Paper: 19
`
`Trials@uspto.gov
` Date: November 21, 2019
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOPRO, INC., GARMIN INTERNATIONAL, INC., AND GARMIN USA, INC.,
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`_____________
`
`IPR2019-01107
`Patent 9,258,698 B2
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122
`
`
`
`
`
`
`
`
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`IPR2019-01107
`Patent 9,258,698 B2
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`
`INTRODUCTION
`I.
`Petitioners, GoPro, Inc., Garmin International, Inc., and Garmin USA, Inc.
`(collectively “’1107 Petitioners” or “Petitioner”) filed a Petition (“Pet.”) on May
`28, 2019 (Paper 1) requesting inter partes review of claims 1–22 of U.S. Patent
`No. 9,258,698 B2 (“the ’698 patent,” Ex. 1001). Pet. 5. Cellspin Soft, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 16, “Prelim. Resp.”).
`Concurrently with the Petition, the ’1107 Petitioners filed a Motion for
`Joinder (“Motion,” “Mot.,” Paper 4) with Canon U.S.A. v. Cellspin Soft, Inc.,
`IPR2019-00127 (“’127 IPR”), a pending inter partes review also challenging
`claims 1–22 of the ’698 patent. Mot. 1. We instituted inter partes review on the
`’127 IPR on April 29, 2019. ’127 IPR, Paper 7. In our June 12, 2019, Order in
`this proceeding,1 we authorized briefing on the Motion by the ’1107 IPR
`Petitioner, Canon U.S.A. (“Canon”), and Patent Owner in both proceedings. ’127
`IPR, Paper 14; Paper 8.2 On June 28, 2019, Patent Owner filed in both cases a
`notice of non-opposition to the motion for joinder. ’127 IPR, Paper 16; Paper 11.
`Canon opposes the Motion (“Opposition,” “Opp.,” Paper 13; see also ’127 IPR,
`Paper 15 (same filing)). Also pursuant to our Order, the ’1107 Petitioners filed a
`Reply (“Reply”) (’127 IPR, Exhibit 1035; Paper 14), and with email authorization
`Canon filed a Sur-reply (“Sur-Reply,” ’127 IPR, Paper 19; Paper 15).
`An inter partes review may not be instituted unless the information
`presented in the petition and any preliminary response “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`
`1 Our June 11, 2019, Order required the briefing of the Motion in the ’1107 IPR to
`be filed in the ’127 IPR. ’127 IPR, Paper 14, 3; ’1107 IPR, Paper 8, 3. The
`Motion is filed in the ’127 IPR as Exhibit 1033 and the Reply as Exhibit 1035.
`2 For purposes of this Decision, hereinafter and unless otherwise indicated,
`references to Papers (for example “Paper 8” or “Pet.”) are to this ’1107 IPR.
`2
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`Patent 9,258,698 B2
`the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the
`arguments and evidence presented by the ’1107 Petitioners and Patent Owner, we
`determine ’1107 Petitioners have demonstrated a reasonable likelihood of
`prevailing in showing that at least one of the challenged claims of the ’698 patent
`is unpatentable.
`
`
`
`II. BACKGROUND
`A. Related Proceedings
`In addition to the ’127 IPR, two other inter partes reviews have been filed
`challenging claims 1, 3–5, 7, 8, 10–13, and 15–20 of the ’698 patent: Panasonic
`Corp. of North America v. Cellspin Soft, Inc., IPR2019-00131 and GoPro, Inc. v.
`Cellspin Soft, Inc., IPR2019-01108. Paper 5, 2.
`The parties advise us that Patent Owner has asserted the ’698 patent against
`the ’1107 Petitioners in Cellspin Soft, Inc. v. GoPro, Inc., No. 4:17-cv-005939 and
`Cellspin Soft, Inc. v. Garmin International, No. 4:17-cv-05934 in the U.S. District
`Court for the Northern District of California. Pet. 2; Paper 5, 2. Other lawsuits
`alleging infringement of the ’698 patent are pending. Pet. 3; Paper 5, 2.
`
`B. Technology and the ’698 Patent
`The ’698 patent is directed to “distribution of multimedia content.”
`Ex. 1001, 1:40–41. The system described includes using a digital data capture
`device in conjunction with a cellular phone to automatically publish “data and
`multimedia content on one or more websites simultaneously.” Id. at 1:41–45.
`
`1. Technology
`According to the ’698 patent, in the prior art,
`the user would capture an image using a digital camera or a video
`camera, store the image on a memory device of the digital camera, and
`transfer the image to a computing device such as a personal computer
`(PC). In order to transfer the image to the PC, the user would transfer
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`the image off-line to the PC, use a cable such as a universal serial bus
`(USB) or a memory stick and plug the cable into the PC. The user
`would then manually upload the image onto a website which takes time
`and may be inconvenient for the user.
`
`Ex. 1001, 1:46–55.
`
`
`
`2. The ’698 Patent (Ex. 1001)
`The ’698 patent describes a digital data capture device, which may be “a
`digital camera, a video camera, digital modular camera systems, or other digital
`data capturing systems.” Ex. 1001, 3:34–38, 3:41–44. The digital data capture
`device works with a Bluetooth-enabled mobile device, e.g., a cell phone, “for
`publishing data and multimedia content on one or more websites automatically or
`with minimal user intervention.” Id. at 3:34–38.
`Figure 2 of the ’698 patent is reproduced below.
`
`
`Figure 2 “illustrates a system for utilizing a digital data capture device in
`conjunction with a Bluetooth enabled mobile device.” Ex. 1001, 3:14–18.
`Referring to Figure 2, “[t]he BT [(Bluetooth)] communication device 201a on the
`digital data capture device 201 is paired 103 with the mobile device 202 to
`establish a connection between the digital data capture device 201 and the mobile
`device 202.” Id. at 3:60–63. According to the ’698 patent, Bluetooth pairing
`
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`involves establishing a connection between two Bluetooth devices that “mutually
`agree to communicate with each other.” Id. at 3:60–65. The communication is
`authenticated cryptographically using a “common password known as a passkey,”
`which “is exchanged between the BT communication device 201a and the mobile
`device 202.” Id. at 3:65–4:7.
`Still referring to Figure 2, a user captures data and multimedia content using
`digital data capture device 201. Id. at 4:26–27. Client application 203 on mobile
`device 202 detects the captured data, the multimedia content, and “files associated
`with the captured data and the multimedia content.” Id. at 4:29–32. The client
`application initiates a transfer of the captured data and the digital data capture
`device automatically transfers the captured data from the mobile device using one
`or a combination of file transfer protocols. Id. at 4:32–42. The transfer protocols
`include “one or a combination of BT profile protocols such as the object exchange
`(OBEX) protocols,” such as the generic object exchange profile (GOEP) protocol;
`the media transfer protocol (MTP); the picture transfer protocol (PTP); and the
`PictBridge protocol implemented using a USB. Id. at 4:42–48.
`The user may set preferences regarding timing of the publication of the
`captured data and the destination website. Ex. 1001, 5:23–38. “The client
`application 203 on the mobile device 202 then automatically publishes 107 the
`transferred data and multimedia content on one or more websites.” Id. at 5:39–41.
`
`C. Illustrative Claim
`Claims 1 (method), 5 (device), 8 (system), and 13 (computer
`readable-medium) are independent claims. Claims 2–4 depend directly from
`claim 1. Claims 6, 7, 17, 19, and 21 depend directly or indirectly from claim 5.
`Claims 9–12, 20, and 22 depend directly or indirectly from claim 8. Claims 14–16
`and 18 depend directly from claim 13.
`Claim 1 is reproduced below as illustrative.
`5
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`[1(a)3] A machine-implemented method of media transfer, comprising:
`
`[1(b)] for a digital camera device having a short-range wireless
`capability to connect with a cellular phone, wherein the cellular
`phone has access to the internet, performing in the digital camera
`device:
`
`
`[1(c)] establishing a short-range paired wireless connection between the
`digital camera device and the cellular phone, wherein establishing
`the short-range paired wireless connection comprises, the digital
`camera device cryptographically authenticating identity of the
`cellular phone;
`
`
`[1(d)] acquiring new-media, wherein the new-media is acquired after
`establishing the short-range paired wireless connection between the
`digital camera device and the cellular phone;
`
`
`[1(e)] creating a new-media file using the acquired new-media;
`
`[1(f)] storing the created new-media file in a first non-volatile memory
`of the digital camera device;
`
`
`[1(g)] receiving a data transfer request initiated by a mobile software
`application on the cellular phone, over the established short-range
`paired wireless connection, wherein the data transfer request is for
`the new-media file, and wherein the new-media file was created in
`the digital camera device before receiving the data transfer request;
`and
`
`
`[1(h)] transferring the new-media file to the cellular phone, over the
`established short-range paired wireless connection, wherein the
`cellular phone is configured to receive the new-media file, wherein
`the cellular phone is configured to store the received new-media file
`in a non-volatile memory device of the cellular phone,
`
`
`
`
`3 Petitioner identifies limitations using a format where the claim number is
`followed by the claim’s limitations designated by letters within parentheses. See,
`e.g., Pet. 9–10 (claim 1(a)–(j)). We also adopt the format.
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`[1(i)] wherein the cellular phone is configured to use HTTP to upload
`the received new-media file along with user information to a user
`media publishing website, and
`
`
`[1(j)] wherein the cellular phone is configured to provide a graphical
`user interface (GUI) in the cellular phone, wherein the graphical
`user interface (GUI) is for the received new-media file and to delete
`the created new-media file.
`
`Ex. 1001, 11:54–12:26 (alterations and line breaks added); see Pet. 9–10.
`
`
`III. ANALYSIS
`A. Institution
`We instituted a trial in the ’127 IPR on the following grounds:
`
`Claims
`Challenged
`1–20
`21, 22
`
`35 U.S.C. §4
`
`§ 103
`§ 103
`
`References
`
`Hiroishi5 and Takahashi6
`Hiroishi, Takahashi, Ando7
`
`
`4 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284,
`285–88 (2011), amended 35 U.S.C. §§ 102 and 103, and those amendments
`became effective March 16, 2013. The ’698 patent claims priority through a chain
`of continuation applications to Application 12/333,303, filed on December 11,
`2008, which is before the effective date of the relevant sections of the AIA. Ex.
`1001, [63]. Thus, on the present record, the grounds asserted are under the pre-
`AIA version of § 103.
`5 Toshiyuki Hiroishi, JP 2003-60953, published February 28, 2003 (“Hiroishi,” Ex.
`1004 (original Japanese language version, Ex. 1005 (certified English translation)).
`We reference the English translation, Ex. 1005.
`6 Susumu Takahashi, et al., JP 2005-303511, published October 27, 2005
`(“Takahashi,” Ex. 1007 (original Japanese language version), Ex. 1008 (certified
`English language translation)). We reference the English translation Ex. 1008.
`7 Ando, JP P2003-46841A, published February 14, 2003 (“Ando,” Ex. 1014
`(original Japanese language version), Ex. 1015 (certified English translation)). We
`reference the English translation, Ex. 1015.)).
`7
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`Patent 9,258,698 B2
`Claims
`Challenged
`1–22
`21, 22
`1, 3–5, 7, 8, 10–
`13, 15–20
`2, 6, 9,
`14, 21, 22
`
`
`35 U.S.C. §4
`
`§ 103
`§ 103
`§ 103
`
`
`
`References
`
`Hiroishi, Takahashi, Nozaki8
`Hiroishi, Takahashi, Nozaki, Ando
`Hollstrom9 Takahashi
`
`§ 103
`
`Hollstrom, Takahashi, Ando
`
`
`’127 IPR, Paper 7, 8–9, 48.
`In this proceeding, the Petition is supported by the Declaration of Dr. Vijay
`Madisetti (Ex. 1003, “Madisetti Declaration”); see also Pet. 6 (citing Ex. 1033);
`Ex. 1033 ¶ 16 (Mr. Christensen stating that he has “reviewed the expert declaration
`by Dr. Vijay Madisetti (Ex. 1003) in support of IPR2019-00127” and that he
`“agree[s] with and adopt[s] 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”).10 The Preliminary Response is supported by the Declaration of Dr.
`Michael Foley (Ex. 2009, “Foley Declaration”), which is identical to the
`
`
`8 Nozaki, JP 2004-96166, published March 25, 2004 (“Nozaki,” Ex. 1011 (original
`Japanese language version), Ex. 1011 (certified English translation)). We
`reference the English translation, Ex. 1011)).
`9 Hollstrom, et al., U.S. Patent No. 6,763,247 B1, issued July 13, 2004
`(“Hollstrom,” Ex. 1013).
`10 The Madisetti Declaration supports Canon’s petition in the ’127 IPR. Canon has
`not agreed to the ’1107 Petitioners using the Madisetti Declaration here. See Mot.
`5–6. As a result, the ’1107 Petitioners retained their own expert, Mr. Christensen,
`who, according to the ’1107 Petitioners, “opines that he is in agreement with Dr.
`Madisetti’s opinions and adopts them as his own.” Id. at 5 (citing Declaration of
`Gerald Christensen, Ex. 1033 ¶ 15). The specific patentability analysis in the
`Petition directly cites only the Madisetti Declaration. See, e.g., Pet. 24 (citing Ex.
`1003 ¶¶ 95–96).
`
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`Declaration filed in copending inter partes review Canon U.S.A. v. Cellspin Soft,
`Inc., IPR2019-0127 (“’127 IPR”) as Exhibit 2009.
`The ’1107 Petitioners allege the Petition here is substantially identical to the
`petition in the ’127 IPR “save for the expert and formalities differences, such as
`different petitioners, typographical corrections and real parties-in-interest.” Mot.
`4. Although Patent Owner does not oppose joinder, it argues we should not
`institute trial. See, e.g., Prelim. Resp. 7 (“This Preliminary Response is
`substantially different from, and more detailed than, Patent Owner’s Preliminary
`Response in the ‘127-IPR.”), 16 (“no reasonable likelihood of unpatentability has
`been shown”). According to Patent Owner, its “Preliminary Response primarily
`tracks the substance of Cellspin’s actual, detailed Response filed in the ‘127-IPR.”
`Id. at 7.
`
`1. Claim Construction
`In an inter partes review requested in a petition filed on or after November
`13, 2018, we apply the same claim construction standard used in district courts in a
`civil action under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before the
`Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,343 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). In this case, the
`Petition was filed on May 28, 2019, and we, therefore, apply that standard here.11
`
`11 Notwithstanding that the district court, i.e., Phillips, claim interpretation
`standard applies for purposes of this Decision, Patent Owner argues it does not
`need to brief claim construction under Phillips until such time as institution is
`granted. Prelim. Resp. 16. Patent Owner’s arguments are made under the prior
`broadest reasonable interpretation (“BRI”) claim construction standard. See, e.g.,
`Prelim. Resp. 21 (using BRI to construe “paired connection”); see also Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the use of BRI
`9
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`In so doing, we construe a claim “in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). The
`“specification may reveal a special definition given to a claim term by the patentee
`that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at
`1316. “[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.” See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see
`also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`In the Institution Decision in the ’127 IPR, we analyzed two terms, “paired”
`and “cryptographically authenticating.” ’127 IPR, Paper 7, 10–12. The Petition
`does not propose any term for construction. Pet. 18. Here, Patent Owner raises a
`dispute regarding Ground 5 and the construction of “paired connection” and “along
`with.” Prelim. Resp. 18–22, 64 (“paired”), 30, 65–66 (“along with”). The
`interpretation of these terms is discussed below.
`
`a. “paired”/“paired connection”
`Patent Owner proposes that, using BRI, we construe “paired connection” as
`bidirectional communications link between devices which provides
`encrypted data exchange between the devices, and the communication
`link can be disconnected and reconnected without having to repeat
`pairing or authentication.
`
`Prelim. Resp. 21 (citing Ex. 2009 ¶¶ 46–47) (emphasis omitted). Among other
`arguments based on the Specification, Patent Owner argues “Figure 1 of the ’698
`patent illustrates a method of utilizing a digital data capture device 201 in
`
`
`in inter partes review). For reasons stated hereinafter, the joined proceeding will
`use the BRI standard.
`
`10
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`conjunction with a physically separate Bluetooth enabled mobile device 202.” Id.
`at 18 (citing Ex. 1001,12 3:34–41); see also Ex. 1001, 3:60–4:25, 4:1–3, 6:23–39
`(further describing Bluetooth pairing).
`Patent Owner then argues “pairing involves association and an exchange of
`credentials to fulfilling the agreement in addition to merely communicating back
`and forth.” Id. at 19 (citing Ex. 2009 ¶ 45). With respect to the association aspect
`of Bluetooth pairing, Patent Owner cites to the Bluetooth specification (Ex. 201813)
`description of “Association Models.” Id. at 19–21 (citing Ex. 2018, 80, 135).
`Patent Owner argues that “a paired connection must be distinguished from mere
`authentication and from other methods of communications that involve exchanges
`of credentials but not pairing.” Id. at 22 (citing Ex. 2009 ¶ 48) (emphasis omitted).
`Patent Owner cites to Bluetooth technology as at least an example of a
`“paired connection.” Prelim. Resp. 19–21. Because the evidence shows that
`Bluetooth pairing was known in the prior art, as discussed below, we need not
`expressly construe “paired” or “paired connection” for purposes of this Decision.
`
`b. “along with”(claims 1, 5, 8, 13)
`Patent Owner proposes that a person of ordinary skill in the art,
`applying the broadest reasonable interpretation, would construe “along with”
`to mean “in addition to (something or someone).” Prelim. Resp. 30 (citing
`Ex. 2009 ¶ 67 (citing Ex. 2022). We are not persuaded that the combination
`of “along” and “with” is necessarily subject to a dictionary definition.
`In the context of limitation 1(i), Patent Owner argues its interpretation
`means that whatever is “in addition” is not “part of the image file or inside
`
`
`12 Patent Owner mistakenly cites to Exhibit 1003.
`13 Bluetooth Specification, Version 2.1 (Bluetooth Special Interest Group (SIG)
`2007). The ’1107 Petitioners’ evidence includes Specification of the Bluetooth
`System, Version 1.1 (Bluetooth SIG 2001), Ex. 1018.
`11
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`the image file.” Prelim. Resp. 52 (Ground 1), 66 (Ground 5). Patent Owner
`then argues “along with” means the recited “new-media file uploaded to the
`user media publishing website by the mobile device” must be the same new-
`media file received from the camera. Id. at 53.
`Neither the Specification nor the written description of the ’802 application,
`which is incorporated by reference in its entirety, use “along with” outside the
`claims. See Prelim. Resp. 29 (citing Ex. 1002, 1:32–36). Claim 1 recites in part
`“wherein the cellular phone is configured to use HTTP to upload the received new-
`media file along with user information to a user media publishing website.”
`Limitation 1(i) (emphasis added). Because Patent Owner’s proposed construction
`is not required by the intrinsic evidence, we do not adopt it for purposes of
`determining whether to institute.
`
`2. Obviousness of Claim 1 Over Hollstrom and Takahashi (Ground 5)
`Petitioner alleges the subject matter of claim 1 would have been obvious
`over Hollstrom and Takahashi. Pet. 59–65. Patent Owner disputes that Petitioner
`has shown that limitation 1(c) regarding “paired” and “cryptographically
`authenticating” would have been obvious over Hollstrom and Takahashi. Prelim.
`Resp. 64–65. Patent Owner also disputes that Petitioner has made a sufficient
`showing regarding limitation 1(i) (“wherein the cellular phone is configured to use
`HTTP to upload the received new-media file along with user information to a user
`media publishing website”). Id. at 65–66.
`Below we summarize the Petition’s showing regarding the undisputed
`limitations of claim 1 and then address the limitations disputed by Patent Owner.
`
`a. Legal Standard for Obviousness
`A patent claim is unpatentable as obvious if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a whole
`
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`would have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
`The ultimate determination of obviousness is a question of law, but that
`determination is based on underlying factual findings. The underlying factual
`findings include (1) “the scope and content of the prior art,” (2) “differences
`between the prior art and the claims at issue,” (3) “the level of ordinary skill in the
`pertinent art,” and (4) the presence of secondary considerations of nonobviousness
`such “as commercial success, long felt but unsolved needs, failure of others,” and
`unexpected results. In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)
`(citing, inter alia, Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`
`b. Person of Ordinary Skill in the Art
`Petitioner alleges a person of ordinary skill in the art
`would have had at least a bachelor’s degree in electrical engineering,
`computer engineering or computer science, or an equivalent degree,
`and two years of industry experience with software development,
`electronic system design, digital camera technology, and/or wireless
`communications.
`
`
`Pet. 18. Patent Owner agrees with this proposed level of ordinary skill. Prelim.
`Resp. 15. We determine on the current record that the level of ordinary skill
`proposed by Petitioner is consistent with the challenged patent and the asserted
`prior art and we therefore adopt that level for the purposes of this decision. See
`’127 IPR, Paper 7, 14 (adopting the same description).
`
`c. Prior Art Relied Upon
`As noted in Section III.A above, the ’1107 Petitioners rely on the following
`prior art for Ground 5. See also Pet. 5 (identifying grounds).
`
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`i. Hollstrom (Ex. 1013)
`Hollstrom teaches a mobile device and associated application software that
`allows for remote control of wirelessly connected devices, such as a digital camera.
`Ex. 1013, Abstract. The application allows a user of the mobile device to perform
`certain camera functions remotely, such as capturing, viewing, modifying, and
`deleting images. Id. at 6:1–13, 6:29–46.
`Figures 2 and 3 are reproduced below (as shown at page 22 of the Petition).
`
`
`
`Figures 2 and 3, respectively, illustrate the structure of the mobile device and the
`digital camera. Ex. 1013, 2:54–57, 4:36–39. Hollstrom teaches that both the
`mobile device and camera include Bluetooth functionality that allows them to
`establish a paired connection and exchange image files wirelessly. Id. at 5:58–67.
`After receiving new image files, the mobile device is configured to upload the files
`to a designated publishing website. Id. at 6:14–28.
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`ii. Takahashi (Ex. 1008)
`Takahashi teaches a system that allows a mobile device to upload image data
`to a remote server using HTTP. Ex. 1008, Abstract, ¶ 49. An “image storage
`server 4 sends an email containing the URL of a web page that publishes an image
`data selected by the mobile telephone.” Id. at Abstract, ¶ 5. The image is stored
`on a mobile terminal (telephone), selected and transmitted over a network via an
`HTTP request, and received and stored by “storage means” or image storage
`processing unit. Id. ¶ 6, Fig. 4 (block 22). Uploaded information includes the
`image data, along with a filename that identifies user information including a user
`ID. Id. ¶ 66. The storage server processes the received image file in order to
`publish it. Id. ¶ 52.
`
`d. Undisputed Limitations of Claim 1
`The preamble, designated in the Petition as limitation 1(a), recites, in
`pertinent part, “[a] machine-implemented method of media transfer.” The Petition
`cites to Hollstrom as teaching such a method. Pet. 59 (citing Ex. 1013, 5:58–6:13
`5, Fig. 1; Ex. 1003 ¶ 224). On this record and to the extent the preamble is
`limiting, the ’1107 Petitioners have sufficiently shown that Hollstrom teaches a
`machine-implemented method of media transfer.
`Limitation 1(b) recites “for a digital camera device having a short-range
`wireless capability to connect with a cellular phone, wherein the cellular phone has
`access to the internet, performing in the digital camera device.” Petitioner argues
`Hollstrom teaches a digital camera connected by “short-range wireless
`connection,” for example Bluetooth, to a cellular phone. Pet. 59 (citing Ex. 1013,
`3:45–48, 4:36–47, 5:64–67, Figs. 2, 3). Hollstrom is further cited for its teaching
`that the cellular phone has “access to the internet.” Id. (citing Ex. 1013, 3:21–24,
`Fig. 2; Ex. 1003 ¶¶ 225–227).
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`On this record, the ’1107 Petitioners have sufficiently shown that Hollstrom
`teaches limitation 1(b).
`Limitation 1(d) recites “acquiring new-media, wherein the new-media is
`acquired after establishing the short-range paired wireless connection between the
`digital camera device and the cellular phone.” Petitioner argues this limitation is
`taught because Hollstrom teaches that “[t]he start page from the digital camera is
`presented on the display of the telephone,” where the phone controls the camera.
`Pet. 61 (citing Ex. 1013, 5:30–42, Fig. 3). Petitioner argues the controlled
`functions include capture and deletion of a picture. Id. (citing Ex. 1013, 6:29–38).
`Based on the teachings of Hollstrom and the Madisetti Declaration, the Petition
`argues Hollstrom teaches “acquiring new-media after establishing the short-range
`paired wireless connection between the digital camera and the cellular phone.” Id.
`(citing Ex. 1003 ¶¶ 231–232).
`On this record, the ’1107 Petitioners have sufficiently shown that Hollstrom
`teaches limitation 1(d).
`Limitation 1(e) recites “creating a new-media file using the acquired new-
`media.” Relying on the Madisetti Declaration, the Petition asserts “Hollstrom
`teaches creating a new-media file using the acquired new-media.” Pet. 61 (citing
`Ex. 1003 ¶ 233). The Petition specifically cites Hollstrom’s teaching that “the
`digital camera 50 is capable of producing digital pictures and storing them locally
`in e.g. the flash memory 330.” Id. (citing Ex. 1013, 5:58–67, quoting 5:59–61).
`On this record, the ’1107 Petitioners have shown sufficiently that Hollstrom
`teaches limitation 1(e).
`Limitation 1(f) recites “storing the created new-media file in a first non-
`volatile memory of the digital camera device.” As with limitation 1(e), discussed
`immediately above, Petitioner relies on Hollstrom’s digital camera’s non-volatile
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`memory (flash memory) for this limitation. Pet. 62 (citing Ex. 1013, 5:59–61; Ex.
`1003 ¶ 234).
`On this record, the ’1107 Petitioners have shown sufficiently that Hollstrom
`teaches limitation 1(f).
`Limitation 1(g) recites “receiving a data transfer request initiated by a
`mobile software application on the cellular phone, over the established short-range
`paired wireless connection, wherein the data transfer request is for the new-media
`file, and wherein the new-media file was created in the digital camera device
`before receiving the data transfer request.” Relying on the Madisetti Declaration,
`the Petitioner contends limitation 1(g) is taught by Hollstrom. Pet. 62 (citing Ex.
`1003 ¶ 235). The Petitioner argues Hollstrom teaches that a user may control the
`camera from a phone “to select image files to be transmitted to the phone over the
`Bluetooth connection.” Id. at 63 (citing Ex. 1013, 5:58–67, see also Ex. 1013,
`6:10–13 (“The user may for instance choose to view the pictures captured in the
`digital camera 50. The pictures are then sent, one by one, from the WAP server
`340 to the WAP client 240, which presents the pictures on the display 13.”)).
`On this record, the ’1107 Petitioners have shown sufficiently that Hollstrom
`teaches limitation 1(g).
`Limitation 1(h) recites “transferring the new-media file to the cellular phone,
`over the established short-range paired wireless connection, wherein the cellular
`phone is configured to receive the new-media file, wherein the cellular phone is
`configured to store the received new-media file in a non-volatile memory device of
`the cellular phone.” Relying on the Madisetti Declaration, the Petition contends
`limitation 1(h) is taught by Hollstrom. Pet. 63 (citing Ex. 1003 ¶¶ 236–238). The
`teachings of Hollstrom are, in part, what were cited in connection with limitation
`1(g), including that digital camera images are selected and transmitted to the phone
`over the Bluetooth connection. Id. (citing Ex. 1013, 5:58–67). For the storing
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`recitation of limitation 1(h), the Petitioner argues, among other arguments, that
`“the new-media files” are stored because “the phone subsequently uploads the
`new-media files to a website.” Id. at 63–64 (citing Ex. 1013, 6:18–24; see also Ex.
`1003 ¶¶ 38–41 238; Ex. 1026,14 3:7–25; Ex. 1024,15 67).
`On this record, and giving weight to the Madisetti Declaration and its
`reasoning for why a person of ordinary skill would have found storing images on
`the camera obvious, the ’1107 Petitioners have adequately shown that Hollstrom
`teaches limitation 1(h).
`Limitation 1(j) recites “wherein the cellular phone is configured to provide a
`graphical user interface (GUI) in the cellular phone, wherein the graphical user
`interface (GUI) is for the received new-media file and to delete the created new-
`media file.” Petitioner contends Hollstrom’s disclosure of user interface 250 on
`the phone teaches this limitation. Pet. 65 (citing Ex. 1013, Fig. 2, Abstract; Ex.
`1003 ¶¶ 242–243).
`On this record, the ’1107 Petitioners have sufficiently shown that Hollstrom
`teaches limitation 1(j).
`
`e. Disputed Limitations of Claim 1
`Limitation 1(c) recites “establishing a short-range paired wireless connection
`between the digital camera device and the cellular phone, wherein establishing the
`short-range paired wireless connection comprises, the digital camera device
`cryptographically authenticating identity of the cellular phone.” Petitioner asserts
`Bluetooth provides a short-range wireless connection between a digital camera and
`cellular phone and the “connection i