PTAB

IPR2016-01638

Sony Corp v. One E Way Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Digital Audio Music System
  • Brief Description: The ’396 patent relates to a portable wireless digital audio system for transmitting an audio signal from a portable source to a digital audio headphone. The system uses spread spectrum communication and comprises a transmitter with encoding and modulation components, including differential phase shift keying (DPSK), and a headphone receiver with a direct conversion module, demodulator, and decoder to reproduce the audio output.

3. Grounds for Unpatentability

Ground 1: Claims 1-17 are obvious over the ’196 publication.

  • Prior Art Relied Upon: The ’196 publication (Application # 2003/0118196).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’196 publication, which is the published version of the ’396 patent’s own original parent application, discloses nearly every limitation of the challenged claims. The reference teaches a portable wireless audio system comprising a spread spectrum transmitter coupled to a portable audio source and a corresponding headphone receiver. Key disclosed features mirroring the claims included the use of a unique user code for independent operation (CDMA), an encoder to reduce intersymbol interference (ISI), a direct conversion receiver module, a DPSK transmitter, and a corresponding demodulator and decoder.
    • Motivation to Combine: The petition presents a single-reference obviousness challenge. For the limitation of transmitting the audio signal in "packet format," which is not expressly taught, Petitioner argued a person of ordinary skill in the art (POSITA) would have found it obvious. Using packets was a well-known and standard technique in wireless digital communications at the time for implementing the timing, synchronization, and error-reduction features (like interleaving) that are explicitly disclosed in the ’196 publication.
    • Expectation of Success: A POSITA would have had a high expectation of success in using a conventional packet format to implement the disclosed functionalities, as it was a predictable and routine design choice for improving the reliability of wireless data transmission.
    • Key Aspects: The asserted prior art is the published application from the ’396 patent's own priority chain. This reference is only available as prior art because of Petitioner’s central argument that the patent’s chain of priority was broken, as detailed in Section 5 below.

4. Key Claim Construction Positions

  • Petitioner proposed adopting several claim constructions from a related International Trade Commission (ITC) proceeding, asserting they represent the broadest reasonable constructions. Key constructions included:
    • "reduced intersymbol interference coding": construed as "coding that reduces intersymbol interference."
    • "configured for independent code division multiple access (CDMA) communication operation": construed as "configured for code division multiple access (CDMA) communication operation performed independent of any central control."
    • "unique user code" / "unique user code bit sequence": construed as "fixed code (bit sequence) specifically associated with one user of a device(s)."
    • "direct conversion module": construed as "a module for converting radio frequency to baseband or very near baseband in a single frequency conversion without an intermediate frequency."

5. Key Technical Contentions (Beyond Claim Construction)

  • Broken Chain of Priority / Invalid Priority Claim: The central technical and legal contention underpinning the entire petition is that the ’396 patent is not entitled to its claimed 2001 priority date.
    • Petitioner argued the chain of disclosure was broken in 2003 when the applicant filed a continuation-in-part (CIP) application that was directed to a different invention (a "Fuzzy Audio Wireless Music System").
    • This 2003 application, as originally filed, allegedly failed to provide written description support for key limitations of the ’396 patent’s claims, including the "direct conversion module," "DPSK," and coding to reduce "intersymbol interference."
    • Petitioner contended that subsequent amendments to the 2003 application's specification and figures to re-introduce this subject matter from the 2001 application constituted improper new matter.
    • As a result, Petitioner asserted the earliest effective priority date for the challenged claims is July 12, 2008. This later date makes the ’196 publication, which published on June 26, 2003, available as prior art against the ’396 patent under 35 U.S.C. §102(b).

6. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-17 of the ’396 patent as unpatentable.