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,
`
`v.
`
`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,
`
`v.
`
`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
`
`
`INTRODUCTION
`I.
`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 (Paper 8, “Prelim. Resp.”) to the
`Petition.1 Pursuant to our authorization (Paper 10, 2–3), Petitioner filed a
`Reply (Paper 11, “Reply”) to the Preliminary Response. An inter partes
`review may not be instituted “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.
`Related Proceedings
`A.
`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 another petition for inter partes review in IPR2016-01639. Pet. 1;
`Paper 6, 2.
`
`
`1 Patent Owner filed two copies of the Preliminary Response. Papers 8, 9.
`Patent Owner, therefore, shall submit a request to Trials@uspto.gov within
`one week of this decision requesting that one of the copies of the
`Preliminary Response be expunged from the record in this case.
`
`2
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`IPR2016-01638
`Patent 9,282,396 B2
`
`
`The ’396 Patent
`B.
`The ’396 patent relates to wirelessly transmitting signals from an
`audio player to a set of headphones. Ex. 1001, col. 1, ll. 26–33.
`Specifically, the ’396 patent describes a battery powered transmitter with a
`headphone plug that can connect to a headphone jack on any suitable audio
`player. Id. at col. 1, l. 62–col. 2, ll. 2. The transmitter encodes and
`modulates an audio signal and then transmits the signal. Id. at col. 2, ll. 52–
`60. The transmitter also transmits a unique user code, which “is the only
`code recognized by the battery powered headphone receiver.” Id. at col. 2,
`ll. 6–9, col. 2, ll. 61–66. The headphone receiver demodulates and decodes
`the signal received from the transmitter and then reproduces the audio signal
`for the user. Id. at col. 2, ll. 47–50.
`Illustrative Claim
`C.
`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 encoder operative to encode said original audio signal
`representation to reduce intersymbol interference and lowering
`signal detection error of said audio signal representation
`respective to said digital audio headphone and said digital audio
`spread spectrum transmitter; and
`
`3
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`
`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 embedded in the received spread
`spectrum signal and lowering signal detection error through
`reduced intersymbol interference coding respective of said
`digital audio headphone and said 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
`intersymbol interference coding of said 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 headphone configured to
`communicate with their own separate digital audio spread
`spectrum transmitter, said audio having been wirelessly
`transmitted from said portable audio source through the 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. 4, l. 57–col. 5, l. 37.
`
`4
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`IPR2016-01638
`Patent 9,282,396 B2
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`
`Ex. 1012
`
`Reference
`The ’196 publication
`
`Evidence of Record
`D.
`Petitioner relies on the following reference and declaration (Pet. 2):
`Reference or Declaration
`Exhibit No.
`Woolfork, U.S. Patent Application Pub. No. 2003/0118196
`Ex. 1004
`A1 (published June 26, 2003) (“the ’196 publication”)
`Declaration of John Moring (“Moring Declaration”)
`Asserted Ground of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground (Pet. 2):
`Claims Challenged
`1–17
`
`Basis
`35 U.S.C. § 103(a)
`II. 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
`claim terms in the ’396 patent that were construed in the related ITC
`investigation, and Patent Owner does not 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 II.B, 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.”).
`
`5
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`Patent 9,282,396 B2
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`
`Priority Date of the ’396 Patent
`B.
`The ’396 patent claims priority to several earlier-filed U.S. patent
`applications. Pet. 5–6; Prelim. Resp. 2–3; Ex. 1001. The earliest such
`applications are U.S. Patent Application No. 10/027,391 (Ex. 1003, “the
`’391 application”), which was filed on December 21, 2001, and U.S. Patent
`Application No. 10/648,012 (Ex. 1005, “the ’012 application”), which was
`filed on August 26, 2003. Pet. 5–6, 11, 13; Prelim. Resp. 2–3; Ex. 1001.
`The figure on page 6 of the Petition, which shows the chain of related
`applications, is reproduced below.
`
`
`
`6
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`IPR2016-01638
`Patent 9,282,396 B2
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`Pet. 6. The figure on page 6 of the Petition shows the chain of related
`applications starting with the ’391 application and ending with the
`application that issued as the ’396 patent. Id. 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.
`The ’391 application published as the ’196 publication, which is the
`reference Petitioner relies on in the asserted ground of patentability. Id. 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.” Id. 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 patent is not entitled to the benefit of the
`filing date of the ’012 application or the ’391 application.
`The Parties’ Arguments
`1.
`Petitioner argues that the ’012 application, as filed, did not include the
`entire disclosure of the ’391 application. Id. at 9, 14–15. For example,
`Petitioner contends that the ’012 application, as filed, did not describe a
`direct conversion receiver, an encoder, differential phase shift keying
`(“DPSK”), or reducing intersymbol interference. Id. at 14–16 (citing
`Ex. 1005, 6–8; Ex. 1012 ¶¶ 14–29, 30–48). Petitioner notes that certain
`features omitted from the ’012 application, as filed, are recited expressly in
`
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`the challenged claims of the ’396 patent. Pet. 15–16 (citing Ex. 1001; Ex.
`1012 ¶¶ 14–29, 30–48).
`Petitioner acknowledges that, during prosecution of the ’012
`application, the applicant amended the 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 years after filing of
`the [’012] application constitutes improper new matter and is, 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 Owner does 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 Owner also does not dispute that features initially omitted
`from the ’012 application are recited expressly in the challenged claims of
`the ’396 patent. Id. Patent Owner instead argues that the amendment to 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. Id. Patent Owner cites to several decisions by the
`United States Court of Appeals for the Federal Circuit to support that
`argument. Id. at 6–11.
`Continuity of Disclosure
`2.
`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.
`
`8
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`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 determined as of the 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 described first 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 ¶¶ 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 ’391
`application.
`In addition, no new matter may be added to 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 added after an application’s filing date
`is not effective. See MPEP § 201.06(c)(IV); Application of Henecka, 486
`F.2d 582, 584 (CCPA 1973) (“We also 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.
`
`2 We cite to the exhibit page numbers added by Petitioner to Exhibit 1003
`and Exhibit 1005.
`
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`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 cannot be 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 was filed without that statement, and without any other legally
`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.”).
`Decisions Cited by Patent Owner
`3.
`Patent Owner argues 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 abandonment of the CIP
`application. Prelim. Resp. 4. In particular, Patent Owner cites to Litton
`Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), In re
`Reiffin Family Trust, 340 F. App’x 651 (Fed. Cir. 2009), and Harari v.
`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 of the new CIP application was the date on which the last element of the
`CIP application, namely the inventors’ declaration, was filed. Id. at 1438.
`The Federal Circuit noted that “[i]f matter added through amendment to a C-
`I-P application is deemed inherent in whatever the original patent
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`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.” Id. In other words, Litton articulated the
`principle that material added on the filing date of a CIP application may still
`be entitled to the earlier filing date of a parent application if that material
`was inherent 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 abandonment of the CIP application.3 Thus, we are
`not persuaded that Litton supports Patent Owner’s argument. Also, we note
`that, here, Patent Owner does not argue that the material from the ’391
`application incorporated by reference into the ’012 application after filing
`was inherent 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.
`App’x at 658. The Federal Circuit held that a break in continuity of
`disclosure cannot be corrected during reexamination. Id. 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.” Id. at 659. We
`understand this statement to reflect the same principle articulated in Litton,
`namely that material from a parent application can be incorporated into a
`
`
`3 In fact, Litton acknowledged that a preliminary amendment in 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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`Patent 9,282,396 B2
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`CIP application on the filing 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 abandonment of
`the CIP application. Thus, we are not persuaded that Reiffin supports Patent
`Owner’s argument.
`In Harari, a patent applicant filed an application that incorporated by
`reference another application filed the same day. 602 F.3d at 1350. The
`incorporation by reference statement identified the title and inventors of the
`other concurrently-filed application, but did not include a serial number
`because the serial number had not been assigned yet. Id. The applicant
`subsequently filed a preliminary amendment that revised the specification to
`include certain disclosures from the concurrently-filed application. Id. The
`Federal Circuit held that the incorporation by reference statement was
`sufficient at the time of filing because “the title of the application, named
`inventors, and the fact that the application was filed on the same day . . .
`constituted all of the identifying information available to the drafter.” Id. at
`1352. According to the Federal Circuit, because the incorporation by
`reference statement was sufficient at the time of filing, the subsequent
`preliminary amendment did not add new matter. Id. 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
`
`4 In addition, we note that Reiffin is a nonprecedential decision and the
`portions of Reiffin cited by Patent Owner are dicta.
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`disclosure with the ’391 application, and, as a result, the ’396 patent is not
`entitled to the benefit of the filing date of the ’012 application or the ’391
`application. Therefore, on this record, Petitioner has shown sufficiently that
`the ’196 publication is prior art with respect to the challenged claims of the
`’396 patent.
`Asserted Ground of Unpatentability
`C.
`Petitioner argues that claims 1–17 would have been obvious over the
`’196 publication.5 Pet. 2. We have reviewed the 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 obvious over the ’196 publication.
`Claims 1, 2, 6, 9, 14, and 16
`1.
`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 transmitter that is
`coupled to a portable audio source and transmits a spread spectrum signal
`with a unique user code word. Pet. 21 (citing Ex. 1004 ¶¶ 2, 14, 16).
`Petitioner also identifies evidence indicating that it would have been obvious
`to transmit signals in packet format. Pet. 21–22 (citing Ex. 1004 ¶¶ 13, 15,
`17; Ex. 1012 ¶¶ 50–59). On this record, Petitioner has shown sufficiently
`
`
`5 We understand this 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).
`
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`that the above limitation of claim 1 would have been obvious over the ’196
`publication.
`Claim 1 recites that the transmitter comprises “an encoder operative to
`encode said original audio signal representation to reduce intersymbol
`interference and lowering signal detection error of said audio signal
`representation respective to said digital audio headphone and said 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 intersymbol interference and lower signal detection
`error. Pet. 22 (citing Ex. 1004 ¶ 13). On this record, Petitioner has shown
`sufficiently that the ’196 publication teaches the above limitation of claim 1.
`Claim 1 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 ¶¶ 14, 16). 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 direct conversion module configured to capture packets and
`the correct bit sequence embedded in the received spread
`spectrum signal and lowering signal detection error through
`reduced intersymbol interference coding respective of said
`digital audio headphone and said portable digital audio spread
`spectrum transmitter, the captured packets corresponding to the
`unique user code bit sequence.
`
`14
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`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 word in the spread spectrum signal. Pet. 23–24 (citing
`Ex. 1004 ¶¶ 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 ¶¶ 16–17). 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 decoder operative to
`decode the applied reduced intersymbol interference coding of said original
`audio signal representation.” Ex. 1001, col. 5, ll. 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 ¶¶ 13,
`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-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 teaches a digital-to-analog converter “to
`transform the digital signal to an analog audio signal.” Pet. 25 (citing
`Ex. 1004 ¶ 18). On this record, Petitioner has shown sufficiently that the
`’196 publication teaches the above limitation of claim 1.
`
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`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
`own separate digital audio spread spectrum transmitter, said
`audio having been wirelessly transmitted from said portable
`audio source through the 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 low pass filter, a power amplifier, and
`headphone speakers 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 headphone receiver in the
`’196 publication. Pet. 25–26 (citing Ex. 1004 ¶ 16). On this record,
`Petitioner has shown sufficiently that the ’196 publication teaches the above
`limitation of claim 1.
`Patent Owner does not raise any specific arguments relating 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 independent claims
`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 obvious over the
`’196 publication.
`
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`Claims 3–5, 7, 8, 10–13, 15, and 17
`2.
`Claims 3–5, 7, 8, 10–13, 15, and 17 depend from claims 1, 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 does not raise any specific arguments relating to claims 3–5,
`7, 8, 10–13, 15, and 17. On this record, we are persuaded by Petitioner’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 obvious over the ’196 publication.
`III. 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 made a final determination with respect to
`the patentability of any of the challenged claims.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, 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 ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing
`on the entry date of this decision;
`FURTHER ORDERED that the trial is limited to the grounds
`identified, and no other grounds are authorized; and
`
`17
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`
`FURTHER ORDERED that Patent Owner shall submit a request to
`Trials@uspto.gov within one week of this decision requesting that one of the
`copies of the Preliminary Response be expunged from 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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