Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Entered: April 29, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON U.S.A., INC.,
`Petitioner,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`___________
`
`Case IPR2019-00127
`Patent 9,258,698 B2
`____________
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Entered: April 29, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON U.S.A., INC.,
`Petitioner,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`___________
`
`Case IPR2019-00127
`Patent 9,258,698 B2
`____________
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`
`I.
`
`INTRODUCTION
`
`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, 2014.1 Ex. 1001, [22]. The Petition is
`
`supported by the Declaration of Dr. Vijay Madisetti, Ph.D. (“Madisetti
`
`Declaration,” Ex. 1003). Cellspin Soft, Inc. (“Patent Owner”) filed a
`
`Preliminary Response (Paper 6, “Prelim. Resp.”).
`
`After considering the evidence and arguments presented in the
`
`Petition and Preliminary Response, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of success in proving that at least one
`
`claim of the ’698 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R.
`
`§ 42.4(a). We therefore institute an inter partes review of all of the
`
`challenged claims on the grounds articulated in the Petition as set forth
`
`below. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018); Guidance on the
`
`Impact of SAS on AIA Trial Proceedings (Apr. 26, 2018),
`
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`
`board/trials/guidance-impact-sas-aia-trial.
`
`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-
`
`
`1 Petitioner states that the ’698 patent claims priority to Provisional
`Application No. 61/017,202, filed December 28, 2007. Pet. 6; Ex. 1001,
`[60], 1:26–29. The parties do not raise an issue relating to the effective
`filing date of the challenged claims of the ’698 patent.
`
`2
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`IPR2019-00127
`Patent 9,258,698 B2
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`05938 (N.D. Cal.) (“District Court lawsuit”). The District Court lawsuit was
`
`dismissed, the court finding the claims of the ’698 patent unpatentable under
`
`35 U.S.C. § 101. Pet. 2 (citing Ex. 1021 (Order Re: Omnibus Motion to
`
`Dismiss; Motion for Judgment on the Pleadings, dated April 3, 2018)).
`
`Patent Owner has appealed to the U.S. Court of Appeals for the Federal
`
`Circuit, Appeal No. 2018-1823. Id. Federal Circuit Appeal No. 2018-1817,
`
`referenced below, is the lead case. Pet. 2; Paper 4, 2. 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); Nikon Americas Inc., et al.
`
`(Case No. 4:17-cv-05936); TomTom Inc., et al. (Case No. 4:17-cv-05937);
`
`GoPro, Inc. (Case No. 4:17-cv-005939); Eastman Kodak Co. (Case No.
`
`4:17-cv-05940); and Panasonic Corporation of America (Case No. 4:17-cv-
`
`05941). Pet. 3; Paper 4, 2. Petitioner asserts the following:
`
`The cases against JK Imaging, GoPro, and Panasonic were
`dismissed on the grounds that the claims of the ’698 Patent are
`directed to non-patentable subject matter, and are currently on
`appeal as part of lead case Appeal No. 2018-1817. The cases
`against TomTom and Eastman Kodak were dismissed. The case
`against Nikon remains pending.
`
`Pet. 3.
`
`
`2 Panasonic Corporation and Panasonic Corporation of North America have
`also filed a petition for inter partes review of some of the claims of the ’698
`patent in Panasonic Corporation of North America v. Cellspin Soft, Inc.,
`IPR2019-00131 (“’131 IPR”). The ’131 IPR alleges different grounds of
`unpatentability.
`
`3
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`Patent 9,258,698 B2
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`B. 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 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.
`
`4
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`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 agree to communicate with each
`
`other.” Id. at 3:60–65. The communication is 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. Id. at 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
`
`5
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`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) protocols,” 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.
`
`C. 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.
`
`[1(a)3] 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
`
`
`3 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)). We also adopt the format.
`
`6
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`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,
`
`
`[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
`
`7
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`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.
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims of the ’698 patent as unpatentable on the
`
`following grounds. Pet. 4–5, 19–62.
`
`Ground
`
`
`1
`2
`
`References
`
`Hiroishi4 and Takahashi5
`Hiroishi, Takahashi, and
`Ando7
`
`Basis
`
`§ 1036
`§ 103
`
`Claims
`Challenged
`1–20
`21, 22
`
`
`4 JP 2003-60953, to Toshiyuki Hiroishi, published February 28, 2003
`(“Hiroishi,” Ex. 1004 (original Japanese language version, Ex. 1005
`(certified English translation)). We reference the English translation,
`Ex. 1005.
`5 JP 2005-303511, to Susumu Takahashi, et al., published October 27, 2005
`(“Takahashi,” Ex. 1007 (original Japanese language version), Ex. 1008
`(certified English language translation)). We reference the English
`translation Ex. 1008.
`6 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, filed on December 11, 2008, which is before the effective date
`of the relevant sections of the AIA. Ex. 1001, [63]. Thus, on the present
`record, the grounds asserted are under the pre-AIA version of § 103.
`7 JP P2003-46841A, to Shigeru Ando, published February 14, 2003
`(“Ando,” Ex. 1014 (original Japanese language version), Ex. 1015 (certified
`English translation)). We reference the English translation, Ex. 1015.)).
`
`8
`
`
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`IPR2019-00127
`Patent 9,258,698 B2
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`
`Ground
`
`
`References
`
`3
`
`4
`
`5
`
`6
`
`Hiroishi, Takahashi, and
`Nozaki8
`Hiroishi, Takahashi, Nozaki,
`and Ando
`Hollstrom9 and Takahashi
`
`Hollstrom, Takahashi, and
`Ando
`
`III. ANALYSIS
`
`A. Claim Construction
`
`Basis
`
`§ 103
`
`Claims
`Challenged
`1–22
`
`§ 103
`
`21, 22
`
`§ 103 1, 3–5, 7, 8, 10–
`13, 15–20
`2, 6, 9,
`14, 21, 22.
`
`§ 103
`
`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. 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.”).
`
`Petitioner alleges generally that claim construction in this proceeding
`
`is governed by the broadest reasonable interpretation (“BRI”) standard but
`
`
`8 JP 2004-96166, to Hirotake Nozaki, published March 25, 2004 (“Nozaki,”
`Ex. 1011 (original Japanese language version), Ex. 1011 (certified English
`translation)). We reference the English translation, Ex. 1011)).
`9 U.S. Patent No. 6,763,247 B1, to Magnus Hollstrom, et al., issued July 13,
`2004 (“Hollstrom,” Ex. 1013).
`
`9
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`Patent 9,258,698 B2
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`does not identify or propose the construction of any term. Pet. 17–18. The
`
`Petition should set forth “[h]ow the challenged claim is to be construed.”
`
`37 C.F.R. § 42.104 (b)(3). Petitioner acknowledges the preceding and states
`
`that “the challenged claims should receive their BRI as understood by a
`
`[person of ordinary skill in the art] at the time of the alleged invention in the
`
`context of the patent.” Pet. 18. Petitioner then “reserve[s] the right” to
`
`address “any claim construction issues raised by Patent Owner in a
`
`Preliminary Response.” Id. We proceed on the understanding that
`
`Petitioner did not identify any dispute regarding claim construction and
`
`relies on the plain and ordinary meaning of the claim terms to a person of
`
`ordinary skill in the art.
`
`Patent Owner identifies two terms for potential construction, “paired”
`
`and “cryptographically authenticating.” Prelim. Resp. 13–16. Patent Owner
`
`argues that, based on specification of the ’698 patent and “the knowledge of
`
`both [persons of ordinary skill in the art] and laypersons, the term ‘paired’
`
`has a specific meaning in the art in regard to short range wireless, including
`
`preferred embodiment paired Bluetooth, communications.” Id. at 13. Patent
`
`Owner describes the Bluetooth pairing process and proposes that features of
`
`this process be included in the construction of “paired.” Id. at 14–16. For
`
`purposes of this Decision we need not construe the term “paired.”
`
`Patent Owner proposes that “cryptographically authenticating” be
`
`construed to mean “us[ing] a cryptographic key for authenticating
`
`something, e.g., a numerical value, exchanged during the pairing process.”
`
`Id. at 16. Patent Owner argues that cryptographic authentication is not used
`
`or described in isolation and that “[i]t is used inside a pairing context.” Id.
`
`10
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`Patent 9,258,698 B2
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`(citing Ex. 1001, 3:63–4:8; Ex. 2006,10 1068–1071). Patent Owner also cites
`
`extrinsic evidence descriptions of terms, including “cryptographic.” Id.
`
`(citing Ex. 2003,11 Ex. 2005,12 Ex. 2006).
`
`Both of the terms Patent Owner proposes for construction appear in
`
`the following “wherein” clause of claims 1, 5, 8, and 13:
`
`wherein establishing the short-range paired wireless connection
`comprises,
`the digital camera device cryptographically
`authenticating identity of the cellular phone.
`
`In the ’131 IPR, which also involves claims 1, 5, 8, and 13 of the
`
`’698 patent, Petitioners Panasonic Corporation and Panasonic Corporation of
`
`North America propose that the above “wherein” clause be construed as:
`
`wherein as part of establishing the short-range paired wireless
`connection between the digital camera device and the cellular
`phone, the digital camera authenticates the identity of the cellular
`phone using some form of secrecy, security, or encryption,
`including by use of a shared passkey on the digital camera device
`and the cellular phone.
`
`’131 IPR, Paper 1, 10–11. Patent Owner maintains the same position in the
`
`’131 IPR for the terms “paired” and “cryptographically authenticating” that
`
`it maintains in this proceeding. ’131 IPR, Paper 7, 12–16.
`
`This “wherein” clause recites “cryptographically authenticating” in
`
`the context of a “short-range paired wireless connection.” The ’698 patent’s
`
`specification identifies Bluetooth as a short-range wireless communication
`
`connection between devices. Ex. 1001, 2:5–9, 3:45–59, Figs. 1, 2. The ’698
`
`
`10 Bluetooth Specification, Version 2.1, July 26, 2007.
`11 Silicon Labs, UG103.10:RF4CA Fundamentals Rev. 0.2
`12 National Institute of Standards and Technology, Glossary of Key
`Information Security Terms, NISTIR 7298, Revision 2 (May 2013).
`
`11
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`patent explains the following: “A BT device that wants to communicate
`
`only with a trusted device can cryptographically authenticate the identity of
`
`another BT device. BT pairing occurs when the BT communication device
`
`201a agrees to communicate with the mobile device 202 in order to establish
`
`a connection.” Id. at 3:65–4:3. With respect to “cryptographically
`
`authenticating,” the specification goes on to state:
`
`In order to initiate the pairing process between the BT
`communication device 201a and the mobile device 202, a
`common password known as a passkey is exchanged between the
`BT communication device 201a and the mobile device 202. A
`passkey is a code shared by the BT communication device 201a
`and the mobile device 202.
`
`Id. at 4:3–8. The ’698 patent also discloses that “various security,
`
`encryption and compression techniques” can be used “to enhance the overall
`
`user experience.” Ex. 1001, 10:60–62.
`
`In view of the foregoing disclosures in the ’698 patent specification,
`
`which do not limit the type of security used for cryptographically
`
`authenticating, for purposes of determining whether or not to institute, we
`
`determine that “cryptographically authenticating identity of the cellular
`
`phone” encompasses “authenticating the identity of the cellular phone using
`
`some form of security or encryption, including by use of a shared passkey on
`
`the digital camera device and the cellular phone.”
`
`B. Legal Standard for Obviousness
`
`A patent claim is unpatentable as obvious if the differences between
`
`the claimed subject matter 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
`
`12
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`person having ordinary skill in the art to which said subject matter pertains.”
`
`35 U.S.C. § 103(a).
`
`The ultimate determination of obviousness is a question of law, but
`
`that determination is based on underlying factual findings. The underlying
`
`factual findings include (1) “the scope and content of the prior art,”
`
`(2) “differences between the prior art and the claims at issue,” (3) “the level
`
`of ordinary skill in the pertinent art,” and (4) the presence of secondary
`
`considerations of nonobviousness such “as commercial success, long felt but
`
`unsolved needs, failure of others,” and unexpected results. In re Nuvasive,
`
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing, inter alia, Graham v.
`
`John Deere Co., 383 U.S. 1, 17–18 (1966)).
`
`“To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner must instead articulate
`
`specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`
`Board must consider whether a person of ordinary skill would have been
`
`motivated to combine the prior art to achieve the claimed invention.
`
`Nuvasive, 842 F.3d at 1381. As the Federal Circuit stated, quoting from the
`
`Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S.
`
`398, 418–19 (2007),
`
`“because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense,
`is already known,” “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new
`invention does.”
`
`13
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`
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`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir.
`
`2017).
`
`C. Person of Ordinary Skill in the Art
`
`Petitioner alleges a person of ordinary skill in the art
`
`would have had at least a bachelor’s degree in electrical
`engineering, computer engineering, or computer science, and
`two years of experience in the field consumer electronics, with
`exposure
`to digital camera
`technology and wireless
`communications.
`
`
`Pet. 17 (citing Ex. 1003 ¶¶ 68–70). Patent Owner does not comment on
`
`Petitioner’s proposal or propose an alternative.
`
`We note that in the ’131 IPR, the Panasonic Petitioners asserts that a
`
`person of ordinary skill in the art
`
`at the relevant time would have at least a bachelor’s degree in
`electrical engineering or computer science, or an equivalent
`degree, and at least two years of industry experience with
`software development and/or electronic system design. More
`education can supplement relevant experience and vice versa.
`
`
`’131 IPR Pet. 9 (citing ’131 IPR Ex. 1001 ¶ 24).
`
`On the current record, for purposes of institution, we determine that a
`
`person of ordinary skill in the art would have had a bachelor’s degree in
`
`electrical engineering or computer science, or an equivalent degree, and two
`
`years of industry experience with software development, electronic system
`
`design, digital camera technology, and/or wireless communications.
`
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`D. Prior Art Relied Upon
`
`As noted in Section II.D above, Petitioner relies on the following prior
`
`art for its obviousness grounds.
`
`1. Hiroishi (Ex. 1005)
`
`Hiroishi discloses a photographing system where a mobile phone
`
`stores an image sent by a digital camera. Ex. 1005, Abstract. “[V]arious
`
`keys provided to the mobile phone 40 are used to remotely operate the
`
`digital camera 50 by transmitting various instruction information from the
`
`mobile phone 40 to the digital camera 50.” Id. ¶ 43. The wireless two-way
`
`communication between the mobile phone and the digital camera may be
`
`through Bluetooth. Id. ¶ 66.
`
`Hiroishi describes release instruction information, which “is the
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`information for instructing the timing of photographing with the camera.”
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`Ex. 1005 ¶ 34. According to Hiroishi, the “timing in which the release
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`instruction information is transmitted serves as the photographing timing.”
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`Id. Figure 5 of Hiroishi is reproduced below.
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`Figure 5 “is a flow chart showing the flow of processing of the digital
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`camera processing program executed by a CPU 60 built in the digital
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`camera 50.” Ex. 1005 ¶ 71. When the digital camera is turned on, “the
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`program is stored in advance in the predetermined area of ROM 55B in the
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`built-in memory 55.” Id.; see also id. at Fig. 4 (memory 55).
`
`Referencing Figure 5, at step 114, the mobile device issues a release
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`instruction to the camera, which causes the camera to acquire and store a
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`new photograph. Ex. 1005 ¶ 78; see also id. at Fig. 1 (showing
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`communication of instruction information from mobile phone 40 to digital
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`camera 50), ¶ 34 (describing release instruction information), ¶ 73
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`(describing that the camera receives instruction information from the mobile
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`phone). A thumbnail image “selected by the operator of the mobile
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`phone 40 from a plurality of images shown by the thumbnails transmitted
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`according to the thumbnail transmission instruction information is read from
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`the photographed image data storage area” of the digital camera. Id. ¶ 84,
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`Fig. 4 (SDRAM 55A). At step 122, the mobile device may also send an
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`instruction that causes the camera to transmit the stored image file to the
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`mobile device and at step 126, delete it from the camera. Id. The camera
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`may also transmit a thumbnail of the image to the mobile device. Id. ¶ 81.
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`As shown in Figure 1, “the photographing system 10 transmits the
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`image information to the mobile phone 40, and the mobile phone 40
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`forwards the image information received from the digital camera 50 to a
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`terminal device.” Ex. 1005 ¶ 43. Figure 2 of the patent (not shown above)
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`illustrates a computer network, which includes Internet 12 and “public
`
`telephone network 14 built and provided by a telecommunications company
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`of each country or each region as communication media.” Id. ¶ 47, Fig. 2.
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`16
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`Mutual access to the photographing system is available as between two users
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`to access a network “according to a predetermined communication protocol,
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`such as TCP/IP (Transmission Control Protocol/Internet Protocol), or the
`
`like.” Id. ¶ 49.
`
`2. Takahashi (Ex. 1008)
`
`Takahashi teaches a system that allows a mobile device to upload
`
`image data to a remote server using HTTP. Ex. 1008, Abstract, ¶ 49. An
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`“image storage server 4 sends an email containing the URL of a web page
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`that publishes an image data selected by the mobile telephone.” Id. at
`
`Abstract, ¶ 5. The image is stored on a mobile terminal (telephone), selected
`
`and transmitted over a network via an HTTP request, and received and
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`stored by “storage means” or image storage processing unit. Id. ¶ 6, Fig. 4
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`(block 22). Uploaded information includes the image data, along with a
`
`filename that identifies user information including a user ID. Id. ¶ 66. The
`
`storage server processes the received image file in order to publish it. Id.
`
`¶ 52.
`
`3. Nozaki (Ex. 1011)
`
`Nozaki teaches a digital camera wirelessly connected to a cellular
`
`phone via Bluetooth so that the camera can wirelessly transmit images to the
`
`phone. Ex. 1011, Abstract. After the image has been transmitted to the
`
`phone, the user can delete the original image corresponding to the image that
`
`was transmitted from the camera by pressing the key corresponding to a
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`“delete icon” on the GUI of the phone. Id. ¶ 28. “[T]he mobile phone 200
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`transmits the signal for instructing the deletion of the image data file
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`and . . . the electronic still camera 100 deletes the image data . . . .” Id. ¶ 31;
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`17
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`see also id. ¶¶ 44, 62–64, Figs. 4–5, 8, 13 (showing user interface and steps
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`for deletion).
`
`4. Hollstrom (Ex. 1013)
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`Hollstrom teaches a mobile device and associated application software
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`that allows for remote control of wirelessly connected devices, such as a
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`digital camera. Ex. 1013, Abstract. The application allows a user of the
`
`mobile device to perform certain camera functions remotely, such as
`
`capturing, viewing, modifying, and deleting images. Id. at 6:1–13, 6:29–46.
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`Figures 2 and 3 are reproduced below (as shown at page 21 of the
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`Petition).
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`Figures 2 and 3, respectively, illustrate the structure of the mobile device
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`and the digital camera. Ex. 1013, 2:54–57, 4:36–39. Hollstrom teaches that
`
`
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`18
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`both the mobile device and camera include Bluetooth functionality that
`
`allows them to establish a paired connection and exchange image files
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`wirelessly. Id. at 5:58–67. After receiving new image files, the mobile
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`device is configured to upload the files to a designated publishing website.
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`Id. at 6:14–28.
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`5. Ando (Ex. 1015)
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`Ando teaches a system of sending thumbnails of images captured by a
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`digital camera from the camera to a connected cellular phone. Ex. 1015,
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`Abstract, Fig. 2. The phone can then be used to browse the thumbnail
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`images. Id. ¶ 23. According to Ando, “[w]hen the simple digital camera
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`receives [a] deletion signal, it deletes the image data and its thumbnail image
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`corresponding to the designated frame number.” Id. ¶ 43. Ando teaches that
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`the connection between the camera and phone can be accomplished via a
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`wireless communication method such as Bluetooth. Id. ¶ 39.
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`E. Obviousness of Claims 1–20 over Hiroishi and Takahashi
`(Ground 1)
`
`Petitioner alleges the subject matter of claims 1–20 would have been
`
`obvious over Hiroishi and Takahashi. Pet. 23–53.13 The Petition is
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`supported by the Madisetti Declaration. Ex. 1003 ¶¶ 93–207.
`
`
`13 Petitioner also relies on the knowledge of one of ordinary skill in the art.
`For example, Petitioner alleges that it would have been obvious to a person
`of ordinary skill at the time of the invention “to modify Hiroishi to include”
`“cryptographically authenticating” the identity of the phone because
`“[c]ryptographic authentication between wireless devices like a digital
`camera and cellular phone was routine at the time of the invention.” Pet. 24
`(citing Ex. 1003 ¶¶ 99–100; Ex. 1017, 91–92; Ex. 1020 ¶ 19); see discussion
`of limitation 1(c) below.
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`19
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`Patent Owner argues generally that none of the references teaches the
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`subject matter of the claims. Prelim. Resp. 35–49. Patent Owner
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`specifically argues that neither of the references teaches a “paired wireless
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`connection” or “cryptographically authenticating identity of the cellular
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`phone.” See, e.g., Prelim. Resp. 18–19 (Hiroishi), 21 (Takahashi).
`
`
`
`1. Independent Claims 1, 5, 8, and 13
`
`Without identifying any particular claim, Patent Owner argues
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`Petitioner has failed to show limitations common to all the independent
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`claims. The independent claims are similar and Patent Owner argues the
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`independent claims without reference to any particular claim. See, e.g.,
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`Prelim. Resp. 35 (“Hiroishi does NOT disclose the digital camera
`
`establishing a short-range paired wireless connection between the digital
`
`camera device and cellular phone.”). We therefore analyze below the
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`positions of the parties using claim 1 as illustrative.
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`The preamble, designated by Petitioner as limitation 1(a), recites, in
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`pertinent part, “[a] machine-implemented method of media transfer.”
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`Petitioner cites to Hiroishi as teaching such a method. Pet. 23 (citing
`
`Ex. 1005, Abstract, ¶ 5, Fig. 1; Ex. 1003 ¶ 94). To the extent the preamble is
`
`limiting, Petitioner sufficiently shows on the current record that Hiroishi
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`teaches a machine-implemented method of media transfer.
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`Limitation 1(b) recites “for a digital camera device having a
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`short-range wireless capability to connect with a cellular phone, wherein the
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`cellular phone has access to the internet, performing in the digital camera
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`device.” Petitioner argues Hiroishi teaches a digital camera and a cellular
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`phone for accessing the Internet and that the two are connected over a
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`20
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`short-range wireless connection, such as Bluetooth. Pet. 23 (citing Ex. 1005,
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`Abstract, Figs. 1, 2, ¶¶ 48–49, 66; Ex. 1003 ¶¶ 95–96). On this record,
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`Petitioner makes an adequate showing that Hiroishi teaches limitation 1(b).
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`Limitation 1(c) recites “establishing a short-range paired wireless
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`connection between the digital camera device and the cellular phone,
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`wherein establishing the short-range paired wireless connection comprises,
`
`the digita
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