UNITED STATES PATENT AND TRADEMARK OFFICE
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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.
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`Petitioners
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`v.
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`Cellspin Soft, Inc.
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`Patent Owner
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`CASE: IPR2019-01108
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`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 DR. JOHN STRAWN IN SUPPORT OF PETITION
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`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,258,698
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`GoPro/Garmin
`EX. 1001, Page 001
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`TABLE OF CONTENTS
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`Page
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`BACKGROUND AND QUALIFICATIONS ................................................. 1
`I.
`INFORMATION PROVIDED TO ME ..................................................... 4
`II.
`A. MY UNDERSTANDING OF THE LAW REGARDING PRIOR
`ART .............................................................................................................10
`III. TECHNICAL BACKGROUND AND THE ’698 PATENT ........................11
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART ...........................13
`V.
`THE SCOPE AND CONTENT OF THE PRIOR ART ................................14
`A. MY OPINIONS REGARDING WHAT IS PRIOR ART TO THE
`CHALLENGED CLAIMS ..........................................................................14
`B. MASHITA ...................................................................................................15
`C. ONISHI .......................................................................................................19
`D. HIRAISHI ..................................................................................................25
`E. OVERVIEW OF THE STATE OF THE ART AND THE
`KNOWLEDGE OF A PERSON OF ORDINARY SKILL IN THE
`ART ..............................................................................................................28
`F. MOTIVATION TO COMBINE MASHITA, ONISHI, AND HIRAISHI ..30
`VI. CLAIM CONSTRUCTION ......................................................................33
`VII. THE DIFFERENCES BETWEEN THE PRIOR ART AND THE
`CHALLENGED CLAIMS OF THE ’698 PATENT .....................................35
`VIII. THE CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS IN
`VIEW OF MASHITA, ONISHI, AND HIRAISHI .......................................35
`INDEPENDENT CLAIM 1 .......................................................................35
`1. [CLAIM 1, A] …METHOD… ................................................................ 35
`2. [CLAIM 1, B] …DIGITAL CAMERA … CELLULAR PHONE …
`ACCESS TO THE INTERNET .............................................................. 37
`3. [CLAIM 1, C] … SHORT-RANGE … CONNECTION......................... 40
`4. [CLAIM 1, C1] … CRYPTOGRAPHICALLY AUTHENTICATING
`…. ............................................................................................................ 43
`5. [CLAIM 1, D] ACQUIRING NEW-MEDIA .......................................... 46
`6. [CLAIM 1, D1] … AFTER ESTABLISHING … ................................... 48
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`A.
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`GoPro/Garmin
`EX. 1001, Page 002
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`7. [CLAIM 1, E] CREATING A NEW-MEDIA FILE … ........................... 49
`8. [CLAIM 1, F] STORING… ..................................................................... 51
`9. [CLAIM 1, G] RECEIVING… ................................................................ 52
`10. [CLAIM 1, G1] …. CREATED …. BEFORE RECEIVING… .............. 56
`11. [CLAIM 1, H] TRANSFERRING…. ...................................................... 57
`12. [CLAIM 1, H1] … CELLULAR PHONE IS CONFIGURED TO
`STORE … ................................................................................................ 59
`13. [CLAIM 1, H2] … HTTP … .................................................................... 61
`14. [CLAIM 1, H3] … GUI … ....................................................................... 67
`B. DEPENDENT CLAIM 3 ...........................................................................75
`C. DEPENDENT CLAIM 4 ...........................................................................76
`D.
`INDEPENDENT CLAIM 5 .......................................................................77
`1. [CLAIM 5, A] … CAMERA …. .............................................................. 77
`2. [CLAIM 5, B] … NON-VOLATILE MEMORY …. .............................. 77
`3. [CLAIM 5, C] … WIRELESS … DEVICE …. ....................................... 78
`4. [CLAIM 5, C1] … CRYPTOGRAPHICALLY AUTHENTICATING
`…. ............................................................................................................ 80
`5. [CLAIM 5, C2] … DATA CAPTURE CIRCUITRY …. ........................ 80
`6. [CLAIM 5, D] … ACQUIRE NEW-MEDIA … ..................................... 81
`7. [CLAIM 5, D1] … AFTER ESTABLISHING … ................................... 81
`8. [CLAIM 5, E] … CREATE A NEW-MEDIA FILE … ........................... 82
`9. [CLAIM 5, F] … STORE … .................................................................... 82
`10. [CLAIM 5, G] … RECEIVE … ............................................................... 82
`11. [CLAIM 5, G1] … CREATED… BEFORE RECEIVING … ................ 83
`12. [CLAIM 5, H] … TRANSFER… ............................................................ 84
`13. [CLAIM 5, H1] … MOBILE SOFTWARE APPLICATION… ............. 84
`14. [CLAIM 5, H2] … RECEIVE … ............................................................. 85
`15. [CLAIM 5, H3] … STORE … ................................................................. 86
`16. [CLAIM 5, H4] … HTTP … .................................................................... 87
`17. [CLAIM 5, H5] … GUI …. ...................................................................... 88
`E. DEPENDENT CLAIM 7 ...........................................................................89
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`GoPro/Garmin
`EX. 1001, Page 003
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`F.
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`INDEPENDENT CLAIM 8 .......................................................................90
`1. [CLAIM 8, A] … SYSTEM …. ................................................................ 90
`2. [CLAIM 8, B] … CAMERA …. .............................................................. 90
`3. [CLAIM 8, C] … SHORT-RANGE … CONNECTION......................... 91
`4. [CLAIM 8, C1] … CRYPTOGRAPHICALLY AUTHENTICATING
`…. ............................................................................................................ 91
`5. [CLAIM 8, C2] … DATA CAPTURE CIRCUITRY …. ........................ 92
`6. [CLAIM 8, D] … ACQUIRE NEW-MEDIA …. .................................... 92
`7. [CLAIM 8, D1] … AFTER ESTABLISHING …. .................................. 92
`8. [CLAIM 8, E] … CREATE A NEW-MEDIA FILE …. .......................... 93
`9. [CLAIM 8, F] … STORE …. ................................................................... 93
`10. [CLAIM 8, G] … RECEIVE …. .............................................................. 93
`11. [CLAIM 8, G1] … CREATED… BEFORE RECEIVING … ................ 94
`12. [CLAIM 8, H] … TRANSFER … ........................................................... 94
`13. [CLAIM 8, H1] … SOFTWARE APPLICATION… .............................. 95
`14. [CLAIM 8, H2] … SEND …. .................................................................. 96
`15. [CLAIM 8, H3] … RECEIVE … ............................................................. 99
`16. [CLAIM 8, H4] … STORE …. .............................................................. 100
`17. [CLAIM 8, H5] … GUI …. .................................................................... 100
`18. [CLAIM 8, H6] … STORE …. .............................................................. 101
`G. DEPENDENT CLAIM 10 .......................................................................101
`H. DEPENDENT CLAIM 11 .......................................................................102
`I. DEPENDENT CLAIM 12 .........................................................................106
`J.
`INDEPENDENT CLAIM 13 .....................................................................107
`1. [CLAIM 13, A] … COMPUTER-READABLE MEDIUM …. ............ 107
`2. [CLAIM 13, B] … DIGITAL CAMERA … .......................................... 109
`3. [CLAIM 13, C] … ACQUIRING NEW-MEDIA …. ............................ 110
`4. [CLAIM 13, D] … AFTER ESTABLISHING …. ................................ 110
`5. [CLAIM 13, D1] … CRYPTOGRAPHICALLY
`AUTHENTICATING …. ...................................................................... 111
`6. [CLAIM 13, E] CREATING A NEW-MEDIA FILE …. ...................... 111
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`GoPro/Garmin
`EX. 1001, Page 004
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`7. [CLAIM 13, F] STORING… ................................................................. 112
`8. [CLAIM 13, G] RECEIVING… ............................................................ 112
`9. [CLAIM 13, G1]… CREATED … BEFORE RECEIVING …. ........... 112
`10. [CLAIM 13, H] TRANSFERRING …. ................................................. 113
`11. [CLAIM 13, H1] … CELLULAR PHONE IS CONFIGURED TO
`STORE …. ............................................................................................. 113
`12. [CLAIM 13, H2] … GUI …. .................................................................. 113
`13. [CLAIM 13, H3] … HTTP …. ............................................................... 114
`K. DEPENDENT CLAIM 15 .........................................................................114
`L. DEPENDENT CLAIM 16 .........................................................................115
`M. DEPENDENT CLAIM 17 .........................................................................115
`N. DEPENDENT CLAIM 18 .........................................................................116
`O. DEPENDENT CLAIM 19 .........................................................................116
`P. DEPENDENT CLAIM 20 .........................................................................117
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`GoPro/Garmin
`EX. 1001, Page 005
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`I, Dr. John Strawn, declare as follows:
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`I.
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`BACKGROUND AND QUALIFICATIONS
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` My name is John Strawn. I have been retained on behalf of Petitioners
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`GoPro, Inc. (“GoPro”) and Garmin Int’l, Inc. and Garmin USA, Inc. (“Garmin”) to
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`provide this Declaration concerning technical subject matter relevant to the petition
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`for inter partes review (“Petition”) against U.S. Patent No. 9,258,698 (Ex.1003, “the
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`’698 Patent”). I previously offered a substantially identical declaration in connection
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`with Case Nos. IPR2019-00131 for Panasonic Corporation et al., which has been
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`instituted. I reserve the right to supplement this Declaration in response to additional
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`evidence that may come to light.
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`I am currently an independent consultant working under the aegis of
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`my corporation S Systems Inc. My curriculum vitae, which includes a more detailed
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`summary of my background, experience, and publications, is attached to the
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`accompanying Petition as Exhibit 1002. My formal education includes a Bachelor's
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`degree from Oberlin College in 1973. As a Fulbright scholar in Berlin, I attended
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`lectures and seminars in German at the Free University and Technical University
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`Berlin from 1973-1975. I earned a Ph.D. degree from Stanford in 1985, with my
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`doctoral dissertation focusing on signal processing for analyzing digital audio. As
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`part of that work, I studied and implemented communication between devices such
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`as audio recording devices and computers.
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`GoPro/Garmin
`EX. 1001, Page 006
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` With regard to the subject matter of this proceeding, I have extensive
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`experience relating to communication among devices. I have studied and worked
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`with analog and digital audio hardware, television technology, computer
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`architecture, processor architecture, high-level language programming, assembly
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`language programming, networking, digital buses, user interface design, and user
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`interface implementation.
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`In addition, I have over 45 years involvement in software, digital media,
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`networking, and processor architecture. Working in those areas, I have been an
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`employee, a manager of a team of other Ph.D.s, and an independent software
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`consultant in signal processing specializing in high-level languages and assembly
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`language. My specialties have included streaming media, the Fourier transform, and
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`the discrete cosine transform used in audio compression, JPEG, and MPEG video.
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`Implementing real-time media has been the backbone of my industry experience
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`such as at Lucasfilm [Exhibit 1002, p. 2] and in many of my consulting projects,
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`such as for DTS [Exhibit 1002, p. 10] or Verance [Exhibit 1002, p. 11].
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`Throughout my career, I have received a variety of awards including
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`the Fulbright scholarship mentioned above and a grant from the IBM Thomas
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`Watson Foundation to work in Europe and Japan.
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`As a manager of long-range research and development for Yamaha
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`[Exhibit 1002, p. 1] and later spanning more than a decade of work as a consultant
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`GoPro/Garmin
`EX. 1001, Page 007
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`for Yamaha [ibid., p. 11] I was actively involved in standardization and
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`implementation of the networking technology known as Firewire or IEEE 1394,
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`mentioned in the ’698 patent [column 3, line 54]. As such I became familiar with
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`networking and bus
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`technologies
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`including detailed studies of
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`industry
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`specifications and standards. In litigation I have analyzed architectures involving
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`Bluetooth and remote devices [Jaguar, Exhibit 1002, p. 4], networks underlying real-
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`time media streaming [for example Wowza, ibid., p. 6], playback of real-time media
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`[Samsung, ibid., p. 4], cell phone user interfaces and source code [ZTE, ibid., p. 6;
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`LG, Motorola and HTC, Exhibit 1002, p. 7; Samsung, ibid., p. 8]; and recording and
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`transfer of media between devices [JVC, ibid., p.8]. I analyzed the cell phone camera
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`functionality from the charge coupled device (“camera chip”) through the processor
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`to memory in 108 Samsung cell phones [ibid., p. 8].
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`I have reviewed United States Patent No. 9,258,698 (“the ’698 patent”).
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`I have also reviewed the file history of the ’698 patent, as well as the other
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`publications cited in this Declaration and those referenced in the inter partes review
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`petition submitted herewith.
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`For my efforts in connection with the preparation of this Declaration I
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`have been compensated at my standard hourly rate of $450/hour. My compensation
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`is in no way contingent on the results of these or any other proceedings relating to
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`the above-captioned patent.
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`GoPro/Garmin
`EX. 1001, Page 008
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`II.
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`INFORMATION PROVIDED TO ME
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`
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`I am not a lawyer and am not expressing any opinions about the law in
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`this Declaration. I have been informed by counsel regarding the legal rules that I
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`should apply in conducting my analysis of the patentability of the asserted claims.
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`I understand that in an inter partes review proceeding, the petitioner
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`bears the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence. I understand that the Patent Trial and Appeals Board may institute an
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`inter partes review proceeding if it determines that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.
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`I understand that a claim is unpatentable if its subject matter is
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`anticipated or obvious. I further understand that anticipation of a claim requires that
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`every element of a claim be disclosed expressly or inherently in a single prior art
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`reference, in combination, as claimed.
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`I further understand that obviousness of a claim requires that the claim
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`would have been obvious from the perspective of a person having ordinary skill in
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`the relevant art at the time the alleged invention was made. I further understand that
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`a patent claim can be found unpatentable as obvious where the differences between
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`the subject matter sought to be patented and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`GoPro/Garmin
`EX. 1001, Page 009
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`person having ordinary skill in the relevant field. I understand that an obviousness
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`analysis involves a consideration of (1) the scope and content of the prior art, (2) the
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`differences between the claimed invention and the prior art, and (3) the level of
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`ordinary skill in the pertinent field.
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`I further understand that certain factors may support or rebut the
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`obviousness of a claim. I understand that such secondary considerations include,
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`among other things, commercial success of the patented invention, skepticism of
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`those having ordinary skill in the art at the time of invention, unexpected results of
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`the invention, any long-felt but unsolved need in the art that was satisfied by the
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`alleged invention, the failure of others to make the alleged invention, praise of the
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`alleged invention by those having ordinary skill in the art, and copying of the alleged
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`invention by others in the field. I understand that there must be a nexus—a
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`connection—between any such secondary considerations and the alleged invention.
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`I also understand that contemporaneous and independent invention by others is a
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`secondary consideration tending to show obviousness.
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`I further understand that there must be some articulated reasoning with
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`some rational underpinning to support the conclusion of obviousness. For example,
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`I understand that a claimed invention may be considered obvious if it unites old
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`elements with no change to their respective functions or alters prior art by mere
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`substitution of one element for another known in the field and that combination
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`GoPro/Garmin
`EX. 1001, Page 010
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`yields predictable results. While it may be helpful to identify a reason for this
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`combination, common sense should guide and no rigid requirement of finding a
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`teaching, suggestion or motivation to combine is required. When a product is
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`available, design incentives and other market forces can prompt variations of it,
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`either in the same field or different one. If a person having ordinary skill in the
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`relevant art can implement a predictable variation, obviousness likely bars its
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`patentability. For the same reason, if a technique has been used to improve one
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`device and a person having ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using the technique is obvious. I
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`understand that a claim may be obvious if common sense directs one to combine
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`multiple prior art references or add missing features to reproduce the alleged
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`invention recited in the claims.
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` Finally, I understand that where there is a reason to modify or combine
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`the prior art to achieve the claimed invention, the claims are prima facie obvious
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`provided that a person of ordinary skill in the art at the time the invention was made
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`would have had a reasonable expectation of success in doing so. With respect to the
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`reasonable expectation of success, I understand that obviousness does not require
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`absolute predictability, however, at least some degree of predictability is required.
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`
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`I have been asked to consider the following documents:
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`GoPro/Garmin
`EX. 1001, Page 011
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`• United States Patent No. 9,258,698 to Gurvinder Singh, et al. (“the ’698
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`Patent”) (Exhibit 1003);
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`• Patent File History for the ’698 Patent (Exhibit 1004);
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`• Japanese Patent Application Publication No. 2003-51772,
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`titled
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`“Communication Device, Information Processing Unit, Communication
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`Method, Program for Performing Communication, and Computer-Readable
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`Storage Medium for Storing the Program,” identifying Hiroshi Mashita as
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`inventor and Canon Inc. as applicant (“Mashita”) (Exhibit 1005 – original)
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`(Exhibit 1006 – certified translation);
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`• Japanese Patent Application Publication No. 2003-299014, titled “Digital
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`Camera Device,” identifying Jiro Onishi et al. as inventors and Dai Nippon
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`Printing Co., Ltd. as applicant (“Onishi”) (Exhibit 1007 – original) (Exhibit
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`1008 – certified translation);
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`• Japanese Patent Application Publication No. 2004-102810,
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`titled
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`“Information Processing System, Information Providing Device, Programs
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`for Implementing These Devices, and Storage Medium Storing These
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`Programs in Computer-Readable Manner,” identifying Tomonobu Hiraishi as
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`inventor and Canon Inc. as applicant (“Hiraishi”) (Exhibit 1009 – original)
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`(Exhibit 1010 – certified translation);
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`GoPro/Garmin
`EX. 1001, Page 012
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`• Sony Ericsson Z520a (user manual) (“Z520a”) (Exhibit 1014). I obtained this
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`copy of the Z520a user manual by downloading it from the Internet
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`• Archive Wayback Machine.1 However, I have had in my possession a
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`document with similar if not identical wording since 12/27/2005. I purchased
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`a Z520a cellular phone, which came with the accompanying user manual, in
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`December 2005. Exhibit 1018 is a copy of my purchase receipt of the Z520a
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`from my files.
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`• Cingular Wireless Service Agreement of 22 March, 2006 (Exhibit 1015). I
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`obtained this copy of this document by downloading it from the Internet
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`Archive Wayback Machine.2 (“Cingular Wireless Service Agreement”).
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`However, I have had in my possession a document with similar if not identical
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`wording since 12/27/2005, which I received with the purchase of my Z520a
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`phone.
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`1
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`http://web.archive.org/web/20060326000929/http://www.sonyericsson.com/downl
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`oads/Z520a_UG_R1A_AE.pdf, accessed 10/26/2018.
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`2 https://web.archive.org/web/20060322163241/onlinecare.cingular.com/my-
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`account/legal/service-agreement.jsp.
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`GoPro/Garmin
`EX. 1001, Page 013
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`• Bluetooth Specification, Volume 2, covering Version 2.0 + EDR. I obtained
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`this copy of this document by downloading it from the Internet Archive
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`Wayback Machine.3 I understand that portions of this document are Exhibits
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`1017 to the Petition.
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`• Bluetooth Basic Imaging Profile, dated July 25, 2003 (Exhibit 1020). I
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`obtained this copy of this document by downloading it from the Internet
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`Archive Wayback Machine.4
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`• User’s Guide for Nokia N73 (“N73”) (Exhibit 1016). This guide has a
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`copyright of 2006, indicating that it was created before the filing date of the
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`’698 patent. I refer to this document as an example of the types of
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`functionalities available on commercial cellular phone before the ’698
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`3
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`https://web.archive.org/web/20060221204616/http://www.bluetooth.com:80/NR/rd
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`onlyres/1F6469BA-6AE7-42B6-B5A1-65148B9DB238/840/Core_v210_EDR.zip,
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`accessed 10/11/2018.
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`4
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`https://web.archive.org/web/20060318123625/http://www.bluetooth.com/NR/rdonl
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`yres/182CCD92-3481-44F0-B901-9181BE573AFA/924/BIP_SPEC_V10.pdf,
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`accessed 10/29/2018.
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`GoPro/Garmin
`EX. 1001, Page 014
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`

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`patent’s filing date. I obtained this copy of this document by downloading it
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`from the Internet.5
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`• The other documents identified in this Declaration.
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`
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`I have also been asked to consider whether, in view of the disclosures
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`of the documents listed above, the inventions claimed in independent claims 1, 5, 8,
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`and 13, and dependent claims 3, 4, 7, 10, 11, 12, 15, 16, 17, 18, 19, and 20 (the
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`“Challenged Claims”) of the ’698 Patent would have been obvious to one of ordinary
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`skill in the art at the time the alleged invention was made. My conclusion is that all
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`Challenged Claims are unpatentable as obvious over Mashita, Onishi, and Hiraishi.
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`A. MY UNDERSTANDING OF THE LAW REGARDING
`PRIOR ART
`I understand that a patent claim is unpatentable if the claimed invention
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`
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`was “patented or described in a printed publication in this or a foreign country,
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`before the invention thereof by the applicant for patent” (35 U.S.C. § 102(a)) or the
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`claimed invention was described in “a patent granted on an application for patent by
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`another filed in the United States before the invention by the applicant for patent”
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`(35 U.S.C. § 102(e)). The “date of invention” is defined below. To qualify as prior
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`art, a printed publication must be shown to be accessible to the public (i.e.,
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`5 http://www.o2.co.uk/deviceinfo/device-pdfs/nokian73eng.pdf, accessed
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`10/18/2018.
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`GoPro/Garmin
`EX. 1001, Page 015
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art, exercising reasonable diligence, can
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`locate it).
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`I understand that a patent claim is unpatentable if the claimed
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`“invention was patented or described in a printed publication in this or a foreign
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`country … more than one year prior to the date of the application for patent in the
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`United States” (35 U.S.C. § 102(b)). For purposes of this rule, “the date of the
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`application for patent in the United States” refers to the patent application’s
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`“effective filing date” (defined below).
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` The date of invention for a patent is no later than the patent
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`application’s effective filing date. The “effective filing date” is the earliest of:
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`(1) the actual filing date of the application for the patent containing the claimed
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`invention; or (2) the filing date of the earliest application for which the patent is
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`entitled to a right of priority or the benefit of an earlier filing date.
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`III. TECHNICAL BACKGROUND AND THE ’698 PATENT
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` The ’698 Patent generally relates to transferring media (such as images)
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`from one media capturing device (such as a mobile digital camera) via a connection
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`(such as Bluetooth) to another device (such as a mobile cellular phone) and thence
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`to a media publishing Internet web site. [’698 Patent, Abstract]. A typical use
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`scenario is a photographer in the field publishing photographs to a web site without
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`GoPro/Garmin
`EX. 1001, Page 016
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`

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`requiring Internet access in the camera, and with a minimum of human interaction
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`(’698 patent, Fig. 5; 3:26-30; 8:28-9:41), but the ’698 Patent covers other
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`implementations also.
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` Against this background, the ’698 Patent’s specification centers around
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`capturing media, such as audio, video, text, or images (’698 Patent, 2:53-55). The
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`capturing device has no Internet access but is outfitted with some form of
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`connectivity to another device, be it for example wireless Bluetooth, wired USB, or
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`wired Firewire (’698 patent, Fig. 3; 8:33-41). The connected device, generally
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`referred to as mobile device 202, may be, for example, a computer (’698 Patent,
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`11:22-25), PDA (’698 Patent, 9:52-54), or mobile phone (’698 Patent, 9:51-52). An
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`application such as client application 203 on device 202 initiates transfer of the new
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`media (’698 patent, 8:42-45). Then the device 202 transfers [’698 Patent, 8:48-50]
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`the media to an Internet web site (such as Flickr, Picasa, YouTube, eBay [’698
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`Patent, 8:53-54]) from which the media are published.
`
` The Challenged Claims focus on a digital camera as the media
`
`capturing device; an image as the media; and a cellular phone as device 202.
`
`Connectivity between the digital camera and the cellular phone is via a wireless
`
`connection in which the camera is paired with the cellular phone and the
`
`connection cryptographically authenticated. A processor in the camera stores the
`
`image in non-volatile memory, then the cellular phone initiates transfer of the image
`
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`EX. 1001, Page 017
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`which is stored in the cellular phone’s non-volatile memory. The cellular phone uses
`
`HTTP to transfer the image to an image publishing website. The cellular phone can
`
`display the image on the screen of its GUI and can use its GUI to delete the copy of
`
`the image in the digital camera’s memory.
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`I have been advised that there are multiple factors relevant to
`
`determining the level of ordinary skill in the pertinent art, including the educational
`
`level of active workers in the field at the time of the invention, the sophistication of
`
`the technology, the type of problems encountered in the art, and the prior art
`
`solutions to those problems. I have been informed that the level of skill in the art is
`
`evidenced by the prior art references. The prior art discussed herein demonstrates
`
`that a person of ordinary skill in the field, at the relevant time (circa 2007, the year
`
`in which the earliest patent application to which the ’698 patent claims priority was
`
`filed) would have at least a bachelor’s degree in electrical engineering or computer
`
`science, or an equivalent degree and at least two years of industry experience with
`
`software development and/or electronic system design. More education can
`
`supplement relevant industry experience and vice versa.
`
`
`
`I would have qualified as a person of at least ordinary skill in the art as
`
`of the relevant timeframe. I have a sufficient level of knowledge, experience, and
`
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`EX. 1001, Page 018
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`education to provide an expert opinion in the field of the ’698 patent. As noted above,
`
`I have experience with software, networking, and Firewire.
`
` Based on my experience I have an understanding of the capabilities of
`
`a person of ordinary skill in the relevant field. I have supervised and directed such
`
`persons over the course of my career. Further, I had those capabilities myself as of
`
`2006.
`
` My opinions in this Declaration are based on the perspective of a person
`
`of ordinary skill in the art as of the relevant timeframe.
`
`V. THE SCOPE AND CONTENT OF THE PRIOR ART
`A. MY OPINIONS REGARDING WHAT IS PRIOR ART TO THE
`CHALLENGED CLAIMS
`I am informed that the ’698 patent was filed on November 5, 2014, but
`
`
`
`that it claims to be related to a chain of applications going back to a provisional
`
`application alleged to have been filed December 28, 2007. For purposes of this
`
`Declaration only, I have assumed that the effective filing date of the Challenged
`
`Claims (“date of invention”) is December 28, 2007.
`
`
`
`I understand that, even if the Challenged Claims are entitled to a date
`
`of invention earlier than the effective filing date, that fact would have no effect on
`
`patents and printed publications which qualify as prior art under 35 U.S.C.
`
`§ 102(b). Those patents and printed publications are prior art to the Challenged
`
`Claims regardless of the date of invention.
`
`GoPro/Garmin
`EX. 1001, Page 019
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`

`

`B. MASHITA
` Mashita is a Japanese patent application that was published on February
`
`21, 2003, more than one year before the effective filing date of the ’698 patent.
`
`Accordingly, I understand that Mashita qualifies as prior art to the ’698 patent under
`
`35 U.S.C. § 102(b).
`
` Mashita provides a mobile device such as a digital camera which is less
`
`expensive because it does not implement Internet access [Mashita, 0008, 0133], as
`
`shown in Figure 2:6
`
`
`
`6 204 IMAGE MEMORY; 205 IMAGING UNIT; 206 DISPLAY UNIT; 207 INPUT
`
`UNIT; 208 LOCAL WIRELESS UNIT; 210 PHYSICAL ADDRESS; 211 FIRM;
`
`212 MODEL NAME; 213 MANUFACTURER'S SERIAL NUMBER; 214
`
`SERVER URL. [Mashita, p. 40].
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`EX. 1001, Page 020
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` The digital camera can connect to another mobile device such as a
`
`
`
`cellular phone, as shown in Figure 3:7
`
`7 304 APPLICATION MEMORY; 305 DISPLAY UNIT; 306 INPUT UNIT; 307
`
`PUBLIC WIRELESS UNIT; 309 LOCAL WIRELESS UNIT; 311 PHYSICAL
`
`ADDRESS. [Mashita, pp. 40-41].
`
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`EX. 1001, Page 021
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`
`
`
`
` Mashita Figure 18 shows the flow of data from the camera to the
`
`Internet server:
`
`
`
`8 101 PORTABLE TERMINAL; 102 CELLULAR PHONE; 103 BASE STATION;
`
`104 GATEWAY; 105 SERVER; 107 LOCAL WIRELESS; 108 PUBLIC
`
`WIRELESS NETWORK; 109 PUBLIC NETWORK; 110 INTERNET. [Mashita, p.
`
`40]
`
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`EX. 1001, Page 022
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`The digital camera, through a cellular phone, can transfer data over a public
`
`
`
`communication network such as the Internet. [Mashita, Fig. 1, 110; 0015]. A local
`
`wireless connection is established between the digital camera and the cellular phone
`
`[Mashita, Fig. 1, 107; 0016-0017]. The connection is authenticated after the same
`
`PIN is entered into both digital camera and cellular phone [Mashita, 0051]. Then the
`
`digital camera takes an image and stores the image in its memory [Mashita, 0076].
`
`Software on the cellular phone receives the image from the digital camera and stores
`
`the image in the cellular phone memory [Mashita, 0064]. The cellular phone can
`
`connect to a server via HTTP [Mashita, Figure 1, 105; 0003, 0004]. The cellular
`
`phone can display the image on the screen of its GUI [Mashita, Figure 3, 305; 0037,
`
`0063].
`
` Although Mashita sometimes refers to a personal computer (PC) as the
`
`device with access to the Internet, Mashita makes it clear that a cellular phone can
`
`take the place of the PC [Mashita, 0004].
`
`GoPro/Garmi