PTAB

IPR2016-01639

Sony Corp v. One E Way Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Wireless Digital Audio Music System
  • Brief Description: The ’396 patent relates to a wireless digital audio system for transmitting audio from a portable source to a headphone set. The system uses spread spectrum techniques, including a transmitter with an encoder and modulator, and a receiver with a direct conversion module and demodulator, to enable wireless communication.

3. Grounds for Unpatentability

Ground 1: Claims 1-17 are anticipated under 35 U.S.C. § 102 by Haartsen.

  • Prior Art Relied Upon: Haartsen (Patent 6,563,892).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Haartsen, which describes Bluetooth technology and incorporates by reference the 1998 paper on the same subject, discloses every limitation of the challenged claims. Haartsen allegedly teaches a portable wireless audio system comprising a transmitter coupled to an audio source and a headphone receiver. The system uses frequency-hopped Code Division Multiple Access (CDMA) and transmits audio data in packets, each with a unique user code derived from a master identity. Petitioner asserted that Haartsen discloses a direct conversion (homodyne) receiver by teaching a solution to the DC offset problems inherent in such receivers. Critically, Petitioner contended that Haartsen teaches "reduced intersymbol interference coding" through its disclosure of Differential Phase Shift Keying (DPSK), a technique it describes for improving signal detection. Petitioner supported this by citing the patent owner’s own admission during prosecution of a related application that DPSK provides inter-symbol interference noise reduction. The remaining limitations for decoders, demodulators, and audio output modules were argued to be inherently disclosed as necessary components of a functional wireless audio headset.

Ground 2: Claims 1-17 are obvious over Haartsen in view of Giannakis.

  • Prior Art Relied Upon: Haartsen (Patent 6,563,892) and Giannakis (a Nov./Dec. 2000 journal article titled "Load-Adaptive MUI/ISI-Resilient Generalized Multi-Carrier CDMA...").
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1. Petitioner argued that if the Board finds Haartsen's disclosure of DPSK insufficient to teach the "reduced intersymbol interference coding" limitation, then this feature is explicitly supplied by Giannakis. Giannakis describes advanced coding schemes, specifically an "MUI/ISI-resilient inner-code/outer-code design," that it states "guarantees the ISI removal and symbol recovery." A Person of Ordinary Skill in the Art (POSITA) would have understood this to be a direct solution for reducing intersymbol interference in a wireless system like the one disclosed in Haartsen.
    • Motivation to Combine: Petitioner asserted that intersymbol interference (ISI) was a well-known problem in wireless communications at the time. A POSITA seeking to improve the performance of the Bluetooth system described in Haartsen would have been motivated to consult the state of the art for ISI mitigation techniques. Giannakis provided an explicit and compelling motivation by suggesting that its ISI-resilient coding scheme has "significant practical appeal in wireless environments," including "ad hoc (Bluetooth-like) networking."
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining Giannakis's established coding techniques with Haartsen’s well-defined wireless system architecture to achieve the predictable result of improved ISI performance.

4. Key Claim Construction Positions

  • Petitioner requested that claim terms be given their ordinary meaning, except for several key terms for which it proposed constructions adopted by an Administrative Law Judge in a related International Trade Commission (ITC) proceeding. These are central to the invalidity arguments:
    • “reduced intersymbol interference coding”: "coding that reduces intersymbol interference"
    • “configured for independent code division multiple access (CDMA) communication operation”: "configured for code division multiple access (CDMA) communication operation performed independent of any central control"
    • “unique user code” / “unique user code bit sequence”: "fixed code (bit sequence) specifically associated with one user of a device(s)"
    • “direct conversion module”: "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)

  • Effective Priority Date: A central contention of the petition is that the ’396 patent is not entitled to the priority dates of its earliest parent applications (filed in 2001 and 2003) because the chain of priority was broken. Petitioner argued that a 2003 continuation-in-part (CIP) application in the chain, as originally filed, failed to provide written description support for key limitations of the challenged claims, such as "direct conversion module," "DPSK," and "reduced intersymbol interference coding." Because this 2003 application also failed to incorporate its parent by reference, the continuity of disclosure was lost. Petitioner argued the earliest effective priority date is July 12, 2008, the filing date of a later application. This effective date is critical, as it makes the Haartsen patent (issued May 13, 2003) a valid prior art reference under 35 U.S.C. § 102.

6. Relief Requested

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