Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION,
`Petitioner,
`
`V.
`
`ONE-E-WAY,INC.,
`Patent Owner.
`
`Case IPR2016-01639
`Patent 9,282,396 B2
`
`Before DAVID C. MCKONE, ROBERTJ. WEINSCHENK,and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper 8
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION,
`Petitioner,
`
`V.
`
`ONE-E-WAY,INC.,
`Patent Owner.
`
`Case IPR2016-01639
`Patent 9,282,396 B2
`
`Before DAVID C. MCKONE, ROBERTJ. WEINSCHENK,and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2016-01639
`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 (Paper6, “Prelim. Resp.”) to the
`Petition.’ An inter partes review maynotbeinstituted “unless .
`.
`. there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challengedin the petition.” 35 U.S.C. § 314(a).
`' For the reasonsset 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 asto claims 1—
`
`17 of the ’396 patent on the groundsspecified 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 4,2. The parties also indicate that the ’396 patentis the
`
`subject of anotherpetition for inter partes review in IPR2016-01638. Pet. 1;
`
`Paper4,2.
`
`B.
`The ’396 Patent
`The *396 patent relates to wirelessly transmitting signals from an
`audio player to a set of headphones. Ex. 1001, col. 1, ll. 26-33.
`
`' Patent Ownerfiled two copiesof the Preliminary Response. Papers6,7.
`Patent Owner,therefore, shall submit a request to Trials@uspto.gov within
`one weekof this decision requesting that one of the copies of the
`Preliminary Response be expungedfrom the recordin this case.
`
`2
`
`
`
`IPR2016-01639
`Patent 9,282,396 B2
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`Specifically, the °396 patent describes a battery powered transmitter with a
`
`headphoneplug that can connect to a headphonejack on any suitable audio
`
`player. Jd. at col. 1, 1. 62—-col. 2, ll. 2. The transmitter encodes and
`
`modulates an audio signal and then transmits the signal. Jd. at col. 2, Il. 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,
`
`Il. 6-9, col. 2, ll. 61-66. The headphone receiver demodulates and decodes
`
`the signal received from the transmitter and then reproducesthe audio signal
`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 sourceto 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 encoder operative to encodesaid 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
`
`a digital modulator configured for independent code
`division multiple access (CDMA) communication operation
`wherein said portable digital audio spread spectrum transmitter
`
`
`
`IPR2016-01639
`Patent 9,282,396 B2
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`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 corresponding to 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 reproduce said audio output,
`wherein each user has their headphoneconfigured 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.
`
`
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`IPR2016-01639
`Patent 9,282,396 B2
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`D.
`
`Evidence ofRecord
`
`Petitioner relies on the following references and declaration (Pet. 2):
`
`
`
`Reference or Declaration
`Haartsen et al., U.S. Patent No. 6,563,892 B1 (issued May
`13, 2003)
`(“Haartsen”)*
`Jaap Haartsen, Bluetooth—The Universal Radio Interface
`for Ad Hoc, Wireless Connectivity, VOL. 75, No. 3,
`ERICSSON REVIEW, THE TELECOMMUNICATIONS
`TECHNOLOGY JOURNAL 110-17 (1998
`Georgios B. Giannakis et al., Load-Adaptive MUI/ISI-
`Resilient Generalized Multi-Carrier CDMA with Linear and
`DF Receivers, Vol. 11, No. 6, EUROPEAN TRANSACTIONS ON
`TELECOMMUNICATIONS 527-37 (2000
`Declaration of John Moring (“Moring Declaration’’)
`
`Exhibit No.
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1009
`
`Ex. 1013
`
`Patent Ownerrelies on the Declaration of Joseph C. McAlexanderIII
`
`(Ex. 2001, “McAlexander Declaration”) to support someof the arguments in
`
`the Preliminary Response.
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds(Pet. 2, 20, 34):
`
`
`Claims Challenged [BasisiReference(s
`
`35 U.S.C. § 102(b),
`(e
`
`
`35 U.S.C. § 103(a
`
`Haartsen and Giannakis
`
`
`
`
`
`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, 2144-45 (2016). Petitioner proposes construing several
`
`? The parties refer to Haartsen as the ’892 patent. Pet. 9; Prelim. Resp. 12.
`
`5
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`
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`IPR2016-01639
`Patent 9,282,396 B2
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`claim termsin the ’396 patent that were construedin the related ITC
`
`investigation, and Patent Ownerdoes not dispute Petitioner’s proposed
`
`constructions. Pet. 11—12; Prelim. Resp. 10. However, on this record and
`
`for purposesof this decision, we determine that no claim terms require
`express construction to resolve the parties’ disputes regardingthe asserted
`grounds of unpatentability. See infra Section II.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.”’).
`
`B._Priority Date ofthe ’396 Patent
`
`The °396 patent claimspriority to several earlier-filed U.S. patent
`
`applications. Pet. 6; Ex. 1001. The earliest such applications are U.S. Patent
`
`Application No. 10/027,391 (Ex. 1003, “the ’391 application”), which was
`
`filed on December21, 2001, and U.S. Patent Application No. 10/648,012
`
`(Ex. 1005, “the ’012 application”), which wasfiled on August 26, 2003.
`
`Pet. 6; Ex. 1001. The figure on page 6 ofthe Petition, which showsthe
`
`chain of related applications, is reproduced below.
`
`
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`IPR2016-01639
`Patent 9,282,396 B2
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`Original Parent Application—uhandoned
`U.S. Patent Application No. 10/027,391
`Filed: Dec. 21.2001
`Published on June 26, 2003 as Pub. No. 2003/0! 18196
`
`U.S. Patent No. 7,412,294
`Issued from U.S. Application Nu. 10/648,012,
`Filed on August 26, 2003
`
`U.S. Patent No. 7,684,885
`Issued from U.S. Application No. 12/144,729,
`Filed on July 12,2008
`
`Filed on Fehruary 25, 2013
`
`US. Patent No. 7,865,258
`Issued from U.S. Application No. 12/570,343,
`Filed on September 30, 2009
`
`U.S. Patent No. 8,131,391
`Tssued from U.S. Application No. 12/940,747,
`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
`
`U.S. Patent No. 9,282,396
`Tssued from U.S. Application No. 13/775,754,
`
`Pet. 6. The figure on page 6 of the Petition showsthe chain ofrelated
`
`applications starting with the ’391 application and ending with the
`
`application that issued as the ’396 patent. Jd. As indicated in 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.
`
`Petitioner argues that the ’396 patentis not entitled to the benefit of
`
`the filing date of the ’012 application or the ’391 application. Jd. at 12-19.
`
`Specifically, Petitioner argues that the ’012 application “broke the chain of
`
`
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`IPR2016-01639
`Patent 9,282,396 B2
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`disclosure in 2003.” Jd. at 13. For the reasons discussed below,onthis
`
`record, Petitioner has shownsufficiently 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.
`
`l.
`
`The Parties’ Arguments
`
`Petitioner argues that the ’012 application,as filed, did not include the
`
`entire disclosure of the ’391 application. Jd. at 16-17. 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. (citing Ex. 1005, 6-8;
`
`Ex. 1010). Petitioner notes that certain features omitted from the ’012
`
`application, as filed, are recited expressly in the challenged claimsof the
`
`°396 patent. Pet. 17—18 (citing Ex. 1001; Ex. 1013 J] 62-77).
`
`Petitioner acknowledges that, 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. 18-19 (citing Ex. 1005, 375). Petitioner argues, though,that this
`“incorporation by reference statement added nearly three years after filing of
`the [’012] application cannot extend the priority chain back to the [7391]
`
`application.” Pet. 18 (citing Manual of Patent Examining Procedure
`
`(“MPEP”) § 201.06(c)(IV)).
`
`Patent Ownerdoesnot dispute that the 012 application,as filed, did
`
`not include the entire disclosure of the ’391 application. Prelim. Resp. 56-
`
`60. Patent Owneralso does not dispute that features initially omitted from
`
`the ’012 application are recited expressly in the challenged claimsofthe
`
`
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`IPR2016-01639
`Patent 9,282,396 B2
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`*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 Ownerrelies on two decisions by the
`
`United States Court of Appeals for the Federal Circuit to support that
`
`argument. Id. at 57-59.
`
`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.
`
`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 requirementis determined asofthe filing 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 claimedlater in the ’396 patent. Pet. 16—18; Prelim.
`Resp. 56-60; Ex. 1003, 8-9; Ex. 1005, 6-8; Ex. 1013 J 62-77.° There also
`
`is no dispute that the ’012 application, as filed, did not incorporate the ’391
`
`application by reference. Pet. 18-19; Prelim. Resp. 56-60; 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 ’391 application.
`
`3 We cite to the exhibit page numbers addedby Petitioner to Exhibit 1003
`and Exhibit 1005.
`
`
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`IPR2016-01639
`Patent 9,282,396 B2
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`In addition, no new matter may be added to the disclosure of an
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`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 added after 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 addedafter the filing date of the
`
`’012 application. Pet. 18-19; Prelim. Resp. 56-60; Ex. 1005, 375.
`
`Therefore, on this record, we agree with Petitioner that the incorporation by
`
`reference statement added to the ’012 application after its filing date is
`
`improper new matter and cannotbe relied 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. §] 120 itself operates to carry forward any disclosure from an
`
`earlier application.”).
`
`3,
`
`Decisions Cited by Patent Owner
`
`Patent Ownerarguesthat two 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. 57-59. In particular, Patent Ownercites to Litton Systems, Inc. v.
`
`Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), and Jn re Reiffin Family
`
`Trust, 340 F. App’x 651 (Fed. Cir. 2009). Prelim. Resp. 57-59. Weare not
`
`10
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`IPR2016-01639
`Patent 9,282,396 B2
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`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 of the new CIP application was the date on whichthe last element ofthe
`
`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
`
`application discloses, however, that matter also is entitled to thefiling date
`
`of the original, parent application.” Jd. In other words, Litton articulated the
`
`principle that material added on thefiling 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. Jd. Litton, however, did not hold that
`
`material from a parent application can be addedto a CIP application at any
`timeprior to issuance or abandonmentof the CIP application. Thus, weare
`
`not persuaded that Litton supports Patent Owner’s argument. Also, we note
`
`that, here, Patent Owner doesnot 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 amend an issued patent
`
`during reexamination to include material from a parent application in order
`
`to maintain continuity of disclosure with the parent application. 340 F.
`
`“Tn fact, Litton acknowledgedthat a preliminary amendmentin a CIP
`application is not consideredpart of the original disclosure. 728 F.2d at
`1437-38 (citing MPEP § 608.04(b)).
`
`11
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`IPR2016-01639
`Patent 9,282,396 B2
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`App’x at 658. The Federal Circuit held that a break in continuity of
`
`disclosure cannot be corrected during reexamination. Jd. at 660. The
`
`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 statement to reflect the same principle articulated in Litton,
`
`namely that material from a parent application can be incorporatedinto a
`
`CIP application on thefiling date of the CIP application.> 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 persuaded that Reiffin 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
`
`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.
`
`C.
`
`Asserted Grounds of Unpatentability
`
`1.
`Anticipation of Claims 1-17 by Haartsen
`Petitioner argues that claims 1—17 are anticipated by Haartsen. Pet.2.
`
`Wehavereviewedthe parties’ assertions and supporting evidence. For the
`
`reasons discussed below,Petitioner demonstrates a reasonable likelihood of
`
`prevailing in showingthat claims 1-17 are anticipated by Haartsen.
`
`> 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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`IPR2016-01639
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`a.
`
`Incorporation by Reference ofthe 1998 Paper
`
`Petitioner argues that Haartsen incorporates by reference the 1998
`
`Paper, and, therefore, the disclosure of the 1998 Paper maybe considered for
`
`purposesof an anticipation analysis. Pet. 9. Specifically, Petitioner points
`
`to the portion of Haartsen that states: “Readers interested in various details
`
`regarding the Bluetooth technologyare referred to the [1998 Paper], the
`
`disclosure of which is incorporated here by reference.” Ex. 1006,col. 2,
`
`ll. 23-29. Patent Ownerrespondsthat “the vague reference to unspecified
`
`‘various details’ lacks the particularity required for effective incorporation
`
`by reference” becauseit “provides no specificity as to what the ‘various
`
`details’ might be.” Prelim. Resp. 16-17.
`
`Onthis record, Petitioner has shownsufficiently that Haartsen
`
`incorporates by reference the disclosure of the 1998 Paper for purposes of an
`
`anticipation analysis. To determine whether material is incorporated by
`
`reference, “the standard is whether one reasonably skilled in the art would
`
`understand the application as describing with sufficient particularity the
`
`material to be incorporated.” Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir.
`
`2011). In Harari, the Federal Circuit “conclude[d] that [an entire patent]
`
`application disclosure was incorporated by the broad and unequivocal
`
`language: ‘The disclosures of the two applications are hereby incorporate[d]
`
`by reference.’” Jd. at 1335 (first two sets of brackets ours, last set of
`
`brackets added by Federal Circuit). Like Harari, here, Haartsen identifies
`
`with particularity the 1998 Paper andstates that the entire disclosure of the
`
`1998 Paperis incorporated by reference. Ex. 1006, col. 2, Il. 23-29 (“the
`
`disclosure of whichis incorporated here by reference”). Thus, we agree
`
`with Petitioner that Haartsen sufficiently incorporates by reference the entire
`
`13
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`IPR2016-01639
`Patent 9,282,396 B2
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`disclosure of the 1998 Paper. See Harari, 656 F. 3d at 1335 (“We agree
`
`with Harari that the first incorporation passage incorporatesthe entire
`
`disclosures of the two applicationsrather than just the portions describing
`optimized erase implementations.”).
`|
`
`b.
`
`Claims 1, 2, 6, 9, 14, and 16
`
`Claim | 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 1998 Paper discloses a radio transceiverthat can fit into a
`small, portable device, such as a mobile phoneor a personaldigital assistant
`
`(“PDA”). Pet. 22 (citing Ex. 1007, 112). Petitioner also identifies evidence
`
`indicating that the radio transceiver in the 1998 Paper transmits packets that
`
`include a unique 72-bit access code. Pet. 22 (citing Ex. 1007, 113, Fig. 4).
`
`Patent Ownerarguesthat Petitioner’s citations to Haartsen and the
`
`1998 Paper do not mention a transmitter coupled to a portable audio source.
`
`Prelim. Resp. 26. Patent Owner’s argumentis not persuasive. As discussed
`
`above, the 1998 Paperdiscloses a radio transceiver(i.e., a transmitter and a
`
`receiver) coupled to a small, portable device, such as a mobile phone or a
`
`PDA(i.e., a portable audio source). Pet. 22; Ex. 1007, 112. Thus, on this
`
`record, Petitioner has shownsufficiently that Haartsen, with the 1998 Paper
`
`incorporated by reference, discloses the above limitation of claim 1.
`
`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
`
`14
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`TPR2016-01639
`Patent 9,282,396 B2
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`audio spread spectrum transmitter.” Ex. 1001, col. 5, ll. 1-5. Petitioner
`
`identifies evidence indicating that Haartsen discloses an encoderthat uses
`
`differential phase shift keying (“DPSK’”) encoding to reduce intersymbol
`
`interference and lowersignal detection error. Pet. 23 (citing Ex. 1006,
`
`col. 3, ll. 11-20, col. 5, ll. 24-44,col. 8, ll. 23-37).
`
`Patent Ownerarguesthat Petitioner improperly relies on one
`
`embodimentin the 1998 Paperas disclosing a transmitter and a different
`
`embodimentin Haartsen as disclosing an encoder. Prelim. Resp. 27-29. On
`
`this record, we are not persuadedthat the disclosures relied on by Petitioner
`
`are from different embodiments. The 1998 Paper discloses a transceiver for
`
`exchangingsignal packets in a Bluetooth system. Pet. 22; Ex. 1007, 112—
`
`113. Haartsen discloses applying DPSK encodingto signals in a Bluetooth
`
`system in order to prevent disturbances. Pet. 9-10, 23; Ex. 1006, col. 2,
`
`li. 14-20, col. 5, ll. 12-54. In other words, the disclosuresrelied on by
`
`Petitioner relate to the same Bluetooth embodiment, and, when read
`
`together, indicate that the Bluetooth transceiver is operative to apply the
`
`DPSKencoding. Thus,on this record, Petitioner has shownsufficiently that
`
`Haartsen, with the 1998 Paper incorporated by reference, discloses the above
`
`limitation of claim 1.
`
`Claim 1 recites that the transmitter comprises “a digital modulator
`configured for independentcode 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 Haartsen discloses using modulated signals. Pet. 23 (citing
`
`Ex. 1006, col. 1, ll. 13-17). Petitioner also identifies evidence indicating
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`15
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`that the Bluetooth system in Haartsen employs “frequency hopped CDMA.”
`
`Pet. 23-24 (citing Ex. 1006, col. 4,ll. 12-15).
`
`Patent Ownerarguesthat Petitioner does not identify any disclosure of
`
`independent CDMA communication operation. Prelim. Resp. 21-23. Patent
`
`Owner’s argumentis not persuasive. As discussed above, Haartsen
`
`discloses using frequency hopped CDMA. Pet. 23-24; Ex. 1006, col. 4,
`
`Il. 12-15. Further, as also discussed above, the 1998 Paperdiscloses a
`
`Bluetooth transceiverthat “fit[s] into” a portable audio source, and, thus,
`
`indicates that the Bluetooth transceiver performs the CDMAoperation
`
`independent of the portable audio source. Pet. 22; Ex. 1007, 112. Thus, on
`
`this record, Petitioner has shownsufficiently that Haartsen, with the 1998
`
`Paper incorporated by reference, discloses the abovelimitation of claim 1.
`
`Claim | 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 intersymbol interference coding respective of said
`digital audio headphoneandsaid portable digital audio spread
`spectrum transmitter, the captured packets corresponding to the
`unique user code bit sequence.
`
`Ex. 1001, col. 5, Il. 12-19. Petitioner identifies evidence indicating that
`
`Haartsen discloses a homodyne receiver, which, according to Petitioner, is a
`
`direct conversion module. Pet. 24 (citing Ex. 1006, col. 2, Il. 39-41, col. 4,
`
`ll. 54-58, col. 5, ll. 43-44; Ex. 1013 J 16, 33). Petitioner also identifies
`
`evidence indicating that the packets exchanged in a Bluetooth system
`
`include a unique 72-bit access code. Pet. 24 (citing Ex. 1007, 113, Fig. 4).
`
`Patent Ownerarguesthat Petitioner improperly relies on one
`
`embodimentin the 1998 Paper as disclosing a headphonereceiver and a
`
`16
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`unique user code, and a different embodiment in Haartsen as disclosing a
`
`direct conversion module. Prelim. Resp. 32-36. Onthis record, weare not
`
`persuaded that the disclosures relied on by Petitioner are from different
`
`embodiments. The 1998 Paper discloses a Bluetooth headset with a
`
`transceiver for exchanging packets that include a unique 72-bit access code.
`
`Pet. 21, 24; Ex. 1007, 112-113, Figs. 1, 4. Haartsen discloses that the
`
`receiver in a Bluetooth system includes a homodynereceiver. Pet. 24;
`
`Ex. 1006, col. 2, Il. 39-41, col. 4, ll. 54-58, col. 5, Il. 43-44. In other words,
`
`the disclosures relied on by Petitioner relate to the same Bluetooth
`
`embodiment, and, whenread together, indicate that the transceiver in the
`
`Bluetooth headset includes a homodynereceiver. Thus,on this record,
`
`Petitioner has shown sufficiently that Haartsen, with the 1998 Paper
`
`incorporated by reference, discloses 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 Haartsen
`
`discloses using modulated signals. Pet. 25 (citing Ex. 1006, col. 1, Il. 13-
`
`17). Petitioner also identifies evidence indicating that, because the system
`
`disclosed in Haartsen uses DPSK encoding,it inherently includes a
`
`demodulatorin the receiver. Pet. 25 (citing Ex. 1013 J] 54-57).
`
`Patent Ownerarguesthat Haartsen discloses detecting a modulated
`
`signal, but does not disclose demodulating a modulated signal. Prelim.
`
`Resp. 23-24 (citing Ex. 1006, col. 1, ll. 13-17, col. 4,Il. 12-15). According
`
`to Patent Owner, a demodulatoris not necessary to detect a modulated
`
`signal. Prelim. Resp. 24 (citing Ex. 2001 4 13). Patent Owner’s argumentis
`
`not persuasive. Even if Haartsen does not expressly disclose demodulating a
`
`17
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`DPSKsignal, Petitioner’s declarant, Mr. John Moring, explains that any
`
`Bluetooth system that transmits a DPSK signal must demodulate the signal
`
`in order to achieve successful communication, and, as a result, must have a
`
`demodulator. Pet. 25; Ex. 1013 J 54-55. Thus, on this record, Petitioner
`
`has shownsufficiently that Haartsen, with the 1998 Paper incorporated by
`
`reference, discloses the above limitation of claim 1.
`
`Claim 1 recites that the headphone comprises “a decoder operative to
`
`decode the applied reduced intersymbolinterference coding ofsaid original
`
`audio signal representation.” Ex. 1001, col. 5, ll. 22-24. Petitioner
`
`identifies evidence indicating that Haartsen discloses sending encoded
`
`signals to a Viterbi decoderthat reduces intersymbolinterference. Pet. 26
`
`(citing Ex. 1006, col. 3, Il. 11-20); Ex. 1006, col. 5, Il. 24-54, col. 6, Il. 52—
`
`65. Petitioner also identifies evidence indicating that the combination of a
`
`finite impulse response (“FIR”) filter and a Viterbi decoder is an example of
`
`a filter that removes unwanted signal components and a decoderthat
`
`retrieves the desired signal. Pet. 23 (citing Ex. 1006, col. 8, Il. 23-37).
`
`Patent Ownerarguesthat Petitioner identifies the DPSK encoding in
`
`Haartsen as the encodingrecited in claim 1, but does not identify any
`
`evidenceindicating that the Viterbi decoder in Haartsen decodes the DPSK
`
`encoding. Prelim. Resp. 29-30. Further, according to Patent Owner, the
`
`Viterbi decoder corrects for intersymbolinterference caused by the FIR
`
`filter, but does not decode the DPSK encoding.
`
`/d. at 30-32 (citing
`
`Ex. 1006, col. 7, Il. 60-62; Ex. 2001 §§ 15-16). Patent Owner’s argumentis
`
`not persuasive. Although, as Patent Ownerpoints out, the Viterbi decoder
`
`corrects for intersymbol interference caused by the FIR filter (Ex. 1006,
`
`col. 3, l!. 12-17), Haartsen discloses that the Viterbi decoder also decodes
`
`18
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`the encoded symbols andretrieves the desired signal (id. at col. 8, ll. 23-27,
`
`col. 8, ll. 34-37). Thus, on this record, Petitioner has shown sufficiently that
`
`Haartsen, with the 1998 Paper incorporated by reference, discloses the above
`
`limitation of claim 1.
`
`Claim 1 recites that the headphone comprises “a digital-to-analog
`
`converter (DAC)generating an audio outputof said original audio signal
`
`representation.” Ex. 1001, col. 5, ll. 25-26. Petitioner identifies evidence
`indicating that a digital-to-analog converter is disclosed inherently by
`Haartsen. Pet. 26 (citing Ex. 1007, 112; Ex. 1013 9] 58-61). On this
`
`record, Petitioner has shownsufficiently that Haartsen, with the 1998 Paper
`
`incorporated by reference, discloses the above limitation of claim 1.
`
`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
`
`1998 Paper discloses a headset for reproducing audio signals. Pet. 26-27
`
`(citing Ex. 1007, 112). Petitioner also identifies evidence indicating that the
`
`1998 Paper discloses suppressing unpredictable sourcesof interference, such
`
`as cordless phones and microwave ovens, by means of spectrum spreading.
`
`Pet. 27 (citing Ex. 1007, 112, 114).
`
`19
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`Patent Ownerarguesthat claim | requires rendering inaudible any
`
`signals not originating from the claimed transmitter, whereas the 1998 Paper
`only discloses suppressing such signals. Prelim. Resp. 38. Patent Owner
`cites to the McAlexander Declaration as evidence that suppressing a signal,
`
`as disclosed in the 1998 Paper, is not the same as rendering a signal
`
`/d. (citing Ex. 2001 9 17). Patent
`inaudible, as required by claim 1.
`Owner’s argumentis not persuasive. Mr. McAlexanderstates that “To]ne of
`
`ordinary skill in the art would understand suppressing interference to be a
`
`partial redu
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