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
`
`___________________
`
`U.S. Patent No. 9,258,698
`Inter Partes Review No. 2019-00127
`___________________
`
`PETITIONER CANON U.S.A., INC.’S REPLY
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`CANON U.S.A., INC.
`Petitioner
`
`v.
`
`CELLSPIN SOFT, INC.
`Patent Owner
`
`___________________
`
`U.S. Patent No. 9,258,698
`Inter Partes Review No. 2019-00127
`___________________
`
`PETITIONER CANON U.S.A., INC.’S REPLY
`
`
`
`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`CELLSPIN’S CLAIM CONSTRUCTIONS ARE IMPROPER.....................3
`
`A.
`
`B.
`
`C.
`
`D.
`
`“Paired Wireless Connection”...............................................................3
`
`“Cryptographic Authentication” ...........................................................7
`
`“Graphical User Interface”....................................................................8
`
`“Along With” ........................................................................................8
`
`III.
`
`THE PRIOR ART DISCLOSES AND RENDERS OBVIOUS A “PAIRED
`WIRELESS CONNECTION”.........................................................................9
`
`IV. A POSITA WOULD HAVE BEEN MOTIVATED TO USE
`CRYPTOGRAPHIC AUTHENTICATION .................................................15
`
`V.
`
`THE BOARD SHOULD REJECT CELLSPIN’S ARGUMENTS
`CONCERNING TAKAHASHI.....................................................................18
`
`VI. HIROISHI AND ANDO TEACH GRAPHICAL USER INTERFACES ....21
`
`VII. CLAIMS 5 AND 8 DO NOT REQUIRE A SINGLE APPLICATION TO
`PERFORM THE CLAIMED STEPS............................................................24
`
`VIII. A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE
`HIROISHI WITH ANDO OR NOZAKI.......................................................24
`
`IX.
`
`X.
`
`THIS IPR PROCEEDING IS CONSTITUTIONAL ....................................26
`
`CONCLUSION..............................................................................................27
`
`- i -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`Advanced Fiber Techs. Trust v. J&L Fiber Services, Inc.,
`674 F.3d 1365 (Fed. Cir. 2012) ......................................................................5
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`935 F.3d 1319 (Fed. Cir. 2019) ....................................................................26
`Baldwin Graphics Systems, Inc. v. Siebert,
`512 F.3d 1338 (Fed. Cir. 2008) ....................................................................23
`Canon Inc. v. Intellectual Ventures II LLC, IPR2014-00631 (Aug. 19,
`2015) ..............................................................................................................10
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ....................................................................20
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ....................................................................19
`Hill-Rom Services, Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ......................................................................4
`In re Keller,
`642 F.2d 413 (CCPA 1981)..........................................................................20
`Nevro Corp. v. Boston Scientific Neuromodulation Corp., IPR2017-
`01812, Paper,
` (Feb. 1, 2019).................................................................................................2
`Texas Instruments Inc. v. U.S. Int’l Trade Comm’n,
`988 F.2d 1165 (Fed. Cir. 1993) ......................................................................3
`Thorner v. Sony Comp. Ent’t Amer. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ......................................................................9
`YMax Corp. v. Focal IP, LLC., IPR2016-01256, Paper (Dec. 13, 2017).................2
`
`- ii -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`
`EXHIBIT LIST
`
`Exhibit
`
`U.S. Patent No. 9,258,698 to Singh et al.
`
`Prosecution history for U.S. Patent No. 9,258,698
`
`Declaration of Vijay Madisetti, Ph.D.
`
`No.
`
`1001
`
`1002
`
`1003
`
`Short Name
`
`’698 Patent
`
`’698
`Prosecution
`History
`
`Madisetti
`Declaration
`
`1004
`
`Hiroishi JP
`
`JP Patent Application Publication No. 2003-60953
`to Hiroishi
`
`1005
`
`Hiroishi
`
`1006
`
`Hiroishi
`Translation
`Affidavit
`
`1007
`
`Takahashi JP
`
`1008
`
`Takahashi
`
`1009
`
`Takahashi
`Translation
`Affidavit
`
`1010
`
`Nozaki JP
`
`1011
`
`Nozaki
`
`Certified Translation of JP Patent Application
`Publication No. 2003-60953 to Hiroishi
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2003-60953 to Hiroishi
`
`JP Patent Application Publication No. 2005-303511
`to Takahashi
`
`Certified Translation of JP Patent Application
`Publication No. 2005-303511 to Takahashi
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2005-303511 to Takahashi
`
`JP Patent Application Publication No. 2004-96166
`to Nozaki
`
`Certified Translation of JP Patent Application
`Publication No. 2004-96166 to Nozaki
`
`- iii -
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`
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`
`No.
`
`Short Name
`
`Exhibit
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Nozaki
`Translation
`Affidavit
`
`Hollstrom
`
`Ando JP
`
`Ando
`
`Ando
`Translation
`Affidavit
`
`1017
`
`IEEE 2001
`
`1018
`
`Bluetooth v1.1
`
`1019
`
`Margalit
`
`1020
`
`Montulli
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2004-96166 to Nozaki
`
`U.S. Patent No. 6,763,247 to Hollstrom et al.
`
`JP Patent Application Publication No. 2003-46841
`to Ando
`
`Certified Translation of JP Patent Application
`Publication No. 2003-46841 to Ando
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2003-46841 to Ando
`
`Bisdikian, An Overview of the Bluetooth Wireless
`Technology, IEEE Communications Magazine
`(Dec. 2001)
`
`Specification of the Bluetooth System,
`Version 1.1 (Feb. 2001)
`
`U.S. Patent Publication No. 2002/0141586
`to Margalit et al.
`
`U.S. Patent Publication No. 2006/0189349
`to Montulli et al.
`
`1021
`
`District Court
`Order
`
`Order Granting Canon’s Motion to Dismiss in
`Cellspin Soft, Inc. v. Canon USA, Inc.,
`No. 4:17-cv-05938 (N.D. Cal. 2018)
`
`1022 Madisetti CV
`
`Curriculum Vitae for Vijay Madisetti, Ph.D.
`
`1023
`
`Anderson
`
`U.S. Patent No. 6,636,259 to Anderson et al.
`
`- iv -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
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`No.
`
`Short Name
`
`Exhibit
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`IEEE 2004
`
`Hunter
`
`Kagle
`
`Jakobsson
`
`Kalajan
`
`1029
`
`HTTP/1.1
`
`Narayanaswami et al., Expanding the Digital Camera
`Reach, IEEE Computer Magazine (Dec. 2004)
`
`U.S. Patent Publication No. 2004/0005915 to Hunter
`
`U.S. Patent No. 6,148,149 to Kagle
`
`U.S. Patent No. 6,574,455 to Jakobsson
`
`U.S. Patent No. 7,639,943 to Kalajan
`
`Hypertext Transfer Protocol -- HTTP/1.1,
`https://www.w3.org/Protocols/rfc2616/rfc2616.html
`(1999)
`
`1030
`
`Method
`Definitions
`
`HTTP/1.1 Method Definitions,
`https://www.w3.org/Protocols/rfc2616/rfc2616-
`sec9.html (1999)
`
`1031
`
`MobShare
`
`Sarvas et al., MobShare: Controlled and Immediate
`Sharing of Mobile Images (Oct. 2004)
`
`1032
`
`ACM
`
`1033
`
`1107 IPR
`Motion for
`Joinder
`
`1034
`
`N/A
`
`1035
`
`1107 IPR
`Motion for
`Joinder Reply
`
`ACM Multimedia 2004: Final Program,
`http://www.mm2004.org/acm_mm04_FinalProgram.htm
`(October 2004)
`
`IPR2019-01107 Motion for Joinder Under 35 U.S.C.
`§ 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b)
`
`Board’s Email Authorization for Canon to File a
`SurReply re GoPro/Garmin’s Motion for Joinder in
`IPR2019-01107
`
`GoPro and Garmin’s Reply In Support of Their Motion
`for Joinder in IPR2019-01107
`
`- v -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`
`No.
`
`Short Name
`
`Exhibit
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`Phonesnews
`Article
`
`Vochin
`Bluetooth
`
`Foley
`Bluetooth
`
`NIST
`Bluetooth
`
`Phonesnews.com March 2007 Issue
`
`Old Bluetooth Is Dead, Long Live Bluetooth 2.1 +
`EDR!, www.softpedia.com, Aug. 2, 2007
`
`Michael Foley, Ultra-low-power Bluetooth: the new
`wireless frontier, www.pcworld.idg.com, Oct. 18, 2007
`
`Scarfone & Padgette, Guide to Bluetooth Security:
`Recommendations of the National Institute of Standards
`and Technology, Sept. 2008
`
`Foley Canon
`Deposition
`
`Deposition Transcript of Michael Foley, Ph.D. in Canon
`U.S.A., Inc. v. Cellspin, Inc., IPR 2019-00127, Oct. 3,
`2019
`
`Foley
`Panasonic
`Deposition
`
`Madisetti
`Deposition
`
`Madisetti
`Reply
`Declaration
`
`Myers
`
`Nyberg
`
`Deposition Transcript of Michael Foley, Ph.D. in
`Panasonic Corporation of North America v. Cellspin,
`Inc., IPR 2019-00131, Sept. 19, 2019
`
`Deposition Transcript of Vijay Madisetti, Ph.D. in
`Canon U.S.A., Inc. v. Cellspin, Inc., IPR 2019-00127,
`Oct. 3, 2019
`
`Declaration of Vijay Madisetti, Ph.D. in Support of
`Petitioner’s Reply
`
`Myers, A Taxonomy of Window Manager User
`Interfaces, IEEE (1998)
`
`WIPO Publication No. 2010/023506
`
`- vi -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`Canon U.S.A., Inc. (“Canon”) respectfully submits this Reply in response to
`
`the Patent Owner Response (“POR”) of Patent Owner Cellspin Soft, Inc.
`
`(“Cellspin”).
`
`Cellspin’s arguments in favor of patentability rest on two primary errors the
`
`Federal Circuit and Patent Trial and Appeal Board (“Board”) have consistently
`
`rejected. First, Cellspin advances narrow and unsupported claim constructions in
`
`an effort to distinguish the prior art. For example, Cellspin has rewritten the term
`
`“paired connection” to include the requirements of “encrypted data exchange” and
`
`a communication link that can be “disconnected and reconnected without having to
`
`repeat pairing or authentication.” POR at 23.1 These requirements do not come
`
`from the patent specification or prosecution history; instead, they come from
`
`Cellspin’s expert, who cherry picked certain optional features from the Bluetooth
`
`specification and imported them into the plain claim language. The Board should
`
`reject this attempt to narrow the claims because the ‘698 Patent broadly covers all
`
`forms of pairing; it is not limited to Bluetooth pairing, or any specific features of
`
`Bluetooth pairing. Ex. 1001 at 9:45-47, claim 19.
`
`
`1 The term “paired connection” does not appear in the claims of the ‘698
`
`Patent. Presumably, Cellspin intended to construe “paired wireless connection.”
`
`- 1 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`Cellspin’s construction of “paired connection” should be rejected, as should
`
`its constructions for the terms “cryptographic authentication,” “user interface,” and
`
`“along with”—all of which recite narrow requirements that find no support in the
`
`intrinsic record. YMax Corp. v. Focal IP, LLC., IPR2016-01256, Paper 48 at 17-
`
`21 (Dec. 13, 2017).
`
`Second, Cellspin relies on an overly rigid standard for finding a motivation
`
`to combine the prior art. For example, Cellspin argues that even though Hiroishi
`
`and Hollstrom expressly disclose Bluetooth as a connection mechanism, a POSITA
`
`would not have been motivated to use pairing or cryptographic authentication as
`
`set forth in the Bluetooth specification because they are optional features. Under
`
`basic principles of KSR, however, a routine design choice like whether to use an
`
`optional feature of a known technical specification is sufficient to demonstrate
`
`obviousness. Nevro Corp. v. Boston Scientific Neuromodulation Corp., IPR2017-
`
`01812, Paper 79 at 113-114 (Feb. 1, 2019). Moreover, Cellspin’s expert admitted
`
`that a POSITA would have been motivated to use pairing and cryptographic
`
`authentication in specific situations, such as transferring confidential media files
`
`between a digital camera and cellular phone. Ex. 1040 at 65:7-17. This evidence
`
`directly contradicts Cellspin’s argument that a POSITA would decline to use these
`
`features.
`
`* * *
`
`- 2 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`Cellspin’s remaining arguments rest on legal errors and conclusory expert
`
`testimony the Board should reject.
`
`II.
`
`CELLSPIN’S CLAIM CONSTRUCTIONS ARE IMPROPER
`Cellspin has advanced a number of constructions that attempt to narrow the
`
`claims to avoid the prior art. These constructions violate fundamental principles of
`
`claim construction and find no support in the intrinsic evidence.2
`
`“Paired Wireless Connection”
`A.
`Cellspin’s construction for the term “paired wireless connection” requires a
`
`“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.”
`
`POR at 23. The Board should reject this construction for the following reasons.
`
`First, the construction violates the principle that “courts can neither broaden
`
`nor narrow claims to give the patentee something different than what he has set
`
`forth.” Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171
`
`(Fed. Cir. 1993) (quotation omitted). Here, the claims set forth a “paired wireless
`
`connection.” Ex. 1001, claim 1. Cellspin’s construction attempts to narrow this
`
`phrase by adding the requirements of “encrypted data exchange” and a permanent
`
`2 As discussed in Sections III-VI, the prior art invalidates the challenged
`
`claims even under Cellspin’s narrow constructions.
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`- 3 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`link that can be “disconnected and reconnected without having to repeat pairing or
`
`authentication.”
`
` Nothing
`
`in
`
`the claim
`
`language supports adding
`
`these
`
`requirements. The claims do not describe “encrypted data” being exchanged
`
`between the digital camera and mobile phone. Id. Nor do they describe a
`
`permanent connection that can be “disconnected and reconnected without having
`
`to repeat pairing.” Id.; Ex. 1040 at 27:2-10; Ex. 1041 at 58:18-24, 99:5-17.
`
`Second, Cellspin’s construction violates the principle that it is improper to
`
`narrow the plain meaning of a claim absent lexicography or disavowal. Hill-Rom
`
`Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Cellspin
`
`does not identify any language in the specification or prosecution history that (1)
`
`redefines the term “paired wireless connection” to require “encrypted data
`
`exchange” and a link that can be “disconnected and reconnected,” or (2) disavows
`
`a broader understanding of the term. POR at 13-16. Cellspin generally points to
`
`the specification’s discussion of Bluetooth pairing, but this discussion does not
`
`support its proposed construction. Id. As an initial matter, it is undisputed that the
`
`claims and specification are not limited to Bluetooth. Ex. 1001 at 9:45-47 (“The
`
`method and system disclosed herein is realized with, but not limited to Bluetooth
`
`communication protocol.”), claim 19 (“wherein 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
`
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`use pairing.”). Moreover, the specification’s description of Bluetooth pairing says
`
`nothing about encrypted data exchange or disconnecting and reconnecting. Id. at
`
`3:60-4:25.3 Thus, the specification does not support Cellspin’s attempt to narrow
`
`the claims.
`
`Third, Cellspin’s construction violates the principle that extrinsic evidence
`
`cannot be used to contradict the intrinsic evidence. Advanced Fiber Techs. Trust v.
`
`J&L Fiber Services, Inc., 674 F.3d 1365, 1374-75 (Fed. Cir. 2012). Lacking
`
`support for its construction in the patent specification, Cellspin points to testimony
`
`from Dr. Michael Foley, who relied exclusively on the Bluetooth specification to
`
`support his opinion that a “paired wireless connection” must include the concepts
`
`of “encrypted data exchange” and a permanent link that can be “disconnected and
`
`reconnected without having to repeat pairing or authentication.” POR at 14-16;
`
`Ex. 2009 ¶¶ 45-47. This extrinsic evidence contradicts the specification and claims
`
`of the ‘698 Patent, which expressly state that pairing is not limited to Bluetooth.
`
`Ex. 1001 at 9:45-47, claim 19. The extrinsic evidence must therefore be rejected.
`
`
`3 The specification discusses the exchange of a passkey between devices,
`
`but Cellspin’s expert agreed this is just one mode of Bluetooth pairing, not a
`
`required feature. Ex. 1040 at 36:8-22.
`
`- 5 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`Moreover, even if the specification and claims were limited to Bluetooth, it
`
`would still be improper to add the requirements of an “encrypted data exchange”
`
`and “disconnecting and reconnecting” because these are optional features of
`
`Bluetooth pairing. Ex. 1043 ¶ 5. Bluetooth offers three encryption modes, one of
`
`which does not encrypt data exchanged between devices. Id.; Ex. 1039 at 21
`
`(“Encryption Mode 1—No encryption is performed on any traffic”); Ex. 1040 at
`
`72:15-21. Bluetooth also supports temporary connections and ad hoc file sharing,
`
`which may use pairing to exchange a file between two devices without establishing
`
`a permanent connection. Ex. 1036 at 8-10; Ex. 1040 at 43:4-23; Ex. 1043 ¶ 5; Ex.
`
`1018 at 150. Because these features are optional, they do not limit the definition of
`
`Bluetooth pairing, let alone the broader description of pairing recited in the
`
`challenged claims.4
`
`* * *
`Accordingly, the Board should reject Cellspin’s attempt to narrow the term
`
`“paired wireless connection.” The term should receive its plain and ordinary
`
`4 Dr. Foley did not even attempt to show that Cellspin’s construction covers
`
`all forms of Bluetooth pairing. Ex. 1040 at 17:19-18:7. He limited his analysis to
`
`only one version of the Bluetooth specification—version 2.1 + EDR—even though
`
`he agreed that pairing was a “fluid” feature that changed from one version to the
`
`next. Id.
`
`- 6 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`meaning, which, under the broadest reasonable interpretation, encompasses an
`
`association between two devices that allows for two-way communication over a
`
`wireless connection. This is consistent with how a POSITA would understand the
`
`term “pairing” in the context of the ‘698 Patent, which covers all forms of pairing
`
`and does not limit the term to Bluetooth or any of its optional features. Ex. 1001 at
`
`3:63-65, claim 19; Ex. 1042 at 18:8-19:17, 24:4-17; Ex. 1043 ¶¶ 6-7.
`
`“Cryptographic Authentication”
`B.
`The Board previously construed the term “cryptographic authentication” to
`
`encompass “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.” Institution Decision at 12. Cellspin has proposed a
`
`narrower construction that adds the requirements of a “verified legitimate
`
`transmission” and “encryption and decryption using an algorithm.” POR at 23.
`
`Canon believes that the prior art invalidates the challenged claims even under
`
`Cellspin’s narrower construction; however, the construction should still be rejected
`
`for the reasons set forth by the Board in its Institution Decision. As the Board
`
`explained, the specification of the ‘698 Patent does not limit the type of security
`
`used for cryptographic authentication. Institution Decision at 12. It likewise does
`
`not mention the concepts of “verified legitimate transmission” or “encryption and
`
`- 7 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`decryption algorithms” in its brief discussion of cryptographic authentication. Ex.
`
`1001 at 3:65-67.
`
`“Graphical User Interface”
`C.
`Cellspin’s construction for the term “graphical user interface” (“GUI”) also
`
`attempts to limit the plain claim language in order to avoid the prior art. POR at
`
`23. Cellspin’s construction requires the use of “icons, menus and other visual
`
`indicator (graphics) representations” that are “manipulated by a pointing device
`
`such as a mouse, trackball, stylus, or finger on a touch screen.” Id. Nothing in the
`
`claims or specification of the ‘698 Patent limits or defines a GUI as including only
`
`these specific elements, or excludes other common GUI elements, such as fields
`
`that receive input via a keypad as implemented in a laptop or Blackberry device.
`
`Ex. 1001 at 6:25-30, Fig. 2. Cellspin’s expert admitted that these other elements
`
`fall within the scope of the term “graphical user interface,” and that is consistent
`
`with how a POSITA would have understood the term at the time of the alleged
`
`invention. Ex. 1040 at 103:2-16; Ex. 1043 ¶ 8; Ex. 1044 at 17. Accordingly, the
`
`Board should reject Cellspin’s attempt to limit the claims.
`
`“Along With”
`D.
`The Board should reject Cellspin’s attempt to rewrite the term “along with”
`
`to mean “in addition to.” POR at 22-23. “Along with” is a plain English term that
`
`does not require clarification, and nothing in the patent specification or prosecution
`
`- 8 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`history redefines or otherwise limits its scope. Thorner v. Sony Comp. Ent’t Amer.
`
`LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012) (rejecting construction of the term
`
`“attached” that would have limited the claims to an “external attachment”).
`
`III. THE PRIOR ART DISCLOSES AND RENDERS OBVIOUS A
`“PAIRED WIRELESS CONNECTION”
`Cellspin argues that the Hiroishi and Hollstrom references do not disclose a
`
`“paired wireless connection” as recited in the independent claims. POR at 31, 51.
`
`As an initial matter, these arguments are based on Cellspin’s improper construction
`
`of “paired wireless connection” that requires “encrypted data exchange” and link
`
`that can be “disconnected and reconnected without having to repeat pairing or
`
`authentication.” Id. This construction should be rejected for the reasons discussed
`
`in Section II.A above. Under the plain and ordinary meaning of the term “paired
`
`wireless connection,” there is no dispute that Hiroishi and Hollstrom disclose this
`
`limitation. Pet. at 24, 61; Ex. 1003 ¶¶ 98, 228. Hiroishi discloses an association
`
`between a digital camera and cellular phone
`
`that allows for
`
`two-way
`
`communication over a wireless connection, using Bluetooth as an example. Id.;
`
`Ex. 1005 at [0066], Figs. 1, 5; Ex. 1042 at 14:5-19:17; Ex. 1043 ¶ 10. Hollstrom
`
`discloses a similar configuration, also using Bluetooth as an example. Ex. 1003
`
`¶ 228; Ex. 1013 at 5:58-67, 6:29-39; Ex. 1043 ¶ 10. Cellspin does not dispute
`
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`these disclosures or otherwise show that Hiroishi and Hollstrom fail to disclose a
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`“paired wireless connection” under the plain meaning. POR at 31, 51.
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`Even under Cellspin’s narrow construction of the phrase “paired wireless
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`connection,” Hiroishi and Hollstrom render the challenged claims obvious. Ex.
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`1043 ¶¶ 11-12; Ex. 1042 at 27:2-18.5 Hiroishi and Hollstrom both disclose
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`Bluetooth as a mechanism for establishing a wireless connection between a digital
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`camera and cellular phone. Pet. at 31, 51; Ex. 1005 at [0066]; Ex. 1013 at 5:58-67.
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`These teachings would have led a POSITA to use Bluetooth pairing to implement
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`the systems disclosed in the references, including the optional features of
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`“encrypted data exchange” and a permanent link that can be “disconnected and
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`reconnected without having to repeat pairing or authentication.” Ex. 1043 ¶¶ 11-
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`13. Bluetooth pairing was a well-known and highly predictable mechanism for
`
`implementing such systems at the time of the alleged invention. Id. Bluetooth had
`
`
`5 To the extent Cellspin contends Canon is raising an improper argument
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`on Reply, it is incorrect. Canon is responding to arguments in Cellspin’s POR, and
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`in particular its narrow construction of the term “paired wireless connection.” This
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`type of response is proper in the context of a Reply, particularly where Cellspin has
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`advanced a narrow construction that conflicts with the patent specification. Canon
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`Inc. v. Intellectual Ventures II LLC, IPR2014-00631 (Aug. 19, 2015).
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`- 10 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`an installed base of more than a billion devices at the time of the invention, and
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`industry working groups had developed detailed specifications and profiles for
`
`establishing paired connections between Bluetooth-enabled devices. Id. One of
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`these profiles, the Basic Imaging Profile (“BIP”) published in July 2003, instructs
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`POSITAS to use Bluetooth for the same configuration as described in Hiroishi and
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`Hollstrom, as well as the ‘698 Patent: transferring image data from a digital camera
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`to a mobile phone, which then transmits the image data to a third-party over a
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`network.
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`Ex. 2023 at 13-14.
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`- 11 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`In light of these disclosures, it would have been obvious to use Bluetooth
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`pairing to establish the wireless connection between the digital camera and cellular
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`phone disclosed in Hiroishi and Hollstrom. Ex. 1043 ¶¶ 11-12. Moreover, a
`
`POSITA would have readily appreciated the benefits of “encrypted data exchange”
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`and a permanent link that can be “disconnected and reconnected without having to
`
`repeat pairing or authentication,” as required under Cellspin’s construction. Id.
`
`¶ 13. Both of these features are design choices within the Bluetooth specification,
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`so it would have been obvious and routine to use them, with predictable results and
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`a reasonable expectation of success. Id.; Ex. 1039 at 16, 21-22. A POSITA also
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`would have been motivated to use these features, first to improve security when
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`exchanging confidential or sensitive information, and second to improve user
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`experience by establishing a permanent connection between devices that are used
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`frequently to exchange information. Ex. 1043 ¶ 13; Ex. 1036 at 8-10; Ex. 1018 at
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`150. These benefits would have been directly applicable to the systems disclosed
`
`in Hiroishi and Hollstrom. Ex. 1043 ¶ 13.
`
`Cellspin argues a POSITA would not have been motivated to use Bluetooth
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`pairing as a general matter because it was an optional feature of the specification.
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`POR at 31-32. For this argument, Cellspin and Dr. Foley rely heavily on the BIP,
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`which states that the use of pairing is “left to the implementer’s discretion” when
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`- 12 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`pushing and pulling images to and from a Bluetooth device. Id.; Ex. 2023 at 16.
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`The Board should reject the argument for the following reasons.
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`First, the fact that pairing is left to the implementer’s discretion for image
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`push and image pull confirms that pairing is a predictable design choice that falls
`
`within the rationales discussed in KSR. Ex. 1043 ¶ 12. Cellspin and Dr. Foley do
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`not dispute this.6
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`Second, Cellspin and Dr. Foley focused only on the BIP’s description of
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`image push and image pull, while ignoring its discussion of Automatic Archive.
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`Ex. 2023 at 16. For Automatic Archive—where one device automatically connects
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`to another and downloads its images—BIP states “it is highly recommended that
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`pairing be a prerequisite to the use of that feature.” Id. at 16, 18. Thus, for certain
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`features, the BIP specification does more than leave pairing to the implementer’s
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`discretion—it specifically recommends pairing. Id.
`
`
`6 During his deposition, Dr. Foley initially testified that if a POSITA “took
`
`the recommendations” of the BIP specification for image push or image pull, he or
`
`she would not implement a paired connection. Ex. 1040 at 10:2-25. He then
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`admitted, however, that there is no recommendation against pairing in the
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`specification; it is left to the implementer’s discretion. Id.
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`- 13 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`Third, Cellspin’s argument that a POSITA would not have used Bluetooth
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`pairing is directly contradicted by statements Dr. Foley made prior to the date of
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`the alleged invention. Exs. 1036-1038. Dr. Foley served as the Executive Director
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`and CEO of the Bluetooth Special Interest Group (“SIG”). Ex. 2010 at 2. When
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`SIG released version 2.1+ EDR of the Bluetooth specification, Dr. Foley and his
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`colleagues highlighted the many advantages it offered in terms of pairing two
`
`devices. Exs. 1036-1038 at 8-10; Exs. 1037, 1038. These advantages included
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`enhanced user experience, increased security, a simplified pairing process that
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`“anyone can do,” and a reduced impact on device and silicon manufacturers to
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`maintain low costs. Ex. 1036 at 8-10. Dr. Foley confirmed all of these benefits
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`during his deposition, yet he did not mention them in his declaration testimony.
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`Ex. 1040 at 38:22-48:14. These known advantages clearly would have motivated a
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`POSITA to use Bluetooth pairing to implement systems like those disclosed in
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`Hiroishi and Hollstrom. Ex. 1043 ¶¶ 11-13. And given that specifications for
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`implementing these features were widely known and available, a POSITA would
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`have had a reasonable expectation of success in adapting them to systems like
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`those in Hiroishi and Hollstrom. Id.
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`Accordingly, the challenged claims are obvious even under Cellspin’s
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`narrow construction of “paired wireless connection.”
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`- 14 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`IV. A POSITA WOULD HAVE BEEN MOTIVATED TO USE
`CRYPTOGRAPHIC AUTHENTICATION
`Cellspin next argues a POSITA would not have been motivated to use
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`cryptographic authentication between the digital camera and cellular phone in
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`Hiroishi and Hollstrom. POR at 34, 54. The Board should reject this argument for
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`the following reasons.
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`First, Cellspin’s evidence demonstrates that cryptographic authentication
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`was a design choice in Bluetooth 2.1 +EDR, which is the version Cellspin relied on
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`to support its argument. POR at 36 (citing Ex. 2018 at 1273). This version
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`includes Security Mode 4, which offers three options: (1) an Authenticated Link
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`Key that establishes cryptographic authentication; (2) an Unauthenticated Link
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`Key that establishes encryption but not authentication; and (3) No Security. Id. As
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`Dr. Foley explained in his deposition, these are different options that a developer
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`can select depending on his or her particular use case. Ex. 1040 at 55:17-56:2.
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`Thus, the decision was to use cryptographic authentication in version 2.1 + EDR of
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`the Bluetooth specification was a design choice that falls squarely within the
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`rationales of KSR v. Teleflex. Ex. 1043 ¶ 14.
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`Second, the evidence demonstrates that cryptographic authentication was
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`even more than a design choice—it was a feature for three of the four “association
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`models” in Bluetooth version 2.1 +EDR, Security Mode 4. Ex. 1039 at 18. These
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`- 15 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`association models describe basic ways to connect two devices. Id. The models
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`known as Numeric Comparison, Passkey Entry, and Out of Band all provide for
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`authenticated link keys, and therefore cryptographic authentication. Id.; Ex. 1040
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`at 64:5-14. By providing these models, the Bluetooth specification encouraged
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`developers to use cryptographic authentication. Id. This evidence directly
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`contradicts Cellspin’s argument that a POSITA would have considered only the
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`non-authenticated option. Ex. 1043 ¶ 15.
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`Third, Dr. Foley confirmed there are specific use cases in which a POSITA
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`would have been motivated to use cryptographic authentication, including in the
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`context of transferring image data between a digital camera and cellular phone.
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`Ex. 1040 at 65:2-17. Although he testified that he did not consider authentication
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`important for transferring his personal image data, he admitted that authentication
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`would be beneficial when transferring confidential images. Id. He also testified
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`that authentication prevented “man in the middle” attacks, which further improved
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`the security of the Bluetooth connection. Id. at 63:6-16; Ex. 1036 at 9-10. This
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`testimony is entirely consistent with Canon’s Petition, which explained that “A
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`POSITA would have understood the basic motivation for using cryptographic
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`authentication: to ensure that each device is communicating with its intended
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`recipient and that information is protected from outsiders when transmitted
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`between devices.” Pet. at 25.
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`- 16 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Reply
`Fourth, the evidence demonstrates a POSITA implementing Security Mode
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`3 of the Bluetooth standard would have understood cryptographic authentication
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`was a mandatory feature. Ex. 1039 at 7.
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