Sony Corp v. One E Way Inc

1. Case Identification

• Case #: IPR2018-00216
• Patent #: 7,865,258
• Filed: November 22, 2017
• Petitioner(s): Sony Corporation
• Patent Owner(s): One-E-Way, Inc.
• Challenged Claims: 3, 4, 8, 10, and 11

2. Patent Overview

• Title: Wireless Digital Audio System
• Brief Description: The ’258 patent discloses a wireless digital audio system for transmitting an audio signal from a portable source (e.g., a music player) to a portable headphone receiver. The system employs spread spectrum modulation, unique user codes, and various encoding/decoding techniques to ensure robust, interference-free communication.

3. Grounds for Unpatentability

Ground 1: Claims 3, 4, 8, 10, and 11 are obvious over the '196 Publication.

• Prior Art Relied Upon: '196 Publication (Application # 2003/0118196) in view of the knowledge of a Person of Ordinary Skill in the Art (POSITA).
• Core Argument for this Ground:
  • Priority Date Entitlement: A central argument of the petition was that the challenged claims of the ’258 patent were not entitled to the priority date of the earliest application in the chain (the 2001 application). Petitioner argued that the chain of priority was broken by an intervening 2003 continuation-in-part (CIP) application that disclosed a different invention (a "Fuzzy Audio Wireless Music System") and failed to incorporate the 2001 application's disclosure by reference. Petitioner asserted that subsequent amendments to the 2003 application to re-introduce the original subject matter constituted improper new matter. As a result, Petitioner contended the earliest effective priority date for the challenged claims is July 12, 2008, making the '196 publication, published on June 26, 2003, valid prior art under 35 U.S.C. §102(b).
  • Prior Art Mapping: Petitioner argued that the '196 publication, which published from the patent's own 2001 parent application, disclosed all key limitations of the challenged claims. For independent claim 3, the '196 publication was alleged to disclose a portable wireless audio system with a transmitter and headphone receiver. It described using a unique user code word with direct sequence spread spectrum modulation for each user, an encoder to reduce intersymbol interference (ISI), and a direct conversion receiver. For independent claim 4, the '196 publication allegedly taught the additional limitations of a channel encoder and interleaver to reduce transmission errors and a Viterbi decoder in the receiver. Petitioner contended that while the '196 publication did not explicitly mention transmitting signals in "packet format," a POSITA would have found it obvious to use packets.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that a POSITA would have been motivated to implement the system of the '196 publication using packets, a well-known technique in wireless digital communications. This modification was presented as a predictable solution to achieve the timing, synchronization, and error reduction functions (e.g., interleaving/de-interleaving) already described in the reference.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in using packets, as it was a standard and established method for handling digital data in wireless systems to improve reliability and manage data flow.

4. Key Claim Construction Positions

• Petitioner argued for constructions largely adopted from a related ITC action, asserting they represent either the plain and ordinary meaning or a construction advocated by the Patent Owner in that proceeding. Key constructions included:
  • "reduced intersymbol interference coding": "coding that reduces intersymbol interference"
  • "unique user code" / "unique user code bit sequence": "fixed code (bit sequence) specifically associated with one user of a device(s)"
  • "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"
  • "direct conversion module": "a module for converting radio frequency to baseband or very near baseband in a single frequency conversion without an intermediate frequency"
  • "virtually free from interference...": "free from interference such that eavesdropping...cannot occur."

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 3, 4, 8, 10, and 11 of the '258 patent as unpatentable.