IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`—————————————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`—————————————
`
`ZTE (USA), INC.
`Petitioner,
`v.
`FRACTUS S.A.,
`Patent Owner.
`
`—————————————
`
`IPR No. IPR2018-01461
`U.S. Patent No. 9,054,421
`Issue Date: June 9, 2015
`
`—————————————
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,054,421 PURSUANT TO
`35 U.S.C. §§ 311-319 & 37 C.F.R. 42
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`TABLE OF CONTENTS
`
` I.
`
`INTRODUCTION .......................................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................................. 1
`A.
`Real Party-in-Interest .......................................................................................... 1
`B.
`Related Matters ................................................................................................... 1
`C.
`Counsel and Service Information ....................................................................... 6
`PAYMENT OF FEES .................................................................................................... 6
`III.
`IV. GROUNDS FOR STANDING ...................................................................................... 6
`V.
`GROUNDS FOR CHALLENGE ................................................................................... 7
`VI. OVERVIEW OF THE ’421 PATENT AND THE PRIOR ART ................................. 10
`A.
`The ’421 Patent ................................................................................................. 10
`B.
`Prosecution history ........................................................................................... 12
`C.
`Summary of Prior Art References Relied on .................................................... 12
`VII. LEVEL OF ORDINARY SKILL IN THE ART .......................................................... 18
`VIII. CLAIM CONSTRUCTION ......................................................................................... 19
`“antenna element having a multi-band behavior” and “multilevel
`structure” ........................................................................................................... 19
`“geometric elements” ................................................................................................... 20
`“a fraction of a total perimeter or a total area” ............................................................. 21
`“frequency band” .......................................................................................................... 21
`“substantially similar impedance level and radiation pattern” ..................................... 21
`“not a fractal type antenna” .......................................................................................... 21
`“number of sides” ......................................................................................................... 22
`“majority of the geometric elements” .......................................................................... 22
`SPECIFIC REASONS WHY THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ...................................................................................................... 23
`Ground 1: Grangeat Render Obvious Claims 1-2, 4-12, and 21-22 ........................... 23
`Ground 2: Misra I Renders Obvious Claims 1, 4-7, 9, and 22 .................................. 46
`Ground 3: Misra I and Misra II Render Obvious Claims 4-7, 9-12, and
`21 66
`CONCLUSION ........................................................................................................................ 75
`
`IX.
`
`i
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`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`
`LIST OF EXHIBITS
`
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Exhibit No. Document
`Ex. 1001
`U.S. Patent No. 9,054,421
`Ex. 1002
`Declaration of Dr. Chris Bartone
`Ex. 1003
`Misra et al., “Study of Impedance and Radiation Properties of
`a Concentric Microstrip Triangular-Ring Antenna and Its
`Modeling Techniques Using FDTD Method,” IEEE
`Transactions on Antennas and Propagations, Vol, 46, No. 4,
`April, 1998 (“Misra I”)
`Misra et al., “Experimental Investigations on the Impedance
`and Radiation Properties of a Three-Element Concentric
`Microstrip Antenna,” Microwave and Optical Technology
`Letters, Vol, 11, No. 2, February, 1996 (“Misra II”)
`U.S Patent No. 6,133,879 (“Grangeat”)
`U.S Patent No. 6,195,048 (“Chiba”)
`Declaration of Brian Durrance
`Fractus v. ZTE et al., Case No. 2:17-cv-00561 (D.I. 71)
`Fractus v. Samsung et al., Case No. 6:09-cv-00203 (D.I. 526)
`Non-Final Office Action, U.S. Patent 9,054,421
`Terminal Disclaimer, U.S. Patent 9,054,421
`Ex. N from Patent Owner’s Claim Construction Brief, Fractus
`v. ZTE et al., Case No. 2:17-cv-00561
`Claim 17 of App. No. PCT/ES99/00296, filed Sep. 20, 1999
`July 18, 2018 Certified Letter from Library of Congress
`regarding Misra I
`July 18, 2018 Certified Letter from Library of Congress
`regarding Misra II
`inter partes Reexamination Action Closing Prosecution
`95/001,483
`Declaration of Gang Chen
`
`Ex. 1013
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`
`
`
`ii
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`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`INTRODUCTION
`ZTE (USA), Inc. ( “Petitioner”) requests inter partes review (“IPR”) of claims
`
`I.
`
`1-2, 4-12, and 21-22 (“the challenged claims”) of U.S. Patent No. 9,054,421
`
`(“the ’421 patent”) (Ex. 1001), which on its face is assigned to Fractus, S.A. (“Patent
`
`Owner”).
`
`The claims in the ’421 patent are very similar to claims in related patents
`
`(identified below) that were rejected and never allowed in inter partes
`
`reexaminations, where an opposing party could respond to the Patent Owner’s
`
`arguments in favor of patentability. As shown herein, all the challenged claims are
`
`invalid under grounds not previously considered by the PTO. Claims 1-2, 4-12, and
`
`21-22 should be found unpatentable and canceled on these grounds.
`
`
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party-in-Interest
`Petitioner identifies ZTE Corporation, ZTE (USA), Inc. and ZTE (TX), Inc.
`
`as the real parties-in-interest.
`
`B. Related Matters
`Petitioner is contemporaneously filing additional inter partes review (“IPR”)
`
`petitions on 6 patents that are based on the same specification as the ’421 patent,
`
`namely U.S. Patent Nos. 7,397,431 (IPR2018-01451); 7,394,432 (IPR2018-01455);
`
`1
`
`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`8,941,541 (IPR2018-01456); 8,976,069 (IPR2018-01457); 9,240,632 (IPR2018-
`
`01462); and 9,362,617 (IPR2018-01463).
`
`Patent Owner has alleged that Petitioner infringes these patents in Fractus,
`
`S.A. v. ZTE Corporation, ZTE (USA), Inc., and ZTE (TX), Inc., Civil Action No.
`
`2:17-cv-00561-JRG, which is pending in the U.S. District Court for the Eastern
`
`District of Texas. Petitioner is not aware of other pending judicial or administrative
`
`matters that would affect, or be affected by, a decision in this proceeding.
`
`The ’421 patent has not been subject to any other litigation or PTO
`
`proceedings after its issuance, but it shares the same specification as several other
`
`patents that have been involved in the following proceedings.
`
`Two of the seven patents above (U.S. Patent Nos. 7,397,431 and 7,394,432)
`
`and several other patents claiming priority to the same specification, were the subject
`
`of the patent infringement lawsuit Fractus, S.A. v. Samsung et al., Civil Action No.
`
`6:09-cv-00203-LED-JDL, filed in the U.S. District Court for the Eastern District of
`
`Texas in May of 2009. That litigation concluded in 2014, when the parties settled
`
`while the case was pending before the Federal Circuit.
`
`The ’421 patent was also related to the following PTO proceedings on patents
`
`issued from the same specification.
`
`Proceeding
`
`Case
`Number
`Inter partes reexamination 95/001,483
`
`Filed
`
`Status
`
`Nov. 11, 2010 Terminated
`
`2
`
`

`

`
`
`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
` U.S. Patent No.
`of
`7,394,432 (“ ’1483 IPX”)
`Inter partes reexamination
`of
` U.S. Patent No.
`7,394,432 (“ ’1500 IPX”)
`Inter partes reexamination
`of U.S. Patent No.
`7,394,432 (“ ’588 IPX”)
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,394,432 (“ ’2349 IPX”)
`Ex parte reexamination of
`U.S. Patent No. 7,394,432
`(“ ’3024 EPX”)
`Samsung Electronics CO.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,394,432)
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,397,431
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,397,431
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,397,431
`Inter partes reexamination
`of
` U.S. Patent No.
`7,397,431
`Ex parte reexamination of
`U.S. Patent No. 7,397,431
`Samsung Electronics CO.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,397,431)
`Inter partes reexamination
`of
` U.S. Patent No.
`7,123,208
`Inter partes reexamination
`of
`
` U.S. Patent No.
`
`95/001,500
`
`Dec. 3, 2010
`
`Terminated
`
`95/000,588
`
`Dec. 13, 2010 Terminated
`
`95/002,349
`
`Sep. 14, 2012 Dismissed
`
`90/013,024
`
`Oct. 9, 2013
`
`Certificate Issued
`
`IPR2014-
`00012
`
`Oct. 4, 2013
`
`Denied Institution
`
`95/001,482
`
`Nov. 11, 2010 Terminated
`
`95/001,497
`
`Dec. 3, 2010
`
`Terminated
`
`95/000,586
`
`Dec. 13, 2010 Terminated
`
`95/002,346
`
`Sep. 14, 2012 Dismissed
`
`90/013,023
`
`Oct. 9, 2013
`
`Certificate Issued
`
`IPR2014-
`00011
`
`Oct. 4, 2013
`
`Denied Institution
`
`95/001,389
`
`Jul. 1, 2010
`
`Terminated
`
`95/001,501
`
`Dec. 3, 2010
`
`Dismissed
`
`3
`
`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`7,123,208
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,123,208
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,123,208
`Ex parte reexamination of
`U.S. Patent No. 7,123,208
`Samsung Electronics CO.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,123,208)
`Inter partes reexamination
`of
` U.S. Patent No.
`7,528,782
`Inter partes reexamination
`of
` U.S. Patent No.
`7,528,782
`Inter partes reexamination
`of
`
` U.S. Patent No.
`7,528,782
`Samsung Electronics CO.,
`Ltd. v. Fractus, S.A. (U.S.
`Patent No. 7,015,868)
`
`95/000,591
`
`Dec. 14, 2010 Dismissed
`
`95/002,305
`
`Sep. 14, 2012 Dismissed
`
`90/013,022
`
`Oct. 9, 2013
`
`Certificate Issued
`
`IPR2014-
`00008
`
`Oct. 4, 2013
`
`Denied Institution
`
`95/001,455
`
`Sep. 30, 2010 Certificate Issued
`
`95/001,499
`
`Dec. 3, 2010
`
`Dismissed
`
`95/000,595
`
`Dec. 14, 2010 Certificate Issued
`
`IPR2014-
`00013
`
`Oct. 4, 2013
`
`Denied Institution
`
`
`
`
`
`4
`
`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`As explained in the concurrently filed petitions for the ’432 and ’431 patents,
`
`
`
`Samsung filed inter partes reexaminations on claims of those patents in November
`
`2010. The challenged claims were found invalid as anticipated by prior art
`
`references (described below) Misra I and Misra II. Patent Owner appealed to the
`
`Board. The parties settled, and the appeal was terminated on August 5, 2014 without
`
`issuance of any Reexamination Certificate. Samsung also filed ex parte
`
`reexaminations, which were not terminated due to the settlement. Patent Owner had
`
`to make amendments before claims were allowed.
`
`Notably, no claim of the related ’432 or ’431 patents was ever found valid in
`
`an inter partes procedure in the PTO, where an opposing party could respond to the
`
`Patent Owner’s arguments in favor of patentability. The claims in the ’421 patent
`
`are very similar to claims of the ’432 and ’431 patents, which were never allowed
`
`over the grounds of invalidity presented in this petition.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`5
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`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`C. Counsel and Service Information
`Lead Counsel
`Back-Up Counsel
`James R. Sobieraj
`Jon H. Beaupré
`Reg. No. 30,805
`Reg. No. 54,729
`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`ZTE_FractusIPRs@brinksgilson.com
`
`David Lindner
`
`Reg. No. 53,222
`
`dlindner@brinksgilson.com
`Brinks Gilson & Lione,
`Tower, Suite 3600, NBC Tower
`
`455 N. Cityfront Plaza Drive
`Gang Chen
`Chicago, IL, 60611
`Reg. No. 68,754
`T: 312.321.4200, F: 321.321.4299
`gchen@brinksgilson.com
`
`Brinks Gilson & Lione,
`Tower, Suite 3600, NBC Tower
`455 N. Cityfront Plaza Drive
`Chicago, IL, 60611
`T: 312.321.4200, F: 321.321.4299
`
`
`Petitioner consents to electronic service.
`
`
`
`
`
`III. PAYMENT OF FEES
`The Petition Fee of $30,500 required by 37 C.F.R. §§ 42.15(a) is paid
`
`concurrently with the filing of this Petition by Deposit Account 23-1925. The PTO
`
`is authorized to charge any additional fees to deposit account 23-1925.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’421 patent is available for IPR, and that Petitioner
`
`is not barred or estopped from requesting IPR on the grounds identified herein.
`
`6
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`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`V. GROUNDS FOR CHALLENGE
`The challenged claims should be cancelled as unpatentable on the following
`
`grounds:
`
`1st Ground: Claims 1-2, 4-12, and 21-22 are unpatentable under pre-AIA 35
`
`U.S.C. §103 based on Grangeat (Ex. 1005).
`
`2nd Ground: Claims 1, 4-7, 9, and 22 are unpatentable under pre-AIA 35
`
`U.S.C. §103 based on Misra I (Ex. 1003).
`
`3rd Ground: Claims 4-7, 9-12, and 21 are unpatentable under pre-AIA 35
`
`U.S.C. §103 based on Misra I (Ex. 1003) in view of Misra II (Ex. 1004).
`
`For purposes of this IPR only, Petitioner assumed the earliest effective filing
`
`date of the ’421 patent is September 20, 1999, which is the filing date of the PCT
`
`application to which the ’421 patent claims priority. Patent Owner has alleged an
`
`earlier priority date in discovery, but it has not provided Petitioner with
`
`documentation that demonstrates conception of the invention as claimed, followed
`
`by diligence until reduction to practice. Price v. Symsek, 988 F.2d 1187, 1190-91
`
`(Fed. Cir. 1993)(Patent Owner has the burden of proving conception and diligence
`
`by clear and convincing evidence); REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841
`
`F.3d 954, 962 (Fed. Cir. 2016)(“Conception must include every feature or limitation
`
`of the claimed invention.”)
`
`Grangeat was filed on December 11, 1998, issued on October 17, 2000, and
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`7
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`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`thus is available as prior art under at least the pre-AIA 35 U.S.C. § 102(e). (Ex.
`
`1005, cover page.)
`
`Misra I was published in the journal IEEE Transactions on Antennas and
`
`Propagation, Vol. 46, No. 4, on April 16, 1998, more than one year prior to the
`
`earliest effective filing date of the ’432 patent, and is thus available as prior art under
`
`pre-AIA 35 U.S.C. § 102(a) and (b). (Ex. 1007.0002-3, Ex. 1014.0001.) 1
`
`Misra II was published in the journal Microwave and Optical Technology
`
`Letters, Vol, 11, No. 2, on January 26, 1996, more than one year prior to the earliest
`
`effective filing date of the ’432 patent, and is thus available as prior art under pre-
`
`AIA 35 U.S.C. § 102(a) and (b). (Ex. 1007.0002-3, Ex. 1015.0001.)
`
`Grangeat, Misra I, and Misra II were included in Information Disclosure
`
`Statements filed during prosecution of the ’421 patent, but they were not cited by
`
`the examiner in evaluating the patentability of any claim. The ’421 patent has not
`
`been subject to any PTO proceedings after its issuance. Nor has the PTO
`
`considered the expert testimony presented herein. As such, Grangeat, Misra I,
`
`
`1 Misra I and Misra II are authenticated under Fed. R. Civ. P. 901(1), and under
`
`901(8). (Ex. 1007.0003.)
`
`8
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`

`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`and Misra II have not been considered by the PTAB for any of the challenged
`
`claims 1-2, 4-12, and 21-22under any of the grounds identified in this Petition.2
`
`
`2 See Limelight Networks, Inc. v. Mass. Inst. of Tech., IPR2017-00249 (Institution
`
`Decision dated May 18, 2017 at p. 7 (Paper 9)) (“We are not persuaded … that a
`
`citation to prior art in an IDS, without substantive discussion of the reference by
`
`the Examiner, is sufficient reason to exercise our discretion under 35 U.S.C. §
`
`325(d) to decline to institute an inter partes review”); Microsoft Corp. v. Parallel
`
`Networks Licensing, LLC, IPR2015-00483 (Institution Decision dated July 15,
`
`2015 at p. 15 (Paper 10)) (“while [the reference] was listed on a lengthy
`
`Information Disclosure Statement initialed by the Examiner, the reference was
`
`not applied against the claims and there is no evidence that the Examiner
`
`considered the particular disclosures cited … in the Petition.”); Micron Tech., Inc.
`
`v. Bd. of Trs. of the Univ. of Ill., IPR2013-00005 (Institution Decision dated Mar.
`
`13, 2013 at pp. 7, 20 (Paper 19)) (instituting IPR based on prior art that “was
`
`before the Office during prosecution,” and reasoning that “[t]he present record
`
`differs from the one before the Examiner” in that the Board now “consider[s] the
`
`[reference] in view of the [Expert] declaration testimony [], which was not before
`
`the Examiner.”).
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`9
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`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`VI. OVERVIEW OF THE ’421 PATENT AND THE PRIOR ART
`A. The ’421 Patent
`The ’421 patent is directed to multilevel antennae that have several
`
`distinguishing characteristics. First, a multilevel geometry comprises individual
`
`polygons or polyhedrons of the same type (also called “geometric elements”), which
`
`are electromagnetically coupled and grouped to form a larger structure and remain
`
`individually identifiable. This provides at least two levels of detail: the overall
`
`structure and the individual polygons or polyhedrons (or a majority of them) that
`
`make it up. (Ex. 1001, 2:53-3:22; 3:52-60.) In the multilevel structure, at least 75%
`
`of individual elements have more than 50% of their perimeter not in contact with
`
`any other element. (Id. at 5:12-18.) This creates empty spaces that allow for longer
`
`and more winding current paths. (Id. at 3:38-51.) This geometrical design allows
`
`the multilevel antenna to operate in multiple frequency bands and to reduce the size
`
`of the antenna. (Id., 3:61-65.)
`
`For example, in Figure 1 below3, a multilevel antenna is formed of individual
`
`polygons of the same type (i.e., the shaded triangles), all of which have less than 50%
`
`of their perimeter in contact with another triangle. (The white triangles represent
`
`
`3 Petitioners refer to figures as they appear in references as “Fig.” or “FIG.”, and
`
`refer to illustrations as they appear in this Petition as “Figure”.
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`10
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`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`empty space.)
`
`
`
`Figure 1 ’421 patent, Fig. 1
`The ’421 patent explains that there are several levels of detail, “that of the
`
`overall structure and that of the individual elements which make it up.” (Id., 2:53-
`
`65.) But the specification does not explain which individual elements, or
`
`combinations thereof, create a second level of structural detail, and does not explain
`
`how the first and second levels of detail in Figure 1 (or in any other Figure) are
`
`associated with a first and second frequency bands. (Ex. 1002, ¶45.) A person having
`
`ordinary skill in the art (PHOSITA) can run computer simulations to identify
`
`different levels of detail (i.e., individual elements or combinations thereof)
`
`associated with different frequencies. (Id.) In Figure 1, the perimeter of the overall
`
`structure (a triangle) has the same number of sides of each individual element (a
`
`triangle) that makes up the overall structure. In other embodiments of the ’421 patent,
`
`e.g., Figs. 3.7 and 4.1, the overall perimeter has a different number of sides than the
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`11
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`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`individual elements that compose it. The patent does not say if or how it matters
`
`whether the overall perimeter has the same or different number of sides than the
`
`individual elements that compose it. (Id.)
`
`Prosecution history
`B.
`The application for the ’421 patent was filed on January 2, 2013, and claims
`
`priority through various divisional and continuation applications to a PCT
`
`application, filed in the Spanish Patent Office on September 20, 1999. During the
`
`examination by the PTO, a single non-final Office Action was issued, rejecting
`
`original claims 1-23 on the ground of nonstatutory double patenting. (Ex. 1010.0003)
`
`Original claims 1-23 were issued after the Patent Owner filed a terminal disclaimer
`
`to overcome the rejections on January 9, 2015. (Ex. 1011.0001) The ’421 patent
`
`issued on June 9, 2015 with claims 1-23.
`
`C.
`
`Summary of Prior Art References Relied on
`1. Grangeat
`Grangeat discloses a “multifrequency microstrip antenna” for “portable
`
`telephones. . . .” (Ex. 1005, Abstract.) Grangeat describes a variety of structures
`
`that can operate at multiple frequency bands. (Id., Fig. 2, 5:17 – 10:14 (describing
`
`a microstrip antenna that operates at two frequency bands); Fig.5, 10:14-43
`
`(describing a microstrip antenna that operates at three frequency bands).) Similar to
`
`the ’421 patent, Grangeat discloses a conductive radiating element (i.e., an antenna)
`
`12
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`

`IPR2018-01461
`Petition for Inter Partes Review of U.S. Pat. No. 9,054,421
`
`
`including multiple zones or geometric elements, which provide a multilevel structure.
`
`Grangeat discloses that these zones or geometric elements are arranged to define
`
`slots which can lengthen current paths and reduce operating frequency. (Id., 7:18-
`
`41.) Grangeat further discloses that some of the zones or geometric elements are
`
`associated with the operation of and shared by multiple frequency bands. (Id., 6:52-
`
`64.). In particular, Grangeat discloses in one operating mode, all of the zones of the
`
`antenna radiate, and in another mode less than all of them radiate. (Id..) Additional
`
`zones can be added when three (or more) operating frequencies are needed. (Id.,
`
`10:24-31 and 10:44-49).
`
`As shown in Figure 2 below, the multilevel structure of Grangeat’s Fig. 5 is
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`made up of at least three levels. (Id., Fig. 5; Ex. 1002, ¶¶137-138 and 172 (first level
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`illustrated in red; second level illustrated in blue; third level illustrated in green).)
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`Figure 2 Annotated Grangeat Fig. 5 showing different levels
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`Each of the levels of Grangeat comprise multiple four-sided geometric
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`elements, as shown in Figures 3(a) and 3(b) below.. (Ex. 1005, Fig. 5; Ex. 1002,
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`¶¶137-138, 146 and 165.) The perimeter of the overall structure has a greater
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`number of sides than the individual polygons that make it up. (Ex. 1002, ¶¶ 189.)
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`Figure 3(a) Annotated Grangeat Fig. 5 showing geometric elements and empty
`spaces; Figure 3(b) Geometric elements
`The multilevel structure of Grangeat is made up of electromagnetically
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`coupled geometric elements. (Ex. 1005, 1:5-8; 4:55-59; 5:40-67 (describing etching
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`a metallic conductive layer that constitutes the patch antenna.) Furthermore, as
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`shown in Figure 3(a) above, the multilevel structure of Grangeat creates empty
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`spaces because at least 75% of the four-sided elements that make up the different
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`levels do not have more than 50% of their perimeter in contact with another element.
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`(Ex. 1002, ¶¶168 and 188.)
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`2. Misra I
`Like the ’421 patent, Misra I is directed to a multilevel antenna that operates
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`in multiple frequency bands without losing the advantage of small size. (Ex. 1003,
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`p. 531, Fig. 1(a); p. 534, Table 1; p. 536, Conclusion.) Specifically, Misra I discloses
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`a conductive radiating element (i.e., an antenna) having a concentric microstrip
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`triangular ring structure. (Id., p. 531, Introduction, Fig. 1(a).) As shown in Figure
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`4 below, the multilevel structure is made up of at least three levels. (Ex. 1003, p.
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`531, Fig. 1(a); Ex. 1002, ¶¶84-85, 107-110, and 221 (first level illustrated in red;
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`second level illustrated in blue; third level illustrated in green).)
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`
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`Figure 4 Annotated Misra I Fig. 1(a) showing different levels
`Each of the triangles in Misra I that make up the different levels of the
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`multilevel structure is comprised of four-sided geometric elements, as shown in
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`Figures 5(a) and 7(b) below. (Ex. 1003, Fig. 1(a); Ex. 1002, ¶¶84-85, and 241.)
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`Figure 5(a) Annotated Misra I Fig. 1(a) showing geometric elements and
`empty spaces; Figure 5(b) geometric elements
`The multilevel structure of Misra I is made up of electromagnetically coupled
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`geometric elements. (Ex. 1003, p. 531, Section III, first paragraph.) (“[t]he elements
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`of the CMTRA are fed electromagnetically by a 50-Ω microstrip line”; Ex. 1002,
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`¶¶89.) Furthermore, as shown in Figure 5(a) above, the multilevel structure of Misra
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`I creates empty spaces because at least 75% of the four-sided elements that make up
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`the different levels do not have more than 50% of their perimeter in contact with
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`another element. (Ex. 1002, ¶217.)
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`
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`3. Misra II
`Like the ’421 patent, Misra II, authored by the same individuals as Misra I,
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`also is directed to a multilevel antenna that operates in multiple frequency bands
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`without losing the advantage of small size. (Ex. 1004, p. 67, Fig. 2(a), Table 1; p.69,
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`Conclusion.) Specifically, Misra II discloses a conductive radiating element (i.e.,
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`an antenna). (Id., pp. 66-67, Introduction, Fig. 2(a).) However, rather than the
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`triangular shape of Misra I, Misra II discloses an alternate configuration of a
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`concentric microstrip square-ring antenna. (Id.) As shown in Figure 6 below, the
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`multilevel structure of Misra II is similarly made up of at least three levels. (Ex.
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`1004, p. 67, Fig. 2(a); Ex. 1002, ¶¶112 and 134 (first level illustrated in red; second
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`level illustrated in blue; third level illustrated in green).)
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`Figure 6 Annotated Misra II Fig. 2(a) showing different levels
`Each of the squares in Misra II that make up the different levels of the
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`
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`multilevel structure is comprised of four-sided geometric elements, as shown in
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`Figures 7(a) and 7(b) below. (Ex. 1004, p. 67, Fig. 2(a); Ex. 1002, ¶112.)
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`Figure 7(a) Annotated Misra II Fig. 2(a) showing geometric element and
`empty spaces; Figure 7(b) showing geometric elements
`The multilevel structure of Misra II is made up of electromagnetically coupled
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`geometric elements.
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` (Ex. 1004, p. 67, Introduction, first paragraph.)
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`(“Electromagnetic coupling is an attractive aspect [of a microstrip antenna], due to
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`the multilayered structure, which allows the antenna to be integrated with its feed
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`circuitry.”) Furthermore, as shown in Figure 7(a) above, the multilevel structure of
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`Misra II creates empty spaces and 100% (at least 75%) of the four-sided elements
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`that make up the different levels do not have more than 50% of their perimeter in
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`contact with another element.
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`The level of ordinary skill in the art of the ’421 patent is a person having at
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`least a four-year degree in electrical engineering, physics, or a related field of study,
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`a masters degree in the same fields of study or equivalent experience, and at least
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`two years of experience in antennas related to mobile wireless systems. (Ex. 1002,
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`¶¶50-53.)
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`VIII. CLAIM CONSTRUCTION
`The ’421 patent expires on January 29, 2020, which is likely during the
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`pendency of this IPR proceeding if the Board institutes review, the claims should be
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`reviewed under the standard in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
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`2005) (en banc). Thus, the claim terms should be given their ordinary and customary
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`meaning, as understood by a person of ordinary skill in the art, at the time of the
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`invention, in light of the claim language, specification and prosecution history.
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`Phillips, 415 F.3d at 1312-1313. In any event, the Board only construes claim terms
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`necessary to resolve the underlying dispute. Toyota Motor Corp. v Cellport Systems,
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`Inc., IPR2015-00633, Paper No. 11 at 16 (Aug. 14, 2015). Petitioner’s proposed
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`constructions to use in this proceeding are set forth below.4
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`“antenna element having a multi-band behavior” and “multilevel
`structure”
`The term “antenna element having a multi-band behavior” is used in all claims.
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`The term “multilevel structure” is used in claim 22. Patent Owner agreed in the
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`district court case that both of these terms should be construe the same. (Ex.
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`4 Petitioner reserves the right to raise different and additional claim constructions
`in district court. For example, Petitioner has not necessarily raised all challenges
`to the ’421 patent given the limitations in the Rules that apply to this IPR.
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`1012.0001.) Petitioner submits that both of these terms should be construed to mean
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`“a structure for an antenna useable at multiple frequency bands with at least two
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`levels of detail, wherein one level of detail makes up another level. These levels of
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`detail are composed of polygons (polyhedrons) of the same type with the same
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`number of sides (faces) wherein most (i.e., more than 75%) of the polygons
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`(polyhedrons) are clearly visible and individually distinguishable and most (i.e.,
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`more than 75%) of the polygons (polyhedrons) having an area of contact,
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`intersection or interconnection with other elements (polygons or polyhedrons) that
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`is less than 50% of the perimeter or area.” (Ex. 1002, ¶¶57-62.) Patent Owner argued
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`that the italicized language above should be omitted from the construction which is
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`how the Samsung court construed the term. (Ex. 1008.0007-13; Ex. 1009.0018-19.)
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`In the inter partes reexamination for the related ’432 patent, the PTO construed the
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`claim consistent with Petitioner’s proposed construction. (Ex. 1016.0016.) For
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`purposes of this Petition, Petitioner will apply its same narrower proposed
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`construction of both of these terms.
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`“geometric elements”
`The term “geometric elements” is used in all claims. Petitioner submits that
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`it should be construed to mean “a closed plane figure bounded by straight lines or
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`closed plane bound by a circle or an ellipse.” (Ex. 1002, ¶63.) Patent Owner argues
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`for a broader construction in the district court. (Ex. 1008. 0016-19) For purposes
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`of this Petition, Petitioner will apply its narrower proposed construction of
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`“geometric elements.”
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`“a fraction of a total perimeter or a total area”
`The term “a fraction of total perimeter or a total area” is used in claim 5.
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`Petitioner submits that it should be construed to mean “less than 50% of a total
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`perimeter or a total area.” (Ex. 1002, ¶64.) The Patent Owner agreed with this
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`construction. (Ex. 1008. 0006.) This construction will be applied in this Petition.
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`“frequency band”
`The term “frequency band” is used in all claims. Petitioner submits that it
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`should be construed to mean “a range of frequencies.” (Ex. 1002, ¶¶65-66.) Patent
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`Owner argues that the term means “a range of frequencies extending between two
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`limiting frequencies.” (Ex. 1008.0027-30.) For purposes of this Petition, Petitioner
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`will apply Patent Owner’s narrower proposed construction of “frequency band.
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`“substantially similar impedance level and radiation pattern”
`This limitation is used in all claims. Petitioner and Patent Owner agree that it
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`should be construed to mean “substantially similar combined impedance level as
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`characterized by th