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.
`____________
`
`IPR2021-00285
`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.
`____________
`
`IPR2021-00285
`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
`
`
`
`IPR2021-00285
`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 17–20 (“the challenged claims”) of U.S.
`Patent No. 10,468,047 B2 (Ex. 1001, “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-
`00284, 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. 1001, 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, claim 17 is independent. Claim 17 is
`
`reproduced below.
`17. A portable spread spectrum audio transmitter
`coupled to a music audio source, said transmitter configured to
`transmit a unique user code and wireless modulation
`transmissions representative of an audio signal representation,
`said portable spread spectrum audio transmitter configured to:
`encode a first representation of an audio signal to reduce
`intersymbol interference associated with a transmitted
`representation of the audio signal;
`perform at least one of a plurality of modulations on the
`first representation of the audio signal;
`generate a modulated signal based on the performance of
`at least one of the plurality of modulations, wherein the
`plurality of modulations includes a differential phase shift
`keying (DPSK) modulation and a non-DPSK modulation; and
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`use the modulated signal and independent code division
`multiple access communication to wirelessly transmit a
`transmitted representation of the audio signal.
`Ex. 1001, 6:46–64.
`F. Evidence of Record
`Petitioner submits the following evidence of record:
`
`Exhibit
`No.
`1002
`1003
`
`1005
`
`1009
`
`1010
`
`1011
`
`1037
`
`1038
`
`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”)
`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
`17–20
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero
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`Claim(s) Challenged
`17–20
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`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. 1002 ¶ 11). For purposes
`of the Preliminary Response, Patent Owner does not contest Petitioner’s
`proposed level of ordinary skill. Prelim. Resp. 6–7. At this stage of the
`proceeding, we adopt Petitioner’s assessment of the level of ordinary skill in
`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. 7. Pertinent to this Decision, Petitioner requests that the
`Board adopt the ITC’s construction of the two terms1 listed below:
`
`
`1 Petitioner also requests that we adopt the ITC’s constructions of one
`additional claim term, “reduced intersymbol interference coding.” Pet. 7.
`We need not construe this claim term, however, to resolve the issues
`presented in the Petition.
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`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. 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 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 17–20 over Ham,
`Sklar, Xia, Groe, Dirschedl, and Matero
`Petitioner argues that claims 17–20 would have been obvious over
`Ham, Sklar, Xia, Groe, Dirschedl, and Matero. Pet. 15–61. For the reasons
`discussed below, Petitioner does not demonstrate a reasonable likelihood of
`
`“unique user code”
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`prevailing in showing that claims 17–20 would have been obvious over
`Ham, Sklar, Xia, Groe, Dirschedl, and Matero.
`1. Overview of Ham (Ex. 1010)
`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. 1010, 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
`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:
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`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. 1003)
`Sklar is a textbook entitled “Digital Communications: Fundamentals
`and Applications,” and “presents the ideas and techniques fundamental to
`digital communication systems.” Ex. 1003, 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
`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. at 389. Thus,
`
`
`2 We cite to the exhibit page numbers added by Petitioner.
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`“[a]n unauthorized user (a user not having access to a spreading signal)
`cannot easily monitor the communications of the authorized users.” Id.
`3. Independent Claim 17
`Claim 17 recites a “portable spread spectrum audio transmitter” that is
`“configured to . . . use . . . independent code division multiple access
`communication to wirelessly transmit a transmitted representation of the
`audio signal.” Ex. 1001, 6:62–64. 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; Prelim. Resp. 6; see Section II.B.
`Petitioner asserts that “Ham’s CDMA is ‘independent’ because Ham
`discloses and suggests a one-to-one correspondence between a transmission
`circuit and reception circuit.” Pet. 49 (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 ¶¶ 372–
`379).
`
`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. 26–27 (citing
`Ex. 1002 ¶ 373). 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.’”
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`Id. at 28 (citing Pet. 49; Ex. 1002 ¶ 373; 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.” 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. 1001, 2:60–
`66 (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 ¶ 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. 1010, 2 (emphasis
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`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. 29–30; 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
`Petitioner, teaches a CDMA system that does not require a central controller.
`Pet. 61–68; id. at 64 (“Haartsen describes the master’s device identity being
`transmitted as an access code.”); id. at 67 (“The transmitter need not . . . be
`assigned a unique PN code by a third party.”); Ex. 1002 ¶¶ 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. 67 (emphasis added); see Ex. 1002 ¶ 263. In other
`words, Petitioner argues that using Haartsen’s CDMA system would have
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`benefitted Ham by eliminating Ham’s need for coordination by a central
`controller. Pet. 67; 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 Ground 1, Petitioner relies solely on Ham as
`teaching “independent code division multiple access communication.”
`Pet. 48–49. 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 17 would have been obvious over Ham, Sklar, Xia,
`Groe, Dirschedl, and Matero.
`
`4. Dependent Claims 18–20
`Claims 18–20 depend from claim 17. Petitioner’s arguments and
`evidence regarding these dependent claims do not compensate for the
`deficiencies discussed above for claim 17. See Pet. 49–61. Thus, for the
`same reasons discussed above for claim 17, Petitioner does not demonstrate
`a reasonable likelihood of prevailing in showing that claims 18–20 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 17–20 would
`have been obvious over Ham, Sklar, Xia, Groe, Dirschedl, and Matero.
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`D. Ground 2: Alleged Obviousness of Claims 17–20 over Ham,
`Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen
`Petitioner argues that claims 17–20 would have been obvious over
`Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen. Pet. 61–68. For
`the reasons discussed below, Petitioner does not demonstrate a reasonable
`likelihood of prevailing in showing that claims 17–20 would have been
`obvious over Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen.
`1. Overview of Haartsen (Ex. 1005)
`Haartsen is an article from IEEE Personal Communications entitled
`“The Bluetooth Radio System.” Ex. 1005, 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
`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
`
`3 We cite to the exhibit page numbers added by Petitioner.
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`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 Claim 17
`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
`claim 17. Pet. 61–63. 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 claim 17. Id. at 28–29 (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 61–63. 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 63.
`Petitioner explains that it is including Ground 2 because “Patent
`Owner’s Infringement Contentions appear to interpret the ‘unique user
`code’ as met by Bluetooth’s use of a device address associated with the
`transmitter.” Pet. 61 (citing Ex. 1016, 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
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`channel access code are derived.” Id. at 62. 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 62.
`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 63 (citing Ex. 1005, 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. 1002 ¶¶ 252–253,
`397–398; Ex. 1016, Ex. C at 26–27). 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 (citing Ex. 1002 ¶ 251; Ex. 1005, 31,
`Fig. 3; Ex. 1016, Ex. C at 2–3).
`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
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`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.
`Petitioner does not show a reasonable likelihood of unpatentability of
`claim 17 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. 1030, 37 (emphasis added).
`We agree with the ITC that this understanding flows from the ordinary
`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 63. 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:
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`The particular sequence is determined by the unit that
`controls the FH channel, which is called the master. The
`native clock of the master unit also defines the phase in the
`hopping sequence. All other participants on the hopping
`channel are slaves, they 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.
`Ex. 1005, 6 (emphasis added). Thus, Haartsen discloses that the code that
`determines the frequency hop sequence is based on the identity of the master
`device, rather than being associated with “one user of a device,” as required
`by the parties’ agreed construction of “unique user code.”
`Consequently, Petitioner does not show a reasonable likelihood that
`independent claim 17 is unpatentable over Ham, Sklar, Xia, Groe, Dirschedl,
`Matero, and Haartsen.
`3. Dependent Claims 18–20
`Claims 18–20 depend from claim 17. Petitioner’s arguments and
`evidence regarding these dependent claims do not compensate for the
`deficiencies discussed above for claim 17. See Pet. 49–61, 68. Thus, for the
`same reasons discussed above for claim 17, Petitioner does not demonstrate
`a reasonable likelihood of prevailing in showing that claims 18–20 would
`have been obvious over Ham, Sklar, Xia, Groe, Dirschedl, Matero, and
`Haartsen.
`
`4. Summary
`For the foregoing reasons, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claims
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