PTAB

IPR2019-01107

GoPro Inc v. Cellspin Soft Inc

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1. Case Identification

2. Patent Overview

  • Title: Automatic Multimedia Upload for Publishing Data and Multimedia Content
  • Brief Description: The ’698 patent discloses a method and system for transferring media files from a digital data capture device (e.g., a digital camera) to a Bluetooth-enabled mobile device. The mobile device then uploads the received media content to one or more websites with minimal user intervention.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hiroishi and Takahashi - Claims 1-20 are obvious over Hiroishi in view of Takahashi.

  • Prior Art Relied Upon: Hiroishi (JP Application # 2003-60953), Takahashi (JP Application # 2005-303511).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hiroishi taught the core system of the ’698 patent: a digital camera that wirelessly connects to a cellular phone via a short-range connection like Bluetooth. Hiroishi’s system allowed the phone to remotely control the camera, receive image files, and forward them to a terminal device. However, Hiroishi did not explicitly teach uploading the files using HTTP to a user media publishing website with user information. Petitioner asserted that Takahashi supplied these missing elements by teaching a system where a mobile device uploads image data to a remote server using an HTTP request for publication on a web page, including a user ID in the filename to identify the user.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Hiroishi and Takahashi because both are analogous art directed to wireless image transfer. A POSITA would have sought to improve Hiroishi’s system by incorporating Takahashi’s efficient and predictable method for uploading images to the internet. Given the ubiquity of photo-sharing websites at the time, adding this functionality would be a logical next step to allow users to share images, fulfilling the purpose already suggested by Hiroishi of transferring images to a terminal device.
    • Expectation of Success: Petitioner argued there was a high expectation of success, as the combination merely required packaging image data received by the mobile device in Hiroishi into an HTTP message as taught by Takahashi, a straightforward task for a POSITA.

Ground 2: Obviousness over Hollstrom and Takahashi - Claims 1, 3-5, 7-8, 10-13, and 15-20 are obvious over Hollstrom in view of Takahashi.

  • Prior Art Relied Upon: Hollstrom (Patent 6,763,247), Takahashi (JP Application # 2005-303511).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented Hollstrom as an alternative primary reference that also taught the core claimed invention. Hollstrom disclosed a mobile device controlling a wirelessly connected digital camera via Bluetooth, including functions for capturing, viewing, and deleting images. Hollstrom further taught that after receiving image files, the mobile device is configured to upload them to a designated publishing website. As with the Hiroishi combination, Petitioner relied on Takahashi to explicitly teach the use of the HTTP protocol for the upload and the inclusion of user information for a user media publishing website.
    • Motivation to Combine: The motivation was similar to Ground 1. A POSITA would combine Hollstrom’s system of camera control and file transfer with Takahashi’s specific HTTP-based publishing method to create a more efficient and feature-rich system. This combination would provide the straightforward benefit of a predictable upload of image files to a publishing server, enhancing the website upload functionality already contemplated by Hollstrom.
    • Expectation of Success: Success was reasonably expected because the modification only involved implementing a well-known upload protocol (HTTP) for the file transfer already disclosed in Hollstrom, a modification well within the ability of a POSITA.

Ground 3: Obviousness over Hollstrom, Takahashi, and Ando - Claims 2, 6, 9, 14, and 21-22 are obvious over Hollstrom and Takahashi in view of Ando.

  • Prior Art Relied Upon: Hollstrom (Patent 6,763,247), Takahashi (JP Application # 2005-303511), Ando (JP Application # 2003-46841).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Hollstrom and Takahashi to address limitations in dependent claims related to creating and deleting an "associated file" (e.g., a thumbnail). Petitioner argued that while Hollstrom did not explicitly teach creating or deleting associated thumbnail files, Ando remedied this deficiency. Ando taught a system where a digital camera creates and stores an image file along with an associated thumbnail image. Ando’s system then allowed a connected cellular phone to browse the thumbnails and delete both the thumbnails and their corresponding main image files from the camera.
    • Motivation to Combine: A POSITA would be motivated to integrate Ando's teachings to improve the user experience and device control in the Hollstrom/Takahashi system. Adding thumbnail management and deletion functionality would allow a user to more efficiently browse images and clear memory on the camera directly from the phone, which is a logical improvement for a remote-control camera system.
    • Expectation of Success: Petitioner asserted a reasonable expectation of success because combining the teachings would involve a simple modification to the mobile device software in Hollstrom to enable it to send a delete instruction for thumbnail files, as taught by Ando.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Hiroishi, Takahashi, and Nozaki (JP Application # 2004-96166) to provide an alternative reference for a GUI-based deletion feature.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-22 of the ’698 patent as unpatentable.