PTAB

IPR2024-00769

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 ’766 patent discloses a system and method for using a separate digital data capture device in conjunction with a short-range wireless (e.g., Bluetooth) enabled mobile device to automatically publish captured multimedia content to one or more websites with minimal user intervention.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 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: Petitioner argued that Singh129 discloses nearly all limitations of the challenged claims, including a short-range wireless data capture device that pairs with a mobile phone, acquires new data after connection, creates a data object, and automatically transfers it to the phone for publication. The final limitations of independent claims 1, 4, 9, and 13—using HTTP to upload the data along with user information corresponding to a unique user identifier for private publication—are taught by Singh906, which discloses a mobile client application that sends user authentication credentials to a publishing service.
    • Motivation to Combine: A POSITA would combine the teachings because Singh129 itself incorporates by reference the application that published as Singh906, directing a skilled artisan to its disclosure. The combination addresses a known problem of associating multimedia objects with user preferences, giving the user more control. Adding Singh906's user authentication features to Singh129’s system would allow direct publishing to password-protected websites, increasing speed and reducing system complexity.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves applying known techniques (user authentication from Singh906) to a known system (the capture device architecture from Singh129) from the same assignee to achieve predictable benefits.

Ground 2A: Claims 1-15 are obvious over Kahn and Bluetooth

  • Prior Art Relied Upon: Kahn (Application # 2004/0004737) and Bluetooth (Bluetooth Core Specification Version 2.1 + EDR).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Kahn discloses an imaging system comprising a camera device connected to a host device, such as a cellular phone, which communicates with a web-based image management server using protocols like HTTP to upload image data. Bluetooth, a well-known standard by the critical date, provides the claimed short-range, paired wireless connection with cryptographic authentication (via its standard pairing and encryption protocols). The combination of Kahn's architecture with Bluetooth's standard functionality meets the limitations of the independent claims.
    • Motivation to Combine: A POSITA would combine Kahn with Bluetooth because replacing an unspecified "detachable" or "cableless" connection with a specific, standardized short-range wireless technology was a well-known and obvious design choice. Given the ubiquity of Bluetooth in mobile phones and peripherals by 2007, it was the logical technology to implement for a wireless connection between a camera and a phone, as taught by Kahn.
    • Expectation of Success: A POSITA would have a high expectation of success, as Bluetooth was a mature, well-documented technology. Implementing its standard pairing and data transfer protocols within Kahn's disclosed system architecture was a straightforward application of known principles.

Ground 2B: Claims 1-15 are obvious over Kahn, Feinberg, and Bluetooth

  • Prior Art Relied Upon: Kahn (Application # 2004/0004737), Feinberg (Application # 2007/0073937), and Bluetooth (Bluetooth Core Specification Version 2.1 + EDR).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the Kahn and Bluetooth combination from Ground 2A. Petitioner argued that the claimed "signal to notify" can be found in Feinberg's teaching of embedding thumbnail images into the header of the full-resolution image file. In the proposed combination, these embedded thumbnails, transmitted as part of the new-data object from the camera to the phone, would serve as the signal that new data is available for processing and upload.
    • Motivation to Combine: A POSITA would combine Feinberg with the Kahn/Bluetooth system to enhance efficiency. Kahn teaches previewing photos, and Feinberg provides a specific, efficient method for doing so by embedding thumbnails in the image file header. This avoids server-side thumbnail generation, reducing computational load. Using these readily available thumbnails as a notification signal is a logical extension for managing the data transfer process.
    • Expectation of Success: Success was expected as integrating Feinberg's thumbnail technique into Kahn's system is a predictable combination of known image processing and transfer methods to improve the user experience and system efficiency.

4. Key Technical Contentions (Beyond Claim Construction)

  • Lack of Priority Entitlement: Petitioner dedicated a substantial portion of its argument to contending that the ’766 patent is not entitled to its claimed priority date of December 28, 2007. Petitioner argued the challenged claims lack written description support in the priority documents because they improperly "mix and match" elements from two distinct inventions: a two-device system from the Singh129 application and a single-device system from the Singh906 application. Because the claimed combination was not disclosed, Petitioner argued the effective filing date is the actual filing date of the application (July 3, 2017), which renders Singh129 and Singh906 available as prior art under 35 U.S.C. §102(a)(1).

5. Arguments Regarding Discretionary Denial

  • §325(d) (Advanced Bionics): Petitioner argued against discretionary denial because the examiner made a material error during prosecution. Specifically, the examiner failed to analyze the written description and priority entitlement issues, incorrectly assuming an earlier priority date. As a result, the examiner never considered the primary combination of references asserted in Ground 1 (Singh129 and Singh906). Furthermore, the art in Grounds 2A and 2B was never presented to or considered by the Office.
  • §314(a) (Fintiv): Petitioner argued that discretionary denial under Fintiv is inappropriate because it has submitted a stipulation, consistent with USPTO Interim Guidance. The stipulation states that if the IPR is instituted, Petitioner will not pursue in a parallel district court proceeding the same grounds, or any grounds that could have reasonably been raised in the petition.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’766 patent as unpatentable.