Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Date: November 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOMENTUM DYNAMICS CORPORATION,
`Petitioner,
`
`v.
`
`AUCKLAND UNISERVICES LIMITED,
`Patent Owner.
`
`IPR2021-01116
`Patent 9,767,955 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, JO-ANNE M. KOKOSKI, and SCOTT
`RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 31
`Date: November 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOMENTUM DYNAMICS CORPORATION,
`Petitioner,
`
`v.
`
`AUCKLAND UNISERVICES LIMITED,
`Patent Owner.
`
`IPR2021-01116
`Patent 9,767,955 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, JO-ANNE M. KOKOSKI, and SCOTT
`RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-01116
`Patent 9,767,955 B2
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`I. INTRODUCTION
`
`Momentum Dynamics Corporation (“Petitioner”) filed a Petition for
`
`inter partes review of claims 1–13 of U.S. Patent No. 9,767,955 B2
`
`(Ex. 1001, “the ’955 patent”). Paper 2 (“Pet.”). Auckland UniServices
`
`Limited (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`
`Resp.”). Based on these submissions, we instituted an inter partes review of
`
`claims 1–13 (Paper 7, “Decision” or “Dec.”). Subsequent filings include a
`
`Patent Owner Response (Paper 12, “PO Resp.”) and a Petitioner Reply
`
`(Paper 21, “Reply”). The parties elected to forego an oral hearing. Paper
`
`30.
`
`We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
`
`After considering the evidence and arguments of the parties, we determine
`
`that Petitioner has proven by a preponderance of the evidence that claims 1–
`
`13 of the ’955 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`
`
`A. The ’955 Patent
`
`II. BACKGROUND
`
`The ’955 patent describes an inductive power transfer (“IPT”) pad for
`
`charging a battery without a cable. Ex. 1001, 1:17–25, 2:23–24. The ’955
`
`patent aims to improve the wireless charging of electric batteries, including
`
`those used in electric vehicles. See id. at 2:12–24.
`
`In one embodiment, the IPT pad includes a coil; one or more
`
`ferromagnetic slabs; and a shield member arranged around both the coil and
`
`the ferromagnetic slabs for channeling electromagnetic flux when in use. Id.
`
`at 2:39–44. The IPT pad preferably includes a backplate, where the
`
`backplate and shield member serve to direct flux upwards from the plane of
`
`2
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`the backplate with less splay of flux in and parallel to the plane of the
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`backplate. Id. at 3:10–11, 3:35, 3:53–56. The ’955 patent explains that by
`
`directing flux upward, the IPT pad improves inductive coupling and controls
`
`induced field leakage thereby preventing damage of surrounding objects. Id.
`
`at 3:56–62.
`
`Figure 4 is illustrative and is reproduced below.
`
`
`
`Figure 4 shows a perspective view of IPT pad 20, with a ghost outline
`
`to show internal detail. Id. at 7:54–60. IPT pad 20, from bottom to top,
`
`includes square backplate 20, on top of which are eight rectangular ferrite
`
`bars 22, displaced radially at 45 degrees with respect to each other. Id. at
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`8:62–67. A circular ring region 24 spans the top of ferrite bars 22 and holds
`
`coil 27 (shown in Figure 5). Id. at 8:67–9:5, Fig. 5. Coil 27 winds round the
`
`generally circular body of the pad approximately half way along the lengths
`
`of bars 22. Id. Rubbery molding 23 fills the gaps between ferrite bars 23
`
`and forms a circular outline raised from square backplate 21. See id. at
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`8:66–67, Fig. 4. Raised strip 25 circumferentially surrounds circular rubbery
`
`molding 23 and extends vertically from backplate 21. Id. at 9:5–7. Cover
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`3
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`28 covers the main circular body of the pad including molding 23, coil 27,
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`and ferrite bars 22. See id. at 9:8–14.
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`The ’955 patent discloses that “strip 25 is coupled or formed integral
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`to backplate 21 to assist in controlling the pattern of the flux generated.” Id.
`
`at 9:5–7. The ’955 patent further explains that “backplate 21 and strip 25 are
`
`appropriately coupled to work together to direct flux generated by the
`
`charging pad through cover 28 in a generally perpendicular direction to
`
`backplate 21.” Id. at 9:15–18.
`
`B. Challenged Claims
`
`Petitioner challenges claims 1–13 of the ’955 patent. Claim 1 is
`
`representative:
`
`1. An inductive power transfer pad to receive power from
`a transmitting pad, the inductive power transfer pad comprising:
`
`one or more permeable magnetic material members in a
`first layer;
`
`a coil having at least one turn of a conductor, the coil
`being arranged in a second layer substantially
`parallel to that of said permeable magnetic
`material members; and
`
`a shield member comprising a backplate defining a third
`layer, said backplate arranged to control
`electromagnetic flux generated by said
`transmitting pad.
`
`Ex. 1001, 14:37–48.
`
`4
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`C. Asserted Grounds of Unpatentability
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`Petitioner asserts that claims 1–13 are unpatentable on the following
`
`grounds (Pet. 2), supported by the declaration of Dr. Mark Allen
`
`(Ex. 1003)1:
`
`Claim(s) Challenged
`1, 4–6, 8–13
`1, 4–13
`1–13
`
`35 U.S.C. §
`102(b)2
`103(a)
`103(a)
`
`Reference(s)
`Hui-9103
`Hui-910, Beart4
`Nakao5, Beart
`
`III. ANALYSIS
`
`A. Principles of Law
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference.
`
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`
`Cir. 2001). Although the elements must be arranged or combined in the
`
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`
`
`1 Patent Owner did not submit an expert declaration in support of its Patent
`Owner Response.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. The ’955 patent
`claims priority as a division of application No. 12/451,436 filed on May 9,
`2008. Ex. 1001, code (62). Accordingly, the effective filing date appears to
`be May 9, 2008. Because the May 9, 2008 effective filing date is before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103. The parties do not dispute that the
`pre-AIA statutes apply.
`3 U.S. Pat. Appl. Pub. No. US 2005/0189910 A1, published Sep. 1, 2005
`(Ex. 1005, “Hui-910”).
`4 PCT Pub. No. WO 2005/024865 A2, published Mar. 17, 2005 (Ex. 1006,
`“Beart”).
`5 U.S. Pat. Appl. Pub. No. US 2004/0119576 A1, published June 24, 2004
`(Ex. 1007, “Nakao”).
`
`5
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`Patent 9,767,955 B2
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`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`
`Cir. 1990).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obvious at the time of the invention to a
`
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`
`of underlying factual determinations including (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`
`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`
`1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`
`Relying on the testimony of Dr. Mark G. Allen, Petitioner offers an
`
`assessment as to the level of ordinary skill in the art and the general
`
`knowledge of a person of ordinary skill (“POSA”) at the time of the ’955
`
`patent. Pet. 6 (citing Ex. 1003 ¶¶ 31–34). For example, Dr. Allen states that
`
`a person having ordinary skill in the art “would have had at least a
`
`bachelor’s degree in electrical engineering (or equivalent) and at least two
`
`years’ industry experience or equivalent research” and that relevant
`
`additional education could be substituted for experience, “e.g., an advanced
`
`degree in electrical engineering (or equivalent) with at least one year of
`
`industry experience.” Ex. 1003 ¶ 33. Patent Owner neither disputes
`
`Petitioner’s assessment nor proposes an alternate assessment. We adopt
`
`Petitioner’s definition of the level of skill, except that we delete the phrase
`
`“at least” to avoid including ambiguity in the definition of the level of skill.
`
`6
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`C. Claim Construction
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`In inter partes review, we construe claims using the same claim
`
`construction standard that would be used to construe the claims in a civil
`
`action under 35 U.S.C. § 282(b), including construing the claim in
`
`accordance with the ordinary and customary meaning of such claim as
`
`understood by one of ordinary skill in the art and the prosecution history
`
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2020).
`
`1. “shield member comprising a backplate”
`
`Claim 1 recites “a shield member comprising a backplate defining a
`
`third layer, said backplate arranged to control electromagnetic flux generated
`
`by said transmitting pad.” Ex. 1001, 14:46–48 (emphasis added).
`
`Independent claim 13 includes a similar limitation. Id. at 16:14–16.
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`Petitioner argues that although “the claimed shield member may include
`
`more components than a backplate (such as added sidewalls), no other
`
`components are required. In particular, the claimed shield member does not
`
`require adding a strip or sidewalls to the backplate.” Pet. 8 (citing Ex. 1003
`
`¶¶ 60–68). Patent Owner disagrees with Petitioner’s proposed construction
`
`and argues that “a shield member comprising a backplate” “requires both a
`
`shield member and a backplate.” PO Resp. 13.
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`In our Institution Decision, we preliminarily determined that “a shield
`
`member comprising a backplate” “may include additional components other
`
`than the claimed backplate, but additional components are not required.”
`
`Dec. 13. Based on the full trial record, however, we need not construe this
`
`term because the parties only dispute whether Hui-910 discloses the “shield
`
`member comprising a backplate.” PO Resp. 14–15; Reply 11. And we do
`
`not reach the Hui-910-based grounds because, for reasons explained below,
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`7
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`the ground based on Nakao and Beart is dispositive of all the challenged
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`claims. Thus, we do not construe this term.
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`2. “slabs”
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`Claim 7 depends directly from claim 1 and recites “wherein the
`
`backplate extends beyond coil and slabs.” Ex. 1001, 15:4–5. At the Petition
`
`stage, Petitioner argued that “the recited ‘slabs’ is a drafting error, and a
`
`POSA would understand it to be referring to the ‘one or more permeable
`
`magnetic material members’ in claim 1.” Pet. 47, 75–76 (citing Ex. 1003
`
`¶ 232). At the institution stage, we disagreed with Petitioner. Dec. 13–14.
`
`Now, Petitioner contends in the Reply that even under our preliminary
`
`construction, Nakao and Beart still would have rendered claim 7 obvious.
`
`Reply 25–26. Patent Owner does not dispute this. As there is no dispute,
`
`we find it unnecessary to construe “slabs” in this decision. We address
`
`Petitioner’s merits arguments in our analysis below.
`
`We determine that no other terms require construction. See Realtime
`
`Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required
`
`to construe ‘only those terms . . . that are in controversy, and only to the
`
`extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`D. Asserted Obviousness of Claims 1–13 over Nakao and Beart
`
`Petitioner contends that claims 1–13 would have been obvious over
`
`Nakao and Beart. Pet. 49–77. For the reasons that follow, we determine
`
`that Petitioner has proven by a preponderance of the evidence that claims 1–
`
`13 would have been obvious over Nakao and Beart.
`
`Because this ground is dispositive of all the claims, we do not reach
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`Petitioner’s remaining grounds. See Boston Sci. Scimed, Inc. v. Cook Grp.
`
`Inc., 809 F. App’x 984, 990 (Fed. Cir. Apr. 30, 2020) (non-precedential)
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`8
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`(recognizing that the “Board need not address issues that are not necessary
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`to the resolution of the proceeding” and, thus, agreeing that the Board has
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`“discretion to decline to decide additional instituted grounds once the
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`petitioner has prevailed on all its challenged claims”).
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`1. Nakao
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`Nakao describes a noncontact coupler using a magnetic coupling
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`technique for transferring power. Ex. 1007 ¶¶ 1, 2. Nakao describes known
`
`systems including opposite magnetic cores forming an annular closed
`
`magnetic path to allow primary and second coils located on the cores to
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`transmit AC power to each other. Id. ¶¶ 4, 5.
`
`Nakao describes an embodiment of a noncontact coupler including a
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`pair of magnetic cores each having a U-shaped open magnetic path, with a
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`primary coil and secondary coil being wound around each core, respectively.
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`Id. ¶ 21. Each primary and secondary magnetic core is formed with annular
`
`outer circumferential core members, disc-shaped inner circumferential core
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`members, and a number of intermediate core members arranged radially to
`
`form a circle connecting both core members. Id. The magnetic cores can be
`
`made of ferrite magnetic material. Id. ¶ 30.
`
`Figure 7B is reproduced below.
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`9
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`Figure 7B shows a plan view of Nakao’s third embodiment of a
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`noncontact coupler. Id. ¶ 37. The noncontact coupler is illustrated as a
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`circle having three different magnetic cores 12, 13, and 14. Id. ¶ 68. Outer
`
`circumferential core member 12 is shown as a circumferential ring that
`
`extends from the outer edge of the circle to about a third of the radial
`
`direction to the center of the circle. See id. at Fig. 7, ¶ 68. Disc-shaped
`
`inner circumferential core member 13 is shown as a disc in the innermost
`
`third of the circle. See id. Intermediate core members 14 are shown as long
`
`rectangular spokes “arranged radially to form a circle connecting both of the
`
`core members 12, 13.” Id. Secondary coil L2 is illustrated by
`
`circumferential dotted lines forming a ring in the middle third of the circle.
`
`See id. at Fig. 7, ¶ 51.
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`10
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`
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`Figure 7C is reproduced below.
`
`
`
`
`
`Figure 7C shows a cross-sectional view of the noncontact coupler
`
`depicted in Figure 7B. Id. ¶ 37. Intermediate core members 14 are shown as
`
`two rectangles, each connecting a rectangular outer circumferential core
`
`member 12 and an inner circumferential core member 13, located below
`
`core member 14. See id. at Fig. 7, ¶ 68. Secondary coil L2 is illustrated as a
`
`rectangular dotted line located below intermediate core members 14,
`
`between outer core members 12 and inner core members 13. Id.
`
`2. Beart
`
`
`
`Beart describes inductive power transfer units having flux shields.
`
`Ex. 1006, 1:3. The inductive power transfer unit is in the form of a flat bed
`
`or platform. See id. at 7:12–14. Electromagnetic field lines from the
`
`inductive power transfer unit couple with an electrical conductor in a
`
`secondary device placed in proximity to a power transfer area of the
`
`inductive power transfer unit. See id. at 7:15–20.
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`11
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`
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`Figure 7 is illustrative and reproduced below.
`
`
`
`
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`Figure 7 shows flux shield 80 located on top of support surface 200.
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`Id. at 10:6–16. Flux shield 80 includes base 82 and side walls 84, 86, 88,
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`and 90, forming a square extending upward from support surface 200. Id.
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`Beart describes the height of the side walls as exaggerated for clarity. Id.
`
`Figure 7 also shows flux generating unit 50 in the shape of a square located
`
`in the middle of flux shield 80 on base 82. See id. at 9:1–12, Fig. 5. Flux
`
`generating unit 50 includes coil 10 wound around former 20. Id. Former 20
`
`may be a thin sheet of magnetic material. Id. at 9:9–12. “The base 82 of the
`
`flux shield 80 extends between the lower surface of the flux generating unit
`
`50 and the support surface 200. Because the flux shield 80 has side walls in
`
`this embodiment, the base 82 need not extend out beyond . . . 4 mm.” Id. at
`
`10:8–13.
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`3. Independent Claim 1
`
`a. Undisputed Limitations
`
`Petitioner contends that Nakao discloses the preamble of claim 1,
`
`“[a]n inductive power transfer pad to receiver power from a transmitting
`
`pad, the inductive power transfer pad comprising.” Pet. 60–63. Petitioner
`
`further contends that Nakao teaches the claimed “one or more permeable
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`12
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`magnetic material members in a first layer” and “a coil having at least one
`
`turn of a conductor, the coil being arranged in a second layer substantially
`
`parallel to that of said permeable magnetic material members.” Id. at 63–66.
`
`For example, Petitioner refers to Nakao’s inductive power transfer
`
`system including a receiver pad and a transfer pad. Id. at 60–61 (citing Ex.
`
`1007, Fig. 12D, ¶¶ 5, 7, 51–52, 78, 95). Petitioner also relies on Figure 76 of
`
`Nakao, annotating Figures 7B and 7C as follows:
`
`
`
`Id. at 62 (citing Ex. 1003 ¶ 202; Ex. 1007 ¶ 68). Figures 7B (top) and 7C
`
`(bottom) include Petitioner’s annotations labelling intermediate magnetic
`
`core members 14 as a “permeable magnetic material layer” (colored green).
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`Id. Figure 7 also labels dotted rectangle L2 as a “coil layer” (colored
`
`yellow), which Petitioner contends is substantially parallel to the
`
`intermediate magnetic core members 14 that form the claimed “permeable
`
`magnetic material members.” Id. at 62, 65.
`
`
`6 Nakao Figure 7 is comprised of Figures 7A–7C, each of which presents a
`different view of the same embodiment. Ex. 1007 ¶ 37.
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`13
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`Patent Owner does not dispute that Nakao discloses these limitations.
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`Based on our review of the entire record, we agree with Petitioner that
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`Nakao does, in fact, disclose them.
`
`b. a shield member comprising a backplate defining a
`third layer, said backplate arranged to control
`electromagnetic flux generated by said transmitting
`pad.
`
`As to the claimed “shield member comprising a backplate,” Petitioner
`
`argues that “a POSA would have been motivated to add Beart’s flux shield
`
`to Nakao’s transmitting and receiving pads . . . where the ‘base’ of the flux
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`shield is arranged between the magnetic core and the support surface that the
`
`pad is mounted on.” Pet. 67. Petitioner contends that “[t]he ‘base’ of
`
`Beart’s flux shield arranged [in this manner] would form the claimed ‘third
`
`layer’ to Nakao’s permeable magnetic material members—intermediate
`
`magnetic core members 14—in a first layer, and primary and secondary
`
`coils L1 and L2 arranged in a second layer.” Id. at 68.
`
`Petitioner illustrates this configuration in the following modified and
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`annotated version of Nakao Figure 7C, reproduced below.
`
`Id. at 69 (citing Ex. 1003 ¶ 216; Ex. 1007 ¶¶ 21, 68–69, cl. 7, Figs. 7B–7C;
`
`Ex. 1006, Figs. 7–9, 8:24–31, 10:6–11:11). The above figure is a
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`14
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`representation by Dr. Allen of an embodiment described in Nakao’s Figure
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`7C, modified to show the transmitting pad and shield member of Beart
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`(orange). Id. (citing Ex. 1003 ¶ 216). The figure illustrates two of Nakao’s
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`noncontact couplers shown in Figure 7C, with coils L1 and L2 (colored
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`yellow) facing each other, and intermediate magnetic core members 14
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`(colored green) facing away from each other. Id. The figure further
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`illustrates each noncontact coupler being surrounded on three sides—
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`excluding the coil facing sides—with Beart’s shield member/backplate
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`drawn in orange. Id.
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`Petitioner also relies on the following figure from Dr. Allen’s
`
`declaration, depicting the combination of Nakao Figure 7B and Beart Figure
`
`7:
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`
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`Id. at 57–58, 68; Ex. 1003 ¶¶ 196, 214. The above figure shows Beart’s
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`shield member and backplate layer (orange) underneath Nakao’s permeable
`
`magnetic material layer (green) and coil layer (yellow). Id. at 67–68.
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`Patent Owner contends that neither Nakao nor Beart “disclose[s] a
`
`shield member and backplate on a wireless power receiver.” PO Resp. 15.
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`Instead, Patent Owner contends, Petitioner and Dr. Allen “conclusorily
`
`assume” that the same motivations for adding Beart’s sidewalls to a
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`15
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`backplate hold true on the receiver side. Id. (citing Pet. 43; Ex. 1003 ¶ 154).
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`Here, Patent Owner argues grounds 2 and 3 together. Although Patent
`
`Owner appears to argue that this limitation is not taught by Nakao and Beart,
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`Patent Owner’s argument refers primarily to Petitioner’s “motivations” for
`
`adding Beart’s sidewalls, and therefore appears to be directed primarily at
`
`Petitioner’s rationale to combine. See id. We accordingly address the
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`remainder of this argument in the next section.
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`To the extent that Patent Owner disputes that the combination
`
`discloses this limitation, we find Patent Owner’s argument to be conclusory
`
`because it amounts to a single sentence, without reference to any evidence of
`
`record, that “none of . . . Nakao[] or Beart disclose[s] a shield member and
`
`backplate on a wireless power receiver.” See id. And we agree with
`
`Petitioner that the combination of Nakao with Beart discloses this limitation.
`
`See Pet. 66–70; Reply 12. For instance, we find persuasive Dr. Allen’s
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`figure reproduced above and associated testimony that the combination of
`
`Nakao and Beart discloses the claimed “shield member comprising a
`
`backplate defining a third layer, said backplate arranged to control
`
`electromagnetic flux generated by said transmitting pad.” Ex. 1003 ¶¶ 196,
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`214; Pet. 57–58, 66–70.
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`c. Rationale to Combine
`
`Petitioner argues that a person of ordinary skill in the art would have
`
`been motivated to add Beart’s flux shield to Nakao’s wireless system to
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`(1) increase coupling between the transmitting pad and the receiving pad,
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`and (2) to protect surrounding components, objects, and people from stray
`
`magnetic flux. Pet. 53–59 (citing, e.g., Ex. 1003 ¶¶ 188–199). Petitioner
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`further argues that a “POSA also would have had a reasonable expectation
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`of success modifying Nakao to include Beart’s flux shields because Beart
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`teaches how its flux shield could be implemented in pads such as Nakao’s
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`Figure 7 embodiment.” Id. at 54 (citing Ex. 1003 ¶¶ 194–196).
`
`
`
`As to Petitioner’s first reason why a POSA would have modified
`
`Nakao with Beart, Petitioner argues that adding Beart’s flux shields would
`
`improve coupling by directing the flux between the two pads instead of
`
`through other nearby objects. Id. Petitioner argues that Nakao teaches
`
`charging an electric vehicle, during which nearby objects, including in the
`
`parking location or the vehicle itself, could cause reduced efficiency with the
`
`wireless power transfer system. See id. at 54–55 (citing Ex. 1003 ¶ 189;
`
`Ex. 1017, 139, 80–81; Ex. 1006, 2:11–27, 4:11–20). Petitioner argues that
`
`Beart teaches using a flux shield to concentrate flux in a useful direction and
`
`prevent flux from flowing into other extraneous objects. Id. at 55 (citing,
`
`e.g., Ex. 1006, Figs. 7–9, 2:29–3:10, 4:11–14, 8:24–25, 10:6–15, 13:13–31;
`
`Ex. 1003 ¶¶ 190–92).
`
`
`
`As to Petitioner’s second reason, Petitioner argues that “a POSA
`
`would have been motivated to combine Nakao with Beart to protect
`
`surrounding components and objects from undesirable and possibly
`
`damaging eddy currents,” which can potentially heat and damage other
`
`objects. Id. at 55–56 (citing Ex. 1006, 2:11–27; Ex. 1017, 21, 67; Ex. 1003
`
`¶ 193). Petitioner also argues that a person of ordinary skill would have
`
`been motivated to add Beart’s shielding to Nakao because “Nakao is a high-
`
`power system for electric vehicle charging and generates a correspondingly
`
`high-strength field” that can pose a safety hazard to people. Id. at 56 (citing
`
`Ex. 1003 ¶¶ 193–194; Ex. 1022, 514–15; Ex. 1026 ¶¶ 9–12; Ex. 1017, 23–
`
`24, 27).
`
`After considering Patent Owner’s arguments, which we address
`
`below, we agree with Petitioner that one of ordinary skill in the art would
`
`17
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`IPR2021-01116
`Patent 9,767,955 B2
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`have combined Beart with Nakao in the manner proposed. For instance, we
`
`find Petitioner’s arguments compelling that adding Beart’s flux shield to
`
`Nakao’s wireless system would have increased coupling between the
`
`transmitting pad and the receiving pad, and protected surrounding
`
`components, objects, and people from stray magnetic flux. Id. at 53–57
`
`(citing, e.g., Ex. 1003 ¶¶ 188–193). We find that one of ordinary skill in the
`
`art would have made this modification because, according to Dr. Allen’s
`
`unrebutted testimony, increasing transmit-receive coupling would have
`
`reduced the problem of nearby metal (such as from a vehicle chassis)
`
`reducing power transfer efficiency due to “the ferrous materials provid[ing]
`
`a low reluctance path that ‘suck[s]’ flux away from the power transfer
`
`system.” Ex. 1003 ¶¶ 189–90. And we further find that one of ordinary skill
`
`in the art would have made this modification because Dr. Allen persuasively
`
`testifies that “coupling between the transmitting and receiving pads would
`
`be improved, and less drive current would be necessary to generate the same
`
`amount of power at the receiving pad.” Id. ¶ 192.
`
`Moreover, we also find that Dr. Allen persuasively testifies that
`
`“when flux interacts with nearby metal components, . . . there are ‘core
`
`losses, for example via hysteresis and/or eddy current loss’ in those objects,
`
`and those eddy currents may heat up and potentially damage those objects.”
`
`Id. ¶ 193 (quoting Ex. 1006, 2:11–27; citing Ex. 1017, 21). We also find
`
`compelling his testimony that “stray flux could also interfere with medical
`
`devices like pacemakers in a passenger of the vehicle being charged,
`
`detonation of electro-explosive devices, and fires caused by sparks from
`
`induced fields.” Id. (citing Ex. 1022, 514–15). As such, we also agree with
`
`Dr. Allen’s testimony that “a POSA would [have] understood that stray
`
`18
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`Patent 9,767,955 B2
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`magnetic fields can pose a safety hazard to people as well.” Id. ¶ 194 (citing
`
`Ex. 1017, 23–24, 27, 155–60).
`
`Accordingly, we find that Petitioner’s arguments for the combination
`
`are well-supported by unrebutted record evidence. Thus, even in light of
`
`Patent Owner’s arguments, which we address below, we determine that
`
`Petitioner has persuasively shown that one of ordinary skill in the art would
`
`have combined Beart with Nakao as proposed.
`
`(1) Irrelevant to receivers argument
`
`Patent Owner raises three arguments against the combination. The
`
`first of these is that Petitioner’s alleged motivation for adding shield
`
`sidewalls to Nakao is irrelevant to inductive power receivers. PO Resp. 15–
`
`19. We address Patent Owner’s other arguments in separate sections below.
`
`Patent Owner points to claim 1’s preamble recitation of “[a]n
`
`inductive power transfer pad to receive power from a transmitting pad,”
`
`arguing that “Petitioner and Dr. Allen conclusorily assume that ‘[t]he same
`
`motivations [for combining] hold true on the receiver side.” Id. at 15 (citing
`
`Ex. 1003 ¶ 154).7 Patent Owner contends that Beart shields the transmitter,
`
`not the receiver. Id. at 17 (citing Ex. 1006, Figs. 3 and 9, 2:6–9, 10:23–29).
`
`In Patent Owner’s view, Beart does not suggest placing sidewall shielding
`
`on a passive receiver. Id. at 18. “The receiver is not generating magnetic
`
`fields but receiving them,” Patent Owner argues, “so any motivation for
`
`doing so is lacking.” Id. Contrary to Dr. Allen’s testimony that Beart “can
`
`
`7 In the original text, Patent Owner refers to “Hui-910” in this passage but
`applies this argument equally to the Nakao-Beart combination. PO Resp. 15
`(“Petitioner’s alleged motivation for adding shield sidewalls to Hui-910 and
`Nakano is irrelevant to inductive power receivers.” (emphasis and
`capitalization changed)).
`
`19
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`IPR2021-01116
`Patent 9,767,955 B2
`
`concentrate flux ‘in directions in which it is useful’” and “solve[] the
`
`problem of splay,”8 Patent Owner argues, “there would have been no
`
`motivation to add such shielding to a receiver” because “the transmitter
`
`shield already ‘focuses the field in the area between the transmitting and
`
`receiving pad.’” Id. at 18–19.
`
`Relatedly, Patent Owner also attacks Petitioner’s reliance on the
`
`Dobbs reference, which Petitioner uses to corroborate its motivation to
`
`combine argument. Id. at 15–17 (citing Pet. 58; Ex. 1026 ¶ 6). Patent
`
`Owner views Dobbs as teaching inferior shielding that—in the
`
`combination—would be disposed in the center of Nakao’s coils and
`
`magnetic core, “thereby reducing the effectiveness of magnetic coupling.”
`
`Id. at 15–16. Patent Owner asserts, “[p]articularly, in Nakao a shield such as
`
`Dobbs’ would further exacerbate the magnetic coupling problems due to
`
`slight misalignments between transmitter and receiver which Nakao seeks to
`
`avoid.” Id. at 16.
`
`In the Reply, Petitioner contends that Dr. Allen’s testimony,
`
`corroborated by Dobbs, “established that a POSA would have added
`
`sidewalls to the transmitter and the receiver pads of [Nakao] because the
`
`‘same principles [that apply to the transmitting pad as taught by Beart]
`
`would apply to the receiving pad as well.’” Reply 12 (citing Ex. 1003
`
`¶¶ 154–62, 193–98). And Petitioner disputes that it was unknown to add
`
`sidewalls to a receiver because “Dr. Allen testified, and Dobbs explained,”
`
`
`8 The ’955 patent describes “splay” in the following context: “the backplate
`and the shield member serve to direct flux upwards from the plane of the
`backplate with less splay of flux in and parallel to the plane of the
`backplate.” Ex. 1001, 3:53–56. Dr. Allen testifies that “Beart’s improved
`flux shield . . . reduces the amount of flux splaying out the sides and parallel
`to the flux-generating surface[.]” Ex. 1003 ¶ 153.
`
`20
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`IPR2021-01116
`Patent 9,767,955 B2
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`that “it ‘is often desired’ to shield transmitting and receiving pads because
`
`there may be ‘undesirable RF emission, increased leakage inductance, and/or
`
`reduced power transfer efficiency.’” Id. (citing Ex. 1003 ¶ 162 (quoting Ex.
`
`1026 ¶ 8)). As Petitioner relies on Dobbs solely for corroborating the
`
`motivation to combine Beart and Nakao, Petitioner contends, “[i]t is of no
`
`moment that Dobbs focused on a different geometry . . . when illustrating
`
`well-known shielding principles.” Id. at 13–14 (citing, e.g., Ex. 1026 ¶¶ 8,
`
`42; Ex. 1003 ¶¶ 154–59, 187–99).
`
`Petitioner also disagrees with Patent Owner’s contention that a POSA
`
`would have added sidewalls only to the transmitter side shielding because
`
`that completely “solves the problem of splay.” Id. at 14. In Petitioner’s
`
`view, Patent Owner provides no evidence to support this argument, whereas
`
`Dr. Allen testifies that sidewalls on the receiver side can also reduce splay.
`
`Id. (citing Ex. 1003 ¶¶ 148–53, 193–98). To the contrary, Petitioner
`
`contends, a POSA would have added sidewall shielding to the transmitter
`
`and receiver pads, “further protecting components” and “people in the
`
`vicinity.” Id. (citing Ex. 1003 ¶¶ 154–59, 193–98). And Petitioner points
`
`out that “[t]he shielding on the receiver side is for protection from fields
`
`generated by the transmitter side.” Id. at 15 (citing Ex. 1003 ¶¶ 154–56,
`
`192–95).
`
`We determine that Petitioner has the better argument, supported by
`
`expert testimony and cited evidence. We find persuasive Petitioner’s
`
`argument that a POSA would have added sidewalls to shielding not just in a
`
`transmitter, but also in a receiver. Id. at 13–15. Dr. Allen’s unrebutted
`
`testimony that sidewalls on the receiver side can reduce splay, protect
`
`components, and protect people in the vicinity are compelling. See Ex. 1003
`
`¶¶ 148–59, 193–98. In contrast, Patent Owner presents only attorney
`
`21
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`argument. Further, its contentions against Dobbs are also n
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