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`571-272-7822
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` Paper 26
`Entered: September 6, 2022
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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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`MOMENTUM DYNAMICS CORPORATION,
`Petitioner
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`v.
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`WITRICITY CORPORATION
`Patent Owner.
`__________
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`IPR2021-01127
`Patent 9,306,635 B2
`__________
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`Record of Oral Hearing
`Held: August 3, 2022
`__________
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`Before JAMESON LEE, SALLY C. MEDLEY, and
`SCOTT RAEVSKY, Administrative Patent Judges.
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`571-272-7822
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` Paper 26
`Entered: September 6, 2022
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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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`MOMENTUM DYNAMICS CORPORATION,
`Petitioner
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`v.
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`WITRICITY CORPORATION
`Patent Owner.
`__________
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`IPR2021-01127
`Patent 9,306,635 B2
`__________
`
`Record of Oral Hearing
`Held: August 3, 2022
`__________
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`Before JAMESON LEE, SALLY C. MEDLEY, and
`SCOTT RAEVSKY, Administrative Patent Judges.
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`IPR2021-01127
`Patent 9,306,635 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DALE CHANG, ESQ.
`JONATHAN M. STRANG, ESQ.
`BLAKE R. DAVIS, ESQ.
`Latham & Watkins LLP
`555 Eleventh Street NW
`Suite 1000
`Washington, DC 20004
`(312) 876-7650 (Chang)
`dale.chang@lw.com
`jonathan.strang@lw.com
`blake.davis@lw.com
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`ON BEHALF OF THE PATENT OWNER:
`
`
`KIM LEUNG, ESQ.
`JOSHUA GRISWOLD, ESQ.
`Fish & Richardson P.C.
`1000 Maine Avenue SW
`Washington, DC 20024
`(856) 678-4713 (Leung)
`(214) 292-4034 (Griswold)
`griswold@fr.com
`leung@fr.com
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`The above-entitled matter came on for hearing on Wednesday,
`August 3, 2022, commencing at 11:01 a.m. EDT, via Video-Teleconference.
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`11:01 a.m.
`JUDGE RAEVSKY: Good morning. This is Judge Raevsky.
`Welcome to the Patent Trial and Appeal Board. We are here today for oral
`argument and Inter Partes Review No. 2021-01127, in which Momentum
`Dynamics Corporation is the Petitioner and Witricity Corporation is the
`Patent Owner.
`At issue is US Patent No. 9306635B2. Your panel for the hearing
`today includes myself and Judges Lee and Medley.
`We'd like to start with appearance. Who do we have on behalf of
`Petitioners today? Someone may be on mute. I can't hear anyone speaking.
`Do we have Petitioner Counsel?
`MR. SLAY: Hello. Party has been admitted.
`JUDGE RAEVSKY: Hello. Do we have Petitioner Counsel?
`MR. CHANG: Unmute. Yes. I'm here. This is Dale Chang for the
`Petitioner.
`JUDGE RAEVSKY: Thank you, Dale. Were you here for the
`introduction of the hearing or did you just join in?
`MR. CHANG: No. We were on, but we didn't see the introduction.
`I don't know what happened.
`JUDGE RAEVSKY: Okay.
`MR. CHANG: Maybe --
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`JUDGE RAEVSKY: I'll start over. It wasn't very interesting, but I'll
`repeat it for your benefit.
`MR. CHANG: Okay. Thank you.
`JUDGE RAEVSKY: I would like to welcome you and everyone to
`the Patent Trial and Appeal Board. We are here today for oral argument and
`Inter Partes Review No. 2021-01127, in which Momentum Dynamics
`Corporation is the Petitioner and Witricity Corporation is the Patent Owner.
`At issue is the US Patent No. 9306635B2. Your panel for the
`hearing today includes myself, Judge Raevsky, and Judges Lee and Medley.
`So let's start with appearances. Who do we have on behalf of
`Petitioner today?
`MR. CHANG: Morning. This is Dale Chang. And with me on the
`public line are John Strang and Blake Davis. We're all from Latham &
`Watkins, and we represent Petitioner Momentum Dynamics.
`JUDGE RAEVSKY: And, Mr. Chang, you'll be arguing today?
`MR. CHANG: Yes, sir.
`JUDGE RAEVSKY: Thank you. All right. Who do we have on
`behalf of Patent Owner today?
`MS. LEUNG: Good morning, Your Honors. This is Kim Leung.
`And I am joined by lead counsel Josh Griswold. And we represent Patent
`Owner Witricity Corporation.
`JUDGE RAEVSKY: And you'll be arguing today, Ms. Leung?
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`MS. LEUNG: Yes, I will.
`JUDGE RAEVSKY: Okay. Thank you. Before we begin, I have a
`few reminders. When you're referring to a slide today, please tell us the
`slide number so that we can follow along. Also, please remember to mute
`yourself when not speaking, and identify yourself when you begin to speak,
`for the benefit of the court reporter. And, finally, please be aware that
`members of the public may be listening to this hearing today.
`Each side will have 45 minutes to argue its case. We will first hear
`from Petitioner and then from Patent Owner. Petitioner, would you like to
`reserve any time for rebuttal today?
`MR. CHANG: Yes, Your Honor. Fifteen minutes, please.
`JUDGE RAEVSKY: Okay. Thank you, Mr. Chang. You'll have
`about 30 minutes for your main argument. And when you're ready, you may
`begin.
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`MR. CHANG: Great. Thank you. So we'd like to start with a brief
`overview of the '635 Patent, as well as the Kanno prior art reference and
`then focus on the disputed issues for each of the two grounds, the first being
`anticipation by Kanno, and the second being obviousness over Kanno.
`So turning to slide 2 of Petitioner's Demonstratives, we see that the
`'635 Patent says that with a wireless charging system, it can be useful to
`reduce magnetic fields at various distances, including from a few
`centimeters away from the system to distances much larger from the system,
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`both in the near field and the far field. So, basically, canceling magnetic
`fields wherever you want to protect people or devices or electronics from
`electromagnetic radiation.
`What does the patent say about how to do that? Well, it's pretty
`straightforward, and that's shows on slide 3. And so here we've got Figure
`41 of the '635 Patent. And it shows a system with two source resonators,
`source 1 and source 2.
`And the way it works is source 1 generates an oscillating magnetic
`field that induces current in the corresponding device resonator. And that's
`how it transfers power, wirelessly, from the source to the device. And the
`device resonator is connected to something like a battery.
`Source 2 transfers power to the device 2 resonator in the same way.
`An oscillating magnetic field induces current, etc. The difference between
`the two is that they're driven 180 degrees out of phase. And that's indicated
`by those two opposing white arrows near the bottom.
`And, because they're driven out of phase, the magnetic fields go in
`opposite directions. And, therefore, their dipole moments -- dipole moment
`is just the vector quantity that represents the magnitude and direction of the
`magnetic field. Their dipole moments are in opposite directions. At any
`moment, they've got opposite, opposing dipole moments.
`And that results in cancellation of magnetic fields. And you can see
`that in the passage at the bottom. Basically it says that when you have equal
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`but opposite dipole moments, their magnetic fields cancel each other far
`from the systems.
`So if we turn to slide 4, we can see that Kanno teaches exactly this,
`exactly this concept. So here we've got source resonators. They're oriented
`a little bit differently. Just put the source resonators on the top instead of the
`of the bottom. And they have square coils instead of circular coils.
`But the concept's the same. They generate oscillating magnetic
`fields to induce current in the device resonators to transfer power wirelessly.
`And, as indicated by the purple arrows, they're driven 180 degrees out of
`phase so that their magnetic fields have equal but opposite dipole moments
`and, therefore, cancel fields far from the system.
`So with this basic arrangement, if we turn to slide 13, we see that,
`with the arrangement we just saw, where you've got two resonators as side-
`by-side driven out of phase, Kanno says that this reduces magnetic fields in
`the surrounding space, just like the '635 Patent.
`So with that brief background, unless Your Honors have any
`questions, we can dive into the disputed issues.
`So the first disputed issue. Let's turn to slide 11. This is a limitation
`of claim one. And we see that it says that the second magnetic field at least
`partially cancels the first magnetic field, and this is the key part, outside a
`spatial region through which power is transferred. So by the plain words of
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`the claim, all it requires is partial cancellation outside the power transfer
`region.
`
`Patent Owner argues that this limitation should be construed to add a
`further limitation, which is that this partial cancellation has to occur in
`what's called the far field. The Patent Owner concedes that its construction
`is not supported by the claim language. And so they resort to the
`specification. And they make some sort of disclaimer, disavowal argument
`based on a single sentence from the '635 Patent.
`But that sentence doesn't even criticize, let alone disclaim near field
`cancellation. What it says is that, and this is at '635 Patent, column 54, lines
`15 to 17. What it says is that the system can reduce far field radiation
`without substantially attenuating the near field resonant energy transfer.
`Again, that's the power transfer region of the magnetic fields.
`And that's consistent with exactly what claim one says, which is that
`you're canceling magnetic fields outside of that narrow region where power's
`actually being transferred from one resonator to the other. So it doesn't say
`anything about near field cancellation outside of that region.
`And, regardless, none of this rises to the level of a clear and
`unmistakable disclaimer or disavowal. And, even setting all that aside, even
`if you were to adopt that mode of construction, Kanno discloses it. Why?
`Kanno discloses the same exact arrangements working exactly the same way
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`as a '635 Patent. So if the '635 Patent discloses a system that cancels
`magnetic fields in the far field, so does Kanno, necessarily.
`There's no dispute that Kanno's example 1 system includes first and
`second source resonators that have the exact same configuration. And we
`see all the details laid out in Kanno. The same size, shape, number of turns,
`frequency, current. All that is perfectly identical in both the resonators.
`And, therefore --
`JUDGE LEE: Mr. Chang, this is Judge Lee. I'd like to ask you,
`based on what you just told us about the dipole situation and with the patent,
`is it true that there, necessarily, is always a near field existing outside of that
`claim region? You know, the claim recites a particular region through which
`power is transferred. My question to you is, well, outside of that region, is
`there necessarily always going to be near field anyways?
`MR. CHANG: Right. And good question, Your Honor. And I think
`it would be helpful if we go to slide 15 or, also, Dr. Arnold's declaration,
`which is Exhibit 1003 at paragraphs 114, 115. So I don't know whether in
`all cases there's going to be a near field region outside of the power transfer
`region in which magnetic field cancellation can occur.
`But I do know that, for example, in Kanno, you've got -- and that's
`because the near field region is equivalent to one wavelength of the antenna.
`And, when you've got a high-frequency system, like three megahertz, one
`wavelength, if you do the math, it comes out to 100 meters. So 100 meters.
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`And you're talking about a system that takes up, in its entirety, less
`than 1 meter. You've got the resonators that are 50 centimeters apart. Each
`resonator is about 36 centimeters wide. So even 99 meters away from this
`power transfer system, which is across a wall, so that power transfer region
`is going to be in that vicinity, even 99 meters away, that's near field.
`JUDGE LEE: Thank you.
`MR. CHANG: Sure. So getting back to the point that even under
`their construction, Kanno discloses the claims, we see that, it's undisputed,
`Kanno discloses exactly the same system as the '635 Patent, with respect to
`the same arrangement, number of terms, size, all the stuff that dictates the
`magnitude and direction of the magnetic fields. Those things are the same.
`And, so when you drive them out of phase, you've got equal but
`opposite dipole moments. And, so when you're canceling in the near field,
`you're canceling, just the same, in the far field. And that's, effectively, what
`Dr. Arnold says on slide 15 as well where he says that a reduction in the
`strength of the electromagnetic near field generally corresponds with a
`reduction in the strength of the electromagnetic far field.
`Okay. And that brings us to the second dispute. The second dispute
`is an argument that Your Honors have already fully considered and rejected.
`And that is Patent Owner's argument that Figure 16 somehow shows a
`different embodiment than Kanno's Example 1. But it's undisputed that
`Figure 16, each of the power generating units, shares the exact same
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`configuration arrangement reference numerals as the fundamental
`arrangement that Example 1 embodies and which is shown in Figures, for
`example, 1, 7, 9, and others.
`JUDGE RAEVSKY: Mr. Chang?
`MR. CHANG: Yes?
`JUDGE RAEVSKY: This is Judge Scott Raevsky. What's your
`response to Patent Owner's contention that using the same reference
`numerals in a later figure doesn't really matter to this argument?
`MR. CHANG: So I think it's kind of a totality of the circumstances
`type analysis, right? We've got to look to are they talking about the same
`components, a similar system, same functionality. And, in all cases, the
`same answer's yes. As Your Honors correctly noted.
`Now yeah, sure, in some patents, you may have an instance where
`the same reference numerals -- it's pretty clear they're talking about
`something different. That's not the case here. And, ultimately, this all falls
`down to how a person of ordinary skill in the art would understand it.
`Our expert said this is how a person of ordinary skill in the art would
`understand it. They would understand Figure 16 to be reflecting the same
`embodiment as the others. They don't have any expert testimony providing
`that. So that's the first point. Figure 16. Oh, sorry. The first point is that,
`even without Figure 16, the petition showed that Example 1 itself anticipates
`all the claims by itself without Figure 16.
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`And Your Honors noted that in the institution decision on pages 17
`and 18 where Your Honors noted that the petition relied on numerous
`disclosures of the same concept of reducing magnetic fields outside of the
`context of Figure 16.
`And, if we turn to slide 16, you can see that it's undisputed. This
`comes from Patent Owner's response. It's undisputed that Example 1 is an
`embodiment of a real-world implementation of the fundamental arrangement
`of Figures 1, 7, and 9. And, so if Example 1, by itself, anticipates, Figure 16
`is irrelevant.
`The second point is, as Your Honors also correctly found in the
`institution decision, Figure 16 is not a different embodiment. And we've
`already discussed that at length.
`So that brings us to the third and final dispute. And this relates to
`Ground 2 only. And it's obviousness. And, as Your Honors may recall, the
`Petition raised obviousness purely as an alternative, which is to the extent
`that Example 1 does not embody the fundamental arrangement of Figures 1,
`7, and 9, it would have been obvious to use the implementation details from
`the Example 1 embodiment, for example, the inductances, capacitances,
`number of turns, distance between resonators, all those implementation
`details, and apply those to the fundamental arrangement shown in the other
`figures.
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`But because there's no dispute that Example 1 does embody that
`fundamental arrangement, Your Honors don't even need to reach the
`obviousness issue.
`Regardless, Patent Owner's only argument here is one that the Board
`also rejected, which is, supposedly, a lack of motivation to combine. We're
`talking about disclosures from the same exact reference that match perfectly
`together to the point that Dr. Arnold says they're the same embodiment.
`And so as we see on Slide 17, the Board agreed and found not only
`that the petition provided, quote unquote, “fulsome reasoning” for the
`motivations but also that the combination has no hindsight problem and
`would be straightforward for a POSA to implement. So with that, unless
`Your Honors have questions, we'd like to reserve the remaining time for
`rebuttal.
`JUDGE LEE: Yeah, it's Judge Lee. I have a question. Getting back
`to near field and far field, does the patent indicate how to distinguish near
`field and far field? In other word, is there a formula that you plug in so that
`you know that this point is definitely near field or definitely far field? Is
`there a clear line of demarcation or is it all quite fuzzy that it may be a near
`field and also may be far field? Not sure how to explain it. Is there a clear
`formula that defines where near field ends and far field starts?
`MR. CHANG: Yeah. So Dr. Arnold provided that formula. And he
`did that calculation in the context of Kanno, at paragraph 114 to 115 in this
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`declaration. And his methodology, his formula, is consistent with what's
`suggested, at least, in the '635 Patent.
`So if you go to slide 2, you'll see that at column 51, lines 28 to 37, it
`talks about, it characterizes far field or the near field. And, in parentheses, it
`says, if the wavelength is much larger than the distance between the power
`transfer system to the point of interest.
`And so it seems to suggest that, as Dr. Arnold says, most people in
`the field would consider the near field to be equivalent to the length of one
`wavelength. And you can calculate that from the frequency of the current.
`JUDGE LEE: That's not disputed by Patent Owner? Is there a
`dispute on that?
`MR. CHANG: I do not believe so.
`JUDGE LEE: Okay.
`MR. CHANG: I am not aware of any dispute on that.
`JUDGE RAEVSKY: Thank you, Mr. Chang.
`MR. CHANG: Thank you, Your Honor.
`JUDGE RAEVSKY: You have about 28 minutes remaining for your
`rebuttal. Ms. Leung, would you like to reserve any time for your rebuttal
`today?
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`MS. LEUNG: Thank you, Your Honor. We, actually, Patent Owner
`rests on the briefings. So unless there are any questions from the Board, we
`are not going to be giving a presentation today.
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`JUDGE RAEVSKY: Okay. I have one question.
`MS. LEUNG: Sure.
`JUDGE RAEVSKY: Do you agree with Petitioner's contention
`today that, for Example 1, that you do not dispute that Example 1 is a
`specific embodiment of the fundamental arrangement in Figures 1, 7, and 9?
`MS. LEUNG: We did not dispute that Example 1 is an example of
`the fundamental arrangement. We did dispute that Figure 16, that Kanno
`does not describe Figure 16 as the same embodiment but, rather, as a
`different embodiment than the fundamental configuration.
`JUDGE RAEVSKY: Thank you --
`JUDGE LEE: Can I have a follow up, please? Ms. Leung, a
`fundamental embodiment, doesn't it imply it's the basis for everything? That
`if the patent describes anything else, it's built on the foundation of the
`fundamental embodiments? Why wouldn't one read it like that? How can
`you say something that's built on the fundamental is a different embodiment
`from the fundamental? I don't quite understand the connection.
`MS. LEUNG: Right, Your Honor. That's a great question. So
`anything that's built on the fundamental configuration can include additional
`elements that are not in the fundamental configuration. So these additional
`elements can result in different results than the fundamental configuration.
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`JUDGE LEE: I understand that. But everything in the fundamental
`would be in the later embodiment, later disclosed embodiment. Wouldn't
`that be so?
`MS. LEUNG: For the most part, generally, that's true. But it doesn't
`work the other way around. So they're pointing to disclosure in Figure 16
`for the claim element of the magnetic field cancellation. But it's not
`necessarily true that the fundamental configuration includes that particular
`element.
`JUDGE LEE: No, but it doesn't work in your favor because, if
`everything in the fundamental embodiment is also in the Figure 16
`embodiment, then everything is in the Figure 16 embodiment.
`MS. LEUNG: That's right. But what we're arguing is that it's the
`Figure 16 embodiment that Patent Owner is pointing to for the claim
`element of magnetic field cancellation. And, so without the combination
`with the Figure 16 embodiment, that fundamental configuration, Kanno does
`not disclose that the fundamental configuration includes magnetic field
`cancellation.
`JUDGE LEE: But you just agreed that the fundamental embodiment
`is brought over to the later-disclosed embodiment because it is the
`foundation for the later embodiment. So why wouldn't the Figure 16
`embodiment include everything that's in the fundamental embodiment, in
`which case, the Figure 16 embodiment has everything, although it's a
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`IPR2021-01127
`Patent 9,306,635 B2
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`different embodiment from the fundamental embodiment? But that doesn't
`matter because the Figure 16 embodiment has everything that's disclosed in
`the fundamental embodiment.
`MS. LEUNG: Right, Your Honor. It might have everything
`disclosed in the fundamental embodiments. But it also has more than the
`fundamental embodiments. And that more in the Figure 16 is what gives the
`magnetic field cancellation.
`JUDGE LEE: Right. So why wouldn't it meet your claim? Because
`it has it.
`MS. LEUNG: Because they point to a combination of the
`fundamental embodiment and the Figure 16 embodiment. And those are
`completely different embodiments that a POSITA, looking at Kanno, would
`not immediately emphasize as being a single embodiment, as arranged in the
`claims.
`JUDGE LEE: Thank you. I have nothing else.
`JUDGE RAEVSKY: Thank you, Ms. Leung.
`MS. LEUNG: Thank you, Your Honor.
`JUDGE RAEVSKY: Mr. Chang, you may respond.
`MR. CHANG: Your Honors, I don't actually have anything to add.
`It seems like the issues are crystalized. And, again, I would be just repeating
`what we said earlier, which is, for example, even without Figure 16, Kanno
`anticipates and renders obvious.
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`IPR2021-01127
`Patent 9,306,635 B2
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`JUDGE RAEVSKY: Thank you, Counsel.
`MR. CHANG: Thank you, Your Honors.
`JUDGE RAEVSKY: Ms. Leung, I assume you have no response?
`MS. LEUNG: Yes, Your Honors. There's no response from Patent
`Owner.
`JUDGE RAEVSKY: Counsel, thank you for your time today. I'd
`also like to thank our court reporter and other court staff for their help today.
`With that, we are adjourned.
`(Whereupon, the above-entitled matter went off the record at 11:27
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`a.m.)
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`IPR2021-01127
`Patent 9,306,635 B2
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`PETITIONER:
`
`Jonathan M. Strang
`Inge A. Osman
`Jeffrey G. Homrig
`Blake R. Davis
`Dale Chang
`Linfong Tzeng
`Laura Nguyen
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`inge.osman@lw.com
`jeff.homrig@lw.com
`blake.davis@lw.com
`dale.chang@lw.com
`linfong.tzeng@lw.com
`laura.nguyen@lw.com
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`IPR2021-01127
`Patent 9,306,635 B2
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`PATENT OWNER:
`
`Joshua Griswold
`Dan Smith
`Kim Leung
`Kenneth Hoover
`W. Karl Renner
`Marc M. Wefers
`Andrew Kopsidas
`FISH & RICHARDSON P.C.
`griswold@fr.com
`dsmith@fr.com
`leung@fr.com
`hoover@fr.com
`axf-ptab@fr.com
`wefers@fr.com
`kopsidas@fr.com
`
`Misha Hill
`misha.hill@witricity.com
`
`Adam Brausa
`abrausa@durietangri.com
`
`
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`20
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