Samsung Electronics Co Ltd v. One E Way Inc

1. Case Identification

• Case #: IPR2025-01516
• Patent #: 10,468,047
• Filed: September 8, 2025
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): One-E-Way, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Wireless Digital Audio System
• Brief Description: The ’047 patent relates to a wireless digital audio system comprising a portable audio source with a transmitter and a headphone receiver. The system uses spread spectrum communication, a unique user code, and processes signals to reduce intersymbol interference (ISI).

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Prior Art Reference - Claims 1-4, 6-13, and 15-19 are obvious over '196-Publication

• Prior Art Relied Upon: ’196-Publication (Application # 2003/0118196).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’196-Publication, which is the published version of the application to which the ’047 patent claims priority, discloses all limitations of the challenged claims. Specifically, it taught a portable spread spectrum audio system with a headphone receiver, a direct conversion module, and a unique user codeword to distinguish users. The reference also explicitly disclosed using an encoder to reduce ISI and a decoder to process the received signal for ISI reduction. It further taught a plurality of modulation techniques (64-Ary and DPSK) and demodulation by the receiver, with the ISI reduction processing (decoding) being separate from the demodulation step.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. The obviousness argument centers on the assertion that the ’196-Publication is prior art because the ’047 patent is not entitled to its claimed priority date (see Section 5 below).

Ground 2: Obviousness over '196-Publication and Rappaport - Claims 5, 14, and 20 are obvious over ’196-Publication in view of Rappaport

• Prior Art Relied Upon: ’196-Publication (Application # 2003/0118196) and Rappaport (a 1996 textbook on wireless communications).
• Core Argument for this Ground:
  • Prior Art Mapping: The ’196-Publication taught all elements of the base claims (1, 8, and 17), but did not explicitly disclose a power supply. Rappaport was cited for its teaching that portable wireless devices require a power supply, such as a battery.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Rappaport’s teaching of a battery with the portable audio system of the ’196-Publication because it was well-known that portable electronic devices require a power source to function. This modification would provide predictable results.
  • Expectation of Success: A POSITA would have a high expectation of success as adding a battery to a portable electronic device was a routine and necessary design choice.

Ground 3: Obviousness over Walley, Miyake, Gibson, and Rappaport - Claims 1-5, 8-14, and 17-20 are obvious over Walley in view of Miyake, Gibson, and Rappaport

• Prior Art Relied Upon: Walley (Patent 6,744,808), Miyake (Patent 5,546,424), Gibson (a 1997 communications handbook), and Rappaport (a 1996 textbook).

• Core Argument for this Ground:

  • Prior Art Mapping: Walley disclosed a base spread spectrum communication system for transmitting music to headphones but did not teach a "unique user code." Miyake was introduced to supply this limitation, teaching user-specific spreading codes to manage individual users. Gibson and Rappaport were used to supply implementation details not explicit in Walley. Gibson taught precoding to reduce ISI and the use of direct conversion receivers for low-power portable devices. Rappaport taught various modulation/demodulation techniques, including DPSK and non-DPSK (e.g., M-ary QAM), which could be implemented in Walley's modulator.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Walley with Miyake to improve Walley’s system by adding user-specific codes, a known technique for managing users and tailoring transmissions. A POSITA would have looked to well-known handbooks like Gibson and Rappaport to implement Walley's system, filling in predictable details like ISI reduction, direct conversion for portability, and standard modulation schemes.
  • Expectation of Success: Success was expected because the combination involved applying known techniques (user-specific codes, ISI precoding, direct conversion receivers) to improve a similar existing system (Walley) in predictable ways.

• Additional Grounds: Petitioner asserted additional obviousness challenges by adding Drakoulis (Patent 6,256,303) to the Ground 3 combination to teach the physical structure of headphones, including a connecting strap (Ground 4). Petitioner also re-asserted this combination under different claim constructions from a related litigation (Ground 5).

4. Key Claim Construction Positions

• "[reduce/reduction of] intersymbol interference coding": Petitioner adopted the construction from a related case: "coding that reduces intersymbol (inter-symbol) interference." This was used to map teachings of precoding onto the claim limitation.
• "independent" CDMA: Petitioner adopted the construction "performed independent of any central control." This was important for mapping references that describe peer-to-peer or non-centralized communication systems.
• "unique user code": Petitioner adopted the construction "fixed code (bit sequence) specifically associated with one user of a device(s)." This construction was used to argue that Miyake’s user-specific spreading codes met the claim limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Priority Date of the ’047 Patent: A central contention of the petition was that the ’047 patent is not entitled to its claimed priority date of December 21, 2001. Petitioner argued that the chain of priority was broken by a 2003 continuation-in-part (CIP) application that was directed to a different invention ("Fuzzy Audio Wireless Music System") and failed to incorporate by reference or otherwise disclose key limitations of the ’047 patent claims, such as "direct conversion module" and "differential phase shift keying." Petitioner argued that subsequent amendments to the 2003 application to add these features constituted new matter. Consequently, Petitioner contended the earliest possible priority date is July 12, 2008, which renders the ’196-Publication (published June 26, 2003) prior art to the challenged claims.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-20 of the ’047 patent as unpatentable.