Samsung Electronics Co Ltd v. Mojo Mobility LLC

1. Case Identification

• Case #: IPR2023-01102
• Patent #: 11,342,777
• Filed: June 29, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Mojo Mobility Inc.
• Challenged Claims: 15, 17, 20-23

2. Patent Overview

• Title: Wireless Charging and Powering Systems
• Brief Description: The ’777 patent relates to wireless charging systems for electronic devices. The claimed invention involves a device capable of operating in multiple modes using different inductive charging protocols, including uni-directional and bi-directional messaging for communication and control.

3. Grounds for Unpatentability

Ground 1: Claims 15, 20, 21, and 23 are obvious over Sogabe in view of Azancot

• Prior Art Relied Upon: Sogabe (Patent 8,369,905) and Azancot (Patent 8,090,550).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sogabe disclosed all elements of independent claim 15 except for the use of a microcontroller. Sogabe taught a wireless power receiver with communication circuits that operates in a two-stage process: a "setup stage" (first mode) using uni-directional messaging to establish communication conditions, and a "normal power transmission" stage (second mode) using bi-directional messaging. Petitioner contended that Sogabe’s controller, described as an ASIC or microcomputer, performs the functions of the claimed microcontroller.
  • Motivation to Combine: Petitioner asserted that implementing Sogabe's controller as a microcontroller was an obvious design choice. Azancot was cited as an example of prior art that explicitly taught using a microcontroller to control a similar contactless, inductive power system. A person of ordinary skill in the art (POSITA) would combine Azancot’s teaching with Sogabe’s system to reduce cost, decrease implementation complexity, and gain the flexibility inherent in well-known microcontroller-based designs.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing control logic on a standard microcontroller was a common and well-understood practice for wireless power systems at the time. The combination represented a predictable application of known technologies to achieve a predictable result.

Ground 2: Claims 17 and 21 are obvious over Sogabe in view of Azancot and Walley

• Prior Art Relied Upon: Sogabe (Patent 8,369,905), Azancot (Patent 8,090,550), and Walley (Patent 8,390,249).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Sogabe and Azancot combination from Ground 1, adding Walley to teach the limitations of dependent claim 17. Claim 17 requires the receiver’s communication circuits to be configured to communicate with different types of inductive chargers. While Sogabe taught a charger compatible with various receivers, Petitioner argued it did not explicitly disclose a receiver compatible with various chargers. Walley was alleged to cure this deficiency by disclosing a universal wireless power receiver with a transceiver designed to identify and implement multiple standard and proprietary communication protocols to work with different transmitter units.
  • Motivation to Combine: Petitioner argued a POSITA would be motivated to incorporate Walley's multi-protocol compatibility into the Sogabe/Azancot system to enhance interoperability. Improving compatibility to allow a single device to be charged by various chargers was a well-understood need and a desired feature in the art before the time of invention.
  • Expectation of Success: The combination was a predictable integration of known interoperability features into a known wireless charging architecture. A POSITA would have reasonably expected success in modifying the microcontroller's programming to handle multiple protocols as taught by Walley.

Ground 3: Claim 22 is obvious over Sogabe in view of Azancot and Baarman

• Prior Art Relied Upon: Sogabe (Patent 8,369,905), Azancot (Patent 8,090,550), and Baarman (Application # 2010/0007307).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also built upon the Sogabe/Azancot combination, adding Baarman to teach the limitations of claim 22. Claim 22 requires the microcontroller to receive a "ping" from a charger and send a responsive communication identifying an operational mode. Petitioner asserted that Baarman taught this exact functionality, disclosing an inductive power supply that entered a "ping state" by applying a small amount of power. A remote device receiving this ping was then powered sufficiently to generate and transmit a feedback signal to initiate normal power transfer.
  • Motivation to Combine: A POSITA would combine Baarman’s ping-and-response method with the Sogabe/Azancot system to reduce the complexity and power consumption of Sogabe’s negotiation and setup process. This modification would optimize charging by decreasing the time spent in a low-power setup mode and would also reduce the risk of powering an incompatible device.
  • Expectation of Success: Implementing a ping-and-response protocol was a well-understood technique for initiating communication in wireless power systems. A POSITA would have reasonably expected to successfully replace Sogabe's setup protocol with Baarman's more efficient method, as it was a predictable substitution of one known initiation method for another to gain known benefits.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §325(d) and Fintiv.
• Under §325(d), Petitioner contended that the examiner did not substantively consider the asserted prior art during prosecution, even though some references were submitted in a large Information Disclosure Statement for a parent patent. The petition alleged that the examiner erred by allowing the claims without analyzing the collective teachings of the art.
• Under Fintiv, Petitioner argued the factors favored institution. It asserted that the co-pending district court case was in its early stages, with minimal investment and discovery completed. Petitioner also stipulated it would not pursue the same grounds in district court if the inter partes review (IPR) is instituted, thus avoiding overlap and promoting efficiency.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 15, 17, and 20-23 of Patent 11,342,777 as unpatentable.