PTAB

IPR2019-00957

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 relates to a slim triple-band antenna array for cellular base stations. The invention purports to integrate multiple mobile/cellular services into a compact radiating system by using an antenna array comprising three different sets of radiating elements, each designed to operate in distinct frequency bands to minimize the physical footprint of base station antennas.

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 Patent Application No. 2863110), Bisiules ’938 (WO 2004/055938), and Rhodes (Application # 2004/0038714).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jelloul taught most limitations of claims 1 and 12, disclosing a multi-band antenna array with a layout of first, second, and third sets of radiating elements that was virtually identical to that of the ’305 patent. Jelloul disclosed these sets arranged along a single vertical axis. However, Jelloul did not explicitly teach displacing a pair of the second set's radiating elements off this central vertical axis.
    • Motivation to Combine: Petitioner contended that Bisiules ’938 and Rhodes remedied this deficiency. Bisiules ’938 explicitly taught arranging radiating elements in pairs offset laterally from a central vertical axis to enhance beam width control and reduce grating lobes. Rhodes further taught the desirability of adjusting beam width and azimuth in cellular base stations to provide flexibility in allocating capacity and avoiding coverage gaps. A person of ordinary skill in the art (POSITA) would combine these teachings to modify Jelloul’s antenna by offsetting the second set of radiating elements to gain the known and predictable benefits of improved beam steering and coverage control.
    • Expectation of Success: A POSITA would have a high expectation of success, as the modification involved a simple, well-understood lateral shift in element placement using standard manufacturing techniques to achieve a predictable improvement in antenna 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 Patent Application No. 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 incorporated the arguments from Ground 1 and presented an alternative argument in case Jelloul’s stacked multi-band elements were not considered to meet the "third set of radiating elements" limitation. Petitioner asserted that Baliarda taught combining mono-band antenna arrays by replacing superimposed elements with a single, multi-frequency radiating element that performs the same function.
    • Motivation to Combine: Petitioner argued that if Jelloul’s stacked elements were deemed insufficient, a POSITA would find it obvious to substitute them with Baliarda’s single multi-frequency elements. This would be a simple and predictable substitution of one known type of multi-band element for another to perform the same function in the same location within Jelloul’s otherwise complete antenna structure.
    • Expectation of Success: The substitution would be a straightforward design choice with a high expectation of success, as it involved replacing functionally equivalent, known components in similar antenna designs.

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

  • Prior Art Relied Upon: Patin (Patent 5,001,493) and Jelloul (French Patent Application No. 2863110).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Patin, as the primary reference, taught a multi-band gridded antenna array with three distinct sets of radiating elements operating at three different frequencies. Patin’s design inherently featured a first and third set arranged along one axis and a second set displaced from them. However, Patin did not explicitly disclose that its frequency bands were non-overlapping or that the elements were arranged in a substantially vertical orientation.
    • Motivation to Combine: Petitioner argued a POSITA would look to Jelloul to supply these features. Jelloul taught arranging radiating elements vertically for use in applications with insufficient horizontal space, a common constraint for base station antennas. A POSITA would thus be motivated to arrange Patin's elements vertically for this known benefit. Furthermore, Jelloul taught using non-overlapping frequency bands to reduce interference and optimize power usage. A POSITA would obviously apply this technique to Patin’s design to achieve the same predictable improvements.
    • Expectation of Success: A POSITA would have a high expectation of success in making these modifications, as they involved applying conventional design principles (vertical orientation, non-overlapping frequencies) from one multi-band antenna (Jelloul) to another (Patin) to solve known problems in the art.

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." Petitioner rejected the Patent Owner's proposed construction from a related litigation, which sought to limit the term to frequencies designated for "cellular services," as an improper importation of limitations from the specification.
  • "radiating element": Petitioner stated this term did not require construction but, if construed, should be given its ordinary meaning of an "element that radiates and/or receives radio waves." Petitioner contended the challenged claims were invalid under either its proposed construction or competing constructions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) was unwarranted because the petition did not present substantially the same art or arguments considered during prosecution. Petitioner asserted that the primary references, Jelloul and Patin, were never cited or discussed by the Examiner. While Baliarda was mentioned in the Notice of Allowance, it was without any substantive analysis or rejection, and the secondary references Bisiules ’938 and Rhodes were also not discussed. Petitioner maintained that the combinations and arguments, supported by new expert testimony, were materially different from the prosecution record and warranted institution.

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1 and 12 of Patent 9,450,305 as unpatentable under 35 U.S.C. §103.