Wilson Electronics, LLC v. Cellphone-Mate, Inc. d/b/a SureCall

1. Case Identification

• 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 that receives, amplifies, and retransmits cellular signals. The purported novelty is a booster architecture that uses separate amplification paths for two different uplink frequency channels but employs a single, shared amplification path to boost two adjacent or abutting downlink frequency 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 that filters and amplifies two contiguous uplink channels from separate frequency bands along a common path. While Aida teaches this for uplink channels, the ’572 patent itself states that the circuitry for a shared downlink path is equivalent to a shared uplink path. Kenington was cited for disclosing a transceiver with a multiplexer architecture for processing multiple frequency bands, including the use of a low-noise amplifier (LNA) before a band-pass filter (BPF) and separate power amplifiers (PAs) for different paths. Kenington also teaches combining two receive bands (uplink) onto a common path via a triplexer.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because the interchangeability of uplink and downlink circuitry was well known. A POSITA would have been motivated to apply the shared path concept from Aida (used for uplink) to downlink channels, using the multiplexer and LNA/PA configurations taught by Kenington, to achieve the claimed invention. The motivation was to improve filtering and isolation between transmit and receive paths in a predictable manner.
  • Expectation of Success: Combining these known elements for their intended purposes would predictably result in a signal booster with the claimed architecture, as it involved applying a known amplification strategy (shared path) to a different but analogous signal type (downlink instead of uplink).

Ground 2: 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 asserted that Van Buren discloses the core architecture of the challenged patent: a signal booster designed to handle contiguous downlink frequency Bands XII and XIII using a single, shared downlink amplification path while using two separate uplink amplification paths. However, Van Buren describes its amplifier paths with generic "amplifier chains." McKay was introduced to disclose the well-known and standard LNA-BPF-PA sequence for both uplink and downlink amplification paths in a signal booster. JI was cited for disclosing a specific triplexer architecture designed to process adjacent frequency bands, separating two uplink channels while combining two downlink channels onto a single path, expressly noting its applicability to systems with Bands XII and XIII.
  • Motivation to Combine: A POSITA would be motivated to implement the generic "amplifier chains" of Van Buren using the specific, well-known LNA/BPF/PA sequence from McKay to achieve predictable signal isolation and amplification. Furthermore, a POSITA would incorporate the triplexer from JI into the Van Buren architecture to provide an efficient and known method for separating the two uplink paths and combining the two contiguous downlink paths, which is the exact problem JI purports to solve.
  • Expectation of Success: A POSITA would have a high expectation of success, as this combination involves integrating standard, well-understood amplifier components (McKay) and a purpose-built multiplexer (JI) into a system architecture (Van Buren) that already provides the fundamental claimed structure.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2) against claims 4 and 13 based on Aida and Kenington in view of Sahota (Application # 2012/0302188). This ground used the same logic as Ground 1 but added Sahota to explicitly teach the use of cellular Bands XII and XIII, which were recited in the dependent claims.

4. Key Claim Construction Positions

• Petitioner argued for constructions of terms related to frequency band proximity, which are central to the obviousness arguments.
• Contiguous: Proposed to mean frequency bands that are overlapping or share a common boundary (e.g., one band ends at 746 MHz and the next begins at 746 MHz).
• Abutting: Proposed to mean frequency bands that are directly next to each other with no frequency gap but do not share a common boundary (e.g., one ends at 920 MHz and the next begins at 921 MHz).
• Adjacent: Proposed as a broader term for bands separated by a frequency range that does not contain another incompatible frequency band. Petitioner contended that under the broadest reasonable interpretation, teachings of adjacent or contiguous bands would render claims reciting abutting bands obvious.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The petition asserted that, other than Sahota, none of the prior art references relied upon in the petition were considered during the original examination of the ’572 patent. Therefore, the petition raised new art and arguments that had not been previously presented to the Office, weighing against a discretionary denial.

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 under 35 U.S.C. §103.