Sirius XM Radio Inc v. Fraunhofer Gesellschaft zur FOrderung der angewandTen Forschung Ev

1. Case Identification

• Patent #: 6,314,289
• Filed: February 22, 2018
• Petitioner(s): Sirius XM Radio Inc.
• Patent Owner(s): Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung E.V.
• Challenged Claims: 1-15, 17-33, 35

2. Patent Overview

• Title: Apparatus and Method for Transmitting Information and Apparatus and Method for Receiving Information
• Brief Description: The ’289 patent describes systems and methods for digital audio broadcasting (DAB) that improve signal reliability. The technology involves encoding a source bitstream, partitioning it into two differently encoded but individually recoverable portions, and transmitting these portions over two separate channels that provide time and/or spatial diversity to combat signal fading.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chen in view of Campanella - Claims 1-15, 17-33, and 35 are obvious over Chen in view of Campanella.

• Prior Art Relied Upon: Chen (Patent 6,347,122) and Campanella (Patent 6,944,139).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen taught the core encoding and partitioning concepts. Specifically, Chen disclosed using a "mother code" (e.g., a rate-1/3 convolutional code) that is punctured to create two complementary, differently encoded bitstreams, known as complementary punctured-pair convolutional (CPPC) codes. Chen taught that each bitstream could independently recover the original information and that they were transmitted over separate frequency-diverse channels. Petitioner asserted that Campanella supplied the claimed spatial and temporal diversity, disclosing DAB systems that use two geostationary satellites or a satellite combined with terrestrial repeaters and time delays to create diverse transmission paths. Campanella also taught combining signals from diverse channels at the receiver using a maximum likelihood combiner before decoding.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would be motivated to combine these references because Chen explicitly stated its advanced coding scheme was applicable to systems utilizing time and space diversity. Campanella described precisely such system architectures for the same purpose of improving broadcast reliability. A POSITA would therefore apply Chen’s encoding to Campanella’s transmission architecture to achieve the predictable result of a more robust DAB system.
  • Expectation of Success: The combination involved applying a known coding method to a known transmission architecture, which would have provided a POSITA with a reasonable expectation of successfully improving signal resilience against fading without undue experimentation.

Ground 2: Anticipation by Smallcomb - Claims 1-6, 8-14, 17-23, 25-32, and 35 are anticipated by Smallcomb.

• Prior Art Relied Upon: Smallcomb (Patent 6,247,158).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Smallcomb disclosed every element of the challenged claims. Smallcomb described a digital broadcasting system achieving multi-channel code diversity by encoding a bitstream and then using a "Code Bit Decomposition" element to create two "Critical Subsets." These subsets were explicitly described as being coded differently and transmitted over separate, spatially diverse channels, with each subset being sufficient to regenerate the original source bits. Smallcomb also disclosed implementing time diversity via delay elements and, at the receiver, using a "Code Bit Recomposition and Combining" function to reconstruct the code before final decoding with a Viterbi decoder, thus meeting all limitations of the independent claims.

Ground 3: Obviousness over Smallcomb in view of Campanella - Claims 1-15, 17-33, and 35 are obvious over Smallcomb in view of Campanella.

• Prior Art Relied Upon: Smallcomb (Patent 6,247,158) and Campanella (Patent 6,944,139).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative ground, arguing that Smallcomb taught the fundamental concepts of creating two differently encoded, independently recoverable bitstream portions and transmitting them over diverse channels. To the extent Smallcomb was deemed not to explicitly teach certain specific diversity configurations recited in the claims (e.g., achieving time and space diversity with only a single satellite for a mobile receiver), Campanella explicitly provided these missing details. Campanella taught repeating a satellite signal with a delay to achieve time diversity, which in turn creates spatial diversity for a moving receiver.
  • Motivation to Combine: A POSITA would find it obvious to apply Campanella's well-known diversity techniques to Smallcomb's system. Because both references addressed the same problem of signal fading in satellite broadcasting, combining their respective solutions—Smallcomb's coding diversity and Campanella's transmission diversity—would be a predictable design choice to improve reception for mobile users.

4. Key Claim Construction Positions

• Petitioner argued for specific constructions for several means-plus-function limitations, identifying corresponding structures in the ’289 patent specification. These constructions were asserted to be critical for mapping the functions disclosed in the prior art to the claimed means.
• "delay means for delaying..." (claims 1, 5, 11): The function was identified as delaying bits on a channel to achieve time diversity or compensation, with the corresponding structure being a "delay stage."
• "means for transmitting..." (claim 2): The function was transmitting the two portions via first and second channels, with the corresponding structure being "two transmitters."
• "receiving means for receiving..." (claims 10, 13): The function was receiving the two portions from two channels, with the corresponding structure identified as a "receiver" comprising two physical receivers and a delay stage.
• "depuncturing means for compensating..." (claim 13): The function was compensating for a puncturing operation performed in the transmitter, with the corresponding structure being a "depuncturing unit."

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-15, 17-33, and 35 of the ’289 patent as unpatentable.