UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GoPro, Inc., Garmin Int’l, Inc. and Garmin USA, Inc.
`Petitioners
`
`v.
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`CELLSPIN SOFT, INC.
`Patent Owner
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`Case No.: IPR2019-01107
`U.S. Patent No. 9,258,698
`
`Title: AUTOMATIC MULTIMEDIA UPLOAD FOR PUBLISHING DATA AND
`MULTIMEDIA CONTENT
`
`
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`DECLARATION OF MR. GERALD CHRISTENSEN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,258,698
`
`GoPro/Garmin
`EX. 1033, Page 001
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GoPro, Inc., Garmin Int’l, Inc. and Garmin USA, Inc.
`Petitioners
`
`v.
`
`CELLSPIN SOFT, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`Case No.: IPR2019-01107
`U.S. Patent No. 9,258,698
`
`Title: AUTOMATIC MULTIMEDIA UPLOAD FOR PUBLISHING DATA AND
`MULTIMEDIA CONTENT
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF MR. GERALD CHRISTENSEN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,258,698
`
`GoPro/Garmin
`EX. 1033, Page 001
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`
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`
`
`I.
`
`II.
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`
`
`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................. 1
`
`BACKGROUND AND QUALIFICATIONS .................................................... 1
`
`III.
`
`SUMMARY OF OPINIONS .............................................................................. 4
`
`IV. LEGAL UNDERSTANDING ............................................................................ 5
`
`A.
`
`B.
`
`The Person of Ordinary Skill in the Art .............................................. 6
`
`Anticipation ............................................................................................. 6
`
`C. Obviousness ............................................................................................. 7
`
`D. Claim Construction ................................................................................ 8
`
`V.
`
`CONCLUSION ................................................................................................... 9
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`- i -
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`GoPro/Garmin
`EX. 1033, Page 002
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`Christensen Declaration
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`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`EXHIBIT LIST
`
`No.
`
`Short Name
`
`Exhibit
`
`1001
`
`’698 Patent
`
`U.S. Patent No. 9,258,698 to Singh et al.
`
`
`
`
`
`
`
`’698
`Prosecution
`History
`
`Madisetti
`Declaration
`
`Hiroishi JP
`
`Hiroishi
`
`Hiroishi
`Translation
`Affidavit
`
`Takahashi JP
`
`Takahashi
`
`Takahashi
`Translation
`Affidavit
`
`Nozaki JP
`
`Nozaki
`
`
`
`
`
`
`
`
`
`
`
`
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`
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`
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`Prosecution history for U.S. Patent No. 9,258,698
`
`Declaration of Vijay Madisetti, Ph.D.
`
`JP Patent Application Publication No. 2003-60953
`to Hiroishi
`
`Certified Translation of JP Patent Application
`Publication No. 2003-60953 to Hiroishi
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2003-60953 to Hiroishi
`
`JP Patent Application Publication No. 2005-303511
`to Takahashi
`
`Certified Translation of JP Patent Application
`Publication No. 2005-303511 to Takahashi
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2005-303511 to Takahashi
`
`JP Patent Application Publication No. 2004-96166
`to Nozaki
`
`Certified Translation of JP Patent Application
`Publication No. 2004-96166 to Nozaki
`
`- ii -
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`GoPro/Garmin
`EX. 1033, Page 003
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`Christensen Declaration
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`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`No.
`
`Short Name
`
`1012
`
`Nozaki
`Translation
`Affidavit
`
`1013
`
`Hollstrom
`
`Ando JP
`
`Ando
`
`Ando
`Translation
`Affidavit
`
`IEEE 2001
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`1014
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`1015
`
`1016
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`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`
`
`
`
`Exhibit
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2004-96166 to Nozaki
`
`U.S. Patent No. 6,763,247 to Hollstrom et al.
`
`JP Patent Application Publication No. 2003-46841
`to Ando
`
`Certified Translation of JP Patent Application
`Publication No. 2003-46841 to Ando
`
`Affidavit of Translation for JP Patent Application
`Publication No. 2003-46841 to Ando
`
`Bisdikian, An Overview of the Bluetooth Wireless
`Technology, IEEE Communications Magazine
`(Dec. 2001)
`
`Bluetooth v1.1
`
`Specification of the Bluetooth System,
`Version 1.1 (Feb. 2001)
`
`Margalit
`
`Montulli
`
`U.S. Patent Publication No. 2002/0141586
`to Margalit et al.
`
`U.S. Patent Publication No. 2006/0189349
`to Montulli et al.
`
`District Court
`Order
`
`Order Granting Canon’s Motion to Dismiss in
`Cellspin Soft, Inc. v. Canon USA, Inc.,
`No. 4:17-cv-05938 (N.D. Cal. 2018)
`
`1022 Madisetti CV
`
`Curriculum Vitae for Vijay Madisetti, Ph.D.
`
`1023
`
`Anderson
`
`U.S. Patent No. 6,636,259 to Anderson et al.
`
`
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`- iii -
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`GoPro/Garmin
`EX. 1033, Page 004
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`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`No.
`
`Short Name
`
`Exhibit
`
`
`
`
`
`
`
`
`
`
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`
`1033
`
`IEEE 2004
`
`Hunter
`
`Kagle
`
`Jakobsson
`
`Kalajan
`
`HTTP/1.1
`
`Method
`Definitions
`
`MobShare
`
`Narayanaswami et al., Expanding the Digital Camera
`Reach, IEEE Computer Magazine (Dec. 2004)
`
`U.S. Patent Publication No. 2004/0005915 to Hunter
`
`U.S. Patent No. 6,148,149 to Kagle
`
`U.S. Patent No. 6,574,455 to Jakobsson
`
`U.S. Patent No. 7,639,943 to Kalajan
`
`Hypertext Transfer Protocol -- HTTP/1.1,
`https://www.w3.org/Protocols/rfc2616/rfc2616.html
`(1999)
`
`HTTP/1.1 Method Definitions,
`https://www.w3.org/Protocols/rfc2616/rfc2616-
`sec9.html (1999)
`
`Sarvas et al., MobShare: Controlled and Immediate
`Sharing of Mobile Images (Oct. 2004)
`
`ACM
`
`
`N/A
`
`ACM Multimedia 2004: Final Program,
`http://www.mm2004.org/acm_mm04_FinalProgram.htm
`(October 2004)
`
`N/A
`
`
`1034
`
`
`Christensen CV
`
`
`Curriculum Vitae for Mr. Gerald Christensen
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`- iv -
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`GoPro/Garmin
`EX. 1033, Page 005
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`I.
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`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`INTRODUCTION
`1. My name is Gerald Christensen.
`
`2.
`
`I have been asked to provide this declaration to address the invalidity of
`
`U.S. Patent No. 9,258,698 (the “’698 Patent”) in connection with the Petition for Inter
`
`Partes Review submitted by GoPro, Inc., Garmin Int’l, Inc. and Garmin USA, Inc.
`
`(“Petitioners”) and to confirm Dr. Vijay Madisetti’s opinions expressed in his
`
`declaration in support of IPR2019-00127. I am being compensated for the work that
`
`I perform in this matter at my consulting rate of $375 per hour. My compensation does
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`not depend on the outcome of the matter.
`
`3.
`
`The information contained in this declaration is true and accurate to the
`
`best of my knowledge and belief.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`4.
`
`I am qualified by education and experience to testify as an expert in the
`
`field of telecommunications. Ex. 1034 is a copy of my curriculum vitae detailing my
`
`experience and education. Additionally, I provide the following overview of my
`
`background as it pertains to my qualifications for providing expert testimony in this
`
`matter.
`
`5.
`
`I obtained a Bachelor of Science degree in Industrial and Systems
`
`Engineering (ISE) from the University of Florida in 1988. The ISE program I
`
`completed included same or similar core course work as required for a computer
`- 1 -
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`GoPro/Garmin
`EX. 1033, Page 006
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`science degree as well as more advanced software and computer engineering related
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`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`subjects such as robotics logic design and programming. The ISE program prepared
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`me to optimize existing computer hardware/software systems as well as develop new
`
`applications and solutions.
`
`6.
`
`I also obtained a Master of Business Administration degree from Auburn
`
`University with a concentration in Management Information Systems (MIS) in 1997.
`
`The courses I completed included computer science courses and MIS applied towards
`
`middle management and executive decision making.
`
`7. With regard to the subject matter of this proceeding, I have over 30 years
`
`of experience in planning, engineering, product management, and business
`
`development within the telecommunications industry. I have specialized technology
`
`and applications experience in the areas of intelligent networks, next generation
`
`networks including information management system (IMS), mobile location
`
`services/technology, mobile messaging services (including text-based messaging),
`
`prepaid wireless, and various devices used
`
`in conjunction with digital
`
`communications, content, and commerce.
`
`8.
`
`I am a registered Professional Engineer since 1995. I am the author of
`
`two books – Data on SS7 and Yes 2 Prepay - and the co-author of two books – Mobile
`
`Positioning and Location Management and Wireless Intelligent Networking.
`
`9.
`
`I started at BellSouth Telecommunications in 1988 and worked in a
`- 2 -
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`GoPro/Garmin
`EX. 1033, Page 007
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`number of different capacities. In 1992, I began working at BellSouth’s Regional
`
`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`Planning and Engineering Center (RPEC), where I was part of a group that was
`
`responsible for engineering and planning for the entire Signaling System No. 7 (SS7)
`
`network used to set up and tear down telephone calls in most parts of the world-wide
`
`public switched telephone network (PSTN).
`
`10.
`
`I started working for BellSouth Cellular in 1995 as Senior Manager of
`
`Network Strategic Planning. In that position, I was responsible for the planning,
`
`engineering, and introduction of the first SS7 system for BellSouth Cellular, which
`
`formed the backbone of all of the company’s cellular signaling and support of core
`
`cellular services, including SMS messaging. I also led a team responsible for selecting
`
`and implementing the first stand-alone Home Location Register (HLR) with BellSouth
`
`Cellular.
`
`11. From 1997 to 1999 and then again from 2001 to 2005, I worked at
`
`Illuminet (subsequently acquired by VeriSign) as a Senior Product Manager and then
`
`Director of Wireless Business Development. During my employment, I was
`
`responsible for evaluating many technologies and potential business relationships with
`
`companies including evaluation of many wireless data technologies and methods for
`
`communications between networks and wireless devices as well as wireless device-to-
`
`device communications. I was also responsible for evaluating multimedia messaging
`
`technologies and solutions for storage and transport of content including pictures and
`- 3 -
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`GoPro/Garmin
`EX. 1033, Page 008
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`videos.
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`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`12.
`
`In 2005, I co-founded Zoove, a mobile marketing company, and served
`
`as its CTO responsible for the overall technical vision and direction for the company,
`
`as well as product management. In addition, I defined the overall technical
`
`functionality and system features functionality. In this role, I maintained expertise in
`
`many different information and communications technologies (ICT) including both
`
`traditional telephony as well as next generation IP-based solutions.
`
`13.
`
`In 2010, I started Wireless WayPoint, an independent consultancy firm
`
`focusing on telecommunications, wireless, and internet-based applications, and have
`
`been its CEO since then. In this role, I provide general consulting to companies within
`
`the ICT space. I am frequently called upon to act as an expert witness in cases
`
`involving my knowledge and expertise.
`
`14.
`
`In view of the above and my curriculum vitae in Ex. 1034, I was at least
`
`a person of ordinary skill in the art of the ’698 Patent and had direct personal
`
`knowledge of the technologies involved in the ’698 Patent as of the earliest possible
`
`priority date of the ’698 Patent (i.e., December 28, 2007).
`
`III. SUMMARY OF OPINIONS
`I understand that the instant petition challenges claims 1-22 of the ’698
`15.
`
`Patent. After reviewing the relevant materials as described below, I agree with Dr.
`
`Vijay Madisetti’s opinions that these claims are invalid as obvious based on the
`
`
`
`- 4 -
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`GoPro/Garmin
`EX. 1033, Page 009
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`following grounds:
`
`
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`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`Ground 1: Hiroishi and Takahashi render obvious claims 1-20.
`Ground 2: Hiroishi, Takahashi, and Ando render obvious claims 21-22.
`Ground 3: Hiroishi, Takahashi, and Nozaki render obvious claims 1-22.
`Ground 4: Hiroishi, Takahashi, Nozaki, and Ando render obvious claims
`21-22.
`Ground 5: Hollstrom and Takahashi render obvious claims 1, 3-5, 7-8, 10-
`13, and 15-20.
`Ground 6: Hollstrom, Takahashi, and Ando render obvious claims 2, 6, 9,
`14, and 21-22.
`In preparation for this declaration, I have reviewed the ’698 Patent, its
`16.
`
`prosecution history, and the relevant documents listed in the Exhibit List. I have
`
`reviewed the petition and institution decision of IPR2019-00127 challenging of
`
`patentability of claims 1-22 of the ’698 Patent. I have also reviewed the expert
`
`declaration by Dr. Vijay Madisetti (Ex. 1003) in support of IPR2019-00127 and I agree
`
`with and adopt the detailed views and opinions expressed by Dr. Madisetti in Sections
`
`V (“Technology Overview”), VI (“The ’698 Patent”), VIII (“Overview of the Prior
`
`Art”), and IX (“Grounds for Invalidity”) of his declaration. Ex. 1003. I will not burden
`
`the Board by repeating the views and opinions expressed by Dr. Madisetti in the above
`
`Sections of his declaration.
`
`IV. LEGAL UNDERSTANDING
`I am not a lawyer and do not intend to provide legal opinions in
`17.
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`- 5 -
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`GoPro/Garmin
`EX. 1033, Page 010
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`connection with this proceeding. However, I understand that issues such as invalidity
`
`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`and claim construction are analyzed based on certain legal standards. Attorneys for
`
`Petitioners have provided me with an understanding of these principles, and I have
`
`applied them in my analysis of the ’698 Patent.
`
`A. The Person of Ordinary Skill in the Art
`I understand that a person of ordinary skill in the art is a hypothetical
`18.
`
`person who is presumed to be aware of all pertinent art, thinks along conventional
`
`wisdom in the art, and is a person of ordinary creativity—not an automaton. In
`
`deciding the level of ordinary skill, I understand that the following factors may be
`
`considered:
`
`•
`
`•
`
`the levels of education and experience of persons working in the field;
`
`the types of problems encountered in the field;
`
`and the sophistication of the technology.
`•
`B. Anticipation
`I understand that, to anticipate a claim, a prior art reference must teach
`19.
`
`each and every limitation of the claim either expressly or inherently. I understand that
`
`extrinsic evidence may be considered to inform the understanding of a prior art
`
`reference from the perspective of a person of ordinary skill in the art. However, such
`
`extrinsic evidence must make clear that the limitation is “necessarily present” in order
`
`to be relied upon for anticipation.
`
`
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`- 6 -
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`GoPro/Garmin
`EX. 1033, Page 011
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`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`C. Obviousness
`I understand that a patent claim is invalid if the claimed invention would
`20.
`
`have been obvious to a person of ordinary skill in the field at the time the application
`
`was filed. This means that even if all of the requirements of the claim cannot be found
`
`in a single prior art reference that would anticipate the claim, the claim can still be
`
`invalid.
`
`21. To obtain a patent, a claimed invention must have, as of the priority date,
`
`been nonobvious in view of the prior art in the field. I understand that an invention is
`
`obvious when the differences between the subject matter sought to be patented 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.
`
`22.
`
`I understand that to prove that prior art, or a combination of prior art,
`
`renders a patent obvious, it is necessary to: (1) identify the particular references that
`
`singly, or in combination, make the patent obvious; (2) specifically identify which
`
`elements of the patent claim appear in each of the asserted references; and (3) explain
`
`how the prior art references could have been combined to create the inventions claimed
`
`in the asserted claim.
`
`23.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious or nonobvious. Such indicia include: (1)
`
`commercial success of products covered by the patent claims; (2) a long-felt need for
`
`
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`- 7 -
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`GoPro/Garmin
`EX. 1033, Page 012
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`the invention; (3) failed attempts by others to make the invention; (4) copying of the
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`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`invention by others in the field; (5) unexpected results achieved by the invention as
`
`compared to the closest prior art; (6) praise of the invention by the infringer or others
`
`in the field; (7) the taking of licenses under the patent by others; (8) expressions of
`
`surprise by experts and those skilled in the art at the making of the invention; and (9)
`
`the patentee proceeded contrary to the accepted wisdom of the prior art.
`
`D. Claim Construction
`I have been instructed by counsel on the law regarding claim construction
`24.
`
`and patent claims, and I understand that a patent may include two types of claims––
`
`independent claims and dependent claims. An independent claim stands alone and
`
`includes only the features it recites. A dependent claim can depend from an
`
`independent claim or another dependent claim. I understand that a dependent claim
`
`includes all the features that it recites in addition to all of the features recited in the
`
`claim from which it depends.
`
`25.
`
`I understand that prior to November 13, 2018 the Board construed claims
`
`under the “broadest reasonable interpretation” standard. I further understand that after
`
`November 13, 2018, the Board construes claims under the same claim construction
`
`standard that would be used to construe the claim in a civil action. Under either
`
`standard, I still agree with Dr. Madisetti’s opinions as set forth above.
`
`26.
`
`In certain cases, I understand that the inventor may provide a special
`
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`- 8 -
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`GoPro/Garmin
`EX. 1033, Page 013
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`meaning, or lexicography, for a claim limitation. I understand that if there are specific
`
`Christensen Declaration
`
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`statements in the specification that define the invention, those statements are strong
`
`evidence of a definition for a term.
`
`V. CONCLUSION
`27. For the foregoing reasons, I agree with Dr. Vijay Madisetti’s opinions
`
`that the challenged claims of the ’698 Patent are invalid.
`
`28.
`
`I hereby declare and state, that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are believed
`
`to be true; and further that these statements were made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, under
`
`Section 1001 of Title 18 of the United States Code.
`
`
`Executed: May 28, 2019
`
`
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`
`
`__________________________
`Gerald Christensen
`
`
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`- 9 -
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`GoPro/Garmin
`EX. 1033, Page 014
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