Trials@uspto.gov
`571-272-7822
`
`Paper No. 59
`Date: April 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PANASONIC CORPORATION AND
`PANASONIC CORPORATION OF NORTH AMERICA,
`Petitioner,
`
`V.
`
`CELLSPIN SOFT,INC.,
`Patent Owner.
`
`IPR2019-00131!
`Patent 9,258,698 B2
`
`Before GREGGI. ANDERSON, DANIEL J. GALLIGAN,and
`STACY B. MARGOLIES, Administrative PatentJudges.
`
`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. (’1108
`Petitioners) were joined to this proceeding. See Paper 29, 30 (ordermg that
`“the ’1108 Petitioners are joined with IPR2019-00131”).
`
`
`571-272-7822
`
`Paper No. 59
`Date: April 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PANASONIC CORPORATION AND
`PANASONIC CORPORATION OF NORTH AMERICA,
`Petitioner,
`
`V.
`
`CELLSPIN SOFT,INC.,
`Patent Owner.
`
`IPR2019-00131!
`Patent 9,258,698 B2
`
`Before GREGGI. ANDERSON, DANIEL J. GALLIGAN,and
`STACY B. MARGOLIES, Administrative PatentJudges.
`
`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. (’1108
`Petitioners) were joined to this proceeding. See Paper 29, 30 (ordermg that
`“the ’1108 Petitioners are joined with IPR2019-00131”).
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`I.
`
`INTRODUCTION
`
`Panasonic Corporation and Panasonic Corporation ofNorth America
`
`(collectively “Petitioner”) filed a Petition (Paper1, “Pet.’”) pursuant to
`
`35 U.S.C. §§ 311-319 to institute an inter partes review of claims 1, 3-5, 7,
`
`8, 10-13, and 15—20 (“challenged claims’) ofU.S. Patent No. 9,258,698
`
`(“698 patent”), which was filed on November5, 2014.2 Ex. 1003, code
`
`(22). Cellspin Soft, Inc. (“Patent Owner’) filed a Preliminary Response
`
`(Paper 7, “Prelim. Resp.”). Weinstituted an inter partes review ofall
`
`challenged claims (Paper11, “Inst. Dec.”).3
`
`After institution, Patent Ownerfiled a Patent Owner Response (Paper
`
`19, “PO Resp.”), Petitioner filed a Reply (Paper 23, “Reply’), and Patent
`Ownerfiled a Sur-reply (Paper 30, “Sur-Reply”). The Petition is supported
`_ by the Declaration of Dr. John Strawn (Ex. 1001, “Strawn Declaration”).
`
`The Reply is supported by the Second Declaration ofDr. John Strawn (Ex.
`
`1024, “Strawn Reply Declaration’). The deposition of Dr. Strawn was taken
`by Patent Ownerafter the Strawn Reply Declaration was filed (Ex. 2030).
`The Responseis supported by the Declaration ofDr. 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
`
`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 ofthe prior art references were published prior to
`December 28, 2007.
`3 Canon U.S.A., Inc. also filed a petition for inter partes review of some of
`the claims of the ’698 patent in Canon U.S.A., Inc. v. Cellspin Soft, Inc.,
`IPR2019-00127 (“’127 IPR”). The ’127 IPR alleges different grounds of
`unpatentability.
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`Reply (Ex. 2026, “Foley Sur-reply Declaration”). The deposition ofDr.
`
`Foley was taken by Petitioner after the Foley Declaration was filed (Ex.
`
`1023). An oral hearing was held on January 28, 2020, and a transcript made
`
`of record (Paper 58, “Tr.”).
`
`Weauthorized each party to file a motion to strike (Paper 40,
`
`“Order’). Pursuant to our Order, Petitioner filed a Motion to Strike (Paper
`
`44, “Pet. Mot.”), to which Patent Ownerfiled a Response (Paper48, “PO
`
`Opp.”). Also as authorized in the Order, Patent Ownerfiled its separate
`
`Motion to Strike and, Alternatively, Exclude Improper Reply and Reply
`
`Evidence (Paper 45, “PO Mot.), to which Petitioner filed an Opposition
`
`(Paper 46, “Pet. Opp.”).
`
`We havejurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.§ 42.73.
`
`Forthe reasonsdiscussed below,Petitioner has shown by a preponderance
`
`of the evidencethat claims 1, 3—5, 7, 8, 10-13, and 15—20 of the ’698 patent
`
`are unpatentable.
`
`Il. BACKGROUND
`
`A. Related Proceedings
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected bya
`
`decision in this proceeding. Pet. 3—5; Paper 5, 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 35 U.S.C. §
`
`101. See Cellspin Soft, Inc. v. Fitbit, Inc.,927 F.3d 1306, 1309 (Fed. Cir.
`
`2019); see also Ex. 2007 (Order Re: Omnibus Motion to Dismiss; Motion
`
`for Judgment on the Pleadings, dated April 3, 2018)). On June 25, 2019, the
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`Federal Circuit vacated the district court’s dismissal and remanded for
`
`further proceedings. Cellspin Soft, 927 F.3d at 1309, 1320 (Fed. Cir. 2019).
`
`The ’698 patent is also challenged in the ?127 IPR. Petitioners in
`GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. v. Cellspin
`
`Soft, Inc., IPR2019-01107 (“’ 1107 IPR”) were joined as parties to the ’127
`
`IPR. See ’127 IPR, Paper 27 (joining °1107 petitioners to the ’127 IPR).
`
`B. Real Parties in Interest
`
`Panasonic Corporation of North America and Panasonic Corporation
`
`are alleged to be real parties-in-interest. Pet. 2. GoPro, Inc., Garmin Int’],
`
`Inc., Garmin USA,Inc., Garmin Switzerland GmbHarealso identified as
`
`real parties in interest.
`
`IPR2019-01108, Paper 1, 3. Patent Owner Cellspin
`
`Soft, Inc. alleges it is the real-party-in-interest. Paper 5, 2.
`
`C. Technology and the ’698 Patent
`
`The ’698 patent is directed to “distribution of multimedia content.”
`
`Ex. 1003, 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.
`
`1. Technology
`
`According to the ’698 patent, in the priorart,
`
`the user would capture an image using a digital camera or a video
`camera, store the image on a memory device of the digital
`camera, and transfer the image to a computing device such as a
`personal computer (PC). In 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 would then manually upload the
`image onto a website which takes time and maybe inconvenient
`for the user.
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`Ex. 1003, 1:46—55.
`
`2. The 698 Patent (Ex. 1003)
`
`The ’698 patent describesa digital data capture device, which may be
`
`“a digital camera, a video camera, digital modular camera systems, or other
`
`digital data capturing systems.” Ex. 1003, 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 patent is reproduced below.
`
`BLUETOOTH ENABLED MOBILE DEVICE
`CLIENT APPLICATION
`2033
`
`INTERFACE
`GRAPHICAL USER
`
`aLUEeroorn
`ASSOCIATION
`1
`SSOCATI
`MODULE
`
`NG
`
`203
`
`de
`
`2037
`
`i
`
`:
`:
`i
`
`em
`
`2
`
`BLUETOOT
`,
`nH
`:
`COMMUNICATION DEVICE
`BLUETOOTH
`20b
`ASSOCIATION
`PROTOCOL
`MODULE
`
`2t1e
`
`DATA TRANSFER
`PROTOCOL
`
`MODULE
`
`Figure 2 “illustrates a system forutilizing a digital data capture device in
`
`conjunction with a Bluetooth enabled mobile device.” Ex. 1003, 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 agree to communicate with each
`
`other.” Jd. at 3:63-65. A communication may be authenticated
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`cryptographically using a “common password known asa 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. Jd. 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
`
`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. The transfer protocols include “one or a combination of BT
`
`profile protocols such as the object exchange (OBEX) protocols,” suchas
`
`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 may set preferences regarding timing ofthe publication of
`
`the captured data and the destination website. Ex. 1003, 5:23-38. “The
`
`client application 203 on the mobile device 202 then automatically publishes
`
`107 the transferred data and multimedia content on one or more websites.”
`
`Id. at 5:39-41.
`
`D.
`
`Illustrative Claim
`
`Claims 1 (method), 5 (device), 8 (system), and 13 (computer readable-
`
`medium) are independent claims.* Claims 3 and 4 depend from claim 1.
`
`4 Petitioner provides an “APPENDIX: CLAIM LISTING (37 C.F.R.§
`42.24)” Pet. 76-85. The Appendix provides a table organizing “Common
`Claim Limitations” for independent claims 1, 5, 8, and 13. Jd. at 76-83; see
`also id. at 24-25 (describing the table andits use in the Petition). The
`
`6
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`Claims 7, 17, and 19 depend from claim 5. Claims 10-12 and 20 depend
`
`from claim 8. Claims 15, 16, and 18 depend from claim 13.
`
`Claim 1 is reproduced belowas illustrative.
`
`1. A machine-implemented method of media__transfer,
`comprising:
`
`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:
`
`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;
`
`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;
`.
`
`creating a new-media file using the acquired new-media;
`
`storing the created new-media file in a first non-volatile
`memory ofthe digital camera device;
`
`receiving a data transfer request initiated by a mobile
`software application on the cellular phone, over the
`established
`short-range
`paired wireless
`connection,
`
`Jd. at 83-85.
`Appendix sets out the challenged dependentclaims in full.
`Patent Owner adopts the CommonClaim Limitation format ofthe Petition.
`See, e.g., PO Resp.32 (‘Limitation C’ — No paired Connection”). We use
`Petitioner’s commonlimitations approach to analyzing the independent
`claims.
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`wherein the data transfer requestis for the new-mediafile,
`and wherein the new-media file was created in the digital
`camera device before receiving the data transfer request;
`and
`
`transferring the new-media file to the cellular phone, over
`the established short-range paired wireless connection,
`wherein the cellular phone is configured to receive the
`new-media file, wherein the cellular phoneis configured
`to store the received new-media file in a non-volatile
`memory device of the cellular phone,
`
`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
`
`wherein the cellular phone is configured to provide a
`graphical user interface (GUI)
`in the cellular phone,
`wherein the graphical user interface (GUJ) is for the
`received new-media file and to delete the created new-
`mediafile.
`
`Ex. 1003, 11:54-12:26; see Pet. 76-83 (claim 1 and commonlimitations
`
`with claims 5, 8, and 13).
`
`E. Asserted Ground of Unpatentability
`
`Petitioner challenges claims 1, 3—5, 7, 8, 10-13, and 15-20 ofthe
`
`°698 patent as unpatentable. Pet. 8—9, 26—73.
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`
`Claims Challenged|35 U.S.C. §°
`1, 3-5, 7, 810-13,
`103
`Mashita,° Onishi,” Hiraishis
`
`15-20
`
`(
`
`TI.
`
`ANALYSIS
`
`A. Claim Construction
`
`This Petition was filed prior to November 13, 2018, and so we
`
`interpret claim terms of the challenged claims using the broadestreasonable
`constructionin light ofthe specification ofthe ’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 applies to all PR, PGR
`and CBM petitions filed on orafter the effective date.”).
`
`-
`
`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 December11, 2008, which is
`’ before the effective date ofthe relevant sections of the AIA. Ex. 1001, code
`(63). Thus, the groundsasserted are under the pre-AJA version of § 103.
`6 Mashita, JP 2003-51772, published February 21, 2003 (Ex. 1005 (original
`Japanese language version); Ex. 1006 (certified English language
`translation)). We reference the English translation, Exhibit 1006.
`7 Onishi, JP 2003-299014, published October 17, 2003 (“‘Onishi,” Ex. 1007
`(original Japanese language version); Ex. 1008 (certified English language
`translation)). We reference the English translation, Exhibit 1008.
`8 Hiraishi, JP 2004-102810,
`laid open April 2, 2004 (“Hiraishi,” Ex. 1009
`(original Japanese language version); Ex. 1010 (certified English language
`translation)). We reference the English translation, Exhibit 1010.
`
`9
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`Petitioner proposes constructions for the following terms, which
`
`appear in each ofthe challenged independentclaims (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’); “new-media;” and “graphical user interface (GUI).” Pet.
`
`10-14. Patent Owner proposes constructionsfor “paired connection,”
`
`“cryptographically authenticated,”® and “graphical user interface.” PO
`
`Resp. 20-21. In the Institution Decision we construed only
`
`“cryptographically authenticating.” Inst. Dec. 9.
`
`1.
`
`“paired wireless connection”
`
`The claim terms “paired wireless connection” and “cryptographically
`
`authenticating,” discussed immediately below in Section II.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 of the cellular phone.
`
`Ex. 1003, 11:62-65 (emphasis added). The same language appears
`
`following “wherein” clauses in the other independentclaims5, 8, and 13.
`
`The claim term “paired wireless connection” is sometimes referred to
`99 66
`
`in the papers, and in this Decision, as “paired connection,”
`
`“paired,” or
`
`“pairing.” For purposesofinstitution in this case, we did not expressly
`
`construe the term “‘paired wireless connection.” Inst. Dec. 9-13.
`
`Patent Owner proposesthat the BRI of “paired connection”as
`
`9 The claim term is “cryptographically authenticating.” Ex. 1003, 11:64
`(claim 1); see also id. at 12:56—57, 13:49-50, 14:65 (claims 5, 8, 13)
`(“cryptographically authenticating”).
`
`10
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`link between devices which
`communications
`bidirectional
`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. 14 (citing Ex. 2009 J] 46) (emphasis omitted).
`
`Petitioner disagrees with the inclusion of“provides encrypted data
`
`exchange” and that the connection “can be disconnected and reconnected
`
`without having to repeat pairing and authentication.” Reply 3. Petitioner
`
`doesnotinclude a proposal, alleging “claim construction...
`is irrelevant
`because the prior art still satisfies Cellspin’s (incorrect) construction.” Jd.
`Amongother arguments based on the Specification, Patent Owner
`
`argues “Figure 1 ofthe ’698 patent illustrates a methodofutilizing a digital
`
`data capture device 201 in conjunction with a physically separate Bluetooth
`
`enabled mobile device 202.” PO Resp. 11 (citing Ex. 1003, 3:34~-41); id. at
`
`11-12 (quoting Ex. 1003, 3:60-4:25), see also id. at 12 (citing Ex. 1003,
`
`4:1—3, 6:23-38 (further describing Bluetooth pairing)). Relying on the
`
`disclosures from columns 3 and 6 of the ’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 12 (citing Ex. 2009 4 45), id. at 13-
`
`16 (citing Ex. 2018, 80, 135 (page numbersare to the footer of the exhibit);
`Ex. 2009 {| 46).
`With respectto the “association” of Bluetooth pairing, Patent Owner
`
`cites to the Bluetooth specification (Ex. 2018!°) description of “Association
`
`10 Bluetooth Specification, Version 2.1 (Bluetooth Special Interest Group
`(SIG) 2007). Petitioner’s evidence includes excerpts from Specification of
`
`11
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
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`Models.” PO Resp. 14~15 (citing Ex. 2018, 80, 135 (§§ 5.4, 5.4.5, Fig. 1)).
`
`Patent Owner contendsto a person ofordinary skill, “under broadest
`
`reasonable interpretation, pairing is the steps taken which result in a paired
`
`connection.” Jd. at 14-15 (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.” Id.
`
`at 15 (citing Ex. 2009 § 47) (emphasis omitted).
`
`Petitioner argues Patent Owner’s proposalrequiring “encrypted data
`
`exchange”and the ability ofa pairing once madeto “be disconnected and
`
`reconnected without having to repeat pairing or authentication” are
`
`unclaimed limitations. Reply 3. Accordingto Petitioner, the claimed
`
`connection is between two devices and none ofthe independent claims
`
`require “encrypted communications.” Jd. Petitioner cites the Bluetooth
`
`specifications that “makeclear that paired connections do not necessarily
`
`require encrypted data exchange.” Jd. (citing Ex. 2018, 414, 416; Ex. 1024
`
`{ 22); see also id. at 4-5 (regarding “encryption” in the context of
`
`construction of “cryptographically authenticating’’).
`
`Petitioner also argues the prior art teaches “paired” even under Patent
`
`Owner’s construction. Reply 3—4. Petitioner notes that Patent Owner
`
`contendsits “constructionis intended to encompassatleast a paired
`
`Bluetooth connection.” Jd. (citing PO Resp. 14; Ex. 1023, 53:13—-19).
`
`Weagree with Petitioner’s arguments and reasoning and decline to
`
`adopt Patent Owner’s construction. Patent Owner’s construction requires
`
`the Bluetooth System, Covered Core Package version 2.0 + EDR Current
`Master TOC (Bluetooth SIG 2004), Ex. 1017.
`
`12
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`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 context of pairmg. 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. 1003, 10:60-62. But that discussion doesnotrelate to
`
`“paired connection” but rather describes “algorithms. . . [that] may be
`implemented in a computer readable medium.” Jd. at 10:16—-19.
`The ’698 patent also expressly states that the invention is notlimited
`
`to a Bluetooth embodiment. Ex. 1003, 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. 1003, 16:10—
`
`15.
`
`Patent Owner’s inclusion of “encrypted data exchange” is based on
`
`the Specification’s description ofinitiating 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. 1003, 4:3-7 (describing
`
`initiating the “pairing process” by exchanging a passkey). Patent Owner
`
`contendsthat “encrypted [] exchange” means “‘exchanging credentials and
`
`then we’re going to compare our passkeys.” Tr. 78:8—79:9.
`
`That a passkeyis disclosedas part of initiating a “paired connection”
`
`in the Specification does not mean that aspect of Bluetooth can be
`
`13
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`incorporated into the construction of “paired connection” to support
`
`“encrypted data exchange” 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 important not to import into a claim
`limitations that are not a part ofthe claim.”).
`
`The Foley Sur-Reply Declaration. cites to the Bluetooth specification,
`
`not the claims or the Specification, for support that “pairing will only be
`
`completedif that last step of storing the link key for future connectionsis
`
`performed.” See Ex. 2026 4 44 (referring to Ex. 2006,!! 696, Fig. 3.10). But
`
`this testimony relates to Bluetooth pairing, to which the claims are not
`
`limited.
`
`Patent Owner contendsits construction of “a paired connection
`
`provides for encrypted data exchange, not that it is required.” Sur-Reply 3
`
`(citing Ex. 2026 ¥ 13). Patent Owner addsthat other wireless connection
`
`technologies, like WiFI Alliance and Zibgee, also “adopted the concept of
`
`pairing as defined by Bluetooth SIG.” Jd. at 3—4 (citing Ex. 2026 4 14); see
`
`also Ex. 2003, !2 6 (Zigbee disclosing the originator and recipient “store
`
`information about the other node. .. in its pairing table”). Patent Owner
`
`also notes that Petitioner’s EOS Utility Software stores pairing information
`
`11 Specification ofthe Bluetooth System, Covered Core Package version 2.1
`+EDR (July, 2007).
`12 Silicon Labs, UG103.10: RF4CA Fundamentals, Rev. 0.2 (Undated).
`
`14
`
`
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`IPR2019-00131
`Patent 9,258,698 B2
`
`to “avoid having to reauthenticate/re-pair.” Jd. at 4 (citing Ex. 2027,'3 4;
`
`2028, 14 1; Ex. 2026 ¥ 14).
`
`Patent Ownerdoesnotpersuasively explain how Dr. Foley’s
`
`testimony, which in turn is based on the Bluetooth specification, supports
`
`Patent Owner’s proposedconstruction of “paired wireless connection.” As
`
`explained above, the Specification’s discussion of Bluetooth falls far short of
`forming any basis for incorporating features ofBluetooth into the
`construction of “paired connection.” The independent claims broadly recite
`
`“naired wireless connection” and are notlimited to Bluetooth pairing.
`Dr. Foley’s testimony that other types ofpaired connections include
`encryption and store reconnection information also is not persuasive. See
`
`Ex. 2026 Ff 13, 14; Sur-Reply 3 (“The concept ofa paired connection, as
`
`established by the Bluetooth became known and adopted bycertain other
`
`industry organizations creating wireless technology for device connections,
`
`such as WiFi Alliance and Zigbee Forum.”). For example, the ZigBee
`
`standard relied on by Patent Owner undermines Patent Owner’s argument.
`
`ZigBee states that “[p]airing is the process by which devicesestablish
`
`bidirectional links with other devices.” Ex. 2003, 6.15 ZigBee further states:
`
`“Ifa pairing is successfuland if the originator and recipient both support
`
`security, a key exchange procedureis then attempted. The key exchange
`establishes a link key that is used to encryptmessages sent between the
`originator and recipient.” Jd. Thus, according to ZigBee, pairing occurs
`
`13 https //cpn.canon-
`europe.com/content/product/canon _software/inside eos utility
`(downloaded November 23, 2019).
`14 https//www.p4pictures.com/2014/08/wifi-pairing-eos-camera-utility-3/
`(downloaded November 23, 2019).
`15 We refer to the exhibit page numbers added by Patent Owner.
`
`3 0.do
`
`15
`
`
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`IPR2019-00131
`Patent 9,258,698 B2
`
`first and then, if the devices supportsecurity, they establish a link key. The
`
`link key establishment to provide encryption occursafter pairing. Therefore,
`
`ZigBee does not support Patent Owner’s contention that pairing itself
`
`includes encryption.
`
`Furthermore, it is important to note that the dispute here is over the
`
`meaning of the claim term “paired wireless connection.” Patent Owner
`
`argues that “a paired connectionprovides for encrypted data exchange” but
`
`that encrypted data exchange is not required. PO Sur-reply 3. Thus, Patent
`
`Owner acknowledges that an unencrypted paired connectionis still a paired
`
`connection. Whether or not additional steps are taken to “provide[]
`
`encrypted data exchange” under Patent Owner’s proposed construction (PO
`Resp. 14) does not change the fact that an unencrypted paired connection
`satisfies the requirement ofa paired connection.
`
`The Specification describes an embodiment in which a BT
`
`communication device on a “digital data capture device” (suchas a digital
`
`camera) and a “mobile device” (such as a cellular phone) are “paired.” Ex.
`
`1001, 3:60-63. The Specification further explains—in connection with that
`
`embodiment—that“pairing” “involves establishing a connection between
`
`two BT devices that mutually agree to communicate with each other.” Jd. at
`
`3:63-67. This description does not include a requirement of encrypted data
`
`exchange or disconnection and reconnection.
`
`Patent Owner’s reliance on extrinsic evidence in the form of the
`
`Bluetooth specification, and expert testimony which relies on the Bluetooth
`
`specification, improperly incorporates Bluetooth features, even though the
`
`Specification and claims show that the invention is not limited to Bluetooth.
`
`See Ex. 1003, 9:45-47, 16:10—-15. Patent Owneralso doesnotpersuasively
`
`show that the common and ordinary understanding to one of ordinary skill in
`
`16
`
`
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`IPR2019-00131
`Patent 9,258,698 B2
`
`the art of the term “paired wireless connection”at the time ofthe invention
`
`required both encrypted data exchange and that the communication lnk can
`
`be disconnected and reconnected without having to repeat pairing or
`
`authentication. Accordingly, we determine that “paired wireless
`
`connection”is not limited in the manner proposed by Patent Owner;rather,
`
`the phrase means “a wireless connection between two devices that mutually
`
`agree to communicate with each other.”
`
`2.
`
`“cryptographically authenticating”
`
`The claim term “cryptographically authenticating” is sometimes
`
`referred here and by the parties as “cryptographic authentication,”
`
`“cryptographically authenticated,” or “authentication.” In the Institution
`
`Decision wepreliminarily determined “cryptographically authenticating” to
`
`mean “authenticating the identity ofthe cellular phone using some form of
`
`security or encryption, including by use of a shared passkey onthe digital
`
`camera device and the cellular phone.” Inst. Dec. 13. Petitioner agrees with
`
`the construction from the Institution Decision. Reply 4. Patent Owner
`
`argues that the broadest reasonable interpretation of “cryptographically
`
`authenticated” is “verified as a legitimate transmission, user, or system
`
`including by use of encryption and decryption involving an algorithm.” PO
`
`Resp. 19 (citing Ex. 2009 J 63) (emphasis omitted). Patent Owner’s
`
`proposed construction is based on its proposed constructionsfor
`
`“cryptographic”and “authenticated.” Jd. at 16-19. Asto thelatter, Patent
`
`Ownerargues that “authenticated” means “using a process ofverifying the
`
`legitimacy of a transmission, user, or system.” Jd. at 19 (emphasis omitted)
`
`(citing Ex. 2009 4 62). As to the former, Patent Owner arguesthat, “[t]o a
`
`[person of ordinary skill in the art], cryptography converts data into a format
`
`that is unreadable for an unauthorized user, allowing it to be transmitted
`
`17
`
`
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`IPR2019-00131
`Patent 9,258,698 B2
`
`without unauthorized entities decoding it back into a readable format, thus
`
`compromising the data.” Jd. at 16 (citing Ex. 2009 ¥ 52).
`
`The claims recite “wherein establishing the short-range paired
`
`wireless connection comprises, the digital camera device cryptographically
`authenticating identity ofthe cellular phone.” Ex. 1003, claims L, 5, 8, 13.
`Thus, the claims require cryptographic authentication of the identity of the
`
`cellular telephone, not encryption of transmissions, as Patent Owner’s
`
`definition contemplates. See PO Resp. 19. As explained below,wefind that
`
`the asserted priorart teaches authenticating the identity ofthe cellular
`
`telephone andthat the authentication is cryptographic. Thus, wefind it
`
`unnecessary to construe the term “cryptographically authenticating” to
`
`address the patentability issues before us. See, e.g., Nidec Motor Corp.v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`
`extent necessary to resolve the controversy’... .” (quoting Vivid Techs., Inc.
`
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`3. “graphical user interface (GUI) ”
`
`The challenged claims require a cellular phone that includes a
`
`graphical userinterface (“GUI”). Specifically, claim 1 recites “wherein the
`
`cellular phoneis configured to provide a graphical userinterface (GUI) in
`
`the cellular phone, wherein the graphical user interface (GUD)is forthe
`
`received new-media file and to delete the created new mediafile.” Ex.
`
`1001, 12:22-26.
`
`Independent claims 5, 8, and 13 include similar limitations.
`
`Id. at 13:18-22, 14:22—25, 15:14-18. The ’698 patent does notillustrate the
`
`GUI otherthan as a boxlabeled “graphical user interface” in Figure 2. Jd. at
`Fig. 2 (element 203e).
`In the accompanying description, the ’698 patent
`
`states that client application 203 on mobile device 202 includes “a graphical
`
`18
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`
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`IPR2019-00131
`Patent 9,258,698 B2
`
`user interface (GUI) 203e” but provides no details of how the GUI appears
`
`onthe mobile device.
`
`/d. at 6:25-30. The ’698 patent addsthat a user may
`
`use the GUI to set preferences, such as selecting websites for publishing data
`
`and configuring timers. Id. at 6:58-7:3.
`Even though the ’698 patent does not depict the GUI, a patent
`
`application that the ’698 patent incorporates by reference “‘in its entirety”
`
`(id. at 1:32-36)—U.S. patent application serial no. 11/901,802 (“the ’802
`
`application” (Ex. 2021))—depicts examples of GUIs in Figure 3, shown
`
`below.
`
`UTESPULS IKE LST OF BLOGGING,
`SOCIAL NETWORTENG SITES BACK UP
`
`POST. TO SELECTED
`‘SITE(S)
`
`FULL PAGE AD OSPLAYS:
`OURING LOAD TIME
`
`
`
`esr
`AndOs 808 pe bEeste”
`
`
`
`
`
`Add Publishers
`Selact Saved Media
`
`
`
`
`
` SITES-PULLS THE LIST OF FROGGING,
`
`SOCIAL METWORKING SITES DACK UP
`
`RADIO & TV STARS SCREEN
`eBay® SELECTION SCREEN
`FIGURE 3
`
`Figure 3 aboveillustrates the publishing of multimedia content using a
`
`client application ona mobile device. Ex. 2021, 14:19-21. The ’802
`
`application characterizes the client application as having a “graphical user
`
`19
`
`
`
`IPR2019-00131
`Patent 9,258,698 B2
`
`interface (GUI)” and describesvarious interactions with the screens
`
`illustrated in Figure 3 above. /d. at 8:13-15, 9:28-10:6, 14:21-26, 14:34—
`
`15:9, 15:24-26, 16:333-17:7.
`
`Patent Owner proposesthat “graphical user interface (GUI)”be
`
`construed as meaning
`
`an interface through which a user interacts with electronic
`devices
`such as computers, hand-held devices
`and other
`appliances. Thisinterface uses icons, menus and other visual
`indicator (graphics) representations to display information and
`related user controls, unlike text-based interfaces, where data and
`commandsare in text. GUI representations are manipulated by a
`pointing device such as a mouse,trackball, stylus, or a fi
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