Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: April 29, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PANASONIC CORPORATION AND
`PANASONIC CORPORATION OF NORTH AMERICA,
`Petitioner
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`___________
`
`Case IPR2019-00131
`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 11
`Entered: April 29, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PANASONIC CORPORATION AND
`PANASONIC CORPORATION OF NORTH AMERICA,
`Petitioner
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`___________
`
`Case IPR2019-00131
`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
`
`
`
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`
`I.
`
`INTRODUCTION
`
`Panasonic Corporation and Panasonic Corporation of North America
`
`(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) pursuant to 35
`
`U.S.C. §§ 311–19 to institute an inter partes review of claims 1, 3–5, 7, 8,
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`10–13, and 15–20 (“challenged claims”) of U.S. Patent No. 9,258,698
`
`(“’698 patent”), which was filed on November 5, 2014.1 Ex. 1003, [22].
`
`The Petition is supported by the Declaration of Dr. John Strawn (“Strawn
`
`Declaration,” Ex. 1001). Cellspin Soft, Inc. (“Patent Owner”) filed a
`
`Preliminary Response (Paper 7, “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 and 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.
`
`
`1 Petitioner states that the ’698 patent claims priority to Provisional
`Application No. 61/017,202, filed December 28, 2007. Pet. 6; Ex. 1003,
`[60], 1:26–29. The parties’ papers do not raise an issue relating to the
`effective filing date of the challenged claims of the ’698 patent.
`
`2
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`II.
`
`BACKGROUND
`
`A. Related Proceedings
`
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`
`judicial or administrative matters that would affect or be affected by a
`
`decision in this proceeding. Pet. 3–5; Paper 5, 2. Patent Owner further
`
`identifies an appeal to the U.S. Court of Appeals for the Federal Circuit,
`
`Appeal No. 2018-1823. Paper 5, 2. Federal Circuit Appeal No. 2018-1817,
`
`referenced below, is the lead case. Paper 5, 2.2
`
`B. Technology and the ’698 Patent
`
`The ’698 patent is directed to “distribution of multimedia content.”
`
`Ex. 1003, 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
`
`
`2 A different Petitioner filed a petition for inter partes review of all of the
`claims of the ’698 patent in Canon U.S.A., Inc. v. Cellspin Soft, Inc.,
`IPR2019-00127 (“’127 IPR”). The ’127 IPR alleges different grounds for
`unpatentability.
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`3
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`image onto a website which takes time and may be inconvenient
`for the user.
`
`Ex. 1003, 1:46–55.
`
`
`2. The ’698 Patent (Ex. 1003)
`
`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. 1003, 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 3:35–38.
`
`Figure 2 of the ’698 patent is reproduced below.
`
`
`
`Figure 2 “illustrates a system for utilizing a digital data capture device in
`
`conjunction with a Bluetooth enabled mobile device.” Ex. 1003, 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
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`devices that “mutually agree to communicate with each other.” Id. at 3:63–
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`65. The communication is authenticated cryptographically by 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
`
`the digital data capture device automatically transfers the captured data from
`
`the mobile device using one or a combination of file transfer protocols. Id.
`
`at 4:32–42. The transfer protocols include “one or a combination of BT
`
`profile protocols such as the object exchange (OBEX) protocol, the generic
`
`object exchange profile (GOEP) protocol” or 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. 1003, 5:23–38. “The
`
`client application 203 on the mobile device 202 then automatically publishes
`
`107 the transferred data and multi-media content on one or more websites.”
`
`Id. at 5:39–41.
`
`5
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`C. Illustrative Claim
`
`Claims 1 (method), 5 (device), 8 (system), and 13 (computer readable-
`
`medium) are independent claims.3 Claims 3 and 4 depend from claim 1.
`
`Claims 7, 17, and 19 depend from claim 5. Claims 10–12 and 20 depend
`
`from claim 8. Claims 15, 16, and 18 depend from claim 13.
`
`Claim 1 is reproduced below as illustrative.
`
`1. A machine-implemented method of media
`comprising:
`
`transfer,
`
`
`
`
`
`
`
`
`
`
`for a digital camera device having a short-range wireless
`capability to connect with a cellular phone, wherein the
`cellular phone has access to the internet, performing in the
`digital camera device:
`
`
`
`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;
`
`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;
`
`creating a new-media file using the acquired new-media;
`
`
`3 Petitioner provides an “APPENDIX: CLAIM LISTING (37 C.F.R. §
`42.24)” (“Appendix”). Pet. 76–85. The Appendix provides a table
`organizing “Common Claim Limitations” for independent claims 1, 5, 8, and
`13. Id. at 76–83, see also id. at 24–25 (describing the table and its use in the
`Petition). The Appendix sets out the challenged dependent claims in full.
`Id. at 83–85. For purposes of this Decision, we use Petitioner’s common
`limitations approach to analyzing the independent claims.
`
`
`6
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`storing the created new-media file in a first non-volatile
`memory of the digital camera device;
`
`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
`
`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, 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 wherein the cellular phone
`is configured to provide a graphical user interface (GUI)
`in the cellular phone, wherein the graphical user interface
`(GUI) is for the received new-media file and to delete the
`created new-media file.
`
`Ex. 1003, 11:54–12:26.
`
`
`
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`D. Asserted Ground of Unpatentability
`
`Petitioner challenges claims 1, 3–5, 7, 8, 10–13, and 15–20 of the
`
`’698 patent as unpatentable as obvious under 35 U.S.C. § 1034 over
`
`Mashita,5 Onishi,6 and Hiraishi.7 Pet. 8, 25–72.
`
`III. ANALYSIS
`
`A. Claim Construction
`
`This Petition was filed prior to November 13, 2018, and so we
`
`interpret claim terms of the challenged claims using the broadest reasonable
`
`construction in light of the specification of the ’698 patent. 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
`
`
`4 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. 1003, [63]. Thus, on the present
`record, the grounds asserted are under the pre-AIA version of § 103.
`5 JP 2003-51772, to Hiroshi Mashita, laid open February 21, 2003
`(“Mashita,” Ex. 1005 (original Japanese language version), Ex. 1006
`(certified English language translation)). We reference the English
`translation, Exhibit 1006.
`6 JP 2003-299014, to Hiro Onishi, laid open October 17, 2003 (“Onishi,” Ex.
`1007 (original Japanese language version), Ex. 1008 (certified English
`language translation)). We reference the English translation, Exhibit 1008.
`7 JP 2004-102810, to Tomonobu Hiraishi, laid open April 2, 2004
`(“Hiraishi,” Ex. 1009 (original Japanese language version), Ex. 1010
`(certified English language translation)). We reference the English
`translation, Exhibit 1010.
`
`
`8
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`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 proposes constructions for the terms “wherein establishing
`
`the short-range paired wireless connection comprises, the digital camera
`
`device cryptographically authenticating identity of the cellular phone”
`
`(“cryptographically authenticating phrase”), “new-media,” and “graphical
`
`user interface.” Pet. 10–14. Each of these terms appears in all independent
`
`claims. Petitioner also argues, in the claim construction section of its
`
`Petition, that the claimed method steps or functions are not required to be
`
`performed “‘automatically’ or without user involvement.” Id. at 14–16.
`
`In response to Petitioner’s proposed construction for the
`
`cryptographically authenticating phrase, Patent Owner proposes instead to
`
`construe the terms “paired” and “cryptographically authenticating.” Prelim.
`
`Resp. 12–16. Patent Owner also proposes a construction for “graphical user
`
`interface (GUI). Id. at 16.
`
`On this record, we determine that the only term that we need to
`
`construe expressly is the cryptographically authenticating phrase. “[O]nly
`
`those terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp.
`
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017). Our construction of the cryptographically authenticating phrase is
`
`below.
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`9
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`Petitioner proposes the cryptographically authenticating phrase be
`
`construed as follows:
`
`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.
`
`
`Pet. 10–11.
`
`Petitioner cites to the ’698 patent’s only use (other than in the claims)
`
`of the cryptographically authenticating phrase:
`
`A BT [Bluetooth] 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. 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.
`
`Pet. 12 (quoting Ex. 1003, 3:65–4:8). Petitioner asserts that the ’698 patent
`
`“makes clear that ‘various security, encryption and compression techniques’
`
`can be used ‘to enhance the overall user experience.’” Id. at 11 (quoting Ex.
`
`1003, 10:60–62). Petitioner also argues that the ’698 patent specification
`
`“does not express or imply any limits on the types of ‘security’ or
`
`‘encryption’ techniques that could be used.” Id. at 11.
`
`Petitioner argues its proposed construction “is consistent with the
`
`ordinary meaning of the words ‘cryptographically authenticating’ to those
`
`10
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`Patent 9,258,698 B2
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`skilled in the art.” Pet. 11–12 (citing Ex. 1012 (McGraw-Hill Dictionary of
`
`Computing & Communications, 2003), 3 (defining “cryptography” as “[t]he
`
`science of preparing messages in a form which cannot be read by those not
`
`privy to the secrets of the form”); Ex. 1013 (Wiley Electrical and Electronics
`
`Engineering Dictionary, 2004), 4 (defining “authentication” as “In
`
`computers and communications, the processes of verifying the legitimacy of
`
`a transmission, user, or system. Measures such as passwords and digital
`
`signatures are employed.”)
`
`Patent Owner identifies “paired” and “cryptographically
`
`authenticating” as requiring construction. Prelim. Resp. 12–15. 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 12. Patent Owner describes the Bluetooth pairing
`
`process and proposes that features of this process be included in the
`
`construction of “paired.” Id. at 14–15.
`
`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 15. Patent Owner argues that cryptographic authentication is not used
`
`or described in isolation and that “[i]t is used inside a pairing context.” Id.
`
`(citing Exhibit 1001, 3:63–4:8; Exhibit 2006,8 131). Patent Owner argues
`
`that “[c]ryptographic authentication in the context of pairing has a specific
`
`
`8 Bluetooth Specification, Version 2.1, July 26, 2007.
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`11
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`meaning in the art.” Id. (citing Exhibit 1001, 3:63-4:8; Ex. 2006, 1068–
`
`1071). Patent Owner alleges that meaning in the art is “using cryptographic
`
`algorithms to generate a ‘cryptographic key’ called a ‘link key’ that is
`
`exchanged between the two pairing devices, and is used for ‘cryptographic
`
`authentication’ of pairing devices.” Id. (citing Ex. 2006, 1269–1287).
`
`Patent Owner also cites extrinsic evidence descriptions of terms including
`
`“cryptographic.” Id. (citing Ex. 2003,9 16 (“symmetric-key cryptography”);
`
`Ex. 200510 (“cryptographic algorithm)).
`
`Both “paired” and “cryptographically authenticating” 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
`
`The “wherein” limitation 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. 1003, 2:5–9, 3:45–59, Figs. 1, 2. As
`
`Petitioner points out above, the ’698 patent describes both Bluetooth pairing
`
`and “cryptographically authenticating.” See Pet. 12 (quoting Ex. 1003,
`
`3:65–4:8).
`
`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
`
`
`9 Silicon Labs, UG103.10:RF4CA Fundamentals Rev. 0.2
`10 National Institute of Standards and Technology, Glossary of Key
`Information Security Terms, NISTIR 7298, Revision 2 (May 2013).
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`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
`
`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.
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`Nuvasive, 842 F.3d at 1381. As the Federal Circuit stated, quoting from the
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`Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S.
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`398, 418–19 (2007),
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`“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.”
`
`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
`
`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.
`
`
`Pet. 9 (citing Ex. 1001 ¶ 24). Petitioner then lists different “facets of the
`
`state of the art” of which a person of ordinary skill would have been aware,
`
`including generally digital cameras, Bluetooth, cellular telephones, and
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`Internet photo-sharing websites, and particular aspects of each. Id. (citing
`
`Ex. 1001 ¶¶ 54, 130–131). Patent Owner does not comment on Petitioner’s
`
`proposal or propose an alternative.
`
`We note that in the ’127 IPR, the Canon Petitioner asserts that 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
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`to digital camera
`exposure
`communications.
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`technology and wireless
`
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`’127 IPR Pet. 17 (citing ’127 IPR Ex. 1003 ¶¶ 68–70).
`
`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.
`
`D. Prior Art Relied Upon
`
`As noted in Section II.D above, Petitioner relies on the following prior
`
`art for its obviousness ground.
`
`1. Mashita (Ex. 1006)
`
`Mashita discloses a communication device, such as a digital camera,
`
`“having a local wireless communication function but no public network
`
`connection function.” Ex. 1006, [57], ¶ 1. Mashita notes that the
`
`“[c]onventional [a]rt” includes communication devices like digital cameras
`
`and cellular phones “with a built-in short-range wireless communication
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`device typified by Bluetooth.” Id. ¶ 2. Mashita explains that conventional
`
`digital cameras connect to the Internet network by using an “other
`
`communication device (cellular phone)” as a modem to transfer file data. Id.
`
`¶ 6. But this method, according to Mashita, increases the digital camera’s
`
`cost because it requires the digital camera to “include a protocol such as
`
`PPP, TCP/IP, or HTTP and an application program.” Id.
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`Figure 1 of Mashita is reproduced below.
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`15
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`“Figure 1 illustrates a general configuration of a network system in which a
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`portable device such as a digital camera or a Personal Data Assistance
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`(PDA) communicates with a server on the Internet via a cellular phone.” Ex.
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`1006 ¶ 15. Figure 1 shows the portable device 101 (i.e., the digital camera)
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`and cellular phone 102 can communicate through a local wireless
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`connection, such as Bluetooth connection 107. Id. ¶¶ 16–17. Base station
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`103 converts public wireless network 108 into public network 109. Id. ¶ 18.
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`Gateway 104 connects the public network to Internet 110. Id. ¶ 19. This
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`configuration allows portable device 101 to pass file data (e.g., image data)
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`to cellular phone 102, which then passes the file data to server 105. Id. ¶¶
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`61–68. Thus, portable device (digital camera) 101 is able to transfer file
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`data to server 105 without implementing HTTP or another online data
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`transfer protocol in the digital camera. Id. ¶ 8.
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`Figure 7 is reproduced below.
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`16
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`Figure 7 is “a flowchart illustrating an image file transmission procedure
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`executed by the digital camera.” Ex. 1006, pp. 38, 42. At step S701
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`(Connect Local Wireless Link), “[i]n response to a connection request
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`transmitted from the cellular phone 102, the digital camera 101 connects a
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`local wireless link via Bluetooth communication.” Id. ¶ 75, p.42. At step
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`S702 (Take Image), the digital camera takes an image and the image is
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`stored in image memory. Id. ¶ 76, p.42. The image is taken after
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`establishing the wireless link at step S701 in response to the user’s operation
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`at step S702. Id. ¶ 80, p.42.
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`2. Onishi (Ex. 1008)
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`Onishi is describes “an inexpensive and consumed power-saving
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`digital camera device” that “connect[s] with a portable terminal through . . .
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`wireless communication means and transfer[s] the image to the portable
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`terminal to display the image.” Ex. 1008 ¶ 4. The “portable terminal” can
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`be a portable phone, and the “wireless communication means” can be a
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`Bluetooth connection. Id. ¶¶ 6, 41, 54.
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`17
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`Onishi discloses that it is possible to operate the digital camera device
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`by wireless communication “using the portable terminal device 150 [i.e.,
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`cellular phone] as . . . a remote controller.” Id. ¶ 65. This includes erasing
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`an image file from the digital camera’s memory via user input to the phone.
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`Id.; see also id. ¶¶ 51 (“the displayed image is erased from the memory 41”
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`following user input to the phone), 9 (“[U]sing the portable terminal device,
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`. . . it is possible to erase an unnecessary image file from the memory of the
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`digital camera device.”).
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`3. Hiraishi (Ex. 1010)
`
`Hiraishi concerns transmission of images (and other multimedia data)
`
`to the Internet. Ex. 1010 ¶ 2. Hiraishi describes as “conventional art” how
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`“it has become possible to share and provide information in a multimedia
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`environment in which all data including text data, image data, and voice data
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`are digitalized, giving birth to many information providing services using the
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`Internet.” Id. One example is a “photo site,” which allows customers to
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`view image data the customers acquired using a digital camera. Id.
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`Hiraishi’s inventions are designed to address various problems that may
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`arise with such photo sites when collaborating with “print sites,” which
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`provide printing services. Id. ¶¶ 3–8.
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`Hiraishi discloses that “PC 102” (which Hiraishi states can be a
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`“mobile phone” instead of a PC) (shown in Figure 1) can “automatically
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`transfer[]” selected image data to the photo site, and that “transfer is
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`executed based on a protocol available on the Internet 104, such as HTTP or
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`FTP.” Ex. 1010 ¶¶ 21, 26; Fig. 1.
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`18
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`E. Obviousness of Claims 1, 3–5, 7, 8, 10–13, and 15–20 over
`Mashita, Onishi, and Hiraishi
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`Petitioner alleges the subject matter of claims 1, 3–5, 7, 8, 10–13, and
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`15–20 would have been obvious over Mashita, Onishi, and Hiraishi. Pet.
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`33–72. The Petition is supported by the Strawn Declaration. Ex. 1001 ¶¶
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`62–248.
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`Patent Owner argues none of the references relied on discloses a
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`paired connection or render such a connection obvious. Prelim. Resp. 37–
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`40; see also id at 21–23 (arguments regarding Mashita), 28 (arguments
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`regarding Onishi), 34–37 (arguments regarding Hiraishi). Patent Owner also
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`contends that the Strawn Declaration should be entitled to no weight as to
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`what a person of ordinary skill would understand given the teachings of the
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`references. Id. at 39. Patent Owner concludes by arguing Petitioner’s
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`showing regarding motivation is insufficient. Id. at 40–41.
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`1. Independent Claims 1, 5, 8, and 13
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`Petitioner asserts that independent claims 1, 5, 8, and 13 have
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`“common limitations” among them.11 See Pet. 24–25, 76–83 (table of
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`common limitations). As noted above, we adopt the common limitations
`
`approach. See Section II.C above. Patent Owner analyzes the independent
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`claims with a common limitation approach. In other words, Patent Owner
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`does not argue any specific claim. See, e.g., Prelim. Resp. 38–39 (“Mashita
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`does not disclose a paired connection or render a paired connection
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`obvious.”).
`
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`11 Many of the claim language differences relate to how the claim is drafted,
`e.g., as a method (claim 1), a device (claim 5), a system (claim 8), or a
`computer readable medium (claim 13).
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`19
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`The Appendix table identifies the common limitations as A–K. Id. at
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`76–83. For purposes of this Decision, we refer to the “common limitations”
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`of claim 1 as being representative even though other claims may fall within
`
`any given Limitation A–K. For example, Limitation A immediately below
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`is asserted as being present in both claims 1 and 8. In our analysis, we
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`reference only claim 1 but show parenthetically all claims where the
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`common limitation appears in Petitioner’s table. To the extent a common
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`limitation is not present in claim 1 or Petitioner alleges it is not shown by its
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`analysis for claim 1, it is analyzed following our claim 1 analysis.
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`Limitation A
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`Limitation A (claims 1 and 8) is present in the preamble of claim 1
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`and recites respectively “a machine-implemented method of media transfer.”
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`Petitioner cites to Mashita’s disclosure of “a communication device having
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`the local wireless communication function and the public network
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`connection function, the communication device being capable of
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`transferring, to the information processing device, file data received from an
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`other communication device without a preliminarily built-in file transfer
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`program.” Ex. 1006 ¶ 9, cited in Pet. 33. Petitioner adds that “file data” is
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`media, referring to its showing regarding Limitations D (“acquiring new-
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`media) and E (“creating a new media file”). Pet. 33; see also id. at 43–50
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`(Limitations D and E).
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`On this record, Petitioner has sufficiently shown Mashita12 teaches
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`Limitation A of claims 1 and 8.
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`12 Petitioner also argues that Onishi and Hiraishi teach Limitation A. Pet.
`33. Because Petitioner has made a sufficient showing as to Mashita for this
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`20
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`Limitation B
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`Limitation B (claims 1, 5, 8, and 13) recites in claim 1 “a digital
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`camera device having a short-range wireless capability to connect with a
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`cellular phone, wherein the cellular phone has access to the internet,
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`performing in the digital camera device.” Mashita discloses that
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`“communication devices (for example, digital cameras, PDAs, cellular
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`phones, etc.) with a built-in short-range wireless communication device
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`typified by Bluetooth have been developed.” Ex. 1006 ¶ 2. Petitioner cites
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`to the preceding and that “Mashita also discloses a digital camera and a
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`cellular phone each with an interface (‘I/F’) ‘for local wireless
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`communication for performing local wireless communication (Bluetooth
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`communicati
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