Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 15
`Date: September 20, 2024
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`WIPQTUS INC.,
`Patent Owner.
`____________
`
`IPR2024-00023
`Patent 10,038,339 B2
`____________
`
`
`Before KARL D. EASTHOM, STEVEN M. AMUNDSON, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`PRELIMINARY GUIDANCE
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`

`

`IPR2024-00023
`Patent 10,038,339 B2
`
`
`I.
`
`INTRODUCTION
`
`In March 2024, we instituted an inter partes review of claims 1–3, 5, 7,
`
`and 9 in U.S. Patent No. 10,038,339 B2 (Exhibit 1001, “the ’339 patent”). Paper 7
`
`(“Inst. Dec.”). In June 2024, WiPQTUS Inc. (“Patent Owner”) filed a Contingent
`
`Motion to Amend. Paper 11 (“Motion” or “Mot.”). In the Motion, Patent Owner
`
`requests that the Board substitute proposed claims 21–32 for current claims 1–12,
`
`respectively, if the Board determines in a final written decision that originally
`
`challenged claims 1–3, 5, 7, and 9 are unpatentable. Mot. 1, 17–24. In
`
`August 2024, Samsung Electronics Co., Ltd. (“Petitioner”) filed an Opposition to
`
`Patent Owner’s Motion. Paper 14 (“Opp.”).
`
`In the Motion, Patent Owner also requests that the Board provide
`
`preliminary guidance concerning the Motion under the Board’s MTA pilot
`
`program. Mot. 1; see Paper 9, 2; Notice Regarding a New Pilot Program
`
`Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under
`
`the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed.
`
`Reg. 9,497 (Mar. 15, 2019) (“Notice”).
`
`After considering Patent Owner’s Motion and Petitioner’s Opposition, we
`
`provide this Preliminary Guidance indicating our initial, preliminary, non-binding
`
`views on whether Patent Owner has shown a reasonable likelihood that it has
`
`satisfied the statutory and regulatory requirements applicable to a motion to amend
`
`in an inter partes review and only as to whether Petitioner (or the record)
`
`establishes a reasonable likelihood that proposed substitute claims 21–23, 25, 27,
`
`and 29 are unpatentable. See Notice, 84 Fed. Reg. at 9,497 (explaining that the
`
`“preliminary guidance . . . provides preliminary, non-binding guidance from the
`
`Board to the parties about” the motion to amend); see also 35 U.S.C. § 316(d)
`
`(2018) (statutory requirements for a motion to amend); 37 C.F.R. § 42.121 (2024)
`
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`2
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`IPR2024-00023
`Patent 10,038,339 B2
`
`(regulatory requirements and burdens for a motion to amend); Lectrosonics, Inc. v.
`
`Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential)
`
`(providing information and guidance regarding motions to amend).
`
`We do not consider proposed substitute claims 24, 26, 28, and 30–32
`
`because these claims correspond to current claims 4, 6, 8, and 10–12, respectively,
`
`which Petitioner does not challenge. See 35 U.S.C. § 316(d) (providing that “the
`
`patent owner may file 1 motion to amend the patent in 1 or more of the following
`
`ways,” i.e., by cancelling “any challenged patent claim” and/or proposing “a
`
`reasonable number of substitute claims” for “each challenged claim”).1
`
`For purposes of this Preliminary Guidance, we focus only on proposed
`
`substitute claims 21–23, 25, 27, and 29, and specifically on the amendments to
`
`proposed substitute claims 21 and 23. See Notice, 84 Fed. Reg. at 9,497. As for
`
`proposed substitute claims 22, 25, 27, and 29, they remain the same as originally
`
`challenged claims 2, 5, 7, and 9 but have been amended to depend from proposed
`
`substitute claim 21. See Mot. 1, 19, 21–23. Also, we do not address the
`
`patentability of the originally challenged claims in this Preliminary Guidance. See
`
`Notice, 84 Fed. Reg. at 9,497.
`
`Moreover, in formulating our preliminary views concerning Patent Owner’s
`
`Motion and Petitioner’s Opposition, we have not considered the parties’ other
`
`substantive papers regarding the merits of Petitioner’s challenges to the originally
`
`
`1 Should Patent Owner wish to pursue amendment of claims 4, 6, 8, and 10–12 in
`the ’339 patent in a reissue or reexamination proceeding, we draw Patent Owner’s
`attention to the Notice Regarding Options for Amendments by Patent Owner
`Through Reissue or Reexamination During a Pending AIA Trial Proceeding,
`84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue
`application or a request for reexamination of the ’339 patent, we remind Patent
`Owner of its continuing obligation to notify the Board of any such related matters
`in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
`
`
`
`3
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`

`

`IPR2024-00023
`Patent 10,038,339 B2
`
`challenged claims. We emphasize that the views expressed in this Preliminary
`
`Guidance are subject to change upon consideration of the complete record,
`
`including any revision to the Motion filed by Patent Owner. Thus, this Preliminary
`
`Guidance is not binding on the Board when rendering a final written decision. See
`
`Notice, 84 Fed. Reg. at 9,500.
`
`II.
`
`PRELIMINARY GUIDANCE
`
`A.
`
`STATUTORY AND REGULATORY REQUIREMENTS
`
`Based on the current record and for the reasons explained below, it appears
`
`that Patent Owner has not shown a reasonable likelihood that it has satisfied the
`
`statutory and regulatory requirements applicable to its Motion.
`
`1.
`
`Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute claims?
`(35 U.S.C. § 316(d)(1)(B))
`
`Yes. Patent Owner proposes no more than one substitute claim for each of
`the challenged claims, i.e., claims 1–3, 5, 7, and 9. Mot. 4–5, 17–19, 21,
`22, 23. Petitioner does not argue otherwise. See generally Opp.
`
`We take this opportunity to reiterate that we do not consider proposed
`substitute claims 24, 26, 28, and 30–32 because these claims correspond to
`current claims 4, 6, 8, and 10–12, respectively, that Petitioner does not
`challenge. See 35 U.S.C. § 316(d) (limiting amendments to challenged
`claims).
`
`2.
`
`Respond to Ground of Unpatentability
`
`Does the Motion respond to a ground of unpatentability involved in the
`trial? (37 C.F.R. § 42.121(a)(2)(i))
`
`Yes. Patent Owner presents the claim amendments in an attempt to add
`features to further distinguish the proposed substitute claims as patentable
`over the references Petitioner relies on to establish unpatentability. In
`particular, the Institution Decision explained that Petitioner demonstrates
`a reasonable likelihood of proving that the combined disclosures in
`
`
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`4
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`

`IPR2024-00023
`Patent 10,038,339 B2
`
`
`Chatterjee2 and Corbridge3 teach the inventions covered by originally
`challenged claims 1–3, 5, 7, and 9. See Inst. Dec. 36–79. In the Motion,
`Patent Owner explicitly addresses Chatterjee and Corbridge, and the
`Motion responds to the ground of unpatentability involved in the trial,
`i.e., unpatentability under § 103 based on Chatterjee and Corbridge.
`Mot. 9–12. Petitioner does not argue otherwise. See generally Opp.
`
`3.
`
`Scope of Amended Claims
`
`Does the amendment seek to enlarge the scope of the claims? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`
`No. Proposed substitute claims 21 and 23 add limitations vis-à-vis
`originally challenged claims 1 and 3 and, therefore, do not enlarge the
`scope of the originally challenged. Mot. 3–4; see Mot. App. A 17–19.
`Proposed substitute claims 22, 25, 27, and 29 merely change the
`dependency of originally challenged claims 2, 5, 7, and 9. Mot. 4; see
`Mot. App. A, 19, 21–23. Petitioner does not argue otherwise. See
`generally Opp.
`
`4.
`
`New Matter
`
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`
`Yes. Based on the current record, Patent Owner does not appear to have
`identified adequate written-description support for proposed substitute
`claims 21–23, 25, 27, and 29. See Lectrosonics, Paper 15 at 7 (explaining
`that “the Board requires that a motion to amend set forth written
`description support in the originally filed disclosure of the subject patent
`for each proposed substitute claim, and also set forth support in an earlier
`filed disclosure for each claim for which benefit of the filing date of the
`earlier filed disclosure is sought”); see 37 C.F.R. § 42.121(b)(1)–(2). For
`each proposed substitute claim, at least one limitation lacks adequate
`written-description support in each of the following:
`
`
`2 US 2011/0018356 A1, published January 27, 2011 (based on an application filed
`December 1, 2009) (Ex. 1003, “Chatterjee”).
`3 US 2010/0083012 A1, published April 1, 2010 (based on an application filed
`June 4, 2009) (Ex. 1004, “Corbridge”).
`
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`IPR2024-00023
`Patent 10,038,339 B2
`
`
`(1) the originally filed disclosure of the subject patent,
`i.e., application no. 15/095,070 filed on April 10,
`2016 (Exhibit 1006, 3–76, “the ’070 application”);
`and
`
`(2) the earlier filed disclosure of provisional application
`no. 61/682,312 filed on August 13, 2012
`(Exhibit 2004, “the ’312 provisional”).
`
`As an initial procedural matter, a motion to amend must identify written-
`description support for “each proposed substitute claim as a whole, and not
`just the features added by the amendment.” Lectrosonics, Paper 15 at 8.
`This requirement “applies equally to independent claims and dependent
`claims, even if the only amendment to a dependent claim is in the
`identification of the claim from which it depends.” Id. Patent Owner
`attempts to identify written-description support for only the new features
`added to proposed substitute claims 21 and 23, not each proposed
`substitute claim “as a whole.” See Mot. 5–7. And Patent Owner does not
`identify written-description support for any of proposed substitute
`claims 22 and 24–32. See id.
`
`
`
`For the limitation “while configured to receive said power” in proposed
`substitute claim 21:
`
`Regarding proposed substitute claim 21, i.e., the only independent
`proposed substitute claim, Patent Owner proposes to amend the following
`limitation concerning the first circuitry by adding the following underlined
`language:
`
`said first circuitry, based on an input from said control logic
`circuit, configured to change, while configured to receive said
`power, the impedance of said impedance network and
`topology of said switch network to obtain a modified form of
`said received power, and apply said modified form of said
`power to said load device.
`
`Mot. App. A 18. Patent Owner asserts that both the ’312 provisional and
`the ’339 patent’s specification support this amended limitation. Mot. 6
`(citing Ex. 1001, 2:37–46; Ex. 2004 ¶¶ 4, 7, 32). Specifically, Patent
`Owner points to the following portion of paragraph 4 in the
`’312 provisional as support:
`
`
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`6
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`

`IPR2024-00023
`Patent 10,038,339 B2
`
`
`In the charging mode, dual mode wireless power receiver
`configures the first circuitry to receive the power . . . . The
`first circuitry, based on an input from the control logic circuit
`is configured to change the impedance of the impedance
`network . . . to obtain a modified form of the received power,
`and apply the modified form of the power to the load device
`. . . .
`
`Id. (alterations by Patent Owner) (quoting Ex. 2004 ¶ 4) (citing Ex. 2004
`¶¶ 7, 32).
`
`Additionally, Patent Owner points to the following portion of the
`’339 patent’s specification as support:
`
`The dual mode wireless power receiver can operate in a
`charging mode and a communication mode. In the charging
`mode, dual mode wireless power receiver configures the first
`circuitry to receive the power from an external wireless power
`transmitter. The first circuitry, based on an input from the
`control logic circuit is configured to change the impedance of
`the impedance network and topology of the switch network to
`obtain a modified form of the received power, and apply the
`modified form of the power to the load device . . . .
`
`Mot. 6 (citing Ex. 1001, 2:37–46); see 1001, 2:37–46.
`
`Petitioner argues that no disclosure cited by Patent Owner in the
`’312 provisional or the ’339 patent’s specification describes “changing
`impedance or topology ‘while configured to receive power.’” Opp. 1–3
`(citing Mot. 6; Ex. 1001, 2:37–46). According to Petitioner, a person
`of ordinary skill in the art (“POSITA”) “would have understood the
`paragraph reproduced above to describe changing the impedance of the
`impedance network and topology of the switch network when transitioning
`between” the charging mode and communication mode. Id. at 2 (emphasis
`omitted).
`
`Noting that “[t]he ’339 patent’s ‘impedance network’ can change
`impedance ‘prior to transmitting power to a secondary wireless power
`receiver,’” Petitioner argues that a POSITA “would thus have understood
`that the receiver changes impedance between charging mode and
`communication mode, not dynamically changing impedance while it is
`transmitting or receiving power.” Opp. 2–3 (emphases omitted) (quoting
`Ex. 1001, 9:11–14) (citing Ex. 1001, 9:4–14; Ex. 1015 ¶ 21). Noting that
`
`
`
`7
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`IPR2024-00023
`Patent 10,038,339 B2
`
`
`“the ’339 patent describes that the switched network ‘is configured as an
`inverter or a rectifier depending upon the mode of operation,’” Petitioner
`argues that a POSITA “would have understood that the switch network
`changes its topology (i.e., from a rectifier to an inverter, or the reverse)
`between the two modes.” Id. at 3 (quoting Ex. 1001, 2:60–62) (citing
`Ex. 1001, 2:39–67; Ex. 1015 ¶ 22). Petitioner asserts that “Patent Owner
`fails to identify any disclosure in the ’339 patent specification that
`describes what the receiver does during the power receive mode.” Id. at 2
`(emphasis by Petitioner).
`
`Based on the current record and our current understanding of the language
`“while configured to receive said power” in proposed substitute claim 21,
`we agree with Petitioner at this stage of the proceeding that the limitation
`containing that language lacks written-description support in the portions
`of the ’312 provisional and the ’339 patent’s specification cited by Patent
`Owner because those portions do not appear to disclose changing the
`impedance of the impedance network and the topology of the switch
`network during the power-receive mode, i.e., while the apparatus remains
`in that mode. See Ex. 1001, 2:37–46; Ex. 2004 ¶¶ 4, 7, 32; see also
`Ex. 1006, 5 (corresponding to Ex. 1001, 2:37–46)).
`
`Thus, based on the current record and our current understanding of the
`language “while configured to receive said power” in proposed substitute
`claim 21, it appears that Patent Owner seeks to add new subject matter via
`that claim language. But we emphasize that our analysis is preliminary,
`and we invite the parties to address this issue in further briefing and/or in a
`revised motion to amend.
`
`Because proposed substitute claims 22, 23, 25, 27, and 29 depend from
`proposed substitute claim 21, we preliminarily determine that Patent
`Owner has not demonstrated adequate written-description support for
`those proposed substitute claims in the cited portions of the
`’312 provisional and the ’339 patent’s specification. See Mot. 5–7.
`
`
`
`For the limitation “at least one of said one or more passive components of
`the impedance network of said first circuitry is (1) chosen a priori with a
`fixed value and (2) tuned during operation over a range of values” in
`proposed substitute claim 23:
`
`
`
`8
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`

`IPR2024-00023
`Patent 10,038,339 B2
`
`
`Regarding proposed substitute claim 23, Patent Owner proposes to amend
`the claim as follows vis-à-vis claim 3 with underlined text added and
`bracketed text deleted:
`
`The dual mode wireless power receiver of claim [1] 21,
`wherein at least one of said one or more passive components
`of the impedance network of said first circuitry [comprising
`of elements that are one of] is (1) chosen a priori with a fixed
`value [values] and (2) tuned during operation over a range of
`values.
`
`Mot. App. A 19.
`
`Without underlining and brackets, proposed substitute claim 23 reads
`follows:
`
`The dual mode wireless power receiver of claim 21, wherein
`at least one of said one or more passive components of the
`impedance network of said first circuitry is (1) chosen a priori
`with a fixed value and (2) tuned during operation over a range
`of values.
`
`Patent Owner asserts that proposed substitute claim 23 “finds support only
`in the new matter added to the application for” the ’339 patent, i.e., the
`’070 application, and not in the parent application for the ’339 patent or
`the ’312 provisional. See Mot. 6–7 (citing Ex. 1001, 22:11–12, 22:55,
`24:7–8, 24:46, 25:18, 25:55).
`
`Petitioner argues that “[i]f claim 23 refers to a variable electrical
`component of the impedance network that has a ‘chosen’ initial value and
`can further be ‘tuned during operation,’ such a variable component is not
`disclosed in the ’339 patent.” Opp. 4. Referring to the Institution
`Decision, Petitioner asserts that Patent Owner’s alleged support actually
`“describes ‘chosen a priori (fixed)’ and ‘tuned during operation (variable)’
`as alternatives.” Id. (emphasis by Petitioner) (quoting Inst. Dec. 29)
`(citing Mot. 6). Petitioner also asserts that the ’339 patent’s specification
`“does not describe choosing the initial capacitance value of a variable
`capacitor.” Id. (citing Inst. Dec. 29; Ex. 1015 ¶ 29).
`
`As an initial procedural matter, we note that Patent Owner improperly
`cites the ’339 patent’s specification for written-description support instead
`of the originally filed disclosure of the subject patent, i.e., the
`’070 application, as required by Lectrosonics. See Mot. 6–7 (citing
`
`
`
`9
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`

`IPR2024-00023
`Patent 10,038,339 B2
`
`
`Ex. 1001, 22:11–12, 22:55, 24:7–8, 24:46, 25:18, 25:55); see Lectrosonics,
`Paper 15 at 7–8. Lectrosonics explains that “the Board requires that a
`motion to amend set forth written description support in the originally
`filed disclosure of the subject patent for each proposed substitute claim,
`and also set forth support in an earlier filed disclosure for each claim for
`which benefit of the filing date of the earlier filed disclosure is sought.”
`Lectrosonics, Paper 15 at 8. Lectrosonics also explains that “to meet this
`requirement, citation should be made to the original disclosure of the
`application, as filed, rather than to the patent as issued.” Id. at 8.
`
`Moreover, based on the current record and our current understanding of
`the claim’s scope, we tend to agree with Petitioner that proposed substitute
`claim 23 lacks written-description support in the portions of the
`’339 patent’s specification cited by Patent Owner (and the corresponding
`portions of the ’070 application) because those portions do not appear to
`disclose a “passive component[] of the impedance network” that is both
`“(1) chosen a priori with a fixed value” and “(2) tuned during operation
`over a range of values.” Mot. App. A 19; see Mot. 6–7 (citing Ex. 1001,
`22:11–12, 22:55, 24:7–8, 24:46, 25:18, 25:55); Opp. 4.
`
`The ’339 patent’s specification includes the following disclosures relevant
`to originally challenged claim 3 and proposed substitute claim 23:
`
`• “Capacitors Cs’s and Cp’s capacitance value is chosen a
`priori (fixed) or tuned during operation (variable) to change
`the impedance of the impedance network 101” in the
`Figure 10A embodiment.
`
`• “Capacitors Cs’s and Cp’s capacitance value is chosen a
`priori (fixed) or tuned during operation (variable) to change
`the impedance of the impedance network 101” in the
`Figure 10B embodiment.
`
`• “Capacitors Cp’s capacitance value is chosen a priori (fixed)
`or tuned during operation (variable) to change the impedance
`of the impedance network 101” in the Figure 10C
`embodiment.
`
`• “Capacitors Cs’s and Cp’s capacitance value is chosen a
`priori (fixed) or tuned during operation (variable) to change
`the impedance of the impedance network 101” in the
`Figure 10D embodiment.
`
`
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`10
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`IPR2024-00023
`Patent 10,038,339 B2
`
`
`• “Capacitors Cs’s capacitance value is chosen a priori (fixed)
`or tuned during operation (variable) to change the impedance
`of the impedance network 101” in the Figure 10E
`embodiment.
`
`• “Capacitors Cs’s capacitance value is chosen a priori (fixed)
`or tuned during operation (variable) to change the impedance
`of the impedance network 101” in the Figure 10F
`embodiment.
`
`• “Capacitors Cs’s and Cp’s capacitance value is chosen a
`priori (fixed) or tuned during operation (variable) to change
`the impedance of the impedance network 101” in the
`Figure 10G embodiment.
`
`• “Capacitors Cs’s capacitance value is chosen a priori (fixed)
`or tuned during operation (variable) to change the impedance
`of the impedance network 101” in the Figure 10H
`embodiment.
`
`Ex. 1001, 21:41–43, 22:11–14, 22:54–57, 23:30–32, 24:7–9, 24:45–48,
`25:17–20, 25:54–56.
`
`As noted in the Institution Decision, these portions of the specification
`“repeatedly explain[] that the one or more capacitors comprising
`impedance network 101 are ‘chosen a priori (fixed) or tuned during
`operation (variable) to change the impedance of the impedance network
`101’” and thus describe “‘chosen a priori (fixed)’ and ‘tuned during
`operation (variable)’ as alternatives for the one or more components
`comprising the claimed ‘impedance network.’” Inst. Dec. 29 (emphases
`added) (quoting Ex. 1001, 21:39–43, 22:9–14, 22:53–57, 23:28–32,
`24:5–9, 24:44–48, 25:15–20, 25:52–56). In contrast to the specification,
`proposed substitute claim 23 requires a “passive component[] of the
`impedance network” that is both “(1) chosen a priori with a fixed value”
`and “(2) tuned during operation over a range of values.” Mot. App. A 19.
`In short, Patent Owner proposes an amendment requiring that a component
`satisfy condition (1) and condition (2), whereas the specification appears
`to support only a requirement that a component satisfy condition (1) or
`mutually exclusive condition (2). See Ex. 1001, 21:39–43, 22:9–14,
`22:53–57, 23:28–32, 24:5–9, 24:44–48, 25:15–20, 25:52–56; see also
`Ex. 1006, 37–38, 40–43.
`
`
`
`11
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`IPR2024-00023
`Patent 10,038,339 B2
`
`
`Thus, based on the current record and our current understanding of the
`claim’s scope, it appears that Patent Owner seeks to add new subject
`matter via proposed substitute claim 23. But we emphasize that our
`analysis is preliminary, and we invite the parties to address this issue in
`further briefing and/or in a revised motion to amend.
`
`We acknowledge that Patent Owner has not yet had the opportunity to
`respond to Petitioner’s arguments that proposed substitute claims 21
`and 23 add new subject matter. Patent Owner will have the opportunity to
`do so in a Reply to Petitioner’s Opposition (or in a revised motion to
`amend). Further, in a Reply to Petitioner’s Opposition (or in a revised
`motion to amend), we advise Patent Owner to further explain how any
`cited portions of the earliest filed disclosure support the limitations in the
`proposed substitute claims.
`
`
`
`B.
`
`PATENTABILITY
`
`For the reasons explained below, at this stage of the proceeding and based
`
`on the current record, it appears that Petitioner has shown a reasonable likelihood
`
`that proposed substitute claims 21–23, 25, 27, and 29 are unpatentable.4
`
`Does the record establish a reasonable likelihood that the proposed substitute
`claims are unpatentable?
`
`Yes. The record appears to establish a reasonable likelihood that (i) proposed
`substitute claims 21–23, 25, 27, and 29 lack written-description support under
`35 U.S.C. § 112(a) (or pre-AIA 35 U.S.C. § 112 ¶ 1); (ii) proposed substitute
`claim 23 is indefinite under 35 U.S.C. § 112(b) (or pre-AIA 35 U.S.C. § 112
`¶ 2); and (iii) proposed substitute claims 21, 22, 25, 27, and 29 would have been
`obvious under 35 U.S.C. § 103 based on at least one ground advanced by
`Petitioner.
`
`
`
`
`4 In this Preliminary Guidance, we express no view on the patentability of
`originally challenged claims 1–3, 5, 7, and 9. Instead, we focus on limitations
`added to originally challenged claims 1 and 3 in proposed substitute claims 21
`and 23.
`
`
`
`12
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`IPR2024-00023
`Patent 10,038,339 B2
`
`
`I. Lack of Written-Description Support
`
`Yes. For the reasons discussed above, we preliminarily determine that Patent
`Owner fails to meet its burden of showing that proposed substitute claims 21–23,
`25, 27, and 29 do not add new subject matter. For the reasons discussed above,
`Patent Owner does not appear to have identified adequate written-description
`support for limitations recited in proposed substitute claims 21 and 23 in the
`’312 provisional or the ’070 application (or the ’339 patent’s specification).
`Further, for the reasons discussed above, Petitioner has shown a reasonable
`likelihood that proposed substitute claims 21–23, 25, 27, and 29 are unpatentable
`under § 112(a) (or pre-AIA § 112 ¶ 1). See Opp. 1–3.
`
`Specifically, for the reasons discussed above for proposed substitute claim 21,
`we tend to agree with Petitioner that the newly added claim language “while
`configured to receive said power” appears to lack written-description support.
`See Opp. 1–4.
`
`Additionally, because proposed substitute claims 22, 23, 25, 27, and 29 depend
`from proposed substitute claim 21, we preliminarily determine that Petitioner has
`shown a reasonable likelihood that these dependent claims are unpatentable
`under § 112(a) (or pre-AIA § 112 ¶ 1). See Opp. 3.
`
`Further, for the reasons discussed above for proposed substitute claim 23, we
`tend to agree with Petitioner that the limitation “at least one of said one or more
`passive components . . . is (1) chosen a priori with a fixed value and (2) tuned
`during operation over a range of values” recited in the claim appears to lack
`written-description support in the cited portions of the ’339 patent’s specification
`(and the corresponding portions of the ’070 application). See Opp. 3–4.
`
`
`
`II. Indefiniteness
`
`Yes for proposed substitute claim 23 based on the limitation “at least one of said
`one or more passive components . . . is (1) chosen a priori with a fixed value and
`(2) tuned during operation over a range of values” recited in the claim.
`
`Petitioner asserts that proposed substitute claim 23 is indefinite because “the
`requirement of the claim is unclear and illogical” and the claim “contains an
`impossibility.” Opp. 5 (citing Trustees of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359, 1367 (Fed. Cir. 2016)). According to Petitioner, “if the proposed
`claim amendment requires a ‘passive component’ ‘with a fixed value,’ it is
`unclear how such a fixed value passive component could be ‘tuned during
`operation’ as the proposed amended claims require.” Id. at 3–4 (emphases
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`omitted). Petitioner asserts that “[i]t is not possible to have a ‘fixed value’
`‘passive component’ that can be ‘tuned over a range of values,’ thus requiring a
`component to be both fixed and variable at the same time.” Id. at 5. As support,
`Petitioner quotes the testimony of Patent Owner’s declarant, Dr. Direen, who
`stated that “you can’t tune fixed passive elements.” Id. at 4 (emphasis omitted)
`(quoting Ex. 1019, 105:3–4).
`
`For purposes of this Preliminary Guidance and based on the current record,
`Petitioner’s argument seems persuasive. As discussed above in our analysis
`concerning new subject matter, we tend to agree with Petitioner that the portions
`of the ’339 patent’s specification cited by Patent Owner (and the corresponding
`portions of the ’070 application) do not appear to disclose a “passive
`component[] of the impedance network” that is both “(1) chosen a priori with a
`fixed value” and “(2) tuned during operation over a range of values.” See Mot.
`6–7 (citing Ex. 1001, 22:11–12, 22:55, 24:7–8, 24:46, 25:18, 25:55); Opp. 4.
`Instead, as explained in the Institution Decision, the cited portions describe
`“‘chosen a priori (fixed)’ and ‘tuned during operation (variable)’ as alternatives
`for the one or more components comprising the claimed ‘impedance network.’”
`Inst. Dec. 29 (quoting Ex. 1001, 21:39–43, 22:9–14, 22:53–57, 23:28–32,
`24:5–9, 24:44–48, 25:15–20, 25:52–56). We also tend to agree with Petitioner
`that, as a technical matter, a “passive component” cannot be both “(1) chosen a
`priori with a fixed value” and “(2) tuned during operation over a range of
`values,” i.e., both fixed and variable at the same time, as required by proposed
`substitute claim 23, thus rendering the claim ambiguous. See Ex. 1015 ¶ 43; Ex.
`1019, 105:3–4.
`
`The patent statute “require[s] that a patent’s claims, viewed in light of the
`specification and prosecution history, inform those skilled in the art about the
`scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
`Instruments, Inc., 572 U.S. 898, 910 (2014). The definiteness requirement
`“strikes a ‘delicate balance’ between ‘the inherent limitations of language’ and
`providing ‘clear notice of what is claimed.’” Sonix Tech. Co. v. Publ’ns Int’l,
`Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Nautilus, 572 U.S. at 909).
`Further, the Office should allow only claims that are “precise, clear, correct, and
`unambiguous.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
`
`For purposes of this Preliminary Guidance and based on the current record,
`Petitioner appears to have shown a reasonable likelihood that proposed substitute
`claim 23 is indefinite under § 112(b) (or pre-AIA § 112 ¶ 2). See Opp. 3–5;
`Nautilus, 572 U.S. at 910. But we emphasize that our analysis is preliminary,
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`and we invite the parties to address this issue in further briefing and/or in a
`revised motion to amend.
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`No for proposed substitute claim 21 because the claim language, viewed in light
`of the specification and prosecution history, informs those skilled in the art about
`the scope of the invention with reasonable certainty.
`
`Petitioner asserts that the following limitation in proposed substitute claim 21
`“is indefinite because its meaning is not reasonably certain”: “an impedance
`network comprised of two or more electrical components from the list (i) one or
`more passive components, (ii) one or more active components, or (iii) one or
`more switches.” Opp. 5; see Mot. App. A 17. As support, Petitioner quotes
`the testimony of Patent Owner’s declarant, Dr. Direen, who stated that “the
`‘impedance network’ is an entity consisting of two or more components, one or
`more of which must be passive components, and additional components used
`for the purpose of varying impedance.” Opp. 6 (emphasis omitted) (quoting
`Ex. 2003 ¶ 100).
`
`Petitioner asserts that “Dr. Direen’s view of the impedance network is
`inconsistent with the plain language of” this limitation requiring “two
`components from three categories (i), (ii), or (iii), without specifying whether
`any category is optional or mandatory.” Opp. 6. Petitioner further asserts that
`it is unclear what Patent Owner means by “passive components,” “active
`components,” and “switches” in view of (1) Dr. Direen’s allegedly conflicting
`testimony about “passive components” and (2) the ’339 patent’s description of
`transistors as “active components” rather than “switches.” Id. at 6–7 (citing
`Ex. 1001, 9:7–11; Ex. 1019, 71:9–17, 104:15–16).
`
`For purposes of this Preliminary Guidance and based on the current record, we
`disagree with Petitioner’s argument. As Patent Owner points out, the ’339 patent
`describes an impedance network’s constituents as follows:
`
`The impedance network 101 comprises one or more of
`passive electronic components, for example, a resistor, a capacitor,
`a magnetic device, a transducer, transformer etc.; active electronic
`components, for example, a diode, a transistor such as a metal oxide
`semiconductor field effect transistor (MOSFET), a bipolar
`transistor, etc., operational amplifiers, an optoelectronic device,
`etc., and electronic switches. These electronic components in
`combination are utilized to vary impedance of the dual mode
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`wireless power receiver 100 prior to transmitting power to a
`secondary wireless power receiver 300.
`
`Ex. 1001, 9:4–14; see also Mot. 5–6 (citing Ex. 1001, 9:4–14). In view of the
`’339 patent’s description of an impedance network’s constituents, the limitation
`“an impedance networ