IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Partes Review of:
`U.S. Patent No. 8,304,935
`Issued: Nov. 6, 2012
`Application No.: 12/647,763
`Filing Date: Dec. 28, 2009
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`)
`)
`)
`)
`)
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`For: Wireless Energy Transfer Using Field Shaping to Reduce Loss
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`DECLARATION OF MARK ALLEN
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`Momentum Dynamics Corporation
`Exhibit 1003
`Page 001
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`CONTENTS
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`
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`INTRODUCTION ......................................................................................... 1
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`BACKGROUND AND QUALIFICATIONS .............................................. 2
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` DOCUMENTS CONSIDERED IN FORMING MY OPINIONS............. 6
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` UNDERSTANDING OF LEGAL PRINCIPLES ....................................... 8
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` Understanding of Legal Principles Relevant to Anticipation and
`Obviousness ........................................................................................... 8
`Person of Ordinary Skill in the Art ..................................................... 10
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`
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` OVERVIEW OF THE ’935 PATENT ....................................................... 12
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`The ’935 Patent ................................................................................... 12
`The Challenged Claims ....................................................................... 22
`Prosecution History ............................................................................. 23
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` CLAIM CONSTRUCTION ........................................................................ 25
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` OVERVIEW OF THE PRIOR ART ......................................................... 25
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` Overview—O’Brien (Ex. 1007) .......................................................... 25
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` GROUND 1: CLAIMS 1, 5-8, 15, AND 19-22 ARE
`ANTICIPATED BY O’BRIEN................................................................... 35
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`
`
`B.
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`Independent claims 1 and 15 ............................................................... 36
`1.
`Preambles .................................................................................. 36
`2.
`[a] source resonator ................................................................... 36
`3.
`[b] second resonator .................................................................. 40
`4.
`[c] near-field wireless energy transfer ...................................... 45
`5.
`[d] field is shaped by conducting and magnetic material ......... 47
`Dependent claims 5-8 and 19-22 are anticipated by O’Brien ............. 63
`1.
`Claims 5-7 and claims 19-21 – multiple resonators ................. 64
`2.
`Claims 8, 22 – field shaped to avoid loss-inducing object ....... 68
`
` GROUND 2: CLAIMS 1-23 WOULD HAVE BEEN OBVIOUS
`OVER O’BRIEN IN VIEW OF HAASTER ............................................. 74
`
` Overview—Haaster (Ex. 1008) ........................................................... 75
` Motivation to combine O’Brien and Haaster ...................................... 80
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`Momentum Dynamics Corporation
`Exhibit 1003
`Page 002
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`Independent claims 1 and 15 ............................................................... 89
`Preamble, Elements and Steps [a], [b] and [c] .......................... 89
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`[d] field is shaped by conducting and magnetic material ......... 89
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` Dependent claims 1-14 and 16-22 ....................................................... 92
`Claim 2-4 and 16-18 – quality factors > 100 ............................ 92
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`Claims 5-7, 19-21 – multiple resonators ................................ 100
`Claims 8, 22 – field shaped to avoid loss-inducing object ..... 100
`Claim 9 – loss-inducing object completely covered by
`conducting and magnetic material .......................................... 103
`Claim 10 – loss-inducing object partially covered ................. 105
`Claim 11 – loss-inducing object nearer to source or
`second resonator ...................................................................... 107
`Claim 12 – conducting material as first layer and
`magnetic material as second layer .......................................... 110
`Claim 13 – partial covering by conducting and magnetic
`material .................................................................................... 113
`Claim 14 – loss-inducing object is a mobile electronic
`device ...................................................................................... 115
`Independent claim 23 ........................................................................ 117
`Preamble .................................................................................. 117
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`[a] resonator coupled to power and control circuitry .............. 117
`[b] near-field wireless energy transfer .................................... 118
`[c] field is shaped by magnetic and conducting materials
`around power and control circuitry ......................................... 119
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` CONCLUSION .......................................................................................... 121
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`Momentum Dynamics Corporation
`Exhibit 1003
`Page 003
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`
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`Introduction
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`1.
`
`I have been retained as an expert witness on behalf of Momentum
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`Dynamics Corporation (“Momentum” or “Petitioner”) in the above-captioned inter
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`partes review (“IPR”) relating to U.S. Patent No. 8,304,935 (“the ’935 patent”) (Ex.
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`1001). The ’935 patent relates to near-field wireless energy transfer between a
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`“source resonator” and a “second” (or “device”) resonator, including shaping the
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`magnetic field using shielding comprising conducting and magnetic materials. ’935
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`patent 2:18-25, 8:5-9.
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`2.
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`I understand that Momentum is petitioning for IPR of claims 1-23 of
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`the ’935 patent and requests that the United States Patent and Trademark Office
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`(“PTO”) cancel those claims.
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`3.
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`In preparing this Declaration, I have reviewed the ’935 patent and
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`considered the documents identified in Section III in light of the general knowledge
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`in the relevant art. In forming my opinions, I relied on my education, knowledge,
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`and experience (including my extensive research and development experience with
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`wireless power transfer) and considered the level of ordinary skill in the art as
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`discussed below.
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`4.
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`I am being compensated for my time in connection with this IPR at my
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`standard consulting rate, which is $625.00 per hour, plus actual expenses. My
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`compensation is not dependent in any way upon the outcome of this matter.
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`Momentum Dynamics Corporation
`Exhibit 1003
`Page 004
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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` Background and Qualifications
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`5.
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`I received a B.A. degree in Chemistry, a B.S.E. degree in Chemical
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`Engineering, and a B.S.E. degree in Electrical Engineering from the University of
`
`Pennsylvania, and a S.M. and Ph.D. (1989) from the Massachusetts Institute of
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`Technology. From 1989 to 2013, I was a member of the faculty of the School of
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`Electrical and Computer Engineering of the Georgia Institute of Technology,
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`ultimately holding the rank of Regents’ Professor and the J.M. Pettit Professorship
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`in Microelectronics. In 2013, I joined the University of Pennsylvania faculty as the
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`Alfred Fitler Moore Professor of Electrical and Systems Engineering, and was
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`named the founding director of the Singh Center for Nanotechnology at Penn.
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`6. As
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`discussed
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`below, my
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`technical
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`expertise
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`is
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`in
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`microelectromechanical systems (MEMS), microfabrication technologies for
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`MEMS, and the application of MEMS in multiple fields. A particular research
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`interest area of mine is the application of microfabrication technologies to magnetics,
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`including magnetoquasistatic problems such as those inherent in near-field wireless
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`power transfer based on magnetic field coupling.
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`7. At the beginning of my academic career in 1989, I founded my research
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`group, the Microsensors and Microactuators Group. This group, consisting of
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`graduate students and postdoctoral associates of both the Georgia Institute of
`
`Technology and the University of Pennsylvania, has been in continuous existence
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`2
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`Momentum Dynamics Corporation
`Exhibit 1003
`Page 005
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`since that time. Although the composition as well as the specific research topics of
`
`the group have changed over time, the group has maintained a focus since its
`
`founding on the development of new microfabrication technologies and their
`
`application to MEMS.
`
`8.
`
` In 1990 I began a project on integrated magnetics with my first Ph.D.
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`student. Our group has continuously worked on magnetics projects since then, with
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`applications including magnetic energy storage and conversion, inductors and
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`transformers, magnetically driven relays, magnetic generators, permanent magnets,
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`magnetic sensors, and wireless power transfer based on magnetic coupling.
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`9.
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`In 1994 my student and I gave a plenary address to the IEEE Applied
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`Power Electronics Conference and Exposition on the topic of micromachined
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`inductors.
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`10. Over the past three decades, our group has published its work on
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`magnetics
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`in multiple
`
`IEEE
`
`journals,
`
`including
`
`the
`
`IEEE Journal of
`
`Microelectromechanical Systems, IEEE Transactions on Magnetics, IEEE
`
`Magnetics Letters, and IEEE Transactions on Power Electronics.
`
`11.
`
`I am co-founder of multiple MEMS-related companies, including
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`CardioMEMS, Axion Biosystems, and EnaChip.
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`12. CardioMEMS was founded in 2001 has commercialized wireless
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`implantable microsensors for treatment of aneurysms and congestive heart failure –
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`3
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`Exhibit 1003
`Page 006
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`ultimately becoming the first MEMS-based medical device transducer FDA-
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`approved for permanent human implantation. CardioMEMS received the 2006
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`Company of the Year award from Small Times magazine and the 2006 Frost and
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`Sullivan Patient Monitoring Product Innovation of the Year Award, and its wireless
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`aneurysm pressure monitor was highlighted by the FDA in its 2005 ODE annual
`
`report as a cleared medical device likely to have a significant impact on patient care.
`
`CardioMEMS completed a 550-patient clinical trial for its second product, a MEMS-
`
`based wireless implantable hemodynamic monitor for patients with congestive heart
`
`failure. After receiving FDA approval for its hemodynamic monitor, CardioMEMS
`
`was acquired by St. Jude Medical (now Abbott) in 2014.
`
`13. The CardioMEMS wireless pressure sensor relies on near-field
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`magnetic coupling between a source coil and a sensor coil, as detailed in U.S. Patents
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`6,111,520 and 7,245,117, among others, of which I am a co-author.
`
`14. EnaChip was launched in 2017 and is focused on exploiting
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`electroplatable, nanoengineered materials for the realization of ultracompact power
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`supplies. In particular, Enachip is using these nanoengineered materials as the
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`magnetic core of integrated inductors to produce multiwatt power supplies on a chip.
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`15.
`
`I have graduated approximately 50 PhD students and approximately 24
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`postdoctoral associates from the MSMA Group in the field of MEMS. Together with
`
`4
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`Exhibit 1003
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`this group, I have published approximately 400 technical articles in the field of
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`MEMS. I hold approximately sixty U.S. patents in the MEMS area.
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`16. The work of my research group has been cited approximately 28,000
`
`times as estimated by Google Scholar.
`
`17.
`
`In addition to the above, I have maintained my leadership position
`
`within the MEMS community. I was co-chair of the 2012 Power MEMS Conference,
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`and chair of the 2016 Solid State Sensors, Actuators, and Microsystems Conference
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`(‘Hilton Head’). In 2021 I will chair the IEEE PwrSoC (‘Power Supply on a Chip’)
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`conference, sponsored in part by the IEEE Power Electronics Society.
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`18.
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`I am a Fellow of the IEEE, with the citation “for contributions to micro
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`and nanofabrication technologies for microelectromechanical systems.”
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`19.
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`I received the 2016 IEEE Daniel P. Noble award in emerging
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`technologies, with the citation “For contributions to research and development,
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`clinical translation, and commercialization of biomedical microsystems.”
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`20.
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`I was elected to the U.S. National Academy of Inventors in 2017.
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`21. Additional details are provided in my CV, attached as Ex. 1004.
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`Momentum Dynamics Corporation
`Exhibit 1003
`Page 008
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`DOCUMENTS CONSIDERED IN FORMING MY OPINIONS
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`22.
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`In addition to the information identified above (e.g., ¶ 3) and elsewhere
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`in this Declaration, in forming my opinions, I have considered the following
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`documents:
`
`Description
`Ex. No.
`1001 U.S. Patent No. 8,304,935 (“’935 Patent”)
`
`1002 File History for ’935 patent (“’935 patent FH”)
`
`1004 Curriculum Vitae of Mark Allen
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`1007 Kathleen O’Brien, Inductively Coupled Radio Frequency Power
`Transmission System for Wireless Systems and Devices (2007) (Ph.D.
`dissertation, Technical University of Dresden) (“O’Brien”), including
`certified translation of the German portions of pages 1-3
`
`1008 U.S. Patent no. 2004/0001299, van Haaster, et al., “EMI Shield
`Including a Lossy Medium” (“Haaster”)
`
`1009
`
`International Publication No. WO 2005/024865, P. Beart, et al.,
`“Inductive Power Transfer Units Having Flux Shields” (“Beart”)
`
`1010 U.S. Patent No. 6,501,364, Hui, et al., “Planar Printed-Circuit-Board
`Transformers with Effective Electromagnetic Interference (EMI)
`Shielding” (“Hui-364”)
`
`1011 U.S. Patent Application Publication No. 2005/0189910, S.R. Hui,
`“Planar Inductive Battery Charger” (“Hui-910”)
`
`1012 U.S. Patent No. 7,358,447, J.F. Gabower, “Electromagnetic
`Interference Shields for Electronic Devices” (“Gabower”)
`
`1013 Frederick Emmons Terman, et al., Electronic and Radio Engineering
`(4th ed. 1947) (“Terman”) (excerpted)
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`6
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`Exhibit 1003
`Page 009
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`Ex. No.
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`Description
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`1015 G. Scheible, et al., Novel Wireless Power Supply System for Wireless
`Communication Devices in Industrial Automation Systems, IEEE 2002
`28th Annual Conference of the Industrial Electronics Society (Nov.
`2002) (“Scheible”)
`
`1016 Estill I. Green, The Story of Q, 43 Am. Scientist 584 (Oct. 1955)
`(“Story of Q”)
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`1017 David H. Staelin, et al., Electromagnetic Waves 46 (1998) (“Staelin”)
`(excerpted)
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`1018 Herbert L. Krauss, et al., Solid State Radio Engineering (1980)
`(“Krauss”) (excerpted)
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`1019 U.S. Patent No. 8,169,185, A. Partovi & M. Sears, “System and
`Method for Inductive Charging of Portable Devices” (“Partovi”)
`
`1020 U.S. Patent No. 7,561,114, M. Maezawa, et al., “Electromagnetic
`Interference Suppressor, Antenna Device and Electronic Information
`Transmitting Apparatus” (“Maezawa”)
`
`1021 Kathleen O’Brien, et al., Design of Large Air-Gap Transformers for
`Wireless Power Supplies, IEEE 2003 34th Annual Conference on
`Power Electronics Specialists (June 2003)
`
`1022 Kathleen O’Brien, et al., Analysis of Wireless Power Supplies for
`Industrial Automation Systems, 29th Annual Conference of the IEEE
`Industrial Electronics Society (2003)
`
`1023 U.S. Patent No. 5,639,989, Leo M. Higgins, III, “Shielded Electronic
`Component Assembly and Method for Making the Same” (“Higgins”)
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`7
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`Exhibit 1003
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`Understanding of Legal Principles
`
`Understanding of Legal Principles Relevant to Anticipation and
`Obviousness
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`23.
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`I understand that a prior art reference can anticipate a patent claim when
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`the prior art’s disclosure renders the recited claim elements not novel. I understand
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`that in order to anticipate a patent claim, a prior art reference must teach each and
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`every element of the claim, expressly or inherently, with the same arrangement as in
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`the claims.
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`24.
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`In analyzing anticipation, I understand that it is important to consider
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`the scope of the claims, the level of skill in the relevant art, and the scope and content
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`of the prior art.
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`25.
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`I understand that a prior art reference can render a patent claim obvious
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`to one of ordinary skill in the art if the differences between the subject matter set
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`forth in the patent claim and the prior art are such that the subject matter of the claim
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`would have been obvious at the time the claimed invention was made.
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`26.
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`In analyzing obviousness, I understand that it is important to consider
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`the scope of the claims, the level of skill in the relevant art, the scope, and content
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`of the prior art, the differences between the prior art and the claims, and any
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`secondary considerations.
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`27.
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`I understand that when the claimed subject matter involves combining
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`pre-existing elements to yield no more than one would expect from such an
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`arrangement, the combination is obvious. I also understand that in assessing whether
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`a claim is obvious one must consider whether the claimed improvement is more than
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`the predictable use of prior art elements according to their established functions. I
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`understand that there need not be a precise teaching in the prior art directed to the
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`specific subject matter of a claim because one can consider the inferences and
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`creative steps that a person of skill in the art would employ. I further understand that
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`a person of ordinary skill is a person of ordinary creativity, not an automaton.
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`28.
`
`I understand that obviousness cannot be based on the hindsight
`
`combination of components selectively culled from the prior art. I understand that
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`in an obviousness analysis, neither the motivation nor the avowed purpose of the
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`inventors controls the inquiry. Any need or problem known in the field at the time
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`of the invention and addressed by the patent can provide a reason for combining
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`elements, even if that reason is different from the reason(s) that subjectively led the
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`inventor to make its claimed combination. For example, I understand that it is
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`important to consider whether there existed at the time of the invention a known
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`problem for which there was an obvious solution encompassed by the patent’s claims.
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`I understand that known techniques can have obvious uses beyond their primary
`
`purposes, and that in many cases a person of ordinary skill can fit the teachings of
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`multiple pieces of prior art together like pieces of a puzzle.
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`9
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`29.
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`I understand that, when there is a reason to solve a problem and there
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`is a finite number of identified, predictable solutions, a person of ordinary skill has
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`good reason to pursue the known options within his or her technical grasp. I further
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`understand that, if this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense, which bears on whether the
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`claim would have been obvious.
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`30.
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`I understand that secondary considerations can include, for example,
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`evidence of commercial success of the invention, evidence of a long-felt need that
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`was solved by an invention, evidence that others copied an invention, or evidence
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`that an invention achieved a surprising or unexpected result. I further understand that
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`such evidence must have a nexus, or causal relationship to the elements of a claim,
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`in order to be relevant. I am unaware of any such secondary considerations for
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`the ’935 patent. To the extent that Patent Owner puts forth any secondary
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`considerations in these IPRs, I reserve the right to rebut those considerations with
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`rebuttal evidence.
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`
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`Person of Ordinary Skill in the Art
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`31.
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`I understand that a person of ordinary skill in the art (“POSA”) is a
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`hypothetical person who is presumed to be aware of all pertinent art, possesses
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`conventional wisdom in the art, is a person of ordinary creativity, and has common
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`sense. I understand that this hypothetical person is considered to have the normal
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`skills and knowledge of a person in a certain technical field (including knowledge
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`of known problems and desired features in the field).
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`32.
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`I have been asked to focus my analysis on claims 1-23 of the ’935 patent,
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`and prior art relating thereto, from the perspective of such a person at the time of the
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`alleged inventions. I understand that the ’935 patent was filed on December 28, 2009,
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`and claims priority to multiple provisional applications, the earliest of which was
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`filed on September 27, 2008.
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`33.
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`It is my opinion that a person of ordinary skill in the art in the 2008 to
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`2009 timeframe would have had at least a bachelor’s degree in electrical engineering
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`(or equivalent) and at least two years’ industry experience or equivalent research.
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`Alternatively, a POSA could substitute directly relevant additional education for
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`experience, e.g., an advanced degree in electrical engineering (or equivalent) with at
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`least one year of industry experience.
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`34. As of September 27, 2008, I would have qualified as at least a POSA,
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`and my opinions herein are informed by my own knowledge based on my personal
`
`experiences and observing others of various skill levels (including those above and
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`below the level of a POSA).
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`35. My opinions below are not restricted to the precise definition of a
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`POSA above. The claims of the ’935 patent are directed to common inductive power
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`transfer and shielding techniques that were well-known in the art and taught by
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`numerous prior art references, including the references discussed below. Thus, my
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`opinions below would apply under any reasonable definition of a POSA.
`
` OVERVIEW OF THE ’935 PATENT
`
` The ’935 Patent
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`36. The ’935 patent is directed to near-field “wireless energy transfer, also
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`referred to as wireless power transmission.” ’935 patent Abstract, 1:33-34, 2:17-40.
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`Specifically, the ’935 patent discussed wireless energy transfer between a “source
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`resonator” and a “second” resonator (or a “device” resonator) as well as techniques
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`for “shaping” the magnetic field using conducting and magnetic materials to avoid
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`“loss-inducing objects.” Id. at Abstract, 2:18-25, 4:63-67, 8:4-9, 29:42-53, 33:5-16,
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`34:65-35:13, 39:7-15, 39:28-32; 39:43-50, 40:9-14.
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`37. As the ’935 patent explained, and as was well known to a POSA, a
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`“resonator” is “a system that can store energy in at least two different forms, and
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`where the stored energy is oscillating between the two forms.” Id. at 11:54-56. For
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`example, a resonator can be formed from either a parallel or series connection of an
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`inductor and a capacitor, as shown, for example, in Figure 6(a) below. Id. at 19:4-
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`17.
`
`’935 patent Fig. 6(a).
`
`
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`38. As explained by the ’935 patent, if a resonator is provided with an initial
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`energy, that energy will oscillate between the capacitor and inductor as the
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`“capacitor discharges and transfers energy into the magnetic field energy stored in
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`the inductor, which in turn transfers energy back into the electric field energy stored
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`in the capacitor.” Id. at 19:11-16. The frequency at which energy would be
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`“continually exchanged between the electric field in the capacitor 104 and the
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`magnetic field in the inductor 108”—in the absence of any losses in the system—is
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`referred to as the “resonant frequency.” Id. at 20:37-51.
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`39. The ’935 patent also acknowledged that energy transfer systems will
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`incur losses, such as “intrinsic losses including absorptive losses (also called ohmic
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`13
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`Page 016
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`or resistive losses) and/or radiative losses.” Id. at 21:2-4. Absorptive losses, for
`
`example, “may be caused by the finite conductivity of the conductor used to form
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`the inductor as well as by losses in other elements, components, connectors, and the
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`like, in the resonator.” Id. at 21:7-10. Radiative losses “may be very small,” however,
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`because near-field wireless power transfer employs resonators where the “[t]he size
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`of the magnetic resonator may be much less than the wavelength of operation.” Id.
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`at 21:66-22:1; see also id. at Fig. 7, 1:36-1:65, 2:17-20. Nevertheless, both
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`absorptive and radiative losses can be taken into account using the “Quality Factor,
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`or Q, . . . which characterizes the energy decay, [and] is inversely proportional to
`
`these losses.” Id. at 21:1-37.
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`40. The ’935 patent also explained that, when a second resonator is located
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`near a first source resonator, the two resonators may “interact and exchange energy”
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`if they have “substantially the same resonant frequency.” Id. at 13:34-64. One
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`manner in which energy could be exchanged is the “source” resonator generating an
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`oscillating magnetic field, which induces a current in the inductor of the second
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`resonator, causing energy to be wirelessly transferred to the second resonator over a
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`distance D. If the “source” resonator is connected to an appropriately configured
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`power supply, replenishing the energy transferred from the “source” resonator to the
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`Momentum Dynamics Corporation
`Exhibit 1003
`Page 017
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`“device” resonator, the net result is that power can be transferred from the power
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`supply to the “device” resonator, as shown in Figure 1 below.
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`’935 patent Fig. 1, 7:16-18, 14:39-44.
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`41. The ’935 patent explained that, in addition to a source resonator and
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`device resonator, other extraneous materials and objects that are not part of the
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`energy transfer system (i.e., between the source and device resonator) may
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`undesirably absorb or attenuate some of the source magnetic field. Id. at 12:33-49.
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`For example, when “materials and objects such as some electronic circuits and some
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`lower-conductivity metals” are placed near the source or device resonator, the
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`“electromagnetic fields can penetrate [the electronic circuits and some lower-
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`conductivity metals] and induce currents in it, which then dissipate energy through
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`resistive losses.” Id. at 33:5-16, 34:65-35:6. The ’935 patent referred to materials
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`and objects as “lossy” if they dissipate “non-trivial amounts” of energy when placed
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`in a magnetic field. Id. at 34:65-35:6. The ’935 patent did not define or otherwise
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`describe what constitutes “non-trivial” losses compared to trivial losses.
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`42. The ’935 patent also states how to “block, shield, or guide magnetic
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`fields” using (1) high-conductivity materials, (2) magnetic materials, and (3) the
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`combination of high-conductivity materials and magnetic materials. Id. at 29:42-53.
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`For example, magnetic fields can be shaped to avoid lossy objects or to protect lossy
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`objects that may be sensitive to magnetic flux. Id. at 8:4-9, 35:7-13.
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`43. The ’935 patent first explained how “high-conductivity” materials can
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`“deflect or reshape the fields.” Id. at 35:7-13. Examples of high-conductivity
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`materials include, for example, “[m]etallic materials, such as copper, silver, gold and
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`the like.” Id. at 34:57-61. As explained by the ’935 patent, these highly conductive
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`materials “deflect or reshape the fields” because “electromagnetic fields at the
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`surface of a good conductor” under appropriate conditions will not penetrate through
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`a conductive material, instead inducing eddy currents near the surface of the
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`conductor. Id. at 35:7-26; 40:10-14 (referring to “induced eddy currents in the
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`conductor”). The ’935 patent explained that “the boundary conditions for
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`electromagnetic fields force the electric field to be nearly completely perpendicular
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`to, and the magnetic field to be nearly completely tangential to, the conductor
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`surface.” Id. at 35:13-21. In other words, the induced eddy currents create an
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`opposing magnetic flux perpendicular to the surface of the conductor, “deflecting”
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`the source field. Id. Those eddy currents even in a highly conductive material will
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`consume some power, however, and so “[e]xtraneous losses may be reduced, but
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`may not be completely eliminated, by placing a single surface of high-conductivity
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`material above, below, on the side, and the like, of a lossy object or material.” Id. at
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`36:36-39.
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`44. However, using conducting materials such as copper to shield and
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`shape a magnetic field was well known, as were the losses associated with such
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`shielding materials. For example, Dr. Frederick Terman’s seminal textbook
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`Electronic and Radio Engineering, Fourth Edition (published in 1947), was directed
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`to describing the “basic tools of the electronic and radio engineer” (Ex. 1013,
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`“Terman” at Preface) and taught:
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`The most practical shield for magnetic flux at radio frequencies is
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`made of material having low electrical resistivity, such as copper or
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`aluminum. Magnetic flux in attempting to pass through such a shield
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`induces voltages in the shield which give rise to eddy currents. These
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`eddy currents oppose the action of the flux, and in large measure
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`prevent its penetration through the shield.
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`Terman at 35,1 Fig. 2-19(c); see also id. at 3 (classifying frequencies down to 10 kHz
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`as radio frequencies). Terman also taught that these conducting shields cause energy
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`losses, explaining that “[p]ower is dissipated in a conducting shield because the eddy
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`currents must flow through the resistance of the shield material. . . . The power
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`consumed by a conducting shield is derived from the source of energy producing the
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`magnetic field.” Id. at 36-37. Similarly, in WO 2005/024865 (Ex. 1009, “Beart”),
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`published on March 17, 2005, Beart explained:
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`It is well known that when conductive materials, for example copper or
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`aluminium, are placed into an alternating magnetic field, the field
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`induces eddy-currents to circulate within them. The eddy currents then
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`act to generate a second field which – in the limit of a perfect conductor
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`– is equal and opposite to the imposed field, and cancels it out at the
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`surface of the conductor. Therefore, these conductive materials can be
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`seen as “flux-shields” – the lines of flux in any magnetic system are
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`excluded from them. This may be used to shield one part of a system
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`from a magnetic field and consequently concentrate the field in another
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`part.
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`Beart 2:29-3:4. Further, Beart similarly explained that conductive materials cause
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`losses in the source field. Id. at 4:19-20 (“losses in the flux shield”), 4:22-23 (“I2R
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`losses (losses caused by circulating currents dissipating as heat) in the conductive
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`1 Emphasis added throughout unless otherwise noted.
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`Declaration in Support of Inter Partes Review of USP 8,304,935
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`shield”), 13:13-20 (explaining that the source must supply additional power “to
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`overcome the losses of the eddy currents in the shield”), 13:29-31 (same). In other
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`words, the ’935 patent’s description of using conducting material to shield or shape
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`a magnetic field was already known.
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`45. The ’935 patent then explained that magnetic materials, or materials
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`with a high magnetic permeability, can also be used to shape a magnetic field. ’935
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`patent 39:7-15, 39:39-43 (“magnetically permeable material, also referred to as
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`magnetic material (any