Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: January 4, 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, SALLY C. MEDLEY, and SCOTT RAEVSKY,
`Administrative Patent Judges.
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: January 4, 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, SALLY C. MEDLEY, and SCOTT RAEVSKY,
`Administrative Patent Judges.
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-01116
`Patent 9,767,955 B2
`
`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.”). Institution of an inter partes review is authorized by statute when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). Upon consideration of the Petition, the Preliminary Response, and
`the evidence of record, we determine that Petitioner has established a
`reasonable likelihood of prevailing with respect to the unpatentability of at
`least one claim of the ’955 patent. Accordingly, for the reasons that follow,
`we institute an inter partes review of claims 1–13 of the ’955 patent.
`
`A. Real Parties in Interest
`Petitioner lists Momentum Dynamics Corporations as its only real
`party-in-interest. Pet. 80.
`Patent Owner lists Auckland UniServices Limited, the University of
`Auckland, and exclusive licensee WiTricity Corporation as its real parties-
`in-interest. Paper 4, 1.
`
`B. Related Matters
`The parties list a related district court litigation, WiTricity Corp., et al,
`v. Momentum Dynamics Corp., C.A. No. 20-1671-MSG (D. Del.). Pet 80;
`Paper 4, 1. The parties also identify the following inter partes review
`petitions for other patents asserted in the district court litigation: IPR2021-
`01127, involving U.S. Patent No. 9,306,635; IPR2021-01165, involving
`
`2
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`IPR2021-01116
`Patent 9,767,955 B2
`U.S. Patent No. 7,741,734; IPR2021-01166, involving U.S. Patent No.
`8,304,935; and IPR2021-01167, involving U.S. Patent No. 8,884,581.
`See Pet. 80; Paper 4, 1–2. Patent Owner further identifies U.S. Application
`No. 16/138,653, filed September 21, 2018. Paper 4, 2.
`
`C. The ’955 Patent
`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
`the backplate with less splay of flux in and parallel to the plane of the
`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.
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`Patent 9,767,955 B2
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`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
`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
`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
`28 covers the main circular body of the pad including molding 23, coil 27,
`and ferrite bars 22. See id. at 9:8–14.
`The ’955 patent discloses that “strip 25 is coupled or formed integral
`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
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`Patent 9,767,955 B2
`charging pad through cover 28 in a generally perpendicular direction to
`backplate 21.” Id. at 9:15–18.
`
`D. Illustrative Claims
`Petitioner challenges claims 1–13 of the ’955 patent. Claims 1 and 13
`are independent claims and are reproduced below.
`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.
`13. An inductive power transfer system comprising a
`wireless power receiver pad separable from a wireless power
`transmitter pad, the two said pads each 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.
`
`Id. at 16:4–16.
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`IPR2021-01116
`Patent 9,767,955 B2
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–13 would have been unpatentable on
`the following grounds (Pet. 2):
`Reference(s)
`Claim(s) Challenged
`35 U.S.C. §
`Hui-9102
`1, 4–6, 8–13
`102(b)1
`Hui-910, Beart3
`1, 4–13
`103(a)
`Nakao4, Beart
`1–13
`103(a)
`II. DISCUSSION
`
`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
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`
`
`1 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.
`2 U.S. Pat. Appl. Pub. No. US 2005/0189910 A1, published Sep. 1, 2005
`(Ex. 1005, “Hui-910”).
`3 PCT Pub. No. WO 2005/024865 A2, published Mar. 17, 2005 (Ex. 1006,
`“Beart”).
`4 U.S. Pat. Appl. Pub. No. US 2004/0119576 A1, published June 24, 2004
`(Ex. 1007, “Nakao”).
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`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) 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 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 does not propose an alternative assessment.
`See generally Prelim. Resp. We adopt Petitioner’s definition of the level of
`skill for purposes of this Decision, except that we delete the phrase “at least”
`to avoid including ambiguity in the definition of the level of skill.
`
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`C. Claim Construction
`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).
`“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.
`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), 10–11. Petitioner argues that this construction is supported by
`the plain meaning of the claims and the specification. Id. at 8–11.
`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.” Prelim. Resp. 10. For the reasons that
`follow, we agree with Petitioner that “a shield member comprising a
`backplate” may include additional components other than the claimed
`backplate, but additional components are not required.
`We begin with the claim language. Claim 1 recites “a shield member
`comprising a backplate defining a third layer.” Petitioner correctly notes
`that the term “‘[c]omprising’ is a term of art used in claim language which
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`means that the named elements are essential, but other elements may be
`added and still form a construct within the scope of the claim.” Pet. 8
`(quoting Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
`1997)). Thus on its face, the named “backplate” is an essential named
`element, and while additional elements may be added to be within the scope
`of what is claimed, such additional elements are not required.
`Patent Owner argues that construing the limitation to require only a
`“backplate,” would result in “reading the term ‘shield member’ out of the
`claim.” PO Resp. 5. We disagree. The words of the disputed limitation
`mean that the backplate is included as part of the “shield member.” In
`contrast, Patent Owner argues that we should read the language as requiring
`two separate elements; a backplate and a shield member. Id. at 5, 10
`(“[c]hallenged claims 1 and 13 each recite both ‘a shield member’ and a
`‘backplate’”). The claim language does not recite a “shield member and a
`backplate” as if they are two separate unrelated elements. Rather, the term
`“a shield member comprising a backplate” includes the transitional term
`“comprising,” such that the two terms are related. A backplate is included as
`a part of the shield member.
`Petitioner agrees that the plain language “compels . . . reading” “a
`shield member comprising a backplate” to require the backplate, while
`“other elements may (or may not) be added to the shield member.” Pet. 8.
`Petitioner further argues that “[t]he claims in the parent ’334 patent (Ex.
`1008), which has an identical specification, confirm this reading.” Id. In
`support of its argument, Petitioner cites to In re Rambus Inc., 694 F.3d 42,
`48 (Fed. Cir. 2021) for the proposition that “[U]nless otherwise compelled[,]
`the same claim term in the same patent or related patents carries the same
`construed meaning.” Id. (alterations in original). Claim 1 of the ’334 patent,
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`Patent 9,767,955 B2
`also directed to an “inductive power transfer pad,” recites “a shield member
`comprising a backplate defining a third layer.” Ex. 1008, 14:14–15. Claim
`9 depends from claim 1 and recites “wherein the shield member forms a side
`wall around the pad.” Id. at 14:52. Claim 10 depends from claim 9 and
`recites “wherein the side wall extends from the backplate and is integrally
`formed therewith.” Id. at 14:54–55. Claim 16 depends from claim 1 and
`recites “said shield member further comprises a metal strip.” Id. at 15:4–5.
`Petitioner argues that “in the context of this patent family, a shield member
`may have multiple components. One such component—and the only one
`required by the plain language of the claims—is a backplate defining a third
`layer.” Pet. 9 (citing Ex. 1003 ¶ 64).
`Patent Owner counters that “Petitioner reaches outside the bounds of
`the ’955 Patent to attempt to justify its strained interpretation.” Prelim.
`Resp. 9. Patent Owner, however, directs us to no evidence or case law
`compelling us to, in this case, overlook the guidance in Rambus that the
`same claim term in a related patent carries the same construed meaning.
`Here, Petitioner asserts, and Patent Owner does not dispute, that the ’334
`patent “has an identical specification” as the ’955 patent. Pet. 8. In
`addition, and throughout its briefing on this claim construction issue, Patent
`Owner equates the “shield member” with a strip of material described in the
`’955 patent. See, e.g., Prelim. Resp. 7 (“strip 25 [shield member]”
`(alteration in original)), 8 (“the shield member is formed from a strip of
`material” and “the ’955 Patent describes the shield member as a ‘strip’”).
`Claims 1 and 16 of the ’334 patent, for example, supports reading the
`disputed limitation before us as Petitioner proposes. Indeed, the ’334 patent
`claim 16 recites that the “shield member further comprises a metal strip.”
`Ex. 1008, 15:4–5. Notably, Patent Owner fails to discuss the ’334 patent
`
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`claim 16. Prelim. Resp. 9–10. The limitation Patent Owner seeks to read
`into independent claim 1 (e.g., a strip of material) appears for the first time
`in the ’334 patent dependent claim 16. By limiting the ’334 patent claim 1
`shield member to “further comprise[] a metal strip,” we preliminarily
`determine that the intended result was to maintain breadth in the ’334 patent
`claim 1 such that the “shield member” need not include “a metal strip” (a
`strip of material). Thus, we preliminarily determine that the claims of the
`’334 patent are further supporting evidence of the meaning of the disputed
`limitation.
`We next consider the limitation in light of the specification of the ’955
`patent. Patent Owner argues that the ’955 patent “uses the term shield
`member seven times and not once is it equated with the backplate.” Prelim.
`Resp. 7 (citing Ex. 1001, 2:42–43, 3:32–35, 3:48–50, 3:53–56). Patent
`Owner contends that the ’955 patent consistently describes the shield
`member and backplate as two structures that function together to
`direct/control magnetic flux. Id. (citing Ex. 3:53–56, 9:5–7, 9:15–23).
`Patent Owner argues that the ’955 patent describes “the shield member is
`formed from a strip of material with the ends thereof joined to form a ring,”
`and “the shield member is coupled to the backpla[t]e.” Id. at 8 (citing Ex.
`1001, 3:31–33, 3:35) (alteration in original). Patent Owner also argues that
`“the ’955 Patent never describes the backplate as controlling or directing
`flux alone.” Id. at 9.
`In the “Summary of the Invention” section, the ’955 patent describes
`that “[p]referably, the shield member is coupled to the backpla[t]e” and “the
`shield member preferably being configured to extend from the backplate to
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`the cover plate.” Ex. 1001, 3:35, 3:48–50 (emphases added).5 Although
`these may be summaries of preferred embodiments, we agree with Petitioner
`that the “[t]he specification does not clearly disavow backplate shield
`members without sidewalls.” Pet. 10. In particular, Petitioner argues that
`“the specification describes a backplate that is arranged to control the
`electromagnetic flux to shield other components” as claimed and that the
`backplate is described as aluminum. Id. (citing Ex. 1001, 8:62–65, 3:28–31;
`Ex. 1010, 35–36; Ex. 1006, 2:29–3:4; Ex. 1003 ¶¶ 65–68). Petitioner further
`argues that an aluminum strip may assist in controlling the pattern of the flux
`generated, but is not required. Id. (citing Ex. 1001, 9:5–7). Dr. Allen
`testifies that a person having ordinary skill in the art would have understood
`that the described aluminum backplate that functions to limit the passage of
`magnetic flux “alone would act as a ‘shield member’ because it would
`‘shield’ components on the opposite side of the backplate from magnetic
`flux.” Ex. 1003 ¶ 66 (citing Ex. 1001, 3:28–31, 8:62–65; Ex. 1010, 35, Fig.
`2-19, Table 1-1; Ex. 1006, 2:29–3:4). We preliminarily agree with
`Petitioner’s contentions.
`Our reviewing court “has repeatedly ‘cautioned against limiting the
`claimed invention to preferred embodiments or specific examples in the
`specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`(Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
`1313, 1328 (Fed. Cir. 2002)); see also SuperGuide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting that “it is
`important not to import into a claim limitations that are not a part of the
`
`
`5 In the “Detailed Description of Preferred Embodiments” section of the
`’955 patent, the term “shield” or “shield member” is not used again.
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`claim”). “[I]t is the claims, not the written description, which define the
`scope of the patent right.” Williamson, 792 F.3d at 1346–47 (alteration in
`original); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
`2005) (en banc) (noting that “[i]t is a ‘bedrock principle’ of patent law that
`‘the claims of a patent define the invention to which the patentee is entitled
`the right to exclude’” (quoting Innova/Pure Water, Inc. v. Safari Water
`Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004))). Here,
`claims 1 and 13 are clear on their face and we agree with Petitioner that the
`’955 patent does not disavow backplate shield members without sidewalls.
`Pet. 10.
`For the above reasons, “a shield member comprising a backplate” may
`include additional components other than the claimed backplate, but
`additional components are not required.
`“slabs”
`Claim 7 depends directly from claim 1 and recites “wherein the
`backplate extends beyond coil and slabs.” Ex. 1001, 15:4–5. Petitioner
`argues 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). For
`purposes of applying prior art to claim 7, Petitioner interprets claim 7 not as
`written, but rather as requiring one or more permeable magnetic material
`members. Id. Patent Owner provides no construction for the term “slabs.”
`See generally Prelim. Resp.
`Petitioner’s proffered correction would materially alter what would be
`required of claim 7. Instead of requiring that the backplate extend beyond
`coil and slabs, the correction would require that the backplate extend beyond
`“coil and [one or more permeable magnetic material members].” We find
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`that the proposed change is not a minor one, but a material change of what is
`required.
`A patent claim may be corrected through claim construction “only if
`(1) the correction is not subject to reasonable debate based on consideration
`of the claim language and the specification and (2) the prosecution history
`does not suggest a different interpretation of the claims.” Novo Indus., L.P.
`v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). But “courts
`may not redraft claims, whether to make them operable or to sustain their
`validity.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed.
`Cir. 2004). The burden is on Petitioner to show that a claim contains the
`kind of error that is considered a drafting error. 37 C.F.R. § 42.20(c).
`Neither Petitioner nor Dr. Allen direct us to supporting evidence in
`support of the assertion 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. 75–76; Ex. 1003 ¶ 232.
`Accordingly, at this juncture of the proceeding, we do not construe claim 7
`as suggested by Petitioner, but rather read the claim as written.
`For purposes of this Decision, we need not expressly construe any
`other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
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`D. Asserted Anticipation of Claims 1, 4–6, and 8–13 over Hui-910
`Petitioner contends claims 1, 4–6, and 8–13 are unpatentable under 35
`U.S.C. § 102(b) as anticipated by Hui-910. Pet. 11–37. In support of its
`showing, Petitioner relies on the declaration of Dr. Mark Allen. Id. (citing
`Ex. 1003).
`
`1. Hui-910
`Hui-910 describes a contactless battery charging system including an
`inductive charger. Ex. 1005 ¶¶ 1, 4, 81. The system includes a power
`delivering charger circuit (charging module) and a receiving circuit located
`in a battery powered electronic device with a rechargeable battery. Id.
`¶¶ 5, 81. The receiving circuit includes a planar secondary winding for
`receiving electrical energy from a battery charger, and electromagnetic
`shielding between the winding and the device’s major electronic
`components. Id. ¶ 11.
`Figures 4(b) and 4(c) illustrate a charging module and are reproduced
`below.
`
`Figures 4(b) and 4(c) show housing 1 including a charging module
`
`with a charging circuit. Id. ¶ 70. Figure 4(b) shows mobile phones 3 laying
`on flat charging surface 2 of housing 1. See id. Figure 4(b) further
`illustrates several layers in descending order from charging surface 2,
`
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`including: insulating cover sheet 8, printed circuit board 4, electromagnetic
`interference (“EMI”) shielding including ferrite sheet 5 above conductive
`copper sheet 6, and at the bottom, plastic substrate material 7. Id. ¶ 71.
`Figure 4(c) illustrates the charging module without charging surface 2 and
`insulating cover sheet 8, thereby showing spiral conductive tracks formed on
`printed circuit board 4. See id.
`
`Figure 12(d) illustrates a back cover of a portable electronic device
`and is reproduced below.
`
`
`Figure 12(d) illustrates a cut-away of the back cover to show a
`
`receiving circuit with three layers. See id. ¶ 80, Fig. 12(d). The top layer of
`the receiving circuit includes two adjacent rectangular sections, secondary
`planar transformer winding 10, and diode rectifier circuit 13. Id. The next
`layer down includes an EMI shield that spans the total area of winding 10
`and diode rectifier circuit 13. Id. The EMI shield is made up of two layers,
`shield 11 located below winding 10 and diode rectifier circuit 13, and
`conductive sheet 12, located below shield 11. Id. The “EMI shield can be a
`thin piece of ferrite material . . . or ferrite sheets, or more preferably a
`combination of a ferrite sheet 11 and then a thin sheet 12 of copper of
`another conductive material such as [aluminum].” Id. Figure 12(d)
`
`16
`
`
`
`IPR2021-01116
`Patent 9,767,955 B2
`illustrates contacts 14 as two separate squares, located next to diode rectifier
`circuit 13 and spanning the height of circuit 13, shield 11, and sheet 12. Id.
`“The rectifier circuit rectifies the coupled AC voltage into a DC voltage for
`charging the battery through mechanical contacts 14.” Id.
`
`Figure 13(b) illustrates a receiving circuit for charging a watch battery
`and is reproduced below.
`
`
`Figure 13(b) shows watch mechanism 20, with a circular setting for
`
`rechargeable battery 21. Id. ¶ 83. Figure 13(d) illustrates copper sheet 22
`located above the battery and ferrite sheet 23 located above the copper sheet.
`Id. Copper sheet 22 and ferrite sheet 23 form an EMI shield. Id. Figure
`13(d) further illustrates planar coreless transformer secondary winding 24
`above ferrite sheet 23. Id. Winding 24 includes two electrical contacts 26
`descending across the height of the EMI shield, thereby connecting battery
`21 to winding 24. Id. Back cover 25 is located above winding 10. Id. Back
`cover 25 is a non-metallic material. Id. The watch battery may be recharged
`by placing the watch on the charging surface of a battery charging system
`such that back cover 25 lies flat on the planar charging surface. Id.
`“Electrical energy is then coupled from the primary winding(s) in the battery
`
`17
`
`
`
`IPR2021-01116
`Patent 9,767,955 B2
`charging module to the secondary winding in the watch and then to the
`rechargeable battery.” Id.
`
`2. Discussion
`Claim 1 recites “[a]n inductive power transfer pad to receive power
`from a transmitting pad, the inductive power transfer pad comprising.” Ex.
`1001, 14:37–48. Claim 13 recites “[a]n inductive power transfer system
`comprising a wireless power receiver pad separable from a wireless power
`transmitter pad, the two said pads each comprising.” Id. at 16:4–16.
`Petitioner contends that claim 1 recites a receiving pad and claim 13 recites a
`system with both receiving and transmitter pads. Pet. 16. Petitioner
`contends that Hui-910 describes an inductive power system including the
`elements of claims 1 and 13 based on Figures 4(a)–4(c), 5(a)–5(b), 12(d),
`and 13(b). Id. at 16–31 (citing Ex. 1005, Figs. 4(c), 12(d), 13(b)).
`Petitioner contends that Hui-910 teaches a transmitter pad. See Pet.
`16–17. Below is Petitioner’s reproduced “Figure A” showing an
`embodiment of a transmitter pad.
`
`“Figure A” is a representation reproduced in the Petition of an
`
`embodiment described in Hui-910. Id. at 25. Figure A includes Petitioner’s
`
`
`
`18
`
`
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`IPR2021-01116
`Patent 9,767,955 B2
`annotations of Hui-910’s Figure 5(a), which is an exploded view of the
`charging module in Hui-910’s Figures 4(b) and 4(c). Id. (citing Ex. 1003
`¶ 114; Ex. 1005 ¶¶ 71, 73). Petitioner’s annotations include labelling coil
`layer 4 (yellow), permeable magnetic material layer 5 (green), and shield
`member/backplate layer 6 (orange), all three layers forming transmitting pad
`(blue). See id.
`
`Petitioner contends that Hui-910 teaches a receiver pad. Below is
`Petitioner’s reproduced “Figure B” showing an embodiment of a receiver
`pad.
`
`
`
` “Figure B” is a representation reproduced in the Petition of an
`embodiment described in Hui-910. Id. at 18. Figure B includes Petitioner’s
`annotations of Hui-910’s Figure 12(d). See id. (citing Ex. 1003 ¶ 115;
`Ex. 1005, Figs. 11, 12(a)–12(c), ¶¶ 11, 28–29, 80–81). Petitioner’s
`annotations include labelling coil layer 10 (yellow), permeable magnetic
`material layer 11 (green), and shield member/backplate layer 12 (orange), all
`three layers forming transmitting pad (blue). See id.
`
`In another example, below is Petitioner’s reproduced “Figure C”
`showing an alternative embodiment of a receiver pad.
`
`19
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`IPR2021-01116
`Patent 9,767,955 B2
`
`
`
`“Figure C” is a representation reproduced in the Petition of an
`
`embodiment described in Hui-910. Id. at 18. Figure C includes Petitioner’s
`annotations of Hui-910’s Figure 13(b). Id. (citing Ex. 1003 ¶ 116; Ex. 1003,
`Fig. 13(a), ¶¶ 12, 30, 83). Petitioner’s annotations include labelling coil
`layer 10 (yellow), permeable magnetic material layer 11 (green), and shield
`member/backplate layer 12 (orange), all three layers forming transmitting
`pad (blue). See id.
`
`At this juncture of the proceeding, Patent Owner does not dispute
`Petitioner’s claim 1 and claim 13 showing, with the exception of “a shield
`member comprising a backplate defining a third layer, said backplate
`arranged to control electromagnetic flux” as recited in claims 1 and 13. See
`Prelim. Resp. 5–12. For that limitation, Petitioner argues that Figures B and
`C illustrate a receiver pad (claims 1, 13) with a shield member comprising a
`backplate in the form of copper sheet 12 (Figure B) or 22 (Figure C). Pet.
`26–27 (citing Ex. 1003 ¶¶ 115, 116; Ex. 1005, Figs. 11, 12(a)–12(d), 13(a)–
`13(b), ¶¶ 11, 12, 28–30, 80, 81, 83). Petitioner argues that Figure A
`illustrates a transmitter pad (claim 13) with a shield member comprising a
`
`20
`
`
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`IPR2021-01116
`Patent 9,767,955 B2
`backplate in the form of copper sheet 6. Id. at 25 (citing Ex. 1003 ¶ 114; Ex.
`1005, Fig. 5(a), ¶¶ 71, 73).
`Petitioner contends that “Hui-910’s conductive layers 6, 12, and 22 (in
`Figures 5(a), 12, and 13, respectively) are ‘arranged to control
`electromagnetic flux generated by said transmitting pad,’ as claimed,
`because they shield the devices’ other components.” Id. at 28 (citing Ex.
`1005 ¶¶ 4, 8; Ex. 1003 ¶¶ 118–125). More specifically, Petitioner contends
`that “the backplate (made of a conductive material such as copper or
`aluminum, like the ’955 patent) acts as a shield, as eddy currents induced by
`the incoming magnetic flux generate a second magnetic field opposing the
`transmitting pad’s field.” Id. at 29–30 (citing Ex. 1003 ¶ 122).
`Patent Owner argues that, under its proposed claim construction, Hui-
`910 does not disclose a shield member as a separate component from the
`backplate. See Prelim. Resp. 8–9, 11–12. Patent Owner argues that “[t]he
`Petition itself acknowledges that Hui-910 does not disclose ‘an inductive
`power transfer pad [system]’ with both a shield member and a backplate.”
`Id. at 11 (second alteration in original). As explained above, we
`preliminarily adopt Petitioner’s proposed construction of “a shield member
`comprising a backplate” to mean the claimed shield member may include
`more components than a backplate but other components are not required.
`Accordingly, based on the record before us, Petitioner has shown
`sufficiently that Hui-910 meets the disputed limitation.
`Based on the preliminary record before us, we determine that
`Petitioner has shown a reasonable likelihood that Hui-910 anticipates claim
`1 and claim 13.
`Petitioner conte
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