PTAB

IPR2019-00131

Panasonic Corporation of North America v. Cellspin Soft, Inc.

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1. Case Identification

  • Patent #: 9,258,698
  • Filed: October 30, 2018
  • Petitioner(s): Panasonic Corporation of North America, Panasonic Corporation
  • Patent Owner(s): Cellspin Soft, Inc.
  • Challenged Claims: 1, 3-5, 7-8, 10-13, and 15-20

2. Patent Overview

  • Title: Method of Transferring a Media File from a Digital Camera to a Cellular Phone
  • Brief Description: The ’698 patent discloses a method and system for transferring multimedia content from a digital data capture device (e.g., a digital camera) to a physically separate mobile device (e.g., a cellular phone) via a short-range wireless connection. The mobile device then stores the data and uploads it to an internet media publishing website.

3. Grounds for Unpatentability

Ground 1: 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 Patent Application Publication No. 2003-51772), Onishi (Japanese Patent Application Publication No. 2003-299014), and Hiraishi (Japanese Patent Application Publication No. 2004-102810).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Mashita, Onishi, and Hiraishi renders all challenged claims obvious under 35 U.S.C. §103. Mashita was asserted to disclose the core functionality of the invention: a digital camera establishing a short-range wireless connection (e.g., Bluetooth) with a cellular phone for the purpose of transferring media files. Critically, Petitioner argued Mashita expressly teaches the sequence of establishing the wireless connection before acquiring the new media (e.g., taking a picture), a key distinction the patent owner relied upon to overcome prior art during prosecution. The remaining limitations were allegedly obvious modifications. Hiraishi was cited for its teaching of using HTTP to upload media from a mobile device to a "photo site" (a user media publishing website), an obvious alternative to the FTP protocol disclosed in Mashita. Onishi was cited for teaching the use of a cellular phone's graphical user interface (GUI) to act as a remote controller to delete an image file from the digital camera’s memory, which addresses the final limitation added during prosecution to secure allowance.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references to achieve predictable results. A POSITA would have been motivated to modify Mashita with Hiraishi's teachings to use the well-known and equivalent HTTP protocol for uploading media to popular photo-sharing websites, improving system functionality. A POSITA would also combine Mashita with Onishi to add the convenient functionality of remotely managing the camera's memory from the phone, a feature Onishi itself touts as enhancing convenience and reducing workload. The fact that Mashita and Hiraishi were developed by the same applicant (Canon) and address closely related problems further supports the motivation to combine.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involves integrating known technologies (Bluetooth, HTTP, remote GUI control) for their intended purposes in a predictable manner. The modifications were argued to be simple programming matters, not requiring any undue experimentation.

4. Key Claim Construction Positions

Petitioner proposed several constructions central to its obviousness arguments, arguing they represent the broadest reasonable interpretation.

  • "Cryptographically authenticating identity of the cellular phone": Petitioner argued this should be construed broadly to mean authenticating identity using any form of secrecy, security, or encryption, including the use of a shared passkey. This construction aligns with Mashita’s disclosure of using a shared PIN to establish a Bluetooth connection.
  • "New-media": This term, which appears only in the claims, should be construed to encompass images, audio, video, text, or any combination, consistent with the specification's use of the term "multimedia."
  • "Graphical user interface (GUI)": This should be construed broadly as a user interface involving graphical elements. Petitioner argued Onishi’s disclosure of using phone buttons and a display to select and delete images on a camera meets this limitation.
  • Whether Claims Require "Automatic" Operation: Petitioner argued that unlike related patents in the same family, the challenged claims of the ’698 patent do not require any steps to be performed "automatically." The absence of this term was intentional, meaning user involvement in the connection and transfer process is permitted, which is consistent with the disclosures in the prior art.

5. Relief Requested

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