PTAB

IPR2022-00242

Samsung Electronics Co Ltd v. Staton Techiya LLC

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1. Case Identification

2. Patent Overview

  • Title: Always-On Recording System Earpiece
  • Brief Description: The ’839 patent discloses an "Always-On Recording System" (AORS) housed in an earpiece. The system uses an ambient sound microphone and an ear canal microphone to continuously record audio to a circular buffer, with a record-activation system to permanently save the buffered content upon manual or automatic triggering.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Le and Victorian - Claims 1, 6, 22, and 23 are obvious over Le in view of Victorian.

  • Prior Art Relied Upon: Le (Application # 2003/0161097) and Victorian (European Patent Application EP1519625A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Le and Victorian teaches all limitations of independent claim 1. Le discloses a wearable computer system with a "continuously scrolling audio buffer" that records ambient sound and, upon a user's voice command, saves the buffered audio content to a more permanent memory. Victorian discloses a discreet, in-the-canal earpiece that forms an acoustic seal and includes both an "external microphone" (for ambient sound) and an "ear canal microphone" (for the user's speech), which communicate wirelessly with a remote device. The combination provides an always-on recording system with the dual-microphone earpiece, circular buffer, and record-activation system recited in claim 1.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to improve Le’s system. Le expressed a desire for a discreet, unobtrusive system, and Victorian's compact, wireless, dual-microphone earpiece was a known and suitable component to replace Le’s wired earpiece and separate microphone. This substitution would predictably achieve Le’s stated objective of a more natural and less obtrusive wearable system.
    • Expectation of Success: The combination involved replacing one known type of earpiece with another to improve its aesthetic and functional characteristics, a straightforward substitution that a POSITA would expect to succeed.

Ground 1B: Obviousness over Le, Victorian, and Yuen - Claim 5 is obvious over Le in view of Victorian and in further view of Yuen.

  • Prior Art Relied Upon: Le, Victorian, and Yuen (Patent 5,903,868).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground adds Yuen to the base combination of Le and Victorian to teach the limitation of claim 5: a signal processing system configured to encode output signals from the circular buffer to reduce the data rate. Yuen discloses an audio recording device that uses a "compressor" with a "commercially available compression algorithm" to reduce the number of bits in a digital signal before storing it in a memory queue.
    • Motivation to Combine: A POSITA building the audio recording system of Le and Victorian would have been motivated to incorporate Yuen's compression teachings for the well-understood purpose of maximizing storage capacity. Data compression was a common and known technique to improve audio recording systems, making its application to the combined Le/Victorian system an obvious design choice to achieve more efficient memory usage.

Ground 1D: Obviousness over Le, Victorian, and Sjursen - Claims 8-10 are obvious over Le in view of Victorian and in further view of Sjursen.

  • Prior Art Relied Upon: Le, Victorian, and Sjursen (Patent 7,756,285).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground adds Sjursen to the base combination to teach the "diaphragm to cover the ASM" as recited in claim 8. Sjursen discloses a hearing aid with a "face plate" containing openings that lead into a "tuned resonant cavity" in front of the microphone. Petitioner asserted that this face plate structure is analogous to the claimed "diaphragm," as it covers the microphone and acts as a passive acoustical filter.
    • Motivation to Combine: Victorian's design goals included improving signal-to-noise ratio and battery life. A POSITA would combine Sjursen's teachings to improve the acoustic performance of Victorian's external microphone. Sjursen's passive acoustical filter would improve sound quality and reduce power consumption by obviating the need for more complex active electronic filtering, directly advancing Victorian's stated objectives.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the Le and Victorian combination in further view of:

    • Kvaløy (Patent 6,728,385) for a pressure equalization tube (claim 7).
    • Langhart (Application # 2002/0118798) for a recording status alert system (claims 11-12).
    • Kurki (Patent 9,123,343) for a remote audio forensics analysis system (claims 14-17).
    • Stuckman (Application # 2004/0109668) for a low-memory warning system (claim 21).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and the Fintiv factors would be inappropriate. The petition was filed less than 40 days after the patent owner's complaint, and the parallel district court litigation was in its earliest stages with no trial date set and minimal investment by the court or parties.
  • Petitioner further argued that denial under 35 U.S.C. §325(d) was unwarranted because the prior art references and combinations presented in the petition were not previously considered by the USPTO during prosecution of the ’839 patent.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 5-12, 14-17, and 21-23 of the ’839 patent as unpatentable.