Samsung EleTronics Co Ltd v. WiPQTUS Inc

1. Case Identification

• Case #: IPR2024-00023
• Patent #: 10,038,339
• Filed: October 13, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): WiPQTUS, Inc.
• Challenged Claims: 1-3, 5, 7, and 9

2. Patent Overview

• Title: Dual Mode Wireless Power Receiver
• Brief Description: The ’339 patent describes a dual-mode wireless power receiver capable of operating in multiple modes. In one mode, it receives wireless power to charge a host device's battery. In another mode, it can use that stored power to transmit power to a secondary wireless device, either to charge it or to perform a secure transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5, 7, and 9 are obvious over Chatterjee in view of Corbridge

• Prior Art Relied Upon: Chatterjee (Application # 2011/0018356) and Corbridge (Application # 2010/0083012).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chatterjee disclosed the core elements of the claimed dual-mode wireless power receiver. Chatterjee taught an "inductive signal interface" capable of bi-directional operation, including a power receive mode and a power transmit mode. Petitioner asserted this interface disclosed the key limitations of independent claim 1, including: a coil (bi-directional coil assembly 412), a first circuitry (power bridge circuit 411 and power circuit 414) comprising a switch network and filter capacitor, and a second circuitry (processor 413 and communication circuit 415) comprising a control logic circuit and a modulator/demodulator. Petitioner contended that Chatterjee's device could receive power to charge its own battery ("load device") and use that stored power to transmit power to a "secondary wireless power receiver."
  • Petitioner further argued that while Chatterjee disclosed the capability for data communication to determine the mode of operation, it did not explicitly detail a protocol for identifying the type of secondary device or its specific wireless power protocol upon power-up. To supply this teaching, Petitioner introduced Corbridge. Corbridge allegedly disclosed a detailed communication protocol between a power supply device and a power receiving device. This protocol included steps for the power supply to power-up the receiver and then receive "enumeration information" from it, which could be used to identify the device type and select an appropriate communication protocol for subsequent power transfer. Petitioner mapped the combination to show that on power-up of a secondary device, the second circuitry of the combined system would be configured to identify the type and wireless protocol of the secondary receiver, as required by the claims.
  • Dependent claims 2, 3, 5, 7, and 9 were argued to be obvious as they recited additional features also taught by Chatterjee, such as a switch network configured as an inverter/rectifier (claim 2), an impedance network with fixed-value elements (claim 3), and various switch configurations for connecting to stored power and a load (claims 5, 7, 9).
  • Motivation to Combine: Petitioner asserted a POSITA would combine Chatterjee and Corbridge for several reasons. First, Chatterjee expressly directed a POSITA to review Corbridge for "examples of the type of data that can be communicated over using the inductive signal interface." Second, both references were from the same field of wireless power transfer and addressed the problem of inductively exchanging power and data. The combination represented the application of a known technique (Corbridge's detailed communication protocol) to a known system ready for improvement (Chatterjee's bi-directional receiver) to enhance its communication capabilities, a predictable improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. Petitioner argued that Chatterjee’s processor was a standard programmable microprocessor. A POSITA would have been familiar with programming such a device to implement the specific signaling and data exchange protocol taught by Corbridge, as it involved conventional control logic.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. §314(a) or §325(d) would be improper.
• Arguments against Fintiv Denial (§314(a)): Petitioner contended that the Fintiv factors weighed against denial. The co-pending district court case was in its early stages, with fact discovery in its infancy and a trial date set for February 2025. Petitioner stipulated that, if IPR were instituted, it would not pursue the same grounds in the district court litigation, mitigating concerns of duplicative efforts. Petitioner asserted the merits of the petition were compelling.
• Arguments against §325(d) Denial: Petitioner argued that denial would be improper because the primary prior art references, Chatterjee and Corbridge, were not before the Examiner during prosecution. The patent claims received a first-action allowance, which Petitioner suggested was based on an incomplete record. The Examiner did not have the benefit of the asserted art or the expert declaration explaining its teachings, meaning the petition raised issues that were materially different from those considered during prosecution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5, 7, and 9 of the ’339 patent as unpatentable.