Samsung Electronics America Inc v. One E Way Inc

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 discloses a wireless digital audio system for transmitting high-quality audio from a portable source, like a music player, to a receiver, such as headphones. The system uses spread spectrum communication with a unique user code to ensure a private connection, and it employs specific modulation and encoding techniques to reduce interference.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are obvious over the ’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 stems from the ’627 patent’s own priority chain, discloses every limitation of the challenged claims. The reference teaches a wireless digital audio system for transmitting a signal from an audio player to headphones, capable of mobile operation. It discloses using a unique user code (a "unique codeword") for a specific user, processing a high-quality audio signal (20 Hz to 20 kHz), and using a direct conversion receiver. The ’196-Publication also explicitly teaches using an encoder to reduce intersymbol interference (ISI) and discloses both a non-DPSK ("64-Ary modulator") and a DPSK ("differential phase shift key") modulator, with the receiver configured for corresponding demodulation.
  • Key Aspects: This ground asserted that a single prior art reference, which is the published version of the patent’s own abandoned parent application, renders all challenged claims obvious.

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 (a 1997 communications handbook), and Rappaport (a 1996 textbook on wireless communications).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Walley discloses a generic CDMA spread spectrum controller for wireless audio applications like cordless phones and transmitting music to headphones. However, Walley uses a system-based "dedicated code" rather than a user-specific one. Miyake was introduced to supply this missing element, as it teaches a spread spectrum system that assigns user-specific spreading codes to simplify user management. Gibson and Rappaport, as standard industry handbooks, were used to provide implementation details not explicit in Walley, such as using direct conversion receivers for low-cost portable devices, encoding techniques (e.g., precoding) to reduce ISI, and common modulation schemes like DPSK and M-ary QAM.
  • Motivation to Combine: A POSITA would combine Walley with Miyake to improve Walley's system by substituting a known user-specific coding scheme for Walley’s system-based one, allowing for user-customized performance (e.g., trading fidelity for range). A POSITA would have consulted well-known textbooks like Gibson and Rappaport to implement predictable, industry-standard solutions for components like direct conversion receivers, ISI reduction, and modulation, which Walley did not fully detail.
  • Expectation of Success: A POSITA would have reasonably expected success because the combination involved applying known techniques from Miyake, Gibson, and Rappaport to improve a similar system (Walley) in a predictable manner.

Ground 3: Claims 1-12 are obvious over Walley in view of Miyake, Gibson, Rappaport, and Drakoulis.

• Prior Art Relied Upon: Walley (Patent 6,744,808), Miyake (Patent 5,546,424), Gibson (a 1997 handbook), Rappaport (a 1996 textbook), and Drakoulis (Patent 6,256,303).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated all arguments from Ground 2 and added Drakoulis for the limited purpose of satisfying specific claim constructions for "transmitter" and "audio source" adopted from a co-pending district court case. Drakoulis explicitly teaches a transmitter base unit with a "stereo mini-input jack" designed to be coupled to conventional audio sources like a CD player, which are known to have analog headphone jacks. This directly maps onto the construction of a transmitter as "a device that can be connected into an analog headphone jack."
  • Motivation to Combine: The motivation was to add a conventional and advantageous feature—direct connection to a standard headphone jack—to Walley's wireless transmitter. A POSITA would find it a simple and predictable substitution to modify Walley's transmitter with Drakoulis's input jack to enhance its compatibility with common, non-wireless audio sources.
  • Expectation of Success: Success was expected as adding a standard audio input jack to a transmitter is a routine and conventional modification in the art.

4. Key Claim Construction Positions

• "transmitter": "a device that can be connected into an analog headphone jack to wirelessly transmit an audio signal"
• "audio source": "a device for providing audio that has an analog headphone jack"
• "direct conversion module": "module for converting radio frequency to baseband or very near baseband in a single frequency conversion without an intermediate frequency"
• "reduce[d] intersymbol interference": "coding that reduces intersymbol (inter-symbol) interference"
• Petitioner argued that these constructions were adopted by the district court in a related case and should apply in the IPR. The constructions for "transmitter" and "audio source" were particularly relevant to the inclusion of Drakoulis in Ground 3.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Priority Date: A central contention of the petition was that the ’627 patent is not entitled to its claimed priority date of December 21, 2001. Petitioner argued that the priority chain was broken in 2003 when the applicant filed a continuation-in-part (the 2003 application) that was directed to a different invention ("Fuzzy Audio Wireless Music System") and failed to incorporate by reference or otherwise provide written description support for key claim limitations like "direct conversion module," "DPSK," and reducing "intersymbol interference." Because this broke the chain of co-pendency, Petitioner argued the earliest possible priority date is July 12, 2008. This later priority date makes the ’196-Publication, published in June 2003, available as prior art under §102(b).

6. Relief Requested

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