Samsung Electronics Co., LTD. v. FRACTUS, S.A.

1. Case Identification

• Case #: IPR2014-00012
• Patent #: 7,394,432
• Filed: October 4, 2013
• Petitioner(s): Samsung Electronics Co. Ltd.
• Patent Owner(s): Fractus, S.A.
• Challenged Claims: 1 and 6

2. Patent Overview

• Title: Multilevel Antenna
• Brief Description: The ’432 patent discloses a multi-band antenna having a "multilevel structure." The invention is defined by its specific geometry, which is formed by arranging sets of similar geometric elements (polygons) in a way that allows the antenna to operate at multiple frequency bands.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 6 are obvious over Yanagisawa

• Prior Art Relied Upon: Yanagisawa (Patent 5,995,064).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yanagisawa discloses a multi-band antenna that achieves its functionality through its meandered, belt-shaped structure, which constitutes a "multilevel structure" under the broadest reasonable interpretation. To counter the Patent Owner's arguments in a related reexamination proceeding—which asserted certain operational characteristics are required—Petitioner submitted an expert declaration (Dr. Bodnar) with computer modeling of a Yanagisawa embodiment. The modeling allegedly demonstrated that Yanagisawa’s structure inherently possesses the required characteristics, such as the reuse of antenna portions for different frequency bands and a "circuitous current path" with multiple bends. For claim 6, Yanagisawa was shown to explicitly disclose its antenna for use in a "portable telephone set."
  • Motivation to Combine: As this is a single-reference ground, the motivation was framed as the motivation for a person of ordinary skill in the art (POSITA) to fully understand the properties of the disclosed Yanagisawa antenna. Petitioner asserted it would have been obvious for a POSITA to model the antenna, a routine task, to measure its radio-electric characteristics (e.g., current density, radiation patterns) across its operational frequency bands.
  • Expectation of Success: A POSITA would have a high expectation of success in modeling the antenna and confirming its operational characteristics, as antenna modeling was a standard and predictable tool in the art.

Ground 2: Claims 1 and 6 are obvious over Misra

• Prior Art Relied Upon: Misra (“Experimental Investigations on the Impedance and Radiation Properties of a Three-Element Concentric Microstrip Antenna,” Feb. 5, 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Misra discloses a concentric square-ring microstrip antenna that functions as a "multilevel structure." The concentric rings are electromagnetically coupled geometric elements (polygons) that form empty spaces, creating a "circuitous current path." Expert modeling of Misra's corner-fed embodiment allegedly showed that portions of the antenna are reused across multiple frequency bands and that the current path involves at least four bends. This structure meets the requirements of independent claim 1.
  • Motivation to Combine: For dependent claim 6, Petitioner argued a POSITA would be motivated to use the small, multi-band antenna taught by Misra in a portable communications device. The motivation stemmed from the known desire to provide access to multiple communication services using a single, compact antenna, a clear trend in the art at the time.
  • Expectation of Success: A POSITA would have reasonably expected to successfully integrate Misra’s compact antenna into a portable device without undue experimentation, given its suitable size and multi-band characteristics.

Ground 3: Claims 1 and 6 are obvious over Guo

• Prior Art Relied Upon: Guo (“Double U-Slot rectangular patch antenna,” Sep. 17, 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Guo teaches a multi-band patch antenna with two U-shaped slots, which create a "multilevel structure" and a "circuitous current path." The slots alter the current's travel distance to achieve multi-band operation, a structural solution rather than one relying on reactive elements that the Patent Owner sought to distinguish. Expert modeling of the Guo antenna allegedly confirmed that it reuses antenna portions across its three resonant frequencies and has a current path with multiple bends around the U-slots, satisfying the limitations of claim 1.
  • Motivation to Combine: Regarding claim 6, Petitioner asserted that Guo’s antenna is a small patch antenna with radio-electric characteristics suitable for portable devices. A POSITA would have been motivated to incorporate this antenna into a device like a laptop computer to provide multi-band capability. It was also argued that a POSITA would understand that the antenna could be scaled down for even smaller devices.
  • Expectation of Success: A POSITA would expect success in implementing the Guo antenna in a portable device, as its characteristics were well-suited for such applications and its size could be easily adapted for higher frequencies if needed.

4. Key Claim Construction Positions

• "multilevel structure": Petitioner argued against the Patent Owner's attempt to narrowly construe this term by importing functional limitations and negative limitations not present in the claims. Specifically, Petitioner rejected the Patent Owner's proposed exclusion of antennas that (1) incorporate reactive elements or (2) consist of groupings of single-band antennas. Petitioner contended that its expert modeling showed the prior art references met these functional requirements anyway, but that the broadest reasonable interpretation, based on the patent's focus on geometry, should not include these exclusions.
• "circuitous current path": Petitioner disputed the Patent Owner's shifting interpretation of this term. While the Patent Owner had previously agreed that two straight lines connected at an angle could form a circuitous path, it later argued in a reexamination that a path with few bends (like an L-shape) was insufficient, while simultaneously asserting in litigation that a path with four bends was infringing. Petitioner argued for the plain and ordinary meaning, which should not be so narrow as to exclude paths with only a few bends.

5. Key Technical Contentions (Beyond Claim Construction)

• The central technical contention was the use of expert modeling (via Dr. Bodnar's declaration) to proactively rebut the Patent Owner’s anticipated arguments. The Patent Owner had distinguished prior art in a related reexamination based on a lack of explicit disclosure of certain operational characteristics (e.g., reuse of antenna portions for different frequencies). Petitioner’s expert modeled the prior art antennas using industry-standard software (FEKO) to demonstrate that these structures inherently possessed the very operational characteristics the Patent Owner alleged were part of the invention, thereby arguing that "that which infringes if later, anticipates if earlier."

6. Arguments Regarding Discretionary Denial

• Petitioner dedicated significant argument to why the IPR was not time-barred under 35 U.S.C. §315(b). Petitioner had been served with a complaint alleging infringement of the ’432 patent in 2009, prior to the enactment of the America Invents Act (AIA). It was served with a second complaint in March 2013, after the AIA took effect. Petitioner argued that the one-year clock in §315(b) is only triggered by a complaint that "is served" on or after the effective date of the statute (September 16, 2012). It contended that the statute's use of the present tense ("is served") precludes applying the bar based on complaints served before the law existed, and therefore this petition, filed within one year of the 2013 complaint, was timely.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1 and 6 of the ’432 patent as unpatentable.