Kathrein USA, Inc. v. Fractus S.A.

1. Case Identification

• 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 designed for cellular base stations. The invention purports to integrate multiple mobile/cellular services into a compact radiating system by using an array comprising four distinct sets of radiating elements that operate across three frequency bands, with the stated goal of reducing the antenna's physical width and visual impact.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Bisiules (Application # 2004/0252071).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bisiules discloses every element of the challenged claims. The antenna array shown in Figure 7 of Bisiules was asserted to be virtually identical to the ’814 patent’s embodiment, teaching the same physical layout of four distinct sets of radiating elements operating across three frequency bands. Petitioner mapped Bisiules’s combination of box-type dipole arrays and cross-type dipole antennas to the four sets of radiating elements recited in claim 1. The three frequency bands disclosed in Bisiules (for cellular, PCN/PCS, and UMTS signals) were mapped to the claimed frequency bands. For dependent claim 4, Petitioner argued that Bisiules teaches operation in multiple cellular services (PCS and UMTS). For dependent claim 17, Petitioner asserted that Bisiules explicitly discloses an adjustable electrical down-tilt mechanism for its antenna array.

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

• Prior Art Relied Upon: Bisiules (Application # 2004/0252071) and Baliarda (Application # 2002/0171601).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to anticipation. Petitioner argued that if Bisiules were found not to explicitly teach the specific multiband, combination-type radiating elements of the ’814 patent (claimed as the third and fourth sets), a person of ordinary skill in the art (POSITA) would have looked to a reference like Baliarda. Baliarda was argued to teach the design of compact, multiband arrays by interleaving conventional mono-band arrays and, where elements from different frequency bands overlap, substituting a single multiband element capable of operating at all the required frequencies.
  • Motivation to Combine: A POSITA would combine the teachings to achieve the known goal of a compact, multiband antenna. The motivation was described as the simple substitution of one known type of multiband radiating element (from Baliarda) for another functionally equivalent, known multiband element (the combination-type assemblies in Bisiules). This modification would be a predictable design choice to optimize the antenna structure, a principle explicitly taught by Baliarda.
  • Expectation of Success: Petitioner asserted a high expectation of success. The combination would involve replacing known components with other known components that perform the same function, within antenna layouts (in Bisiules and Baliarda) that are already very similar. The result—a functional triple-band antenna—was argued to be entirely predictable.

4. Key Claim Construction Positions

• "frequency band" (claims 1, 4, 17): Petitioner argued this term should be given its plain and ordinary meaning: "a range of frequencies extending between two limiting frequencies." This position was contrasted with the Patent Owner's narrower construction proposed in related litigation, which sought to limit the term to frequencies specifically designated for "cellular services." Petitioner contended this limitation was not required by the intrinsic evidence and that references to the ’814 patent were merely exemplary.
• "radiating element" (claim 1): Petitioner argued that this term does not require construction beyond its ordinary meaning of an "element that radiates and/or receives radio waves." Petitioner asserted that the specification provides no special definition and that this construction should apply, noting the claims would be invalid under either this construction or a competing construction from related litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the grounds presented in the petition were not substantially the same as those considered during the original prosecution. Petitioner emphasized two key differences: (1) the primary reference, Bisiules, was merely listed on an Information Disclosure Statement but was never substantively analyzed or applied by the Examiner; and (2) Baliarda was applied here as a secondary reference in an obviousness combination, whereas the Examiner had previously used it as a primary reference for anticipation. These distinctions, along with new expert testimony, were argued to warrant institution.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review (IPR) and cancel claims 1, 4, and 17 of Patent 8,497,814 as unpatentable.