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`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 MOTION TO STRIKE AND,
`ALTERNATIVELY, EXCLUDE IMPROPER REPLY AND REPLY
`EVIDENCE ASSERTED BY PETITIONER CANON
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as parties to
`this proceeding. Paper 27.
`
`1
`
`
`

`

`TABLE OF CONTENTS
`
`I. Introduction and Relief Requested ................................................................. 1
`
`II. Procedural History .......................................................................................... 4
`
`III. Argument Including Basis for Relief Under §42.23(b) and Due
`Process. ........................................................................................................... 4
`
`A. Canon’s new Reply
`theory concerning paired wireless
`connections being obvious, including in view of Bluetooth,
`should be stricken or, alternatively, excluded ........................................... 4
`
`
`B. Canon’s new Reply theory concerning paired wireless connection
`now being construed to require an “association” instead of
`merely requiring two-way communications; and Canon’s new
`theory that Hiroishi and Hollstrom meet this new “association”
`theory of pairing, should be stricken or, alternatively, excluded .............. 7
`
`
`cryptographic
`concerning
`theory
`C. Canon’s new Reply
`authenticating being obvious based upon matters and language
`set forth in the Bluetooth standard or other new Exhibits relied
`upon by Canon, for various reasons, including cryptographic
`authentication being a feature of Bluetooth association models,
`encouragement, design choice, expectedness, routineness,
`safeness and/or due to predictable results, should be stricken or,
`alternatively, excluded ............................................................................... 8
`
`
`D. Canon’s new Reply theory concerning that if a POTISA wanted
`to establish a connection, he or she would necessarily use or
`“have to use” cryptographic authentication, including based
`upon analysis of contents of the Bluetooth Standard or other new
`Exhibits relied upon by Canon, should be stricken or,
`alternatively, excluded ............................................................................... 10
`
`
`cryptographic
`concerning
`theory
`E. Canon’s new Reply
`authentication being a “mandatory” feature, including under
`Security Mode 3 of the Bluetooth Standard, should be stricken
`or, alternatively, excluded ......................................................................... 11
`
`
`
`
`
`i
`
`

`

`F. Canon’s new Reply theories for the GUI element being satisfied
`should be stricken or, alternatively, excluded ........................................... 11
`
`
`G. Canon’s new Reply theories for combining, and motivations to
`combine, Hiroishi with Nozaki and/or Ando for using a mobile
`GUI for image deletion on the camera should be stricken or,
`alternatively, excluded ............................................................................... 12
`
`
`theory concerning obviousness “if”
`H. Canon’s new Reply
`Takahashi’s newly named file is a different file should be
`stricken or, alternatively, excluded ............................................................ 14
`
`
`IV. Conclusion.................................................................................................... 14
`
`
`ii
`
`
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`Cases:
`
`Genzyme v. Biomarin Pharm., 825 F.3d 1360 (Fed. Cir. 2016) ....................... 1,2
`
`Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359
`(Fed. Cir. 2016) .................................................................................................. 1
`
`In re NuVasive, 841 F.3d 966 (Fed. Cir. 2016) .................................................. 1
`
`Belden v. Berk-Tek, 805 F.3d 1064 (Fed. Cir. 2015) ......................................... 1
`
`Apple v. e-Watch, IPR2015-00412 (Paper 50, p. 44)
`(PTAB May 6, 2016) .......................................................................................... 1
`
`Abbott Labs. v. Cordis, 710 F.3d 1318 (Fed. Cir. 2013) ................................... 1
`
`Yeda Res. v. Mylan, 906 F.3d 1031 (Fed. Cir. 2018) ......................................... 2
`
`Dell v. Acceleron, 818 F.3d 1293 (Fed. Cir. 2016) ............................................ 2
`
`N. Am. Coal v. Miller, 870 F.2d 948 (3d Cir. 1989) .......................................... 2
`
`Canon v. Intellectual Ventures II, IPR2014-00631, Paper 50
`(PTAB Aug. 19, 2015) ....................................................................................... 4
`
`Constitution and Statutes:
`
`37 C.F.R. §42.23(b) ........................................................................................ Passim
`
`5 U.S.C. §§ 554(b)-(c), 556(d), 557(c) .......................................................... 1
`
`U.S. Constitution, Due Process Clause .......................................................... Passim
`
`
`
`
`
`iii
`
`

`

`I.
`
`Introduction and Relief Requested.
`
`The Board should strike the improper new theories, directions, approaches,
`
`arguments and evidence in Canon’s Reply and its exhibits noted in Section III, which
`
`are not proper rebuttal and which Canon could, and should, have presented in its
`
`prima facie case in its Petition (collectively the “Improper New Matters”), including
`
`pursuant to 37 C.F.R. §42.23(b), the Administrative Procedure Act (“APA”) and due
`
`process. See Genzyme v. Biomarin Pharm., 825 F.3d 1360, 1365-66 (Fed. Cir.
`
`2016); Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359, 1369-70 (Fed.
`
`Cir. 2016); In re NuVasive, 841 F.3d 966, 973 (Fed. Cir. 2016); Belden v. Berk-Tek,
`
`805 F.3d 1064, 1078, 1081 (Fed. Cir. 2015); Apple v. e-Watch, IPR2015-00412
`
`(Paper 50, p. 44) (PTAB May 6, 2016); See Consolidated 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). Canon’s Reply constitutes a clear, egregious and
`
`unfairly prejudicial violation, for at least the reason that everything, or at minimum
`
`substantially everything of substance or consequence, constitutes Improper New
`
`Matters.
`
`This egregious violation severely prejudices Cellspin at this advanced stage of
`
`this proceeding. Failure to strike, or, alternatively, exclude, would also violate the
`
`APA and its guarantees of due process, including fair notice and the opportunity to
`
`respond and be fairly heard. Admission of these Improper New Matters would
`
`1
`
`
`

`

`violate due process, including due to insufficient notice and insufficient opportunity
`
`to respond. See Genzyme, 825 F.3d at 1366; Yeda Res. v. Mylan, 906 F.3d 1031,
`
`1040 (Fed. Cir. 2018); Dell v. Acceleron, 818 F.3d 1293, 1301 (Fed. Cir. 2016).
`
`Further, if the Board does not strike, or at minimum disregard, these Improper
`
`New Matters, any decision in this proceeding will be subject to vacatur lack of due
`
`process. See id. at 1301-02; N. Am. Coal v. Miller, 870 F.2d 948, 951 (3d Cir. 1989).
`
`Anything short of striking these Improper New Matters, or alternatively,
`
`excluding them, would violate Cellspin’s due process rights and the APA, and
`
`substantially and unfairly prejudice Cellspin. Because Canon’s Reply and the
`
`Madisetti Reply Declaration at Ex. 1043 constitute such an egregious violation of
`
`§42.23(b) and fundamental fairness, and because nothing of substance is left in the
`
`Reply or Declaration when the Improper Matters are excluded, the just, fair and
`
`proper remedy under the totality of the circumstances is striking (or, alternatively, at
`
`a minimum, excluding and/or disregarding) the entire Reply and supporting
`
`evidence cited therein. See Practice Guide at 74.
`
`Alternatively, §42.23(b), due process and fundamental fairness requires striking
`
`(or, alternatively, at minimum, excluding and/or disregarding) the portions noted
`
`specifically herein from Canon’s Reply and the evidence it relies upon, including
`
`the Madisetti Reply Declaration (Ex. 1043) and Exhibits 1036-40 and 1044-45 relied
`
`upon by Ex. 1043 and the Reply. It would constitute a grave due process violation if
`
`
`
`2
`
`

`

`the Board does not strike or disregard the Improper New Matters asserted in Canon’s
`
`Reply, especially when the Board is entertaining Canon’s motion to strike Cellspin’s
`
`Sur-Reply and evidence in support thereof that is directly responsive to the Improper
`
`New Matters asserted in Canon’s Reply.
`
`Further, the fact that Cellspin was able to file a Sur-Reply did not cure Canon’s
`
`inexcusable violation of §42.23(b) or the due process violation that would result
`
`without the relief sought herein, due to at least the following reasons: (1) the
`
`advanced stage of this proceeding; (2) the limited time frame; and (3) the word count
`
`limitations and/or scope for sur-replies. Disallowing, refusing to consider and/or
`
`failing to grant leave for (with such leave expressly being requested to the extent
`
`needed) the evidence supporting Cellspin’s Sur-Reply and/or portions of the Sur-
`
`Reply reliant thereon would constitute a grievous violation of Cellspin’s right to due
`
`process, especially if any or all of Canon’s new matters were improperly considered
`
`by the Board.
`
`Further, Cellspin’s Sur-Reply and its evidence were primarily and substantially
`
`devoted to attempting to address Improper New Matters in the Reply. Thus, it would
`
`be a further grievous and fundamentally unfair result to improperly strike Cellspin’s
`
`responsive matters in and cited by its Sur-Reply, especially if the Board declined to
`
`strike the Improper New Matters in Canon’s Reply to which Cellspin was
`
`responding.
`
`
`
`3
`
`

`

`Finally, should the Board decide to impose a more lenient sanction as an
`
`alternative to striking, or alternatively, disregarding the Reply (which Cellspin
`
`asserts would not be the proper remedy for at least the reasons set forth herein), the
`
`Board could, at a minimum, strike the Exhibits objected to and treat the statements
`
`in the Reply citing to those exhibits as unsupported attorney argument.
`
`Anticipating Cellspin’s Motion, Canon’s Reply at fn. 5 argues that at least one
`
`Improper New Matter may be justified due to Cellspin asserting claim constructions
`
`in its Response. Here, Canon erroneously cites to Canon v. Intellectual Ventures II,
`
`IPR2014-00631 (Paper 50) (PTAB Aug. 19, 2015). To the contrary, that case merely
`
`held that the “challenged arguments [and] evidence … respond[ed] to arguments
`
`raised in the Patent Owner Response.” Id., p. 48. However, that is not the case here.
`
`II.
`
`Procedural History
`
`The Order at Paper 36 authorized Cellspin to file a motion to strike consistent
`
`with its December 18, 2019 Notice at Paper 35. This motion is consistent with, and
`
`maps to, the Notice, including its request to strike or exclude/disregard Canon’s
`
`entire Reply and evidence, including listed categories of Improper New Matters plus
`
`and including the Improper New Matters noted in Cellspin’s Objections at Paper 25.
`
`III. Argument Including Basis for Relief Under §42.23(b) and Due Process.
`
`A. Canon’s new Reply theory concerning paired wireless connections being
`obvious, including in view of Bluetooth, should be stricken or,
`alternatively, excluded.
`
`
`
`4
`
`

`

`Canon’s original theory in its Petition for “paired wireless connection” limitation
`
`being met was that Hiroishi’s Bluetooth (“BT”) wireless connection was paired
`
`because it allows two-way communication. Paper 1 (Pet.), p. 23. Here Canon relied
`
`upon the original Madisetti Dec. Ex. 1003,¶¶ 97-100. Canon had no obviousness
`
`theory with regard to paired connections. Paper 1, p. 23; Ex. 1003, ¶¶ 97-100.
`
`Canon’s Reply, in reliance upon the improper Madisetti Reply Dec. at Ex. 1043,
`
`improperly relies in multiple places upon a new theory of obviousness to pair,
`
`including that a POSITA would have been motivated to pair the Hiroishi and/or
`
`Hollstrom wireless connections for various reasons, including encouragement,
`
`design choice, expectedness, routineness and/or due to predictable results.. E.g.,
`
`Reply, p. 2 (“Under basic principles of KSR, however, a routine design choice like
`
`whether to use an optional feature of a known technical specification is sufficient to
`
`demonstrate obviousness …); pp. 9-10 (“III. THE PRIOR ART … RENDERS
`
`OBVIOUS A “PAIRED WIRELESS CONNECTION”… Ex. 1043 ¶¶ 11-12…
`
`Hiroishi and Hollstrom both disclose Bluetooth … led a POSITA to use Bluetooth
`
`pairing… Ex. 1043 ¶¶ 11-13. Bluetooth pairing was [] well-known…”); p. 12 (“it
`
`would have been obvious to use Bluetooth pairing...) Ex. 1043 ¶¶ 11-12… these
`
`features are design choices within the Bluetooth specification, so it would have been
`
`obvious… A POSITA also would have been motivated to use these features… Ex.
`
`1043 ¶ 13; Ex. 1036 at 8-10…); p. 14 (“… advantages it offered in terms of pairing
`
`
`
`5
`
`

`

`two devices. Exs. 1036-1038 at 8-10; Exs. 1037, 1038. These advantages included
`
`enhanced user experience, increased security, a simplified pairing process that
`
`“anyone can do,” and a reduced impact on device and silicon manufacturers to
`
`maintain low costs. Ex. 1036 at 8-10; Ex. 1040 at 38:22-48:14. These known
`
`advantages clearly would have motivated a POSITA
`
`to use Bluetooth
`
`pairing…POSITA would have had … expectation of success .. Id. Accordingly, the
`
`challenged claims are obvious”); Ex. 1043, ¶¶ 9-13 (“Hiroishi and Hollstrom render
`
`the challenged claims obvious…teachings would have led a person of ordinary skill
`
`in the art to use Bluetooth pairing to implement the systems disclosed in the
`
`references… Bluetooth pairing was [] well-known … it would have been obvious to
`
`use Bluetooth pairing… that is direct motivation to use Bluetooth pairing…benefits
`
`of…a permanent connection that can be disconnected and reconnected without
`
`having to repeat pairing or authentication… design choices within the Bluetooth
`
`specification, so it would be routine to use them, without any unpredictable results.
`
`Ex. 1039 at 16, 21-22. The Bluetooth specification provides explicit instructions for
`
`how to implement these features, so a person of ordinary skill in the art would have
`
`a reasonable expectation of success…. Id. … motivation for using a permanent
`
`connection that can be disconnected and reconnected without having to repeat
`
`pairing or authentication would be to improve user experience. Ex. 1036 at 8-10…”).
`
`
`
`6
`
`

`

`This new obviousness theory further relies upon Improper New Matters about the
`
`BT Basic Imaging Profile (“BIP”). Reply, pp. 12-13 (“BIP… pairing in the
`
`specification; it is left to the implementer’s discretion… Ex. 1043 ¶ 12 … the fact
`
`that pairing is left to the implementer’s discretion for image push and image pull
`
`confirms that pairing is a predictable design choice that falls within the rationales
`
`discussed in KSR. Ex. 1043 ¶ 12… For Automatic Archive… BIP states “it is highly
`
`recommended that pairing be a prerequisite… Thus, for certain features, the BIP
`
`specification does more than leave pairing to the implementer’s discretion—it
`
`specifically recommends pairing.”). Ex. 1043, ¶ 12 (“…BIP, states the use of pairing
`
`is “left to the implementer’s discretion” when pushing and pulling images … this
`
`statement confirms that it would have been obvious to use Bluetooth pairing…”).
`
`“A reply may only respond to arguments raised in the corresponding opposition
`
`or patent owner response.” See 37 C.F.R. § 42.23(b). As the Board has stated,
`
`“‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new
`
`direction with a new approach as compared to the position originally taken in the
`
`Petition.” IPR2015-00412 (Paper 50) (PTAB May 6, 2016). In its Reply, Canon has
`
`clearly embarked in a new direction by setting out a new obviousness argument with
`
`regards to paired wireless connections. As the Board has stated, “[a]ccepting such
`
`belatedly presented arguments would be unjust to the Patent Owner.” Id.
`
`
`
`7
`
`

`

`Accordingly, at a minimum, these Improper New Matters in the Reply and the
`
`relied upon Exs. 1036-1040 and 1043, should be stricken or, alternatively, excluded
`
`under §42.23(b), the APA and/or due process.
`
`B. Canon’s new Reply theory concerning paired wireless connection now
`being construed to require an “association” instead of merely requiring
`two-way communications; and Canon’s new theory that Hiroishi and
`Hollstrom meet this new “association” theory of pairing, should be
`stricken or, alternatively, excluded.
`As noted above, Canon’s original Petition theory for “paired” was that the
`
`wireless connection established in Hiroishi was “paired” because it allowed two-
`
`way communication. Paper 1 (Pet.), p. 24. Belatedly realizing this was untenable,
`
`Canon, relying upon Dr. Madisetti, shifted its theory and construction for its Reply.
`
`See, e.g., Reply, pp. 6-7 (“The term …encompasses an association between two
`
`devices that allows for two-way communication … Ex. 1043 ¶¶ 6-7.”); Ex. 1043,
`
`§6-7 (“(person of ordinary skill in the art would understand the term to encompass
`
`an association between two devices … person of ordinary skill in the art would have
`
`understood that what all these forms of pairing have in common is that they establish
`
`an association between devices…”); Id., §10 (“Hiroishi discloses an association …
`
`that allows for two-way communication … person of ordinary skill in the art …
`
`would have recognized this as a “paired wireless connection” … Hollstrom discloses
`
`a similar configuration…”).
`
`
`
`8
`
`

`

`Thus, Canon is yet again embarking in new directions in its Reply by construing
`
`paired wireless connections as requiring an “association.” At a minimum, these
`
`Improper New Matters in the Reply and the reliance upon Ex. 1043, or at minimum
`
`the relied upon portions of Ex. 1043, should be stricken or, alternatively, excluded
`
`under §42.23(b), the APA and/or due process.
`
`C. Canon’s new Reply theory 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 various
`reasons, including cryptographic authentication being a feature of
`Bluetooth
`association models,
`encouragement, design
`choice,
`expectedness, routineness, safeness and/or due to predictable results,
`should be stricken or, alternatively, excluded.
`Canon’s original
`theory
`in
`its Petition was
`
`that “cryptographically
`
`authenticating” was obvious because: (1) “Cryptographic authentication between
`
`wireless devices like a digital camera and cellular phone was routine at the time of
`
`the invention. Id.; Ex. 1017,3 91-92; Ex. 1019, [0055]; Ex. 1020, [0019];” (2)
`
`“cryptographic authentication was part of the Bluetooth standard; and (3)
`
`“motivation for using cryptographic authentication: to ensure that … information is
`
`protected from outsiders … Ex. 1003 ¶¶ 99-100, 44-47.” Pet., pp. 24-25.
`
`Canon’s new and improper obviousness theory set forth in its Reply is based upon
`
`extensive Improper New Matter. See, e.g., Reply, p. 12 (“…these features are design
`
`choices … so it would have been obvious and routine …with predictable results and
`
`
`
`9
`
`

`

`….expectation of success Ex. 1043 ¶ 13 Ex. 1036 at 8-10 …”); Id., pp. 14-15
`
`(“…cryptographic authentication was a design choice in Bluetooth…different
`
`options that a developer can select depending on his or her particular use case. Ex.
`
`1040 at 55:17-56:2… Thus, the decision was to use cryptographic authentication …
`
`was a design choice … squarely within … KSR... Ex. 1043 ¶ 14…. specific use
`
`cases… motivated to use cryptographic authentication, … Ex. 1040 at 65:2-17.”);
`
`Id., pp. 15-16 (“… cryptographic authentication was even more than a design
`
`choice—it was a feature for three of the four “association models” in Bluetooth...
`
`Ex. 1039 at 18… The models … provide for authenticated link keys, and therefore
`
`cryptographic authentication…Id. …By providing these models, the Bluetooth
`
`specification encouraged developers to use cryptographic authentication. Id.”); Id.,
`
`p. 17 (“Combining the teachings of the prior art with the knowledge of a POSITA
`
`would have led to the expected result … cryptographically authenticate ... Id.”); Ex.
`
`1043, ¶ 13 (“encrypted data exchange … design choice[] within the Bluetooth
`
`specification, so it would be routine to use them, without any unpredictable
`
`results…. Bluetooth specification provides explicit instructions for how to
`
`implement these features, so …. a reasonable expectation of success…); Id., ¶ 14
`
`(“In my opinion, a person of ordinary skill in the art would have recognized that the
`
`first option is the safest, and therefore would have been motivated to use it… At a
`
`minimum… these were three design choices that would have been obvious to try…
`
`
`
`10
`
`

`

`Because the mechanism … was so well-established, there would not have been any
`
`surprising or unexpected results...”); Id.,¶ 15 (“cryptographic authentication was a
`
`feature for three of the four “association models” in Bluetooth … Ex. 1039 at 18…
`
`The models … provide for authenticated link keys, and therefore cryptographic
`
`authentication. By providing these models, the Bluetooth specification encouraged
`
`… cryptographic authentication.”).
`
`Thus, Canon is yet again embarking in new directions in its Reply. At a
`
`minimum, these Improper New Matters in the Reply and the relied upon Exs. 1036
`
`and1043, or at minimum the relied upon portions of Exs. 1036 and 1043, should be
`
`stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`D. Canon’s new Reply theory concerning that if a POTISA wanted to
`establish a connection, he or she would necessarily use or “have to use”
`cryptographic authentication, including based upon analysis of contents
`of the Bluetooth Standard or other new Exhibits relied upon by Canon,
`should be stricken or, alternatively, excluded.
`At p. 17 of its Reply, Canon expresses the new theory/position/argument that,
`
`“[i]f a POSITA wanted to establish a connection between these devices, he or she
`
`would have to use cryptographic authentication.” In support thereof, it cites “Ex.
`
`1039 at 7; Ex. 1042 at 31:1-32:9.” It is not clear how either of these exhibits support
`
`this new theory/position argument; however, if they do, then they must be
`
`characterized as Improper New Matters as well.
`
`
`
`11
`
`

`

`Canon is yet again embarking in new directions in its Reply. At a minimum, these
`
`Improper New Matters in the Reply and the relied upon Exs. 1039 and 1042, or at
`
`minimum the relied upon portions of Exs. 1039 and 1042, should be stricken or,
`
`alternatively, excluded under §42.23(b), the APA and/or due process.
`
`E. Canon’s new Reply theory concerning cryptographic authentication
`being a “mandatory” feature, including under Security Mode 3 of the
`Bluetooth Standard, should be stricken or, alternatively, excluded.
`At p. 17 of its Reply, Canon expresses the new theory/position/argument that, “a
`
`POSITA implementing Security Mode 3 of the Bluetooth standard would have
`
`understood cryptographic authentication was a mandatory feature.” In support
`
`thereof, Canon cites “Ex. 1039 at 7.” It is not clear how this exhibit supports this
`
`new theory/position argument; however, if it does, then it must be characterized as
`
`Improper New Matters as well.
`
`Canon is yet again embarking in new directions in its Reply. At a minimum, these
`
`Improper New Matters in the Reply and the relied upon Ex. 1039, should be stricken
`
`or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`F. Canon’s new Reply theories for the GUI element being satisfied should
`be stricken or, alternatively, excluded.
`On the issue of Hiroishi and Ando disclosing GUIs that have the alleged claimed
`
`functionality,
`
`at p. 18 of
`
`its Reply, Canon
`
`expresses
`
`the new
`
`theory/position/argument that a GUI is satisfied by “fields that receive input via a
`
`
`
`12
`
`

`

`keypad as implemented in a laptop or Blackberry device”. At p. 23, Canon’s Reply
`
`frames the “question” as “whether a POSITA would recognize the devices disclosed
`
`in Hiroishi and Ando as disclosing graphical user interfaces,” and concludes “they
`
`would” based upon “Ex. 1043 ¶¶ 18-19.” In the cited portion of Ex. 1043, Dr.
`
`Madisetti expresses the new theory/position/argument that “these references use
`
`keypads and keyboards to input data into a graphical field of image. This was a
`
`common implementation of a graphical user interface as was known to persons of
`
`ordinary skill…” Ex. 1043 ¶ 19.
`
`Canon is yet again embarking in new directions in its Reply. At a minimum, these
`
`Improper New Matters in the Reply and the relied upon Ex. 1043, should be stricken
`
`or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`G. Canon’s new Reply theories for combining, and motivations to combine,
`Hiroishi with Nozaki and/or Ando for using a mobile GUI for image
`deletion on the camera should be stricken or, alternatively, excluded.
`Canon’s original theory in its Petition was that it was obvious to combine Hiroishi
`
`with Nozaki and/or Ando for using a mobile device GUI for image deletion on the
`
`camera because each alleged combination “would require a simple modification to
`
`the mobile device software disclosed in Hiroishi so that it is capable of sending a
`
`delete thumbnail file instruction to the digital camera” and because there was a
`
`“reasonable expectation of success. Pet., p. 55 & 58 (citing original Madisetti
`
`Declaration Ex. 1003, ¶¶ 214-222). Canon’s new Reply theory/position/argument
`
`
`
`13
`
`

`

`at pp. 25-26, is that “a POSITA would have considered the combination to be a
`
`simple substitution of one known element for another, and in particular, a simple
`
`substitution of Hiroishi’s deletion mechanism for that of Nozaki or Ando,” and that,
`
`“[t]he substitution would have yielded predictable results because Hiroishi would
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`work as expected by allowing the image data to be deleted after it is transferred.”
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`This new Reply theory/position/argument relies upon “Ex. 1043 ¶¶ 21-22.”;
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`wherein Dr. Madisetti’s Reply Declaration newly asserts that “a person of ordinary
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`skill in the art would have considered it a simple substitution to use Nozaki’s or
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`Ando’s deletion mechanism in place of Hiroishi’s. There would not have been any
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`unexpected or unpredictable results because Hiroishi would still work as expected
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`by allowing the image data to be deleted after it is transferred.” Id. Further, at Ex.
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`1043 ¶ 22, Dr. Madisetti asserts a new theory/position/argument for motivation to
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`combine, which he falsely avers was expressed in his prior Declaration at Ex. 1003.
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`The new theory/position/argument asserted by Dr. Madisetti is that “deletion
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`mechanisms disclosed in Nozaki and Ando would have provided increased
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`flexibility in terms of allowing a user of the mobile phone to select exactly which
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`images and associated files to delete from the digital camera. This improved
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`flexibility would have motivated a person of ordinary skill in the art to combine the
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`teachings of Hiroishi with those of Nozaki and Ando.” Ex. 1043 ¶ 22. Thus, Canon
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`is yet again embarking in new directions in its Reply. At a minimum, these Improper
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`New Matters in the Reply and the relied upon Ex. 1043, should be stricken or,
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`alternatively, excluded under §42.23(b), the APA and/or due process.
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`H. Canon’s new Reply theory concerning obviousness “if” Takahashi’s
`newly named file is a different file should be stricken or, alternatively,
`excluded.
`In addressing Takahashi, Canon’s Reply cryptically relies upon “Ex. 1043 ¶¶ 16-
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`17.” Reply p, 19. At ¶ 17, Ex. 1043 asserts a new obviousness theory that, “even
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`if changing the filename somehow changed the file itself, the claimed invention
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`would still be obvious… A person of ordinary skill in the art would have understood
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`that this teaching could have been implemented … by incorporating the user
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`identifying information into another file.” Thus, Canon is yet again embarking in
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`new directions in its Reply. At a minimum, these Improper New Matters in the Reply
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`and the relied upon Ex. 1043, should be stricken or, alternatively, excluded under
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`§42.23(b), the APA and/or due process.
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`IV. Conclusion.
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`At a minimum, the foregoing Improper New Matters in the Reply and its
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`supporting Exhs. 1036-40 and 1043-45 should be stricken or, alternatively, excluded
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`under §42.23(b), the APA and/or due process. More specifically, Cellspin requests
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`the full relief requested above for at least the reasons noted herein, including the
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`striking of Canon’s entire improper Reply and its Exhibits.
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`Dated: January 3, 2020
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`Respectfully submitted,
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`/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
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`Certificate of Service
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`I hereby certify that this Motion is being served on January 3, 2020 by electronic
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`mail and PTAB ECF to the following:
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`jarednewton@quinnemaneul.com
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
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`Dated: January 3, 2020
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`/s/ John J. Edmonds
`John J. Edmonds
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`Counsel for Owner,
`Cellspin Soft, Inc.
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