Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: April 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANONU.S.A., INC.,
`Petitioner,
`
`V.
`
`CELLSPIN SOFT,INC.,
`Patent Owner.
`
`Case IPR2019-00127
`Patent 9,258,698 B2
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN,and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 US.C. $314
`
`
`571-272-7822
`
`Paper 7
`Entered: April 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANONU.S.A., INC.,
`Petitioner,
`
`V.
`
`CELLSPIN SOFT,INC.,
`Patent Owner.
`
`Case IPR2019-00127
`Patent 9,258,698 B2
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN,and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 US.C. $314
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`I.
`
`INTRODUCTION
`
`Canon U.S.A., Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`pursuantto 35 U.S.C. §§ 311-19 to institute an inter partes review of claims
`1-22 (“challenged claims”) of U.S. Patent No. 9,258,698 (“698 patent”),
`which wasfiled on November5, 2014.' Ex. 1001, [22]. The Petition is
`supported by the Declaration of Dr. Vijay Madisetti, Ph.D. (“Madisetti
`Declaration,” Ex. 1003). Cellspin Soft, Inc. (“Patent Owner”) filed a
`
`Preliminary Response (Paper 6,“Prelim. Resp.”).
`After considering the evidence and arguments presentedin the
`Petition and Preliminary Response, we determinethat Petitioner has
`demonstrated a reasonable likelihood of success in proving that at least one
`claim of the 698 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R.
`§ 42.4(a). We therefore institute an inter partes review ofall of the
`challenged claims on the groundsarticulated in the Petition as set forth
`below. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018); Guidance on the
`Impact of SAS on AIATrial Proceedings (Apr.26, 2018),
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial.
`
`Il.
`
`BACKGROUND
`
`A. Related Proceedings
`Petitioner advises us that Patent Ownerhas asserted the 698 patent
`againstPetitioner in Cel/spin Soft, Inc. v. Canon USA,Inc., No.4:17-cv-
`
`' Petitioner states that the °698 patent claims priority to Provisional
`Application No. 61/017,202,filed December28, 2007. Pet. 6; Ex. 1001,
`[60], 1:26-29. Theparties do notraise an issue relating to the effective
`filing date of the challenged claims of the ’698 patent.
`
`2
`
`
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`IPR2019-00127
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`05938 (N.D. Cal.) (“District Court lawsuit”). The District Court lawsuit was
`
`dismissed, the court finding the claims of the ’698 patent unpatentable under
`
`35 U.S.C. § 101. Pet. 2 (citing Ex. 1021 (Order Re: Omnibus Motionto
`
`Dismiss; Motion for Judgmenton the Pleadings, dated April 3, 2018)).
`Patent Ownerhas appealed to the U.S. Court of Appeals for the Federal
`Circuit, Appeal No. 2018-1823. Jd. Federal Circuit Appeal No. 2018-1817,
`referenced below,is the lead case. Pet. 2; Paper 4, 2.?
`
`Patent Ownerhasalso asserted the °698 patent against other partiesin
`
`the U.S. District Court for the Northern District of California, including the
`
`following: JK Imaging, Ltd. (Case No. 4:17-cv-06881); Garmin
`International, et al. (Case No. 4:17-cv-05934); Nikon AmericasInc., et al.
`(Case No. 4:17-cv-05936); TomTom Inc., et al. (Case No. 4:17-cv-05937);
`GoPro,Inc. (Case No. 4:17-cv-005939); Eastman Kodak Co. (Case No.
`4:17-cv-05940); and Panasonic Corporation of America (Case No. 4:17-cv-
`05941). Pet. 3; Paper 4, 2. Petitioner asserts the following:
`The cases against JK Imaging, GoPro, and Panasonic were
`dismissed on the groundsthat the claims of the ’698 Patent are
`directed to non-patentable subject matter, and are currently on
`appeal as part of lead case Appeal No. 2018-1817. The cases
`against TomTom and Eastman Kodak were dismissed. The case
`against Nikon remains pending.
`
`Pet. 3.
`
`2 Panasonic Corporation and Panasonic Corporation of North America have
`also filed a petition for inter partes review of someofthe claimsofthe *698
`patent in Panasonic Corporation ofNorth America v. Cellspin Soft, Inc.,
`IPR2019-00131 (“131 IPR”). The ’131 IPR alleges different grounds of
`unpatentability.
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`B. Technology and the ’698 Patent
`The ’698 patentis 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.” Jd.
`
`at 1:41-45.
`
`I. Technology
`Accordingto the 698 patent, in the prior art,
`the user would capture an imageusing a digital cameraor 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 orderto transfer the imageto the PC,
`the user would transfer the image off-line to the PC, use a cable
`such as a universal serial bus (USB) or a memorystick 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.” Jd. at 3:34—-38.
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
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`Figure 2 of the ’698 patent is reproduced below.
`
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`
`. Figure 2 “illustrates a system forutilizing a digital data capture devicein
`conjunction with a Bluetooth enabled mobile device.” Ex. 1001, 3:14-18.
`Referring to Figure 2, “[t]he BT [(Bluetooth)] communication device 201la
`on the digital data capture device 201 is paired 103 with the mobile
`device 202 to establish a connection betweenthe digital data capture
`
`device 201 and the mobile device 202.” Id. at 3:60-63. Accordingto the
`°698 patent, Bluetooth pairing involves establishing a connection between
`two Bluetooth devices that “mutually agree to communicate with each
`
`other.” Jd. at 3:60-65. The communicationis authenticated
`cryptographically using a “common password knownas a passkey,” which
`“is exchanged between the BT communication device 201a and the mobile
`device 202.” Id. at 3:65-4:8.
`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.” Jd. at
`4:29-32. The client application initiates a transfer of the captured data and
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`the digital data capture device automatically transfers the captured data from
`the mobile device using one or a combinationoffile transfer protocols. Jd.
`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. ‘/d. at 4:42-48.
`The user mayset preferences regarding timing of the publication of
`the captured data andthe 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.”
`
`Td. at-5:39-4l.
`
`C. Illustrative Claim
`
`Claims 1 (method), 5 (device), 8 (system), and 13 (computer
`readable-medium) are independent claims. Claims 2—4 dependdirectly from
`claim 1. Claims 6, 7, 17, 19, and 21 dependdirectly or indirectly from claim
`5. Claims 9-12, 20, and 22 dependdirectly or indirectly from claim 8.
`
`Claims 14-16 and 18 depend directly from claim 13.
`
`Claim 1 is reproduced belowas illustrative.
`[1(a)>] A machine-implemented method of mediatransfer,
`comprising:
`
`[1(b)] for a digital camera device having a short-range wireless
`capability to connect with a cellular phone, wherein the
`
`3 Petitioner identifies limitations using a format where the claim numberis
`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.
`
`6
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
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`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
`betweenthe digital camera device and the cellular phone;
`
`[1(e)] creating a new-mediafile using the acquired new-media;
`
`[1(f)] storing the created new-media file in a first non-volatile
`memory ofthe 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-mediafile 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-mediafile in a non-volatile memory
`device of the cellular phone,
`
`[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
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`the received
`for
`is
`interface (GUI)
`the graphical user
`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.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims of the 698 patent as unpatentable on the
`
`following grounds. Pet. 4-5, 19-62.
`
`_| Ground
`References
`
`
`
`
`2
`
`Hiroishi* and Takahashi?
`§ 103°
`Hiroishi, Takahashi, and
`§ 103
`21, 22
`
`Ando’
`
`Basis
`
`
`Claims
`Challenged
`
`
`
`4 JP 2003-60953, to Toshiyuki Hiroishi, published February 28, 2003
`(“Hiroishi,” Ex. 1004 (original Japanese language version,Ex. 1005
`(certified English translation)). We reference the English translation,
`Ex. 1005.
`5 JP 2005-303511, to Susumu Takahashi,ef al., published October 27, 2005
`(“Takahashi,” Ex. 1007 (original Japanese language version), Ex. 1008
`(certified English language translation)). We reference the English
`translation Ex. 1008.
`6 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 becameeffective March 16, 2013. The 698 patent claims
`priority through a chain of continuation applicationsto 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 groundsasserted are under the pre-AIA version of § 103.
`7 JP P2003-46841A, to Shigeru Ando, published February 14, 2003
`(“Ando,” Ex. 1014 (original Japanese language version), Ex. 1015 (certified
`English translation)). We reference the English translation, Ex. 1015.)).
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
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`.
`
`
`
`
`
`Nozaki®
`
`and Ando
`
`
`
`Ando
`
`Iii. ANALYSIS
`
`
`
`“
`
`Challenged
`
`13, 15-20
`
`
`
`
`
`
`
`
`14, 21, 22.
`
`A. Claim Construction
`This Petition was filed prior to November 13, 2018, and so we
`interpret claim termsof the challenged claims using the broadest reasonable
`construction in light of the specification of the ’698 patent. 37 C.F.R.
`§ 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (upholding the use of broadest reasonable construction standard
`in inter partes review); see also Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11, 2018) (final rule)
`(“This rule is effective on November 13, 2018 and appliesto all IPR, PGR
`and CBMpetitionsfiled on or after the effective date.”).
`Petitioner alleges generally that claim construction in this proceeding
`is governed bythe broadest reasonable interpretation (“BRI”) standard but
`
`~
`
`8 JP 2004-96166, to Hirotake Nozaki, published March 25, 2004 (“‘Nozaki,”
`Ex. 1011 (original Japanese language version), Ex. 1011 (certified English
`translation)). We reference the English translation, Ex. 1011)).
`9 U.S. Patent No. 6,763,247 B1, to Magnus Hollstrom,et al., issued July 13,
`2004 (“Hollstrom,” Ex. 1013).
`
`
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`IPR2019-00127
`Patent 9,258,698 B2
`
`does not identify or propose the construction of any term. Pet. 17-18. The
`Petition should set forth “[h]ow the challenged claim is to be construed.”
`37 C.F.R. § 42.104 (b)(3). Petitioner acknowledges the preceding and states
`that “the challenged claims should receive their BRI as understood by a
`[person ofordinary skill in the art] at the time of the alleged invention in the
`context of the patent.” Pet. 18. Petitioner then “reserve[s] the right” to
`address “any claim construction issues raised by Patent Ownerin a
`Preliminary Response.” Jd. We proceed on the understanding that
`Petitioner did not identify any dispute regarding claim construction and
`relies on the plain and ordinary meaning of the claim terms to a person of
`
`ordinary skill in the art.
`Patent Owneridentifies two terms for potential construction, “paired”
`and “cryptographically authenticating.” Prelim. Resp. 13-16. Patent Owner
`arguesthat, based on specification of the ’698 patent and “the knowledge of
`both [personsofordinary skill in the art] and laypersons, the term ‘paired’
`has a specific meaning in the art in regard to short range wireless, including
`preferred embodimentpaired Bluetooth, communications.” /d. at 13. Patent
`Ownerdescribes the Bluetooth pairing process and proposes that features of
`this process be includedin the construction of “paired.” Jd. at 14-16. For
`purposesof this Decision we neednot construe the term “paired.”
`Patent Ownerproposesthat “cryptographically authenticating” be
`construed to mean “us[ing] a cryptographic key for authenticating
`something, e.g., a numerical value, exchanged during the pairing process.”
`Id. at 16. Patent Ownerargues that cryptographic authenticationis not used
`or described in isolation and that “i]t is used inside a pairing context.” Jd.
`
`10
`
`
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`IPR2019-00127
`Patent 9,258,698 B2
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`(citing Ex. 1001, 3:63-4:8; Ex. 2006,'° 1068-1071). Patent Owneralso cites
`extrinsic evidence descriptions of terms, including “cryptographic.” Jd.
`(citing Ex. 2003,!' Ex. 2005,'? Ex. 2006).
`Both of the terms Patent Ownerproposes for construction appear in
`
`the following “wherein”clause of claims 1, 5, 8, and 13:
`wherein establishing the short-range paired wireless connection
`comprises,
`the
`digital
`camera
`device
`cryptographically
`authenticating identity of the cellular phone.
`
`In the ’131 IPR, whichalso involves claims 1, 5, 8, and 13 of the
`°698 patent, Petitioners Panasonic Corporation and Panasonic Corporation of
`North America proposethat the above “wherein” clause be construed as:
`wherein as part of establishing the short-range paired wireless
`connection between the digital camera device and the cellular
`phone,the digital camera authenticatesthe identity ofthe cellular
`phone using some form of secrecy, security, or encryption,
`including by use of a shared passkeyon the digital camera device
`and the cellular phone.
`
`°131 IPR, Paper 1, 10-11. Patent Owner maintains the sameposition in the
`°131 IPR forthe terms “paired” and “cryptographically authenticating” that
`it maintains in this proceeding. °131 IPR, Paper 7, 12-16.
`This “wherein”clause recites “cryptographically authenticating”in
`the context of a “short-range paired wireless connection.” The ’698patent’s
`specification identifies Bluetooth as a short-range wireless communication
`connection between devices. Ex. 1001, 2:5-9, 3:45—59, Figs. 1,2. The °698
`
`'° Bluetooth Specification, Version 2.1, July 26, 2007.
`'! Silicon Labs, UG103.10:RF4CA Fundamentals Rev. 0.2
`12 National Institute of Standards and Technology, Glossary ofKey
`Information Security Terms, NISTIR 7298, Revision 2 (May2013).
`
`ll
`
`
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`Patent 9,258,698 B2
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`patent explains the following: “A BT device that wants to communicate
`only with a trusted device can cryptographically authenticate the identity of
`another BT device. BT pairing occurs when the BT communication device
`201a agrees to communicate with the mobile device 202 in order to establish
`a connection.” Jd. at 3:65—-4:3. With respect to “cryptographically.
`
`authenticating,” the specification goes onto state:
`In order
`to initiate the pairing process between the BT
`communication device 20la and the mobile device 202, a
`commonpassword knownas a passkey is exchanged between the
`BT communication device 201a and the mobile device 202. A
`passkey is a code shared by the BT communication device 201a
`and the mobile device 202.
`
`Id. at 4:3-8. The ’698patent also discloses that “various security,
`encryption and compression techniques” can be used “to enhance the overall
`user experience.” Ex. 1001, 10:60-62.
`In view ofthe foregoing disclosures in the °698 patent specification,
`which do notlimit the type of security used for cryptographically
`authenticating, for purposes of determining whetherornotto institute, we
`determine that “cryptographically authenticating identity ofthe cellular
`phone” encompasses “authenticating the identity of the cellular phone using
`some form ofsecurity or encryption, including by use of a shared passkey on
`the digital camera device andthe cellular phone.”
`
`B. Legal Standardfor Obviousness
`A patent claim is unpatentable as obviousif the differences between
`the claimed subject matter and the prior art are “such that the subject matter
`as a whole would have been obviousat the time the invention was made to a
`
`
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`Patent 9,258,698 B2
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`person havingordinaryskill in the art to which said subject matter pertains.”
`
`35 U.S.C. § 103(a).
`The ultimate determination of obviousnessis a question oflaw,but
`that determination is based on underlying factual findings. The underlying
`
`factual findings include (1) “the scope and contentof the priorart,”
`(2) “differences betweentheprior art and the claimsat issue,” (3) “the level
`of ordinaryskill in the pertinentart,” and (4) the presence of secondary
`considerations of nonobviousness such “as commercial success, long felt but
`
`|
`
`unsolved needs,failure of others,” and unexpected results. Jn 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)).
`- “To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” Jn re Magnum Oil Tools Int'l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Furthermore,in assessing the priorart, the
`Board must consider whether a person ofordinary skill would have been
`motivated to combinethe prior art to achieve the claimed invention.
`Nuvasive, 842 F.3d at 1381. As the Federal Circuit stated, quoting from the
`Supreme Court’s decision in KSR InternationalCo. v. Teleflex Inc., 550 U.S.
`398, 418-19 (2007),
`
`instances rely upon
`“because inventions in most, if not all,
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in somesense,
`is already known,” “it can be importantto identify a reason that
`would have prompted a person ofordinary skill in the relevant |
`field to combine the elements in the way the claimed new
`invention does.”
`
`13
`
`
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`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991-92 (Fed.Cir.
`
`2017).
`
`C. Person of Ordinary Skill in the Art
`Petitioner alleges a person ofordinary skill in the art
`would have had at
`least a bachelor’s degree ‘in electrical
`engineering, computer engineering, or computer science, and
`two years of experience in the field consumer electronics, with
`exposure
`to
`digital
`camera
`technology
`and_ wireless
`communications.
`
`Pet. 17 (citing Ex. 1003 §{] 68-70). Patent Owner does not comment on
`
`Petitioner’s proposal or propose analternative.
`Wenote that in the ’131 IPR, the Panasonic Petitioners asserts that a
`
`person of ordinaryskill in the art
`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.
`
`°131 IPR Pet.9 (citing °131 IPR Ex. 1001 § 24).
`Onthe current record, for purposesofinstitution, we determinethat a
`personofordinary skill in the art would have had a bachelor’s degree in
`electrical 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.
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2 —
`
`D. Prior Art Relied Upon
`As noted in Section II.D above, Petitioner relies on the followingprior
`
`art for its obviousness grounds.
`
`1. Hiroishi (Ex. 1005)
`Hiroishi discloses a photographing system where a mobile phone
`stores an image sent by a digital camera. Ex. 1005, Abstract. “[V]arious
`keys provided to the mobile phone 40 are used to remotely operate the
`digital camera 50 by transmitting various instruction information from the
`mobile phone40 to the digital camera 50.” Jd. § 43. The wireless two-way
`communication between the mobile phone and the digital camera may be
`
`through Bluetooth. Jd. { 66.
`Hiroishi describes release instruction information, which “is the
`information for instructing the timing of photographing with the camera.”
`Ex. 1005 § 34. According to Hiroishi, the “timing in whichthe release
`instruction information is transmitted serves as the photographing timing.”
`
`Id. Figure 5 of Hiroishi is reproduced below.
`(FRG 3)
`
`peeeee rene eee
`Dupedcanesprorenting
`]
`
`ya
`
`15
`
`
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`Figure 5 “is a flow chart showing the flow ofprocessingof the digital
`camera processing program executed by a CPU 60 built in the digital
`camera 50.” Ex. 1005 § 71. Whenthe digital camera is turned on, “the
`program is stored in advance in the predetermined area of ROM 55B in the
`built-in memory 55.” Jd.; see also id. at Fig. 4 (memory 55).
`Referencing Figure 5, at step 114, the mobile device issues a release
`instruction to the camera, which causes the camera to acquire andstore a
`new photograph. Ex. 1005 { 78; see also id. at Fig. 1 (showing
`communication ofinstruction information from mobile phone 40to digital
`
`camera 50), J 34 (describing release instruction information), {73
`(describing that the camera receivesinstruction information from the mobile
`phone). A thumbnail image“selected by the operator of the mobile
`phone 40fromaplurality of images shown by the thumbnails transmitted
`according to the thumbnail transmission instruction information is read from
`the photographed image data storage area” ofthe digital camera. Id. 4 84,
`Fig. 4 (SDRAM 55A). At step 122, the mobile device may also send an
`instruction that causes the camera to transmit the stored imagefile to the
`mobile device andat step 126, delete it from the camera. Jd. The camera
`mayalso transmit a thumbnail of the image to the mobile device. Jd. { 81.
`As shownin Figure 1, “the photographing system 10 transmits the
`image information to the mobile phone 40,and the mobile phone 40
`forwards the image information received from the digital camera 50 to a
`terminal device.” Ex. 1005 § 43. Figure 2 of the patent (not shown above)
`illustrates a computer network, whichincludes Internet 12 and “public
`telephone network 14 built and provided by a telecommunications company
`of each country or each region as communication media.” Id. { 47, Fig.2.
`
`16
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`
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`Mutual access to the photographing system is available as between two users
`to access a network “according to a predetermined communication protocol,
`such as TCP/IP (Transmission Control Protocol/Internet Protocol), or the
`
`like.” Id. J 49.
`
`2. 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 imageis 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
`filenamethat identifies user information including a user ID. Jd. 66. The
`storage server processes the received imagefile in order to publish it. Jd.
`
`q 52.
`
`3. Nozaki (Ex. 1011)
`Nozaki teachesa digital camera wirelessly connectedto a cellular
`phonevia Bluetooth so that the camera can wirelessly transmit imagesto the
`phone. Ex. 1011, Abstract. After the image has been transmitted to the
`phone, the user can delete the original image correspondingto the imagethat
`was transmitted from the camera by pressing the key correspondingto a
`“delete icon” on the GUI of the phone. Jd. § 28. “[T]he mobile phone 200
`transmits the signal for instructing the deletion of the imagedatafile
`and .. . the electronic still camera 100 deletes the image data... .” Jd. 731;
`
`
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`see also id. Jf 44, 62-64, Figs. 4-5, 8, 13 (showing userinterface and steps
`
`for deletion).
`
`4. 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 ofthe
`mobile device to perform certain camera functions remotely, such as
`capturing, viewing, modifying, and deleting images. Jd. at 6:1-13, 6:29-46.
`Figures 2 and 3 are reproduced below (as shown at page 21 of the
`
`Petition).
`
`Fig 3
`
`eza Spreten Cecernt brertsun
`
`Figures 2 and3, respectively,illustrate the structure of the mobile device
`and the digital camera. Ex. 1013, 2:54-57, 4:36-39. Hollstrom teaches that
`
`18
`
`
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`IPR2019-00127
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`
`both the mobile device and camera include Bluetooth functionality that
`
`allows them to establish a paired connection and exchange imagefiles
`wirelessly. Id. at 5:58-67. After receiving new imagefiles, the mobile
`device is configured to upload thefiles to a designated publishing website.
`
`Td. at 6:14-28.
`
`5. Ando (Ex. 1015)
`Andoteaches a system of sending thumbnails of images captured by a
`digital camera from the camera to a connected cellular phone. Ex. 1015,
`Abstract, Fig. 2. The phone can then be used to browsethe thumbnail
`images. Id. § 23. According to Ando, “[{w]henthe simple digital camera
`receives [a] deletion signal, it deletes the image data andits thumbnail image
`corresponding to the designated frame number.” Jd. 443. Ando teachesthat
`the connection between the camera and phone can be accomplishedvia a
`
`wireless communication method such as Bluetooth. Id. { 39.
`
`E. Obviousness of Claims 1-20 over Hiroishi and Takahashi
`(Ground 1)
`Petitioner alleges the subject matter of claims 1-20 would have been
`obvious over Hiroishi and Takahashi. Pet. 23-53.'? The Petition is
`supported by the Madisetti Declaration. Ex. 1003 {if 93-207.
`
`13 Petitioner also relies on the knowledgeofone of ordinary skill in the art.
`For example,Petitioner alleges that it would have been obvious to a person
`of ordinary skill at the time of the invention “to modify Hiroishito include”
`“ceryptographically authenticating” the identity of the phone because
`“T¢]ryptographic authentication between wireless deviceslike a digital
`camera and cellular phone wasroutineat the time of the invention.” Pet. 24
`(citing Ex. 1003 J 99-100; Ex. 1017, 91-92; Ex. 1020 { 19); see discussion
`of limitation 1(c) below.
`
`19
`
`
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`Patent Owner argues generally that noneof the references teachesthe
`
`subject matter of the claims. Prelim. Resp. 35-49. Patent Owner
`specifically argues that neither of the references teachesa “paired wireless
`connection”or “cryptographically authenticating identity of the cellular
`phone.” See, e.g., Prelim. Resp. 18-19 (Hiroishi), 21 (Takahashi).
`
`Independent Claims 1, 5, 8, and 13
`1.
`Without identifying any particular claim, Patent Owner argues
`Petitioner has failed to show limitations commonto all the independent
`claims. The independentclaimsare similar and Patent Ownerarguesthe
`independent claims withoutreference to any particular claim. See, e.g.,
`Prelim. Resp. 35 (“Hiroishi does NOTdisclose the digital camera
`establishing a short-range paired wireless connection between the digital
`camera device and cellular phone.”). We therefore analyze below the
`positions ofthe parties using claim 1 asillustrative.
`The preamble, designated by Petitioner as limitation 1a), recites, in
`pertinentpart, “[a] machine-implemented method of mediatransfer.”
`Petitioner cites to Hiroishi as teaching such a method. Pet. 23 (citing
`Ex. 1005, Abstract, 95, Fig. 1; Ex. 1003 § 94). To the extent the preamble is
`limiting, Petitioner sufficiently shows onthe current record that Hiroishi
`teaches a machine-implemented method of mediatransfer.
`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 hasaccessto the internet, performing in the digital camera
`device.” Petitioner argues Hiroishi teaches a digital camera and a cellular
`phonefor accessing the Internet and that the two are connected over a
`
`20
`
`
`
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`short-range wireless connection, such as Bluetooth. Pet. 23 (citing Ex. 1005,
`Abstract, Figs. 1, 2, J] 48-49, 66; Ex. 1003 ff 95-96). On this record,
`Petitioner makes an adequate showingthat Hiroishi teacheslimitation 1(b).
`Limitation 1(c) recites “establishing a short-range paired wireless
`connection between the digital camera device and the cellular phone,
`whereinestablishing the short-range paired wireless connection comprises,
`the digital camera device cryptographically authenticating identity of the
`cellular phone.” Petitioner asserts Hiroishi teaches the use of Bluetooth to
`provide a short-range wireless connection between a digital camera and
`cellular phone. Pet. 24 (citing Ex. 1005 66). Petitioner does not rely on
`Hiroishi to teach the “cryptographically authenticating identity of the
`cellular phone”but contendsa person ofordinaryskill would have foundit
`obvious to include the functionality. Jd. (citing Ex. 1003 §{] 99-100).
`Petitioner cites evidencethat “[c]ryptographic authentication between
`wireless deviceslike a digital camera andcellular phone was routine at the
`time of the invention.” Jd. (citing Ex. 1017,'4 91-92; Ex. 1019'5 55;
`Ex. 1020! ¢ 19); see also Ex. 1003 § 99 (Madisetti Declaration citing same
`evidence). Petitioner alleges that a person of ordinary skill would have been
`motivated to include cryptographic authentication with short-range wireless
`communication,inter alia, to “ensure[] the secure transmission of imagefiles
`and related data between the two devices.” Pet. 25 (citing Ex. 1003 4] 44—
`47, 99-100). Further, Petitioner cites to Hiroishi’s teaching of Bluetooth as
`
`14 Chatschik Bisdikian, An Overview ofthe Bluetooth Wireless Technology,
`IEEE COMMUNICATIONS MAGAZINE(Dec. 2001).
`15 US 2002/0141586 Al, to Yanki Mar
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