DCT

1:24-cv-01561

One E Way Inc v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01561, W.D. Tex., 12/18/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Samsung maintains regular and established places of business within the district, including facilities in Austin and Round Rock.
  • Core Dispute: Plaintiff alleges that Defendant’s Bluetooth-enabled consumer electronics, including its Galaxy-brand headphones, smartphones, and tablets, infringe three patents related to wireless digital audio transmission systems.
  • Technical Context: The technology concerns systems for wirelessly transmitting audio to personal listening devices, a foundational technology for the modern wireless headphone and portable speaker market.
  • Key Procedural History: The complaint states that the patents-in-suit have expired. It alleges that Samsung was notified of the alleged infringement via a certified letter on April 10, 2020. It also alleges Samsung had constructive knowledge of the technology through its own patent prosecution activities, during which a related One-E-Way patent was cited by a USPTO examiner.

Case Timeline

Date Event
2001-12-21 Priority Date for ’627, ’047, and ’000 Patents
2015-08-11 U.S. Patent No. 9,107,000 Issued
2018-11-13 U.S. Patent No. 10,129,627 Issued
2019-11-05 U.S. Patent No. 10,468,047 Issued
2020-04-10 Plaintiff allegedly sent pre-suit notice letter to Defendant
2024-12-18 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,129,627 - “Wireless Digital Audio Music System,” issued November 13, 2018 (’627 Patent)

The Invention Explained

  • Problem Addressed: The patent identifies the inconvenience and potential danger of physical wires connecting headphones to portable audio players, as well as the problem of signal interference when multiple users operate wireless devices in the same physical space (’627 Patent, col. 1:25-35, col. 2:50-54; Compl. ¶10).
  • The Patented Solution: The invention describes a wireless audio system comprising a transmitter connected to an audio source and a receiver integrated into headphones. To solve the interference problem, the system uses coded digital transmission, specifically referencing code division multiple access (CDMA), where each transmitter/receiver pair uses a "unique user code" to ensure private listening and reject signals from other nearby users (’627 Patent, Abstract; col. 2:64-3:5). The receiver architecture, depicted in Figure 3, includes components like a direct conversion module (56) and a code generator (60) to recognize the user-specific code (’627 Patent, col. 4:8-25).
  • Technical Importance: The patent proposed applying CDMA principles to personal wireless audio to enable multiple, independent listening sessions in close proximity without the co-channel interference that can plague other wireless communication methods (’627 Patent, col. 3:30-35).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claim 5 (Compl. ¶51).
  • Essential elements of independent claim 1, a wireless receiver, include:
    • A mobile wireless digital audio spread spectrum receiver.
    • It is configured to receive a "unique user code" and a high-quality audio signal representation (20 Hz to 20 kHz).
    • It includes a direct conversion module to receive transmissions that are encoded to reduce intersymbol interference.
    • It uses a digital-to-analog converter (DAC) and a speaker.
    • The receiver is configured to use "independent code division multiple access communication" and the unique user code to communicate only with its paired transmitter.
    • It is configured to perform a plurality of demodulations, including both a differential phase shift keying (DPSK) demodulation and a non-DPSK demodulation.
  • The complaint reserves the right to assert other claims, including those relying on the doctrine of equivalents (Compl. ¶52).

U.S. Patent No. 10,468,047 - “Wireless Digital Audio Music System,” issued November 5, 2019 (’047 Patent)

The Invention Explained

  • Problem Addressed: As a continuation of the same family, the ’047 Patent addresses the same problems of wired headphone inconvenience and wireless interference as the ’627 Patent (’047 Patent, col. 1:26-48).
  • The Patented Solution: The technology is substantially identical to that of the ’627 Patent, describing a wireless audio system with a transmitter and receiver pair. It emphasizes the use of a "unique user code" generated by a code generator (44) in the transmitter and recognized by the receiver to facilitate private, interference-free communication via CDMA (’047 Patent, col. 2:60-3:2). The system architecture is depicted in Figures 2 (transmitter) and 3 (receiver) (’047 Patent, FIGS. 2-3).
  • Technical Importance: The technical approach and its significance are the same as described for the ’627 Patent.

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a receiver) and 17 (a transmitter) (Compl. ¶57).
  • Essential elements of independent claim 17, a transmitter, include:
    • A portable spread spectrum audio transmitter.
    • It is configured to transmit a "unique user code" and a representation of an audio signal.
    • It includes an encoder to encode the audio signal to reduce intersymbol interference.
    • It is configured to perform a plurality of modulations on the audio signal, including both a DPSK modulation and a non-DPSK modulation.
    • It uses the modulated signal and "independent code division multiple access communication" to wirelessly transmit the audio signal.
  • The complaint reserves the right to assert other claims and proceed under the doctrine of equivalents (Compl. ¶58).

Multi-Patent Capsule: U.S. Patent No. 9,107,000 - “Wireless Digital Audio Music System,” issued August 11, 2015 (’000 Patent)

  • Technology Synopsis: The ’000 Patent, from the same family, describes a wireless audio system designed to replace wired headphones. The system uses a transmitter paired with a receiver, employing "independent code division multiple access (CDMA) communication" and a "unique user code" to allow for private audio enjoyment and prevent interference when multiple systems are used in the same area (’000 Patent, Abstract; col. 2:49-55).
  • Asserted Claims: Independent claims 8 (transmitter) and 9 (receiver) are asserted (Compl. ¶63).
  • Accused Features: The complaint alleges that Samsung’s Bluetooth-enabled transmitters (e.g., smartphones) and receivers (e.g., headphones) infringe by using unique identifiers (BD_ADDR and a user-friendly name) as a "unique user code" and by operating according to the Bluetooth standard, which the complaint characterizes as a form of CDMA communication (Compl. ¶¶ 32, 36, 42, 63-64).

III. The Accused Instrumentality

Product Identification

  • The complaint names two categories of products: "Accused Receiver Products" and "Accused Transmitter Products" (Compl. ¶¶ 22, 34).
    • Accused Receivers: Wireless headphones, including the "Galaxy Buds" line, and wireless speakers, including the "Level Box" and "Sound Tower" lines (Compl. ¶22).
    • Accused Transmitters: Smartphones ("Galaxy" line), tablets ("Galaxy Tab" line), laptops ("Galaxy Book" line), and smartwatches ("Galaxy Watch" line) (Compl. ¶34).

Functionality and Market Context

  • The accused products are all Bluetooth-compatible devices that wirelessly transmit and receive audio signals (Compl. ¶¶ 21, 23, 35). The complaint alleges their core functionality aligns with the patented inventions by using unique identifiers (a device address and a customizable "user-friendly name") as a "unique user code" to establish a connection between a single transmitter and receiver (Compl. ¶¶ 24, 36).
  • The complaint alleges these devices employ communication techniques described as equivalent to the patent claims, including a form of code-division multiple access (specifically, frequency-hopping CDMA) and modulation schemes such as DPSK (Compl. ¶¶ 32, 33, 41, 42). The complaint provides a screenshot from a Samsung support page illustrating how a user can change the "user-friendly name" of their device, which supports the allegation of a unique, customizable user code (Compl. p. 13).
  • The products represent major, high-volume consumer electronics lines for Samsung (Compl. ¶2).

IV. Analysis of Infringement Allegations

'627 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a wireless digital audio spread spectrum receiver, capable of mobile operation... The Accused Receiver Products, such as Galaxy Buds headphones, are portable and mobile digital audio receivers. ¶23 col. 8:61-62
configured to receive a unique user code and a high quality audio signal representation with a frequency range of 20 Hz to 20 kHz... The receivers receive Bluetooth identifiers (BD_ADDR and UFN) alleged to be a unique user code, and receive audio signals in the 20 Hz to 20 kHz range. ¶¶24, 26 col. 8:62-65
a direct conversion module configured to receive wireless spread spectrum signal transmissions... wherein the received transmissions are encoded to reduce intersymbol interference... The receivers allegedly include a direct conversion module and receive signals encoded using techniques like Adaptive Frequency Hopping and pulse shaping to reduce interference. ¶28 col. 5:7-10
a speaker configured to reproduce said generated audio output, wherein said reproduction does not include audible audio content originating from any... signals... that do not originate from said digital audio spread spectrum transmitter The receivers contain speakers and, when paired, allegedly reproduce audio only from the corresponding paired transmitter. ¶31 col. 3:1-3
wherein the wireless digital audio spread spectrum receiver is configured to use independent code division multiple access communication and... the received unique user code to communicate with only said... transmitter... The receivers allegedly use the Bluetooth standard, characterized as a form of CDMA, and the received unique code to communicate only with the paired transmitter. ¶32 col. 3:30-35
...demodulate a received modulated transmission... by performing at least one of a plurality of demodulations, wherein the plurality of demodulations includes a differential phase shift keying (DPSK) demodulation and also includes a non-DPSK demodulation. The receivers demodulate transmissions using both DPSK and non-DPSK (e.g., GFSK) methods, as shown in the Bluetooth Enhanced Data Rate packet format. A diagram from the Bluetooth Core Specification is provided as evidence (Compl. p. 17). ¶33 col. 4:32-34

'047 Patent Infringement Allegations

Claim Element (from Independent Claim 17) Alleged Infringing Functionality Complaint Citation Patent Citation
A... transmitter operatively coupled to a portable audio player and configured to transmit a unique user code and a representation of an audio signal... The Accused Transmitter Products (e.g., smartphones) are portable, act as the audio source, and transmit Bluetooth identifiers (alleged unique user code) and audio signals. ¶¶34-36 col. 2:64-3:2
an encoder operative to encode a first representation of an audio signal to reduce intersymbol interference... Transmitters encode audio signals using techniques such as Adaptive Frequency Hopping (AFH) and pulse shaping to reduce intersymbol interference. ¶40 col. 2:56-60
...perform at least one of a plurality of modulations... wherein the plurality of modulations includes a differential phase shift keying (DPSK) modulation and a non-DPSK modulation Transmitters use both DPSK and non-DPSK (e.g., GFSK) modulation schemes, as defined in the Bluetooth EDR standard. ¶41 col. 2:60-62
...use the modulated signal and... independent code division multiple access communication to wirelessly transmit a transmitted representation of the audio signal... Transmitters use the modulated signal and what is alleged to be a form of CDMA (FH-CDMA) to wirelessly transmit the audio. ¶42 col. 2:46-54

Identified Points of Contention

  • Scope Questions: The central dispute may concern whether the operational principles of the Bluetooth standard fall within the scope of the patent claims. A key question is whether "independent code division multiple access communication," as claimed, can be read to cover the "frequency hopping code division multiple access" (FH-CDMA) that the complaint alleges is used in Bluetooth. Another question is whether the Bluetooth device identifiers (BD_ADDR and UFN) function as the "unique user code" for ensuring private, interference-free listening as described in the patents.
  • Technical Questions: The claims require systems that use both DPSK and non-DPSK modulation/demodulation. The complaint alleges infringement by pointing to the Bluetooth EDR packet structure, which uses a non-DPSK modulation (GFSK) for the header and a DPSK modulation for the payload. The court may need to determine if this fixed, dual-mode packet structure satisfies the claim language, which requires performing "a plurality" of such modulations.

V. Key Claim Terms for Construction

  • The Term: "independent code division multiple access communication"

  • Context and Importance: This term is the foundation of the infringement theory. Plaintiff's case depends on construing this term to encompass the frequency-hopping scheme used in the Bluetooth standard. Practitioners may focus on this term because its definition will likely determine whether the accused products, which operate on a ubiquitous industry standard, practice the specific communication method claimed by the patents.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification states generally that "code division multiple access (CDMA) may be used to provide each user independent audible enjoyment" ('627 Patent, col. 3:30-32). It does not explicitly limit the term to a specific type of CDMA (e.g., direct-sequence), which could support an interpretation that includes other forms like frequency-hopping.
    • Evidence for a Narrower Interpretation: The patents consistently link the CDMA operation to a single "unique user code" for each user pair (’627 Patent, col. 2:64-3:5). A defendant could argue this points to a specific form of CDMA tied to a single spreading code, in contrast to FH-CDMA where separation also relies on distinct hopping patterns over time.

  • The Term: "unique user code"

  • Context and Importance: The infringement allegation hinges on mapping this term to standard Bluetooth identifiers like the BD_ADDR and the user-friendly name (UFN). The ability of a user to customize the UFN, as shown in the complaint's visual evidence (Compl. p. 13), makes this a critical point of dispute.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent describes the code as being "specifically associated with one wireless digital audio system user" and notes it is the "only code recognized by the... receiver" ('627 Patent, col. 3:1-3). This functional description could be argued to fit any unique identifier that pairs a transmitter and receiver, such as the Bluetooth identifiers.
    • Evidence for a Narrower Interpretation: The term is used in the context of providing "private listening without interference" and optimizing "code division in the headphone receiver" ('627 Patent, col. 4:47-49). This might support an argument that the term requires a code with a more robust technical function for signal separation than a simple network address or display name.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), stating that Samsung actively encouraged infringement by providing customers with products, software, and instructional materials (e.g., manuals, tutorials, support websites) that direct users on how to pair and use the devices in an infringing manner (Compl. ¶¶ 53, 59, 65).
  • Willful Infringement: The complaint alleges willful infringement based on Samsung’s alleged knowledge of the patents-in-suit. This knowledge is purportedly based on its receipt of a certified notice letter from One-E-Way dated April 10, 2020, as well as constructive knowledge from an instance where a related One-E-Way patent was cited by the USPTO during the prosecution of a Samsung patent application (Compl. ¶¶ 46-47, 49, 68-70).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of technical translation: can the specific terminology of the patent claims, such as "independent code division multiple access communication" and "unique user code," be fairly and accurately mapped onto the technical operations of the standardized Bluetooth protocol, which uses concepts like "frequency-hopping CDMA" and "device addresses"?
  • A key question of claim scope will be whether the requirement for performing both DPSK and non-DPSK modulation/demodulation is met by a system that uses different, fixed modulation types for different parts of a single data packet, or if the claim requires a more flexible or user-selectable capability.
  • The case will also present an evidentiary challenge: Plaintiff must demonstrate not just a superficial similarity but a functional and structural correspondence between the accused Bluetooth systems and the specific architectures and methods disclosed and claimed in the patents from the early 2000s.