Massachusetts Institute of Technology

Patent Trials and Appeals Board

Dec 10, 2021

IPR2021-01165 (P.T.A.B. Dec. 10, 2021)

Trials@uspto.gov Paper 7
571-272-7822 Entered: December 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MOMENTUM DYNAMICS CORPORATION,
Petitioner,

v.

WITRICITY CORPORATION,
Patent Owner.

IPR2021-01165
Patent 7,741,734 B2

Before JAMESON LEE, SALLY C. MEDLEY, and SCOTT RAEVSKY,
Administrative Patent Judges.

LEE, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Momentum Dynamics Corporation (“Petitioner”) filed a Petition
(Paper 2, “Pet.”) requesting inter partes review of claims 1–7, 13, 19–22, 25,
26, 29, 30, 33, 34, 37, 38, 41, 42, 45, 46, 49, 50, 53, 54, 57–62, 64, 65, and
67–70 of U.S. Patent No. 7,741,734 B2 (Ex. 1001, “the ’734 patent”).
WiTricity Corporation (“Patent Owner”) filed a Preliminary Response
(Paper 6, “Prelim. Resp.”).
Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
unless it is determined that there is a reasonable likelihood that the petitioner
would prevail with respect to at least one of the claims challenged in the
petition. Based on the information presented in the Petition and the
supporting evidence, we are not persuaded there is a reasonable likelihood
Petitioner would prevail with respect to any claim.
The Petition is denied, and no inter partes review is instituted.
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies only itself as real party-in-interest. Pet. 76.
Patent Owner identifies Massachusetts Institute of Technology and
WiTricity Corporation as real parties-in-interest. Paper 3, 1.
B. Related Matters
Petitioner and Patent Owner identify the following litigation as one in
which the ’734 patent is asserted: WiTricity Corp. v. Momentum Dynamics
Corp., Case No. 1:20-CV-01671-MSG (D. Del.). Pet. 76; Paper 3, 1.
C. The ’734 patent
The ’734 patent relates to using oscillatory resonant electromagnetic
modes for wireless non-radiative energy transfer. Ex. 1001, 1:19–22. A
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first resonator structure is provided having a resonant frequency ω1, and a
second resonator structure is provided having a resonant frequency ω2,
separated by a distance D. Id. at 2:11–21. The ’734 patent contemplates
transferring energy non-radiatively between the first and second resonator
structures through coupling of the resonant-field evanescent tails of the
resonator structures. Id. at 2:21–26. “Non-radiative” is defined by the ’734
patent as meaning that “D is smaller than each of the resonant wavelengths
λ1 and λ2, where c is the propagation speed of radiation in the surrounding
medium.” Id. at 2:27–29.
The ’734 patent explains that radiative modes of energy transfer do
not work well because (1) use of omni-directional antennas leads to wasting
a vast majority of the energy into free space, and (2) directed radiation
modes using lasers or highly-directional antennas require the existence of an
uninterruptible line-of-sight and a complicated tracking system in the case of
mobile objects. Id. at 1:29–38.
Claims 1 and 6 are each independent and reproduced below, with
bracketed headings for claim elements corresponding to those used by
Petitioner in its Petition, to facilitate discussion and analysis:
1. [Preamble] A method of transferring electromagnetic
energy comprising:
[a] providing a first electromagnetic resonator structure
[i] receiving energy from an external power supply,
[ii] said first resonator structure having a first mode with a
resonant frequency ω1,
[iii] an intrinsic loss rate Γ1,
[iv] and a first Q-factor Q1 = ω1 / (2Γ1),
[b] providing a second electromagnetic resonator structure
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[i] being positioned distal from said first resonator structure
and not electrically wired to the first resonator structure,
[ii] said second resonator structure having a second mode
with a resonant frequency ω2,
[iii] an intrinsic loss rate Γ2,
[iv] and a second Q-factor Q2 = ω2 / (2Γ2),
[c] transferring electromagnetic energy from said first resonator
structure to said second resonator structure over a distance D
that is smaller than each of the resonant wavelengths λ1 and
λ2 corresponding to the resonant frequencies ω1 and ω2,
respectively,
[d] wherein the electromagnetic resonator structures are designed
to have Q1 > 100 and Q2 > 100.
Ex. 1001, 11:39–58.
6. [Preamble] An electromagnetic energy transfer system
comprising:
[a] a first electromagnetic resonator structure
[i] receiving energy from an external power supply,
[ii] said first resonator structure having a first mode with a
resonant frequency ω1,
[iii] an intrinsic loss rate Γ1,
[iv] and a first Q-factor Q1 = ω1 / (2Γ1), and
[b] a second electromagnetic resonator structure
[i] being positioned distal from said first resonator structure
and not electrically wired to the first resonator structure,
[ii] said second resonator structure having a second mode
with a resonant frequency ω2,
[iii] an intrinsic loss rate Γ2,
[iv] and a second Q-factor Q2 = ω2 / (2Γ2),
[c] wherein said first resonator transfers electromagnetic energy
to said second resonator over a distance D that is smaller than
each of the resonant wavelengths λ1 and λ2 corresponding to
the resonant frequencies ω1 and ω2, respectively,
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[d] wherein the electromagnetic resonator structures are designed
to have Q1 > 100 and Q2 > 100.
Id. at 11:64–12:18.
D. Evidence Relied on by Petitioner
Petitioner relies on the following evidence:1
References Date Exhibit
Stark Joseph C. Stark, III,
Wireless Power
Transmission Utilizing a
Phased Array of Tesla
Coils (2004)
Published 2004 Ex. 1006
Mecke R. Mecke & C. Rathge,
High Frequency
Resonant Inverter for
Contactless Energy
Transmission over Large
Air Gap, 2004 IEEE
35th Annual Power
Electronics Specialists
Conference (June 20,
2004)
Published June 20, 2004 Ex. 1007

Petitioner also relies on the Declaration of Darrin J. Young, Ph.D.
(Ex. 1003).
E. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:

1 The ’734 patent issued from Application 11/481,077, filed July 5, 2006.
Ex. 1001 at codes (21), (22). The ’734 patent also claims priority to
Provisional Application 60/698,442, filed July 12, 2005. Id. at code (60).

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Claims Challenged 35 U.S.C. §2 Basis
1–7, 13, 19–22, 25, 26,
29, 30, 33, 34, 37, 38,
41, 42, 45, 46, 49, 50,
53, 54, 57–61, 64, 67–
70
103 Stark
61, 62, 64, 65 103 Stark
61, 62, 64, 65 103 Stark, Mecke
III. ANALYSIS
A. Burden of Proof
To prevail at trial in its challenge to Patent Owner’s claims, if review
is instituted, Petitioner must demonstrate by a preponderance of the evidence
that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)
(2020). That burden never shifts to the patentee. Dynamic Drinkware, LLC
v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
B. Level of Ordinary Skill
Petitioner asserts that one of ordinary skill in the art in July 2005
(1) “would have had at least a bachelor’s degree in electrical engineering (or
equivalent) and at least two to three years of industry or equivalent research
experience in the field of wireless power transfer, and (2) “would have been
familiar with the use of induction to provide power or data wirelessly.” Pet.
4. Patent Owner has not made its own assertion of the level of ordinary

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103 effective
March 16, 2013. Because the effective filing date of the ’734 patent is prior
to March 16, 2013 (Ex. 1001, code (22)), we refer to the pre-AIA versions of
§§ 102, 103.
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skill. Nor has Patent Owner expressed disagreement with Petitioner’s
articulation.
Petitioner’s use of the qualifier “at least” renders Petitioner’s
articulation vague and potentially overlapping with the level of skill of an
expert. On this record, we adopt Petitioner’s articulation of the level of
ordinary skill, but delete the qualifier “at least” for the level of education and
for the amount of experience, to keep the level from being vague and
overbroad and extending into the level of an expert. What remains appears
consistent with what is reflected by the content of the applied prior art
references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir.
2001) (the applied prior art may reflect an appropriate level of skill).
In summary, one with ordinary skill in the art at the pertinent time
period would have had a bachelor’s degree in electrical engineering (or
equivalent) and two to three years of industry or equivalent research
experience in the field of wireless power transfer, and would have been
familiar with the use of induction to provide power or data wirelessly.
C. Claim Construction
We use the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. § 282(b), including
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b)
(2020). The claim construction standard set forth in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc) is applicable.
Claim terms are generally given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification, the prosecution history, other claims, and even
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extrinsic evidence including expert and inventor testimony, dictionaries, and
learned treatises, although extrinsic evidence is less significant than the
intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
dispositive, and it is the single best guide to the meaning of a disputed term.
Id. at 1315.
The specification may reveal a special definition given to a claim term
by the patentee, or the specification or prosecution history may reveal an
intentional disclaimer or disavowal of claim scope by the inventor. Id. at
1316. If an inventor acts as his or her own lexicographer, the definition
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by
language in the specification or the prosecution history. Poly-America, L.P.
v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016).
Only those claim terms that are in controversy need to be construed,
and only to the extent necessary to resolve the controversy. Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999).
Petitioner has not proposed a construction for any claim term, and
states that “no claim terms require a specific construction.” Pet. 6. Patent
Owner also has not proposed a construction for any claim term. Prelim.
Resp. 8.
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For this decision, no claim term requires an express construction.3
D. Alleged Obviousness of Claims 1–7, 13,
19–22, 25, 26, 29, 30, 33, 34, 37, 38, 41, 42, 45,
46, 49, 50, 53, 54, 57–61, 64, and 67–70 over Stark
1. Law on Obviousness
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious to a person having ordinary
skill in the art to which said subject matter pertains. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations, including (1) the
scope and content of the prior art; (2) any differences between the claimed
subject matter and the prior art; (3) the level of skill in the art; and (4) where
in evidence, so-called secondary considerations, including commercial
success, long-felt but unsolved needs, failure of others, and unexpected
results (“the Graham factors”). Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17–18 (1966).
2. Overview of Stark
Stark is a Master’ls Degree thesis discussing the theory and design of
coupled resonant systems and how they can be linked in a phased array for
the wireless transmission of electrical power. Ex. 1006, 3. Specifically,
Stark makes use of multiple Tesla coils, arranged in an array and
synchronized in frequency, to generate high voltage, high frequency
electrical power, to be radiated to a receiver through an antenna array. Id. at

3 We need not determine whether the preambles of claims 1 and 6 are
limiting because, as discussed below, even if they are limiting, Petitioner has
adequately accounted for them.
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11. Stark states: “this project considers a new topology of multiple,
separate Tesla coils operated in synchronization so as to create an array with
directional attributes.” Id. at 12. Stark further states:
For some applications, a focused radiation pattern would be
optimal, while for others, such as nanosensors spaced about a
wide area, an omnidirectional radiation pattern would be
appropriate. The receiver is itself a resonant system tuned to the
high frequency of the radiated power for maximum power
transfer, much as a radio receiver must be tuned to a given
frequency for higher reception gain.
Id. at 11–12.
In Chapter 3, Stark explains the basic component of its method and
system, the Tesla coil. Id. at 12. Stark states:
The second [subsequent] chapter [Chapter 3] discusses
how two second order systems can be coupled to yield a single
fourth order circuit with a mutual inductance coupling [of] the
inductors of the two circuits. These two second order circuits are
known as the primary and secondary of the Tesla Coil. As the
traditional Tesla coil is comprised of two coupled second order
systems sharing a resonant frequency, the Tesla coil is also
referred to as a coupled resonant system throughout this thesis.
The issues of matched resonant frequencies and the interaction
of quality factors are presented.
Id.
In Chapter 3, Stark states: “The ‘magic’ behind Tesla coil operation
is the use of resonant circuits coupled in such a way as to take energy stored
in the primary side of the circuit and transfer it into the secondary coil in a
modified state.” Id. at 41. Figure 3-1 is an illustration of the basic topology
of a fourth order Tesla coil circuit and is reproduced below:
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Figure 3-1 shows two second order circuits with inductive coupling, in a
basic fourth order topology. Id. at 42.
Stark describes:
When combining two second order circuits, each with its
own resonant frequency and Q factor, the behavior of the total,
fourth order system is not simply a sum, difference, or average
of the two constituent circuits’ parameters. Instead, different
parts of the circuit resonate at different frequencies related to the
original independent fundamental frequencies. As the system is
driven by an external source, the energy it transfers to the circuit
is moved between the energy storage elements of the circuit
according to each devices’ constitutive relations. The result is
that the circuits will load one another and affect their natural
resonance frequencies and individual Q factors.
Id. at 42 (emphasis added). Stark further describes:
The individual values of the quality factors are
unimportant here so long as their product is constrained to
Q1Q2 = 1 / k2crit = 400 and they are within the same order of
magnitude. This is reasonable considering the large resistance of
the secondary coil due to the high frequency of operation. The
resistance for the 18 gauge wire selected for the secondary is:
RDC = 1.75 ∙ 10-4 Ω while ΦAC = 379 and ΦM = 1.93 giving a net
secondary coil effective resistance at 1MHz of R2 ≈ 0.13 Ω. This
yields Q2 ≈ 87. This is most likely an upper bound to the
secondary coil performance.
The use of smaller gauge wire (larger diameter), such as
10 or 12 gauge, would allow for higher quality factors at 1 MHz
or higher resonant frequencies. However, coils using such large
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wire are typically large themselves, usually much longer than the
secondary coil length b2 = 0.325 meters seen in this example.
Id. at 129 (emphasis added).
Stark still further describes that “[t]he coupling coefficient, k, is the
single most important factor in determining the operation of the Tesla coil.”
Id. at 93. In that connection, Stark explains that when the quality factors are
roughly equal, k = kcrit “is the coupling that yields a maximum gain when the
system is driven at the frequency wn.” Id. at 80. Stark describes that when
k = kcrit, the two circuits are impedance matched and a maximum amount of
power can be transferred from source to load. Id. at 80–81. Additionally,
Stark describes that k is bounded to between 0 and 1, that “[t]he greater the k
the more flux transferred between the two coupled inductors,” and that “as k
approaches unity, the system approaches that of an ideal transformer with
complete energy transfer.” Id. at 55, 99, 228. Stark gives the following
formula for kcrit:

Id. at 47.
3. Independent Claim 1
Petitioner accounts for elements 1 [Preamble], 1[a], 1[a][i], 1[a][ii],
1[a][iii], 1[a][iv], 1[b], 1[b][i], 1[b][ii], 1[b][iii], and 1[b][iv] on pages 11–33
of the Petition, where Petitioner asserts that Stark discloses each and every
one of these elements. Pet. 11–33. Petitioner’s assertions and arguments are
supported by the cited portions of Stark and the cited testimony of
Dr. Young. Id. Patent Owner does not present contrary arguments for these
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elements. We are sufficiently persuaded that Stark discloses elements 1
[Preamble], 1[a], 1[a][i], 1[a][ii], 1[a][iii], 1[a][iv], 1[b], 1[b][i], 1[b][ii],
1[b][iii], and 1[b][iv].
On pages 33–36 of the Petition, Petitioner accounts for how Stark
discloses claim element 1[c]. Pet. 33–36. Claim element 1[c] reads as
follows:
transferring electromagnetic energy from said first resonator
structure to said second resonator structure over a distance D that
is smaller than each of the resonant wavelengths λ1 and λ2
corresponding to the resonant frequencies ω1 and ω2,
respectively,
Ex. 1001, 11:52–56. We have reviewed Petitioner’s accounting for this
limitation on pages 33–36 and are satisfied that the limitation is met by
Stark. Patent Owner asserts that the limitation is not met by Stark but does
not point out how Petitioner’s accounting is deficient with respect to the
distance D requirement between the first resonator structure and the second
resonator structure. Prelim. Resp. 19–22. Patent Owner also does not deny
that electromagnetic energy is transferred from the first resonator structure
to the second resonator structure. Id.
Instead, Patent Owner argues, on a very general level, that “Stark
makes clear that its system involves radiative energy transfer,” and “Stark
goes so far as to distinguish its system from non-radiative approaches, such
as those using ‘magnetic induction’ (like the ’734 patent, 7:49–52).” Prelim.
Resp. 19. Patent Owner notes that the ’734 patent, “conversely, describes a
system for ‘wireless non-radiative energy transfer’” and that “[t]he non-
radiative character of the ’734 patent’s techniques is also present in the
claims.” Id. at 19–20. Patent Owner asserts:
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For example, independent claim 1 recites “transferring magnetic
energy from said first resonator structure to said second resonator
structure over a distance D that is smaller than each of the
resonant wavelengths λ1 and λ2 corresponding to the resonant
frequencies ω1 and ω2, respectively.” Id., claim 1. The
specification repeatedly makes clear that the claim language
emphasized above is the definition of “non-radiative.”
The assertion is misplaced. The fact that Stark involves radiative transfer of
energy does not mean it does not also disclose non-radiative transfer of
energy. As discussed above in Section II.D.2, Stark contemplates linking
multiple Tesla coils to form a phased array and to radiate the energy
generated from the phased array to remote places through an antenna.
Ex. 1006, 11. Petitioner, however, is relying on the internal configuration of
a single Tesla coil, where energy is transferred from the primary coil to the
secondary coil in a Tesla coil, by magnetic induction, also as discussed
above in Section II.D.2, to meet limitation 1[c] which includes the
referenced definition for “non-radiative.” Pet. 33–36. Further, Patent
Owner nowhere explains how Petitioner erred in accounting for the distance
D requirement in limitation 1[c].
Accordingly, we are sufficiently persuaded that Stark discloses
limitation 1[c].
What remains is limitation 1[d]: “wherein the electromagnetic
resonator structures are designed to have Q1 > 100 and Q2 > 100.” Ex. 1001,
11:57–58. Petitioner attempts to account for this limitation on pages 37–49
of the Petition. Pet. 37–49.
Petitioner asserts “Stark discloses using its formulas to design its
system with ‘intended operational specifications’ such that the Q of the
primary circuit and of the secondary circuit are each 1,000.” Pet. 39 (citing
Ex. 1006, 52–53 (Fig. 3–9)). Patent Owner points out, however, that Q1 =
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Q2 = 1000 is part of an example of a “mistuned” circuit in Stark. Prelim.
Resp. 13. Patent Owner is correct. Immediately prior to Figure 3–9, Stark
states: “When the primary and secondary circuits are not tuned to the same
frequency, ωn, the mathematics describing the situation becomes
complicated. To better understand the dynamics, a physical intuition of
what happens must be developed.” Ex. 1006, 52. That is the beginning of a
Subsection 3.1.3 titled “Physical interpretation ω1 ≠ ω2” following
Subsection 3.1.2 titled “Solution with primary and secondary tuned
together.” Id. at 46, 52.
However, Patent Owner does not identify any disclosure in Stark to
the effect that a circumstance where the resonant frequency ω1 of the first
resonator structure or primary coil does not equal the resonant frequency ω2
of the second resonator structure or secondary coil is unworkable or is
inoperative. Stark states that where ω1 ≠ ω2, the mathematics “becomes
more complicated” and “a physical intuition of what happens must be
developed.” Id. at 52. Stark also states: “If the coils are mistuned, there is
no simple procedure for determining k or when k = kcrit save through
measuring flux and watching for peaks in the output voltage waveform,
although they may be misshaped beats.” Id. at 127. Further, claim 1 has no
requirement that ω1 must equal ω2. Therefore, this argument by Patent
Owner does not undermine Petitioner’s showing that Stark does disclose one
circumstance where Q1 = Q2 = 1000.
But limitations 1[c] and 1[d] have to be met together, not separately in
disparate disclosures of Stark. To meet limitation 1[c], Petitioner relies on
the parameters of the working prototype that was constructed by the author
of Stark and described in Chapter 7 of Stark. Pet. 33–37. The Q1 = Q2 =
1000 notion is in a separate section for developing an intuition where ω1 ≠
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ω2. Id. at 52. Notably, Stark indicates that its prototype is constructed with
a common resonant frequency among all coils. Id. at 174. Regarding its
constructed prototype, Stark specifically states: “At this point, it remains to
tune the four coils such that they are all resonating at the same frequency.”4
Id. at 190. Further, in Chapter 8, where Stark specifically discusses
measurements from the prototype, Stark reveals that the Qs designed into the
prototype are: Q1 = 32, Q2 = 34; Q1 = 23, Q2 = 22; Q1 = 29, Q2 = 26. Id.
at 206, 212, 215. The prototype was not designed or implemented with Q1 =
Q2 = 1000. Thus, Petitioner has not shown satisfaction of limitations 1[c]
and 1[d], by relying on the disclosure of Q1 = Q2 = 1000.
Petitioner further notes that Stark in Figure 3-3 and Figure 3-9 make
Q1 = Q2 = 100. Pet. 40–41. Patent Owner asserts that, like the case of
Q1 = Q2 = 1000, the case of Q1 = Q2 = 100 reflects a situation where the
resonant circuits are “mistuned.” Prelim. Resp. 13. Regardless of whether
Q1 = Q2 = 100 reflects the values of Q for a “mistuned” circuit, the case of
Q1 = Q2 = 100 has the same above-discussed problem as the case of
Q1 = Q2 = 1000 in that the prototype on which Petitioner relies to meet
limitation 1[c] was not designed or implemented with Q1 = Q2 = 100.5

4 There are four coils instead of two because Stark is building a phased array
of two Tesla coils each of which has a primary coil and a secondary coil.
Id. at 145, 179, 187–188.
5 Petitioner argues that disclosure of Q1 = Q2 = 100 would have rendered
obvious Q1 > 100 and Q2 >100, because the two are so close, and Petitioner
argues that disclosure of Q1 = Q2 = 100 is disclosure of Q1 > 100 and
Q2 >100 because in practice Q would fluctuate slightly and unavoidably
sometimes exceed 100. Pet. 41–43. We need not reach either of these
arguments because, as discussed above, Stark does not disclose limitation
1[c] together with Q1 = Q2 = 100.
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Nonetheless, Petitioner asserts that it would have been obvious to one
with ordinary skill in the art to set a high value for all Qs in the system.
Specifically, Petitioner asserts:
A POSA would have understood that such high Q values
were beneficial because they increase the power and efficiency
of the system. As Stark explains, maximizing Q leads to higher
voltage transfer: “Holding other network parameters constant, if
the quality factors are increased, the initial peak output voltage
will increase.” Stark 79; Young Decl. ¶¶ 207–09. Stark also
explains that maximizing Q leads to increased transfer
efficiency, as “[t]here is no fundamental limit to the unloaded
energy transfer efficiency save for constraints on the quality
factors and the coupling coefficient.” Stark 101; Young Decl.
¶¶ 207–09. Because the coupling coefficient, k, is bounded by
0 ≤ k ≤ 1 and therefore relatively constraining, a POSA would
have been motivated to use high Q values instead to maximize
the “energy transfer efficiency” of Stark’s system. Young Decl.
¶¶ 207–09. A POSA would have desired to transfer large
amounts of power, and to transfer power more efficiently to
improve Stark’s system.
Pet. 44.
On this record, and for reasons discussed below, the disclosures cited
by Petitioner are not consistent with numerous other express disclosures of
Stark. Petitioner has over-simplified Stark’s disclosure as well as engaged
in selective picking and choosing of Stark’s teachings. “It is impermissible
within the framework of section 103 to pick and choose from any one
reference only so much of it as will support a given position to the exclusion
of other parts necessary to the full appreciation of what such reference fairly
suggests to one skilled in the art.” Bausch & Lomb, Inc. v. Barnes-
Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986) (quoting In re
Wesslau, 353 F.2d 238, 241 (CCPA 1965)). “The relevant portions of a
reference include not only those teachings which would suggest particular
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aspects of an invention to one having ordinary skill in the art, but also those
teachings which would lead such a person away from the claimed
invention.” In re Mercer, 515 F.2d 1161, 1166 (CCPA 1975). Petitioner’s
selectively picking and choosing without an adequate explanation amounts
to a critical deficiency of the Petition. Petitioner does not identify testimony
of Dr. Young which would explain the various contrary disclosures of Stark.
Petitioner does not explain Stark’s Figure 3–31, reproduced below:

Figure 3-31 illustrates normalized voltage gain based on variations in Q.
Ex. 1006, 84. It shows that except for small values of Q, the voltage gain
gets smaller as Q gets higher, the opposite of what Petitioner contends. See
Pet. 44.
Petitioner also does not explain the following formula in Stark for
determining kcrit, “the coupling coefficient that yields a maximum gain when
the system is driven at the frequency wn” (Ex. 1006, 80):
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Ex. 1006, 47. According to this formula, higher Qs would lead to a lower
coupling coefficient,6 meaning less efficiency in energy transfer.
Petitioner’s assertion also does not address the interplay of limitation
1[c] with limitation 1[d]. Petitioner places its focus on limitation 1[d]
without regard to limitation 1[c] which, according to Stark, is related to
limitation 1[d]. Stark describes the following relationship between Quality
factor Q and resonant frequency ωn:

Ex. 1006, 39. As the formulas indicate, Quality factor Q is related to
resonant frequency ωn. According to limitation 1[c], resonant wavelength is
related to resonant frequency. Petitioner’s reasoning does not explain the
effect of the condition imposed by limitation 1[c]. For example, if either Q1
or Q2 in limitation 1[d] were to increase, then ω1 and ω2 in limitation 1[c]
would correspondingly increase, per these formulas. Petitioner does not
account for how an increase of Q1 or Q2 in limitation 1[d] would affect the
relationship between ω1 and ω2 and the distance D in limitation 1[c].

6 For Q1 > 1 and Q2 > 1, as Stark uses in the prototype. Ex. 1006, 206, 212,
215 (Q1 = 32, Q2 = 34; Q1 = 23, Q2 = 22; Q1 = 29, Q2 = 26).
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Further, Petitioner’s above-quoted suggestion to alter Q rather than
coupling coefficient k assumes that Q is entirely independent from coupling
coefficient k. That does not appear to be the case based on the formula
reproduced above for determining kcrit. See Ex. 1006, 47.
Stark also describes that “[t]he coupling coefficient, k, is the single
most important factor in determining the operation of the Tesla coil.” Id. at
93. Stark explains that when the quality factors are roughly equal, k = kcrit
“is the coupling that yields a maximum gain when the system is driven at the
frequency wn.” Id. at 80. Stark describes that k is bounded to between 0 and
1, that “[t]he greater the k the more flux transferred between the two coupled
inductors,” and that “as k approaches unity [1], the system approaches that
of an ideal transformer with complete energy transfer.” Id. at 55, 99, 228.
According to Stark’s formula reproduced above, increasing Q1 and Q2 will
decrease kcrit, leading to a smaller coupling coefficient which reflects a lower
amount of energy transfer. An exclusive focus on increasing all Qs in
subsystems that interact with each other is contrary to Stark’s disclosure.
There are numerous other express disclosures in Stark that are
contrary to Petitioner’s assertions. For example, Stark describes: “The
individual values of the quality factors are unimportant here so long as their
product is constrained to Q1Q2 = 1 / k2crit = 400 and they are within the
same order of magnitude.” Id. at 129. But if both Q1 and Q2 were greater
than 100 as claimed, Q1Q2 would be greater than 400. Thus, an exclusive
focus on increasing all Qs in the system is contrary to Stark’s disclosure.
As another example of contrary disclosure, Stark describes:
When combining two second order circuits, each with its
own resonant frequency and Q factor, the behavior of the total,
fourth order system is not simply a sum, difference, or average
of the two constituent circuits’ parameters. Instead, different
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parts of the circuit resonate at different frequencies related to the
original independent fundamental frequencies. As the system is
driven by an external source, the energy it transfers to the circuit
is moved between the energy storage elements of the circuit
according to each devices’ constitutive relations. The result is
that the circuits will load one another and affect their natural
resonance frequencies and individual Q factors.
Id. at 42. Thus, according to Stark, when a system includes two multiple
resonant circuits, as Stark’s Tesla coil does, maximizing individual Quality
factors may not be good for the overall system. An exclusive focus on
increasing all Qs in subsystems that interact with each other is contrary to
Stark’s disclosure.
Further, Stark also states that Q ≈ 87 is most likely the upper bound
for the secondary coil. Id. at 129. Although, as noted by Petitioner (Pet.
40), Stark also states that use of smaller gauge (larger diameter) wires could
allow for a higher Quality factor (id.), Petitioner does not explain to what
extent Q can be effectively increased simply by using larger diameter wires,
without changing other characteristics of the resonant circuit. Further, that
Q could be made larger does not mean one with ordinary skill in the art
would have wanted to make Q larger. See Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention”).
Petitioner asserts: “A POSA would not be motivated to use small Q,
for example, based on Stark’s disclosure that small Q values result in weaker
energy transfer: ‘for very small Q . . . the system response decays before
any oscillations occur.’ Stark 56; Young Decl. ¶ 210.” Pet. 49. Petitioner
also asserts “Stark teaches that Q values must be ‘large enough’ to not damp
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out the waveform before [] the desired dynamics have occurred.’ Stark 82;
Young Decl. ¶¶ 209–10.” Id. These arguments are overly general and thus
unpersuasive, because Stark’s prototype, discussed above, conveys that the
following Q values are sufficiently big and not too small: Q1 = 32, Q2 = 34;
Q1 = 23, Q2 = 22; Q1 = 29, Q2 = 26. Ex. 1006, 206, 212, 215. Stark does not
disclose or suggest that Q values must be over 100.
Petitioner refers to the Q values implemented in Stark’s prototype as
“un-optimized.” Id. However, Petitioner cites to no evidentiary support for
that assertion and makes no showing that corresponding “optimized” Q1 and
Q2 for Stark’s disclosed prototype would be > 100. The Q values in Stark’s
prototype are selected by design. In that regard, Stark describes: “There is a
straightforward procedure for finding the parameters Q1, Q2, and k that best
fit the system.” Ex. 1006, 207. Stark uses that procedure to arrive at
Q1 = 32 and Q2 = 34, the highest Q values implemented in its prototype.
Id. at 207–209.
Petitioner has not adequately addressed the above-noted disclosures in
Stark that are contrary to its exclusive focus on a desire to increase Q.
Although on pages 45–48 of the Petition, Petitioner cites to numerous
additional material outside of Stark, which Petitioner asserts (Pet. 45) are
consistent with its reading of Stark, all such materials appear to have a single
focus on increasing Q to the exclusion of everything else. The Petition does
not address how such materials elucidate or otherwise explain the numerous
specific contrary disclosures from within Stark itself as discussed above.
Thus, these additional materials do not strengthen, meaningfully, Petitioner’s
assertions based on Stark.
Petitioner has not meaningfully or adequately explained numerous
specific contrary disclosures of Stark. Neither has Dr. Young. Petitioner’s
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exclusive focus on increasing the value of Q reflects selectively picking and
choosing of only so much of Stark’s disclosure that supports Petitioner’s
contention to the exclusion of other disclosures which are necessary for a
full appreciation of what Stark reasonably would have conveyed or
suggested to one with ordinary skill in the art.
Finally, Petitioner relies on the prosecution history of related
European Application and asserts:
Further, while not considered during U.S. prosecution,
[Stark] was used to reject substantially similar claims during
prosecution of a European equivalent. EP 2306615 FH 73–77
(Ex. 1011); see also id. at 49 (listing of rejected claims). The
Examiner concluded that the independent claims of that
application — which included substantially the same limitations
as independent claims 1 and 6 of the ’734 patent, plus additional
narrower limitations — were not patentable over Stark. Id. 74–
77. Patent Owner overcame Stark only by adding numerous
additional limitations, including a limitation that is not present in
any claim of the ’734 patent: “wherein the second resonator
structure . . . is part of a mobile wireless receiver, and wherein
the mobile wireless receiver is any of a robot, a vehicle, or a
computer.” Id. 151. Stark is the primary reference herein.
Pet. 5. The argument is unpersuasive, because the European prosecution
history shows that substantive arguments also were made in response to the
rejection of what Petitioner regards as “substantially similar claims” based
on features in the rejected claims rather than the newly added limitation. For
instance, there the patent applicant argued: “[Stark] does not teach or
suggest that Q1 and Q2 should be designed to be as large as possible to
maximize efficiency,” and “[t]o the contrary, [Stark] is clearly focused on
teaching how to optimize the coupling coefficient k given fixed values for Q1
and Q2, i.e., to set the value of k in terms of kcrit = 1 /sqrt(Q1*Q2), instead of
the opposite.” Ex. 1011, 139. The patent applicant further asserts: “The
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coupling coefficient, k, is the single most important factor on determining
the operation of the Tesla coil.” Id. The patent applicant also argued: “On
p. 84, Fig. 3-31 (reproduced below) Stark focuses on maximizing the pulsed
voltage gain with respect to Q and shows that the pulsed voltage gain in fact
decreases as Q increases beyond a certain value, thereby expressly teaching
away from high Q.” Id. at 140. The patent applicant summarizes as follows:
“In short, the Examining Division’s interpretation of [Stark] as teaching or
suggesting Q1 > 100 and Q2 > 100, and especially Q1 > 200 and Q2 > 200 as
in claim 1, is contrary to the express practical teachings in [Stark] and
certainly contrary to the general understanding in the art as evidenced by the
subsequent acclaim received by the inventors.” Id. at 143. These arguments
also had a role in obtaining allowance of the related European Application.
For the foregoing reasons, Petitioner has not shown a reasonable
likelihood that it would prevail in establishing obviousness of claim 1 over
Stark.
4. Independent Claim 6
Claim 6 is an apparatus claim substantively essentially corresponding
to the method claim of claim 1. Step limitation 1[c] of claim 1 appears as a
function limitation 6[c] in claim 6. Limitation 1[d] of claim 1 appears
exactly the same as limitation 6[d] in claim 6. Both Petitioner and Patent
Owner commonly address claims 1 and 6, with no separate arguments
directed to one but not the other. The deficiency of Petitioner’s accounting
for claim 1, as discussed above, equally applies to claim 6.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing obviousness of claim 6 over Stark.
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5. Dependent Claims 2–5, 7, 13, 19–22, 25, 26, 29, 30,
33, 34, 37, 38, 41, 42, 45, 46, 49, 50, 53, 54, 57–61, 64, 67–70
Claims 2–5, 7, 13, 19–22, 25, 26, 29, 30, 33, 34, 37, 38, 41, 42, 45,
46, 49, 50, 53, 54, 57–61, 64, and 67–70 each depend, directly or indirectly,
from claim 1 or claim 6, and incorporate all the limitations of the
independent claim from which it depends. The deficiency of Petitioner’s
accounting for claims 1 and 6 equally applies to these dependent claims.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing obviousness of claims 2–5, 7, 13, 19–22, 25,
26, 29, 30, 33, 34, 37, 38, 41, 42, 45, 46, 49, 50, 53, 54, 57–61, 64, and 67–
70 over Stark.
E. Alleged Obviousness of
Claims 61, 62, 64, and 65 over Stark
Claims 61 and 62 each depend from claim 1, and claims 64 and 65
each depend from claim 6. Ex. 1001, 11:32–36. The Petition’s deficiency
with respect to claim 1, as discussed above, equally applies to claims 61 and
62. The Petition’s deficiency with respect to claims 6, as discussed above,
equally applies to claims 64 and 65.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing obviousness of claims 61, 62, 64, and 65 over
Stark.
F. Alleged Obviousness of
Claims 61, 62, 64, and 65 over Stark and Mecke
Claims 61 and 62 each depend from claim 1, and claims 64 and 65
each depend from claim 6. Ex. 1001, 11:32–36. The Petition’s deficiency
with respect to claim 1, as discussed above, equally applies to claims 61 and
62. The Petition’s deficiency with respect to claims 6, as discussed above,
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equally applies to claims 64 and 65. Mecke, as applied by Petitioner, does
not cure that deficiency.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing obviousness of claims 61, 62, 64, and 65 over
Stark and Mecke.
IV. CONCLUSION
Petitioner has not shown a reasonable likelihood that it would prevail
in establishing unpatentability of any of claims 1–7, 13, 19–22, 25, 26, 29,
30, 33, 34, 37, 38, 41, 42, 45, 46, 49, 50, 53, 54, 57–62, 64, 65, and 67–70 of
the ’734 patent.
V. ORDER
It is
ORDERED that the Petition is denied, and no inter partes review is
instituted on any claim over any alleged ground of unpatentability.

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For PETITIONER:
Jonathan M. Strange
Inge A. Osman
Lisa K. Nguyen
David A. Zucker
Latham & Watkins LLP
jonathan.strange@lw.com
inge.osman@lw.com
lisa.nguyen@lw.com
david.zucker@lw.com

For PATENT OWNER:

Joshua Griswold
Dan Smith
Kim Leung
Kenneth Hoover
Walter Renner
Marc Wefers
Andrew Kopsidas
FISH & RICHARDSON P.C.
griswold@fr.com
dsmith@fr.com
leung@fr.com
hoover@fr.com
axf-ptab@fr.com
wefers@fr.com
kopsidas@fr.com

Scott Witonsky
Misha Hill
WiTRICITY CORPORATION
Scott.witonsky@Witricity.com
Misha.hill@witricity.com

Adam Brausa
abrausa@durietangri.com