Sony Corp v. One E Way Inc

1. Case Identification

• Case #: IPR2018-00219
• 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 discloses a wireless digital audio system comprising a portable audio source with a digital audio transmitter and a headphone set with a receiver. The system is configured for direct digital wireless spread spectrum communication, such as frequency-hopped CDMA, to provide interference-resistant audio to a mobile user.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 10 are obvious over Haartsen in view of Giannakis

• Prior Art Relied Upon: Haartsen (Patent 6,563,892) and Giannakis (G.B. Giannakis, et al., “Load-Adaptive MUI/ISI-Resilient Generalized Multi-Carrier CDMA with Linear and DF Receivers,” European Transactions on Telecommunications, Nov.-Dec. 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Haartsen, which describes the Bluetooth standard, discloses nearly all elements of the challenged claims. Haartsen teaches a portable, low-power wireless headset system using frequency-hopped (FH) spread spectrum communication (a form of CDMA), transmitting packetized data with unique access codes corresponding to a specific user/piconet. Haartsen further discloses using direct conversion (homodyne) receivers and employing differential phase-shift keying (DPSK) encoding as a known technique to reduce noise and inter-symbol interference (ISI). Petitioner asserted that the inventor’s own admissions during prosecution of a related application confirm that DPSK meets the limitation of "reduced intersymbol interference coding."
  • Prior Art Mapping (Contingent): As a contingency, Petitioner argued that if Haartsen’s disclosure of DPSK is deemed insufficient to teach the "reduced ISI coding" limitation, then Giannakis explicitly remedies this deficiency. Giannakis discloses advanced ISI-resilient coding schemes (an "inner-code/outer-code design") that guarantee ISI removal and symbol recovery. Furthermore, Petitioner contended that the "de-interleaver" element of claim 2, used to reduce transmission errors, is taught by Giannakis, which describes using interleaving/de-interleaving to improve bit error rate (BER) performance in combination with its primary coding algorithm.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Haartsen with Giannakis to improve the performance of the Bluetooth system described in Haartsen. ISI was a well-known problem in wireless communications, and a POSITA would have sought known solutions to mitigate it. Giannakis provides an explicit motivation, suggesting its ISI-mitigation techniques have "significant practical appeal in wireless environments," including "ad hoc (Bluetooth [ ]-like) networking." This direct reference provides a clear reason to apply Giannakis's teachings to the system of Haartsen.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Giannakis not only provides the technical details for an ISI-resilient coding scheme but also expressly suggests its applicability and benefits for the very type of system disclosed in Haartsen.

4. Key Claim Construction Positions

• Petitioner requested that claim terms be given their ordinary meaning, except for several terms construed in a related ITC action, which it argued should be adopted.
• "reduced intersymbol interference coding": Construed as "coding that reduces intersymbol interference." This construction is central to Petitioner's argument that Haartsen's disclosure of DPSK, a known technique for ISI reduction, meets the limitation.
• "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." Petitioner argued Haartsen's ad hoc Bluetooth piconets meet this limitation.
• "virtually free from interference...": Construed as "free from interference such that eavesdropping on device transmitted signals operating in the [...] spectrum cannot occur." Petitioner asserted that Haartsen’s use of unique access codes for each piconet, which causes a receiver to ignore packets that do not match, meets this requirement.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention underpinning the petition is that the ’391 patent is 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 was directed to a different invention and broke the chain of disclosure.
• As a result, Petitioner contended the challenged claims are only entitled to a priority date of July 12, 2008. This later priority date is critical because it makes both the Haartsen patent (issued May 13, 2003) and the Giannakis paper (published in 2000) prior art under 35 U.S.C. §102(b), strengthening the obviousness challenge.

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 under 35 U.S.C. §103.