UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MOMENTUM DYNAMICS CORPORATION,
`Petitioner
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`v.
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`WITRICITY CORPORATION,
`Patent Owner
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`Case IPR2021-01116
`Patent 9,767,955
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`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`INTRODUCTION ........................................................................................... 1 
`SUMMARY OF THE ’955 PATENT ............................................................. 3 
`  GROUND 1’s PROPOSED COMBINATION FAILS TO TEACH OR
`SUGGEST THE CLAIMED “SHIELD MEMBER” ...................................... 4 
`Petitioner’s construction of “shield member comprising a backplate”
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`is improper ............................................................................................. 4 
`Hui-910 fails to disclose “a shield member comprising a backplate …
`said backplate arranged to control electromagnetic flux generated by
`said transmitting pad” .......................................................................... 14 
`  PETITIONER’S ALLEGED MOTIVATION FOR ADDING SHIELD
`SIDEWALLS TO HUI-910 AND NAKANO IS IRRELEVANT TO
`INDUCTIVE POWER RECEIVERS ............................................................ 15 
`  GROUND 2 FAILS TO PROVE THAT HUI-910 AND BEART RENDER
`THE CHALLENGED CLAIMS OBVIOUS BY A PERPONDERANCE OF
`THE EVIDENCE ........................................................................................... 19 
`  Hui-910 and Beart employ fundamentally different designs that are
`incompatible with one another ............................................................ 20 
`The Petition fails to consider the impact of the fundamental design
`differences on the combination of Hui-910 and Beart ........................ 24 
`  GROUND 3’S PROPOSED COMBINATION RENDERS NAKAO
`INOPERABLE FOR ITS INTENDED PURPOSE ....................................... 31 
`Petitioner fails to consider the effects of Beart’s shield on Nakao’s
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`principle of operation .......................................................................... 33 
`Petitioner’s proposed combination blocks the magnetic coupling at the
`side surfaces of Nakao’s magnetic cores thereby defeating a primary
`goal of Nakao’s invention. .................................................................. 38 
`Petitioner’s incomplete obviousness analysis falls far short of a
`preponderance of the evidence. ........................................................... 42 
`  CONCLUSION .............................................................................................. 44 
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`TABLE OF CONTENTS
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`i
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
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`
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`INTRODUCTION
`WiTricity Corporation and Auckland Uniservices Ltd. (collectively “Patent
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`Owner”)1 submit this Preliminary Response to the Petition for inter partes review
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`(“IPR”) of U.S. Patent No. 9,767,955 (the “’955 Patent”) filed by Momentum
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`Dynamics Corporation (“Petitioner”). As explained below, Petitioner has failed to
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`carry its burden to show by a preponderance of the evidence that the challenged
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`claims are unpatentable.
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`Anticipation Ground 1 based on Hui-910 (EX1005) fails due to its reliance
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`on an improper claim construction. As discussed in more detail below, Petitioner’s
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`proposed construction interprets the independent claims to exclude the “a shield
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`member”—one of two independently recited claim elements. Petitioner argues for
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`a claim construction that is at odds with the detailed description of the ’955 Patent
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`itself and misapplies the doctrine of claim differentiation. Ground 1 applies this
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`construction, and thus fails to address this improperly excluded claim element.
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`In addition, obviousness Ground 2 based on Hui-910 and Beart (EX1006)
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`fails to show that a POSITA would have been motivated to combine the teachings
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`1 As noted in the Mandatory Notices, WiTricity Corporation is an exclusive
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`licensee of the ’955 patent, which is owned by Auckland UniServices Limited. See
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`Paper 4, 1.
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`1
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`of Beart and Hui-910 in the manner proposed. Petitioner’s analysis ignores
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`fundamental design differences between the systems of Hui-910 and Beart, and, in
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`so doing, fails to show that Beart’s sidewall (which Petitioner alleges forms part of
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`the claimed “shield member”) would provide any added benefit to Hui-910, much
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`less any benefit that would have motivated a POSITA to perform the combination.
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`Petitioner also provides no evidence – aside from the conclusory assertions of Dr.
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`Allen – that sidewall shielding would provide any additional benefit to a passive
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`inductive power receiver in a mobile phone that already includes a backplate
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`shield.
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`As to Ground 3—obviousness based on Nakao (EX1007) in view of Beart—
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`Petitioner fails to show that a POSITA would have been motivated to combine the
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`teachings of Beart and Nakao in the manner proposed. Specifically, the Petition
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`ignores the detrimental effects that the proposed modifications to Nakao would
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`have on Nakao’s principle of operation. As shown below, these effects would
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`frustrate the intended purpose of Nakao’s invention, which would lead a POSITA
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`not to perform the proposed combination. Here again, provides no evidence –
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`aside from the conclusory assertions of Dr. Allen – that sidewall shielding would
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`provide any additional benefit to a passive inductive power receiver.
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`In light of these deficiencies, the Petition fails to show that any challenged
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`claim is unpatentable. Thus, the Board should find challenged claims patentable.
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`2
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`SUMMARY OF THE ’955 PATENT
`The ’955 Patent is directed to “Inductive Power Transfer (IPT) pad[s]” for
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`charging electric vehicles. EX1001, 1:18-20. Two IPT pads are used in
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`combination to wirelessly transfer power from a transmitter pad to a receiver pad.
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`Id., Abstract, 4:1-5, cl. 13.
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`Each IPT pad includes a coil, magnetic members (e.g., ferrite bars), a shield
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`member “arranged around both [the] coil” and the magnetic members, and a
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`backplate. Id., 2:40-43, 3:10-12, FIG. 4. The ’955 Patent explains that together
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`“the backplate and the shield member serve to direct flux upwards from the
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`backplate with less splay of flux in and parallel to the plane of the backplate.” Id.,
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`3:53-56, 9:15-21. Further, the shield member and backplate together “improve[]
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`the inductive coupling” between transmitter and receiver pads, and also “reduce[]
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`the chance that any undesired objects will be subjected to the induced fields during
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`use.” Id., 3:56-59, 9:15-21.
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`The ’955 Patent describes the “shield member” as “formed from a strip of
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`material with the ends thereof joined to form a ring.” Id., 3:32-33. Additionally,
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`the patent states that a cover plate and “the backplate provide front and rear walls
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`of a housing for the IPT pad, with side walls provided by the shield member.” Id.,
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`3:46-50.
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`3
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
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`EX1001, Detail of FIG. 4 (annotated)
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` GROUND 1’s PROPOSED COMBINATION FAILS TO TEACH OR
`SUGGEST THE CLAIMED “SHIELD MEMBER”
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`Petitioner’s construction of “shield member comprising a
`backplate” is improper
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`Claims 1 and 13 recite “a shield member comprising a backplate defining a
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`third layer, said backplate arranged to control electromagnetic flux [generated by
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`said transmitting pad].” The Petition interprets these limitations as requiring only
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`a “backplate,” thereby improperly reading the term “shield member” out of the
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`claim. Pet., 8, 10-11. Accordingly, Petitioner’s construction renders the claim’s
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`recitation of a “shield member” superfluous, and thus should be rejected. See
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`Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
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`(denouncing claim constructions which render phrases in claims superfluous).
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`4
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`Petitioner argues that claims’ use of the term “comprising” compels such an
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`interpretation. Petition, 8. But the Federal Circuit has repeatedly cautioned that
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`the term “‘[c]omprising’ is not a weasel word with which to abrogate claim
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`limitations.” Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007)
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`(quoting Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir.
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`1998)); In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) (“The [term]
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`‘comprising’ does not render a claim anticipated by a device that contains less
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`(rather th[a]n more) than what is claimed.”). For example, in one case the Federal
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`Circuit explains:
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`It is true, of course, that “the use of ‘comprising’
`creates a presumption that the body of the claim is
`open.” Crystal
`Semiconductor Corp.
`v. TriTech
`Microelecs. Int'l, Inc., 246 F.3d 1336, 1348 (Fed. Cir.
`2001); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
`(Fed. Cir. 1997) … But, the term “comprising” does not
`displace, or otherwise allow one to disregard, the patent
`specification. As we repeatedly have emphasized, the
`claims must be read in view of the specification, which
`“is always highly relevant to the claim construction
`analysis” and is “the single best guide to the meaning of a
`disputed term.” Indacon, Inc. v. Facebook, Inc., 824 F.3d
`1352, 1355 (Fed. Cir. 2016) (quoting Phillips[v. AWH
`Corp.], 415 F.3d [1303,] 1315 [(Fed. Cir. 2005) (en
`banc)]). This fundamental precept is no less true for
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`“comprising” claims than it is for other types of claims.
`See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.
`Cir. 2010) (stating that the Board’s construction of a claim
`reciting a “comprising” limitation must be “consistent with
`the specification” (internal quotation marks omitted)).
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`Raytheon Co. v. Sony Corp., 727 F. App'x 662, 672 (Fed. Cir. 2018)(non-
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`precedential).2
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`In fact, Petitioner’s proposed construction is not supported by the written
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`description of the ’955 Patent, and is therefore improper. As the Federal Circuit
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`emphasized in Phillips, “[t]he claims, of course, do not stand alone.” Phillips v.
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`AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)). The court continued:
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`Rather, [the claims] are part of a fully integrated written
`instrument ... consisting principally of a specification that
`concludes with the claims. For that reason, claims must
`be read in view of the specification, of which they are a
`part. ... As we stated in Vitronics, the specification is
`always highly relevant to the claim construction analysis.
`Usually, it is dispositive; it is the single best guide to the
`meaning of a disputed term.
`Phillips, 415 F.3d at 1315 (internal quotes omitted); see also Markman v.
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`Westview Instruments, Inc., 517 U.S. 370, 389 (1996) (“[A claim] term can be
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`                                                            
`2 All emphases added unless noted otherwise.
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`6
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`defined only in a way that comports with the instrument as a whole.”);
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`Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1341 (Fed. Cir.
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`1999) (a “claim interpretation [that] would exclude the preferred
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`embodiment described in the specification ... cannot be sustained”). The
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`specification unambiguously defines the shield member as a ring of material
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`separate from a backplate. EX1001, 3:31-33; McGill, Inc. v. John Zink Co.,
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`736 F.2d 666, 674 (Fed. Cir. 1984) (“Words which were defined in the
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`specification must be given the same meaning when used in a claim.”).
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`The ’955 Patent clearly states that “the shield member is formed from
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`a strip of material with the ends thereof joined to form a ring,” EX1001, 3:31-
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`33, and “the shield member is coupled to the backpla[t]e.” Id., 3:35. The ’955
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`Patent specification uses the term shield member seven times and not once is
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`it equated with the backplate. Id., 2:42-43, 3:32-35, 3:48-50, 3:53-56. Rather,
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`in each instance the specification consistently and without exception describes
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`the shield member and backplate as two separate structures that function
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`together to direct/control magnetic flux. Id. 3:53-56 (“the backplate and
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`shield member serve to direct flux upwards”) 9:5-7, 9:15-23 (“backplate 21
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`and strip 25 [shield member] are appropriately coupled to work together to
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`direct flux generated by the charging pad”). Consequently, Petitioner’s
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`construction of “shield member” is not supported by the written description
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`under 35 U.S.C. 112, and is therefore improper. Markman, 517 U.S. at 389;
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`Phillips, 415 F.3d at 1315; Astrazeneca AB v. Mutual Pharmaceutical Co.,
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`Inc., 384 F.3d 1333, 1336 (Fed. Cir. 2004) (“A long line of cases indicates
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`that evidence intrinsic to the patent—particularly the patent’s specification,
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`including the statutorily-required written description of the invention—is the
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`primary source for determining claim meaning”).
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`Indeed, the Petition acknowledges this fact, admitting that the “specification
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`may be read as being in some tension with the claim language” under the
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`Petitioner’s proposed construction. Pet., 9. Petitioner presents what it deems a
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`“proper understanding” of the specification by selectively editing quotations to suit
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`its improper construction. For example, the Petition alleges that “the patent states
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`in the Summary of the Invention … that a ‘shield member’ may be formed from a
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`strip of material’ that is ‘coupled to the backpla[t]e.’” Pet. 9 (quoting EX1001,
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`3:31-35). But, the ’955 Patent actually discloses that “the shield member is
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`formed from a strip of material with the ends thereof joined to form a ring,”
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`EX1001, 3:31-33, and “the shield member is coupled to the backpla[t]e.” Id., 3:35.
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`Petitioner’s identified tension exists because, the specification unambiguously
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`defines the shield member as a ring of material separate from a backplate. McGill,
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`Inc. v. John Zink Co., 736 F.2d at 674. Further, the specification describes the
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`“first aspect of the invention” as having “a shield member arranged around both
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`8
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`said coil and said ferromagnetic slabs for channeling electromagnetic flux when
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`in use.” EX1001, 2:39-44. There is absolutely no support in the specification for a
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`shield member without a ring of material.
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`The ’955 Patent illustrates the backplate and shield member as
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`separate components (with distinct reference numbers), as shown in FIG. 4:
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`EX1001, FIG. 4 (annotated)
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` 
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`Moreover, the ’955 Patent describes the shield member as a “strip,” “ring,”
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`“side wall,” and being “arranged around both [a] coil and [a] ferromagnetic slab,”
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`but never describes the shield member alone as being the backplate. Id., 2:42-43,
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`3:32-35, 3:48-50, 3:53-56, FIG. 4 (annotated above). Instead, the ’955 Patent
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`always describes the shield member as a separate component from the backplate.
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`Id. Additionally, the ’955 Patent never describes the backplate as controlling or
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`9
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`directing flux alone, but always in combination with the shield member. Id., 3:53-
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`56 (“the backplate and the shield member serve to direct flux”); 9:5-7 (“strip 25
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`is coupled or formed integral to backplate 21 to assist in controlling the pattern
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`of the flux”), 9:15-23 (“backplate 21 and strip 25 are appropriately coupled to
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`work together to direct flux”)(all emphases added). In fact, the only component
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`described as directing electromagnetic flux by itself is the shield member. Id.,
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`2:42-44 (“a shield member arranged around both said coil and said ferromagnetic
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`slabs for channeling electromagnetic flux”). Thus, Petitioner’s interpretation of the
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`claims, which permits a backplate with no side walls or strip to be the claimed
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`“shield member” is not merely in “some tension” with the ’955 Patent
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`specification—it is at odds with it. See Markman, 517 U.S. at 389; Phillips, 415
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`F.3d at 1315; Astrazeneca AB, 384 F.3d at 1336; Bruno Indep. Living Aids, Inc.,
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`183 F.3d at 1341.
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`Based on the lack of support for Petitioner’s construction in the
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`specification, Petitioner reaches outside the bounds of the ’955 Patent to attempt to
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`justify its strained interpretation. The Petition cites to the claims of a different
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`patent (EX1008, the “’334 Patent”) as alleged support for its construction. Pet., 8-
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`9. Again, Petitioner selectively edits its quotations of claims 9 and 10 of the ’334
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`Patent to suggest that the shield member can be a backplate alone. Id. But, in fact,
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`claims 9 and 10 of the ’334 Patent simply further define the structure of the shield
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`10
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`member. For instance, the Petition says that dependent “claim[] 9 … of the ‘’334
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`patent add[s] requirements for ‘the shield member’ to further include a ‘side
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`wall.’” Pet., 9 (quoting ’334 Patent, cl. 9). However, claim 9 does not define the
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`shield member as “further including” a side wall, but defines the shield member to
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`be the side wall. EX1008, cl. 9 (“the shield member forms a side wall around the
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`pad”). The Petition’s treatment of claim 10 suffers from the same flaws. Thus,
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`claims 9 and 10 of the ’334 Patent are consistent with a construction of the shield
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`member and backplate being two components that serve a combined function.
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`Petitioner also contorts the doctrine of claim differentiation to justify its
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`improper construction. Petitioner argues that in view of claim 16 of the ’334
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`Patent reciting “said shield member further comprises a metal strip defining a
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`barrier,” EX1008, cl. 16, the “shield member” recited in the independent claim
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`“may have multiple components.” Pet. 9. Therefore, Petitioner argues, the “plain
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`language of the claims” supports a construction that excludes the shield member
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`itself as described in the specification. Id. However, “claim differentiation cannot
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`broaden claims beyond their correct scope” in view of the context and substantial
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`guidance provided by the specification. Curtiss-Wright Flow Control Corp. v.
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`Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006); Markman, 517 U.S. at 389;
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`Phillips, 415 F.3d at 1315; Astrazeneca AB, 384 F.3d at 1336; Bruno Indep. Living
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`Aids, Inc., 183 F.3d at 1341. This is precisely what the Petitioner’s construction
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`11
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`does. Therefore, the Petitioner’s construction is nonsensical. As was the case in
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`Curtiss-Wright, Petitioner’s construction simply finds “no support in the overall
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`context of the [’955] patent specification.” Curtiss-Wright Flow Control Corp.,
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`438 F.3d at 1379.
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`Not only does the Petitioner’s construction exclude the precise component
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`that the specification defines as the shield member, it also fails to consider the
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`interplay between claims 16 and 9 of the ’334 Patent. See EX1001, 3:31-33;
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`EX1008, cls. 1, 9, 16. Claim 9 states that the “the shield member forms a side
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`wall around the pad.” EX1008, cl. 9. Under the Petitioner’s construction the
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`shield member (as a ring of material) does not exist in the independent claim. But,
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`Petitioner does not explain how claim 9 can be properly interpreted under its
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`construction of “shield member” such that a nonexistent feature of the independent
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`claim (the shield member as a ring of material) somehow forms a side wall or how
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`a backplate forms a side wall around the pad. Consequently, Petitioner is forced to
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`misstate the text of claim 9 in the Petition by artificially inserting “further include.”
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`Pet., 9. (“‘the shield member’ to further include a ‘side wall.’”). Under the proper
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`construction, both claims 9 and 16 must be interpreted consistently.
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`The specification is indeed helpful here. Because the specification defines
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`the shield member as a “strip of material with the ends thereof joined to form a
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`ring” (see EX1001, 3:31-33; EX1008, 3:24-25), claim 16 should be interpreted as
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`12
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`further narrowing the shield member recited in independent claim 1 by defining the
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`shield member (ring of material) as a “metal strip” being arranged to “defin[e] a
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`barrier” and “control said magnetic field ...” Claim 9’s language of the “shield
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`member [ring of material] form[ing] a sidewall ...” is comprehensible under this
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`proper construction. Such a construction conforms to the embodiments described
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`in the specification where the shield member can be an “[a]luminum strip 25
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`coupled ... to the backplate 21 to assist in controlling the pattern of the flux
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`generated” (Claim 16), or “formed integral to the backplate” which corresponds
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`more closely with claim 9. EX1001, 9:5-6.
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`Finally, Petitioner’s reliance on the Apple v. Motorola and McCarty v.
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`Lehigh Valley R.R. cases is misplaced. Pet., 9-10. The specification
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`unambiguously defines the shield member as “a strip of material with ends thereof
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`joined to form a ring.” EX1001, 3:31-33. McGill, Inc. v. John Zink Co., 736 F.2d
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`666. And, challenged claims 1 and 13 each recite both “a shield member” (i.e., a
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`ring of material) and “a backplate,” so an interpretation requiring both does not add
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`any elements that are not already mentioned in the claims. Thus, under a proper
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`interpretation, in view of the specification, the “a shield member comprising a
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`backplate” requires both a shield member and a backplate “to control
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`electromagnetic flux [generated by said transmitting pad].”
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`13
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
` Hui-910 fails to disclose “a shield member comprising a backplate
`… said backplate arranged to control electromagnetic flux
`generated by said transmitting pad”
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`The Petition fails to meet its threshold evidentiary burden of establishing
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`that the teachings of Hui-910 (EX1005) anticipate under pre-AIA §102(a). In
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`order to anticipate a claimed invention, a prior art reference must “disclose all
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`elements of the claim within the four corners of the document,” and it must
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`“disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v.
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`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears,
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`Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
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`Petitioner has not demonstrated by a preponderance of the evidence that
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`Hui-910 discloses the “inductive power transfer pad [system]” with “a shield
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`member comprising a backplate defining a third layer, said backplate arranged to
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`control electromagnetic flux [generated by said transmitting pad]” as recited in
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`independent claims 1 and 13. The Petition itself acknowledges that Hui-910 does
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`not disclose “an inductive power transfer pad [system]” with both a shield member
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`and a backplate. See Pet., 10-11, 37 (“under a more narrow construction of ‘shield
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`member’ requiring sidewalls on or attached to the backplate, claims 1 and 4-13
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`would have been obvious under Hui-910 in light of Beart.”), 45-46 (arguing that
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`Beart’s sidewall shielding reads on the claimed “shield member”). Accordingly,
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`Petitioner has not demonstrated by a preponderance of the evidence that claims 1,
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`4-6, and 8-13 are anticipated by Hui-910.
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` PETITIONER’S ALLEGED MOTIVATION FOR ADDING SHIELD
`SIDEWALLS TO HUI-910 AND NAKANO IS IRRELEVANT TO
`INDUCTIVE POWER RECEIVERS
`Independent claims 1 and 13 each recite a inductive power transfer receiving
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`pads with shield members and a backplate. EX1001, cl. 1 (“An inductive power
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`transfer pad to receive power from a transmitting pad...”); cl. 13 (“An inductive
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`power transfer system comprising a wireless power receiver pad ...”). However,
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`none of Hui-910, Nakano, or Beart disclose a shield member and backplate on a
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`wireless power receiver. Instead, Petitioner and Dr. Allen conclusorily assume that
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`“[t]he same motivations [for adding Beart’s sidewalls to Hui-910’s backplate] hold
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`true on the receiver side.” Pet. 43; EX1003, ¶154. And that, “A POSA would
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`have arranged the transmitting pad and receiving pads in an identical manner” to
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`Nakano’s system. Pet. 58.
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`While, Petitioner and Dr. Allen allege that THE transmitter and receiver
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`shielding configuration is a “known configuration,” Pet. 58, this is not true. They
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`refer to the CT shielding described in the Dobbs reference as the alleged support.
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`Pet., 58; see also EX1026, ¶6. However, Petitioner fails to mention that the
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`Dobbs’ shielding is wrapped around the outer periphery of wires in a coil
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`themselves and does not shield the full coil as shown in the arrangement suggested
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`15
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`by Petitioner’s drawings on page 58. See e.g., EX1026, FIG. 14 (reproduced
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`below). Petitioner and Dr. Allen refer only to cross-sections of Dobbs’ shielding
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`without showing the shielding in the full context of Dobbs’ CT system. Dobbs’
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`shielding forms a doughnut shape around the coil wire resulting in shield sidewalls
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`extending through the center of the coils. The shielding represented by Dobbs is
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`simply not the configuration suggested by the Petitioner. Moreover, the shielding
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`proposed by Dobbs would place shield walls right in the center of Hui-910’s and
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`Nakano’s coils and magnetic core, thereby, reducing the effectiveness of magnetic
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`coupling. Particularly, in Nakano a shield such as Dobbs’ would further
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`exacerbate the magnetic coupling problems due to slight misalignments between
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`transmitter and receiver which Nakano seeks to avoid as discussed in more detail
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`below.
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
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`EX1026, FIG. 14 (Annotated).
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`Beart, however, does not apply or suggest the addition of sidewall shielding
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`to inductive power transfer receivers (e.g., Beart’s “secondary device 60”), only to
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`the transmitter. EX, 1006, FIGS. 3 and 9, 2:6-9, 10:23-29. Petitioner’s primary
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`argument for adding sidewall shielding to Hui-910 and Nakano focuses on
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`protecting equipment and people from concentrated magnetic flux splayed
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`outwards from the sides of a magnetic power transmitter, i.e., splay. Pet. 41-43,
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`55-57. The Petition acknowledges that “[l]ike the ‘955 patent, Beart’s flux shield
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`reduces splay, further controlling and directing the flux so that less goes out the
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`back and the sides.” Pet. 43. Specifically, “Beart’s shielding arrangement directs
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`and controls the flux, ‘allow[ing] the flux to be concentrated in directions in which
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`it is useful, improving the flux-efficiency of the unit,’ and providing shielding for
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`‘directions where [the flux] can cause side-effects.’” Pet., 41 (quoting EX1006 3:3-
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`4, 4:11-14).
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`Even though Beart recognizes the benefits of such shielding for a
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`transmitter, he does not suggest placing such sidewall shielding on a passive
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`receiver. The receiver is not generating magnetic fields but receiving them, so any
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`motivation for doing so is lacking. Petitioner and Dr. Allen further acknowledge
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`that:
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`“Beart explains that flux shield can concentrate flux ‘in directions in
`which it is useful,’ i.e., from the transmitting pad towards the
`receiving pad, while preventing flux from flowing into other
`extraneous objects.” Pet., 55 (citing EX1006, Figs. 7-9, 2:29-3:10,
`4:11-14, 8:24-25, 10:6-15, 13:13-31, cls. 2-3, 5-7, 18-20).
`And further:
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`“Beart’s shield thus prevents flux from flowing in ‘directions where
`[the flux] can cause side-effects,’ and instead focuses the field in the
`area between the transmitting and receiving pad.” Beart 3:3-4,
`4:11-14, Fig. 8 (showing flux lines), 13:26-31; Allen Decl. ¶ 195.).
`Thus, a POSA would have understood Beart’s flux shield would help
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`prevent undesirable heating and damage to surrounding objects, and
`would also help protect people from harm. Id. Pet. 57.
`If Beart’s shield, which is only applied to inductive power transmitters, solves the
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`problem of splay as the Petitioner and Dr. Allen argue, then there would have been
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`no motivation to add such shielding to a receiver – the transmitter shield already
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`“focuses the field in the area between the transmitting and receiving pad.” And, in
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`the case of Hui’910’s mobile phone with a magnetic field already so confined, why
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`would a POSITA add more weight and bulk unnecessarily to a portable device?
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`Petitioner and Dr. Allen never address this issue.
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`For these reasons, Petitioner fails to show by a preponderance of the
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`evidence that it would have been obvious to include a shield member and backplate
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`to a magnetic power transfer receiver.
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` GROUND 2 FAILS TO PROVE THAT HUI-910 AND BEART
`RENDER THE CHALLENGED CLAIMS OBVIOUS BY A
`PERPONDERANCE OF THE EVIDENCE
`It is Petitioner’s burden to establish a prima facie case of obviousness with
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`regard to its proposed combinations of references. It is well settled that “there
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`must be some articulated reasoning with some rational underpinning to support the
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`legal conclusion of obviousness.” KSR Intn’l Co. v. Teleflex Inc., 550 U.S. 398,
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`418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); PersonalWeb
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`Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (explaining that it is
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
`insufficient to allege “that a skilled artisan, once presented with the two references,
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`would have understood that they could be combined.”).
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`Further, Petitioner’s arguments with respect to the proposed combination
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`Hui-910 and Beart do not fully consider the distinctions between the two
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`references. Furthermore, as explained below, Hui-910’s vertically oriented fields
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`have much less side leakage than Beart’s horizontally oriented fields—which are
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`“aimed” directly at the shield sidewalls. The Petition fails to consider this
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`fundamental difference between the two designs and the effects of this difference
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`on its proposed modification.
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` Hui-910 and Beart employ fundamentally different designs that
`are incompatible with one another
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`Hui-910 describes an inductive charging system in which the primary
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`(transmitter) and secondary (receiving device) coils are “planar” and “substantially
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`parallel” to a charging surface. EX1005, [0005], [0071]-[0072], FIGS. 4(c), 5(a),
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`5(b), 6(a), 8, 10(a), 12(b)-12(d). Further, Hui-910’s transmitter and receiving
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`device each include a “ferrite sheet 5[11]” and “conductive sheet 6[12]” serving as
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`an “EMI shield.” See e.g., EX1005, [0071], [0080], [0084], FIGS. 5(a), 12(d); Pet.
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`25-26. Hui-910’s planar transmitter coils produce a magnetic field that is directed
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`perpendicular to the planar charging surface, e.g., in a generally vertical direction
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`when the changing surface is positioned for normal use. See e.g., id, FIGS. 6(b),
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`Case IPR2021-01116
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`9(b). Consequently, in Hui-910’s system the magnetic field is also directed
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`towards (perpendicular to) Hui-910’s EMI shields.
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`
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`EX1005, FIG. 9(b)(annotated); Petition’s annotated EX1005, FIG. 5(a) (Pet., 13)
`(further annotated)
`Beart, on the other hand, describes an inductive charging system that
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`employs horizontally wound coils in both the primary (transmitter) and secondary
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`(receiving device). See e.g., EX1006, 1:21-3:9, FIGS. 1, 3. Beart’s transmitter
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`coil produces a “substantially horizontal field across the upper surface of the flux
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`generating unit.” EX1006, 20:3-4; see also 2:6-9; FIG. 3. With the horizontal
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`magnetic field orientation in Beart’s device, the magnetic field is actually directed
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`out of the ends of the charging surface, rather than towards a bottom EIM shield as
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`in Hui-910, as shown below:
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`Case IPR2021-01116
`Attorney Docket No: 53971-0002IP1
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`EX1006, FIGS. 1, 3 (annotated)
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` 
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`Petitioner also cites to a paper (EX1020, “Liu”) by Dr. S. Y. Ron Hui, the
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`sole inventor of the Hui-901 published application, and one