Trials@uspto.gov
`571-272-7822
`
`Paper 6
`Date: June 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`Petitioner,
`v.
`ONE-E-WAY, INC.,
`Patent Owner.
`
`IPR2021-00283
`Patent 8,131,391 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 6
`Date: June 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`Petitioner,
`v.
`ONE-E-WAY, INC.,
`Patent Owner.
`
`IPR2021-00283
`Patent 8,131,391 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00283
`Patent 8,131,391 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1, 3–6 and 10 (the “challenged claims”) of U.S. Patent
`No. 8,131,391 B2 (Ex. 1001, “the ’391 patent”). Paper 2 (“Pet.”). One-E-
`Way, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 5 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under
`section 313 shows that 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 (2018); see also 37 C.F.R § 42.4(a) (“The Board
`institutes the trial on behalf of the Director.”). The reasonable likelihood
`standard is “a higher standard than mere notice pleading,” but “lower than
`the ‘preponderance’ standard to prevail in a final written decision.” Hulu,
`LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13
`(PTAB Dec. 20, 2019) (precedential).
`For the reasons provided below and based on the record before us, we
`determine Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we do not institute an inter partes review.
`
`B. Real Parties in Interest
`Petitioner states “Apple Inc. . . . and its wholly-owned subsidiary
`Beats Electronics, LLC [(“Beats”)] . . . are the real parties-in-interest to this
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`Patent 8,131,391 B2
`inter partes review.” Pet. 1. Patent Owner states that “[t]he real party in
`interest is One-E-Way, Inc.” Paper 4 (Patent Owner’s Mandatory Notice), 1.
`
`C. Related Proceedings
`The parties identify the following district court case involving
`the ’391 patent: One-E-Way, Inc. v. Apple Inc., Case No. 2:20-cv-06339
`(C.D. Cal. filed July 16, 2020). Pet. 1 (citing Ex. 1022; Ex. 1023); Paper 4,
`1. Petitioner also identifies two prior district court actions in which
`infringement of the ’391 patent was alleged by One-E-Way against JayBird
`Gear, LLC: One-E-Way, Inc v. JayBird Gear, LLC, Case No. 2:12-cv-00601
`(C.D. Cal. filed Jan. 23, 2012); and One-E-Way, Inc v. JayBird Gear, LLC,
`Case No. 2:12-cv-06135 (C.D. Cal. filed July 16, 2012). Pet. 1 (citing
`Ex. 1024; Ex. 1025). Petitioner notes that “[b]oth actions were terminated
`in 2013.” Id.
`Petitioner further identifies a prior ITC investigation in which One-E-
`Way alleged infringement of related patents against a number of
`respondents: In re Certain Wireless Headsets, Investigation No. 337-
`TA-943 (the “ITC investigation”). Pet. 1–2. According to Petitioner, One-
`E-Way’s original complaint named Beats as one of the respondents, but
`One-E-Way subsequently moved to withdraw its allegations against Beats,
`and the ITC investigation was terminated as to Beats. Id. Petitioner states
`that, during the course of the investigation, the ITC issued a claim
`construction ruling (the “ITC Claim Construction Order”). Id. at 2.
`Patent Owner additionally identifies four IPRs against patents related
`to the ’391 patent: IPR2021-00284, IPR2021-00285, IPR2021-00286, and
`IPR2021-00287. Paper 4, 1.
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`Patent 8,131,391 B2
`D. The ’391 Patent (Ex. 1001)
`The ’391 patent is titled “Wireless Digital Audio System,” issued on
`March 6, 2012, and relates to a portable audio source operatively coupled to
`a digital audio transmitter, and an audio receiver coupled to a headphone set.
`Ex. 1001, codes (45), (54), (57). One embodiment of the system is shown in
`Figure 1, reproduced below:
`
`
`As shown in Figure 1, wireless digital audio music system 10 includes
`battery powered transmitter 20 connected to portable music player or music
`audio source 80. Ex. 1001, 2:30–33. The ’391 patent discloses that
`transmitter 20 is connected to music audio source 80 via analog headphone
`jack 82 using headphone plug 22. Id. at 2:33–36. Transmitter 20 has
`transmitting antenna 24 for transmitting a spread spectrum modulated signal
`to receiving antenna 52 of battery powered headphone receiver 50, which is
`coupled to headphones 55 including headphone speakers 75. Id. at 2:36–43.
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`IPR2021-00283
`Patent 8,131,391 B2
`The audio transmitter portion of the wireless digital audio system is
`shown in more detail in Figure 2 of the ’391 patent, reproduced below:
`
`
`
`As shown in Figure 2, the audio transmitter digitizes the signal from
`audio source 80 using analog to digital converter (ADC) 32, and then
`processes the digitized signal using digital low pass filter 34 and encoder 36.
`Ex. 1001, 2:45–49. The ’391 patent discloses that the signal is passed
`through channel encoder 38 to reduce the effects of channel noise, and then
`modulated for transmission by modulator 42. Id. at 2:49–52. Code
`generator 44 creates a “unique user code” that is “specifically associated
`with one wireless digital audio system user,” and “is the only code
`recognized by the battery powered headphone receiver 50 operated by a
`particular user.” Id. at 2:54–59. The signal is then passed to spread
`spectrum DPSK (differential phase shift key) transmitter 48, which provides
`further noise immunity, and to antenna 24 for transmission. Id. at 2:54–59,
`2:66–3:7.
`The audio receiver portion coupled to the wireless headphones is
`shown in more detail in Figure 3 of the ’391 patent, reproduced below:
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`Patent 8,131,391 B2
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`As shown in Figure 3, antenna 52 receives the spread spectrum
`modulated signal from transmit antenna 24 (Figure 2) and communicates it
`to wideband bandpass filter (BPF). Ex. 1001, 3:5–7. The down converted
`output of direct conversion receiver or module 56 may be summed by
`receiver summing element 58 with receiver code generator 60. Id. at 3:10–
`13. The ’391 patent explains that the “receiver code generator 60 may
`contain the same unique wireless transmission of a signal code word that
`was transmitted by audio transmitter 20 specific to a particular user,” and
`“[o]ther code words from wireless digital audio systems 10” as well as
`“other device transmitted wireless signals operating in the wireless digital
`audio spectrum of digital audio system 10” may “appear as noise to audio
`receiver 50.” Id. at 3:13–20. According to the ’391 patent, “[t]his code
`division multiple access (CDMA) may be used to provide each user
`independent audio enjoyment.” Id. at 3:20–22.
`Returning to Figure 3, the signal from direct conversion receiver 56 is
`processed by demodulator 62 to demodulate the signal elements modulated
`in audio transmitter 20, and passed to block de-interleaver 64 which decodes
`the bits of the digital signal encoded in the block interleaver 40 in Figure 2.
`Id. at 3:22–27. According to the ’391 patent, Viturbi decoder 66 decodes
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`Patent 8,131,391 B2
`bits encoded by channel encoder 38 in audio transmitter 20 (Figure 2), and
`source decoder 68 further decodes the coding applied by encoder 36. Id.
`at 3:28–31. Digital to analog converter (DAC) 70 converts the digital signal
`into an analog audio signal, and analog low pass filter 72 filters the analog
`audio signal to pass a signal in the frequency range of approximately 20 Hz
`to 20 KHz. Id. at 4:20–25. The signal is then passed to power amplifier 74,
`which powers headphone speakers to provide high quality, low distortion
`music to a user wearing headphones 55. Id. at 4:24–27.
`
`E. Illustrative Claims
`As noted previously, Petitioner challenges claims 1, 3–6, and 10 of
`the ’391 patent, all of which are independent. Pet. 4; Ex. 1001, 4:49–7:48.
`Claim 4 is illustrative and is reproduced below.
` 4. [(pre)] A portable wireless digital audio system for digital trans
`mission of an original audio signal representation from a portable
`audio player to a digital audio receiver, said portable wireless
`digital audio system comprising:
`[(a)] a digital audio transmitter operatively coupled to said audio
`player and transmitting a unique user code with said original audio
`signal representation in packet format, wherein said digital audio
`transmitter coupled to said audio player is capable of being moved
`in any direction during operation, said digital audio transmitter
`comprising:
`[(b)] an encoder operative to encode said original audio signal
`representation to reduce intersymbol interference;
`[(c)] a digital modulator module configured for independent code
`division multiple access (CDMA) communication operation and
`utilizing differential phase shift keying (DPSK) to modulate said
`original audio signal representation;
`[(d)] said digital audio receiver capable of being moved in any
`direction during operation and in direct wireless communication
`with said digital audio transmitter, said digital audio receiver
`comprising:
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`Patent 8,131,391 B2
`[(e)] a direct conversion module configured to capture packets and
`the correct bit sequence within the packets aided by lowering
`signal detection error through reduced intersymbol interference
`coding of said audio representation signal respective to said mobile
`digital audio receiver and mobile said digital audio transmitter
`operatively coupled to said audio player, said packets embedded in
`the received spread spectrum signal, the captured packets
`corresponding to the unique user code;
`[(f)] a digital demodulator configured for independent CDMA
`communication operation;
`[(g)] a decoder operative to decode the applied reduced inter
`symbol interference coding of said original audio signal
`representation;
`[(h)] a digital-to-analog converter generating an audio output of
`said original audio signal representation; and
`[(i)] a module adapted to reproduce said generated audio output,
`said audio having been wirelessly transmitted from said audio
`player virtually free from interference from device transmitted
`signals operating in the wireless digital audio system spectrum.
`Ex. 1001, 6:17–59 (bracketed paragraph identifiers added and do not impact
`any analysis).
`
`F. Evidence of Record
`Petitioner relies upon the following references in the record:
`Bernard Sklar, Digital Communications: Fundamentals
`and Applications (1988) (Ex. 1003, “Sklar”);
`Jaap C. Haartsen, “The Bluetooth Radio System,” IEEE
`Personal Communications, Vol. 7, Issue No. 1, Feb. 2000
`(Excerpt) (Ex. 1005, “Haartsen”);
`John B. Groe and Lawrence E. Larson, CDMA Mobile
`Radio Design (2000) (Ex. 1009, “Groe”);
`KR Application No. 20-1998-0018161, published
`Apr. 25, 2000 (as translated) (Ex. 1010, “Ham”);
`Xiang-Gen Xia, “New Precoding for Intersymbol
`Interference Cancellation Using Nonmaximally Decimated
`
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`Patent 8,131,391 B2
`Multirate Filterbanks with Ideal FIR Equalizers,” IEEE
`Transactions on Signal Processing, Vol. 45, Issue No. 10
`(Oct. 1997) (Ex. 1011, “Xia”).
`Pet. i–iii, 4.
`
`Petitioner submits the Declaration of Regis J. Bates, Jr. (“Mr. Bates,”
`(Ex. 1002). Patent Owner submits the Declaration of Joseph C.
`McAlexander (“Mr. McAlexander,” Ex. 2001).
`
`G. Asserted Challenges to Patentability
`Petitioner challenges the patentability of claims 1, 3–6, and 10 of
`the ’391 patent based on the following combination of references:
`Claims Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 3–6, and 10
`1031
`Ham, Sklar, Xia, Groe,
`1, 3–6, and 10
`103
`Ham, Sklar, Xia, Groe, Haartsen
`
`
`
`II. DISCUSSION
`
`A. Claim Construction
`A claim “shall be construed using the same claim construction
`standard that would be used to construe the claim in a civil action under 35
`U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Petitioner requests that the
`Board adopt the constructions of several claim terms from the ITC
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective
`as of March 16, 2013. The application for the ’391 patent was filed before
`March 16, 2013, and includes a priority claim to an application filed before
`this date. Ex. 1001, code (22), (63). Accordingly, for purposes of
`institution, we apply the pre-AIA versions of 35 U.S.C. § 103.
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`Patent 8,131,391 B2
`investigation. Pet. 7–8. Pertinent to this Decision, Petitioner requests that
`the Board adopt the ITC’s construction of the two terms2 listed below:
`
`“unique user code”
`
`Claim Term
`“configured for independent
`CDMA communication
`operation”
`
`Reference(s)/Basis
`“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)”
`Pet. 7–8. Patent Owner states that, at this stage of the proceeding, it does not
`contest Petitioner’s proposed constructions of these claim terms. Prelim.
`Resp. 6.
`For purposes of this Decision, we adopt Petitioner’s proposed
`constructions. We, therefore, construe “configured for independent CDMA
`communication operation” to mean “configured for code division multiple
`access (CDMA) communication operation performed independent of any
`central control,” and “unique user code” to mean “fixed code (bit sequence)
`specifically associated with one user of a device(s).”
`Based on our review of the Petition and Preliminary Response, we do
`not believe that any other claim terms require express construction at this
`stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
`
`
`2 Petitioner also requests that we adopt the ITC’s constructions of two
`additional claim terms, “reduced intersymbol interference coding” and
`“direct conversion module.” Pet. 7–8. We need not construe these claim
`terms, however, to resolve the issues presented in the Petition.
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`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, objective evidence
`of non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior
`art elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`
`3 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
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`Patent 8,131,391 B2
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of the alleged invention “would have possessed at least a bachelor’s degree
`in electrical engineering, and two years’ experience in the design or
`implementation of wireless communications systems (or equivalent degree
`or experience).” Pet. 7 (citing Ex. 1002 ¶ 11). Patent Owner states that, for
`purposes of its Preliminary Response, it does not contest Petitioner’s
`proposed level of ordinary skill. Prelim. Resp. 7.
`At this stage of the proceeding, we adopt Petitioner’s assessment of
`the level of skill in the art, which is consistent with the ’391 patent and the
`asserted prior art of record.
`
`D. Alleged Obviousness of Claims 1, 3–6, and 10 In View of Ham, Sklar,
`Xia, and Groe
`Petitioner contends claims 1, 3–6, and 10 would have been obvious in
`view of the teachings in Ham, Sklar, Xia, and Groe. Pet. 16–58. Patent
`Owner disagrees, arguing, inter alia, that the claimed combination does not
`teach “independent code division multiple access communication (CDMA)”
`as required by all of the challenged claims. Prelim. Resp. 10–43. For the
`reasons discussed below, we determine Petitioner has not established a
`reasonable likelihood that the challenged claims are unpatentable.
`
`1. Overview of Ham (Ex. 1010)
`Ham is a Korean patent application publication directed to “a wireless
`head phone transmission and reception circuit,” and, in particular, “relates to
`a code division type transmission circuit and wireless headphone reception
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`circuit that transmit[s] and receive[s] signals using the Code Division
`Multiple Access (CDMA) method.” Ex. 1010, Abstract, 2. Ham explains
`that:
`
`[T]he code division multiple access method (hereinafter
`referred to as the code division method) is a method of sharing
`a frequency by extending a signal into a frequency band that is
`much wider than the bandwidth of the required amount of
`information. In other words, it shares a frequency and time and
`maintains orthogonality with a unique code assigned to it. In
`this case, in the code division method, a signal to be transmitted
`is extended by receiving a unique Pseudo Random (PN) code.
`Ex. 1010, 2.
`Ham discloses a transmission circuit for wirelessly transmitting a
`signal as shown in Figure 1, reproduced below:
`
`
`As shown in Figure 1, the transmission circuit includes antenna A,
`codec unit 7 for encoding a signal applied from signal source 8, central
`control modem unit 6 for performing error correction on the signal output
`from codec unit 7, base band unit 5 that receives the output of central control
`modem unit 6, converts it into an intermediate frequency, and outputs the
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`converted signal, and amplification, filtering, and gain control units 1a, 2a,
`1b, 2b, 3, and 4. Ex. 1010, 2.
`Ham further discloses a wireless headphone receiving circuit as
`shown in Figure 2, reproduced below:
`
`
`As shown in Figure 2, the receiving circuit includes antenna A for
`receiving the wireless signal, base band unit 5 for processing the gain
`controlled signal, central control modem 6 for removing an error correction
`and pseudorandom code, codec 7 for decoding the audio signal, and
`amplifier 1c that amplifies the signal from codec unit 7 and passes it to
`output unit 9. Ex. 1010, 2, 3.
`
`2. Overview of Sklar (Ex. 1003)
`Sklar is a textbook titled “Digital Communications: Fundamentals and
`Applications,” and “presents the ideas and techniques fundamental to digital
`communications systems.” Ex. 1003, 2. Specifically, Sklar discusses
`“spread-spectrum” systems in which “the transmission bandwidth employed
`is much greater than the minimum bandwidth required to transmit the
`information.” Id. at 537. “Spreading,” Sklar explains, “is accomplished by
`means of a spreading signal, often called a code signal, which is
`independent of the data.” Id. At the receiver, “despreading” (recovering the
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`original data) “is accomplished by the correlation of the received spread
`signal with a synchronized replica of the spreading signal used to spread the
`information.” Id.
`Sklar further explains that code-division multiple access (CDMA) is a
`technique that uses spread-spectrum methods for multiple access “in order to
`share a communications resource among numerous users in a coordinated
`manner.” Ex. 1003, 541–542. In CDMA, “each simultaneous user employs
`a unique spread-spectrum signaling code,” which “provides communication
`privacy between users with different spreading signals.” Id. at 542. Thus,
`according to Sklar, “[a]n unauthorized user (a user not having access to a
`spreading signal) cannot easily monitor the communications of the
`authorized users.” Id.
`
`3. Analysis of Independent Claim 4
`Claim 4 recites a “wireless digital audio system” with a “digital
`modulator module” that “transmit[s] a unique user code” and “is configured
`to use independent code division multiple access (CDMA) communication”
`so that “audio signal representation[s] in packet format” are “embedded in
`[a] received spread spectrum signal” where “the captured packets
`correspond[] to the unique user code.” Ex. 1001, 6:17–59. As discussed
`above, Petitioner requests that we construe the phrase “configured to use
`independent code division multiple access communication” to mean
`“configured for code division multiple access (CDMA) communication
`operation performed independent of any central control,” and Patent Owner
`does not dispute this construction. Pet. 7–9; Prelim. Resp. 6; see § II.A,
`supra.
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`Petitioner asserts that “Ham’s CDMA is ‘independent of any central
`control’ because Ham discloses and suggests a one-to-one correspondence
`between a transmission circuit and reception circuit.” Pet. 46 (citing
`Ex. 1010, 2–3, Figs. 1–2) (emphasis omitted). Petitioner also asserts that
`“Ham nowhere suggests any control or coordination of communications
`between transmission and reception circuits by a centralized facility.” Id.
`(citing Ex. 1002 ¶¶ 185–190).
`Patent Owner responds that Petitioner’s “citations establish only that
`Ham’s transmission circuit transmits signals to the reception circuit using
`the CDMA method,” and “[n]othing in those citations mentions any
`supposed ‘one-to-one correspondence.’” Prelim. Resp. 26 (citing Ex. 1002
`¶ 218). Patent Owner also responds that Petitioner “ignores the evidence
`pointing to Ham’s use of centralized control, such as Ham’s express
`disclosure that its code division method ‘maintains orthogonality.’” Id. at 27
`(citing Pet. 46; Ex. 1002 ¶ 185; Ex. 1010, 2). According to Patent Owner,
`“[o]ne of ordinary skill in the art would . . . understand that maintaining
`orthogonality is an indication of centralized control.” Id. at 29 (citing
`Ex. 2001 ¶ 16).
`On this record, Petitioner does not show sufficiently that Ham teaches
`“independent code division multiple access communication” under the claim
`construction agreed to by the parties and adopted for purposes of this
`Decision. As discussed above, at this stage of the proceeding, the parties
`agree to the ITC’s construction of the phrase “configured to use independent
`code division multiple access communication” as “configured for code
`division multiple access (CDMA) communication operation performed
`independent of any central control.” Pet. 7–8; Prelim. Resp. 6. The ITC’s
`construction is consistent with the ’391 patent’s disclosure of a CDMA
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`system that uses a code generator in the transmitter to create a unique
`spreading code, rather than receiving the spreading code from a central
`controller. See Ex. 1001, 2:64–3:1 (disclosing that “[t]he battery powered
`transmitter 20 may contain a code generator 44 that may be used to create a
`unique user code” that “is specifically associated with one wireless digital
`audio system user”); Ex. 1002 ¶ 42. Thus, the ’391 patent’s system
`performs “independent code division multiple access communication” by
`having the transmitter generate the CDMA spreading code, rather than by
`having it be assigned by a central system.
`Petitioner, though, does not show sufficiently that Ham teaches
`CDMA performed independent of any central control. Ham teaches a
`CDMA system that “shares all frequency and time and maintains
`orthogonality with a unique code assigned to it.” Ex. 1010, 2 (emphasis
`added). Patent Owner presents evidence that Ham’s teaching of a CDMA
`system that “maintains orthogonality” indicates the system depends on a
`central controller to assign the spreading codes. Prelim. Resp. 30–31;
`Ex. 2001 ¶ 16. Patent Owner’s declarant, Mr. McAlexander, testifies in
`support of Patent Owner’s position. Specifically, Mr. McAlexander explains
`that “in a wireless communications system in which multiple user devices
`communicate wirelessly in the same frequency and time, orthogonality can
`only be maintained by providing each user device with a spreading code
`known to be orthogonal to each spreading code being used by another user
`device.” Ex. 2001 ¶ 16. Mr. McAlexander further explains that “[i]n Ham’s
`system, this would require centralized control ensuring that all Ham’s
`assigned PN codes have a cross-correlation value of zero.” Id.
`Petitioner does not present contrary evidence showing that Ham’s
`orthogonal codes do not require assignment by a central controller. To the
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`contrary, Petitioner’s own arguments in its second challenge (which we
`address in detail below) support Mr. McAlexander’s testimony. Petitioner’s
`second challenge relies on a proposed combination that includes Haartsen,
`which, according to Petitioner, teaches a CDMA system that does not
`require a central controller. Pet. 60–68; id. at 63 (“Haartsen describes the
`master’s device identity being transmitted as an access code.”); id. at 66
`(“The transmitter need not . . . be assigned a unique PN code by a third
`party.”); Ex. 1002 ¶¶ 257, 263. Petitioner asserts that one of the reasons it
`would have been obvious to combine Ham and Haartsen is that Haartsen’s
`CDMA system “can benefit Ham” by “allow[ing] a transmitter to set up a
`frequency hopping connection with a receiver in the absence of any
`coordination by a third party, such as a central controller.” Pet. 66
`(emphasis added) (citing 1005, 28); see Ex. 1002 ¶ 263. In other words,
`Petitioner argues that using Haartsen’s CDMA system would have benefitted
`Ham by eliminating Ham’s need for coordination by a central controller.
`Pet. 66; Ex. 1002 ¶ 263. This appears to be an acknowledgement by
`Petitioner that Ham’s CDMA system involves coordination by a central
`controller.
`As discussed above, for the challenge without Haartsen, Petitioner
`relies solely on Ham as teaching “independent code division multiple access
`communication.” Pet. 46. But, for the foregoing reasons, the evidence of
`record at this stage of the proceeding indicates that Ham’s CDMA system
`depends on a central controller in order to assign codes in a manner that
`maintains orthogonality, and, thus, does not teach CDMA performed
`“independent of any central control,” as required by Petitioner’s proposed
`construction. As a result, Petitioner does not demonstrate a reasonable
`likelihood of prevailing in showing that claim 4 would have been obvious to
`
`18
`
`
`
`IPR2021-00283
`Patent 8,131,391 B2
`a person of ordinary skill in the art in view of the combined teachings of
`Ham, Sklar, Xia, and Groe.
`
`4. Analysis of Independent Claims 1, 3, 5, 6, and 10
`Petitioner relies on the same arguments and evidence for claims 1, 3,
`5, 6, and 10 as it put forth for claim 4. See Pet. 68–74. Thus, for the same
`reasons discussed above for claim 4, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claims 1, 3, 5, 6, and 10
`would have been obvious over Ham, Sklar, Xia, and Groe.
`
`E. Alleged Obviousness of Claims 1, 3–6, and 10 in View of Ham, Sklar,
`Xia, Groe, and Haartsen
`Petitioner contends claims 1, 3–6, and 10 would have been obvious in
`view of Ham, Sklar, Xia, Groe, and Haartsen. Pet. 67–69. For the reasons
`discussed below, we determine Petitioner has not established a reasonable
`likelihood that the challenged claims are unpatentable.
`
`1. Overview of Haartsen (Ex. 1005)
`Haartsen is an article from IEEE Personal Communications entitled
`“The Bluetooth Radio System.” Ex. 1005, 28. Haartsen describes the
`“Bluetooth technology” as “a new universal radio interface” that “has been
`developed enabling electronic devices to communicate wirelessly via short-
`range ad hoc radio connections.” Id. Haartsen explains that Bluetooth uses
`frequency hopping CDMA (FH-CDMA) for its multiple access scheme. Id.
`at 29–30. The particular frequency hopping sequence is determined by the
`unit that controls the FH channel, which is called the “master,” and the
`master’s native clock also defines the phase in the hopping sequence. Id.
`at 30. The other participants in the communication are called “slaves,” and
`use the master identity to select the same hopping sequence and add time
`
`19
`
`
`
`IPR2021-00283
`Patent 8,131,391 B2
`offsets to their respective native clocks to synchronize to the frequency
`hopping. Id.
`Haartsen explains that the Bluetooth system uses packet-based
`transmission in which each packet starts with an access code, followed by a
`packet header, and ending with the user payload. Ex. 1005, 31. The access
`code “has pseudo-random properties” and “includes the identity of the
`piconet master.” Id. All packets exchanged on the channel are identified by
`this master identity, and the packet will only be accepted by the recipient if
`the access code matches the access code corresponding to the piconet
`master. Id.
`
`2. Analysis of the Challenged Claims
`This challenge to patentability is based on and builds upon
`Petitioner’s alternative mapping arguments, which uses Sklar’s frequency
`hopping CDMA (FH-CDMA) to teach the “unique user code” required by
`the claims. Pet. 60–62; see id. at 30–34. In its first challenge, Petitioner
`asserts that a key feature of Sklar’s FH-CDMA is “[e]ach user employs a
`pseudonoise (PN) code, orthogonal (or nearly orthogonal) to all other user
`codes, that dictates the frequency hopping band assignments,” and argues
`that this PN code is the “unique user code” recited in the claims. Id. at 30–
`34. In this challenge, however, Petitioner relies on Haartsen’s Bluetooth
`implementation of FH-CDMA in lieu of Sklar’s FH-CDMA system. Id.
`at 62–63. More specifically, Petitioner argues Haartsen teaches a “unique
`user code” determined from the device identity of a Bluetooth transmitter
`that is used to define the frequency hop sequence, rather than relying on
`Sklar’s orthogonal PN codes to teach the “unique user code” for defining the
`frequency hop sequence. Id.
`
`20
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`
`
`IPR2021-00283
`Patent 8,131,391 B2
`Petitioner explains that for this challenge it is including Haartsen
`because “Patent Owner’s Infringement Contentions appear to interpret a
`‘unique user code’ as met by Bluetooth’s use of a device address associated
`with the transmitter.” Pet. 60 (citing Ex. 1016, Ex. A at 23–24). According
`to Petitioner, Patent Owner “appears to apply an interpretation of ‘unique
`user code’ that would be met by (current) Bluetooth’s use of a device
`identity associated with the transmitter (‘master’), from which the hop
`pattern and channel access code are derived.” Id. at 61. Petitioner disputes
`Patent Owner’s apparent construction of “unique user code” as applying to
`Bluetoo
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