PTAB

IPR2018-01774

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

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1. Case Identification

2. Patent Overview

  • Title: Apparatus and methods for radio frequency signal boosters
  • Brief Description: The ’190 patent discloses a cell phone signal booster designed to amplify signals in multiple frequency bands. The purported novelty is a configuration that includes a shared amplification path for simultaneously boosting adjacent downlink channels (such as cellular Bands XII and XIII), while utilizing separate amplification paths for the corresponding uplink channels.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6, 8, 19, 20, and 24 are obvious over Layne in view of Sahota and McKay.

  • Prior Art Relied Upon: Layne (Patent 7,250,830), Sahota (Application # 2012/0302188), and McKay (Application # 2004/0166802).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Layne teaches the core inventive concept: a shared amplification path using a single band-pass filter to simultaneously amplify two contiguous uplink channels (the 7H and 8L bands). The petition asserted that a person of ordinary skill in the art (POSITA) would understand that the circuitry for amplifying uplink channels is functionally identical to that for amplifying downlink channels. Sahota was cited to demonstrate that the specific contiguous downlink channels of Band XII and Band XIII, as recited in dependent claims, were well-known in the art. McKay was used to show that implementing signal booster electronics on a printed circuit board (PCB) was a common and well-known practice.
    • Motivation to Combine: A POSITA would combine these references to create a more efficient and cost-effective signal booster. The primary motivation was to apply the known space- and cost-saving shared-path architecture from Layne to the specific, commercially relevant, and contiguous downlink frequency bands disclosed in Sahota. Implementing this known configuration on a PCB as taught by McKay was a standard manufacturing choice.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying a known amplification technique (Layne's shared uplink path) to a functionally equivalent application (a downlink path) using known frequency bands (Sahota). The result was a predictable improvement in component reduction and cost.

Ground 2: Claims 1, 2, 6, 8, and 19 are obvious over the DUO Repeater.

  • Prior Art Relied Upon: Duo-i6525 User Manual (“DUO Repeater”).

  • Core Argument for this Ground:

    • Prior Art Mapping: The DUO Repeater, a user manual for a commercial signal booster, disclosed a common downlink amplification path that simultaneously amplifies two non-contiguous downlink bands (SMR800 and SMR900), which are separated by approximately 66 MHz. Petitioner contended this showed that using a shared path to amplify multiple, even separated, frequency bands was a known design choice in the art. The DUO Repeater also disclosed the use of a PCB and band-pass filters configured to pass the desired downlink channels while attenuating the corresponding uplink channels.
    • Motivation to Combine: The petition argued that since the DUO Repeater taught the amplification of separated bands on a common path (a more challenging scenario due to the need to amplify the noise in the space between bands), it would have been obvious to adapt this design for adjacent or contiguous bands. Such a modification would be a less complex and more efficient application of the known shared-path technique, as there would be little to no inter-band noise to manage.
    • Expectation of Success: A POSITA would expect success because modifying the DUO Repeater to handle contiguous bands instead of separated bands is a simplification of the design, leading to the predictable result of a functional shared-path booster with reduced component count and complexity.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including:

    • Claim 18 as obvious over Zhuo (Chinese Patent No. 201699704) in view of Layne and Sahota, arguing for the modification of a known multi-band booster to incorporate a shared path for contiguous bands.
    • Claims 3, 4, 20, and 24 as obvious over the DUO Repeater in view of Sahota, arguing a POSITA would be motivated to modify the DUO Repeater to amplify the specific contiguous Bands XII and XIII taught by Sahota.
    • Claim 18 as obvious over the DUO Repeater in view of the TEKO Repeater, arguing that a POSITA would modify the DUO Repeater to include the multiple bands disclosed in the TEKO Repeater product specifications.

4. Key Claim Construction Positions

  • Petitioner argued that the terms "contiguous," "abutting," and "adjacent" are central to the patentability analysis.
  • Petitioner proposed that under the broadest reasonable interpretation, these terms describe a spectrum of proximity. "Contiguous" was defined as bands that share a common frequency boundary (e.g., Band XII downlink ending at 746 MHz and Band XIII downlink beginning at 746 MHz).
  • A key part of the argument was that a POSITA would understand that if amplifying "adjacent" bands (separated by a small frequency gap) on a common path was known, then amplifying "contiguous" or "abutting" bands (with no gap) on a common path would be obvious, as it represents a less technically challenging scenario with no unwanted noise to amplify between the bands.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition acknowledged that both Layne and Sahota were listed in an Information Disclosure Statement during prosecution. However, it contended that the examiner never provided a substantive analysis of Layne and did not consider the specific combination of Layne, Sahota, and McKay. Therefore, the core arguments and prior art combinations presented in the petition were not previously before the U.S. Patent and Trademark Office.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, 8, 18-20, and 24 of Patent 9,402,190 as unpatentable.