Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION,
`Petitioner,
`
`Vv.
`
`ONE-E-WAY,INC.,
`Patent Owner.
`
`Case IPR2016-01638
`Patent 9,282,396 B2
`
`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK,and
`JOHN F. HORVATH,Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 12
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION,
`Petitioner,
`
`Vv.
`
`ONE-E-WAY,INC.,
`Patent Owner.
`
`Case IPR2016-01638
`Patent 9,282,396 B2
`
`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK,and
`JOHN F. HORVATH,Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`I.
`
`INTRODUCTION
`
`Sony Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”’)
`
`requesting an inter partes review of claims 1-17 of U.S. Patent No.
`
`9,282,396 B2 (Ex. 1001, “the ’396 patent”). One-E-Way,Inc. (“Patent
`
`Owner”) filed a Preliminary Response (Paper8, “Prelim. Resp.”) to the
`
`Petition.! Pursuant to our authorization (Paper 10, 2-3), Petitioner filed a
`
`Reply (Paper 11, “Reply’’) to the Preliminary Response. An inter partes
`
`review may notbeinstituted “unless .
`
`.
`
`. 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(a).
`
`For the reasons set forth below, Petitioner demonstrates a reasonable
`
`likelihood of prevailing in showing the unpatentability of claims 1—17 of the
`
`°396 patent. Accordingly, we institute an inter partes review as to claims 1—
`
`17 of the ’396 patent on the grounds specified below.
`
`A.
`
`Related Proceedings
`
`The parties indicate that a decision in this case may affect or be
`
`affected by the following investigation before the U.S. International Trade
`
`Commission (“ITC”): In re Certain Wireless Headsets, No. 337-TA-943
`
`(ITC). Pet. 1; Paper 6, 2. The parties also indicate that the ’396 patent is the
`
`subject of anotherpetition for inter partes review in IPR2016-01639. Pet. 1;
`
`Paper6, 2.
`
`' Patent Ownerfiled two copies of the Preliminary Response. Papers8, 9.
`Patent Owner, therefore, shall submit a request to Trials@uspto.gov within
`one weekofthis decision requesting that one of the copies of the
`Preliminary Response be expunged from the recordin this case.
`
`2
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`B.
`
`The ’396 Patent
`
`The °396 patentrelates to wirelessly transmitting signals from an
`
`audio player to a set of headphones. Ex. 1001, col. 1, Il. 26-33.
`
`Specifically, the 396 patent describes a battery powered transmitter with a
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`headphoneplug that can connect to a headphonejack on anysuitable audio
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`player. Jd. at col. 1, 1. 62—col. 2, ll. 2. The transmitter encodes and
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`modulates an audio signal and then transmits the signal. Jd. at col. 2, ll. 52-
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`60. The transmitter also transmits a unique user code, which“is the only
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`code recognized by the battery powered headphonereceiver.” Jd. at col. 2,
`
`ll. 6-9, col. 2, ll. 61-66. The headphone receiver demodulates and decodes
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`the signal received from the transmitter and then reproduces the audio signal
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`for the user. Jd. at col. 2, ll. 47-50.
`
`C.
`
`Illustrative Claim
`
`Claims 1, 2, 6, 9, 14, and 16 are independent. Claim 1 is reproduced
`
`below.
`
`1. A portable wireless digital audio system for digital
`transmission of an original audio signal representation from a
`portable audio source to a digital audio headphone,said audio
`signal representation representative of audio from said portable
`audio source, said portable wireless digital audio system
`comprising:
`
`a portable digital audio spread spectrum transmitter
`configured to couple to said portable audio source and
`transmitting a unique user code bit sequence with said original
`audio signal representation in packet format, said digital audio
`spread spectrum transmitter comprising:
`an encoderoperative to encode said original audio signal
`representation to reduce intersymbolinterference and lowering
`signal detection error of said audio signal representation
`respective to said digital audio headphoneandsaid digital audio
`spread spectrum transmitter; and
`
`3
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`a digital modulator configured for independent code
`division multiple access (CDMA) communication operation
`wherein said portable digital audio spread spectrum transmitter
`is in direct communication with said digital audio headphone,
`said digital audio headphone comprising:
`
`a direct conversion module configured to capture packets
`and the correct bit sequence embeddedin the received spread
`spectrum signal and lowering signal detection error through
`reduced intersymbolinterference coding respective of said
`digital audio headphoneandsaid portable digital audio spread
`spectrum transmitter, the captured packets correspondingto the
`unique user code bit sequence;
`
`a digital demodulator configured for independent CDMA
`communication operation;
`
`a decoder operative to decode the applied reduced
`intersymbolinterference coding ofsaid original audio signal
`representation;
`
`a digital-to-analog converter (DAC) generating an audio
`output of said original audio signal representation; and
`
`a module adapted to reproducesaid audio output,
`wherein each user has their headphone configured to
`communicate with their own separate digital audio spread
`spectrum transmitter, said audio having been wirelessly
`transmitted from said portable audio source throughthe digital
`audio spread spectrum transmitter configured to communicate
`with the headphonesuchthat signals not originating from said
`portable digital audio spread spectrum transmitter are inaudible
`while operating in the portable wireless digital audio spread
`spectrum transmitter spectrum.
`
`Ex. 1001, col. 4, 1. 57-col. 5, 1. 37.
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`D.
`
`Evidence ofRecord
`
`Petitioner relies on the following reference and declaration (Pet.2):
`
`
`
`
`Exhibit No.
`Reference or Declaration
`Woolfork, U.S. Patent Application Pub. No. 2003/0118196|Ex. 1004
`Al
`(published June 26, 2003)
`(“the °196 publication”
`
`
`Declaration of John Moring (“Moring Declaration”
`
`E.
`Asserted Ground of Unpatentability
`
`Ex. 1012
`
`
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following ground (Pet. 2):
`Claims Challenged_|Basis———s([Reference
`
`35 U.S.C. § 103(a
`The ’196 publication
`
`Il.
`
`ANALYSIS
`
`A.—Claim Construction
`
`The claims of an unexpired patent are interpreted using the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 214445 (2016). Petitioner proposes construing several
`
`claim terms in the ’396 patent that were construed in the related ITC
`
`investigation, and Patent Owner doesnot dispute Petitioner’s proposed
`
`constructions. Pet. 8; Prelim. Resp. 3. However, on this record and for
`
`purposes of this decision, we determine that no claim terms require express
`
`construction to resolve the parties’ disputes regarding the asserted ground of
`
`unpatentability. See infra Sections I.B, I.C; Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need
`
`be construed that are in controversy, and only to the extent necessary to
`
`resolve the controversy.”’).
`
`
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`IPR2016-01638
`Patent 9,282,396 B2
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`B.
`
`Priority Date ofthe ’396 Patent
`
`The °396 patent claimspriority to several earlier-filed U.S. patent
`
`applications. Pet. S—6; Prelim. Resp. 2-3; Ex. 1001. Theearliest such
`
`applications are U.S. Patent Application No. 10/027,391 (Ex. 1003, “the
`
`"391 application”), which wasfiled on December21, 2001, and U.S. Patent
`
`Application No. 10/648,012 (Ex. 1005, “the ’012 application’), which was
`
`filed on August 26, 2003. Pet. 56, 11, 13; Prelim. Resp. 2-3; Ex. 1001.
`
`The figure on page 6 of the Petition, which showsthe chain ofrelated
`
`applications, is reproduced below.
`
`Filed on February 25, 2013.
`
`Original Parent Application—ahandoned
`U.S. Patent Application No. 10/027,391
`Filed: Dee. 21,2001
`Published on June 26, 2003 as Pub. No. 2003/0118196
`
`US. Patent No. 7,412,294
`Issued from U.S. Application No. 10/6480 12,,
`Filed on August 26, 2003
`
`US. Patent No. 7,684,885
`Tssucd from U.S. Application No. 12/144,729,
`Filed on July 12,2008.
`
`US.Patent No. 7,865,258
`Issued from U.S. Application No, 12/5 70,343,
`Filed on September30, 2009
`
`U.S. Patent No. 8,131,391
`Issued from U.S. Application No. 12/40,747,
`Filed on November 5, 2010
`
`US. Patent No, 9,107,000
`Issued from U.S. Application No. 13/356,949,,
`Filed on January 24, 2012
`
`US, Patent No. 9,282,396
`Issued from U.S. Application No. 13/775,754,
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`Pet. 6. The figure on page 6 ofthe Petition showsthe chain ofrelated
`
`applications starting with the 391 application and ending with the
`
`application that issued as the ’396 patent. Jd. As indicatedin the figure
`
`reproduced above,the second application in the chain, the ’012 application,
`
`is a continuation-in-part (“CIP”) of the first application in the chain, the ’391
`
`application. Id.
`
`The ’391 application published as the 196 publication, whichis the
`
`reference Petitioner relies on in the asserted ground ofpatentability. Jd. at 2,
`
`6. Thus, Petitioner asserts the disclosure of the ancestor ’391 application
`
`against the claims of the descendent ’396 patent. To establish the ’196
`
`publication as prior art, Petitioner argues that the ’396 patent is not entitled
`
`to the benefit of the filing date of the ’012 application or the ’391
`
`application. Id. at 9-19. Specifically, Petitioner argues that the ’012
`
`application “broke the chain of disclosure in 2003.” Jd. at 9. For the reasons
`
`discussed below,on this record, Petitioner has shown sufficiently that the
`
`012 application failed to maintain continuity of disclosure with the ’391
`
`application, and, thus, the ’396 patentis not entitled to the benefit of the
`
`filing date of the ’012 application or the ’391 application.
`
`1,
`
`The Parties’ Arguments
`
`Petitioner argues that the 012 application,as filed, did not include the
`
`entire disclosure of the 391 application.
`
`/d. at 9, 14-15. For example,
`
`Petitioner contendsthat the °012 application,as filed, did not describe a
`
`direct conversion receiver, an encoder, differential phase shift keying
`
`(“DPSK”), or reducing intersymbolinterference. Jd. at 14-16 (citing
`
`Ex. 1005, 6-8; Ex. 1012 4 14-29, 30-48). Petitioner notes that certain
`
`features omitted from the ’012 application,as filed, are recited expressly in
`
`
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`IPR2016-01638
`Patent 9,282,396 B2
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`the challenged claimsof the ’396 patent. Pet. 15—16 (citing Ex. 1001; Ex.
`
`1012 Ff 14-29, 30-48).
`
`Petitioner acknowledgesthat, during prosecution of the ’012
`
`application, the applicant amendedthe specification of the ’012 application
`
`to incorporate by reference the entire disclosure of the ’391 application.
`
`Pet. 16-17 (citing Ex. 1005, 375). Petitioner argues, though,that this
`
`“incorporation by reference statement added nearly three yearsafterfiling of
`
`the [’012] application constitutes improper new matter andis, therefore,
`
`ineffective in establishing continuity of disclosure back to the 2001
`
`application.” Pet. 17 (citing Manual of Patent Examining Procedure
`
`(“MPEP”) § 201.06(c)(IV)).
`
`Patent Ownerdoes not dispute that the ’012 application,as filed, did
`
`not include the entire disclosure of the °391 application. Prelim. Resp. 4-6,
`
`11-14. Patent Owneralso does not dispute that features initially omitted
`
`from the ’012 application are recited expressly in the challenged claims of
`
`the °396 patent. Jd. Patent Ownerinstead argues that the amendmentto the
`
`°012 application incorporating by reference the entire disclosure of the ’391
`
`application did not add new matter, and,thus, is effective to maintain
`
`continuity of disclosure. Jd. Patent Ownercites to several decisions by the
`
`United States Court of Appeals for the Federal Circuit to support that
`
`argument. Jd. at 6—11.
`
`2.
`
`Continuity ofDisclosure
`
`In order for the ’396 patent to gain the benefit of the filing date of the
`
`012 application and the ’391 application, “each application in the chain
`
`leading back to the earlier application must comply with the written
`
`description requirement of 35 U.S.C. § 112.” Zenon Environmental, Inc. v.
`
`
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`IPR2016-01638
`Patent 9,282,396 B2
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`U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); accord Lockwood
`
`v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997). Compliance
`
`with the written description requirement is determinedasofthefiling date of
`
`the application. See Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d
`
`1336, 1355 (Fed. Cir. 2010) (en banc); Vas-Cath Inc. v. Mahurkar, 935 F.2d
`
`1555, 1563-64 (Fed. Cir. 1991). Here, there is no dispute that the ’012
`
`application, as filed, did not include certain features describedfirst in the
`
`°391 application and claimed later in the ’396 patent. Pet. 11—16; Prelim.
`
`Resp. 4-6, 11-14; Ex. 1003, 8-9; Ex. 1005, 6-8; Ex. 1012 J 30-48.2 There
`
`also is no dispute that the ’012 application, as filed, did not incorporate the
`
`"391 application by reference. Pet. 16—17; Prelim. Resp. 4—6, 11-14; Ex.
`
`1005, 375. Therefore, on this record, we agree with Petitioner that the 012
`
`application, as filed, failed to maintain continuity of disclosure with the 7391
`
`application.
`
`In addition, no new matter may be addedto the disclosure of an
`
`application after the filing date. See 35 U.S.C. § 132(a); Kolmes v. World
`
`Fibers Corp., 107 F.3d 1534, 1539 (Fed. Cir. 1997). As a result, an
`
`incorporation by reference statement addedafter an application’s filing date
`
`is not effective. See MPEP § 201.06(c)(IV); Application ofHenecka, 486
`
`F.2d 582, 584 (CCPA 1973) (“Wealso hold that the insertion of the
`
`reference to the U.S. application was new matter.”). Here, there is no
`
`dispute that the statement in the ’012 application incorporating by reference
`
`the disclosure of the ’391 application was added after the filing date of the
`
`’012 application. Pet. 16-17; Prelim. Resp. 4-6, 11-14; Ex. 1005, 375.
`
`Wecite to the exhibit page numbers added byPetitioner to Exhibit 1003
`and Exhibit 1005.
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2 _
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`Therefore, on this record, we agree with Petitioner that the incorporation by
`
`reference statement added to the ’012 application afterits filing date is
`
`improper new matter and cannotberelied on to show continuity of
`
`disclosure with the ’391 application. See Dart Indus., Inc. v. Banner, 636
`
`F.2d 684, 688 (D.C. Cir. 1980) (“Continuity was lost, however, when the
`
`parent wasfiled without that statement, and without any otherlegally
`
`adequate disclosure or incorporation of the venturi feature.”); id. (“Nothing
`
`in [35 U.S.C. §] 120itself operates to carry forward any disclosure from an
`earlier application.”).
`
`3.
`
`Decisions Cited by Patent Owner
`
`Patent Ownerargues that several decisions by the Federal Circuit
`
`indicate that material from a parent application may be added to a CIP
`
`application at any time prior to issuance or abandonmentof the CIP
`
`application. Prelim. Resp. 4. In particular, Patent Ownercites to Litton
`
`Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), Jn re
`
`Reiffin Family Trust, 340 F. App’x 651 (Fed. Cir. 2009), and Harariv.
`
`Hollmer, 602 F.3d 1348 (Fed. Cir. 2010). Prelim. Resp. 6-11. We are not
`
`persuaded, on this record, that the cited decisions support Patent Owner’s
`argument.
`
`In Litton, a patent applicant converted a continuation application into
`
`a CIP application during prosecution in order to add new material by
`
`amendment. 728 F.2d at 1435-36. The Federal Circuit held that the filing
`date ofthe new CIP application was the date on whichthelast elementof the
`
`CIP application, namely the inventors’ declaration, was filed. Jd. at 1438.
`
`The Federal Circuit noted that “[i]f matter added through amendmentto a C-
`
`I-P application is deemed inherent in whateverthe original patent
`
`10
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`IPR2016-01638
`Patent 9,282,396 B2
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`application discloses, however, that matter also is entitled to the filing date
`
`of the original, parent application.” Jd.
`
`In other words, Litton articulated the
`
`principle that material added on the filing date of a CIP application maystill
`
`be entitled to the earlier filing date of a parent application if that material
`
`wasinherent in the parent application. Id. Litton, however, did not hold that
`
`material from a parent application can be added to a CIP application at any
`
`time prior to issuance or abandonmentofthe CIP application.? Thus, we are
`
`not persuadedthat Litton supports Patent Owner’s argument. Also, we note
`
`that, here, Patent Ownerdoesnot argue that the material from the ’391
`
`application incorporated by reference into the ’012 application after filing
`
`wasinherent in the ’012 application as filed.
`
`In Reiffin, a patent applicant attempted to amendan issued patent
`
`during reexamination to include material from a parent application in order
`
`to maintain continuity of disclosure with the parent application. 340 F.
`
`App’x at 658. The Federal Circuit held that a break in continuity of
`
`disclosure cannotbe corrected during reexamination. Jd. at 660. The
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`Federal Circuit, in dicta, noted that “[i]n a continuation-in-part application,
`
`an applicant is free to add matter from earlier related applications in a chain
`
`of co-pending applications in order to reap the benefit of the full scope of the
`
`inventions disclosed in the applicant’s earlier disclosure.” Jd. at 659. We
`
`understand this statementto reflect the same principle articulated in Litton,
`
`namely that material from a parent application can be incorporatedinto a
`
`3Tn fact, Litton acknowledgedthat a preliminary amendmentin a CIP
`application is not considered part of the original disclosure. 728 F.2d at
`1437-38 (citing MPEP § 608.04(b)).
`
`11
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`
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`IPR2016-01638
`Patent 9,282,396 B2
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`CIP application on thefiling date of the CIP application.4 We do not
`
`interpret Reiffin as holding that material from a parent application can be
`
`added to a CIP application at any time prior to issuance or abandonmentof
`
`the CIP application. Thus, we are not persuadedthat Reiffin supports Patent
`
`Owner’s argument.
`
`In Harari, a patent applicantfiled an application that incorporated by
`
`reference another application filed the same day. 602 F.3d at 1350. The
`
`incorporation by reference statementidentified the title and inventors ofthe
`
`other concurrently-filed application, but did not include a serial number
`
`because the serial numberhad not been assigned yet. Jd. The applicant
`
`subsequently filed a preliminary amendmentthat revised the specification to
`
`include certain disclosures from the concurrently-filed application. Jd. The
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`Federal Circuit held that the incorporation by reference statement was
`
`sufficient at the time offiling because “thetitle of the application, named
`
`inventors, and the fact that the application wasfiled on the same day...
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`constituted all of the identifying information available to the drafter.” Jd. at
`
`1352. According to the Federal Circuit, because the incorporation by
`
`reference statement wassufficientat the time offiling, the subsequent
`
`preliminary amendmentdid not add new matter. Jd. In contrast, in this case,
`
`the ’012 application, as filed, did not include any statement incorporating by
`
`reference the °391 application. Pet. 16-17; Ex. 1005, 375. Thus, we are not
`
`persuaded that Harari supports Patent Owner’s argument.
`
`For the foregoing reasons, on this record, Petitioner has shown
`
`sufficiently that the ’012 application failed to maintain continuity of
`
`‘In addition, we note that Reiffin is a nonprecedential decision and the
`portions of Reiffin cited by Patent Ownerare dicta.
`
`12
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`IPR2016-01638
`Patent 9,282,396 B2
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`disclosure with the ’391 application, and, as a result, the ’396 patentis not
`
`entitled to the benefit of the filing date of the ’012 application or the ’391
`
`application. Therefore, on this record, Petitioner has shownsufficiently that
`
`the ’196 publication is prior art with respect to the challenged claims of the
`
`*396 patent.
`
`C.
`
` Asserted Ground of Unpatentability
`
`Petitioner argues that claims 1-17 would have been obviousoverthe
`
`’196 publication.> Pet. 2. We have reviewedthe parties’ assertions and
`
`supporting evidence. For the reasons discussed below,Petitioner
`
`demonstrates a reasonable likelihood of prevailing in showing that claims 1-
`
`17 would have been obviousoverthe °196 publication.
`
`l.
`
`Claims 1, 2, 6, 9, 14, and 16
`
`Claim 1 recites “a portable digital audio spread spectrum transmitter
`
`configured to couple to said portable audio source and transmitting a unique
`
`user code bit sequence with said original audio signal representation in
`
`packet format.” Ex. 1001, col. 4, ll. 63-67. Petitioner identifies evidence
`
`indicating that the 196 publication teaches a DPSK transmitterthatis
`
`coupled to a portable audio source and transmits a spread spectrum signal
`
`with a unique user code word. Pet. 21 (citing Ex. 1004 ff 2, 14, 16).
`
`Petitioner also identifies evidence indicating thatit would have been obvious
`to transmit signals in packet format. Pet. 21—22 (citing Ex. 1004 Ff 13, 15,
`
`17; Ex. 1012 4¥ 50-59). On this record, Petitioner has shown sufficiently
`
`> We understandthis asserted ground of unpatentability to include the
`background knowledge and perspective of a person of ordinary skill in the
`art. See Pet. 2, 20-22; Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed.
`Cir. 2013); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365
`(Fed. Cir. 2015).
`
`13
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`
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`IPR2016-01638
`Patent 9,282,396 B2
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`that the above limitation of claim 1 would have been obviousover the 7196
`
`publication.
`
`Claim 1 recites that the transmitter comprises “an encoder operative to
`
`encodesaid original audio signal representation to reduce intersymbol
`
`interference and lowering signal detection error of said audio signal
`
`representation respective to said digital audio headphoneandsaid digital
`
`audio spread spectrum transmitter.” Ex. 1001, col. 5, ll. 1-5. Petitioner
`
`identifies evidence indicating that the ’196 publication teaches an encoder
`
`operative to reduce intersymbolinterference and lowersignal detection
`
`error. Pet. 22 (citing Ex. 1004 J 13). On this record, Petitioner has shown
`
`sufficiently that the ’196 publication teaches the above limitation of claim 1.
`
`Claim | recites that the transmitter comprises “a digital modulator
`
`configured for independent code division multiple access (CDMA)
`
`communication operation wherein said portable digital audio spread
`
`spectrum transmitter is in direct communication with said digital audio
`
`headphone.” Ex. 1001, col. 5, ll. 6-11. Petitioner identifies evidence
`
`indicating that the 196 publication teaches a modulator for CDMA
`
`communication operation. Pet. 23 (citing Ex. 1004 ff 14, 16). On this
`
`record, Petitioner has shownsufficiently that the ’196 publication teaches
`
`the above limitation of claim 1.
`
`Claim 1| recites that the headphone comprises
`
`a direct conversion module configured to capture packets and
`the correct bit sequence embeddedin the received spread
`spectrum signal and lowering signal detection error through
`reduced intersymbolinterference coding respective of said
`digital audio headphoneandsaid portable digital audio spread
`spectrum transmitter, the captured packets corresponding to the
`unique user code bit sequence.
`
`14
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`Ex. 1001, col. 5, ll. 12-19. Petitioner identifies evidence indicating that the
`
`’196 publication teaches a direct conversion receiver that captures the
`
`unique user code wordin the spread spectrum signal. Pet. 23-24 (citing
`Ex. 1004 9 13, 15-17). On this record, Petitioner has shown sufficiently
`that the >196 publication teaches the above limitation of claim 1.
`
`Claim 1 recites that the headphone comprises “a digital demodulator
`
`configured for independent CDMA communication operation.” Ex. 1001,
`
`col. 5, ll. 20-21. Petitioner identifies evidence indicating that the ’196
`
`publication teaches a demodulator for CDMA communication operation.
`Pet. 24 (citing Ex. 1004 ff 16-17). On this record, Petitioner has shown
`
`sufficiently that the ’196 publication teaches the abovelimitation of claim 1.
`
`Claim 1 recites that the headphone comprises “a decoder operative to
`
`decode the applied reduced intersymbol interference coding ofsaid original
`
`audio signal representation.” Ex. 1001, col. 5, Il. 22-24. Petitioner
`
`identifies evidence indicating that the ’196 publication teaches a decoder to
`
`“decode the coding applied by the encoder.” Pet. 24 (citing Ex. 1004 4 13,
`
`17). On this record, Petitioner has shown sufficiently that the ’196
`
`publication teaches the abovelimitation of claim 1.
`
`Claim 1 recites that the headphone comprises “a digital-to-analog
`
`converter (DAC) generating an audio output of said original audio signal
`
`representation.” Ex. 1001, col. 5, ll. 25-26. Petitioner identifies evidence
`
`indicating that the ’196 publication teachesa digital-to-analog converter “to
`
`transform the digital signal to an analog audio signal.” Pet. 25 (citing
`
`Ex. 1004 4 18). On this record, Petitioner has shown sufficiently that the
`
`”196 publication teaches the abovelimitation of claim 1.
`
`15
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`Claim 1 recites that the headphone comprises
`
`a module adapted to reproduce said audio output, wherein each
`user has their headphone configured to communicate with their
`ownseparate digital audio spread spectrum transmitter, said
`audio having been wirelessly transmitted from said portable
`audio source throughthe digital audio spread spectrum
`transmitter configured to communicate with the headphone
`such that signals not originating from said portable digital audio
`spread spectrum transmitter are inaudible while operating in the
`portable wireless digital audio spread spectrum transmitter
`spectrum.
`
`Ex. 1001, col. 5, ll. 27-37. Petitioner identifies evidence indicating that the
`
`196 publication teaches an analog lowpassfilter, a power amplifier, and
`
`headphonespeakers for reproducing audio output. Pet. 25 (citing Ex. 1004
`
`{ 18). Petitioner also identifies evidence indicating that signals transmitted
`
`by other wireless systems appear as noise to the headphonereceiver in the
`
`196 publication. Pet. 25—26 (citing Ex. 1004 | 16). On this record,
`Petitioner has shown sufficiently that the 7196 publication teaches the above
`limitation of claim 1.
`
`Patent Ownerdoesnot raise any specific argumentsrelating to claim
`
`1. Thus, for the foregoing reasons, Petitioner demonstrates a reasonable
`
`likelihood of prevailing in showing that claim 1 would have been obvious
`
`over the ’196 publication. Claims 2, 6, 9, 14, and 16 are independentclaims
`
`that recite limitations similar to those discussed above with respect to claim
`
`1. Pet. 20-30. Therefore, for the same reasons discussed above with respect
`
`to claim 1, Petitioner demonstrates a reasonable likelihood of prevailing in
`
`showing that claims 2, 6, 9, 14, and 16 would have been obviousoverthe
`
`196 publication.
`
`16
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`2.
`
`Claims 3-5, 7, 8, 10-13, 15, and 17
`
`Claims 3-5, 7, 8, 10—13, 15, and 17 depend from claims1, 2, 6, 9, 14,
`
`or 16. Petitioner identifies evidence indicating that the ’196 publication
`
`teaches the limitations of claims 3—5, 7, 8, 10-13, 15, and 17. Pet. 30-31.
`
`Patent Owner doesnotraise any specific argumentsrelating to claims 3-5,
`
`7, 8, 10-13, 15, and 17. On this record, we are persuadedbyPetitioner’s
`
`assertions and supporting evidence. Therefore, Petitioner demonstrates a
`
`reasonable likelihood of prevailing in showing that claims 3—5, 7, 8, 10—13,
`
`15, and 17 would have been obviousoverthe ’196 publication.
`
`Nl.
`
`CONCLUSION
`
`Petitioner demonstrates a reasonable likelihood of prevailing in
`
`showing the unpatentability of claims 1-17 of the ’396 patent. At this stage
`
`in the proceeding, we have not madea final determination with respect to
`
`the patentability of any of the challenged claims.
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1-17 of the ’396 patent is hereby instituted on the
`
`following grounds:
`Claims 1-17 as unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over the ’196 publication;
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given ofthe institution of a trial commencing
`
`on the entry date of this decision;
`
`FURTHER ORDEREDthatthetrial is limited to the grounds
`
`identified, and no other groundsare authorized; and
`
`17
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`FURTHER ORDEREDthat Patent Ownershall submit a request to
`
`Trials@uspto.gov within one week ofthis decision requesting that one ofthe
`
`copies of the Preliminary Response be expungedfrom the record in this
`
`case.
`
`18
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`PETITIONER:
`
`John Flock
`Paul T. Qualey
`ANDREWS KURTH KENYON LLP
`johnflock@andrewskurthkenyon.com
`paulqualey@andrewskurthkenyon.com
`
`PATENT OWNER:
`
`Megan E. Lyman
`LYMAN PATENT SERVICES
`melyman@lymanpatents.com
`
`Jim Passe
`PASSE INTELLECTUAL PROPERTY, LLC
`
`19
`
`
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