PTAB

IPR2023-01182

InductEV Inc v. WiTricity Corp

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1. Case Identification

2. Patent Overview

  • Title: Wireless Power Transfer
  • Brief Description: The ’719 patent describes systems for wireless energy transfer between a source resonator and a second resonator via magnetic coupling. The technology focuses on using resonators with high quality factors (Q-factors > 100) to achieve efficient energy exchange over a distance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Cook-554 in view of Pohjonen - Claim 16 is obvious over Cook-554, alone or with Pohjonen.

  • Prior Art Relied Upon: Cook-554 (Patent 8,855,554) and Pohjonen (WO 2007/101902).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cook-554, which describes integrating a receiving resonator into a portable device like a mobile phone, discloses every element of claim 16 except for the express requirement that one resonator be "enclosed in a low loss tangent material." Cook-554 taught using a non-metallic housing to cause "lower losses" and "better penetration of magnetic fields," which Petitioner contended a POSITA would understand to be a low loss tangent material.
    • Motivation to Combine: To the extent Cook-554’s disclosure was deemed insufficient, Petitioner asserted a POSITA would combine it with Pohjonen. Pohjonen taught that it was standard industry practice to use low loss tangent materials (e.g., polycarbonate, polystyrene) for the outer covers of portable devices with internal antennas. The motivation was twofold: to physically protect the internal antenna from damage while maintaining antenna efficiency by minimizing signal loss, the same problem faced when integrating Cook-554’s resonator.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved applying a known technique (using common low-loss plastics for device housings) to a known product (a portable device with an integrated antenna) to achieve a predictable result (protecting the resonator while preserving its high Q-factor and efficiency).

Ground 2: Obviousness over Cook-554 - Claim 17 is obvious over Cook-554.

  • Prior Art Relied Upon: Cook-554 (Patent 8,855,554).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Cook-554’s "Wireless Power Bridge" embodiment, designed to transmit power through walls, rendered claim 17 obvious. This embodiment allegedly disclosed a system with high-Q resonators (typically >200), a multi-turn planar coil ("flat panel") made of conductive material, and connection to a "network of capacitors" (a "capacitor bank" for tuning). Petitioner argued that Cook-554’s teaching of "flat panel" resonators made from "thin wire" inherently disclosed the limitation that the resonator's characteristic thickness is "much less than" its characteristic size, a conclusion supported by the patent's figures.

Ground 3: Obviousness over Lee and Cook-523 - Claim 17 is obvious over Lee in view of Cook-523.

  • Prior Art Relied Upon: Lee (Application # 2007/0145830) and Cook-523 (Patent 8,378,523).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Lee taught every element of claim 17 except for an explicit quantification of the resonators' Q-factors. Lee disclosed a wireless power system with a source array of planar coils and a second resonator, also a planar coil, connected to a network of capacitors. Lee described its system as achieving "nearly infinite" impedance at resonance, which Petitioner contended a POSITA would understand requires a very high Q-factor.
    • Motivation to Combine: A POSITA seeking to implement Lee's system would have been motivated to look to analogous art to determine practical, attainable Q-values that would achieve the desired "nearly infinite" impedance and high efficiency. Cook-523 provided this teaching, explicitly disclosing that resonators for wireless power transfer should preferably have Q-factors greater than 1000 for efficient operation and providing examples of resonators with Q-factors between 1500-2600.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in applying the high Q-factor designs from Cook-523 to Lee's system. Both references concerned wireless power transfer using resonant coupling, and achieving high Q-factors was a well-known goal in the art for improving efficiency.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 16 based on Cook-523 in view of Pohjonen, which relied on a similar motivation-to-combine theory as Ground 1.

4. Key Claim Construction Positions

  • "characteristic size": For the magnetic resonators at issue, Petitioner asserted this term is defined by the ’719 patent as "equal to the radius of the smallest sphere that can fit around the inductive ... element."
  • "characteristic thickness": For the magnetic resonators at issue, Petitioner asserted this term is defined by the ’719 patent as the "highest point of the inductive ... element ... measured from a flat surface on which it is placed."

5. Arguments Regarding Discretionary Denial

  • §325(d) Arguments: Petitioner argued denial under 35 U.S.C. §325(d) was unwarranted. For Grounds 3 and 4 (based on Cook-523 and Lee), the combinations and arguments were never presented to or considered by the USPTO. For Grounds 1 and 2, while the pre-grant publication of Cook-554 was cited during prosecution, the specific combination with Pohjonen (Ground 1) was never presented, and the examiner’s analysis of Cook-554 was silent, constituting an error of oversight.
  • Fintiv Arguments: Petitioner argued that discretionary denial under Fintiv was not applicable because the petition was filed less than three months after service of the complaint in the co-pending district court litigation, and no trial date had been scheduled.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 16 and 17 of the ’719 patent as unpatentable.