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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANON U.S.A., INC.
`Petitioner,
`
`vs.
`
`CELLSPIN SOFT, INC.,
`Patent Owner
`
`CASE: PR2019-00127
`Patent No. 9,258,698
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`
`

`

`
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .............................................................................................. ii
`EXHIBIT LIST ................................................................................................................... iii
` I.
`INTRODUCTION .................................................................................................. 1
`II.
`CELLSPIN’S CLAIM CONSTRUCTIONS ARE PROPER ................................. 3
`A. Cellspin’s Construction of “Paired Wireless Connection” is Correct .............. 3
`B. Canon’s New Construction of “Paired Wireless Connection” is Vague
`and Incorrect ..................................................................................................... 4
`C. Cellspin’s Construction of “Cryptographically Authenticating” is
`Correct............................................................................................................... 8
`D. Cellspin’s Construction of “Graphical User Interface” (i.e., “GUI”) is
`Correct............................................................................................................... 9
`E. Cellspin’s Construction of “Along With” is Correct. ....................................... 9
`NEITHER HIROISHI NOR HOLLSTROM DISCLOSES “PAIRED
`WIRELESS CONNECTION,” ESPECIALLY ANY PERFORMING
`THE REQUIRED ORDERED STEPS .................................................................. 9
`A. Canon’s mistaken assertion that Hiroishi and Hollstrom disclose a
`paired wireless connection erroneously relies upon their mere mention
`of “Bluetooth.” However, pairing (and cryptographic authentication as
`well) is optional in for Bluetooth. ..................................................................... 10
`NEITHER HIROISHI NOR HOLLSTROM MEET CANON’S NEW
`“ASSOCIATION” DEFINITION OF PAIRING ................................................... 10
`CANON’S NEW OBVIOUSNESS THEORY FOR PAIRED WIRELESS
`CONNECTION LACKS MERIT ........................................................................... 11
`A POSITA WOULD NOT HAVE BEEN MOTIVATED TO USE
`CRYPTOGRAPHIC AUTHENTICATION ........................................................... 15
`A. Canon’s obvious arguments are unpersuasively inconsistent .......................... 16
`VII. CELLSPIN’S ARGUMENTS CONCERNING TAKAHASHI’S FILE
`NAME NOT BEING SENT “ALONG WITH” THE IMAGE FILE ARE
`MERITORIOUS ..................................................................................................... 16
`VIII. HIROISHI TEACHES TEXTUAL, NON-GRAPHICAL USER
`INTERFACES ........................................................................................................ 17
`IX. CLAIMS 5 AND 8 AND THEIR DEPENDENT CLAIMS REQUIRE
`THE SAME APPLICATION TO PERFORM THE REQUIRED STEPS ............. 18
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`
`
`i 
`
`

`

`
`
`X.
`
`A POSITA WOULD NOT HAVE BEEN MOTIVATED TO COMBINE
`HIROISHI WITH ANDO OR NOZAKI ................................................................ 21
`XI. THESE PROCEEDINGS ARE UNCONSTITUTIONAL ..................................... 21
`XII. CONCLUSION ....................................................................................................... 22
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION ................ 23
`CERTIFICATE OF SERVICE ........................................................................................... 24
`
`
`
`ii 
`
`

`

`
`
`
`
`
`
`TABLE OF AUTHORITIES
`O2 Micro Int’l v. Beyond Innovation Tech., 521 F.3d 1351 (Fed. Cir. 2008) ................... 1,9
`Baldwin Graphic Sys. v. Siebert, 512 F.3d 1338, 1342 (Fed. Cir.2008) ............................ 20
`01 Communique Lab. v. LogMeIn, 687 F.3d 1292, 1297 (Fed. Cir.2012) ......................... 20
`Dippin' Dots v. Mosey, 476 F.3d 1337 (Fed. Cir. 2007) ....................................................20
`Power Mosfet Tech. v. Siemens, 378 F.3D 1396 (Fed. Cir. 2004) .................................... 20
`McClurg v. Kingsland, 42 U.S. (1 How.) 202 (1843) ....................................................... 21
`James v. Campbell, 104 U.S. 356 (1881).......................................................................... 21
`Usery v. Turner Elkhorn Minin, 428 U.S. 1 (1976) ...........................................................21
`Edmond v. U.S, 520 U.S. 651 (1997) .................................................................................26
`Free Enterprise Fund v. Public Company Accounting Oversight
`Board, 561 U.S. 477 (2010) .............................................................................................. 21
`
`
`iii 
`
`

`

`
`
`
`
`Ex. No.
`2001
`2002
`2003
`2004
`
`2005
`2006
`2007
`2008
`
`2009
`2010
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`2018
`2019
`
`2020
`
`2021
`2022
`
`EXHIBIT LIST
`
`
`Title of Document
`AIRcable User Manual
`U.S. Patent No. 9.398,891
`Silicon Labs UG103.10 RF4CA Fundamentals
`IEEE Part 15.4 Low-Rate Wireless Personal Area
`Networks (LR-WPANs)
`Glossary of Key Information Security Terms by NIST
`-- Skipped --
`-- Skipped --
`Wireless Communications & Networking, Stallings,
`2nd
`Declaration of Michael Foley, Ph.D.
`CV of Michael Foley, Ph.D.
`Definition of “encryption” from the Techopedia
`dictionary from
`https://www.techopedia.com/definition/5507/
`encryption
`Definition of “cryptographic” from Academic Press
`Dictionary of Science And Technology 556 (1992)
`(second edition)
`Excerpt from Bruce Schneier, Applied Cryptography:
`Protocols, Algorithms and Source Code in C, 2nd
`Edition, 1996, pp. 1-2.
`Excerpt from W. Stallings, "Cryptography And
`Network Security", 2nd, Edition, Chapter 13, IP
`Security, Jun. 8, 1998, pp. 399-440.
`Excerpt from CNSSI No. 4009, which is a Committee
`on National Security Systems Glossary
`Excerpt from NISTIR 7298, Revision 2, entitled
`“Glossary of Key Information Security Terms,” which
`was published by the National Institute of Standards
`and Technology
`Security Analysis of Zigbee
`Bluetooth v2.1 + EDR Core Specification
`Definition of “authentication” from the Techopedia
`dictionary from
`https://www.techopedia.com/definition/342/
`Authentication
`Definition of “graphical user interface” from the
`Techopedia dictionary from
`https://www.techopedia.com/
`definition/5435/graphical-user-interface-gui
`U.S. Patent Application No. No. 11/901,802
`Definition of “along with” from the Merriam-Webster
`dictionary: https://www.merriam-
`iv 
`
`

`

`
`
`
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`
`
`
`
`Ex. No.
`
`2023
`
`2024
`2025
`2026
`2027
`
`2028
`
`2029
`2030
`2031
`2032
`2033
`
`Title of Document
`webster.com/dictionary/along%20with
`Bluetooth Basic Imaging Profile, Interoperability
`Specification, dated July 30, 2003
`Excerpts from Madisetti Deposition
`Supplemental Declaration of Michael Foley, Ph.D.
`Sur-Reply Declaration of Michael Foley, Ph.D.
`Print from Canon website at
`https://cpn.canoneurope.com/content/product/
`canon_software/ inside_eos_utility_3_0.do
`Print from Canon website at
`https://www.p4pictures.com/2014/08/wifi-pairing-eos-
`camera-utility-3/
`US20040059941 to Hardman
`Prosecution history for the ‘698 patent
`Bluetooth File Transfer Protocol, Rev. 1.3.1
`ZigBee RF4CE Specification, Version 1.01
`Wi-Fi Peer-to-Peer (P2P) Technical Specification,
`Version 1.7
`
`v 
`
`

`

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`
`
`
`I.
`
`INTRODUCTION
`
`Canon’s Reply brazenly attempts to assert improper new theories, evidence and other
`
`matters, especially its new obviousness theory for “paired wireless connection.” This Sur-Reply is
`
`subject to, and without waiving, Cellspin’s objections at Doc 28.
`
`Cellspin’s definition of “paired wireless connection” covers all forms of wireless pairing.
`
`Canon vaguely contends that Cellspin has “narrowed” and “rewritten…terms” without stating
`
`what was narrowed or rewritten. Canon improperly seeks to rely upon a vague, unstated and
`
`unreasonably overbroad notion of “plain meaning.” Especially in view of the clear dispute over
`
`BRI claim scope, failing to properly construe this and the other disputed terms would be error. See
`
`O2 Micro Int’l v. Beyond Innovation Tech., 521 F.3d 1351 (Fed. Cir. 2008).
`
`Canon erroneously contends that Cellspin “cherry picked…optional” features from the
`
`Bluetooth specification. Although pairing is optional in the Bluetooth specification. Ex. 2026
`
`(Foley Declaration) ¶11, 15, 22-23, its BRI requirements are not optional for pairing to occur.
`
`Contrary to Canon’s misstatement, Cellspin’s construction applies to all wireless paired
`
`communications, including Bluetooth, ZigBee and Wi-Fi Direct. Ex. 2026, ¶¶12, 31-37, 50.
`
`Fundamentally, Canon fails to cite prior disclosure of a device in Hiroishi or Hollstrom
`
`that has performed any claimed method or a device that would be capable of the claimed
`
`functions. To the extent that Canon assumes that all “Bluetooth” devices are capable of
`
`performing every function described in the Bluetooth specification, that is incorrect. . Ex. 2026,
`
`¶15-18. There are, in fact, Bluetooth compliant devices that lack the capability to pair or
`
`cryptographically authenticate. Id.
`
`Canon’s new improper Reply theory for “paired” is obviousness. Aside from being
`
`untimely and improper, Canon’s new theory is meritless. Ex. 2026, ¶38-41. If a POSITA
`
`required pairing of a cellular phone and digital camera described in the ‘698 patent in late 2007,
`1
`
`
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`

`

`
`
`
`
`she would surely look at v2.1+EDR Bluetooth Core Specification Secure Simple Pairing,
`
`Security Mode 4, the default mode (unpaired, encrypted, unauthenticated and unauthorized),
`
`and the Basic Image Profile for image pull (unpaired and unauthenticated) as the methods to
`
`implement. Ex. 2026, ¶21. The Nevro decision relied upon by Canon involved something being
`
`obvious because it was a universal practice and was necessary for implantation of the system in
`
`question. None of that is applicable here. Ex. 2026, ¶19-21.
`
`Canon relies on older Security Mode 3, which was excluded from the v2.1+EDR, and
`
`which had earned a bad reputation in the industry as being too difficult for end users to pair. Ex.
`
`2026, ¶21, 92, 103. Moreover, Canon has no evidence that Hiroishi or Hollstrom were capable
`
`of Security Mode 3 or anything beyond general references to “Bluetooth.”
`
`Version 2.1+EDR and prior versions of the Bluetooth Core Specification list many
`
`optional activities including pairing and authentication Ex. 2026, ¶¶11, 15, 22-23, 93. The mere
`
`mention of a Bluetooth connection in Hiroishi and Hollstrom does not establish that the
`
`connections described in those references are paired or authenticated, or that those devices were
`
`capable of performing those optional activities. Ex. 2026, ¶104.
`
`Canon’s Petition and Reply highlight that at least these key points which are not shown
`
`or rendered obvious any of the Canon asserted prior art combinations:
`
`• Paired wireless connection between a digital camera and a mobile device;
`
`• Cryptographic authentication of the mobile device by the camera;
`
`• Using HTTP to upload received media file along with user information;
`
`• GUI’s in general and specifically not for image deletion on the wirelessly connected
`
`digital camera; and
`
`• For claims 5 and 8, a single mobile application performing all the required functions
`
`(e.g., request, store, HTTP media upload, delete using GUI).
`
`2
`
`

`

`
`
`II.
`
`CELLSPIN’S CLAIM CONSTRUCTIONS ARE PROPER
`
`A.
`
`Cellspin’s Construction of “Paired Wireless Connection” is Correct
`
`Canon’s Reply takes issue with two aspects of Cellspin’s construction -- whether a “paired
`
`connection” must be capable of providing encrypted data exchange, and whether a paired
`
`connection must be capable of being disconnected and reconnected without having to repeat
`
`pairing. Contrary to Canon’s misstatement, Cellspin’s construction states that a paired connection
`
`provides for encrypted data exchange, not that it requires it. Ex. 2026, ¶30. Indeed, a paired
`
`connection may be encrypted or unencrypted and even change from encrypted to unencrypted
`
`during a connection. Id. Canon’s implication that providing for encrypted data equates to
`
`requiring it is incorrect. Id.
`
`The concept of a paired connection, as established by the Bluetooth SIG, became known
`
`and adopted by other industry organizations creating wireless technology for device connections,
`
`including WiFi Alliance and Zigbee Forum. Id., ¶31. For example, when WiFi Alliance created
`
`WiFi Direct, it adopted WiFi Protected Setup (WPS) and WiFi Protected Access (WPA) for
`
`pairing. Id. WPS provides an authentication key distribution method enabling devices to pair a
`
`WiFi Direct connection. Ex.2033, p.13; Ex. 2026, ¶31. WiFi Protected Access (WPA) provides for
`
`pairing using pre-shared encryption keys. Ex. 2026, ¶31
`
`On Canon’s own website, where Canon is describing connecting a digital camera using
`
`Canon’s own EOS Utility software, Canon states that paired Wi-Fi Devices can communicate "at
`
`any time in the future” and that Wi-Fi pairing information is “stored.” Ex.2027, p. 4; Ex.2028, p.
`
`1; Ex. 2026, ¶32. Pairing information is stored to be used again to avoid having to later re-pair,
`
`which creates a better user experience. Ex. 2026, ¶32. This is fundamental to pairing. Id.
`
`
`
`3
`
`

`

`
`
`Similarly, Zigbee also adopted the concept of pairing as defined by Bluetooth SIG, which
`
`involves a discovery and pairing process. Ex. 2026, ¶¶33-37; Ex.2003, p. 6 (“store information
`
`about the other node…in its pairing table.”)
`
`B. Canon’s New Construction of “Paired Wireless Connection” is Vague and
`Incorrect
`
`
`In response to Canon’s original unreasonably broad construction, Cellspin showed that
`
`wireless technologies, including Bluetooth and WiFi allow for “two-way communication” without
`
`pairing. Ex. 2026, ¶38. Canon’s Reply asserts that pairing is “something that…encompasses an
`
`association between two devices that allows for two-way communication over a wireless
`
`connection.” Canon provides no meaningful or substantial explanation for this shift, why its
`
`original construction was incorrect, or why its new one is BRI. Furthermore, the words
`
`“association” or “associated” do not appear in Hiroishi and Hollstrom. Ex. 1005; Ex. 1013.
`
`A POSITA would look to wireless specifications for guidance regarding as to what
`
`“association” refers. Ex. 2026, ¶40. Specifically, Bluetooth v2.1+EDR “Secure Simple Pairing
`
`uses four association models referred to as Numeric Comparison, Just Works, Out Of Band,
`
`and Passkey Entry,” Ex. 2006, p.133. Figure 5.1 shows how these four association models fit into
`
`the pairing process:
`
`
`
`4
`
`

`

`
`
`
`
`Ex. 2006, p. 35; Ex. 2026, ¶¶40.
`
`Although Canon is unclear what is meant by “association” besides somehow allowing two-
`
`way communications, it is clear that the association models are simply one component of creating
`
`a paired connection. Ex.2006, p.133; Ex. 2026, ¶41. Just using the association model doesn’t
`
`constitute pairing. Id. The entire pairing process must be completed. Id.
`
`Canon asserts that Dr. Foley agreed that pairing was “fluid.” To the contrary, he only agreed
`
`that pairing is performed, i.e., the pairing process, has changed over time. Neither the
`
`fundamental notion of what constitutes pairing or the BRI of pairing or paired connection
`
`have changed. Ex. 2026, ¶42.
`
`Cellspin has never imposed a permanency requirement. Id., ¶44. Paired devices can
`
`reconnect without having to repair. Id. If devices became unpaired, then they have to repair, and
`
`
`
`5
`
`

`

`
`
`then they can reconnect using saved information without repairing. Id. Dr. Foley’s testimony at
`
`Ex. 1041, 98:14-99:17 merely acknowledges the foregoing. Ex. 2026, ¶¶44-46.
`
`Canon contends that Cellspin somehow narrowed or redefined the “plain meaning” of
`
`“paired wireless connection.” However, Canon is incorrect, id., ¶49, and Canon never states any
`
`initial definition or plain meaning for a baseline.
`
`Canon contends that Cellspin’s construction lacks specification support. This is incorrect.
`
`Id., ¶50. A POSITA 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.
`
`Canon contends that Cellspin’s construction somehow “contradicts” unspecified intrinsic
`
`evidence. To the contrary, nothing is being contradicted. Id. Cellspin’s expert evidence, especially
`
`here when consistent with the intrinsic evidence and founded on well-grounded documentation, is
`
`relevant to determining meaning of a term in the relevant art during the relevant time period. Teva
`
`Pharm. USA v. Sandoz, 135 S. Ct. 831, 841 (2015); Phillips v. AWH, 415 F.3d 1303, 1318 (Fed.
`
`Cir. 2005).
`
`Canon’s invalid criticisms should not distract from the fact that Cellspin’s BRI construction
`
`is correct and consistent with how paired connections were defined in the art in late 2007 while
`
`creating the Bluetooth specifications as well as other technologies, such as Zigbee and Wi-Fi
`
`Direct, which have implemented pairing. Ex. 2026, ¶12, 31-37, 50.
`
`Canon notes that Bluetooth describes three encryption modes, one of which does not
`
`encrypt data exchanged between devices. However, Cellspin’s construction states encryption is
`
`provided for, but not required. All the encryption modes defined in the Bluetooth specification fall
`
`within the Cellspin construction. Id., ¶¶54-56.
`
`
`
`6
`
`

`

`
`
`Canon notes that Bluetooth supports ad hoc arrangements that do not involve pairing. Here,
`
`Canon is noting that some Bluetooth connections are unpaired. Ex. 2026, ¶54. This acknowledges
`
`that pairing is optional. Id. (See II.A below). For these ad hoc arrangements, a temporary link key
`
`is used for “current session”. Ex. 1018, p.150; Ex. 2026, ¶54. This confirms that two devices can
`
`securely exchange information during session without pairing. Ex. 2026, ¶54. However, when
`
`pairing is desired, a “semi-permanent link key…is stored in non-volatile memory and may be used
`
`after the current session is terminated.” Ex.1018, p.150; Ex. 2026, ¶54. This corresponds with
`
`Cellspin’s construction of paired connection. Ex. 2026, ¶54.
`
`Canon also cites Ex. 1036 at 8-10 and Ex. 1040 at 43:4-23, but these have to do with the
`
`popularity of Bluetooth in general, which is not pertinent. Id., ¶55.
`
`Contrary to Canon’s suggestion, Cellspin’s construction for “paired wireless connection”
`
`covers not only all forms of Bluetooth pairing, but as shown above also encompasses other
`
`technologies such a WiFi and Zigbee. Ex. 2026, ¶12, 31-37, 50. Canon misleadingly cites the
`
`Foley deposition at “Ex. 1040 at 17:19-18:7.” Yet this discussion was not even about pairing. Id.;
`
`Ex. 2026, ¶56.
`
`Canon’s only support for its vague, shifting construction is the deeply flawed and highly
`
`conclusory assertions of Dr. Madisetti. Findings of fact must be supported by substantial evidence,
`
`and conclusory expert testimony such as Dr. Madisetti’s, without supporting evidence, is not
`
`substantial evidence. Cisco Systems v. TQ Delta, No. 18-1806 (Fed. Cir. 11/22/19).
`
`Canon cites testimony from Dr. Madisetti’s deposition, wherein, he declined to offer a
`
`construction for “paired,” and instead just repeated conclusory talking points. Ex. 1042,
`
`16:10–20:03 & 24:4-17; Ex. 2026, ¶59.
`
`.
`
`
`
`7
`
`

`

`
`
`Canon also cites Madisetti’s new declaration, which is also vague, conclusory and
`
`unsupported. Ex.1043, ¶¶6-7. As noted above, contrary to Canon’s suggestion, implementing a
`
`given “association model” does not equate with pairing. Id., ¶41.
`
`Canon quotes an unrelated application at Ex. 1045 which used the words pairing and
`
`association interchangeably. However, the fuller context of this quote (i.e., the following sentence)
`
`states that, “In this regard, ‘associated’ or ‘paired’ devices…form[] a trusted pair…. Ex.1045, p.10.
`
`Exhibit 1045 uses the word “association” to refer to key-based pairing that accords with Cellspin’s
`
`construction. Ex. 2026, ¶65-68. This is not evidence of any outside agreement with Canon’s
`
`position. Id.
`
`Canon points out that the ‘698 Patent describes a passkey-based mechanism that is optional
`
`in 2.1+EDR. However, Cellspin’s construction is broader than passkey-based mechanisms, and it
`
`incorporates and is consistent with all the association models defined in the Bluetooth specification
`
`as well as the association models in WiFi Direct, Zigbee, and Wireless USB. Id., ¶69.
`
`Canon’s asserts that Bluetooth supports “temporary connections and ad hoc file sharing,
`
`which may use pairing…without establishing a permanent connection.” Reply, p. 13. Although
`
`Bluetooth supports temporary connections and ad hoc file sharing, the rest of Canon’s assertion is
`
`misguided. Ex. 2026, ¶70. This use case is defined in the File Transfer Profile (FTP). Ex. 2031, pp.
`
`13-14; Ex. 2026, ¶70. FTP may be performed over a paired or unpaired link. Ex. 2031, pp. 13-14;
`
`Ex. 2026, ¶70. Further, as noted above, Cellspin’s construction does not require permanency in
`
`pairing.
`
`C. Cellspin’s Construction of “Cryptographically Authenticating” is Correct
`
`Canon notes that the ‘698 Patent does not limit the type of security used for cryptographic
`
`authentication. However, this does not support an overbroad definition of cryptographically to
`
`
`
`8
`
`

`

`
`
`include “security” that does not involve encryption. Rather, the ‘698 patent specification does not
`
`limit the types of encryption used for “cryptographically authenticating”.
`
`Canon complains that ““verified legitimate” is not specifically referenced in the ‘698
`
`specification. What the specification refers to is “cryptographic authentication.” As previously
`
`noted, to “authenticate” is to verify as legitimate. Ex. 2009, ¶¶61-62; Ex.2010; Ex. 1013.
`
`D. Cellspin’s Construction of “Graphical User Interface” (i.e., “GUI”) is Correct
`
`Contrary to Canon’s assertion, nothing in Cellspin’s GUI construction limits the use of
`
`other graphical elements such as input fields. Ex. 2026, ¶75. Such elements are “related user
`
`controls” which are part of the construction. Id. Cellspin’s construction is correct. Id.
`
`Canon erroneously equates entering characters into a box on a textual display as a
`
`graphical user interface (GUI). Ex. 2026, ¶76. Using a keyboard to enter text into such a GUI is
`
`within the purview of a GUI. Ex. 2026, ¶76, 118-119. However, the display needs to be graphical
`
`and not text based. Text-based input controls do not make a textual display graphics-based and as
`
`such, not a GUI. Ex. 2026, ¶119. Character-based entry had been available on textual user
`
`interfaces, for example Lotus 123 on DOS, for decades on personal computers before the ‘698
`
`patent priority date. Ex. 2026, ¶76.
`
`E. Cellspin’s Construction of “Along With” is Correct.
`
`The proper BRI construction for “along with” is: “in addition to.” Id., ¶77. This
`
`construction was taken directly from the definition of “along with” from the Merriam-Webster
`
`dictionary. Canon claims this is a “plain English term,” but declines to provide any explanation for
`
`the scope of such plain English. Cellspin’s BRI construction reflects plain English and properly
`
`resolves the parties dispute. Id. See O2 Micro, supra.
`
`
`
`
`
`
`
`9
`
`

`

`
`
`II.
`
`NEITHER HIROISHI NOR HOLLSTROM DISCLOSES “PAIRED WIRELESS
`CONNECTION,” ESPECIALLY ANY PERFORMING THE REQUIRED
`ORDERED STEPS
`
`Per below, Hiroishi and Hollstrom do not disclose paired connections under either
`
`Cellspin’s construction or Canon’s new construction. Ex. 2026, ¶78. Further, Canon has no support
`
`for Hiroishi and Hollstrom disclosing required steps in the required order, e.g., “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.” Id. See ‘698, claim 1.
`
`A. Canon’s mistaken assertion that Hiroishi and Hollstrom disclose a paired wireless
`connection erroneously relies upon their mere mention of “Bluetooth.” However,
`pairing (and cryptographic authentication as well) is optional in for Bluetooth.
`
`None of Canon’s string-cited references disclose any fact beyond Hiroishi and Hollstrom
`
`
`
`mentioning Bluetooth in general. Ex. 2026, ¶79. Canon’s conclusions are premised upon an
`
`unreasonable and overly broad construction of “paired wireless connection.” Id.
`
`Canon appears to labor under a mistaken belief that every Bluetooth device is necessarily
`
`configured to establish a paired Bluetooth connection and/or to cryptographically authenticate the
`
`identity of other Bluetooth devices. To the contrary, even if the devices taught by Hiroishi and
`
`Hollstrom had been disclosed as being Bluetooth compliant, which they were not, there is no
`
`requirement that Bluetooth compliant devices be capable of pairing with other devices, that they be
`
`capable of cryptographic authentication, or that they be capable of many other features disclosed in
`
`the applicable Bluetooth specification. Ex. 2026, ¶81. For example, Bluetooth v2.1+EDR has error
`
`codes for when one device attempts to pair with another that does not allow pairing: (1) Pairing Not
`
`Allowed (0X18); AND (2) Simple Pairing Not Supported (0X37). Ex. 2026, ¶¶17, 81.
`
`There are Bluetooth compliant devices, for example ones that broadcast in stores, that lack
`
`the capability to pair or cryptographically authenticate their connections. Ex. 2026, ¶82.
`
`
`
`10
`
`

`

`
`
`Further, the discussion of the BIP illustrates that pairing was not recommended, much less
`
`required, for requesting images from a camera. Id.
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`IV. NEITHER HIROISHI NOR HOLLSTROM MEET CANON’S NEW
`“ASSOCIATION” DEFINITION OF PAIRING
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`Neither Hiroishi or Hollstrom, mention the words “association” or “associate” in their text.
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`Although Canon is vague about what such an “association” is, Dr. Madisetti came close during his
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`deposition at wherein he states that for pairing “there has to be a mechanism that enables two-way
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`communications between two devices…that are used to establish a mutual agreement for these two
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`devices to communicate.” Ex. 1042, 24:4-17; Ex. 2026, ¶83. To the extent this asserted
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`“association” limitation means anything, it must mean Madisetti’s “mutual agreement.” Ex. 2026,
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`¶83. Absent such a mutual agreement, Canon’s BRI construction for “paired wireless connection”
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`simply reverts to its original erroneous position for all two-way communication being paired. Id.
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`Assuming arguendo that only a “mutual agreement” is required for the BRI of pairing,
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`neither Hiroishi nor Hollstrom discloses one. Id., ¶84. Hiroishi and Hollstrom reference Bluetooth,
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`but Bluetooth does not require a “mutual agreement” to communicate. Id.
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`V.
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`
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`CANON’S NEW OBVIOUSNESS THEORY FOR PAIRED WIRELESS
`CONNECTION LACKS MERIT
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`Canon’s improper1 new obviousness theory is essentially that since Hiroishi and Hollstrom
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`both disclose use of Bluetooth, pairing would be obvious. However, the fact that Hiroishi and
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`Hollstrom mention Bluetooth does not address a reason or motivation for employing this optional
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`Bluetooth functionality. Id., ¶85. It would not have been obvious to pair either Hiroishi’s or
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`Hollstrom’s Bluetooth communications; rather, a POSITA would have been motivated to consult
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`and design in accordance with the Bluetooth standard, at the time of invention would have been to
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`1 Canon’s reliance upon Canon v. Intellectual Ventures II, IPR2014-00631 (8/19/2015) as allowing its new reply
`theories and evidence is misplaced.
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`11
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`use the Basic Image Profile (“BIP”) for image pull, which specified an unpaired and
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`unauthenticated connection. Id., ¶¶87-92. Further, poor user experience for paring would have
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`weighed against any alleged motivation to pair, especially when not needed. Id., ¶86.
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`Bluetooth Profile specifications are used to describe how to implement a particular use case
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`or family of related use cases. Ex. 2026, ¶29. The specification describing image transfer via
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`Bluetooth, i.e., BIP, defines six features including Image Pull and Automatic Archive. Ex. 1020, p.
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`15; Ex. 2026, ¶88. Of these features, Image Pull is most applicable to the ‘698 claims. Id.
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`Automatic Archive, which Canon erroneously relies upon, typically downloads all the existing
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`images from the digital camera to the cellular phone for backup purposes. Id. The two features are
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`significantly different. Id.
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`The decision on what to recommend for each feature was a conscious decision made by the
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`BIP authors. Id., ¶89. After this consideration, BIP did not recommend pairing for the Image Pull
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`feature. Id. It is important to recognize that a POSITA would look to BIP for guidance on this
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`issue. Id.
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`In BIP it is clear the images already exist on the digital camera for both Archiving and
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`Image pull: “The Image Pull feature browses through the images stored on the Imaging Responder
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`device” Ex.1020, p.16; Ex. 2026, ¶¶90-91. BIP doesn’t teach the temporal components of the
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`methods of the ‘698 claims, including that the digital camera and cellular phone are paired before
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`the image is captured by the digital camera. E.g., Ex 1003, 11:56-12:2; Ex. 2026, ¶¶90-91.
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`Further, in late 2007, a POSITA not be inclined to create an image pull system which
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`required pairing devices because the Bluetooth specifications didn’t require pairing. In Security
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`Mode 4 introduced in the v2.1+EDR Bluetooth Core Specification the default security
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`requirement was an unauthenticated link key, unpaired, which doesn’t require a PIN or passkey.
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`Ex. 2026, ¶92. Canon relies on older Security Mode 3, which was excluded from the v2.1+EDR
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`12
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`
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`Bluetooth Core Specification in 2007, and had earned a bad reputation in the industry as being too
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`difficult for end users to perform. Id.
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`Bluetooth v2.1+EDR lists many optional activities. Id., ¶¶11, 15, 22-23, 93. The mere
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`mention of Bluetooth in Hiroishi and Hollstrom does not establish that the connections described in
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`those references are paired. Id., ¶93. The words “pair,” “paired” or “pairing” do not appear in any
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`of those references. There are 15 optional activities after a Bluetooth connection is established:
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`
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`Ex 2006, P. 19; Ex. 2026, ¶¶22-23. With 15 optional activities, there are 215–1=32,767 total
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`combinations of optional activities after ACL connection establishment. Id., ¶¶22, 93. Even if all
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`the options are not mutually exclusive, there would remain very large number of possible
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`combinations. Id., ¶¶22, 93-94. The ‘698 patent specification teaches one particular combination
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`from the large number of available options. Id. To conclude obviousness requires improper
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`hindsight. Id., ¶¶23, 94.
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`13
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`To focus upon a dichotomy of paired vs. unpaired is an oversimplification of the Bluetooth
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`connection model. Id., ¶24. Even viewing only the security modes described in v2.1+EDR, which
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`is what a POSITA would have consulted for Bluetooth in the 2007 timeframe, there are
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`significantly more options than just paired or unpaired. Id. A more complete list of options is:
`
`Unpaired, unencrypted, unauthenticated and unauthorized
`Unpaired, unencrypted, unauthenticated and authorized
`Unpaired, unencrypted, authenticated and unauthorized
`Unpaired, unencrypted, authenticated and authorized
`Unpaired, encrypted, unauthenticated and unauthorized (default mode)
`Unpaired, encrypted, unauthenticated and authorized
`Unpaired, encrypted, authenticated and unauthorized
`Unpaired, encrypted, authenticated and authorized
`Paired, unencrypted, unauthenticated and unauthorized
`Paired, unencrypted, unauthenticated and authorized
`Paired, unencrypted, authenticated and unauthorized
`Paired, unencrypted, authenticated and authorized
`Paired, encrypted, unauthenticated and unauthorized
`Paired, encrypted, unauthenticated and authorized
`Paired, encrypted, authenticated and unauthorized
`Paired, encrypted, authenticated and authorized
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`Id. Any attempt to oversimplify these connection options results in an inaccurate analysis of
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`Bluetooth. Id.
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`The default connection mode described in the v2.1+EDR Bluetooth Core Specification is
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`for the connection to b