UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Panasonic Corporation of North America et al.
`Petitioners
`
`v.
`
`Cellspin Soft, Inc.
`Patent Owner
`
`CASE: IPR2019-00131
`Patent No. 9,258,698
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`C.
`
`D.
`
`INTRODUCTION .......................................................................................... 1
`I.
`THE FOLEY DECLARATION SHOULD BE GIVEN NO WEIGHT ........ 2
`II.
`III. CLAIM CONSTRUCTION ........................................................................... 3
`A.
`Cellspin’s Construction of “Paired Connection” is Incorrect. ............. 3
`B.
`Cellspin’s Construction of “Cryptographically Authenticating”
`is Incorrect. ........................................................................................... 4
`Cellspin’s Construction of “Graphical User Interface” is
`Incorrect. ............................................................................................... 5
`Cellspin’s Construction of “A” as “A Single” rather than “One
`or More” is Incorrect. ........................................................................... 6
`IV. LIMITATION C IS DISCLOSED IN MASHITA, OR AT LEAST
`RENDERED OBVIOUS BY THE PRIOR ART ........................................... 7
`A. Mashita Discloses Establishing a Paired Connection Between a
`Cellular Phone and Digital Camera. ..................................................... 7
`B. Mashita Also Discloses The “Cryptographically Authenticating
`Identity” Portion Of Limitation C. ..................................................... 18
`C. At Minimum, it Would Have Been Obvious to a POSITA to
`Implement the Bluetooth Connections described in Mashita,
`Onishi, and Hiraishi as a Paired Connection. ..................................... 19
`Cellspin’s Arguments Do Not Apply to the Non-Method
`Challenged Claims. ............................................................................ 22
`LIMITATION G IS OBVIOUS IN VIEW OF THE COMBINATION ...... 23
`V.
`VI. LIMITATION J IS OBVIOUS IN VIEW OF THE COMBINATION. ...... 23
`A.
`Cellspin’s “Teaching Away” Theory is Demonstrably Factually
`Incorrect. ............................................................................................. 24
`The Two Disadvantages Identified by Mashita are Not Part of
`the Combination and Not Relevant to the Challenged Claims. ......... 26
`VII. LIMITATION K IS OBVIOUS IN VIEW OF THE COMBINATION. ..... 27
`VIII. CELLSPIN’S “SINGLE APPLICATION” ARGUMENT FOR
`CLAIMS 5 AND 8 FAILS BOTH LEGALLY AND FACTUALLY ......... 29
`i
`
`D.
`
`B.
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`IX. THESE PROCEEDINGS ARE CONSTITUTIONAL ................................ 30
`X.
`CONCLUSION ............................................................................................. 30
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`B.E. Tech., LLC v. Sony Mobile Comm’ns (USA) Inc.,
`657 Fed.Appx. 982 (Fed. Cir. 2016) ..................................................................... 2
`Baldwin Graphic Sys. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) ........................................................................ 6, 7
`Celegene Corp. v. Peter,
`931 F.3d 1342 (Fed. Cir. 2019) .......................................................................... 30
`E.I. du Pont De Nemours & Co. v. MacDermid Printing Sols.,
`657 Fed. Appx. 1004 (Fed. Cir. 2016) ................................................................ 21
`InfoBionic, Inc. v. Braemar Manufacturing, LLC,
`IPR2015-01704, Paper 11 ..................................................................................... 2
`KRS Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 21
`Other Authorities
`37 C.F.R. § 42.65(a) ....................................................................................... 3, 14, 15
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`
`The three prior art references here (Mashita, Onishi, Hiraishi) each expressly
`
`disclose a Bluetooth connection between a phone and camera. Cellspin argues that
`
`these references nonetheless do not disclose implementing these connections as
`
`paired Bluetooth connections. But Mashita does disclose a paired Bluetooth
`
`connection. It describes the same pairing process as the ’698 patent itself. And the
`
`Bluetooth specification documents describe the process of pairing the same way as
`
`Mashita does—entering the same PIN on both devices.
`
`Beyond that, Cellspin never explains how pairing could possibly be a non-
`
`obvious implementation of Bluetooth. The facts are these: Bluetooth was in
`
`hundreds of millions of devices at the time of the alleged inventions—“pervasive”
`
`to use the ’698 patent’s word (see Ex. 1003 (“’698 patent”), 9:42-45). All
`
`Bluetooth devices could implement a paired connection. The only two options for
`
`implementing Bluetooth connections were paired or not. Cellspin’s expert witness,
`
`Dr. Foley, agreed that a POSITA would have known how to implement paired
`
`connections and would have understood the many benefits of doing so. Indeed, the
`
`very Bluetooth specification document that Cellspin identifies as describing “the
`
`scenarios most in line with the ’698 patent” (Paper 19 (“Response”), 37-38)
`
`explicitly teaches that whether to use a paired connection or not is merely “left to
`
`1
`
`

`

`the implementer’s discretion.” Ex. 1020, 16. This is textbook obviousness, not a
`
`patentable invention.
`
`Cellspin’s remaining arguments fare no better. Its “teaching away”
`
`argument, and its argument that Mashita terminates the Bluetooth connection after
`
`every transaction, are both based on plain misreadings of the prior art. Cellspin
`
`premises another argument on a very narrow, and unjustified, construction of the
`
`common term “graphical user interface (GUI)”; even accepting its construction,
`
`Cellspin fails to dispute that Mashita discloses a GUI. Finally, Cellspin commits
`
`another claim construction error, interpreting “a” as “a single” despite the claim
`
`construction rule that “a” means “one or more.”
`
`II.
`
`THE FOLEY DECLARATION SHOULD BE GIVEN NO WEIGHT
`
`At the outset, Dr. Foley’s declaration (Ex. 2009) is not persuasive or credible
`
`across-the-board. Entire sections of the Foley declaration and Cellspin’s response
`
`are word-for-word identical or nearly so. Compare, e.g., Ex. 2009, ¶¶99-113 with
`
`Response, Section VI.D.1; compare Ex. 2009, ¶¶127-132 with Response, Section
`
`VI.D.6. The Federal Circuit and the Board have not credited expert witnesses who
`
`merely parrot attorney argument. See B.E. Tech., LLC v. Sony Mobile Comm’ns
`
`(USA) Inc., 657 Fed.Appx. 982, 988 (Fed. Cir. 2016); InfoBionic, Inc. v. Braemar
`
`Manufacturing, LLC, IPR2015-01704, Paper 11 (denying institution) at 6, 12, 14-
`
`15. Furthermore, most of Dr. Foley’s statements cite no evidentiary support.
`
`2
`
`

`

`Examples are highlighted in this Reply. Such testimony “is entitled to little or no
`
`weight.” 37 C.F.R. § 42.65(a). Finally, Dr. Foley’s assertions often are factually
`
`wrong, and in many cases he admitted as much in his deposition. See, e.g., infra
`
`Section IV.A (Foley’s deposition testimony regarding Mashita’s supposed
`
`“termination issue” directly contradicted his declaration).
`
`III. CLAIM CONSTRUCTION
`
`A.
`
`Cellspin’s Construction of “Paired Connection” is Incorrect.
`
`Cellspin’s proposed construction of “paired connection” erroneously
`
`requires that the connection “provides encrypted data exchange” and that the
`
`connection “can be disconnected and reconnected without having to repeat pairing
`
`and authentication.” Response, 14. Cellspin conflates the connection between
`
`devices—which is claimed—with encrypted communications—which are not.
`
`Cellspin/Foley cite no support from the ’698 patent or elsewhere for reading these
`
`two additional requirements into the term. The Bluetooth specifications, for
`
`example, make clear that paired connections do not necessarily require encrypted
`
`data exchange. Ex. 2018, 414, 416; Ex. 1024 (Second Declaration of Dr. Strawn),
`
`¶22. See also infra Section III.B regarding encryption.
`
`Ultimately, this claim construction dispute is irrelevant because the prior art
`
`still satisfies Cellspin’s (incorrect) construction. Cellspin’s construction is
`
`intended to encompass at least a paired Bluetooth connection. Response, 14; Ex.
`
`3
`
`

`

`1023 (“Foley Depo.”), 53:10-16. The prior art discloses (or at least would have
`
`rendered obvious) a paired Bluetooth connection (see infra Section IV).
`
`B.
`
`Cellspin’s Construction of “Cryptographically Authenticating” is
`Incorrect.
`
`The ’698 patent’s specification mentions “cryptographically
`
`authenticat[ing]” only once, and then describes the Bluetooth pairing process. ’698
`
`patent, 3:65-4:8. Neither the specification nor the claims state that this process
`
`requires an “algorithm” or “encryption”—rather, the specification teaches that
`
`“various security [or] encryption” techniques may be used to implement the
`
`disclosed programs. Id., 10:60-62. Cellspin’s citations to dictionary definitions of
`
`“encryption” or “cryptographic algorithm” are thus beside the point: the broadest
`
`reasonable interpretation of “cryptographically authenticating identity” cannot be
`
`limited to these unclaimed concepts. The Board’s construction in the Institution
`
`Decision (at 12-13) is appropriate.1
`
`1 Panasonic’s proposed construction includes “secrecy” along with “security” and
`
`“encryption.” The two constructions do not meaningfully differ; the prior art
`
`clearly satisfies the Board’s construction as explained herein. Contrary to
`
`Cellspin’s claim, Dr. Strawn does not “disagree” with Panasonic’s construction.
`
`Ex. 1024, ¶¶6-9.
`
`4
`
`

`

`Here too, Cellspin’s incorrect construction ultimately does not matter. The
`
`prior art discloses (or at least would have rendered obvious) a paired Bluetooth
`
`connection, which would meet Cellspin’s construction. Bluetooth pairing uses a
`
`cryptographic algorithm for authentication (see infra Section IV).
`
`C.
`
`Cellspin’s Construction of “Graphical User Interface” is
`Incorrect.
`
`Cellspin’s highly specific construction of “graphical user interface (GUI)” is
`
`far from the broadest reasonable interpretation of this common term. Cellspin’s
`
`construction errs in (a) distinguishing GUIs from “text-based interfaces” and (b)
`
`implying that GUIs must be “manipulated by a pointing device.” Response, 19-21.
`
`The intrinsic record does not support these limitations. The ’698 patent
`
`depicts the GUI in Figure 2 literally as an empty box, and the specification says
`
`nothing about the GUI’s appearance or how the user inputs commands to the GUI.
`
`’698 patent, Fig. 2, 6:25-30, 6:58-66, 9:62-64. Dr. Foley acknowledged these facts
`
`(Foley Depo., 59:16-64:1), and confirmed that the patent uses “GUI” consistent
`
`with its understood meaning in the art at the time (Id., 68:8-22).
`
`Cellspin’s narrow construction is derived from a single online dictionary
`
`(circa 2019), but other dictionaries (from the relevant time) define GUI more
`
`broadly. E.g., Ex. 1013, 3 (Wiley dictionary). Cellspin’s construction thus is not
`
`the broadest reasonable interpretation.
`
`5
`
`

`

`Moreover, even the non-limiting exemplary GUI from a different Cellspin
`
`patent application contradicts Cellspin’s construction. See Response, 19-20
`
`(referencing Ex. 2021); Foley Depo., 66:23-67:11. This GUI displayed text and
`
`users pressed a physical button to input commands. Ex. 2021, Fig. 3, 7:17-20
`
`(describing various user inputs to the GUI including a button “click or touch”);
`
`Foley Depo., 64:15-65:17, 66:3-22. This example accords with a POSITA’s
`
`understanding that existing mobile phones had a wide variety of GUIs, with
`
`various user inputs (including push buttons). Ex. 1001, ¶¶130-133.
`
`Regardless, the prior art discloses a GUI even under Cellspin’s erroneous
`
`construction. See infra Section VII.
`
`D.
`
`Cellspin’s Construction of “A” as “A Single” rather than “One or
`More” is Incorrect.
`
`Cellspin also argues that “a software application” in claims 5 and 8 means “a
`
`single software application.” Response, 50-52. This is a claim construction issue,
`
`although not identified as one by Cellspin.
`
`“That ‘a’ or ‘an’ can mean ‘one or more’ [in patent claims] is best described
`
`as a rule, rather than merely as a presumption or even a convention.” Baldwin
`
`Graphic Sys. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (emphasis
`
`added). “The exceptions to this rule are extremely limited.” Id. This long-
`
`established rule applies even under the Phillips standard; under the broadest
`
`6
`
`

`

`reasonable interpretation standard, it would be even less appropriate to construe
`
`“a” narrowly as “a single.”
`
`Cellspin relies upon Dr. Foley’s testimony, but Dr. Foley did not
`
`acknowledge or apply the governing claim construction rule: “It’s not applications,
`
`plural. It’s ‘a’, singular. … It would say the software applications, plural, if it was
`
`more than one.” Foley Depo., 79:20-82:7. Cellspin identifies no evidence of the
`
`patentee’s “clear intent to limit ‘a’ or ‘an’ to ‘one,’” as would be required to depart
`
`from the rule, and the intrinsic record lacks any such evidence. See Baldwin, 512
`
`F.3d at 1342.
`
`Again, even Cellspin’s incorrect claim construction would not distinguish
`
`the Challenged Claims from the prior art. See infra Section VIII.
`
`IV. LIMITATION C2 IS DISCLOSED IN MASHITA, OR AT LEAST
`RENDERED OBVIOUS BY THE PRIOR ART
`
`A. Mashita Discloses Establishing a Paired Connection Between a
`Cellular Phone and Digital Camera.
`
`As Petitioners have explained, Mashita and the ’698 patent both describe
`
`essentially the same pairing and cryptographically authenticating process. See
`
`Petition 41-42; Ex. 1001, ¶85. A side-by-side comparison helps to illustrate:
`
`2 This Reply uses the same “common limitations” approach as the Petition. See
`
`Petition, Appendix A; Institution Decision, 19-20. Cellspin contests Limitations D
`
`7
`
`

`

`Mashita
`
`’698 Patent
`
`“First, an identical Personal
`Identification Number (PIN) code is
`input to both the cellular phone 102
`and the digital camera 101 … The
`cellular phone 102 thus establishes a
`link through local wireless
`[Bluetooth] connection with the
`digital camera 101.”
`Ex. 1006 (“Mashita”), [0051].
`
`“[T]o initiate the pairing process
`between the BT communication device
`201a and the mobile device 202, a
`common password known as a
`passkey is exchanged … A passkey is a
`code shared by the BT communication
`device 201 a and the mobile device
`202.”
`…
`“On entering the passkey by the user
`of the mobile device 202, the entered
`passkey is matched with the passkey of
`the BT communication device 201a. If
`a match is found, a trusted pair is
`automatically established.”
`’698 patent, 4:3-25
`
`In both descriptions, a PIN/passkey code is input by a user into a mobile
`
`phone, matching the same PIN/passkey code for the digital camera. As the ’698
`
`patent makes clear, this match results “automatically” in a Bluetooth paired
`
`connection—from the user interface perspective, nothing more is required. Both
`
`Mashita and the ’698 patent also describe using the devices’ Bluetooth addresses in
`
`and H only on the same basis as Limitation C (Response, 40, 41-42), so these
`
`arguments apply to those Limitations also.
`
`8
`
`

`

`the process. ’698 patent, 4:13-17; Mashita, [0030], [0051]. Mashita thus discloses
`
`Limitation C.
`
`The difference in wording between “PIN” and “passkey” is immaterial,
`
`because the terms are interchangeable. “When the Bluetooth PIN is referred to on
`
`the UI level, the term ‘Bluetooth Passkey’ should be used.” Ex. 2018 (Bluetooth
`
`Version 2.1+EDR Core Specification), 1258; Ex. 1024, ¶48. The ’698 patent’s
`
`specification describes the user interface (UI) level, as Dr. Foley acknowledged
`
`(Foley Depo., 89:9-24), so unsurprisingly it uses “passkey.”
`
`In arguing that PINs and passkeys differ, Cellspin cites an excerpt from the
`
`Bluetooth specification documents, but ignores the context. This excerpt describes
`
`“Secure Simple Pairing,” a feature added in Bluetooth Version 2.1+EDR, which
`
`was released in 2007. Foley Depo., 52:17-53:3, 97:22-98:10; Ex. 2018, 154.
`
`Secure Simple Pairing is only one type of Bluetooth pairing. Foley Depo., 53:4-
`
`12. And as the Secure Simple Pairing Overview explains, “It is a goal of Secure
`
`Simple Pairing to exceed the maximum security level provided by the use of a 16
`
`alphanumeric PIN with the pairing algorithm used in Bluetooth Core
`
`Specification version 2.0 + EDR and earlier versions. Note that many Bluetooth
`
`devices compliant with Bluetooth Core Specification 2.0 + EDR and earlier
`
`versions use a 4-digit PIN ….” Ex. 2018, 131 (emphasis added).
`
`9
`
`

`

`That is, both the “passkey” (Secure Simple Pairing) and “PIN” models used
`
`paired connections and encryption algorithms; the difference is the type of
`
`algorithm. See id.; Ex. 2018, 134-135 (explaining that in the “PIN Entry model,”
`
`the PIN is an “input to” the “security algorithm”). These distinctions do not matter
`
`to the Challenged Claims, which, Cellspin/Foley admit, are not limited to Secure
`
`Simple Pairing or any type of encryption. Foley Depo., 52:17-24; Response, 18-
`
`19.
`
`Mashita’s description matches not just the ’698 patent’s description of
`
`pairing, but also the descriptions of “pairing” in the Bluetooth specification
`
`documents. The best example may be the one cited by Cellspin/Foley in their
`
`discussion of Limitation C (see Response, 34), a diagram showing how a Bluetooth
`
`connection is established between two devices:
`
`10
`
`

`

`In Step 7a, “Optional Pairing,” a user inputs a PIN code into both devices—just
`
`as Mashita describes:
`
`11
`
`

`

`Ex. 2018, 866 (highlighting added); Ex. 1024, ¶¶13, 18. The Bluetooth
`
`specifications repeatedly describe pairing occurring by a user entering a PIN, for
`
`example:
`
` Ex. 2018, 412 (“When two devices do not have a common link key an
`
`initialization key (Kinit) shall be created using either the pairing or Secure
`
`Simple Pairing procedures. When pairing is used, Kinit shall be created
`
`based on a PIN, and a random number and a BD_ADDR.”) (emphasis
`
`12
`
`

`

`added) (see also Ex. 1017 (Bluetooth version 2.0+EDR Specification
`
`excerpts), 29 (similar description)).
`
` Ex. 2018, 1258 (“The PIN is used in the pairing procedure (see Section
`
`11.2 on page 241) to generate the initial link key that is used for further
`
`authentication.”).
`
`Both expert witnesses agree that a POSITA would be familiar with the
`
`Bluetooth specification documents. Ex. 1001, ¶¶54, 87; Foley Depo., 48:14-21,
`
`56:18-25. A POSITA thus would have known that the PIN inputs disclosed in
`
`Mashita would result in a paired connection. Ex. 1024, ¶¶12-13, 15-16.
`
`Against the clear evidence discussed above, Cellspin offers various
`
`arguments for why Mashita does not disclose establishing a paired connection.
`
`Each is demonstrably factually wrong.
`
`First, Cellspin repeatedly claims that Mashita only discloses
`
`“authentication,” not “pairing,” (Response, 23-24, 35). As shown in the Bluetooth
`
`specification excerpts above, authentication is part of the Bluetooth pairing process
`
`and uses the PIN. Ex. 1024, ¶¶14-16. It is thus correct to describe Bluetooth
`
`pairing as an “authentication process,” as Mashita does. Mashita, [0051].
`
`Similarly, Cellspin argues that Mashita does not “mention the concept of a link
`
`key” (Response, 24). Again, as shown above, the Bluetooth pairing process
`
`described in Mashita results in a link key. Ex. 1024, ¶¶15-16; Ex. 2018, 414
`
`13
`
`

`

`(“When Kinit is calculated in both devices the link key shall be created.”) (emphasis
`
`added). Notably, the ’698 patent does not mention a link key either. Foley Depo.,
`
`57:4-8. This illustrates the point: both Mashita and the ’698 patent disclose
`
`establishing a paired Bluetooth connection despite not explicitly disclosing every
`
`detail described in the Bluetooth specifications. See Foley Depo., 49:23-50:1,
`
`88:24-89:8.
`
`Notably, Cellspin/Foley do not cite a single description in the Bluetooth
`
`specifications of a user inputting a PIN other than pairing. Referring again to the
`
`Bluetooth connection diagram shown above, the description of Step 7b, “Optional
`
`Authentication,” in instructive. Unlike “Optional Pairing,” this step does not
`
`involve entering a PIN into either device. Ex. 2018, 867.
`
`Likewise, while Cellspin/Foley claim that Bluetooth allows for an
`
`authenticated connection without pairing (Response, 35, 37; Ex. 2009, ¶¶105, 111),
`
`they cite no evidence that this is true from the 1400-plus pages of Bluetooth
`
`specification documents they submitted as exhibits. See 37 C.F.R. § 42.65(a); Ex.
`
`1024, ¶19. To the contrary, the “optional authentication” step described above
`
`happens only if “a common link key exists between the devices.” Ex. 2018, 867;
`
`Ex. 1024, ¶17. This common link key is created during pairing. That is,
`
`authentication without pairing would only happen if the devices previously had
`
`been paired. Id.
`
`14
`
`

`

`Second, Cellspin/Foley assert that “Mashita teaches a technique more similar
`
`to LMP authentication than pairing.” Response, 24; Ex. 2009, ¶78. This claim is
`
`wholly unsupported by evidence or rationale. See 37 C.F.R. § 42.65(a). Dr. Foley
`
`confirmed that the “LMP Authentication” he was referring to is described as a
`
`phase of “Secure Simple Pairing,” which was introduced in 2007 as discussed
`
`above. Foley Depo., 87:12-88:20; Ex. 2018, 1058 (“Phase 5: LMP Authentication
`
`and Encryption”). Mashita, filed in 2001, could not be describing Secure Simple
`
`Pairing. Even that section of the Bluetooth specifications does not describe LMP
`
`authentication as distinct from pairing, but rather as “the same as the final steps in
`
`legacy pairing.” Ex. 2018, 1067.
`
`Third, Cellspin argues that because Mashita discloses IrDA as an alternative
`
`to Bluetooth, Mashita’s Bluetooth connection must not be paired. Response, 24-
`
`25; Ex. 2009, ¶79. This argument has it backwards. Bluetooth and IrDA are
`
`“vastly different.” See Foley Depo., 104:22-105:24. Mashita gives both as
`
`options. Id. So a POSITA would know to select between them based on the
`
`desired characteristics, e.g., if IrDA does not allow paired connections, a POSITA
`
`would choose Bluetooth if a paired connection was desired.
`
`Fourth, and finally, Cellspin argues that Mashita terminates the Bluetooth
`
`connection “after every transaction,” and this is the “antithesis” of pairing.
`
`Response, 25-30. But the cited Figures of Mashita (6 and 7) actually show that the
`
`15
`
`

`

`Bluetooth connection does not terminate after every image transfer. Figures 6 and
`
`7 describe the same process of image transfer from the perspective of the cellular
`
`phone and digital camera, respectively. Ex. 1023, 100:1-102:6; Mashita, [0059];
`
`Ex. 1024, ¶49.
`
`The key is step S610 in Figure 6:
`
`Here, Dr. Foley’s deposition testimony speaks for itself:
`
`Q So looking back at Figure 6, at step S610, there are two lines
`coming out of S610. One is labeled yes. One is labeled no. Right?
`A Correct.
`
`16
`
`

`

`…
`Q Did you describe in your declaration what happens if the answer
`is no in step S610?
`A No, I don't believe so.
`…
`
`Q Paragraph 71 [of Mashita] is describing what happens when the
`answer is no in Figure 6, right, when the user has not instructed the
`end of the file transfer program, right?
`A Correct.
`Q And in that case, the cellular phone transitions back to a file
`reception mode, step S604, right?
`A Correct.
`Q And after returning back to S604, the cellular phone could receive
`another image file from the digital camera, correct?
`A It could, yes.
`…
`Q It depends on the user input as to whether or not to end the file
`transfer program, right?
`A Correct.
`Q So if the user decides to not end the file transfer program,
`multiple images could be transferred from the digital camera to the
`phone before the wireless link is terminated, right?
`
`A In one session, multiple images could be transferred.
`Foley Depo., 103:7-104:21 (emphasis added).
`
`17
`
`

`

`Thus, Mashita indeed does have a “waiting” state machine (see Response,
`
`29)— Mashita’s system reverts to Step S604, “file reception mode,” after every
`
`image transfer at Step S610 unless and until the user instructs the phone to end the
`
`file transfer program (and in turn, the Bluetooth connection). Ex. 1024, ¶¶50-56;
`
`Mashita, [0070]-[0072], [0078]. What Mashita describes is like any other paired
`
`Bluetooth connection where a user can unpair the devices. Ex. 1024, ¶57; see Ex.
`
`1023, 58:18-59:15.
`
`B. Mashita Also Discloses The “Cryptographically Authenticating
`Identity” Portion Of Limitation C.
`
`Cellspin acknowledges that Mashita discloses the two Bluetooth devices
`
`authenticating the identity of each other. Response, 23-24, 35. Mashita’s paired
`
`connection clearly is “cryptographically” doing so under the correct claim
`
`construction, as it uses a shared passkey (PIN) on the digital camera and cellular
`
`phone. Institution Decision, 10-13; Petition, 11-12, 39-42.
`
`Mashita’s disclosure meets even Cellspin’s incorrect claim construction.
`
`First, Cellspin explains that cryptographically authenticating is inherent in
`
`Bluetooth pairing. Response, 17-18. This is consistent with the Challenged
`
`Claims’ language (“establishing a short-range paired wireless connection
`
`comprises [includes], the digital camera device cryptographically authenticating
`
`identity of the cellular phone.”) Likewise, the ’698 patent’s specification only
`
`describes Bluetooth pairing as a way “cryptographically authenticating” occurs.
`18
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`

`

`’698 patent, 3:65-4:21. Because Mashita discloses pairing, it also discloses
`
`“cryptographically authenticating [the] identity” of the two paired devices.
`
`Furthermore, the Bluetooth specifications show that Mashita’s Bluetooth
`
`connection would use “encryption and decryption involving an algorithm.” The
`
`specifications describe how “[t]he key used for authentication” is derived using a
`
`“key generating algorithm” which exploits a “cryptographic function.” Ex. 2018,
`
`1055-57 (emphasis added). That algorithm uses as inputs “the PIN [] augmented
`
`with the BD_ADDR” to generate Kinit, and in turn, a link key, which is “used in the
`
`authentication between the two devices.” Id., 414, 1055-57. BD_ADDR is the
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`Bluetooth physical address. Ex. 1024, ¶¶15-16. Mashita likewise discloses
`
`authentication using a PIN and the devices’ Bluetooth physical addresses. Id.;
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`Mashita, [0030], [0040], [0051]. A POSITA would thus understand that Mashita’s
`
`described authentication process would be “cryptographic” using an “algorithm.”
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`Ex. 1024, ¶15.
`
`C.
`
`At Minimum, it Would Have Been Obvious to a POSITA to
`Implement the Bluetooth Connections described in Mashita,
`Onishi, and Hiraishi as a Paired Connection.
`
`The Petition specifically argues that Limitation C at least would have been
`
`obvious given the prior art’s disclosure of Bluetooth connections. Petition, 41
`
`(regarding “cryptographically authenticating”), see also 39 (referring to this
`
`19
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`

`

`discussion when discussing “paired” connections); Institution Decision, 23
`
`(acknowledging Petitioners made this argument), 26.
`
`Here are the undisputed facts:
`
` Mashita, Onishi, and Hiraishi each expressly disclose a Bluetooth
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`connection between a cellular phone and digital camera. Petition, 33-35.
`
` Bluetooth connections, including specifically for image transfer, had to be
`
`either paired or not—as Dr. Foley affirmed, “those were the only two
`
`options.” Foley Depo., 42:25-43:6.
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` Products containing Bluetooth wireless technology were “compliant with
`
`the Bluetooth specification.” Id., 28:21-23.
`
` All Bluetooth devices “must support pairing as defined in” the Bluetooth
`
`specifications. Ex. 1020, 16 (emphasis added); Foley Depo., 47:1-20.
`
` Hundreds of millions of Bluetooth devices were shipped annually by the
`
`’698 patent’s priority date. Foley Depo., 27:23-28:16.
`
` The benefits of paired connections included authentication, a mechanism
`
`for secure data exchange, and saving information about the devices for
`
`future use. Foley Depo., 44:14-45:1.
`
` A POSITA would have understood these benefits of using a paired
`
`connection. Foley Depo., 45:25-46:3.
`
`20
`
`

`

` And, as Dr. Foley testified, “a POSITA could have downloaded and read
`
`the Bluetooth specifications and implemented as defined within those
`
`specifications” a paired connection for image transfer. Foley Depo.,
`
`48:14-21.
`
`This is textbook obviousness. There was a finite number—only two—of
`
`identified and known ways to implement the Bluetooth connections disclosed in
`
`Mashita, Onishi, and Hiraishi, and a POSITA would have reasonably expected
`
`success in implementing the connections in one of those ways (paired). See KRS
`
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“a person of ordinary skill has
`
`good reason to pursue the known options within his or her technical grasp”).
`
`Moreover, a POSITA would have found it obvious to do so to benefit from the
`
`well-understood advantages of pairing. See, e.g., E.I. du Pont De Nemours & Co.
`
`v. MacDermid Printing Sols., 657 Fed.Appx. 1004, 1011-15 (Fed. Cir. 2016)
`
`(claimed process was obvious where there were only a finite number of options
`
`and the benefits of the claimed options were known).
`
`The Bluetooth specifications even explicitly teach that a paired connection is
`
`suitable for image transfer. Cellspin states that “[t]ypically, pairing requirements
`
`for a given use case are specified in the Bluetooth Profile defining that use case”
`
`and that the “scenarios most in line with those in the ’698 patent, i.e. pull based or
`
`push based image transfer” are described in the Basic Imaging Profile (“BIP”).
`
`21
`
`

`

`Response, 37-38, 49. These are critical admissions, because the BIP instructs that
`
`“pairing can be performed as necessary and is left to the implementer’s
`
`discretion.” Ex. 1020, 16 (emphasis added). This is an express suggestion in the
`
`prior art to use a paired connection. Further, Dr. Foley admits that whether to use
`
`pairing is simply an “implementation detail” for a POSITA. Ex. 2009, ¶113; Foley
`
`Depo., 39:24-43:25. In other words, a POSITA could “implement [pairing as] a
`
`predictable variation and would see the benefit of doing so,” a hallmark of
`
`obviousness. See KSR, 550 U.S. at 401.
`
`D.
`
`Cellspin’s Arguments Do Not Apply to the Non-Method
`Challenged Claims.
`
`Cellspin’s arguments turn on the prior art’s supposed failure to disclose the
`
`“actual method step” of pairing. See Response, 34, 36. But Challenged Claims 5,
`
`7, 8, 10-13, and 15-20 require only a digital camera “configured to” establish a
`
`paired connection with a cellular phone (or instructions for doing the same), not an
`
`“actual method step.” The digital cameras in Mashita, Onishi, and Hiraishi
`
`indisputably are configured to meet Limitation C in these non-method claims
`
`because they have Bluetooth capability. Response, 35 (“a POSITA would
`
`understand that Bluetooth allows for an optional short-range paired wireless
`
`connection.”) Indeed, every Bluetooth device necessarily was configured to
`
`establish a paired Bluetooth connection and, in turn, cryptographically authenticate
`
`the identity of other Bluetooth devices. See supra Section IV.B.
`22
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`

`

`V.
`
`LIMITATION G IS OBVIOUS IN VIEW OF THE COMBINATION
`
`Cellspin argues that Mashita and Hiraishi cannot be combined to yield this
`
`limitation because Mashita’s Bluetooth connection terminates after every
`
`transaction (Response, 40-41); this is not what Mashita actually discloses as
`
`explained above in Section IV.A.
`
`Besides, the Challenged Claims do not require a “waiting” state machine as
`
`Cellspin suggests. Claim 1’s method requires only transferring one file, and the
`
`other claims require only the capability to transfer one file. The Challenged
`
`Claims impose no temporal requirement on the Bluetooth connection. Foley
`
`Depo., 98:23-25, 99:2-4, 99:10-13, 99:15-17 (“after it’s [the method of claim 1]
`
`done, if the connection was unpaired, I don’t see where Claim 1 says that once you
`
`paired it, it has to remain paired indefinitely.”)
`
`VI. LIMITATION J IS OBVIOUS IN VIEW OF THE COMBINATION.
`
`Faced with compelling evidence