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`Paper 7
`Entered: November 2, 2021
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOMENTUM DYNAMICS CORPORATION,
`Petitioner,
`
`v.
`
`WITRICITY CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-01127
`Patent 9,306,635 B2
`____________
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`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and SCOTT RAEVSKY,
`Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`INTRODUCTION
`I.
`Momentum Dynamics Corporation (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–8 of U.S. Patent
`No. 9,306,635 B2 (Ex. 1001, “the ’635 patent”). WiTricity Corporation
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless it is determined that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least one of the claims challenged in the
`petition. Based on the information presented in the Petition and the
`supporting evidence, we are persuaded there is a reasonable likelihood
`Petitioner would prevail with respect to the challenged claims. Accordingly,
`we institute an inter partes review of claims 1–8 on all of the grounds set
`forth in the Petition.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of the challenged claims.
`
`
`II. BACKGROUND
`
`A. The ’635 patent
`The ’635 patent relates to systems for “wireless energy transfer” using
`“coupled electromagnetic resonators.” Ex. 1001, 1:11, 4:16–17. These
`systems can be used to power many household devices, industrial devices,
`and commercial devices, and may be used in vehicle charging applications.
`Id. at 1:17–18, 6:3–4.
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`The systems attempt to “minimize or reduce the electric and magnetic
`fields at a distance away from the system.” Id. at 51:29–31. To illustrate,
`Figure 40 of the ’635 patent is reproduced below:
`
`
`Figure 40 depicts a system with dipole cancellation using multiple source
`resonators. Id. at 3:64–65, 52:34–38. Each resonator may include an
`inductive or capacitive element. Id. at 8:38–42. The system includes two
`source resonators (source 1, source R) and a device resonator (device 1). Id.
`at 52:36–38. The first source resonator (source 1) converts electrical energy
`from an energy source into oscillating magnetic fields that may be captured
`by the device resonator (device 1) to effectuate wireless power transfer to a
`device coupled with the device resonator (device 1). See id. at 7:4–18. The
`purpose of the additional resonator (source R) is to cancel the dipole
`moment far from the system. Id. at 52:38–39. The additional resonator
`(source R) accomplishes this using current that is exactly or substantially out
`of phase with the source resonator (source 1). Id. at 52:39–42.
`
`To get the most cancellation, source 1 and source R can be designed
`with identical or near identical sizes and have an equal number of wires,
`with dipole orientations that are substantially the same, and with
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`substantially the same amount of current. Id. at 52:42–47. This design
`performs better when the centers of the wireless power system and the
`source R are not very far from each other. Id. at 53:3–5.
`B. Challenged Claims
`Petitioner challenges claims 1–8 of the ’635 patent. Pet. 1. Claim 1 is
`illustrative:1
`1. A system for wireless power transfer, comprising:
`[a] a first source magnetic resonator comprising a conductive first
`coil having one or more loops coupled to at least one capacitor;
`[b] a second source magnetic resonator comprising a conductive
`second coil having one or more loops, the second source magnetic
`resonator positioned at a non-zero distance from the first source
`magnetic resonator; and
`[c] a device magnetic resonator positioned closer to the first source
`magnetic resonator than to the second source magnetic resonator,
`wherein during operation of the system:
`[d] a first current flowing in the first source magnetic resonator
`generates a first magnetic field that couples to the device
`magnetic resonator to transfer operating power to the device
`magnetic resonator, and the magnetic field has a first dipole
`moment;
`[e] a second current flowing in the second source magnetic
`resonator generates a second magnetic field having a second
`dipole moment, wherein a direction of the first dipole moment
`is substantially opposite to a direction of the second dipole
`moment; and
`[f] wherein the first and second source magnetic resonators are
`positioned so that 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.
`
`
`1 For convenience, we use Petitioner’s element labeling. See Pet. 12.
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`C. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 2),
`supported by the declaration of Dr. David Arnold (Ex. 1003):
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`Claim(s) Challenged 35 U.S.C. §
`1–8
`1022
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`Reference(s)/Basis
`Kanno3
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`1–8
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`103(a)
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`Kanno
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`III. ANALYSIS
`
`A. Principles of Law
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). At this preliminary stage, we determine whether the information
`presented in the Petition shows a reasonable likelihood that Petitioner would
`prevail in establishing that at least one of the challenged claims would have
`been obvious over the proposed combinations of prior art. See 35 U.S.C.
`§ 314(a).
`To show anticipation under 35 U.S.C. § 102, each and every claim
`element, arranged as in the claim, must be found in a single prior art
`reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir.
`2008). The prior art need not, however, use the same words as the claims.
`In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The anticipation
`inquiry takes into account the literal teachings of the prior art reference, and
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. §§ 102, 103 effective March 16,
`2013. Because the challenged patent claims priority to an application filed
`before March 16, 2013, we refer to the pre-AIA version of §§ 102, 103.
`3 U.S. Patent No. 8,698,350 B2 to Kanno (“Kanno”) (Ex. 1005).
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`inferences the ordinarily skilled person would draw from it. Eli Lilly and
`Co. v. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr., 849
`F.3d 1073, 1074–75 (Fed. Cir. 2017). Thus, “a reference can anticipate a
`claim even if it does not expressly spell out all the limitations arranged or
`combined as in the claim, if a person of skill in the art, reading the reference,
`would at once envisage the claimed arrangement or combination.”
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
`Cir. 2015) (internal quotation marks omitted).
`A claim is unpatentable as obvious if “the differences between the
`subject matter sought to be patented and the prior art are such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`(quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based
`on underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the prior art and the claims; (3) the
`level of skill in the art; and (4) when in evidence, objective indicia of
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We apply these principles to the Petition’s challenges.
`B. Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Id. at 13, 17. Petitioner asserts that
`[a] person of ordinary skill in the art (“POSA”) . . . would have
`had a Bachelor’s degree in electrical engineering, physics, or an
`equivalent field, and at least two years’ industry experience, or
`equivalent research. Alternatively, a POSA could substitute
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`directly relevant additional education for experience, e.g., an
`advanced degree relating to the design of circuits using
`inductive coupling, or an advanced degree in electrical
`engineering, physics, or an equivalent field with at least one
`year of industry experience.
`Pet. 12–13 (citing Ex. 1003 ¶¶ 8–11).
`Patent Owner does not address the level of skill in the art at this stage.
`See generally Prelim. Resp. We are persuaded, on the present record, that
`Petitioner’s proposal is consistent with the problems and solutions in the
`’635 patent and prior art of record. We adopt Petitioner’s definition of the
`level of skill for the purposes of this Decision, except that we delete the
`phrase “at least” to avoid including an ambiguity in the definition of the
`level of skill.
`C. Claim Construction
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b), including construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2020).
`The parties do not propose any claim constructions. Pet. 13; Prelim.
`Resp. 3–4. We agree that no terms require construction at this stage. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in
`controversy, and only to the extent necessary to resolve the controversy.”)
`(internal quotation omitted).
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`D. Asserted Anticipation by Kanno
`Petitioner contends that claims 1–8 are anticipated by Kanno. Pet.
`23–58. Patent Owner contends that Petitioner does not establish anticipation
`because the Petition improperly combines multiple, distinct teachings within
`Kanno. Prelim. Resp. 5–10. For the reasons that follow, Petitioner has
`established a reasonable likelihood of prevailing on this ground.
`1. Overview of Kanno
`Kanno describes a system for magnetic resonant coupling wireless
`power transmission. Ex. 1005, 1:13–14. This system reduces leakage of
`unwanted electromagnetic components into the surrounding space. Id. at
`5:9–13. Figure 1 below depicts an example wireless power transmission
`unit:
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`Id. at 6:50–51. The wireless power transmission unit of Figure 1 includes
`first and second wireless power transmitting sections 10a and 10b. Id. at
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`6:52–53. Each of these wireless power transmitting sections 10a and 10b
`includes an oscillator 103, a power transmitting antenna 107, and a power
`receiving antenna 109. Id. at 6:55–60. A control section 192 adjusts the
`difference in phase between the respective resonant magnetic fields 195a,
`195b of the first and second wireless power transmitting sections 10a, 10b.
`Id. at 6:67–7:3. This phase difference is set to fall within the range of 90 to
`180 degrees. Id. at 7:5–8. When the phase difference is within this range,
`leakage of electromagnetic waves into the surrounding space can be reduced.
`Id. at 20:62–67.
`2. Independent Claim 1
`a. Petitioner’s Arguments
`Petitioner contends that Kanno discloses the preamble and all
`limitations of claim 1. Pet. 23–48. Patent Owner does not dispute these
`contentions at this stage. See generally Prelim. Resp. Rather, Patent Owner
`argues that the Petition improperly combines multiple, distinct teachings
`within Kanno. Id. at 5–10. Notwithstanding Patent Owner’s arguments,
`which we discuss in detail below, we determine that Petitioner has shown a
`reasonable likelihood that Kanno anticipates claim 1.
`(1) Preamble
`The preamble of claim 1 recites, “A system for wireless power
`transfer.” Petitioner argues that Kanno’s Figure 1 and 7 disclose the
`preamble by illustrating a “fundamental arrangement for a wireless power
`transmission unit.” Pet. 23–24 (citing Ex. 1003 ¶¶ 58–61). Figure 1 is
`reproduced above in our overview of Kanno; we reproduce Figure 7 below
`in the next section. In general, Figure 1 “illustrates a fundamental
`arrangement for a wireless power transmission unit,” including “first and
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`second wireless power transmitting sections 10a and 10b.” Ex. 1005, 5:34–
`35, 6:52–53. On this record, and notwithstanding Patent Owner’s
`arguments, which we address below, we agree that Kanno discloses the
`preamble.4
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`(2) [a] first source magnetic resonator
`Claim 1 next recites “a first source magnetic resonator comprising a
`conductive first coil having one or more loops coupled to at least one
`capacitor.” For this limitation, Petitioner again relies on Figure 7,
`reproduced below with Petitioner’s annotations:
`
`
`Pet. 25. Figure 7 shows a “fundamental arrangement for a power generator”
`that, according to Petitioner, “uses the wireless power transmission unit of
`Figure 1 with power generating sections 101.” Id. at 24. Petitioner argues
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`4 We need not decide whether the preamble is limiting because regardless,
`Petitioner shows that Kanno likely discloses it.
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`that first power transmitting antenna 107 (shown in blue) is the claimed first
`source magnetic resonator. Id. at 25 (citing Ex. 1005, 9:49–53; Ex. 1003
`¶ 64). On this record, and notwithstanding Patent Owner’s arguments,
`which we address below, we agree that Kanno discloses this limitation.
`(3) [b] second source magnetic resonator
`Claim 1 also recites “a second source magnetic resonator comprising a
`conductive second coil having one or more loops, the second source
`magnetic resonator positioned at a non-zero distance from the first source
`magnetic resonator.” Petitioner again relies on Figure 7, reproduced with
`different annotations from Petitioner below:
`
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`Pet. 29. According to Petitioner, second transmitting antenna 107 (shown in
`green) teaches the claimed second source magnetic resonator. Id. (citing Ex.
`1005, 9:49–53; Ex. 1003 ¶ 71). On this record, and notwithstanding Patent
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`Owner’s arguments, which we address below, we agree that Kanno discloses
`this limitation.
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`(4) [c] device magnetic resonator
`Claim 1 further recites “a device magnetic resonator positioned closer
`to the first source magnetic resonator than to the second source magnetic
`resonator.” For this limitation, Petitioner points again to Figure 7 and also to
`Figure 9, both reproduced below with Petitioner’s annotations:
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`Pet. 35. The light blue device in Figures 7 and 9 is the device magnetic
`resonator, Petitioner argues. Id. at 33 (citing Ex. 1003 ¶ 78–80). Petitioner
`also relies on Kanno’s “real-world implementation of the power generator
`(Example 1)” to show that Kanno’s device magnetic resonator is positioned
`closer to the first source magnetic resonator than to the second source
`magnetic resonator. Id. at 35–36 (discussing specific dimensions from
`Example 1; citing Ex. 1005, 26:15–21, 27:14–16, 27:2–4, 27:64–67; Ex.
`1003 ¶¶ 83–89).
`On this record, and notwithstanding Patent Owner’s arguments, which
`we address below, we agree that Kanno discloses this limitation.
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`(5) [d] first dipole moment
`Continuing, claim 1 recites “a first current flowing in the first source
`magnetic resonator generates a first magnetic field that couples to the device
`magnetic resonator to transfer operating power to the device magnetic
`resonator, and the magnetic field has a first dipole moment.” Petitioner
`produces yet another annotated view of Figure 7 for this limitation:
`
`
`Pet. 37. Petitioner argues that current supplied through transmitting antenna
`107 generates a first magnetic field (shown in purple), which transfers RF
`energy to power receiving antenna 109. Id. at 38–39 (citing Ex. 1005, 6:55–
`63). Relying on the testimony of Dr. Arnold, Petitioner contends that the
`first magnetic field (purple) has a first dipole moment. Id. at 39 (citing Ex.
`1003 ¶ 96). This is true, Petitioner asserts, because “current flowing in a
`loop, such as the current flowing through inductor 107a of power
`transmitting antenna 107, generates a magnetic field with a dipole moment.”
`Id. at 39–40.
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`On this record, and notwithstanding Patent Owner’s arguments, which
`we address below, we agree that Kanno discloses this limitation.
`(6) [e] second dipole moment
`Additionally, claim 1 recites “a second current flowing in the second
`source magnetic resonator generates a second magnetic field having a
`second dipole moment, wherein a direction of the first dipole moment is
`substantially opposite to a direction of the second dipole moment.”
`Petitioner argues that the purple-annotated arrows in Figure 7, below,
`represent a second dipole moment:
`
`
`Pet. 42. In the above Figure 7, current flowing through power transmitting
`antenna 107 generates a second magnetic field (purple), which Petitioner
`equates with a dipole moment for similar reasons as the preceding limitation.
`Id. at 42–43 (citing, e.g., Ex. 1003 ¶ 103–104). On this record, and
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`notwithstanding Patent Owner’s arguments, which we address below, we
`agree that Kanno discloses this limitation.
`(7) [f] magnetic field cancellation
`Finally, claim 1 recites “wherein the first and second source magnetic
`resonators are positioned so that 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.”
`Petitioner argues that Kanno’s two power transmitting antennas 107
`have a 180-degree phase difference between oscillating currents such that
`their resonant magnetic fields 195a, 195b point in substantially opposite
`directions. Pet. 47. As a result, Petitioner contends, the second magnetic
`field 195b at least partially cancels the first magnetic field 195a outside a
`certain spatial region. Id. (citing Ex. 1005, 5:8–13, 20:62–21:4, 28:36–41;
`Ex. 1003 ¶¶ 110–111, 115). Petitioner supports this statement with two
`sections of Kanno: the summary of the invention and Kanno’s description of
`Figure 16. Id. The summary of the invention states, “according to a
`preferred embodiment of the present invention, leakage of unwanted
`electromagnetic components into the surrounding space . . . can be reduced.”
`Ex. 1005, 5:9–13. The Figure 16 description states in part, “if θres is equal
`to 180 degrees, then the two resonant magnetic fields will cancel each other,
`and therefore, leakage of electromagnetic waves into the surrounding space
`can be substantially eliminated.” Id. at 20:62–21:4.
`On this record, and notwithstanding Patent Owner’s arguments, which
`we address below, we agree that Kanno discloses this limitation.
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`b. Patent Owner’s Arguments
`Patent Owner contends that Petitioner fails to meet its burden to show
`anticipation “because it combined multiple, distinct teachings within the
`reference.” Prelim. Resp. 5. Patent Owner characterizes the Petition as
`relying on a combination of Kanno’s “fundamental arrangement” disclosed
`with respect to Figures 1, 7, and 9, as well as a specific “Example 1”
`embodiment and a separate Figure 16 embodiment. Id. at 7. In Patent
`Owner’s view, Kanno explicitly treats Figure 16 as a different embodiment
`than the fundamental arrangement of Figures 1, 7, and 9 and the
`embodiment of Example 1. Id.
`Patent Owner points to Kanno’s description of Figure 16 under the
`heading “Embodiment 1,” which is “separate and apart from the
`fundamental arrangement shown in Figures 1, 7, and 9” and the Example 1
`embodiment. Id. at 8. And Patent Owner argues that “Petitioner provides
`no explanation for why a POSITA [person of ordinary skill in the art] would
`have ‘at once envisaged’ combining [these] embodiment[s].” Id. at 8–9.
`Patent Owner also faults Dr. Arnold’s testimony for mirroring the Petition’s
`alleged deficiencies. Id. at 9–10.
`In Patent Owner’s view, Figures 16 depicts a separate embodiment
`from Figures 1, 7, and 9 and Example 1 because it explicitly includes the
`“arrangement that has already been described with respect to FIGS. 3 and
`4,” which depict “modified example[s]” of Figure 1. Id. at 9 (quoting Ex.
`1005, 20:56–61, 7:51–52, 7:63–64). Quoting Dr. Arnold’s declaration,
`Patent Owner argues that Kanno’s Figure 3 “describes adding a phase
`controller at the output of a power receiving antenna 109,” and Figure 4
`“describes reversing the output connection of a power receiving antenna
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`109.” Id. at 9–10. Patent Owner contends, “Kanno does not disclose that
`Example 1 or the fundamental arrangement of Figures 1, 7, and 9 includes
`the modifications of Figure 3 and/or Figure 4.” Id. at 10.
`c. Analysis
`We disagree with Patent Owner that Petitioner improperly combines
`disparate teachings of Kanno. Kanno’s disclosure is more cohesive than
`Patent Owner suggests. Kanno refers to Figures 1 through 11 as depicting
`“the fundamental configuration of the present invention.” Ex. 1005, 6:47–
`49. Implicit in Kanno’s disclosure is that this fundamental arrangement is
`shared with the more specific examples that follow. Embodiment 1, for
`example, which includes Figure 16, refers back to the fundamental
`arrangement several times. See id. at 12:51–54 (“In FIGS. 12 and 13, any
`component having substantially the same function as its counterpart shown
`in FIGS. 5 and 6 is identified by that counterpart’s reference numeral.”),
`20:42–44 (referring again to FIG. 5), 20:56–58 (referring to FIGS. 3 and 4).
`Thus, on this record, Kanno’s Figure 16 appears to be a natural extension of
`and incorporates the fundamental features of Figures 1 through 11.
`In addition, Kanno’s disclosure of avoiding leakage of magnetic fields
`is not limited to its Figure 16 description. Kanno’s Summary of the
`Invention first discusses reducing leakage by stating, “according to a
`preferred embodiment of the present invention, leakage of unwanted
`electromagnetic components into the surrounding space . . . can be reduced.”
`Id. at 5:8–13, cited in Pet. 47. Patent Owner does not address this
`disclosure. It appears to us that Kanno’s invention, as described in the
`Summary section, relates to reducing leakage of unwanted electromagnetic
`components into the surrounding space. That Kanno waits to discuss this
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`objective in detail until Figure 16 does not mean that it is inapplicable to
`Kanno’s fundamental arrangement in Figures 1 through 11.
`To the contrary, Kanno’s fundamental arrangement includes the same
`configuration that leads to the leakage reduction benefit described for Figure
`16. That is, both Figure 16 and the fundamental arrangement refer to the
`same 90 to 180-degree phase difference, which in the Figure 16 disclosure,
`is described as reducing leakage. For Figure 16, Kanno states:
`[i]f the . . . phase difference . . . is within the range of 90 to 180
`degrees, the vector components of these two resonant magnetic
`fields 195a and 195b will at least partially cancel each other.
`As a result, leakage of the electromagnetic waves into the
`surrounding space can be reduced.
`Id. at 20:62–20:67; see also id. at 20:67–21:4 (“180 degrees” leads to
`“substantially eliminat[ing]” leakage). Kanno’s description of Figure 1
`likewise refers to two wireless power transmitting sections 10a, 10b creating
`a phase difference “within the range of 90 to 180 degrees.” Id. at 6:67–7:8;
`see also id. at 7:13–16 (“equal to 180 degrees”). The description of Figure 4
`also refers to the same wireless power transmitting sections 10a, 10b
`“hav[ing] a phase difference of 180 degrees.” Id. at 8:9–10. Thus, Kanno’s
`fundamental arrangement of Figures 1 through 11 shares the same
`functionality of the Figure 16 disclosure.
`Note also that the passage describing Figure 16’s leakage reduction
`refers to a phase difference between fields “195a and 195b,” which are the
`same fields referred to in Figure 1 as having a 90 to 180-degree phase
`difference. Compare id. at 6:67–7:16, with id. at 20:62–20:67. These shared
`reference numerals further suggest that Figure 16 is part of a cohesive whole
`with the fundamental arrangement of Figures 1 through 11.
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`Moreover, we do not agree with Patent Owner that Figure 16’s
`callback to Figures 3 and 4 means that Figure 16 depicts an entirely separate
`embodiment from Figures 1, 7, and 9. See Prelim. Resp. 9–10; Ex. 1005,
`20:56–61. Although Figures 3 and 4 illustrate “modified example[s]” of
`Figure 1 (Ex. 1005, 7:51, 63), Figure 4 appears to be identical to Figure 1:
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`Not only that, the modifications disclosed in Figures 3 and 4 do not
`eliminate the leakage-reducing phase difference disclosed for both Figures 1
`and 16. See Ex. 1005, 7:51–8:42. Figure 4’s description refers to the same
`wireless power transmitting sections 10a, 10b from Figure 1, which in
`Figure 4 also “have a phase difference of 180 degrees.” Id. at 8:9–10.
`Thus, on this record, one of ordinary skill in the art would have
`viewed the Figure 16 disclosure as a natural extension of and incorporating
`the fundamental features of Figures 1 through 11, not a distinct disclosure
`requiring combination to show unpatentability.
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`d. Summary as to Claim 1
`Based on the preliminary record before us, we find that Petitioner has
`shown a reasonable likelihood that Kanno anticipates claim 1.
`3. Dependent Claims 2–8
`Petitioner contends that dependent claims 2–8 are unpatentable as
`anticipated by Kanno. Pet. 49–58. Petitioner provides a detailed analysis
`explaining where Kanno discloses the limitations in dependent claims 2–8.
`Id. Patent Owner does not offer separate arguments for these claims or
`contest Petitioner’s analysis at this preliminary stage. See generally Prelim.
`Resp. For the reasons discussed above, based on the current record, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`Kanno anticipates claims 2–8.5
`E. Asserted Obviousness over Kanno
`Petitioner contends that claims 1–8 would have been obvious over
`Kanno. Pet. 58–64. Petitioner contends that to the extent Patent Owner
`argues that Kanno’s Example 1 is not a specific implementation of the
`power generator in Kanno’s Figures 7 and 9, it would have been obvious to
`apply the implementation details of Example 1 to Kanno’s Figures 7 and 9.
`Id. at 58. Petitioner sets forth detailed reasoning, supported by citations to
`Kanno and to Dr. Arnold’s declaration. Id. at 58–64 (citing, e.g., Ex. 1005,
`
`5 The Petition also refers to “[c]laims 2–10” being “unpatentable for the
`same reasons as claim 1 and as further explained below,” but the Petition
`does not provide any reasons for the unpatentability of claims 9 and 10. See
`Pet. 49–58. Patent Owner argues that Petitioner fails to prove that
`dependent claims 9 and 10 are anticipated by Kanno. Prelim. Resp. 10–11.
`As the above instance appears to be the only one where the Petition refers to
`claims 9 and 10, we consider it to be a typographical error in the Petition.
`See, e.g., Pet. 2 (“Identification of Challenges” including only claims 1–8).
`20
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`IPR2021-01127
`Patent 9,306,635 B2
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`passim; Ex. 1003 ¶¶ 52–54, 148–160). At this stage, we agree with
`Petitioner’s reasoning and the testimony of Dr. Arnold.
`Patent Owner contends that Petitioner’s argument does not address the
`deficiencies it identifies in Petitioner’s anticipation argument. Prelim. Resp.
`12. Specifically, Patent Owner contends that Petitioner fails to establish that
`it would have been obvious to apply the Figure 16 embodiment to Kanno’s
`fundamental arrangement of Figures 1, 7, 9, and Example 1. Id. This
`argument rests on similar reasoning that Patent Owner advances for
`Petitioner’s anticipation ground. We reject this argument at this stage for
`similar reasons as set forth above.
`Patent Owner also contends that Petitioner and Dr. Arnold fail to
`provide an “articulated reasoning” to combine Kanno’s embodiments. Id. at
`12–14. Patent Owner argues that the following rationale set forth by
`Petitioner is insufficient: that “[a] POS[IT]A would have known how to
`combine the implementation details of Example 1 with the arrangement of
`Figures 7 and 9 with a reasonable expectation of success.” Id. at 13 (citing
`Pet. 58; Ex. 1003 ¶ 149). Patent Owner also argues that Petitioner’s
`assertion that a POSITA “would have looked to Example 1” is conclusory
`and premised on hindsight. Id. at 13–14.
`We disagree that Petitioner failed to set forth an adequate rationale.
`Patent Owner quotes selectively, omitting the following fulsome reasoning
`supplied by Petitioner:
`A POSA would have known how to combine the
`implementation details of Example 1 with the arrangement of
`Figures 7 and 9 with a reasonable expectation of success.
`Indeed, the power generator of both Example 1 and the
`fundamental arrangement of Figures 7 and 9 includes two
`power generating units with the same configuration that are
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`IPR2021-01127
`Patent 9,306,635 B2
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`
`connected in parallel with each other. Kanno 6:50-7:42, 11:15-
`23, 11:37-44, 25:44-26:25, 27:14-24, Figs. 7, 9. Each power
`generating unit receives power from power generating solar
`cells. Id. 11:24-47, 25:56-61, 27:14-16, Fig. 9. And the power
`transmitting and receiving antennas of each power generating
`unit have a resonant frequency equal to the output frequency of
`the oscillator. Id. 6:55-63, 8:47-53, 11:15-23, 26:1-3. Further,
`in both cases, the power transmitting and receiving antennas are
`arranged on opposite sides of a wall so that they face each other
`with the antennas on either side of the wall being co-planar. Id.
`11:15-47, 26:19-21, 26:53-60, 27:17-22, 27:2-4, Figs. 7, 9;
`Arnold Decl. ¶ 149.
`A POSA interested in constructing a power generator
`with the fundamental arrangement of Figures 7 and 9 would
`have looked to Example 1 because it provides not only the
`specific implementation details, including circuit component
`types and values, but it also provides test data showing that the
`power generator achieves high efficiency with minimal leakage.
`Kanno 27:64-28:18 (“As can be seen easily from Table 1, in
`Example 1, a very high voltage step-up ratio Vr could be
`achieved with high efficiency power transmission realized
`wirelessly.”), 28:24-42 (“As can be seen easily from Table 2,
`these results prove that the arrangement of the present invention
`in which θres was within the range of 90 to 180 degrees not
`only achieved . . . high efficiency but also minimized leakage of
`electromagnetic waves into the surrounding space
`effectively.”); Arnold Decl. ¶ 150.
`Pet. 58–59. Thus, we disagree that Petitioner’s analysis is conclusory.
`As for Patent Owner’s hindsight argument, it is conclusory, and thus,
`unavailing. Prelim. Resp. 14. In any event, we take as our guiding principle
`that:
`
`Any judgment on obviousness is in a sense necessarily a
`reconstruction based on hindsight reasoning, but so long as it
`takes into account only knowledg
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