PTAB

IPR2024-00767

TikTok Inc v. Cellspin Soft Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Automatic Multimedia Upload for Publishing Data and Multimedia Content
  • Brief Description: The ’381 patent discloses a system for utilizing a digital data capture device in conjunction with a Bluetooth-enabled mobile device to automatically publish data and multimedia content to websites with minimal user intervention.

3. Grounds for Unpatentability

Ground 1: Claims 1-16 are obvious over Hiroishi, Kahn, and Bluetooth

  • Prior Art Relied Upon: Hiroishi (Japanese Publication No. 2003-60953), Kahn (Application # 2004/0004737), and Bluetooth (Bluetooth™ Core Specification 2.1 + EDR).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hiroishi taught the core system of a Bluetooth-enabled mobile phone that connects to and controls a separate digital camera to capture and receive images for subsequent upload. Petitioner contended that Kahn supplemented Hiroishi by teaching the use of standard protocols like HTTP for uploading images to a remote server, transmitting user preferences such as GPS location data, and displaying location-based advertisements. Kahn also disclosed user authentication for accessing the remote server. Finally, the Bluetooth specification was cited to provide known technical details for implementing the connection, including cryptographic authentication during pairing and data transfer mechanisms like polling, which Petitioner argued were inherent or obvious implementations for Hiroishi's system.
    • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine these references as they are analogous art directed to wireless image transfer. A POSITA would have been motivated to improve Hiroishi’s system by incorporating Kahn's efficient HTTP-based upload methods and value-added features (e.g., GPS data, location-based promotions, user authentication) to enhance functionality and commercial viability in a market with ubiquitous photo-sharing websites. Because Hiroishi explicitly uses Bluetooth, a POSITA would naturally consult the Bluetooth specification for implementation details.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success, as the combination involved applying well-known and predictable technologies (HTTP, GPS data transfer, standard Bluetooth protocols) to an existing system architecture to achieve their expected functions.

Ground 2: Claims 1-16 are obvious over Singh129 in view of Singh906

  • Prior Art Relied Upon: Singh129 (Application # 2009/0172129) and Singh906 (Application # 2008/0103906).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground relies on the contention that the ’381 patent is not entitled to its claimed priority date (see Section 4, below), making Singh129 and Singh906 prior art. Petitioner argued that Singh129, a priority document for the ’381 patent, disclosed the foundational system of a Bluetooth data capture device paired with a mobile device for data transfer. However, Petitioner contended that several claimed features—such as displaying mobile advertisements, processing user authentication credentials, storing user profiles on a remote server, and sending GPS user preferences—were absent from Singh129 and were instead disclosed only in Singh906, a separate application incorporated by reference. The combination of Singh129's core system with the specific advertising and user data features from Singh906 allegedly rendered all challenged claims obvious.
    • Motivation to Combine: Petitioner argued that a POSITA would be motivated to combine the teachings because Singh129 incorporates the application that published as Singh906 by reference, both were developed by the same assignee, and they disclose related publishing systems. A POSITA seeking to improve the Singh129 system would logically look to the incorporated Singh906 reference to add features like a revenue-generating advertising model and enhanced user preference options (GPS, authentication).
    • Expectation of Success: Petitioner asserted a high expectation of success, as the modification involved integrating known software modules (advertising, authentication) from one system into a closely related system from the same assignee to achieve the predictable benefits of monetization and improved user control.

4. Key Technical Contentions (Beyond Claim Construction)

  • Invalid Priority Claim: A central contention of the petition is that the ’381 patent is not entitled to its claimed priority date of December 28, 2007. Petitioner argued that the challenged claims lack written description support in the priority applications because they "mix and match" features from two distinct systems described in two separate documents (which published as Singh129 and Singh906). Petitioner contended that the priority documents never described a single, combined system possessing all the claimed elements, such as the advertising and user profile features of Singh906 integrated into the data capture system of Singh129. Therefore, the effective filing date should be the actual filing date of December 4, 2021, which qualifies Singh129 and Singh906 as prior art references for Ground 2.

5. Arguments Regarding Discretionary Denial

  • §325(d) (Advanced Bionics Factors): Petitioner argued against discretionary denial under §325(d), asserting that the examiner committed a material error during prosecution. The alleged error was failing to recognize the lack of written description for the claimed combination of features, which led the examiner to incorrectly grant the patent an early priority date. This error, Petitioner contended, prevented the examiner from ever considering the obviousness combination of Singh129 and Singh906, which is presented for the first time in this petition.
  • §314(a) (Fintiv Factors): Petitioner argued that discretionary denial under Fintiv is inappropriate due to a stipulation filed with the petition. In the stipulation, Petitioner committed not to pursue in the parallel district court litigation the same grounds raised in the petition, or any grounds that could have reasonably been raised, if the IPR is instituted. Petitioner asserted that under current USPTO guidance, such a stipulation weighs decisively against exercising discretion to deny institution based on a parallel proceeding.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-16 of the ’381 patent as unpatentable.