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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MOMENTUM DYNAMICS CORPORATION,
`Petitioner
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`v.
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`WITRICITY CORPORATION,
`Patent Owner
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`Case No. IPR2021-01166
`Patent No. 8,304,935
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`________
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`PATENT OWNER’S SUR-REPLY
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`TABLE OF CONTENTS
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`THE REPLY PRESENTS IMPROPER NEW ARGUMENTS BY
`ATTEMPTING TO PIVOT FROM THE PETITION'S FLAWED
`MAPPING OF O'BRIEN................................................................................. 1
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`PETITIONER’S NEW MAPPING OF O’BRIEN IS INCONSISTENT
`WITH THE REFERENCE’S EXPLICIT DISCLOSURE .............................. 3
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`I.
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`II.
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`III. CONCLUSION ................................................................................................ 4
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`WiTricity Corporation (“Patent Owner”) submits this Sur-reply to the Reply
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`filed by Momentum Dynamics Corporation (“Petitioner”).
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`I.
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`The Reply presents improper new arguments by attempting to pivot
`from the Petition's flawed mapping of O'Brien
`In the Reply, Petitioner alleges, for the first time, that “O’Brien’s ‘Tuneable
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`Resonant Circuit’” and “source coil” together disclose the “source resonator”
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`recited in claims 1 and 15 of the ’935 patent. See, e.g., Reply, 1, 3-8. The Reply
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`further alleges, also for the first time, that O’Brien’s “Resonant Circuit” and
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`“receiving coil” together disclose the “second resonator” recited in claims 1 and
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`15. See, e.g., id., 1, 8-10. These new arguments are inconsistent with the mapping
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`presented in the Petition, and thus should not be considered.
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`In addressing claims 1 and 15, the Petition clearly states that O’Brien’s
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`“Tunable Resonant Circuit on the Source Side … corresponds to the claimed
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`source resonator,” and that O’Brien’s “Resonant Circuit on the Receiver Side …
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`corresponds to the claimed second resonator.” Petition, 17, 20 (internal quotes
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`omitted). The Petition’s mapping of O’Brien to the “source resonator” and
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`“second resonator” includes no mention of the “source coil” or “receiving coil.”
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`See Petition, 17-22. The Petition makes this mapping crystal clear by including an
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`annotated version of FIG. 5-1 from O’Brien, which specifically does not highlight
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`1
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`the separate coils in the “loosely coupled transformer” as being part of the mapping
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`to the “source resonator” or “second resonator:”
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`O’Brien, FIG. 5-1 (as annotated at Petition, 13)
`Thus, it is clear that the Reply presents a new theory of invalidity based on
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`O’Brien. New arguments, and especially new theories of invalidity, are not
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`permitted in the Petitioner Reply. See PTAB Trial Practice Guide, 73-75 (a
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`petitioner reply may not “proceed in a new direction with a new approach as
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`compared to the positions taken in a prior filing”). The Board should not permit
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`Petitioner to improperly pivot from its original, flawed mapping of O’Brien to the
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`claims of the ’935 patent. See id. Moreover, the Board should not “attempt to sort
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`proper from improper portions of the” Reply, and should thus refuse consideration
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`of the Reply in its entirety. See id., 74 (“[A] reply or sur-reply that raises a new
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`2
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`issue or belatedly presents evidence may not be considered. The Board is not
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`required to attempt to sort proper from improper portions of the reply or sur-
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`reply.”)
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`II.
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`Petitioner’s new mapping of O’Brien is inconsistent with the reference’s
`explicit disclosure
`The Reply refers to O’Brien’s “Tuneable Resonant Circuit” as “including
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`[the] source coil,” and to its “Resonant Circuit” as “including [the] receiving coil.”
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`See, e.g., Reply, 1. But O’Brien consistently refers to its “resonant circuits” and
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`“coils” as separate components, which is inconsistent with Petitioner’s new
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`interpretation.
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`For example, O’Brien describes one configuration as including “a single-
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`stage resonant circuit per source coil,” which makes clear that the resonant circuit
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`and the coil are separate components. See O’Brien, 118 (quoted at Petition, 37).
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`O’Brien also describes a configuration that “allows power to be transmitted at
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`adjacent frequencies, which simplifies receiving coil power extraction using a
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`resonant circuit.” See O’Brien, 57. O’Brien thus describes that the resonant
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`circuit is used to extract power from the separate receiving coil. See id.
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`Thus, the Reply’s new interpretation of O’Brien’s resonant circuits as
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`“including” the source and receiving coils is inconsistent with, and thus
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`3
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`unsupported by, the explicit disclosure of O’Brien. See, e.g., Reply, 1; O’Brien,
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`57, 118.
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`III. Conclusion
`As described above, the Reply attempts to pivot to a new mapping of
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`O’Brien that is inconsistent with both the arguments presented in the Petition and
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`with the explicit disclosure of O’Brien. The Board should refuse to consider these
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`new arguments, and should instead focus on the mapping of O’Brien presented in
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`the Petition. And, as described in the Patent Owner Response, this original
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`mapping of O’Brien is fatally flawed. The Petition fails to show, and in fact
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`O’Brien does not teach or suggest, that “near-field wireless energy transfer” occurs
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`between the particular components from O’Brien the Petition maps to the “source
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`resonator” and “second resonator” (i.e., the two “resonant circuits” shown in the
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`annotated FIG. 5-1 from O’Brien at Petition, 13). Because a form of this limitation
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`appears, either explicitly or through dependency, in all of the challenged claims,
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`Petitioner has failed to show that any claim of the ’935 patent is unpatentable.
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`4
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`Dated: 9/1/2022
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`Respectfully submitted,
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`/Daniel D. Smith/
`Joshua A. Griswold, Reg. No. 46,310
`W. Karl Renner, Reg. No. 41,265
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Patent Owner
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`5
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`CERTIFICATION UNDER 37 CFR §42.24(d)
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`Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies
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`that the word count for the foregoing Patent Owner’s Sur-Reply totals 727 words,
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`which is less than the 5,600 allowed under 37 CFR § 42.24(b)(1).
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`Dated: 9/1/2022
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`/Daniel D. Smith/
`Joshua A. Griswold, Reg. No. 46,310
`W. Karl Renner, Reg. No. 41,265
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Patent Owner
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`6
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§42.6(e), the undersigned certifies that on September
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`1, 2022, a complete and entire copy of this Patent Owner’s Sur-Reply was
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`provided by email to Petitioner by serving the correspondence email address of
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`record as follows:
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`Jonathan M. Strang
`Inge A. Osman
`Jeffrey G. Homrig
`Blake R. Davis
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
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`E-mail: jonathan.strang@lw.com
`Inge.osman@lw.com
`Jeff.homrig@lw.com
`blake.davis@lw.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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