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, 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 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, 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
`
`
`
`
`
`
`
`
`
`
`IPR2016-01639
`Patent 9,282,396 B2
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`
`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 6, “Prelim. Resp.”) to the
`Petition.1 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 4, 2. The parties also indicate that the ’396 patent is the
`subject of another petition for inter partes review in IPR2016-01638. Pet. 1;
`Paper 4, 2.
`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.
`
`
`1 Patent Owner filed two copies of the Preliminary Response. Papers 6, 7.
`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.
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`2
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`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
`a digital modulator configured for independent code
`division multiple access (CDMA) communication operation
`wherein said portable digital audio spread spectrum transmitter
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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 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.
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`
`Ex. 1007
`
`Evidence of Record
`D.
`Petitioner relies on the following references and declaration (Pet. 2):
`Reference or Declaration
`Exhibit No.
`Haartsen et al., U.S. Patent No. 6,563,892 B1 (issued May
`Ex. 1006
`13, 2003) (“Haartsen”)2
`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) (“1998 Paper”)
`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) (“Giannakis”)
`Ex. 1013
`Declaration of John Moring (“Moring Declaration”)
`Patent Owner relies on the Declaration of Joseph C. McAlexander III
`(Ex. 2001, “McAlexander Declaration”) to support some of the arguments in
`the Preliminary Response.
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 2, 20, 34):
`Reference(s)
`Claims Challenged Basis
`1–17
`35 U.S.C. § 102(b), (e) Haartsen
`1–17
`35 U.S.C. § 103(a)
`Haartsen and Giannakis
`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
`
`2 The parties refer to Haartsen as the ’892 patent. Pet. 9; Prelim. Resp. 12.
`
`Ex. 1009
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`5
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`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. 11–12; Prelim. Resp. 10. 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
`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.”).
`Priority Date of the ’396 Patent
`B.
`The ’396 patent claims priority 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 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. 6; Ex. 1001. The figure on page 6 of the Petition, which shows the
`chain of related applications, is reproduced below.
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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.
`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 12–19.
`Specifically, Petitioner argues that the ’012 application “broke the chain of
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`disclosure in 2003.” Id. at 13. 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 16–17. 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. (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 claims of the
`’396 patent. Pet. 17–18 (citing Ex. 1001; Ex. 1013 ¶¶ 62–77).
`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. 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 [’391]
`application.” Pet. 18 (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. 56–
`60. Patent Owner also does not dispute that features initially omitted from
`the ’012 application are recited expressly in the challenged claims of the
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`’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 relies on two decisions by the
`United States Court of Appeals for the Federal Circuit to support that
`argument. Id. at 57–59.
`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.
`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. 16–18; Prelim.
`Resp. 56–60; Ex. 1003, 8–9; Ex. 1005, 6–8; Ex. 1013 ¶¶ 62–77.3 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 added by Petitioner to Exhibit 1003
`and Exhibit 1005.
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`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. 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 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 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 abandonment of the CIP application. Prelim.
`Resp. 57–59. In particular, Patent Owner cites to Litton Systems, Inc. v.
`Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), and In re Reiffin Family
`Trust, 340 F. App’x 651 (Fed. Cir. 2009). Prelim. Resp. 57–59. We are not
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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 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
`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.4 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.
`
`
`4 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)).
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`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
`CIP application on the filing date of the CIP application.5 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.
`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 patent is not
`entitled to the benefit of the filing date of the ’012 application or the ’391
`application.
`C.
`
`Asserted Grounds of Unpatentability
`Anticipation of Claims 1–17 by Haartsen
`1.
`Petitioner argues that claims 1–17 are anticipated by Haartsen. 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 are anticipated by Haartsen.
`
`
`5 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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`Incorporation by Reference of the 1998 Paper
`a.
`Petitioner argues that Haartsen incorporates by reference the 1998
`Paper, and, therefore, the disclosure of the 1998 Paper may be considered for
`purposes of an anticipation analysis. Pet. 9. Specifically, Petitioner points
`to the portion of Haartsen that states: “Readers interested in various details
`regarding the Bluetooth technology are referred to the [1998 Paper], the
`disclosure of which is incorporated here by reference.” Ex. 1006, col. 2,
`ll. 23–29. Patent Owner responds that “the vague reference to unspecified
`‘various details’ lacks the particularity required for effective incorporation
`by reference” because it “provides no specificity as to what the ‘various
`details’ might be.” Prelim. Resp. 16–17.
`
`On this record, Petitioner has shown sufficiently 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.’” Id. 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 and states that the entire disclosure of the
`1998 Paper is incorporated by reference. Ex. 1006, col. 2, ll. 23–29 (“the
`disclosure of which is incorporated here by reference”). Thus, we agree
`with Petitioner that Haartsen sufficiently incorporates by reference the entire
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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 incorporates the entire
`disclosures of the two applications rather than just the portions describing
`optimized erase implementations.”).
`Claims 1, 2, 6, 9, 14, and 16
`b.
`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 1998 Paper discloses a radio transceiver that can fit into a
`small, portable device, such as a mobile phone or a personal digital 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 Owner argues that 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 argument is not persuasive. As discussed
`above, the 1998 Paper discloses 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 shown sufficiently 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
`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
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`audio spread spectrum transmitter.” Ex. 1001, col. 5, ll. 1–5. Petitioner
`identifies evidence indicating that Haartsen discloses an encoder that uses
`differential phase shift keying (“DPSK”) encoding to reduce intersymbol
`interference and lower signal detection error. Pet. 23 (citing Ex. 1006,
`col. 3, ll. 11–20, col. 5, ll. 24–44, col. 8, ll. 23–37).
`Patent Owner argues that Petitioner improperly relies on one
`embodiment in the 1998 Paper as disclosing a transmitter and a different
`embodiment in Haartsen as disclosing an encoder. Prelim. Resp. 27–29. On
`this record, we are not persuaded that the disclosures relied on by Petitioner
`are from different embodiments. The 1998 Paper discloses a transceiver for
`exchanging signal packets in a Bluetooth system. Pet. 22; Ex. 1007, 112–
`113. Haartsen discloses applying DPSK encoding to signals in a Bluetooth
`system in order to prevent disturbances. Pet. 9–10, 23; Ex. 1006, col. 2,
`ll. 14–20, col. 5, ll. 12–54. In other words, the disclosures relied on by
`Petitioner relate to the same Bluetooth embodiment, and, when read
`together, indicate that the Bluetooth transceiver is operative to apply the
`DPSK encoding. 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 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 Haartsen discloses using modulated signals. Pet. 23 (citing
`Ex. 1006, col. 1, ll. 13–17). Petitioner also identifies evidence indicating
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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 Owner argues that Petitioner does not identify any disclosure of
`independent CDMA communication operation. Prelim. Resp. 21–23. Patent
`Owner’s argument is not persuasive. As discussed above, Haartsen
`discloses using frequency hopped CDMA. Pet. 23–24; Ex. 1006, col. 4,
`ll. 12–15. Further, as also discussed above, the 1998 Paper discloses a
`Bluetooth transceiver that “fit[s] into” a portable audio source, and, thus,
`indicates that the Bluetooth transceiver performs the CDMA operation
`independent of the portable audio source. Pet. 22; Ex. 1007, 112. 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 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.
`Ex. 1001, col. 5, ll. 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, ll. 39–41, col. 4,
`ll. 54–58, col. 5, ll. 43–44; Ex. 1013 ¶¶ 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 Owner argues that Petitioner improperly relies on one
`embodiment in the 1998 Paper as disclosing a headphone receiver and a
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`unique user code, and a different embodiment in Haartsen as disclosing a
`direct conversion module. Prelim. Resp. 32–36. On this record, we are 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 homodyne receiver. Pet. 24;
`Ex. 1006, col. 2, ll. 39–41, col. 4, ll. 54–58, col. 5, ll. 43–44. In other words,
`the disclosures relied on by Petitioner relate to the same Bluetooth
`embodiment, and, when read together, indicate that the transceiver in the
`Bluetooth headset includes a homodyne receiver. 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, ll. 13–
`17). Petitioner also identifies evidence indicating that, because the system
`disclosed in Haartsen uses DPSK encoding, it inherently includes a
`demodulator in the receiver. Pet. 25 (citing Ex. 1013 ¶¶ 54–57).
`Patent Owner argues that 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, ll. 12–15). According
`to Patent Owner, a demodulator is not necessary to detect a modulated
`signal. Prelim. Resp. 24 (citing Ex. 2001 ¶ 13). Patent Owner’s argument is
`not persuasive. Even if Haartsen does not expressly disclose demodulating a
`
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`DPSK signal, 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 ¶¶ 54–55. 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 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 Haartsen discloses sending encoded
`signals to a Viterbi decoder that reduces intersymbol interference. Pet. 26
`(citing Ex. 1006, col. 3, ll. 11–20); Ex. 1006, col. 5, ll. 24–54, col. 6, ll. 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 decoder that
`retrieves the desired signal. Pet. 23 (citing Ex. 1006, col. 8, ll. 23–37).
`
`Patent Owner argues that Petitioner identifies the DPSK encoding in
`Haartsen as the encoding recited in claim 1, but does not identify any
`evidence indicating that the Viterbi decoder in Haartsen decodes the DPSK
`encoding. Prelim. Resp. 29–30. Further, according to Patent Owner, the
`Viterbi decoder corrects for intersymbol interference caused by the FIR
`filter, but does not decode the DPSK encoding. Id. at 30–32 (citing
`Ex. 1006, col. 7, ll. 60–62; Ex. 2001 ¶¶ 15–16). Patent Owner’s argument is
`not persuasive. Although, as Patent Owner points out, the Viterbi decoder
`corrects for intersymbol interference caused by the FIR filter (Ex. 1006,
`col. 3, ll. 12–17), Haartsen discloses that the Viterbi decoder also decodes
`
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`IPR2016-01639
`Patent 9,282,396 B2
`
`the encoded symbols and retrieves 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 output of 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 ¶¶ 58–61). 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 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
`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 sources of interference, such
`as cordless phones and microwave ovens, by means of spectrum spreading.
`Pet. 27 (citing Ex. 1007, 112, 114).
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`IPR2016-01639
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`Patent Owner argues that claim 1 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
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