Tesla Inc v. Graphite Charging Co LLC

1. Case Identification

• Case #: IPR2024-00387
• Patent #: 8,103,391
• Filed: January 31, 2024
• Petitioner(s): Tesla, Inc.
• Patent Owner(s): Graphite Charging Company LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Managing a Charging Process of an Electric Vehicle
• Brief Description: The ’391 patent discloses computer-implemented methods, systems, and products for managing an electric vehicle charging process. The core technology involves monitoring operational parameters during charging and, upon detecting an interruption, sending a response to terminate the process.

3. Grounds for Unpatentability

Ground 1: Anticipation by Keith - Claims 1, 2, 4-9, 11-16, and 18-20 are anticipated by Keith under 35 U.S.C. §102.

• Prior Art Relied Upon: Keith (Patent 5,696,367).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Keith discloses every limitation of the challenged claims. Keith describes a charging system with a charge station computer and a vehicle charge computer that manage the charging process. The process is initiated by a request (a five-second warning signal) from the charge station computer (the "energy transaction execution engine"). In response, the vehicle computer monitors operational parameters like current, voltage, and battery temperature during the flow of electricity. Keith explicitly describes detecting interruptions when these parameters are outside predefined limits (e.g., "current is within limits," "voltage is beyond limits"). Upon detecting such an interruption, Keith teaches sending a response—such as de-energizing a contact relay—that terminates the charging process. Petitioner further contended that Keith discloses specific interruption types recited in dependent claims, including manual override (a charge/run switch), device capabilities (current exceeding a limit), preference (exhaustion of deposited cash), and data services (failure to respond to a user prompt).

Ground 2: Obviousness over Kimura - Claims 1, 4-8, 11-15, and 18-20 are obvious over Kimura under 35 U.S.C. §103.

• Prior Art Relied Upon: Kimura (Patent 5,596,258).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kimura teaches a computer-implemented method for managing electric vehicle charging that renders the claims obvious. Kimura discloses a charger controller and a battery controller that communicate to manage charging. The process starts when the charger controller (the "energy transaction execution engine") sends a "charge start signal." Kimura's system then monitors operational parameters on both the vehicle side (power leakage, battery state) and the charger side (current leakage, power supply state) during the flow of electricity. Interruptions, termed "abnormalities," are detected when monitored parameters conform to predefined conditions, such as exceeding a voltage threshold or a communication delay time. In response to detecting an abnormality, Kimura’s battery controller sends a "charge inhibit signal" to the charger controller, terminating the charging process. Petitioner argued that Kimura’s disclosed "abnormalities" correspond to the claimed device capabilities, preference, and data services interruptions.

Ground 3: Obviousness over Kimura and Hotta - Claims 2, 5, 9, 12, and 16 are obvious over Kimura in view of Hotta.

• Prior Art Relied Upon: Kimura (Patent 5,596,258), Hotta (Patent 5,650,710).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the teachings of Kimura by adding Hotta to explicitly disclose the manual override and user-selected preference interruptions of claims 2, 5, 9, 12, and 16. Hotta discloses a "charging stop command key switch" that allows a user to manually terminate the charging operation, teaching the claimed manual override interruption. Hotta also teaches allowing a user to set a "scheduled boarding time," which is a user-selected preference that dictates when charging should be complete.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Kimura and Hotta. Kimura expressly motivates a POSITA to seek "various changes and modifications" and only lightly describes a "main switch." A POSITA would have looked to analogous art like Hotta for proven methods of implementing manual user controls and preferences. Adding a manual stop button (as in Hotta) to Kimura’s system would be a simple substitution to achieve the predictable result of user-controlled termination. Likewise, incorporating user-set preferences like charging end times would have been an obvious way to enhance the commercial desirability of Kimura's system.
  • Expectation of Success: The combination would have been routine for a POSITA, as it involves integrating known user input elements into an existing charging control system to achieve predictable functions.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 3, 10, and 17 are obvious over Kimura in view of King (Patent 5,659,240) for adding the storage of operational parameters. Petitioner also asserted that claims 3 and 8-19 are obvious over Keith alone, and that claims 6 and 13 are obvious over Keith in view of Nor (Patent 5,548,200) for teachings on data transmission failures.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The parallel district court litigation was in its infancy, with merits-based discovery stayed pending a motion to transfer. The court's median time to trial (25.8 months) places the trial date well after the Board’s projected Final Written Decision (FWD). Petitioner asserted that the petition presents compelling merits, with multiple independent grounds based on two different primary references, weighing strongly in favor of institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of Patent 8,103,391 as unpatentable.