Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: January 7, 2022
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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.
`____________
`
`IPR2021-01166
`Patent 8,304,935 B2
`____________
`
`Before JAMESON LEE, MIRIAM L. QUINN, and SCOTT RAEVSKY,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: January 7, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MOMENTUM DYNAMICS CORPORATION,
`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.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-01166
`Patent 8,304,935 B2
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`
`INTRODUCTION
`I.
`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”) pursuant to 35 U.S.C. §§ 311–319. WiTricity
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Preliminary Response” or “Prelim. Resp.”).
`The standard for institution is set forth in 35 U.S.C. § 314, which
`provides that an inter partes review may not be instituted unless the
`information presented in the Petition and the Preliminary Response shows
`that “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314; see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on
`behalf of the Director.”). Upon consideration of the Parties’ contentions and
`the evidence of record, we conclude that Petitioner has established a
`reasonable likelihood of prevailing in demonstrating the unpatentability of at
`least one challenged claim of the ’935 patent. Accordingly, we grant
`Petitioner’s request and institute an inter partes review.
`BACKGROUND
`II.
`A.
`Real Parties in Interest
`Petitioner states that “[t]he real party-in-interest is Momentum
`Dynamics Corporation (‘Petitioner’).” Pet. 76. Patent Owner identifies
`itself, WiTricity Corporation, as the real party in interest. Paper 3, 1.
`
`The ’935 Patent
`B.
`The ’935 patent, titled “Wireless Energy Transfer Using Field
`Shaping to Reduce Loss,” relates to “wireless energy transfer, also referred
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`to as wireless power transmission.” Ex. 1101, code (54), 1:32–34. The
`’935 patent addresses “a need . . . for a wireless power transfer scheme that
`is capable of transferring useful amounts of electrical power over mid-range
`distances or alignment offsets” to “enable useful energy transfer over greater
`distances and alignment offsets than those realized with traditional induction
`schemes, but without the limitations and risks inherent in radiative
`transmission schemes.” Id. at 2:6–13.
`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 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 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
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`from device resonator 102D and power and control circuitry 2304. Id. For
`example, device resonator 102D and circuitry 2304 delivers 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 ’935 patent explains that lossy extraneous materials and objects
`may be parts of an apparatus, in which a high-Q resonator is to be integrated,
`and provides 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
`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.
`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 the ’935 patent, reproduced below, illustrates a magnetic
`resonator with a lossy object in its vicinity completely covered by a high-
`conductivity surface. Id. at 8:38–40.
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`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
`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
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`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.
`
`Related Matters
`C.
`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 is involved in the
`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.
`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.
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`Illustrative Claim
`D.
`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
`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.
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`Asserted Grounds and Testimony
`E.
`Petitioner presents the challenges summarized in the chart below. Pet.
`
`2.
`
`Claim(s) Challenged 35 U.S.C. §
`1, 5–8, 15, 19–22
`102(b)1
`1–23
`103(a)
`
`Reference/Basis
`O’Brien2
`O’Brien, Haaster3
`
`Petitioner supports its challenge of invalidity with a declaration of
`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).
`Patent Owner, at least at this stage, has not supported its arguments
`with any testimonial evidence. See generally Prelim. Resp.
`III. ANALYSIS
`Level Of Ordinary Skill In The Art
`A.
`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
`degree in electrical engineering (or equivalent) and at least two years’
`industry experience, or equivalent research”; “[a]lternatively, a POSA could
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 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.
`
` 2
`
` 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”).
`
` 3
`
` U.S. Patent Pub. No. 2004/0001299 A1, published Jan. 1, 2004 (Ex. 1008,
`“Haaster”).
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`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 Prelim. Resp.
`At this stage of the proceeding, 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.
`Claim Construction
`B.
`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).
`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 states that “[a]ll claim terms in this
`proceeding are to be construed according to the Phillips standard” with “[n]o
`claim construction . . . necessary to deny institution.” Prelim. Resp. 1.
`At this stage of the proceeding, 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 Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
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`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.
`
`Overview of O’Brien (Ex. 1007)
`1.
`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 Prelim. Resp. At this juncture, the record appears to support
`Petitioner’s contention that O’Brien is prior art under 35 U.S.C. § 102(b).
`O’Brien is titled “Inductively Coupled Radio Frequency Power
`Transmission System for Wireless Systems and Devices.” Ex. 1007, Title.
`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
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`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.
`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.
`
`
`Figures 2-4 to 2-9 illustrate various source coil configurations. Id. at
`24–25. Figure 2-4 (a uni-directional system because it produces a magnetic
`field at the center of the coil, which has vector components in only one
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`direction) is a simple source coil configuration providing a fluctuating
`magnetic field that can provide power to a receiving coil located close to the
`source coil; Figure 2-5 (a bi-directional system because it produces a
`magnetic field at the center of the coil, which has vector components in two
`directions) adds an additional source coil placed in space quadrature with
`that shown in Figure 2-4; 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.
`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
`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. O’Brien next describes the “[p]artial or complete shielding of the source
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`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 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
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`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.
`After describing source coils, receivers, 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.
`
`
`
`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
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`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
`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.
`Overview of Haaster (Ex. 1008)
`2.
`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
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`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.
`
`
`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
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`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.
`Anticipation Challenge Based on O’Brien
`D.
`Petitioner contends claims 1, 5–8, 15, and 19–22 would have been
`anticipated by O’Brien. Pet. 9−41. Patent Owner argues that O’Brien fails
`to disclose all limitations of independent claims 1 and 15. Prelim. Resp. 3–
`7. For the reasons that follow, we are persuaded that Petitioner demonstrates
`a reasonable likelihood of prevailing with respect to its anticipation
`challenge based on O’Brien.
`Analysis of Claims 1 and 15
`1.
`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.
`Source Resonator
`a)
`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
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`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.
`
`
`
`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). Furthermore, Petitioner explains that O’Brien’s
`Chapter 6 describes in more detail that the “series resonant configuration is
`chosen” for the “Source side resonant circuit.” Pet. 18.
`That’s not all the Petition says about the “source resonator.” The
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`Petition goes on to explain O’Brien’s source side power converters and that
`a variety of power sources may be used to effectuate the disclosed
`transformer. Id. at 19. In particular, Petitioner cites Chapter 7 of O’Brien,
`which describes the experimental validation of the described system. Id.
`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, it
`does not exclude O’Brien’s source coils from Petitioner’s mapping of the
`“source resonator.” These disclosures in O’Brien and Petitioner’s arguments
`concerning those disclosures persuade us that the Petition meets the
`institution threshold for this limitation.
`Patent Owner argues that O’Brien describes its source coils as
`separate and distinct from the source side resonant circuit that Petitioner
`identifies as the recited “source resonator.” Prelim. Resp. 5 (citing Ex. 1007,
`23−24, 26, 118−125). According to Patent Owner, O’Brien “makes clear
`that the ‘source side resonant circuit’ and the ‘source coil’ are separate
`components.” Id. Because the Petition later relies on coupling between the
`source coils for another resonator claim limitation, Patent Owner argues that
`the Petition’s mapping of the “Tuneable Resonant Circuit” of Figure 5-1 as
`the claimed “source resonator” is fatal to Petitioner’s case. Id. at 6−7.
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`Although we agree with Patent Owner’s explanation of how O’Brien
`describes source coils and tuning circuits in discrete chapters of the
`reference, the Petition appears to reasonably convey the contention that the
`Tuneable Resonant Circuit is inexorably linked to the source coils and that
`the circuits are thus tuned to resonance. For instance, as explained above,
`despite the Petition’s prominent reliance on the source-side Tuneable
`Resonant Circuit, highlighted in purple in Figure 5−1, Petitioner also relies
`on the discussion in Chapter 7 that describes source coils and the resonant
`circuits as “Source side systems.” Pet. 19−20. Accordingly, we are
`persuaded that the Petition does not exclude O’Brien’s source coils as part of
`the “source resonator.” Therefore, at this juncture, we are not persuaded by
`Patent Owner’s arguments that the Petition fails to show that O’Brien
`discloses the claimed “source resonator.”
`A second resonator
`b)
`For the “second resonator,” Petitioner relies also on O’Brien’s Figure
`5-1, this time annotated differently, as shown below. Pet. 21.
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`Petitioner’s annotated Figure 5-1 of O’Brien depicts the power
`transmission system discussed above with a Receiver Side that includes a
`“Resonant Circuit” (colorized in pink) with the added label that reads
`“Second Resonator,” also highlighted in pink. Petitioner contends that
`“O’Brien’s ‘power transmission system’ includes a ‘Resonant Circuit’ on the
`‘Receiver Side’ that is connected to the ‘Load,’ and corresponds to the
`claimed ‘second resonator,’ as shown [above].” Pet. 20–22 (citing Ex. 1007,
`85, 114–118, 133–138, 141–142, Fig. 5-1; Allen Decl. ¶¶ 81–83). Petitioner
`further asserts that O’Brien teaches the receiver-side resonant circuit
`“located a distance from the source resonator” as claimed, because “O’Brien
`discloses that its receivers are separated by a ‘large air-gap in the magnetic
`path’ and power can be transferred over hundreds of meters at an operating
`frequency of 120kHz.” Pet. 22 (citing Ex. 1007, 19, 22–23, 27, 118, 153,
`Figs. 2–3; Allen Decl. ¶¶ 84–85). These disclosures in O’Brien and
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`Petitioner’s arguments concerning those disclosures persuade us that the
`Petition meets the institution threshold for this limitation.
`As with the limitation discussed above, Patent Owner argues that the
`“receiver side resonant circuit” is separate and distinct from the “receiving
`coils,” and that when O’Brien refers to “receivers” it is referring to the
`“receiving coils,” not the resonant circuit on the receiver side. Prelim. Resp.
`4−5. The distinction appears to be crucial because, as Patent Owner argues,
`for the further limitation requiring coupling between the resonators,
`Petitioner relies on O’Brien’s source and receiver coils, not the Resonant
`Circuit identified in Figure 5-1 of O’Brien as constituting the claimed
`“second resonator.” Id. at 6−7. We are not persuaded by Patent Owner’s
`argument at this juncture.
`As stated above, we recognize that O’Brien discusses the receiver
`coils (or receivers) and resonant circuits in separate chapters, but the Petition
`reasonably conveys that the receiver coils are part of the mapping to the
`“second resonator” limitation. For instance, as stated above, Petitioner relies
`on O’Brien’s disclosure of the large air-gap in the magnetic path that
`separates the “receivers” (which in O’Brien’s parlance, and as argued by
`Patent Owner, means the receiver coils). Pet. 22 (citing Ex. 1007, 19).
`Petitioner also points out O’Brien’s disclosure of the distance between
`“source and receiver” for near-field energy transfer. Id. (citing Ex. 1007, 23,
`Fig. 2-3). On this record, these disclosures address the receiver coils and
`their distance from the source coils, dispelling the notion that Petitioner only
`relies on resonant circuits on the receiver side, without the corresponding
`receiver coils.
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