Samsung Electronics Co Ltd v. One E Way Inc

1. Case Identification

• Case #: IPR2025-01541
• Patent #: 9,107,000
• Filed: September 17, 2025
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): One-E-Way, Inc.
• Challenged Claims: 1-5, 8-12

2. Patent Overview

• Title: Wireless Digital Audio System
• Brief Description: The ’000 patent relates to a wireless digital audio system for transmitting audio from a source to a mobile receiver, such as headphones. The system uses spread spectrum communication, such as Code Division Multiple Access (CDMA), where a unique user code is assigned to each user to allow for independent operation.

3. Grounds for Unpatentability

Ground 1: Obviousness over ‘196-Publication and Gibson - Claims 1-5 and 8-12 are obvious over the ‘196-Publication in view of Gibson.

• Prior Art Relied Upon: ‘196-Publication (Application # 2003/0118196) and Gibson ("The Communications Handbook," 1997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ‘196-Publication, which is the published version of the patent’s own asserted 2001 priority application, disclosed all elements of the challenged claims except for organizing the audio signal into "packets." The ‘196-Publication teaches a wireless digital audio system with a headphone receiver, unique user codes for independent CDMA operation, a direct conversion module for receiving the signal, and coding to reduce intersymbol interference. Petitioner contended that Gibson, a standard communications handbook, explicitly taught organizing data into packets and frames for transmission to allow for error checking and correction.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine the teachings of Gibson with the system in the ‘196-Publication to provide standard implementation details. As the ‘196-Publication did not specify how to organize its bit sequence for transmission, a POSA would have looked to a well-known handbook like Gibson to implement a conventional and advantageous method, such as packetization, for reliable data transfer.
  • Expectation of Success: A POSA would have had a high expectation of success because Gibson is a tutorial-style handbook intended to provide foundational knowledge, making the application of its teachings on packetization to the ‘196-Publication’s system a predictable and straightforward design choice.

Ground 2: Obviousness over Walley, Miyake, and Gibson - Claims 1-5 and 8-10 are obvious over Walley in view of Miyake and Gibson.

• Prior Art Relied Upon: Walley (Patent 6,744,808), Miyake (Patent 5,546,424), and Gibson ("The Communications Handbook," 1997).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Walley taught generic CDMA spread spectrum controllers for wireless audio transmission to headphones but did not explicitly disclose a unique user code specific to each individual. Miyake allegedly supplied this missing element by teaching a spread spectrum system that assigns user-specific spreading codes to simplify user management. Petitioner further asserted that while Walley taught the core system, it lacked certain implementation details, which Gibson provided. Gibson taught the use of packets for data transmission, direct conversion receivers for low-power applications like headphones, and precoding techniques to reduce intersymbol interference.
  • Motivation to Combine: A POSA would combine Walley and Miyake to improve Walley’s system by providing user-specific codes, allowing for tailored transmissions based on user preferences (e.g., trading audio fidelity for increased range). A POSA would have been further motivated to incorporate the teachings from the Gibson handbook to implement the Walley system with well-known, efficient components and techniques, such as using a direct conversion receiver for a portable device and packetizing the data for robust transmission.
  • Expectation of Success: Success was predictable because combining Miyake’s user-specific codes with Walley’s system was a simple substitution of one known element for another. Likewise, incorporating standard techniques from a handbook like Gibson to complete the system design involved applying known solutions to known problems.

• Additional Grounds: Petitioner asserted additional obviousness challenges. Ground 3 added Rappaport ("Wireless Communications," 1996) to the Ground 2 combination to explicitly teach using Differential Phase Shift Keying (DPSK) modulation for claims 11-12. Ground 4 added Drakoulis (Patent 6,256,303) to the Ground 3 combination to teach a transmitter with an analog headphone jack for connecting to an audio source.

4. Key Claim Construction Positions

Petitioner argued that claim terms should be construed consistently with those adopted in a related district court case involving the same patent family (One-E-Way, Inc. v. Apple Inc.). Key proposed constructions included:

• "unique user code": "a fixed code (bit sequence) specifically associated with one user of a device(s)." This construction was central to mapping prior art like Miyake, which teaches user-specific codes.
• "direct conversion module": "a module for converting radio frequency to baseband or very near baseband in a single frequency conversion without an intermediate frequency." This supported using Gibson to modify Walley’s receiver.
• "reduced intersymbol interference coding": "coding that reduces intersymbol (inter-symbol) interference." This general construction allowed Petitioner to argue that standard techniques disclosed in the prior art met the limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention of the petition was that the ’000 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 incorporate the 2001 application's disclosure by reference. Petitioner asserted that subsequent amendments to the 2003 application to add back the original subject matter constituted improper new matter. As a result, Petitioner argued the earliest effective filing date for the challenged claims is July 12, 2008, which makes the ‘196-Publication (published June 26, 2003) available as prior art against the patent.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-5 and 8-12 of Patent 9,107,000 as unpatentable.