PTAB

IPR2018-01779

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

Title: Apparatus and methods for radio frequency signal boosters
Brief Description: The ’839 patent discloses a cellular signal booster designed to amplify signals from multiple frequency bands. The purported novelty lies in an architecture that processes uplink signals for different bands on separate amplification paths, while processing the downlink signals for "adjacent" frequency bands (specifically Bands XII and XIII) on a single, shared amplification path.

Prior Art Relied Upon: Aida (JP H8-256101A) and Kenington (Patent 8,290,536).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the combination of Aida and Kenington taught every element of the challenged claims. Aida disclosed a cellular signal booster that amplified multiple frequency bands and passed two contiguous uplink frequency bands (Analog and Digital) through a common band-pass filter and amplifier. Kenington disclosed a radio transceiver with the specific architecture claimed in the ’839 patent: separate amplification paths for two uplink channels and a shared, common path for amplifying two adjacent downlink channels.
- Motivation to Combine: Aida provided a general blueprint for a multi-band booster with a shared path. A POSITA seeking to improve Aida’s design would have been motivated to incorporate the more efficient and cost-effective architecture from Kenington, which explicitly taught using separate uplink paths and a shared downlink path for adjacent frequencies to reduce component size and cost.
- Expectation of Success: Combining the known booster concepts from Aida with the specific, well-understood transceiver architecture from Kenington involved applying predictable RF engineering principles to achieve the expected result of a functional multi-band booster.

Prior Art Relied Upon: Aida (JP H8-256101A), Kenington (Patent 8,290,536), and Sahota (Application # 2012/0302188).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the combination of Aida and Kenington to establish the base architecture of the signal booster. Petitioner then introduced Sahota to supply the specific U.S. frequency bands recited in the dependent claims. Sahota explicitly disclosed a multi-band receiver configured to support Bands XII and XIII, noting their specific frequency ranges and their contiguous nature (downlink for Band XII ends at 746 MHz, downlink for Band XIII begins at 746 MHz).
- Motivation to Combine: A POSITA, having designed the general booster taught by Aida and Kenington, would have been motivated to adapt it for use in the U.S. market. Sahota provided the necessary, publicly available information about the specific frequency ranges for U.S. LTE bands like XII and XIII. Applying the known boosting technique to these specific bands was characterized as a predictable design choice.

Prior Art Relied Upon: Van Buren (Patent 8,755,399).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Van Buren, by itself, taught all limitations of the challenged claims. Van Buren was filed on the same day as the application leading to the ’839 patent’s parent and discloses a signal booster to "facilitate processing wireless communication signals in which...downlink band of [a] first communication band and [a] second communication band are spectrally adjacent." Specifically, Van Buren described a booster for handling contiguous downlink frequency Bands XII and XIII using a shared downlink amplification path, while using separate uplink paths for the Bands XII and XIII uplink channels. Petitioner mapped the figures and description of Van Buren directly to the elements of the independent claims.
Additional Grounds: Petitioner asserted that claim 8 is obvious over Aida and Kenington in view of Sahota or, alternatively, the TEKO Repeater. A final ground asserted claim 8 is obvious over Van Buren in view of Sahota or the TEKO Repeater. These grounds argued that building a multi-band booster covering all the recited U.S. bands (II, IV, V, XII, XIII) was a predictable extension of the primary combinations, as taught by multi-band commercial products like the TEKO Repeater.

Petitioner argued for the broadest reasonable interpretation of several terms related to frequency proximity, which it contended were central to applying the prior art.
- "Contiguous": Defined as frequency bands that are overlapping or share a common boundary (e.g., Band XII downlink ending at 746 MHz and Band XIII downlink starting at 746 MHz).
- "Adjacent": Defined as bands that are not contiguous but are separated by a frequency range that does not contain an intervening, incompatible cellular service band.
This interpretation was crucial because Petitioner argued that under this standard, a teaching of combining "contiguous" bands (as in Aida) would make it obvious to combine "adjacent" bands (as claimed in the ’839 patent) on a shared path, and vice-versa, as this represented a routine design choice for a POSITA.

Petitioner argued that discretionary denial under §325(d) would be inappropriate. It asserted that, with the exception of Sahota (which was cited during prosecution), the primary prior art references relied upon in the petition—including Aida, Kenington, Van Buren, and the TEKO Repeater—were never presented to or considered by the Examiner. Therefore, the petition raised substantially new questions of patentability based on new prior art and arguments that had not been previously evaluated by the USPTO.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3-5, 7, 8, 11, 17, 19, 20, and 22 of the ’839 patent as unpatentable.