PTAB

IPR2019-00956

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

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1. Case Identification

  • Case #: Unassigned
  • Patent #: 9,450,305
  • Filed: April 9, 2019
  • Petitioner(s): KATHREIN USA INC.
  • Patent Owner(s): FRACTUS, S.A.
  • Challenged Claims: 1 and 12

2. Patent Overview

  • Title: SLIM TRIPLE BAND ANTENNA ARRAY FOR CELLULAR BASE STATIONS
  • Brief Description: The ’305 patent describes a slim, triple-band antenna array designed for cellular base stations. The invention purports to integrate multiple mobile communication services into a single compact radiating system by using an array comprising three distinct sets of radiating elements, each operating on different, non-overlapping frequency bands.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 12 are obvious over Bisiules ’071, Bisiules ’938, and Rhodes.

  • Prior Art Relied Upon: Bisiules ’071 (Application # 2004/0252071), Bisiules ’938 (International Publication No. WO 2004/055938), and Rhodes (Application # 2004/0038714).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bisiules ’071 taught most limitations of claims 1 and 12, disclosing a multiband antenna with a layout of radiating elements virtually identical to that of the ’305 patent. Bisiules ’071 disclosed first, second, and third sets of radiating elements, including combination-type assemblies operating on multiple frequency bands. However, Bisiules ’071 did not explicitly teach that the second set of radiating elements was displaced from the main vertical axis. Bisiules ’938 was introduced to teach displacing pairs of radiating elements laterally from a central vertical axis. Rhodes was cited to teach the desirability of adjusting beam width and azimuth in cellular base stations.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Bisiules ’071 with Bisiules ’938 and Rhodes to improve antenna performance. Bisiules ’938 explicitly stated that offsetting elements enhances beam width control and reduces grating lobes. Rhodes provided the motivation to implement such beam control to add flexibility in allocating capacity and avoiding radio coverage gaps. A POSITA would therefore have been motivated to modify the Bisiules ’071 antenna by displacing elements as taught by Bisiules ’938 to achieve the benefits described in Rhodes.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success, as the modification involved applying a known technique (laterally shifting radiating elements) to a known antenna design to achieve a predictable result (enhanced beam control).

Ground 2: Claims 1 and 12 are obvious over Bisiules ’071, Bisiules ’938, Rhodes, and Baliarda.

  • Prior Art Relied Upon: Bisiules ’071 (Application # 2004/0252071), Bisiules ’938 (International Publication No. WO 2004/055938), Rhodes (Application # 2004/0038714), and Baliarda (Application # 2002/0171601).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative to Ground 1. It maintained that Bisiules ’071, Bisiules ’938, and Rhodes taught the majority of the claim limitations. However, should it be argued that the combination-type assemblies in Bisiules ’071 did not meet the definition of the claimed "third set of radiating elements," Baliarda was introduced. Baliarda taught creating multiband radiating elements by combining or superimposing mono-band elements.
    • Motivation to Combine: A POSITA would find it obvious to substitute the multiband elements of Baliarda for the combination-type assemblies in Bisiules ’071. This would be a simple substitution of one known type of multiband element for another to achieve the predictable result of multi-frequency operation, as both references taught similar antenna layouts and objectives.

Ground 3: Claims 1 and 12 are obvious over Baliarda, Bisiules ’938, and Rhodes.

  • Prior Art Relied Upon: Baliarda (Application # 2002/0171601), Bisiules ’938 (International Publication No. WO 2004/055938), and Rhodes (Application # 2004/0038714).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Baliarda, as the primary reference, taught most elements of the claims, including a triple-band interleaved antenna array with first, second, and third sets of radiating elements operating on different frequencies. However, Baliarda did not explicitly show a ground plane for its Figure 3d array or the displacement of the second set of elements. Bisiules ’938 was cited to teach the use of a ground plane in conventional antenna structures and the technique of offsetting radiating elements. Rhodes was again used to provide the motivation for implementing such offsetting for enhanced beam control.
    • Motivation to Combine: A POSITA would combine the references to improve Baliarda’s design. It would have been obvious to add a ground plane, as taught by Bisiules ’938 and general knowledge, to increase performance and efficiency. Furthermore, a POSITA would have been motivated by Rhodes to seek enhanced beam control and would have applied the offsetting technique from Bisiules ’938 to the Baliarda array to achieve this predictable benefit.
    • Expectation of Success: The proposed modifications—adding a standard ground plane and laterally shifting elements—were well-known techniques in antenna design, and a POSITA would have had a high expectation of success in implementing them.

4. Key Claim Construction Positions

  • “frequency band”: Petitioner argued for the ordinary and customary meaning: “a range of frequencies extending between two limiting frequencies.” This contested the Patent Owner’s proposed construction from a related litigation, which sought to limit the term to “a range of radio frequencies designated for one or more cellular services.” Petitioner contended the patent did not provide a special definition to justify this limitation.
  • “radiating element”: Petitioner asserted that this term should be given its ordinary meaning of an “element that radiates and/or receives radio waves,” consistent with the Patent Owner’s position in litigation.
  • Petitioner maintained that the challenged claims were invalid under either its own or the Patent Owner’s proposed constructions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the current arguments and prior art combinations were not substantively considered during prosecution.
  • Key reasons included:
    • No rejections under §102 or §103 were ever made during prosecution of the ’305 patent.
    • The Examiner’s statements in the Notice of Allowance regarding Baliarda were conclusory, erroneous, and made without prior discussion or support.
    • The primary combinations asserted in the petition were never presented to or considered by the Examiner; specifically, Rhodes was never cited, and the specific combinations of Bisiules ’071, Bisiules ’938, Baliarda, and Rhodes were new.
    • The petition included new expert testimony that was not available to the Examiner, which explained the teachings of the art and the motivations to combine them.

6. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1 and 12 of Patent 9,450,305 as unpatentable.