Trials@uspto.gov
`571.272.7822
`
`Paper: 29
`
` Date: November 21, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOPRO, INC., GARMIN INTERNATIONAL, INC., AND GARMIN USA, INC.,
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`_____________
`
`Case IPR2019-01108
`Patent 9,258,698 B2
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
` Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122
`
`
`
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`I. INTRODUCTION
`Petitioners, GoPro, Inc., Garmin International, Inc., and Garmin USA, Inc.
`(collectively “’1108 Petitioners” or “Petitioner”) filed a Petition (“Pet.”) on May
`24, 2019 (Paper 1) requesting inter partes review of claims 1, 3, 4, 5, 7, 8, 10, 11,
`12, 13, 15, 16, 17, 18, 19 and 20 of U.S. Patent No. 9,258,698 (“the ’698 patent,”
`Ex. 1003). Pet. 1. Cellspin Soft, Inc. (“Patent Owner”) filed a Preliminary
`Response (“Prelim. Resp.,” Paper 11).
`Concurrently with the Petition, the ’1108 Petitioners, Petitioner filed a
`Motion for Joinder (“Motion,” “Mot.,” Paper 4) with Panasonic Corp. of N. Am. et
`al. (“Panasonic”) v. Cellspin Soft, Inc., IPR2019-00131 (“’131 IPR”), a pending
`inter partes review also challenging the ’698 patent. Mot. 1. Neither Panasonic
`nor Patent Owner has opposed the Motion within “one month after service of the
`motion.” 37 C.F.R. § 42.25(1).
`We instituted inter partes review on the ’131 IPR on April 29, 2019.
`’131 IPR, Paper 11.1 Upon considering the record developed thus far, for reasons
`discussed below, we institute an inter partes review of all the challenged claims
`and grant the Motion.
`
`II. BACKGROUND
`A. Related Proceedings
`In addition to the ’131 IPR, two other inter partes reviews have been filed
`challenging claims 1–22 of the ’698 patent: Canon U.S.A., Inc. v. Cellspin Soft,
`Inc., IPR2019-00131 and GoPro, Inc. v. Cellspin Soft, Inc., IPR2019-01107. Paper
`5, 2.
`
`
`1 For purposes of this Decision, hereinafter and unless otherwise indicated,
`references to Papers (for example “Paper 8” or “Pet.”) are to this ’1108 IPR.
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`The parties advise us that Patent Owner has asserted the ’698 patent against
`the ’1108 Petitioners in Cellspin Soft, Inc. v. GoPro, Inc., No. 4:17-cv-005939 and
`Cellspin Soft, Inc. v. Garmin International, No. 4:17-cv-05934 in the U.S. District
`Court for the Northern District of California. Pet. 4, 5; Paper 5, 2. Other lawsuits
`alleging infringement of the ’698 patent are pending. Pet. 3; Paper 5, 3–5.
`Patent Owner further identifies an appeal to the U.S. Court of Appeals for
`the Federal Circuit, Appeal No. 2018-1823. Paper 5, 2. Federal Circuit Appeal
`No. 2018-1817 is the lead case. Paper 5, 2.
`
`
`
`B. 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.” Id. at 1:41–45.
`
`1. Technology
`According to the ’698 patent, in the prior art,
`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 order to 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 may be inconvenient for the user.
`
`Ex. 1003, 1:46–55.
`
`2. The ’698 Patent (Ex. 1003)
`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. 1003, 3:34–38, 3:41–44. The digital data capture
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`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.” Id. at 3:34–38.
`Figure 2 of the ’698 patent is reproduced below.
`
`
`
`
`Figure 2 illustrates a system for utilizing 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.” Id. 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.” Id. at 3:60–65.
`The communication is 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 3:65–4:7.
`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
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`with the captured data and the multimedia content.” Id. 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 of file transfer protocols. Id. 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. Id. at 4:42–48.
`The user may set preferences regarding timing of the 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.
`
`C. Illustrative Claim
`Claims 1 (method), 5 (device), 8 (system), and 13 (computer
`readable-medium) are independent claims. Claims 2–4 depend directly from
`claim 1. Claims 6, 7, 17, 19, and 21 depend directly or indirectly from claim 5.
`Claims 9–12, 20, and 22 depend directly or indirectly from claim 8. Claims 14–16
`and 18 depend directly from claim 13.
`Claim 1 is reproduced below as 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
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`the digital camera device cryptographically
`comprises,
`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
`of the digital camera device;
`
`
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`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
`
`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 phone is 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 (GUI)
`is for the received new-media file and to delete the created new-
`media file.
`
`Ex. 1003, 11:54–12:26.
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`D. Asserted Ground of Unpatentability
`Petitioner challenges claims 1, 3–5, 7, 8, 10–13, and 15–20 of the ’698
`patent as unpatentable as obvious under 35 U.S.C. § 1032 over Mashita,3 Onishi,4
`and Hiraishi.5 Pet. 8–9, 26–73.
`
`
`
`III. ANALYSIS
`A. Institution
`In this proceeding, the Petition is supported by the Declaration of Dr. John
`Strawn (Ex. 1001, “Strawn Declaration”). The Preliminary Response is supported
`by the Declaration of Dr. Michael Foley (Ex. 2009, “Foley Declaration”), which is
`the Declaration filed in copending ’131 IPR as Exhibit 2009.
`The ’1108 Petitioners allege the Petition here is “substantively identical” to
`the petition in the ’131 IPR save for “minor differences in the two petitions, such
`as different petitioners, typographical corrections, real parties-in-interest, and a
`reference to the claim construction standards.” Mot. 4. Although Patent Owner
`
`
`2 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
`became effective March 16, 2013. The ’698 patent claims priority through a chain
`of continuation applications to 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 grounds asserted are under the pre-
`AIA version of § 103.
`3 Hiroshi Mashita, JP 2003-51772, laid open February 21, 2003 (“Mashita,” Ex.
`1005 (original Japanese language version), Ex. 1006 (certified English language
`translation)). We reference the English translation, Exhibit 1006.
`4 Hiro Onishi, JP 2003-299014, laid open October 17, 2003 (“Onishi,” Ex. 1007
`(original Japanese language version), Ex. 1008 (certified English language
`translation)). We reference the English translation, Exhibit 1008.
`5 Tomonobu 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.
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`does not oppose joinder, it argues we should not institute trial. See, e.g., Prelim.
`Resp. 7 (“This Preliminary Response is substantially different from, and more
`detailed than, Patent Owner’s Preliminary Response in the [’131 IPR].”), 16 (“no
`reasonable likelihood of unpatentability has been shown”). According to Patent
`Owner, its “Preliminary Response primarily tracks the substance of Cellspin’s
`actual, detailed Response filed in the ’131-IPR.” Id. at 7.
`
`
`
`1. Claim Construction
`In an inter partes review requested in a petition filed on or after November
`13, 2018, we apply the same claim construction standard used in district courts in a
`civil action under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before the
`Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,343 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). In this case, the
`Petition was filed on May 24, 2019, and for purposes of institution, we apply the
`Phillips standard.6 In so doing, we construe a claim “in accordance with the
`ordinary and customary meaning of such claim as understood by one of ordinary
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`§ 42.100(b). The “specification may reveal a special definition given to a claim
`term by the patentee that differs from the meaning it would otherwise possess.”
`Phillips, 415 F.3d at 1316. “[O]nly those terms need be construed that are in
`
`6 Patent Owner’s arguments are made under the prior broadest reasonable
`interpretation (“BRI”) claim construction standard. See, e.g., Prelim. Resp. 19
`(using BRI to construe “paired connection”); see also Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the use of BRI in inter partes
`review). For reasons stated hereinafter, the joined proceeding will use the BRI
`standard, which is used in the ’131 IPR. ’131 IPR, Paper 11, 8.
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`controversy, and only to the extent necessary to resolve the controversy.” See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`Neither party argues a Phillips standard for construction. Patent Owner
`argues there is no need to brief the proper Phillips constructions since no
`reasonable likelihood of unpatentability has been shown under BRI constructions.
`Prelim. Resp. 14. Patent Owner argues the BRI constructions. Id. at 29
`(“summary of the BRI constructions”). Petitioner argues that its proposed claim
`constructions are included within the scope of either BRI or Phillips. Pet. 10–11.
`Because the Petition was filed after November 13, 2018, we apply the Phillips
`standard for purposes of institution.
`The Petition proposes constructions for “wherein establishing the short-
`range paired wireless connection comprises, the digital camera device
`cryptographically authenticating identity of the cellular phone” (claims 1, 5, 8, 13);
`“new-media;” and “graphical user interface (GUI).” Pet. 11. Patent Owner
`proposes constructions for “paired connection,” “cryptographically
`authenticated,”7 and “graphical user interface (GUI).” Prelim. Resp. 29. In the
`Institution Decision in the ’131 IPR we did not expressly construe any term other
`than “cryptographically authenticating.” ’131 IPR, Paper 11, 9. We construed
`“cryptographically authenticating” to mean “authenticating the identity of the
`cellular phone using some form of security or encryption, including by use of a
`shared passkey on the digital camera device and the cellular phone.” Id. at 13.
`This is very similar to the construction proposed by Petitioner here. Pet. 11.
`
`
`7 The claim term is “cryptographically authenticating.” Ex. 1003, 11:64 (claim 1);
`see also claims 5, 8, 13 (“cryptographically authenticating”).
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`Patent Owner proposes “cryptographically authenticat[ed]” should be
`construed to mean “verified as a legitimate transmission, user, or system including
`by use of encryption and decryption involving an algorithm.” Prelim. Resp. 29.
`However, Patent Owner does not distinguish the prior art based on its proposed
`construction. See id. at 49–51. We do not construe “cryptographically
`authenticating” because there is no dispute as to whether the art teaches the
`claimed subject matter to be resolved by construing the term. Nidec, 868 F.3d at
`1017.
`Petitioner proposes that “GUI” means “a user interface involving graphical
`elements.” Pet. 11. Relying on the Foley Declaration, Patent Owner argues GUI
`should be construed to mean
`an interface through which a user interacts with electronic devices such
`as computers, hand-held devices and other appliances. This interface
`uses icons, menus and other visual indicator (graphics) representations
`to display information and related user controls, unlike text-based
`interfaces, where data and commands are in text. GUI representations
`are manipulated by a pointing device such as a mouse, trackball, stylus,
`or a finger on a touch screen.
`
`Prelim. Resp. 26 (citing Foley Dec. ¶ 65 (citing
`https://www.techopedia.com/definition/5435/graphical-user-interface-gui,
`Ex. 2020). Patent Owner argues the Specification, which incorporates U.S.
`Patent Application No. No. 11/901,802 (“’802 application,” Ex. 2021),
`supports this construction. Id. at 27 (citing Ex. 2021, 40–42 (Figs. 1–3);8 see
`also Ex. 1003, 1:32–36 (incorporating the ’802 application).
`
`
`8 Patent Owner specifically references Figure 3 of the ’802 application and then
`“para. 40–42.” There are no paragraph numbers in the written description. Figure
`3 and GUI are described in the application as filed. Ex. 2021, 14:19–15:16.
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` The intrinsic evidence of the Specification and incorporated written
`description of the ’802 application do not specifically define or limit the
`term “GUI.” Further, at least one other dictionary definition differs from
`Patent Owner’s proposed construction. See, e.g., Ex. 3001 (MICROSOFT
`COMPUTER DICTIONARY, 239 (Microsoft Corporation, 5th Ed. 2002)
`(defining “graphical user interface (GUI),” in part, as “work[ing] the same
`way for the user in all applications because the graphical user interface
`provides standard software routines to handle these elements and report the
`user’s actions (such as a mouse click on a particular icon at a particular
`location in text, or a key press)”).
`We determine that GUI requires no express construction to resolve
`whether or not we institute. See also Section III.A.5.b.iii below (analyzing
`limitation 1K). We also find that “new-media” requires no express
`construction.
`
`2. Legal Standard for Obviousness
`A patent claim is unpatentable as obvious if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a whole
`would have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
`The ultimate determination of obviousness is a question of law, but that
`determination is based on underlying factual findings. The underlying factual
`findings include (1) “the scope and content of the prior art,” (2) “differences
`between the prior art and the claims at issue,” (3) “the level of ordinary skill in the
`pertinent art,” and (4) the presence of secondary considerations of nonobviousness
`such “as commercial success, long felt but unsolved needs, failure of others,” and
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`unexpected results. In 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.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016). Furthermore, in assessing the prior art, the Board must consider whether a
`person of ordinary skill would have been motivated to combine the prior art to
`achieve the claimed invention. Nuvasive, 842 F.3d at 1381. As the Federal Circuit
`stated, in quoting from the Supreme Court’s decision in KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 418–19 (2007),
`“because inventions in most, if not all, instances rely upon building
`blocks long since uncovered, and claimed discoveries almost of
`necessity will be combinations of what, in some sense, is already
`known,” “it can be important to identify a reason that would have
`prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does.”
`
`Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir.
`2017).
`
`3. Person of Ordinary Skill in the Art
`Petitioner proposes a person of ordinary skill 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.
`
`Pet. 10 (citing Ex. 1001 ¶ 24); see also ’131 IPR, Paper 11, 14 (adopting similar
`proposed level of ordinary skill). Petitioner then lists “relevant facets of the state
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`of the art” of which a person of ordinary skill would have been aware, including
`generally digital cameras, Bluetooth, cellular telephones, and Internet photo-
`sharing websites. Pet. 10 (citing Ex. 1001 ¶¶ 54). Petitioner adds details of each
`of the listed technologies to the level of skill. Id. Patent Owner agrees. Prelim.
`Resp. 13. We adopt the above for a person of ordinary skill in the art from the
`’131 IPR.
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`4. Prior Art Relied Upon
`As listed in Section II.D above, Petitioner relies on the following prior art
`for its challenge to claim 1 on obviousness.
`a. Mashita (Ex. 1006)
`Mashita discloses a communication device, such as a digital camera, “having
`a local wireless communication function but no public network connection
`function.” Ex. 1006, [57], ¶ 1. Mashita notes that the “[c]onventional [a]rt”
`includes communication devices like digital cameras and cellular phones “with a
`built-in short-range wireless communication device typified by Bluetooth.” Id. ¶ 2.
`Mashita explains that conventional digital cameras connect to the Internet network
`by using an “other communication device (cellular phone)” as a modem to transfer
`file data. Id. ¶ 6. But this method, according to Mashita, increases the digital
`camera’s cost because it requires the digital camera to “include a protocol such as
`PPP, TCP/IP, or HTTP and an application program.” Id.
`Figure 1 of Mashita is reproduced below.
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`Figure 1 illustrates a general configuration of a network system in which a
`portable device such as a digital camera or a Personal Data Assistance (PDA)
`communicates with a server on the Internet via a cellular phone
`
`Ex. 1006 ¶ 15. Figure 1 shows that portable device 101 (i.e., the digital camera)
`and cellular phone 102 can communicate through a local wireless connection, such
`as Bluetooth connection 107. Id. ¶¶ 16–17. Base station 103 converts public
`wireless network 108 into public network 109. Id. ¶ 18. Gateway 104 connects
`the public network to Internet 110. Id. ¶ 19. This configuration allows portable
`device 101 to pass file data (e.g., image data) to cellular phone 102, which then
`passes the file data to server 105. Id. ¶¶ 61–68. Thus, according to Mashita,
`portable device (digital camera) 101 is able to transfer file data to server 105
`without implementing HTTP or another online data transfer protocol in the digital
`camera. Id. ¶ 8.
`Figure 7 of Mashita is reproduced below.
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`Figure 7 is a flowchart illustrating an image file transmission procedure
`executed by the digital camera
`
`Ex. 1006, 38. At step S701 (Connect Local Wireless Link), “[i]n response to a
`connection request transmitted from the cellular phone 102, the digital camera 101
`connects a local wireless link via Bluetooth communication.” Id. at 42, ¶ 75. At
`step S702 (Take Image), the digital camera takes an image and the image is stored
`in image memory. Id. at 42, ¶ 76. The image is taken after establishing the
`wireless link at step 701 in response to the user’s operation at step S702. Id. at 42,
`¶ 80.
`
`b. Onishi (Ex. 1008)
`Onishi describes “an inexpensive . . . power-saving digital camera device”
`that “connect[s] with a portable terminal through . . . wireless communication
`means and transfer[s] the image to the portable terminal to display the image.” Ex.
`1008 ¶ 4. The “portable terminal” can be a portable phone, and the “wireless
`communication means” can be a Bluetooth connection. Id. ¶¶ 6, 41, 54.
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`Onishi discloses that it is possible to operate the digital camera device by
`wireless communication “using the portable terminal device 150 [i.e., cellular
`phone] as . . . a remote controller.” Id. ¶ 65. This includes erasing an image file
`from the digital camera’s memory via user input to the phone. Id.; see also id.
`¶¶ 51 (“the displayed image is erased from the memory 41” following user input to
`the phone), 9 (“[U]sing the portable terminal device, . . . it is possible to erase an
`unnecessary image file from the memory of the digital camera device.”).
`
`c. Hiraishi (Ex. 1010)
`Hiraishi concerns transmission of images (and other multimedia data) to the
`Internet. Ex. 1010 ¶ 2. Hiraishi describes as “conventional art” how “it has
`become possible to share and provide information in a multimedia environment in
`which all data including text data, image data, and voice data are digitalized,
`giving birth to many information providing services using the Internet.” Id. One
`example is a “photo site,” which allows customers to view image data the
`customers acquired using a digital camera. Id. Hiraishi’s inventions are designed
`to address various problems that may arise with such photo sites when
`collaborating with “print sites,” which provide printing services. Id. ¶¶ 3–8.
`Hiraishi discloses that “PC 102” (which Hiraishi states can be a “mobile
`phone” instead of a PC) (shown in Figure 1) can “automatically transfer[]” selected
`image data to the photo site, and that “transfer is executed based on a protocol
`available on the Internet 104, such as HTTP or FTP.” Ex. 1010 ¶¶ 21, 26; Fig. 1.
`5. Obviousness of Claim 1 Over Mashita, Onishi, and Hiraishi
`Petitioner asserts that claim 1 of the ’698 patent is unpatentable over
`Mashita, Onishi, and Hiraishi. Pet. 9, 32–69. Patent Owner disputes that the ’1108
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`Petitioners have made a sufficient showing as to limitations C, D, G, H, and K9 of
`claim 1. Prelim. Resp. 43–53, 57–61. Patent Owner also disputes that the ’1108
`Petitioners have shown a motivation to combine Mashita, Onishi, and Hiraishi. Id.
`at 63–64.
`
`
`
`a. Claim 1 Undisputed Limitations
`We separate our analysis into the limitations Patent Owner does not dispute
`from those it disputes. The showing of Petitioner is not disputed for the following
`limitations.
`
`i. Limitation A
`The preamble of claim 1, which Petitioner denotes as Limitation A, recites
`“[a] machine-implemented method of media transfer.” Petitioner cites to
`Mashita’s disclosure of “a communication device having the local wireless
`communication function and the public network connection function, the
`communication device being capable of transferring, to the information processing
`device, file data received from another communication device without a
`preliminarily built-in file transfer program.” Ex. 1006 ¶ 9, cited in Pet. 34.
`Petitioner adds that “file data” is media, referring to its showing regarding
`Limitations D (“acquiring new-media”) and E (“creating a new media file”). Pet.
`34; see also id. at 45–51 (Limitations D and E).
`On this record, Petitioner has sufficiently shown Mashita10 teaches
`Limitation A of claim 1.
`
`
`9 See Pet. 77–86 (assigning letters to limitations of claim 1).
`10 Petitioner also argues that Onishi and Hiraishi teach Limitation A. Pet. 34.
`Because Petitioner has made a sufficient showing as to Mashita for this subject
`matter, we do not analyze Petitioner’s arguments as to the other references at this
`time. We proceed on this basis for other limitations where Petitioner cites to
`multiple references.
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`ii. Limitation B
`Claim 1 further recites “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,” denoted by
`Petitioner as Limitation B. Mashita discloses that “communication devices (for
`example, digital cameras, PDAs, cellular phones, etc.) with a built-in short-range
`wireless communication device typified by Bluetooth have been developed.” Ex.
`1006 ¶ 2. Petitioner cites to the preceding and argues that “Mashita also discloses
`a digital camera and a cellular phone each with an interface (‘I/F’) ‘for local
`wireless communication for performing local wireless communication (Bluetooth
`communication).’” Pet. 35 (citing Ex. 1006 ¶¶ 16, 17, 22; Ex. 1001 ¶¶ 69–70); see
`Ex. 1001 ¶ 70 (“[I]t was known for a digital camera and a cellular phone to have
`access to the Internet . . . .”) (citing Ex. 1006 ¶ 2)).
`On this record, Petitioner has sufficiently shown Mashita teaches Limitation
`B of claim 1.
`
`iii. Limitation E
`Claim 1 also recites “creating a new-media file using the acquired new-
`media,” denoted by Petitioner as Limitation E. Petitioner cites to Mashita’s
`teaching that “the digital camera 101 takes an image,” which is stored in memory
`and referenced as an image file the user can select. Pet. 50 (citing Ex. 1006 ¶¶ 76–
`77). Petitioner argues the image is the recited “new-media” and the image file is
`the recited “new-media file.” Id. (citing Ex. 1001 ¶¶ 89, 96).
`Petitioner also argues Mashita teaches a digital camera’s CPU 201 that
`“controls the digital camera . . . as a whole.” Pet. 51 (citing Ex. 1006 ¶ 23).
`Relying on the Strawn Declaration, Petitioner contends “the CPU 201 controls,
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`among other things, the process by which the digital camera creates a new-media
`file using the acquired new-media.” Id. (citing Ex. 1006 ¶ 23; Ex. 1001 ¶ 156).
`On this record, Petitioner has sufficiently shown Mashita teaches Limitation
`E of claim 1.
`
`
`
`iv. Limitation F
`Claim 1 also recites “storing the created new-media file in a first non-
`volatile memory of the digital camera device,” denoted by Petitioner as Limitation
`F. Petitioner cites to Mashita’s storing an image file in the digital camera’s image
`memory 204 and argues “that process is controlled by CPU 201 (‘processor’).”
`Pet. 51 (citing Ex. 1006 ¶¶ 76–77). Petitioner contends the “image memory 204 is
`non-volatile memory.” Id. at 51–52 (citing Ex. 1006 ¶ 26). Petitioner also relies
`on the Strawn Declaration. Id. (citing Ex. 1001 ¶¶ 59, 187, 229).
`On this record, Petitioner has sufficiently shown Mashita teaches Limitation
`F of claim 1.
`
`v. Limitation I
`Claim 1 also recites “wherein the cellular phone is configured to store the
`received new-media file in a non-volatile memory device of the cellular phone,”
`denoted by Petitioner as limitation I. Petitioner argues Mashita discloses that “the
`cellular phone stores the image file it received from the digital camera in its
`Random Access Memory (‘RAM’).” Pet. 59 (citing Ex. 1006 ¶ 64), see also id. at
`60 (citing Ex. 1006 ¶ 36 (disclosing that cellular phone stores other data in non-
`volatile flash memory)). Petitioner recognizes that Mashita does not expressly
`teach non-volatile memory for storing the image file but argues such a
`modification would have been obvious to a person of ordinary skill. Id. at 60
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`(citing Ex. 1001 ¶ 119; Ex. 1016,11 26–27 (a cell phone with non-volatile
`memory)). Petitioner argues such a modification would have been recognized as
`beneficial. Id. Petitioner further argues a person of ordinary skill would have a
`reasonable expectation of success in making the modification because it