PTAB

IPR2018-00217

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 System
  • Brief Description: The ’258 patent describes a portable wireless digital audio system for transmitting an audio signal from a portable source to a portable headphone receiver. The system uses spread spectrum communication techniques, such as code division multiple access (CDMA), to ensure signal integrity and reduce interference.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haartsen and Giannakis - Claims 3, 4, 8, 10, and 11 are obvious over the '892 reference, optionally in view of the Giannakis paper.

  • Prior Art Relied Upon: Haartsen (Patent 6,563,892, which incorporates a 1998 Haartsen paper, collectively termed the "'892 reference") and Giannakis (a 2000 journal article on multi-carrier CDMA).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the '892 reference, which describes the Bluetooth standard, discloses nearly all elements of the challenged claims. This includes a portable wireless audio system with a transmitter and headphone receiver, operation in ad-hoc networks (independent CDMA operation), the use of unique user codes (access codes) in packet formats, and direct conversion receivers (homodyne receivers). For the key limitation of "reduced intersymbol interference (ISI) coding," Petitioner asserted two theories. First, that the '892 reference's disclosure of differential phase shift keying (DPSK) as a known technique for noise immunity inherently teaches reducing ISI, pointing to the patent owner's own statements in a related prosecution file. Second, if the Board were to find the '892 reference insufficient, the Giannakis paper explicitly teaches an "MUI/ISI-resilient inner-code/outer-code design" to guarantee ISI removal. Similarly, for the "channel encoder and interleaver" required by claims 4 and 10, Petitioner contended that Giannakis explicitly teaches combining coding with interleaving to improve bit error rate (BER) performance.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that a person of ordinary skill in the art (POSITA) would have been motivated to combine the references to solve a known problem. In 2000, ISI was a well-known issue in wireless systems. A POSITA implementing the Bluetooth system of the '892 reference would have sought to improve its performance by incorporating known ISI-mitigation techniques. Giannakis provided an explicit motivation by suggesting its ISI-resilient coding scheme had "significant practical appeal in wireless environments," including "ad hoc (Bluetooth-like) networking."
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining these teachings because both references address standard techniques in digital wireless communications. Integrating Giannakis's coding and interleaving methods into the Bluetooth framework of the '892 reference was a matter of applying known principles to achieve the predictable result of improved performance and reduced error rates.

4. Key Claim Construction Positions

  • "reduced intersymbol interference coding": Petitioner argued this term should be construed as "coding that reduces intersymbol interference." This construction was critical because Petitioner contended that DPSK, as disclosed in the '892 reference and admitted by the inventor in a related case to provide "inter-symbol interference noise reduction," meets this limitation. Alternatively, the explicit ISI-suppression coding taught by Giannakis satisfies it.
  • "virtually free from interference": Petitioner adopted the construction "free from interference such that eavesdropping on device transmitted signals operating in the...spectrum cannot occur." This was important to show that the '892 reference's description of Bluetooth security, where packets with non-matching access codes are ignored and spectrum spreading suppresses interference, meets the claim limitation.
  • "configured for independent code division multiple access (CDMA) communication operation": Construed as "configured for...CDMA communication operation performed independent of any central control." Petitioner argued this mapped directly onto the '892 reference's disclosure of Bluetooth piconets, which are described as ad hoc, uncoordinated, and hopping independently.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention was that the '258 patent was not entitled to its earliest claimed priority date of December 21, 2001. Petitioner argued that a 2003 continuation-in-part application in the priority chain broke the chain of disclosure by being directed to a different invention and failing to incorporate the original 2001 application by reference. If this argument succeeded, the '258 patent's effective priority date would be July 12, 2008. This would make the Giannakis paper (published in 2000) and the '892 reference (issued in 2003) prior art under 35 U.S.C. §102(b), strengthening the obviousness case.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 3, 4, 8, 10, and 11 of Patent 7,865,258 as unpatentable under 35 U.S.C. §103.