Witricity Corp. v. Inductev Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WITRICITY CORP.,
Appellant
v.
INDUCTEV INC.,
Appellee
______________________
2023-1916
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01165.
______________________
Decided: April 16, 2025
______________________
D ANIEL G EORGE VIVARELLI, J R., Butzel Long, PC,
Washington, DC, argued for appellant. Also represented
by AARON K AMLAY .
D AVID Z UCKER, Latham & Watkins LLP, Washington,
DC, argued for appellee. Also represented by G ABRIEL K.
BELL , MAXIMILIAN A. G RANT , I NGE A. O SMAN; J EFFREY G.
HOMRIG, Austin, TX.
______________________
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WITRICITY CORP. v. INDUCTEV INC. 2
Before D YK, CHEN, and CUNNINGHAM , Circuit Judges.
CUNNINGHAM , Circuit Judge.
WiTricity Corp. (“WiTricity”) appeals from a final
written decision by the Patent Trial and Appeal Board in
an inter partes review of U.S. Patent No. 7,741,734.
InductEV Inc. v. WiTricity Corp., No. IPR2021-01165,
2023 WL 2607675 (P.T.A.B. Mar. 6, 2023) (“Decision”).
The Board found 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 (collectively, the “challenged
claims”) unpatentable under 35 U.S.C. § 103. Id. at *31–
32. For the reasons below, we affirm the Board’s decision.
I. BACKGROUND
The ’734 patent is titled “Wireless Non-Radiative En-
ergy Transfer.” The patent was filed on July 5, 2006, and
claims a priority date of July 12, 2005. ’734 patent col. 1
ll. 4–8. The ’734 patent is generally directed at “meth-
od[s] of transferring electromagnetic energy” and “elec-
tromagnetic energy transfer system[s].” Id. col. 11 ll. 39–
58, col. 11 l. 65 to col. 12 l. 18. Independent claims 1 and
6, from which the rest of the challenged claims ultimately
depend, are illustrative and recite:
1. A method of transferring electromagnetic ener-
gy comprising:
providing a first electromagnetic resonator
structure receiving energy from an exter-
nal power supply, said first resonator
structure having a first mode with a reso-
nant frequency ω1, an intrinsic loss rate
Γ1, and a first Q-factor Q 1=ω1/(2Γ1),
providing a second electromagnetic reso-
nator structure being positioned distal
from said first resonator structure and not
electrically wired to the first resonator
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WITRICITY CORP. v. INDUCTEV INC. 3
structure, said second resonator structure
having a second mode with a resonant fre-
quency ω2, an intrinsic loss rate Γ2, and a
second Q-factor Q 2=ω2/(2Γ2),
transferring electromagnetic energy from
said first resonator structure to said sec-
ond 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, re-
spectively,
wherein the electromagnetic resonator
structures are designed to have Q 1>100
and Q 2>100.
6. An electromagnetic energy transfer system
comprising:
a first electromagnetic resonator structure
receiving energy from an external power
supply, said first resonator structure hav-
ing a first mode with a resonant frequency
ω1, an intrinsic loss rate Γ1, and a first Q-
factor Q 1=ω1/(2Γ1),
a second electromagnetic resonator struc-
ture being positioned distal from said first
resonator structure and not electrically
wired to the first resonator structure, said
second resonator structure having a sec-
ond mode with a resonant frequency ω2, an
intrinsic loss rate Γ2, and a second Q-
factor Q 2=ω2/(2Γ2),
wherein said first resonator transfers elec-
tromagnetic energy to said second resona-
tor over a distance D that is smaller than
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WITRICITY CORP. v. INDUCTEV INC. 4
each of the resonant wavelengths λ1 and
λ2 corresponding to the resonant frequen-
cies ω1 and ω2, respectively,
wherein the electromagnetic resonator
structures are designed to have Q 1>100
and Q 2>100.
Id. col. 11 ll. 39–58, col. 11 l. 65 to col. 12 l. 18 (emphases
added); J.A. 92–94 (’734 patent, Certificates of Correc-
tion). Claims 2–5, 20–22, 25–26, 29–30, 33–34, 37–38, 58,
61–62, 67, and 69 directly or indirectly depend from claim
1. See ’734 patent col. 11 l. 39 to col. 14 l. 49. Claims 7,
13, 19, 41–42, 45–46, 49–50, 53–54, 57, 59–60, 64–65, 68,
and 70 directly or indirectly depend from claim 6. Id. col.
11 l. 65 to col. 14 l. 52.
On June 21, 2021, InductEV Inc. (“InductEV”)1 filed
the IPR petition underlying this appeal, challenging
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 of the ’734
patent as obvious over Stark2 (ground 1) and claims 61–
62, 64, and 65 of the ’734 patent as obvious over either
Stark alone or the combination of Stark and Mecke3
1 Appellee changed its name from Momentum Dy-
namics Corporation to InductEV Inc. during the course of
the underlying proceedings. See Decision at n.1; J.A. 97.
For simplicity, we refer to Appellee as InductEV through-
out this opinion.
2 Joseph C. Stark, III, Wireless Power Transmission
Utilizing a Phased Array of Tesla Coils (2004) (M. Eng.
thesis, Massachusetts Institute of Technology), J.A. 1557–
8579 (“Stark”).
3 R. Mecke & C. Rathge, High Frequency Resonant
Inverter for Contactless Energy Transmission over Large
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WITRICITY CORP. v. INDUCTEV INC. 5
(ground 2).4 J.A. 113, 118, 181. The Board initially
denied institution of the IPR on December 10, 2021. J.A.
236–61. However, the Board later granted a request for
rehearing and instituted the IPR on March 16, 2022. J.A.
287–302. On March 6, 2023, the Board issued its Final
Written Decision concluding that InductEV had shown by
a preponderance of the evidence that all challenged
claims were unpatentable as obvious over either Stark
alone or the combination of Stark and Mecke. Decision at
*1, *31–32.
WiTricity timely appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
II. STANDARD OF REVIEW
“We review the Board’s legal conclusions de novo and
its fact findings for substantial evidence.” Game & Tech.
Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1348 (Fed.
Cir. 2019). “Whether a claimed invention is unpatentable
as obvious is a question of law that is reviewed de novo,
based on underlying findings of fact reviewed for substan-
tial evidence.” Redline Detection, LLC v. Star Envirotech,
Inc., 811 F.3d 435, 449 (Fed. Cir. 2015). “Whether an
ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.”
WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir.
2016).
“Substantial evidence means such relevant evidence
as a reasonable mind might accept as adequate to support
Air Gap, 2004 IEEE 35 TH ANNUAL P OWER ELECS .
SPECIALIST CONF . (June 20, 2004) (“Mecke”), see Decision
at *2; J.A. 109.
4 Grounds 1 and 2 of the IPR petition both allege
that claims 61 and 64 are unpatentable under 35 U.S.C.
§ 103 over Stark.
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WITRICITY CORP. v. INDUCTEV INC. 6
a conclusion.” FanDuel, Inc. v. Interactive Games LLC,
966 F.3d 1334, 1343 (Fed. Cir. 2020) (internal quotation
marks and citation omitted). “The substantial evidence
standard . . . involves examination of the record as a
whole, taking into account evidence that both justifies and
detracts from an agency’s decision.” OSI Pharms., LLC v.
Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (internal
quotation marks and citation omitted).
“Decisions related to compliance with the Board’s
procedures are reviewed for an abuse of discretion.”
Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374,
1379 (Fed. Cir. 2018). “An abuse of discretion is found if
the decision: (1) is clearly unreasonable, arbitrary, or
fanciful; (2) is based on an erroneous conclusion of law;
(3) rests on clearly erroneous fact finding; or (4) involves a
record that contains no evidence on which the Board could
rationally base its decision.” Bilstad v. Wakalopulos, 386
F.3d 1116, 1121 (Fed. Cir. 2004) (internal quotation
marks and citations omitted).
III. D ISCUSSION
On appeal, WiTricity argues that the Board erred by
finding the challenged claims obvious over Stark. Appel-
lant’s Br. 13–30. WiTricity also contends that the Board
erred by determining that WiTricity’s sur-reply raised a
new argument and declining to consider this new argu-
ment. Id. at 31–41. We find both arguments unpersua-
sive.
A.
WiTricity challenges the Board’s obviousness deter-
mination, focusing on the Board’s findings based on Stark.
See Appellant’s Br. 13–30. Specifically, WiTricity argues
that the Board erred in finding that an ordinarily skilled
artisan would have been motivated to modify the proto-
type system described in Stark to utilize Q-values greater
than 100, as required by the claims at issue. See, e.g., id.
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at 13–14; Oral Arg. 1:01–40, https://oralarguments.cafc.us
courts.gov/default.aspx?fl=23-1916_12022024.mp3. We
disagree.
Stark is a master’s thesis that generally “discusses
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.” J.A. 1559. Chapters
one through six of Stark cover the underlying theory
behind coupled resonant systems and include discussion
of simulations of hypothetical circuits. See generally J.A.
1567–700. In chapters seven and eight, Stark then goes
on to describe a prototype circuit built by the author and
to compare experimental test data from the prototype
with the earlier-discussed theoretical models. See gener-
ally J.A. 1701–76.
In concluding that an ordinarily skilled artisan would
have been motivated to modify Stark’s prototype circuit to
utilize Q-values greater than 100, the Board identified
Figures 3-9 and 4-3 of Stark as disclosing “Q 1=Q 2=1,000”
and “the benefits of having high Q values,” respectively.
Decision at *17 (referring to J.A. 1609 (Figure 3-9); J.A.
1657 (Figure 4-3) (disclosing that higher Q-values corre-
spond to improved energy transfer efficiency)); see also id.
at *8–9, *14–16. The Board relied on Stark’s explanation
that “[t]here is no fundamental limit to the unloaded
energy transfer efficiency save for constraints on the
quality factors and the coupling coefficient.” Id. at *17
(quoting J.A. 1657) (alteration in original); see also id. at
*9, *15. The Board further stated that chapter five of
Stark instructs that “[u]sing the results of the previous
chapters, it is now possible to design a coupled resonant
system.” Id. at *8 (quoting J.A. 1665) (alteration in
original); see also id. at *17.
The Board also credited the testimony of Dr. Young,
InductEV’s expert, that an ordinarily skilled artisan
would have been able to use the formulas disclosed in
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Stark to select hardware components to achieve a circuit
with Q-values of 1,000. Id. at *9 (citing J.A. 1295–99
¶¶ 195–98); see also J.A. 9371–72 ¶¶ 24–25. Dr. Young
further testified that ordinarily skilled artisans have
known for decades that high Q-values from ten thousand
to the order of a hundred thousand were attainable. J.A.
1227–30 ¶¶ 82–84 (explaining that a 1955 article called
“The Story of Q,” see J.A. 2009–22, disclosed “cavity
resonators” as being able to operate with Q-values up to
10,000); see also J.A. 1779 (discussing cavity resonators).
Dr. Young and Dr. Toliyat, WiTricity’s expert, also both
agreed that ordinarily skilled artisans commonly use
simulations to predict real circuit behavior. See J.A. 9259
at 122:10–23; J.A. 9370–71 ¶ 23.
The portions of Stark cited by the Board and the tes-
timony of the parties’ experts suffice as substantial evi-
dence to support the Board’s conclusion that an ordinarily
skilled artisan would have been motivated to modify the
prototype system described in Stark to utilize Q-values
greater than 100. We do not agree with WiTricity’s
assertion that the Board improperly cherry-picked sec-
tions of Stark in performing its analysis. Appellant’s Br.
15 (quoting Bausch & Lomb, Inc. v. Barnes-
Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir.
1986)). Rather, the Board’s thorough discussion demon-
strates that it considered the relevant sections of Stark in
reaching its conclusion. See, e.g., Decision at *4–20; see
also Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316,
1328 (Fed. Cir. 2017) (“[F]ailure to explicitly discuss every
issue or every piece of evidence does not alone establish
that the tribunal did not consider it.”). WiTricity also
provides no expert testimony to support its proposed
reading of Stark. See Oral Arg. 2:45–6:41; Appellant’s
Reply Br. 9–10.
At bottom, WiTricity disagrees with the Board’s rea-
sonable interpretation of Stark’s disclosure. However, “it
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is not for us to second-guess the Board’s assessment of the
evidence.” Velander v. Garner, 348 F.3d 1359, 1378 (Fed.
Cir. 2003). In sum, we conclude that substantial evidence
supports the Board’s obviousness determination.
B.
WiTricity argues that the Board abused its discretion
by declining to address its sur-reply argument that “in-
creasing the number of beats could render the output of
the Stark Tesla coils ‘useless.’” Appellant’s Br. 31–32
(quoting J.A. 511–12); see Decision at *19. Contrary to
the Board’s determination, WiTricity argues that this
argument was not a new argument raised for the first
time in the sur-reply, but merely “clarified and elaborat-
ed” on arguments in its patent owner’s response. Appel-
lant’s Br. 32. WiTricity also contends that its sur-reply
argument merely responded to the InductEV’s petitioner’s
reply argument that “increasing Q was a suitable option
for increasing efficiency.” Appellant’s Br. 36 (quoting J.A.
474) (cleaned up). We disagree.
In its patent owner’s response, WiTricity argued that
“increasing the Q values to, for example, 1000, . . . would
alter the voltage waveform of the prototype circuit by
drastically increasing the number of beats in the wave-
form” and that “[t]here is no teaching in Stark that it
would be desirable to alter the waveform of the prototype
circuit in this way.” J.A. 383; see Appellant’s Br. 33. By
contrast, WiTricity argued in its sur-reply that “increas-
ing Q 1 and Q 2 . . . in Stark’s prototype circuit to values in
the ‘hundreds or thousands’ . . . . will produce voltage
waveforms having many ‘beats,’ which renders ‘useless’
the output of the Stark Tesla coils, according to Stark.”
J.A. 511–12 (emphases omitted); see Appellant’s Br. 34.
The Board reasonably understood WiTricity’s sur-
reply as raising a new theory of patentability, as opposed
to merely responding to arguments in InductEV’s peti-
tioner’s reply or expanding WiTricity’s patent owners’
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WITRICITY CORP. v. INDUCTEV INC. 10
response position. See, e.g., Rembrandt Diagnostics, LP v.
Alere, Inc., 76 F.4th 1376, 1383 (Fed. Cir. 2023) (“We have
held that in some circumstances the Board acts within its
discretion when declining to consider . . . a new theory of
patentability raised by patent owner in sur-reply.”). “A
sur-reply may only respond to arguments raised in the
corresponding reply . . . .” 37 C.F.R. § 42.23(b); see Par-
kerVision, Inc. v. Vidal, 88 F.4th 969, 980–81 (Fed. Cir.
2023) (holding the Board did not abuse its direction in
excluding ParkerVision’s sur-reply arguments “because
they proceeded in a ‘new direction’ relative to ParkerVi-
sion’s patent owner’s response”). In short, a sur-reply
“may be proper if it is responsive and simply expands on
previously raised arguments.” Rembrandt, 76 F.4th at
1384. Comparing the positions in WiTricity’s patent
owner’s response and sur-reply, it is evident that WiTrici-
ty changed its posture from arguing that Stark provides
no teachings regarding the desirability of altering the
circuit’s waveform by increasing Q-values to asserting
that Stark affirmatively teaches away from altering the
waveform in this manner. Compare J.A. 383 with J.A.
511–12. Accordingly, we conclude that the Board did not
abuse its discretion by declining to consider WiTricity’s
new sur-reply argument.
Even if we were to consider WiTricity’s sur-reply ar-
gument, we agree with the Board that it is unpersuasive.
Decision at *19. There is substantial evidence to support
the Board’s conclusion that Q-values greater than 100
would not render the prototype circuit’s output useless.
See, e.g., J.A. 1609 (disclosing Q-values greater than 100);
J.A. 1227–30 ¶¶ 82–84 (explaining that Q-values up to
the hundreds of thousands have been attainable for
decades). WiTricity again directs our attention to various
sections of Stark that purportedly support the opposite
conclusion. See, e.g., Oral Arg. 13:47–14:24 (referring to
J.A. 1586–89, 1763); Appellant’s Br. 40–41 (citing J.A.
1586–89, 1645–46). Here too, WiTricity points to no
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expert testimony in support of its proposed interpretation.
See Oral Arg. 9:42–10:20, 12:23–45. WiTricity’s argu-
ment, at its core, is another improper request for us to
depart from the Board’s reasonable interpretation of
Stark. See Velander, 348 F.3d at 1378. Accordingly, we
conclude that the Board did not err in its treatment of
WiTricity’s sur-reply argument.
IV. CONCLUSION
We have considered WiTricity’s remaining arguments
and find them unpersuasive. We affirm the Board’s final
written decision.
AFFIRMED
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