteristics. Nakamura taught a system that communicates information about consumed power from the mobile device to the base unit to select an appropriate power level for charging. Petitioner contended that while Nakamura taught the fundamental system, it did not explicitly disclose certain features that were well-known in the art. To supply these missing elements, Petitioner asserted that Odendaal taught the use of thin, planar coils for inductive power transfer, and Calhoon taught specific mechanisms for device identification/authentication and device-side overcharge prevention. Specifically, Petitioner mapped Nakamura to the base system, Odendaal to the "generally planar" shape of the primary coils, and Calhoon to the "identification component" and the "means for avoiding overcharging" located within the mobile device.
  • Motivation to Combine: Petitioner asserted three primary motivations for combination. First, a POSITA would combine Odendaal’s teaching of planar coils with Nakamura’s system to achieve the thin, compact designs contemplated by Nakamura (e.g., embedding the charging unit into furniture), which was a predictable design choice to improve form factor. Second, a POSITA would combine Calhoon’s teaching of wireless device identification and authentication with the Nakamura/Odendaal system to enhance security and prevent misuse, a desirable feature for chargers used in the public or commercial settings described by Nakamura. Third, a POSITA would add Calhoon’s device-side overcharge prevention circuitry to the Nakamura system as a redundant safety feature to protect the mobile device battery, particularly in scenarios where the primary base-unit-controlled prevention might fail.
  • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in making these combinations. The integration of known planar coils (Odendaal) and standard identification and safety circuits (Calhoon) into a conventional inductive charging system (Nakamura) involved applying predictable solutions to known problems, using compatible technologies to achieve an improved but obvious result.

4. Key Claim Construction Positions

• Petitioner argued that the claim 3 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.
  • Function: avoiding overcharging one or both of the mobile device and battery inductively.
  • Corresponding Structure: Petitioner identified the corresponding structure in the ’440 patent’s specification as a “battery regulator chip and/or a circuit that measures parameters of a battery (e.g., voltage, degree of charging, temperature, etc.) and uses an internal program to regulate the power drawn from a circuit to ensure overcharging does not occur,” and its equivalents. This construction was central to Petitioner's argument that Calhoon provided a clear teaching of this structure, which was allegedly absent from the primary reference, Nakamura.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and the Fintiv factors.
  • §325(d): Petitioner contended that the asserted combination of prior art was not the same or substantially similar to what was considered during prosecution. Critically, the primary reference, Nakamura, was never before the examiner. Furthermore, while a different reference by Calhoon was submitted during prosecution, the specific Calhoon application relied upon in the petition was not identified or applied by the examiner.
  • Fintiv Factors: Petitioner argued the factors weighed against denial. The co-pending district court case was in its early stages with minimal investment, fact discovery was not set to close for many months, and no Markman hearing had occurred. The trial date was close to the projected Final Written Decision (FWD) date, making that factor neutral. Petitioner also stipulated that it would not pursue the same grounds in district court if the IPR were instituted, weighing against denial. Finally, Petitioner asserted the petition presented compelling merits for unpatentability, which should favor institution even if other factors were unfavorable.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 3 and 13 of the ’440 patent as unpatentable.