Sony Corp v. One E Way Inc

1. Case Identification

• Case #: IPR2018-00218
• Patent #: 8,131,391
• Filed: November 22, 2017
• Petitioner(s): Sony Corporation
• Patent Owner(s): One-E-Way, Inc.
• Challenged Claims: 1-6 and 10

2. Patent Overview

• Title: Wireless Digital Audio Music System
• Brief Description: The ’391 patent relates to a wireless digital audio system for transmitting signals from a portable audio source to a wireless headphone set. The system uses spread spectrum communication and features a transmitter coupled to the audio source and a receiver integrated into the headphones.

3. Grounds for Unpatentability

Ground 1: Obviousness over the ’196 Publication - Claims 1-6 and 10 are obvious over ’196 Publication

• Prior Art Relied Upon: The ’196 publication (Application # 2003/0118196) in view of the general knowledge of a person of ordinary skill in the art (POSITA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the ’196 publication, which is the published version of the original parent application of the ’391 patent, discloses nearly all limitations of the challenged claims. The reference allegedly describes a portable wireless audio headphone system using direct sequence spread spectrum communication with a unique user code, a direct conversion receiver, a demodulator for independent CDMA operation, and a decoder for reducing intersymbol interference. Petitioner contended that while the ’196 publication does not expressly use the term "packets," a POSITA would have found it obvious to implement the disclosed system using packets.
  • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would be motivated to use packets to implement the system of the ’196 publication because packets were a well-known and conventional method for handling wireless digital communications. Features already described in the ’196 publication, such as timing, synchronization, and interleaving/de-interleaving to reduce errors, are typically and efficiently accomplished using a packet-based format. Therefore, implementing the disclosed system with packets represented a standard and predictable design choice to achieve the system’s stated goals.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in using packets, as it was a standard, non-inventive implementation detail for wireless systems at the time, offering known advantages for data integrity and management.

4. Key Claim Construction Positions

• Petitioner proposed adopting constructions for several terms largely based on those used in a related ITC action, advocating for their ordinary meaning unless otherwise construed. Key proposed 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 a "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."
  • "virtually free from interference...": Construed as "free from interference such that eavesdropping on device transmitted signals operating in the [...] spectrum cannot occur."

5. Key Technical Contentions (Beyond Claim Construction)

• Broken Priority Chain Establishes ’196 Publication as Prior Art: The central technical and legal argument of the petition was that the challenged claims of the ’391 patent were not entitled to the filing date of the earliest parent application (the 2001 application) or the subsequent 2003 continuation-in-part (CIP) application.
  • Petitioner argued that the 2003 CIP application broke the chain of priority because, as filed, it was directed to a different invention ("Fuzzy Audio Wireless Music" system) and failed to include or incorporate by reference the subject matter from the 2001 application.
  • Specifically, the 2003 application allegedly omitted key technical disclosures from the 2001 application that are required by the challenged claims, including a direct conversion receiver, differential phase shift keying (DPSK), and coding to reduce intersymbol interference.
  • Petitioner contended that subsequent amendments made to the 2003 application—nearly three years after its filing—to re-introduce this subject matter and add an incorporation-by-reference statement constituted improper new matter under §132.
  • As a result, Petitioner asserted the earliest priority date the ’391 patent claims are entitled to is July 12, 2008, the filing date of a later application in the chain. Because the ’196 publication was published on June 26, 2003, it predates the effective filing date of the challenged claims by over five years and thus qualifies as prior art under §102(b).

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 and 10 of Patent 8,131,391 as unpatentable.