IPR2019-00131
`Patent Owner’s Notice of Appeal
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`PANASONIC CORPORATION AND
`PANASONIC CORPORATION OF NORTH AMERICA,
` Petitioners,
`v.
`CELLSPIN SOFT, INC.,
`Patent Owner.
`
`_______________________________
`Case IPR2019-001311
`Patent No. 9,258,698 B2
`
`_______________________________
`
`PATENT OWNER’S NOTICE OF APPEAL
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`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. (’1108 Petitioners)
`were joined to this proceeding. See Paper 29, 30 (ordering that “the ’1108
`Petitioners are joined with IPR2019-00131”).
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`IPR2019-00131
`Patent Owner’s Notice of Appeal
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`
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`Including pursuant to 35 U.S.C. §§ 141-44, 37 C.P.R. § 1.983, and 37 C.P.R.
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`§ 90.2(a), notice is hereby given that Patent Owner Cellspin Soft, Inc. (“Patent
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`Owner”) appeals to the United States Court of Appeals for the Federal Circuit for
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`review of the Patent Trial and Appeal Board’s (“Board”) Final Written Decision
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`entered April 28, 2020 (Paper 59); and all preceding and underlying orders,
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`decisions, rulings and opinions related thereto and included therein. A copy of the
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`Final Written Decision is attached.
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`In accordance with 37 C.P.R. § 90.2(a)(3)(ii), Patent Owner indicates that the
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`issues on appeal include, but are not limited to:
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`• the Board’s application and use of
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`the broadest reasonable
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`interpretation standard and claim constructions and/or non-
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`constructions,
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`including
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`of
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`“paired wireless
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`connection”,
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`“cryptographically authenticating,” “graphical user interface (GUI)” in
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`a cellular phone, and/or “mobile software application”;
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`• the Board’s application of the claim terms to the alleged prior art;
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`• determinations in the institution that Claims 1–22 of U.S. Patent No
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`9,258,698 (the “’698 patent”) were shown by a reasonable likelihood
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`to be unpatentable;
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`IPR2019-00131
`Patent Owner’s Notice of Appeal
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`• the Board’s Final Written Decision,
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`including
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`the Board’s
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`determination that Claims 1–22 are unpatentable;
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`• the Board’s deviation from the grounds in the petition;
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`• the Board’s raising its own obviousness theories including concerning
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`what appears to be a new obviousness theory;
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`• violation of due process and/or the Administrative Procedure Act;
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`• violation of the Appointments Clause, including with respect to all
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`actions from institution through final decision;
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`• the Board’s denial of Patent Owner’s Motion to Strike and/or Motion
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`to Exclude;
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`• retroactive application of inter partes review to Patent Owner’s Patent;
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`• the Board’s consideration and analysis of the expert testimony, prior
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`art, and other evidence in the record;
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`• the Board’s factual findings, conclusions of
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`law, or other
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`determinations supporting or relating to the above issues; and
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`• all other issues decided adversely to Patent Owner in any orders,
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`decisions, rulings and opinions by the Board.
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`
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. §§ 90.2(a) and 90.3(a), this Notice
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`is being timely filed with the Director of the United States Patent and Trademark
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`Office within 63 days of the Board’s Order, and a copy of this Notice is being
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`IPR2019-00131
`Patent Owner’s Notice of Appeal
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`concurrently filed with the Patent Trial and Appeal Board and the Clerk of the United
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`States Court of Appeals for the Federal Circuit.
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`Dated: June 25, 2020
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`Respectfully submitted,
`
`
`By: /s/ Kirk J. Anderson
`By: /s/ John J. Edmonds
`Kirk J. Anderson, CA SBN 289043
`John J. Edmonds, Reg. No. 56,184
`EDMONDS & SCHLATHER, PLLC BUDO LAW P.C.
`355 South Grand Avenue, Suite 2450 5610 Ward Rd., Suite #300
`Los Angeles, CA 90071 Arvada, CO 80002
`Telephone: 213-973-7846 Telephone: 720-225-9440
`Facsimile: 213-835-6996 Facsimile: 720-225-9331
`Email: pto-edmonds@ip-lit.com Email: kanderson@budolaw.com
`Email: jedmonds@ip-lit.com
`
`Attorneys for Patent Owner Cellspin Soft,
`Inc.
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`IPR2019-00131
`Patent Owner’s Notice of Appeal
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in addition to being filed electronically through the
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`Patent Trial and Appeal Board’s E2E, the foregoing Notice of Appeal was filed by
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`Express Mail on June 25, 2020 with the Director of the United States Patent and
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`Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`The undersigned certifies that a copy of the foregoing Notice of Appeal,
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`along with the required docket fee, was filed on June 25, 2020 with the Clerk’s
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`Office for the United States Court of Appeals for the Federal Circuit through the
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`Court’s CM/ECF filing system.
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`The undersigned further certifies service pursuant to 37 C.F.R. § 42.6(e) of a
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`copy of this Notice of Appeal, at least by electronic mail, on June 25, 2020 on the
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`counsel of record for Petitioners:
`
`
`
`
`T. Vann Pearce, Jr.
`Orrick, Herrington & Sutcliffe, LLP
`1152 15th Street, N.W.
`Washington, D.C. 20005-1706
`vpearce@orrick.com
`
`
`David R. Medina
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`IPR2019-00131
`Patent Owner’s Notice of Appeal
`
`Orrick, Herrington & Sutcliffe, LLP
`1000 Marsh Road
`Menlo Park, CA 94025
`dmedina@orrick.com
`
`
`Attorneys for Petitioners Panasonic Corporation of North
`America and Panasonic Corporation
`
`
`David T. Xue
`Karineh Khachatourian
`Rimon Law
`2479 East Bayshore Road, Suite 210
`Palo Alto, CA 94303
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
`
`Jennifer C. Bailey Adam P. Seitz
`Erise IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`PTAB@eriseip.com
`
`Attorneys for Petitioners GoPro, Inc., Garmin International, Inc.,
`and Garmin USA, Inc.
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`
`
`
`
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`DATED: June 25, 2020
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`
`
`
`
`
`By: /s/ John J. Edmonds
`John J. Edmonds, Reg. No. 56,184
`
`
`By: /s/ Kirk J. Anderson
`Kirk J. Anderson (CA SBN 289043)
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`

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`
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`Exhibit A
`Exhibit A
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`

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`Trials@uspto.gov
`571-272-7822
`
`Paper No. 59
`Date: April 28, 2020
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`
`
`
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`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.
`___________
`
`
`
`IPR2019-001311
`Patent 9,258,698 B2
`
`_________________________
`
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Strike
`Denying Patent Owner’s Motion to Strike/Exclude
`35 U.S.C. § 318(a)
`
`
`
`
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`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. (’1108
`Petitioners) were joined to this proceeding. See Paper 29, 30 (ordering that
`“the ’1108 Petitioners are joined with IPR2019-00131”).
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`

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`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. §§ 311–319 to institute an inter partes review of claims 1, 3–5, 7,
`8, 10–13, and 15–20 (“challenged claims”) of U.S. Patent No. 9,258,698
`(“’698 patent”), which was filed on November 5, 2014.2 Ex. 1003, code
`(22). Cellspin Soft, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). We instituted an inter partes review of all
`challenged claims (Paper 11, “Inst. Dec.”).3
`After institution, Patent Owner filed a Patent Owner Response (Paper
`19, “PO Resp.”), Petitioner filed a Reply (Paper 23, “Reply”), and Patent
`Owner filed a Sur-reply (Paper 30, “Sur-Reply”). The Petition is supported
`by the Declaration of Dr. John Strawn (Ex. 1001, “Strawn Declaration”).
`The Reply is supported by the Second Declaration of Dr. John Strawn (Ex.
`1024, “Strawn Reply Declaration”). The deposition of Dr. Strawn was taken
`by Patent Owner after the Strawn Reply Declaration was filed (Ex. 2030).
`The Response is supported by the Declaration of Dr. Michael Foley (Ex.
`2009, “Foley Declaration”). The Sur-reply is supported by the Declaration
`of Dr. Michael Foley Concerning Patent Owner’s Sur-reply to Petitioner’s
`
`
`2 Petitioner states that the ’698 patent claims priority to Provisional
`Application No. 61/017,202, filed December 28, 2007. Pet. 6; Ex. 1001,
`code (60), 1:26–29. All of the prior art references were published prior to
`December 28, 2007.
`3 Canon U.S.A., Inc. also filed a petition for inter partes review of some 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 of
`unpatentability.
`
`
`2
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`IPR2019-00131
`Patent 9,258,698 B2
`Reply (Ex. 2026, “Foley Sur-reply Declaration”). The deposition of Dr.
`Foley was taken by Petitioner after the Foley Declaration was filed (Ex.
`1023). An oral hearing was held on January 28, 2020, and a transcript made
`of record (Paper 58, “Tr.”).
`We authorized each party to file a motion to strike (Paper 40,
`“Order”). Pursuant to our Order, Petitioner filed a Motion to Strike (Paper
`44, “Pet. Mot.”), to which Patent Owner filed a Response (Paper 48, “PO
`Opp.”). Also as authorized in the Order, Patent Owner filed its separate
`Motion to Strike and, Alternatively, Exclude Improper Reply and Reply
`Evidence (Paper 45, “PO Mot.), to which Petitioner filed an Opposition
`(Paper 46, “Pet. Opp.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has shown by a preponderance
`of the evidence that claims 1, 3–5, 7, 8, 10–13, and 15–20 of the ’698 patent
`are unpatentable.
`
`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. In each of these district
`court cases, the District Court granted a motion to dismiss, finding the
`claims of the ’698 patent ineligible for patent protection under 35 U.S.C. §
`101. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1309 (Fed. Cir.
`2019); see also Ex. 2007 (Order Re: Omnibus Motion to Dismiss; Motion
`for Judgment on the Pleadings, dated April 3, 2018)). On June 25, 2019, the
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`3
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`IPR2019-00131
`Patent 9,258,698 B2
`Federal Circuit vacated the district court’s dismissal and remanded for
`further proceedings. Cellspin Soft, 927 F.3d at 1309, 1320 (Fed. Cir. 2019).
` The ’698 patent is also challenged in the ’127 IPR. Petitioners in
`GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. v. Cellspin
`Soft, Inc., IPR2019-01107 (“’1107 IPR”) were joined as parties to the ’127
`IPR. See ’127 IPR, Paper 27 (joining ’1107 petitioners to the ’127 IPR).
`B. Real Parties in Interest
`Panasonic Corporation of North America and Panasonic Corporation
`are alleged to be real parties-in-interest. Pet. 2. GoPro, Inc., Garmin Int’l,
`Inc., Garmin USA, Inc., Garmin Switzerland GmbH are also identified as
`real parties in interest. IPR2019-01108, Paper 1, 3. Patent Owner Cellspin
`Soft, Inc. alleges it is the real-party-in-interest. Paper 5, 2.
`C. 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
`image onto a website which takes time and may be inconvenient
`for the user.
`
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`4
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`IPR2019-00131
`Patent 9,258,698 B2
`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 3:34–38.
`Figure 2 of the ’698 patent is reproduced below.
`
`
`Figure 2 “illustrates a system for utilizing a digital data capture device in
`conjunction with a Bluetooth enabled mobile device.” Ex. 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 devices that “mutually agree to communicate with each
`other.” Id. at 3:63–65. A communication may be authenticated
`
`5
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`IPR2019-00131
`Patent 9,258,698 B2
`cryptographically using a “common password known as a passkey,” which
`“is exchanged between the BT communication device 201a and the mobile
`device 202.” Id. at 3:65–4:8.
`Still referring to Figure 2, a user captures data and multimedia content
`using digital data capture device 201. Id. at 4:26–27. Client application 203
`on mobile device 202 detects the captured data, the multimedia content, and
`“files associated with the captured data and the multimedia content.” Id. at
`4:29–32. The client application initiates a transfer of the captured data and
`the digital data capture device automatically transfers the captured data from
`the mobile device using one or a combination of file transfer protocols. Id.
`at 4:32–42. The transfer protocols include “one or a combination of BT
`profile protocols such as the object exchange (OBEX) protocols,” such as
`the generic object exchange profile (GOEP) protocol, the media transfer
`protocol (MTP), the picture transfer protocol (PTP), and the PictBridge
`protocol implemented using a USB. Id. at 4:42–48.
`The user may set preferences regarding timing of the publication of
`the captured data and the destination website. Ex. 1003, 5:23–38. “The
`client application 203 on the mobile device 202 then automatically publishes
`107 the transferred data and multimedia content on one or more websites.”
`Id. at 5:39–41.
`
`D. Illustrative Claim
`Claims 1 (method), 5 (device), 8 (system), and 13 (computer readable-
`medium) are independent claims.4 Claims 3 and 4 depend from claim 1.
`
`
`4 Petitioner provides an “APPENDIX: CLAIM LISTING (37 C.F.R. §
`42.24)” 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
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`6
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`

`IPR2019-00131
`Patent 9,258,698 B2
`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;
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`creating a new-media file using the acquired new-media;
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`storing the created new-media file in a first non-volatile
`memory of the digital camera device;
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`receiving a data transfer request initiated by a mobile
`software application on the cellular phone, over the
`established short-range paired wireless connection,
`
`Appendix sets out the challenged dependent claims in full. Id. at 83–85.
`Patent Owner adopts the Common Claim Limitation format of the Petition.
`See, e.g., PO Resp. 32 (“‘Limitation C’ – No paired Connection”). We use
`Petitioner’s common limitations approach to analyzing the independent
`claims.
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`7
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`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.
`
`IPR2019-00131
`Patent 9,258,698 B2
`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
`
`
`Ex. 1003, 11:54–12:26; see Pet. 76–83 (claim 1 and common limitations
`with claims 5, 8, and 13).
`E. Asserted Ground of Unpatentability
`Petitioner challenges claims 1, 3–5, 7, 8, 10–13, and 15–20 of the
`’698 patent as unpatentable. Pet. 8–9, 26–73.
`
`8
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`

`IPR2019-00131
`Patent 9,258,698 B2
`Claims Challenged
`1, 3–5, 7, 8, 10–13,
`15–20
`
`
`
`35 U.S.C. §5
`103
`
`References/Basis
`Mashita,6 Onishi,7 Hiraishi8
`
`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
`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.”).
`
`
`5 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102 and 103, and those
`amendments became effective March 16, 2013. The ’698 patent claims
`priority through a chain of continuation applications to Application
`12/333,303 [U.S. Pat. No. 8,392,591], filed on December 11, 2008, which is
`before the effective date of the relevant sections of the AIA. Ex. 1001, code
`(63). Thus, the grounds asserted are under the pre-AIA version of § 103.
`6 Mashita, JP 2003-51772, published February 21, 2003 (Ex. 1005 (original
`Japanese language version); Ex. 1006 (certified English language
`translation)). We reference the English translation, Exhibit 1006.
`7 Onishi, JP 2003-299014, published October 17, 2003 (“Onishi,” Ex. 1007
`(original Japanese language version); Ex. 1008 (certified English language
`translation)). We reference the English translation, Exhibit 1008.
`8 Hiraishi, JP 2004-102810, 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.
`
`9
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`IPR2019-00131
`Patent 9,258,698 B2
`Petitioner proposes constructions for the following terms, which
`appear in each of the challenged independent claims (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”); “new-media;” and “graphical user interface (GUI).” Pet.
`10–14. Patent Owner proposes constructions for “paired connection,”
`“cryptographically authenticated,”9 and “graphical user interface.” PO
`Resp. 20–21. In the Institution Decision we construed only
`“cryptographically authenticating.” Inst. Dec. 9.
`1.
`“paired wireless connection”
`The claim terms “paired wireless connection” and “cryptographically
`authenticating,” discussed immediately below in Section III.A.2, appear in
`the following “wherein” clause of claim 1:
`wherein establishing the short-range paired wireless connection
`comprises,
`the digital
`camera device cryptographically
`authenticating identity of the cellular phone.
`
`Ex. 1003, 11:62–65 (emphasis added). The same language appears
`following “wherein” clauses in the other independent claims 5, 8, and 13.
`The claim term “paired wireless connection” is sometimes referred to
`in the papers, and in this Decision, as “paired connection,” “paired,” or
`“pairing.” For purposes of institution in this case, we did not expressly
`construe the term “paired wireless connection.” Inst. Dec. 9–13.
`Patent Owner proposes that the BRI of “paired connection” as
`
`
`9 The claim term is “cryptographically authenticating.” Ex. 1003, 11:64
`(claim 1); see also id. at 12:56–57, 13:49–50, 14:65 (claims 5, 8, 13)
`(“cryptographically authenticating”).
`
`10
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`IPR2019-00131
`Patent 9,258,698 B2
`link between devices which
`bidirectional communications
`provides encrypted data exchange between the devices, and the
`communication link can be disconnected and reconnected
`without having to repeat pairing or authentication.
`
`PO Resp. 14 (citing Ex. 2009 ¶¶ 46) (emphasis omitted).
`Petitioner disagrees with the inclusion of “provides encrypted data
`exchange” and that the connection “can be disconnected and reconnected
`without having to repeat pairing and authentication.” Reply 3. Petitioner
`does not include a proposal, alleging “claim construction . . . is irrelevant
`because the prior art still satisfies Cellspin’s (incorrect) construction.” Id.
`Among other arguments based on the Specification, Patent Owner
`argues “Figure 1 of the ’698 patent illustrates a method of utilizing a digital
`data capture device 201 in conjunction with a physically separate Bluetooth
`enabled mobile device 202.” PO Resp. 11 (citing Ex. 1003, 3:34–41); id. at
`11–12 (quoting Ex. 1003, 3:60–4:25), see also id. at 12 (citing Ex. 1003,
`4:1–3, 6:23–38 (further describing Bluetooth pairing)). Relying on the
`disclosures from columns 3 and 6 of the ’698 patent and the Bluetooth
`specification, Patent Owner argues “pairing involves association and an
`exchange of credentials to fulfilling the agreement in addition to merely
`communicating back and forth.” Id. at 12 (citing Ex. 2009 ¶ 45), id. at 13–
`16 (citing Ex. 2018, 80, 135 (page numbers are to the footer of the exhibit);
`Ex. 2009 ¶ 46).
`With respect to the “association” of Bluetooth pairing, Patent Owner
`cites to the Bluetooth specification (Ex. 201810) description of “Association
`
`
`10 Bluetooth Specification, Version 2.1 (Bluetooth Special Interest Group
`(SIG) 2007). Petitioner’s evidence includes excerpts from Specification of
`
`11
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`IPR2019-00131
`Patent 9,258,698 B2
`Models.” PO Resp. 14–15 (citing Ex. 2018, 80, 135 (§§ 5.4, 5.4.5, Fig. 1)).
`Patent Owner contends to a person of ordinary skill, “under broadest
`reasonable interpretation, pairing is the steps taken which result in a paired
`connection.” Id. at 14–15 (citing Ex. 2009 ¶¶ 46–47) (emphasis omitted).
`Further, according to Patent Owner “a paired connection must be
`distinguished from mere authentication and from other methods of
`communications that involve exchanges of credentials but not pairing.” Id.
`at 15 (citing Ex. 2009 ¶ 47) (emphasis omitted).
`Petitioner argues Patent Owner’s proposal requiring “encrypted data
`exchange” and the ability of a pairing once made to “be disconnected and
`reconnected without having to repeat pairing or authentication” are
`unclaimed limitations. Reply 3. According to Petitioner, the claimed
`connection is between two devices and none of the independent claims
`require “encrypted communications.” Id. Petitioner cites the Bluetooth
`specifications that “make clear that paired connections do not necessarily
`require encrypted data exchange.” Id. (citing Ex. 2018, 414, 416; Ex. 1024
`¶ 22); see also id. at 4–5 (regarding “encryption” in the context of
`construction of “cryptographically authenticating”).
`Petitioner also argues the prior art teaches “paired” even under Patent
`Owner’s construction. Reply 3–4. Petitioner notes that Patent Owner
`contends its “construction is intended to encompass at least a paired
`Bluetooth connection.” Id. (citing PO Resp. 14; Ex. 1023, 53:13–19).
`We agree with Petitioner’s arguments and reasoning and decline to
`adopt Patent Owner’s construction. Patent Owner’s construction requires
`
`
`the Bluetooth System, Covered Core Package version 2.0 + EDR Current
`Master TOC (Bluetooth SIG 2004), Ex. 1017.
`
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`both “encrypted data exchange” and that “the communication link can be
`disconnected and reconnected without having to repeat pairing or
`authentication.” Neither the claims nor the Specification mention
`“encrypted data exchange,” or disconnection and reconnection, or equivalent
`language, in the context of pairing. Patent Owner cites to none. The
`Specification mentions “encryption” once, explaining that “various security,
`encryption and compression techniques” can be used “to enhance the overall
`user experience.” Ex. 1003, 10:60–62. But that discussion does not relate to
`“paired connection” but rather describes “algorithms . . . [that] may be
`implemented in a computer readable medium.” Id. at 10:16–19.
`The ’698 patent also expressly states that the invention is not limited
`to a Bluetooth embodiment. Ex. 1003, 9:45–47 (“The method and system
`disclosed herein is realized with, but not limited to Bluetooth
`communication protocol.”). Moreover, dependent claims 17 and 18 recite
`that “the short-range paired wireless connection is one of a Bluetooth paired
`wireless connection, a Wi-Fi paired wireless connection, and other personal
`area wireless networking technologies that use pairing.” Ex. 1003, 16:10–
`15.
`
`Patent Owner’s inclusion of “encrypted data exchange” is based on
`the Specification’s description of initiating the Bluetooth pairing process by
`exchanging “a passkey . . . between the BT communication device 201a and
`the mobile device 202.” PO Resp. 13; see also Ex. 1003, 4:3–7 (describing
`initiating the “pairing process” by exchanging a passkey). Patent Owner
`contends that “encrypted [] exchange” means “exchanging credentials and
`then we’re going to compare our passkeys.” Tr. 78:8–79:9.
`That a passkey is disclosed as part of initiating a “paired connection”
`in the Specification does not mean that aspect of Bluetooth can be
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`incorporated into the construction of “paired connection” to support
`“encrypted data exchange” in Patent Owner’s proposed construction,
`particularly when the Specification explicitly states that the invention is not
`limited to Bluetooth. See SuperGuide Corp. v. DirecTV Enters., Inc., 358
`F.3d 870, 875 (Fed. Cir. 2004) (“[I]t is important not to import into a claim
`limitations that are not a part of the claim.”).
`The Foley Sur-Reply Declaration cites to the Bluetooth specification,
`not the claims or the Specification, for support that “pairing will only be
`completed if that last step of storing the link key for future connections is
`performed.” See Ex. 2026 ¶ 44 (referring to Ex. 2006,11 696, Fig. 3.10). But
`this testimony relates to Bluetooth pairing, to which the claims are not
`limited.
`Patent Owner contends its construction of “a paired connection
`provides for encrypted data exchange, not that it is required.” Sur-Reply 3
`(citing Ex. 2026 ¶ 13). Patent Owner adds that other wireless connection
`technologies, like WiFI Alliance and Zibgee, also “adopted the concept of
`pairing as defined by Bluetooth SIG.” Id. at 3–4 (citing Ex. 2026 ¶ 14); see
`also Ex. 2003,12 6 (Zigbee disclosing the originator and recipient “store
`information about the other node . . . in its pairing table”). Patent Owner
`also notes that Petitioner’s EOS Utility Software stores pairing information
`
`
`11 Specification of the Bluetooth System, Covered Core Package version 2.1
`+EDR (July, 2007).
`12 Silicon Labs, UG103.10: RF4CA Fundamentals, Rev. 0.2 (Undated).
`
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`to “avoid having to reauthenticate/re-pair.” Id. at 4 (citing Ex. 2027,13 4;
`2028,14 1; Ex. 2026 ¶ 14).
`Patent Owner does not persuasively explain how Dr. Foley’s
`testimony, which in turn is based on the Bluetooth specification, supports
`Patent Owner’s proposed construction of “paired wireless connection.” As
`explained above, the Specification’s discussion of Bluetooth falls far short of
`forming any basis for incorporating features of Bluetooth into the
`construction of “paired connection.” The independent claims broadly recite
`“paired wireless connection” and are not limited to Bluetooth pairing.
`Dr. Foley’s testimony that other types of paired connections include
`encryption and store reconnection information also is not persuasive. See
`Ex. 2026 ¶¶ 13, 14; Sur-Reply 3 (“The concept of a paired connection, as
`established by the Bluetooth became known and adopted by certain other
`industry organizations creating wireless technology for device connections,
`such as WiFi Alliance and Zigbee Forum.”). For example, the ZigBee
`standard relied on by Patent Owner undermines Patent Owner’s argument.
`ZigBee states that “[p]airing is the process by which devices establish
`bidirectional links with other devices.” Ex. 2003, 6.15 ZigBee further states:
`“If a pairing is successful and if the originator and recipient both support
`security, a key exchange procedure is then attempted. The key exchange
`establishes a link key that is used to encrypt messages sent between the
`originator and recipient.” Id. Thus, according to ZigBee, pairing occurs
`
`13 https://cpn.canon-
`europe.com/content/product/canon_software/inside_eos_utility_3_0.do
`(downloaded November 23, 2019).
`14 https://www.p4pictures.com/2014/08/wifi-pairing-eos-camera-utility-3/
`(downloaded November 23, 2019).
`15 We refer to the exhibit page numbers added by Patent Owner.
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`first and then, if the devices support security, they establish a link key. The
`link key establishment to provide encryption occurs after pairing. Therefore,
`ZigBee does not support Patent Owner’s contention that pairing itself
`includes encryption.
`Furthermore, it is important to note that the dispute here is over the
`meaning of the claim term “paired wireless connection.” Patent Owner
`argues that “a paired connection provides for encrypted data exchange” but
`that encrypted data exchange is not required. PO Sur-reply 3. Thus, Patent
`Owner acknowledg