Trials@uspto.gov
`571-272-7822
`
`Paper No. 51
`Date: April 28, 2020
`
`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.
`___________
`
`IPR2019-001271
`Patent 9,258,698 B2
`____________
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Strike
`Denying Patent Owner’s Motion to Strike/Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. (’1107 Petitioners)
`were joined to this proceeding. See Paper 27, 30 (ordering that “the ’1107
`Petitioners are joined with IPR2019-00127”).
`
`
`
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`
`INTRODUCTION
`I.
`Canon U.S.A., Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) pursuant
`to 35 U.S.C. §§ 311–19 to institute an inter partes review of claims 1–22
`(“challenged claims”) of U.S. Patent No. 9,258,698 (“’698 patent”), which was
`filed on November 5, 2014.2 Ex. 1001, code (22). Cellspin Soft, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We instituted an
`inter partes review of all challenged claims (Paper 7, “Inst. Dec.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper 17,
`“PO Resp.”), Petitioner filed a Reply (Paper 24, “Reply”), and Patent Owner filed
`a Sur-Reply (Paper 29, “Sur-reply”). The Petition is supported by the Declaration
`of Dr. Vijay Madisetti, Ph.D. (Ex. 1003, “Madisetti Declaration”). The Reply is
`supported by the Reply Declaration of Dr. Vijay Madisetti, Ph.D. (Ex. 1043,
`“Madisetti Reply Declaration”). The deposition of Dr. Madisetti was taken by
`Patent Owner after the Madisetti Declaration was filed (Ex. 1042, “Madsetti
`Deposition”).3 The Response is supported by the Declaration of Dr. Michael Foley
`(Ex. 2009, “Foley Declaration”). The Sur-reply is supported by the Declaration of
`Dr. Michael Foley Concerning Patent Owner’s Sur-reply to Petitioner’s Reply (Ex.
`
`
`2 Petitioner states that the ’698 patent claims priority to Provisional Application
`No. 61/017,202, filed December 28, 2007. Pet. 6; Ex. 1001, code (60), 1:26–29.
`All of the prior art references were published or issued more than one year prior to
`December 11, 2008—the filing date of the earliest application in the chain of
`related continuation applications. See Ex. 1001, code (63). We therefore do not
`reach the issue of whether any of the challenged claims are entitled to the filing
`date of the provisional application.
`3 Panasonic Corporation and Panasonic Corporation of North America also filed a
`petition for inter partes review of some of the claims of the ’698 patent in
`Panasonic Corporation of North America et al., v. Cellspin Soft, Inc., IPR2019-
`00131 (“’131 IPR”). The ’131 IPR alleges different grounds of unpatentability.
`
`
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`IPR2019-00127
`Patent 9,258,698 B2
`2026, “Foley Sur-reply Declaration”). The deposition of Dr. Foley was taken by
`Petitioner after the Foley Declaration was filed (Ex. 1040, “Foley Deposition”).
`An oral hearing was held on January 28, 2020, and a transcript made of record
`(Paper 50, “Tr.”).
`We authorized each party to file a motion to strike (Paper 36, “Order”).
`Pursuant to our Order, Petitioner filed a Motion to Strike New Arguments and
`Evidence Submitted in Patent Owner’s Sur-Reply (Paper 44, “Pet. Mot.”), to which
`Patent Owner filed a Response (Paper 40, “PO Opp.”). Also as authorized in the
`Order, Patent Owner filed its separate Motion to Strike and, Alternatively, Exclude
`Improper Reply and Reply Evidence (Paper 43, “PO Mot.), to which Petitioner
`filed an Opposition (Paper 45, “Pet. Opp.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is
`entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`discussed below, Petitioner has shown by a preponderance of the evidence that
`claims 1–22 of the ’698 patent are unpatentable.
`II. BACKGROUND
`A. Related Proceedings
`Petitioner advises us that Patent Owner has asserted the ’698 patent against
`Petitioner in Cellspin Soft, Inc. v. Canon USA, Inc., No. 4:17-cv-05938 (N.D. Cal.)
`(“District Court lawsuit”). Pet. 2. Patent Owner has also asserted the ’698 patent
`against other parties in the U.S. District Court for the Northern District of
`California, including the following: JK Imaging, Ltd. (Case No. 4:17-cv-06881);
`Garmin International, et al. (Case No. 4:17-cv-05934); GoPro, Inc. (Case No. 4:17-
`cv-005939); and Panasonic Corporation of America (Case No. 4:17-cv-05941).
`Pet. 3; Paper 4, 2.
`In each of these district court cases, the District Court granted a motion to
`dismiss, finding the claims of the ’698 patent ineligible for patent protection under
`
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`Patent 9,258,698 B2
`35 U.S.C. § 101. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1309 (Fed.
`Cir. 2019); see also Ex. 1021 (Order Re: Omnibus Motion to Dismiss; Motion for
`Judgment on the Pleadings, dated April 3, 2018)). On June 25, 2019, the Federal
`Circuit vacated the district court’s dismissal and remanded for further proceedings.
`Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1309, 1320 (Fed. Cir. 2019).
`The ’698 patent is also challenged in the ’131 IPR. Petitioners in GoPro,
`Inc., Garmin International, Inc. and Garmin USA, Inc. v. Cellspin Soft, Inc.,
`IPR2019-01108 (“’1108 IPR”) were joined as parties to the ’131 IPR. See ’131
`IPR, Paper 27 (joining ’1108 petitioners to the ’131 IPR).
`B. Real Parties in Interest
`Petitioner Canon U.S.A., Inc. alleges it is a real-party-in-interest, as is its
`parent corporation Canon, Inc. Pet. 2. GoPro, Inc., Garmin Int’l, Inc., Garmin
`USA, Inc., Garmin Switzerland GmbH are also identified as real parties in interest.
`IPR2019-01107, Paper 1, 2. Patent Owner Cellspin Soft, Inc. alleges it is the real-
`party-in-interest. Paper 4, 2.
`C. Technology and the ’698 Patent
`The ’698 patent is directed to “distribution of multimedia content.”
`Ex. 1001, 1:40–41. The system described includes using a digital data capture
`device in conjunction with a cellular phone to automatically publish “data and
`multimedia content on one or more websites simultaneously.” Id. at 1:41–45.
`1. Technology
`According to the ’698 patent, in the prior art,
`the user would capture an image using a digital camera or a video
`camera, store the image on a memory device of the digital camera, and
`transfer the image to a computing device such as a personal computer
`(PC). In order to transfer the image to the PC, the user would transfer
`the image off-line to the PC, use a cable such as a universal serial bus
`(USB) or a memory stick and plug the cable into the PC. The user
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`IPR2019-00127
`Patent 9,258,698 B2
`would then manually upload the image onto a website which takes time
`and may be inconvenient for the user.
`
`
`Ex. 1001, 1:46–55.
`
`2. The ’698 Patent (Ex. 1001)
`The ’698 patent describes a digital data capture device, which may be “a
`digital camera, a video camera, digital modular camera systems, or other digital
`data capturing systems.” Ex. 1001, 3:34–38, 3:41–44. The digital data capture
`device works with a Bluetooth-enabled mobile device, e.g., a cell phone, “for
`publishing data and multimedia content on one or more websites automatically or
`with minimal user intervention.” Id. at 3:34–38.
`Figure 2 of the ’698 patent is reproduced below.
`
`
`Figure 2 “illustrates a system for utilizing a digital data capture device in
`conjunction with a Bluetooth enabled mobile device.” Ex. 1001, 3:14–18.
`Referring to Figure 2, “[t]he BT [(‘Bluetooth’)] communication device 201a on the
`digital data capture device 201 is paired 103 with the mobile device 202 to
`establish a connection between the digital data capture device 201 and the mobile
`device 202.” Id. at 3:60–63. According to the ’698 patent, Bluetooth pairing
`involves establishing a connection between two Bluetooth devices that “mutually
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`agree to communicate with each other.” Id. at 3:63–65. A communication may be
`authenticated cryptographically using a “common password known as a passkey,”
`which “is exchanged between the BT communication device 201a and the mobile
`device 202.” Id. at 3:65–4:8.
`Still referring to Figure 2, a user captures data and multimedia content using
`digital data capture device 201. Ex. 1001, 4:26–27. Client application 203 on
`mobile device 202 detects the captured data, the multimedia content, and “files
`associated with the captured data and the multimedia content.” Id. at 4:29–32.
`The client application initiates a transfer of the captured data and the digital data
`capture device automatically transfers the captured data from the mobile device
`using one or a combination of file transfer protocols. Id. at 4:32–42. The transfer
`protocols include “one or a combination of BT profile protocols such as the object
`exchange (OBEX) protocol,” such as the generic object exchange profile (GOEP)
`protocol, the media transfer protocol (MTP) the picture transfer protocol (PTP),
`and the PictBridge protocol implemented using a USB. Id. at 4:42–48.
`The user may set preferences regarding timing of the publication of the
`captured data and the destination website. Ex. 1001, 5:23–38. “The client
`application 203 on the mobile device 202 then automatically publishes 107 the
`transferred data and multimedia content on one or more websites.” Id. at 5:39–41.
`D. Illustrative Claim
`Claims 1 (method), 5 (device), 8 (system), and 13 (computer
`readable-medium) are independent claims. Claims 2–4 depend directly from
`claim 1. Claims 6, 7, 17, 19, and 21 depend directly or indirectly from claim 5.
`Claims 9–12, 20, and 22 depend directly or indirectly from claim 8. Claims 14–16
`and 18 depend directly from claim 13.
`Claim 1 is reproduced below as illustrative.
`
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`IPR2019-00127
`Patent 9,258,698 B2
`[1(a)4] A machine-implemented method of media transfer, comprising:
`
`[1(b)] for a digital camera device having a short-range wireless
`capability to connect with a cellular phone, wherein the cellular
`phone has access to the internet, performing in the digital camera
`device:
`
`
`[1(c)] establishing a short-range paired wireless connection between the
`digital camera device and the cellular phone, wherein establishing
`the short-range paired wireless connection comprises, the digital
`camera device cryptographically authenticating
`identity of the
`cellular phone;
`
`
`[1(d)] acquiring new-media, wherein the new-media is acquired after
`establishing the short-range paired wireless connection between the
`digital camera device and the cellular phone;
`
`
`[1(e)] creating a new-media file using the acquired new-media;
`
`[1(f)] storing the created new-media file in a first non-volatile memory
`of the digital camera device;
`
`
`[1(g)] receiving a data transfer request initiated by a mobile software
`application on the cellular phone, over the established short-range
`paired wireless connection, wherein the data transfer request is for
`the new-media file, and wherein the new-media file was created in
`the digital camera device before receiving the data transfer request;
`and
`
`
`[1(h)] transferring the new-media file to the cellular phone, over the
`established short-range paired wireless connection, wherein the
`cellular phone is configured to receive the new-media file, wherein
`the cellular phone is configured to store the received new-media file
`in a non-volatile memory device of the cellular phone,
`
`
`
`4 Petitioner identifies limitations using a format where the claim number is
`followed by the claim’s limitations designated by letters within parentheses. See,
`e.g., Pet. 9–10 (claim 1(a)–(j)). Patent Owner adopts the format. See PO Resp. 30
`(limitation 1(c)). We also adopt the format.
`
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`[1(i)] wherein the cellular phone is configured to use HTTP to upload
`the received new-media file along with user information to a user
`media publishing website, and
`
`
`[1(j)] wherein the cellular phone is configured to provide a graphical
`user interface (GUI) in the cellular phone, wherein the graphical
`user interface (GUI) is for the received new-media file and to delete
`the created new-media file.
`
`Ex. 1001, 11:54–12:26 (alterations and line breaks added); see Pet. 9–10.
`
`
`E. Evidence
`Hiroishi, JP 2003-60953, published February 28, 2003 (“Hiroishi,”
`1.
`Ex. 1004 (original Japanese language version, Ex. 1005 (certified English
`translation)). We reference the English translation, Exhibit 1005.
`2.
`Takahashi, JP 2005-303511, published October 27, 2005
`(“Takahashi,” Ex. 1007 (original Japanese language version), Ex. 1008 (certified
`English language translation)). We reference the English translation, Exhibit 1008.
`3.
`Ando, JP P2003-46841A, published February 14, 2003 (“Ando,” Ex.
`1014 (original Japanese language version), Ex. 1015 (certified English
`translation)). We reference the English translation, Exhibit 1015.
`4.
`Nozaki, JP 2004-96166, published March 25, 2004 (“Nozaki,” Ex.
`1011 (original Japanese language version), Ex. 1011 (certified English
`translation)). We reference the English translation, Exhibit 1011.
`5.
`Hollstrom, US Patent No. 6,763,247 B1, issued July 13, 2004
`(“Hollstrom,” Ex. 1013).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–22 are unpatentable. Pet. 4–5. Petitioner
`alleges the following grounds:
`
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`IPR2019-00127
`Patent 9,258,698 B2
`Claims Challenged
`1–20
`21, 22
`1–22
`21, 22
`1, 3–5, 7, 8, 10–13,
`15–20
`2, 6, 9, 14, 21, 22
`
`
`
`35 U.S.C. §5
`103
`103
`103
`103
`103
`103
`
`References/Basis
`Hiroishi, Takahashi
`Hiroishi, Takahashi, Ando
`Hiroishi, Takahashi, Nozaki
`Hiroishi, Takahashi, Nozaki, Ando
`Hollstrom, Takahashi
`Hollstrom, Takahashi, Ando
`
`III. ANALYSIS
`A. Claim Construction
`This Petition was filed prior to November 13, 2018, and so we interpret
`claim terms of the challenged claims using the broadest reasonable construction in
`light of the specification of the ’698 patent (“BRI”). 37 C.F.R. § 42.100(b) (2018);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the
`use of broadest reasonable construction standard in inter partes review); see also
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,340 (Oct. 11, 2018) (final rule) (“This rule is effective on November 13, 2018
`and applies to all IPR, PGR and CBM petitions filed on or after the effective
`date.”).
`Patent Owner identifies “paired connection,” “cryptographically
`authenticating,” “graphical user interface” (“GUI”), and “along with” as requiring
`
`
`5 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284,
`285–88 (2011), amended 35 U.S.C. §§ 102 and 103, and those amendments
`became effective March 16, 2013. The ’698 patent claims priority through a chain
`of continuation applications to Application 12/333,303 [U.S. Pat. No. 8,392,591],
`filed on December 11, 2008, which is before the effective date of the relevant
`sections of the AIA. Ex. 1001, code (63). Thus, the grounds asserted are under the
`pre-AIA version of § 103.
`
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`IPR2019-00127
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`construction. PO Resp. 13–17 (“paired connection”), 17–21 (“cryptographically
`authenticating”), 21–22 (“GUI”), 22–23 (“along with”); see also id. at 23
`(summarizing Patent Owner’s proposed claim constructions). Petitioner’s Reply
`agrees with the preliminary construction of “cryptographically authenticating”
`from the Institution Decision. Reply 7–8 (citing Inst. Dec. 12). With respect to the
`other terms Patent Owner proposes for construction, Petitioner relies on plain and
`ordinary meaning of the terms. Id. at 3–9.
`1. “paired wireless connection” (claims 1, 2, 5–6, 8–9, 13–14, 17–20)
`The claim terms “paired wireless connection” (sometimes referred to here
`and in the papers as “paired,” “paired connection,” or “pairing”) and
`“cryptographically authenticating,” discussed immediately below in Section
`III.A.2, appear in the following “wherein” clause of claim 1:
`wherein establishing
`the short-range paired wireless connection
`comprises, the digital camera device cryptographically authenticating
`identity of the cellular phone.
`
`Ex. 1001, 11:62–65 (emphasis added). The same language appears following
`“wherein” clauses in the other independent claims 5, 8, and 13. For purposes of
`institution in this case, we did not expressly construe the term “paired.” Inst. Dec.
`10.
`
`Patent Owner proposes that the BRI of “paired connection” as
`bidirectional communications link between devices which provides
`encrypted data exchange between the devices, and the communication
`link can be disconnected and reconnected without having to repeat
`pairing or authentication.
`
`PO Resp. 16 (citing Ex. 2009 ¶¶ 46–47) (emphasis omitted). Petitioner disagrees
`and argues “the term should receive its plain and ordinary meaning which, under
`the broadest reasonable interpretation, encompasses an association between two
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`devices that allows for two-way communication over a wireless connection.”
`Reply 6–7.
`Among other arguments based on the Specification, Patent Owner argues
`“Figure 1 of the ’698 patent illustrates a method of utilizing a digital data capture
`device 201 in conjunction with a physically separate Bluetooth enabled mobile
`device 202.” PO Resp. 13 (citing Ex. 1001, 3:34–41); id. at 14 (quoting Ex. 1001,
`3:60–4:25), see also id. (citing Ex. 1001, 4:1–3, 6:23–39 (further describing
`Bluetooth pairing)). Relying on the cited disclosures from columns 3 and 6 of the
`’698 patent and the Bluetooth specification, Patent Owner argues “pairing involves
`association and an exchange of credentials to fulfilling the agreement in addition to
`merely communicating back and forth.” Id. at 14 (citing Ex. 2009 ¶ 45), id. at 15–
`16 (citing Ex. 2018,6 80, 135; Ex. 2009 ¶ 46).
`With respect to the “association” of Bluetooth pairing, Patent Owner cites to
`the Bluetooth specification’s (Ex. 2018) description of “Association Models.” PO
`Resp. 15–16 (citing Ex. 2018, 80, 135 (§§ 5.4, 5.4.5, Fig. 1)). Patent Owner
`contends to a person of ordinary skill, “under BRI, pairing is the steps taken which
`result in a paired connection.” Id. at 16 (citing Ex. 2009 ¶¶ 46–47) (emphasis
`omitted). Further, according to Patent Owner, “a paired connection must be
`distinguished from mere authentication and from other methods of
`communications that involve exchanges of credentials but not pairing.” Id. at 17
`(citing Ex. 2009 ¶ 48) (emphasis omitted).
`Petitioner first argues Patent Owner’s proposal is too narrow in requiring
`“encrypted data exchange” and the ability of a pairing once made to “be
`
`
`6 Bluetooth Specification, Version 2.1 (Bluetooth Special Interest Group (“SIG”)
`2007). Exhibit 2006 is a duplicate of Exhibit 2018. Petitioner’s evidence includes
`the Specification of the Bluetooth System, Version 1.1 (Bluetooth SIG 2001), Ex.
`1018.
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`disconnected and reconnected without having to repeat pairing or authentication.”
`Reply 3–4 (citing Ex. 1001, 11:54–12:26 (claim 1); Ex. 1040, 27:2–10; Ex. 1041,
`58:18–24, 99:5–17). Second, Petitioner argues there is no definition of “paired
`connection” nor is there a disavowal of a broader “understanding of the term.” Id.
`at 4 (citing Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`Cir. 2014)). Petitioner notes that the claims and Specification are not limited to
`Bluetooth. Id. (citing Ex. 1001, 9:45–47 (“The method and system disclosed
`herein is realized with, but not limited to Bluetooth communication protocol.”),
`claim 19). In addition, according to Petitioner, the Specification’s description of
`Bluetooth “says nothing about encrypted data exchange or disconnecting and
`reconnecting.” Id. at 4–5 (citing Ex. 1001, 3:60–4:25). Third, Petitioner argues
`that Patent Owner improperly relies on extrinsic evidence that contradicts the
`intrinsic evidence—namely Dr. Foley’s declaration, which relies exclusively on the
`Bluetooth specification, even though the Specification and claims expressly state
`that pairing is not limited to Bluetooth. Id. at 5.
`We agree with Petitioner’s arguments and reasoning and decline to adopt
`Patent Owner’s construction. As further explained below, we also need not adopt
`any construction that Patent Owner alleges Petitioner makes in its Reply. See
`Reply 7; see also Section III.K.2 below.
`Patent Owner’s construction requires both “encrypted data exchange” and
`that “the communication link can be disconnected and reconnected without having
`to repeat pairing or authentication.” Neither the claims nor the Specification
`mention “encrypted data exchange,” or disconnection and reconnection, or
`equivalent language, in the context of pairing. Patent Owner cites to none. The
`Specification mentions “encryption” once, explaining that “various security,
`encryption and compression techniques” can be used “to enhance the overall user
`experience.” Ex. 1001, 10:60–62 (emphasis added). But that discussion does not
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`relate to “paired connection” but rather describes “algorithms . . . [that] may be
`implemented in a computer readable medium.” Id. at 10:16–19.
`The ’698 patent also expressly states that the invention is not limited to a
`Bluetooth embodiment. Ex. 1001, 9:45–47 (“The method and system disclosed
`herein is realized with, but not limited to Bluetooth communication protocol.”).
`Moreover, dependent claims 17 and 18 recite that “the short-range paired wireless
`connection is one of a Bluetooth paired wireless connection, a Wi-Fi paired
`wireless connection, and other personal area wireless networking technologies that
`use pairing.” Ex. 1001, 16:10–15.
`Patent Owner’s inclusion of “encrypted data exchange” is based on the
`Specification’s description of initiating the Bluetooth pairing process by
`exchanging “a passkey . . . between the BT communication device 201a and the
`mobile device 202.” PO Resp. 13; see also Ex. 1001, 4:3–7 (describing initiating
`the “pairing process” by exchanging a passkey). Patent Owner contends that
`“encrypted data exchange” must be “provided for” and that a person of ordinary
`skill would have understood that pairing “provides for encryption.” Tr. 43:1–
`44:12; see Sur-reply 6 (“Cellspin’s construction states encryption is provided for,
`but not required.”) (emphasis omitted).
`Patent Owner argues the Specification supports its construction. Sur-reply
`6. Specifically, Patent Owner argues a person of ordinary skill “reading the
`specification would already understand that pairing provides for encrypted data
`exchange and that a touchstone of paired connections is that they are ‘disconnected
`and reconnected without having to repeat pairing or authentication.’” Id. (quoting
`Ex. 2026 ¶ 50).
`Patent Owner does not persuasively explain how Dr. Foley’s testimony,
`which in turn is based on the Bluetooth specification, supports Patent Owner’s
`proposed construction of “paired wireless connection.” As explained above, the
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`Specification’s discussion of Bluetooth falls far short of forming any basis for
`incorporating features of Bluetooth into the construction of “paired connection.”
`The independent claims broadly recite “paired wireless connection” and are not
`limited to Bluetooth pairing.
`The cited paragraph of Dr. Foley’s Sur-reply Declaration includes a
`statement that the Specification would “enable a [person of ordinary skill] to make
`and use the invention.” See Ex. 2026 ¶ 50. Enablement is not at issue. What is at
`issue is the extent to which the Specification describes pairing as requiring
`“encrypted data exchange” and disconnecting and reconnecting. Dr. Foley’s
`unsupported conclusion that Petitioner is “incorrect” in arguing no such support is
`present is not persuasive. Id.
`Patent Owner relies on the Foley Declaration as support for the
`disconnection and reconnection part of its proposal. See PO Resp. 16 (citing Ex.
`2009 ¶¶ 46. 47). The cited paragraphs describe features of Bluetooth’s
`“Association Model,” which includes illustrations of “Secure Simple Pairing.” Ex.
`2009 ¶ 46 (citing Ex. 2018, 80, 135 , Fig. 5.1). In its Sur-reply, Patent Owner
`relies on Dr. Madisetti’s citation to the Bluetooth specification as purported further
`support. Sur-reply 7 (citing Ex. 2026 ¶ 54); Ex. 2026 ¶ 54 (citing Madisetti Reply
`Declaration and Bluetooth specification); Ex. 1043 ¶ 5 (citing Ex. 10187 ¶ 18).
`That a passkey is disclosed as part of initiating a Bluetooth pairing process
`in the Specification does not mean that aspect of Bluetooth should be incorporated
`into the construction of “paired connection” to support “encrypted data exchange”
`in Patent Owner’s proposed construction, particularly when the Specification
`explicitly states that the invention is not limited to Bluetooth. See SuperGuide
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[I]t is
`
`
`7 Specification of the Bluetooth System, Version 1.1 (Feb. 22, 2001).
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`important not to import into a claim limitations that are not a part of the claim.”).
`Similarly, that Bluetooth provides that “a paired connection must be capable of
`being disconnected” is part of the Bluetooth specification and not the claims or the
`Specification. See Ex. 2026 ¶ 54. For both proposed additions, “encryption” and
`“reconnection,” an improper incorporation of the Bluetooth specification is
`required to support Patent Owner’s position. The intrinsic evidence of the claim
`language and Specification does not provide that support.
`As discussed above, the intrinsic evidence does not support Patent Owner’s
`proposed construction. The extrinsic evidence cited by Patent Owner includes the
`Bluetooth specification and the Foley Declaration and Reply Declaration. See PO
`Resp. 15–17 (citing Ex. 2006/2018, 35, 80, 133, 135; Ex. 2009 ¶¶ 46–48); Sur-
`reply 4–8 (citing Ex. 1018, 150; Ex. 2006, 35, 133, Fig. 5.1; Ex. 2026 ¶¶ 12, 31–
`38, 40–42, 44–46, 49–50, 54–56, 65–70; Ex. 2031,8 13–14). The extrinsic
`evidence of the Bluetooth specification (Exhibits 2006/2018, 2031) shows that
`Bluetooth pairing has certain features, but the intrinsic evidence supports our
`conclusion that the invention is not limited to Bluetooth and need not include in the
`pairing process the particular functionality of Bluetooth identified by Patent
`Owner. The Foley Declaration also cites to the Bluetooth specification. See Ex.
`2009 ¶ 46 (citing Ex. 2018, 80, 135, Fig. 5.1). Only one of the citations to the
`Foley Sur-reply Declaration relates to claim construction and it has been discussed
`above. See Ex. 2026 ¶¶ 49–50.9
`Dr. Foley’s testimony that other types of paired connections include
`encryption and store reconnection information also is not persuasive. See Ex. 2026
`
`
`8 Bluetooth Specification, File Transfer Protocol (Bluetooth SIG © 2001–2015).
`9 The other cited paragraphs of the Foley Reply Declaration: deny contentions
`made in Petitioner’s Reply; explain Foley Deposition testimony (Ex. 2026 ¶¶ 12,
`44–46, 54–56, 65–70); discuss Zigbee Forum and Wi-Fi Alliance as other
`
`15
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`¶¶ 31–37. For example, the ZigBee standard relied on by Patent Owner
`undermines Patent Owner’s argument. ZigBee states that “[p]airing is the process
`by which devices establish bidirectional links with other devices.” Ex. 2003, 6.10
`ZigBee further states: “If a pairing is successful and if the originator and recipient
`both support security, a key exchange procedure is then attempted. The key
`exchange establishes a link key that is used to encrypt messages sent between the
`originator and recipient.” Ex. 2003, 6. Thus, according to ZigBee, pairing occurs
`first and then, if the devices support security, they establish a link key. The link
`key establishment to provide encryption occurs after pairing. Therefore, ZigBee
`does not support Patent Owner’s contention that pairing itself includes encryption.
`Furthermore, it is important to note that the dispute here is over the meaning
`of the claim term “paired wireless connection.” Patent Owner argues that “a paired
`connection may be encrypted or unencrypted and even change from encrypted to
`unencrypted during a connection.” Sur-reply 3. Thus, Patent Owner
`acknowledges that an unencrypted paired connection is still a paired connection.
`Whether additional steps are taken to “provide[] encrypted data exchange” under
`Patent Owner’s proposed construction (PO Resp. 16) does not change the fact that
`an unencrypted paired connection satisfies the requirement of a paired connection.
`The Specification describes an embodiment in which a BT communication
`device on a “digital data capture device” (such as a digital camera) and a “mobile
`device” (such as a cellular phone) are “paired.” Ex. 1001, 3:60–63. The
`Specification further explains—in connection with that embodiment—that
`“pairing” “involves establishing a connection between two . . . devices that
`
`
`protocols for pairing which also reconnect without repeating the pairing process
`(Ex. 2026 ¶¶ 31–37); rebut Petitioner’s alleged “new construction” for pairing (Ex.
`2026 ¶¶ 38, 40–42).
`10 We refer to the exhibit page numbers added by Patent Owner.
`
`16
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`mutually agree to communicate with each other.” Id. at 3:63–67 (in the context of
`Bluetooth); see also Tr. 11:16–23 (Petitioner argument for plain and ordinary
`meaning of “paired” citing to same). This description does not include a
`requirement of encrypted data exchange or disconnection and reconnection.
`Patent Owner’s reliance on extrinsic evidence in the form of the Bluetooth
`specification, and expert testimony which relies on the Bluetooth specification,
`improperly incorporates Bluetooth features, even though the Specification and
`claims show that the invention is not limited to Bluetooth. See Ex. 1001, 9:45–47,
`16:10–15. Accordingly, we determine that “paired wireless connection” is not
`limited in the manner proposed by Patent Owner; rather, the phrase means “a
`wireless connection between two devices that mutually agree to communicate with
`each other.”
`2. “cryptographically authenticating” (claims 1, 5, 8, and 13)
`The claim term “cryptographically authenticating” is sometimes referred to
`here and by the parties as “cryptographic authentication,” “cryptographically
`authenticated,” or “authentication.” Patent Owner argues that “cryptographically
`authenticating” means “verified as a legitimate transmission, user, or system
`including by use of encryption and decryption involving an algorithm.” PO Resp.
`21, 23; see also id. at 17–21 (arguing against our preliminary construction) (citing
`Ex. 2009 ¶¶ 48, 50–56, 58–62), 23. Patent Owner, however, does not argue any
`distinction of the challenged claims over the prior art based on its proposed
`construction. See PO Resp. 33–38. Rather, Patent Owner acknowledges that
`cryptographic authentication was known but argues against Petitioner’s motivation
`to modify Hiroishi and Hollstrom to include it. See, e.g., PO Resp. 37 (“[T]he
`Bluetooth standard does support authentication and encryption as optional features
`in the core specification.”). Thus, we find it unnecessary to construe the term
`“cryptographically authenticating” to address the patentability issues before us.
`
`17
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`See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (“[W]