Samsung Electronics Co Ltd v. Mojo Mobility LLC

1. Case Identification

• Case #: IPR2023-01090
• Patent #: 11,292,349
• Filed: June 27, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Mojo Mobility Inc.
• Challenged Claims: 8, 13, 15-18

2. Patent Overview

• Title: Inductive Power Transfer System
• Brief Description: The ’349 patent relates to a system for inductive power transfer from a charger to one or more mobile devices. The system comprises a charger with specific planar coil and magnetic layer configurations and a mobile device receiver with a solenoid structure to facilitate efficient power transfer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fells - Claim 17 is obvious over Fells

• Prior Art Relied Upon: Fells (Patent 8,587,154).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fells, a comprehensive reference on inductive power transfer systems, discloses all limitations of independent claim 1 and dependent claim 17. Petitioner asserted Fells teaches a charger with a planar coil on a printed circuit board, a magnetic layer, a drive circuit with FET switches and a resonant capacitor, and a mobile device receiver with a solenoid containing a magnetic core and Litz wire. For claim 17, Petitioner contended Fells teaches using the primary and secondary coils for communication, such as via an RFID channel, to sense receiver position and control power transfer.
  • Motivation to Combine (for §103 grounds): Not applicable, as this is a single-reference obviousness ground.
  • Key Aspects: Petitioner argued that to the extent Fells does not explicitly disclose a "means for positioning," its description of a shelf-like charger provides a physical alignment mechanism. Modifying this structure with other well-known alignment aids (visual, magnetic) to improve coupling efficiency was presented as an obvious design choice for a person of ordinary skill in the art (POSITA).

Ground 2: Obviousness over Fells, Silva, and Jung - Claim 8 is obvious over Fells in view of Silva and Jung

• Prior Art Relied Upon: Fells (Patent 8,587,154), Silva (Patent 8,975,523), and Jung (Patent 9,178,376).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Fells’ disclosure of a system using Litz wire. Petitioner argued that while Fells teaches using Litz wire to reduce losses, it does not specify an operating frequency. The combination with Silva and Jung was used to demonstrate the obviousness of selecting Litz wire for operation at a frequency "greater than 205 kHz," as required by claim 8. Silva teaches using Litz wire to mitigate skin effect losses at high frequencies, and Jung explicitly discloses wireless charging coils using Litz wire that operate in the 100-250 kHz range.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references because Fells discloses a high-frequency power transfer system, and both Silva and Jung address the known engineering problem of improving efficiency at such frequencies. Selecting an appropriate wire for a given operating frequency was a routine design consideration to achieve predictable improvements in performance.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as using Litz wire for high-frequency applications to improve efficiency was a well-understood and conventional practice.

Ground 3: Obviousness over Fells and Sagoo - Claims 13, 15, and 16 are obvious over Fells in view of Sagoo

• Prior Art Relied Upon: Fells (Patent 8,587,154) and Sagoo (Patent 7,791,311).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets claims requiring the charger to be incorporated into a "second mobile device." Petitioner contended that while Fells describes a versatile but stationary charging system, Sagoo teaches a portable power-sharing system where one mobile device (e.g., a laptop) can act as a charger for another. Sagoo discloses the necessary elements for such a system, including an internal rechargeable battery, dual-mode circuitry (source/load), and the ability to charge additional mobile devices.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Fells with Sagoo to overcome the portability limitations of a fixed charging pad. Sagoo’s teachings directly address the goal of "maximiz[ing] the portability of a mobile device" by enabling device-to-device charging, making it an obvious and logical enhancement to the robust charging architecture of Fells.
  • Expectation of Success (for §103 grounds): Success would be predictable, as integrating charging capabilities into portable electronics was a known concept, and Sagoo provides a clear technical blueprint for implementing such functionality.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Stoner (Patent 8,912,686) and Nakamura (Application # 2005/0068019) to further support the "means for positioning" limitation. Other grounds relied on Walley (Patent 8,390,249) for communication features and Ben-Shalom (International Publication No. WO 2012/095850) for incorporating a charger into an enclosed volume.

4. Key Claim Construction Positions

• Petitioner argued the term "means for positioning the receiver..." in claim 1(k) is a means-plus-function term subject to 35 U.S.C. §112, para. 6.
• The identified function was "positioning the receiver in a power transfer position, proximate to the charger surface, to inductively transfer power to the receiver of the first mobile device."
• The corresponding structure disclosed in the ’349 patent specification was identified as "visual, physical, or magnetic means," including "one or more magnets," to assist a user in aligning the device.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against denial under 35 U.S.C. §325(d), asserting that the examiner allowed the patent without any substantive prior art analysis and did not consider Fells or the specific combinations presented in the petition, constituting a material error.
• Petitioner also argued against discretionary denial under Fintiv, contending that the parallel district court litigation is in its early stages, with a trial date scheduled near or after the statutory deadline for a Final Written Decision (FWD). Petitioner stipulated that it will not pursue the same invalidity grounds in district court if the IPR is instituted.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 8, 13, and 15-18 of Patent 11,292,349 as unpatentable.