Trials@uspto.gov
`571-272-7822
`
`Paper No. 51
`Date: April 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANONU.S.A., INC., GOPRO,INC.,
`GARMIN INTERNATIONAL, INC., AND GARMIN USA,INC.,
`Petitioners,
`
`V.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`
`IPR2019-00127!
`Patent 9,258,698 B2
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN,and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON,Administrative PatentJudge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Strike
`Denying Patent Owner’s Motion to Strike/Exclude
`35 U.S.C. § 318(a)
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA,Inc. (? 1107 Petitioners)
`were joined to this proceeding. See Paper 27, 30 (ordering that “‘the ’1107
`Petitioners are joined with IPR2019-00127”).
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`I.
`
`INTRODUCTION
`
`Canon U.S.A., Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.””) pursuant
`to 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 was
`
`filed on November5, 2014.2 Ex. 1001, code(22). Cellspin Soft, Inc. (“Patent
`
`Owner’) filed a Preliminary Response (Paper6, “Prelim. Resp.”). Weinstituted an
`
`inter partes review ofall challenged claims (Paper7, “Inst. Dec.”).
`
`After institution, Patent Ownerfiled a Patent Owner Response (Paper 17,
`
`“PO Resp.”), Petitioner filed a Reply (Paper 24, “Reply”), and Patent Ownerfiled
`
`a Sur-Reply (Paper29, “Sur-reply”). The Petition is supported by the Declaration
`ofDr. Vijay Madisetti, Ph.D. (Ex. 1003, ““Madisetti Declaration”). The Replyis
`supported by the Reply Declaration of Dr. Vijay Madisetti, Ph.D. (Ex. 1043,
`
`‘““Madisetti Reply Declaration”). The deposition ofDr. Madisetti was taken by
`
`Patent Ownerafter the Madisetti Declaration was filed (Ex. 1042, “Madsetti
`
`Deposition”).3 The Response is supported by the Declaration of Dr. Michael Foley
`
`(Ex. 2009, “Foley Declaration”). The Sur-reply is supported by the Declaration of
`
`Dr, Michael Foley Concerning Patent Owner’s Sur-reply to Petitioner’s Reply (Ex.
`
`2 Petitioner states that the ’698 patent claims priority to Provisional Application
`No. 61/017,202, filed December 28, 2007. Pet. 6; Ex. 1001, code (60), 1:26-29.
`All of the prior art references were published or issued more than oneyear prior to
`December 11, 2008—the filing date of the earliest application in the chain of
`related continuation applications. See Ex. 1001, code(63). We therefore do not
`reach the issue of whether any of the challenged claimsare entitled to thefiling
`date of the provisional application.
`3 Panasonic Corporation and Panasonic Corporation of North Americaalsofiled a
`petition for inter partes review of someofthe claims of the 698 patent in
`Panasonic Corporation ofNorth America et al., v. Cellspin Soft, Inc., IPR2019-
`00131 (“’131 IPR”). The ’131 IPR alleges different grounds of unpatentability.
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`2026, “Foley Sur-reply Declaration”). The deposition of Dr. Foley was taken by
`
`Petitioner after the Foley Declaration was filed (Ex. 1040, “Foley Deposition”).
`
`An oral hearing was held on January 28, 2020, and a transcript made ofrecord
`
`(Paper 50, “Tr.”).
`
`We authorized eachparty to file a motion to strike (Paper 36, ““Order”).
`
`Pursuant to our Order, Petitioner filed a Motion to Strike New Arguments and
`Evidence Submitted in Patent Owner’s Sur-Reply (Paper 44, “Pet. Mot.”), to which
`Patent Ownerfiled a Response (Paper 40, “PO Opp.”). Also as authorized in the
`
`Order, Patent Ownerfiled its separate Motion to Strike and, Alternatively, Exclude
`
`Improper Reply and Reply Evidence (Paper 43, “PO Mot.), to which Petitioner
`
`filed an Opposition (Paper45, “Pet. Opp.”).
`
`Wehavejurisdiction under 35 U.S.C. § 6. This Final Written Decisionis
`
`entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Forthe reasons
`
`discussed below,Petitioner has shown by a preponderance of the evidence that
`
`claims 1-22 of the °698 patent are unpatentable.
`|
`I. BACKGROUND
`
`A. Related Proceedings
`
`Petitioner advises us that Patent Ownerhas asserted the ’698 patent against
`
`Petitioner in Cellspin Soft, Inc. v. Canon USA, Inc., No. 4:17-cv-05938 (N.D. Cal.)
`
`(“District Court lawsuit”). Pet. 2. Patent Owner hasalso asserted the ’698 patent
`
`against otherparties in 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); GoPro, Inc. (Case No. 4:17-
`
`cv-005939); and Panasonic Corporation ofAmerica (Case No. 4:17-cv-05941).
`
`Pet. 3; Paper 4, 2.
`
`In each ofthese district court cases, the District Court granted a motion to
`
`dismiss, finding the claims of the ’698 patentineligible for patent protection under
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`35 U.S.C. § 101. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1309 (Fed.
`
`Cir. 2019); see also Ex. 1021 (Order Re: Omnibus Motion to Dismiss; Motion for
`
`Judgment on the Pleadings, dated April 3, 2018)). OnJune 25, 2019, the Federal
`
`Circuit vacated the district court’s dismissal and remandedfor further proceedings.
`
`Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1309, 1320 (Fed. Cir. 2019).
`
`The ’698 patent is also challenged in the °131 IPR. Petitioners in GoPro,
`
`Inc., Garmin International, Inc. and Garmin USA,Inc. v. Cellspin Soft, Inc.,
`
`IPR2019-01108 (“‘’ 1108 IPR”) were joined as parties to the °131 IPR. See’131
`
`IPR, Paper 27 (joining °1108 petitioners to the ’131 IPR).
`
`B. Real Parties in Interest
`
`asis its
`Petitioner Canon U.S.A., Inc. alleges it is a real-party-in-interest,
`parent corporation Canon, Inc. Pet. 2. GoPro, Inc., Garmin Int’], Inc., Garmin
`
`USA,Inc., Garmin Switzerland GmbHarealso identified as real parties in interest.
`
`IPR2019-01107, Paper 1, 2. Patent Owner Cellspin Soft, Inc. alleges it is the real-
`
`party-in-interest. Paper4, 2.
`
`C. Technology and the ’698 Patent
`
`The °698 patent is directed to “distribution of multimedia content.”
`
`Ex. 1001, 1:40-41. The system described includes using a digital data capture
`device in conjunction with a cellular phoneto automatically publish “data and
`multimedia content on one or more websites simultaneously.” Jd. at 1:41-45.
`
`Accordingto the ’698 patent, in the priorart,
`
`I. Technology
`
`the user would capture an image using a digital camera or a video
`camera, store the image ona memory device of the digital camera, and
`transfer the image to a computing device such as a personal computer
`(PC). In orderto transfer the image to 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 memory stick and plug the cable into the PC. The user
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`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 describesa digital data capture device, which may be “a
`
`digital camera, a video camera, digital modular camera systems, or otherdigital
`
`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 userintervention.” Jd. at 3:34-38.
`
`Figure 2 of the ’698 patentis reproduced below.
`
`203
`BLUETOOTH ENABLED MOBILE DEVICE
`
`
`
`CLIENT APPLICATION
`
`DIGITAL DATA CAPTURE DEVICE
`2030
`
`203
`
`
`
`GRAPHICAL USER
`INTERFACE
`
`Soar
`
`BLUETOOTH
`ASSOCIATION
`PROT
`L
`
`MONITORING AND
`MODULE
`
`.
`
`1
`BLUET!
`‘OOTI
`2
`COMMUNICATION DEVICE
`BLUETOOTH
`201b
`ASSOCIATION
`PROTOCOL
`MODULE
`
`201¢
`
`DATA TRANSFER
`PROTOCOL,
`MODULE
`
`
` DATA AND FILE
`
`
`
`wold
`DATA TRANSFER
`
`DATA CAPTURE MODULE
`PROTOCOL.
`MODULE
`SccMentation|73
`MODULE
`
`DATA TRANSFER|237)
`MODULE
`
`
`
`Figure 2 “illustrates a system forutilizing a digital data capture device in
`
`conjunction with a Bluetooth enabled mobile device.” Ex. 1001, 3:14-18.
`
`Referring to Figure 2, “[t]he BT [(‘Bluetooth’)] communication device 201a on the
`
`digital data capture device 201 is paired 103 with the mobile device 202 to
`
`establish a connection between the digital data capture device 201 and the mobile
`device 202.” Jd. at 3:60-63. According to the ’698 patent, Bluetooth pairing
`involves establishing a connection between two Bluetooth devices that “mutually
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`agree to communicate with each other.” Jd. at 3:63-65. A communication may be
`
`authenticated cryptographically using a “common password known as a passkey,”
`
`which “is exchanged between the BT communication device 201a and the mobile
`
`device 202.” Id. at 3:65-4:8.
`
`Still referring to Figure 2, a user captures data and multimedia content using
`
`digital data capture device 201. Ex. 1001, 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.
`
`Theclient applicationinitiates a transfer of the captured data and the digital data
`
`capture device automatically transfers the captured data from the mobile device
`using one or a combination offile transfer protocols. Jd. at 4:32-42. Thetransfer
`protocols include “one or a combination ofBT profile protocols suchas the object
`
`exchange (OBEX) protocol,”such as the generic object exchange profile (GOEP)
`
`protocol, the media transfer protocol(MTP)the picture transfer protocol(PTP),
`
`and the PictBridge protocolimplemented using a USB. Jd. at 4:42—48.
`
`The user mayset preferences regarding timing ofthe publication of the
`
`captured data and the destination website. Ex. 1001, 5:23-38. “The client
`
`application 203 on the mobile device 202 then automatically publishes 107 the
`
`transferred data and multimedia content on one or more websites.” Jd. at 5:39-41.
`
`Illustrative Claim
`D.
`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 belowasillustrative.
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
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`[1(a)4] A machine-implemented method of media transfer, comprising:
`
`[1(b)] for a digital camera device having a short-range wireless
`capability to connect with a cellular phone, wherein the cellular
`phone has access to the internet, performing in the digital camera
`device:
`
`[1(c)] establishing a short-range paired wireless connection between the
`digital camera device and the cellular phone, wherein establishing
`the short-range paired wireless connection comprises, the digital
`camera device cryptographically authenticating identity of the
`cellular phone;
`
`[1(d)] acquiring new-media, wherein the new-media is acquired after
`establishing the short-range paired wireless connection between the
`digital camera device and the cellular phone;
`
`[1(e)] creating a new-media file using the acquired new-media;
`
`[1(f)] storing the created new-media file in a first non-volatile memory
`of the digital camera device;
`
`[1(g)] receiving a data transfer request initiated by a mobile software
`application on the cellular phone, over the established short-range
`paired wireless connection, wherein the data transfer request is for
`the new-media file, and wherein the new-media file was created in
`the digital camera device before receiving the data transfer request;
`and
`
`[1(h)] transferring the new-media file to the cellular phone, over the
`established short-range paired wireless connection, wherein the
`cellular phoneis configured to receive the new-media file, wherein
`the cellular phoneis configured to store the received new-mediafile
`in a non-volatile memory device of the cellular phone,
`
`4 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)). Patent Owner adopts the format. See PO Resp. 30
`(limitation 1(c)). We also adopt the format.
`
`7
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`[1(3)] 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 phoneis configured to provide a graphical
`user interface (GUI) in the cellular phone, wherein the graphical
`user interface (GUI) is for the received new-media file and to delete
`the created new-mediafile.
`
`Ex. 1001, 11:54-12:26 (alterations and line breaks added); see Pet. 9-10.
`
`E. Evidence
` Hiroishi, JP 2003-60953, published February 28, 2003 (“Hiroishi,”
`1.
`Ex. 1004 (original Japanese language version, Ex. 1005 (certified English
`
`translation)). We reference the English translation, Exhibit 1005.
`
`2.
`
`Takahashi, JP 2005-303511, published October 27, 2005
`
`(“Takahashi,” Ex. 1007 (original Japanese language version), Ex. 1008 (certified
`
`English language translation)). We reference the English translation, Exhibit 1008.
`
`3.
`
`Ando, JP P2003-46841A, published February 14, 2003 (“Ando,” Ex.
`
`1014 (original Japanese language version), Ex. 1015 (certified English
`
`translation)). We reference the English translation, Exhibit 1015.
`
`4.
`
`Nozaki, JP 2004-96166, published March 25, 2004 (“Nozaki,” Ex.
`
`1011 (original Japanese language version), Ex. 1011 (certified English
`
`translation)). We reference the English translation, Exhibit 1011.
`
`5...
`
`Hollstrom, US Patent No. 6,763,247 Bl, issued July 13, 2004
`
`(“Hollstrom,” Ex. 1013).
`
`F. Prior Art andAsserted Grounds
`
`Petitioner asserts that claims 1-22 are unpatentable. Pet. 4-5. Petitioner
`
`alleges the following grounds:
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
`
`
`Claims Challenged
`
`[_35U.S.C.§°
`
`21, 22
`
`
`
`
`
`
`21, 22
`
`-
`
`
`
`
`
`2, 6,9, 14, 21, 22
`
`
`Hiroshi, Takahashi
`
`Hiroishi, Takahashi, Ando
`
`Hiroishi, Takahashi, Nozaki__|
`
`Hiroishi, Takahashi, Nozaki, Ando
`
`
`
`
`Hollstrom, Takahashi, Ando
`
`fil. ANALYSIS
`
`A. Claim Construction
`
`This Petition wasfiled prior to November 13, 2018, and so we interpret
`
`claim terms of the challenged claims using the broadest reasonable construction in
`light ofthe specification ofthe 698 patent (“BRI”). 37 C.F.R. § 42.100(b) (2018);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (upholding the
`
`use ofbroadest 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 applies to all IPR, PGR and CBMpetitions filed on orafter the effective
`|
`. date.”).
`:
`
`Patent Owneridentifies “paired connection,
`
`99-66
`
`cryptographically
`
`authenticating,” “graphical user interface” (“GUI”), and “along with” as requiring
`
`5 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 applications to Application 12/333,303 [U.S. Pat. No. 8,392,591],
`filed on December 11, 2008, which is before the effective date of the relevant
`sections ofthe AIA. Ex. 1001, code (63). Thus, the groundsasserted are under the
`pre-AIA version of § 103.
`
`

`

`IPR2019-00127
`Patent 9,258,698 B2
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`construction. PO Resp. 13-17 (“paired connection”), 17-21 (“cryptographically
`
`authenticating”), 21-22 (“GUI”), 22-23 (“along with”); see also id. at 23
`
`(summarizing Patent Owner’s proposed claim constructions). Petitioner’s Reply
`
`agrees with the preliminary construction of “cryptographically authenticating”
`
`from the Institution Decision. Reply 7-8 (citing Inst. Dec. 12). With respectto the
`
`other terms Patent Ownerproposesfor construction,Petitioner relies on plain and
`
`ordinary meaning ofthe terms. Jd. at 3-9.
`1.
`“paired wireless connection”(claims 1, 2, 5—6, 8-9, 13-14, 17-20)
`
`The claim terms “paired wireless connection” (sometimes referred to here
`
`and in the papers as “paired,” “paired connection,” or “pairing”) and
`
`“cryptographically authenticating,” discussed immediately below in Section
`
`III.A.2, appear in the following “wherein” clause of claim 1:
`
`wherein establishing the short-range paired wireless connection
`comprises, the digital camera device cryptographically authenticating
`identity ofthe cellular phone.
`
`Ex. 1001, 11:62—-65 (emphasis added). The same language appears following
`
`“wherein” clauses in the other independent claims 5, 8, and 13. Forpurposes of
`institution in this case, we did not expressly construe the term “paired.” Inst. Dec.
`
`10.
`
`Patent Owner proposesthat the BRI of“paired connection”as
`
`bidirectional communications link between devices which provides
`encrypted data exchange between the devices, and the communication
`link can be disconnected and reconnected without having to repeat
`pairing or authentication.
`
`PO Resp. 16 (citing Ex. 200946-47) (emphasis omitted). Petitioner disagrees
`
`and argues “the term should receive its plain and ordinary meaning which, under
`
`the broadest reasonable interpretation, encompassesan association between two
`
`10
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`IPR2019-00127
`Patent 9,258,698 B2
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`devices that allows for two-way communication over a wireless connection.”
`
`Reply 6-7.
`
`Among other arguments based on the Specification, Patent Owner argues
`
`“Figure 1 of the ’698 patent illustrates a method of utilizing a digital data capture
`
`device 201 in conjunction with a physically separate Bluetooth enabled mobile
`
`device 202.” POResp. 13 (citing Ex. 1001, 3:34—41);
`
`id. at 14 (quoting Ex. 1001,
`
`3:60-4:25), see also id. (citing Ex. 1001, 4:1-3, 6:23-39 (further describing
`Bluetooth pairing)). Relying on the cited disclosures from columns 3 and 6 ofthe
`
`°698 patent and the Bluetooth specification, Patent Owner argues “pairing involves
`association and an exchange of credentials to fulfilling the agreement in addition to
`merely communicating back and forth.” Jd. at 14 (citing Ex. 2009 § 45), id. at 15-
`
`16 (citing Ex. 2018,° 80, 135; Ex. 2009 § 46).
`
`With respect to the “association” of Bluetooth pairing, Patent Ownercites to
`
`the Bluetooth specification’s (Ex. 2018) description of “Association Models.” PO
`
`Resp. 15-16 (citing Ex. 2018, 80, 135 (§§ 5.4, 5.4.5, Fig. 1)). Patent Owner
`
`contendsto a person of ordinary skill, “under BRI, pairing is the steps taken which
`
`result in a paired connection.” Jd. at 16 (citing Ex. 2009 4] 46—47) (emphasis
`
`omitted). Further, according to Patent Owner, “a paired connection must be
`
`distinguished from mere authentication and from other methods of
`
`communications that involve exchanges of credentials but not pairing.” Jd. at 17
`
`(citing Ex. 2009 { 48) (emphasis omitted).
`
`Petitioner first argues Patent Owner’s proposalis too narrow in requiring
`
`“encrypted data exchange” and the ability of a pairing once madeto “be
`
`6 Bluetooth Specification, Version 2.1 (Bluetooth Special Interest Group (“SIG”)
`2007). Exhibit 2006 is a duplicate of Exhibit 2018. Petitioner’s evidence includes
`the Specification of the Bluetooth System, Version 1.1 (Bluetooth SIG 2001), Ex.
`1018.
`
`1]
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`IPR2019-00127
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`disconnected and reconnected without having to repeat pairing or authentication.”
`
`Reply 3-4 (citing Ex. 1001, 11:54-12:26 (claim 1); Ex. 1040, 27:2-10; Ex. 1041,
`
`58:18-24, 99:5-17). Second,Petitioner argues there is no definition of “paired
`connection”noris there a disavowalof a broader “understanding ofthe term.” Jd.
`at 4 (citing Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`
`Cir. 2014)). Petitioner notes that the claims and Specification are notlimited to
`
`Bluetooth.
`
`/d. (citing Ex. 1001, 9:45-47 (“The method and system disclosed
`
`herein is realized with, but not limited to Bluetooth communication protocol.”),
`
`claim 19). In addition, accordingto Petitioner, the Specification’s description of
`
`Bluetooth “says nothing about encrypted data exchange or disconnecting and
`
`reconnecting.” Jd. at 4—5 (citing Ex. 1001, 3:60-4:25). Third, Petitioner argues
`
`that Patent Owner improperly relies on extrinsic evidence that contradicts the
`
`intrinsic evidence—namely Dr. Foley’s declaration, which relies exclusively on the
`
`Bluetooth specification, even though the Specification and claims expressly state
`
`that pairing is not limited to Bluetooth.
`
`/d. at 5.
`
`Weagree with Petitioner’s arguments and reasoning and decline to adopt
`Patent Owner’s construction. As further explained below, wealso need not adopt
`any construction that Patent Owneralleges Petitioner makesin its Reply. See
`
`Reply 7; see also Section III.K.2 below.
`
`Patent Owner’s construction requires both “encrypted data exchange” and
`
`that “the communication link can be disconnected and reconnected without having
`
`to repeat pairing or authentication.” Neither the claims nor the Specification
`
`mention “encrypted data exchange,” or disconnection and reconnection, or
`
`equivalent language,
`
`in the contextofpairing. Patent Ownercites to none. The
`
`Specification mentions “encryption” once, explaining that “various security,
`
`encryption and compression techniques” can be used “to enhance the overall user
`
`experience.” Ex. 1001, 10:60-62 (emphasis added). But that discussion does not
`
`12
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`relate to “paired connection” but rather describes “algorithms... [that] may be
`
`implemented in a computer readable medium.” /d. at 10:16—19.
`
`The 698 patent also expressly states that the invention is not limited toa
`
`Bluetooth embodiment. Ex. 1001, 9:45-47 (“The method and system disclosed
`
`herein is realized with, but not limited to Bluetooth communication protocol.”).
`
`Moreover, dependent claims 17 and 18 recite that “the short-range paired wireless
`
`connection is one of a Bluetooth paired wireless connection, a Wi-Fi paired
`
`wireless connection, and other personal area wireless networking technologies that
`
`use pairing.” Ex. 1001, 16:10—15.
`
`Patent Owner’s inclusion of “encrypted data exchange” is based on the
`
`Specification’s descriptionof initiating the Bluetooth pairing process by
`
`exchanging “a passkey... between the BT communication device 201a and the
`
`mobile device 202.” PO Resp. 13; see also Ex. 1001, 4:3—7 (describinginitiating
`
`the “pairing process” by exchanging a passkey). Patent Owner contendsthat
`
`“encrypted data exchange” must be “provided for” and that a person of ordinary
`
`skill would have understood that pairing “provides for encryption.” Tr. 43:1-
`
`44:12; see Sur-reply 6 (“Cellspin’s construction states encryption is providedfor,
`
`but not required.”) (emphasis omitted).
`
`Patent Owner argues the Specification supportsits construction. Sur-reply
`
`6. Specifically, Patent Owner argues a person of ordinary skill “reading the
`
`specification would already understandthat pairing providesfor encrypted data
`
`exchange and that a touchstone of paired connectionsis that they are ‘disconnected
`
`and reconnected without having to repeat pairing or authentication.’” Jd. (quoting
`
`Ex. 2026 4 50).
`
`Patent Owner doesnot persuasively explain how Dr. Foley’s testimony,
`
`which in turn is based on the Bluetooth specification, supports Patent Owner’s
`
`proposed construction of “paired wireless connection.” As explained above, the
`
`13
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`Patent 9,258,698 B2
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`Specification’s discussion of Bluetooth falls far short of forming any basis for
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`incorporating features of Bluetooth into the construction of “paired connection.”
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`The independent claims broadly recite “paired wireless connection” and are not
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`limited to Bluetooth pairing.
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`The cited paragraph of Dr. Foley’s Sur-reply Declaration includes a
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`statement that the Specification would “enable a [person of ordinary skill] to make
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`and use the invention.” See Ex. 2026 450. Enablement is not at issue. Whatis at
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`issue is the extent to which the Specification describes pairing as requiring
`“encrypted data exchange” and disconnecting and reconnecting. Dr. Foley’s |
`unsupported conclusionthat Petitioner is “incorrect” in arguing no such support is
`presentis not persuasive. Id.
`Patent Ownerrelies on the Foley Declaration as support for the
`disconnection and reconnection part of its proposal. See PO Resp. 16 (citing Ex.
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`2009 J] 46. 47). The cited paragraphs describe features of Bluetooth’s
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`“Association Model,” which includesillustrations of “Secure Simple Pairing.” Ex.
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`2009 { 46 (citing Ex. 2018, 80, 135, Fig. 5.1). In its Sur-reply, Patent Owner
`relies on Dr. Madisetti’s citation to the Bluetooth specification as purported further
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`support. Sur-reply 7 (citing Ex. 2026 4 54); Ex. 2026 4 54 (citing Madisetti Reply
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`Declaration and Bluetooth specification); Ex. 1043 4 5 (citing Ex. 10187 { 18).
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`That a passkeyis disclosed aspart ofinitiating a Bluetooth pairing process
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`in the Specification does not mean that aspect of Bluetooth should be incorporated
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`into the construction of “paired connection” to support “encrypted data exchange”
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`in Patent Owner’s proposed construction, particularly when the Specification
`explicitly states that the invention is not limited to Bluetooth. See SuperGuide
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[I]t is
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`7 Specification of the Bluetooth System, Version 1.1 (Feb. 22, 2001).
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`important not to import into a claim limitations that are not a part of the claim.”’).
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`Similarly,
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`that Bluetooth providesthat “a paired connection must be capable of
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`being disconnected”is part of the Bluetooth specification and not the claims or the
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`Specification. See Ex. 2026 9 54. For both proposed additions, “encryption” and
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`“reconnection,” an improperincorporation ofthe Bluetooth specification is
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`required to support Patent Owner’s position. The intrinsic evidence of the claim
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`language and Specification does not provide that support.
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`Asdiscussed above,the intrinsic evidence does not support Patent Owner’s
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`proposedconstruction. The extrinsic evidence cited by Patent Ownerincludes the
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`Bluetooth specification and the Foley Declaration and Reply Declaration. See PO
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`Resp. 15-17 (citing Ex. 2006/2018, 35, 80, 133, 135; Ex. 200946-48); Sur-
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`reply 4-8 (citing Ex. 1018, 150; Ex. 2006, 35, 133, Fig. 5.1; Ex. 2026 412, 31—
`38, 40-42, 44-46, 49-50, 54-56, 65-70; Ex. 2031,8 13-14). The extrinsic
`evidence of the Bluetooth specification (Exhibits 2006/2018, 2031) showsthat
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`Bluetooth pairing has certain features, but the intrinsic evidence supports our
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`conclusionthat the invention is not limited to Bluetooth and need notincludein the
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`pairing process the particular functionality of Bluetooth identified by Patent
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`Owner. The Foley Declaration also cites to the Bluetooth specification. See Ex.
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`2009 { 46 (citing Ex. 2018, 80, 135, Fig. 5.1). Only oneofthe citationsto the
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`Foley Sur-reply Declaration relates to claim construction andit has been discussed
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`above. See Ex. 2026 FJ 49-50.?
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`Dr. Foley’s testimony that other types of paired connections include
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`encryption and store reconnection information also is not persuasive. See Ex. 2026
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`8 Bluetooth Specification, File Transfer Protocol (Bluetooth SIG © 2001-2015).
`9 The other cited paragraphs of the Foley Reply Declaration: deny contentions
`madein Petitioner’s Reply; explain Foley Deposition testimony (Ex. 2026 4 12,
`44-46, 54-56, 65-70); discuss Zigbee Forum and Wi-Fi Alliance as other
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`{{{ 31-37. For example, the ZigBee standard relied on by Patent Owner
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`undermines Patent Owner’s argument. ZigBee states that “[p]airing is the process
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`by which devices establish bidirectional links with other devices.” Ex. 2003, 6.!°
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`ZigBee further states: “If a pairing is successful and if the originator and recipient
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`both support security, a key exchange procedureis then attempted. The key
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`exchange establishes a link key that is used to encrypt messages sent between the
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`originator and recipient.” Ex. 2003, 6. Thus, according to ZigBee, pairing occurs
`first and then, if the devices support security, they establish a link key. Thelink
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`key establishment to provide encryption occurs after pairing. Therefore, ZigBee
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`does not support Patent Owner’s contention that pairing itself includes encryption.
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`Furthermore,it is important to note that the dispute here is over the meaning
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`of the claim term “paired wireless connection.” Patent Owner argues that “a paired
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`connection may be encrypted or unencrypted and even change from encrypted to
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`unencrypted during a connection.” Sur-reply 3. Thus, Patent Owner
`acknowledges that an unencrypted paired connectionis still a paired connection.
`Whether additional steps are taken to “provide[] encrypted data exchange” under
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`Patent Owner’s proposed construction (PO Resp. 16) does not change the fact that
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`an unencrypted paired connectionsatisfies the requirement of a paired connection.
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`The Specification describes an embodiment in which a BT communication
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`device on a “digital data capture device” (such as a digital camera) and a “mobile
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`device” (such as a cellular phone) are “paired.” Ex. 1001, 3:60-63. The
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`Specification further explains—in connection with that embodiment—that
`99
`665.
`“involves establishing a connection between two. .. devices that
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`“pairing”
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`protocols for pairing which also reconnect without repeating the pairing process
`(Ex. 2026 J 31-37); rebut Petitioner’s alleged “new construction”for pairing (Ex.
`2026 YJ 38, 40-42).
`10 Werefer to the exhibit page numbers added by Patent Owner.
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`mutually agree to communicate with each other.” Jd. at 3:63-67 (in the context of
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`Bluetooth); see also Tr. 11:16—23 (Petitioner argument for plain and ordinary
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`meaning of “paired”citing to same). This description does not include a
`requirement of encrypted data exchange or disconnection and reconnection.
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`Patent Owner’s reliance on extrinsic evidence in the form of the Bluetooth
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`specification, and expert testimony whichrelies on the Bluetooth specification,
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`improperly incorporates Bluetooth features, even though the Specification and
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`claims showthat the invention is not limited to Bluetooth. See Ex. 1001, 9:45—47,
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`16:10-15. Accordingly, we determine that “paired wireless connection”is not
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`limited in the manner proposed by Patent Owner; rather, the phrase means “a
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`wireless connection between two devices that mutually agree to communicate with
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`each other.”
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`2.
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`“cryptographically authenticating”(claims 1, 5, 8, and 13)
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`The claim term “cryptographically authenticating” is sometimes referred to
`99
`66
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`here and bythe parties as “cryptographic authentication,
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`cryptographically
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`authenticated,” or “authentication.” Patent Owner argues that “cryptographically
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`authenticating” means “verified as a legitimate transmission, user, or system
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`including by use of encryption and decryption involving an algorithm.” PO Resp.
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`21, 23; see alsoid. at 17-21 (arguing against our preliminary construction)(citing
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`Ex. 2009 9§ 48, 50-56, 58-62), 23. Patent Owner, however, does not argue any
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`distinction of the challenged claims overthe prior art based on its proposed
`construction. See PO Resp. 33-38. Rather, Patent Owner acknowledgesthat
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`cryptographic authentication was known but argues against Petitioner’s motivation
`to modify Hiroishi and Hollstrom to include it. See, e.g., PO Resp. 37 (“[T]he
`Bluetooth standard does support authentication and encryption as optional features
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`in the core specification.”). Thus, we find it unnecessary to construe the term
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`“cryptographically authenticating” to address the patentability issues before us.
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`See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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`1013, 1017 (Fed. Cir. 2017) (““[W]e need only construe terms‘that are in
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`controversy, and only to the extent necessary to resolve the controversy’... .”
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,200 F.3d 795, 803 (Fed. Cir.
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`1999))).
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`3. “along with’ (claims1, 5, 8, 13)
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`Claim 1 recites “wherein the cellular phoneis configured to use HTTP to
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`upload the received new-media file along with user information to a user media
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`publishing website.” Ex. 1001, 12:19-21 (emphasis added). Claims 5, 8, and 13
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`have similar limitations. Patent Owner proposesthat “along with” be construed as
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`meaning “in addition to (something or someone).” PO Resp. 22-23 (citing Ex.
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`2009 { 67 (citing Ex. 2