Kathrein USA Inc v. Fractus SA

1. Case Identification

• Case #: IPR2019-00954
• Patent #: Patent 8,497,814
• Filed: April 9, 2019
• Petitioner(s): Kathrein USA Inc.
• Patent Owner(s): Fractus, S.A.
• Challenged Claims: 1, 4, and 17

2. Patent Overview

• Title: Slim Triple Band Antenna Array for Cellular Base Stations
• Brief Description: The ’814 patent discloses a slim triple-band antenna array for cellular base stations intended to reduce the physical footprint of antenna installations. The invention purports to integrate multiple mobile services into a compact radiating system by using an interlaced arrangement of four different sets of radiating elements operating across three frequency bands.

3. Grounds for Unpatentability

Ground 1: Anticipation under 35 U.S.C. §102 - Claims 1, 4, and 17 are anticipated by Bisiules '071.

• Prior Art Relied Upon: Bisiules ’071 (Application # 2004/0252071).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bisiules ’071 discloses a multiband, dual-polarized base station antenna that anticipates every limitation of the challenged claims. The antenna array shown in Figure 7 of Bisiules ’071 was asserted to be virtually identical to the embodiment in the ’814 patent, disclosing a triple-band array operating in the cellular, PCN/PCS, and UMTS frequency ranges. Petitioner mapped the four sets of radiating elements of claim 1 directly to elements in Bisiules ’071: the first set to cross-type dipoles 24 and 26; the second set to cross-type dipoles 28, 30, and 32; the third set to combination-type assemblies 114, 116, and 118; and the fourth set to combination-type assemblies 120 and 122. The interlacing and operational frequency bands for these sets were also alleged to be disclosed. For claim 4, Petitioner argued that Bisiules ’071 teaches operation across multiple services (e.g., PCS and UMTS). For claim 17, Bisiules ’071 was alleged to disclose an adjustable electrical "downtilt control" mechanism.

Ground 2: Obviousness under 35 U.S.C. §103 - Claims 1, 4, and 17 are obvious over Bisiules '071 in view of Baliarda.

• Prior Art Relied Upon: Bisiules ’071 (Application # 2004/0252071) and Baliarda (Application # 2002/0171601).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this ground as an alternative to Ground 1. It argued that to the extent the Patent Owner might contend that the "combination-type assemblies" of Bisiules '071 do not meet the limitations for the third and fourth sets of radiating elements, Baliarda's teachings would render the claims obvious. Bisiules ’071 still teaches the majority of the claim limitations, including the first and second sets of radiating elements (the cross-type dipoles) and their interlaced arrangement. Baliarda teaches designing multiband interleaved arrays by combining mono-band arrays and, where elements from different bands would overlap, using a single composite multiband element capable of operating at all the required frequencies.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because Bisiules ’071 and Baliarda address the same problem of creating compact, multiband antenna arrays. Petitioner argued a POSITA would find it obvious to substitute the known multiband elements taught by Baliarda for the combination-type assemblies in Bisiules ’071. This would be a simple substitution of one known component for another known component to achieve a predictable result—multiband operation in a compact physical layout.
  • Expectation of Success: A POSITA would have had a high expectation of success. The proposed modification involved a simple replacement of one type of known multiband element (in Bisiules ’071) with another (from Baliarda) that performs the same function. Given the similar layouts and objectives of the two references, the substitution would be straightforward and its outcome predictable.

4. Key Claim Construction Positions

• "frequency band" (claims 1, 4, 17): Petitioner argued this term should be given its ordinary and customary meaning of "a range of frequencies extending between two limiting frequencies." This construction was proposed in contrast to the Patent Owner’s narrower construction in related litigation, which sought to limit the term to frequencies designated for "cellular services." Petitioner contended that references to cellular services in the ’814 patent were merely exemplary and did not constitute a clear disavowal of the term’s broader, ordinary meaning.
• "radiating element" (claim 1): Petitioner asserted that this term should be construed according to its plain meaning as an "element that radiates and/or receives radio waves," which was consistent with the Patent Owner's position in related litigation. Petitioner maintained the challenged claims are invalid under either this construction or a competing proposal from the litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the petition raises new arguments and art not previously considered by the USPTO during prosecution. Specifically, the primary reference, Bisiules ’071, was only cited during prosecution but was never substantively discussed or applied in a rejection. Further, while Baliarda was cited during prosecution, the Examiner used it as a primary reference for anticipation, whereas the petition uses it as a secondary reference in an obviousness combination. Therefore, Petitioner contended the arguments and the manner in which the prior art is applied in the petition are substantially different from what the Examiner considered.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 4, and 17 of Patent 8,497,814 as unpatentable.