Wilson Electronics LLC v. Cellphone Mate Inc

1. Case Identification

• Case #: IPR2018-01772
• Patent #: 8,867,572
• Filed: September 21, 2018
• Petitioner(s): Wilson Electronics, LLC
• Patent Owner(s): Cellphone-Mate, Inc.
• Challenged Claims: 1-7, 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 receive, amplify, and retransmit signals to improve strength. The alleged point of novelty is a booster architecture that uses separate amplification paths for two different uplink channels while using a single, shared amplification path for the corresponding two adjacent or abutting downlink channels.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aida and Kenington - Claims 1-3 and 5-7 are obvious over Aida in view of Kenington.

• Prior Art Relied Upon: Aida (Japanese Patent Publication No. H8-256101A) and Kenington (Patent 8,290,536).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Aida discloses the general framework for a multi-band signal booster, including a common path that filters and amplifies two uplink channels from separate frequency bands. Kenington was asserted to teach similar principles in a transceiver, disclosing a multiplexer that processes uplink and downlink channels where two uplink channels are filtered and amplified on a common path. Petitioner contended that applying the known common-path amplification for uplink channels taught by Aida and Kenington to downlink channels is an obvious design choice, a position supported by the ’572 patent’s own disclosure that the circuitry is equivalent for both applications.
  • Motivation to Combine: A POSITA would combine the multiplexer taught in Kenington with the signal booster framework of Aida to achieve improved filtering and isolation between transmit and receive paths. As the underlying engineering for amplifying combined signals is the same for uplink and downlink, a POSITA would be motivated to apply the prior art’s common uplink path teachings to a common downlink path to achieve the same benefits of component reduction and efficiency.
  • Expectation of Success: Combining these known elements using established engineering principles would predictably result in a functional multi-band booster with a shared downlink path.

Ground 2: Obviousness over Aida, Kenington, and Sahota - Claims 4 and 13 are obvious over Aida and Kenington in view of Sahota.

• Prior Art Relied Upon: Aida (Japanese Patent Publication No. H8-256101A), Kenington (Patent 8,290,536), and Sahota (Application # 2012/0302188).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Aida and Kenington combination by adding Sahota, which was cited to demonstrate that the specific frequency bands recited in claim 4 (Band XII and Band XIII) were well-known at the time of the invention. For claim 13, which adds a housing and a printed circuit board (PCB), Petitioner asserted that implementing booster electronics on a PCB within a housing was a standard and well-known practice, as shown by references like McKay and Sahota.
  • Motivation to Combine: A POSITA seeking to create a signal booster for the U.S. market would be motivated to apply the general architecture from Aida and Kenington to known, commercially relevant frequency bands, such as Bands XII and XIII taught by Sahota. The motivation to add a housing and PCB is driven by conventional, cost-effective manufacturing and design standards.

Ground 3: Obviousness over Van Buren, McKay, and JI - Claims 1-7 and 13 are obvious over Van Buren in view of McKay and in view of JI.

• Prior Art Relied Upon: Van Buren (Patent 8,755,399), McKay (Application # 2004/0166802), and JI (WO 2012/109262).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van Buren discloses a signal booster specifically for processing spectrally adjacent signals, including Bands XII and XIII, using separate uplink paths and a combined downlink path. McKay was cited for teaching the conventional and well-known amplification sequence of a low-noise amplifier (LNA), followed by a band-pass filter (BPF), followed by a power amplifier (PA). JI was asserted to teach a triplexer architecture for processing two separate uplink channels and one combined downlink channel for adjacent frequency bands.
  • Motivation to Combine: A POSITA would combine these references to optimize a known design. They would be motivated to implement the specific and efficient LNA/BPF/PA sequence from McKay into the generic amplifier chains of Van Buren to improve signal isolation and performance. Further, a POSITA would incorporate the triplexer taught by JI into the Van Buren architecture to arrive at the claimed multiplexer functionality, creating a more integrated and efficient device for handling the separate and combined signal paths.

4. Key Claim Construction Positions

• Petitioner argued for constructions of terms related to frequency band proximity. It proposed that "contiguous" refers to bands that overlap or share a common boundary. It contended that under the broadest reasonable interpretation, teachings of combining "contiguous" bands would render it obvious to combine "abutting" (immediately adjacent without a shared boundary) or "adjacent" (nearby) bands on a shared amplification path, as the underlying engineering is identical.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical argument was the direct equivalency and interchangeability of circuitry for shared-path amplification of uplink versus downlink signals. Petitioner contended there is no practical engineering difference between amplifying and filtering combined uplink signals versus combined downlink signals, meaning a POSITA would readily apply teachings from one context to the other.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because, with the exception of Sahota, none of the primary prior art references relied upon in the petition were considered by the USPTO during the original examination of the ’572 patent.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 and 13 as unpatentable.