Paper No. 53
`Filed: September 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`CANON U.S.A., INC., GOPRO, INC.,
`
`GARMIN INTERNATIONAL, INC., AND GARMIN USA, INC.,
`
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.,
`
`Patent Owner.
`
`__________________
`
`IPR2019-00127
`
`Patent 9,258,698 B2
`
`__________________
`
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................. ii
`
`INTRODUCTION .................................................................................................... 1
`
`ARGUMENT ............................................................................................................ 2
`
`A. THE BOARD ERRED BY RELYING ON ITS OWN NEW INVALIDITY THEORY
`REGARDING THE ZIGBEE STANDARD IN VIOLATION OF THE APA. .................... 2
`B. THE BOARD ERRED BY FAILING TO FULLY ADDRESS AN ESSENTIAL SECOND
`ELEMENT OF CELLSPIN’S PROPOSED CONSTRUCTION FOR “PAIRED WIRELESS
`CONNECTION”: THAT “THE COMMUNICATION LINK CAN BE DISCONNECTED AND
`RECONNECTED WITHOUT HAVING TO REPEAT PAIRING OR AUTHENTICATION.” .... 3
`C. THE BOARD FAILED TO ADDRESS CELLSPIN’S ARGUMENT WITH RESPECT TO
`METHOD CLAIM 1. ............................................................................................ 4
`D. THE BOARD’S FAILURE TO CONSTRUE “A MOBILE SOFTWARE APPLICATION”
`WAS ERROR ...................................................................................................... 5
`E. BOARD’S HOLDING IS INCORRECT, BECAUSE ANY SCENARIO CONTEMPLATING
`MULTIPLE APPLICATIONS IN ORDER TO SATISFY CLAIMS 5 AND 8 WOULD
`REQUIRE THAT EACH OF THOSE APPLICATIONS PERFORM ALL OF THE REQUIRED
`FUNCTIONS. ....................................................................................................... 7
`F. THE BOARD ERRED BY CREATING ITS OWN THEORY TO INVALIDATE CLAIMS 5
`AND 8. ............................................................................................................... 8
`1. The Board erred because its holding relies on its misquotation of
`Canon’s Reply brief. ................................................................................... 8
`2. The Board erred by constructing a new and incorrect theory that Hiroshi
`teach all elements of claims 5 and 8. ........................................................10
`3. The Board erred by constructing another impermissibly new and
`incorrect theory that cherry picked an unrelated argument and applied it
`out of context. ...........................................................................................11
`G. THE BOARD ERRED IN NOT CONSTRUING “ALONG WITH” . ..........13
`
`CONCLUSION .......................................................................................................15
`
`
`
`
`
`-i-
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`

`

`TABLE OF AUTHORITIES
`
`CASES
`
`Alacritech, Inc. v. Intel Corp.,
`
`966 F.3d 1367 (Fed. Cir. 2020) ........................................................................13
`ATI Techs. ULC v. Iancu,
`
`920 F.3d 1362 (Fed. Cir. 2019) .......................................................................... 3
`Cont'l Can Co. v. Monsanto Co.,
`
`948 F.2d 1264 (Fed. Cir. 1991) .......................................................................... 5
`Fanduel, Inc. v. Interactive Games LLC,
`
`966 F.3d 1334 (Fed. Cir. 2020) .......................................................................... 2
`Frac Shack Inc. v. Fuel Automation Station, LLC,
`
`No. 16-CV-02275-STV, 2018 WL 5792613 (D. Colo. Nov. 5, 2018) .............. 8
`Genzyme v. Biomarin Pharm.,
`
`825 F.3d 1360 (Fed. Cir. 2016) .......................................................................... 9
`In re Gartside,
`
`203 F.3d 1305 (Fed. Cir. 2000) ....................................................................3, 11
`In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364 (Fed. Cir. 2016) .......................................................................... 9
`In re NuVasive, Inc.,
`
`841 F.3d 966 (Fed. Cir. 2016) ........................................................................2, 9
`In re Varma,
`
`816 F.3d 1352 (Fed. Cir. 2016) .......................................................................... 7
`Qualcomm Inc. v. Intel Corp.,
`
`2021 U.S. App. LEXIS 22167 (Fed. Cir. 2021)................................................. 2
`SAS Inst., Inc. v. ComplementSoft, LLC,
`
`825 F.3d 1341 (Fed. Cir. 2016) .......................................................................... 8
`Sirona Dental Sys. GmbH v. Institut Straumann AG,
`
`892 F.3d 1349 (Fed. Cir. 2018) ....................................................................9, 12
`United States v. Arthrex, Inc.,
`
`141 S. Ct. 1970 (2021) .................................................................................1, 15
`
`
`
`
`
`
`-ii-
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`

`

`INTRODUCTION
`
`Following the U.S. Supreme Court’s decision in United States v. Arthrex, Inc.,
`
`141 S. Ct. 1970 (June 21, 2021), the U.S. Court of Appeals for the Federal Circuit
`
`in appeal no. 2020-1947 ordered on August 2, 2021, that this case be remanded to
`
`the U.S. Patent and Trademark Office (“USPTO”) for the limited purpose of
`
`allowing the Patent Owner Cellspin Soft, Inc. (“Cellspin”) an opportunity to request
`
`Director re-hearing of the April 28, 2020, final written decision finding claims 1–22
`
`of U.S. Patent No. 9,258,698 (“the ’698 patent”) unpatentable. Patent owner now
`
`requests such a re-hearing before Mr. Andrew Hirshfeld, who is performing the
`
`functions and duties of the Under Secretary of Commerce for Intellectual Property
`
`and Director of the USPTO.
`
`The Board’s decision violates the Administrative Procedures Act (“APA”) for
`
`at least the following reasons: (1) the Board relied on its own new claim construction
`
`theory with respect to the Zigbee standard without allowing Cellspin an opportunity
`
`to respond; (2) the Board never addressed the second essential limitation of
`
`Cellpsin’s proposed construction for a “paired wireless connection”; (3) the Board
`
`failed to address Cellspin’s argument with respect to method claim 1; (4) the Board
`
`failed to construe terms in dispute such as “a mobile software application”; and
`
`(5) the Board relied on its own new invalidity theories in finding claims 5 and 8
`
`obvious.
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`
`
`
`

`

`ARGUMENT
`
`A. The Board Erred by Relying on its Own New Invalidity Theory
`Regarding the Zigbee Standard in violation of the APA.
`
`The Board incorrectly held that the non-Bluetooth Zigbee standard
`
`undermined Cellspin’s position. See FWD at 16 (where the Board claims “the
`
`ZigBee standard relied on by [Cellspin] undermines [Cellspin]’s argument”). The
`
`Board erred by relying on this argument in the first place, given that it was raised
`
`for the first time in the Final Decision. Neither the parties nor their experts briefed
`
`this argument. Thus, the Board committed a procedural error under the APA in
`
`failing to provide Cellspin an opportunity to respond to its finding. See In re
`
`NuVasive, Inc., 841 F.3d 966, 972 (Fed. Cir. 2016) (where the Court remanded
`
`because the Board “did not provide the required opportunity to address the factual
`
`assertion . . . on which the Board ultimately relied”); Fanduel, Inc. v. Interactive
`
`Games LLC, 966 F.3d 1334, 1339 (Fed. Cir. 2020) (holding that the Board must (a)
`
`timely inform the parties of “the matters of fact and law asserted”; (b) provide the
`
`parties an opportunity to submit facts and arguments for consideration; and (c)
`
`permit each party to present oral and documentary evidence); Qualcomm Inc. v. Intel
`
`Corp., 2021 U.S. App. LEXIS 22167, *1 (Fed. Cir. 2021) (pursuant to 5 U.S.C.S. §
`
`706 the Board violated the patent owner's procedural rights under the APA because
`
`the owner did not receive notice or an opportunity to be heard, pursuant to 5 U.S.C.S.
`
`§ 554(b)(3), regarding the Board's construction).
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`
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`-2-
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`

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`The Board’s conclusion regarding Zigbee was also incorrect. The Board
`
`misunderstood the Zigbee standard, concluding “Zigbee does not support
`
`[Cellspin]’s contention that pairing itself includes encryption” because “[t]he link
`
`key establishment to provide encryption occurs after pairing.” FWD at 16. What the
`
`Board misunderstood is that secure communications are provided for during the
`
`Phase 2 pairing process.
`
`Contrary to the Board’s conclusion, Zigbee bolsters rather than undermines
`
`Cellspin’s position. This is likely why Canon’s expert never raised a similar
`
`argument. Had the Board raised this concern earlier rather than in its Final Decision,
`
`Cellspin could have quickly resolved any confusion between legacy pairing (Phase
`
`2) and the newer pairing (Phase 3) regarding security/link-key at that time.
`
`B.
`
`The Board Erred by Failing to Fully Address an Essential Second
`Element of Cellspin’s Proposed Construction for “Paired Wireless
`Connection”: that “the Communication Link Can Be Disconnected and
`Reconnected without Having to Repeat Pairing or Authentication.”
`
`The Board erred by not explaining why non-Bluetooth implementations of a
`
`“paired wireless connection” would not include the ability to re-pair without
`
`reauthenticating. See ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1368 (Fed. Cir. 2019)
`
`(“[T]he Board’s opinion must explicate its factual conclusions, enabling us to verify
`
`readily whether those conclusions are indeed supported by ‘substantial evidence’
`
`contained within the record.”) (citing In re Gartside, 203 F.3d 1305, 1314 (Fed. Cir.
`
`2000)). Cellspin pointed out that as with Bluetooth, non-Bluetooth standards like
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`
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`-3-
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`

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`Zigbee “store information about the other node.” Paper 29 at 4; Ex. 2026 at 16. And
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`“[t]he reason for storing the pairing information is so that it may be used again to
`
`avoid having to re-pair when communications are recommenced which creates a
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`better user experience.” Ex. 2026 at 16. “This is fundamental to pairing, and this
`
`distinguishes paired connections from mere two-way communications.” Ex. 2026 at
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`16; see also FWD at 14-15.
`
`The Board stated that “ZigBee does not support Patent Owner’s contention
`
`that pairing itself includes encryption.” FWD at 16. But the Board provided no
`
`reasoning as to how Zigbee might undermine the idea of re-pairing without
`
`reauthenticating. Even if the Director excluded “provides for encrypted data
`
`exchange” from its construction, the reauthentication/re-pairing should remain and
`
`alone is sufficient to reverse the Board’s finding of obviousness.
`
`C. The Board Failed to Address Cellspin’s Argument with Respect to
`Method Claim 1.
`
`The Board’s holding that method claim 1 is invalid should be reversed because
`
`the prior art did not show the claimed method actually being performed. Although
`
`Cellspin raised this issue, the Board never addressed it. FWD at 29. Cellspin raised
`
`this issue in connection with both “cryptographic authentication” and “paired
`
`wireless connection.” Paper 17 at 38 (crypto); Paper 17 at 38 (paired). With respect
`
`to “paired wireless connection,” the Board considered this argument moot because
`
`it did not rely on a POSITA’s knowledge. FWD at 29 (“Based on our construction
`
`
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`-4-
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`

`

`of ‘paired wireless connection,’ we find that Hiroishi teaches pairing.”). However,
`
`with respect to the term “cryptographically authenticating,” the Board admitted it
`
`relied on a POSITA’s knowledge. FWD at 35 (“Hiroishi’s disclosure of pairing and
`
`Bluetooth, as understood by a person of ordinary skill, meets the “cryptographically
`
`authenticating” element of limitation 1(c).”). Yet this time when it was most
`
`relevant, the Board made no mention of Cellspin’s argument that the prior art did
`
`not show method claim 1 being performed. This glaring omission was error.
`
`Again, Cellspin informed the Board that for the “cryptographically
`
`authenticating” limitations, “it should be noted that claim 1 is a method claim.”
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`Paper 17 at 38. “Although Canon has not alleged invalidity under the doctrine of
`
`inherency, even if it had, anticipation by inherent disclosure is appropriate only when
`
`the reference discloses prior art that must necessarily include the unstated
`
`limitation.” Paper 17 at 38 (citing Cont'l Can Co. v. Monsanto Co., 948 F.2d 1264,
`
`1268-69 (Fed. Cir. 1991)). “The lack of inherency in these elements being met
`
`further illustrates how they could not possibly be met, especially with respect to a
`
`method claim that requires their performance.” Id. (emphasis added).
`
`D. The Board’s Failure to Construe “a Mobile Software Application” Was
`Error.
`
`Cellspin argued that both claims 5 and 8 “require a single application” to
`
`perform all elements that are attributable to the mobile software application as
`
`claimed. Paper 17 at 46; see FWD at 45 (“According to [Cellspin], clearly this
`
`
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`-5-
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`

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`‘application’ is required to perform multiple functions in claims 5, 8 and their
`
`dependent claims.”) (marks omitted). Canon recognized that Cellspin’s proposal
`
`represented a claim construction dispute (Paper 24 at 24), but the Board declined to
`
`construe it (FWD at 45). Without a construction to guide its holding, the Board then
`
`dispensed of the need to show any evidence of such a single mobile software
`
`application that performs all the claimed functions. Id. The Board instead held
`
`generally, “We are persuaded, and find, that this disclosure of mobile phone software
`
`controlling the operation of the phone and Hiroishi’s disclosure of the particular
`
`claimed operations teach a software application as claimed.” FWD at 46.
`
`It was error for the Board not to resolve the dispute or construe the term. See
`
`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed.
`
`Cir. 2008) (“When the parties present a fundamental dispute regarding the scope of
`
`a claim term, it is the court's duty to resolve it.”). Absent the Board’s failure to
`
`properly define the term “a mobile software application,” claims 5 and 8 could not
`
`have been held invalid. Thus, the Director should construe “a mobile software
`
`application” such that it is restricted to a single mobile application and find that the
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`prior art does not anticipate or make obvious “a mobile software application” as a
`
`single mobile software application that performs all of the required functions as
`
`claimed. See ’698 patent at 13:1-22, 14:6-28.
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`
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`-6-
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`

`

`E.
`
`Board’s holding is incorrect, because any scenario contemplating
`multiple applications in order to satisfy claims 5 and 8 would require that
`each of those applications perform all of the required functions.
`
`The Board said, “Petitioner argues that “under the BRI, claims 5 and 8
`
`encompass one or more applications that perform the various steps listed above.”
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`FWD at 45. The Board erred by failing to acknowledge that the plain language and
`
`antecedent basis of the term “a mobile software application” require that one or more
`
`applications would each be required to perform all of the required functions. Canon
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`did not advance this theory and cannot factually support it. This is simply not taught
`
`in the prior art. Cellspin raised this fact in its briefing (e.g., Paper 29 at 20).
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`For instance, Canon’s petition relies on (a) Hiroshi’s application to send,
`
`receive, and store an image file; (b) Takahashi’s application and a separate “file
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`name-generating processing unit” for HTTP server uploads (Paper 1 at 40; id. at 45;
`
`id. at 69); and (c) disparate standalone phone features to provide the GUI and Delete
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`functions (Paper 1 at 33-34; id. at 58; id. at 65). The prior art does not teach as
`
`required that each of these separate software applications are “configured to” to
`
`perform all of the required functions of claims 5 and 8.
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`Federal Circuit addressed a similar issue in In re Varma, holding that
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`rendering “a” as “one or more” should not negate the language that follows the “a.”
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`816 F.3d 1352, 1358 (Fed. Cir. 2016) (noting “context matters” in defining “a”).
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`“For a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice
`
`
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`-7-
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`

`

`that he have two dogs, each able to perform just one of the tasks.” In re Varma, 816
`
`F.3d at 1363; see also Frac Shack Inc. v. Fuel Automation Station, LLC, No. 16-CV-
`
`02275-STV, 2018 WL 5792613, at *5 (D. Colo. Nov. 5, 2018) (“But, provided each
`
`controller can perform these functions, the system may have multiple controllers.”).
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`As in In re Varma and Frac Shack, if “an application” is rendered as “one or more
`
`applications,” then each application must perform all of the functions described in
`
`claims 5 and 8.
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`Thus, because the prior art fails to teach each application like “a mobile
`
`software application” “configured to” perform all key claim language functions of
`
`claims 5 and 8, the Director should reverse the Board’s holding that claims 5 and 8
`
`are obvious. The Board’s holding neither accurately represents Cellspin’s position,
`
`nor is it true to the plain language of the claims.
`
`F.
`
`The Board Erred by Creating Its Own Theory to Invalidate Claims 5 and
`8.
`
`1. The Board erred because its holding relies on its misquotation of Canon’s
`Reply brief.
`
`The Board may not craft new grounds of unpatentability not advanced by the
`
`petitioner. SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir.
`
`2016). Indeed, CAFC has “rejected the argument that ‘the Board is free to adopt
`
`arguments on behalf of petitioners that could have been, but were not, raised by the
`
`petitioner during an IPR.’” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381
`
`
`
`-8-
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`

`

`(Fed. Cir. 2016); see also In re NuVasive, Inc., 841 F.3d at 971-72. The Board’s
`
`adoption of new theories violates due process and the Administrative Procedures Act
`
`(the “APA”) including 37 C.F.R. §42.23(b). Id. See Genzyme v. Biomarin Pharm.,
`
`825 F.3d 1360, 1365-66 (Fed. Cir. 2016). Yet, in determining that claims 5 and 8
`
`were obvious, the Board contravened this rule by cobbling together its own theory.
`
`See Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed.
`
`Cir. 2018) (holding “[i]t would thus not be proper for the Board to deviate from the
`
`grounds in the petition and raise its own obviousness theory”).
`
`The Board’s holding that claims 5 and 8 are invalid is fatally flawed because
`
`it relies on a misquotation. The Board’s position borrows the following text from
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`Canon’s Reply brief, but it omits the portion in bold: “Cellspin argues that claims
`
`5 and 8 of the ‘698 Patent require a single mobile software application configured to
`
`perform the steps of receiving, storing, and uploading the new-media file, as well as
`
`providing the graphical user interface.” Compare FWD at 45, with Paper 24 at 24
`
`(emphasis added). As is clear from the full quote, Canon did not assert that Hiroishi
`
`performs four (4) of the required six (6) functions. Rather, Canon was only restating
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`Cellspin’s position for what claims 5 and 8 require. In an attempt to align its holding
`
`with Canon’s petition, the Board dressed Canon’s summary of Cellspin’s position
`
`as Canon’s own. Yet, at no time did Canon proffer a theory properly limiting “a
`
`mobile software application” to a single application.
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`
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`-9-
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`

`

`2. The Board erred by constructing a new and incorrect theory that Hiroshi
`teach all elements of claims 5 and 8.
`
`Initially, the Board acknowledged Canon’s petition theory in which a mobile
`
`software application (a) receives the new-media file and (b) stores the received new
`
`media file. FWD at 45. (“[Canon] explains that Hiroishi’s “phone comprises a
`
`mobile software application that when executed by a processor of the phone is
`
`configured to control the processor of the phone to receive the new-media file, [and]
`
`store the received new-media file in a non-volatile memory device of the phone.”).
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`The Board then added two new erroneous assertions that were never asserted by
`
`Canon in its petition: that (1) Hiroshi also teaches uploading the new-media file, and
`
`(2) Hiroishi teaches the same mobile software application provided for GUI as
`
`recited in claims 5 and 8. See FWD at 45 (“We agree with Petitioner that Hiroishi
`
`“perform[s] the steps of receiving, storing, and uploading the new-media file, as well
`
`as providing the graphical user interface” as recited in claims 5 and 8.”).
`
`The Board’s new theories are not supported by substantial evidence for a
`
`number of reasons. First, Canon relied upon Takahashi—not Hiroishi—to upload
`
`the new media file using HTTP. See Paper 1 at 40; id. at 45; id. at 69. The Board
`
`wrote, “[w]e are persuaded, and find, that this disclosure of mobile phone software
`
`controlling the operation of the phone and Hiroishi’s disclosure of the particular
`
`claimed operations teach a software application as claimed.” FWD at 46. But the
`
`Board’s holding at the very least omits that Canon’s petition relies on Takahashi—
`
`
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`-10-
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`

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`not Hiroishi—for HTTP uploading the new media file by changing the filename, and
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`Hiroishi cannot satisfy the HTTP upload element. Paper 1 at 40; id. at 45; id. at 69.
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`The Board’s reliance on only Hiroshi deviates from Canon’s theory and provides a
`
`standalone reason to reverse.
`
`Second, Canon never relied on the same Hiroishi mobile software application
`
`to perform HTTP uploading as required. Rather, the petition relied on Takahashi
`
`phone feature to perform the HTTP upload and to insert username inside the file
`
`using a “file name-generating processing unit” and renaming the file, so as to send
`
`the newly named file such that the username is part of the new file. Paper 1 at 40;
`
`id. at 45; id. at 69.
`
`Third, The Board’s decision fails to even mention or discuss the sixth “GUI
`
`to Delete” element at all. In failing to account for every element of claims 5 and 8,
`
`the Board erred which provides a standalone reason to reverse, or at the very least
`
`vacate and remand. See In re Gartside, 203 F.3d at 1316.
`
`3. The Board erred by constructing another impermissibly new and
`incorrect theory that cherry picked an unrelated argument and applied
`it out of context.
`
`The Board also erred by constructing another theory that borrowed unrelated
`
`reasoning from Canon. The Board held that “Hiroishi discloses CPU 41 is
`
`responsible for the entire operation of the mobile phone 40” and executes “various
`
`control programs” that are stored in a read only memory (ROM) and are loaded to a
`
`
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`-11-
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`

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`random access memory (RAM) “at the time of execution.” FWD at 45-46 (citing
`
`Canon’s Petition). This holding was erroneous for a number of reasons. First, the
`
`Board cited an argument from Canon’s petition regarding unrelated Claim 14, not
`
`claims 5 or 8. Paper 1 at 50. The quote refers to “non-transitory computer readable
`
`medium”: a term unrelated to and not present in claims 5 and 8. Id. at 50. Second,
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`much of this language is not present in Canon’s Petition or Reply, including: (a) “is
`
`responsible for the entire operation of the mobile phone 40”; (b) “various control
`
`programs”; and (c) “at the time of execution.” This new theory by the Board was
`
`both error and not supported by substantial evidence. See Sirona Dental Sys., 892
`
`F.3d at 1356 (holding “[i]t would thus not be proper for the Board to deviate from
`
`the grounds in the petition and raise its own obviousness theory”).
`
`Third, the Board further erred by fashioning another impermissibly new
`
`theory to incorrectly hold that Canon had somehow claimed “a mobile software
`
`application” could be limited to a single application. The Board held that “Hiroishi’s
`
`disclosure of the mobile phone software taking the form of ‘various control
`
`programs’ is consistent with the ’698 patent’s description of different modules in
`
`‘one box’ called ‘client application.’” FWD at 46. This is the Board’s theory, not
`
`Canon’s. Indeed, Canon never used a “CPU running various control program” theory
`
`to equate to single mobile software application anywhere in its Petition or Reply
`
`brief. See Alacritech, Inc. v. Intel Corp., 966 F.3d 1367, 1372 (Fed. Cir. 2020)
`
`
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`-12-
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`

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`(where this Court vacated the Board’s decision after finding the Board’s reasoning
`
`was “untethered to either party’s position”).
`
`G. THE BOARD ERRED IN NOT CONSTRUING “ALONG WITH”
`
`All independent claims of the ’698 Patent require that a cellular phone is
`
`“configured to” “use HTTP to upload the received new-media file along with user
`
`information to a user media publishing website.” Ex. 1001 at 12:15-21, 13:8-18,
`
`240-242 (emphasis added). Cellspin informed the Board that the BRI of a “along
`
`with” is “in addition to (something or someone).”1 Paper 17 at 22-23. And in the
`
`context of the ’698 Patent, “in addition to” requires that additional information like
`
`“user information” be communicated in addition to—and not as an integral part of—
`
`the received new-media file. Paper 17 at 40-41. However, the Board determined
`
`“[Cellspin]’s proposed construction is not supported by the intrinsic record” and
`
`therefore “does not require construction.” The BRI of “along with” is “in addition to
`
`(something or someone).” Paper 17 at 23. The Board erred by not construing this
`
`term.
`
`The Board’s decision not to construe this term resulted from its incorrect
`
`determination that “[n]either the Specification nor the written description of the ’802
`
`
`
`See
`1
`https://www.merriam-
`dictionary:
`Merriam-Webster
`webster.com/dictionary/along%20with. (last visited Dec. 7, 2020).
`
`
`
`-13-
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`

`

`application uses ‘along with’ outside the claims.”2 FWD at 18. But this conclusion
`
`was incorrect. On the contrary, the intrinsic record does use the term “along with”
`
`twice, and explicitly connects it to “additional information”:
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`Otherwise, the user 201 transfers the multimedia object for publishing to a
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`publication space selected by the user 201. Additional information such as the list of
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`the user preferences of the publication virtual spaces 205, authentication
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`identification, user preferences, default settings, manually entered geographical
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`codes, and auction identifiers for eBay® and other shopping websites are selected
`
`407 and transferred along with the user created multimedia content to the publishing
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`service 204. A remote method call 408 such as extensible markup language-remote
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`procedure call 20 (XML-RPC) may be initiated by the client application 202 to
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`transfer the user created multimedia content along with the additional information
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`to the publishing service 204. Ex. 2024 at 24 ll. 13-18. As this passage from the ’698
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`Patent shows, a variety of information was contemplated as being sent along with
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`the multimedia file. That information included: (1) user preferences, (2)
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`authentication identification, (3) user preferences, (4) default settings, (5)
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`geographical codes, and (6) auction identifiers. Id. Contrary to the Board’s holding,
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`
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`2 As noted by the decision: “U.S. No. 11/901,802 (’802 application, Ex. 2021) is
`incorporated by reference in the Specification.” FWD at 18.
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`-14-
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`

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`these complex settings could not possibly have been incorporated into a media file’s
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`name. The only reasonable conclusion is that Cellspin intended for the term “along
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`with” to indicate that additional information would be sent in addition to the media
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`file and not incorporated into the filename.
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`The Board stated: “We are not persuaded by [Cellspin]’s arguments because
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`we rejected its narrow construction of ‘along with.’” FWD at 36. Under a proper
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`construction, the prior art does not disclose “using HTTP to upload a media file
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`along with user information” where the user information is separate from the media
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`file.
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`CONCLUSION
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`For these reasons, Cellspin respectfully requests that the Director review and
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`vacate the FWD. Moreover, under Athrex, this review cannot be performed by Mr.
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`Hirshfeld, who currently holds the title of “performing the functions and duties of
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`the Under Secretary of Commerce for Intellectual Property and Director of the
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`USPTO.” Though there is no doubt that Mr. Hirshfeld holds that interim title with
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`the utmost integrity, skill, and experience, “[o]nly an officer properly appointed to a
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`principal office may issue a final decision binding the Executive Branch.” Arthrex,
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`Inc., 141 S. Ct. 1970 (June 21, 2021).
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`-15-
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`

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`Respectfully submitted,
`
`/Peter J. Corcoran III/
`Reg. No. 56,037
`CORCORAN IP LAW PLLC
`4142 McKnight Road
`Texarkana, Texas 75503
`Telephone: 903-701-2481
`Facsimile: 844-362-3291
`Email: peter@corcoranip.com
`
`Attorney for Appellant,
`Cellspin Soft, Inc.
`
`
`Dated: September 1, 2021
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`
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`-16-
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 1, 2021, a copy of the foregoing document
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`was served by filing this document through the PTAB’s E2E Filing System as well
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`as
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`delivering
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`a
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`copy
`
`via
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`electronic
`
`mail
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`to
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`Director_PTABDecision_Review@USPTO.gov and upon the following attorneys
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`of record for the Petitioner:
`
`jarednewton@quinnemaneul.com
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`
`/Peter J. Corcoran III/
`Reg. No. 56,037
`CORCORAN IP LAW PLLC
`4142 McKnight Road
`Texarkana, Texas 75503
`Telephone: 903-701-2481
`Facsimile: 844-362-3291
`Email: peter@corcoranip.com
`
`Attorney for Appellant,
`Cellspin Soft, Inc.
`
`
`
`
`