UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MOMENTUM DYNAMICS CORPORATION,
`Petitioners
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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 PRELIMINARY RESPONSE
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`INTRODUCTION ........................................................................................... 1 
`SUMMARY OF THE ’955 PATENT ............................................................. 2 
`STANDARD FOR GRANTING INTER PARTES REVIEW ......................... 4 
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`  GROUND 1’s PROPOSED COMBINATION FAILS TO TEACH OR
`SUGGEST THE CLAIMED “SHIELD MEMBER” ...................................... 5 
`Petitioner’s construction of “shield member comprising a backplate”
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`is improper ............................................................................................. 5 
`Hui-910 fails to disclose “a shield member comprising a backplate …
`said backplate arranged to control electromagnetic flux generated by
`said transmitting pad” .......................................................................... 11 
`  GROUND 2 FAILS TO CONSIDER THE DIFFERENT COIL /
`MAGENTIC DIPOLE ORIENTATIONS USED IN HUI-910 AND BEART
` ....................................................................................................................... 12 
`  Hui-910 and Beart employ fundamentally different designs that are
`incompatible with one another ............................................................ 13 
`The Petition fails to consider the impact of the fundamental design
`differences on the combination of Hui-910 and Beart ........................ 17 
`  GROUND 3’S PROPOSED COMBINATION RENDERS NAKAO
`INOPERABLE FOR ITS INTENDED PURPOSE ....................................... 24 
`Petitioner fails to consider the effects of Beart’s shield on Nakao’s
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`principle of operation .......................................................................... 26 
`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. .................................................................. 32 
`  CONCLUSION .............................................................................................. 36 
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`Case IPR2021-01116
`Attorney Docket No: 25236-0270IP1
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`TABLE OF CONTENTS
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`i
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`Case IPR2021-01116
`Attorney Docket No: 25236-0270IP1
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`LIST OF EXHIBITS
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`Exhibit No.
`EX2001
`EX2002
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`Description
`UK Patent Application No. GB 2,399,225 (“Beart-GB”)
`U.S. Patent No. 6,888,438 (“Hui-438”)
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`ii
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`Case IPR2021-01116
`Attorney Docket No: 25236-0270IP1
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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 a reasonable likelihood that at least one of the challenged
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`claims is unpatentable. Thus, the Board should deny the Petition, and no IPR
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`proceeding should be instituted.
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`For example, anticipation Ground 1 based on Hui-910 (EX1005) fails due to
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`its reliance on an improper claim construction. As discussed in more detail below,
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`Petitioner’s proposed construction interprets the independent claims to exclude the
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`“a shield member”—one of two independently recited claim elements. Ground 1
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`applies this construction, and thus fails to address this improperly excluded claim
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`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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`

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`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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`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.
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`In light of these deficiencies, the Petition fails to show a reasonable
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`likelihood that any challenged claim is unpatentable. Thus, the Board should deny
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`the Petition, and no IPR proceeding should be instituted.
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`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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`2
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`Each IPT pad includes a coil, magnetic members (e.g., ferrite bars), a shield
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`Case IPR2021-01116
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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
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`EX1001, Detail of FIG. 4 (annotated)
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` STANDARD FOR GRANTING INTER PARTES REVIEW
`The Board may grant a petition for inter partes review only where “the
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`information presented in the petition … shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. §314(a); 37 C.F.R. §42.108(c). Petitioners bear the
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`burden of showing that this statutory threshold has been met. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012). Critically,
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`Petitioners must fulfill this burden based on “information presented in the petition”
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`(35 U.S.C. §314(a)), and the law forbids Petitioners from subsequently adding
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`theories/arguments that should have been part of their initial Petition. Intelligent
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`Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`4
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`2016) (citing to 35 U.S.C. § 312) (“It is of the utmost importance that petitioners in
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`the IPR proceedings adhere to the requirement that the initial petition identify
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`‘with particularity’ the ‘evidence that supports the grounds for the challenge to
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`each claim.’”); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2154
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`(2016) (Alito, J. concurring in part and dissenting in part) (“Thus, if a petition fails
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`to state its challenge with particularity—or if the Patent Office institutes review on
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`claims or grounds not raised in the petition—the patent owner is forced to shoot
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`into the dark. The potential for unfairness is obvious.”).
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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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`5
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`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
`“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
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`6
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`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) (emphasis added).
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`The ’955 Patent specification uses the term shield member seven
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`times and not once is it equated with the backplate. See EX1001, 2:42-43,
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`3:32-35, 3:48-50, 3:53-56. Rather, in each instance the specification
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`describes the shield member and backplate as two 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”).
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`Indeed, the Petition acknowledges this fact, admitting that the
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`“specification may be read as being in some tension with the claim
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`language” under the Petitioner’s proposed construction. Pet., 9. Petitioner
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`presents what it deems a “proper understanding” of the specification by
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`selectively editing quotations to suit its improper construction. For example,
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`the Petition alleges that “the patent states in the Summary of the Invention
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`… that a ‘shield member’ may be formed from a strip of material’ that is
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`‘coupled to the backpla[t]e.’” Pet. 9 (quoting EX1001, 3:31-35)(emphasis
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`7
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`added). 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.”
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`Id., 3:35 (emphasis added).
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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,”
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`“ring,” “side wall,” and being “arranged around both [a] coil and [a]
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`ferromagnetic slab,” but never describes the shield member alone as being
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`the backplate. Id., 2:42-43, 3:32-35, 3:48-50, 3:53-56, FIG. 4 (annotated
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`below). Instead, the ’955 Patent always describes the shield member as a
`8
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`separate component from the backplate. Id. Additionally, the ’955 Patent
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`never describes the backplate as controlling or directing flux alone, but
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`always in combination with the shield member. Id., 3:53-56 (“the backplate
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`and the shield member serve to direct flux”); 9:5-7 (“strip 25 is coupled
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`or formed integral to backplate 21 to assist in controlling the pattern of
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`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
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`component described as directing electromagnetic flux by itself is the shield
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`member. Id., 2:42-44 (“a shield member arranged around both said coil and
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`said ferromagnetic slabs for channeling electromagnetic flux”). Thus,
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`Petitioner’s interpretation of the claims, which permits a backplate with no
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`side walls or strip to be the claimed “shield member” is not merely in “some
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`tension” with the ’955 Patent specification—it is at odds with it.
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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
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`attempt to justify its strained interpretation. For example, the Petition cites
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`to the claims of a different patent (EX1008, the “’334 Patent”) as alleged
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`support for its construction. Pet., 8-9. Again, Petitioner selectively edits its
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`quotations of claims 9 and 10 of the ’334 Patent to suggest that the shield
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`member can be a backplate alone. Id. But, in fact, claims 9 and 10 of the
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`9
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`’334 Patent simply further define the structure of the shield member. For
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`instance, the Petition says that dependent “claim[] 9 … of the ‘’334 patent
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`add[s] requirements for ‘the shield member’ to further include a ‘side
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`wall.’” Pet., 9 (quoting ’334 Patent, cl. 9) (emphasis added). However,
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`claim 9 does not define the shield member as “further including” a side wall,
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`but defines the shield member to be the side wall. EX1008, cl. 9 (“the
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`shield member forms a side wall around the pad”) (emphasis added). The
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`Petition’s treatment of claim 10 suffers from the same flaws. Thus, claims 9
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`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
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`function.
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`Finally, to the extent Petitioner’s reliance on Apple Inc. v. Motorola, Inc.,
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`757 F.3d 1286, 1298 (Fed. Cir. 2014) and McCarty v. Lehigh Valley R.R. Co., 160
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`U.S. 110, 116 (1895) is misplaced. Petition at 9-10. Challenged claims 1 and 13
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`each recite both “a shield member” and “a backplate,” so an interpretation
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`requiring both does not add any elements that are not already mentioned in the
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`claims. Thus, under a proper interpretation, in view of the specification, the “a
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`shield member comprising a backplate” requires both a shield member and a
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`backplate “to control electromagnetic flux [generated by said transmitting pad].”
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`10
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` 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 a reasonable likelihood that Hui-910
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`discloses the “inductive power transfer pad [system]” with “a shield member
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`comprising a backplate defining a third layer, said backplate arranged to control
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`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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`Petitioner has not demonstrated a reasonable likelihood that it will prevail on its
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`11
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`assertion that claims 1, 4-6, and 8-13 are anticipated by Hui-910. For this reason,
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`Case IPR2021-01116
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`the Board should decline to institute review of the ’955 Patent.
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` GROUND 2 FAILS TO CONSIDER THE DIFFERENT COIL /
`MAGENTIC DIPOLE ORIENTATIONS USED IN HUI-910 AND
`BEART
`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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`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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`Petitioner’s arguments with respect to the proposed combination Hui-910
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`and Beart do not fully consider the distinctions between the two references. For
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`example, as explained below, Hui-910’s vertically oriented fields have much less
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`side leakage than Beart’s horizontally oriented fields—which are “aimed” directly
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`at the shield sidewalls. The Petition fails to consider this fundamental difference
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`between the two designs and the effects of this difference on its proposed
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`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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`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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`EX1005, FIG. 9(b)(annotated); Petition’s annotated EX1005, FIG. 5(a) (Pet., 13)
`(futher annoated)
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`13
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`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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` 
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`EX1006, FIGS. 1, 3 (annotated)
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`14
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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 of his students that
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`explains the difference in field structure between Hui-910 and Beart. In the paper,
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`Dr. Hui cites to a British patent by Pilgrim Beart (the same inventor of Beart
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`(EX1006)) entitled “Inductive power transfer system having a horizontal magnetic
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`field”. See EX1020 reference [1]; EX2001 (“Beart-GB”), and compares the
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`difference in magnetic field orientations between Beart and Dr. Hui’s own system
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`described in Hui-910. Dr. Hui provides two figures that summarize this difference:
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`EX1020, FIGS. 1, 2
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`Dr. Hui explains that the “approach [in Beart-GB] adopts a ‘horizontal flux’
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`approach in which the line of magnetic flux flows horizontally to the planar
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`charging surface” and off the ends of the charging surface. EX1020, 1. While, Dr.
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`Hui himself proposed a “planar inductive battery charging platform based on a
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`‘perpendicular flux’.” Id. “Unlike the one described in [Beart-GB], [the Hui-910]
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`charging platform generates an ac flux that has almost uniform magnitude over the
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`entire charging surface,” where “[t]he lines of flux of this charging platform flow
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`‘perpendicularly’ into and out of the charging surfaces.” Id.
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`The Petition fails to consider the impact of the fundamental
`design differences on the combination of Hui-910 and Beart
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`The Petition merely acknowledges this fundamental design difference
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`between Hui-910 and Beart in single footnote, Pet., FN 4, but fails to analyze how
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`this difference may have impacted a POSITA’s motivation to replace Hui-910’s
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`EMI shielding with Beart’s tray-shaped shield and backplate. The Federal Circuit
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`is clear that “[t]he factual inquiry whether to combine references must be thorough
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`and searching, and [t]he need for specificity pervades [our] authority.” In re
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`Nuvasive, Inc., 842 F.3d 1376, 1381-82 (Fed. Cir. 2016) (quoting In re Lee, 277
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`F.3d 1338, 1343 (Fed. Cir. 2002)) (internal quotes omitted). The Petition’s
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`conclusory analysis of the differences between Hui-910 and Beart is thus
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`insufficient to support a finding of obviousness.
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`For instance, Petitioner provides no explanation of how the sidewalls of
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`Beart’s tray-structure would have provided any additional shielding benefit to Hui-
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`910 in view Hui-910’s different magnetic field orientation. In Beart’s design, the
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`magnetic field exiting the coils is primarily directed parallel to the charging surface
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`and off the ends of the charging surface. Beart’s FIG. 3 (annotated below) shows
`17
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`that without sidewall shielding the magnetic field extends off the side edges of the
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`charging surface and around the back and sides of the Bearts magnetic charging
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`surface. See EX1006, FIGS. 3 and 8 (annotated below), 2:7-8 (“The [magnetic
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`flux] lines travel through the centre of the solenoid [coils] and then divide to return
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`over and under it through the air”). In FIG. 8 (annotated below), Beart must add
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`sidewalls to place some shielding in the direct path of the magnetic field. This is
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`not the case for Hui-910 as explained in detail below. Without the sidewalls, Beart
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`has no shielding that directly blocks/impedes the magnetic field along its primary
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`direction. In other words, with sidewalls, Beart’s horizontal field exiting the coils
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`is aimed directly at (perpendicular to) the sidewall shielding which impedes its
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`primary path which more closely corresponds with Hui-910’s EIM shielding
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`arrangement.
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`EX1006, FIGS. 3, 8 (annotated)
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`In Hui-910, by contrast, the EMI shield is already positioned in the direct
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`path of Hui-910’s vertically oriented magnetic field (see the annotated figures from
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`p. 25 of the Petition and FIG. 9(b) from Hui’-910 below). Thus Hui-910’s EMI
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`shield already serves a purpose similar to the sidewalls on Beart’s shield. As
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`explained above, in Hui-910’s design the vertical magnetic field orientation is
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`naturally directed against the EMI shield (elements 5/6 in Hui-910’s transmitter or
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`11/12 in the receiving device).
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`EX1005, FIG. 9(b)(annotated); Petition’s annotated EX1005, FIG. 5(a) (Pet., 13)
`(futher annoated)
`Petitioner provides no analysis explaining why or how replacing Hui-910’s
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`EMI shield to add sidewalls would provide any additional benefit to Hui-910’s
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`shielding design outside of conclusory statements that magnetic shielding is
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`desirable. See Pet., 40-44. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)
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`(an obviousness analysis is based on impermissible hindsight when it is based on
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`“knowledge gleaned only from applicant’s disclosure”).
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`Moreover, as Petitioner explains, the POSITA would have known, that
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`magnetic shielding functions through the creation of eddy currents within the
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`conductive material of the shield. Pet., 29-30 (citing Allen Decl., [122], O’Brian,
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`FIG. 4-4, 65-68). The eddy currents “generate a second [magnetic] field which …
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`cancels [the imposed field] at the surface of the conductor.” Pet. 30 (quoting Beart
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`2:29-3:1). The Petition also explains that the eddy currents “create magnetic fields
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`with vector components only in the direction normal to the surface in which the
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`eddy currents are flowing.” Pet., 30 (quoting O’Brian, 65-68)(emphasis in
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`original); see also O’Brian FIG. 4-4 annotated at Pet., 30. Hence, the POSITA
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`would have understood that magnetic shielding is most effective in blocking
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`magnetic flux that is perpendicular to the shield, which is precisely how the EMI
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`shielding in Hui-910 is designed. Yet, again, the Petition fails to expound on this
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`critical point, and provides no evidence showing additional sidewall shielding
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`would provide any significant improvement to Hui-910’s EMI shielding.
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`Furthermore, because of Hui-910’s vertical magnetic field orientation, the
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`magnetic field is already tightly confined between two EMI shields (that of the
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`transmitter and that of the secondary device) that are each oriented perpendicular
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`to the primary magnetic field direction. By contrast, Beart’s magnetic fields are
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`not so confined by the secondary device (without a shield wall), and still project
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`off the edges of the charging surface. Compare, EX1005, FIG. 4(c) with EX1006,
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`FIG. 3 (both annotated below). In fact, Beart does not even suggest placing a
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`shield on the secondary device 60.
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`EX1005, FIG. 4(c)(annotated)
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`EX1006, FIG. 3 (annotated)
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`The Petition has failed to substantively analyze the fundamental design
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`differences between Hui-910 and Beart and the effects of those differences on its
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`proposed modifications to the teachings Hui-910. In so doing, the Petition fails to
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`present a thorough justification for why a POSITA would have been motivated to
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`make such modifications. In re Nuvasive, 842 F.3d at 1381-82 (Fed. Cir. 2016).
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`Accordingly, the Petition has not established a prima facie case of obviousness,
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`and has not demonstrated a reasonable likelihood that it will prevail on its assertion
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`that claims 1 and 4-13 would have been obvious over Hui-910 and Beart.
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`Petitioner cited the Liu paper (EX1020), co-authored by Dr. Hui, but failed
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`to acknowledge that Dr. Hui himself declined to adopt Beart’s shield design in the
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`wireless charging system described in Dr. Hui’s Hui-910 patent application. As
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`noted above, the Liu paper cites to a British patent describing Beart’s inductive
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`charging system that uses a horizontal magnetic field. EX1020 reference [1]; see
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`also EX2001. As inventor of the Hui-910 patent application, Dr. Hui was a
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`POSITA. In the Liu paper, Mr. Liu and Dr. Hui explain that “it is necessary to use
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`an electromagnetic shield on the bottom surface” of a charging system similar to
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`that described in Hui-910. EX1020, 2, FIG. 3. Mr. Liu and Dr. Hui even explain
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`that the purpose of the shield is the same as that described by Beart. Compare
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`EX1020, 2 with EX1006, 4:11-14. But, Dr. Hui does not adopt a shield with
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`sidewalls. Instead Dr. Hui uses an “electromagnetic shield” that “simply consists
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`of a thin layer of soft magnetic material (such as ferrite) and a thin layer of
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`conductive material (such as copper).” EX1020, 2 (citing US Pat. No. 6,888,438
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`(“Hui-438”)(included as EX2002)). Dr. Hui further notes that this arrangement
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`“has been shown to be effective for [the] type of planar charging platform”
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`disclosed by Hui-910. Id. Indeed, Hui-438 shows that the shield configuration
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`already employed by Hui-910 provides an actual (empirical) magnetic field
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`reduction by “28 dB (631 times).” EX2002, 7:15-19 (“the use of ferrite plates
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`covered with conductive sheets is an effective way to Shield magnetic field
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`generated from PCB transformer. The reduction of magnetic field is 34 dB (2512
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`times) from simulation result and 28 dB (631 times) from measurement.”).
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`Petitioner’s failure to consider, let alone address, these facts in its selected
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`grounds further demonstrates the insufficiency of its purported motivation for
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`combining the teachings of Beart with those of Hui-910. Accordingly, the Petition
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`has not established a prima facie case of obviousness, and Petitioner has not
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`demonstrated a reasonable likelihood that it will prevail on its assertion that claims
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`1 and 4-13 would have been obvious over Hui-910 and Beart. For this additional
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`reason, the Board should decline to institute review of the ’955 Patent.
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` GROUND 3’S PROPOSED COMBINATION RENDERS NAKAO
`INOPERABLE FOR ITS INTENDED PURPOSE
`The Petition fails to meet its threshold evidentiary burden of establishing a
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`prima facie case of obviousness under pre-AIA §103 for its proposed
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`modifications to Nakao’s magnetic coupler. It is well-settled that “combinations
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`[of references] that change the ‘basic principles under which the [prior art] was
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`designed to operate,’ or that render the prior art ‘inoperable for its intended
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`purpose,’ may fail to support a conclusion of obviousness. Plas-Pak Indus. v.
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`Sulzer Mixpac AG, 600 F. App'x 755, 757-58 (Fed. Cir. 2015)(non-precedential
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`(quoting In re Ratti, 270 F.2d 810, 813 (CCPA 1959); In re Gordon, 733 F.2d 900,
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`902 (Fed. Cir. 1984)); In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed. Cir. 1992)
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`(citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)); Trivascular, Inc. v.
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`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). Furthermore, when a proposed
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`modification to a pr