Ericsson Inc v. Procomm Intl Pte Ltd

1. Case Identification

• Case #: IPR2024-01455
• Patent #: 8,497,813
• Filed: December 31, 2024
• Petitioner(s): Ericsson Inc. and Cellco Partnership d/b/a Verizon Wireless
• Patent Owner(s): Procomm Intl Pte. Ltd
• Challenged Claims: 1, 2, 4-7

2. Patent Overview

• Title: Panel Antenna Having Sealed Radio Enclosure
• Brief Description: The ’813 patent relates to a panel antenna assembly featuring a six-sided enclosure for housing radio components. The challenged claims are directed to an embodiment where RF radiating modules are mounted on the exterior surface of an internal cover, which is then protected by an outer radome. A key feature is a specific environmental sealing mechanism comprising a flange and an extending lip that engages the internal cover.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bishop, Avramis, Lakoduc, and Korte - Claims 1, 2, and 4-7 are obvious over Bishop in view of Avramis, Lakoduc, and/or Korte.

• Prior Art Relied Upon: Bishop (Application # 2006/0250311), Avramis (Application # 2007/0296518), Lakoduc (Application # 2009/0134755), and Korte (International Publication No. WO 2008/009421).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bishop teaches the fundamental structure of the claimed panel antenna, including a box-like enclosure for housing radios, a ground plane serving as an internal cover, RF radiating modules (antennas) mounted on the exterior of that cover, and a radome enclosing the modules. Petitioner contended that Bishop discloses all elements of independent claim 1 except for the specific flange/lip sealing feature that was added during prosecution to overcome a rejection based on Bishop. To supply this missing element, Petitioner cited Lakoduc, which explicitly discloses an electronics enclosure with a flange that is folded outward to create a lip, which engages a door to provide a water-tight environmental seal. For the heat sink limitation, Petitioner cited Avramis, which teaches arranging heat sinks on the exterior sides of a transceiver enclosure to dissipate heat. For the dependent claims, Korte was cited for its teaching of a communications hub coupled to micro radios (claim 4) and a calibration radio, or "micro-sniffer" (claim 5).
  • Motivation to Combine: A POSITA would combine Lakoduc with Bishop to incorporate a known and effective flange/lip sealing mechanism to improve the environmental integrity of Bishop's antenna enclosure. A POSITA would add Avramis's external heat sinks to Bishop’s design to solve the predictable problem of heat dissipation from the internal radio components. Finally, a POSITA would incorporate Korte's communications hub and calibration radio to provide standard network connectivity, interoperability, and performance-monitoring capabilities to Bishop’s system.
  • Expectation of Success: A POSITA would have a high expectation of success, as each modification involved combining known elements for their predictable functions: improving sealing, managing heat, and enabling network communication and calibration.

Ground 2: Obviousness over Kelly and Avramis - Claims 1, 2, and 7 are obvious over Kelly alone and/or in view of Avramis.

• Prior Art Relied Upon: Kelly (Application # 2006/0181462) and Avramis (Application # 2007/0296518).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kelly, which describes an antenna integrated into an access door for a mobile computer, discloses nearly all elements of claim 1 in a single reference. Kelly teaches a computer housing (enclosure) containing radios, an access door that functions as an internal cover, and multiple RF antennas (radiating modules) fastened to the exterior surface of an antenna board on the door. A radome on the door encloses the antennas. Critically, Petitioner argued that Kelly teaches the flange/lip sealing mechanism that was the basis for allowance of the ’813 patent. Kelly discloses a flange on the housing that includes a groove (lip) that cooperates with a seal on the radome/access door to provide an environmental seal. As in Ground 1, Avramis was cited as a secondary reference to explicitly teach adding external heat sinks if Kelly’s inherent metal housing was deemed insufficient.
  • Motivation to Combine: A POSITA would be motivated to add the explicit heat sinks taught by Avramis to Kelly’s housing to improve thermal management for the internal electronics. This was presented as a simple design choice to address a well-known engineering problem.
  • Expectation of Success: Adding heat sinks to an electronics enclosure is a routine technique with predictable results, leading to a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d) or §314(a) (Fintiv).
• §325(d) Argument: Petitioner contended that denial is inappropriate because the examiner did not have the most relevant art during prosecution. The claims were allowed specifically because the flange/lip limitation was not found in the primary reference, Bishop. Petitioner argued this was an error, as this exact feature was well-known and is taught in Lakoduc and Kelly, neither of which were cited or applied during prosecution.
• Fintiv Argument: Petitioner asserted that the Fintiv factors weigh in favor of institution. The co-pending district court litigation was in its early stages with minimal investment (Factor 3), and Petitioner stipulated it would not pursue the same grounds in that litigation (Factor 4). Most importantly, Petitioner argued the petition presents "particularly strong" merits, as the prior art references (Bishop and Kelly) disclose identical architecture and concepts to solve the same problem as the ’813 patent, making unpatentability plain.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, and 4-7 of the ’813 patent as unpatentable.