PTAB

IPR2025-01540

Samsung Electronics America Inc v. One E Way Inc

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1. Case Identification

  • Case #: IPR2025-01540
  • Patent #: 10,129,627
  • Filed: September 16, 2025
  • Petitioner(s): Samsung Electronics Co., Ltd.
  • Patent Owner(s): One-E-Way, Inc.
  • Challenged Claims: 1-12

2. Patent Overview

  • Title: Wireless Digital Audio System
  • Brief Description: The ’627 patent describes a wireless digital audio system for transmitting high-quality audio from a portable source (e.g., music player) to a receiver (e.g., headphones) using spread spectrum communication. The system uses a unique user code to pair a specific transmitter and receiver.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are obvious over the ’196-Publication.

  • Prior Art Relied Upon: Woolfork (Application # 2003/0118196), referred to as the ’196-Publication.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’196-Publication, which is the published version of the ’627 patent’s own asserted parent application, disclosed every element of the challenged claims. The publication taught a wireless digital audio system for transmitting a signal from an audio player to a headphone receiver capable of mobile operation. It explicitly disclosed using a "unique codeword" for a specific user, transmitting audio in the 20 Hz to 20 kHz range, and employing a "direct conversion receiver 56" for down-converting the signal. The publication also taught encoding to reduce intersymbol interference (ISI) and using both a non-DPSK (“64-Ary modulator”) and DPSK (“differential phase shift key”) transmitter, with the receiver necessarily performing the corresponding demodulation to restore the original signal.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, this section is not applicable. Petitioner asserted a POSITA would find it obvious to implement the teachings of the ’196-Publication to arrive at the claimed invention.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as the reference provided a complete block-diagram-level description of a functional system.

Ground 2: Claims 1-12 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 ("The Communications Handbook," 1997), and Rappaport ("Wireless Communications: Principles & Practice," 1996).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended this combination supplied all limitations of the challenged claims. Walley disclosed a generic spread spectrum controller for wireless communications, including transmitting music to headphones, but did not specify user-specific codes or certain implementation details. Miyake was cited for its teaching of a spread spectrum system using spreading codes "specific to individual users" to satisfy the "unique user code" limitation. Gibson, a communications handbook, was used to supply standard implementation details missing from Walley, such as using a "direct conversion receiver" for low-cost portable devices and employing precoding techniques to reduce intersymbol interference. Rappaport, a textbook, supplied well-known modulation techniques, including Differential PSK (DPSK) and M-ary QAM (a non-DPSK modulation), which a POSITA would have used to implement the modulator in Walley’s system.
    • Motivation to Combine: A POSITA would combine Walley and Miyake to improve Walley’s system-based coding with Miyake’s user-specific codes, allowing for better user management and customized performance (e.g., trading fidelity for range). A POSITA would consult well-known handbooks like Gibson and textbooks like Rappaport to supply the missing, conventional implementation details (e.g., receiver architecture, encoding, modulation schemes) to build a complete and functional version of the system broadly described by Walley.
    • Expectation of Success: A POSITA would have reasonably expected success because the combination involved supplementing a base system (Walley) with known, compatible techniques (user-specific codes from Miyake) and standard, off-the-shelf components and methods (receiver design from Gibson, modulation from Rappaport) to achieve a predictable result.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) based on Walley in view of Miyake, Gibson, Rappaport, and Drakoulis (Patent 6,256,303). This ground relied on the same core combination as Ground 2, adding Drakoulis to explicitly teach a transmitter base unit with a "stereo mini-input jack" for connecting to conventional audio sources like a CD player, thereby satisfying the claim constructions for "transmitter" and "audio source" from a related district court case.

4. Key Claim Construction Positions

Petitioner argued that several terms should be construed consistent with rulings in a related district court case involving the ’627 patent. These constructions were central to mapping the prior art.

  • "direct conversion module": Construed as a "module for converting radio frequency to baseband or very near baseband in a single frequency conversion without an intermediate frequency." This was important for mapping references like the ’196-Publication and Gibson.
  • "unique user code": Construed as a "fixed code (bit sequence) specifically associated with one user of a device(s)." This construction was key to arguments relying on Miyake to supply this feature.
  • "reduce[d] intersymbol interference": Construed as "coding that reduces intersymbol (inter-symbol) interference." This allowed Petitioner to map references that taught general ISI-reduction coding, such as the ’196-Publication and Gibson.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention of the petition was that the ’627 patent was 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 disclose key claim limitations like "direct conversion receiver" and "DPSK." Because the 2003 CIP application allegedly lacked written description support for the challenged claims, the effective priority date of the claims is no earlier than July 12, 2008. This analysis rendered the ’196-Publication, which published in June 2003 from the 2001 application, valid prior art against the challenged claims.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-12 of Patent 10,129,627 as unpatentable.