Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: June 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`Petitioner,
`v.
`ONE-E-WAY, INC.,
`Patent Owner.
`
`IPR2021-00287
`Patent 10,129,627 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: June 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`Petitioner,
`v.
`ONE-E-WAY, INC.,
`Patent Owner.
`
`IPR2021-00287
`Patent 10,129,627 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 5–6 and 12 (the “challenged claims”) of U.S. Patent
`No. 10,192,627 B2 (Ex. 1001, “the ’627 patent”). Paper 3 (“Pet.”). One-E-
`Way, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under
`section 313 shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The
`Board institutes the trial on behalf of the Director.”). The reasonable
`likelihood standard is “a higher standard than mere notice pleading,” but
`“lower than the ‘preponderance’ standard to prevail in a final written
`decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039,
`Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`For the reasons provided below and based on the record before us, we
`determine Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we do not institute an inter partes review.
`
`B. Real Parties in Interest
`Petitioner states that “Apple Inc. . . . and its wholly-owned subsidiary
`Beats Electronics, LLC [(“Beats”)] . . . are the real parties-in-interest to this
`
`2
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`inter partes review.” Pet. 1. Patent Owner states “[t]he real party in interest
`is One-E-Way, Inc.” Paper 5 (Patent Owner’s Mandatory Notices), 1.
`
`C. Related Proceedings
`The parties identify the following district court case involving
`the ’627 patent: One-E-Way, Inc. v. Apple Inc., Case No. 2:20-cv-06339
`(C.D. Cal. Filed July 16, 2020). Pet. 1 (citing Ex. 1022; Ex. 1023); Paper 5,
`1.
`
`Petitioner also identifies a prior ITC investigation in which One-E-
`Way alleged infringement of related patents against a number of
`respondents: In re Certain Wireless Headsets, Investigation No. 337-TA-
`943 (the “ITC investigation”). Pet. 1–2. According to Petitioner, One-E-
`Way’s original complaint named Beats as one of the respondents, but One-
`E-Way subsequently moved to withdraw its allegations against Beats, and
`the ITC investigation was terminated as to Beats. Id. Petitioner further
`states that, during the course of the investigation, the ITC issued a claim
`construction ruling (the “ITC Claim Construction Order”). Id. at 2.
`Patent Owner additionally identifies four IPRs against patents related
`to the ’627 patent: IPR2021-00283, IPR2021-00284, IPR2021-00285, and
`IPR2021-00286. Paper 5, 1.
`
`D. The ’627 Patent (Ex. 1001)
`The ’627 patent relates to a wireless digital audio system including a
`portable audio source operatively coupled to a digital audio transmitter, and
`an audio receiver coupled to a headphone set. Ex. 1001, code (57). An
`embodiment of the system is shown in Figure 1, reproduced below:
`
`3
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`
`As shown in Figure 1, wireless digital audio music system 10 includes
`battery powered transmitter 20 connected to portable music player or music
`audio source 80. Ex. 1001, 2:40–43. Transmitter 20 is connected to music
`audio source 80 via analog headphone jack 82 using headphone plug 22. Id.
`at 2:43–46. Transmitter 20 has transmitting antenna 24 for transmitting a
`spread spectrum modulated signal to receiving antenna 52 of battery
`powered headphone receiver 50, which is coupled to headphones 55
`including headphone speakers 75. Id. at 2:46–53.
`The audio transmitter portion of the wireless digital audio system is
`shown in more detail in Figure 2, reproduced below:
`
`4
`
`
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`As shown in Figure 2, the audio transmitter digitizes the signal from
`audio source 80 using analog to digital converter (ADC) 32, and then
`processes the digitized signal using digital low pass filter 34 and encoder 36.
`Ex. 1001, 2:55–59. The signal is passed through channel encoder 38 to
`reduce the effects of channel noise, and then modulated for transmission by
`modulator 42. Id. at 2:59–62. Code generator 44 creates a “unique user
`code” that is “specifically associated with one wireless digital audio system
`user,” and “is the only code recognized by the battery powered headphone
`receiver 50 operated by a particular user.” Id. at 2:64–3:3. The signal is
`then passed to spread spectrum DPSK (differential phase shift key)
`transmitter 48, which provides further noise immunity, and to antenna 24 for
`transmission. Id. at 2:62–64.
`The audio receiver portion coupled to the wireless headphones is
`shown in more detail in Figure 3, reproduced below:
`
`As shown in Figure 3, antenna 52 receives the spread spectrum
`modulated signal from transmit antenna 24 (Figure 2) and communicates it
`to wideband bandpass filter 54. Ex. 1001, 3:9–11. 3:15–17. The output of
`bandpass filter 54 is summed with the output of receiver code generator 60,
`and communicated to direct conversion receiver 56. Id. at 3:11–14, 3:20–26.
`
`
`
`5
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`The ’627 patent explains that the “receiver code generator 60 may contain
`the same unique wireless transmission of a signal code word that was
`transmitted by audio transmitter 20 specific to a particular user,” and
`“[o]ther code words from wireless digital audio systems 10” as well as
`“other device transmitted wireless signals operating in the wireless digital
`audio spectrum of digital audio system 10” may “appear as noise to audio
`receiver 50.” Id. at 3:23–30. According to the ’627 patent, “[t]his code
`division multiple access (CDMA) may be used to provide each user
`independent audio enjoyment.” Id. at 3:30–32.
`Returning to Figure 3, the signal from direct conversion receiver 56 is
`processed by demodulator 62 to demodulate the signal elements modulated
`in audio transmitter 20, and passed to block de-interleaver 64 which decodes
`the bits of the digital signal encoded in the block interleaver 40 in Figure 2.
`Ex, 1001 at 3:32–38. Viterbi decoder 66 decodes the bits encoded by
`channel encoder 38 in audio transmitter 20 (Figure 2), and source decoder 68
`further decodes the coding applied by encoder 36. Id. at 3:38–41. Digital to
`analog converter (DAC) 70 converts the digital signal into an analog audio
`signal, and analog low pass filter 72 filters the analog audio signal to pass a
`signal in the frequency range of approximately 20 Hz to 20 KHz. Id.
`at 4:30–35. The signal is then passed to power amplifier 74, which powers
`headphone speakers to provide high quality, low distortion music to a user
`wearing headphones 55. Id. at 4:35–39.
`
`E. Illustrative Claims
`Of the challenged claims, claim 5 is independent. Claim 5 is
`illustrative and is reproduced below.
`5. [(pre)] A wireless digital coded audio spread spectrum
`transmitter operatively coupled to a portable audio player and
`
`6
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`configured to transmit a unique user code and a representation
`of an audio signal with a frequency range of 20 Hz to 20 [kH]z,
`wherein said digital coded audio spread spectrum transmitter is
`configured to wirelessly communicate with a digital audio
`spread spectrum receiver and is configured to be moved in any
`direction during operation, said wireless digital coded audio
`spread spectrum transmitter comprising:
`[(a)] an encoder operative to encode a first representation of
`an audio signal to reduce intersymbol interference
`associated with a transmitted representation of the audio
`signal, said encoder configured to process signals in the
`frequency range of 20 Hz to 20 kHz for representation in
`said first representation of an audio signal;
`[(b)(i)] wherein the wireless digital coded audio spread
`spectrum transmitter is further configured to perform at
`least one of a plurality of modulations on the first
`representation of the audio signal and
`[(b)(ii)] generate a modulated signal based on the
`performance of the plurality of modulations, wherein the
`plurality of modulations includes a differential phase shift
`keying (DPSK) modulation and a non-DPSK modulation;
`[(c)] wherein said plurality of modulations are separate from
`the encoding and processing by the encoder; and
`[(d)(i)] wherein the wireless digital coded audio spread
`spectrum transmitter is further configured to use the
`modulated signal and to use independent code division
`multiple access communication to wirelessly transmit a
`transmitted representation of the audio signal, and
`[(d)(ii)] wherein the transmitted unique user code
`distinguishes the transmitted representation of the audio
`signal from other transmitted audio signals in the spread
`spectrum transmitter spectrum, said other transmitted
`audio signals not originating from said wireless digital
`coded audio spread spectrum transmitter.
`Ex. 1001, 6:17–52 (bracketed paragraph identifiers added).
`
`7
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`F. Evidence of Record
`Petitioner relies upon the following references found in the record:
`Bernard Sklar, Digital Communications: Fundamentals
`and Applications (1988) (Ex. 1003, “Sklar”);
`Jean Walrand and Pravin Varaiya, High Performance
`Communication Networks (2d ed. 2000) (Ex. 1004, “Walrand”);
`Jaap C. Haartsen, “The Bluetooth Radio System,” IEEE
`Personal Communications, Vol. 7, Issue No. 1, Feb. 2000
`(Excerpt) (Ex. 1005, “Haartsen”);
`John B. Groe and Lawrence E. Larson, CDMA Mobile
`Radio Design (2000) (Ex. 1009, “Groe”);
`KR Application No. 20-1998-0018161, published
`Apr. 25, 2000 (as translated) (Ex. 1010, “Ham”);
`Xiang-Gen Xia, “New Precoding for Intersymbol
`Interference Cancellation Using Nonmaximally Decimated
`Multirate Filterbanks with Ideal FIR Equalizers,” IEEE
`Transactions on Signal Processing, Vol. 45, Issue No. 10
`(Oct. 1997) (Ex. 1011, “Xia”);
`Dirschedl et al., U.S. Patent No. 6,262,994 B1, issued
`Jul. 17, 2001 (Ex. 1037, “Dirschedl”);
`Matero et al., WO 00/76109 A1, pub. Dec. 14, 2000
`(Ex. 1038, “Matero”).
`Pet. iv–vii, 4.
`
`Petitioner submits the Declaration of Regis J. Bates, Jr. (“Mr. Bates,”
`Ex. 1002). Patent Owner submits the Declaration of Joseph C.
`McAlexander (“Mr. McAlexander,” Ex. 2001).
`
`8
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`G. Challenges to Patentability
`Petitioner challenges the patentability of claims 5–6 and 12 of
`the ’627 patent based on the following grounds:
`Claims Challenged
`35 U.S.C. §
`5–6
`1031
`
`Reference(s)/Basis
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, Walrand
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, Haartsen
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, Walrand,
`Haartsen
`
`12
`
`5–6, 12
`
`12
`
`
`
`103
`
`103
`
`103
`
`II. DISCUSSION
`
`A. Claim Construction
`A claim “shall be construed using the same claim construction
`standard that would be used to construe the claim in a civil action under 35
`U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Petitioner requests that the Board
`adopt the constructions of several claim terms from the ITC investigation.
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective
`as of March 16, 2013. The application for the ’627 patent was filed after
`March 16, 2013, but includes a priority claim to an application filed before
`this date. Ex. 1001, code (22), (63). Neither Petitioner nor Patent Owner
`takes a position on the effective filing date of the challenged claims. Pet. 8;
`Prelim. Resp. 7. For purposes of institution, we apply the pre-AIA versions
`of 35 U.S.C. § 103.
`
`9
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`Pet. 7. Pertinent to this Decision, Petitioner requests that the Board adopt
`the ITC’s construction of the two terms2 listed below:
`
`“unique user code”
`
`Claim Term
`“configured for independent
`CDMA communication
`operation”
`
`Reference(s)/Basis
`“configured for code division
`multiple access (CDMA)
`communication operation performed
`independent of any central control”
`“fixed code (bit sequence)
`specifically associated with one user
`of a device(s)”
`Pet. 7. Patent Owner states that, at this stage of the proceeding, it does not
`contest Petitioner’s proposed constructions of these claim terms. Prelim.
`Resp. 6.
`For purposes of this Decision, we adopt Petitioner’s proposed
`constructions. We, therefore, construe “configured for independent CDMA
`communication operation” to mean “configured for code division multiple
`access (CDMA) communication operation performed independent of any
`central control,” and “unique user code” to mean “fixed code (bit sequence)
`specifically associated with one user of a device(s).”
`Based on our review of the Petition and Preliminary Response, we do
`not believe that any other claim terms require express construction at this
`stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`
`
`2 Petitioner also requests that we adopt the ITC’s constructions of one
`additional claim term, “reduced intersymbol interference coding.” Pet. 7.
`We need not construe this claim term, however, to resolve the issues
`presented in the Petition.
`
`10
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, objective evidence
`of non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior
`art elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`
`3 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
`
`11
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of the alleged invention “would have possessed at least a bachelor’s degree
`in electrical engineering and two years’ experience in wireless
`communications systems design or implementation (or equivalent).” Pet. 6
`(citing Ex. 1002 ¶ 11). Patent Owner states that, for purposes of its
`Preliminary Response, it does not contest Petitioner’s proposed level of
`ordinary skill. Prelim. Resp. 7.
`At this stage of the proceeding, we adopt Petitioner’s assessment of
`the level of skill in the art, which is consistent with the ’627 patent and the
`asserted prior art of record.
`
`D. Ground 1: Alleged Obviousness of Claims 5–6 Over Ham, Sklar, Xia,
`Groe, Dirschedl, and Matero
`Petitioner contends that claims 5–6 would have been obvious in view
`of Ham, Sklar, Xia, Groe, Dirschedl, and Matero. Pet. 15–65. Patent Owner
`disagrees, arguing, inter alia, that the claimed combination does not teach
`“independent code division multiple access communication” as required by
`all of the challenged claims. Prelim. Resp. 26–40. For the reasons discussed
`below, we determine Petitioner has not established a reasonable likelihood
`that the claims challenged in this ground are unpatentable.
`
`1. Overview of Ham (Ex. 1110)
`Ham is a Korean patent application publication that is directed to “a
`wireless head phone transmission and reception circuit,” and, in particular,
`“relates to a code division type transmission circuit and wireless headphone
`
`12
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`reception circuit that transmit[s] and receive[s] signals using the Code
`Division Multiple Access (CDMA) method.” Ex. 1010, Abstract, 2. Ham
`explains that:
`[T]he code division multiple access method (hereinafter
`referred to as the code division method) is a method of sharing
`a frequency by extending a signal into a frequency band that is
`much wider than the bandwidth of the required amount of
`information. In other words, it shares a frequency and time and
`maintains orthogonality with a unique code assigned to it. In
`this case, in the code division method, a signal to be transmitted
`is extended by receiving a unique Pseudo Random (PN) code.
`Ex. 1010, 2.
`Ham discloses a transmission circuit for wirelessly transmitting a
`signal in Figure 1, reproduced below:
`
`
`As shown in Figure 1, the transmission circuit includes antenna A,
`codec unit 7 for encoding a signal applied from signal source 8, central
`control modem unit 6 for performing error correction on the signal output
`from codec unit 7, base band unit 5 that receives the output of central control
`modem unit 6, converts it into an intermediate frequency, and outputs the
`
`13
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`converted signal, and amplification, filtering, and gain control units 1a, 2a,
`1b, 2b, 3, and 4. Ex. 1010, 2.
`Ham discloses a wireless headphone receiving circuit in Figure 2,
`reproduced below:
`
`
`As shown in Figure 2, the receiving circuit includes antenna A for
`receiving the wireless signal, base band unit 5 for processing the gain
`controlled signal, central control modem 6 for removing an error correction
`and pseudorandom code, codec 7 for decoding the audio signal, and
`amplifier 1c that amplifies the signal from codec unit 7 and passes it to
`output unit 9. Ex. 1010, 2, 3.
`
`2. Overview of Sklar (Ex. 1003)
`Sklar is a textbook entitled “Digital Communications: Fundamentals
`and Applications,” and “presents the ideas and techniques fundamental to
`digital communications systems.” Ex. 1003, 2. Specifically, Sklar discusses
`“spread-spectrum” systems in which “the transmission bandwidth employed
`is much greater than the minimum bandwidth required to transmit the
`information.” Id. at 537. “Spreading,” Sklar explains, “is accomplished by
`means of a spreading signal, often called a code signal, which is
`independent of the data.” Id. At the receiver, “despreading” (recovering the
`
`14
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`original data) “is accomplished by the correlation of the received spread
`signal with a synchronized replica of the spreading signal used to spread the
`information.” Id.
`Sklar further explains that code-division multiple access (CDMA) is a
`technique that uses spread-spectrum methods for multiple access “in order to
`share a communications resource among numerous users in a coordinated
`manner.” Ex. 1003, 541–542. In CDMA, “each simultaneous user employs
`a unique spread-spectrum signaling code,” which “provides communication
`privacy between users with different spreading signals.” Id. at 542. Thus,
`“[a]n unauthorized user (a user not having access to a spreading signal)
`cannot easily monitor the communications of the authorized users.” Id.
`
`3. Analysis of Independent Claim 5
`Claim 5 recites a “wireless digital coded audio spread spectrum
`transmitter” that is configured “to use independent code division multiple
`access communication to wirelessly transmit a transmitted representation of
`the audio signal,” such that “the transmitted unique user code distinguishes
`the transmitted representation of the audio signal from other transmitted
`audio signals in the spread spectrum transmitter spectrum.” Ex. 1001, 6:42–
`52. As discussed above, Petitioner requests that we construe the phrase
`“configured to use independent code division multiple access
`communication” to mean “configured for code division multiple access
`(CDMA) communication operation performed independent of any central
`control,” and Patent Owner does not dispute this construction. Pet. 7;
`Prelim. Resp. 6; see § II.A, supra.
`Petitioner asserts that “Ham’s CDMA is ‘independent of any central
`control’ because Ham discloses and suggests a one-to-one correspondence
`
`15
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`between a transmission circuit and reception circuit.” Pet. 62 (citing
`Ex. 1010, 2–3, Figs. 1–2) (emphasis omitted); Ex. 1002 ¶¶ 359–364.
`Petitioner also asserts that “Ham nowhere suggests any control or
`coordination of communications between transmission and reception circuits
`by a centralized facility.” Id.
`Patent Owner responds that Petitioner’s “citations establish only that
`Ham’s transmission circuit transmits signals to the reception circuit using
`the CDMA method,” and “[n]othing in those citations mentions any
`supposed ‘one-to-one correspondence.’” Prelim. Resp. 27 (citing Ex. 1002
`¶ 360). Patent Owner also responds that Petitioner “ignores the evidence
`pointing to Ham’s use of centralized control, such as Ham’s express
`disclosure that its code division method ‘maintains orthogonality.’” Id.
`at 28–29 (citing Pet. 62; Ex. 1002 ¶ 360; Ex. 1010, 2). According to Patent
`Owner, “[o]ne of ordinary skill in the art would . . . understand that
`maintaining orthogonality is an indication of centralized control.” Id. at 30
`(citing Ex. 2001 ¶ 16).
`On this record, Petitioner does not show sufficiently that Ham teaches
`“independent code division multiple access communication” under the claim
`construction agreed to by the parties and adopted for purposes of this
`Decision. As discussed above, at this stage of the proceeding, the parties
`agree to the ITC’s construction of the phrase “configured to use independent
`code division multiple access communication” as “configured for code
`division multiple access (CDMA) communication operation performed
`independent of any central control.” Pet. 7; Prelim. Resp. 6. The ITC’s
`construction is consistent with the ’627 patent’s disclosure of a CDMA
`system that uses a code generator in the transmitter to create a unique
`
`16
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`spreading code, rather than receiving the spreading code from a central
`controller. Ex. 1001, 2:64–3:1 (disclosing that “[t]he battery powered
`transmitter 20 may contain a code generator 44 that may be used to create a
`unique user code” that “is specifically associated with one wireless digital
`audio system user”). Thus, the ’627 patent’s system performs “independent
`code division multiple access communication” by having the transmitter
`generate the CDMA spreading code, rather than by having it be assigned by
`a central system.
`Petitioner, though, does not show sufficiently that Ham teaches
`CDMA performed independent of any central control. Ham teaches a
`CDMA system that “shares all frequency and time and maintains
`orthogonality with a unique code assigned to it.” Ex. 1010, 2 (emphasis
`added). Patent Owner presents evidence that Ham’s teaching that its CDMA
`system “maintains orthogonality” indicates that it depends on a central
`controller to assign the spreading codes. Prelim. Resp. 30–31; Ex. 2001
`¶ 16. Specifically, Patent Owner’s declarant, Mr. McAlexander, explains
`that “in a wireless communications system in which multiple user devices
`communicate wirelessly in the same frequency and time, orthogonality can
`only be maintained by providing each user device with a spreading code
`known to be orthogonal to each spreading code being used by another user
`device.” Ex. 2001 ¶ 16. Mr. McAlexander further explains that “[i]n Ham’s
`system, this would require centralized control ensuring that all Ham’s
`assigned PN codes have a cross-correlation value of zero.” Id.
`Petitioner does not present contrary evidence showing that Ham’s
`orthogonal codes do not require assignment by a central controller. To the
`contrary, Petitioner’s own arguments in Ground 3 (which we address in
`
`17
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`detail below) support Mr. McAlexander’s testimony. Petitioner’s Ground 3
`relies on a proposed combination that includes Haartsen, which, according to
`Petitioner, teaches a CDMA system that does not require a central controller.
`Pet. 67–74; id. at 69 (“Haartsen describes the master’s device identity being
`transmitted as an access code.”); id. at 73 (“The transmitter need not . . . be
`assigned a unique PN code by a third party.”); Ex. 1002 ¶¶ 391, 402.
`Petitioner asserts that one of the reasons it would have been obvious to
`combine Ham and Haartsen is that Haartsen’s CDMA system “can benefit
`Ham” by “allow[ing] a transmitter to set up a frequency hopping connection
`with a receiver in the absence of any coordination by a third party, such as a
`central controller.” Pet. 73 (emphasis added); see Ex. 1102 ¶ 402. In other
`words, Petitioner argues that using Haartsen’s CDMA system would have
`benefitted Ham by eliminating Ham’s need for coordination by a central
`controller. Pet. 73–74; Ex. 1102 ¶ 402. This appears to be an
`acknowledgement by Petitioner that Ham’s CDMA system involves
`coordination by a central controller.
`As discussed above, for Ground 1, Petitioner relies solely on Ham as
`teaching “independent code division multiple access communication.”
`Pet. 61–62. But, for the foregoing reasons, the evidence of record at this
`stage of the proceeding indicates that Ham’s CDMA system depends on a
`central controller in order to assign codes in a manner that maintains
`orthogonality, and, thus, does not teach CDMA performed “independent of
`any central control,” as required by Petitioner’s proposed construction. As a
`result, Petitioner does not demonstrate a reasonable likelihood of prevailing
`in showing that claim 5 would have been obvious over Ham, Sklar, Xia,
`Groe, Dirschedl, and Matero.
`
`18
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`
`4. Analysis of Dependent Claim 6
`Claim 6 depends from claim 5. Petitioner’s arguments and evidence
`regarding claim 6 do not compensate for the deficiencies discussed above for
`claim 5. See Pet. 64–65. Thus, for the same reasons discussed above for
`claim 5, Petitioner does not demonstrate a reasonable likelihood of
`prevailing in showing that claim 6 would have been obvious over Ham,
`Sklar, Xia, Groe, Dirschedl, and Matero.
`
`E. Ground 2: Alleged Obviousness of Claim 12 Over Ham, Sklar, Xia,
`Groe, Dirschedl, Matero, and Walrand
`Petitioner contends claim 12 would have been obvious in view of
`Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Walrand. Pet. 65–67.
`Claim 12 depends from claim 5. Petitioner’s arguments and evidence
`regarding claim 12 do not compensate for the deficiencies discussed above
`for claim 5. See Pet. 65–67. Thus, for the same reasons discussed above for
`Ground 1, Petitioner does not demonstrate a reasonable likelihood of
`prevailing in showing that claim 12 would have been obvious in view of
`Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Walrand.
`
`F. Ground 3: Alleged Obviousness of Claims 5–6 and 12 Over Ham,
`Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen
`Petitioner contends claims 5–6 and 12 would have been obvious in
`view of Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen. Pet. 67–
`74. For the reasons discussed below, we determine Petitioner has not
`established a reasonable likelihood that the claims challenged in this ground
`are unpatentable.
`
`1. Overview of Haartsen (Ex. 1105)
`Haartsen is an article from IEEE Personal Communications entitled
`“The Bluetooth Radio System.” Ex. 1005, 28. Haartsen describes the
`
`19
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`“Bluetooth technology” as “a new universal radio interface” that “has been
`developed enabling electronic devices to communicate wirelessly via short-
`range ad hoc radio connections.” Id. Haartsen explains that Bluetooth uses
`frequency hopping CDMA (FH-CDMA) for its multiple access scheme. Id.
`at 29–30. The particular frequency hopping sequence is determined by the
`unit that controls the FH channel, which is called the “master,” and the
`master’s native clock also defines the phase in the hopping sequence. Id.
`at 30. The other participants in the communication are called “slaves,” and
`use the master identity to select the same hopping sequence and add time
`offsets to their respective native clocks to synchronize to the frequency
`hopping. Id.
`Haartsen explains that the Bluetooth system uses packet-based
`transmission in which each packet starts with an access code, followed by a
`packet header, and ending with the user payload. Ex. 1005, 31. The access
`code “has pseudo-random properties” and “includes the identity of the
`piconet master.” Id. All packets exchanged on the channel are identified by
`this master identity, and the packet will only be accepted by the recipient if
`the access code matches the access code corresponding to the piconet
`master. Id.
`
`2. Analysis of Independent Claim 5
`Ground 3 is based on and builds upon Petitioner’s alternative mapping
`in Ground 1 which uses Sklar’s frequency hopping CDMA (FH-CDMA) to
`teach the “unique user code” required by claim 5. Pet. 68. In Ground 1,
`Petitioner asserts that a key feature of Sklar’s FH-CDMA is that “[e]ach user
`employs a pseudonoise (PN) code, orthogonal (or nearly orthogonal) to all
`other user codes, that dictates the frequency hopping band assignments,”
`
`20
`
`
`
`IPR2021-00287
`Patent 10,192,627 B2
`
`and argues that this PN code is the “unique user code” recited in the claims.
`Id. at 30–31. In Ground 3, Petitioner relies on Haartsen’s Bluetooth
`implementation of FH-CDMA in lieu of Sklar’s FH-CDMA system. Id. at
`68. More specifically, Petitioner argues in Ground 3 that Haartsen teaches a
`“unique user code” determined from the device identity of a Bluetooth
`transmitter that is used to define the frequency hop sequence, rather than
`relying on Sklar’s orthogonal PN codes to teach the “unique user code” for
`defining the frequency hop sequence, as in Ground 1. Id. at 68–69.
`Petitioner explains that it is including Ground 3 because “Patent
`Owner’s Infringement Contentions appear to interpret a ‘unique user code’
`as met by Bluetooth’s use of a device address associated with the
`transmitter.” Pet. 67 (citing Ex. 1016, Ex. B at 2–3). According to
`Petitioner, Patent Owner “appears to apply an interpretation of ‘unique user
`code’ that would be met by (current) Bluetooth’s use of a device identity
`associated with the transmitter (‘master’), from which the hop pattern and
`channel access code are derived.” Id. at 67–68. Petitioner states that it
`disputes Patent Own
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
