Trials@uspto.

gov
571-272-7822

Paper No. 20
Entered: November 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
OSSIA, INC.,
Petitioner,
v.
ENERGOUS CORPORATION,
Patent Owner.
____________
Case PGR2016-00024
Patent 9,124,125 B2
____________
Before JAMESON LEE, JUSTIN T. ARBES, and KERRY BEGLEY,
Administrative Patent Judges.
LEE, Administrative Patent Judge.

DECISION
Institution of Post-Grant Review
37 C.F.R. 42.208

PGR2016-00024
Patent 9,124,125 B2
I.
A.

INTRODUCTION

Background

Ossia, Inc. (Petitioner) filed a Petition (Paper 2, Pet.) for

post-grant review of U.S. Patent No. 9,124,125 B2 (Ex. 1001, the 125
patent). Paper 1. The Petition challenges the patentability of claims 118
of the 125 patent. Energous Corporation (Patent Owner) filed a
Preliminary Response. Paper 10 (Prelim. Resp.). We review the Petition
under 35 U.S.C. 324, which provides that post-grant review shall not be
instituted unless the information presented in the petition filed under
section 321, if such information is not rebutted, would demonstrate that it is
more likely than not that at least 1 of the claims challenged in the petition is
unpatentable. 35 U.S.C. 324(a).
Having considered both the Petition and the Preliminary Response, we
determine that Petitioner has not demonstrated it is more likely than not that
it would prevail in showing the unpatentability of claims 14 and 718 on
any ground. However, Petitioner has demonstrated it is more likely than not
that it would prevail in showing claims 5 and 6 are unpatentable under
35 U.S.C. 112(b). We institute a post-grant review only of claims 5 and 6
and only on the alleged ground of indefiniteness under 35 U.S.C. 112(b).
B.

Related Matters

Petitioner also has filed another petition for post-grant review of

claims 17, 915, 17, and 18 of the 125 patent, in PGR2016-00023 on
different grounds of unpatentability. See Pet. 74.

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Patent 9,124,125 B2
C.

The 125 Patent

The 125 patent relates to wireless power transmission to charge

electronic devices. Ex. 1001, 1:1441. The 125 patent explains that a user
of electronic devices may have to carry chargers or plug into a wall power
supply to charge an electronic device. Id. at 1:2630. It further explains that
current solutions to the charging problem may include an inductive pad
employing magnetic induction or resonating coils, but that such a solution
still requires that the electronic device may have to be placed in a specific
place and thus the device may not be portable while being charged. Id. at
1:3236. The 125 patent states: [T]here is a need for a wireless power
transmission system where electronic devices may be powered without
requiring extra chargers or plugs, and where the mobility and portability of
electronic devices may not be compromised. Id. at 1:3841.
In the Summary of the Invention portion of the Specification, the
125 patent states: Transmitters may be employed for sending Radio
frequency (RF) signals to electronic devices which may incorporate
receivers. Such receivers may convert RF signals into suitable electricity for
powering and charging a plurality of electric devices. Id. at 1:4852.
Figure 1 of the 125 patent is reproduced below.

PGR2016-00024
Patent 9,124,125 B2

Figure 1 illustrates wireless power transmission by using pocket-forming.

Id. at 2:6465. Regarding Figure 1, the Specification states:
FIG. 1 illustrates wireless power transmission 100 using
pocket-forming. A transmitter 102 may transmit controlled
Radio RF waves 104 which may converge in 3-d space. These
Radio frequencies (RF) waves may be controlled through phase
and/or relative amplitude adjustments to form constructive and
destructive interference patterns (pocket-forming). Pockets of
energy 108 may be formed at constructive interference patterns
and can be 3-dimensional in shape whereas null-spaces may be
generated at destructive interference patterns. A receiver 106
may then utilize pockets of energy 108 produced by pocketforming for charging or powering an electronic device, for
example a laptop computer 110 and thus effectively providing
wireless power transmission.
Id. at 2:643:9.
Figure 2 of the 125 patent is reproduced below.

PGR2016-00024
Patent 9,124,125 B2

Figure 2 illustrates how two waveforms generate a unified waveform. Id. at

3:1619. Regarding Figure 2, the Specification states:
FIG. 2 depicts a wireless power transmission
principle 200, where two waveforms, for example waveform 202
and waveform 204, as depicted in FIG. 2A may result in a unified
waveform 206 as depicted in FIG. 2B. Such unified waveform
206 may be generated by constructive and destructive
interference patterns between waveform 202 and waveform 204.
As depicted in FIG. 2A, at least two waveforms with
slightly different frequencies such as waveform 202 and
waveform 204 may be generated at 5.7 Gigahertz (GHz) and
5.8 GHz respectively. By changing the phase on one or both
frequencies using suitable techniques such as pocket-forming,
constructive and destructive interferences patterns may result in
unified waveform 206. Unified waveform 206 may describe
pockets of energy 108 and null-spaces along pocket-forming,
such pockets of energy 108 may be available in certain areas
where a constructive interference exists; such areas may include
one or more spots which may move along pocket-forming
trajectory and may be contained into wireless power range 208
X1. Wireless power range X1 may include a minimum range and
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Patent 9,124,125 B2
a maximum range of wireless power transmission 100, which
may range from a few centimeters to over hundreds of meters.
In addition, unified waveforms 206 may include several
null-spaces, which may be available in certain areas where a
destructive interference exists, such areas may include one or
more null-spaces which may move along pocket-forming
trajectory and may be contained into wireless power range 210
X2. Wireless power range 210 X2 may include a minimum range
and a maximum range of wireless power transmission 100, which
may range from a few centimeters to over hundreds of meters.
Id. at 3:1645.
Figure 3 is reproduced below.

Figure 3 illustrates a selective range resulting from pocket-forming. Id. at

3:4648. Regarding Figure 3, the Specification states:
FIG. 3 depicts wireless power transmission with selective
range 300, where a transmitter 302 may produce pocket-forming
for a plurality of receivers 308. Transmitter 302 may generate
pocket-forming through wireless power transmission with
selective range 300, which may include one or more wireless
charging radii 304 and one or more radii of null-space 306. A
plurality of electronic devices may be charged or powered in
wireless charging radii 304.
Id. at 3:4653.
Figure 4 is reproduced below.

PGR2016-00024
Patent 9,124,125 B2

Figure 4 illustrates another selective range resulting from pocket-forming.

Id. at 3:6567. Regarding Figure 4, the Specification states:
FIG. 4 depicts wireless power transmission with selective
range 400, where a transmitter 402 may produce pocket-forming
for a plurality of receivers 406. Transmitter 402 may generate
pocket-forming through wireless power transmission with
selective range 400, which may include one or more wireless
charging spots 404. A plurality of electronic devices may be
charged or powered in wireless charging spots 404. Pockets of
energy 108 may be generated over a plurality of receivers 406
regardless [of] the obstacles 408 surrounding them, such effect
may be produced because destructive interference may be
generated in zones or areas where obstacles 408 are present.
Therefore, pockets of energy 108 may be generated through
constructive interference in wireless charging spots 404.
Location of pockets of energy 108 may be performed by tacking
receivers 406 and by enabling a plurality of communication
protocols by a variety of communication systems such as,
Bluetooth technology, infrared communication, WI-FI, FM radio
among others.
Id. at 3:654:15.
Among the challenged claims, claims 1, 4, 5, 7, 10, 13, and 18 are
independent, and are reproduced below, with bracketed lettering inserted for
identifying specific limitations:

PGR2016-00024
Patent 9,124,125 B2
1.
A method for wireless power transmission with selective
range to power a portable electronic device, comprising:
[a] generating pocket-forming RF waves from a transmitter
through an antenna connected to the transmitter;
[b] accumulating pockets of energy in regions of space in the
form of constructive interference patterns of the generated
RF waves;
[c] employing a selective range for charging or powering the
electronic device
[d] in a predetermined variety of spots with the accumulated
pockets of energy surrounded by null-spaces without
accumulated pockets of energy; and
[e] implementing an adaptive power focusing to avoid
obstacles interfering with the RF signals between the
receiver and the transmitter for regulating two or more
receivers providing charging or powering of the portable
electronic device.
4.
A method for wireless power transmission with selective
range to power a portable electronic device, comprising:
[a] generating pocket-forming RF waves from a transmitter
through an antenna connected to the transmitter;
[b] accumulating pockets of energy in regions of space in the
form of constructive interference patterns of the generated
RF waves;
[c] employing a selective range for charging or powering the
electronic device
[d] in a predetermined variety of spots with the accumulated
pockets of energy surrounded by null-spaces without
accumulated pockets of energy,
[e] wherein the null spaces are generated in the form of
destructive interference patterns of the generated RF
waves and the null-spaces are distributed in predetermined
selective zones around the variety of spots.

PGR2016-00024
Patent 9,124,125 B2
5.
A method for wireless power transmission with selective
range to power a portable electronic device, comprising:
[a] generating pocket-forming RF waves from a transmitter
through an antenna connected to the transmitter;
[b] accumulating pockets of energy in regions of space in the
form of constructive interference patterns of the generated
RF waves; and
[c] employing a selective range for charging or powering the
electronic device
[d] in a predetermined variety of spots with the accumulated
pockets of energy surrounded by null-spaces without
accumulated pockets of energy,
[e] wherein the employing the selective range increases
control over electronic devices to receive charging by
limiting the operation area of certain portable electronic
devices to eliminate pockets of energy in sensitive areas
including people or other equipment affected by pockets
of energy.
7.
A system for wireless power transmission with selective
range to power a portable electronic device, comprising:
[a] a transmitter for generating pocket-forming at least two
RF waves through an antenna connected to the transmitter;
[b] a micro-controller within the transmitter for controlling
the pocket-forming the at least two RF waves to
accumulate pockets of energy in regions of space in the
form of constructive interference patterns of the generated
RF waves; and
[c] a selective range for charging or powering the electronic
device
[d] in a predetermined variety of spots in regions of space
with the accumulated pockets of energy surrounded by
null-spaces without accumulated pockets of energy,
[e] wherein the micro-controller changes a phase on one or
more RF waves in pocket-forming with constructive and
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Patent 9,124,125 B2
destructive interference patterns resulting in a unified
waveform in the predetermined variety of spots for
charging the electronic device.
10. A system for wireless power transmission with selective
range to power a portable electronic device, comprising:
[a] a transmitter for generating at least two RF waves and
short RF control signals having at least two RF antennas
to transmit at least two RF waves through the antennas
converging in 3-d space to accumulate as pockets of
energy in the form of constructive interference patterns of
RF waves;
[b] a micro-controller within the transmitter for controlling
constructive interference patterns of the RF waves to
accumulate pockets of energy in predetermined areas or
regions in 3-D space and for controlling the destructive
interference patterns of the RF waves to form null-spaces
surrounding the pockets of energy,
[c] wherein the constructive interference patterns of RF
waves form charging hot spots of a predetermined selected
range for charging portable electronic devices and
[d] wherein the destructive interference patterns of RF waves
form null spots of a predetermined selected range
surrounding the charging spots without charging energy
therein, and
[e] wherein the hot spots include one or more wireless
charging radii and one or more null-space radii whereby
the hot spots are created for enabling restrictions for
powering and charging the electronic device.
13. A system for wireless power transmission with selective
range to power a portable electronic device, comprising:
[a] a transmitter for generating at least two RF waves and
short RF control signals having at least two RF antennas
to transmit at least two RF waves through the antennas
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Patent 9,124,125 B2
converging in 3-d space to accumulate as pockets of
energy in the form of constructive interference patterns of
RF waves;
[b] a micro-controller within the transmitter for controlling
constructive interference patterns of the RF waves to
accumulate pockets of energy in predetermined areas or
regions in 3-D space and for controlling the destructive
interference patterns of the RF waves to form null-spaces
surrounding the pockets of energy,
[c] wherein the constructive interference patterns of RF
waves form charging hot spots of a predetermined selected
range for charging portable electronic devices and
[d] wherein the destructive interference patterns of RF waves
form null spots of a predetermined selected range
surrounding the charging spots without charging energy
therein, and
[e] further including a receiver connected to the portable
electronic device having a micro-controller to
communicate with the transmitter micro-controller to
generate wireless charging spots over a plurality of
receivers regardless of the obstacles surrounding the
receivers for the predetermined selected range from the
transmitter.
18. A system for wireless power transmission with selective
range to power a portable electronic device, comprising:
[a] a transmitter for generating at least two RF waves and
short RF control signals having at least two RF antennas
to transmit at least two RF waves through the antennas
converging in 3-d space to accumulate as pockets of
energy in the form of constructive interference patterns of
RF waves;
[b] a micro-controller within the transmitter for controlling
constructive interference patterns of the RF waves to

11

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Patent 9,124,125 B2
accumulate pockets of energy in predetermined areas or
regions in 3-D space and for controlling the destructive
interference patterns of the RF waves to form null-spaces
surrounding the pockets of energy,
[c] wherein the constructive interference patterns of RF
waves form charging hot spots of a predetermined selected
range for charging portable electronic devices and
[d] wherein the destructive interference patterns of RF waves
form null spots of a predetermined selected range
surrounding the charging spots without charging energy
therein, and
[e] wherein the antennas operate in predetermined
frequencies at generally 900 MHz, 2.4 GHz, 5.7 GHz to
transmit at least two RF waveforms to create a unified
waveform for a preselected range for charging hot spots
and null-space spots.
D.

The Alleged Grounds of Unpatentability

1.

Claims 118 are unpatentable under 35 U.S.C. 112(a) for lack

of enabling disclosure in the Specification;

2.

Claims 118 are unpatentable under 35 U.S.C. 112(a) for lack

of written description in the Specification;

3.

Claims 19 and 16 are unpatentable as indefinite under

35 U.S.C. 112(b).1

Petitioner states on page 28 of the Petition that claims 118 are challenged,
but includes arguments only as to claims 19 and 16 on pages 6674.
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Patent 9,124,125 B2
II.
A.

ANALYSIS

Eligibility for Post-Grant Review

The 125 patent issued on September 1, 2015, from an application

filed on June 25, 2013. Ex. 1001, (22), (45). It does not claim the benefit of
any earlier filing date. Under the Leahy-Smith America Invents Act
(AIA) (Pub. L. No. 112-29, 125 Stat. 284 (2011), 3(n)(1), 6(f)(2)(A)), a
patent is eligible for post-grant review if it issued from an application that
contains or contained at any time a claim that has an effective filing date on
or after March 16, 2013. The 125 patent is such a patent and thus is
available for post-grant review.
A petition for post-grant review may only be filed not later than the
date that is 9 months after the date of the grant of the patent or of the
issuance of a reissue patent, as the case may be. 35 U.S.C. 321(c). The
Petition was filed on May 31, 2016, within nine months of the grant of the
125 patent. Petitioner certifies that the 125 patent is available for
post-grant review and also that it is not barred or estopped from requesting
post-grant review. Pet. 1819.
B.

Claim Construction

In a post-grant review, we interpret a claim term in an unexpired

patent according to its broadest reasonable construction in light of the
specification of the patent in which it appears. 37 C.F.R. 42.200(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016)
(upholding the use of the broadest reasonable interpretation standard).
Under that standard, and absent any special definitions, we assign claim
terms their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art at the time of the invention, in the context of the
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Patent 9,124,125 B2
entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
Claim terms need only be construed to the extent necessary to resolve
the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
(Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Engg, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999). For purposes of this Decision, no express construction
is necessary except in connection with the phrase below.
generating pocket-forming RF waves
from a transmitter
through an antenna connected to the transmitter
The entire phrase reproduced above is a limitation appearing in each
of independent claims 1, 4, and 5. At issue within this phrase is the term an
antenna. A corresponding recitation exists in independent claim 7, which
reads: a transmitter for generating pocket-forming at least two RF waves
through an antenna connected to the transmitter (emphasis added). The
question concerns not the word antenna, specifically, but whether the term
an antenna covers the case of one (i.e., single) antenna. Petitioner asserts
that it does. Pet. 22. We agree.
As noted by Petitioner, it is well established that the indefinite article
a or an means one or more in open-ended claims defined by use of the
word comprising such as the challenged claims in this proceeding. Pet. 22
(citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir.
2000)). Without regard to whether a claim is open-ended, an antenna
would mean one antenna according to its plain and ordinary meaning in the
English language, unless the inventor acted as his or her own lexicographer
in redefining the indefinite article an to mean more than one. We do not

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Patent 9,124,125 B2
determine, and Patent Owner does not contend, that the inventors of the
125 patent acted as their own lexicographers in re-defining, within the
Specification, the meaning of the indefinite article an.
Patent Owner characterizes Petitioners position as restrict[ing] the
above-quoted phrase to the case of only a single transmitter and only a single
antenna. Prelim. Resp. 18. That is incorrect. Petitioners position is that
an antenna covers within its scope the case of only one antenna, as well as
the case of more than one antenna. Pet. 22.
Patent Owner also argues that because The Summary of the Invention
portion of the Specification expressly requires a transmitter to include at
least two antenna elements, the term an antenna in the above-identified
phrase effectively means at least two antenna[s]. Prelim. Resp. 1718.
We are unpersuaded, for reasons discussed below.
First, nothing in The Summary of the Invention portion of the
Specification expressly requires a transmitter to include at least two antenna
elements as is argued by Patent Owner. Instead, The Summary of the
Invention permissively, i.e., in a non-limiting manner, refers to transmitters
having at least two antenna elements. Specifically, it states:
The present disclosure provides various transmitter
arrangements which can be utilized for wireless power
transmission using suitable techniques such as pocket-forming.
Transmitters may be employed for sending Radio frequency
(RF) signals to electronic devices which may incorporate
receivers. . . .
A transmitter including at least two antenna elements may
generate RF signals through the use of one or more Radio
frequency integrated circuit (RFIC) which may be managed by
one or more microcontrollers.

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Patent 9,124,125 B2
Ex. 1001, 1:4557 (emphasis added). Even assuming that antenna
element and antenna are used interchangeably in the Specification, as
Patent Owner urges, 2 the above-quoted text does not set forth a definition of
transmitter that requires at least two antennas or rise to the level of a
disclaimer by the inventors of a scope of invention that covers a transmitter
that includes only one antenna.
Second, even assuming that a transmitter must include at least two
antennas, the above-quoted recitation does not require pocket-forming RF
waves to be generated by use of all such antennas.
Accordingly, we construe the above-quoted recitation as sufficiently
broad to cover the case of one transmitter generating pocket-forming RF
waves through one antenna connected to the transmitter.
C.

Claims 118 as Not Supported by Enabling Disclosure

Section 112(a) of Title 35, United States Code, provides (emphasis

added):
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same . . . .
The enabling disclosure requirement of 35 U.S.C. 112(a) is separate
and distinct from the written description requirement. Ariad Pharm., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc). The test
of enablement is whether one reasonably skilled in the art could make or use

There is insufficient evidence in the record, as developed thus far, to

support that conclusion.
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the [claimed] invention from the disclosures in the patent coupled with
information known in the art without undue experimentation. United States
v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988).
A disclosure can be enabling even though some experimentation is
necessary. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1384 (Fed. Cir. 1986). The issue is not whether some experimentation is
required but whether, if experimentation is necessary, the level of required
experimentation is undue. See, e.g., In re Vaeck, 947 F.2d 488, 495 (Fed.
Cir. 1991); In re Angstadt, 537 F.2d 498, 504 (CCPA 1976) (The key word
is undue, not experimentation.). The factors for consideration in making
the determination of whether the level of experimentation required is
undue include (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the art,
(6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
With respect to Factor (6), the level of ordinary skill in the art,
Dr. Stephen B. Heppe, Petitioners declarant, testified:
Based on these considerations, it is my opinion that, at the
earliest filing date of the 125 patent, which I understand to be
June 25, 2013, a person of ordinary skill in the art would have a
Masters degree in electrical engineering or physics, specializing
in antennas or RF propagation, with one or two years of practical
experience in the analysis or design of phased-array antennas.
Additional academic training could substitute for practical
experience, and additional practical experience (augmented with
self-study) could substitute for formal academic training.

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Ex. 1005 21. Also with respect to Factor (6), Dr. Heppe testified:
Systems for target tracking and direction-finding are an
academic area and engineering discipline in their own right;
however, they rely on the same mathematical foundation as
needed for dynamic beamforming and null-steering. Therefore,
I have not assessed any additional training needed for this aspect
of the problem.
Id. 20. We understand this testimony as representing that with regard to
features of the claimed invention having to do with target tracking and
direction-finding by use of radio waves, the level of ordinary skill in the art
could be higher than that Dr. Heppe has expressed in Paragraph 21 of his
Declaration (Ex. 1005), but that Dr. Heppe has not made an assessment of
whether indeed it is higher or by how much it is higher.
Patent Owner does not dispute the level of ordinary skill in the art as
alleged by Petitioner. On this record, we find that the level of ordinary skill
in the art is that as articulated by Dr. Heppe, as reproduced above.
1.

Claim 1
Limitation [1a]

With respect to limitation [1a], Petitioner asserts that the 125 patent
does not enable one with ordinary skill in the art to generate pocketforming ( III(C)) RF waves from a transmitter through a single antenna
connected to the transmitter. Pet. 22. Petitioner explains:
Instead, the 125 patent merely provides a bare description
of a transmitter that may generate two or more RF signals
substantially all of which pass through one or more RF
antenna. (Ex. 1001, 2:3944.) The 125 patent provides no
technical guidance explaining how a [person of ordinary skill in
the art] could use a single antenna . . . to transmit pocket-forming
RF signals. (Ex. 1005, 101, 102.)

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Id. In connection with this argument, Petitioner adds that it in no way
concedes that the 125 patent enables the embodiment having more than one
antenna. Id. n.9. Petitioner further explains:
Projecting RF waves such that they combine in a specific manner
at a specific area is a highly difficult technical feat involving a
large number of factors such as the frequency of the RF waves,
the amount of phase to be shifted for each of the RF waves, and
the direction at which the RF waves are to be transmitted. (Id.,
106, 107.) Such a feature would be a challenge, if not
impossible, to accomplish using a single antenna. (Id., 103
104, 109.) Yet, the 125 patent fails to provide any technical
details of the transmitter or even Figures illustrating the
components that would enable the transmitter to accomplish this
feat. (Id., 106.) Given the difficulty and technical challenges
involved, there would be a great amount of experimentation
required, especially given the lack of guidance from the 125
patent. (Id., 107, 108, 110.)
Id. at 2324 (footnote omitted). With regard to the 993 publication,3 the
disclosures of which have been incorporated by reference into the
125 patent (see Ex. 1001, 1:610), Petitioner states:
But the 993 publication lacks the requisite guidance to
make or use the illustrated transmitter that is capable of
generating pocket-forming RF waves, as claimed. (Ex. 1005,
112.) The necessity of a proprietary chip without explanation
demonstrates the lack of enablement within the 993 publication.
(Id.) Rather, Patent Owner is requiring a [person of ordinary skill
in the art] to perform undue experimentation to try and arrive at
the same invention (including the proprietary chip.) (Id., 113)
In addition, the 993 publication only illustrates and
describes a transmitter having two antenna. (Ex. 1003, Fig. 1.)
The combination of the technical challenge of constructing the
3

U.S. Patent Application Publication No. 2014/0008993 A1 (Jan. 9, 2014)

(Ex. 1003).
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Patent 9,124,125 B2
claimed single antenna with the only teaching being a
requirement for a minimum of two antennas can only mean that,
even if its possible, achieving the claimed feature would require
substantial and undue experimentation. (Ex. 1005, 111.)
Pet. 24.
For several reasons, as explained below, we determine that Petitioner
has not shown it is more likely than not that with respect to limitation [1a],
the 125 patent disclosure is non-enabling for one with ordinary skill in the
art.
The 993 publication does not require the use of a proprietary chip but
only states that a proprietary chip may be included. Ex. 1003 30. Even if
a proprietary chip is used, it does not mean either (1) that insufficient
disclosure has been made, with respect to one with ordinary skill in the art,
on how to make and use any claimed invention, or (2) that whatever is
contained in the proprietary chip is the product of undue experimentation.
Petitioners arguments place excessive focus on one factor regarding
specific guidance in the Specification, to the near total exclusion of another
important factor under In re Wands, supra, i.e., the state of the art with
regard to what one with ordinary skill in the art is capable of doing. We
understand the assertion about the lack of technical details and specific
technical guidance in the Specification of the 125 patent, but that is only a
part of the story. Equally important, if not more, is the question of why is
further technical detail and guidance necessary. For that question, Petitioner
has not provided an adequate or meaningful answer in the Petition.
Petitioner has not meaningfully explained (1) the technical base line
or entry point that reflects what one with ordinary skill in the art is able to do
without additional technical guidance, (2) what difficulty one with ordinary
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skill in the art would have if he or she attempted to make and use the
claimed invention, (3) what experimentation would be required for a person
with ordinary skill in the art to overcome such difficulties, or (4) why such
experimentation should be deemed undue. Without adequate information in
that regard, we are unable to assess just how much gap exists between the
level of disclosure contained in the 125 patent and what one with ordinary
skill in the art is able to accomplish. That fact remains true notwithstanding
Petitioners noting that the Specification of the 125 patent does not contain
detailed technical disclosure with respect to limitation [1a]. In that regard,
we note also that Dr. Heppe, Petitioners declarant, does not assert that the
feature of limitation [1a] is impossible to accomplish, as he asserts with
respect to another limitation of claim 1 (see Ex. 1005 110).
Petitioner argues that certain provisional patent applications of Patent
Owner describe the concept of beamforming where constructive interference
generates a beam, and state that the ability to beamform in this manner
requires a minimum of two antennas in the antenna array. Pet. 23 n.10.
However, the 125 patent does not claim priority to these provisional
applications, and does not incorporate by reference the disclosures of these
provisional applications. Also, the 125 patent refers to pocket-forming
rather than beamforming.
There is insufficient basis, on this record, to regard the provisional
application statements as Patent Owners admission that its claimed
invention lacks enabling disclosure with respect to limitation [1a]. This
argument does not make up for Petitioners failure to set forth sufficient
information in its Petition, as we have explained above.

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Given the high level of skill in the art, i.e., that a person of ordinary
skill would have a Masters degree in electrical engineering or physics,
specializing in antennas or RF propagation, with one or two years of
practical experience in the analysis or design of phased-array antennas,
where additional academic training could substitute for practical experience,
and additional practical experience (augmented with self-study) could
substitute for formal academic training, Petitioner has not established it is
more likely than not that the Specification lacks enabling disclosure for
limitation [1a].
Limitation [1b]
With respect to limitation [1b], which refers to accumulating pockets
of energy, Petitioner asserts that it is not possible to collect or gather
power. Pet. 25. Petitioner states: While it may be possible to collect or
gather energy (e.g., within a battery), it is nonsensical to describe power as
being collecting or gathering at any particular location or area because
power cannot be stored. Id. According to Petitioner, the limitation is a
violation of standard physics principles. Id. Petitioner states: Even
viewed in the most generous light, the 125 patent and 993 publication
merely provide a starting point, a direction for further research regarding
the concept of pockets of energy, but not the requisite guidance for a
[person of ordinary skill in the art] to implement the accumulating
feature. Id. at 27.
Petitioners arguments are misplaced. Limitation [1b] is this:
accumulating pockets of energy in regions of space in the form of
constructive interference patterns of the generated RF waves. The
limitation does not mean creating in free space a static storage of energy,
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like in a physical battery. Rather, it means creating in regions of space
locations where constructive interference patterns of RF (radio frequency)
waves exist. The recitation itself provides that the pockets of energy are in
the form of constructive interference patterns of the generated RF waves.
These pockets of energy would not remain when constructive interference
patterns are no longer present. Furthermore, Petitioners argument is
directed to the term power, which does not appear in limitation [1b], and
Petitioner has not explained why power would mean the same as energy
given the context of how the term is used in the claim. Accordingly,
Petitioner has not established it is more likely than not that the Specification
lacks enabling disclosure for limitation [1b].
Limitation [1c]
With respect to limitation [1c], Petitioner asserts that the disclosure of
the 125 patent, including what has been incorporated by reference from the
993 publication, does not provide any direction or guidance regarding how
to select a selective range and then how to employ it using an antenna.
Pet. 28. Petitioner states that although the text of the 125 patent provides a
description of selective range, the text lacks any guidance as to how to
make or use the described selective range. Id. Petitioner states that the
disclosure in the 993 publication about a receiver that generates a short
signal that would be used by a transmitter to identify and locate the receiver
does not provide any direction or guidance regarding how to select the
appropriate wireless charging distance, and then how to employ it as
required by the claim. Id.
The Petitions deficiencies with respect to limitation [1c] are
essentially the same as those discussed above with respect to limitation [1a].
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Specifically, Petitioner has not meaningfully explained (1) the technical base
line or entry point that reflects what one with ordinary skill in the art is able
to do without additional technical guidance, (2) what difficulty one with
ordinary skill in the art would have if he or she attempted to make and use
the claimed invention, (3) what experimentation would be required for a
person with ordinary skill in the art to overcome such difficulties, or (4) why
such experimentation should be deemed undue. Without adequate
information in that regard, we are unable to assess just how much gap exists
between the level of disclosure contained in the 125 patent and what one
with ordinary skill in the art is able to accomplish. That fact remains true
notwithstanding Petitioners noting that the Specification of the 125 patent
does not contain detailed technical disclosure with respect to limitation [1c].
Given the high level of skill in the art, Petitioner has not established it
is more likely than not that the Specification lacks enabling disclosure for
limitation [1c].
Limitation [1d]
With respect to limitation [1d], Petitioner asserts that the 125 patent
provides no guidance to a person of ordinary skill in the art on how to both
generate and distribute the null spaces in predetermined zones and to
determine which zones are most suitable for the null spots without undue
experimentation. Pet. 29. Petitioner states that the 125 patent provides no
technical details regarding the transmitter and antenna without delving into
the technical architecture and components that are necessary for constructing
a transmitter that can achieve the claimed function. Id. at 2829. Petitioner
asserts that the disclosure in the 993 publication about a receiver sending a
short signal to the transmitter to indicate the receivers position, and the
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transmitter establishing a channel by knowing the gain and phases coming
from the receiver does not provide any guidance to a [person of ordinary
skill in the art] regarding how the transmitter may generate different spots
having pockets of energy present therein, whose intended locations are
determined by the transmitter before the pockets of energy are formed. Id.
at 30.
Petitioners reference to there being no guidance on how to determine
which zones are most suitable for the null spots is misplaced. There is no
requirement that an enabling disclosure must reveal something that is the
most suitable. The rest of the arguments are deficient for essentially the
same reasons as those discussed above in connection with the arguments
presented for limitation [1c]. We do not reiterate the same reasoning here.
Given the high level of skill in the art, Petitioner has not established it is
more likely than not that the Specification lacks enabling disclosure for
limitation [1d].
Limitation [1e]
With respect to limitation [1e], Petitioner asserts that the 125 patent,
including the disclosure of the 993 publication, provide[s] no technical
guidance regarding how to avoid obstacles interfering with the RF signals
between the receiver and the transmitter. Pet. 31. Petitioner states that
neither the 125 patent nor the 993 publication provides the requisite
guidance regarding how to detect such obstacles, how to determine whether
such obstacles are interfering with the RF signals, and, most importantly,
how to avoid the obstacles once theyve been detected and determined to be
interfering. Id. Petitioner asserts, with regard to Figure 4 of the
993 publication, that neither the description in the 993 publication nor the
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conceptual illustration provided in Figure 4 provides guidance regarding the
technical components of the transmitter that enable it to perform the power
focusing technique. Id. at 32. Petitioner summarizes its argument as
follows: At most, the 125 patent and 993 publication provide a starting
point, a direction for further research with regard to the concept of adaptive
power-focusing, but not the requisite guidance to a [person of ordinary skill
in the art] on how to implement the adaptive power focusing feature. Id.
at 33.
Petitioners arguments for limitation [1e] are deficient for essentially
the same reasons as those discussed above in connection with the arguments
presented for limitation [1c]. We do not reiterate the same reasoning here.
Given the high level of skill in the art, Petitioner has not established it is
more likely than not that the Specification lacks enabling disclosure for
limitation [1e].
Limitations [1a] through [1e]
In reaching our conclusions above for each of limitations [1a] through
[1e], we have considered Petitioners argument (Pet. 2021) relying on
Automotive Technologies Inc. v. BMW of North America, 501 F.3d 1274,
1283 (Fed. Cir. 2007), and Genentech Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997), for the proposition that one may not rely on
what is well known in the art to supply that which is needed to constitute an
enabling disclosure for a novel aspect of the claimed invention. That
argument is misplaced. Petitioner has not indicated that it regards any
involved limitation as novel, and neither case authority dispenses with the
need for the party contending lack of enabling disclosure to make an
adequate showing based on the factors articulated in In re Wands, supra.
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There are not two sets of factors, one for non-novel aspects of a claimed
invention, and another for novel aspects of a claimed invention. In all cases,
whether or not additional guidance is needed and how much additional
guidance is needed depends on what one with ordinary skill in the art
already would have known.
For the foregoing reasons, Petitioner has not demonstrated it is more
likely than not that it would prevail in showing that the subject matter of
claim 1 lacks enabling disclosure under 35 U.S.C. 112(a).
2.

Claims 4, 5, and 7

Limitations [4a], [4b], [4c], and [4d] are the same as limitations [1a],
[1b], [1c], and [1d], respectively. Petitioners arguments that limitations
[4a], [4b], [4c], and [4d] are without enabling disclosure are deficient for the
same reasons discussed above with regard to why the same arguments are
deficient with respect to limitations [1a], [1b], [1c], and [1d].
Similarly, limitations [5a], [5b], [5c], and [5d] are the same as
limitations [1a], [1b], [1c], and [1d], respectively. Petitioners arguments
that limitations [5a], [5b], [5c], and [5d] are without enabling disclosure are
deficient for the same reasons discussed above with regard to why the same
arguments are deficient with respect to limitations [1a], [1b], [1c], and [1d].
Likewise, limitations [7a], [7b], [7c], and [7d] are the same as
limitations [1a], [1b], [1c], and [1d], respectively. Petitioners arguments
that limitations [7a], [7b], [7c], and [7d] are without enabling disclosure are
deficient for the same reasons discussed above with regard to why the same
arguments are deficient with respect to limitations [1a], [1b], [1c], and [1d].
With regard to limitation [4e], Petitioner asserts:

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The specification fails to provide technical guidance regarding
(1) how to select zones in a predetermined manner; (2) how to
determine the intended locations of different spots prior to
forming pockets of energy; (3) how to position the selected zones
around these different spots; or (4) distributing the null-spaces
in these predetermined selective zones.
Pet. 34. Petitioner further asserts: There is no description or
guidance regarding how to implement or generate the null spaces or
how to position the unified waveform (or areas) such that the included
null-spaces may be distributed in predetermined selective zones and
also around spots that have pockets of energy. Id. at 35. Petitioner
states that given the dearth of description for how the null-spaces are
to be made or used, Figure 3 is not a working example but merely
an aspirational plan for how the invention is to work. Id.
With regard to limitation [5e], Petitioner asserts: (1) there is no
guidance in the Specification regarding how to eliminate pockets of energy
in sensitive areas including people or other equipment affected by pockets of
energy, (2) the disclosure does not describe how to determine which areas
are considered to be sensitive, (3) the disclosure provides no working
examples, and (4) the disclosure lacks any description or details regarding
the transmitters and receivers. Pet. 3738.
With regard to limitation [7e], Petitioner asserts: (1) there is no
technical detail on how to generate a unified waveform in the predetermined
variety of spots for charging the electronic device based on changing a phase
on one or more RF waves; (2) there is no explanation regarding how to
accomplish the intended result of a unified waveform in the predetermined
variety of spots for charging the electronic device; (3) there is no description

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of the implementation of the antennas that would be necessary to generate
such a waveform having the specific special and energy characteristics
claimed; (4) no detail or guideline is provided on how to change the phase of
an RF wave; and (5) the disclosure provides only generic descriptions
regarding adjustments to the RF waves. Id. at 4142.
Petitioners arguments place excessive focus on one factor regarding
specific guidance in the Specification, to the near total exclusion of another
important factor under In re Wands, supra, i.e., the state of the art with
regard to what one with ordinary skill in the art is capable of doing.
Petitioner has not meaningfully explained (1) the technical base line or entry
point that reflects what one with ordinary skill in the art is able to do without
additional technical guidance, (2) what difficulty one with ordinary skill in
the art would have if he or she attempted to make and use the claimed
invention, (3) what experimentation would be required for a person with
ordinary skill in the art to overcome such difficulties, 4 or (4) why such
experimentation should be deemed undue. Without adequate information in
that regard, we are unable to assess just how much gap exists between the
level of disclosure contained in the 125 patent and what one with ordinary
skill in the art is able to accomplish. That fact remains true notwithstanding
Petitioners noting that the Specification of the 125 patent does not contain

We recognize that Petitioner does assert that a person of ordinary skill in

the art would need to experiment with a number of parameters including
antenna properties. Pet. 38. But such generic reference to experimentation
without detail regarding goals and objectives and/or strategy is not
sufficiently meaningful. For instance, it is unclear what specific problem
exists that needs to be resolved by experimentation.
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technical guidance with respect to limitation [4e]. Given the high level of
skill in the art, Petitioner has not established it is more likely than not that
the Specification lacks enabling disclosure for any of limitations [4a], [4b],
[4c], [4d], [4e], [5a], [5b], [5c], [5d], [5e], [7a], [7b], [7c], [7d], and [7e].
Petitioner also argues that the 993 publication, the disclosure of
which has been incorporated by reference by the 125 patent, specifies that a
proprietary chip is necessary for adjusting phase and/or relative
magnitudes of RF signals to form constructive and destructive interference
patterns, but provides no detail regarding this chip. Pet. 40. The argument
is misplaced. The 993 publication does not require the use of a proprietary
chip but only states that a proprietary chip may be included. Ex. 1003 30.
Even if a proprietary chip is used, it does not mean either (1) that insufficient
disclosure has been made, with respect to one with ordinary skill in the art,
on how to make and use any claimed invention, or (2) that whatever is
contained in the proprietary chip is the product of undue experimentation.
Petitioners reliance on Automotive Technologies Inc., 501 F.3d at
1283, and Genentech Inc., 108 F.3d at 1365, for the proposition that one
may not rely on what is well known in the art to supply that which is needed
for an enabling disclosure of a novel aspect of the claimed invention also is
misplaced, for the reasons discussed above in the context of claim 1.
For the foregoing reasons, Petitioner has not demonstrated it is more
likely than not that it would prevail in showing that the subject matter of any
of claims 4, 5, and 7 lacks enabling disclosure under 35 U.S.C. 112(a).
3.

Claim 10

Limitation [10a] is effectively the same as limitation [1b], in the

context of Petitioners assertion of lack of enabling disclosure. Petitioners
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arguments that limitation [10a] is without enabling disclosure are deficient
for the same reasons discussed above with regard to why the same
arguments are deficient with respect to limitation [1b]. Petitioner has not
established it is more likely than not that the Specification lacks enabling
disclosure for limitation [10b].
Similarly, limitation [10b] also is effectively the same as limitation
[1b], in the context of Petitioners assertion of lack of enabling disclosure,
except that limitation [10b] adds that the pockets of energy are accumulated
in predetermined areas or regions in 3-d space. Insofar as limitation [10b]
is similar to limitation [1b], Petitioners arguments directed to limitation [1b]
are equally deficient in the context of limitation [10b].
With regard to limitation [10b], Petitioner also asserts that the
125 patent disclosure provides no description or guidance as to how a
microcontroller predetermines the locations for pocket-forming and provides
no working example in that regard. Pet. 4344.
With regard to limitation [10c], Petitioner asserts: (1) there is no
guidance or technical details on how to make or use constructive
interference patterns of RF waves such that they form charging hot spots of a
predetermined selected range, (2) Figure 4 and its corresponding text do not
provide specific guidance on how to form constructive interference patterns
of RF waves at particular charging spots, (3) there is no guidance or
direction on how to form constructive interference patterns at a
predetermined selected range, (4) there is no guidance or direction on how to
charge or power devices in specific spots at a predetermined selected range,
and (5) there is no description regarding how to select the range at which the
hot spots are located in a predetermined manner. Id. at 4546.
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With regard to limitation [10d], Petitioner asserts: (1) there is no
guidance or technical details on how to make or use destructive interference
patterns of RF waves such that they form null spots of a predetermined
selected range, (2) there is no description or guidance on how to form null
spots, (3) there is no description or examples of null spots surrounding
charging spots, (4) there is no detailed guidance on how to form the
destructive interference patterns of RF waves at specific null spots, and
(5) there is not any description regarding how to select the range at which
the hot spots are located in a predetermined manner. Id. at 4749.
With regard to limitation [10e], Petitioner asserts: (1) there is no
description of hot spots that include wireless charging radii 304 and one
or more radii of null-space 306, (2) there are no technical details on how to
make or use this feature, i.e., hot spots including one or more wireless
charging radii and one or more null-space radii, (3) there are no technical
details on how to create a transmitter that is capable of generating
pocket-forming such that the charging radii and null-space radii are formed,
or formed in a manner that allows wireless charging and powering of
devices, (4) there are no specific details on the transmitter or the interplay
between components that would result in the creation of the spots, (5) there
is insufficient disclosure on how to create restrictions for powering and
charging an electronic device, 5 (6) there is no guidance on how to make or

Petitioner states the only hint of guidance is that safety restrictions may be
implemented by the use of wireless power transmission with selective
range 300, [and] such safety restrictions may avoid pockets of energy 108
over areas or zones where energy needs to be avoided. Pet. 51 (quoting Ex.
1001, 3:5864). Petitioner asserts that this disclosure does not describe how
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use the selective range, or how the selective range could be used to
enable restrictions. Id. at 4952.
Petitioners arguments for each of limitations [10b], [10c], [10d], and
[10e], as noted above, place excessive focus on one factor regarding specific
guidance in the Specification, to the near total exclusion of another
important factor under In re Wands, supra, i.e., the state of the art with
regard to what one with ordinary skill in the art is capable of doing.
Petitioner has not meaningfully explained (1) the technical base line or entry
point that reflects what one with ordinary skill in the art is able to do without
additional technical guidance, (2) what difficulty one with ordinary skill in
the art would have if he or she attempted to make and use the claimed
invention, (3) what experimentation would be required for a person with
ordinary skill in the art to overcome such difficulties, or (4) why such
experimentation should be deemed undue. Given the high level of skill in
the art, Petitioner has not established it is more likely than not that the
Specification lacks enabling disclosure for any of limitations [10b], [10c],
[10d], and [10e].
Petitioners reliance on Automotive Technologies Inc., 501 F.3d at
1283, and Genentech Inc., 108 F.3d at 1365, for the proposition that one
may not rely on what is well known in the art to supply that which is needed
for an enabling disclosure of a novel aspect of the claimed invention is
misplaced, for the reasons discussed above in the context of claim 1.

to create hot spots that enable restrictions for powering and charging an
electronic device. Id.
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For the foregoing reasons, Petitioner has not demonstrated it is more
likely than not that it would prevail in showing that the subject matter of
claim 10 lacks enabling disclosure under 35 U.S.C. 112(a).
4.

Claims 13 and 18

Limitations [13b], [13c], and [13d] are the same as limitations [10b],
[10c], and [10d], respectively. Petitioners arguments that limitations [13b],
[13c], and [13d] are without enabling disclosure are deficient for the same
reasons discussed above with regard to why those same arguments are
deficient with respect to limitations [10b], [10c], and [10d]. Limitations
[18b], [18c], and [18d] are the same as limitations [10b], [10c], and [10d],
respectively. Petitioners arguments that limitations [18b], [18c], and [18d]
are without enabling disclosure are deficient for the same reasons discussed
above with regard to why those same arguments are deficient with respect to
limitations [10b], [10c], and [10d].
With regard to limitation [13e], Petitioner asserts that the only
description in the Specification pertains to how the wireless charging spots
would function without providing any guidance regarding how to generate
them, and with the specific property [of] avoiding obstacles. Pet. 53
(emphasis omitted). Petitioner also asserts that the Specification contains no
working examples or description of how the recited concepts work together
to form spots regardless of the obstacles surrounding the receivers and at a
predetermined selected range from the transmitter. Id. at 54.
With regard to limitation [18e], Petitioner asserts: (1) there is no
guidance or technical details on how a unified waveform can be created at a
preselected range for charging hot spots and null-space spots, (2) Figure 2A
does not provide any guidance or direction on how to form a unified
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Patent 9,124,125 B2
waveform such as that shown in Figure 2B, (3) the Specification refers to
suitable techniques such as pocket-forming without describing what is
meant by suitable techniques such as pocket-forming, (4) there is no
explanation or guidance on technical details and implementations regarding
transmitters and receivers, (5) there is no guidance on how to implement
transmitters and receivers such that they generate RF waves that result in the
claimed unified waveform for a preselected range for charging hot spots
and null-space spots, and (6) there is no explanation regarding how the
antennas preselect a range, and how to implement that range such that it is
capable of providing charging hot spots and null-space spots. Id. at 5558.
Petitioners arguments again place excessive focus on one factor
regarding specific guidance in the Specification, to the near total exclusion
of another important factor under In re Wands, supra, i.e., the state of the art
with regard to what one with ordinary skill in the art is capable of doing.
Petitioner has not meaningfully explained (1) the technical base line or entry
point that reflects what one with ordinary skill in the art is able to do without
additional technical guidance, (2) what difficulty one with ordinary skill in
the art would have if he or she attempted to make and use the claimed
invention, (3) what experimentation would be required for a person with
ordinary skill in the art to overcome such difficulties, or (4) why such
experimentation should be deemed undue. Given the high level of skill in
the art, Petitioner has not established it is more likely than not that the
Specification lacks enabling disclosure for any of limitations [13b], [13c],
[13d], [13e], [18b], [18c], [18d], and [18e].
Petitioners reliance on Automotive Technologies Inc., 501 F.3d at
1283, and Genentech Inc., 108 F.3d at 1365, for the proposition that one
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may not rely on what is well known in the art to supply that which is needed
for an enabling disclosure of a novel aspect of the claimed invention is
misplaced, for the reasons discussed above in the context of claim 1.
Petitioner has not demonstrated it is more likely than not that it would
prevail in showing that the subject matter of either claim 13 or claim 18
lacks enabling disclosure under 35 U.S.C. 112(a).
5.

Dependent Claims 2, 3, 6, 8, 9, 11, 12, and 1417

Petitioner does not separately argue the enabling disclosure issue with
respect to dependent claims 2, 3, 6, 8, 9, 11, 12, and 1417, which
incorporate all of the limitations of the claim(s) on which they depend, apart
from the arguments already presented in connection with the independent
claims. See Pet. 58. Accordingly, for the reasons given above regarding
independent claims 1, 4, 5, 7, 10, 13, and 18, Petitioner has not demonstrated
it is more likely than not that it would prevail in showing that the subject
matter of any of claims 2, 3, 6, 8, 9, 11, 12, and 1417 lacks enabling
disclosure under 35 U.S.C. 112(a).
D.

Claims 118 as Lacking Written Description Support

The written description requirement of 35 U.S.C. 112(a) is separate

and distinct from the enabling disclosure requirement. Ariad, 598 F.3d at
1344. The test for sufficiency of written description is whether the
specification reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.
Id. at 1351. The principle, stated in another way, is that the written
description must clearly allow persons of ordinary skill in the art to
recognize that the inventor invented what is claimed. Id. The Court of
Appeals for the Federal Circuit has explained that possession as shown in
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the disclosure is a more complete formulation of the test for satisfying the
written description requirement. Id. The Court further explained:
[W]hatever the specific articulation, the test requires an objective
inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based on that
inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.
Id. (emphasis added). A claim may not describe a problem and claim all
solutions to the problem, without having described any solution, thereby
leaving the task of completing an unfinished invention to others. Id. at 1353.
Central to the analysis is looking at the issue through the lens of one
with ordinary skill in the art. As noted above, the test for written description
is an objective inquiry from the perspective of one with ordinary skill in the
art into whether the disclosure reasonably conveys that the inventor had
possession, i.e., actually invented, the subject matter claimed. Specifically,
the level of detail required to satisfy the written description requirement
varies depending on the nature and scope of the claims and on the
complexity and predictability of the relevant technology. Id. at 1351.
Petitioner asserts that the Specification lacks written description:
for limitation [1e] directed to adaptive power focusing to
avoid obstacles interfering with RF signals (Pet. 6063),
for limitations [1c], [4c], [5c], and [7c] directed to
employing a selective range for charging or powering an
electronic device in a predetermined variety of spots (id. at 63
65), and

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for limitations [10a], [13a], and [18a] directed to a
transmitter that generates short RF control signals (id. at 65
66).
The arguments advanced by Petitioner alleging lack of written
description support for claims 118 are deficient because, as in the case of
Petitioners assertion of lack of enabling disclosure, Petitioner reveals little
on the state of the art with regard to what one with ordinary skill in the art is
capable of doing. For instance, Petitioner has not meaningfully explained
the existing knowledge in the field, the extent and content of the prior art,
the maturity of the science or technology, and predictability of the
technological aspects at issue. See Ariad, 598 F.3d at 1351. Without
sufficient information in that regard, we are unable to assess the written
description question and apply the pertinent test from the lens and
perspective of one with ordinary skill in the art, as we are required to do.
What Petitioner has pointed out is that there are no technical details,
detailed guidance, or specific working examples with respect to the various
limitations it has alluded to in the assertion of lack of written description.
Overall, we perceive Petitioner as characterizing the Specification as
something merely aspirational, e.g., presenting only a pie in the sky
scenario that invites others to invent. There is, however, not enough to show
it is more likely than not that Petitioner would satisfy the applicable test for
demonstrating lack of written description, given that Petitioner has not
provided adequate information with regard to what technical knowledge and
capability is possessed by one with ordinary skill in the art in connection
with the various limitations at issue.

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On this record, we cannot conclude it is more likely than not that the
inventors of the 125 patent did not possess or actually invent the subject
matter claimed in claims 118. Petitioner has not demonstrated it is more
likely than not that it would prevail in showing that the subject matter of any
of claims 118 lacks written description support under 35 U.S.C. 112(a).
E.

Claims 19 and 16 as Indefinite under 35 U.S.C. 112(b)

For reasons discussed below, Petitioner has shown it is more likely

than not that claims 5 and 6 are unpatentable, under 35 U.S.C. 112(b), for
failing to particularly point out and distinctly claim that subject matter which
the inventors regard as the invention. Petitioner, however, has not made
such a showing with respect to any of claims 14, 79, and 16.
The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the inventor or
a joint inventor regards as the invention. 35 U.S.C. 112(b). A patent
claim is indefinite, if its language, read in light of the specification
delineating the patent and the prosecution history, fail[s] to inform, with
reasonable certainty, those skilled in the art about the scope of the
invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124
(2014). [A] patent must be precise enough to afford clear notice of what is
claimed, thereby appris[ing] the public of what is still open to them. Id. at
2129 (citation omitted). Citing Nautilus, Petitioner asserts that claims 19
and 16 are indefinite. Pet. 6667.
With respect to terms of degree, the Court of Appeals for the Federal
Circuit has indicated that [t]he claims, when read in light of the
specification and the prosecution history, must provide objective boundaries

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for those of skill in the art. Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014). [A] term of degree fails to provide sufficient
notice of its scope if it depends on the unpredictable vagaries of any one
persons opinion. Id. (citation omitted).
A claim is indefinite if, when read in light of the specification, it does
not reasonably apprise those skilled in the art of the scope of the invention.
See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); In re Merat,
519 F.2d 1390, 1394 (CCPA 1975); In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970).
Claims 19
The scope and meaning of a claim element set forth in means-plusfunction form is governed by 35 U.S.C. 112(f), which provides:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.
(emphasis added). Each of independent claims 1, 4, 5, and 7 recites
employing a selective range for charging or powering the electronic
device. Petitioner asserts that selective range for charging or powering the
electronic device is a means-plus-function recitation under 35 U.S.C.
112(f), and that the Specification lacks description for any corresponding
structure, material, or acts. Pet. 1215. On that basis, Petitioner asserts that
claims 19 are indefinite under 35 U.S.C. 112(b). Pet. 6668. Patent
Owner disagrees that the phrase is a means-plus-function recitation under
35 U.S.C. 112(f). Prelim. Resp. 715.

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Petitioners argument is unpersuasive. Citing Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc), Petitioner
explains that although the absence of the word means creates a
presumption that 35 U.S.C. 112(f) does not apply, that presumption may
be overcome when the claim term fails to recite sufficiently definite
structure or else recites a function without reciting sufficient structure for
performing that function. Pet. 1314. That articulation of the law is correct.
But the premise is that the context is functional claiming, where an element
is recited to perform a function without specifying sufficient structure for
that element. That is not the case here. The challenged phrase merely sets
forth the location, relative to the source of radio waves, where a task is
performed, i.e., charging or powering an electronic device. In short,
selective range is not an unspecified device that performs the recited
function. Rather, it means the function is performed at a certain selectable
range. Accordingly, the phrase at issue is not, as urged by Petitioner, a
means-plus-function element under 35 U.S.C. 112(f).
Petitioner has not demonstrated it is more likely than not that it would
prevail in showing that the subject matter of claims 19 is indefinite under
35 U.S.C. 112(b), on the basis that they include a means-plus-function
element without corresponding structure, material, or acts being described in
the Specification.
Claim 5
Petitioner asserts that claim 5 is indefinite because of the phrase
sensitive areas including people or other equipment affected by pockets of
energy. Pet. 68. Specifically, Petitioner presents two arguments with
respect to that phrase. First, Petitioner argues that [t]he claim provides no
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standard for distinguishing between a portable electronic device to be
charged or powered (which is affected by pockets) and other equipment
affected by pockets of energy. Id. The argument is misplaced. The basis
of distinction is expressly provided in the claim itself by use of the
contrasting term other and is neither vague nor subjective. A device that
is being charged by a pocket of energy is not other equipment affected by
the pocket of energy. A device that is not being charged by a pocket of
energy would be other equipment affected by pocket of energy, relative to
a device that is being charged, if it somehow still is affected by the pocket of
energy. We discern no ambiguity in connection with that distinction.
The second argument of Petitioner, however, is persuasive on this
record. Petitioner argues that the Specification contains no description for
what constitutes a sensitive area. Id. Petitioner effectively argues that
what constitutes a sensitive area is vague and subjective. Patent Owner
responds by stating that a person with ordinary skill in the art understands
that a sensitive area is one where people or equipment may be present that
would be affected by radiation in a pocket of energy. Prelim. Resp. 82.
But Patent Owners response only shifts the same question to another level,
i.e., what standard determines that people or equipment are or would be
affected by pockets of energy represented by constructive interference of
radio waves. The manner and extent of such affecting to be avoided is not
revealed by the Specification. In that regard, Dr. Heppe testifies that the
Specification does not indicate an objective standard for determining the
amount that people or other equipment must be affected in order to qualify
an area as sensitive. Ex. 1005 231. Dr. Heppe also testifies that the
Specification indicates nothing as to what an adverse effect might be. Id.
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Notably, the Specification does not describe or suggest that people are
adversely affected by a pocket of energy if they are within it to charge a
device on their person or with which they are working. It would seem
illogical to regard them as adversely affected by the same pocket of energy if
they are not there to charge a device. Finally, we note that different people
and different devices may have different sensitivity or tolerance for exposure
to radio waves. As argued by Petitioner, the Specification refers to no
objective standard for determining a threshold relating to adverse effects
resulting from exposure to radio waves.
Accordingly, Petitioner has demonstrated it is more likely than not
that it would prevail in showing that the subject matter of claim 5 is
indefinite under 35 U.S.C. 112(b), for failing to particularly point out and
distinctly claim subject matter which the inventors regard as the invention.
Claim 6
Claim 6 depends from claim 5. Petitioner asserts that claim 6 is
indefinite because it refers to [t]he system for wireless power transmission
with selective range to power the portable electronic device of claim 5,
when claim 5 is directed to a method. Pet. 69. Petitioner states: claim 6
fails to apprise, with reasonable certainty, whether the claim is directed to
the method of claim 5, or a system. Id. The issue is significant, because
there is a substantial difference between an apparatus claim and a process
claim. As phrased in the 125 patent, claim 6 is an apparatus claim directed
to a system. Yet, it depends from claim 5, which is a process claim directed
to a method.
Patent Owner does not dispute that, as written, claim 6 is indefinite.
Instead, Patent Owner asserts that the cause is a typographical error and
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that [t]he Board has authority to address this obvious, clerical error and
amend the claim on its own accord, if the Board is inclined to institute a trial
to address this claim. Prelim. Resp. 8283.
Petitioner has demonstrated it is more likely than not that it would
prevail in showing that the subject matter of claim 6 is indefinite under
35 U.S.C. 112(b), for failing to particularly point out and distinctly claim
subject matter which the inventors regard as the invention.
Claim 8
Claim 8 depends from claim 7. With respect to claim 8, Petitioner
takes issue with the recitations (a) the unified waveform defines pockets of
energy and null-spaces along pocketing, and (b) the pockets of energy are
available in certain predetermined regions of space where constructive
interference exists defining one or more hot spots for charging the electronic
device over a minimum or maximum selected range responsive to a program
within the microcontroller. Pet. 7071.
Regarding recitation (a) identified above, Petitioner asserts that along
pocket-forming is facially an incomplete thought. Id. at 70. Petitioner
states: It is not clear what this phrase [along pocket-forming] means and
[it] appears to be an incomplete sentence. Id. We are unpersuaded. All
that is required under 35 U.S.C. 112(b) is reasonable certainty as to claim
scope. Nautilus, 134 S. Ct. at 2124. The Specification sets forth that
pocket-forming may refer to generating two or more RF waves which
converge in 3-d space, forming controlled constructive and destructive
interference patterns. Ex. 1001, 2:3032. Petitioner does not adequately
explain why along pocket-forming does not reasonably mean along
interference patterns that are formed by the traveling RF waves.
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Petitioner also argues that the description in the Specification for
unified waveform is contradictory and misleading, referring to
Section VI(A)(1)(b) of the Petition. Pet. 7071. We have reviewed the
referenced section of the Petition and find no discussion explaining why the
term unified waveform is contradictory or misleading. The closest
discussion is this, which has little to do with definiteness under 35 U.S.C.
112(b): there is no guidance regarding how a [person with ordinary skill
in the art] would generate the unified waveform, and use the unified
waveform to accumulate pockets of energy as recited in the claim. Pet.
26.
Regarding recitation (b) identified above, Petitioner asserts:
This limitation is facially indecipherable because it is not
clear which element the pockets of energy, predetermined
regions of space, or constructive interference is responsible for
defining one or more hot spots. (Ex. 1005, 238.). The
limitation contains phrases that taken alone are ambiguous, and
when combined together fail to inform, with reasonable
certainty, a [person of ordinary skill in the art] about the scope of
the claimed invention.
Pet. 71. We are unpersuaded. Petitioner has articulated no reasonable basis
to assume that only one of the three mentioned items, to the exclusion of the
other two, would be solely responsible for defining one or more hot spots.
Also, it seems evident from a plain reading of the phrase at issue that all
three identified elements have a role in defining the one or more hot spots.
Petitioner further argues:
Moreover, the 125 patent does not recite defining one or
more hot spots, the terms define or defining, or even the
phrase hot spots. (Id., 238.) Moreover, it is not clear what is
meant by defining one or more hot spots. (Id.) Given this

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silence regarding this phrase and its individual terms, the
limitation is unpatentably indefinite. (Id., 239.)
Pet. 71. The argument is unpersuasive. It is tantamount to requiring an
explicit definition in the Specification for every word and every phrase
recited in a claim. There is no such requirement in patent law. Petitioner
does not explain why any of the identified words and phrases would not
have a reasonably certain meaning to one with ordinary skill in the art.
Petitioner fails to explain why one with ordinary skill in the art would not
have understood hot spot as that region of space containing a pocket of
energy formed by constructive interference patterns of generated RF waves.
Accordingly, Petitioner has not demonstrated it is more likely than not
that it would prevail in showing that the subject matter of claim 8 is
indefinite under 35 U.S.C. 112(b), for failing to particularly point out and
distinctly claim subject matter which the inventors regard as the invention.
Claim 16
Claim 16 depends from claim 13. With respect to claim 16, Petitioner
takes issue with the recitations (a) form an unified waveform that describes
pockets of energy and [null-spaces] along pocket-forming, (b) wherein
pockets of energy are available in certain predetermined areas where a
constructive interference of the waves exist and such areas include one or
more spots which move along pocket-forming trajectory, and (c) the
wireless power range that include either a minimum or maximum range of
wireless power transmission. Pet. 7174.
Regarding recitation (a) identified above, Petitioners argument is the
same as that it asserted against claim 8s recitation of the unified waveform
defines pockets of energy and null-spaces along pocket-forming. The

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argument is unpersuasive for the same reasons discussed above in the
context of claim 8, and will not be repeated here.
Regarding recitation (b) identified above, Petitioner asserts that the
phrase one or more spots which move along pocket-forming trajectory is
ambiguous. Id. at 73. Petitioner argues that, in particular, along
pocket-forming trajectory is unclear. Id. Petitioner contends that along
pocket-forming trajectory is not a term of art and has no meaning or
significance to one with ordinary skill in the art. Id. According to
Petitioner, the Specification is unhelpful because it merely states the same
phrase without further explanation. Id.
Petitioners contentions are unpersuasive. It is not a requirement that
every term or phrase that is not a term of art must be provided with an
express explanation in the specification specifically directed to the term or
phrase. Petitioner fails to explain why, in light of the disclosure as a whole,
including the disclosure that pockets of energy are formed by constructive
interference patterns of radio waves, one with ordinary skill in the art would
not have reasonable clarity as to the meaning of along pocket-forming
trajectory. For instance, it seems that if radio waves propagate from their
source, then their constructive interference patterns also would propagate on
a trajectory. In that regard, Petitioner provides insufficient explanation as to
why there is lack of reasonable clarity to the phrase along pocket-forming
trajectory.
Regarding recitation (c) identified above, Petitioner asserts the
phrase is ambiguous because it is not clear how a range can include a
minimum or maximum range. Id. Citing column 3, lines 2834 of the 125
patent, Petitioner asserts that the 125 patent describes a unified waveform
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as including wireless power range 208 X1. Id. at 74. Petitioner explains:
The confusion stems from how a waveform, which is merely a shape or
form of a signal, can include a range, much less a minimum range and a
maximum range as described in the 125 patent. Id.
The argument is both misplaced and unpersuasive. First, recitation (c)
specifies a wireless power range, not a unified waveform, that includes
either a minimum or maximum range of wireless power transmission.
Second, Petitioner does not explain sufficiently why a range cannot be
bounded by a minimum and a maximum. For instance, Figure 3 of the
125 patent, reproduced above, illustrates charging radii 304, which is
defined by a circular ring of a certain width. That width facially represents a
minimum and a maximum range for charging radii 304, which constitutes a
wireless power range. In that regard, Petitioner has not provided adequate
explanation as to why the recited minimum and maximum do not partially
set forth the boundaries of a wireless power range.
Accordingly, Petitioner has not demonstrated it is more likely than not
that it would prevail in showing that the subject matter of claim 16 is
indefinite under 35 U.S.C. 112(b), for failing to particularly point out and
distinctly claim subject matter which the inventors regard as the invention.
III.

CONCLUSION

Petitioner has not demonstrated it is more likely than not that it would
prevail in establishing the unpatentability of any of claims 118 as without
enabling disclosure under 35 U.S.C. 112(a).

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Petitioner has not demonstrated it is more likely than not that it would
prevail in establishing the unpatentability of any of claims 118 as without
written description support in the Specification under 35 U.S.C. 112(a).
Petitioner has not demonstrated it is more likely than not that it would
prevail in showing that the subject matter of any of claims 14, 79, and 16
is indefinite under 35 U.S.C. 112(b), for failing to particularly point out
and distinctly claim subject matter which the inventors regard as the
invention. Petitioner has demonstrated it is more likely than not that it
would prevail in showing that the subject matter of each of claims 5 and 6 is
indefinite under 35 U.S.C. 112(b), for failing to particularly point out and
distinctly claim subject matter which the inventors regard as the invention.
The Board has not yet made a final determination as to the
patentability of any claim or the construction of any claim term.
IV.

ORDER

It is
ORDERED that pursuant to 35 U.S.C. 324(a), a post-grant review is
hereby instituted on claims 5 and 6 of the 125 patent, on the alleged ground
of unpatentability for indefiniteness under 35 U.S.C. 112(b);
FURTHER ORDERED that no other ground of unpatentability for
any claim, as raised in the Petition, is included in this post-grant review;
FURTHER ORDERED that pursuant to 35 U.S.C. 324(d) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial
commencing on the entry date of this Decision.

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PETITIONER:
Robert Sterne
Jason Eisenberg
Nirav Desai
rsterne-PTAB@skgf.com
jasone-PTAB@skgf,com
ndesai-PTAB@skgf.com

PATENT OWNER:
Eric Sophir
Kevin Greenleaf
William Long
Matthew Horton
Roshan Bhattarai
eric.sophir@dentons.com
kevin.greenleaf@dentons.com
bill.long@dentons.com
matthew.horton@dentons.com
roshan.bhattarai@dentons.com

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