LifeScan Inc v. Cellspin Soft Inc

1. Case Identification

• Case #: IPR2025-00103
• Patent #: 9,900,766
• Filed: October 30, 2024
• Petitioner(s): Lifescan, Inc., Senseonics Holdings, Inc., and Ascensia Diabetes Care Holdings AG
• Patent Owner(s): Cellspin Soft, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: System for Wireless Data Transfer and Publication from a Capture Device
• Brief Description: The ’766 patent discloses a system for using a separate, short-range wireless data capture device in conjunction with a mobile phone. The system is designed to automatically transfer captured data and multimedia content to the phone and then publish it to one or more websites.

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 the ’766 patent is not entitled to its claimed 2007 priority date because its claims improperly mix-and-match features from two distinct systems disclosed in separate priority documents. As such, the patent's effective filing date is July 3, 2017, making Singh129 and Singh906 prior art under 35 U.S.C. §102. Petitioner asserted that because the Patent Owner relied on both applications for written description support, it is obvious to combine them. Singh129 taught the base system of a wireless data capture device paired with a mobile phone for publishing content. Singh906, which was incorporated by reference into Singh129, taught the missing limitations of the independent claims: using HTTP to upload new data along with user information (e.g., authentication credentials) to a publishing website, where a user identifier is used to publish the data for private consumption.
  • Motivation to Combine: A POSITA would combine the references because Singh129 explicitly incorporated the application that published as Singh906, directing a skilled artisan to its teachings. Additional motivations included improving the Singh129 system by adding user authentication for greater control over publishing, solving the known problem of associating media objects with specific user preferences, and increasing the speed and efficiency of uploads to password-protected websites.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying known techniques from Singh906 to the known system of Singh129, which were both from the same field of endeavor and the same assignee, to achieve the predictable benefits of enhanced user control and authenticated publishing.

Ground 2: Claims 1-15 are obvious over Kahn in view of Bluetooth

• Prior Art Relied Upon: Kahn (Application # 2004/0004737) and Bluetooth (Bluetooth Specification Version 2.1 + EDR).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Kahn disclosed the fundamental system architecture: a camera that connects to a host device like a cellular phone to transfer captured images to a web-based image management server. Kahn specified this connection could be "detachable" and "cableless." The Bluetooth specification provided the then-standard implementation for such a connection, disclosing all necessary features for a short-range, paired wireless link, including cryptographic authentication through methods like LMP Pairing and Secure Simple Pairing, and defined association protocols.
  • Motivation to Combine: A POSITA would have been motivated to implement Kahn's "cableless" connection using Bluetooth because it was the ubiquitous and well-known industry standard for short-range wireless communication by the patent's alleged critical date. Mobile phones of the era typically included Bluetooth, making it the most logical and obvious choice for connecting a peripheral camera.
  • Expectation of Success: Success was highly predictable because Bluetooth was a mature, well-documented technology with detailed specifications. Implementing its established protocols for pairing, authentication, and data transfer between a camera and a phone was a routine task for a skilled artisan.

Ground 3: Claims 1-15 are obvious over Kahn and Bluetooth in view of Feinberg

• Prior Art Relied Upon: Kahn (Application # 2004/0004737), Bluetooth (Bluetooth Specification Version 2.1 + EDR), and Feinberg (Application # 2007/0073937).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground augmented the Kahn/Bluetooth combination with Feinberg's teachings to provide a more specific basis for the "signal to notify" limitation. While the base combination mapped this limitation to Kahn's timestamps, Feinberg explicitly taught embedding low-resolution thumbnail images into the header of the full-resolution image file. Petitioner argued that the presence of these thumbnails in the header of the transferred data object would act as the "signal to notify" the mobile phone that new data was received.
  • Motivation to Combine: A POSITA would combine Feinberg's teachings with the Kahn system to enhance efficiency and improve user experience. Kahn already taught a "preview" feature for photos. Feinberg provided a known and efficient method for implementing this using camera-generated thumbnails. This would allow for quick previews on the mobile device and reduce the computational burden on the server, as it could simply extract the thumbnails from the file header instead of generating them.
  • Expectation of Success: The combination was expected to succeed, as it involved integrating a standard image handling technique (thumbnails from Feinberg) into an established wireless image transfer framework (Kahn with Bluetooth) to achieve the predictable benefit of faster, more efficient image previews.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) based on the Advanced Bionics test would be improper. They contended that neither the same art nor the same arguments were previously presented to the Office, and that the examiner materially erred by failing to analyze the patent's entitlement to its claimed priority date, thereby overlooking key prior art.
• Petitioner further argued that the Fintiv factors under §314(a) strongly favor institution. Key factors cited were the distant trial date in the parallel litigation (March 2026), which is months after the IPR's anticipated Final Written Decision (September 2025), and the minimal investment by the parties and court to date. Petitioner also highlighted that this is a "copycat" petition seeking joinder with an already-instituted IPR (IPR2024-00769), confirming the strong merits of the case and reducing the burden on the Board.

5. Relief Requested

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