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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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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 IPR2021-01127
`Patent 9,306,635
`_________________
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`PATENT OWNER’S RESPONSE
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`Case IPR2021-01127
`Attorney Docket No: 25236-0269IP1
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................. 1
`I.
`II. SUMMARY OF THE ’635 PATENT ............................................................... 2
`III. CLAIM CONSTRUCTION ............................................................................... 4
`A. “the first magnetic field outside a spatial region through which power is
`transferred from the first source magnetic resonator to the device magnetic
`resonator.” ..................................................................................................... 5
`IV. PETITIONER FAILS TO MEET ITS BURDEN OF SHOWING THAT THE
`CHALLENGED CLAIMS OF THE ’635 PATENT ARE ANTICIPATED OR
`OBVIOUS .......................................................................................................... 8
`A. Grounds 1 and 2: Kanno does not disclose or render obvious “the second
`magnetic field at least partially cancels the first magnetic field outside a
`spatial region through which power is transferred from the first source
`magnetic resonator to the device magnetic resonator” as required by claim
`1. .................................................................................................................... 8
`B. Ground 1: Petitioner fails to prove anticipation because the Petition
`improperly relies on multiple, distinct teachings of Kanno. ....................... 10
`C. Ground 2: Petitioner fails to prove obviousness based on Kanno because
`the Petition has not shown that a POSITA would have been motivated to
`combine the multiple, distinct teachings of Kanno. .................................... 17
`V. CONCLUSION ................................................................................................ 19
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`I.
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`Case IPR2021-01127
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`INTRODUCTION
`Witricity Corporation (“Patent Owner”) submits this Patent Owner’s
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`Response to the Petition for Inter Partes Review of U.S. Patent No. 9,306,635
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`(“the ’635 patent”) filed by Momentum Dynamics Corporation (“Petitioner”). The
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`Petition suffers from both factual and legal errors, each of which provides an
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`independent basis to uphold the challenged claims. Petitioner has failed to carry its
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`burden to show unpatentability of the challenged claims.
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`For example, in Grounds 1 and 2, Petitioner relies on a flawed assumption—
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`that reducing near field strength—is sufficient to meet the requirements of claim 1.
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`But this assumption is inconsistent with the proper construction of “the first
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`magnetic field outside a spatial region through which power is transferred from the
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`first source magnetic resonator to the device magnetic resonator” and leads to
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`Petitioner’s flawed analysis.
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`Further, in Ground 1, Petitioner fails to prove anticipation based on Kanno
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`(EX1005) because the Petition improperly combines multiple, distinct teachings of
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`Kanno that relate to different embodiments. As discussed in more detail below,
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`Petitioner relies on Kanno’s disclosures corresponding to Example 1, the
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`“fundamental arrangement” of Figures 1, 7, and 9, and the embodiment of Figure
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`16, each of which describe separate embodiments. However, Kanno’s Figure 16
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`embodiment (Kanno, 20:18-21:31) is not linked to the fundamental arrangement of
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`Figures 1, 7, and 9 (Kanno, 6:50-7:50, 11:9-12:14) or the embodiment set forth in
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`Example 1 (Kanno, 25:44-28:41), and Petitioner provides no explanation of why a
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`POSITA would conclude otherwise.
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`As to Ground 2, Petitioner fails to prove obviousness based on Kanno
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`because the Petition has not shown that a POSITA would have been motivated to
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`combine and apply the elements of the embodiment described by Figure 16 with
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`the fundamental arrangement of Figures 1, 7, and 9 and the embodiment set forth
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`in Example 1.
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`In light of these deficiencies in the Petition, and others detailed below, the
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`Board should uphold the challenged claims.
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`II.
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`SUMMARY OF THE ’635 PATENT
`The challenged claims of the ’635 patent are directed to systems for wireless
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`transfer that reflect the inventors’ recognition that “[i]n some wireless power
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`transfer applications, it may be beneficial to minimize or reduce the electric and
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`magnetic fields at a distance away from the system,” and it would be desirable “to
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`accomplish this without a substantial decrease of the performance of the system,
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`and/or dramatic changes to the external geometry of the system.” EX1001, 51:29-
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`39.
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`FIG. 40 of the ’635 patent shows a simplified example of one such wireless
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`energy transfer system with reduced fields away from the system. EX1001, 52:34-
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`EX1001, FIG. 40. The system includes a source resonator (source 1) and a device
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`resonator (device 1). EX1001, 52:36-37. The inventors recognized, however, that
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`an additional resonator (source R) could be added to “cancel the dipole moment far
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`from the system.” EX1001, 52:38-39. More specifically, the ’635 patent discloses
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`that the current of the additional resonator (source R) can be adjusted to be exactly
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`or substantially out of phase with the source resonator (source 1) to reduce
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`electrical and magnetic fields far away from the system. EX1001, 52:34-42.
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`Additionally, the ’635 patent discloses that source 1 and source R can be
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`designed such that they “are of identical or near identical sizes and have an equal
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`number of wires, that the orientation of their dipoles are substantially the same, and
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`that they circulate substantially the same amount of current.” EX1001, 52:42-47.
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`Further, the system can be configured such that “the centers of the wireless power
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`system and the source R are not very far from each other.” EX1001, 53:3-5.
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`III. CLAIM CONSTRUCTION
`All claim terms in this proceeding are to be construed according to the
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`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
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`C.F.R. §42.100. Under the Phillips standard, “the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.” Phillips, 415 F.3d
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`at 1312. Additionally, “claims must be read in view of the specification, of which
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`they are a part.” Id. at 1315 (quoting Markman v. Westview Instruments, Inc., 52
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`F.3d 967, 978 (1995) (en banc) (quotation marks omitted)). The specification is
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`the “single best guide to the meaning of a disputed term,” and “is, thus, the primary
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`basis for construing the claims.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1582 (Fed. Cir. 1996); Phillips, 415 F.3d at 1315 (citation and quotation
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`marks omitted). In discerning the meaning of claim terms, dictionaries also may
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`be helpful, ‘‘so long as the dictionary definition does not contradict any definition
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`found in or ascertained by a reading of the patent documents.’’ Phillips, 415 F.3d
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`at 1317-18, 1321–22 (citation and internal quotation marks omitted). Other
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`extrinsic evidence also is useful insofar as it “can shed useful light on the relevant
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`art -- and thus better allow a court to place itself in the shoes of a person of
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`ordinary skill in the art” reading the claims alongside the rest of the specification.
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`Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n, 366 F.3d 1311, 1318
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`(Fed. Cir. 2004).
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`A.
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`“the first magnetic field outside a spatial region through which
`power is transferred from the first source magnetic resonator to
`the device magnetic resonator.”
`Claim 1 recites “the first magnetic field outside a spatial region through
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`which power is transferred from the first source magnetic resonator to the device
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`magnetic resonator.” EX1001, 56:21-24. The proper construction of this phrase is
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`“far-field radiation.” This construction is fully consistent with the claim language
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`and the ’635 patent’s description of the corresponding claim limitation.
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`The Petition never proffered evidence to support a formal claim construction
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`for this element, but its analysis of Grounds 1-2 implies a claim scope premised on
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`legal error. First, the law forbids the claims to be interpreted in a manner that
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`includes a particular feature that the ’635 patent’s specification makes clear is not
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`included in the claimed invention. SciMed Life Sys., Inc. v. Advanced
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`Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (“Where the
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`specification makes clear that the invention does not include a particular feature,
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`that feature is deemed to be outside the reach of the claims of the patent.”);
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`Techtronic Indus. v. International Trade Commission, 944 F.3d 901, 907 (Fed. Cir.
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`2019) (“where the inventor… has manifested that the invention does or does not
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`include a particular aspect, that intention ‘is regarded as dispositive’”). Second,
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`the law forbids an overly broad interpretation of the claims that are inconsistent
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`with “every embodiment disclosed” in the ’635 patent. In re Power Integrations,
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`Inc., 884 F.3d 1370, 1377 (Fed. Cir. 2018) (reversing a PTAB decision based on an
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`overly broad construction where “every embodiment disclosed” in the patent
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`shows a particular configuration and noting that “the patentee’s choice of preferred
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`embodiments can shed light on the intended scope of the claims”); see also Tap
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`Pharm. Prods., Inc. v. Owl Pharm., L.L.C., 419 F.3d 1346, 1353-54 (Fed. Cir.
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`2005) (narrowly interpreting the claimed term because it was consistent with all 31
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`examples in the patent specification); Aquatex Indus., Inc. v. Techniche Solutions,
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`419 F.3d 1374, 1374 (Fed. Cir. 2007).
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`Here, the ’635 patent’s specification distinguishes far-field radiation from
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`near-field radiation, stating that “[t]he fields that need to be minimized or reduced
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`can be either the far-field, or the near-field” and “that the fields far from the system
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`are substantially different than the fields close to the system.” EX1001, 51:33-43.
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`The ’635 patent explains that “it is possible to tune these two sets of fields fairly
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`independently, ensuring that the fields far from the system are weak, or reduced,
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`without drastically reducing the performance (efficiency, amount of power
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`transferred) of the power transfer.” EX1001, 51:43-48. Thus, the ’635 patent
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`provides a system configured “to attenuate the far-field radiation without
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`substantially attenuating the near-field resonant energy transfer.” EX1001, 54:15-
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`17. All embodiments in the ’635 patent are consistent with this goal. EX1001,
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`2:3-14, 5:47-53, 51:49-55:14.
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`Fatally, the Petition assumes that the claims encompass reducing near-field
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`strength (Pet., 48)—thus including a feature that the ’635 patent explicitly desires
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`to avoid. EX1001, 54:15-17 (“without substantially attenuating the near-field
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`resonant energy transfer”). Thus, even if Petitioner could read this claim language
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`“in a vacuum” to broadly construe the claims in the manner suggested by the
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`Petition, that is not enough. Here, the ’635 patent specification “makes clear that
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`the invention does not include a particular feature.” SciMed, 242 F.3d at 1341
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`(Fed. Cir. 2001). As such, that excluded feature must be “deemed to be outside the
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`reach of the claims of the patent, even though the language of the claims, read
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`without reference to the specification, might be considered broad enough to
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`encompass the feature in question.” Id.; Techtronic, 944 F.3d at 909 (reversing the
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`overly broad claim interpretation “[w]here, as here, the specification plainly
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`represents the scope of the invention to the exclusion of some embodiments”).
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`Further, the Petition erroneously demands that the Board should interpret the
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`claims to encompass a feature that is inconsistent with every embodiment of the
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`’635 patent specification. EX1001, 2:3-14, 5:47-53, 51:49-55:14. Such a theory
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`cannot withstand scrutiny. Power Integrations, 884 F.3d at 1377 (“every
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`embodiment”).
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`IV. PETITIONER FAILS TO MEET ITS BURDEN OF SHOWING THAT
`THE CHALLENGED CLAIMS OF THE ’635 PATENT ARE
`ANTICIPATED OR OBVIOUS
`A. Grounds 1 and 2: Kanno does not disclose or render obvious “the
`second magnetic field at least partially cancels the first magnetic
`field outside a spatial region through which power is transferred
`from the first source magnetic resonator to the device magnetic
`resonator” as required by claim 1.
`Claim 1 recites “the second magnetic field at least partially cancels the first
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`magnetic field outside a spatial region through which power is transferred from the
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`first source magnetic resonator to the device magnetic resonator.” EX1001, 56:20-
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`24. The Petition alleges that Kanno discloses this requirement of claim 1, stating:
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`Indeed, Kanno discloses that the real-world implementation of
`the power generator (Example 1) reduced leakage of electromagnetic
`waves into the surrounding space by over 70%. Specifically,
`measurements of the near field strength at 5 meters away from the
`power generator were taken “with the phase difference … changed
`from 90 degrees through 180 degrees on a 30 degree a time basis to
`obtain Examples 1a-90, 1a-120, 1a-150 and 1a-180, respectively.”
`Kanno 27:25-30. Measurements were also taken with phase differences
`of 0, 30, and 60 degrees “to obtain Comparative Examples 1-0, 1-30,
`and 1-60, respectively.” Id. 27:30-34. As shown in Table 2 below, the
`near field strength was 3.11 mV/m with a 0-degree phase difference and
`0.92 mV/m with a 180-degree phase difference. Id. 28:18-35. Thus, the
`magnetic field cancellation achieved by operating the power generating
`units 180 degrees out of phase reduced the near field strength by
`70.42%. Arnold Decl. ¶¶ 112-115; see also Section IV.A.3 above.
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`Pet., 48. Petitioner applies an overbroad interpretation of claim 1 in order to map
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`Kanno’s “near field strength” to claim 1.
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`Nothing in the ’635 patent suggests or infers that claim 1 encompasses
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`reducing “near field strength” as described in Kanno. As established above in
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`Section III.A, “the first magnetic field outside a spatial region through which
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`power is transferred from the first source magnetic resonator to the device
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`magnetic resonator” in the context of the ’635 patent means “far-field radiation.”
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`Accordingly, claim 1 requires at least partially canceling “far-field radiation,” not
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`“near field strength.”
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`Petitioner does not assert that Kanno’s “near field strength” discloses or
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`renders obvious “far-field radiation.” Indeed, as discussed above, the ’635 patent’s
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`specification distinguishes far-field radiation from near-field radiation and
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`provides a system configured “to attenuate the far-field radiation without
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`substantially attenuating the near-field resonant energy transfer.” EX1001, 51:33-
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`43, 54:15-17. Kanno’s disclosure of reducing the near field strength does not
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`disclose or render obvious at least partially canceling far-field radiation, as
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`required by claim 1.
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`Accordingly, Petitioner has not met its burden to show that claims 1-8 are
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`anticipated or rendered obvious by Kanno.
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`B. Ground 1: Petitioner fails to prove anticipation because the
`Petition improperly relies on multiple, distinct teachings of
`Kanno.
`The Petition fails to meet its threshold evidentiary burden of establishing
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`that Kanno (EX1005) anticipates under pre-AIA §102(a), because it combined
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`multiple, distinct teachings within the reference. In order to anticipate a claimed
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`invention, a prior art reference must “disclose all elements of the claim within the
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`four corners of the document,” and it must “disclose those elements ‘arranged as in
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`the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
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`2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
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`1983)). Anticipation also requires that “a single reference ‘describe the claimed
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`invention with sufficient precision and detail to establish that the subject matter
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`existed in the prior art.’” Wasica Finance GmbH v. Continental Automotive
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`Systems Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). Because of this and other
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`legal authorities, “ambiguous references do not, as a matter of law, anticipate a
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`claim,” (id.) and “anticipation is not proven by ‘multiple, distinct teachings that the
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`artisan might somehow combine to achieve the claimed invention’” (Microsoft
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`Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017)). A reference,
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`however, “can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the
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`limitations arranged or combined as in the claim, if a person of skill in the art,
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`reading the reference, would ‘at once envisage’ the claimed arrangement or
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`combination.” Id. (alteration in original). But, even within this framework, the
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`prior art “must clearly and unequivocally disclose the claimed [invention] or direct
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`those skilled in the art to the [invention] without any need for picking, choosing,
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`and combining various disclosures not directly related to each other by the
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`teachings of the cited reference.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F. 3d
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`1359, 1371 (Fed. Cir. 2008). In view of this, the Petitioner has not demonstrated
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`that a POSITA would “at once envisage” the claimed wireless power transfer
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`system based on Kanno’s ambiguous disclosure, which is amplified by the
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`multiple, distinct portions of Kanno describing different embodiments.
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`Petitioner relies on Kanno’s “real-world implementation of the power
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`generator” described as “Example 1” with two power generating units connected in
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`parallel. See, e.g., Petition, 21-23. According to Petitioner, Kanno’s Example 1
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`“provides the specific values and other implementation details for constructing a
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`power generator having the same fundamental arrangement shown in Figures 7 and
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`9.” Id.
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`Petition, 31 (annotating Kanno Figures 7 and 9).
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`Petition, 36 (modifying and annotating Kanno Figure 7 to reflect implementation
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`details of Example 1).
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`Petitioner states that the power generator of Figure 7 “uses the wireless
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`power transmission unit of Figure 1 with power generating sections 101.” Petition,
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`17. Kanno illustrates and describes its “fundamental arrangement” or
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`“fundamental configuration” of Figures 1, 7, and 9 at 6:50-7:50 and 11:9-12:14,
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`and describes a specific embodiment in “Example 1” at 25:44-28:41.
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`Petitioner’s anticipation arguments for elements 1[e] and 1[f] depend on
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`Kanno’s statement that the “the two resonant magnetic fields will cancel each
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`other,” with respect to the embodiment described in Figure 16. Petition, 20, 46-47
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`(citing Kanno, 20:62-21:4). But Kanno explicitly describes Figure 16 as a
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`different embodiment than the fundamental arrangement of Figures 1, 7, and 9 and
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`the embodiment of Example 1.
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`To find that Figure 16 and Figures 1, 7, and 9 is a natural extension of the
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`fundamental arrangement requires an inference that is not supported by Kanno’s
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`disclosure. That Embodiment 1, including Figure 16, shares reference numerals
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`with prior figures is of no import, because all of each of the Embodiments 2-5 also
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`include these common reference numerals. See, Kanno, 21:60-25:40 and
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`corresponding figures. At most this overlap of reference numerals was made for
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`convenience of reference, when components have “substantially the same function
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`as its counterpart [previously] shown,” not to indicate that these later embodiments
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`should be combined with the fundamental arrangement.
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`Further, Petitioner’s reliance on Kanno’s Figure 16 shows that Kanno does
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`not describe with sufficient precision and detail that the fundamental arrangement
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`of Figures 1, 7, and 9 and the embodiment of Example 1 disclose elements 1[e] and
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`1[f]. Kanno’s general disclosure that “leakage of unwanted electromagnetic
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`components into the surrounding space ... can be reduced” (Kanno, 5:8-13) does
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`not describe with sufficient precision and detail that this reduction is due to
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`magnetic field cancellation as required by elements 1[e] and 1[f]. Further,
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`Kanno’s description with respect to the fundamental arrangement of Figures 1, 7,
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`and 9 and the embodiment of Example 1 having a phase difference of 180 degrees
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`does not describe with sufficient precision and detail that this phase difference
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`results in magnetic field cancellation. The Petition must therefore rely on Kanno’s
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`Figure 16 embodiment for elements 1[e] and 1[f], and as such the Petition’s
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`analysis of these elements as anticipated by Kanno is deficient.
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`Specifically, Kano describes Figure 16 under the heading “Embodiment 1,”
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`one of five different embodiments discussed by Kanno, separate and apart from the
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`fundamental arrangement shown in Figures 1, 7, and 9 and from the “real-world”
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`embodiment set forth in Example 1. Under the heading “Embodiment 1,” Kanno
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`explicitly breaks Embodiment 1 into three different embodiments. Kanno, 12:45-
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`47 (“a First Specific Preferred Embodiment of a power generator according to the
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`present invention will be described with reference to FIGS. 12 and 13.”), 19:16-20
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`(“FIG. 14 illustrates a preferred embodiment in which to increase the inductance
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`L2 of the power receiving inductor 109a, the number of turns N2 of the power
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`receiving inductor 109a is set to be greater than the number of turns N1 of the
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`power transmitting inductor 107a.”). With respect to Figure 16, Kanno states that
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`“[h]ereinafter, a preferred embodiment of a power generator according to the
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`present invention will be described” and “FIG. 16... illustrates a preferred
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`embodiment of a power generator according to the present invention that includes
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`a number of power generating units 131a, 131b, and 131n.” Kanno, 20:18-25.
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`Kanno does not describe combining the embodiment in Figure 16 (or the
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`accompanying description) with the “fundamental arrangement” of Figures 1, 7,
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`and 9 or with the “Example 1” embodiment that Petitioner separately relies upon.
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`And Petitioner provides no explanation for why a POSITA would have “at once
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`envisaged” combining the embodiment set forth in Figure 16 with these other
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`embodiments described in Kanno. Rather, Kanno is at best ambiguous whether the
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`teachings of its Figure 16 embodiment applies to the “fundamental arrangement”
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`of Figures 1, 7, and 9 and the “Example 1” embodiment.
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`The Arnold Declaration mirrors the Petition in this respect and relies on the
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`same figures and portions of Kanno. See, e.g., EX1003, ¶¶46-56, 100-115. Dr.
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`Arnold alleges that a “POSA would understand that... the real-world
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`implementation in Example 1 implements the power generator with two power
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`generating units as disclosed as Embodiment 1 and Figure 7.” EX1003, ¶53. But
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`Dr. Arnold’s assertion is incorrect with respect to the embodiment of Figure 16
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`because the Figure 16 embodiment includes more than two power generating
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`units—namely, “a number of power generating units 131a, 131b, and 131n.”
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`Kanno, 20:20-25, FIG. 16.
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`Dr. Arnold further alleges that “Example 1 includes all the components
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`disclosed in Embodiment 1 and Figure 7” EX1003, ¶53. This assertion by Dr.
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`Arnold is also incorrect with respect to the embodiment of Figure 16. Kanno
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`discloses that the Figure 16 embodiment includes the “arrangement that has
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`already been described with respect to FIGS. 3 and 4.” Kanno, 20:56-61. In
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`Kanno, “FIG. 3 illustrates a modified example of the wireless power transmission
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`unit shown in FIG. 1,” and “FIG. 4 illustrates another modified example of the
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`wireless power transmission unit shown in FIG. 1.” Kanno, 7:51-52, 7:63-64. As
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`discussed in the Arnold Declaration, Kanno’s Figure 3 “describes adding a phase
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`controller at the output of a power receiving antenna 109,” and Figure 4 “describes
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`reversing the output connection of a power receiving antenna 109.” Kanno does
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`not disclose that Example 1 or the fundamental arrangement of Figures 1, 7, and 9
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`includes the modifications of Figure 3 and/or Figure 4.
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`Just as with the Petition, the Arnold Declaration fails to explain why a
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`POSITA would have viewed the embodiment set forth in Figure 16 as part of the
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`“fundamental arrangement” of Figures 1, 7, and 9 or the specific embodiment
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`described in “Example 1.” Indeed, neither the Petitioner nor Dr. Arnold discuss
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`how or why a POSITA would have envisioned the claimed systems based on the
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`disparate teachings of Kanno describing numerous different embodiments.
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`Case IPR2021-01127
`Attorney Docket No: 25236-0269IP1
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`Accordingly, Petitioner has not met its burden to show that claims 1-8 are
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`anticipated by Kanno.
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`C. Ground 2: Petitioner fails to prove obviousness based on Kanno
`because the Petition has not shown that a POSITA would have
`been motivated to combine the multiple, distinct teachings of
`Kanno.
`The original Petition must 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 argument that the challenged claims would have been obvious
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`based on Kanno does not specifically address the deficiencies above in Petitioner’s
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`anticipation argument. For its obviousness challenge based on Kanno, Petitioner
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`alleges that “it would have been obvious to apply the implementation details of
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`Example 1 to the fundamental arrangement of Figures 7 and 9.” Petition, 58.
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`However, the Petition and the Arnold Declaration fail to establish that it would
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`have been obvious and that a POSITA would have been motivated to apply the
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`Figure 16 embodiment to the fundamental arrangement of Figures 1, 7, and 9 and
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`to Example 1.
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`Attorney Docket No: 25236-0269IP1
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`Further, Petitioner and Dr. Arnold fail to provide “some articulated
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`reasoning” to combine the embodiments to achieve the elements of claim 1.
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`Petitioner alleges that “[a] POSA would have known how to combine the
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`implementation details of Example 1 with the arrangement of Figures 7 and 9 with
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`a reasonable expectation of success.” Petition, 58. Dr. Arnold makes essentially
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`the identical assertion. EX1003, ¶149. This is not enough to fulfill Petitioner’s
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`burden under §316(e). Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
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`Cir. 2015) (holding it is not enough to demonstrate “whether a skilled artisan not
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`only could have made” the proposed combination” (emphasis in original));
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`PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017)
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`(explaining that it is insufficient to allege the two references “could be combined”
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`to achieve the claim element); Olympia Tools International, Inc. v. JPW Industries,
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`Inc., IPR2018-00388, Paper 8, 19 (PTAB June 20, 2018) (concluding it is
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`“insufficient” to argue “the mere fact that a person having ordinary skill in the art
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`could make such a change” (emphasis added)); Hulu, Inc. v. Sound View
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`Innovations, LLC, IPR2018-00582, Paper 34, 21-22 (PTAB “Informative” August
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`5, 2019) (stating the petitioner’s theory “strikes us as merely a bald statement
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`about what could have been achieved at the time of the invention” (emphasis
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`added)).
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`18
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`Petitioner further alleges that “[a] POSA interested in constructing a power
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`generator with the fundamental arrangement of Figures 7 and 9 would have looked
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`to Example 1.” Petition, 59. Dr. Arnold makes essentially the identical assertion.
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`EX1003, ¶150. Petitioner’s allegation is largely conclusory and is premised on
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`hindsight in which the claims of the ’635 patent are used as a roadmap for
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`combining pieces of different embodiments, without any evidence that a POSITA
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`would have been motivated to combine Kanno’s embodiments to arrive at the
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`specific combination claimed in the ’635 patent.
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`Accordingly, the Petition has not established a prima facie case of
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`obviousness, and Petitioner has not met its burden to show that claims 1-8 would
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`have been obvious over Kanno.
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`V. CONCLUSION
`For at least the reasons discussed above, the challenged claims should be
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`upheld. Petitioner has failed to meet its burden to show that any of the challenged
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`claims are unpatentable.
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`Date: January 24, 2022
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`Case IPR2021-01127
`Attorney Docket No: 25236-0269IP1
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`Respectfully submitted,
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` /Joshua A. Griswold/
`Joshua A. Griswold, Reg. No. 46,310
`Daniel D. Smith, Reg. No. 71,278
`Kim H. Leung, Reg. No. 64,399
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 214-747-5070
`F: 877-769-7945
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`Attorneys for Patent Owner
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`Case IPR2021-01127
`Attorney Docket No: 25236-0269IP1
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`CERTIFICATION UNDER 37 CFR § 42.24(d)
`Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies
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`that the word count for the foregoing Patent Owner’s Response to Petition totals
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`4,042, which is less than the 14,000 allowed under 37 CFR § 42.24(b)(1).
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`Date: January 24, 2022
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`Respectfully submitted,
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` /Joshua A. Griswold/
`Joshua A. Griswold, Reg. No. 46,310
`Daniel D. Smith, Reg. No. 71,278
`Kim H. Leung, Reg. No. 64,399
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 214-747-5070
`F: 877-769-7945
`
`Attorneys for Patent Owner
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`21
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`Case IPR2021-01127
`Attorney Docket No: 25236-0269IP1
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§42.6(e), the undersigned certifies that on January
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`24, 2022, a complete and entire copy of this Patent Owner’s Response was
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`provided via email to Petitioner by serving the correspondence email address of
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`record as follows:
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`Jonathan M. Strang
`Inge A. Osman
`Lisa K. Nguyen
`Jeffrey G. Homrig
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`Blake R. Davis
`Dale Chang
`Linfong Tzeng
`Laura Nguyen
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`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
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`E-mail:
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`jonathan.strang@lw.com
`inge.osman@lw.com
`lisa.nguyen@lw.com
`jeff.homrig@lw.com
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`blake.davis@lw.com
`dale.chang@lw.com
`linfong.tzeng@lw.com
`laura.nguyen@lw.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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