InductEV Inc v. WiTricity Corp

1. Case Identification

• Case #: IPR2023-01208
• Patent #: 8,912,687
• Filed: July 17, 2023
• Petitioner(s): InductEV, Inc.
• Patent Owner(s): WiTricity Corporation
• Challenged Claims: 1-18

2. Patent Overview

• Title: Secure Wireless Energy Transfer For Vehicle Applications
• Brief Description: The ’687 patent relates to systems and methods for wirelessly transferring energy to vehicle applications using a first electromagnetic resonator coupled to a power source and a second electromagnetic resonator housed on a vehicle. The technology centers on using coupled magnetic fields and includes an authorization facility to confirm compatibility and initiate power transfer.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 are obvious over Cook in view of Bennett.

• Prior Art Relied Upon: Cook (Application # 2009/0299918) and Bennett (Application # 2010/0036773).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Cook and Bennett discloses every limitation of the challenged claims. Cook taught the foundational system of a wireless vehicle charger using magnetically coupled resonators—a first resonator in the ground and a second on the vehicle's undercarriage to charge its battery. However, Cook lacked specific implementation details for authorization and compatibility checks. Bennett allegedly supplied these missing elements by teaching a wireless power delivery system that includes an authorization facility (a "target device authenticator" and "user authorization module") to confirm compatibility and authorize power transfer only to compatible and subscribed devices. Petitioner asserted that combining Cook’s vehicle-specific application with Bennett’s detailed authorization and control system renders the claimed invention obvious. This combination allegedly teaches the key limitations of independent claims 1, 7, and 13, including the two-resonator system, the power supply, the load (vehicle drive system), wireless coupling, and the authorization facility.
  • Motivation to Combine (for §103 grounds): Petitioner contended a POSITA would combine Cook and Bennett for several reasons. A POSITA implementing Cook's public car charger, which must accommodate various vehicles, would have been motivated by Bennett’s disclosure of dynamically tuning resonant frequencies to ensure compatibility. Furthermore, while Cook mentioned encrypted authorization, it lacked implementation details; Bennett provided these details, teaching how to implement a secure communication and authorization system using token-based encryption. Finally, a POSITA would incorporate Bennett’s safety features, such as checking battery levels before charging, into Cook’s system to prevent the known risk of overcharging electric vehicle batteries.
  • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have a reasonable expectation of success because Cook and Bennett describe analogous systems using the same principles of near-field magnetic resonance to charge battery-powered devices. A vehicle, as in Cook, is merely one type of "target electronic device" to which Bennett's general principles of secure power transfer would apply predictably.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued that the ’687 patent is not entitled to an effective filing date earlier than April 24, 2009. This argument is central to establishing that Cook (filed May 28, 2008) and Bennett (filed September 30, 2008) are valid prior art. Petitioner contended that the key claim limitation of "an authorization facility to confirm compatibility...and provide authorization," which is present in all challenged claims, lacks written description support in any of the seventeen priority applications filed before that date.

5. Arguments Regarding Discretionary Denial

• §325(d) Denial: Petitioner argued denial under §325(d) is unwarranted. Although Cook and Bennett were cited in an IDS during prosecution, the record is silent on whether the Examiner substantively considered their teachings. Petitioner asserted that it presented a new combination of these references, supported by an expert declaration explaining the motivation to combine, which constitutes evidence not before the Examiner.
• Fintiv Denial: Petitioner argued that discretionary denial under Fintiv is not applicable. The petition was filed less than three months after the complaint was served in the parallel district court litigation, and no trial date has been scheduled, making the Fintiv factors weigh against denial.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-18 of the ’687 patent as unpatentable.