`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANON U.S.A., INC.
`Petitioner,
`
`v.
`
`CELLSPIN SOFT, INC.
`Patent Owner.
`
`
`CASE: IPR2019-001271
`Patent No. 9,258,698
`
`PATENT OWNER CELLSPIN’S RESPONSE TO CANON’S
`MOTION TO STRIKE
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as parties to
`this proceeding. Paper 27.
`
`1
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ............................................................................... ii
`
`I. Introduction ...................................................................................................... 1
`
`II. Argument ......................................................................................................... 1
`
`
`A. The evidence submitted with Cellspin’s Sur-Reply, and the Sur-
`Reply, Were a Necessary and Proper Response to the Improper
`New Matters ............................................................................................... 1
`
`
`B. Cellspin’s Necessary and Proper Response to Canon’s Improper
`New Matters Should Not be Stricken in Whole or Part ............................ 9
`
`
`C. Canon’s Reply is a Statutory and Constitutional Violation with
`Improper New Matters to which Cellspin made a Necessary and
`Proper Sur-Reply.
`
`
`D. Canon’s Authorities Are Inapplicable and/or Fail to Overcome
`Cellspin’s Due Process and/or APA Rights .............................................. 10
`
`
`E. Application of PTAB Rules or a Ruling Permitting Canon to
`Submit its Alleged Rebuttal Reply Evidence and/or to Assert
`New Non-Rebuttal,
`Improper Theories, Grounds
`and
`Arguments, While Denying Cellspin the Right to Submit its
`Proper Sur-Reply and/or Sur-Reply Rebuttal Evidence
`Constitutes a Violation of Due Process ..................................................... 10
`
`
`F. Canon’s Flawed Reasons for Striking Do Not Justify Extreme
`Relief.. ........................................................................................................ 12
`
`
`G. To the Extent that Leave Would be Necessary, it Should be
`Granted ....................................................................................................... 13
`
`
`H. The Board should deny the motion as being premature and
`unnecessary ................................................................................................ 14
`
`
`
`
`
`
`
`i
`
`
`
`I. Even if the Board Struck Some or All Sur-Reply Evidence, it
`Would be Improper including Under Due Process, to Strike Any
`of the Sur-Reply ......................................................................................... 15
`
`
`III. Conclusion ................................................................................................ 15
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018) ......................................... 9
`
`Yeda Res. v. Mylan, 906 F.3d 1031 (Fed. Cir. 2018) ...................................... 9
`
`Genzyme v. Biomarin Pharm., 825 F.3d 1360 (Fed. Cir. 2016) ..................... 9
`
`In re NuVasive, 841 F.3d 966, 973 (Fed. Cir. 2016) ....................................... 9
`
`Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359 (Fed. Cir. 2016) 10
`
`Dell v. Acceleron, 818 F.3d 1293 (Fed. Cir. 2016) ......................................... 10
`
`Belden v. Berk-Tek, 805 F.3d 1064 (Fed. Cir. 2015) ...................................... 10, 15
`
`Apple v. e-Watch, IPR2015-00412 (Paper 50) (PTAB May 6, 2016) ............. 10
`
`Abbott Labs. v. Cordis, 710 F.3d 1318, 1328 (Fed. Cir. 2013) ...................... 10
`
`U.S. v. Olano, 507 U.S. 725, 733 (1993) ........................................................ 11
`
`Keystone Driller v. General Excavator, 290 U.S. 240 (1933) ........................ 11
`
`Cisco Sys. v. Oyster Optics, IPR2017-01724 (Paper 25) (Sept. 28, 2017) ..... 11
`
`Trane U.S. v. SEMCO, IPR2018-00514 (PTAB Apr. 17, 2019) .................... 12
`
`Fluke v. Ametek, IPR2016-01428 (Paper 26) (Aug. 16, 2017) ....................... 15
`
`ii
`
`
`
`
`
`
`
`EMC v. Intellectual Ventures, II, IPR2016-01106 (Paper 23)
`(July 17, 2017) ................................................................................................. 15
`
`Silicon Labs. v. Cresta Tech., IPR2015-00615 (Paper 26)
`(PTAB Feb. 29, 2016) ..................................................................................... 15
`
`Constitution, Statutes and Rules:
`
`35 U.S.C. §312(a)(3) ...................................................................................... 1,9-10
`
`37 C.F.R. §42.23(b) ........................................................................................ 1,9
`
`5 U.S.C. §§554(b)-(c), 556(d), 557(c) ........................................................... 1,9
`
`U.S. Constitution, Due Process Clause .......................................................... Passim
`
`35 U.S.C. §316(a)(8) ...................................................................................... 9
`
`PTAB Consol. Guide, pp. 73 & 80-81 ........................................................... 10
`
`
`
`
`
`
`
`iii
`
`
`
`I.
`
`Introduction.
`
`Pending are motions to strike filed by Canon and Cellspin. Papers 38, 39. Per
`Cellspin’s Motion, the Board should strike the improper new theories, directions,
`approaches, arguments and evidence in Canon’s Reply and exhibits, which are not
`proper rebuttal and which could have presented in its prima facie case (the “Improper
`New Matters)” including as noted in Paper 39. As also noted at Paper 39, the Reply
`constitutes an unfairly prejudicial violation of 35 U.S.C. §312(a)(3), 37 C.F.R.
`§42.23(b), the Administrative Procedure Act (“APA”) and due process, including
`because everything, or at least substantially everything, is Improper New Matters.
`Canon’s prejudice complaints ring hollow. The Sur-Reply and evidence were a
`necessary and proper response, pursuant to Cellspin’s rights to fair notice and
`opportunity to be heard (hereinafter a “Necessary and Proper” response), attempting
`to rebut Improper New Matters. Canon’s Motion should be denied, including
`because it would be a violation of Cellspin’s above rights to improperly strike
`Cellspin’s rebuttal in and cited by its Sur-Reply, including without striking the
`Improper New Matters to which Cellspin Necessarily and Properly responded.
`Finally, to the extent Canon maintains that Cellspin’s Motion should be denied as
`untimely, the notion that “ordinarily” leave “should” be requested within 7 days is
`not an absolute, Cellspin’s Motion was filed prior to the deadline for excluding, and
`if the Board was to erroneously denied Cellspin’s motion (in violation of the above
`rights) due to timing, then it should also deny Canon’s on that basis.
`II. Argument.
`A. The evidence submitted with Cellspin’s Sur-Reply, and the Sur-Reply,
`Were a Necessary and Proper Response to the Improper New Matters.
`Canon’s Improper New Matters are not mere responses to constructions or
`
`arguments in the Response. Ex. 2026, ¶¶11-12, which have references at Sur-Reply
`
`1
`
`
`
`
`pp. 1-2, 6-7, are a Necessary and Proper Response to Improper New Matters noted
`
`at §III.B of Cellspin’s Motion to Strike, including as asserted at Reply, pp. 1, 6-7, 9-
`
`10 and Ex. 1043, ¶¶5-7, 10, and related to Canon’s new claim construction and
`
`invalidity Matters, concisely summarized at Reply, p. 7, that “paired” is an
`
`“association… that allows for two-way communication...” Canon had taken no
`
`claim construction position on “paired” in its Petition. However, Cellspin’s Sur-
`
`Reply responds to more than just an Improper New claim construction Matters from
`
`the Reply and Ex. 1043. The Sur-Reply also responds to a new invalidity theory, and
`
`evidence from Ex. 1043, that Hiroishi/Hollstrom have “paired wireless connections”
`
`because they allegedly have “associations” for two-way communication.
`
`Ex. 2026, ¶¶13, 19-27, referenced at Sur-Reply pp. 1-2, 13-14, are a Necessary
`
`and Proper Response to Improper New Matters noted at §III.A of Cellspin’s Motion
`
`to Strike, which involve, in part, Canon and Dr. Madisetti’s new obviousness theory,
`
`and Reply evidence in support thereof, for “paired wireless connections,” including
`
`as asserted at Reply, pp. 2, 10-14 and Ex. 1043, ¶¶10-14.
`
`Ex. 2026, ¶14-18, which have references at Sur-Reply pp. 1-2, 10, are a
`
`Necessary and Proper Response to Improper New Matters noted at §III.A of
`
`Cellspin’s Motion and further asserted at Reply, p. 9 and Ex. 1043, ¶10, that Hiroishi
`
`and Hollstrom “disclose” paired wireless connections “using Bluetooth” and under
`
`Canon’s new “association” theory/position noted above. Reply, p. 9.
`
`
`
`2
`
`
`
`Ex. 2026, ¶¶28-29, which have references at Sur-Reply pp. 12-13, are a
`
`Necessary and Proper Response to the Reply’s and Ex. 1043’s conflation of pairing,
`
`authentication and encryption that are part of Canon/Madisetti’s new obviousness
`
`theory for “paired wireless connections,” including as noted at §III.A of Cellspin’s
`
`Motion, and as asserted at Reply, pp. 2, 10-14 and Ex. 1043, ¶¶10-14. E.g., Ex. 2026,
`
`¶29 (“reply…conflate[s]…options to choose are not… routine design choice.”).
`
`Ex. 2026, ¶30-37, which have references at Sur-Reply pp. 1, 3-4, 6-7, are a
`
`Necessary and Proper Response to the distortion asserted at Reply, pp. 1-6 and Ex.
`
`1043, ¶5-7, 10, which set up a straw man as Cellspin’s construction of “paired” as
`
`requiring “cryptographic authentication” (which is not required, the construction is
`
`“…provides for… cryptographic…”), attempts to discredit Cellspin’s construction
`
`by making the new argument and factual assertion that cryptographic authentication
`
`was merely “optional, ” and concludes by attempting to justify assertion of, and then
`
`asserting, Canon’s new claim construction argument and evidence, noted at §III.B
`
`of Cellspin’s Motion to Strike, and concisely summarized at Reply, p. 7, that paired
`
`is an “association … that allows for two-way communication...”
`
`Ex. 2026, ¶¶38-70, which have references at Sur-Reply p. 1, 4-8, are a Necessary
`
`and Proper Response to the Improper New Matters noted at §III.B of Cellspin’s
`
`Motion to Strike, including as asserted at Reply, pp. 1, 6-7, 9-10 and Ex. 1043, ¶¶5-
`
`7, 10 (see discussion of Ex. 2026, ¶¶11-12 above), relating to Canon/Madisetti’s new
`
`
`
`3
`
`
`
`“association” construction, theory and evidence for “paired” being an “association,”
`
`and further they reply to the Improper New Matters at Reply pp. 9-10 and Ex. 1042,
`
`¶10 that “using Bluetooth” meets Canon’s association construction/theory.
`
`Ex. 2026, ¶¶75-76, which have references at Sur-Reply p. 9, are a Necessary and
`
`Proper Response to the Improper New Matters noted at §III.F of Cellspin’s Motion
`
`to Strike, including as asserted at Reply, pp. pp. 18, 21-23 and Ex. 1043 ¶¶18-19
`
`newly asserting that, the limitation of “graphical user interface” is met by mere
`
`keypad data entered into fields. Reply, p. 22. Canon’s Petition theory and assertions
`
`relied upon an alleged “delete icon” of Nozaki (Pet, p. 20), the alleged “GUI for
`
`selecting image to delete… of Figure 7C” of Hiroishi (Pet, p. 33), and unspecified
`
`alleged GUI functionality from Ando, Fig. 2, which has no text relating to image
`
`deletion (Pet, p. 54; Ex. 1044, Fig. 2), for satisfying limitation “1.j” of “wherein …
`
`(GUI) is … to delete…” Cellspin is responding to Improper New Matters.
`
`Ex. 2026, ¶¶78-84, which have references at Sur-Reply pp. 10-11, are a
`
`Necessary and Proper Response to the Improper New Matters noted at §III.B of
`
`Cellspin’s Motion to Strike, including as asserted at Reply, pp. 1, 6-7, 9-10 and Ex.
`
`1043, ¶¶5-7, 10 (see Ex. 2026, ¶¶11-12 above), relating to Canon/Madisetti’s new
`
`“association” construction, theory and evidence for “paired” being an “association,”
`
`and further they reply to the Improper New Matters at Reply pp. 9-10 and Ex. 1042,
`
`¶10 that “using Bluetooth” meets Canon’s new association construction/theory.
`
`
`
`4
`
`
`
`Ex. 2026, ¶¶85-99, which have references at Sur-Reply pp. 2, 11-15, are a
`
`Necessary and Proper Response to Improper New Matters noted at §III.A of
`
`Cellspin’s Motion to Strike, which involve, in part, Canon/Madisetti’s new
`
`obviousness theory, and Reply evidence in support thereof, for “paired wireless
`
`connections,” including as asserted at Reply, pp. 2, 10-14 and Ex. 1043, ¶¶10-14.
`
`Ex. 2026, ¶¶100-108, which have references at Sur-Reply pp. 2, 14 are a
`
`Necessary and Proper Response to Improper New Matters noted at §III.C of
`
`Cellspin’s Motion to Strike, which involve, in part, Canon/Madisetti’s new Reply
`
`theories and factual assertions concerning cryptographic authenticating being
`
`obvious based upon matters and language set forth in the Bluetooth standard or other
`
`new Exhibits relied upon by Canon, for new reasons, including cryptographic
`
`authentication being a feature of Bluetooth association models, encouragement,
`
`design choice, expectedness, routineness, safeness and/or due to predictable results,
`
`at Reply, pp. 12, 14-16, which is supported by Improper New Matters at Ex. 1043
`
`¶¶13-15; Ex. 1036 at 8-10; Ex. 1039 at 17-18; Ex. 1040 at 55:17-56:2 and 65:2-17.
`
`Further, Ex. 2026, ¶¶100-103, which have references at Sur-Reply p. 16, are also
`
`a Necessary and Proper Response to the Improper New Matters at Reply, p. 17,
`
`where Canon newly argues that, “[i]f a POSITA wanted to establish a connection
`
`between these devices, he or she would have to use cryptographic authentication.”
`
`(citing Ex. 1039 at 7; Ex. 1042 at 31:1-32:9); and that “a POSITA implementing
`
`
`
`5
`
`
`
`Security Mode 3 of …Bluetooth …would have understood cryptographic
`
`authentication was [] mandatory....” These Improper New Matters are noted at
`
`§III.D-E of Cellspin’s Motion to Strike and they additionally constitute an improper
`
`attempt to support the Improper New Matters are noted at §III.C of the Motion.
`
`Ex. 2026, ¶¶109-117, which have references at Sur-Reply p. 17, are a Necessary
`
`and Proper Response to the Improper New Matters at Reply, pp. 19-21 and Ex. 1043
`
`¶¶16-17 asserting that “Takahashi... add[s] the user ID to… filename without
`
`creating a new or different file” (Ex. 1043¶¶16), and that, “even if changing the
`
`filename somehow changed the file… [the] invention would …be obvious. (Ex.
`
`1043¶¶16), including as noted at §III.H of Cellspin’s Motion to Strike.
`
`Ex. 2026, ¶¶118-119, which have references at Sur-Reply pp. 9, 17-18, 21, are a
`
`Necessary and Proper Response to the Improper New Matters noted at §III.F of
`
`Cellspin’s Motion to Strike, including as asserted at Reply, pp. 18, 21-23 and Ex.
`
`1043 ¶¶18-19 newly asserting that “graphical user interface” is met by mere keypad
`
`data entered into fields. Reply, p. 22. Canon’s Petition theory and facts relied upon
`
`an alleged “delete icon” of Nozaki (Pet, p. 20), the alleged “GUI for selecting image
`
`to delete… of Figure 7C” of Hiroishi (Pet, p. 33), and unspecified alleged GUI
`
`functionality from Ando, Fig. 2, which has no text relating to image deletion (Pet, p.
`
`54; Ex. 1044, Fig. 2), for satisfying limitation “1.j,” which is “wherein the graphical
`
`user interface (GUI) is… to delete the created new-media file”.
`
`
`
`6
`
`
`
`Claim 5 reads, “wherein the cellular phone comprises a mobile software
`
`application that when executed by a processor of the cellular phone is configured
`
`to... send request to the camera, store received data… use HTTP … [and] provide a
`
`graphical user interface…” Similarly, Claim 8 reads, “software application for the
`
`cellular phone… is configured to control the processor of the cellular phone to: send
`
`… receive … store … provide … and use HTTP to upload ....” In other words, for
`
`Claims 5 and Claim 8 to be met, a single mobile software application on the cellular
`
`phone must be configured to perform five distinct steps. Ex. 2026, ¶¶120-123, which
`
`have references at Sur-Reply p. 21, are a Necessary and Proper Response to the
`
`Improper New Matters at Reply p. 24, that “claims 5 and 8 encompass one or more
`
`applications that perform the various steps listed above.” E.g., Ex. 2026, ¶122 (“Due
`
`to these technical and usability limitations, a POSITA would not look to implement
`
`the single application …. with multiple applications.”). Canon’s Petition and its
`
`truncated analysis of claims 5 and 8 did not address at all which applications
`
`performed the steps required to be performable by a “software application”; nor did
`
`Canon’s Petition address at all a theory that multiple software applications were
`
`performing or even could perform these functions. See, Pet, pp. 37-45, . For
`
`example, Pet., pp. 39-40 refer to Hiroishi’ s purported “mobile software application”
`
`without specifying any software or tying it to the functions in claims 5 and 8.
`
`
`
`7
`
`
`
`Ex. 2026, ¶127 is a preemptive refutation of objections to the manner in which
`
`Dr. Foley’s declarations had been written. This preemptively refuted objections
`
`made by Panasonic at Paper 23, pp. 2-3 in parallel IPR2019-00127 that Dr. Foley
`
`had “parroted” Cellspin’s Response. However, Canon has not raised such objections,
`
`so at this point this issue is moot, inconsequential and no grounds to strike anything.
`
`Ex. 2026, ¶¶7 and 128, which are relied upon at Sur-Reply p. 1, are merely
`
`summarizing the points made elsewhere in the Declaration, and thus they are a
`
`Necessary and Proper Response to the Improper New Matters noted above.
`
`Ex. 2026, ¶¶1-6 and 9 are merely introductory information, and thus they are a
`
`Necessary and Proper Response to the Improper New Matters noted above.
`
`Finally, Ex. 2026-2029 and 2031-2033 are cited in the above Necessary and
`
`Proper Responses. Thus, they also constitute Necessary and Proper Responses.
`
`B. Cellspin’s Necessary and Proper Response to Canon’s Improper New
`Matters Should Not be Stricken in Whole or Part.
`Canon’s Motion seeks the draconian relief of striking Cellspin’s entire Sur-Reply
`
`and its evidence. However, Cellspin’s Necessary and Proper Response to Canon’s
`
`Improper New Matters should not be stricken in whole (which Canon requests) or
`
`part (which Canon has not requested). Such draconian relief, especially in view of
`
`the Improper New Matters submitted in and with Canon’s Reply, would violate 35
`
`U.S.C. § 312(a)(3), as well as Cellspin’s rights under 37 C.F.R. §42.23(b), 35 U.S.C.
`
`§ 316(a)(8), the APA and due process, including fair notice and the opportunity to
`
`
`
`8
`
`
`
`respond and be fairly heard, and it would unfairly prejudice Cellspin. See SAS
`
`Institute v. Iancu, 138 S.Ct. 1348, 1353 (2018); Yeda Res. v. Mylan, 906 F.3d 1031,
`
`1040 (Fed. Cir. 2018); Genzyme v. Biomarin Pharm., 825 F.3d 1360, 1365-66 (Fed.
`
`Cir. 2016); In re NuVasive, 841 F.3d 966, 973 (Fed. Cir. 2016); Intelligent Bio-Sys.
`
`v. Illumina Cambridge, 821 F.3d 1359, 1369-70 (Fed. Cir. 2016); Dell v. Acceleron,
`
`818 F.3d 1293, 1301 (Fed. Cir. 2016); Belden v. Berk-Tek, 805 F.3d 1064, 1078,
`
`1081 (Fed. Cir. 2015); Apple v. e-Watch, IPR2015-00412 (Paper 50) (PTAB May 6,
`
`2016); See Consol. Guide, pp. 73 & 80-81. See also 5 U.S.C. §§554(b)-(c), 556(d),
`
`557(c); Abbott Labs. v. Cordis, 710 F.3d 1318, 1328 (Fed. Cir. 2013).
`
`C. Canon’s Reply is a Statutory and Constitutional Violation with Improper
`New Matters to which Cellspin made a Necessary and Proper Sur-Reply.
`Section 312(a)(3) requires petitions to identify “with particularity… the grounds
`
`on which the challenge to each claim is based, and the evidence that supports the
`
`grounds…” See SAS Institute, 138 S.Ct. at 1353. The IPR statutes do not even
`
`authorize a Reply, see, e.g., 316(a)(8), much less one with the Improper New Matters
`
`which, at minimum under these facts, violates Cellspin’s statutory, due process and
`
`APA rights. Canon’s Motion does not assert that the evidence or briefing that it seeks
`
`to strike does not constitute a Necessary and Proper Response to Improper New
`
`Matters in the Reply. Rather, Canon seeks to use its Improper New Matters as a
`
`sword to seek invalidity while seeking to strike Cellspin’s Necessary and Proper
`
`Response, which attempted to address such Matters in Sur-Reply. Striking Cellspin’s
`
`
`
`9
`
`
`
`Sur-Reply or evidence, especially without striking Canon’s Reply and new reply
`
`evidence, would unfairly tip the IPR scale to Canon and violate Cellspin’s rights.
`
`Canon effectively invited Cellspin to submit the objected to evidence, because
`
`the Sur-Reply and its evidence were a Necessary and Proper Response, pursuant to
`
`Cellspin’s statutory, due process and APA rights noted herein, including to fair
`
`notice and a fair opportunity to be heard. Canon’s Motion should be denied on this
`
`basis alone, including because the Improper New Matters should, at minimum,
`
`constitute a waiver – see, e.g., U.S. v. Olano, 507 U.S. 725, 733 (1993) (waiver is
`
`intentional relinquishment or abandonment) – or estoppel from any right to object to
`
`Cellspin’s Necessary and Proper Response in its Sur-Reply and evidence. Further,
`
`Canon’s Motion should be denied, at a minimum, due to Canon’s unclean hands in
`
`seeking relief based upon Cellspin’s Necessary and Proper response to Improper
`
`New Reply Matters. E.g., Keystone Driller v. General Excavator, 290 U.S. 240, 245
`
`(1933). More fundamentally, Canon’s Motion should be denied because it would be
`
`a grievous and fundamentally unfair violation of Cellspin’s statutory, due process
`
`and APA rights to improperly strike Cellspin’s responsive matters in and cited by its
`
`Sur-Reply, including if the Board declined to strike the Improper New Matters in the
`
`Reply to which Cellspin was Necessarily and Properly responding. Consistent with
`
`due process, the PTAB has noted fundamental fairness to Owners where new
`
`evidence and argument have been submitted, such that Owners should have an
`
`
`
`10
`
`
`
`opportunity to fairly respond. E.g., Cisco Sys. v. Oyster Optics, IPR2017-01724
`
`(Paper 25) (Sept. 28, 2017) (permitting sur-reply evidence).
`
`D. Canon’s Authorities Are Inapplicable and/or Fail to Overcome Cellspin’s
`Due Process and/or APA Rights.
`It is not inconsistent with the Practice Guide for the Board to grant leave to file
`
`Sur-Reply evidence or to deny striking Sur-Reply evidence when justice and due
`
`process require its consideration. Furthermore, the Mallinckrodt and Navistar
`
`decisions relied upon by Canon did not involve the equitable and due process issues
`
`applicable here, including due to Canon’s Improper New Matters. To the extent
`
`those decisions might arguably apply here, they should apply to strike Canon’s
`
`Improper New Matters in accordance with Cellspin’s Motion. Further, Canon’s
`
`reliance upon Trane is misplaced, including because it does not involve these
`
`equitable and due process concerns, the unfair prejudice is applicable to Cellspin not
`
`Canon, and there is no undue burden or efficiency loss in reviewing Cellspin’s
`
`proper rebuttal evidence. Trane U.S. v. SEMCO, IPR2018-00514 (PTAB Apr. 17,
`
`2019). Further, Cellspin’s rights and prejudice outweigh any burden or inefficiency.
`
`E. Application of PTAB Rules or a Ruling Permitting Canon to Submit its
`Alleged Rebuttal Reply Evidence and/or to Assert Improper New
`Matters, While Denying Cellspin the Right to Submit its Sur-Reply
`and/or Sur-Reply Rebuttal Evidence Constitutes Due Process Violation.
`Including in view of the fact that the IPR statute does not authorize Replies,
`
`application of PTAB Rules, see Consol. Guide, p. 73, or a ruling from the Board
`
`
`
`11
`
`
`
`permitting Canon to submit its alleged rebuttal Reply evidence, and/or to assert its
`
`New non-rebuttal, Improper theories, grounds and arguments, while denying
`
`Cellspin the right to submit its rebutting Sur-Reply and/or Sur-Reply rebuttal
`
`evidence, constitutes a violation of Cellspin’s due process rights, including to a fair
`
`hearing, notice and opportunity to respond and be heard. This is established by the
`
`facts of this matter and supported by the multiple due process and APA cases above.
`
`F. Canon’s Flawed Reasons for Striking Do Not Justify Extreme Relief.
`Canon’s Motion, p. 2 can only point to “Exhibit 2026 at 14-34” which it alleges
`
`supports an overarching and unsupported argument that Cellspin’s Sur-Reply and
`
`Exs. 2026-2033 somehow constitute merely “an effort to repair Cellspin’s deficient
`
`claim construction positions.” This is clearly not the case. Rather, as set forth in
`
`Cellspin’s Motion to Strike and in §A above, Cellspin’s Sur-Reply and Exs. 2026-
`
`2033 are a Necessary and Proper Response to the manifest Improper New Matters
`
`in Canon’s Reply and its evidence, including new claim construction positions, new
`
`theories for invalidity, and new evidence and positions attempting to support these
`
`Improper New Matters. As to the specific complaints about “Exhibit 2026 at 14-34,”
`
`their Necessary and Proper Response to Improper New Matters is noted in §A above.
`
`Canon’s Motion, p. 2 also complains that “Dr. Foley also addressed technologies
`
`other than Bluetooth, such as Wi-Fi and Zigbee, citing new technical documents
`
`spanning hundreds of pages. Id. at 15-17; Exs. 2027-2033.” To the contrary, the
`
`
`
`12
`
`
`
`references to Wi-Fi and Zigbee are actually at Ex. 2026, ¶¶31-37, which, as noted at
`
`§A above, constitute a Necessary and Proper Response to Improper New Matters.
`
`Finally, Canon’s Motion, p. 2 complains that Cellspin “incorporated Dr. Foley’s
`
`new opinions into its sur-reply … to argue that its original constructions were proper.
`
`Paper 29 at 3-9.” To the contrary, as noted in §A above, Reply, pp. 3-8 constitute a
`
`Necessary and Proper Response to Improper New Matters regarding Canon’s new
`
`claim construction and invalidity theories, positions and evidence for the vague
`
`notion of “associating” being sufficient for “paired” being met. The discussion of
`
`“cryptographically authenticating” spanning Reply, pp. 8-9 does not cite or rely
`
`upon Ex. 2026 or any other Sur-Reply evidence. The discussion of GUI at Reply p.
`
`9 is a Necessary and Proper Response to Improper New Matters regarding Canon’s
`
`new claim construction and invalidity theories, positions and evidence for text boxes
`
`constituting GUIs, as noted in §A above. Finally, the discussion of “along with” at
`
`Reply p. 9 does not cite or rely upon Ex. 2026 or any other Sur-Reply evidence.
`
`G. To the Extent that Leave Would be Necessary, it Should be Granted.
`To the extent that leave would be necessary for Cellspin’s Sur-Reply or its
`
`evidence, such leave should be granted and request for such leave is hereby made.
`
`Including in view of the Practice Guide, it is unclear how Cellspin could realistically
`
`obtain leave in advance to file its Sur-Reply evidence, but Canon’s Motion criticizes
`
`Cellspin for not making the attempt beforehand. The due process and fundamental
`
`
`
`13
`
`
`
`fairness issues herein are applicable whether or not Cellspin made a likely futile
`
`advance request to file its Sur-Reply evidence. Furthermore, Cellspin’s Motion to
`
`Strike, Canon’s Motion and Cellspin’s submitted Sur-Reply and evidence have now
`
`framed the issues for the Board to make a reasoned determination whether to grant
`
`leave, or alternatively whether Canon’s Motion should be denied. Furthermore, if
`
`the Board struck Cellspin’s Necessary and Proper Sur-Reply and evidence because
`
`Cellspin did not request advance leave, including when the Board’s Guidelines do
`
`not have a procedure for requesting such leave, that would also constitute an
`
`arbitrary and improper violation of Cellspin’s statutory, due process and APA rights.
`
`Further, the foregoing filings have not only framed the issues in dispute, they have
`
`also provided an appellate record if needed. Thus, Cellspin’s filings were, at
`
`minimum, justified due process, framing issues and making an appropriate record.
`
`H. The Board should deny the motion as being premature and unnecessary.
`Irrespective of the merits of the Motion or of Cellspin’s contravening rights, the
`
`Board should deny the motion because it is premature to strike any of Cellspin’s
`
`filings until the Board considers all submissions and arguments and prepares a final
`
`ruling, as striking matters may inhibit their inclusion in the public and appellate
`
`records, and because the Board can sort through what is improperly new without a
`
`motion to strike. E.g., Fluke v. Ametek, IPR2016-01428 ( Paper 26) (Aug. 16, 2017);
`
`EMC v. Intellectual Ventures, II, IPR2016-01106 (Paper 23) (July 17, 2017); Silicon
`
`
`
`14
`
`
`
`Labs. v. Cresta Tech., IPR2015-00615 (Paper 26) (PTAB Feb. 29, 2016).
`
`I. Even if the Board Struck Some or All Sur-Reply Evidence, it Would be
`Improper, including Under Due Process, to Strike Any of the Sur-Reply.
`Even if the Board erroneously struck some or all of Cellspin’s Sur-Reply
`
`evidence, it would be improper, including a due process and APA violation, to strike
`
`any of Cellspin’s Sur-Reply. The due process and APA cases cited above require a
`
`fair opportunity to be heard. At worst, Cellspin’s argument could be considered
`
`without support of stricken evidence. Further, even if the Board erroneously struck
`
`some or all Sur-Reply evidence, the only just and proper remedy, including pursuant
`
`to due process and APA rights, would be to permit a prompt, corrected sur-reply,
`
`which would not include any new theories, directions, approaches, or arguments,
`
`consistent with any ruling granting the motion in whole or part. Belden, 805 F.3d at
`
`1079. This would not unfairly prejudice Canon, yet it would provide a resolution
`
`from any granting of the motion with at least minimal fairness and due process.
`
`III. Conclusion.
`
`Canon lacks unfair prejudice and cannot specify anything not a Necessary and
`
`Proper Response to Improper New Matters. Canon has not carried its burden to show
`
`that striking any, or all, of Cellspin’s Sur-Reply or evidence would be appropriate,
`
`or that it would not violate Cellspin’s rights. Cellspin requests denial of Canon’s
`
`Motion, and it also requests the relief noted herein.
`
`
`
`
`
`15
`
`
`
`
`
`
`
`Dated: January 10, 2020
`
`
`
`Respectfully submitted,
`
`/s/ John J. Edmonds
`John J. Edmonds, Reg. No. 56,184
`EDMONDS & SCHLATHER, PLLC
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`Telephone: 213-973-7846
`Facsimile: 213-835-6996
`Email: pto-edmonds@ip-lit.com
`
`
`Stephen F. Schlather, Reg. No. 45,081
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`Telephone: 713-234-0044
`Facsimile: 713-224-6651
`Email: sschlather@ip-lit.com
`
`
`
`Certificate of Service
`
`I hereby certify that this Response is being served on January 10, 2020 by
`
`electronic mail and PTAB ECF to the following:
`
`jarednewton@quinnemaneul.com
`
`
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
`
`Dated: January 10, 2020
`
`
`
`
`
`/s/ John J. Edmonds
`John J. Edmonds
`
`Counsel for Patent Owner,
`Cellspin Soft, Inc.
`
`16
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
