Kathrein USA Inc v. Fractus SA

1. Case Identification

• Case #: IPR2019-00957
• Patent #: 9,450,305
• Filed: April 9, 2019
• Petitioner(s): Kathrein USA Inc.
• Patent Owner(s): Fractus, SA.
• Challenged Claims: 1 and 12

2. Patent Overview

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

3. Grounds for Unpatentability

Ground 1: Claims 1 and 12 are obvious over Jelloul in view of Bisiules ’938 and Rhodes

• Prior Art Relied Upon: Jelloul (French Application # 2863110), Bisiules ’938 (WO 2004/055938), and Rhodes (Application # 2004/0038714).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jelloul teaches most limitations of the challenged claims, including a multiband antenna for cellular base stations with three sets of radiating elements arranged along a vertical axis. Jelloul’s design includes a first set of elements, a second set, and a third set of stacked, multi-band elements. However, Jelloul does not explicitly disclose displacing a pair of elements from the second set off the primary vertical axis.
  • Motivation to Combine: Bisiules ’938 and Rhodes taught the desirability of enhancing antenna performance by arranging radiating elements in pairs offset from the central vertical axis. This known technique was used to achieve enhanced beam width control and azimuth (horizontal) beam steering, which allows for more flexible allocation of network capacity and helps avoid radio coverage gaps. A POSITA would combine the teachings of Bisiules ’938 and Rhodes with Jelloul’s antenna design to improve its beam control, a predictable and desirable enhancement for cellular base stations.
  • Expectation of Success: A POSITA would have a high expectation of success because the modification involved a simple, well-understood lateral shift of known radiating elements. This would use standard manufacturing techniques to achieve a predictable improvement in performance.

Ground 2: Claims 1 and 12 are obvious over Jelloul in view of Bisiules ’938, Rhodes, and Baliarda

• Prior Art Relied Upon: Jelloul (French Application # 2863110), Bisiules ’938 (WO 2004/055938), Rhodes (Application # 2004/0038714), and Baliarda (Application # 2002/0171601).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporates the arguments from Ground 1 but provides an alternative for the "third set of radiating elements" limitation. Petitioner contended that if Jelloul's stacked elements are considered not to meet the claim limitation for a multiband radiating element, then Baliarda teaches a suitable alternative.
  • Motivation to Combine: Baliarda taught combining mono-band antenna arrays by using a single, discrete multiband radiating element where the mono-band elements would otherwise overlap. A POSITA would view Baliarda’s method of creating multiband elements as a simple and well-known alternative to Jelloul's stacked elements. The motivation would be to substitute one known type of multiband element for another to achieve the same function of multi-frequency operation in a predictable manner.
  • Expectation of Success: The modification would be a simple one-for-one substitution of known elements performing the same function in similar antenna designs, leading to a high expectation of success.

Ground 3: Claim 1 is obvious over Patin in view of Jelloul

• Prior Art Relied Upon: Patin (Patent 5,001,493) and Jelloul (French Application # 2863110).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Patin teaches a multiband array antenna with first, second, and third sets of radiating elements operating at three distinct frequencies, meeting most limitations of claim 1. However, Patin does not explicitly arrange its elements along a single vertical axis and does not explicitly state that its third frequency band is non-overlapping with the others.
  • Motivation to Combine: Jelloul taught arranging radiating elements vertically, a preferred configuration where horizontal space is limited (e.g., on a crowded cell tower). Jelloul also explicitly taught using non-overlapping frequency bands to reduce interference and optimize power usage. A POSITA would modify Patin's antenna by incorporating Jelloul’s teachings to improve performance, specifically by reducing interference and adapting the design for space-constrained vertical installations, both of which were well-known objectives in the art.
  • Expectation of Success: Applying the known techniques of vertical arrangement and non-overlapping frequencies from Jelloul to the similar multiband antenna of Patin would be a straightforward modification for a POSITA, with a high expectation of achieving the predictable results of reduced interference and a more compact footprint.

4. Key Claim Construction Positions

• "frequency band": Petitioner argued for the ordinary and customary meaning of "a range of frequencies extending between two limiting frequencies." This construction was proposed in opposition to the Patent Owner’s litigation position, which sought to limit the term to frequencies designated for "cellular services." Petitioner contended that references to cellular services in the patent are merely non-limiting examples and do not constitute a redefinition of the term.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the petition did not present substantially the same art or arguments considered during prosecution. The primary arguments were:
  • The key prior art references of Jelloul, Patin, and Rhodes were never cited or discussed by the Examiner.
  • While Bisiules ’938 was cited, it was never discussed or applied.
  • Baliarda was mentioned for the first time in the Notice of Allowance with a conclusory statement that Petitioner argued was unsupported and incorrect.
  • The specific combinations of prior art asserted in the grounds were never before the Examiner, and the petition was supported by new expert testimony.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1 and 12 of the ’305 patent as unpatentable.