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

1. Case Identification

• 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 designed to amplify signals in multiple frequency bands. The purported novelty is a shared amplification path configured to simultaneously boost two different, adjacent downlink channels (e.g., for Band XII and Band XIII), which allegedly simplifies design and reduces the need for costly, high-performance filters.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aida, Sahota, and Kenington - Claims 1-4, 6, 8, 18-20, and 24 are obvious over Aida in view of Sahota, and 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 with a common filter and amplifier for two different but contiguous or adjacent uplink frequency channels. Aida shows a shared path for two contiguous uplink bands, while Kenington shows a shared path for two adjacent uplink bands. Petitioner contended that applying this known architecture to downlink channels would have been obvious, as the engineering principles are identical. Sahota was cited to show that the specific downlink channels of Band XII and Band XIII were known to be contiguous and that implementing boosters on a printed circuit board (PCB) was standard practice.
  • Motivation to Combine: A POSITA would combine these teachings to achieve predictable benefits of reduced component count, size, and cost, which are constant drivers in the field. Petitioner asserted it would have been an obvious design choice to apply the known shared-path architecture from Aida or Kenington to the specific, well-known downlink bands of Sahota, particularly since the underlying engineering is the same for uplink and downlink paths.
  • Expectation of Success: Success was expected because the combination merely applies a known signal processing technique (shared-path amplification) to a different but analogous application (downlink instead of uplink) using standard components and well-understood frequency bands.

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 highly relevant reference that teaches a signal booster specifically designed to process spectrally adjacent frequency bands, including the use of a single, shared downlink amplification path for the downlink channels of Band XII and Band XIII. Van Buren’s booster includes a common amplifier chain and band-pass filters configured to pass the combined downlink channels. McKay was cited primarily to teach the routine and well-known practice of implementing such electronic systems on a PCB within a housing.
  • Motivation to Combine: The motivation was presented as a simple and obvious implementation choice. A POSITA seeking to build the signal booster disclosed in Van Buren would naturally and conventionally implement its electronics on a PCB, as taught by McKay and as is standard in the industry, to create a physical product.
  • Expectation of Success: Petitioner argued success would be certain, as this ground combines a comprehensive primary reference (Van Buren) with a reference teaching only a conventional implementation method (McKay).

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 (product specification).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claim 18, which requires amplification of a plurality of bands comprising Bands II, IV, V, XII, and XIII. Petitioner relied on Van Buren for its teaching of a shared amplification path for adjacent Bands XII and XIII. The TEKO Repeater, a commercial product, was cited to show that it was well known to build multi-band boosters that operated across all the specific frequency bands recited in claim 18. The TEKO Repeater specifications explicitly show it services Bands II, IV, V, and combines Bands XII and XIII on a single downlink frequency.
  • Motivation to Combine: A POSITA, starting with the core architecture of Van Buren, would be motivated to expand its functionality to cover other commercially important frequency bands. The TEKO Repeater demonstrated that building a single device to cover all the recited bands was known and commercially practiced. Therefore, a POSITA would combine the teachings to create a more versatile and commercially desirable product.
  • Expectation of Success: Success was expected because the combination involves adding known, modular functionalities (amplification of additional, standard frequency bands) to an existing system architecture (Van Buren's shared path) using predictable engineering principles.

4. Key Claim Construction Positions

• Petitioner argued for specific constructions of "contiguous," "abutting," and "adjacent" as applied to frequency bands.
  • Contiguous: Defined as frequency bands that are overlapping or share a common boundary (e.g., one ends at 746 MHz, the next begins at 746 MHz).
  • Abutting: Defined as bands directly next to each other with no frequency gap.
  • Adjacent: Defined as bands separated by a frequency range that does not contain another incompatible band.
• These definitions are central to Petitioner's argument that it would be obvious for a POSITA to apply prior art teachings for "contiguous" bands to the claimed "adjacent" or "abutting" bands, viewing it as a simple and predictable design choice.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical argument asserted throughout the petition is that the fundamental electrical engineering principles for designing amplification paths for uplink and downlink signals are identical. This contention was used to argue that prior art disclosing a shared path for uplink channels (e.g., Aida, Kenington) renders a similar shared path for downlink channels obvious to a POSITA.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d). It acknowledged that Van Buren and Sahota appear on the face of the ’190 patent but contended that Van Buren was never cited by the Examiner or substantively considered during prosecution. Petitioner asserted that because the Examiner did not provide reasons for allowance over Van Buren, the prior art and arguments in the petition have not been previously presented to the Office, weighing against discretionary denial.

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.