Apple Inc v. One E Way Inc

1. Case Identification

• Case #: IPR2021-00287
• Patent #: 10,129,627
• Filed: December 4, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): One-E-Way, Inc.
• Challenged Claims: 5-6, 12

2. Patent Overview

• Title: Wireless Digital Audio Music System
• Brief Description: The ’627 patent discloses a wireless digital audio system featuring a spread spectrum transmitter designed to be operatively coupled to a portable audio player. The system aims to provide high-quality audio by using techniques like code division multiple access (CDMA) and specific modulation schemes.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 5-6 over Ham, Sklar, Xia, Groe, Dirschedl, and Matero

• Prior Art Relied Upon: Ham (KR Application # 20-1998-0018161), Sklar (a 1988 textbook), Xia (a 1997 IEEE article), Groe (a 2000 textbook), Dirschedl (Patent 6,262,994), and Matero (WO 00/76109).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ham, a Korean application, discloses the foundational system: a wireless headphone system using CDMA to transmit high-quality audio from a portable player, such as a CD player. Ham’s system was argued to be a portable, spread spectrum transmitter that uses a unique Pseudo Random (PN) code, satisfying the preamble of claim 5. Sklar and Groe, as foundational textbooks, were cited to provide well-known implementation details for CDMA systems, confirming that Ham's PN code would be transmitted with the audio signal. For claim 5(a), Petitioner asserted it would have been obvious to incorporate precoding techniques taught by Xia to reduce intersymbol interference (ISI), a known problem in wireless systems. For claims 5(b)(i) and 5(b)(ii), Petitioner contended that Dirschedl and Matero teach adaptive modulation, where a transmitter can select from a plurality of modulation types—including both DPSK (taught by Ham) and non-DPSK modes—to optimize transmission quality based on channel conditions.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine these references to improve the performance of Ham's base system. A POSITA would consult textbooks like Sklar and Groe for standard implementation details, apply Xia's specific solution to the known problem of ISI, and incorporate the adaptive modulation taught by Dirschedl and Matero to enhance robustness and efficiency, a common goal in wireless system design.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because the combination involved applying known solutions (e.g., ISI reduction, adaptive modulation) to their known problems within a conventional wireless audio system architecture.

Ground 2: Obviousness of Claim 12 over the Ground 1 Combination in view of Walrand

• Prior Art Relied Upon: Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Walrand (a 2000 textbook).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Walrand to the core combination to address the limitations of dependent claim 12, which requires the transmitter to operate in the 2.4 GHz Industrial, Scientific, and Medical (ISM) band. Petitioner argued that Walrand explicitly teaches that nearly all wireless LANs in the U.S. use an ISM frequency band, including the 2.4 GHz band, because it is license-free and available worldwide.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to configure the system from Ground 1 to operate in the 2.4 GHz ISM band to take advantage of its license-free status and global availability, thereby reducing cost and expanding the marketability of the wireless headphone product.
  • Expectation of Success (for §103 grounds): Implementing a known wireless system in a standard, widely used frequency band like the 2.4 GHz ISM band was a routine design choice with a high expectation of success.

Ground 3: Obviousness of Claims 5-6, 12 over the Ground 1 Combination in view of Haartsen

• Prior Art Relied Upon: Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen (a 2000 IEEE article on Bluetooth).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative based on a potential broad construction of "unique user code" by the Patent Owner to cover Bluetooth systems. Petitioner argued that if the term is construed broadly, then Haartsen, which describes an early Bluetooth system, would render the claims obvious. Haartsen teaches a frequency-hopping (FH-CDMA) system where the hopping sequence and channel access code are derived from the device address (identity) of the master transmitter. This device-identity-based code would satisfy a broad interpretation of "unique user code." Haartsen also explicitly discloses that Bluetooth operates in the 2.4 GHz ISM band, thus meeting the limitation of claim 12.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to incorporate Haartsen's Bluetooth protocol into Ham's wireless headset because Bluetooth was an emerging industry standard for short-range wireless communication that eliminates wires, is designed for low-power portable devices, and provides a robust method for avoiding interference in the crowded 2.4 GHz band.
  • Expectation of Success (for §103 grounds): Adapting an industry standard like Bluetooth to a wireless headset application was a predictable and logical design choice with a clear path to successful implementation.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claim 12 based on the combination of all prior art references from Grounds 1, 2, and 3 (Ham, Sklar, Xia, Groe, Dirschedl, Matero, Walrand, and Haartsen), relying on the same rationales provided for the other grounds.

4. Key Claim Construction Positions

• Petitioner requested the Board adopt claim constructions from a prior ITC investigation involving a related patent, as the Patent Owner had not previously disputed them. Key proposed constructions include:
  • "reduced intersymbol interference coding": "coding that reduces intersymbol (inter-symbol) interference"
  • "configured for independent CDMA communication operation": "configured for code division multiple access (CDMA) communication operation performed independent of any central control"
  • "unique user code": "fixed code (bit sequence) specifically associated with one user of a device(s)"

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors, stating that the petition was filed promptly (within three months of receiving infringement contentions) and well before the one-year bar. It was noted that the co-pending district court litigation was in its earliest stages, with no substantive rulings issued or trial date set.
• Petitioner argued against denial under §325(d), contending that the relied-upon prior art references, particularly the primary reference Ham, were not substantively considered during prosecution of the ’627 patent or its parent applications, nor did they form the basis of grounds in prior, uncompleted IPRs on related patents.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 5-6 and 12 of the ’627 patent as unpatentable.