Trials@uspto.gov
`571-272-7822
`
`Paper 35
`Entered: December 20, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INDUCTEV INC.,1
`Petitioner,
`
`v.
`
`WITRICITY CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-01166
`Patent 8,304,935 B2
`____________
`
`Before JAMESON LEE, MIRIAM L. QUINN, and SCOTT RAEVSKY,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`1 On November 30, 2022, Petitioner filed an updated mandatory notice
`notifying the Board of the name change of Petitioner from “Momentum
`Dynamics Corporation” to the captioned “InductEV Inc.” Paper 33.
`
`
`
`
`571-272-7822
`
`Paper 35
`Entered: December 20, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INDUCTEV INC.,1
`Petitioner,
`
`v.
`
`WITRICITY CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-01166
`Patent 8,304,935 B2
`____________
`
`Before JAMESON LEE, MIRIAM L. QUINN, and SCOTT RAEVSKY,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`1 On November 30, 2022, Petitioner filed an updated mandatory notice
`notifying the Board of the name change of Petitioner from “Momentum
`Dynamics Corporation” to the captioned “InductEV Inc.” Paper 33.
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`I. INTRODUCTION
`Momentum Dynamics Corporation (“Petitioner”) filed a Petition
`(Paper 2, “Petition” or “Pet.”) requesting an inter partes review of claims 1–
`23 (“the challenged claims”) of U.S. Patent No. 8,304,935 B2 (Ex. 1001,
`“the ’935 patent”). Patent Owner challenged the Petition by filing a
`Preliminary Patent Owner Response. Paper 6 (“Prelim. Resp.”). After
`considering the merits of the Petition and Patent Owner’s arguments against
`institution, we instituted inter partes review. Paper 7 (“Decision on
`Institution,” “Dec. on Inst.”).
`During the trial phase, Patent Owner filed a Response (Paper 11,
`“PO Resp.”), Petitioner filed a Reply (Paper 20, “Reply”), and Patent Owner
`filed a Sur-reply (Paper 27, “Sur-reply”). Further, Patent Owner filed a
`Motion to Exclude (Paper 28, “Mot.”), Petitioner filed an Opposition to the
`Motion to Exclude (Paper 30, “Opp. Mot.”), and Patent Owner filed a Reply
`in support of its Motion to Exclude (Paper 32, “Reply Mot.”). No oral
`hearing was held as the parties jointly requested to withdraw their requests
`for oral argument in this proceeding. See Paper 31; Ex. 3001.
`We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`explained below, we conclude that Petitioner has shown by a preponderance
`of the evidence that claims 1−23 of the ’935 patent are unpatentable. See
`35 U.S.C. § 316(e) (2018).
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`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner states that “[t]he real party-in-interest is InductEV Inc.
`(‘Petitioner’).” Paper 33. Patent Owner identifies itself, WiTricity
`Corporation, as the real party in interest. Paper 3, 1.
`
`B. The ’935 Patent
`The ’935 patent, titled “Wireless Energy Transfer Using Field
`Shaping to Reduce Loss,” relates to “wireless energy transfer, also referred
`to as wireless power transmission.” Ex. 1101, code (54), 1:32–34. By way
`of background, the ’935 patent describes known wireless transfers of energy,
`such as wireless information transfer, as inefficient for transferring useful
`amounts of electrical energy to power or charge electrical devices. Id. at
`1:36−50. Using directional antennas to solve for this requires, however,
`“uninterruptible line-of-sight and potentially complicated tracking and
`steering mechanisms in the case of mobile transmitters and/or receivers.” Id.
`at 1:51−57.
`Another known method of transferring power wirelessly is using near-
`field or non-radiative schemes, in which oscillating current passing through
`a primary coil generates an oscillating magnetic near-field that induces a
`current in a nearby secondary coil. Id. at 1:60−61. These schemes have
`been known to transmit modest to large amounts of power, but over very
`short distances and with very small offset tolerances between the primary
`power supply unit and the secondary receiving unit. Id. at 1:66−2:3.
`The ’953 patent, therefore, seeks to address these shortcomings,
`resulting in wireless power transfer over greater distances and alignment
`offsets than previously realized and without the known limitations of using
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`antennas as discussed above. Id. at 2:6−14. The patent describes using a
`near-field wireless energy transfer scheme using coupled electromagnetic
`resonators with energy stored by the magnetic field and electric field
`primarily confined to the region surrounding the resonators. Id. at 2:17−35.
`Efficient wireless energy transfer is accomplished through the omni-
`directional, but stationary (non-lossy) near-fields, resulting in distances
`between the power source-side resonator and the charging device resonator
`in the order of centimeters to meters. Id. at 2:41−53. Additionally, energy
`exchange between two electromagnetic resonators can be optimized when
`the resonators are tuned to substantially the same frequency and when the
`losses in the system are minimal. Id. at 2:66−3:2.
`Figure 38 of the ’935 patent, reproduced below, is a block diagram of
`a wireless power transmission system employing a two-resonator system.
`Id. at 10:33–34, 58:62–64.
`
`Figure 38 shows a wirelessly powered or charged device 2310 that
`includes or consists of device resonator 102D and device power and control
`circuitry 2304, along with device or devices 2308 to which either DC or AC,
`or both AC and DC power, is transferred. Id. at 58:62–59:10. The energy or
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`power source for a system may include the source power and control
`circuitry 2302, and a source resonator 102S. Id. Thus, device or devices
`2308 receive power from device resonator 102D and power and control
`circuitry 2304. Id. For example, device resonator 102D and circuitry 2304
`deliver power to device/devices 2308 that “may be used to recharge the
`battery of the device/devices, power the device/devices directly, or both
`when in the vicinity of the source resonator 102S.” Id. “The source and
`device resonators may be separated by many meters or they may be very
`close to each other or they may be separated by any distance in between.”
`Id. at 59:11−13.
`The ’935 patent explains loss mechanisms extrinsic to the resonators
`affect their intrinsic quality factor (Q). Id. at 33:5−6. These mechanisms
`include absorption losses inside the materials of nearby objects and radiation
`losses related to scattering of the resonant fields from nearby objects. Id. at
`33:6−9. Absorption losses may be associated with materials that, over the
`frequency range of interest, have non-zero, but finite conductivity. Id. at
`33:8−10. Furthermore, according to the ’935 patent, “[a]n object may be
`described as lossy if it at least partly includes lossy materials.” Id. at
`33:14−15.
`An apparatus in which a high-Q resonator is integrated may include
`parts with lossy extraneous materials and objects. Id. at 35:66−67. The
`’935 patent states that “dissipation of energy in these lossy materials and
`objects may be reduced by a number of techniques” including:
`by using a high conductivity material or structure to partly or
`entirely cover lossy materials and objects in the vicinity of a
`resonator[;]
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`by placing a closed surface (such as a sheet or a mesh) of high-
`conductivity material around a lossy object to completely cover
`the lossy object and shape the resonator fields such that they
`avoid the lossy object[;]
`by placing a surface (such as a sheet or a mesh) of a high-
`conductivity material around only a portion of a lossy object,
`such as along the top, the bottom, along the side, and the like, of
`an object or material[;] and
`by placing even a single surface (such as a sheet or a mesh) of
`high-conductivity material above or below or on one side of a
`lossy object to reduce the strength of the fields at the location of
`the lossy object.
`
`Id. at 35:65–36:20. Thus, the ’935 patent explains, the impact of lossy
`materials on the quality factor of a resonator can be reduced by “us[ing]
`high-conductivity materials to shape the resonator fields such that they avoid
`the lossy objects.” Id. at 35:7–10.
`Figure 19 of the ’935 patent is reproduced below.
`
`
`Figure 19 illustrates a magnetic resonator with a lossy object in its
`vicinity completely covered by a high-conductivity surface. Id. at 8:38–40.
`In particular, Figure 19 shows a capacitively-loaded loop inductor forming
`magnetic resonator 102 and a disk-shaped surface of high-conductivity
`material 1802 that completely surrounds lossy object 1804 placed inside the
`loop inductor. Id. at 36:20–31. The ’935 patent explains that some lossy
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`objects may be components, such as electronic circuits, that may need to
`interact with, communicate with, or be connected to the outside environment
`and thus cannot be completely electromagnetically isolated, but partially
`covering a lossy material with high conductivity materials may still reduce
`extraneous losses while enabling the lossy material or object to function
`properly. Id.
`The ’935 patent further explains that another way to reshape the
`unperturbed resonator fields is to “use high permeability materials to
`completely or partially enclose or cover the loss inducing objects, thereby
`reducing the interaction of the magnetic field with the loss inducing
`objects.” Id. at 39:10–15, 39:28–34. The ’935 patent then explains:
`It may be desirable to keep both the electric and magnetic fields
`away from loss inducing objects. As described above, one way
`to shape the fields in such a manner is to use high-conductivity
`surfaces to either completely or partially enclose or cover the loss
`inducing objects. A layer of magnetically permeable material,
`also referred to as magnetic material, (any material or meta-
`material having a non-trivial magnetic permeability), may be
`placed on or around the high-conductivity surfaces. The
`additional layer of magnetic material may present a lower
`reluctance path (compared to free space) for the deflected
`magnetic field to follow and may partially shield the electric
`conductor underneath it from the incident magnetic flux. This
`arrangement may reduce the losses due to induced currents in the
`high-conductivity surface.
`
`Id. at 39:35–51.
`
`C. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), the Parties identify judicial
`matters that would affect, or be affected by, a decision in this proceeding. In
`particular, the Parties indicate that the ’935 patent was involved in the
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`following district court case: WiTricity Corp. et al. v. Momentum Dynamics
`Corp., No. 1:20-CV-01671-MSG (D. Del.). Pet. 76; Paper 3, 1. Patent
`Owner indicates that the count involving the ’935 patent has been dismissed
`in the identified district court case. Paper 23, 1.
`The Parties also indicate the following related IPR Petitions:
`Momentum Dynamics Corporation v. Auckland UniServices Limited,
`IPR2021-01116 (PTAB) challenging Patent No. 9,767,955 B2;
`Momentum Dynamics Corporation v. WiTricity Corporation,
`IPR2021-01127 (PTAB) challenging Patent No. 9,306,635 B2;
`Momentum Dynamics Corporation v. Massachusetts Institute of
`Technology, IPR2021-01165 (PTAB) challenging Patent No. 7,741,734 B2;
`and
`
`Momentum Dynamics Corporation v. WiTricity Corporation,
`IPR2021-01167 (PTAB) challenging Patent No. 8,884,581 B2.
`Paper 3, 1; Pet. 76.
`
`D. Illustrative Claim
`Petitioner challenges claims 1–23 of the ’935 patent. Pet. 1–2.
`Claims 1, 15, and 23 are independent. Claims 1 and 23 are illustrative and
`reproduced below.
`1. A system, comprising:
`a source resonator optionally coupled to an energy source;
`and
`a second resonator located a distance from the source
`resonator,
`wherein the source resonator and the second resonator are
`coupled to provide near-field wireless energy transfer
`among the source resonator and the second resonator and
`wherein the field of at least one of the source resonator
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`and the second resonator is shaped using a conducting
`material and a magnetic material.
`
`
`23. A system, comprising:
`a resonator coupled to power and control circuitry;
`wherein the resonator and the power and control circuitry
`are configured to provide near-field wireless energy
`transfer among other resonators, and
`and wherein the power and control circuitry is at least
`partially covered by high permeability materials and
`conducting surfaces to shape magnetic fields of the
`resonator around the power and control circuitry.
`Ex. 1001, 97:34–44, 98:49–57.
`Claim 15 is substantively similar to claim 1 and, therefore, both
`claims are analyzed together in the Petition and in our analysis below.
`E. Asserted Grounds and Testimony
`Petitioner presents the challenges summarized in the chart below.
`Pet. 2.
`Reference/Basis
`Claim(s) Challenged 35 U.S.C. §
`O’Brien3
`1, 5–8, 15, 19–22
`102(b)2
`O’Brien, Haaster4
`1–23
`103(a)
`Petitioner supports its challenge of invalidity with a declaration of
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 102 and § 103 that
`became effective after the effective filing date of the challenged claims.
`Therefore, we apply the pre-AIA version of 35 U.S.C. § 102 and § 103.
`3 Kathleen O’Brien, Inductively Coupled Radio Frequency Power
`Transmission System for Wireless Systems and Devices, Technical
`University of Dresden Ph.D. dissertation (2007) (Ex. 1007, “O’Brien”).
`4 U.S. Patent Pub. No. 2004/0001299 A1, published Jan. 1, 2004 (Ex. 1008,
`“Haaster”).
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`Mark Allen, Ph.D., filed as Exhibit 1003 (“Allen Decl.”). Petitioner also
`supports its assertions concerning the public availability of O’Brien with a
`declaration from Sylvia D. Hall-Ellis, Ph.D. (Ex. 1005). Petitioner further
`supports its assertions concerning the authenticity of O’Brien with a
`declaration from Michael T. Pierce. (Ex. 10245).
`Patent Owner has not supported its arguments with any testimonial
`evidence. See generally PO Resp.
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`(1966). “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
`“person of ordinary skill in the art” is a hypothetical construct, from whose
`vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357
`(Fed. Cir. 1998). “This legal construct is akin to the ‘reasonable person’
`used as a reference in negligence determinations” and “also presumes that all
`prior art references in the field of the invention are available to this
`hypothetical skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038
`(Fed. Cir. 1993)).
`Petitioner contends that a person of ordinary skill in the art (“POSA”)
`“at the relevant time (around 2008) would have had at least a bachelor’s
`
`
`5 Ex. 1024 was served, but not filed in this proceeding. Opp. Mot. to
`Exclude v.
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`degree in electrical engineering (or equivalent) and at least two years’
`industry experience, or equivalent research”; “[a]lternatively, a POSA could
`substitute directly relevant additional education for experience, e.g., an
`advanced degree relating to electrical engineering (or equivalent), with at
`least one year of industry experience.” Pet. 8 (citing Allen Decl. ¶¶ 31–34).
`Patent Owner does not dispute the level of ordinary skill in the art.
`See generally PO Resp.
`We adopt Petitioner’s assessment of the level of skill in the art, which
`is consistent with the specification of the ’935 patent and asserted prior art of
`record.
`
`B. Claim Construction
`In inter partes review proceedings based on petitions filed on or after
`November 13, 2018, such as this one, we construe claims using the same
`claim construction standard that would be used in a civil action under
`35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b)
`(2020).
`Petitioner asserts that “prior art relied on in this Petition discloses the
`subject matter of the challenged claims under any reasonable construction,
`including their plain meaning” and “submits that no terms need to be
`construed to find the asserted claims unpatentable under the grounds set
`forth herein.” Pet. 9. Patent Owner does not submit any claim construction
`for any term. See generally PO Resp.
`We do not discern a dispute between the parties regarding any claim
`limitations, nor do we discern the need to expressly construe any claim
`limitations to resolve the controversy before us. See, e.g., Nidec Motor
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`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.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`C. Overview of the Asserted References
`Petitioner relies on two references as prior art. We summarize each
`reference below.
`
`1. Overview of O’Brien (Ex. 1007)
`O’Brien is a doctoral thesis titled “Inductively Coupled Radio
`Frequency Power Transmission System for Wireless Systems and Devices.”
`Ex. 1007, Title. Petitioner asserts that O’Brien “was publicly available more
`than one year prior to the ’935 patent’s filing date” as “O’Brien was
`completed and approved by faculty members at the University of Dresden on
`March 11, 2006” and the “‘Machine-Readable Cataloging’ (MARC) record
`for O’Brien demonstrates that O’Brien was received, cataloged, and indexed
`by the Verbundzentrale Des Gemeinsamen Bibliotheksverbundes as of
`March 2, 2007.” Pet. 10–11 (citing Ex. 1005 ¶¶ 38, 40–43). Patent Owner
`does not challenge Petitioner’s assertions regarding O’Brien’s public
`accessibility. See generally PO Resp. 6 Because Petitioner has shown, by a
`preponderance of the evidence, public accessibility of O’Brien through the
`MARC record and the library indexing as of March 2, 2007, as discussed
`above, and there is no evidence to the contrary, we find that O’Brien was
`publicly available more than one year prior to the filing date of the
`
`
`6 We note here, however, Patent Owner’s contention that Petitioner has not
`properly authenticated O’Brien. Mot. Exclude 1. We address the issue of
`authentication below in connection with our denial of Patent Owner’s
`Motion to Exclude. See Section IV.
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`’935 patent (December 28, 2009), and thus qualifies as prior art under
`35 U.S.C. § 102(b).
`As to the substance, O’Brien “presents a novel alternative to the
`problem of providing power to devices without the use of wires or regular
`maintenance” and “focuses on the development and analysis of methods by
`which reliable power can be delivered to a load even in highly shielded
`environments.” Id. at 19–20.
`O’Brien describes a “system [that] uses a magnetic field generated by
`a system of source coils,” whereby “[t]he source coils couple inductively to
`the receiving coils, forming a system in which energy is transferred from
`source to receiver via a magnetic field.” Id. at 21. O’Brien explains that
`“[o]perating both source and receiver at a resonant frequency allows for the
`compensation of the large inductance inherent in the source coils and
`increases the voltage at the receiver to a level that permits the use of
`standard power electronics components.” Id. at 27. O’Brien further
`explains, “[t]his work will be limited to an analysis of the power transfer
`characteristics between distributed sources and sinks (receivers) using
`magnetic coupling in the near field,” as “[o]peration in the near field allows
`significantly more energy to be transferred between source and receiver.”
`Id. at 22.
`
`a. Source Coils
`O’Brien explains that “source coils consist of one or more turns of
`wire around an air-core.” Id. at 24. Figures 2-4 to 2-9 of O’Brien,
`reproduced below, illustrate various source coil configurations. Id. at 24–25.
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`Figures 2-4 to 2-9 illustrate various source coil configurations. Id. at
`24–25. Figure 2-4 depicts the simplest coil configuration and is referred to
`as a uni-directional system because it produces a magnetic field at the center
`of the coil, which has vector components in only one direction. Id. at 24.
`Figure 2-5 depicts an additional source coil placed in space quadrature with
`the coil shown in Figure 2-4 and it is referred to as a bi-directional system
`because it produces a magnetic field at the center of the coil, which has
`vector components in two directions. Id. Figure 2-6 adds a third source coil
`in the remaining plane; and Figures 2-7, 2-8, and 2-9 “increase the area or
`volume in which the receiving coils can receive power” by modifying the
`previous source coil systems “such that there are two coils laying in each of
`the three orthogonal planes.” Id. at 24–25.
`b. Receiving Coils
`O’Brien then describes receiving coils in a receiver. Id. at 25–27. In
`particular, O’Brien provides that “the receivers will obtain power from the
`source coils regardless of their orientation with respect to the source coils
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`and to each other” and “[t]he receivers consist of a ferrite cube with three
`mutually orthogonal receiving coils, each wrapped around one of the three
`axes of the cube.” Id. at 25–26. Figure 2-10 of O’Brien, reproduced below,
`illustrates a receiver including three receiving coils. Id.
`
`
`Figure 2-10 illustrates a receiver including three receiving coils. Id. at
`
`26.
`
`c. Shielding
`O’Brien next describes the “[p]artial or complete shielding of the
`source field [that] can occur which may effectively prevent the receiving
`coils from receiving adequate power for operation,” and explains that “[t]he
`effects of shielding on the source field are dependent upon the position of
`the objects causing the shielding relative to the orientation of the field
`created by the source coils, the position and orientation of the receiving
`coil(s), and upon the characteristics of the shielding material.” Id. at 63.
`Shielding of the source field can occur when conductive or permeable
`materials are placed in or near to the source field, and “its effects on system
`performance can range from negligible to intolerable.” Id. O’Brien explains
`that shielding of the source field may happen due to highly conductive
`materials located inside the operating volume or outside the operating
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`volume, and due to highly permeable materials placed inside the operating
`volume or outside the operating volume. Id. at 65 (“The presence of highly
`conductive materials in or near to the operating volume causes shielding of
`the source field due to the generation of opposing flux via Faraday’s law”),
`67, 73, 75 (“The magnetic field can also be attenuated when a magnetic
`material of high permeability (µ>>1) and sufficient cross-sectional area is
`placed inside the field”), 76, 79.
`O’Brien also presents “solutions with respect to a minimization of the
`effects of shielding materials on system performance” and “solutions . . . for
`situations in which the shielding of receivers is unavoidable.” Id. at 63. One
`such solution includes, “[i]n cases where the current in one or more of the
`source coils cannot be increased, . . . install[ing] a layer of permeable
`material [(e.g., ferrite)] over the surface of any conducting object or material
`in order to negate the damping effects of the conductive shield.” Id. at 81–
`83. O’Brien explains that “[t]he addition of the ferrite counteracts the effect
`of the . . . shield, leaving the field strength along the axis of the [source] coil
`greater than or equal to its value in the unshielded case.” Id. at 83.
`d. Equivalent Circuit Representation
`After describing source coils, receiving coils, and solutions to the
`shielding of the source field, O’Brien proceeds to describe “the coupling
`between the source and receiver systems and develop equivalent models
`which will predict the behavior of a receiver located at any point within the
`operating volume.” Id. at 85. Figure 5-1 of O’Brien, reproduced below,
`shows a “basic block-diagram of the power transmission system.” Id.
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`Figure 5-1 illustrates a “basic block-diagram of the power
`transmission system.” Id. at 85. The wireless power system shown in
`Figure 5-1 includes the following illustrated components: a loosely coupled
`transformer, which is formed by coils (source coils being equivalent to
`primary coils, and receiving coils being equivalent to secondary coils); a
`source side including a single or multi-channel source side converter(s), and
`a “tuneable” resonant circuit; and a receiver side including one or more
`receiver side power converters, a load, and a resonant circuit. Id. at 85, 107,
`111.
`
`O’Brien designs “[t]he receiver side system . . . for operation at the
`maximum power point, autonomous start-up, and high reliability. . . . [with
`a] high receiver side power conversion efficiency . . . in order to provide the
`maximum possible power to the load and to allow for the highest possible
`packaging density.” Id. at 111. The input of source side converter(s) can be
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`connected to a power source (such as an ac power or dc power source). Id.
`at 111. O’Brien provides that “the source and receiver sides of the system
`are tuned to a resonant frequency, and form a transformer with a large air-
`gap,” using “tuned circuits at the source and the receiving side [to] create[] a
`double-tuned circuit,” as shown in Figure 5-1. Id. at 114–115.
`2. Overview of Haaster (Ex. 1008)
`Haaster is titled “EMI Shield Including a Lossy Medium.” Ex. 1008,
`code (54). Haaster “relates [] generally to electronic component packaging
`and, more specifically, to electronic component packages that are shielded to
`protect against electromagnetic interference (EMI).” Id. ¶ 2. More
`particularly, Haaster discloses “methods for applying lossy materials to EMI
`shielded enclosures to improve EMI shielding effectiveness and the EMI
`shielded enclosures so produced,” whereby “the EMI shielded enclosure
`includes a printed-circuit board mountable device.” Id., code (57)
`(Abstract). Haaster provides that the “lossy material can be applied to the
`interior of an EMI shielded enclosure,” or “lossy materials can be applied to
`the exterior of the EMI enclosure to suppress EMI incident upon the EMI
`shielded enclosure, thereby reducing the susceptibility of electronics
`contained within the EMI shielded enclosure,” or in yet another
`embodiment, “lossy materials can be applied to both the interior and exterior
`of the EMI enclosure.” Id.
`Figures 4A, 4B, and 4C of Haaster, reproduced below, show
`alternative applications of a lossy material to the outside portion of an EMI
`enclosure (Figure 4A), to the inside portion of an EMI enclosure (Figure
`4B), and to both the inside and the outside of an EMI enclosure (Figure 4C).
`Id. ¶¶ 27–29.
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`Figures 4A, 4B, and 4C show other alternative applications of a lossy
`material to the outside portion of an EMI enclosure (Figure 4A), to the
`inside portion of an EMI enclosure (Figure 4B), and to both the inside and
`the outside of an EMI enclosure (Figure 4C). Id. ¶¶ 27–29. More
`particularly, Figure 4A shows a cross-section view of an EMI enclosure 99
`with an external lossy material layer 200 applied to the external surface of
`conductive material 100. Id. ¶ 51. Figure 4B shows a cross-section view of
`EMI enclosure 99 with an internal lossy material layer 202 similarly applied
`to the internal surfaces of conducting material 100. Id. ¶ 52. Figure 4C
`shows a cross-section view of EMI enclosure 99 having both an external
`lossy material layer 200 and an internal lossy material layer 202 respectively
`applied to both the exterior and interior surfaces of enclosure 99. Id.
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`D. Anticipation Challenge Based on O’Brien
`Petitioner contends that claims 1, 5–8, 15, and 19–22 are anticipated
`by O’Brien. Pet. 9−41. Patent Owner argues that O’Brien fails to disclose
`all limitations of independent claims 1 and 15. PO Resp. 3–7. After
`considering the evidence and arguments of record, we determine that
`Petitioner has demonstrated by a preponderance of the evidence that O’Brien
`anticipates claims 1, 5–8, 15, and 19–22.
`1. Analysis of Claims 1 and 15
`Claims 1 and 15 require two resonators (i.e., a source resonator and a
`second resonator) coupled to provide “near-field wireless energy transfer
`among” the resonators, and the claims recite that the field of one of the
`resonators is shaped “using a conducting surface and a magnetic material.”
`Ex. 1001, 97:35−44; 98:23−31. We begin our analysis with a discussion of
`the required resonators.
`a. Source Resonator
`For the “source resonator,” Petitioner relies on O’Brien’s disclosure of
`the basic block diagram of a power transmission system illustrated by Figure
`5-1 and states that “O’Brien’s system includes a ‘Tuneable Resonant
`Circuit’ on the ‘Source Side’ that corresponds to the claimed ‘source
`resonator,’ which is connected to a ‘power source.’” Pet. 17–20 (citing
`Ex. 1007, 85, 111–112, 114–115, 119, 125, 139–140, Figs. 5-1, 6-1, 6-2, 6-
`4; Allen Decl. ¶¶ 74–78). Petitioner illustrates its reliance on the “Tuneable
`Resonant Circuit” with annotations to Figure 5-1, reproduced below.
`Pet. 18.
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`Figure 5-1 of O’Brien, as explained previously, shows a loosely
`coupled transformer coupled with a source side and a receiver side. On the
`source side, Petitioner has colorized in purple the “Tuneable Resonant
`Circuit” and has labeled this component a “Source Resonator” (highlighted
`in purple). Petitioner has also colorized in blue the depicted “Power Source”
`of the source side, and has labeled this component an “Energy Source”
`(highlighted in blue).
`Although the Petition annotates the “Tuneable Resonant Circuit” of
`Figure 5-1 as the “Source Resonator,” Petitioner provides additional
`explanation of what constitutes a “Source Resonator” beyond this single
`Figure. See Reply 3–4; Pet. 18−19. For example, Petitioner explains that
`Chapter 6 of O’Brien describes the characteristics of the tuning circuits in
`more detail and that the “series resonant configuration is chosen” for the
`“Source side resonant circuit.” Pet. 18; Reply 4 (citing Pet. 17–19, 21;
`Ex. 1007, 85). Petitioner further identifies O’Brien’s description of the
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`“series resonant configuration,” for the source side, shown in Figure 6-4 and
`depicted in the Petition. Reply 5 (citing Ex. 1007, 114–115, 119; Pet. 18–
`19).
`
`Petitioner further cites Chapter 7 of O’Brien, which describes the
`experimental validation of the described system. Pet. 19−20 (citing
`Ex. 1007, 139−40). In the pages cited by Petitioner, O’Brien depicts a two
`coil system, one with a bi-directional coil system and another with a larger
`omni-directional source coil system, operating at a nominal frequency of 120
`kHz. Ex. 1007, 139−140. O’Brien explains in detail the source coil
`characteristics in each of the “Source side systems,” and depicts the internal
`structure of the power supply, which includes the resonant circuits. Id.
`Thus, although the Petition prominently features the “Tuneable Resonant
`Circuit” and the power conversion explanations of Chapter 6, by also relying
`on the discussion of the “Source side systems” of Chapter 7, the Petition
`does not exclude O’Brien’s source coils from P
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