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