Trials@uspto.gov
`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.
`
`IPR2021-00286
`Patent 10,129,627 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, 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.
`
`IPR2021-00286
`Patent 10,129,627 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, ROBERT J. WEINSCHENK, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00286
`Patent 10,192,627 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–4 and 10–11 (the “challenged claims”) of U.S. Patent
`No. 10,192,627 B2 (Ex. 1101, “the ’627 patent”). Paper 3 (“Pet.”). One-E-
`Way, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“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) (2020) (“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 that “Apple Inc. . . . and its wholly-owned subsidiary
`Beats Electronics, LLC [(“Beats”)] . . . are the real parties-in-interest to this
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`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 Proceedings
`The parties identify the following district court case involving
`the ’627 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. 1122; Ex. 1123); Paper 5,
`1.
`
`Petitioner also 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 further
`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 ’627 patent: IPR2021-00283, IPR2021-00284, IPR2021-00285, and
`IPR2021-00287. Paper 5, 1.
`
`D. The ’627 Patent (Ex. 1101)
`The ’627 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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`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. 1101, 2:40–43. Transmitter 20 is connected to music
`audio source 80 via analog headphone jack 82 using headphone plug 22. Id.
`at 2:43–46. 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 2:46–53.
`The audio transmitter portion of the wireless digital audio system is
`shown in more detail in Figure 2, reproduced below:
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`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. 1101, 2:55–59. 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 2:59–62. 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 2:64–3:3. 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 2:62–64.
`The audio receiver portion coupled to the wireless headphones is
`shown in more detail in Figure 3, reproduced below:
`
`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. Ex. 1101, 3:9–11. 3:15–17. 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 3:11–14, 3:20–26.
`
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`The ’627 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 3:23–30. According to the ’627 patent, “[t]his code
`division multiple access (CDMA) may be used to provide each user
`independent audio enjoyment.” Id. at 3:30–32.
`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.
`Ex. 1101, 3:32–38. 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 3:38–41. 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 4:30–35.
`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 4:35–39.
`
`E. Illustrative Claims
`Of the challenged claims, claims 1 and 3 are independent. Claim 1 is
`illustrative and is reproduced below.
`1. [(pre)] A wireless digital audio spread spectrum receiver,
`capable of mobile operation, configured to receive a unique
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`user code and a high quality audio signal representation with a
`frequency range of 20 Hz to 20 kHz from a digital audio spread
`spectrum transmitter, said audio signal representation
`representative of audio from a portable audio source, said
`digital audio spread spectrum receiver operative to
`communicate wirelessly with said digital audio spread spectrum
`transmitter, said digital audio spread spectrum receiver
`comprising:
`[(a)(i)] a direct conversion module configured to receive
`wireless spread spectrum signal transmissions
`representative of the unique user code and the high quality
`audio signal representation
`[(a)(ii)] wherein the received transmissions are encoded to
`reduce intersymbol interference, wherein the wireless
`digital audio spread spectrum receiver is capable of
`processing the high quality audio signal having a
`frequency range of 20 Hz to 20 kHz;
`[(b)] a digital-to-analog converter (DAC) configured to
`generate an audio output from said receiver audio signal
`representation; and
`[(c)] a speaker configured to reproduce said generated audio
`output, wherein said reproduction does not include audible
`audio content originating from any transmitted audio
`signals in the wireless digital audio spread spectrum
`transmitter spectrum that do not originate from said digital
`audio spread spectrum transmitter:
`[(d)] wherein the wireless digital audio spread spectrum
`receiver is configured to use independent code division
`multiple access communication and to use the received
`unique user code to communicate with only said wireless
`digital audio spread spectrum transmitter for the duration
`of a wireless connection; and;
`[(e)] wherein the wireless digital audio spread spectrum
`receiver is further configured to;
`[(f)] demodulate a received modulated transmission, and
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`[(g)] generate a demodulated signal based on the received
`modulated transmission by performing at least one of a
`plurality of demodulations, wherein the plurality of
`demodulations includes a differential phase shift keying
`(DPSK) demodulation and also includes a non-DPSK
`demodulation.
`Ex. 1101, 4:61–5:35 (bracketed paragraph identifiers added).
`
`F. Evidence of Record
`Petitioner relies upon the following references found in the record:
`Bernard Sklar, Digital Communications: Fundamentals
`and Applications (1988) (Ex. 1103, “Sklar”);
`Jean Walrand and Pravin Varaiya, High Performance
`Communication Networks (2d ed. 2000) (Ex. 1104, “Walrand”);
`Jaap C. Haartsen, “The Bluetooth Radio System,” IEEE
`Personal Communications, Vol. 7, Issue No. 1, Feb. 2000
`(Excerpt) (Ex. 1105, “Haartsen”);
`John B. Groe and Lawrence E. Larson, CDMA Mobile
`Radio Design (2000) (Ex. 1109, “Groe”);
`KR Application No. 20-1998-0018161, published
`Apr. 25, 2000 (as translated) (Ex. 1110, “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, Issue No. 10
`(Oct. 1997) (Ex. 1111, “Xia”);
`Dirschedl et al., U.S. Patent No. 6,262,994 B1, issued
`Jul. 17, 2001 (Ex. 1137, “Dirschedl”);
`Matero et al., WO 00/76109 A1, pub. Dec. 14, 2000
`(Ex. 1138, “Matero”).
`Pet. i–iii, 4.
`
`Petitioner submits the Declaration of Regis J. Bates, Jr. (“Mr. Bates,”
`Ex. 1102). Patent Owner submits the Declaration of Joseph C.
`McAlexander (“Mr. McAlexander,” Ex. 2001).
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`G. Challenges to Unpatentability
`Petitioner challenges the patentability of claims 1–4 and 10–11 of
`the ’627 patent based on the following grounds:
`Claims Challenged
`35 U.S.C. §
`1–4
`1031
`
`Reference(s)/Basis
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, Walrand
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, Haartsen
`Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, Walrand,
`Haartsen
`
`10–11
`
`1–4, 10–11
`
`10–11
`
`
`
`103
`
`103
`
`103
`
`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). Petitioner requests that the Board
`adopt the constructions of several claim terms from the ITC investigation.
`
`
`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 ’627 patent was filed after
`March 16, 2013, but includes a priority claim to an application filed before
`this date. Ex. 1101, code (22), (63). Neither Petitioner nor Patent Owner
`takes a position on the effective filing date of the challenged claims. Pet. 9–
`10; Prelim. Resp. 7. For purposes of institution, we apply the pre-AIA
`versions of 35 U.S.C. § 103.
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`Pet. 7. 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. 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. 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
`
`
`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. We need not construe these claim
`terms, however, to resolve the issues presented in the Petition.
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`terms 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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`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 wireless
`communications systems design or implementation (or equivalent).” Pet. 7
`(citing Ex. 1102 ¶ 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 ’627 patent and the
`asserted prior art of record.
`
`D. Ground 1: Alleged Obviousness of Claims 1–4 Over Ham, Sklar, Xia,
`Groe, Dirschedl, and Matero
`Petitioner contends that claims 1–4 are obvious in view of Ham,
`Sklar, Xia, Groe, Dirschedl, and Matero. Pet. 16–58. Patent Owner
`disagrees, arguing, inter alia, that the claimed combination does not teach
`“independent code division multiple access communication” as required by
`all of the challenged claims. Prelim. Resp. 26–40. For the reasons discussed
`below, we determine Petitioner has not established a reasonable likelihood
`that the claims challenged in this ground are unpatentable.
`
`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
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`reception circuit that transmit[s] and receive[s] signals using the Code
`Division Multiple Access (CDMA) method.” Ex. 1110, 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. 1110, 2.
`Ham discloses a transmission circuit for wirelessly transmitting a
`signal 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. 1110, 2.
`Ham discloses a wireless headphone receiving circuit 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. 1110, 2, 3.
`
`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 communications systems.” Ex. 1103, 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. 1103, 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,
`“[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 Claims 1 and 3
`Claim 1 recites a “wireless digital audio spread spectrum receiver”
`that “is configured to use independent code division multiple access
`communication and to use the received unique user code to communicate
`with only said wireless digital audio spread spectrum transmitter for the
`duration of a wireless connection.” Ex. 1101, 5:21–26. Claim 3 recites a
`similar limitation. Id. at 5:66–6:4. 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 § II.A, supra.
`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. 50 (citing
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`Ex. 1110, 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. 1102 ¶¶ 218–223).
`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. 27–28 (citing
`Ex. 1102 ¶ 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 29 (citing Pet. 50; Ex. 1102 ¶ 218; 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.” Pet. 7; Prelim. Resp. 6. The ITC’s
`construction is consistent with the ’627 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
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`controller. Ex. 1101, 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. 1102 ¶ 402. Thus, the ’627 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. 30–31; 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 3 (which we address in
`detail below) support Mr. McAlexander’s testimony. Petitioner’s Ground 3
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`relies on a proposed combination that includes Haartsen, which, according to
`Petitioner, teaches a CDMA system that does not require a central controller.
`Pet. 69–75; id. at 71 (“Haartsen describes the master’s device identity being
`transmitted as an access code.”); id. at 74 (“The transmitter need not . . . be
`assigned a unique PN code by a third party.”); Ex. 1102 ¶¶ 391, 402.
`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. 74 (emphasis added); see Ex. 1102 ¶ 402. 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. 74; Ex. 1102 ¶ 402. 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. 48–50. 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 3 would have been obvious over Ham, Sklar,
`Xia, Groe, Dirschedl, and Matero.
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`4. Analysis of Dependent Claims 2 and 4
`Claims 2 and 4 depend from claim 1 or 3. Petitioner’s arguments and
`evidence regarding these dependent claims do not compensate for the
`deficiencies discussed above for claims 1 and 3. See Pet. 58, 66. Thus, for
`the same reasons discussed above for claims 1 and 3, Petitioner does not
`demonstrate a reasonable likelihood of prevailing in showing that claims 2
`and 4 would have been obvious over Ham, Sklar, Xia, Groe, Dirschedl, and
`Matero.
`
`E. Ground 2: Alleged Obviousness of Claims 10 and 11 Over Ham,
`Sklar, Xia, Groe, Dirschedl, Matero, and Walrand
`Petitioner contends claims 10 and 11 would have been obvious in
`view of Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Walrand. Pet. 67–
`69. Claims 10 and 11 depend from claim 1 or 3. Petitioner’s arguments and
`evidence regarding these dependent claims do not compensate for the
`deficiencies discussed above for claims 1 and 3. See Pet. 67–69. Thus, for
`the same reasons discussed above for Ground 1, Petitioner does not
`demonstrate a reasonable likelihood of prevailing in showing that claims 10
`and 11 would have been obvious in view of Ham, Sklar, Xia, Groe,
`Dirschedl, Matero, and Walrand.
`
`F. Ground 3: Obviousness of Claims 1–4 and 10–11 Over Ham, Sklar,
`Xia, Groe, Dirschedl, Matero, and Haartsen
`Petitioner contends claims 1–4 and 10–11 would have been obvious in
`view of Ham, Sklar, Xia, Groe, Dirschedl, Matero, and Haartsen. Pet. 69–
`75. For the reasons discussed below, we determine Petitioner has not
`established a reasonable likelihood that the claims challenged in this ground
`are unpatentable.
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`1. Overview of Haartsen (Ex. 1105)
`Haartsen is an article from IEEE Personal Communications entitled
`“The Bluetooth Radio System.” Ex. 1105, 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
`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. 1105, 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 Independent Claims 1 and 3
`Ground 3 is based on and builds upon Petitioner’s alternative mapping
`in Ground 1 which uses Sklar’s frequency hopping CDMA (FH-CDMA) to
`teach the “unique user code” required by claims 1 and 3. Pet. 70. In
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`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 the claims. Id. at 29–30. In Ground 3, Petitioner relies on
`Haartsen’s Bluetooth implementation of FH-CDMA in lieu of Sklar’s FH-
`CDMA system. Id. at 70. More specifically, Petitioner argues in Ground 3
`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 70.
`Petitioner explains that it is including Ground 3 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. 69 (citing E
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