UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`GoPro, Inc., Garmin Int’l, Inc. and Garmin USA, Inc.
`
`Petitioners
`
`v.
`
`Cellspin Soft, Inc.
`
`Patent Owner
`
`_________________________
`
`CASE: IPR2019-01108
`Patent No. 9,258,698
`
`Title: AUTOMATIC MULTIMEDIA UPLOAD FOR PUBLISHING DATA AND
`MULTIMEDIA CONTENT
`
`__________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`
`9,258,698 UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`

`

`PETITIONER’S EXHIBIT LIST
`Ex. 1001 Declaration of Dr. John Strawn
`
`EX.
`
`1001
`
`Declaration of Dr. John Strawn
`
`PETITIONER’S EXHIBIT LIST
`
`EX.
`
`Ex. 1002 Curriculum Vitae of Dr. John Strawn
`
`Curriculum Vitae of Dr. John Strawn
`
`1002
`
`EX.
`
`1003
`
`Ex. 1003 United States Patent No. 9,258,698 to Gurvinder Singh, et al. (“the
`United States Patent No. 9,258,698 to Gurvinder Singh, et al. (“the
`’698 Patent”)
`’698 Patent”)
`Patent File History for the ’698 Patent
`Patent File History for the ’698 Patent
`
`Ex. 1004
`
`1004
`
`EX.
`
`Ex. 1005
`
`1005
`
`EX.
`
`Japanese Patent Application Publication No. 2003-51772, identifying
`Japanese Patent Application Publication No. 2003-51772, identifying
`Hiroshi Mashita as inventor (“Mashita”)
`Hiroshi Mashita as inventor (“Mashita”)
`Ex. 1006 Certified translation of Mashita
`
`EX.
`
`1006
`
`Certified translation of Mashita
`
`EX.
`
`Ex. 1007
`
`1007
`
`Japanese Patent Application Publication No. 2003-299014, identifying
`Japanese Patent Application Publication No. 2003-299014, identifying
`Jiro Onishi et al. as inventors (“Onishi”)
`Jiro Onishi et al. as inventors (“Onishi”)
`Ex. 1008 Certified translation of Onishi
`
`EX.
`
`1008
`
`Certified translation of Onishi
`
`Ex. 1009
`
`1009
`
`EX.
`
`Japanese Patent Application Publication No. 2004-102810, identifying
`Japanese Patent Application Publication No. 2004-102810, identifying
`Tomonobu Hiraishi as inventor (“Hiraishi”)
`Tomonobu Hiraishi as inventor (“Hiraishi”)
`Ex. 1010 Certified translation of Hiraishi
`
`EX.
`
`1010
`
`Certified translation of Hiraishi
`
`EX.
`
`1011
`
`Ex. 1012
`
`1012
`
`EX.
`
`Ex. 1011 United States Patent No. 8,738,794 to Gurvinder Singh, et al. (“the
`United States Patent No. 8,738,794 to Gurvinder Singh, et al. (“the
`’794 Patent”)
`’794 Patent”)
`Excerpts from Mc-Graw Hill Dictionary of Computing &
`Excerpts from Mc-Graw Hill Dictionary of Computing &
`Communications, Copyright 2003
`Communications, Copyright 2003
`Excerpts from Wiley Electrical and Electronics Engineering
`Excerpts from Wiley Electrical and Electronics Engineering
`Dictionary, Copyright 2004
`Dictionary, Copyright 2004
`Ex. 1014 User guide for Sony Ericsson Z520a, Copyright 2005
`User guide for Sony Ericsson Z520a, Copyright 2005
`
`EX.
`
`Ex. 1013
`
`1013
`
`EX.
`
`1014
`
`i
`
`i
`
`

`

`EX.
`
`1015
`
`EX.
`
`1016
`
`EX.
`
`1017
`
`EX.
`
`1018
`
`EX.
`
`1019
`
`Ex. 1015 Cingular Wireless Service Agreement of 22 March, 2006
`Cingular Wireless Service Agreement of 22 March, 2006
`Ex. 1016 User’s Guide for Nokia N73, Copyright 2006
`User’s Guide for Nokia N73, Copyright 2006
`Ex. 1017
`Excerpts from Specification of the Bluetooth System, Dated 4
`Excerpts from Specification of the Bluetooth System, Dated 4
`November 2004
`November 2004
`Ex. 1018 Receipt for purchase of Sony Ericsson Z520a, dated December 20,
`Receipt for purchase of Sony Ericsson Z520a, dated December 20,
`2005
`2005
`Ex. 1019 Amended Complaint dated March 2, 2018, Cellspin Soft, Inc. v.
`Amended Complaint dated March 2, 2018, Cellspin Soft, Inc. v.
`Panasonic Corporation of North America, Case No. 4:17-cv-05941,
`Panasonic Corporation ofNorth America, Case No. 4: 17-cv-05941,
`United States District Court for the Northern District of California
`United States District Court for the Northern District of California
`Ex. 1020 Bluetooth Basic Imaging Profile, Interoperability Specification, Dated
`Bluetooth Basic Imaging Profile, Interoperability Specification, Dated
`July 30, 2003
`July 30, 2003
`“IMT-2000,” published by the National Telecommunications and
`“IMT-2000,” published by the National Telecommunications and
`Information Administration, United States Department of Commerce,
`Information Administration, United States Department of Commerce,
`August 2000
`August 2000
`
`EX.
`
`1020
`
`EX.
`
`Ex. 1021
`
`1021
`
`ii
`
`ii
`
`

`

`TABLE OF CONTENTS
`
`
`
`
`
`
`
`
`
`
`C.
`D.
`
`Page
`INTRODUCTION ................................................................................. 1
`37 C.F.R. § 42.8: MANDATORY NOTICES ....................................... 3
`A.
`37 C.F.R. § 42.8(b)(1): Real Parties-in-Interest ......................... 3
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters ..................................... 3
`C.
`37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4): Lead and Back-up
`Counsel and Service Information ................................................ 6
`37 C.F.R. § 42.104(a): GROUNDS FOR STANDING ........................ 7
`37 C.F.R. § 42.104(b): IDENTIFICATION OF CHALLENGE ........... 7
`A.
`37 C.F.R. § 42.104(b)(1): Claims for Which IPR is Requested.. 7
`B.
`37 C.F.R. § 42.104(b)(2): Identification of Prior Art and
`Asserted Grounds for Which IPR is Requested .......................... 7
`Level of Ordinary Skill in the Art .............................................10
`Claim Construction ....................................................................10
`1.
`“Cryptographically Authenticating” Phrase ...................12
`2.
`“New-Media” ..................................................................13
`3.
`“Graphical User Interface (GUI)” ..................................14
`4. Whether the Claims Require “Automatic” Operation ....14
`37 C.F.R. § 42.104(b)(4): How the Claims Are Unpatentable .16
`E.
`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge ......17
`F.
`THERE EXISTS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ........................17
`A. Description of the ’698 Patent ..................................................17
`B.
`Prosecution History ...................................................................21
`C.
`Common Claim Limitations......................................................25
`D. Ground #1: All Challenged Claims Would Have Been
`
`iii
`
`

`

`5.
`
`Obvious over Mashita, Onishi, and Hiraishi .............................26
`1. Mashita ...........................................................................26
`2.
`Onishi ..............................................................................30
`3.
`Hiraishi ...........................................................................31
`4.
`Overview of Obviousness Arguments and Motivation to
`Combine Mashita, Onishi, and Hiraishi .........................32
`Independent Claims 1, 5, 8, and 13 [Common
`Limitations] .....................................................................34
`a. Claims 1 and 8 [preamble] [Limitation A] ...............34
`b. Claims 1, 5, 8, and 13 [short-range wireless enabled
`digital camera device] [Limitation B] ......................35
`c. Claims 1, 5, 8, and 13 [short-range wireless
`connection through cryptographic authentication]
`[Limitation C] ...........................................................39
`d. Claims 1, 5, 8, and 13 [acquiring new-media]
`[Limitation D] ...........................................................45
`e. Claims 1, 5, 8, and 13 [creating a new-media file]
`[Limitation E] ...........................................................50
`f. Claims 1, 5, 8, and 13 [storing the created new-
`media file in non-volatile memory] [Limitation F] ..51
`g. Claims 1, 5, 8, and 13 [receiving a data transfer
`request from the cellular phone] [Limitation G] ......52
`h. Claims 1, 5, 8, and 13 [transferring a new-media
`file to the cellular phone] [Limitation H] .................58
`i. Claims 1, 5, 8, and 13 [storing the received new-
`media file in non-volatile memory] [Limitation I] ...59
`j. Claims 1, 5, 8, and 13 [using HTTP to upload the
`received new-media file along with user
`information to a user media publishing website]
`[Limitation J] ............................................................62
`k. Claims 1, 5, 8, and 13 [using a graphical user
`interface (GUI) to delete the created new-media
`file] [Limitation K] ...................................................66
`
`iv
`
`

`

`6.
`
`7.
`
`Claim 8 [new-media includes video data and image
`data] [Limitation D1] ......................................................69
`Claim 13 [non-transitory computer readable medium]
`[Limitation A1] ...............................................................70
`Dependent Claims ...........................................................71
`a. Claims 3 and 15 ........................................................71
`b. Claims 4, 7, 10, 16 ....................................................71
`c. Claim 11 ...................................................................72
`d. Claim 12 ...................................................................72
`e. Claims 17, 18, 19, 20 ................................................73
` CONCLUSION ...................................................................................74
`
`8.
`
`
`
`
`v
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`
`
`INTRODUCTION
`GoPro, Inc., Garmin Int’l, Inc. and Garmin USA, Inc. (“Petitioners”)
`
`respectfully request inter partes review of Claims 1, 3, 4, 5, 7, 8, 10, 11, 12, 13, 15,
`
`16, 17, 18, 19, and 20 (the “Challenged Claims”) of U.S. Patent No. 9,258,698 (the
`
`“’698 Patent”).
`
`This petition is based on grounds identical to those already instituted in Case
`
`Nos. IPR2019-00131 filed by Panasonic Corporation of North America et al. A
`
`motion for joinder is being filed simultaneously with this petition.
`
`The ’698 Patent claims a particular method of transferring a media file from
`
`a digital camera to a cellular phone and then to an internet media publishing
`
`website. The ’698 Patent discloses and claims performing these operations using
`
`technologies that the ’698 Patent itself describes as “ubiquitous,” “pervasive,” and
`
`“well-known,” including cell phones, digital cameras, Bluetooth, and HTTP. The
`
`three prior art references in this Petition—Mashita, Onishi, and Hiraishi—disclose
`
`systems with the same “well-known” components as the Challenged Claims, and
`
`likewise use those components to perform media transfers between those devices.
`
`The ’698 Patent does not disclose or claim any technical improvement to any of
`
`those devices or technologies. Instead, the alleged inventions use the known
`
`capabilities of those devices and technologies, just in a particular order of
`
`operations to achieve the desired media transfers.
`
`
`
`-1-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`This order of operations, however, would have been obvious to a person of
`
`ordinary skill in the art in view of the prior art presented in this Petition (which
`
`was not known to the Patent Office during the ’698 Patent’s prosecution). During
`
`prosecution, the applicant repeatedly insisted that the prior art did not disclose first
`
`connecting the digital camera and cell phone via Bluetooth or a similar connection,
`
`and then acquiring media using the digital camera. But Mashita explicitly teaches
`
`this order of operations. Indeed, Mashita expressly discloses most limitations of the
`
`Challenged Claims. The remaining claim limitations are obvious variations,
`
`particularly (a) using HTTP to upload a media file from the phone to the website
`
`(disclosed in Hiraishi) and (b) deleting a media file on the camera via the phone’s
`
`GUI (disclosed in Onishi). The combination of Mashita, Onishi, and Hiraishi
`
`renders obvious all Challenged Claims. And a person of ordinary skill in the art
`
`would have had a host of reasons to combine the three references in that manner.
`
`Accordingly, there is a reasonable likelihood that all Challenged Claims are
`
`unpatentable as obvious in view of the combination of Mashita, Onishi, and
`
`Hiraishi.
`
`
`
`-2-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`
`
`37 C.F.R. § 42.8: MANDATORY NOTICES
`
`A.
`
`37 C.F.R. § 42.8(b)(1): Real Parties-in-Interest
`
`The following are the Petitioners and real parties-in-interest: GoPro, Inc.,
`
`Garmin Int’l, Inc. and Garmin USA, Inc. Garmin International, Inc. also identifies
`
`as a real party-in-interest its corporate parent, Garmin Switzerland GmbH.
`
`B.
`
`37 C.F.R. § 42.8(b)(2): Related Matters
`
`To the best knowledge of Petitioner, the ’698 Patent is involved in the
`
`following litigations and matters:
`
`
`
`Case Name
`
`
`
`Case No.
`
`
`
`Court
`
`
`
`Filed
`
`Cellspin Soft, Inc. v. Fitbit,
`
`Fed. Cir. Appeal
`
`C.A.F.C.
`
`July 23, 2018
`
`Inc., et al.
`
`Nos. 18-2178, -2179,
`
`-2180, -2181, -2183,
`
`and -2184
`
`Cellspin Soft, Inc. v. Fitbit,
`
`Fed. Cir. Appeal
`
`C.A.F.C.
`
`Apr. 13, 2018
`
`Inc., et al.
`
`Nos. 18-1817, -1819,
`
`-1820, -1821, -1822,
`
`-1823, -1824, -1825,
`
`and -1826
`
`
`
`-3-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`Cellspin Soft, Inc. v. Fitbit,
`
`4:17-cv-05928
`
`N.D. Cal. Oct. 16, 2017
`
`Inc.
`
`Cellspin Soft, Inc. v. Moov
`
`4:17-cv-05929
`
`N.D. Cal. Oct. 16, 2017
`
`Inc. d/b/a Moov Fitness
`
`Inc.
`
`Cellspin Soft, Inc. v.
`
`4:17-cv-05930
`
`N.D. Cal. Oct. 16, 2017
`
`adidas America, Inc.
`
`Cellspin Soft, Inc. v. Nike,
`
`4:17-cv-05931
`
`N.D. Cal. Oct. 16, 2017
`
`Inc.
`
`Cellspin Soft, Inc. v.
`
`4:17-cv-05932
`
`N.D. Cal. Oct. 16, 2017
`
`Under Armour, Inc.
`
`Cellspin Soft, Inc. v. Fossil
`
`4:17-cv-05933
`
`N.D. Cal. Oct. 16, 2017
`
`Group, Inc. and Misfit,
`
`Inc.a/k/a Misfit Wearables
`
`Corp.
`
`Cellspin Soft, Inc. v.
`
`4:17-cv-05934
`
`N.D. Cal. Oct. 16, 2017
`
`Garmin Int’l, Inc. and
`
`Garmin USA, Inc.
`
`
`
`-4-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`Cellspin Soft, Inc. v. Nikon
`
`4:17-cv-05936
`
`N.D. Cal. Oct. 16, 2017
`
`Americas, Inc. and Nikon,
`
`Inc.
`
`Cellspin Soft, Inc. v. TomTom,
`
`4:17-cv-05937
`
`N.D. Cal. Oct. 16, 2017
`
`Inc. and TomTom North
`
`America, Inc.
`
`Cellspin Soft, Inc. v. Canon
`
`4:17-cv-05938
`
`N.D. Cal. Oct. 16, 2017
`
`USA, Inc.
`
`Cellspin Soft, Inc. v. GoPro,
`
`4:17-cv-05939
`
`N.D. Cal. Oct. 16, 2017
`
`Inc.
`
`Cellspin Soft, Inc. v. Eastman
`
`4:17-cv-05940
`
`N.D. Cal. Oct. 16, 2017
`
`Kodak Company
`
`Cellspin Soft, Inc. v.
`
`4:17-cv-05941
`
`N.D. Cal. Oct. 16, 2017
`
`Panasonic Corporation of
`
`North America
`
`Cellspin Soft, Inc. v. JK
`
`4:17-cv-056881
`
`N.D. Cal. Dec. 1, 2017
`
`Imaging Ltd.
`
`
`
`
`
`-5-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`C.
`
`37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4): Lead and Back-up Counsel and
`Service Information
`Petitioners provide the following designation of counsel for GoPro, Inc.:
`
`Lead Counsel
`David Xue (Reg. No. 54,554)
`
`RIMÔN Law
`2479 E. Bayshore Road, Suite 210
`Palo Alto, CA 94303
`Telephone: (650) 223-7724
`
`Back-up Counsel
`Karineh Khachatourian
`
`(pro hac vice to be filed)
`RIMÔN Law
`2479 E. Bayshore Road, Suite 210
`Palo Alto, CA 94303
`Telephone: (650) 223-7785
`
`Petitioners provide the following designation of counsel for Garmin Int’l,
`
`Inc. and Garmin USA, Inc.:
`
`Lead Counsel
`Jennifer C. Bailey (Reg. No. 52,583)
`Jennifer.Bailey@eriseip.com
`PTAB@eriseip.com
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`Petitioners submit Powers of Attorney with this Petition. Please address all
`
`
`
`
`Back-Up Counsel
`Adam P. Seitz (Reg. No. 52,206)
`Adam.Seitz@eriseip.com
`
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`
`
`
`correspondence to lead and back-up counsel. Petitioners consent to service by
`
`email at the email addresses listed above.
`
`
`
`-6-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
` 37 C.F.R. § 42.104(a): GROUNDS FOR STANDING
`
`Petitioners certify that the ’698 Patent is available for inter partes review
`
`and that Petitioners are not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this petition. Petitioners
`
`also certify that this Petition for Inter Partes Review is timely filed under 35
`
`U.S.C. § 315(b).
`
` 37 C.F.R. § 42.104(b): IDENTIFICATION OF CHALLENGE
`
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which IPR is Requested
`
`Claims 1, 3, 4, 5, 7, 8, 10, 11, 12, 13, 15, 16, 17, 18, 19, and 20 are
`
`challenged in this Petition.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): Identification of Prior Art and Asserted
`Grounds for Which IPR is Requested
`The one-year time bar under pre-AIA 35 U.S.C. §102(b) is measured from
`
`the effective U.S. filing date of the ’698 Patent, which is no earlier than December
`
`28, 2007, the date of the provisional application to which the ’698 Patent claims
`
`priority (No. 61/017,202). Accordingly, the §102(b) critical date is no earlier than
`
`December 28, 2006 (“Critical Date”).
`
`Petitioners request inter partes review in view of the following prior art
`
`references:
`
`
`
`-7-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`• Japanese Patent Application Publication No. 2003-51772, titled
`
`“Communication Device, Information Processing Unit, Communication
`
`Method, Program for Performing Communication, and Computer-
`
`Readable Storage Medium for Storing the Program,” identifying Hiroshi
`
`Mashita as inventor and Canon Inc. as applicant (“Mashita”) (Ex. 1005 –
`
`original) (Ex. 1006 – certified translation)
`
`• Japanese Patent Application Publication No. 2003-299014, titled “Digital
`
`Camera Device,” identifying Jiro Onishi et al. as inventors and Dai
`
`Nippon Printing Co., Ltd. as applicant (“Onishi”) (Ex. 1007 – original)
`
`(Ex. 1008 – certified translation)
`
`• Japanese Patent Application Publication No. 2004-102810, titled
`
`“Information Processing System, Information Processing Device,
`
`Information Providing Device, Programs for Implementing These
`
`Devices, and Storage Medium Storing These Programs in Computer-
`
`Readable Manner,” identifying Tomonobu Hiraishi as inventor and
`
`Canon Inc. as applicant (“Hiraishi”) (Ex. 1009 – original) (Ex. 1010 –
`
`certified translation)
`
`None of Petitioners’ references were considered during the ’698 Patent’s
`
`prosecution. Nor are they cumulative of the prior art considered during
`
`prosecution, at least because the references disclose elements of the Challenged
`
`
`
`-8-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`Claims that the examiner apparently deemed missing from the prior art of record
`
`during prosecution, as discussed further below.
`
`Ground 1: Claims 1, 3, 4, 5, 7, 8, 10, 11, 12, 13, 15, 16, 17, 18, 19, and 20
`
`are unpatentable as obvious over Mashita in view of Onishi and Hiraishi.
`
`A detailed explanation of how each document qualifies as prior art follows:
`
`Mashita is a Japanese patent application publication that lists on its face an
`
`application date of August 6, 2001 and a publication number of 2003-51772. Ex.
`
`1005; Ex. 1006. The publication also lists on its face that the application was
`
`published on February 21, 2003. Ex. 1005; Ex. 1006. Mashita thus was published
`
`before the Critical Date and is prior art at least under pre-AIA U.S.C. § 102(b).
`
`Onishi is a Japanese patent application publication that lists on its face an
`
`application date of May 30, 2002 and a publication number of 2003-299014. Ex.
`
`1007; Ex. 1008. The publication also lists on its face that the application was
`
`published on October 17, 2003. Ex. 1007; Ex. 1008. Onishi thus was published
`
`before the Critical Date and is prior art at least under pre-AIA U.S.C. § 102(b).
`
`Hiraishi is a Japanese patent application publication that lists on its face an
`
`application date of September 11, 2002. Ex. 1009; Ex. 1010. The publication also
`
`lists on its face that the application was published on April 2, 2004. Ex. 1009;
`
`Ex. 1010. Hiraishi thus was published before the Critical Date and is prior art at
`
`least under pre-AIA U.S.C. § 102(b).
`
`
`
`-9-
`
`

`

`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
`
`C. Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art (POSITA) at the relevant time 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 experience and vice versa. Ex. 1001, ¶24. A POSITA would have been
`
`aware of various relevant facets of the state of the art, including:
`
`• Digital cameras existed, which captured images and video and could
`
`store them as files into nonvolatile memory, and then transfer those files
`
`to other devices. Id., ¶54.
`
`• The existence of Bluetooth, including pairing and authentication. Id.
`
`• Cellular telephones existed that had a graphical user interface, could store
`
`image files into nonvolatile memory, could display those images, and
`
`could access the internet, using HTTP, over the cellular network. Id., ¶54,
`
`130-131.
`
`• Various Internet photo-sharing websites existed. Id., ¶54.
`
`D. Claim Construction
`
`Prior to November 13, 2018, the Board construed claims under the “broadest
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`reasonable interpretation” standard. For petitions filed after November 13, 2018,
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`the Board construes claims under the Phillips standard. Petitioners submit that any
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`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
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`proposed constructions are at least included within the scope of either standard,
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`and as such, the applicable standard does not affect any proposed claim
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`constructions. For purposes of this proceeding only, Petitioners propose adopting
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`the following claim constructions:
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`Claim Term
`“wherein establishing the short-range
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`Construction
`“Wherein as part of establishing the
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`paired wireless connection comprises,
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`short-range paired wireless connection
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`the
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`digital
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`camera
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`device
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`between the digital camera device and
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`cryptographically authenticating identity
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`the cellular phone, the digital camera
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`of the cellular phone” (Claims 1, 5, 8, 13)
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`authenticates the identity of the cellular
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`phone using some form of secrecy,
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`security, or encryption, including by use
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`of a shared passkey on the digital camera
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`device and the cellular phone”
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`“new-media”
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`“new-media” encompass images, audio,
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`video, text, or any combination thereof
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`“Graphical user interface (GUI)”
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`“A user interface involving graphical
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`elements”
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`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
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`“Cryptographically Authenticating” Phrase
`1.
`The ‘698 Patent’s specification makes clear that “various security, encryption
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`and compression techniques” can be used “to enhance the overall user experience.”
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`Ex. 1003, 10:60–62. The specification does not express or imply any limits on the
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`types of “security” or “encryption” techniques that could be used.
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`Petitioners’ construction is consistent with the ordinary meaning of the
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`words “cryptographically authenticating” to those skilled in the art. See Ex. 1012
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`(McGraw-Hill Dictionary of Computing & Communications, 2003) at 3 (defining
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`“cryptography” as “The science of preparing messages in a form which cannot be
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`read by those not privy to the secrets of the form”); Ex. 1013 (Wiley Electrical and
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`Electronics Engineering Dictionary, 2004) at 4 (defining “authentication” as “In
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`computers and communications, the processes of verifying the legitimacy of a
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`transmission, user, or system. Measures such as passwords and digital signatures
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`are employed.”)
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`The specification gives only one specific example of “cryptographically
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`authenticating:” “A BT [Bluetooth] device that wants to communicate only with a
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`trusted device can cryptographically authenticate the identity of another BT device.
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`BT pairing occurs when the BT communication device 201a agrees to communicate
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`with the mobile device 202 in order to establish a connection. In order to initiate the
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`pairing process between the BT communication device 201a and the mobile device
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`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
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`202, a common password known as a passkey is exchanged between the BT
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`communication device 201a and the mobile device 202. A passkey is a code shared
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`by the BT communication device 201a and the mobile device 202.” Ex. 1003, 3:65–
`4:8.1 Petitioners’ proposed construction includes a non-limiting example capturing
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`this example from the specification.
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`2.
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`“New-Media”
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`The term “new-media” appears only in the claims, which is “acquired” by
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`the digital camera.2 However, the specification repeatedly refers to “multimedia,”
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`which is likewise “captured” by the digital data capture device (e.g., digital
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`camera) and explains that the “data and multimedia content” captured by a user on
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`a digital data capture device “may, for example, comprise image files, audio files,
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`video files, text files, or any combination thereof.” Ex. 1003, 4:27–29. Petitioners’
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`construction confirms that “new-media” could include any one or more of these
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`types of data.
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`1 In this Petition, all emphasis in quoted language is added unless otherwise noted.
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`2 A certificate of correction changed each instance of “new media” in the claims to
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`“new-media.” Ex. 1003 Certificate of Correction.
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`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
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`3.
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`“Graphical User Interface (GUI)”
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`The ’698 Patent’s specification and figures do not depict a graphical user
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`interface or require any particular type of GUI. See, e.g., Ex. 1003, 6:25–30, 6:58–
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`66, 9:61–63 (specification passages reciting “GUI”). To the contrary, the
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`specification provides that “the method and system disclosed herein may be
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`implemented in technologies…pervasive, flexible, and capable…of accomplishing
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`the desired tasks of the method and system.” Id., 9:42–45. In particular, the
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`claimed “cellular phone” can be any “ubiquitous mobile phone.” Id., 9:51-52.
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`One skilled in the art at the time would have known that mobile phones had
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`a wide variety of GUIs which received user input and displayed information in a
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`variety of ways. Ex. 1001, ¶¶54, 135–136; Ex. 1014; Ex. 1016. Accordingly, the
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`term “graphical user interface (GUI)” should be construed inclusively, as proposed
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`by Petitioners. Petitioners’ construction also accords with the generally understood
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`meaning of “GUI” in the art at the time. Ex. 1013 (Wiley dictionary) at 3 (defining
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`“GUI” as “a user interface which utilizes displayed graphics to provide a simpler
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`and more intuitive manner to interact with a computer”).
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`4. Whether the Claims Require “Automatic” Operation
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`In addition, Petitioners propose making clear one issue of claim scope: the
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`Challenged Claims do not require any of the claimed method steps or functions be
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`performed “automatically” or without user involvement. Although the ’698
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`Petition for Inter Partes Review
`Case IPR2019-01108 of U.S. Patent No. 9,258,698
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`Patent’s specification at points describes certain operations occurring
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`“automatically,” no such requirement should be read into the Challenged Claims.
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`None of the Challenged Claims expressly recite “automatically” or any
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`similar language. However, claims in related patents do recite “automatically” or
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`similar language. U.S. Patent 8,738,794 (Ex. 1011) is an example. The ’794 and
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`’698 Patents descend from the same parent application (U.S. Patent 8,392,591)
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`through lines of continuations and have the same disclosure, inventors, and
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`assignee. ’794 Patent claim 1 recites “sending a data signal … automatically” and
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`“transferring the new data … automatically.” The ’794 Patent’s other two
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`independent claims, claims 6 and 16, also expressly recite actions occurring
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`“automatically.” The applicants’ use of “automatically” in the ’794 Patent’s claims
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`shows that the absence of “automatically” or similar language in the ’698 Patent’s
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`claims was intentional; accordingly, “automatically” should not be read into the
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`’698 Patent’s claims.
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`Even the examples in the ’698 Patent provide for user involvement in the
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`data capture and transmission process. The specification typically describes
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`“minimal user intervention” as an alternative to “automatic.” E.g., Ex. 1003,
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`Abstract, 2:5–3:30. The specification does not define what constitutes “minimal”
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`user intervention. But it gives several examples of user intervention. “The user
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`may configure a timer setting and select the websites for publishing using the client
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`Case IPR2019-01108 of U.S. Patent No. 9,258,698
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`application on the BT enabled mobile device.” Id., 2:42–44; see also 5:22–59 and
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`6:53–7:27 (describing in more detail the configuration options that may be set by a
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`user). That is, the user may be involved in the uploading of media files from the
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`cellular phone to the internet. The user also may intervene in the other claimed
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`media transfer, from the data capture device to the cell phone. “A user sets a
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`discoverable mode for the mobile device 202.” Id., 4:10. “[T]he user of the
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`mobile device 202 [] enter[s] the passkey code in order to accept the pairing with
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`the BT communication device 201a.” Id., 4:17–25. And, after the user initiates data
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`capture, “[t]he user may then initiate the transfer” of the captured data from the
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`digital camera to the cellular phone. Id., 4:59–5:7.
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`What the ’698 Patent seeks to avoid is “off-line” transfer where the user
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`must physically transport the media on memory from the digital camera to a PC.
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`See id., 1:40–55. The specification’s references to “automatic or with minimal
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`user intervention” should be understood in this context as referring to processes
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`that avoid that workflow, rather than precluding user involvement in the transfer of
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`media between the digital camera and cellular phone via a wireless connection or
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`between the cellular phone and the Internet.
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`E.
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`37 C.F.R. § 42.104(b)(4): How the Claims Are Unpatentable
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`The requested review of the Challenged Claims’ patentability is governed by
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`pre-AIA 35 U.S.C. § 103. The specific grounds for review and an explanation of
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`Case IPR2019-01108 of U.S. Patent No. 9,258,698
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`why the Challenged Claims are unpatentable, including identification of where
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`each element of each claim is found in the prior art, are provided in Section V.
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`F.
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`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge
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`The Declaration of Dr. John Strawn (Ex. 1001) and other supporting
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`evidence in the Exhibit List are filed herewith. Dr. Strawn’s background and
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`qualifications, and the information provided to him, are discussed in Ex. 1001,
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`¶¶1–20, 28–29, and Ex. 1002.
`
` THERE EXISTS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Description of the ’698 Patent
`The ’698 Patent generally relates to “distribution of multimedia content.”
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`Ex. 1003, 1:40–41. More specifically, the patent discloses a method and system
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`for publishing data and content (e.g., digital images) to internet websites. Id., 1:41–
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`44; see also Ex. 1001, ¶¶21–23. According to the ‘698 Patent, photographers in
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`late 2007 who wished to upload their photographs or videos to the Internet would
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`need to first transfer photos from their digital or video camera to a computing
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`device—such as a personal computer (“PC”)—using a universal serial bus cable
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`(“USB cable”) or a memory stick. Ex. 1003, 1:45–53. The photographer would
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`then use the PC to go to the desired website and upload the desired photographs.
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`Id. 1:53–55. The ‘698 Patent asserts that this process could “take[] time” and be
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`“inconvenient to the user.” Id.
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`The ‘698 Patent discloses connecting a “digital capture device” (such as a
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`digital camera) to a physically separate mobile device (such as a cellular phone)
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`using the known Bluetooth protocol or a similar short-range wireless connection.
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`Ex.