LifeScan, Inc. et al. v. Cellspin Soft, Inc.

Petition

Petition summary

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

## 1. Case Identification
- Case Number: [IPR2025-00104](https://ai-lab.exparte.com/case/ptab/IPR2025-00104)
- Patent #: [8904030](https://ai-lab.exparte.com/patent/8904030)
- Filed: October 30, 2024
- Petitioner(s): [LifeScan, Inc.](https://ai-lab.exparte.com/party/lifescan-inc), [Senseonics Holdings, Inc.](https://ai-lab.exparte.com/party/senseonics-holdings-inc), and [Ascensia Diabetes Care Holdings AG](https://ai-lab.exparte.com/party/ascensia-diabetes-care-holdings-ag-inc)
- Patent Owner(s): [Cellspin Soft, Inc.](https://ai-lab.exparte.com/party/cellspin-soft-inc)
- Challenged Claims: 1-18

## 2. Patent Overview
- Title: Method and System for Publishing Data and Multimedia Content from a Digital Data Capture Device
- Brief Description: The [’030](https://ai-lab.exparte.com/patent/8904030) patent discloses a method for transferring data from a [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019)-enabled data capture device (e.g., a digital camera) to a remote internet server via an intermediary [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019)-enabled mobile device. The system is designed to automate the process of publishing multimedia content to websites with minimal user intervention.

## 3. Grounds for Unpatentability

#### Ground 1A: Claims 1-18 are obvious over Hiroishi, Takahashi, and Bluetooth
- **Prior Art Relied Upon:** [Hiroishi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1011) (Japanese Application # JP 2003-60953), [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014) (Japanese Application # JP 2005-303511), and the [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) Core Specification v2.1 + EDR ([Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019)).
- **Core Argument for this Ground:**
  - **Prior Art Mapping:** Petitioner argued that [Hiroishi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1011) taught the core system of a digital camera wirelessly connected to and controlled by a mobile phone using [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) for capturing and transferring images. [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014) allegedly taught the missing web-publishing functionality, disclosing a mobile device using HTTP to upload image data to a remote server, including a user ID and timestamp. The [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) specification was cited to teach standard features like establishing a secure, encrypted connection using a cryptographic key and messaging protocols for communicating device capabilities, which Petitioner asserted would be obvious to implement in [Hiroishi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1011)’s system.
  - **Motivation to Combine:** A person of ordinary skill in the art (POSITA) would combine the analogous arts of [Hiroishi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1011) and [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014) to add the desirable and widespread functionality of web publishing to [Hiroishi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1011)’s camera-to-phone transfer system. [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014)’s method for uploading images with user identifiers and timestamps via HTTP provided a predictable solution to the problem of sharing captured images. Implementing standard [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) security and messaging protocols would be a natural and necessary step to ensure a robust and secure connection.
  - **Expectation of Success:** A POSITA would have a high expectation of success, as the combination involved integrating well-known technologies ([Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) connectivity, HTTP web uploads) for their conventional purposes.

#### Ground 1B: Claims 1-18 are obvious over Hiroishi, Kahn, and Bluetooth
- **Prior Art Relied Upon:** [Hiroishi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1011), [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1017) (Application # 2004/0004737), and [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019).
- **Core Argument for this Ground:**
  - **Prior Art Mapping:** This ground presented a similar argument to Ground 1A, but substituted [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1017) for [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014) as the reference teaching web-publishing functionality. [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1017) taught a wireless camera coupled to a cellular phone that acts as a host device to upload images to a web-based management server via HTTP. Critically, [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1017) also disclosed including location ID (e.g., GPS data) with the images, which could be used for location-dependent promotions.
  - **Motivation to Combine:** The motivation was analogous to Ground 1A. A POSITA would be motivated to integrate [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1017)’s HTTP-based upload techniques with [Hiroishi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1011)’s system to enable web publishing. [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1017) provided a clear model for transferring images from a mobile device to a server, creating albums, and associating user data with the images.
  - **Key Aspects:** This ground relied on the same core logic as Ground 1A but used [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1017) as an alternative reference to demonstrate that the concept of uploading images from a mobile device to a server with associated metadata was a well-known and obvious design choice.

#### Ground 2A/2B: Claims 1-18 are obvious over Singh129 in view of Bluetooth and Takahashi
- **Prior Art Relied Upon:** [Singh129](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1009) (Application # 2009/0172129), [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019), and [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014).
- **Core Argument for this Ground:**
  - **Prior Art Mapping:** Petitioner asserted that [Singh129](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1009), an application in the [’030](https://ai-lab.exparte.com/patent/8904030) patent’s own family, disclosed the bulk of the claimed system but failed to provide written description for key limitations added during prosecution, such as encrypting data on the capture device and creating a data object with a timestamp. This ground argued it would have been obvious to modify [Singh129](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1009)’s system by incorporating standard [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) features (e.g., encryption, capability messaging) and adding timestamps as taught by [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014).
  - **Motivation to Combine:** A POSITA would be motivated to enhance the system in [Singh129](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1009) for the same reasons articulated in Ground 1A: to improve security and add valuable metadata. Adding encryption is a standard security upgrade taught by the [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) specification, and adding a timestamp as taught by [Takahashi](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1014) provides useful, contextual information for organizing and identifying photos.
  - **Expectation of Success:** Success would be reasonably expected because the modifications involved applying conventional features (encryption, timestamps) to an existing data transfer framework.

## 4. Key Claim Construction Positions
- Petitioner argued that no express constructions were necessary to find the claims unpatentable.
- However, Petitioner noted that in a related IPR, the Board construed "cryptographically authenticating identity of the cellular phone" to encompass "authenticating the identity... using some form of security or encryption, including by use of a shared passkey." This construction supports the view that standard [Bluetooth](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1019) pairing and security features meet the claim limitations.

## 5. Key Technical Contentions (Beyond Claim Construction)
- **No Entitlement to Earlier Priority Date:** A central contention was that the [’030](https://ai-lab.exparte.com/patent/8904030) patent was not entitled to its claimed priority date of December 28, 2007. Petitioner argued the priority applications lacked written description support for critical limitations added later, including the data capture device itself performing encryption and the creation of a data object with a timestamp.
- **Relevance:** This argument, if successful, establishes that references like the [Singh129](https://ai-lab.exparte.com/case/ptab/IPR2025-00104/doc/1009) application (published 2009) qualify as prior art under 35 U.S.C. §102, making them available for the obviousness challenges.

## 6. Arguments Regarding Discretionary Denial
- Petitioner argued against discretionary denial under both §325(d) and §314(a) (Fintiv).
- **§325(d) (Advanced Bionics):** Petitioner contended that the grounds presented were not substantially the same as the art and arguments considered by the examiner during the original prosecution, particularly because the examiner did not have the benefit of the specific combinations and motivations presented in the petition.
- **§314(a) (Fintiv):** Petitioner argued the Fintiv factors strongly favored institution. The Final Written Decision (FWD) in the IPR proceeding it seeks to join is anticipated by September 2025, well before the parallel district court trial date of March 2026. Further, Petitioner noted that a related IPR (IPR2024-00770) on the same patent and similar grounds was already instituted, indicating the merits are strong.

## 7. Relief Requested
- Petitioner requested institution of an inter partes review and cancellation of claims 1-18 of the [’030](https://ai-lab.exparte.com/patent/8904030) patent as unpatentable.

Bluetooth data publishing patent challenged as obvious: Hiroishi & Kahn prior art cited against all 18 claims for combining known mobile-to-web uploads.

IPR2025-00104

LifeScan, Inc. v. Cellspin Soft, Inc.