Wilson Electronics LLC v. Cellphone Mate Inc

1. Case Identification

• Case #: IPR2018-01776
• Patent #: 9,402,190
• Filed: September 21, 2018
• Petitioner(s): Wilson Electronics, LLC
• Patent Owner(s): Cellphone-Mate, Inc.
• Challenged Claims: 1-4, 6, 8, 18-20, and 24

2. Patent Overview

• Title: Apparatus and methods for radio frequency signal boosters
• Brief Description: The ’190 patent discloses a cellular signal booster that receives, amplifies, and retransmits radio frequency signals. The alleged point of novelty is the use of a shared amplification path to simultaneously boost two different, adjacent downlink frequency channels, such as cellular Bands XII and XIII.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aida/Kenington and Sahota - Claims 1-4, 6, 8, 18-20, and 24 are obvious over Aida in view of Sahota, or alternatively in view of Kenington.

• Prior Art Relied Upon: Aida (JP Patent Publication No. H8-256101A), Sahota (Application # 2012/0302188), and Kenington (Patent 8,290,536).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Aida and Kenington both disclose the core concept of a shared amplification path that uses a common band-pass filter and amplifier to simultaneously boost two different frequency bands. While these references explicitly show this for uplink channels that are contiguous (Aida) or adjacent (Kenington), Petitioner contended that the underlying electrical engineering principles are identical for downlink channels. Sahota was cited to provide context for the specific US frequency bands claimed (Bands XII and XIII) and to teach the well-known practice of implementing such boosters on a printed circuit board (PCB).
  • Motivation to Combine: A POSITA would combine these teachings because Aida and Kenington provide a known method for efficiently combining frequency bands to reduce component count and complexity. A POSITA would be motivated to apply this known technique to the specific, commercially relevant US frequency bands disclosed in Sahota (Bands XII and XIII) to create a booster for the US market, which was a predictable application of known principles.
  • Expectation of Success: Success was expected because designing band-pass filters and amplifiers to cover specific frequency ranges, including contiguous or adjacent bands, was a routine and well-understood task for a POSITA.

Ground 2: Obviousness over Van Buren and McKay - Claims 1-4, 6, 8, 18-20, and 24 are obvious over Van Buren in view of McKay.

• Prior Art Relied Upon: Van Buren (Patent 8,755,399) and McKay (Application # 2004/0166802).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Van Buren is a primary reference that explicitly teaches a signal booster designed to process spectrally adjacent first and second downlink bands, specifically identifying the downlink bands of Band XII and Band XIII. Van Buren discloses a single downlink amplification path with a common amplifier chain and band-pass filters configured to pass both of these adjacent downlink channels. McKay was used to supply the limitation of implementing the booster on a PCB, as McKay discloses a signal booster housed on an electronics board.
  • Motivation to Combine: A POSITA would combine Van Buren and McKay because implementing an electronic system like the one in Van Buren on a PCB, as shown in McKay, was a standard, well-known, and necessary step in manufacturing a practical commercial product. This combination represented a standard design choice, not an inventive step.
  • Expectation of Success: There was a high expectation of success, as Van Buren taught the specific circuit architecture for the claimed frequency bands, and implementing it on a PCB using McKay’s teachings involved routine and predictable engineering practices.

Ground 3: Obviousness over Van Buren and TEKO Repeater - Claim 18 is obvious over Van Buren in view of the TEKO Repeater.

• Prior Art Relied Upon: Van Buren (Patent 8,755,399) and the TEKO Repeater (a commercial product datasheet).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically targeted claim 18, which requires amplification of a plurality of frequency bands (Bands II, IV, V, XII, and XIII). Petitioner argued that Van Buren already taught the core concept of amplifying adjacent Bands XII and XIII on a shared path. The TEKO Repeater, a commercially available multi-band signal booster, was cited as evidence that boosters amplifying all the bands recited in claim 18 were known in the art. The TEKO Repeater datasheet explicitly showed support for Bands II, IV, V, and a combined downlink for Bands XII and XIII (under the SMR700 band).
  • Motivation to Combine: A POSITA, starting with Van Buren's design for efficiently handling Bands XII and XIII, would be motivated by market demand to expand the booster's capability to cover other common cellular bands. The TEKO Repeater demonstrated the commercial importance and technical feasibility of supporting the exact combination of bands recited in claim 18. Therefore, a POSITA would modify Van Buren's design to include these additional bands, a modification shown to be straightforward by the TEKO Repeater.
  • Expectation of Success: A POSITA would have expected success in adding support for Bands II, IV, and V to the Van Buren design, as the TEKO Repeater proved that the necessary components and architectures were known and available.

4. Key Claim Construction Positions

• Petitioner proposed constructions for key terms related to frequency proximity, which were central to applying prior art teachings to the claims.
• "Contiguous": Defined 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": Defined to mean bands that are directly next to each other with no frequency gap (e.g., 910-920 MHz and 921-930 MHz).
• "Adjacent": Used as a broader term for bands that are close but may be separated by a small, non-interfering frequency range. Petitioner argued that under the broadest reasonable interpretation, these concepts were interchangeable for obviousness purposes.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical argument repeated across multiple grounds was that the fundamental electrical engineering principles for amplifying uplink frequency bands are the same as those for amplifying downlink frequency bands. This assertion was used to argue that prior art disclosing a shared amplification path for uplink channels (e.g., Aida, Kenington) would render a similar configuration for downlink channels obvious to a POSITA.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. § 325(d). It was noted that while some prior art was of record during prosecution, key references like Van Buren were listed in an Information Disclosure Statement but never received substantive consideration or comment from the Examiner. Petitioner asserted that because the Examiner never addressed the most relevant prior art, the arguments presented in the petition were not substantially the same as those previously presented to the Office.

7. Relief Requested

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