Wilson Electronics LLC v. Cellphone Mate Inc

1. Case Identification

• Case #: IPR2018-01771
• Patent #: 8,867,572
• Filed: September 21, 2018
• Petitioner(s): Wilson Electronics, LLC
• Patent Owner(s): Cellphone-Mate, Inc.
• Challenged Claims: 1-7 and 13

2. Patent Overview

• Title: Apparatus and methods for radio frequency signal boosters
• Brief Description: The ’572 patent discloses a cell phone signal booster designed to amplify signals for two different frequency bands (e.g., Bands XII and XIII). The booster uses separate amplification paths for the two uplink channels but employs a single, shared amplification path to amplify the two corresponding downlink channels, particularly when the downlink frequency bands are adjacent or abutting.

3. Grounds for Unpatentability

Ground 1: Obviousness over Zhuo in view of Layne and alternatively JI - Claims 1-3 and 5-7 are obvious over Zhuo in view of Layne or JI.

• Prior Art Relied Upon: Zhuo (Chinese Patent No. 201699704), Layne (Patent 7,250,830), and JI (WO 2012/109262).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Zhuo taught a multi-band wireless repeater with separate uplink and downlink amplification paths for each of three frequency bands. Each path included a low-noise amplifier (LNA), a band-pass filter (BPF), and a power amplifier (PA). Layne taught a mobile radio that used a single, shared amplification path with a single BPF to process two contiguous uplink frequency bands (7H and 8L). The combination of Zhuo's general architecture with Layne's shared-path concept for contiguous bands rendered the challenged claims obvious. Alternatively, JI disclosed a triplexer explicitly designed to handle separate uplinks for two bands (e.g., Bands A and B) while processing their corresponding downlinks on a combined, composite path, teaching the exact configuration claimed.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the shared amplification path from Layne into Zhuo’s multi-band booster to reduce cost and complexity, a well-known engineering goal. When amplifying contiguous frequency bands, separating them into different paths as in Zhuo is inefficient. The emergence of contiguous cellular bands like XII and XIII provided the market pressure to create a more efficient design, and combining known elements as taught by Layne and JI was a predictable solution.
  • Expectation of Success: Combining a shared amplification path for contiguous bands with a standard repeater architecture was a simple arrangement of known elements, each performing its known function, which would predictably result in a functional and more cost-effective device.

Ground 2: Obviousness over DUO Repeater in view of JI - Claims 1-3, 5, 7, and 13 are obvious over DUO Repeater in view of JI.

• Prior Art Relied Upon: DUO Repeater (Duo-i6525 User Manual) and JI (WO 2012/109262).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that the DUO Repeater, a commercially available RF repeater, taught the use of shared amplification paths. Specifically, its architecture included a shared path (Path C) that amplified the downlink channels for two separate, non-contiguous frequency bands (SMR800 and SMR900) simultaneously. The DUO Repeater used duplexers to manage signals. JI taught a triplexer specifically designed to accommodate cellular bands with separate uplinks and a combined, adjacent downlink path, as is the case for Bands XII and XIII.
  • Motivation to Combine: The DUO Repeater used duplexers appropriate for its signal structure. A POSITA seeking to adapt such a system for Bands XII and XIII, which have separate uplinks but contiguous downlinks, would be motivated to substitute the duplexers in the DUO Repeater with the triplexer taught by JI. JI’s triplexer was explicitly disclosed for use with adjacent frequency bands like XII and XIII and was a known, suitable component for that specific application. This modification would be a predictable substitution of one multiplexing component for another to achieve a known goal.
  • Expectation of Success: Substituting a duplexer with a known triplexer to accommodate a different but well-understood frequency band structure was a routine design choice for a POSITA and would have been expected to work predictably.

• Additional Grounds: Petitioner asserted additional obviousness challenges. Ground 2 argued claims 4 and 13 are obvious over Zhuo and Layne in view of Sahota (Application # 2012/0302188), which explicitly disclosed Bands XII and XIII. Ground 3 argued claims 1-3 and 5-7 are obvious over Zhuo in view of Aida (Japanese Patent No. H8-256101A), which provided an alternative teaching of combining contiguous bands. Ground 5 argued claims 4 and 6 are obvious over the DUO Repeater and JI in view of Sahota to specifically target Bands XII/XIII.

4. Key Claim Construction Positions

• Petitioner argued that under the broadest reasonable interpretation, the terms "contiguous," "abutting," and "adjacent" describe degrees of proximity between frequency bands. "Contiguous" bands overlap or share a common boundary. "Abutting" bands are directly next to each other. "Adjacent" bands are close but separated by a small frequency range. Petitioner contended it was well-known in the art to combine any of these types of bands along a shared amplification path, making the specific distinction obvious.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because none of the primary prior art references (Zhuo, Layne, Aida, JI, DUO Repeater) were considered during the original, expedited examination of the ’572 patent. Therefore, the petition raised new arguments and art that had not been previously presented to the Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 and 13 of Patent 8,867,572 as unpatentable.