Samsung Electronics Co Ltd v. Staton Techiya LLC

1. Case Identification

• Case #: IPR2022-00324
• Patent #: 8,254,591
• Filed: December 20, 2021
• Petitioner(s): Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Staton Techiya, LLC
• Challenged Claims: 1-7, 9, and 11-16

2. Patent Overview

• Title: Detection and Recording of Acoustic Events
• Brief Description: The ’591 patent relates to an earpiece system for detecting and recording acoustic events. The system uses an Ambient Sound Microphone (ASM) to capture external sounds and an Ear Canal Microphone (ECM) to capture internal sounds, continually recording a history of these sounds and saving a recent portion to memory in response to a triggering event.

3. Grounds for Unpatentability

Ground 1: Obviousness over Le and Kvaløy

• Claims Challenged: 1, 2, 6, 7, 9, and 14-16 are obvious over Le in view of Kvaløy.
• Prior Art Relied Upon: Le (Application # 2003/0161097) and Kvaløy (Patent 6,728,385).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Le teaches a wearable computer system with a "continuously scrolling audio buffer" that records ambient audio and saves a portion for later retrieval in response to a trigger, such as a voice command. Kvaløy teaches a wireless in-ear terminal with an outer microphone (M1) to "pick up the ambient sound" and an inner microphone (M2) to "pick up the sound in the meatus," suitable for use in a binaural (two-earpiece) configuration. The combination of Le's event-based recording logic with Kvaløy's dual-microphone earpiece structure allegedly discloses the key limitations of independent claim 1, including left and right earpieces, each with ambient and ear canal microphones.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Le and Kvaløy to improve Le’s system. Le’s goal was an unobtrusive system, and Kvaløy’s discreet, wireless in-ear terminal would be a natural replacement for Le's more cumbersome wired earpiece and belt-worn microphone. Kvaløy’s ear canal microphone would also improve the quality of voice command recognition in noisy environments, another objective of Le.
  • Expectation of Success: The combination involved the predictable substitution of one known element (Le's earpiece) for another known element (Kvaløy's ear terminal) to yield the predictable result of a more discreet and functional event-recording system.

Ground 2: Obviousness over Le, Kvaløy, and Fiedler

• Claims Challenged: 4 and 5 are obvious over Le in view of Kvaløy and Fiedler.
• Prior Art Relied Upon: Le (Application # 2003/0161097), Kvaløy (Patent 6,728,385), and Fiedler (Patent 6,804,638).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claims 4 and 5, which require a memory comprising a data buffer and a storage memory to save a recent portion in a "compressed data format." While the Le/Kvaløy combination provides the base system with a data buffer, Fiedler was cited for its teaching of "event-activated recording." Fiedler explicitly discloses using "compression algorithms...on captured data in permanent storage, in order to maximize both the capture interval and the total recording time capacity of the device."
  • Motivation to Combine: A POSITA would incorporate Fiedler's compression teachings into the Le/Kvaløy system for the well-understood and predictable benefit of maximizing storage capacity. This amounted to applying a known technique (data compression) to improve a similar device (an audio recording system) to reduce data rate and increase recording time.

Ground 3: Obviousness over Le, Kvaløy, and Johnson

• Claims Challenged: 3 and 11-13 are obvious over Le in view of Kvaløy and Johnson.

• Prior Art Relied Upon: Le (Application # 2003/0161097), Kvaløy (Patent 6,728,385), and Johnson (Patent 6,163,338).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses claims requiring the recording event to be triggered by an "abrupt movement of the headset" (claim 3) or a "detected sound signature" (claim 11). Johnson teaches a system for capturing unpredictable events that records audio from a circular buffer when triggered by an event "itself." Johnson provides an example of using an accelerometer (a motion sensor) to detect a car collision and trigger the recording of audio from immediately before and after the event. Johnson also teaches triggering recording in response to sound signatures like a "gunshot" or "sudden comment."
  • Motivation to Combine: A POSITA would combine Johnson's teachings with the Le/Kvaløy system to add functionality for situations where a user could not issue a voice command, such as during an accident or emergency. This would improve the system's utility by allowing for automatic recording based on physical events (abrupt motion) or external acoustic events (sound signatures).
  • Expectation of Success: The combination was predictable, as implementing accelerometers in headsets was known, and it involved applying a known technique (motion-based triggering) to a known device ready for improvement.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Rast for its specific teachings on sound signature detection techniques to further support invalidity of claims 11-13, and combining Mayer for its teachings on retroactively recording telephone conversations in combination with ambient sounds for claims 14-16.

4. Key Claim Construction Positions

• Petitioner argued that the preambles of the independent claims (e.g., "A headset," "An earpiece") are not limiting. This position was based on the arguments that:
  • The body of the independent claims does not rely on the preamble for antecedent basis.
  • The specification states that the invention can be implemented in various form factors beyond a traditional headset or earpiece, indicating the form factor is not essential.
  • The examiner did not afford the preambles patentable weight during the original prosecution.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation was in its earliest stages. Key factors weighing in favor of institution included that the IPR was filed within 45 days of the infringement suit, no trial date had been set, and there had been minimal investment by the court and parties in the litigation.
• §325(d) (Same or Similar Art): Petitioner contended that denial under §325(d) would be improper because the primary prior art references asserted in the petition (Le, Kvaløy, Johnson, etc.) were not considered by the examiner during prosecution. Petitioner argued that even if the Patent Owner asserts Kvaløy is cumulative of Svean (a reference of record), the petition presents Kvaløy in a new light by combining it with Le, which provides the "responsive to an event" functionality that the applicant successfully argued was missing from Svean alone.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-7, 9, and 11-16 of the ’591 patent as unpatentable under 35 U.S.C. §103.