Apple Inc v. One E Way Inc

1. Case Identification

• Case #: IPR2021-00283
• Patent #: 8,131,391
• Filed: December 4, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): ONE-E-WAY, INC.
• Challenged Claims: 1, 3-6, 10

2. Patent Overview

• Title: WIRELESS DIGITAL AUDIO MUSIC SYSTEM
• Brief Description: The ’391 patent discloses a portable wireless digital audio system for transmitting audio from a player to a receiver, such as headphones. The system uses Code Division Multiple Access (CDMA) and associated techniques to provide high-quality audio that is "virtually free from interference."

3. Grounds for Unpatentability

Ground 1: Obviousness over Ham, Sklar, Xia, and Groe - Claims 1, 3-6, and 10 are obvious over Ham in view of Sklar, Xia, and Groe.

• Prior Art Relied Upon: Ham (Korean Application Publication No. 20-1998-0018161), Sklar (a 1988 textbook on digital communications), Xia (an October 1997 IEEE article on intersymbol interference cancellation), and Groe (a 2000 textbook on CDMA mobile radio design).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ham disclosed the foundational system: a portable wireless headphone system using CDMA to provide high-quality audio and overcome interference. However, Ham lacked specific implementation details that were well-known in the art. Sklar, a fundamental textbook, supplied these missing details, teaching the obviousness of transmitting digital audio in packets and using unique, user-specific Pseudo Random (PN) codes to maintain orthogonality and privacy in a CDMA system. To address interference further, Petitioner asserted that Xia taught various precoding techniques specifically designed to reduce intersymbol interference (ISI), a common problem in wireless systems. Finally, to complete the receiver design, Petitioner argued that Groe taught the benefits and implementation of a direct conversion receiver in the context of CDMA, which simplifies receiver architecture and improves performance by eliminating an intermediate frequency step.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ham's base system with Sklar's teachings for standard, well-known implementation details of digital communication. A POSITA would be motivated to incorporate Xia's ISI-reduction coding to further Ham's stated goal of improving audio quality by reducing interference. Finally, a POSITA would have been motivated to use Groe’s direct conversion receiver architecture—a known, prominent, and advantageous alternative to traditional heterodyne receivers—to simplify the design and improve performance of Ham’s portable device.
  • Expectation of Success: A POSITA would have a high expectation of success in combining these references, as it involved applying known solutions from standard textbooks and technical articles to a base system to achieve predictable improvements in performance and functionality.

Ground 2: Obviousness over Ham, Sklar, Xia, Groe, and Haartsen - Claims 1, 3-6, and 10 are obvious over Ham in view of Sklar, Xia, Groe, and Haartsen.

• Prior Art Relied Upon: Ham, Sklar, Xia, and Groe (as in Ground 1), and Haartsen (a February 2000 IEEE article describing the Bluetooth radio system).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative based on the Patent Owner's anticipated broad construction of the term "unique user code." Petitioner contended that if this term is interpreted broadly to include codes derived from a device's fixed identity (as in Bluetooth systems), then the claims are obvious over the primary combination with the addition of Haartsen. Haartsen, describing an early Bluetooth implementation, explicitly taught a frequency-hopping (FH-CDMA) scheme where the hopping sequence and the channel access code sent with each packet are both derived from the master transmitter's unique device identity. This mapping directly corresponded to the Patent Owner's alleged infringement theory against modern Bluetooth products.
  • Motivation to Combine: If a POSITA chose to implement Ham's CDMA system using a frequency-hopping approach (an alternative taught by Sklar), Haartsen provided a well-documented, specific scheme for doing so. The motivation would be to create an independent, ad-hoc network without a central controller, a key benefit of the Bluetooth architecture described in Haartsen. Using the device identity to derive the hopping code and access code would simplify connection setup and reduce computational overhead, which is particularly beneficial for portable, power-limited devices like those in Ham.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in adapting Haartsen's established Bluetooth frequency-hopping protocol to Ham's wireless audio system, as it represented a known and successful method for implementing short-range wireless communication.

4. Key Claim Construction Positions

Petitioner requested the Board adopt several constructions from a prior ITC investigation involving the ’391 patent family, which the Patent Owner had not previously disputed.

• “unique user code”: Construed as a "fixed code (bit sequence) specifically associated with one user of a device(s)." This construction was central to both grounds, with Ground 1 applying a user-specific orthogonal code (per Sklar) and Ground 2 applying a device-identity-derived code (per Haartsen) as an alternative.
• “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." This supported the addition of Groe to the primary combination.
• “virtually free from interference”: Following a Federal Circuit opinion, Petitioner argued this term should be construed as "preventing one user from eavesdropping on another." This was allegedly a natural result of using the user-specific CDMA codes taught by Sklar.
• “reduced intersymbol interference coding”: Construed as "coding that reduces intersymbol (inter-symbol) interference." Petitioner argued this would be met by the precoding techniques taught by Xia.

5. Arguments Regarding Discretionary Denial

Petitioner argued against discretionary denial under both §314(a) (Fintiv) and §325(d).

• Against §314(a) Denial: Petitioner asserted it filed its petition diligently, within three months of receiving infringement contentions in a co-pending district court case. At the time of filing, that litigation was in a very early stage, with no trial date set, no scheduling conference held, and no claim construction or other substantive rulings issued. Petitioner also noted that prior IPRs against the ’391 patent were filed by an unrelated party (Sony) and were terminated before any institution decision, and that the present petition relies on different prior art.
• Against §325(d) Denial: Petitioner argued that the grounds were not cumulative to art previously considered by the USPTO. It contended that none of the cited references were substantively considered by the examiner during the original prosecution of the ’391 patent or its parent applications.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3-6, and 10 of Patent 8,131,391 as unpatentable under 35 U.S.C. §103.