Trials@uspto.gov
`571-272-7822
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`
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`Paper 7
`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.
`____________
`
`IPR2021-00284
`Patent 10,468,047 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
`Paper 7
`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.
`____________
`
`IPR2021-00284
`Patent 10,468,047 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2021-00284
`Patent 10,468,047 B2
`
`
`I.
`INTRODUCTION
`A. Background and Summary
`Apple Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting
`an inter partes review of claims 1–16 (“the challenged claims”) of U.S.
`Patent No. 10,468,047 B2 (Ex. 1101, “the ’047 patent”). One-E-Way, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to
`the Petition.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . 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(a). We
`determine Petitioner does not demonstrate a reasonable likelihood of
`prevailing in showing that at least one of the challenged claims of the ’047
`patent is unpatentable. Accordingly, the Petition is denied, and no trial is
`instituted.
`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 inter
`partes review.” Pet. 1. Patent Owner states “[t]he real party in interest is
`One-E-Way, Inc.” Paper 5 (Patent Owner’s Mandatory Notices), 1.
`C. Related Matters
`The parties identify the following district court case involving
`the ’047 patent: One-E-Way, Inc. v. Apple Inc., Case No. 2:20-cv-06339
`(C.D. Cal.). Pet. 1; Paper 5, 1.
`Petitioner also identifies a prior ITC investigation in which Patent
`Owner alleged infringement of related patents against a number of
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`respondents: In re Certain Wireless Headsets, Investigation No. 337-TA-
`943 (the “ITC investigation”). Pet. 1. According to Petitioner, Patent
`Owner’s original complaint named Beats as one of the respondents, but
`Patent Owner subsequently moved to withdraw its allegations against Beats,
`and the ITC investigation was terminated as to Beats. Id. at 1–2. Petitioner
`further states that, during the course of the ITC investigation, the ITC issued
`a claim construction ruling (the “ITC Claim Construction Order”). Id. at 2.
`Patent Owner additionally identifies four petitions for inter partes
`review against patents related to the ’047 patent: IPR2021-00283, IPR2021-
`00285, IPR2021-00286, and IPR2021-00287. Paper 5, 1.
`D. The ’047 Patent
`The ’047 patent relates to a wireless digital audio system including a
`portable audio source operatively coupled to a digital audio transmitter, and
`an audio receiver coupled to a headphone set. Ex. 1101, code (57). An
`embodiment of the system is shown in Figure 1, reproduced below:
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`Id. at Fig. 1. 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. Id. at 2:36–39. Transmitter 20 is connected to
`music audio source 80 via analog headphone jack 82 using headphone
`plug 22. Id. at 2:39–42. 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 2:42–49.
`The audio transmitter portion of the wireless digital audio system is
`shown in more detail in Figure 2, reproduced below:
`
`
`Id. at Fig. 2. 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.
`Id. at 2:51–55. 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 2:55–58. 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 2:60–66. The signal is then
`passed to spread spectrum differential phase shift key (“DPSK”)
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`transmitter 48, which provides further noise immunity, and to antenna 24 for
`transmission. Id. at 2:58–60.
`The audio receiver portion coupled to the wireless headphones is
`shown in more detail in Figure 3, reproduced below:
`
`
`Id. at Fig. 3. 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 54. Id. at 3:5–13. The output of bandpass
`filter 54 is summed with the output of receiver code generator 60, and
`communicated to direct conversion receiver 56. Id. at 3:5–11, 3:16–19.
`The ’047 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 3:19–26. According to the ’047 patent, “[t]his code
`division multiple access (CDMA) may be used to provide each user
`independent audio enjoyment.” Id. at 3:26–28.
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`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 block interleaver 40 (Figure 2). Id.
`at 3:28–34. Viterbi decoder 66 decodes the 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 3:34–37. 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 4:26–31.
`The signal is then passed to power amplifier 74, which powers headphone
`speakers 75 to provide high quality, low distortion music to a user wearing
`headphones 55. Id. at 4:31–35.
`E. Illustrative Claim
`Of the challenged claims, claims 1 and 8 are independent. Claim 1 is
`
`reproduced below.
`1. A portable spread spectrum audio receiver configured
`to receive and store a unique user code, said portable spread
`spectrum receiver configured to receive wireless modulation
`transmissions from a spread spectrum transmitter coupled to a
`music audio source, said wireless modulation transmissions
`representative of an audio signal representation, said portable
`spread spectrum audio receiver comprising:
`a direct conversion module configured to receive wireless
`modulation transmissions representative of said audio signal
`representation and which have been processed to reduce
`intersymbol interference, and wherein said portable spread
`spectrum audio receiver further processes said received wireless
`modulation transmissions for reduction of intersymbol
`interference;
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`a digital-to-analog converter (DAC) configured to
`provide an analog audio output signal corresponding to said
`audio signal representation;
`a speaker configured to generate an audio signal
`corresponding to said analog audio output signal, wherein said
`generated audio signal does not include audible audio content
`originating from any audio signals transmitted in a spectrum
`used by said spread spectrum transmitter that do not originate
`from said spread spectrum transmitter;
`wherein said portable spread spectrum audio receiver is
`configured to use independent code division multiple access
`communication and to use said unique user code to
`communicate with only said spread spectrum transmitter during
`a wireless connection;
`wherein said portable spread spectrum audio receiver is
`further configured to perform at least one of a plurality of
`demodulations on at least one of said received wireless
`modulation transmissions, wherein said plurality of
`demodulations includes a differential phase shift keying
`(DPSK) demodulation and a non-DPSK demodulation; and
`wherein said further processing for reduction of
`intersymbol interference is separate from said performance of at
`least one of said plurality of demodulations.
`Ex. 1101, 4:56–5:27.
`F. Evidence of Record
`Petitioner submits the following evidence of record:
`
`Evidence
`Declaration of Regis J. Bates Jr. (“Bates Declaration”)
`Bernard Sklar, DIGITAL COMMUNICATIONS FUNDAMENTALS
`AND APPLICATIONS (Reynold Rieger ed., 1988) (“Sklar”)
`Jaap C. Haartsen, The Bluetooth Radio System, IEEE Personal
`Communications, Vol. 7, No. 1 (Feb. 2000) (“Haartsen”)
`John B. Groe, CDMA MOBILE RADIO DESIGN (2000)
`(“Groe”)
`
`Exhibit
`No.
`1102
`1103
`
`1105
`
`1109
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`7
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`IPR2021-00284
`Patent 10,468,047 B2
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`Exhibit
`No.
`1110
`
`1111
`
`1137
`
`1138
`
`Evidence
`Ham Inhwa, KR 2000-0006888, published Apr. 25, 2000
`(“Ham”)
`Xiang-Gen Xia, New Precoding for Intersymbol Interference
`Cancellation Using Nonmaximally Decimated Multirate
`Filterbanks with Ideal FIR Equalizers, IEEE Transactions on
`Signal Processing, Vol. 45, No. 10 (Oct. 1997) (“Xia”)
`Dirschedl, US 6,262,994 B1, issued July 17, 2001
`(“Dirschedl”)
`Matero, WO 00/76109 A1, published Dec. 14, 2000
`(“Matero”)
`Patent Owner submits the Declaration of Joseph C. McAlexander.
`Ex. 2001 (“McAlexander Declaration”).
`G. Challenges to Patentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claim(s) Challenged
`1–16
`
`Reference(s)/Basis
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, Haartsen
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have possessed at least a bachelor’s degree in electrical engineering and two
`years’ experience in wireless communications systems design or
`implementation, or equivalent.” Pet. 6 (citing Ex. 1102 ¶ 11). For purposes
`of the Preliminary Response, Patent Owner 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 ordinary skill in
`
`35 U.S.C. §
`103
`
`1–16
`
`103
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`the art, which is consistent with the ’047 patent and the asserted prior art of
`record.
`B. 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
`investigation. Pet. 6–8. Pertinent to this Decision, Petitioner requests that
`the Board adopt the ITC’s construction of the two terms1 listed below:
`
`“unique user code”
`
`Claim Term
`“configured for independent
`CDMA communication
`operation”
`
`ITC’s Construction
`“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)”
`Id. at 7. 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 to use independent code
`division multiple access communication” to mean “configured for code
`division multiple access (CDMA) communication operation performed
`
`
`1 Petitioner also requests that we adopt the ITC’s constructions of two
`additional claim terms, “reduced intersymbol interference coding” and
`“direct conversion module.” Pet. 6–7. We need not construe these claim
`terms, however, to resolve the issues presented in the Petition.
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`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. Ltd., 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 need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`C. Ground 1: Alleged Obviousness of Claims 1–16 over Ham, Sklar,
`Xia, Groe, Dirschedl, and Matero
`Petitioner argues that claims 1–16 would have been obvious over
`Ham, Sklar, Xia, Groe, Dirschedl, and Matero. Pet. 15–62, 69–74. For the
`reasons discussed below, Petitioner does not demonstrate a reasonable
`likelihood of prevailing in showing that claims 1–16 would have been
`obvious over Ham, Sklar, Xia, Groe, Dirschedl, and Matero.
`1. Overview of Ham (Ex. 1110)
`Ham is a Korean patent application publication that is 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 circuit that transmit[s] and receive[s] signals using the Code
`Division Multiple Access (CDMA) method.” Ex. 1110, 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 all frequency and time
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`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.
`
`Id.
`
`Ham discloses a transmission circuit for wirelessly transmitting a
`signal in Figure 1, reproduced below:
`
`
`Id. at Fig. 1. 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
`converted signal, and amplifier, filter, converter, and gain control units 1a,
`2a, 1b, 2b, 3, and 4. Id. at 2.
`Ham discloses a wireless headphone receiving circuit in Figure 2,
`reproduced below:
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`Id. at Fig. 2. 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 unit 6 for removing an error
`correction and pseudorandom code, codec unit 7 for decoding the audio
`signal, and amplifier unit 1c that amplifies the signal from codec unit 7 and
`passes it to output unit 9. Id. at 2.
`2. Overview of Sklar (Ex. 1103)
`Sklar is a textbook entitled “Digital Communications: Fundamentals
`and Applications,” and “presents the ideas and techniques fundamental to
`digital communication systems.” Ex. 1103, 22.2 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 384. “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
`original data) “is accomplished by the correlation of the received spread
`
`
`2 We cite to the exhibit page numbers added by Petitioner.
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`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.” Id. at 388–389. In CDMA, “each simultaneous user employs a
`unique spread-spectrum signaling code,” which “provide[s] communication
`privacy between users with different spreading signals.” Id. Thus, “[a]n
`unauthorized user (a user not having access to a spreading signal) cannot
`easily monitor the communications of the authorized users.” Id. at 389.
`3. Independent Claims 1 and 8
`Claim 1 recites a “portable spread spectrum audio receiver” that “is
`configured to use independent code division multiple access communication
`and to use said unique user code to communication with only said spread
`spectrum transmitter during a wireless connection.” Ex. 1101, 5:13–17.
`Claim 8 recites a similar limitation. Id. at 5:57–61. 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. 6–7; Prelim. Resp. 6; see
`Section II.B.
`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. 1110, 2–3, Figs. 1–2) (emphasis omitted). Petitioner also asserts that
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`“Ham nowhere suggests any control or coordination of communications
`between transmission and reception circuits by a centralized facility.” Id.
`at 46–47 (citing Ex. 1102 ¶¶ 211–217).
`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. 27 (citing Ex. 1102
`¶ 212). 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 28
`(citing Pet. 46–47; Ex. 1102 ¶ 212; Ex. 1110, 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 30
`(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.” The ITC’s construction is consistent
`with the ’047 patent’s disclosure of a CDMA 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. Ex. 1101, 2:60–66
`(disclosing that “[t]he battery powered transmitter 20 may contain a code
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`generator 44 that may be used to create a unique user code” that “is
`specifically associated with one wireless digital audio system user”);
`Ex. 1102 ¶ 263. Thus, the ’047 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. 1110, 2 (emphasis
`added). Patent Owner presents evidence that Ham’s teaching that its CDMA
`system “maintains orthogonality” indicates that it depends on a central
`controller to assign the spreading codes. Prelim. Resp. 30; Ex. 2001 ¶ 16.
`Specifically, Patent Owner’s declarant, 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
`contrary, Petitioner’s own arguments in Ground 2 (which we address in
`detail below) support Mr. McAlexander’s testimony. Petitioner’s Ground 2
`relies on a proposed combination that includes Haartsen, which, according to
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`Petitioner, teaches a CDMA system that does not require a central controller.
`Pet. 63–69; id. at 64 (“Haartsen describes the master’s device identity being
`transmitted as an access code.”); id. at 68 (“The transmitter need not . . . be
`assigned a unique PN code by a third party.”); Ex. 1102 ¶¶ 254, 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. 68 (emphasis added); see Ex. 1102 ¶ 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. 68; Ex. 1102 ¶ 263. This appears to be an acknowledgement
`by Petitioner that Ham’s CDMA system involves coordination by a central
`controller.
`As discussed above, for Ground 1, Petitioner relies solely on Ham as
`teaching “independent code division multiple access communication.”
`Pet. 46–47. 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 claims 1 and 8 would have been obvious over Ham, Sklar,
`Xia, Groe, Dirschedl, and Matero.
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`4. Dependent Claims 2–7 and 9–16
`Claims 2–7 and 9–16 depend from claim 1 or 8. Petitioner’s
`arguments and evidence regarding these dependent claims do not
`compensate for the deficiencies discussed above for claims 1 and 8. See
`Pet. 57–62, 71–74. Thus, for the same reasons discussed above for claims 1
`and 8, Petitioner does not demonstrate a reasonable likelihood of prevailing
`in showing that claims 2–7 and 9–16 would have been obvious over Ham,
`Sklar, Xia, Groe, Dirschedl, and Matero.
`
`5. Summary
`For the foregoing reasons, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claims 1–16 would have
`been obvious over Ham, Sklar, Xia, Groe, Dirschedl, and Matero.
`D. Ground 2: Alleged Obviousness of Claims 1–16 over Ham, Sklar,
`Xia, Groe, Dirschedl, Matero, and Haartsen
`Petitioner argues that claims 1–16 would have been obvious over
`Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen. Pet. 63–69, 74.
`For the reasons discussed below, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claims 1–16 would have
`been obvious over Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen.
`1. Overview of Haartsen (Ex. 1105)
`Haartsen is an article from IEEE Personal Communications entitled
`“The Bluetooth Radio System.” Ex. 1105, 4.3 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
`
`3 We cite to the exhibit page numbers added by Petitioner.
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`frequency hopping CDMA (“FH-CDMA”) for its multiple access scheme.
`Id. at 5–6. 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 6. The other participants in the communication are called “slaves,” and
`use the master identity to select the same hopping sequence and add time
`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. Id. at 7. 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. Independent Claims 1 and 8
`Ground 2 builds on Petitioner’s alternative mapping in Ground 1 that
`relies on Sklar’s FH-CDMA to teach the “unique user code” required by
`claims 1 and 8. Pet. 63–64. In Ground 1, Petitioner asserts that a key
`feature of Sklar’s FH-CDMA is that “[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 claims 1 and 8. Id. at 26–27
`(emphasis altered). In Ground 2, Petitioner relies on Haartsen’s Bluetooth
`implementation of FH-CDMA in lieu of Sklar’s FH-CDMA system. Id. at
`
`18
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`
`63–64. More specifically, Petitioner argues in Ground 2 that 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, as in Ground 1. Id. at 64.
`Petitioner explains that it is including Ground 2 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. 63 (citing Ex. 1116, Ex. C at 2–3). 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. Petitioner states that it disputes Patent
`Owner’s apparent construction of “unique user code” as applying to
`Bluetooth’s device-based codes because “[t]he ITC construed ‘unique user
`code’ as a ‘fixed code (bit sequence) specifically associated with one user
`of a device(s).’” Id. at 14. However, Petitioner asserts, although it “does not
`agree with Patent Owner’s apparent interpretation,” if maintained “it ‘will
`read on the prior art,’” as disclosed by Haartsen. Id. at 63.
`Petitioner goes on to assert that Haartsen discloses a Bluetooth system
`in which the frequency hop sequence is determined from the device identity
`of a transmitter known as the “master.” Id. at 64 (citing Ex. 1105, 30, 33,
`Fig. 7). According to Petitioner, “[t]his manner of using a specific device’s
`identity to determine the hop sequence is substantially similar to present-day
`Bluetooth’s frequency hopping functionality cited by Patent Owner for
`transmission of a ‘unique user code.’” Id. (citing Ex. 1102 ¶¶ 253–256).
`
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`IPR2021-00284
`Patent 10,468,047 B2
`
`Petitioner further argues that Haartsen describes the master’s device identity
`being transmitted as an access code with each packet, which “is substantially
`similar to Patent Owner’s apparent reliance on transmission of a channel
`access code with each packet in present-day Bluetooth.” Id. at 64–65 (citing
`Ex. 1102 ¶¶ 251–257; Ex. 1105, 31, Fig. 3; Ex. 1116, Ex. C at 2).
`As noted above, Patent Owner does not contest Petitioner’s (and the
`ITC’s) proposed construction of “unique user code.” Prelim. Resp. 6; see
`Section II.B. Patent Owner also does not address the issue of whether the
`term “unique user code” is met by Haartsen’s determination of the frequency
`hop sequence from the device identity of the master. See generally Prelim.
`Resp. Instead, Patent Owner argues that Petitioner fails to establish a
`motivation to substitute Sklar’s FH-CDMA method for Ham’s DS-CDMA
`method, or to substitute Ham’s CDMA method with Haartsen’s FH-CDMA
`method. Id. at 33–39. Patent Owner also argues, as in the case of Ground 1,
`that Ham does not disclose a “direct conversion module,” as recited in
`independent claim 1. Id. at 40–44.
`Petitioner does not show a reasonable likelihood of unpatentability of
`claims 1 and 8 because Petitioner has not shown sufficiently that Haartsen
`discloses a “unique user code” under the claim construction agreed by the
`parties and adopted in this Decision. As discussed above, the parties agreed
`to adopt the ITC’s construction of “unique user code” as a “fixed code (bit
`sequence) specifically associated with one user of a device(s).” See
`Section II.B. In setting forth this construction, the ITC emphasized that its
`“construction makes clear that the fixed code is associated with ‘one user
`(of a device(s))’ and not a ‘user’s device.’” Ex. 1130, 37 (emphasis added).
`We agree with the ITC that this understanding flows from the ordinary
`
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`IPR2021-00284
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`
`meaning of the construction adopted, and note that Petitioner appears to rely
`on it as well. See Pet. 14 (“The ITC construed ‘unique user code’ as a
`‘fixed code (bit sequence) specifically associated with one user of a
`device(s).’”). Petitioner, however, fails to show that Haartsen discloses a
`unique user code that is associated with one user of a device, rather than a
`device itself.
`Indeed, Petitioner acknowledges that “in prior art Bluetooth as
`described in Haartsen, the frequency hop sequence is determined from the
`device identity of a transmitter known as the ‘master,’” rather than from a
`user associated with the device. Id. at 64. Petitioner’s assertion is supported
`by Haartsen’s disclosure, which states that the frequency hop sequence is
`determined by the device identity of the “master” transmitter. As Haartsen
`explains:
`The particular sequence is determined by the unit that
`controls the FH channe
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