Apple Inc v. One E Way Inc

1. Case Identification

• Case #: IPR2021-00284
• Patent #: 10,468,047
• Filed: December 4, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): One-E-Way, Inc.
• Challenged Claims: 1-16

2. Patent Overview

• Title: Wireless Digital Audio Music System
• Brief Description: The ’047 patent describes a portable spread spectrum wireless audio receiver, such as a headphone, designed to receive high-quality audio transmissions from a transmitter coupled to a music source using techniques like Code Division Multiple Access (CDMA).

3. Grounds for Unpatentability

Ground 1: Claims 1-16 are obvious over Ham, Sklar, Xia, Groe, Dirschedl, and Matero.

• Prior Art Relied Upon: Ham (Korean Application Publication No. 2000-0021610), Sklar (a 1988 textbook on digital communications), Xia (a 1997 IEEE article on intersymbol interference cancellation), Groe (a 2000 textbook on CDMA design), Dirschedl (Patent 6,262,994), and Matero (WO 00/76109).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ham disclosed the foundational system: a portable wireless headphone receiver using CDMA (a spread spectrum technique) to receive audio from a transmitter coupled to an audio source. The remaining references were alleged to teach well-known modifications to address predictable design considerations. Sklar was cited for teaching fundamental CDMA principles, including the use of a “unique user code” (a Pseudo Random or PN code) to establish a private communication channel, which maps to claim 1’s preamble. Groe was cited for teaching a “direct conversion module” in the context of CDMA receivers, a known alternative architecture. Xia was argued to teach processing transmissions to reduce intersymbol interference (ISI) via precoding techniques, and the receiver performing corresponding decoding, which maps to limitations in claims 1 and 8. Finally, Dirschedl and Matero were cited for teaching systems that adaptively select from a plurality of demodulation types (including both DPSK and non-DPSK as required by claims 1 and 8) to optimize transmission quality.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would have been motivated to combine these references to improve the performance of Ham’s basic system. A POSITA would combine Ham with Sklar’s teachings to implement the fundamental aspects of CDMA, such as using unique codes for channel privacy. To improve receiver design and simplicity, a POSITA would have implemented a direct conversion receiver as taught by Groe, a known architecture. To address the known problem of ISI, a POSITA would have incorporated precoding techniques as taught by Xia. Finally, to optimize performance over a wireless channel, a POSITA would have been motivated by Dirschedl and Matero to include the capability to switch between different modulation schemes (DPSK and non-DPSK) to balance tradeoffs like data rate and interference sensitivity.
  • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success because the combination involved applying a series of conventional, well-understood techniques to a known system (Ham) to achieve predictable results and solve known problems in the field of wireless communications.

Ground 2: Claims 1-16 are obvious over Ham, Sklar, Xia, Groe, Dirschedl, and Matero in further view of Haartsen.

• Prior Art Relied Upon: All references from Ground 1, plus Haartsen (a 2000 IEEE article on 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 apparent infringement theory that the “unique user code” limitation is met by Bluetooth’s use of a device address. Petitioner argued that if the term is construed this broadly, Haartsen’s disclosure of the early Bluetooth standard renders the claims obvious. Haartsen taught a frequency-hopping (FH-CDMA) system where the unique hopping sequence and the channel access code are derived from the device identity (address) of the master transmitter. Petitioner asserted that this device-identity-based access code, transmitted with each packet, would meet the broadly construed "unique user code" limitation. The remaining claim limitations were argued to be met by the primary combination of references for the same reasons as in Ground 1.
  • Motivation to Combine: The motivation was to implement a known, standardized, and ad-hoc wireless communication protocol (Bluetooth, as taught by Haartsen) into a wireless headphone system like Ham’s. Haartsen itself expressly motivated the application of Bluetooth to wireless headsets to eliminate cables. Using a device identity to derive the hop pattern and access code was taught by Haartsen to simplify connection setup (avoiding the need for a central controller to assign codes) and reduce computational overhead, which are both beneficial for portable, battery-powered devices.
  • Expectation of Success: A POSITA would have expected success in combining the industry-standard Bluetooth protocol described by Haartsen with the other references to create a wireless audio system, as this represented a known and commercially relevant path for wireless device implementation.

4. Key Claim Construction Positions

• Petitioner requested the Board adopt constructions from a prior ITC investigation involving a related patent.
• "unique user code": "fixed code (bit sequence) specifically associated with one user of a device(s)."
• "direct conversion module": "module for converting radio frequency to baseband or very near baseband in a single frequency conversion without an intermediate frequency."
• "configured for independent CDMA communication operation": "configured for code division multiple access (CDMA) communication operation performed independent of any central control."

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d). It asserted the petition was filed over seven months before the one-year statutory bar and that the parallel district court litigation was in its earliest stages, with no substantive rulings or trial date set, making Fintiv denial inappropriate. Petitioner also argued that prior IPRs on related patents were filed by an unrelated party (Sony), relied on different prior art, and were terminated before a final written decision, creating no unfair advantage. Finally, it was argued the relied-upon references were not substantively considered during prosecution of the ’047 patent.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of Patent 10,468,047 as unpatentable.