Filed: March 16, 2021
`
`Filed on behalf of:
`Patent Owner One-E-Way, Inc.
`By: Douglas G. Muehlhauser (Reg. No. 42018)
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`BoxOne-E-Way@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2021-00283
`U.S. Patent 8,131,391 B2
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Filed on behalf of:
`Patent Owner One-E-Way, Inc.
`By: Douglas G. Muehlhauser (Reg. No. 42018)
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`BoxOne-E-Way@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2021-00283
`U.S. Patent 8,131,391 B2
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND OF THE INVENTION AND OVERVIEW
`OF THE CHALLENGED PATENT ............................................................... 3
`
`A. Development Of The Invention............................................................. 3
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Embodiments Described In The Specification ...................................... 4
`
`The Claims ............................................................................................ 5
`
`Preliminary Claim Construction............................................................ 5
`
`Person of Ordinary Skill In The Art ...................................................... 7
`
`Priority Date Of The Challenged Claims .............................................. 7
`
`III. PETITIONER’S GROUNDS .......................................................................... 8
`
`IV. OVERVIEW OF THE REFERENCES RELIED UPON ................................ 9
`
`A. Ham ....................................................................................................... 9
`
`B.
`
`C.
`
`Sklar ....................................................................................................... 9
`
`Xia ......................................................................................................... 9
`
`D. Groe ..................................................................................................... 10
`
`E.
`
`Haartsen ............................................................................................... 10
`
`V. GROUNDS 1 AND 2 FAIL .......................................................................... 10
`
`A. Ham Does Not Disclose Reduced Intersymbol
`Interference Coding ............................................................................. 12
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`1.
`
`2.
`
`Petitioner establishes no motivation to add
`reduced ISI coding to Ham ....................................................... 12
`
`Petitioner fails to show that a skilled artisan
`would look to Sklar and Xia to alter Ham with
`respect to the reduced ISI limitation ......................................... 16
`
`a)
`
`b)
`
`The record provides no motivation to
`combine Ham with Sklar ................................................ 16
`
`The record provides no motivation to
`combine Ham with Sklar and Xia .................................. 18
`
`3.
`
`Petitioner’s “alternative mapping” theories for
`reduced ISI fail .......................................................................... 23
`
`B.
`
`Ham Does Not Disclose Independent CDMA .................................... 25
`
`1.
`
`2.
`
`3.
`
`The record fails to show that Ham discloses
`“one-to-one correspondence” .................................................... 26
`
`The record fails to support Petitioner’s assertion
`that Ham does not suggest centralized control ......................... 27
`
`Ground 2 Cannot Rectify Ham’s Shortcomings ....................... 32
`
`a)
`
`b)
`
`Ground 1’s failure is fatal to Ground 2 .......................... 33
`
`Petitioner establishes no motivation to
`substitute Ham’s CDMA method with
`Haartsen’s FH-CDMA method ....................................... 36
`
`C.
`
`Ham Does Not Disclose A Direct Conversion Module ...................... 38
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`VI. RESERVATION OF RIGHTS ...................................................................... 43
`
`VII. CONCLUSION .............................................................................................. 44
`
`
`
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Auris Health Inc. v. Intuitive Surgical Operations, Inc.,
`IPR2019-01547, Paper 11 (March 3, 2021)........................................................ 11
`In re Certain Wireless Headsets,
`Investigation No. 337-TA-943 .............................................................................. 5
`Ex parte Claus Grewe,
`Appeal No. 2019-000855 .............................................................................. 15, 24
`Ex parte Jerry L. Allen,
`Appeal No. 2018-008208 .............................................................................. 16, 24
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ................................................................ 11, 14, 27
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 11, 12, 14, 22
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .............................................................. 11, 26, 41
`Personal Web Techs. v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ...................................................................... 18, 42
`Sony Corp. v. One-E-Way,
`IPR2016-01638, Paper 42 (P.T.A.B. Feb. 9, 2018) .............................................. 7
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .......................................................................... 22
`
`OTHER AUTHORITIES
`
`35 U.S.C.§ 314 ......................................................................................................... 11
`M.P.E.P. § 2143.01 .................................................................................................. 37
`
`-iv-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`Declaration of Joseph C. McAlexander III
`
`Portions of the prosecution history of U.S. Patent No. 9,107,000,
`assigned to Patent Owner One-E-Way, Inc., Application No.
`13/356,949
`
`U.S. Patent No. 9,107,000, assigned to Patent Owner One-E-
`Way, Inc.
`
`Bernard Sklar, Digital Communications: Fundamentals and
`Applications (1988), Chapter 6
`
`WO Publication 2004/028086 to Jacobus Haartsen (published
`April 1, 2004)
`
`U.S. Patent No. 6,618,429
`
`U.S. Patent No. 6,091,760
`
`Ex parte Claus Grewe, Appeal No. 2019-000855, Application
`No. 14/376,426, October 31, 2019
`
`Ex parte Jerry L. Allen, Appeal No. 2018-008208, Application
`No. 14/712,101, July 1, 2020
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`
`
`
`
`Exhibit List, Page 1
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`
`Pursuant to 35 U.S.C. § 313, 37 C.F.R. § 42.107 and the Notice of Filing Date
`
`Accorded to Petition, dated December 16, 2020 (see Paper 3), Patent Owner One-E-
`
`Way, Inc. (“One-E-Way”) hereby submits its Preliminary Response to the Petition
`
`for Inter Partes Review of U.S. Patent No. 8,131,391 B2 (“the patent,” “the
`
`challenged patent” or “the ’391 patent”) filed by Apple Inc. (“Apple” or
`
`“Petitioner”).
`
`I. INTRODUCTION
`
`The Petition presents two Grounds, each directed at claims 1, 3-6 and 10 of
`
`the challenged patent. In Ground 1, Petitioner presents a four-reference obviousness
`
`combination based on its primary reference, a five-page English translation of a
`
`Korean patent application publication (“Ham”). In Ground 2, Petitioner presents a
`
`five-reference obviousness combination, also based on Ham.
`
`The challenged patent claims audio systems having features for wirelessly
`
`communicating high quality audio data, such as when music is wirelessly transmitted
`
`to wireless headphones. While the system in Ham relates to wireless audio
`
`technology, Ham’s system discloses distinctly different methods to accomplish its
`
`wireless communication. These fundamental differences are part of the reason why
`
`Ham fails to teach several key limitations of the challenged patent, and why
`
`Petitioner must retreat to cobbling together four and five references to present its
`
`obviousness challenge.
`
`-1-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`But aside from the several important missing limitations Ham fails to disclose,
`
`there is a more fundamental deficiency in the present record. As will be a pervasive
`
`theme in this Preliminary Response, the record fails to show why a person of
`
`ordinary skill in the art would have been motivated to alter Ham’s particular system
`
`at all, let alone using Petitioner’s several references. Indeed, Ham expressly teaches
`
`that it has solved its own stated goal of preventing noise and interference to deliver
`
`wireless, CD-quality audio to the user. Petitioner’s obviousness case utterly
`
`collapses in view of this fact, as Petitioner fails to show – time and again – why a
`
`person of ordinary skill in the art would see any need to look to any of Petitioner’s
`
`selectively chosen references to alter the functionality of Ham’s already fully
`
`successful design.
`
`In fact, Petitioner does not even put forward an argument for why a skilled
`
`artisan would be motivated to try adding any of Petitioner’s proposed layers of
`
`complexity, or making any proposed substitution to Ham’s design, when Ham’s
`
`express disclosure identifies no additional benefit to be gained in terms of preventing
`
`interference or delivering CD-quality audio to the user. From this perspective,
`
`Petitioner’s obviousness challenge can be seen for what it really is – an
`
`impermissible use of hindsight that uses the challenged claims as a roadmap to
`
`reconstruct the claimed invention from selected portions of multiple references in
`
`the prior art. Thus, the Board should deny institution on the present record.
`
`-2-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`II. BACKGROUND OF THE INVENTION AND OVERVIEW
`OF THE CHALLENGED PATENT
`A. Development Of The Invention
`
`Earl Woolfork is the named inventor on the challenged patent. Mr. Woolfork
`
`first conceived of his wireless audio inventions in the late 1990’s while exercising
`
`outdoors at the popular Santa Monica Steps in Los Angeles. Mr. Woolfork noticed
`
`that many people were having trouble with the wires connecting their audio players
`
`to their headsets, which interrupted their exercise routines. Using the benefit of his
`
`electrical engineering degree, Mr. Woolfork set out to create a solution that allows
`
`people to exercise free of wires, while still enjoying high quality music. Mr.
`
`Woolfork conceived of a mobile audio transmitter and separate mobile receiver that
`
`could communicate using radio signals to provide high quality audio data. Mr.
`
`Woolfork assigned his patent rights to his company, One-E-Way, Inc., where he is
`
`the Founder and CEO.
`
`One-E-Way is a minority-owned, family-run business that has worked to
`
`commercialize Mr. Woolfork’s inventions for over a decade. However, One-E-Way
`
`has faced tremendous business adversity and lacks the access and connections within
`
`the industry’s distribution channels that naturally cater to the larger electronics
`
`companies. Fortunately, in parallel with its commercialization efforts, One-E-Way
`
`has been able to sustain itself through successful litigation and licensing efforts with
`
`major international electronics companies. One-E-Way has now successfully
`
`-3-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`enforced and licensed its patents with the some of the most respected names in
`
`international consumer audio, such as Sony, Sennheiser and GN Netcom.
`
`B.
`
`Embodiments Described In The Specification
`
`The challenged patent is generally directed to a wireless digital audio system.
`
`Ex. 1001 at 1:57-61. The patent’s focus on a total wireless audio system, including
`
`a transmitter and a headphone, is represented in Figure 1, described as “a wireless
`
`digital audio system in accordance with the present invention:”
`
`Id. at Fig. 1 and 2:13-14.
`
`
`
`The patent discloses techniques to improve listening quality while reducing
`
`interference in order to provide private listening. The patent explains that, even
`
`
`
`-4-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`when multiple such systems operate in a shared space, “[e]ach receiver headphone
`
`50 user may be able to listen (privately) to high fidelity audio music, using any of
`
`the audio devices listed previously, without the use of wires, and without
`
`interference from any other receiver headphone 50 user, even when operated within
`
`a shared space.” Id. at 3:32-36. This is achieved through a series of disclosed
`
`components within the system’s claimed transmitter and/or receiver.
`
`C. The Claims
`
`The challenged patent has ten claims directed to specific embodiments of
`
`wireless digital audio systems or components within such a system. The Petition
`
`presents two Grounds that challenge claims 1, 3-6, and 10. The three elements Patent
`
`Owner will focus on in this Preliminary Response (reduced intersymbol interference
`
`coding, independent CDMA and direct conversion module) are included in every
`
`claim, including claim 4, which Petitioner uses as the basis for its obviousness
`
`analysis. Pet. 16. Claim 4 is reproduced in full at Pet. ii-iii. Although Patent
`
`Owner’s analysis focuses on three claim elements, Patent Owner’s analysis applies
`
`to every challenged claim.
`
`D.
`
`Preliminary Claim Construction
`
`Petitioner proposes that four terms be construed according to the constructions
`
`adopted in the ITC investigation, In re Certain Wireless Headsets, Investigation No.
`
`-5-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`337-TA-943, concerning the challenged patent at issue here. Specifically, Petitioner
`
`proposes the following constructions:
`
`Claim Term
`“reduced intersymbol interference
`coding”
`“configured for independent CDMA
`communication operation”
`
`“unique user code”
`
`“direct conversion module”
`
`
`Petitioner’s Requested Construction
`“coding that reduces intersymbol
`(inter-symbol) interference”
`“configured for code division multiple
`access (CDMA) communication
`operation performed independent of
`any central control”
`“fixed code (bit sequence) specifically
`associated with one user of a device(s)”
`“module for converting radio
`frequency to baseband or very near
`baseband in a single frequency
`conversion without an intermediate
`frequency”
`
`Pet. 7-8.
`
`The constructions above are taken from a 44-page claim construction opinion
`
`issued by the Administrative Law Judge presiding over the ITC investigation. Ex.
`
`1030. The constructions therein were based upon several rounds of briefing by One-
`
`E-Way, five ITC respondents (including Sony) and the ITC staff, and a two-day
`
`claim construction hearing and tutorial. Id. at 4-5. For purposes of this Preliminary
`
`Response, Patent Owner does not contest the proposed claim constructions. Patent
`
`Owner also notes that to the extent the exact form of any claim term above varies
`
`slightly from the challenged claims, Petitioner’s arguments do not appear to depend
`
`on such differences, and any such differences are not material to the arguments in
`
`this Preliminary Response.
`
`-6-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`Person of Ordinary Skill In The Art
`E.
`
`Petitioner posits that a “person of ordinary skill in the art as of December 2001
`
`would have possessed at least a bachelor’s degree in electrical engineering, and two
`
`years of experience in the design or implementation of wireless communications
`
`systems (or equivalent degree or experience).” Pet. 7. For purposes of this
`
`Preliminary Response, Patent Owner does not contest this level of skill proposed by
`
`Petitioner.
`
`F.
`
`Priority Date Of The Challenged Claims
`
`Without raising it as an issue on this Petition, Petitioner indicates it does not
`
`concede the priority date of the challenged claims. Pet. 10-11 n.3. Petitioner
`
`references IPR2016-01638, which sought to dispute the priority date of a related
`
`patent. Id. That IPR was terminated after oral hearing but before the Board had
`
`made a decision on the merits. Sony Corp. v. One-E-Way, IPR2016-01638, Paper
`
`42 (P.T.A.B. Feb. 9, 2018).
`
`While the presently challenged patent was issued before IPR2016-01638 was
`
`filed, IPR2016-01638 was disclosed to the PTO in a continuation application. See,
`
`e.g., Ex. 1101 in IPR2021-00286 at page 2. After disclosure of that IPR challenge
`
`to the PTO, including copies of the decision on institution and the oral hearing
`
`transcript, the PTO has nevertheless passed multiple continuation applications to
`
`issuance over that IPR challenge. See Exs. 1101 in IPR2021-00284 and -00286.
`
`-7-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`III. PETITIONER’S GROUNDS
`Petitioner presents two Grounds for inter partes review based on a total of
`
`five references:
`
`Exhibit
`
`1010
`
`1003
`
`1011
`
`1009
`
`1005
`
`Reference
`
`Shorthand Name
`
`Certified English Translation of KR Application No.
`20-1998-0018161 (“Ham”)
`
`Ham
`
`Sklar,
`Bernard
`Communications:
`Digital
`Fundamentals and Applications (1988)
`
`Sklar
`
`Xiang-Gen Xia, “New Precoding for Intersymbol
`Interference Cancellation Using Nonmaximally
`Decimated Multirate Filterbanks with Ideal FIR
`Equalizers,”
`IEEE Transactions on Signal
`Processing, Volume 45, Issue No. 10 (October
`1997)
`
`Xia
`
`John B. Groe and Lawrence E. Larson, CDMA
`Mobile Radio Design (2000)
`
`Groe
`
`Jaap C. Haartsen “The Bluetooth Radio System,”
`IEEE Personal Communications, Volume 7, Issue
`No. 1, February 2000
`
`Haartsen
`
`The two Grounds are:
`
`References
`
`Ham (EX1010), Sklar (EX1003),
`Xia (EX1011), Groe (EX1009)
`Ham (EX1010), Sklar (EX1003),
`Xia (EX1011), Groe (EX1009),
`Haartsen (EX1005)
`
`Ground
`
`
`1
`
`2
`
`
`
`-8-
`
`Basis
`
`Challenged
`Claims
`
`§ 103
`
`1, 3-6, 10
`
`§ 103
`
`1, 3-6, 10
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`IV. OVERVIEW OF THE REFERENCES RELIED UPON
`
`A. Ham
`
`The Ham reference submitted by Petitioner is a five-page English translation
`
`of “Korean Utility Model Laid-Open Publication No. 2000-0006888,” bearing the
`
`date April 25, 2000, and the title “Code division type transmission circuit and
`
`wireless headphone reception circuit.” Ex. 1010. Ham was submitted to the Patent
`
`Office during prosecution of a continuation application, but not cited as the basis for
`
`a rejection in that application or any of the subsequent continuation applications.
`
`Ex. 2002 at 3, 10.
`
`B.
`
`Sklar
`
`Sklar
`
`is a 750-page
`
`textbook entitled, “Digital Communications:
`
`Fundamentals and Applications,” bearing a copyright date of 1988. Ex. 1003.
`
`Portions of Sklar were submitted to the Patent Office during prosecution of a
`
`continuation application. Id. at 5, 11. Sklar states its intended purpose is to provide
`
`“comprehensive coverage” of digital communications, Ex. 1003 at 17, and that it
`
`deals with “the transmission of information (voice, video, or data) over a path
`
`(channel) that may consist of wires, waveguides, or free space.” Id. at 22.
`
`C. Xia
`
`Xia is a 10-page article entitled “New Precoding for Intersymbol Interference
`
`Cancellation Using Nonmaximally Decimated Multirate Filterbanks with Ideal FIR
`
`-9-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`Equalizers.” Ex. 1011. Xia appears in an October 1997 edition of a journal entitled,
`
`“IEEE Transactions on Signal Processing.” Id.
`
`D. Groe
`
`Groe is a 340-page textbook entitled, “CDMA Mobile Radio Design,” bearing
`
`a copyright date of 2000. Ex. 1009. Groe states that it “details the complete
`
`operation of a mobile phone.” Id. at 10. Groe describes the need for a network of
`
`“base stations” to establish the network architecture of the cellular communications
`
`that it addresses. Id. at 14.
`
`E. Haartsen
`
`Haartsen is a 9-page article entitled, “The Bluetooth Radio System.” Ex.
`
`1005. Haartsen was included in a February 2000 edition of a magazine entitled,
`
`“IEEE Personal Communications.” Haartsen describes the features of version 1.0
`
`of the Bluetooth wireless protocol, which was published in July 1999. Id. at 12.
`
`The Haartsen reference itself, along with portions of the Bluetooth 1.0b and
`
`1.1 specifications from 1999 and 2001, respectively, were disclosed to the PTO in a
`
`continuation application, which led to the issuance of a child patent to the challenged
`
`patent. Ex. 2003 at pages 1-2.
`
`V. GROUNDS 1 AND 2 FAIL
`
`Both of Petitioner’s Grounds 1 and 2 rely on Ham as the primary reference of
`
`four- and five-reference obviousness combinations, respectively. As a primary
`
`-10-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`reference, Ham cannot satisfy Petitioner’s burden of showing 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).
`
`In particular, Ham discloses fundamentally different methods from the
`
`challenged patent, and fails to disclose several key elements present in every
`
`challenged claim. For purposes of this Preliminary Response, Patent Owner will
`
`focus on three specific missing claim elements: (1) reduced intersymbol
`
`interference coding, (2) independent CDMA and (3) direct conversion module.
`
`Each of these three elements appears in every challenged claim. Thus, if Petitioner’s
`
`challenge fails with respect to even one of them, institution is unwarranted.
`
`On this record, Petitioner has failed to present a prima facie case of
`
`obviousness based on Ham. Obviousness asserted over a combination of references
`
`must be supported by a reason to combine that is based on rational underpinnings.
`
`See In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); In re Kahn, 441 F.3d
`
`977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 418 (2007)). “That requirement is a safeguard against hindsight bias,
`
`which is characterized by the ‘temptation to read into the prior art the teachings of
`
`the invention in issue.’” Auris Health Inc. v. Intuitive Surgical Operations, Inc.,
`
`IPR2019-01547, Paper 11 (March 3, 2021) (quoting KSR, 550 U.S. at 421).
`
`-11-
`
`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`“[A] patent composed of several elements is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, known in the prior art.”
`
`KSR, 550 U.S. at 418. “[I]t can be important to identify a reason that would have
`
`prompted a person of ordinary skill in the relevant field to combine elements in the
`
`way the claimed new invention does.” Id. As discussed below, Petitioner has failed
`
`to explain why a person of ordinary skill in the art would even consider modifying
`
`Ham, let alone do so in view of any of the several additional encyclopedic references
`
`Petitioner has selected to supplement Ham. Thus, the Petition must be denied.
`
`A. Ham Does Not Disclose Reduced Intersymbol Interference Coding
`
`Every challenged claim requires “reduced intersymbol interference coding.”
`
`Ex. 1001 (claims 1, 3-6 and 10) (“intersymbol interference” also referred to in the
`
`Petition as “ISI”, Pet. 35). As Petitioner admits, “Ham does not describe the use of
`
`coding specifically ‘to reduce intersymbol interference’ . . ..” Pet. 35 (emphasis
`
`original). To address this shortcoming in Ham’s disclosure, Petitioner argues that
`
`reduced intersymbol interference would be obvious in view of Sklar and Xia. Id.
`
`1.
`
`Petitioner establishes no motivation to add reduced ISI
`coding to Ham
`
`Regardless of what Sklar and Xia disclose, Petitioner has failed to establish
`
`why a person of ordinary skill in the art would see any need to address intersymbol
`
`interference given Ham’s disclosure. Ham does not mention intersymbol
`
`interference, nor does Ham even suggest the need to reduce any interference beyond
`
`-12-
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`
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`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`that which Ham states it has already prevented. Indeed, rather than suggesting the
`
`need to address intersymbol interference, Ham discloses no further need to address
`
`interference at all.
`
`In a section entitled, “Technical Problem to be Solved,” Ham states the
`
`following:
`
`The object of the present design is, in receiving audio signals
`wirelessly and playing the same with high quality sound, to provide a
`wireless headphone receiving circuit of a code division method that has
`a channel separation of 90 dB or more and a distortion ratio of 0.01%
`or more, which is equivalent to that of a compact disk, and a data
`transmission rate of 1.5 Mbps, to overcome the noise and interference
`of analog wireless headphones.
`
`Ex. 1010 at 2 (emphasis added). Thus, the object of Ham’s design is to “overcome
`
`the noise and interference of analog headphones,” and provide “high quality sound”
`
`that is “equivalent to that of a compact disk.” Id. After describing the details of its
`
`invention, Ham sets forth the results of the design in a section entitled, “Effect of the
`
`Design.” That disclosure in its entirety reads as follows:
`
`According to the present design, by using the code division
`method, by having a channel separation of 90dB or more and a
`distortion ratio of 0.01% or more, corresponding to the sound quality
`of audio using a compact disc, since the data transmission rate is set to
`1.5 Mbps so as to have high-quality data transmission capability, noise
`
`-13-
`
`
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`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`and interference are prevented from the audio signal applied to the
`headphone speakers, thereby providing high-quality audio to the user.
`
`Ex. 1010 at 3 (emphasis added).
`
`As the “effect” of Ham’s design reveals, not only does Ham provide no
`
`teaching about the need to address intersymbol interference, Ham teaches that its
`
`“present design” already accomplishes the stated goal of preventing noise and
`
`interference, and providing high-quality audio, equivalent to a compact disk, to the
`
`user. Id. Indeed, as Petitioner’s declarant highlights, perhaps unintentionally, Ham
`
`is unequivocal in describing how its design eliminates noise and interference. Ex.
`
`1002 ¶ 140 (listing quotes from Ham explaining that in Ham’s design, noise and
`
`interference “are prevented;” the object of the design is to “overcome” noise and
`
`interference; error correction and immunity processing is performed “so as not to be
`
`affected” by noise generated in the communication channel.). In contrast, Ham uses
`
`a term of degree in describing the performance of prior art headphones. Id. (quoting
`
`Ham at 2) (“[T]he sound quality of the audio signal output from the [prior art]
`
`headphones is reduced due to interference or collision with surrounding frequencies
`
`within a certain frequency band.”) (brackets original).
`
`“[R]ejections on obviousness grounds [require] . . . some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness.”
`
`See In re Kahn, 441 F.3d at 988 (cited with approval in KSR, 550 U.S. at 418). Here,
`
`-14-
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`
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`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`Petitioner provides no rational underpinning supporting its argument that a person
`
`of ordinary skill in the art would have reason or be motivated to address intersymbol
`
`interference in Ham’s design. Ham’s disclosure treats intersymbol interference as a
`
`non-existent concern in light of its design. Ex. 1010 at 3. Indeed, nothing in Ham
`
`suggests the need to further reduce interference of any kind. Ham explicitly states
`
`that, in its design, “noise and interference are prevented from the audio signal applied
`
`to the headphone speakers . . ..” Id. Thus, the assertion by Petitioner’s declarant
`
`that “Ham further teaches improving the quality of a wirelessly transmitted audio
`
`signal by reducing interference,” at best, mischaracterizes that reference, as the
`
`quotes from Ham he lists in support reveal. Ex. 1002 ¶ 140 (emphasis added).
`
`Accordingly, on the present record, Petitioner has failed to establish a prima
`
`facie basis for why a person of ordinary skill in the art would be motivated to modify
`
`Ham by adding reduced ISI coding to Ham’s design. Such an argument can only be
`
`based on impermissible hindsight. See Ex. 2008 at 6-7 (Ex parte Claus Grewe,
`
`Appeal No. 2019-000855, Application No. 14/376,426, October 31, 2019) (“The
`
`Examiner has not provided any findings or an adequate reasoning establishing a
`
`problem with Bonanni’s [reference 1] method for detecting compressor stall and
`
`surge to prevent compressor damage. Without a persuasive articulated reasoning
`
`based on rational underpinnings for modifying the method of Bonanni, according to
`
`Hoyte [reference 2], the Examiner’s rejection appears to be the result of hindsight
`
`-15-
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`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`analysis.”) (emphasis added) (citing In re Kahn, 441 F.3d at 988); see also Ex. 2009
`
`at 5-7 (Ex parte Jerry L. Allen, Appeal No. 2018-008208, Application No.
`
`14/712,101, July 1, 2020) (Board reversing examiner’s obviousness rejection when
`
`Conti reference already addressed cable insertion problems allegedly supporting
`
`combination with Holland reference, thus record failed to show that Holland would
`
`resolve alleged problems in Conti.) Petitioner’s fundamental failure to establish its
`
`prima facie obviousness case with respect to the reduced intersymbol interference
`
`element is sufficient reason alone to deny institution, as reduced intersymbol
`
`interference coding is required by every challenged claim.
`
`2.
`
`Petitioner fails to show that a skilled artisan would look to
`Sklar and Xia to alter Ham with respect to the reduced ISI
`limitation
`
`Because the present record fails to establish any motivation to address
`
`intersymbol interference in view of Ham’s teaching that it has prevented
`
`interference, the theoretical combination of Ham with Sklar and Xia need not be
`
`addressed. Nevertheless, Petitioner also fails to establish why a person of ordinary
`
`skill would look to Sklar and Xia in particular to solve the nonexistent problem in
`
`Ham of reducing intersymbol interference.
`
`a)
`
`The record provides no motivation to combine Ham
`with Sklar
`
`According to Petitioner, Sklar suggests that coding for ISI “may” be desirable
`
`because “interference caused by the user’s own signal may not be adequately
`
`-16-
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`
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`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`addressed by techniques that aim to reduce more general forms of interference (e.g.,
`
`from other signals in the same or adjacent frequency bands). (Sklar, pp.71-72).” Pet.
`
`39 (emphasis added); see also Ex. 1002 at ¶ 161 (Petitioner’s declarant stating that
`
`“it is possible that the outgoing CDMA signal from the user’s own transmitter could
`
`cause interference with itself along its transmission path to the wireless receiver”)
`
`(emphasis added). Thus, Petitioner’s stated motivation for combining Ham with
`
`Sklar is not only passive (coding for ISI “may” be desirable), but also subject to
`
`Petitioner’s lone condition (interference from the user’s signal “may not” be
`
`adequately addressed). However, as mentioned, Ham teaches that “according to [its]
`
`present design . . . noise and interference are prevented.” Ex. 1010 at 3. Thus, the
`
`lone condition upon which Petitioner’s passive motivation to employ reduced ISI
`
`coding depends is nonexistent in Ham’s design, because interference reduction is
`
`already “adequately addressed” by Ham’s design. Petitioner’s argument for a
`
`motivation to combine Sklar with Ham thus collapses altogether in view of Ham’s
`
`disclosure.
`
`Petitioner also argues that “although the use of CDMA taught by Ham would
`
`reduce interference from other users’ signals in the same frequency band, it is
`
`possible that the outgoing CDMA signal from the user’s own transmitter could cause
`
`interference with itself along its transmission path to the wireless receiver. (EX1002,
`
`¶161.).” Pet. 39-40 (emphasis added). First, Petitioner’s statement that Ham teaches
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`-17-
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`
`
`IPR2021-00283
`U.S. Patent 8,131,391 B2 (Claims 1, 3-6, 10)
`its design would “reduce” interference misrepresents H
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