On Remand, PTAB Determines Six Dependent Claims of Charge Fusion's Electric Vehicle Charging Patent Unpatentable in Tesla's IPR.

The patent and the parties

Tesla, Inc. v. Charge Fusion Technologies, LLC, IPR2023-00063, is an inter partes review in which Tesla, Inc. is the petitioner and Charge Fusion Technologies, LLC is the patent owner. The challenged patent, U.S. Patent 10,819,135, is titled "Systems and Methods for Charging Electric Vehicles Utilizing a Touch-Sensitive Interface" and issued October 27, 2020, naming Charge Fusion Technologies, LLC as assignee. Its front page lists it as a continuation of the application that issued as U.S. Patent 9,853,488. The decision describes the '135 patent as relating to systems and methods for charging electric vehicles and for load balancing of electrical demand, with a graphical user interface for setting charging parameters, including a "pet in car" button that sets alerts and charge parameters to keep the interior of a parked vehicle cool or warm.

The Federal Circuit remand

The Federal Circuit, in Tesla, Inc. v. Charge Fusion Technologies, LLC, No. 2024-2015 (Fed. Cir. Mar. 31, 2026), affirmed the Board's earlier judgment that Tesla had not proved independent claims 8 and 14 and dependent claims 9 to 11 and 16 unpatentable. It reversed the Board on independent claim 1, which the court said the Board had decided under an erroneous claim construction, and held that under the correct construction claim 1 is unpatentable as obvious. Because the Board's determination on claims 2 to 5, 7, and 15, each of which depends directly from claim 1, rested entirely on its conclusion about claim 1, the court vacated that determination and remanded those claims for further proceedings.

How the Federal Circuit read the claims

Judge Reyna wrote the opinion for a panel of Circuit Judges Dyk, Reyna, and Chen, and the opinion states that the disposition is nonprecedential. It summarizes the outcome this way: "Because the Board improperly construed a limitation of one independent claim but not of other independent claims, we affirm in part, reverse in part, vacate in part, and remand."

On claim 1, the dispute was over its final limitation, which requires instructions that cause the processor to "operate a climate control mechanism of the electric vehicle while the vehicle is in a parked state and in accordance with the selected mode of operation for a duration of time until the amount of charge residing in the battery reaches a predetermined level." The Board had agreed with Tesla that the claim does not require the selected mode of operation to cease after the battery reaches the predetermined level, but it concluded that claim 1 "at least requires that the instructions take into consideration the battery level in some manner when operating the climate control mechanism," and on that basis found that the Japanese application (JP H10-55496) does not disclose the limitation. The court disagreed: "The claims do not require that the instructions 'take into consideration' the battery level when operating the climate control mechanism. The claims merely require that the climate control mechanism continue until the battery charge reaches a predetermined level." It said that in the FIG. 6 description on which Charge Fusion relied, the specification "merely indicates that the driver may be notified when the battery drops below a predetermined level," and it vacated that portion of the Board's construction.

The court then stated: "We hold that under the correct claim construction, claim 1 is unpatentable." It explained that the Board had already found that the Japanese application taught operating its climate control system in AUTO mode for a duration of time that can be up to and beyond the low battery abnormality condition, that those findings are supported by substantial evidence, and that they show the application teaches the limitation under the proper construction, so it reversed. Because the Board "did not separately address the dependent claims," the court vacated its determination on claims 2 to 5, 7, and 15 and remanded "for consideration of the patentability of those claims."

On claims 8 and 14, the court affirmed the Board's construction that "[c]laims 8 and 14 require an actual determination of time available for climate control operation based on battery level as part of their recited operation of the climate control mechanism." It pointed out that each claim recites "a threshold amount of time," a term not included in claim 1, and that the system the specification describes could not accurately notify the user when the charge falls below a level that allows the air conditioning to remain on for fifteen minutes without determining when the car will deplete the battery at the current air conditioning setting. Turning to the Board's finding that this determination is missing from the Japanese application, the court stated: "We hold that substantial evidence supports this finding." Agreeing with the Board, it said the application "provides no teaching regarding any duration of time for operation of the climate control system relative to a remaining charge level of the battery." The court affirmed as to dependent claims 9 to 11 and 16 by virtue of their dependence.

The court also rejected Tesla's argument that the Board's constructions of claims 8 and 14 violated the Administrative Procedure Act, pointing to the institution decision's request that the parties address the meaning of claim 1's limitation and to the Board's questions at the oral hearing: "We hold that Tesla was afforded sufficient notice and opportunity to address the construction of the Climate Control Limitations of claims 8 and 14 and thus the Board did not run afoul of the APA here." Because it vacated the part of the claim 1 construction that Tesla challenged, the court did not reach Tesla's APA argument for claim 1.

The decision on remand

A panel of Administrative Patent Judges Carl M. DeFranco, Kevin W. Cherry, and Brent M. Dougal entered the decision as Paper 35, with Judge DeFranco writing for the panel. Tesla's petition asserted that the dependent claims would have been obvious over a combination of a U.S. patent (7,671,567), a Japanese unexamined patent application (JP H10-55496), and a Tesla Roadster touch screen user's manual published in 2008. The Board treated the Federal Circuit's ruling on claim 1 as the law of the case, which it said also took Tesla's reason for combining the references out of dispute, leaving only whether the combination discloses the limitations each dependent claim adds. The Board noted that Charge Fusion raised no arguments specific to the dependent claims and that Tesla still bore the burden of persuasion.

The Board's findings on each claim were as follows. Claim 2 (the mobile device comprises a smartphone): the U.S. patent describes a remote selection means that can be a web browser on a cell phone, and Tesla's unrebutted expert testimony was that such a phone is a smartphone. Claim 3 (the amount of charge is displayed as a distance of travel): the U.S. patent describes displaying the vehicle's driving range, which it says corresponds to distance. Claim 4 (the user interface displays a webpage): the same web browser disclosure. Claim 5 (the interface enables selection of a future time at which charging is to be performed, with the selection stored in memory): the U.S. patent lets the user set a preset period after which the system switches between charging modes, and it states that charging parameters are stored in memory. Claim 7 (the mobile device comprises a touch screen display of the vehicle): the U.S. patent describes an onboard display with touch-sensitive buttons for selecting charging modes. Claim 15 (displaying a status indicating whether the vehicle can maintain the interior temperature in the selected mode): the Japanese application's display screen shows the battery's charged and uncharged capacity, whether the engine is stopped or running, and the temperature inside the vehicle, and the application says that when a heater is turned on or the battery's capacity has been reduced by long cooling, the engine is started and heating or charging of the battery is conducted; the Board found that the display tells the user whether the vehicle can maintain the interior temperature and that the combination of the U.S. patent and the Japanese application discloses the limitation.

For claims 3 and 5, the Board stated that because it found the U.S. patent discloses those limitations, it did not reach Tesla's alternative reliance on the user's manual. The order states that claims 2 to 5, 7, and 15 of the '135 patent are proven unpatentable and that parties seeking judicial review must comply with the notice and service requirements of 37 C.F.R. 90.2.

Related proceedings the decision names

The decision identifies Charge Fusion Technologies, LLC v. Tesla, Inc., No. 1:22-cv-00488 (W.D. Tex.), as parallel litigation on the '135 patent. It also lists two related inter partes reviews: IPR2022-01217, which it says resulted in a final written decision that the claims of U.S. Patent 10,998,753 are unpatentable, affirmed by the Federal Circuit in No. 2024-1584; and IPR2023-00062, which it says resulted in a final written decision that the claims of U.S. Patent 9,853,488 are unpatentable. According to the decision, Charge Fusion did not appeal the IPR2023-00062 decision, and those claims have been canceled.