PTAB

IPR2019-00131

Panasonic Corp Of North America v. Cellspin Soft Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Media Transfer Method and System
  • Brief Description: The ’698 patent discloses a method for transferring a media file from a digital camera to a cellular phone via a short-range wireless connection, and subsequently uploading the file from the phone to an internet media publishing website.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mashita, Onishi, and Hiraishi - Claims 1, 3-5, 7, 8, 10-13, and 15-20 are obvious over Mashita in view of Onishi and Hiraishi.

  • Prior Art Relied Upon: Mashita (Japanese Application # 2003-51772), Onishi (Japanese Application # 2003-299014), and Hiraishi (Japanese Application # 2004-102810).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of Mashita, Onishi, and Hiraishi renders all challenged claims obvious. Mashita was presented as the primary reference, disclosing the core system of a digital camera communicating with a cellular phone via a local wireless connection (e.g., Bluetooth) to transfer image files to an internet server. Critically, Petitioner argued that Mashita expressly teaches the specific order of operations that the patent owner relied upon to overcome prior art during prosecution: establishing the wireless connection before acquiring the new media (image).
    • To address remaining limitations, Petitioner argued it would have been obvious to modify Mashita with teachings from Hiraishi and Onishi. Hiraishi allegedly supplied the teaching of using HTTP to upload media from a mobile phone to a "photo site" (a user media publishing website) along with user information (e.g., user ID). This was argued to be an obvious substitution for Mashita's disclosure of using email or FTP.
    • Onishi allegedly supplied the final key limitation, which was added during prosecution to secure allowance: using a graphical user interface (GUI) on the cellular phone to delete the created media file from the digital camera's memory. Onishi was argued to expressly teach using a cellular phone as a "remote controller" to erase images from the camera's memory to enhance convenience, a feature missing from Mashita.
    • Motivation to Combine: Petitioner asserted multiple motivations for a person of ordinary skill in the art (POSITA) to combine the references. A POSITA would combine Mashita and Onishi because both aimed to solve the same problem of providing a simpler, lower-cost digital camera. Adding Onishi's remote deletion capability to Mashita's system was presented as an obvious improvement to enhance user convenience and manage camera memory. A POSITA would combine Mashita and Hiraishi because Hiraishi (from the same company as Mashita's assignee, Canon) taught improvements for media-publishing websites, a popular and growing field. Modifying Mashita to use Hiraishi's more common HTTP protocol for uploading to a photo site instead of FTP or email was argued to be a simple substitution of known, equivalent elements.
    • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because the combination involved applying known techniques (remote deletion, HTTP uploads) to a known system (camera-to-phone transfer) to achieve predictable results and improved functionality.

4. Key Claim Construction Positions

  • "cryptographically authenticating identity of the cellular phone": Petitioner proposed this phrase means the digital camera authenticates the phone using some form of secrecy, security, or encryption, including the use of a shared passkey or PIN. This construction was argued to be consistent with the specification's example of Bluetooth pairing and necessary to map prior art like Mashita, which discloses using a shared PIN for authentication.
  • "graphical user interface (GUI)": Petitioner proposed construing this term broadly as "a user interface involving graphical elements." This broad construction was asserted to be consistent with the state of the art for mobile phones at the time and necessary for applying prior art that disclosed display screens with user input functions.
  • Absence of "Automatic" Operation: Petitioner argued that the challenged claims do not require any steps to be performed "automatically" or without user intervention. This position was based on the absence of such explicit language in the claims of the ’698 patent, in contrast to its presence in claims of a related patent (’794 patent) from the same family. Petitioner contended this distinction was intentional and precluded importing an "automatic" limitation into the challenged claims.

7. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-5, 7, 8, 10-13, and 15-20 of the ’698 patent as unpatentable under 35 U.S.C. §103.