Samsung Electronics Co Ltd v. Mojo Mobility LLC

1. Case Identification

• Case #: IPR2023-01091
• Patent #: 11,201,500
• Filed: June 28, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Mojo Mobility Inc.
• Challenged Claims: 1, 3, 9, 11-13, and 20

2. Patent Overview

• Title: System for Inductive Powering or Charging
• Brief Description: The ’500 patent discloses a system for inductive wireless charging of portable devices. The system features communication and control circuits that manage power transfer by detecting the presence of a compatible device, monitoring charging parameters, and adjusting power delivery based on feedback from the device.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 9, and 12 are obvious over Okada in view of Odendaal, Berghegger, and Black.

• Prior Art Relied Upon: Okada (Japanese Application Publication No. 2006-141170A), Odendaal (Patent 6,960,968), Berghegger (Patent 6,912,137), and Black (Application # 2006/0145660).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Okada, the primary reference, disclosed the foundational elements of an inductive charging system, including a power transmitter with a primary coil and a portable device with a receiver coil and rectifier circuit. Okada’s system communicates information from the receiver to the transmitter to determine an initial power level. Petitioner argued that while Okada taught adjusting power at the onset of charging, it did not explicitly teach adjusting power during the charging process or using planar coils. To address these limitations, Petitioner combined Okada with three other references. Odendaal was introduced to teach the use of substantially planar coils for both primary and secondary sides, a known technique for creating thinner, more compact charging systems. Berghegger was added to teach a closed-loop feedback system where power delivery is continuously adjusted during charging based on the device’s real-time power demand, which improves efficiency. Finally, Black was introduced to teach the use of specific "charging profile" information communicated from the battery to the charger to enable the system to determine and apply an appropriate charging algorithm.
  • Motivation to Combine: A POSITA would combine Okada with Odendaal to achieve the known benefits of a thinner form factor and improved coupling efficiency associated with planar coils. A POSITA would further incorporate Berghegger’s closed-loop power control to improve upon Okada’s static power-setting method, creating a more efficient and responsive system that adapts to changing load conditions during charging. Finally, a POSITA would integrate the teachings of Black to implement well-known battery management techniques, using charging profiles to ensure safe and optimized charging for different battery types, thereby preventing overcharging and enhancing battery life.
  • Expectation of Success: Petitioner contended that combining these known elements—planar coils, dynamic closed-loop power control, and charging algorithms—was a matter of applying predictable solutions to improve a basic wireless charging system like Okada's, with a high expectation of success.

Ground 2: Claim 11 is obvious over Okada, Odendaal, Berghegger, Black, and Shima.

• Prior Art Relied Upon: Okada (Japanese Application Publication No. 2006-141170A), Odendaal (Patent 6,960,968), Berghegger (Patent 6,912,137), Black (Application # 2006/0145660), and Shima (Patent 5,808,587).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination asserted in Ground 1 to address dependent claim 11, which further requires that the primary coils are constructed on a multi-layer Printed Circuit Board (PCB) with layers connected by vias. The base combination, through Odendaal, already taught constructing planar coils on substrates like a PCB, including using multiple layers. Petitioner introduced Shima to explicitly teach the common and well-known technique of using vias (through-holes) to interconnect coil patterns on different layers of a multi-layer PCB to form a continuous spiral coil.
  • Motivation to Combine: Petitioner argued that once a POSITA was motivated to use multi-layer PCB coils as taught by Odendaal, it would have been an obvious design choice to use vias for interconnection as taught by Shima. This was a standard, known method for manufacturing compact, multi-layer coils that maintain electrical continuity and reduce resistance.
  • Expectation of Success: Using vias to connect layers in a multi-layer PCB was a routine and predictable engineering practice, leading to a high expectation of success in implementing this feature.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including: (1) for claims 12-13, adding Takagi (Application # 2005/0134213) to the base combination to teach a portable system that can both transmit power and receive power to recharge its own internal battery; and (2) for claim 20, adding Chen (Application # 2005/0270745) to teach incorporating a metallic layer to serve as a heat sink, a common technique for managing thermal issues in power electronics.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §325(d) and the Fintiv factors.
• §325(d): Denial was argued to be improper because the examiner did not consider the primary reference, Okada, during prosecution, nor the specific combinations and expert testimony presented in the petition. Thus, the arguments were not the same or substantially similar to those previously considered.
• Fintiv Factors: Petitioner contended the factors weighed in favor of institution. The co-pending district court litigation was in its early stages with minimal investment, fact discovery was in its infancy, and no expert discovery had occurred. Petitioner stipulated that it would not pursue the same IPR grounds in the district court if the IPR is instituted, eliminating concerns of overlap. While the trial date is close to the statutory deadline for a Final Written Decision (FWD), Petitioner argued this factor was neutral and that the compelling merits of the petition favored institution.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1, 3, 9, 11-13, and 20 of the ’500 patent as unpatentable.