IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness determination affirmed in wireless transfer of electromagnetic energy patent dispute, (Apr 16, 2025)

By Kevin M. Finson, J.D.

A PTAB decision that claims of a patent directed to the wireless transfer of energy were obvious was affirmed because it was supported by substantial evidence in the form of the plain language of the prior art reference and expert testimony.

A patent owner failed to show any error in a determination by the Patent Trial and Appeal Board that several claims relating to wireless transfer of power were unpatentable as obvious, the U.S. Court of Appeals for the Federal Circuit has held. The Board’s decision was supported by the plain language of the prior art reference and expert testimony (WiTricity Corp. v. InductEV Inc., No. 23-1916 (Fed. Cir. Apr. 16, 2025)).

WiTricity Corp. (WiTricity) was the owner of U.S. Patent No. 7,741,734 (the ’734 patent), which was entitled “Wireless Non-Radiative Energy Transfer” and claimed methods and systems for the transfer of electromagnetic energy using resonator structures. InductEV, Inc. (InductEV) petitioned for inter partes review of several of the claims of the ’734 patent, alleging they were obvious over a published master’s thesis on wireless power transmission or over that thesis in combination with other prior art references. The Patent Trial and Appeal Board (PTAB) instituted review and found that all of the challenged claims were unpatentable as obvious. WiTricity appealed.

Motivation to modify. WiTricity argued that the Board erred by finding that a person of ordinary skill in the art would be motivated to modify the prototype wireless transmission circuit described in the prior art master’s thesis to utilize Q-values greater than 100.

The Federal Circuit found that the thesis itself disclosed that higher Q-values corresponded to improved efficiency and that the board was entitled to credit the testimony of InductEV’s expert to the effect that a skilled artisan would have been able to use the formulas disclosed in the thesis, to select hardware components to achieve a circuit with a Q-value of 1,000. Accordingly, the Board’s finding that a person of ordinary skill in the art would be motivated to modify the prototype described in the thesis to have a Q-value greater than 100 was supported by substantial evidence.

Sur-reply argument. WiTricity also argued that the Board abused its discretion by refusing to consider its argument that increasing the Q-value would alter the voltage waveform in a way which could render the output useless. The Board had understood this as a new theory of patentability and declined to consider it because it was raised for the first time in WiTricity’s sur-reply.

The Federal Circuit reviewed both WiTricity’s patent owner’s response and sur-reply and found that the Board was correct to treat this as a new argument; the patent owner response had argued that the thesis provided no teachings on the desirability of altering the waveform, while the sur-reply argued that the thesis taught away from the same thing.

The Federal Circuit affirmed the Board’s obviousness determinations.

The Case is No. 23-1916.

Judge: Dyk, T.

Attorneys: Daniel George Vivarelli, Jr. (Butzel Long, PC) for Witricity Corp. David Zucker (Latham & Watkins LLP) for InductEV Inc.

Companies: Witricity Corp.; InductEV Inc.

Cases: Patent FedCirNews USPTO